Sharing Trademark Rights Among Partners?

[jgreb]

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 amounts 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!!

 

[SandraMSovin]

There are a couple of different issues in your question. First, the logo design itself should probably be thought of as a piece of artwork, in which case the initial right of interest is the copyright. Unless created as work for hire (and so recognized in writing), or as an employee, the copyright remains with the creator. Trademark rights won't arise until either an application is filed or the mark is used. A trademark registration must be in the name of who actually offers the goods/services under the mark, that is, who controls the use of the mark. Also, a trademark that is not yet in use cannot have ownership transferred (unless the transfer is the entire transfer of the business related to the mark). She can register the copyright in her name and then license the company the exclusive right to use the design as a trademark. That way she still can have ownership, but the company can own the trademark rights. Or, all the rights can be transferred to the company, both copyright and trademark. Or, she can be owner, with all rights licensed to the company. There really is no strict rule, but a proper ownership/rights chain is important to enforceable trademark rights. To register the mark under one name to avoid bankruptcy proceedings under the "real" name of the user isn't a strategy that I've come across before...I suggest you have some corporate papers drawn up, including addressing what will become of the mark/rights in the event of particular circumstances.