C.F.R. » Title 37 » CHAPTER I—UNITED STATES PATENT AND TRADEMARK OFFICE, DEPARTMENT OF COMMERCE › SUBCHAPTER A—GENERAL › PART 2—RULES OF PRACTICE IN TRADEMARK CASES

37 C.F.R. § 2.38

Use by predecessor or by related companies

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(a) If the first use of the mark was by a predecessor in title or by a related company (sections 5 and 45 of the Act), and the use inures to the benefit of the applicant, the dates of first use (§§ 2.34(a)(1) (ii) and (iii)) may be asserted with a statement that first use was by the predecessor in title or by the related company, as appropriate.

(b) The Office may require such details concerning the nature of the relationship and such proofs as may be necessary and appropriate for the purpose of showing that the use by related companies inures to the benefit of the applicant and does not affect the validity of the mark.

(Sec. 5, 60 Stat. 429; 15 U.S.C. 1055) [30 FR 13193, Oct. 16, 1965, as amended at 54 FR 37589, Sept. 11, 1989; 64 FR 48920, Sept. 8, 1999; 80 FR 2310, Jan. 16, 2015]
Notes of Decisions
Cited in 6 cases, 1977–2015 · leading case: Slep-Tone Entertainment Corp. v. Kalamata, Inc.
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Slep-Tone Entertainment Corp. v. Kalamata, Inc. (2014) ilnd · cites it 2× “The disclosures that Slep-Tone was required to make in its application are governed by the PTO Trademark Manual of Examining Procedure (TMEP) and the Rules of Practice in Trademark Cases, 37 C.F.R. § 2.38 (b). The TMEP and the Rules of Practice in Trademark Cases, as the court…”
Rockland Exposition, Inc. v. Alliance of Automotive Service Providers (2012) nysd “” 37 C.F.R. § 2.38 (c). Furthermore, if the first use of the mark was by a related company and the use inures to the benefit of the applicant (as REI here claims), "the dates of first use .”
Abraham Zion Corp. v. Lebow (1984) nysd “Specifically, plaintiffs allege that Harry Lebow’s failure to indicate that the first use of his name was not by him but by LB did not comply with the application rules contained in 37 C.F.R. § 2.38 . The Patent Office Trademark Trial and Appeal Board, however, has ruled that §…”
Sound Surgical Technologies, LLC v. Leonard A. Rubinstein, M.D., P.A. (2010) flmd “37 C.F.R. § 2.38 (b); T.M.E.P. § 1201.03(a) (4th ed.”
In re Silenus Wines, Inc. (1977) ccpa “37 CFR 2.38(b) (1976). Whether the “related company” doctrine preempts general agency law concerning when the acts of a party are legally the acts of another, and whether such use by a mere agent can create registration rights, are questions we do not reach.”
Slep-Tone Entertainment Corp. v. Elwood Enterprises, Inc. (2015) ilnd “The PTO Trademark Manual of Examining Procedure (“TMEP”) and the Rules of Practice in Trademark Cases, 37 C.F.R. § 2.38 (b), govern disclosures that applicants are required to make to the PTO.”
— 37 C.F.R. § 2.38(b) — 1 case
In re Silenus Wines, Inc. (1977) ccpa “37 CFR 2.38(b) (1976). Whether the “related company” doctrine preempts general agency law concerning when the acts of a party are legally the acts of another, and whether such use by a mere agent can create registration rights, are questions we do not reach.”
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