Wrong Trademark Applicant – Your Registration “Might” Be Void
Make sure to file your trademark with the right owner listed or any subsequent registration MIGHT be void ab intio.
In Phat Scooters, Inc. v. Fatbear Scooters, LLC et al., Cancellation No. 92078878, April 21, 2023, the Trademark Trial and Appeal Board addressed whether a trademark registration was void ab initio due to the fact that Fatbear Scooters, LLC, the listed owner of the mark in the application, admittedly did not exist at the time the application was filed. Relying on Accu Personnel, Inc. v. Accustaff, Inc., 38 USPQ2d 1443, 1446 (TTAB 1996), the TTAB noted that an application filed in the name of a non-existent entity is not void ab initio so long as the application was filed by the “correct person”. In order to show that the application was filed by the correct person, the applicant must be the “same, single commercial enterprise that filed and owned the mark at the time of filing the application.” Finding that Fatbear Scooters, LLC was “merely a later manifestation of the same, single commercial enterprise which filed the application,” and that the mistake was in good faith, the TTAB permitted the registrant to correct its mistake with the payment of a fee. The TTAB relied upon the fact that the two brothers who were d/b/a Fatbear Scooters, had misidentified the commercial business as an LLC, which is a correctable mistake. The TTAB distinguished this situation from one where two distinct entities exist at the time of filing of a trademark and the wrong entity is listed as the owner. Under such circumstances, the application would, in fact, be void, ab initio.
If you need to correct the ownership of a trademark application, please contact one of our attorneys today.