legal, trademarkI’m looking to apply for a trademark for my website (the name of the website). The website has been running for a while and a company was later incorporated. My question is should I: file the trademark as an individual then assign it to the company? or file as the company?
also, what should be the date of first use in commerce: the date the site was publicly launched? or the date the company was incorporated?
The general rule is that the person or legal entity that uses a trademark owns the trademark. It is not necessarily the person who designed or came up with the trademark. The firm of Bohan Mathers has a good explanation http://www.bohanmathers.com/who-owns-a-trademark.html
There are 3 ways to protect your trademark: (1) use - the mark is used in commerce with a good or service; (2) register with the state; or (3) register with the United States Patent and Trademark Office.
The lease defensible is (#1) “use”. It must be recognized as being associated with a particular good or service. This is a general recognition of your trademark by the general public. It is also the most difficult to prove.
For (#2) state registration of your trademark, the proper state forms must be filed and your trademark must meet that state’s definition of trademark. It gives you good trademark protection within the state but not a lot outside the state. Note that states may define trademark differently.
Federal registration is with (#3) the United States Patent and Trademark Office. You can file based on one of two choice. Use Based - where the trademark has already begun to be used in interstate commerce and Intent-to-Use Based - where the trademark has not begun to be used. Here is the link to United States Patent and Trademark Office http://www.dmlp.org/legal-guide/securing-trademark-rights-ownership-and-federal-registration
The date used for registration depends on how it is asked. Here is the federal definitions of the term “date” used by the United States Patent and Trademark Office http://tmep.uspto.gov/RDMS/detail/manual/TMEP/current/TMEP-900d1e225.xml
Because filing for trademark protection must be specific, it is very important to follow the rules for protection explicitly. Here are some videos that will help you fill out the forms properly. http://www.uspto.gov/trademarks-getting-started/process-overview/trademark-information-network#heading-2 I’m sure that the guidelines for the federal application would be a great help for completing the state forms.
To answer your question, if the business is the first actual user of the trademark, it should be considered as the owner. At stated above the date to be used depends on how the question is asked.
It would be more tax efficient for your assets to be owned by a business, as opposed to you personally. It makes any change of ownership, and profits related to the change of ownership to be handled in a more tax efficient manner than would be the case if they were owned by a person. In addition, transfer of ownership is easier (the business would be a single container, sell the business, and all related assets go with it).
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