In addition, you must include both the names and the countries of citizenship or entities and states of organization of the general partners.
If you, as an individual, own the mark with someone else, but have not formed a legal business partnership, you may be joint applicants, not a partnership. If so, you must provide information about each joint applicant. To begin, fill in your personal name as the Owner of the Mark, indicate you are an Individual, as well as provide your Citizenship.
After filling in the contact information, click Add Owner at the bottom of the page. This will allow you to add the Name, Citizenship, and Contact information for the person with whom you are jointly applying.
If there are more than two of you, be sure to click Add Owner and supply the required information for each individual joint applicant. Another small business entity type is the Sole Proprietorship. The answer depends upon who will ultimately control the quality of the goods or services. In most cases, it would make sense to identify the company as the applicant if the company is or will be selling the product. Presumably, the company handles quality control of its products, processes returns, deals with customer issues related to the quality of the product, and so on.
It is possible for a trademark owner to be a person or entity other than the one actually selling the product. In these situations, a well drafted trademark license agreement should be executed to clearly establish that the trademark owner licensor is monitoring the quality of the products to be sold by a licensee. Without written license agreements in place, you may end up with a naked license which could ultimately void any rights to the mark.
People come up with names for products all the time. You must make use of the trademark in order to gain rights, and trademark use means offering goods or services in connection with the trademark. Furthermore, the owner of a trademark is required to control the quality of the goods or services. Therefore, merely inventing a mark is not enough to establish trademark rights although it might be sufficient to establish copyright rights in certain cases.
You must actually sell product under the mark to establish trademark rights. That being said, anyone can file an Intent-To-Use application. The ITU applicant should be the person or entity who will use the mark on the goods or services, and will control the quality of these forthcoming products.
If such actions are filed against a registered trademark, then its owner will need to be able to offer proof that it is in use, such as invoices, advertising, etc. If, for instance, the trademark is owned by an individual but the products are commercialized by the company this individual owns, invoices will be in the name of the company and are therefore likely to be rejected as proof of use.
The only way for them to be accepted would be to provide a valid contract or license agreement between the trademark owner and the company commercializing it. Therefore, if the entity in charge of commercializing the products or services registered under the trademark is different from the one owning the trademark, a license agreement is essential.
This leads us to one of the other common questions that our client struggle with, which is whether a company should own their trademark outright in all the countries where they work, or whether they should let their local distributors register it.
Their main reasons for considering letting their local distributors register the trademark are two-fold. The first one is financial; trademark registration has a non-negligible cost, especially in some countries, and letting the local distributor bear the burden of trademark registration might be a way to speed up their growth and international presence for smaller companies. The second reason is convenience, since it is often easier for local distributor to find intellectual property attorneys in their own country and their own language, easing up the registration process.
For our clients, this is clearly less of an issue, since we already have our extensive network of local agents and our Trademark Consultants are the ones to take care of communicating with them and ensuring that the application process is as painless as possible. The biggest issue with having the trademark registered by a local distributor is quite simply the almost total loss of control of the trademark. Once the local distributor has registered the trademark in their name locally, they are the holders of all the proprietary rights to it in their country, and can use it in ways that the product provider did not intend, as well as transfer its ownership to a third party.
Of course, many of our clients have enjoyed a long, trustworthy and fruitful relationship with distributors who registered the trademark locally, but this is unfortunately not always the case, and several of our clients have also contacted us after the working relationship with their distributors has deteriorated or ended, looking for ways to recover ownership of their own trademarks.
If one is planning to have their products commercialized by a local distributor in a specific country, they are advised to file the local trademark application in their own name, and then grant a license agreement authorizing the local distributors to use the trademark.
This has several advantages; the first one is obviously not losing ownership of the trademark if the distributor is not trustworthy. Additionally, the license agreement can specify when, where and under which conditions the distributor can use the trademark, and specify a monetary compensation that the distributor has to pay the trademark owner for use of the trademark.
Incidentally, this might be the solution to the above-mentioned financial issues that would lead to letting the local distributor register the trademark. Licenses agreements should be drafted by attorneys specialized in intellectual property and, in some countries, they have to registered with the local trademarks office in order to be valid and enforceable. What If my local distributor is a local branch of my company?
Should the trademark be registered in the name of the parent company or the subsidiary? Most of the factors to consider in this case are similar to the ones already mentioned, that is to say, control over the trademark, its value as a company asset, and demonstrating use of the mark. In this case, the issue of control is not as critical since the subsidiary is in fact controlled by the parent company, and therefore control of the trademark would ultimately belong to the parent company regardless of which company is registered as its owner with the trademarks office.
However, if the trademark is registered in the name of the subsidiary, should the parent company decide to sell its subsidiary, then the registered trademark would automatically be part of the sale unless its assignment to the parent company were specifically negotiated beforehand. The registered trademarks will be considered assets for the company that registered them.
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