[E-trademarks] Registration of Same Mark by Sister Companies

[Nancy Prager]

 I would file a coexistence agreement because there is a foreseeable situation where the ownership of the two companies changes, and they both would need to use the mark. 
My $.02
best,

Nancy 
    On Tuesday, October 29, 2024 at 01:49:47 PM EDT, Scott Landsbaum via E-trademarks <e-trademarks at oppedahl-lists.com> wrote:  
 
 Hello Listmates, I am a little puzzled about the correct document to file with the examiner in the following situation:
Client directly owns two sister companies A and B.  Each company registered Mark in different but related classes.  Unfortunately, company A allowed its registration to expire and had to apply for a new registration for Mark.  The examiner is citing company B's registration in refusing company A's re-application.  To overcome this refusal, is it enough to file a document stating that company A and B are under common control, or do I need to state that one company is the licensee of the other, or even file a co-existence agreement?
Client has its reasons for setting it up this way, so reorganizing the ownership of each registration isn't on the table.
Thanks.
Regards,
Scott
Scott Landsbaum, Inc.323-314-7881 / f 323-714-2454 8306 Wilshire Blvd., Suite 420, Beverly Hills, CA  90211www.scottlandsbaum.com / www.linkedin.com/in/scottlandsbaum/

NOTICE: This e-mail is intended solely for the individual or individuals to whom it is addressed and may contain confidential attorney-client privileged information and attorney work product. If you are not the intended recipient, please do not read, forward, print, copy or distribute it or any of the information it contains.  Please delete it immediately and notify us by return email or by telephone at (323) 314-7881.

IRS CIRCULAR 230 DISCLOSURE: Any discussion of tax matters contained in this or any email (including any attachments) or in any oral or other written communication is not intended to be used and cannot be used for the purpose of avoiding U.S. tax related penalties or in connection with the promotion, marketing or recommendation of any of the matters addressed in the communication.-- 
E-trademarks mailing list
E-trademarks at oppedahl-lists.com
http://oppedahl-lists.com/mailman/listinfo/e-trademarks_oppedahl-lists.com
  
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20241029/271bb37d/attachment.html>