WHAT ERRORS ARE CORRECTABLE? INTENT-TO-USE TRADEMARK APPLICATIONS PART 3
By Procopio Partner Pattric J. Rawlins and Associate Rosie Kim
You understand the importance of securing trademark protection for your product or service, and you’ve submitted an intent-to-use application or registered your brand as a trademark. But perhaps, in reading Part 1 and Part 2 of our three-part series, you’ve realized that you may have erred somewhere along the way in one of your own trademark applications. The good news is that some errors are correctable. Where an error is not correctable, there are strategic options that you may consider to maintain the rights you have developed in your brands.
Does your assignment violate the Anti-Trafficking Provision?
An assignment that violates Section 10 of the Trademark Act voids the underlying intent-to-use application. (See Cent. Garden & Pet Co. v. Doskocil Mfg. Co., 108 USPQ2d 1134, TTAB 2013). If the application matures into a registration, the registered trademark can be easily cancelled by a competitor who recognizes the procedural error. Even if it were possible to successfully argue that an invalid assignment transfers nothing, and thus the trademark rights remain with the original Applicant, the original Applicant would likely be considered to have abandoned the mark upon invalidly assigning the application.
Is The Owner Of The Mark Correctly Identified?
In many cases, an error in the manner in which the name of the Applicant is set forth may be corrected by amendment. For example, if a company named “The Flokatoopito Inc.” files an application in the name of “The Flokatoopito” or “Flokatoopito Inc.,” the Applicant name may be corrected by amendment. As another example, if “The Flokatoopito Inc.” changed its name to “The Rakatoopito Inc.” before filing the application, but filed the application in the name of “The Flokatoopito Inc.,” the error may also be correctable.
However, an application that is filed in the name of the wrong party is void and not correctable by amendment. For example, if an officer of “The Flokatoopito Inc.” is listed as the Applicant and Owner for a trademark application of a mark actually owned by the company, the application was filed in the name of the wrong party and is void as filed. This error cannot be corrected, even if the application subsequently matures into a registration.
Are There Other Errors That Require Correction?
Errors not involving ownership of the mark, including errors in the mark, description of the mark, identification of goods and services, and specimen are often correctable during prosecution of your application. For example, an Applicant may amend the identification of goods and services to clarify or limit the identification.
If you find yourself questioning the correctness of your application or registration, you should seek guidance to ensure you are taking steps to correct those errors to the extent possible. If there is an error in your application or registration that you seek to enforce, an astute party may seek to oppose your application or cancel your registration. In situations where the application filing date is relied upon to establish constructive use and nationwide priority, if your application or registration is void, that leaves you with no constructive use date, and an opposition or cancellation action may leave you on the wrong side of an infringement action.
One of our trademark attorneys can discretely review your trademark portfolio and identify errors and other issues to devise a strategy that strengthens the value of your intellectual property, your position in infringement actions, as well as opposition and cancellation proceedings. An audit of your trademark portfolio and product or service offerings will also allow us to ensure your applications and registrations align with your business objectives.
Pattric J. Rawlins is a Partner at Procopio, Chair of its Software Practice Group and Team Leader for its Intellectual Property Team. He counsels clients on many aspects of intellectual property law, including protecting trademarks, patents, copyrights, trade secrets and licensing of intellectual property assets. He represents plaintiffs and defendants in patent litigation, and focuses on counseling clients regarding intellectual property including procurement strategies and licensing programs for software implemented technologies.
Rosie Kim is an Associate at Procopio and a member of its Intellectual Property Team. Her practice focuses on all areas of intellectual property law. She regularly handles trademark, patent and transactional matters including licensing and other agreements. She works with foreign associates in several countries to obtain trademark and patent protection for clients internationally, and prosecutes patent portfolios across numerous technologies, including medical devices, consumer devices, and pharmaceuticals.