- 91 - DHL’s consent. DHLI, however, caused registrations of the DHL trademark in numerous countries in which the DHL network provided services. Those registrations were in the name of DHLI and/or its related international entities and did not reflect that DHL owned or licensed the trademark. In addition, DHLI’s general counsel contended, in spite of written agreements to the contrary, that DHLI owned the trademark rights outside the United States because of DHLI’s foreign registration of the trademark. With this somewhat generalized background, we consider the positions of the parties and their experts on the question of ownership of the DHL trademark. Petitioners contend that DHL owned the rights inside and DHLI owned them outside the United States. Respondent contends that DHL owned the worldwide rights before the transaction with the foreign investors. Respondent makes a three-point argument in support of the position that DHL owned the worldwide rights in the trademark. First, respondent argues that, as a matter of trademark law, DHLI was contractually cast as a licensee and that the requisite control existed as between the licensor and licensee to maintain and perfect DHL’s trademark ownership. Second, respondent argues that petitioners may not disavow the form they chose and that the 1974 MOA, subsequent amendments, and other documentation placed ownership in DHL. Finally, if we find that the requisites for trademark ownership were not extant, respondent argues that thePage: Previous 81 82 83 84 85 86 87 88 89 90 91 92 93 94 95 96 97 98 99 100 Next
Last modified: May 25, 2011