IP Tech Knowledgy

When filing trademark applications or submitting maintenance documents for a registration, some mistakes can be corrected, and others may imperil the registration. An incorrect owner’s name becomes tricky.

In many instances, the United States Patent and Trademark Office is unyielding and certain statements or amendments are irreversible. More substantive mistakes are often not fixable and could void the application/registration or limit future rights, such as misstating or unintentionally deleting wording in the identification of goods and services, or material differences in the drawing of the logo. Conversely, obvious typographical errors, such as contact information, can be amended.  
 
When identifying the owner of the mark, there are nuances as to whether mistakes can be corrected.  If a word in the owner’s name is incorrect, or contains a typographical error, or the corporate indicia is misstated, such as listing “LLC” instead of “Inc,” the analysis gets fairly granular. An applicant or registrant can usually correct the owner’s name in a filing if the mistaken name was a trade name it used, or the name used before a name change, or was an obvious clerical error, or identified a group of owners that were actually operating as an entity. If the naming mistake does not identify a different entity, then the corrective filing is usually accepted.  A mistake cannot be corrected if the name listed is a corporate affiliate, or prior owner that assigned the mark. The core of the test is whether the same legal entity owns the mark once the error is corrected.  If, by happenstance, the incorrect name identifies a different entity incorporated in the same state, then the error cannot be fixed because the name on the document identifies a different entity. Thus, sometimes there is a little luck in whether the mistake is fatal or not. While the filer should be careful about identifying the party in its filing, an accidental misnaming may not be fatal.

Ned T. Himmelrich
410-576-4171 • nhimmelrich@gfrlaw.com