30
Mar/05

Successfully Contesting Incontestable Registrations


Foreign manufacturer allows (controlled) U.S. distributor to register trademark in its own name.  Manufacturer sells control in distributor.  These stores rarely have happy endings.  Ultimately, foreign manufacturer is able to overcome distributor’s incontestable registration by showing prior nationwide common law use.

Practice point: Don’t let distributors register your trademark in its name.  Alternate point:  when you sell control in your distributor, remember to get your trademark assigned back to you.

Watec v. Liu, 03-55823 (9th Circuit,  March 30, 2005).

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