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

[Crane, Susan]

That Company A and Company B are under common control is not enough to show no likelihood of confusion.  It is not even enough to show use by a related company for purposes of the use of one inuring to the benefit of the other.

I would draft a robust coexistence agreement addressing as many of the factors listed in TMEP 1207.01(d)(viii) as possible:


  *   1) Whether the consent shows an agreement between both parties;
  *   (2) Whether the agreement includes a clear indication that the goods and/or services travel in separate trade channels;
  *   (3) Whether the parties agree to restrict their fields of use;
  *   (4) Whether the parties will make efforts to prevent confusion, and cooperate and take steps to avoid any confusion that may arise in the future; and
  *   (5) Whether the marks have been used for a period of time without evidence of actual confusion.

And then submit that.


Susan L. Crane
Group Vice President, Legal
Intellectual Property, Brands & Marketing

Wyndham Hotels & Resorts, Inc.
22 Sylvan Way
Parsippany, NJ 07054
O (973) 753-6455
M (973) 879-3420
Susan.Crane at wyndham.com<mailto:Susan.Crane at wyndham.com>



From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Scott Landsbaum via E-trademarks
Sent: Tuesday, October 29, 2024 12:47 PM
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,
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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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