Who Owns Your Trademark? Legal Rules Every Startup Founder Should Know

Episode Summary: In this episode of Inherently Distinctive, attorney Mark Goodman dives into a deceptively simple question: Who owns your trademark? From LLCs to sole proprietors, Mark breaks down the legal nuances of trademark ownership and the real-world consequences of getting it wrong. He shares hard-earned lessons from real-life trademark disputes, including issues around ownership structure, invalid applications, and improper assignments. Whether you’re a founder, startup team member, or contractor, this episode is packed with essential advice to help you protect your brand and avoid costly missteps.

Key Timestamps:

00:00 – Introduction: Who owns your trademark? 00:40 – The legal owner of a trademark: person, business, or both? 01:06 – Why sole proprietors are legally fine—but financially vulnerable 01:53 – Protecting your personal assets through LLCs and corporations 02:24 – Why trademarks must be filed in the name of the selling entity 02:37 – Case law: The danger of filing under the wrong name 03:45 – Why incorrect trademark ownership can void your entire application 04:23 – A real-world war story: When a big brand tried to cancel a client’s trademark 05:27 – First to use vs. first to file—why U.S. law favors use 06:09 – Filing under the wrong person (e.g., the owner's son) can backfire 06:32 – Do ownership disputes ever arise between partners and employees? 07:05 – The real danger: flying blind on applications and ownership 07:40 – Mark’s process: Due diligence and checking LLC status before filing 08:58 – Transferring trademarks between entities: what to know 09:44 – The risk of “naked assignments” without goodwill 10:56 – A clean transfer: The do’s and don’ts of trademark assignments 11:17 – Freelancers and IP: Should they ever own your trademarks? 12:45 – Why lawyers (and insurers) don’t want to take equity in IP 13:34 – Contracting work-for-hire: How to ensure you retain IP rights 14:48 – Final advice: Take trademark ownership seriously from day one

About the Show:

Inherently Distinctive is a podcast featuring attorney Mark Goodman, whose practice focuses on patent law, trademark law, copyright law, and business law related to innovation. The show provides valuable insights and practical advice for businesses and individuals navigating intellectual property matters.