Many trademark owners choose to file and prosecute their own trademark applications before the United States Patent and Trademark Office (USPTO).  The wisdom of filing these pro-se applications, however, is questionable in light of the fact that fatal application errors can occur that will likely go unchecked during prosecution at the USPTO, rendering any resulting trademark registration void without the owner knowing.   Thus, a business may invest significant resources in a brand or trademark without knowing that its registration is subject to cancellation and cannot be enforced under a claim of trademark infringement.  This may have serious consequences for an intellectual property portfolio and can leave investors less than happy with the executive management responsible for protecting the brand and securing the registration.

One such potentially fatal error is misidentification of the trademark owner, an all-too-common occurrence in pro-se applications.  Consider the following situations in which a well-meaning trademark applicant makes the following errors in the application:

• President files as individual.  An application for trademark registration is filed by the President of the company, naming the President as owner of the mark.
• Predecessor in interest.  An application for trademark registration is filed in the name of entity A, when the mark was assigned to entity B before the application filing date.
• Parent/Subsidiary.  An application is filed in the name of corporation A, a wholly owned subsidiary, but the parent corporation (corporation B) owns the mark.
• Joint Venturer Files. The application is filed in the name of a joint venturer when the mark is owned by the joint venture, and there is no inconsistency in the original application between the owner name and the entity type (such as a reference to a joint venture in the entity section of the application).
• Sister Corporation.  An application is filed in the name of corporation A and a sister corporation (corporation B) owns the mark.

Question: how many of these examples result in enforceable trademark registrations? Answer: None of them.  They are all fatal and the application is void.[1]   How many of these errors can be corrected by amending the trademark application?  Again, none of them.[2]  They are all fatal and non-correctible, and the trademark application is void. 

To make matters more serious, it is highly likely that these fatal errors will never be identified to the applicant because the USPTO assumes that the applicant has correctly identified themselves in the application.  The first time this fatal error may be discovered is long after the trademark has been registered, when the unknowing trademark owner attempts to enforce its supposedly valid registration against an infringer.  In such situations, the accused infringer usually raises the defense of trademark invalidity.  If a fatal error occurred during trademark prosecution the trademark registration may be cancelled to the surprise of the owner, resulting in a significant loss of rights.  Given the fact that this will likely occur after significant branding expense has been laid out by the putative trademark owner, and after expense of litigation, investors may be none too pleased.

What to do?  Any owner of a federally registered trademark, or portfolio of trademarks, should have their trademark registrations reviewed by competent intellectual property legal counsel, and any board of directors should require such review by their executive management, as a matter of prudent risk management.   This should be a part of an annual intellectual property audit of the business’ assets.  The costs of such review are insignificant in comparison to the value a valid trademark registration may hold – especially when it comes time for business valuation, for example, in support of a proposed merger or acquisition, when applying for credit, or when performing due diligence prior to a prospective trademark enforcement action.

[1] “An application based on use in commerce under 15 U.S.C. §1051(a) must be filed by the party who owns the mark on the application filing date. If the applicant does not own the mark on the application filing date, the application is void.”  TMEP §1202(b), citing 37 C.F.R. §2.71(d)

[2] Trademark Manual of Examining Procedure (TMEP), §1201.02(c)