U.S. Code » Title 15 » Chapter CHAPTER 22— TRADEMARKS › Subchapter SUBCHAPTER I— THE PRINCIPAL REGISTER

15 U.S.C. § 1055

Use by related companies affecting validity and registration

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Where a registered mark or a mark sought to be registered is or may be used legitimately by related companies, such use shall inure to the benefit of the registrant or applicant for registration, and such use shall not affect the validity of such mark or of its registration, provided such mark is not used in such manner as to deceive the public. If first use of a mark by a person is controlled by the registrant or applicant for registration of the mark with respect to the nature and quality of the goods or services, such first use shall inure to the benefit of the registrant or applicant, as the case may be.

Notes of Decisions
Cited in 121 cases (26 in the last 5 years), 1951–2026 · leading case: Rockland Exposition, Inc. v. All. of Auto. Serv. Providers, 894 F. Supp. 2d 288 (S.D.N.Y. 2012).
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Rockland Exposition, Inc. v. All. of Auto. Serv. Providers, 894 F. Supp. 2d 288 (S.D.N.Y. 2012). · cites it 3× “15 U.S.C. § 1055 ; see also Carpenteri v.”
Slep-Tone Ent. Corp. v. Kalamata, Inc., 75 F. Supp. 3d 898 (N.D. Ill. 2014). · cites it 3× “15 U.S.C. § 1055 ; see also Teddy O’Brian’s, Inc.”
Lodestar Anstalt v. Bacardi & Co. Ltd., 31 F.4th 1228 (9th Cir. 2022). “” Lodestar asserts, by contrast, that these activities are sufficient to constitute prior use in commerce and that it therefore has priority of rights even under a first-to-use standard.”
Dep't of Parks & Re-Creation for the State of California v. Bazaar Del Mundo Inc., a California Corp., 448 F.3d 1118 (9th Cir. 2006). “The State first incorrectly contends that it need not demonstrate prior use at all, relying on its own misapprehension of section 5 of the Lanham Act, codified at 15 U.S.C. § 1055 . Section 5 provides: If first use of a mark by a person is controlled by the registrant or…”
Est. of Coll-Monge v. Inner Peace Movement, 524 F.3d 1341 (D.C. Cir. 2008). · cites it 3× “at 1131 (quoting 15 U.S.C. § 1055 ). In this case, it is undisputed that the Non-Profits were the “first users” of the marks at issue but the Estate contends that Coll controlled the Non-Profits’ use of the marks, which use therefore inured to his benefit.”
Dep Corp. v. Interstate Cigar Co., Inc. & L. S. Amster & Co., Inc., Defendants, 622 F.2d 621 (2d Cir. 1980). · cites it 2× “(See 15 U.S.C. § 1055 ). In Browne-Vintners Co.”
Rex Real Est I v. Rex Real Est, 80 F.4th 607 (5th Cir. 2023). “” 15 U.S.C. § 1055 . A “related company” is defined as “any person whose use of a mark is controlled by the owner of the mark with respect to the nature and quality of the goods or services on or in connection with which the mark is used.”
Daimlerchrysler Ag Mercedes-Benz Usa, Inc. v. Donald H. Bloom Mbz Commc'ns, Inc., 315 F.3d 932 (8th Cir. 2003). “A related company is one whose use of the mark is controlled by the registrant of the mark. It is undisputed that MBZ’s licensees are not related companies for the purposes of the statute.”
E.G.L. Gem Lab Ltd. v. Gem Quality Inst., Inc., 90 F. Supp. 2d 277 (S.D.N.Y. 2000). · cites it 2× “15 U.S.C. § 1055 . 143 . See Mortise v. United.”
S Indus., Inc. v. Stone Age Equip., Inc., 12 F. Supp. 2d 796 (N.D. Ill. 1998). · cites it 2× “Restatement (Third) of Unfair Competition § 33 notes to comment b ("Section 5 of the Lanham Act as amended in 1988, 15 U.S.C.A. § 1055 , explicitly recognizes the acquisition of trademark rights by a licensor through a first use of the mark by a controlled licensee.”
Schlotzsky's, Ltd. v. Sterling Purchasing & Nat'l Distrib. Co., 520 F.3d 393 (5th Cir. 2008). “15 U.S.C. §§ 1055 , 1127; II Joseph P. Bauer & William H.”
Othal L. Turner & On-The-Town, Inc., D/B/A Atlanta's Playboy Club v. H M H Publ'g Co., Inc., 380 F.2d 224 (5th Cir. 1967). · cites it 2× “Also, we must decide whether under the Lanham Act ( 15 U.S.C. §§ 1055 and 1127) the use *227 of the registered marks by plaintiffs’ licensees inures to plaintiffs’ benefit because such licensees are “related companies” within the meaning of the Act, by virtue of the fact that…”
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