This section does not address the situation where one party does not directly owns the other but owns it through an intermediate subsidiary, that is, the other party is a subsidiary of a subisdiary. In that situation there should be unity of control as well and a declaration should not be necessary. That situation should be mentioned in the section.
Chapter 1200 Substantive Examination of Applications
The TMEP says, "Color marks are never inherently distinctive," citing Wal-Mart Stores, Inc. v. Samara Bros., Inc. This is partly incorrect. Single colors are never inherently distinctive. See Qualitex Co. In contrast, no reported case prevents a color *combination* from being inherently distinctive. For example, a baby blue barbecue grill is not inherently distinctive. See Qualitex. In contrast, a baby blue and ...more »
This section should be updated with at least the three cases below that were designed as precedent of the TTAB. I also list three other cases that were not so designated that are nonetheless relevant to this section - I'm including them for the benefit of other users. In re Royal BodyCare, Inc., 83 USPQ2d 1564 (TTAB 2007) (reversing refusal to register NANOCEUTICAL, holding mark was used in a manner that creates a ...more »
I suggest implementation of a procedure to allow applications blocked by prior-pending marks to move along more rapidly once the earlier mark registers, especially in the following hypothetical situation: > On day one, Alpha files for mark ABC for shirts. > On day two, Beta files for mark ABC for shirts. The application is blocked by Alpha’s earlier application. > On day three, Alpha files for mark ABC for sweaters. ...more »
Sometimes, an entity that owns a prior registration finds that a later application for its mark is blocked by an intervening third-party registration. It submits arguments pointing out that its own earlier registration was not cited to block the intervening registration, so in fairness its new application should not be blocked by the intervening registration. Usually, such arguments are not successful, and a final refusal ...more »
New decision - relevant to unity of control section and presumably TMEP will be updated to incorporate it in time: In re Wacker Neuson SE, Serial No. 79060553 (T.T.A.B. December 28, 2010) [precedential] (reversing a 2(d) refusal when the applicant and owner of the cited mark were related in a corporate family (wholly owned subsidiaries of a joint parent)).