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Who owns the Trademark: Distributor v. Manufacturer

August 11, 2015
Post by Blog Staff

The Trademark Trial and Appeal Board (TTAB) has previously held that in the absence of an agreement between a manufacturer and a distributor, there is a legal presumption that the manufacturer is the owner of the trademark. The presumption that the manufacturer is the owner of a disputed mark may be rebutted.

In determining which party has superior rights, the TTAB has looked to several relevant factors, including the following:

  1. Which party created and first affixed the mark to the product;
  2. Which party's name appeared with the trademark on packaging and promotional materials;
  3. Which party maintained the quality and uniformity of the product, including technical changes;
  4. Which party does the consuming public believe stands behind the product, e.g., to whom customers direct complaints and turn to for correction of defective products;
  5. Which party paid for advertising; and
  6. What a party represents to others about the source or origin of the product.

No one factor listed above is dispositive in determining ownership of the trademark. Additionally, the fact that one party already owns a federal trademark registration must be considered; but if it is determined that the registrant is not the owner of the mark, the registration is void.

The TTAB was recently asked to determine whether UVeritech, Inc. (UVeritech) or Amax Lighting, Inc. (Amax) was the proper owner of the trademark "UVF861‚¬. There was no written agreement between the parties regarding ownership of the trademark, and it is disputed as to whether there was an oral agreement.

Amax presently has a registration for the trademark "UVF861"and UVeritech brought this action as part of a petition to cancel Amax's trademark based on a lack of ownership.

UVeritech sells counterfeit detection devices, for example UV light devices for detecting counterfeit currency and validating licenses. In 2003, Amax began manufacturing UVF861 model light bulbs for UVeritech, the UV bulbs marked with the trademark "UVF861‚¬. Prior to 2003, Amax had not produced a UVF861 bulb, so UVeritech provided specifications, prototypes, and paid for tooling to allow Amax to supply the UVF861 bulb for UVeritech. In 2007, UVeritech began experiencing quality issues with bulbs provided by Amax and switched manufacturers, continuing to market the bulb under the trademark "UVF861‚¬. After having similar quality issues with the new supplier, UVeritech returned to Amax for production of the UVF861 bulb.

In 2011, the bulbs supplied by Amax had a 70% failure rate, and UVeritech took steps to cut ties with Amax as a supplier. Amax subsequently filed a trademark application for "UVF861"without UVeritech's knowledge, and the trademark was registered. In 2012, UVeritech filed a trademark application for "UVF-861‚¬, and was refused registration in 2013 on the basis of Amax's registration for the same trademark. This led to the current petition to cancel.

UVeritech claims that Amax manufactured goods to UVeritech's order and specification, therefore UVeritech is the owner of the trademark. Amax argues that they own the trademark because they are the manufacturer of the goods, and UVeritech is simply a distributor. After applying the above factors to the present case, the TTAB held that UVeritech was the owner of the trademark "UVF861‚¬. While there was a presumption that Amax was the appropriate owner based on the manufacturer/distributor relationship, in applying the above factors, the TTAB found that UVeritech overcame that presumption, and is in fact the true owner of the trademark. In the opinion, the TTAB emphasized the fact that UVeritech designed the bulb specifically for their counterfeit detection devices, Amax failed to object to UVeritech marketing bulbs manufactured by a thrid party under the trademark "UVF861‚¬, and when there were issues with the bulbs, users complained to UVeritech not Amax. As a result of determining that UVeritch is the proper owner of the mark, the TTAB granted the petition for cancellation of the "UVF861" mark.

This case highlights the potential trademark problems that arise when more than one party is involved in developing good or services, and underscores the importance of effective agreements in place regarding intellectual property that is developed in the context of joint business ventures.

The full opinion can be found here.


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The attorneys of McKee, Voorhees & Sease, P.L.C. designed this blog as an informational and educational resource about intellectual property law for our clients, other attorneys, and the public as a whole. Our goal is to provide cutting-edge information about recent developments in intellectual property law, including relevant case law updates, proposed legislation, and intellectual property law in the news.

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