[E-trademarks] Unity of control--celebrity allowing use of name on products

[Pamela Chestek]

I don't know if it might help, but I have successfully invoked TMEP 
1201.03(e) where a licensee had registered the trademark, with a 
geographic qualifier, before my client, the licensor, filed its 
application. We were able to overcome the refusal by stating that the 
prior registrant was a franchisee of the junior applicant. It's not 
quite the same but the theory might be the same, they are both under the 
control of the licensor.

Pam

Pamela S. Chestek
Chestek Legal
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On 12/2/2024 2:09 PM, Kevin Grierson via E-trademarks wrote:
>
> Got a refusal with an interesting twist. Here’s the scenario: 
> celebrity (let’s say Taylor Swift) gives permission to an entity to 
> use her name for, say wine, that entity registers WINE BY TAYLOR 
> SWIFT.  Then she gives permission to a different entity to use her 
> name in connection with beer.  USPTO issues a refusal for BEER BY 
> TAYLOR SWIFT based on prior wine registration.  Ownership issues 
> aside, can you argue “unity of control” if Taylor is, in fact 
> exercising quality control over both products even though they are 
> manufactured by different entities?  The TMEP sections on unity of 
> control don’t seem to address this issue.
>
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