A common mistake that unrepresented individuals and businesses make is designating the wrong applicant in a trademark application. An application to register a trademark must be filed in the name of the owner of the trademark. For applications that are based on use in commerce, this is the person or business that actually uses the trademark in connection with the goods or services. For applications that are based on an intent to use the mark in commerce, this is the person or business who has the bona fide intent to use the mark in commerce.
However, often an owner or officer of a company will file a trademark application in his or her own name even though it is the company that is using or intends to use the trademark. This is especially common with small and new businesses.
Unfortunately, this mistake is often fatal. As Section 803.01 of the Trademark Manual of Examining Procedure states: “If an applicant is not the owner of (or entitled to use) the mark at the time the application is filed, the application is void and cannot be amended to specify the correct party as the applicant, because the applicant did not have a right that could be assigned.”
As such, it is important that whoever is filing a trademark application ensure that the correct applicant is identified in the initial trademark application.