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

Thu Jun 12 08:03:47 UTC 2025

What she said!

Thank you Susan for posting.  Carl

On 6/11/2025 6:59 PM, Crane, Susan via E-trademarks wrote:
> 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.
>
> 22 Sylvan Way
>
> Parsippany, NJ 07054
>
> O (973) 753-6455
>
> M (973) 879-3420
>
> 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.
>> 323-314-7881 <tel:323-314-7881> / f 323-714-2454
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>> On Wed, Jun 11, 2025 at 4:37 PM Stephen McArthur via E-trademarks 
>> <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
>>     www.smcarthurlaw.com
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