On Summary Judgment TTAB Sustains Opposition: Applicant Merely Re-packaged Branded Goods and so Does Not Own the Mark

The Board granted Grupo Bimbo's motion for summary judgment in this opposition to registration of the mark TAKDIS for "Fruit rolls, fruit bars, fruit leather, lavashak in the nature fruit layers, fruit-based organic food bars." Bimbo claimed a likelihood of confusion with its mark TAKIS for snack products, but during discovery it amended its notice of opposition to add a claim that Applicant Baron Instruments did not own the TAKDIS mark. The Board entered judgment on that nonownership claim. Grupo Bimbo, S.A. B. de C.V. v. Baron Instruments DBA Shirin Foods, Opposition No. 91272108 (February 20, 2025) [not precedential] (By the Board).

Under Section 1 of the Trademark Act, only the owner of a mark is entitled to apply for registration. A use-based application filed by a person who does not own the mark at the time of filing is void ab initio.

There was no dispute that the goods bearing the TAKDIS mark were not manufactured by Applicant Baron or otherwise sold pursuant to any agreement with or permission from the manufacturer. Rather, Baron merely purchased the TAKDIS-branded goods from third-party suppliers. Although Baron testified that it repackages the goods in its own packaging, which packaging displayed the TAKDIS mark that already appears on the goods as purchased from the third-party distributors, this did not create ownership rights in Baron. See Audioson Vertriebs – GmbH v. Kirksaeter Audiosonics, Inc., Can. No. 92010726, 1977 WL 22588, at *6 (TTAB 1977).

Baron claimed that it had directed suppliers to obtain products bearing the TAKDIS mark. It then designed the wrappers and labels for its products bearing the mark, and it controlled the subsequent sale of those goods in commerce. The Board was unmoved. "Contrary to Applicant’s assertions, 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. Applicant has failed to come forward with any other evidence to rebut this presumption.

And so, the Board sustained the opposition on the nonownership ground, declining to reach the Section 2(d) issued.

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TTABlogger comment: I guess one could say that the applicant was "Baron" of trademark rights.

Text Copyright John L. Welch 2025.