Trademark Sharing Among Partners?

[jgreb]

New York - I am starting a fashion design company with my girlfriend. She is the designer and I am handling business issues. While we will be doing an equal amount of work for the company, she designed the logo and created the name. We are preparing to register a trademark for the logo and the business name and the question has come up as to whether (i) she should own the trademark alone or (ii) we should be joint owners (we are not filing the trademark in the name of the business to avoid the trademark becoming part of the bankruptcy estate upon a company bankruptcy). My concern is that, if she owns the mark alone, upon dissolution of the company (or on ANY other day that she decides she wants to walk away from the deal) she can take the real value of the brand that we hope to create together (the name) and leave me with nothing. On the other hand, she did design the logo and it seems fair that she should be able to keep the rights to her artwork (or at least some rights greater than mine). Is it common for an entrepreneur designer to insist on owning a trademark alone or would it be typical to share the trademark even though only one person designed it? Any insight on this topic would be greatly appreciated and useful. Thank you!!What is the name of your state (only U.S. law)?What is the name of your state (only U.S. law)?What is the name of your state (only U.S. law)?

 

[justalayman]

the TM represents the business. Who or how it was created it is secondary and nearly irrelevant simply, as you stated, who ever owns the TM, in effect, owns the business as they own the brand.


share the ownership equally and take her to dinner for designing it. She created it for your (as in the collective) business, not just for her.

 

[jgreb]

Trademark Sharing Among Partners - Licensing Solution

Thanks very much for your response Justalayman. I completely agree but, expectedly, she does not. This morning, we discussed a situation in which she owns the trademark and licenses it to our company. Through the licensing agreement, the company will have exclusive use of the trademark for so long as the company exists. Accordingly, if she wants to walk away one day without good reason, the company will continue to own the rights to use the trademarked materials and she will have no ability to take the logo with her. Of course, we will need to incorporate into the Operating Agreement that she cannot dissolve the company unilaterally. Alternatively, if the company goes bust, the trademark reverts back to her. This seems to be okay since, presumably, at that point, the company has been unsuccessful and there is not much value connected to the logo/name. It seems fair that she should be the one to keep the logo/name in that instance. Thoughts? Thank you!!!

 

[divgradcurl]

A trademark is a "thing" like a copyrighted work or a patent. Until you actually start the company, and start selling a product or service using the trademark to identify the source of the goods or services, there is no trademark. Even if you go and obtain a registration, there are no "rights" until you actually start using the mark in commerce.

Once you start using the mark, and obtain rights to the mark, then what you are asking us who owns the "goodwill" associated with the mark -- in other words, who owns the reputation of the goods or services. Because that's all a trademark is -- a proxy for the value or quality of a good or service. It's not a tangible thing. The person whose name is on the trademark registration may not be the owner of the goodwill, for example.

You can't separate the trademark from the goods or services of the company in the way you envision. You and your girlfriend would be well-advised to sit down with a local attorney, who can discuss with you what your plans and concerns are, and help you draft up documentation accordingly.