1201.03(a) Use Solely by Related Company Must be Disclosed
If the mark is not being used by the applicant but is being used by one or more related companies whose use inures to the benefit of the applicant under §5 of the Act, these facts must be disclosed in the application. 37 C.F.R. §2.38(b). See Indus. Abrasives, Inc. v. Strong, 101 USPQ 420 (Comm’r Pats. 1954). Use that inures to the applicant’s benefit is a proper and sufficient support for an application and satisfies the requirement of 37 C.F.R. §2.33(b)(1) that a §1(a) application specify that the applicant has adopted and is using the mark.
The party who controls the nature and quality of the goods or services on or in connection with which the mark is used should be set forth as the applicant. In an application under §1(a) of the Trademark Act, the applicant should state in the body of the application that the applicant has adopted and is using the mark through its related company (or equivalent explanatory wording). In a §1(b) application, the statement that the applicant is using the mark through a related company should be included in the amendment to allege use under 15 U.S.C. §1051(c) (see TMEP §§1104-1104.11) or statement of use under 15 U.S.C. §1051(d) (see TMEP §§1109-1109.18).
The applicant is not required to give the name of the related-company user, unless it is necessary to explain information in the record that clearly contradicts the applicant’s verified claim of ownership of the mark.
The applicant may claim the benefit of use by a related company in an amendment to the application. Greyhound Corp. v. Armour Life Ins. Co., 214 USPQ 473, 475 (TTAB 1982).
If the applicant and a related company both use the mark, but the applicant is relying on its own use in the application, the applicant does not have to include a reference to use by a related company. See TMEP §1201.05.