Even though the main function of the trademarks is to identify and distinguish a single source of goods and services, it is possible under U.S. law for two or more parties to co-own a trademark or a service mark.
There are various reasons that can lead to joint trademark ownership.
Joint trademark ownership may occur when:
- When two or more parties can submit a mark application as joint owners or joint applicants.
- In the event of composite marks – when two or mor parties of pre-existing marks combine their marks into one single (composite) mark.
- Assignment can also lead to joint trademark ownership when a single mark is assigned to multiple parties or when it transferred to the heirs of the owner after the owner’s death.
Exploitation and maintenance of joint trademarks.
Unless a contract between the joint owners states otherwise, it is presumed that each co-owner of the mark is entitled to an equal and undivided share in the mark.
Like any other holder of a proprietary interest in a mark, joint trademark owners can license to third parties the right to use the mark, subject to their control and supervision.
Under current case laws however is not clear whether a co-owner of a mark can license or assign the rights of the mark to a third party without the consent of the other co-owners.
For this reason the joint owners of a trademark are strongly encouraged to have a well drafted trademark joint ownership agreement in place.
With regard to the maintenance of the jointly owned mark, the continued use or licensing of the mark by only one of the joint owners is sufficient to maintain the rights of all co-owners.
Under the Lanham Act an action for protection of a jointly owned registered mark can be brought by just one of the registered owners. Most courts, however, request that the rest of the co-owners joint the lawsuit.
Special considerations.
Sinse the main goal of a trademark is to serve as a single source identifier of a product or service, for the joint trademark ownership to be successful the joint owners need to ensure they are fully able to cooperate with each other and coordinate all aspects related to the exploitation of their rights in the mark.
Joint trademark ownership is possible only when the co-owners can ensure joint control over the nature and quality of goods or services that are sold or offered under the mark.
For this reason the joint owners need to make sure they have a well drafted trademark joint ownership agreement addressing all aspects of the co-owners’ rights and obligations and taking into account the concerns of consumer protection.
