The USPTO will typically issue a section 2 (d) rejection for any mark that is confusingly similar to the mark described in your trademark (“TM”) application. Often times, through a merger, sale, acquisition or reorganizations companies have different names and structures, but maintain a unity of interest in their intellectual property (such as a TM).
However, unless a proper assignment or transfer is recorded with the USPTO, a derivative version of a mark owned by a prior company will be the basis of section 2(d) rejection. Fortunately, the Federal Circuit has stated that if the applicant and the prior company are related companies that qualify as a single source of a good or service, then there is no likelihood of confusing the consumer. In re Wella A.G., 787 F.2d 1549 (Fed. Cir. 1986).
An examiners section 2(d) rejection may be overcome by filing an affidavit from the appropriate owner(s) asserting that the prior company and the applicant are related and share unity of control over their trademarks. Unless there is contradictory evidence, the Examiner will usually accept the affidavit and withdraw the USPTO’s objection to registration of your mark under section 2(d).
Understanding how to properly apply for intellectual property (trademark) rights in the face of a merger, acquisition, sale or reorganization is often crucial to the continued growth of a business enterprise.