[E-trademarks] 2(d) and unity of control

[Katherine Koenig]

I hope your week is off to a good start.  I'm looking for an example of how much information is required to establish unity of control where an applied-for mark and cited application have different owners, but each of those owners is owned by a third company.

Junior application = Company 1
Senior application = Company 2
Company 1 and Company 2 are both owned by Company 3.  To my knowledge, Company 1 does not control the activities of Company 2, or vice versa.  Company 3 controls the activities of both Company 1 and Company 2.

How much evidence is needed to show unity of control here?  The TMEP makes it sound like one of the "sister companies" should control the other, but not where a third company controls both.

TMEP 1201.07(b)(iii) states that "if both the applicant and the registrant are wholly owned by a third common parent [as is the case here], the applicant would have to provide detailed evidence to establish how one sister corporation controlled the trademark activities of the other to establish unity of control to support the contention that the sister corporations constitute a single source. See In re Pharmacia Inc., 2 USPQ2d 1883 (TTAB 1987) ; Greyhound Corp. v. Armour Life Ins. Co., 214 USPQ 473 (TTAB 1982) . Likewise, where an applicant and registrant have certain stockholders, directors, or officers in common, the applicant must demonstrate with detailed evidence or explanation how those relationships establish unity of control. See Pneutek, Inc. v. Scherr, 211 USPQ 824 (TTAB 1981). The applicant's evidence or explanation should generally be supported by an affidavit or a declaration under 37 C.F.R. §2.20<https://tmep.uspto.gov/RDMS/TFSR/current#/current/r-542e2b4b-4c16-406a-8aa3-9d26aadeb358.html>.

Best regards,

Katherine

Dr. Katherine Koenig
Registered Patent Attorney
Koenig IP Works, PLLC
2208 Mariner Dr.
Fort Lauderdale, FL 33316
(954) 903-1699
katherine at koenigipworks.com<mailto:katherine at koenigipworks.com>

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