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ARTICLE · 18 AUGUST 2017

Third Circuit Rules "McCarthy Test" Determines Ownership Of Unregistered Trademarks

Finnegan, Henderson, Farabow, Garrett & Dunner LLP
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The Third Circuit has held that where a manufacturer and its exclusive distributor have no written contract designating which party owns an unregistered trademark, the "McCarthy test," rather than the "first use test," should be used to decide ownership.

United StatesIntellectual Property
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The Third Circuit has held that where a manufacturer and its exclusive distributor have no written contract designating which party owns an unregistered trademark, the "McCarthy test," rather than the "first use test," should be used to decide ownership.

Covertech Fabricating, Inc. is a Canadian manufacturer of protective packaging and reflective insulation. TVM Building Products, Inc. distributes specialty building materials. For over fifteen years, Covertech sold numerous reflective insulation products under its rFOIL mark, which is registered in the United States. The rFOIL brands include ULTRA NT RADIANT BARRIER and ULTRA CONCRETE UNDERPAD. Covertech registered the ULTRA mark in Canada in 2010.

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