Presumption of Mark Ownership by Manufacturer Over Distributor
For a comprehensive discussion of the issue of ownership of a trademark in various scenarios, John Welch at the TTABlog reccomends Pamela S. Chestek's article, "Who Owns the Mark? A Single Framework for Resolving Trademark Disputes," in the May-June 2006 Trademark Reporter.
The ownership of a mark as between the manufacturer of the product to which the mark is applied and the exclusive distributor of the product is a matter of agreement between them, and in the absence of an agreement, there is a legal presumption that the manufacturer is the owner of the mark. Lutz Superdyne, Inc. v. Arthur Brown & Bro., Inc., supra; Audioson Vertreibs-GmbH v. Kirksaeter Audiosonics, Inc., 196 UPSQ 453, 456 (TTAB 1977). However, that principle of law is not applicable in
cases where the exclusive distributor had pre-existing rights in the mark (Lutz Superdyne, Inc. v. Arthur Brown & Bro., Inc., supra), or where the manufacturer
was placing the mark on the product pursuant to the distributor’s instructions (In re Bee Pollen from England Ltd., 219 USPQ 163, 166 (TTAB 1983)). Moreover, it has also been held that a party need not be a manufacturer of goods in order to own and register a trademark.
The following facts clearly establish that applicant is the owner of the VISIGRAPH trademark:
- Applicant had preexisting rights to the VISIGRAPH mark before it contracted with opposer to purchase opposer’s eye movement recording device. Thus,
applicant had established goodwill in the VISIGRAPH trademark before purchasing productsfrom opposer;
- Opposer affixed the VISIGRAPH mark to the eye movement recording device at the request of applicant;
- Opposer sold the VISIGRAPH eye movement recording device in the United States solely to applicant; and,
- Applicant markets the VISIGRAPH eye movement recording device under its own trademark as applicant’s VISIGRAPH eye movement recording
Thus, the relevant consumers associate the VISIGRAPH eye movement recording device with applicant. The statement on the packaging that identify opposer as the manufacturer and applicant as the distributor does not overcome applicant’s
marketing efforts to identify applicant as the source of the VISIGRAPH eye movement recording device.
Although there is no written agreement between the parties regarding the ownership of the VISIGRAPH trademark, the testimony of Stanford Taylor
regarding the relationship between applicant and opposer, and opposer’s
November 2, 2003 e-mail (“You have allowed us to use the name Visigraph
since 1995”), convince us that the parties were operating with the understanding that applicant was the owner of the VISIGRAPH trademark.
In view of the foregoing, we are in full agreement with applicant that it is, and has been, the owner of the VISIGRAPH trademark.