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

Thu Jun 12 18:30:19 UTC 2025

          It’s the fifth anniversary of the registration’s issuance that automatically triggers Section 14(3)’s five-year statute of limitations, not incontestability, and “a claim that the Respondent is not the owner of the involved mark is not an available ground for cancellation of a registration issued more than five years ago.” Ahmad v. Gyro Enters., No. 9207484, 2021 WL 1400691, at *2 (T.T.A.B. Mar. 25, 2021) (nonprecedential). But a false claim of ownership rising to the level of fraud can be. See generally Fuji Med. Instruments Mfg. Co. v. Am. Crocodile Int’l Grp., 2021 U.S.P.Q.2d 831 (T.T.A.B. 2021); see also Desly Int’l Corp. v. Otkrytoe Aktsionernoe Obshchestvo “Spartak,” No. 13-CV-2303(ENV)(LB), 2016 WL 4532113 (E.D.N.Y. Aug. 29, 2016); MPC Franchise, LLC v. Tarntino, 19 F. Supp. 3d 456 (W.D.N.Y. 2014), aff’d, 826 F.3d 653 (2d Cir. 2016); Country Fare LLC v. Lucerne Farms, 102 U.S.P.Q.2d 1311 (D. Conn. 2011); City of N.Y. v. Tavern on the Green, L.P., 94 U.S.P.Q.2d 1519 (S.D.N.Y. 2010).

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Ted Davis
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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Tushnet, Rebecca via E-trademarks
Sent: Thursday, June 12, 2025 2:19 PM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: Tushnet, Rebecca <rtushnet at law.harvard.edu>
Subject: Re: [E-trademarks] Ownership of trademark registration question between a Creator and a Licensee

My rough review indicates that courts almost always reject the void ab initio doctrine applied to incontestable marks—unless the reason for applying it is one of the statutory bases for defeating incontestability. See MCCARTHY § 32: 148. In the

My rough review indicates that courts almost always reject the void ab initio doctrine applied to incontestable marks—unless the reason for applying it is one of the statutory bases for defeating incontestability. See MCCARTHY § 32:148. In the described scenario, I think it's fraud/use to misrepresent source if it's anything (although you could probably try a contract claim, outside of the PTO, to force transfer of the registration's ownership, see Sköld v. Sonoma Pharmaceuticals, Inc.<https://1.next.westlaw.com/Document/I35834680401511ed8fe08f68f29d3021/View/FullText.html?listSource=Search&navigationPath=Search%2fv1%2fresults%2fnavigation%2fi0a89908700000197655becb592bacd26%3fppcid%3d8da0df17434048dfac920de5ca0c483d%26Nav%3dCASE%26fragmentIdentifier%3dI35834680401511ed8fe08f68f29d3021%26parentRank%3d0%26startIndex%3d1%26contextData%3d%2528sc.Search%2529%26transitionType%3dSearchItem&list=CASE&rank=13&listPageSource=f5b8d18149b97c0c7ad6bb7461d7a748&originationContext=docHeader&contextData=(sc.Search)&transitionType=Document&needToInjectTerms=False&enableBestPortion=True&docSource=ef5396a2ff504732b3b3bfdffe84d2e8&ppcid=626dd8f23c31494cbfcbadd5d574f1d9> 31 F.Supp.3d 248 (E.D. Pa. 2022).

Rebecca Tushnet
she/her
Frank Stanton Professor of the First Amendment, Harvard Law School
703 593 6759
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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com<mailto:e-trademarks-bounces at oppedahl-lists.com>> on behalf of Ramon G. Vela Cordova via E-trademarks <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>>
Sent: Thursday, June 12, 2025 1:51 PM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>>
Cc: Ramon G. Vela Cordova <rvela at velacordova.com<mailto:rvela at velacordova.com>>
Subject: Re: [E-trademarks] Ownership of trademark registration question between a Creator and a Licensee

Hi Stephen,

Assuming the license was valid and in force when the application was filed, the registration is probably void ab initio.  A licensee — even an exclusive licensee -- is not the real or intended trademark owner, since by definition they do not control the nature and quality of the goods or services.  Applications filed by anyone other than a real or intended trademark owner are void ab initio.

Whether fleshing out that argument requires allegations about fraud, lack of use by the applicant, lack of bona fide intent to use by the applicant, or other circumstances presumably depends on the facts at hand.

Now, I have seen some cases that go against the void-ab-initio rule in some circumstances, for instance allowing rectification of the register under Sec. 18.  But this doesn’t seem to be the current view.

Best regards,
Ramón

On Jun 12, 2025, at 12:50 PM, Crane, Susan via E-trademarks <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>> wrote:

I think that is a risk.  Haven’t done research on the ability to cure/purge fraud.

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

Wyndham Hotels & Resorts, Inc.
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Susan.Crane at wyndham.com<mailto:Susan.Crane at wyndham.com>

From: Dale Quisenberry <dale at quisenberrylaw.com<mailto:dale at quisenberrylaw.com>>
Sent: Thursday, June 12, 2025 12:42 PM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>>
Cc: Crane, Susan <susan.crane at wyndham.com<mailto:susan.crane at wyndham.com>>
Subject: Re: [E-trademarks] Ownership of trademark registration question between a Creator and a Licensee

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

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

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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com<mailto:e-trademarks-bounces at oppedahl-lists.com>> on behalf of Crane, Susan via E-trademarks <e-trademarks at oppedahl-lists.com<mailto: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<mailto:e-trademarks at oppedahl-lists.com>>
Cc: Crane, Susan <susan.crane at wyndham.com<mailto: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
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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com<mailto: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<mailto:e-trademarks at oppedahl-lists.com>>
Cc: Stephen McArthur <stephen at smcarthurlaw.com<mailto: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?

The McArthur Law Firm
Stephen Charles McArthur
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On Thu, Jun 12, 2025 at 1:06 AM Carl Oppedahl via E-trademarks <e-trademarks at oppedahl-lists.com<mailto: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<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><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. ,

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

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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
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