We all deal with a number of trademarks every day. Trademark is an IP mark or a symbol that distinguishes one’s products or services from other businesses. It is an excellent way to create a brand name that makes it easier for customers to recognize them. Since the trademark is an important asset, it is therefore important to understand that what all trademark errors are fixable and what are non-fixable or permanent. This will ensure knowledge to modify the fixable errors as soon as possible.
There are many ways in which the applicant or the trademark attorney can leave behind mistakes, such as errors in the mark, recitation of goods and services, specimens or descriptions of the mark, and errors in ownership. Some of these are common and can be corrected, while issues in ownership are difficult and sometimes cannot be rectified.
Trademark Errors: The ‘Fixables’
The issues which can be fixed after once being made in the patent application, are ‘fixable errors’. According to the Trademark Manual of Examining Procedure (TMEP 1202.02(c)), the following mistakes can be rectified.
- Issues in Tradename (if Applicant Name and Trademark is same): If the applicant puts the name of his/her business on his/her own name, which is not a legal entity, then it can be modified to state the applicant’s correct legal name.
- Issues of Operating Division Identified as Applicant: If the candidate wrongly names an operating division, which by definition is not a legal entity, as the owner, then the applicant’s name may be amended.
- Issues in Spelling: Minor mistakes, such as the use or omission of ‘The’ or ‘Inc.’, can be corrected as long as this does not result in a change of entity.
- Issues due to Variation in Application and its Entity Type: If there is an inconsistency in the owner name and the entity type, then the application can be modified to clarify the inconsistency.
- Issues regarding name: This is valid in situations where the mark is legally changed, but by mistake, its former name is listed on the application. Then, in that case, corrections can be made for the name.
- Issues due to Partnership: When a company has been created under the partnership of two business groups or individuals, and by mistake if the name of only one individual or group is reflected in the trademark, then changes can be done to include names of both the individuals and groups, in the order of precedence as required.
- Issues in Non-Existent Entity: In cases, when the party enlisted on the application is not present at the time of filing, then changes can be made to modify the name present on the application.
Trademark Errors: The ‘Non-Fixables’
The issues which cannot be fixed after once being made in the patent application, are called ‘non-fixable errors’. Mostly these include the following issues of trademark ownership.
- Issues regarding ownership of mark: In cases, where the owner of the mark is its corporate president, but in fact, the corporation or the business owns the mark. Then, the applicant or the corporate owner will no longer be the owner of the mark since there is no inconsistency in the original application between the owner name and the entity type.
- Issues in name of Predecessor: When the application was originally filed in name of an entity, and before filing it is assigned to some other entity, then, in that case, the actual owner of the mark will be the second entity after which the mark is filed.
- Issues in Joint Venture Files: Once the application is filed in the name of a joint venture and the mark is owned by the joint venture at the time of filing, then the applicant’s name cannot be amended.
- Issues regarding Sister Corporation: Once the mark is filed in the name of any sister corporation, even though it is primarily owned by its main corporation before filing, then the owner of the mark will not be changed.
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