Legal Question in Intellectual Property in California

Re: Trademark Application

The trademark is owned by the registered trademark owner (assuming the mark is registered which your question seems to assume). If one or more of you and your friends are listed as the owners then you are the owners -- and everyone else in the world is not. Non-owners need the owners' permission (called a license) to use it.

Understand that trademarks arise by automatically when you simply use a mark in commerce (the so-called "common law trademark"). If a company uses it this way, then the company owns it. Since you've not formed a legal entity (i.e. a corporation, a limited liability company, etc.) it is likely that, by operation of law, as to the work you've done together, you've created a partnership (sometimes called a "general partnership" to distinguish it from a "limited partnership"). Partnerships are very tricky entities due to the way that liability is spread among the partners (in essence, each partner is personally liable for the activities of all his/her partners -- a very risky situation to be in). For this reason, most commercial enterprises are corporations or LLCs -- both structures that permit their owners to be personally shielded from liability by the legal entity (an obvious benefit over the partnership form). Sometimes, typically for financial reasons, limited partnerships are used for specific business purposes but this is essentially rare especially when the members of the LP are actual living, breathing humans (and not other legal entities such as corporations, LLCs or even other LPs -- it gets complicated quick).

If I were your lawyer, I'd likely advise you and your friends to form either a corporation or, more likely, and LLC. Then, I'd advise that the LLC register the trademark with the US Patent and Trademark Office. This way, each friend (now member of the LLC) would benefit from the trademark while the legal entity (LLC) actually owns and controls it. This requires the LLC to maximize trademark's value to the LLC's owners (the friends).

Now, to cover my own ass, I must inform you that the foregoing is not legal advice, merely conversation. If, however, you're interested in obtaining legal advice, you may contact me at my office (518.697.7944).

Best of luck to you and your friends.

JF

Re: Trademark Application

If all of you are listed as the owners then you are co-owners, but it is possible to alter the ownership status by contract or assignment. The trademark registration takes up to 1 year to complete but it is more important to file it so that your mark is protected. Have a discussion with your attorney about what you want to do and he can tell you the best approach. Feel free to contact me if you do not have an attorney.

Re: Trademark Application

Applying for joint ownership of a trademark by individuals is a bit tricky as the PTO will scrutinize the application to determine whether there's a valid reason for the joint ownership. You're better off forming an entity among the parties which then applies for the trademark. While it's not complicated it does require more discussion. If you want to know a bit more, feel free to call me.