TMEP 1201.01: Claim of Ownership May Be Based on Use By Related Companies

This is the October 2015 Edition of the TMEP

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1201.01    Claim of Ownership May Be Based on Use By Related Companies

In an application under §1 of the Trademark Act, an applicant may base its claim of ownership of a trademark or a service 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. The owner is the only proper party to apply for registration. 15 U.S.C. §1051. 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 (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 service marks, collective marks, and certification marks, except that, by definition, collective and certification marks are not used by the owner of the mark, but are used by others 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.