Lomita, CA asked in Trademark and Business Law for California

Q: I want to get bought out of a company but if I can’t would it be appropriate to file a company trademark under my name

Trying to get bought out of my position, but if I can’t, would it be a good idea to file the business’s trademark under my name as leverage?

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1 Lawyer Answer
Robert E. Wasserman
Robert E. Wasserman
  • Trademarks Lawyer
  • Los Angeles, CA
  • Licensed in California

A: Short answer: No.

Under 15 U.S. Code Section 1051:

(1)A person who has a *bona fide intention*, under circumstances showing the *good faith* of such person, to use a trademark in commerce may request registration of its trademark on the principal register hereby established by paying the prescribed fee and filing in the Patent and Trademark Office an application and a verified statement, in such form as may be prescribed by the Director.

(2)The application shall include specification of the applicant’s domicile and citizenship, the goods in connection with which the applicant has a *bona fide intention* to use the mark, and a drawing of the mark.

(3)The statement shall be verified by the applicant and specify—

(A)that the person making the verification believes that he or she, or the juristic person in whose behalf he or she makes the verification, to be entitled to use the mark in commerce;

(B)the applicant’s *bona fide intention* to *use the mark in commerce*;

(C)that, to the best of the verifier’s knowledge and belief, the facts recited in the application are accurate; and

(D)that, to the best of the verifier’s knowledge and belief, *no other person has the right to use such mark in commerce either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods of such other person, to cause confusion, or to cause mistake, or to deceive.*

Unfortunately, you would lack requisite bona fide intention and good faith. Additionally, the company would likely have prior existing rights under common law.

Even if your application proceeded through to registration, an experienced Trademark Attorney would likely succeed in a Cancellation proceeding via USPTO Trademark Trial and Appeal Board. Further, you could be liable for considerable expenses.

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