Who Really Owns the Brand? Understanding Trademark Rights in the Workplace

When a catchy phrase, product name, or personal brand takes off, the question of who legally owns it can be surprisingly complex — especially when an employee, not an employer, is the creative force behind it. The viral “Tendernism” trademark dispute is only the latest example of what can go wrong when intellectual property rights aren’t clearly defined from the start.

This article breaks down the fundamental rules governing trademark ownership in employee-employer relationships, and what every business owner and creator should know before a dispute arises.

Trademark rights aren’t about who created something. They’re about who used it first — commercially and consistently.

The Foundation: What Is a Trademark?

A trademark is any word, phrase, symbol, design, or combination thereof that identifies the source of goods or services and distinguishes them from others in the marketplace. Trademarks are not just registered slogans or corporate logos — they can be catchphrases, nicknames, unique product names, or even the distinctive persona associated with a brand.

The critical thing to understand is this: trademark rights in the United States arise primarily through use in commerce, not through registration alone — and certainly not through creative authorship. The party that first uses a mark commercially, in connection with specific goods or services, generally holds the strongest claim to ownership.

The Employee vs. Employer Dynamic

One of the most common — and most misunderstood — areas of trademark law involves phrases, branding, and personas developed by employees in the course of their work. Many employees assume that because they coined a term or developed a character, they own it. The law, however, doesn’t work that way.

Unlike copyright law, which has an explicit “work made for hire” doctrine that automatically assigns authorship to an employer in many employment contexts, trademark law does not have a direct equivalent. Trademark ownership turns on use, not creation. This means:

• If an employee creates a phrase and uses it while working for a business — on the business’s premises, in connection with the business’s services, and under the business’s brand — the employer may have a strong claim to the mark.
• If the business commercially exploits that phrase in its marketing, merchandise, or operations, that use typically strengthens the employer’s claim — even if the employee coined the term.
• If no one has filed a trademark application and a third party files first on an intent-to-use basis, that third party can gain a procedural advantage at the USPTO, even if they have no genuine commercial history with the mark.

The “Tendernism” case illustrates all three of these scenarios in one story — and the outcome will shape how many small business owners and creators think about IP going forward.

Employment Agreements and IP Ownership

The single most effective tool for preventing trademark disputes between employees and employers is a well-drafted employment agreement that explicitly addresses intellectual property. Without such an agreement, disputes often come down to facts and circumstances that are expensive to litigate and difficult to predict.

A comprehensive IP clause in an employment agreement should address:

• Assignment of IP: Whether any marks, names, slogans, or content developed by the employee in the scope of their employment are automatically assigned to the employer.
• Scope of employment: A clear definition of what work falls within the employee’s role, since IP developed outside the scope of employment may remain with the employee.
• Pre-existing IP: Identification of any marks, brands, or creative work the employee brings to the role that should remain their personal property.
• Post-employment rights: Whether the employee retains any rights to use or develop related marks after leaving the company.

Absent these provisions, both employers and employees operate with significant uncertainty — and viral moments only amplify that uncertainty by making the stakes much higher, much faster.

Intent-to-Use Applications: A Race to the USPTO

The USPTO’s Intent-to-Use (ITU) application process allows applicants to file for a trademark before they’ve actually begun using it in commerce. This is a powerful tool — and, as the Tendernism case shows, it can be used strategically by third parties who have no genuine connection to the mark.

Here’s what business owners need to know about ITU filings:

• Filing an ITU application establishes a priority date, meaning the applicant’s rights are measured from the date of filing rather than the date of actual use.
• An ITU application does not, by itself, grant registration. The applicant must eventually file a Statement of Use demonstrating actual commercial use of the mark.
• If a third party files an ITU application for a mark you are already using in commerce, you can oppose the application — but you must act within the USPTO’s opposition window, typically 30 days from publication.
• Senior users — those with earlier commercial use of a mark — can ultimately prevail over a junior ITU filer, but the process can be costly and time-consuming.

The practical takeaway: don’t wait until your brand goes viral to file. Once a mark becomes culturally significant, it becomes a target.

When Employees Leave: Protecting Your Brand

When a key employee departs — especially one whose persona, voice, or creative work has become central to your brand identity — the question of what they take with them becomes critical. Employers should consider:

• Ensuring that all commercially used marks associated with the business are registered or in the process of registration before a dispute arises.
• Reviewing employment agreements to confirm IP assignment clauses are in place and enforceable under applicable state law.
• Consulting with a trademark attorney promptly when an employee departure creates ambiguity over brand ownership.
• Monitoring the USPTO’s Trademark Electronic Search System (TESS) for any third-party filings that may encroach on your marks.

Employees, on the other hand, should be equally proactive. If you have built a personal brand, developed a catchphrase, or created content that extends beyond your employer’s business, you should understand your rights before you need them — not after.

The Bottom Line

Trademark ownership is not determined by who came up with an idea, who made it famous, or who the public associates with a name. It is determined by who used it first in commerce, who has the clearest legal documentation of that use, and who acts quickly enough to protect it.

The Tendernism saga is a vivid reminder that viral success and legal ownership are entirely separate concepts. The best time to establish your intellectual property rights is before the spotlight finds you. The second-best time is right now.

Protect Your Brand Before Someone Else Does

Your brand is worth protecting. Contact Hebert-Thomas Law, PLLC today to schedule a consultation and take the first step toward securing what you’ve built.