I'm in the process of starting a clothing line and pursuing trademark registration. I have not yet formed my LLC. For priority purposes, I would like to register the trademark to be used for the clothing line ASAP. My intent is to register the trademark in my individual name, and then later record an assignment of the trademark to the LLC after formation. I am OK with the additional fees that will result. My concern is that the registration in my individual name might later affect the "shield" from personal liability that the LLC will provide (e.g., if somebody asserts trademark infringement). I appreciate any thoughts on the specific issue of whether registering in my individual name will in any way affect the protection afforded by an LLC. Appreciate thoughts on this specific issue.
To clarify, I'm pursuing an intent to use TM application. I've had a comprehensive TM search professionally performed and am advised that there should not be any issues with registration. I'm also informed that federal trademark registration is a defense, but not a bar, to infringement claims. I haven't used the mark and am just trying to minimize exposure. I am going to set up the LLC ASAP and will later assign the registered TM (after filing declaration regarding use). My concern was that if somebody wanted to assert trademark infringement claims (rightfully or wrongfully), registering the trademark in my personal name might give that claimant a basis to assert personal liability against me (again, rightfully or wrongfully) based solely on the fact that the TM is registered in my individual name (even if not being used . . . TM will not be used except by the LLC after assignment of the trademark to the LLC).
A couple of thoughts:
1. You will be personally liable for any infringement that occurs during the period when you, rather than the LLC, are selling infringing products.
2. Why not form the LLC right away? It can be done quickly and inexpensively. You might find the post at the link below helpful.
Disclaimer: This post does not constitute legal advice and does not establish an attorney-client relationship.
Both lawyers above are correct. This is just to make it clear that "first to use is first in right" under US trademark law. You don't need to register to have a trademark. So, I would recommend that you rule out as best you can any potential pre-existing, similar, and significant trademarks used in your industry prior to using your trademark.
Proviso: The above information does not constitute legal advice and does not establish an attorney-client relationship between us.
I don’t see much connection between your infringement and registration. If you’re infringing, then you’re infringing, whether you have sought to register or not. I suppose that filing might alert the other party to your use of the mark, but that is not generally a big problem. The first thing that will happen is you will get a letter from an attorney asking you to cease and desist. At that point the infringer generally promises to stop infringing, and that’s the end of it.
If you are investing major funds in advertising and marketing with the mark, you cannot be so cavalier. In that case, however, you should have obtained a “full search” from one of the trademark search houses plus an opinion of trademark counsel and have filed for the registration before you start investing in the mark. So I recommend that you set up the LLC now, get the full search immediately, and then file for the mark. Actual use will give you a common law trademark with priority over later filed marks in the area in which you have actually used the mark.
DISCLAIMER—This answer is for informational purposes only under the AVVO system, its terms and conditions. It discusses general legal principles, trends, and considerations and is not intended as specific legal advice regarding your question. Each state has different laws and the answer could be different if all the facts were known. Full evaluation of your legal situation would require personal consultation permitting an understanding of all the facts and circumstances. This answer does not establish an attorney client relationship.
(Bryant) Keith Martin