Global Trademark Resources Print Page Page Image Current IssueArticle ArchiveTMR Search May-June, 2006 Vol. 96 No. 3 Back to TMR Main Page Who Owns the Mark? A Single Framework for Resolving Trademark Ownership Disputes By Pamela S. Chestek When a band breaks up, a joint enterprise dissolves, or a manufacturer-distributor relationship ends, one significant question may be exceedingly difficult to resolve: who owns the trademark? Examination of current case law demonstrates that courts are resolving trademark ownership questions unpredictably and inconsistently. For example, some courts have ignored the fact that a suit is really about ownership of one trademark and have treated the suit as a dispute involving two different marks that are owned by two different entities. Some courts have treated the trademark as a bare property right that can be bargained for without considering the consumer’s stake in the question. Other courts have considered it to be merely a question of ownership of the controlling share of stock. There is one particular area of trademark law in which ownership questions often arise: the manufacturer-distributor relationship. As a result, there is a well-settled legal framework that is used to decide which of the two parties, the distributor or the manufacturer, is the true owner of the mark. The evidentiary factors first identified in Wrist-Rocket Manufacturing Co. v. Saunders, and developed in later cases, are used to examine and weigh a wide variety of facts that have been identified as relevant to the ultimate legal conclusion. This article will suggest that this “Wrist-Rocket framework” is well-suited for resolving disputes arising in all types of situations in which two parties claim ownership of the same trademark, including the dissolution of formerly cooperative relationships, in licensing situations, and when there have been assignments. A predictable analytical framework for ownership disputes will allow the parties to assess more effectively the strength of their case before litigation, to inform their understanding on what type of evidence is probative, and to provide a logical and orderly decision-making process. Part II of the article will review some exemplar cases in which courts were forced to decide which of two competing parties should be allowed to continue using a trademark after the end of a cooperative relationship, demonstrating that presently there is no predictable jurisprudence for answering the question. Part III of the article will then review the case law developed to date to decide trademark ownership conflicts in the manufacturerdistributor arena. Part IV will show how the framework successfully balances all trademark stakeholders’ interests and will conclude with a slightly modified proposed framework to be used in any situation in which ownership of a trademark is disputed. Part V will re-examine the same cases discussed in Part II to demonstrate that the analytical framework developed in the manufacturer-distributor arena is easily adapted to these and other types of cases where identifying the true owner of a mark is required. The article concludes with the suggestion that the Wrist-Rocket factors be adopted as the universal test of trademark ownership in the United States. The Trademark Reporter is available to INTA members only. Please go to Member Login at the top of this screen to access the full article.