Presumption that Manufacturer Owns Trademark Can Be Rebutted: TTAB | Practical Law

Presumption that Manufacturer Owns Trademark Can Be Rebutted: TTAB | Practical Law

In UVeritech, Inc. v. Amax Lighting, Inc., the Trademark Trial and Appeal Board (TTAB) set out the test for rebutting the presumption that, absent an agreement between a product's manufacturer and its distributor, the manufacturer is the owner of the product's trademark.

Presumption that Manufacturer Owns Trademark Can Be Rebutted: TTAB

Practical Law Legal Update 0-617-1806 (Approx. 4 pages)

Presumption that Manufacturer Owns Trademark Can Be Rebutted: TTAB

by Practical Law Intellectual Property & Technology
Published on 08 Jul 2015 • USA (National/Federal)
In UVeritech, Inc. v. Amax Lighting, Inc., the Trademark Trial and Appeal Board (TTAB) set out the test for rebutting the presumption that, absent an agreement between a product's manufacturer and its distributor, the manufacturer is the owner of the product's trademark.
On June 29, 2015, the Trademark Trial and Appeal Board (TTAB) issued an opinion in UVeritech, Inc. v. Amax Lighting, Inc. setting out the factors for rebutting the presumption that the manufacturer of a product, rather than its distributor, is the owner of the trademark for the product (Cancellation No. 92057088 (T.T.A.B. June 29, 2015)). Determining that distributor UVeritech, Inc., and not manufacturer Amax Lighting, Inc., owned the mark UVF861 for ultraviolet lightbulbs and related products, the TTAB granted Uveritech's petition to cancel Amax's federal registration for the mark.
UVeritech, Inc. sells devices that use ultraviolet bulbs to detect counterfeit currency and validate credit cards and driver's licenses. Since 2001, UVeritech has sourced ultraviolet bulbs for use in its detectors, principally from Amax Lighting, Inc. These bulbs bear the trademark UVF861.
For a short time in 2007, UVeritech stopped using Amax due to quality lapses, and then in 2011, it ended its relationship with Amax for good as a result of new, severe quality concerns that required UVeritech to issue refunds and product replacements. In 2012, when UVeritech sought a federal trademark registration for the mark UVF861 for ultraviolet lightbulbs, it learned that Amax had already registered the mark. After the USPTO denied its application, UVeritech petitioned the TTAB to cancel Amax's registration.
In the cancellation proceeding, UVeritech argued that since Amax only manufactured goods to UVeritech's order and specifications, UVeritech owned the UVF861 mark. Amax argued that, as the manufacturer of the goods, it owned the mark since UVeritech was only the US distributor of the marked UVF861 bulbs.
The TTAB explained that only the owner of a mark is entitled to apply to register it and, absent an ownership agreement between a product's manufacturer and distributor, there is a presumption that the manufacturer is the owner of a disputed mark. However, this presumption may be rebutted.
To resolve a dispute over ownership of a single, indivisible trademark, the TTAB looks at the following non-exhaustive factors:
  • Which party created and first affixed the mark to the product.
  • Which party's name appeared with the mark on packaging and promotional materials.
  • Which party maintained the quality and uniformity of the product, including technical changes.
  • Which party does the consuming public believe stands behind the product, and to whom will customers direct complaints and turn to for correction of defective products.
  • Which party paid for advertising.
  • What a party represents to others about the source or origin of the product.
The TTAB noted that no factor is dispositive. Further, since registration of a mark by someone who does not own the mark is void from inception, ownership of a federal trademark registration is also not dispositive and must be considered among the other factors.
Applying these factors, the TTAB determined that UVeritech rebutted the manufactuer-as-owner presumption, based on the following facts, among others:
  • UVeritech designed the bulbs used for its counterfeit currency detectors and controlled manufacturing specifications and technical changes.
  • UVeritech adopted the UVF861 mark in 2003 when it contracted with Amax to produce the bulbs and Amax only used the UVF861 mark when providing bulbs to UVeritech.
  • UVeritech's product literature listed it as the manufacturer of the counterfeit detector equipment that used the UVF861 bulbs and included an order form for replacement bulbs. As a result, customers approached UVeritech, not Amax, to resolve quality problems.
Ultimately, the TTAB held that, for the seller of goods to own the mark, it does not have to manufacture them. Instead, it is only necessary that one or more of the following be satisfied:
  • The goods are manufactured for it.
  • It controls their production.
  • The goods pass through its hands in the course of trade and it gives to the goods the benefit of:
    • its reputation; or
    • its name and business style.
Finding that UVeritech, rather than Amax, owned the UVF861 mark, the TTAB granted UVeritech's petition for cancellation.