1201.06    Special Situations Pertaining to Ownership

1201.06(a)    Applicant Is Merely Distributor or Importer

A distributor, importer, or other distributing agent of the goods of a manufacturer or producer does not acquire a right of ownership in the manufacturer’s or producer’s mark merely because it moves the goods in trade. See In re Bee Pollen from Eng. Ltd., 219 USPQ 163 (TTAB 1983); Audioson Vertriebs - GmbH v. Kirksaeter Audiosonics, Inc., 196 USPQ 453 (TTAB 1977); Jean D’Albret v. Henkel-Khasana G.m.b.H., 185 USPQ 317 (TTAB 1975); In re Lettmann,183 USPQ 369 (TTAB 1974); Bakker v. Steel Nurse of America Inc., 176 USPQ 447 (TTAB 1972). A party that merely distributes goods bearing the mark of a manufacturer or producer is neither the owner nor a related-company user of the mark.

If the applicant merely distributes or imports goods for the owner of the mark, registration must be refused under §1 of the Trademark Act, except in the following situations:

  • (1) If a parent and wholly owned subsidiary relationship exists between the distributor and the manufacturer, then the applicant’s statement that such a relationship exists disposes of an ownership issue. See TMEP §1201.03(b).
  • (2) If an applicant is the United States importer or distribution agent for a foreign manufacturer, then the applicant can register the foreign manufacturer’s mark in the United States, if the applicant submits one of the following:
  • (a) written consent from the owner of the mark to registration in the applicant’s name, or
  • (b) written agreement or acknowledgment between the parties that the importer or distributor is the owner of the mark in the United States, or
  • (c) an assignment (or true copy) to the applicant of the owner’s rights in the mark as to the United States together with the business and good will appurtenant thereto.

See In re Pharmacia Inc., 2 USPQ2d 1883 (TTAB 1987); In re Geo. J. Ball, Inc., 153 USPQ 426 (TTAB 1967).

The Board has also found that a mere licensee cannot rely on the licensor’s use to prove priority. Moreno v. Pro Boxing Supplies, Inc., 124 USPQ2d 1028, 1036 (TTAB 2017).

1201.06(b)    Goods Manufactured in a Country Other than Where Applicant Is Located

Where a specimen indicates that the goods are manufactured in a country other than the applicant’s home country, the examining attorney normally should not inquire whether the mark is used by a foreign manufacturer. If, however, information in the record clearly contradicts the applicant’s verified claim of ownership (e.g., a statement in the record that the mark is owned by the foreign manufacturer and that the applicant is only an importer or distributor), then registration must be refused under §1, 15 U.S.C. §1051,  unless registration in the United States by the applicant is supported by the applicant’s submission of one of the documents listed in TMEP §1201.06(a).

1201.06(c)    Applicant Using Designation of a U.S. Government Agency or Instrumentality

For a mark that would otherwise be subject to a refusal under §2(a) because it falsely suggests a connection with a designation of a U.S. government agency, instrumentality, or program, such as names, acronyms, titles, terms, and symbols, but the record demonstrates that the applicant has some affiliation with the agency or program, the examining attorney must issue an information request under 37 C.F.R §2.61(b)  requiring further information as to ownership of the designation and authorization to register. If it appears that the applicant lacks authorization to register the designation in the mark, the examining attorney may refuse to register under §1 of the Trademark Act because the applicant is not the owner of the governmental designation in the mark. The mark may also be refused under §2(a) for false suggestion of a connection and under §§1 and 45 when such marks are the subject of statutory protection. See TMEP §1203.03(c)(ii) for refusals under false association for Government Agencies and Instrumentalities, TMEP §1205.01 for information about statutorily protected matter, and Appendix C for a non-exhaustive list of U.S. statutes protecting designations of certain government agencies and instrumentalities.

Disclaiming the name of, or acronym for, the U.S. government agency or instrumentality to which the mark refers generally will not overcome the refusal under §§1 and 45. See TMEP §1213.03(a) regarding unregistrable components of marks.