Q: Can I trademark "Rivedil USA" with an existing distribution license?

A: You likely can’t trademark “Rivedil USA” without the Italian owner’s consent, as it uses their trademark. Check your distribution agreement—using or registering the mark without permission may infringe their rights.

A: Your ability to trademark "Rivedil USA" depends significantly on the terms of your distribution agreement with the Italian company. Distribution agreements typically specify that distributors cannot "register or incorporate" the original trademark into their own registered corporate name without prior written consent from the manufacturer.

The legal presumption favors the original trademark owner. Courts generally hold that when ownership is in dispute and there's no written agreement specifying ownership, the manufacturer is presumed to be the trademark owner. This presumption can only be overcome through specific evidence demonstrating otherwise.

Adding a geographic term like "USA" to an existing trademark doesn't automatically create a distinct, registrable mark. When a geographic term is the central feature of a trademark such that the mark's primary significance is geographic rather than source-identifying, the mark will typically be refused registration.

Your distribution license is crucial here. Trademark owners are advised to include comprehensive clauses in distribution agreements that clearly establish "the ownership of the intellectual property subsisting in the products or services, the distributor's right to use such intellectual property, and the limitations of such rights."

For your situation, the most viable path would be to:

1. Review your distribution agreement to determine what rights you have regarding the trademark. Distribution relationships typically "grant a distributor the right to sell branded goods" but don't necessarily grant ownership rights to the trademark itself.

2. Consider seeking "written consent to have the U.S. importer register the mark in the U.S." from the Italian company that owns the original "Rivedil" trademark. This is one of the exceptions where a distributor might legitimately register a trademark owned by a foreign manufacturer.

3. Be aware that some distributors have "unlawfully registered" manufacturers' marks in their own names, leading to significant legal complications. It's "extremely important for supplier to register the trademark prior to entering into any distribution contract in the United States."

If you proceed without explicit permission, you risk termination of your distribution agreement and potential legal action for trademark infringement.