When companies are closely related, they often want to share or use similar trademarks. A parent company may own multiple subsidiaries, or two sister companies may operate under the same umbrella brand. But when it comes to trademark law, the United States Patent and Trademark Office (USPTO) doesn't simply assume that related businesses operate as one.
To overcome certain trademark refusals—especially when the USPTO believes there may be a likelihood of confusion between marks—companies sometimes rely on a legal doctrine known as unity of control. Proving unity of control allows related entities to be treated as a single source, ensuring that their trademarks are not rejected simply because two technically separate businesses use them.
So, how do you prove unity of control between related companies? Let's break it down step by step.
What Is Unity of Control in Trademark Law?
At its core, unity of control means that two or more related companies function as one entity when it comes to trademarks. The USPTO recognizes unity of control when:
- One entity has the clear authority to control the nature and quality of goods or services offered under the trademark.
- There is centralized decision-making for brand management, enforcement, and licensing.
- Customers perceive the marks as coming from a single source, even if multiple corporate entities are involved.
It's important to understand that common ownership does not automatically equal unity of control. Just because two companies are owned by the same parent does not prove that one actually controls the trademark use of the other.
This distinction is why evidence is so critical.
When Do Companies Need to Prove Unity of Control?
There are several situations where proving unity of control becomes essential.
Sister Corporations Owned by a Parent Company
Imagine two subsidiaries both owned by a common parent. Even if both are wholly owned by the same parent, the USPTO requires proof that one subsidiary actually has authority over the other's trademark decisions. Without this, the marks could be seen as confusingly similar.
Overlapping Officers or Directors
Two businesses might share executives, directors, or shareholders. But unless there's evidence that those overlapping individuals control branding decisions across both entities, unity of control won't be assumed.
Affiliates and Subsidiaries Using Similar Marks
Sometimes affiliates or subsidiaries want to use related trademarks as part of a brand family. To avoid a likelihood of confusion refusal, the applicant must demonstrate how trademark policies and decisions flow through a central authority.
Legal Consequence of Failing to Prove
If unity of control is not proven, the USPTO can refuse the application on the grounds that consumers might think the marks belong to different sources. This can delay registration and create expensive legal obstacles.
What Evidence Does the USPTO Require?
The USPTO places the burden of proof squarely on the applicant. Here's what typically strengthens a unity of control argument:
Detailed Explanation of Control
The applicant should clearly explain who manages the trademark activities, including:
- Who authorizes trademark use
- Who enforces against infringement
- Who maintains quality standards for goods or services
Affidavits or Declarations
Sworn statements from officers, directors, or controlling parties carry significant weight. These documents should go beyond vague claims and specifically outline how one entity governs the trademark use of another.
Documentary Evidence
Supporting evidence is critical. Examples include:
- Corporate charts showing ownership and reporting structure
- Licensing or trademark use agreements that show one entity granting authority to another
- Policies or contracts governing brand management, quality control, and enforcement
Case References
Past rulings give applicants guidance:
- In re Pharmacia Inc. (1987): Common parent ownership alone was not enough—proof of control was required.
- Greyhound Corp. v. Armour Life (1982): Similar ruling, stressing the need for evidence of centralized control.
- Pneutek, Inc. v. Scherr (1981): Demonstrated that overlapping shareholders or directors don't automatically create unity of control.
Together, these cases reinforce that the USPTO requires clear, documented proof—not assumptions.
Common Mistakes When Trying to Prove Unity of Control
Many applicants stumble because they underestimate the burden of proof. Here are frequent missteps:
- Relying only on common ownership: A shared parent company isn't enough without evidence of actual control.
- Submitting vague statements: Saying “we operate under the same management” doesn't satisfy the USPTO.
- Forgetting documentation: Without agreements, contracts, or affidavits, the claim often fails.
- Not showing how control is exercised: Applicants must demonstrate concrete oversight, not just corporate ties.
These mistakes can lead to delays, office actions, and even refusals.
Best Practices for Demonstrating Unity of Control
The strongest unity of control cases come from companies that prepare carefully. Here's what works best:
Gather Evidence Early
Don't wait for a USPTO refusal. Collect corporate documents, contracts, and agreements that show how brand decisions are centralized.
Provide Clear Documentation
Submit corporate charts, signed licensing agreements, or policy manuals that demonstrate one entity's authority over trademark use.
Use Declarations Strategically
Sworn affidavits from officers, general counsel, or brand managers carry weight. These should specifically describe the decision-making process and control mechanisms.
Show Quality Control Procedures
Explain how the parent or controlling company enforces quality standards across subsidiaries or affiliates. This directly ties to consumer protection, a key focus for the USPTO.
Consult with Experienced Counsel
Trademark law is technical. A skilled IP attorney can help prepare evidence that meets USPTO requirements and anticipate objections.
Final Thoughts on Proving Unity of Control
Proving unity of control between related companies is more than just showing shared ownership. The USPTO requires detailed, documented evidence that one entity truly governs the trademark use of another.
Whether your business operates as sister corporations, subsidiaries, or affiliates, you'll need to demonstrate how brand decisions are centralized and quality is maintained. Affidavits, corporate agreements, and clear explanations can make all the difference.
Failing to prove unity of control risks refusals, delays, and added costs. But with the right preparation, you can overcome these challenges and secure stronger trademark protection.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
