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

Tue Oct 29 18:12:45 UTC 2024

Check out In re Wella — "unity of control". There is a TMEP section devoted to this concept.

.........................................................

Simor L. Moskowitz

Westerman, Hattori, LLP

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(Member DC and MD Bars)

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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> on behalf of Paul Supnik via E-trademarks <e-trademarks at oppedahl-lists.com>
Sent: Tuesday, October 29, 2024 1:59 PM
To: for trademark practitioners <e-trademarks at oppedahl-lists.com>
Cc: Paul Supnik <paul at supnik.com>
Subject: Re: [E-trademarks] Registration of Same Mark by Sister Companies

It is more complicated.  I would think that the only way to deal with this is a coexistence agreement, if you can reasonably show that there is no likelihood of consumer confusion in that document.  I do not think licensing will work.  If one company is the licensee of another company, then, possibly one of the two companies cannot have their own registration.  I believe you can find that in the TMEP regarding sister companies.

[Paul D. Supnik 9454 Wilshire Blvd, Ste 550 Beverly Hills, CA 90212]<https://supnik.com/>

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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> on behalf of Scott Landsbaum via E-trademarks <e-trademarks at oppedahl-lists.com>
Sent: Tuesday, October 29, 2024 9:46 AM
To: for trademark practitioners <e-trademarks at oppedahl-lists.com>
Cc: Scott Landsbaum <scott at scottlandsbaum.com>
Subject: [E-trademarks] Registration of Same Mark by Sister Companies

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.
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