A mark an employee first uses on the job belongs to the employer

When an employee conceives a mark before taking a job but the mark is finished and first used in commerce while the employee works there, the employer is presumed to own it. The decision applies the employer-employee presumption the Board adopted in DowntownDC (TTAB 2024), drawn from Scranton Plastic Laminating (TTAB 1975), to a mark the employee brought in as an idea. It also states the standard for rebutting that presumption and declines to extend the Lyons factors from group-membership disputes to an ordinary employee (at 33–39 & n.136).

The rule

Only the owner of a mark may file a use-based application, and an application filed by a non-owner is void (at 28). Ownership starts with use, not with invention: designing a symbol creates no trademark rights, and registering a domain name, standing alone, does not either (at 29–30, 36–37). Between employer and employee, ownership turns on who first used the term as a mark and whom it identifies (at 37, quoting McCarthy § 16:36).

Where a mark is created and used within the scope of employment, the employee's use is presumed to have been made on the employer's behalf, and the goodwill goes to the employer (at 39). Scope of employment follows Restatement (Third) of Agency § 7.07; the Board treated promotional work for a law firm as squarely within an attorney's employment, even without a contract requiring the attorney to create marks (at 35). The employee may rebut the presumption with "competent and convincing proof," which the Board read as preponderant evidence, not clear and convincing evidence (at 39 n.136).

The Lyons framework (the parties' objective intentions, whom the public associates with the mark, and to whom it looks for quality) applies to a member leaving a group. The Board held it inapplicable to an associate who was neither a founder nor a shareholder, though it weighed the same arguments in deciding whether the presumption was rebutted (at 33–34, 40–42).

The opinion marks its own limits. It notes McCarthy's view that a person who already sold goods under a mark before employment remains its owner (at 34–35). The parties had no written agreement on ownership or employment, so the Board decided from conduct (at 28–30). An oral-license theory raised first in the brief was not considered (at 25–27).

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What it changes

For practitioners, the evidentiary weight sits in the record of who paid, who controlled the project, and how the first uses identified the source. Business cards, slide decks and websites that name the employer will usually point to the employer. In the editors' view, the presumption makes employment and intellectual-property agreements the practical place to settle ownership, since informal emails were given little weight here (at 31–32, 40–41).

For brand owners, the editors' reading is this: a person who means to keep a brand through a change of job is far better placed after using it in commerce in their own name before joining, or with a written agreement on ownership. Employers can rely on the presumption, but a written policy removes the dispute.

The case

An associate sketched a Lady Justice holding a baby and registered birthjustice.com before joining a law firm as its birth-injury specialist. The firm hired and paid its regular designer to finish the logo, and its first use was on her firm business cards at a conference in October 2018. In December 2020, while still employed, she filed a use-based application in her own name (slip op. at 8–23). Her own payments for cards, the domain and promotional items did not rebut the presumption, and the opposition was sustained on non-ownership (at 39–43). Fraud and likelihood of confusion were not reached (at 43 n.142).

Data angle: the record used Wayback Machine captures to date the logo's appearance on the firm's site and the domain redirect (at 22 & nn.103–104).