Claim of Ownership May Be Based on Use By Related Companies

In an application under §1 of the Trademark Act,

15 U.S.C.

§1051

, an applicant may base its claim of ownership of a mark

on:

(1) its own exclusive use of the mark;

(2) use of the mark solely by a related company

whose use inures to the applicant’s benefit (

see

TMEP

§§1201.03–1201.03(e)

); or

(3) use of the mark both by the applicant and by a

related company whose use inures to the applicant’s benefit

(

see

TMEP

§1201.05

).

Where the mark is used by a related company, the owner

is the party who controls the nature and quality of the goods sold or services

rendered under the mark.

See

15 U.S.C.

§1055

. The owner is the only proper party to apply for

registration.

See

15 U.S.C. §1051(a)

;

Moreno v. Pro Boxing Supplies,

Inc.

, 124 USPQ2d 1028, 1036 (TTAB 2017) (finding that a mere licensee

cannot rely on licensor's use to prove priority). See

TMEP §§1201.03–1201.03(e)

for

additional information about use by related companies.

The examining attorney should accept the applicant’s

statement regarding ownership of the mark unless it is clearly contradicted by

information in the record.

In re L. A. Police Revolver &

Athletic Club, Inc.

, 69 USPQ2d 1630,

1634 (TTAB 2003).

The USPTO does not inquire about the relationship

between the applicant and other parties named on the specimen or elsewhere in the

record, except when the reference to another party clearly contradicts the

applicant’s verified statement that it is the owner of the mark or entitled to use

the mark. Moreover, where the application states that use of the mark is by a

related company or companies, the examining attorney should not require any

explanation of how the applicant controls such use.

The provisions discussed above also apply to collective

and certification marks, except that, by definition, collective and certification

marks are not used by the owner of the mark, but rather the marks are used by its

members/authorized users under the control of the owner.

See

15 U.S.C. §§1053

,

1054

;

TMEP §§1303.02(a)

,

1304.03(a)

,

1306.01(a)

lanation of how the applicant controls such use.

The provisions discussed above also apply to collective

and certification marks, except that, by definition, collective and certification

marks are not used by the owner of the mark, but rather the marks are used by its

members/authorized users under the control of the owner.

See

15 U.S.C. §§1053

,

1054

;

TMEP §§1303.02(a)

,

1304.03(a)

,

1306.01(a)

. In addition, an application for registration of

a collective mark must specify the nature of the applicant’s control over use of the

mark.

37 C.F.R. §2.44(a)(4)(i)(A)

;

TMEP §1303.01(a)(i)(A)

.

See

TMEP

§1201.04

for information about when an examining attorney

should issue an inquiry or refusal with respect to ownership.