Summary. This checklist audits whether a business actually owns the trademarks it thinks it owns, and whether its paperwork would survive a challenge from a departing founder, a former distributor, a licensee, or an acquirer's diligence team. It is organized in ten phases: inventorying marks and digital assets, establishing who first used and now controls each mark, testing whether each applicant was the owner on its filing date, tracing the chain of title through assignments and corporate changes, and reviewing founder, employee, and contractor documents. Later phases cover licenses, franchises, intercompany arrangements, and distributor agreements; bands, performers, and personal-name brands; domains, handles, and marketplace accounts; maintenance and loss-of-rights risks; and remediation. Each item cites the governing authority and adds a practical note. Red-flag boxes, a deadlines table, common failure points, and a short worked example involving an acquisition of a skincare company complete the checklist.

Most companies learn who owns their brand at the worst possible moment: the week a co-founder leaves, the day a distributor is terminated, or the afternoon an acquirer's counsel sends a diligence request asking for "the complete chain of title for each registered mark." The answer is usually fine. When it is not, the defect is almost always one of a dozen predictable problems: an application filed in a founder's name, an assignment that was never signed, a subsidiary using a mark the parent registered with no license between them, a distributor holding the U.S. registration, or a logo whose copyright still belongs to the freelancer who drew it.

An ownership audit finds those problems while they are cheap to fix. Ownership follows use and control, not invention or paperwork, so the audit tests the paperwork against the facts.

How to use this checklist

Work through the phases in order for each mark that matters (start with the house mark and the top product marks). Phases 1 through 4 establish the facts and the record; Phases 5 through 8 review the relationships that most often create ownership defects; Phases 9 and 10 assess risk and fix what you find. Record the answer to each item in an audit table with a column for the supporting document, so the audit doubles as an ownership evidence file. A model evidence file index is in the Brand Ownership Toolkit: Assignment Agreements, Founder IP Clauses, and Ownership Evidence Files.

The doctrine behind each item is explained in Who Owns the Brand: Trademark Ownership Disputes Between Co-Founders, Bands, Licensees, and Distributors. If the audit turns up a live dispute, switch to Resolving a Trademark Ownership Dispute: A Practical Guide.

Who should run it: in-house counsel or outside trademark counsel, with input from the founders, finance (for sales records), operations (for quality control), and marketing (for digital assets). Budget a few days for a small company and a few weeks for a portfolio across multiple entities and countries.

Phase 1: Inventory the marks and the assets around them

  • List every mark in use, including the house mark, product and service marks, logos, slogans, trade dress, and any sub-brands, with the goods and services for each. Note: Include unregistered marks. Common-law rights arise from use and can be the most valuable rights the company has; see Trademark Rights Under Common Law.
  • Pull every U.S. application and registration from the USPTO's records, including abandoned and cancelled filings, and download each full file history from TSDR. Note: Abandoned filings often contain the earliest dates of use and the first ownership statements.
  • List state registrations, assumed-name filings, and foreign filings, including any Madrid international registration and its designations, under the rules in 37 C.F.R. part 7. Note: A U.S. extension of protection under the Madrid Protocol depends on the ownership of the international registration.
  • List every domain name, social media handle, marketplace storefront, brand-registry enrollment, and app store listing that uses the marks, with the registrant or account holder of record.
  • List the logo and packaging artwork, the designer of each, and whether there is a signed copyright assignment. Note: The trademark belongs to the user, but the copyright in a logo belongs to its author unless it is a work made for hire or assigned in a signed writing under 17 U.S.C. § 201 and 17 U.S.C. § 204.

Phase 2: Establish who first used each mark, and who uses it now

  • Identify the first bona fide use in commerce for each mark and the documents proving it: first invoice, first shipment, first public sale, first listing, first rendering of services. Authority: 15 U.S.C. § 1127 (use in commerce means bona fide use in the ordinary course of trade, not merely to reserve a right). Preparations and announcements are not use; see Aycock Engineering, Inc. v. Airflite, Inc., 560 F.3d 1350 (Fed. Cir. 2009).
  • Identify the legal person that made that first use. Look at who issued the invoice, whose bank account received payment, and whose name appeared on the packaging. Note: In founder companies, the first use often predates the entity. If several founders were selling together as co-owners, the user may have been an informal partnership.
  • Identify the legal person that uses each mark today, entity by entity, if the company operates through subsidiaries, affiliates, or franchisees.
  • Identify who controls the nature and quality of the goods and services sold under each mark: who sets specifications, approves suppliers, inspects, and handles complaints. Authority: 15 U.S.C. § 1055 (use by a related company inures to the owner that controls it); § 1127 (definition of related company). Note: Ownership follows control. A parent that registers a mark used only by a subsidiary needs to show it controls that use.
  • Record who invented the mark only as background. Coining a name does not make the coiner the owner; courts treat invention as nearly irrelevant, as in Lyons v. American College of Veterinary Sports Medicine & Rehabilitation, 859 F.3d 1023 (Fed. Cir. 2017).

Red flag: the seller and the registrant are different people. If the entity on the invoices on the filing date is not the applicant, stop and go to Phase 3 before doing anything else. That mismatch is the most common fatal defect in a trademark portfolio.

Phase 3: Test whether each applicant owned the mark on its filing date

  • Compare the applicant's exact legal name, entity type, and state of organization with the entity identified in Phase 2 as the owner on the filing date. Authority: 15 U.S.C. § 1051(a)(1) (only the owner may apply); Huang v. Tzu Wei Chen Food Co., 849 F.2d 1458 (Fed. Cir. 1988) (application by individual when the business belonged to a newly formed corporation was void).
  • Check for a newly formed entity as applicant. Was the applicant formed shortly before filing while an older entity actually used the mark? Authority: Great Seats, Ltd. v. Great Seats, Inc., 84 U.S.P.Q.2d 1235 (T.T.A.B. 2007) (two corporations with one principal were separate entities; application by the one that was not using the mark was void).
  • Classify any mismatch as correctable or fatal. Typographical errors and trade-name-for-legal-name errors in the same entity can generally be corrected; naming a different legal entity generally cannot. Authority: TMEP § 1201.02(b) and (c); 37 C.F.R. part 2.
  • For use-based filings, confirm the mark was in use for each listed good or service on the filing date. Note: A use-based application covering goods not yet sold is vulnerable as to those goods; consider deleting them before anyone else raises it.
  • For intent-to-use filings, check whether the application was assigned before a statement of use or amendment to allege use. Authority: 15 U.S.C. § 1060(a)(1) (pre-use assignment permitted only to a successor to the business to which the mark pertains, if ongoing and existing). See Intent-to-Use Trademark Applications: A Practical Guide.
  • Read every declaration in the file (application, statement of use, § 8, § 15) and note who signed, in what capacity, and whether the ownership statement was accurate. Note: A knowingly false ownership statement can support a fraud claim under the standard in In re Bose Corp., 580 F.3d 1240 (Fed. Cir. 2009), which survives the five-year bar.
  • Calculate the fifth anniversary of each registration's issue date. Authority: 15 U.S.C. § 1064 (non-ownership and priority grounds generally available only within five years). Note: This date cuts both ways. A defective registration of yours becomes harder for others to attack after five years; a defective registration of a rival becomes harder for you to attack.

Red flag: a nunc pro tunc assignment was used to "fix" the applicant. An assignment cannot make an applicant the owner on a date when it was not. In Great Seats, the Board refused to give effect to a confirmatory assignment that post-dated the filing and ran from the entity that had nothing to the entity that already owned the mark. If the file relies on such a document, plan for a new application in the correct owner's name.

Phase 4: Trace the chain of title

  • Map every transfer from first user to current owner: assignments, mergers, conversions (for example, an LLC converting to a corporation), asset sales, contributions of a sole proprietorship or partnership to an entity, and name changes. Note: A name change is not an assignment, but a merger or conversion may be. Record the right document type.
  • Confirm each assignment is in writing and signed for registered marks and applications. Authority: § 1060(a)(3).
  • Confirm each assignment transferred goodwill, expressly or through the transfer of the business to which the mark pertains. Authority: § 1060(a)(1); Sugar Busters LLC v. Brennan, 177 F.3d 258 (5th Cir. 1999) (assignment in gross to a business unrelated to the assignor's passes nothing); Marshak v. Green, 746 F.2d 927 (2d Cir. 1984) (a mark has no independent significance apart from the goodwill it symbolizes).
  • Confirm each assignment was recorded with the USPTO, and whether within three months of execution. Authority: § 1060(a)(4) (unrecorded assignment void against a later purchaser for value without notice unless recorded within three months or before the later purchase); 37 C.F.R. part 3. Recordation details are in Recording a Trademark Assignment: A Practical Checklist.
  • Check for security interests recorded at the USPTO or filed under the Uniform Commercial Code against the marks, and for releases of paid-off liens.
  • Check that TSDR reflects the current owner, entity type, and address, and that the attorney of record and correspondence address are current.
  • For confirmatory (nunc pro tunc) assignments, confirm the underlying transfer actually happened on the stated date and that the document recites the facts. Note: A confirmatory assignment is valuable when it documents a real earlier transfer, such as a founder's sole proprietorship contributed to a new LLC. It is worthless as a substitute for a transfer that never occurred.

Phase 5: Review founder, employee, and contractor documents

  • Locate a written assignment from each founder of any marks, domains, accounts, and logo copyrights used before formation, with goodwill. Note: A general IP clause in an operating agreement may not reach trademarks or pre-formation assets. Read the definition.
  • Check whether any founder filed an application or registered a domain in a personal name. If so, determine whether the founder owned the mark on the filing date (sole proprietor before others joined) or did not (the business was already joint or incorporated). Note: If the founder owned it, take a confirmatory assignment and record it. If not, file a new application in the company's name and plan for the founder's registration.
  • Check that employee agreements and policies assign or reserve to the company all marks, logos, domains, social handles, and accounts created in the course of employment. Note: Courts are still sorting out account ownership. In JLM Couture, Inc. v. Gutman, 91 F.4th 91 (2d Cir. 2024), the Second Circuit vacated an order awarding a designer's Instagram and Pinterest accounts to her former employer, rejected the district court's six-factor use-based test, and held that ownership is decided under ordinary property principles: who owned the account at creation, and whether a contract later transferred it. See also PhoneDog v. Kravitz (N.D. Cal. 2011). A written account policy is the best protection; see Employee Invention Assignment Agreements: Drafting for Enforceability Across Jurisdictions.
  • Check that agency and contractor agreements assign copyright in logos, packaging, and brand assets, and require the agency to register domains and accounts in the company's name.
  • Check personal-name brands. If a founder's name is a mark, confirm the founder's written consent to registration (required for a living individual's name under 15 U.S.C. § 1052(c)) and what the founder may do with the name after leaving. Note: Courts require a clear showing that a founder intended to sell the exclusive right to his own name, as in Madrigal Audio Laboratories, Inc. v. Cello, Ltd., 799 F.2d 814 (2d Cir. 1986).

Red flag: "Marcus filed it, but it's really the company's." That sentence describes a void application in most cases. Do not let it sit until the founder leaves.

Phase 6: Review licenses, franchises, intercompany arrangements, and distributors

Red flag: a distributor's name is on the U.S. registration. Treat it as a live dispute even if the relationship is friendly. Calendar the fifth anniversary and negotiate a written assignment or surrender now, while the relationship is good.

Phase 7: Bands, performers, collectives, and personal-name businesses

Phase 8: Domains, handles, and marketplace accounts

  • Confirm the registrant of record for each domain is the company, not a founder, employee, or agency, and that the registrar account is controlled by the company with two-factor authentication and registrar lock. Note: Domains are property; misappropriation can support a conversion claim, as in Kremen v. Cohen, 337 F.3d 1024 (9th Cir. 2003). Security practices are in the Domain Name Security and Recovery Checklist: A Practical Checklist.
  • Confirm each social account is registered to a company email address with at least two company administrators, and that a written policy reserves the account, handle, and followers to the company.
  • Confirm marketplace brand-registry enrollments are in the trademark owner's name and tied to the correct registration.
  • Identify domains or handles held by former insiders, and assess remedies, including the anticybersquatting provisions of 15 U.S.C. § 1125(d).

Phase 9: Maintenance and loss-of-rights risk

  • Docket § 8 declarations of use (between the fifth and sixth years after registration and with each renewal) and § 9 renewals (every ten years). Authority: 15 U.S.C. § 1058; 15 U.S.C. § 1059. See the Trademark Maintenance and Renewal Checklist: A Practical Checklist.
  • Confirm the § 8 declarant is the current owner. A declaration filed by a former owner after an assignment can be a problem; record the assignment first.
  • Consider a § 15 incontestability declaration for marks in continuous use for five consecutive years after registration, with no adverse decision or pending proceeding. Authority: 15 U.S.C. § 1065; 15 U.S.C. § 1115(b). Note: File it accurately. A false § 15 declaration exposes the declarant to criticism and other consequences, even though Great Concepts, LLC v. Chutter, Inc., 90 F.4th 1333 (Fed. Cir. 2023), held that fraud in a § 15 declaration is not itself a cancellation ground.
  • Identify marks not used for three or more consecutive years. Nonuse for three consecutive years is prima facie evidence of abandonment under § 1127. Authority: Silverman v. CBS Inc., 870 F.2d 40 (2d Cir. 1989) (vague intent to resume someday does not avoid abandonment).
  • Identify marks licensed without exercised control (Phase 6) and treat them as at risk.
  • Confirm Customs recordations are in the current owner's name, under 19 C.F.R. part 133.

Phase 10: Remediate

  • Where a founder or affiliate genuinely owned the mark on the filing date, execute and record a confirmatory assignment with goodwill, reciting the facts of the earlier transfer.
  • Where the applicant was not the owner, file a new application in the correct owner's name, and decide whether to keep, surrender, or let lapse the defective registration. Note: A void registration still blocks others' applications until it is cancelled or lapses, but relying on it in litigation invites a counterclaim. Plan the transition.
  • Sign intercompany licenses with quality-control provisions for every affiliate that uses a mark it does not own.
  • Amend distribution, license, and franchise agreements to address ownership, registration, and termination.
  • Sign band, founder, and employee IP agreements that cover marks, domains, accounts, and logo copyrights.
  • Transfer domains, accounts, and brand-registry enrollments to the owner.
  • Re-run the audit annually and before any financing, acquisition, or founder departure.

Deadlines and timing table

Event Deadline or period Authority
Record an assignment to protect against later purchasers Within 3 months after execution, or before a later purchase 15 U.S.C. § 1060(a)(4)
Assign an intent-to-use application freely Only after a statement of use or amendment to allege use (otherwise only with the business) 15 U.S.C. § 1060(a)(1)
Opposition to a published application 30 days from publication, extendable on request 15 U.S.C. § 1063
Cancellation on non-ownership or priority grounds Within 5 years from registration 15 U.S.C. § 1064
First declaration of use Between years 5 and 6 after registration (grace period available with fee) 15 U.S.C. § 1058
Renewal Every 10 years (with § 8) 15 U.S.C. § 1059
Incontestability declaration Within 1 year after any 5-year period of continuous use after registration 15 U.S.C. § 1065
Presumption of abandonment 3 consecutive years of nonuse 15 U.S.C. § 1127

Common failure points

  1. The founder's personal application. The single most common defect, and often fatal to the registration.
  2. The entity that did not exist yet. An application in the name of a company formed after the filing date, or a newly formed company that was not the user.
  3. The unsigned or unrecorded assignment. Especially after a reorganization or acquisition.
  4. The intercompany gap. A parent's registration used only by a subsidiary, with no license and no documented control.
  5. The distributor's registration. Friendly today, a dispute on termination.
  6. The agency's domain. Registered under the agency's account years ago.
  7. The licensee nobody supervises. A naked-licensing defense waiting to happen.
  8. The dormant mark. Three years of nonuse and a vague plan to relaunch.

Short worked example

Calder Ridge Capital is acquiring Brightwater Botanicals, Inc., a skincare company with a registered house mark, BRIGHTWATER. The audit finds that the application was filed in 2020 by Brightwater's co-founder, Dana Okafor, individually; Brightwater, Inc. was incorporated in 2019 and its invoices from that year show it as the seller. The registration issued in 2021, and its fifth anniversary falls in 2026. The domain brightwaterskin.com is registered to the design agency. Brightwater's Canadian distributor holds the Canadian registration. Two contract manufacturers make the products under written supply agreements with detailed specifications, which Brightwater enforces.

Phase 3 flags the application as likely void under Huang: the company, not Dana, was using the mark on the filing date. A confirmatory assignment from Dana would not cure it. Remediation, completed as closing conditions: Brightwater files a new application in its own name; Dana signs a declaration and a release and surrenders the 2021 registration for cancellation under 15 U.S.C. § 1057(e), which removes the citation that would otherwise block Brightwater's own application (Brightwater's common-law rights carry it in the meantime); the agency transfers the domain; and the Canadian distributor signs an assignment of the Canadian registration under its distribution agreement. The manufacturing agreements, with their specifications and audits, support Brightwater's control of quality and need no changes. Calder Ridge adds a specific indemnity for pre-closing ownership claims. Total remediation took six weeks and a modest fraction of the deal's legal budget.

This document is general information, not legal advice for any particular situation; the law changes, and the facts matter.

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