[E-trademarks] Ownership of trademark registration question between a Creator and a Licensee
Carl Oppedahl
carl at oppedahl.com
Thu Jun 12 17:15:10 UTC 2025
Seems to me that TYFNIL what you do not want is a registration that is
vulnerable to attack by an adversary.
Now maybe you can rub a crystal ball and you can predict that the
registration won't ever get litigated.
My crystal ball isn't that good.
Carl
On 6/12/2025 10:41 AM, Dale Quisenberry via E-trademarks wrote:
>
> This is interesting.
>
> So, Susan, are you saying, because of the fraud, the existing
> registration is invalid and the fraud cannot be purged?
>
> So while the rightful owner is entitled to the priority date, they
> must file a new application, which will only get the benefit of that
> new filing date?
>
> So any intervening applications could create problems?
>
> Dale
>
> C. Dale Quisenberry
>
> Quisenberry Law PLLC
>
> 13910 Champion Forest Drive, Suite 203
>
> Houston, Texas 77069
>
> (832) 680.5000 (office)
>
> (832) 680.1000 (mobile)
>
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> *From: *E-trademarks <e-trademarks-bounces at oppedahl-lists.com> on
> behalf of Crane, Susan via E-trademarks <e-trademarks at oppedahl-lists.com>
> *Date: *Thursday, 12 June 2025 at 11:06 am
> *To: *For trademark practitioners. This is not for laypersons to seek
> legal advice. <e-trademarks at oppedahl-lists.com>
> *Cc: *Crane, Susan <susan.crane at wyndham.com>
> *Subject: *Re: [E-trademarks] Ownership of trademark registration
> question between a Creator and a Licensee
>
> No, that will not work. The examiner cannot make those kinds of
> decisions. You would need to cancel the prior registration to
> overcome the citation.
>
> *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 <mailto:Susan.Crane at wyndham.com>
>
> *From:*E-trademarks <e-trademarks-bounces at oppedahl-lists.com> *On
> Behalf Of *Stephen McArthur via E-trademarks
> *Sent:* Thursday, June 12, 2025 11:27 AM
> *To:* For trademark practitioners. This is not for laypersons to seek
> legal advice. <e-trademarks at oppedahl-lists.com>
> *Cc:* Stephen McArthur <stephen at smcarthurlaw.com>
> *Subject:* Re: [E-trademarks] Ownership of trademark registration
> question between a Creator and a Licensee
>
> 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?
>
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> 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
>
> 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>
> <mailto: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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