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Do I need an attorney to file a Petition to Cancel a Supplemental Trademark?
Anonymous3 views4 answers
My 3-partner LLC was dissolved in August 2013. Dissolution agreement dictates I got the Brand. During our dispute, my partners registered a Supplemental Trademark of our company name under our now-dissolved LLC without telling me, and upon dissolution, failed to list it as a separate asset. So I consider it part of the Brand. They refuse to negotiate reasonable terms to sign a Trademark Ownership Agreement. I feel I have a good case to file a Petition to Cancel (since it belongs to a now-dissolved LLC) and then re-register the name. $625 TM Office fees are acceptable, but $$$$ for an attorney is not. Do I need an attorney to file a Petition to Cancel? And if they choose to defend the TM, would I be stuck in an expensive court battle? Truth is it's not worth more than, say, $1,000 to me.
A company name forms part of the company's "brand." A trademark registration for that name is merely the registration of the rights in that name -- rights which you apparently were granted by your Dissolution Agreement. If the owner of that registration is the now-defunct LLC then it seems to me that YOU, by contract, are the successor to the rights in that registration and can, without the former LLC member's input, simply record with the Trademark Office an assignment of the registration from the LLC to you [or, preferrably, to a company you have formed]. The other former members of the LLC would be in breach of the Dissolution Agreement if they interfered with that process. In short, you don't want to cancel the registration -- you want to own it.
Before you do ANYTHING however you need to pass all of this by your own trademark attorney. There are very definitely more facts that are in play that you have not disclosed [and should not disclose in any public forum]. Good luck.
You are not required to have an attorney but you won't win without one. If this is only a $1000 issue, then it is not worth fighting.
Further, I do not think your remedy is a petition to cancel. Rather, your remedy is a state court action for fraud, breach of contract, violation of the terms of the dissolution etc.
For $1000, you need to go to small claims court or forget this mark and get a better one. My guess is choosing a better one is wiser. Let your partners proceed ahead with a mark that is so indistinctive it had to be put on the Supplemental Register. Get yourself a new one that can be on the Principal Register instead. Likely you can do that for around $625 and be much better off in the long run.
You could file a Petition to Cancel, but expect it to be a $10,000 minimum proceeding, and much, much more if contested. There are many better options, as just noted. Without an attorney, you will lose the cancellation action if the other partners hire an attorney.
A Supplemental Registration is not worth much in this type of situation anyway and indicates the mark is not distinctive, generally because of descriptiveness. Likely, the mark, is not worth the cost.
You have, I fear, very poor business judgement if $$$$ for an attorney is not acceptable and if you had anything to do with picking an indistinctive mark that had to go on the Supplemental Register. Failure to have an attorney is likely why you are in this mess.
Clients of the attorneys responding to this question seldom have such conflicts. An attorney is what you need to get you out of the mess, and probably by helping you choose and register a new distinctive mark so you can start out separately with a solid legal foundation rather than this sinking quicksand you are on now. Remember the "3 Little Pigs"? Be the third one and quit being the first or second one. Build your house of bricks, there are wolves out their in this business world.
