Property, intangible

a blog about ownership of intellectual property rights and its licensing

Unintended Consequences

It may make business sense to put ownership of related trademarks in different subsidiaries.  Under In re Wella, one can generally register similar marks owned by sibling companies, as long as it’s done properly.

But In re Koolatron Corp. discloses a risk I hadn’t thought about before, that is, that the registrations won’t serve the function of preventing the registration of the same or similar marks. How is that, you say?

Miracle Exclusives, Inc. owned three trademarks for juicers and related products, MIRACLE PRO, MIRACLE ULTRA-MATIC and THE MIRACLE JUICER.  In March, 2004 it assigned two of them, MIRACLE ULTRA-MATIC and THE MIRACLE JUICER, to Miracle Products, LLC.  In December, 2007 it assigned MIRACLE PRO to Miracle Specialty Products, Inc.  (A fourth mark, MIRACLE MILLENNIUM JUICER, was not considered for purposes of the appeal, since it is about to be cancelled. Something is very confused about the “Miracle” assignments, as evidenced here, but it is not relevant to my topic.)

There examining attorney refused register of the applied for mark, MIRACLE BLENDER, on the basis that the mark was likely to be confused with the “Miracle” juicer marks and another registration for MIRACLE KITCHEN PLUS for slicers, shredders and choppers.  The examining attorney argued that there were really only two registrants for the cited marks, claiming that the two “Miracle” companies were really one entity.

Not so, says the TTAB:

There is absolutely no evidence that Miracle Exclusives, Inc., Miracle Products LLC and Miracle Specialty Products are the same or closely related entities. Contrary to the examining attorney’s contentions, we must treat these entities as entirely independent. The fact that the original registrant assigned its registrations to different entities and, therefore, that the cited registrations are owned by three different entities, must be considered in determining, below, the strength or weakness of the respective marks.

. . . .

There is no doubt that all of these five marks are somewhat similar to each other. However, we find that, in view of the weakness of the respective marks and the coexistence on the Register of four MIRACLE marks owned by three entities for the same or closely related goods, the differences between applicant’s mark and each of the cited registered marks are sufficient to permit their coexistence on the Register.

Would it have been different if the four senior marks were owned by two entities instead of three?  Maybe not, but maybe.

In re Koolatron Corp., Ser. No. 76692281 (TTAB Sep. 28, 2010).

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