Can a Claim of Ownership for a Trademark be Based on Use by Related Companies?
Yes. An applicant may base its claim of ownership of a trademark or a service mark on its own exclusive use of the mark, the use of the mark solely by a related company whose use inures to the applicant’s benefit, or use of the mark both by the applicant and by a related company whose use inures to the applicant’s benefit.
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. See 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).
The examining attorney will 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).
Please don’t hesitate to contact Keener and Associates, P.C. with any questions about trademark registration and use by related companies.