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

Thu Jun 12 15:27:09 UTC 2025

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

*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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On Thu, Jun 12, 2025 at 1:06 AM Carl Oppedahl via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:

> 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
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> Parsippany, NJ 07054
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> On Jun 11, 2025, at 7:59 PM, Scott Landsbaum via E-trademarks
> <e-trademarks at oppedahl-lists.com> <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 / 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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