[E-trademarks] the usual bad fact pattern where applicant and actual user have a fuzzy connection

[Pamela Chestek]

Why do you think the individual isn't the actual owner? Is there any 
kind of documentation saying that there was a transfer of ownership?

A use by a related company inures to the benefit of the owner (Section 
5); a "related company" is "any person whose use of a mark is controlled 
by the owner of the mark with respect to the nature and quality of the 
goods or services on or in connection with which the mark is used." 
Section 45. You just need to prove control. A written agreement is 
probably helpful evidence, but it's only evidence. It's possible to have 
control without a written agreement, and an agreement doesn't save the 
day either if there isn't actual control.

Of course it's tricky as between the 100% owner of the company and the 
company itself. On just a quick search of my blog I found this article 
<https://propertyintangible.com/2016/07/its-all-about-the-facts/> that 
might be a useful place to start reading, but there are lots of cases 
with similar facts.

If there was a transfer of ownership, but the documents were signed by 
the individual rather than the entity, the last document signed was 
invalid -- but someone else on this list can give you a citation that 
says it's not challengable because of Section 14 (incorrect signatory is 
not one of the grounds for cancellation), but I forget the case.

Pam

Pamela S. Chestek
Chestek Legal
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El Dorado Hills, CA 95762
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pamela at chesteklegal
www.chesteklegal.com


On 6/30/2025 1:37 PM, Carl Oppedahl via E-trademarks wrote:
>
> [note from editor -- this sort of stuff seems to happen over and over 
> again]
>
>
> A listserv member asks to post anonymously:
>
>
> An individual files for and obtains a US trademark registration in 
> 2000 for services.
>
> An Inc. owned by the individual is formed in 2010 and starts using the 
> mark in the registration for the services in the registration.
>
> All subsequent renewal filings are still done in the name of the 
> individual but the services are being rendered by the Inc., not the 
> individual.
>
> There was never a written license agreement in place between the 
> individual and the Inc.
>
> There is a potential dispute involving the registration.
>
> Can the validity of the registration be attacked on grounds that the 
> renewal filings were done in the name of the individual and not the 
> Inc. when no written license agreement was in place?
>
> If so, how can this be fixed?
>
> A retroactive / /nunc pro tunc/ license agreement?
>
> A retroactive / /nunc pro tunc /assignment?
>
> Are there other problems that need to be fixed?
>
>
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