When your trademark application is denied because a related company already owns something similar, it’s easy to feel frustrated. But the issue isn’t necessarily the similarity of the marks—it may come down to whether you can prove that you control the entity that owns the conflicting trademark.
In trademark law, this concept is known as unity of control. If you’re dealing with multiple entities—subsidiaries, parent companies, or affiliates—understanding how to establish unity of control is crucial to moving your application forward.
Why Entity Control Matters in Trademark Law
Trademark refusals under Section 2(d) of the Lanham Act occur when the USPTO believes consumers may confuse your mark with an already registered one. This includes:
- Similar names, logos, or designs
- Overlapping goods or services
- Related commercial impressions
But what if the conflicting mark is owned by a company you also control?
In these cases, the real question becomes:
Are these two entities acting as one source in the eyes of the consumer?
If so, and you can prove it, the refusal may be lifted.
What It Means to Control the Entity
To “control the entity” means more than having influence—it involves legal and operational authority over how the other business functions, especially regarding its trademarks.
Common Signs of Entity Control:
- You own most or all of the other company’s stock
- You approve or direct branding and trademark usage
- You have decision-making authority across both businesses
- You handle day-to-day operations or management
The USPTO isn’t interested in casual connections—it wants proof that there’s a unified commercial source behind the trademarks.
Unity of Control: The Legal Doctrine
This principle was established in In re Wella A.G., a 1987 case that changed how the USPTO views related entities.
Case Snapshot: In re Wella A.G.
- Problem: Wella’s application was refused due to a similar mark already registered by another company.
- Solution: Wella submitted a declaration stating it owned nearly all of the registrant and had full control over trademark usage.
- Result: The TTAB ruled in Wella’s favor, finding there was unity of control and no likelihood of confusion.
Key Takeaways:
✅ One entity controlled the other
✅ No conflicting evidence existed
✅ USPTO accepted the declaration
Visual: What Unity of Control Looks Like
Here’s a simple diagram to illustrate how entity control might be structured:
plaintextCopyEdit [ Parent Company ]
│
┌────────────────┴───────────────┐
[ Subsidiary A - Mark Owner ] [ Subsidiary B - Applicant ]
↓ ↓
Trademarks Controlled Trademark Application Filed
When the parent company controls both, the USPTO may recognize a single commercial source, meaning no likelihood of confusion.
Proving You Control the Entity
To clear a §2(d) refusal, you need to give the USPTO more than just a family tree. You must submit a formal declaration.
What to Include in Your Declaration:
- Ownership Details: Confirm that the applicant owns substantially all of the registrant.
- Operational Control: Assert control over marketing, branding, and trademark usage.
- Unity of Source: Declare that the two entities function as one in the marketplace.
Example Language:
“The applicant owns 98% of [registrant], and exercises complete control over the selection, adoption, and use of all trademarks. Therefore, both entities operate as a single source with respect to the mark in question.”
Important Notes:
- Submit an affidavit or declaration with the application
- Sign it under penalty of perjury
- Ensure no public evidence contradicts your claim
- Special Case: Joint Ownership Situations
- Not all relationships involve a parent company. In some cases, joint ownership may apply.
- When Joint Ownership Works:
- Applicant and registrant are listed as joint owners in USPTO records
- One party can prove authority over trademark use
- There’s no contradictory evidence showing independent operation
- This is common in:
- Family-run businesses
- Partnerships
- LLCs with multiple owners
- In these cases, a declaration stating that both parties act under one decision-making process may suffice.
Examples & Case Studies
In re Wella A.G. (Again)
Wella’s successful argument was based on a declaration—not a complex legal battle. The simplicity of their statement and clarity of ownership helped them win.
Hypothetical Example: BioFit & BioLabs
- BioFit Inc. owns 100% of BioLabs LLC
- BioLabs owns the trademark “BioLabs Natural”
- BioFit files for “BioFit Natural”
- USPTO issues a §2(d) refusal
- BioFit submits a declaration that they control BioLabs’ use of marks
- Result: Unity of control accepted, application approved
When Control Isn’t Enough
Even with a declaration, your application can still be denied if:
Common Pitfalls:
- Inconsistent Public Records: If business filings show separate operations
- Licensing Issues: If a third-party licensee controls the mark
- Insufficient Detail: Vague declarations without specific evidence
- Prior Disputes: Legal conflicts between entities may contradict unity of control
Example:
A holding company and its subsidiary both use similar trademarks, but the subsidiary has independent branding strategies. This may suggest separate sources, which weakens the unity of control argument.
Best Practices for Multi-Entity Trademark Strategy
If you operate across multiple businesses, plan your trademarks accordingly:
Trademark Ownership Tips:
- Use a Holding Company: Centralize trademark ownership in one entity.
- Document Control: Maintain internal agreements showing oversight authority.
- Avoid Licensing Gaps: If licensing, include clauses about brand control.
- Monitor Public Filings: Keep ownership structures consistent across documents.
- Plan for Future Filings: Identify related marks early and prepare declarations in advance.
Internal Checklist:
- Clear organizational chart
- Up-to-date stock ownership documents
- Centralized branding decisions
- USPTO records match internal structure
- Declarations prepared before filing
Control the Entity, Control the Outcome
If you’re dealing with a trademark refusal involving a related business, don’t panic. The issue isn’t always the mark—it’s whether you can prove you control the entity behind the existing registration.
With proper documentation, a clear ownership trail, and no contradictory evidence, you can establish unity of control and move your trademark application forward.
Whether you’re expanding a family of brands, consolidating IP assets, or restructuring a portfolio—understanding and asserting control is a critical step in protecting your trademarks.
Need Help Proving Unity of Control?
At Keener & Associates, we work with businesses across industries to structure trademarks intelligently and overcome USPTO refusals. We’ll help you prepare effective declarations, review your ownership setup, and build a strong case for unity of control.
Schedule your consultation today and get clarity on your trademark strategy.
