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contracts entered into by DHL and DHLI were still enforceable, as
between them.
Petitioners take a different tack from respondent’s approach
by arguing that the arrangement between DHL and DHLI would not
meet the applicable section 482 regulations so as to require
reallocation as to that intangible asset. Petitioners also argue
that, as a matter of law, trademark rights exist separately in
each country of registration and DHLI acquired the rights by
registration and use. If we decide that DHL owned the worldwide
rights to the trademark, petitioners argue that they should be
allowed a setoff equal to the value of assistance or cost borne
by DHLI in developing the trademark rights outside the United
States. The parties provided four well-qualified experts on
trademark law.
Respondent’s expert on trademark ownership is a practicing
lawyer with 30 years’ experience, including litigation, in
intellectual property law, specializing in trademarks and unfair
competition. He concluded that, with the possible exception of
certain Central American countries, the agreements between DHL
and DHLI established DHL as the owner of the trademark rights.
His interpretation of the 1974 MOA and related agreements is that
they give DHL the ownership in the trade name and trademark, in
particular because DHLI could not assign the foreign
registrations without DHL’s consent and because of DHLI’s
obligation to cease use everywhere for 5 years upon termination
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