Wholly Owned Related Companies

Frequently, related companies comprise parent and

wholly owned subsidiary corporations. Either a parent corporation or a

subsidiary corporation may be the proper applicant, depending on the facts

concerning ownership of the mark. The USPTO will consider the filing of the

application in the name of either the parent or the subsidiary to be the

expression of the intention of the parties as to ownership in accord with the

arrangements between them. However, once the application has been filed in the

name of either the parent or the wholly owned subsidiary, the USPTO will not

permit an amendment of the applicant’s name to specify the other party as the

owner. The applicant’s name can be changed only by assignment.

Furthermore, once an application has been filed in

the name of either the parent or the wholly owned subsidiary, the USPTO will not

consider documents (e.g., statements of use under

15 U.S.C.

§1051(d)

or affidavits of continued use or excusable

nonuse under

15 U.S.C.

§1058

)  filed in the name of the other party to have been

filed by the owner.

See

In re Media Cent. IP Corp.

, 65 USPQ2d 1637 (Dir USPTO 2002)

(holding §8 affidavit filed in the name of a subsidiary and predecessor in

interest of the current owner unacceptable);

In re ACE III Commc'ns,

Inc.

, 62 USPQ2d 1049 (Dir USPTO 2001) (holding §8 affidavit

unacceptable where the owner of the registration was a corporation, and the

affidavit was filed in the name of an individual who asserted that she was the

owner of the corporation).

Either an individual or a juristic entity may own a

mark that is used by a wholly owned related company.

In re

Hand

, 231 USPQ 487

(TTAB 1986).