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

Tue Oct 29 20:09:36 UTC 2024

Thanks everyone.

Regards,
Scott

Scott Landsbaum, Inc.
323-314-7881 / f 323-714-2454
8306 Wilshire Blvd., Suite 420, Beverly Hills, CA  90211
www.scottlandsbaum.com / www.linkedin.com/in/scottlandsbaum/

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On Tue, Oct 29, 2024 at 12:37 PM Pamela Chestek via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:

> 1201.07(b)(iii)    When the Record Does Not Support a Presumption of Unity
> of Control
>
> On Tue, Oct 29, 2024, 2:34 PM Crane, Susan via E-trademarks <
> e-trademarks at oppedahl-lists.com> wrote:
>
>> 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.
>>
>>
>>
>> <https://www.google.com/maps/search/22+Sylvan+Way+%0D%0A+Parsippany,+NJ+07054?entry=gmail&source=g>
>>
>>
>>
>> *Susan L. Crane*
>>
>> *Group Vice President, Legal*
>>
>> *Intellectual Property, Brands & Marketing*
>>
>>
>>
>> Wyndham Hotels & Resorts, Inc.
>>
>> 22 Sylvan Way
>> <https://www.google.com/maps/search/22+Sylvan+Way+%0D%0A+Parsippany,+NJ+07054?entry=gmail&source=g>
>>
>> Parsippany, NJ 07054
>> <https://www.google.com/maps/search/22+Sylvan+Way+%0D%0A+Parsippany,+NJ+07054?entry=gmail&source=g>
>>
>> *O* (973) 753-6455
>>
>> *M* (973) 879-3420
>>
>> 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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>> ZjQcmQRYFpfptBannerEnd
>>
>> 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,
>> <https://www.google.com/maps/search/8306+Wilshire+Blvd.,+Suite+420,+Beverly+Hills,+CA+90211?entry=gmail&source=g>
>>  Beverly Hills, CA
>> <https://www.google.com/maps/search/8306+Wilshire+Blvd.,+Suite+420,+Beverly+Hills,+CA+90211?entry=gmail&source=g>
>> 90211
>> <https://www.google.com/maps/search/8306+Wilshire+Blvd.,+Suite+420,+Beverly+Hills,+CA+90211?entry=gmail&source=g>
>>
>> www.scottlandsbaum.com
>> <https://urldefense.com/v3/__http:/www.scottlandsbaum.com/__;!!Nf401RNTQFE14GfWW3o!l8agCKaFkKNacsNCFkuQQfVzJ40-rM9ynXs4oT_NNM1_D6vFJDvVN37bnGA_cSINBgIMY4dWtVUxRPQ3TOJ3-Bm9hbLmtZo$>
>>  / www.linkedin.com/in/scottlandsbaum/
>> <https://urldefense.com/v3/__https:/www.linkedin.com/in/scottlandsbaum/__;!!Nf401RNTQFE14GfWW3o!l8agCKaFkKNacsNCFkuQQfVzJ40-rM9ynXs4oT_NNM1_D6vFJDvVN37bnGA_cSINBgIMY4dWtVUxRPQ3TOJ3-Bm9obCEX6c$>
>>
>> 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
>> <%28323%29%20314-7881>.
>>
>> 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
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