If you own or control a corporation or limited liability company (“LLC”), it may be very tempting to put any trademarks that your company is using in your personal name. A typical business owner would usually explain their desire to personally own all trademarks like this: “I want to personally own the trademarks for more control over the company. I also want to license the trademarks to my company and collect royalties.”
While having your company’s trademarks registered to you personally may sound like a great strategy, it is not. Such a strategy is usually ill-advised and will likely jeopardize the validity of your entire trademark application (and any resulting registration) and may hamper your (and our company’s) ability to enforce the trademark and protect it against infringers in the future. Here is why.
The law demands that a trademark application be filed “by a party who is entitled to use the mark in commerce” (See, e.g., TMEP 1201).This means that whatever company is using (or intends to use) a trademark in commerce must be listed as the mark’s owner in an application, not the company’s officers or owners.
Failure to designate the correct owner in a trademark application is often fatal and cannot be corrected. Except for certain minor errors (e.g., honestly but mistakenly claiming that your company is a corporation while it is an LLC), trademark applications filed by an improper applicant are considered null and void.
You need to be extremely careful in designating the proper applicant/owner on your trademark application. Even if you single-handedly founded, own and control your own company, still, the company must be the applicant and not you personally.
A trademark can be one of the most important assets of your company. Do not undermine your own company’s success by claiming the company’s trademarks to yourself.