[E-trademarks] Ownership of trademark registration question between a Creator and a Licensee

Thu Jun 12 00:59:17 UTC 2025

I think there is a risk the registration is void for fraud. The original applicant/licensee knew it had no rights but attested otherwise in its application. That would be the basis of the cancellation action filed by Creator or someone else down the line.

Since by contract and licensing law, the creator can claim the original first use date, true priority is not lost.

Susan L. Crane
Group Vice President, Legal
Intellectual Property, Brands & Marketing

Wyndham Hotels & Resorts, Inc.
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Parsippany, NJ 07054
O (973) 753-6455
M (973) 879-3420
Susan.Crane at wyndham.com<mailto:Susan.Crane at wyndham.com>

On Jun 11, 2025, at 7:59 PM, Scott Landsbaum via E-trademarks <e-trademarks at oppedahl-lists.com> wrote:

Isn't this a contract dispute and not a USPTO issue? Why would the creator want to cancel the registration and lose the priority vs other third parties? Regards, Scott Scott Landsbaum, Inc. 323-314-7881 / f 323-714-2454 8306 Wilshire Blvd. ,
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Isn't this a contract dispute and not a USPTO issue?  Why would the creator want to cancel the registration and lose the priority vs other third parties?

Regards,
Scott

Scott Landsbaum, Inc.
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On Wed, Jun 11, 2025 at 4:37 PM Stephen McArthur via E-trademarks <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>> wrote:
I've got a hypothetical here that I'd love some feedback on.

Creator enters into a contract with a third-party Seller to manufacture and sell his product bearing a Trademark. The contract clearly sets out that the Trademark is exclusively licensed to Seller, but not assigned to it. Creator never sold the product himself, but just had some demo versions that he showed off at conventions.

Seller then registers the trademark at the USPTO identifying itself as the owner. Years pass and the trademark is now incontestable. Seller has been making and selling the very successful Product bearing the Trademark for years under the license, and writing monthly checks to Creator.

Creator now decides he wants the trademark registration in his name and for it to be assigned to him. Despite the contract only licensing and not assigning the trademark, Seller refuses to comply with the assignment since 6 years have passed since the trademark was registered in Seller's name without Creator ever saying anything.

On what basis, if any, could Creator file a Cancellation for the incontestable trademark registration?

Could Creator file his own trademark application and when the original registration is cited against it in an Office Action, produce the license showing the owner of the senior trademark is their licensee in order to get around the refusal?

Thanks in advance for any guidance!

The McArthur Law Firm
Stephen Charles McArthur
8383 Wilshire Blvd., Ste. 800
Beverly Hills, CA 90211
(424) 258-6815
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