Case Law as a Guide to Trademark Ownership, Licensing and Enforcement

Under common law, ownership is conferred through first use of a trademark– including use by a licensee. Recent case law can help to determine which party has the right to enforce the licensed mark where an infringement suit arises.

There are numerous benefits to having a federal trademark registration. The registration constitutes prima facie evidence of:

• the validity and registration of the relevant mark;
• the registrant’s ownership of the mark; and
• the registrant’s exclusive right to use the mark in connection with the registered goods or services.

However, trademarks are unlike other forms of intellectual property in that a party acquires rights in a trademark only through commercial use. The party that first appropriates the mark through use, and for which the mark serves as a designation of source, acquires superior rights to it. As a result, the presumption of ownership conferred by a federal registration is rebuttable.

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This article first appeared in World Trademark Review issue 73, published by Globe Business Media Group – IP Division. To view the issue in full, please go to www.WorldTrademarkReview.com.