[E-trademarks] Multiple user of the same mark

[Crane, Susan]

When filing the application, he averred in a verified statement that “To the best of the signatory's knowledge and belief, no other persons, except, if applicable, concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of such other persons, to cause confusion or mistake, or to deceive.”    How was that a valid averment?  And then to use the registration so acquired to limit the rights of a prior user by arguing their use is likely to cause confusion?  Seems like an admission against interest.

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 Russell Nugent via E-trademarks
Sent: Wednesday, October 29, 2025 9:26 AM
To: e-trademarks-bounces at oppedahl-lists.com <e-trademarks at oppedahl-lists.com>
Cc: Russell Nugent <nugent at comprisingip.com>
Subject: [E-trademarks] Multiple user of the same mark

Dear Group, A family owns and operates three restaurants with very similar names (they differ in the generic elements only) and the same logo. One restaurant is owned jointly and the other two individually by members of this trio. The owners
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Dear Group,

A family owns and operates three restaurants with very similar names (they differ in the generic elements only) and the same logo.  One restaurant is owned jointly and the other two individually by members of this trio.  The owners of the jointly owned restaurant sell its assets and in the asset purchase agreement transfer all IP rights associated with the operation of that particular restaurant. After the sale/transfer, one of the trio that owns one of the other two restaurants by himself decides to register his logo.  Now that he has the registration, he wants to know what his rights are with respect to the restaurant that was sold.

Can he use the registration to prevent the buyer of the jointly owned restaurant from expanding and opening a new restaurant with the same name and logo (the asset purchase agreement does not address this issue)?  How does the use of very similar marks by three different entities that are not commonly owned affect their rights before and after the registration?

Thanks in advance,

Russell D. Nugent
Comprising IP
1213 Culbreth Dr, Ste 112
Wilmington, NC 28405
nugent at comprisingip.com<mailto:nugent at comprisingip.com> (private)
910-550-3259 (private)
contact at comprisingip.com<mailto:contact at comprisingip.com>
910-509-7131
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