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that fact should not have an effect on the stand-alone value of
the trademark, in the enforcement of ownership context, it has
the effect of neutralizing the foreign registrations in DHLI’s
name. These weaknesses in the quality of DHL’s ownership of the
DHL trademark do not have the effect of making DHLI the
uncontested owner of the trademark rights outside the United
States, but would have a profound effect on a buyer’s willingness
to pay top dollar and the value of the DHL trademark worldwide.
We hold that DHL owned and controlled the worldwide rights
to the DHL trademark, but that, as discussed above, the rights
outside the United States were subject to weaknesses and
questions that would affect the quality and value of DHL’s
interest. Our conclusion and holding is also based on the
following analysis.
After dividing the DHL network into domestic and foreign
operating entities, DHL and DHLI entered into the 1974 MOA which,
in part, concerned the DHL trademark. The parties used the term
“license” to describe DHL’s agreement to allow DHLI to use the
name “DHL”. Throughout subsequent amendments of the 1974 MOA,
that terminology was not contradicted or expressly modified. For
most of the period under consideration, DHL had the ability to
terminate the arrangement, which would have contractually
prohibited DHLI from using the trademark for a period of 5 years.
In negotiating with investors interested in part or all of the
DHL network, DHL was represented as the owner of the DHL
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