Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE PHARMACIA, INC.
Serial No. 523,579
January 20, 1987
Hearing: December 9, 1986
Fred C. Philpitt for applicant
Richard Straser
Trademark Examining Attorney
Law Office 7
(Lynne Beresford, Managing Attorney)
Before Sams, Allen and Krugman
Members
Member
An application has been filed by Pharmacia, Inc., a New Jersey corporation to register RELAXIT as a trademark for a laxative preparation for rectal administration. [FN1]
The Examining Attorney has refused registration under Section 1 of the Trademark Act in the absence of a satisfactory showing from applicant that it is the owner of the mark sought to be registered. In this regard, the Examining Attorney has made final a requirement that applicant submit written consent for applicant to register the mark from the owner of the mark or submit written acknowledgement from the owner of the mark to the effect that applicant is considered to be the owner of the mark in this country.
Applicant has appealed.
The following facts are undisputed by applicant and the Examining Attorney. The mark appears on the specimens which comprise tube like containers for the goods. Appearing also on the specimens is the notation that the goods are manufactured by Pharmacia AS, Hillered, Denmark for Pharmacia (Great Britain) Ltd. In response to an inquiry from the Examining Attorney, applicant indicated that Pharmacia AS of Denmark and Pharmacia Ltd. of Great Britain are both wholly owned subsidiaries of Pharmacia AB of Uppsala, Sweden and that applicant also is a wholly owned subsidiary of Pharmacia AB, the Swedish parent corporation. Applicant further indicated that the goods are manufactured by Pharmacia AS of Denmark and that the product is sold in both Great Britain and the United States under the RELAXIT trademark.
Under Section 1 of the Trademark Act, only the owner of a mark is entitled to apply for registration. In view of the facts of record herein, the Examining Attorney, pointing to TMEP [FN2] Section 1201.04(a), notes that where a United States importer or other distributing agent for goods of a foreign manufacturer seeks to register the manufacturer's mark in the United States, it may do so provided that applicant submit an assignment to applicant of the owner's rights in the mark in the United States, together with the business and good will appurtenant thereto or that applicant submit a written consent of the owner of the mark or some other written agreement or acknowledgement between the parties that the importer or distributor is to be the owner of the mark in the United States.
In the present case, applicant acknowledges the validity of the above requirements but notes that TMEP Section 1201.04(a) specifically indicates that if the foreign manufacturer and United States importer or distributor are related companies (as applicant claims is the situation presented herein), TMEP Section 1201.02(b) is applicable. This section of the manual discusses ownership of trademarks vis-a-vis a parent and subsidiary corporation. In evaluating ownership of a mark as between a parent and subsidiary, the manual states that the decision as to whether the parent or subsidiary is to be regarded as owner of a mark for purposes of registration should be made between the parties themselves and that the filing of an application either by the parent or by the subsidiary corporation should be viewed by the Examining Attorney as an expression of the intention of the parties as to ownership in accord with the arrangement between them. The manual then notes that such decisions of the parties should normally be accepted by the Examining Attorney, citing Borden, Inc. v. Great Western Juice Co. et al., 183 USPQ 570 (TTAB 1974). Applicant urges the reasoning in TMEP Section 1201.02(b), while discussed in the context of a parent-subsidiary relationship, is equally applicable in evaluating ownership of a mark between two subsidiaries and that the filing of an application by either subsidiary should be looked at as an expression of the intent of the parties and such decisions should normally be accepted.
*2 The term 'related company,' as defined in Section 45 of the Trademark Act, means '. . . any person who legitimately controls or is controlled by the registrant or applicant for registration in respect to the nature and quality of the goods or services in connection with which the mark is used.' The essence of 'related company' is the control of the nature and quality of the goods and this is the basis for allowing an applicant to claim ownership of a mark based on the use by a related company. In cases where it is stated that use is by a related company which is a wholly owned subsidiary of applicant and there is no information in the application inconsistent with such a statement, the control by applicant with use by the wholly owned subsidiary inuring to applicant's benefit is presumed by the Examining Attorney from the business structure. See: TMEP Section 1201.03(b), citing cases. In cases wherein it is indicated that use of the mark is by a related company which is not wholly owned by applicant, the Examining Attorney must be satisfied that sufficient facts are in the record relative to the applicant's control over the nature and quality of the goods or services.
In the present case, applicant's attempt to fit into the 'related company' exception set forth in TMEP Section 1201.02(b) to the requirement in TMEP Section 1201.04(a) that an assignment or other written consent be placed in the record where a domestic importer seeks to register a manufacturer's mark for goods of a foreign manufacturer is not believed to be well taken. The 'related company' exception set forth in TMEP Section 1201.02(b) specifically is indicated to be applicable to ownership issues vis-a-vis parent and subsidiary corporations. The reason for this is the control over the nature and quality of the goods that naturally flows from the parent subsidiary relationship. This is absent in the case of sister corporations. We do not believe the mere fact that two sister companies are both controlled by a third company means that use by one of the sister companies automatically inures to the benefit of the other sister.
Under the circumstances, we do not believe applicant Pharmacia, Inc. is a related company for purposes of Section 45 of the Act to Pharmacia AS (Denmark), the manufacturer of the goods, such that applicant's ownership of the mark in the United States should be presumed. Accordingly, the Examining Attorney's request that applicant submit an assignment or other written consent from the owner of the mark in order to demonstrate applicant's ownership of the mark in the United States was entirely reasonable and his refusal of registration based on applicant's failure to comply with that request is not erroneous. See: In re Packard Press Corp., 1 USPQ 2d 1153 (TTAB 1986).
Decision: Since the record fails to show that applicant is the owner of the mark in the United States, the refusal of registration is affirmed.
J. D. Sams
D. B. Allen
G. D. Krugman
Members, Trademark Trial and Appeal Board
FN1. Application Serial No. 523,579 filed February 22, 1985.
FN2. TMEP refers to the Trademark Manual of Examining Procedure (1983).