Only the owner of a trademark is entitled to apply for registration. 15 U.S.C. 1051; Sock It To Me, Inc. v. Fan, Opp. No. 91230554, 2020 WL 3027605, at *2 (TTAB 2020) (quoting In re Pharmacia Inc., Ser. No. 73523579, 1987 WL 123832, at *1 (TTAB 1987)). A use-based application filed by a person who does not own the mark at the time of filing is void ab initio. Huang v. Tzu Wei Chen Food Co., 849 F.2d 1458, 1460 (Fed. Cir. 1988) (affirming Board's holding that an application was void ab initio because the applicant was not the owner of the mark on the filing date).

The owner of a mark is the entity that controls the nature and quality of the goods or services sold under the mark. See In re Wella A.G., 787 F.2d 1549, 1554 (Fed. Cir. 1986) (C.J. Nies concurring) (“the one entity which controls the nature and quality of the goods sold under the mark is the owner.”); see generally Noble House Home Furnishings, LLC v. Floorco Enters., LLC, Can. No. 92057394, 2016 WL 3357265, at *10-11 (TTAB 2016).

“Generally, the mere fact that a U.S. distributor distributes a foreign manufacturer's branded product does not, without more, give the U.S. distributor an ownership interest in the mark.” Nahshin v. Prod. Source Int'l, LLC, Can. No. 92051140, 2013 WL 6040375, at *7 (TTAB 2013); see also Roger & Gallet v. Janmarie, Inc., 245 F.2d 505, 510 (CCPA 1957) (As between a French manufacturer and its U.S. distributor, “the owner, until such time as he chose to part with his United States rights, was unquestionably the French manufacturer, located in France.”). Merely repackaging a third-party's goods with a new label bearing the third-party's mark does not give rise to ownership of the third-party's mark. See Audioson Vertriebs – GmbH v. Kirksaeter Audiosonics, Inc., Can. No. 92010726, 1977 WL 22588, at *6 (TTAB 1977) (new label affixed by distributor of Petitioner's goods “was not an indication of origin of the goods in the importer”).

A U.S. distributor for a foreign manufacturer may register a mark only if the applicant submits one of the following:

• written consent from the owner of the mark to registration in the applicant's name, or
• written agreement or acknowledgment between the parties that the importer or distributor is the owner of the mark in the United States, or
• an assignment (or true copy) to the applicant of the owner's rights in the mark as to the United States together with the business and good will appurtenant thereto.

See Fuji Med. Instruments Mfg. Co., Ltd. v. Am. Crocodile Int'l Group, Inc., 2021 WL 3286400, at *12 (TTAB 2021) (citing Trademark Manual of Examining Procedure (TMEP) § 1201.06(a) (Oct. 2018)); In re Pharmacia Inc., 1987 WL 123832, at *2 (applicant must submit an assignment or other written consent from the owner of the mark in order to demonstrate applicant's ownership of the mark in the United States). 

In Grupo Bimbo, S.A. B. de C.V. v. Baron Instruments DBA Shirin Foods, Opposition No. 91272108 (TTAB Feb. 20, 2025), the TTAB found that the Applicant's goods bearing the TAKDIS mark were foreign-produced, and not manufactured by Applicant or otherwise sold pursuant to any agreement with the foreign manufacturer. Nor was there any distribution agreement transferring ownership or giving permission to the Applicant to register the TAKDIS mark with the USPTO. 

Rather, Applicant merely purchases the TAKDIS-branded goods from third-party suppliers. While Applicant represents that it repackages the goods in its own packaging, this packaging merely displays the TAKDIS mark that already appears on the goods as purchased from the third-party distributors, and this does not create ownership rights. See Audioson, 1977 WL 22588, at *6.

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... Applicant does not acquire an ownership interest in the TAKDIS mark merely by purchasing goods already bearing the mark and reselling them in packaging it designs featuring the mark. “[I]n the absence of any [distribution] agreement, there is the legal presumption that the manufacturer is the owner of the mark.” Audioson, 1977 WL 22588 at *4. Under Audioson, Applicant's mere purchase of the goods bearing the TAKDIS mark does not give it a right to register the mark, and the presumption of ownership remains with the manufacturer. 

Accordingly, the TTAB granted summary judgment of non-ownership against Applicant and sustained the opposition.