TMEP 1201.07(b)(ii): Joint Ownership or Ownership of Substantially All of the Other Entity

October 2017 Edition of the TMEP

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1201.07(b)(ii)    Joint Ownership or Ownership of Substantially All of the Other Entity

Either Applicant or Registrant Owns Substantially All of the Other Entity. In Wella, the applicant provided a declaration stating that the applicant owned substantially all of the stock of the registrant and that the applicant thus controlled the activities of the registrant, including the selection, adoption, and use of trademarks. In re Wella A.G., 5 USPQ2d 1359, 1361 (TTAB 1987), rev’d on other grounds, 858 F.2d 725, 8 USPQ2d 1365 (Fed. Cir. 1988). The Board concluded that this declaration alone, absent contradictory evidence, established unity of control, a single source, and no likelihood of confusion. Id. Therefore, if either the applicant or the registrant owns substantially all of the other entity and asserts control over the activities of the other entity, including its trademarks, and there is no contradictory evidence, the examining attorney should conclude that unity of control is present, that the entities constitute a single source, and that there is no likelihood of confusion under §2(d). In such a case, the applicant should generally provide these assertions in the form of an affidavit or declaration under 37 C.F.R. §2.20.

Joint Ownership. The examining attorney may also accept an applicant’s assertion of unity of control when the applicant is shown in USPTO records as a joint owner of the cited registration, or the owner of the registration is listed as a joint owner of the application, and the applicant submits a written statement asserting control over the use of the mark by virtue of joint ownership, if there is no contradictory evidence.