Full opinion text
MEMORANDUM AND ORDER CHERYL L. POLLAK, United States Magistrate Judge. On November 17, 2003, plaintiff Haggar International Corporation, d/b/a Montana Food Industries (“Haggar”), commenced this action, pursuant to 15 U.S.C. § 1115(b), against United Company for Food Industry Corporation (“United”) and Trans Mid-East Shipping & Trading Agency, Inc. (“Trans Mid-East”) (collectively, the “defendants”). Plaintiffs Second Amended Complaint, filed April 27, 2004, contains eleven causes of action alleging, inter alia, that defendants violated various provisions of the Lanham Act and New York State law through the use of plaintiffs registered trademark “MONTANA,” and that defendants sought to disrupt plaintiffs use of the trademark. Specifically, plaintiff alleges claims for federal trademark infringement and use of a counterfeit mark, in violation of 15 U.S.C. § 1114(1), unfair competition, pursuant to 15 U.S.C. § 1125(a), cancellation of federal trademark registration under 15 U.S.C. § 1064, and additional trademark infringement claims under New York State law. (Compl. ¶¶ 98-188). The Complaint also alleges that defendants sought to cause damage to plaintiffs good will by, inter alia, seeking to cancel plaintiffs mark, registering the mark in defendants’ name, marketing competing foods bearing the MONTANA mark, disparaging plaintiffs products, and attempting to cause the Bureau of Customs and Border Protection (“Customs”) to deny entry of plaintiff s products into the United States. (Id.) Subsequently, United and Trans Mid-East filed answers to the Complaint, and then later filed counterclaims against Hag-gar for trademark infringement, trademark cancellation, unfair competition, trademark dilution, and various other claims under New York State law. (Ans. ¶¶ 12-92). Defendants claim that they are the rightful owners of the both the MONTANA word and design marks (collectively, the “MONTANA marks”). (Ans. ¶ 9). On December 19, 2006, Haggar filed the first motion for summary judgment, seeking to dismiss defendants’ counterclaims on the grounds of laches and acquiescence, arguing that defendant United had waited too long to assert its claims of trademark ownership. Upon referral, this Court issued a Report and Recommendation, dated March 11, 2008, recommending that plaintiffs motion for summary judgment be denied because there existed sufficient questions of material fact as to whether Haggar’s procurement of the MONTANA trademark was fraudulent, since a party asserting the equitable defenses of laches and acquiescence must do so with “clean hands.” On June 4, 2008, the district court adopted the Report and Recommendation. On April 1, 2009, defendants filed a second motion for summary judgment, seeking to preclude plaintiff from asserting any equitable defenses such as laches or acquiescence. This Court issued a Report and Recommendation, dated September 22, 2010, 2010 WL 5560089, recommending that defendants’ motion be denied, again because genuine issues of material fact remained on the question of whether Hag-gar committed fraud in its application to the United States Patent and Trademark Office (“USPTO”) filed in 1989. In an opinion and order dated January 5, 2011, the district court adopted the Report and Recommendation. On February 4, 2011, the parties consented to have the case assigned to the undersigned for all purposes, including entry of judgment, and waived their right to a jury trial, consenting to allow this Court to decide the issues. The case proceeded to trial, which was held before this Court from May 16 through May 18, 2011. The Court notes that several of the key witnesses had passed away prior to trial. Thus, at trial, Haggar’s case-in-chief consisted of the live testimony of Ms. Hala Boulos (“Ms. Boulos”), as well as portions of the deposition transcripts of Sherif Boulos (“Boulos” or “Sherif’) and Alfí al Masri (“al Masri”). Defendants’ case-in-chief consisted of the live testimony of Mamdouh Maamoun (“Maamoun” or “Mamdouh”) and Alex Joudeh (“Joudeh”), as well as portions of the deposition transcripts of Sief Bisada (“Bisada”) and Lawrence Cohen, Esq. (“Cohen”). For the reasons stated below, the Court finds in favor of plaintiff and Orders the cancellation of United’s MONTANA work mark, Trademark Registration No. 2,724,-085, and an accounting of monetary damages owed to Haggar by defendants. To the Court’s knowledge, United’s design trademark registration is merely pending (Ans. ¶ 9); accordingly, the Court does not address cancellation of United’s design trademark at this time. FACTUAL AND LEGAL BACKGROUND I. Facts Not in Dispute Although the parties disagree on certain critical facts relating to the development and use of the MONTANA marks and the relationships between the parties, some facts are not in dispute, and the Court has referred to these undisputed facts to provide a chronological framework in which the trial testimony may be analyzed. United is an Egyptian corporation engaged in the business of freezing, packaging, and distributing Egyptian fruits and vegetables. (Compl. ¶¶ 16, 32; Defs.’ 2007 56.1 Stmnt ¶ 2). At some point in the 1980s, Sherif Boulos began distributing United’s frozen food products in the United States; these products were imported through Boulos’ father-in-law, Alii al Masri. (Defs.’ 2009 56.1 Stmnt ¶ 13; Pl.’s 2009 56.1 Stmnt ¶ 13). In 1986, Boulos incorporated Haggar International Corporation in California and began distributing United frozen foods in the United States, using the MONTANA mark. (Defs.’ 2009 56.1 Stmnt ¶¶ 16-18). The parties disagree about who was responsible for creating and designing the marks and about the nature of the arrangement between Boulos and United regarding the distribution of United’s food products in the United States. It is undisputed that on December 30, 1987, Haggar filed a trademark application with the USPTO, seeking to register the word mark “MONTANA.” (Defs.’ 2007 56.1 Stmnt ¶¶ 10; PL’s 2009 56.1 Stmnt ¶ 22). The application, which was signed by Boulos, included a declaration as to ownership. (Defs.’ 2009 56.1 Stmnt ¶ 23; PL’s 2009 56.1 Stmnt ¶ 23). It is also undisputed that Haggar presented several packaging bags (“specimen bags”) to the USPTO in connection with the application; these bags were marked “Product of Egypt by the United Food Company for Food Industry.” (Defs.’ 2009 56.1 Stmnt ¶¶ 23-25; PL’s 2009 56.1 Stmnt ¶¶ 23-25). When Haggar failed to respond to requests from the USPTO for additional documentation to prove ownership of the MONTANA mark, the USPTO deemed the application abandoned as of November 4, 1988. (Defs.’ 2009 56.1 Stmnt ¶¶ 25-27; PL’s 2009 56.1 Stmnt ¶¶ 25-27). In 1988, following the submission of the 1987 application, Alan Mund, Esq. (“Mund”), Haggar’s then attorney, sent a letter to United seeking to have United assign its rights to the MONTANA mark to Haggar. (Defs.’ 2009 56.1 Stmnt 128; PL’s 2009 56.1 Stmnt ¶ 28). What happened to that letter is a source of dispute between the parties. However, it is undisputed that in 1989, the relationship between United and Haggar ended, and United began using Nile Imports, Inc. (“Nile” or “Nile Foods”) to distribute its products. (Defs.’ 2009 56.1 Stmnt ¶¶ 32-33, 41; PL’s 2009 56.1 Stmnt ¶¶ 32-33, 41). Sometime thereafter in 1989, Haggar filed a second trademark application. This application was approved by the USPTO, and on March 6, 1990, the USPTO issued Trademark Registration 1,585,940 to Hag-gar for the word trademark “MONTANA.” (PL’s 2006 56.1 Stmnt ¶¶ 1-2; Defs.’ 2007 56.1 Stmnt ¶ 13). On April 3, 1990, the USPTO issued a design trademark, bearing Trademark Registration No. 1,590,078, to Haggar for its logo. (Pl.’s 2006 56.1 Stmnt ¶ 5; Defs.’ 2007 56.1 Stmnt ¶ 13). On October 25, 1989, United filed its own application to register the MONTANA mark and its logo, only to abandon the application on February 20, 1991. (Pl.’s 2006 56.1 Stmnt ¶¶ 10,17). In 1991, Haggar registered its word and design trademarks with the United States Customs Service (“Customs”), stating that there were no foreign business entities authorized or licensed to use these trademarks abroad. (Defs.’ 2009 56.1 Stmnt ¶¶ 43-44; PL’s 2009 56.1 Stmnt ¶¶ 43-44). Thereafter, in the summer of 1995, based on Haggar’s claimed ownership of the MONTANA mark, Customs seized a container of United products bearing the MONTANA mark that had been imported by Nile. (Defs.’ 2009 56.1 Stmnt ¶ 46; PL’s 2009 56.1 Stmnt ¶ 46). On March 25, 2002, United filed a Petition to Cancel (the “Petition”) Haggar’s rights in the MONTANA marks. (PL’s 2006 56.1 Stmnt ¶¶10, 46; Defs.’ 2007 Resp. ¶¶ 44, 46). When Haggar failed to respond to the Petition, the USPTO entered a default judgment on September 13, 2002, cancelling Haggar’s registration. United then filed its own application to register the word mark in September 2002. (PL’s 2006 56.1 Stmnt ¶ 60, Ex. 16; Defs.’ 2007 Resp. ¶ 60; PL’s Ex. 67). On June 10, 2003, the USPTO issued Trademark Registration No. 2,724,085 to United for the word trademark “MONTANA.” (Defs.’ Ex. FA). When Haggar moved to set aside the default judgment, claiming not to have received notice of the Petition, the default was set aside and Haggar’s registration was restored on or before March 18, 2004. (PL’s 2006 56.1 Stmnt ¶ 42; Defs.’ 2007 Resp. ¶ 42). The parties have now cross-sued each other for ownership of the MONTANA marks and damages for infringement. 11. Legal Standards A. The Lanham Act — Trademark Infringement Section 43(a) of the Lanham Act, 15 U.S.C. § 1115, prohibits a person from using “any word, term, name, symbol, or device, or any combination thereof,” 15 U.S.C. § 1125(a), that is used “in commerce. ... in the ordinary course of trade,” 15 U.S.C. § 1127, and “which ... is likely to cause confusion ... as to the origin, sponsorship, or approval of his or her goods....” 15 U.S.C. § 1125(a)(1). See Louis Vuitton Malletier v. Dooney & Bourke, Inc., 454 F.3d 108, 114-16 (2d Cir.2006). In explaining the objectives of the Lanham Act, the Supreme Court noted that the Act ‘“does not exist to reward manufacturers for their innovation in creating a particular device;’ ... but rather, by preventing competitors from copying ‘a source-identifying mark,’ ‘reduce[s] the customer’s costs of shopping and making purchasing decisions,’ and ‘helps assure a producer that it ... will reap the financial, reputation-related rewards associated with a desirable product.’ ” Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23, 29, 34,123 S.Ct. 2041, 156 L.Ed.2d 18 (2003) (quoting TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 34, 121 S.Ct. 1255, 149 L.Ed.2d 164 (2001), and Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 163-64, 115 S.Ct. 1300, 131 L.Ed.2d 248 (1995)). In order to sustain a cause of action for trademark infringement, the plaintiff must establish two elements: (1) that “the mark or dress is distinctive as to the source of the good or service at issue,” and (2) “that there is the likelihood of confusion between the plaintiffs good or service and that of the defendant.” ITC Limited v. Punchgini, Inc., 482 F.3d 135, 154 (2d Cir.2007) (citing cases); see also Louis Vuitton Malletier v. Dooney & Bourke, Inc., 454 F.3d at 115 (reciting the two-prong test described in Gruner + Jahr USA Publ’g v. Meredith Corp., 991 F.2d 1072 (2d Cir.1993)). However, before the Court analyzes if plaintiff has met both prongs of this test, “plaintiff must [first] demonstrate its own right to use the mark or dress in question.” ITC Limited v. Punchgini, Inc., 482 F.3d at 154 (citing cases). Plaintiff must show priority of right over defendants in order to be entitled to relief. See P. Daussa Corp. v. Sutton Cosmetics (P.R.) Inc., 462 F.2d 134, 136 (2d Cir.1972). B. Ownership and Incontestible Marks The Lanham Act provides that: “The owner of a trademark used in commerce may apply to register his or her trademark under this chapter on the principal register hereby established.... ” 15 U.S.C. § 1051(a)(1). Nevertheless, trademark ownership rights go to the “first-to-use, not [the] first-to-register.” 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, § 16:18 (4th ed.2010). Such rights “develop when goods bearing the mark are placed in the market and [are] followed by continuous commercial utilization.” Buti v. Perosa, S.R.L., 139 F.3d 98, 103 (2d Cir.), cert. denied, Impressa Perosa, S.R.L. v. Buti 525 U.S. 826, 119 S.Ct. 73, 142 L.Ed.2d 57 (1998) (internal quotations omitted). Despite the general rule that trademark ownership rights go to the “first-to-use, not [the] first-to-register,” 2 McCarthy, supra, § 16:18, when a trademark is registered on the USPTO’s principal register (the “register”), the Lanham Act provides that the registration “shall be admissible in evidence and shall be prima facie evidence of the validity of the registered mark and of the registration of the mark, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the mark in commerce....” 15 U.S.C. § 1115(a). A mark gains “incontestable” status after it “has been in continuous use for five consecutive years subsequent to the date of registration and is still in use in commerce.... ” 15 U.S.C. § 1065 (including other conditions not at issue here). Incontestable trademarks are “conclusive” evidence of the owner’s exclusive right to use the mark. 15 U.S.C. § 1115(b); see KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 117, 125 S.Ct. 542, 160 L.Ed.2d 440 (2004). C. Defenses to Charges of Infringement The Lanham Act provides a number of defenses to charges of infringement of an incontestable trademark, including: “(1) that the registration or the incontestable right to use the mark was obtained fraudulently; ... (5)” that the alleged infringers were rightful continuous prior users of the mark, or “... (9) that equitable principles, including laches, estoppel, and acquiescence, are applicable.” 15 U.S.C. § 1115(b). See Fifth Ave. of Long Island Realty Assocs. v. Caruso Mgmt., 718 F.Supp.2d 292 (E.D.N.Y.2010). “If one of the defenses is established, registration constitutes only prima facie and not conclusive evidence of the owner’s right to exclusive use of the mark.” Park ’N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 199 n. 6, 105 S.Ct. 658, 83 L.Ed.2d 582 (1985). “[E]ven an incontestable registrant” may be denied the benefit of its mark “where that party’s use of the mark is tainted with inequitableness or bad faith.” Precision Instrument Mfg. Co. v. Auto. Maint. Mach. Co., 324 U.S. 806, 814, 65 S.Ct. 993, 89 L.Ed. 1381 (1945); Getty Petroleum Corp. v. Shore Line Oil Co., 642 F.Supp. 203, 205-06 (E.D.N.Y.1986). If the court ultimately finds that the registrant is not entitled to ownership of the mark, the court is empowered to order cancellation of the registration. 15 U.S.C. § 1119; see also 15 U.S.C. § 1064 (permitting a party to file a petition to cancel a trademark application where the “registration was obtained fraudulently ... or contrary to the provisions ... for a registration under this Act”). DISCUSSION This Court must decide which party owns the MONTANA marks in the United States and thus holds the right to use them on packages of frozen vegetables sold in this country. It is undisputed that the marks have reached incontestible status by virtue of Haggar’s 1989 USPTO registration. Since incontestible trademarks are “conclusive” evidence of the owner’s exclusive right to use the mark absent a valid defense, defendants, in order to defend themselves against Haggar’s claim of infringement, must successfully invoke at least one of the defenses provided for in the Lanham Act. See 15 U.S.C. § 1115(b). Accordingly, defendants claim that Haggar obtained its incontestible status fraudulently and that United was a rightful continuous prior user of the mark. If the Court finds that either of defendants’ defenses are valid, then the Court must proceed to analyze defendants’ counterclaims against Haggar and Haggar’s equitable defenses of laches and acquiescence against such counterclaims. The Court first turns to defendants’ claim that Haggar obtained its rights to the marks fraudulently. I. United’s Defenses to Haggar’s Claims A. Fraud Although it is undisputed that Haggar registered the MONTANA marks with the USPTO in 1989, United contends that the registrations were fraudulently obtained and that the word and design trademarks should be cancelled. Fraud in obtaining a trademark registration occurs when an applicant knowingly makes a false, material misrepresentation of fact in connection with its application. See Maids to Order of Ohio, Inc. v. Maid-to-Order, Inc., 78 U.S.P.Q.2d 1899, 1905 (T.T.A.B.2006); see also Tuccillo v. Geisha NYC, LLC, 635 F.Supp.2d 227, 241 (E.D.N.Y.2009) (stating that “[t]o prevail on a cause of action for trademark cancellation on grounds of fraud on the [USPTO], it is necessary for the petitioner to demonstrate that the statements (1) were made with knowledge of their falsity, and (2) were material to the determination to grant the application”). Since direct evidence of deceptive intent is rarely available, subjective intent to deceive can be inferred from indirect and circumstantial evidence. In re Bose Corp., 580 F.3d 1240, 1243-44 (Fed.Cir.2009); see also Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d 1357, 1366 (Fed.Cir.2008), cert. denied, — U.S.-, 129 S.Ct. 1595, 173 L.Ed.2d 678 (2009). However, a party alleged to have committed fraud may rely on good faith as a defense: “Fraud ... will not lie if it can be proven that the statement, though false, was made with a reasonable and honest belief that it was true.... ” Maids to Order of Ohio, Inc. v. Maid-to-Order, Inc., 78 U.S.P.Q.2d at 1905. The alleged fraudulent misstatements must be more than an “error or inadvertence,” and instead must show a “deliberate attempt to mislead the [USPTO].” Orient Exp. Trading Co., Ltd. v. Federated Dep’t Stores, Inc., 842 F.2d 650, 653 (2d Cir.1988) (internal quotations omitted). Indeed, fraud on the USPTO “implies some intentional deceitful practice or act designed to obtain something.” Maids to Order of Ohio, Inc. v. Maid-to-Order, Inc., 78 U.S.P.Q.2d at 1905 (citing Cerveceria India Inc. v. Cerveceria Centroamericana, S.A., 10 U.S.P.Q.2d 1064, 1065 (T.T.A.B.), aff'd, 892 F.2d 1021 (Fed.Cir.1989)). A party moving to cancel a trademark based on fraud on the USPTO bears the burden to prove the fraud by “clear and convincing evidence.” Orient Exp. Trading Co., Ltd. v. Federated Dept. Stores, Inc., 842 F.2d at 653; Tuccillo v. Geisha, 635 F.Supp.2d at 241. When the allegation of fraud centers on a trademark applicant’s signed oath, the charging party bears an especially high burden: In determining whether an applicant, when he signed his application oath, held an honest, good faith belief that he was entitled to registration of his mark, the Board has stated that if the other person’s rights in the mark, vis-a-vis the applicant’s rights, are not known by applicant to be superior or clearly established, e.g., by court decree or prior agreement of the parties, then the applicant has a reasonable basis for believing that no one else has the right to use the mark in commerce, and that applicant’s averment of that reasonable belief in its application declaration or oath is not fraudulent. Maids to Order of Ohio, Inc. v. Maid-to-Order, Inc., 78 U.S.P.Q.2d at 1908. The party alleging fraud carries a “heavy burden of proof,” and, in deciding whether fraud has been committed, the Court has “no room for speculation, inference or surmise and, obviously, any doubt must be resolved against the charging party.” In re Bose Corp., 580 F.3d at 1243. Indeed, “the statement of an applicant that no other person to the best of his knowledge has the right to use the mark does not require the applicant to disclose those persons whom he may have heard are using the mark if he feels that the rights of such others are not superior to his. Thus, an applicant who has at least ‘color of title’ to the mark is not guilty of fraud.... ” Yocum v. Covington, 216 U.S.P.Q. 210, 216-17 (T.T.A.B.1982). In short, for United to prevail in its challenge to Haggar’s registration on the basis of fraud, United must prove that Haggar deliberately and deceitfully made false statements in its 1989 application to the USPTO that were material to the determination to grant the application. Defendants must prove this claim by “clear and convincing evidence.” Orient Exp. Trading Co., Ltd. v. Federated Dept. Stores, Inc., 842 F.2d at 653; Tuccillo v. Geisha, 635 F.Supp.2d at 241; Maids to Order of Ohio, Inc. v. Maid-to-Order, Inc., 78 U.S.P.Q.2d at 1905. In its motion for summary judgment, United argued that Haggar had committed fraud in its August 2, 1989 application through false assertions in three aspects of the trademark application: 1) Haggar’s assertion of ownership of the marks; 2) a false claimed date of first use; and 3) the presentation of specimen bags that did not bear United’s name as manufacturer. The Court addresses each fraud claim in turn. 1. Hangar’s Asserted Ownership of the Mark Sherif Boulos, in presenting the second trademark application to the USPTO in 1989, signed the oath required by statute stating that “to the best of his knowledge,” no one else had the right to use the marks in commerce. Specifically, the oath provided that the signer believes said corporation to be the owner of the trademark sought to be registered; to the best of his/her knowledge and belief no other person ... has the right to use said mark in commerce, either in the identical form or in such near resemblance thereto as may be likely to ... cause confusion, or to cause mistake, or to deceive.... (Defs.’ 2009 56.1 Stmnt ¶23; Pl.’s 2009 56.1 Stmnt ¶ 23). In their summation brief, defendants argue that the “[e]vidence shows that S. Boulos knew that [his] statements [in the application oath] were false” at the time he swore to them because he knew that United was the foreign manufacturer and first user of the marks, while Haggar was merely United’s exclusive distributor in the United States and “did not secure any rights to the trademark MONTANA from sales in the United States of United’s MONTANA products.” (Defs.’ Brief at 6-7). For United to show that Haggar committed fraud by asserting ownership of the MONTANA marks in its 1989 application to the USPTO, United must prove, by clear and convincing evidence, that Haggar deliberately and deceitfully misrepresented itself to be the owner of the marks. Thus, if Haggar had “at least ‘color of title’ to the mark,” Yocum v. Covington, 216 U.S.P.Q. at 216-17, it did not commit fraud by asserting ownership. Generally, trademark ownership rights attach to the first to use the mark in commerce. Blue Planet Software, Inc. v. Games Int’l, LLC, 334 F.Supp.2d 425, 436-37 (S.D.N.Y.2004). However, to enforce such ownership rights in this country’s courts, that use in commerce must be in the United States. Commercial “use of a mark overseas cannot form the basis for a holding of priority trademark use” in the United States. De Beers LV Trademark Ltd. v. DeBeers Diamond Syndicate, 440 F.Supp.2d 249, 269 (S.D.N.Y.2006). Indeed, “[p]rior use of a trademark in a foreign country does not entitle its owner to claim exclusive trademark rights in the United States as against one who used a similar trademark in the U.S. prior to entry of the foreigner into the domestic American market.” 2 McCarthy, supra, § 29.01 [3] (citing Bulk Mfg. Co. v. Schoenbach Products Co., 208 U.S.P.Q. 664, 667 (S.D.N.Y.1980) (holding that plaintiffs copying of mark and design from English firm did not constitute “unclean hands” in litigation against another company claiming rights to a similar mark)); Johnson & Johnson v. Diaz, 339 F.Supp. 60, 63 (C.D.Cal.1971). This rule applies with equal force to protect a company that outright copies a mark that has been previously used abroad but that is not famous in the United States, uses the copied mark on goods sold in the United States, and then claims to have priority in the mark in the United States over the foreign originator. 2 McCarthy, supra, § 29.01 [3] (citing Person’s Co., Ltd. v. Christman, 900 F.2d 1565 (Fed.Cir.1990)). As Professor McCarthy explains in his treatise on trademark law: The Federal Circuit held [in Person’s Co., Ltd. v. Christman ] that there is no illegality in an American visitor to Japan seeing the word PERSON’S used as a mark on wearing apparel, returning to the U.S. and commencing use of PERSON’S as a mark on wearing apparel. At that time, the mark was used only in Japan and was not a “famous” mark “well known” by reputation in the United States. The court said that the American committed no fraud in applying to register the mark in the U.S. The American had domestic priority over the Japanese company, which later commenced sales in the U.S. The American succeeded in cancelling the U.S. registration granted the Japanese company. [... ] Thus, in the U.S., the American is the senior user and the Japanese company is the junior user, even though the Japanese company was the world-wide senior user. Id. The original foreign user of the mark only retains priority in the United States over the copier if the copied mark “is so famous that its reputation is [already] known in the United States” prior to the efforts of the United States user and copier. Id. (citing All England Lawn Tennis Club Ltd. v. Creations Aromatiques, Inc., 220 U.S.P.Q. 1069 (T.T.A.B.1983) (enjoining an American from registering “Wimbledon Cologne,” which displayed a picture of a tennis player on the bottle); Vaudable v. Montmartre, Inc., 20 Misc.2d 757, 193 N.Y.S.2d 332, 123 U.S.P.Q. 357 (N.Y.Sup. Ct.1959) (enjoining an American from opening a New York restaurant called “Maxim’s,” named after the famous Paris restaurant of the same name)). In this case, there is no dispute that prior to the time United first started doing business with al Masri and Haggar, “at the end of [19]85 or beginning of [19]86” (Tr. at 434), until the relationship ended in 1989, no other company was importing or selling United’s frozen vegetables in the United States. (Id. at 327, 331, 339, 434; Defs.’ Ex. HF at 20-21; Defs.’ 2009 56.1 Stmnt ¶¶ 14, 15; Pl.’s 2009 56.1 Stmnt ¶¶ 14, 15). While the parties dispute who initially conceived of and designed the marks, there is no evidence to suggest that United used the MONTANA brand to sell frozen food products in the United States prior to its involvement with al Masri, Boulos, and Haggar in 1985-86. (Defs.’ 2009 56.1 Stmnt ¶¶ 9, 11-17; Pl.’s 2009 56.1 Stmnt ¶¶ 9, 11-17). Indeed, the testimony demonstrated that United did not begin production of frozen vegetables until the latter part of 1984 (Defs.’ Ex. HH at 15, 16, 25, 38, 53), and, according to United’s witnesses, did not even adopt the MONTANA mark until sometime in 1985. (Tr. at 236-38). Thus, the Court finds that Boulos was the first to use the MONTANA brand in the United States on frozen vegetables. Similarly, there was no evidence presented that the MONTANA brand was already so “famous” in the United States before Boulos/Haggar’s entry into the United States market that United should be regarded as having established a foothold in the market for its products and consumer recognition of its brand before ever selling its goods here. The only testimony presented on this point was that of Iskandar Joudeh (“Joudeh”), the chief executive of defendant Trans Mid-East Shipping and Trading (Tr. at 452), who testified that since the time he “started this business, the frozen [vegetable] industry was synonymous [with MONTANA]. The only brand good name is MONTANA.” (Id. at 473). However, Mr. Joudeh did not specify whether he was describing the United States or international market for Egyptian frozen vegetables, and since he did not begin importing United’s products into the United States until 1991, his testimony about his U.S. customers’ desires for United’s frozen foods in 1991 to 2002 is irrelevant to the question of whether the MONTANA brand was famous in the United States prior to Haggar’s use of the MONTANA marks in its sales. (See id. at 473-76). By contrast, Hala Boulos testified that when she and Sherif first started selling United’s frozen vegetables, it would take them 3 to 4 months to sell a container, and that they had to work particularly hard in order to sell the very first container they received, going door to door to local supermarkets and retailers for 4 months to convince them to carry the goods. (Id. at 534-35). Similarly, Alfi al Masri testified that prior to Mr. Boulos’ efforts, United’s name and brand was not well-known, let alone “famous,” in the United States: “[Sherif] makes the distribution and he make a name. [... ] Without Sherif, nobody can knows about United.” (Defs.’ Ex. HF at 38). Since no other evidence addressing the fame of the mark in the United States was presented, the Court finds that United has failed to prove by “clear and convincing” evidence that the MONTANA brand was already famous in the United States before plaintiffs efforts. However, the law is clear that where two companies operate within a manufacturer-distributor arrangement, the “exclusive U.S. distributor does not acquire ownership of a foreign manufacturer’s mark any more than a wholesaler can acquire ownership of an American manufacturer’s mark, merely through the sale and distribution of goods bearing the manufacturer’s trademark.” 2 McCarthy, supra, § 29.02. In such cases, the general principle is that “when disputes arise between a manufacturer and distributor, courts will look first to any agreement between the parties regarding trademark rights.” Tecnimed SRL v. Kidz-Med, Inc., 763 F.Supp.2d 395, 403 (S.D.N.Y. 2011) (internal citations omitted), cert. denied, 462 Fed-Appx. 31 (2d Cir.2012); see also Ushodaya Enterprises, Ltd. v. V.R.S. Int’l, Inc., 63 F.Supp.2d 329, 336 (S.D.N.Y. 1999). “[I]n the absence of an agreement between the parties, the manufacturer is presumed to own the trademark.” Tecnimed SRL v. Kidz-Med, Inc., 763 F.Supp.2d at 403. “A distributor, importer or other distributing agent of the goods of a manufacturer or producer does not acquire a right of ownership in the manufacturer’s or producer’s mark merely because it moves the goods in trade.” Patent and Trademark Office, Trademark Manual of Examining Procedure, § 1201.06(a) (5th ed.2007). Indeed, the USPTO’s Trademark Manual of Examining Procedure (“TMEP”) provides that: A distributor or importer ... can register the mark only ... [i]f an applicant is the U.S. importer or distribution agent for a foreign manufacturer’s mark in the U.S., provided the applicant submits ... (a) written consent from the owner of the mark to registration in the applicant’s name, or (b) written agreement or acknowledgment between the parties that the importer or distributor is the owner of the mark in the United States, or (c) an assignment ... 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. Ushodaya Enterprises, Ltd. v. V.R.S. Int’l, Inc., 63 F.Supp.2d at 335 (citing TMEP § 1201.06(a)). “Absent a clear manifestation of intent by a supplier [or manufacturer] to transfer ownership of a trademark to a distributor, the supplier [or manufacturer] remains the rightful owner” of a trademark registration. Software AG, Inc. v. Consist Software Solutions, Inc., No. 08 CV 389, 2008 WL 563449, at *17 (S.D.N.Y. Feb. 21, 2008), affd, 323 FedAppx. 11 (2d Cir.2009); Tactica Int’l, Inc. v. Atlantic Horizon Int’l, Inc., 154 F.Supp.2d 586, 600 (S.D.N.Y.2001); Ushodaya Enterprises, Ltd. v. V.R.S. Int’l, Inc., 63 F.Supp.2d at 336. This is true even when two parties have an exclusive distributorship agreement; if that agreement comes to an end, “any rights which [the distributor] may have had in the mark during the life of the agency immediately revert[ ] to [the manufacturer].” Major-Prodotti Dentari-Societa in Nome Collettivo Di Renaldo, 161 U.S.P.Q. 437, 438 (T.T.A.B.1968) (finding that a domestic distributor’s registration was void ab initio because the written agreement between the parties made clear that respondent had no proprietary rights in the mark at the time he filed the application which matured into the subject registration); see also Omag Optik Und Mechanik A.G. v. Weinstein, 85 F.Supp. 631, 635 (S.D.N.Y.1949) (stating that the distributor must demonstrate “a clear intention on the part of the manufacturer to transfer the mark to the distributor” before the distributor may lay claim to the benefits of the registration). However, when “goods pass through the distributor’s hands in the course of trade and the distributor gives them the benefit of its reputation or of its name and business style, this presumption [of trademark ownership in the foreign manufacturer] may be rebutted.” Tactica Int’l, Inc. v. Atlantic Horizon Int’l, Inc., 154 F.Supp.2d at 600; see also Tecnimed SRL v. Kidz-Med, Inc., 763 F.Supp.2d at 403. Among the factors that courts commonly consider in determining this issue are: 1) which party invented and first affixed the mark onto the product; 2) which party’s name appeared with the trademark; 3) which party maintained the quality and uniformity of the product; and 4) with which party the public identified the product and to whom purchasers made complaints. Tecnimed SRL v. Kidz-Med, Inc., 763 F.Supp.2d at 403 (adopting the Sengoku and Tactica modifications to the Wrist-Rocket test); see also Sengoku Works Ltd. v. RMC Int’l, Ltd., 96 F.3d 1217, 1220 (9th Cir.1996) (modifying the Wrist-Rocket analysis to include only the above four factors rather than the six factors in the original test), cert. denied, 521 U.S. 1103, 117 S.Ct. 2478, 138 L.Ed.2d 987 (1997); Tactica Int’l, Inc. v. Atlantic Horizon Int’l, Inc., 154 F.Supp.2d at 600 (adopting the Sengoku modifications to the Wrist-Rocket analysis). Other courts also consider “which party paid for advertising and promotion of the trademarked product,” Autotech Tech. Ltd. P’ship v. Automationdirect.Com, Inc., No. 05 CV 5488, 2007 WL 2388794, at *3 (N.D.Ill. Aug. 17, 2007), “which party possesses the goodwill associated with the product, or which party the public believes stands behind the product.” Tecnimed SRL v. Kidz-Med, Inc., 763 F.Supp.2d at 403 (internal citations and quotations omitted). Together, “these factors reflect the principle that ‘actual use in connection with a particular business’ is the primary consideration in establishing ownership of a trademark.” Id. (quoting G’s Bottoms Up Social Club v. F.P.M. Indus., 574 F.Supp. 1490, 1495 (S.D.N.Y. 1983); also citing Montgomery v. Kalak Water Co. of N.Y., Inc., 196 F.Supp. 173, 177 (S.D.N.Y.1961)). Defendants contend that Haggar was merely a distributor of United’s products, and that, therefore, Boulos knew that United had the superior right to the marks; thus, his statement in the 1989 trademark application was knowingly false. Plaintiff, on the other hand, claims that during the time that Haggar sold United’s goods in the United States, Haggar did business as al Masri’s customer, and not as a distributor of United. It is undisputed that the business arrangement reached at the 1985 initial meeting between Boulos, al Masri, and Magdi Maamoun was not contemporaneously reduced to writing by the parties. (Defs.’ Brief at 16 (citing Defs.’ Ex. AT)). Thus, the nature of their business relationship is far from clear. Additionally, it appears that there was no oral or written agreement between the parties regarding Haggar’s rights to use or register the MONTANA marks. See Tec nimed SRL v. Kidz-Med, Inc., 763 F.Supp.2d at 403. However, “the factors used in determining the question of ownership” of the MONTANA mark “are the same whether or not [Haggar] is given the title of ‘distributor.’ ” Tactica Int’l, Inc. v. Atlantic Horizon Int’l, Inc., 154 F.Supp.2d at 600. Indeed, “the resolution of who has the right to the mark in this case does not turn on whether the [plaintiff] was an exclusive distributor for [defendants].” WristRocket Mfg. Co. v. Saunders, 379 F.Supp. at 910. If thé Court finds that United’s “rights in the mark, vis-a-vis [Haggar’s] rights, [were] known by [Boulos] to be superior or clearly established, e.g., by court decree or prior agreement of the parties,” then it must find that the mark belonged to United and Boulos’ application was fraudulent. However, if Boulos had “a reasonable basis for believing that no one else ha[d] the right to use the mark in commerce,” then his oath was “not fraudulent.” Maids to Order of Ohio, Inc. v. Maid-to-Order, Inc., 78 U.S.P.Q.2d at 1908. Specifically, if Haggar gave United’s products “the benefit of its reputation or of its name and business style,” thereby overcoming the general presumption of ownership in a foreign manufacturer, it would have at least color of title and therefore not be guilty of fraud in its 1989 USPTO trademark application. To determine the question of whether Haggar is responsible for giving the MONTANA brand “the benefit of its reputation or of its name and business style” in the United States, the Court applies the modified Wristr-Rocket factors to the time period from 1985, when United and Haggar began doing business together, to 1989, when Haggar filed its second trademark application and the companies ended their relationship. a. Which Party Invented and First Affixed the Mark Both Haggar and United claim to have invented the MONTANA marks and to have been the first to affix them to then-packaging bags. Haggar asserts that prior to its use of the stand-alone word MONTANA as a trademark, United had been using “Moontana” and “Montana Egypt” as its marks, but never MONTANA by itself. (Defs.’ Ex. HB at 91-92; Defs.’ Ex. HC at 153, 174, 176-80, 186). Mr. Boulos testified that when he first met with Magdi Maamoun to discuss importing United’s frozen vegetables to the United States, United was using the name “Moon-tana” on its packaging because “Maamoun ... stands for Moon-tana.” (Defs.’s Ex. HB at 52-53; Defs.’ Ex. HC at 152, 155). However, Boulos did not recall ever seeing that name on signs in front of United’s factory or on United’s trucks (Defs.’ Ex. HB at 53), and plaintiff submitted no documentary evidence bearing such a mark. Boulos also testified that he was unaware that United was using the MONTANA mark on its products in 1985 (Defs.’ Ex. HC at 156-57), and he did not recall United ever using the term MONTANA during that first meeting. (Defs.’ Ex. HB at 53-54). Boulos testified that he first conceived of using MONTANA as Haggar’s trademark in 1985, and 'that he first used the term MONTANA when he submitted his fictitious name application in the United States. (Defs.’ Ex. HB at 65-66). Boulos admitted that the word “Montana” does not have any significance in the Egyptian language (id. at 77), and that he was inspired to choose Montana Food Industry as the fictitious name for his company by “the company producing the Moon-tana products.” (Id. at 71). Indeed, when asked, ‘You are saying because United was using Moon-tana, you came close to it and used Montana?” he answered, “Correct.” (Id. at 71-72). Mr. Boulos also testified that he first had the Haggar packaging bags marked with “MONTANA” in 1985 or 1986, using his own designs. (Id. at 66-68). He identified Plaintiffs Exhibit 6, the word mark MONTANA, bearing the USPTO registration number of 1585940, and Plaintiffs Exhibit 7, the graphic mark of a cartoon boy, holding a basket of vegetables, bearing the USPTO registration number of 1590078, as these designs. (Id.) Boulos stated that he created the designs but “a lady designer in Egypt” drew the graphics for him. (Id. at 73). According to Boulos, he asked her to draw “[a]nything that relates to food business,” and based on those instructions she came up with Hag-gar’s logo depicting the boy carrying a basket of vegetables. (Id. at 74-76; PL’s Ex. 7). He stated that he was not familiar with United’s similar two cartoon chef logo (the “two chefs logo”) at the time, and did not hand the designer any pictures of United’s logos to use as a guide. (Defs.’ Ex. HB at 74-76). However, Boulos admitted using United’s two cartoon chef mark in another context. Examining the United frozen garden peas packaging bag label marked as Defendants’ Exhibit CC, he acknowledged that the two cartoon chefs logo displayed on the label is a trademark of United. (Defs.’ Ex. HC at 190). When subsequently presented with Defendants’ Exhibit B, a letter signed by him bearing the letterhead of Montana Food Industries and including the same two cartoon chefs logo in the upper left hand corner, Boulos unapologetically stated that he “was just using” the two cartoon chefs logo because “that’s not a trademark, that’s a logo.” (Id. at 191-92). Despite his mistaken assertion that the logo was not a trademark, Boulos admitted that the logo identified United’s products, and that he sent this letter sometime in 1986 or 1987, during the time he was importing frozen food products from United. (Id. at 192). According to Boulos, he had “poly bags” printed by an Egyptian company, Nile Company for Printing, based on Mr. Boulos’ design. (Defs.’ Ex. HB at 55-56; Defs.’ Ex. HC at 158). Mr. Boulos claims that he, not United, supplied the bags for United to use in packaging its products for him to sell (Defs.’ Ex. HB at 80); that he sent United “thousands of bags” at a time (id.); and that he never used United’s MONTANA packaging. (Defs.’ Ex. HC at 153-54). “I always sold MONTANA, not Moon-tana. [... ] Without Egypt next to it. It was always just MONTANA.” (Id. at 153). However, he was unable to produce an example bag or bills reflecting printing done by Nile. (Defs.’ Ex. HB at 81). As for the labels on the bags, Boulos initially testified equivocally, stating that the first Haggar label bearing the MONTANA mark was produced in 1985 or 1986, but subsequently he stated explicitly that these labels were in production on September 1, 1985. (Id. at 70). However, plaintiff produced no documentary evidence corroborating the claim that Haggar had begun producing MONTANA labels -by September 1,1985. United’s claim to inventing the mark rests on the testimony of Seif Bisada (“Bisada”), Maamoun, and al Masri. At his deposition, taken on December 12, 2006, Bisada testified that from 1982 to 1988 or 1989, he worked as the general manager of a French company named Matal Egypt (“Matal”), which specialized in “food industry and refrigeration.” (Defs.’ Ex. HH at 12-13). In 1982, Matal was retained to build a food processing plant for United, and Bisada was placed “in charge of the electrical part” (id. at 14), specifically the “[sjtart up of all refrigeration [in] the plant.” (Id. at 14, 38, 50-52). A French engineer was “in charge of the mechanical part” (id. at 14), and he and Bisada worked in the same office. (Id. at 35). Once the plant was “in operation” (id., at 14), United began production of frozen vegetables during the second part of 1984, with Bisada “running the plant.” (Id. at 15-16, 25, 38, 53). In that capacity, Bisada observed the production line, packing area, and packing machines. (Id. at 16). According to Bisada, initially United packaged its frozen food products in bulk in plain polyethylene bags (“poly bags”). (Id. at 17, 40). However, at the end of 1984, United requested that the packing bags feature a logo, and United asked the French engineer in charge of the mechanical aspects of the plant to create a name and logo for the products. (Id.) The French engineer chose the brand name MONTANA; Bisada explained that the French engineer told him that he chose this name because “in Italy,- there is some sort of mountains called Montana, it’s high, and [the product is] frozen vegetables.” (Id. at 17, 33). He asked Bisada for his opinion, and Bisada complimented the name choice. (Id. at 35). According to Bisada, the French engineer also designed the graphic logo for United that featured two cartoon chefs. (Id. at 18, 24). Although Maamoun confirmed that someone at Matal “[suggested a name Montana because Montana represented mountains of ice, and because we deal with frozen food.... ” (Tr. at 235-36), Maamoun credited an Egyptian governmental agency named Dar Alhilal with designing the accompanying logo, showing “the boy and girl, and the ... ice mountain below them.” (Id. at 236-37). Maamoun stated that United’s board approved the name MONTANA and the logo in a 1985 meeting (id. at 236-38), and that neither Mr. Boulos, nor Ms. Boulos, nor Mr. al Masri participated in United’s selection of the MONTANA mark. (Id. at 339). Bisada confirmed that Sherif Boulos was not present when the MONTANA brand name was adopted by United. (Defs.’ Ex. HH at 19-20). Bisada also confirmed that in 1984 and 1985, after United adopted the brand name MONTANA, United’s frozen foods were shipped in bags printed with the MONTANA brand name and the two cartoon chefs logo. (Id. at 20, 41-42, 62). When shown Defendants’ Exhibit DG — the bags provided by Haggar to the USPTO as specimen bags in its first trademark application — Bisada testified that these were the same type of MONTANA-branded bags used by United when it first began operations. (Id. at 22). Even though Haggar represented in its 1987 application that Defendants’ Exhibit DG was an example of Haggar’s own bags, Ms. Boulos admitted that Haggar submitted United’s packaging bags as the specimen bags in support of its ultimately abandoned 1987 trademark application. (Defs.’ Ex. HA at 124-25). This admission concurred with the testimony of Bisada, who stated that during the period from 1984 to 1985, when he supervised United’s food production plant, he never saw United use a bag other than the type represented by Defendants’ Exhibit DG. (Id. at 62-63, 72). Bisada explained that each bag had “United Company for Food Industry” written on the outside. (Defs.’ Ex. HH at 24). When products were packed in clear bags and put into cartons, the carton would be marked MONTANA. (Id. at 47-48). Bisada, who observed the packaging area of the factory, testified that all of the goods produced at United’s Egyptian factory were packed in bags or cartons marked MONTANA, and he knew of no other company in Egypt using MONTANA to identify its goods. (Id. at 27, 31). Based on what he personally observed at the plant and in Egyptian supermarkets, Bisada testified that United used the MONTANA brand on products sold in Egypt during the period from 1984 to 1986. (Id. at 40-^41, 66). Indeed, according to Bisada, MONTANA is a famous mark in Egypt. (Id. at 31). He testified that United never used packaging branded with “MONTANA Egypt;” it only used the word MONTANA by itself. (Id. at 58). However, Bisada conceded that he “didn’t work on [exporting] at all,” but he testified that as far as he knew from what he had heard from others, during the period from 1985 to 1986, United exported to Saudi Arabia, Canada, and the United States. (Id. at 27, 36-87, 45, 49). The fact that Bisada did not work on exporting, along with his apparent misconception about the size of the shipment packages (see n. 35 infra), undermines Bisada’s credibility as to the manner in which vegetables were packaged for export to Haggar, and bolsters Haggar’s position that smaller bags of vegetables were used for export to the United States. Maamoun testified that United used the MONTANA mark on its products “[s]ince we started producing, from the day we started ...” around “the end of '84” (Tr. at 255), and that from the beginning, the MONTANA marks were “printed and put on the bag, the logo, trade, the name, and everything.” (Id. at 255-56). Moreover, Maamoun testified that United never used the two word term “Moon-tana” in its mark. (Id. at 275). Maamoun identified three examples of these packaging bags, depicting the logo of “the boy and the girl, and this is the ice mountain,” with the word mark MONTANA. (Id. at 258-59, 260, 261; Defs.’ Exs. BJ, BL, CA). According to Maamoun, these examples reflect the basic design of the packaging bag United has used since 1984, for every shipment “to all countries.” (Tr. at 259-61, 263-65; see also Defs.’ Exs. GD, CE, BF). According to Maamoun, the bags, which were printed by companies in Egypt (Tr. at 256), are the same as the bags that United ships to overseas destinations. (Id. at 264). Indeed, Maamoun claims that these were the same bags in which United’s frozen food products were shipped into America “[i]n [the] end of '85, '86, something like that.” (Id. at 260-61). Maamoun testified that United has never given another company permission to use its packaging bags (id. at 276), and it has never shipped another company’s product'in its packaging. (Id. at 278). Maamoun stated that in Egypt, “[y]ou cannot ship without the name and the mark.” (Tr. at 256). Accordingly, as of September 1986, United had commercially registered the mark MONTANA for “[t]he company Montana, United Company of Montana, for producing products — United Company for manufacturing products, nutritional products, called Montana.” (Id. at 238-39, 251; Defs.’ Ex. BU (showing “the commercial registration and the stamp of the government,” dated September 6, 1986)). According to Maamoun, United used the marks on its business documents as well, including its invoices. (Id. at 258). For example, Maamoun identified Defendants’ Exhibit BG as an invoice for a sale of MONTANA-branded grape leaves and okra. The invoice, dated May-11, 1985, bears the mark MONTANA. (Id. at 256-58; Defs.’ Ex. BG). Strikingly, even Haggar’s own witness, Alfi al Masri, testified that United, not Haggar, first chose the brand name MONTANA and created the two chefs logo; he also admitted that the first goods sent to Boulos displayed this branding and logo. (Defs.’ Ex. HF at 25). Asked about the origin of the MONTANA brand name, al Masri explained that although he advised Mamdouh Maamoun to base his brand name on the name of his younger daughter, United did not follow this advice and instead chose the word MONTANA, which has nothing to do with Maamoun’s daughter. (Id. at 25-26). Mr. al Masri conceded that he did not provide the plastic bags to United for packaging the frozen vegetables that he shipped to Boulos, but he did give United instructions about the details to be written on the packaging in order to comply with United States regulations. (Id. at 22). Mr. al Masri acknowledged that United printed sample bags with the MONTANA name on them and provided them for his review. (Id. at 22-23). Mr. al Masri confirmed that he shipped “many tons, about 200 tons” of United’s goods featuring the two chefs logo and the MONTANA name; however, he testified that he was not familiar with the ice mountain logo. (Id. at 27). Nevertheless, he explicitly stated that United, not Haggar, owns the logo and trademark displayed in Plaintiffs Exhibit 3, which is a photocopy of the specimen bag Haggar attached to its 1987 trademark application. (Id. at 29). Even given that the Court has “no room for speculation, inference or surmise[, and that] ... any doubt must be resolved against the charging party,” In re Bose Corp., 580 F.3d at 1243, after reviewing the parties’ testimonial and documentary evidence, as well as their post-trial submissions, the Court finds that United, not Haggar, invented and first affixed the MONTANA word mark. Although Boulos claimed to have created the MONTANA name, the Court finds it telling that al Masri unequivocally confirmed that United created the MONTANA mark and printed the packaging bags for the frozen goods it shipped to al Masri and Boulos. In so testifying, al Masri corroborated the testimony of Maamoun and Bisada that United chose the MONTANA mark shortly after building its frozen food production factory. As for the cartoon logo, the evidence demonstrates that United was the first to design and use the two chefs logo and the evidence suggests that the shipments to Haggar were for at least some period of time packaged in bags with the two chefs logo and the MONTANA mark. However, the Court credits Boulos’ testimony that he had the mark consisting of the boy with the basket drawn up sometime after he had been importing United’s frozen foods. Although the logo is similar to the two chefs logo in that it consists of a cartoon character, there are substantial differences including the absence of the female figure and the ice mountain and the addition of the basket with vegetables and the star burst. While this mark may have been designed to avoid the scrutiny of the USP-TO, it was clearly designed and first used by Haggar. b. Which Party’s Name Appeared with the Mark Turning to the second modified WristrRocket factor, the Court must determine which company’s name and identifying information appeared on the packaging with the MONTANA marks for the goods sold in the United States from 1985 to 1989. Both parties incorporate the contested mark “Montana” in their corporate names and use it on various documents. Plaintiff Haggar International Corporation did business as Montana Food Industries, while defendant United’s full corporate name is United Company for Food Industry Corporation (Montana). United’s witnesses, Maamoun and Bisada, testified that from the very beginning, United always packaged their frozen food products in bags bearing the word mark MONTANA, along with United’s two chefs and ice mountain logos. (Id. at 259-61, 263-66; see also Defs.’ Exs. CD, CE, BF). In fact, Maamoun stated that United used “[t]he same bag the same logo” for every shipment “to all countries,” including the United States, and began doing so sometime between 1984 and 1986. (Tr. at 260-61, 263-65). By contrast, Boulos contended that during the period from 1985-1989, when it was importing United’s frozen food products, Haggar printed its own packaging bags, which featured the MONTANA mark and Haggar’s boy carrying a basket logo; Boulos claimed that Haggar sent these bags to United to be used in packaging the goods instead of United’s usual bags. (Defs.’ Ex. HB at 63, 66-68, 80-81). Mr. Boulos suggested that Haggar’s business arrangement with United called for United to use Haggar’s bags to pack the goods and then for United to ship containers full of frozen foods packed in Haggar’s bags to the United States for Haggar to sell. (See id. at 79-80; Defs.’ Ex. HC at 183, 257-58). Rejecting this assertion, Maamoun emphasized that United never allowed its goods to be packaged in bags bearing another company’s mark, and that Haggar never requested this. (Tr. at 331-32). Maamoun denied that Boulos or al Masri ever provided United with their own bags, and that United never shipped its frozen food products to Haggar under a private label created exclusively for Haggar. (Id. at 337-38). In sum, according to Maamoun, all frozen food goods shipped to Hag-gar were shipped in United’s MONTANA-branded packaging bags, and United never gave Haggar permission to use United’s packaging bags as its own. (Id. at 276). Mr. Boulos also reviewed Defendants’ Exhibit CA, a copy of a label for a package of frozen vine leaves bearing the MONTANA mark across the top of the label, a large rendering of the two chefs logo in the middle along with the words “Product of Egypt by the United Company of Food Industry,” and a smaller ice mountain logo at the bottom with MONTANA appearing in an arch above the mountain’s peak. (Defs.’ Ex. HC at 180; Defs.’ Ex. CA). Boulos stated that this is “the first that I ever see MONTANA without Egypt.” (Defs.’ Ex. HC at 180). In answer to counsel’s question about whether Haggar had ever “receive[d] packaging from United ... such as shown in Defendants’ Exhibit” CA, Boulos testified, “No ... sometimes we had some packaging mixed with ours that showed like in the container, in the same container. Some items will go out of bags, they will pack it in their own.... ” (Id. at 183). He stated that he never complained to United in writing, only orally, telling United “to always do [my] bags which I printed in Egypt, but some of the items I couldn’t print for the whole packaging....” (Id.) Similarly, Boulos admitted importing taro roots from United, and acknowledged that he had seen Defendants’ Exhibit CB, a United food label for taro roots bearing the MONTANA trademark (id. at 184), as well as the words “Product of Egypt by the United Company of Food Industry.” (Defs.’ Ex. CB). However, although he admitted receiving this packaging from United at some point during their business relationship, he explained that “sometimes it will be coming with the container that is not upon my order. It will come just 100, 200, 300 cartons of this subject, of the MONTANA Egypt.” (Defs.’ Ex. HC at 184-85). When this happened, Boulos “always” immediately contacted United, “but they said that they run out of bags ... .they run out of this specific packaging and they are waiting for my package to come and they replaced it with this.” (Id. at 185). Boulos suggested that United may have intentionally not used the Hag-gar packaging bags that he provided: “Maybe they were trying to implant this or maybe force this, their own trademark on the market.” (Id.) Although Mr. Boulos acknowledged that United’s label exhibits indicate it was using MONTANA on its food packaging in January 1988, Boulos stated that “as far as I remember, it was not supposed to be MONTANA, it was MONTANA Egypt.” (Id. at 186). Nevertheless, he admitted that the label marked Defendants’ Exhibit CB was written in English, intended for an English-speaking country, and contained only the MONTANA mark, not MONTANA Egypt. (Id. at 186-87). Further supporting United’s claim and undermining his own, Mr. Boulos explained that in Egypt, the “authority of export” regulates exports, and he identified Defendants’ Exhibit FH as a document issued by the “authority of export and import in Egypt,” dated October 10, 1985, indicating that United is officially “registered [with] the export authority officials.” (Id at 218-219). Although this document does not mention any trademark associated with United, an amendment to the previous registration, dated September 9, 1986, added the term “MONTANA,” not MONTANA Egypt or Moon-tana, as a trademark associated with United’s exports. (Id at 219-20). Although Boulos contended that “the export authority ... has nothing to do with the trademark,” he admitted that the export authority has the ability to seize products that are not labeled in accordance with their requirements. (Id at 220-21). Mr. Boulos acknowledged that United used the word “MONTANA” in invoices for frozen vegetables to be shipped by boat to Alfi al Masri in Los Angeles. (Defs.’ Ex. HB at 98-99). Defendants’ Exhibit BO, an invoice dated December 20, 1985, bears the United name, the company’s address and “MONTANA,” written in Arabic. In the description section of the invoice, it states that “all the products are MONTANA mark.” (Id at 99-100). Another invoice for a shipment of goods, dated February 12, 1986, and entitled “First Sale from United to Montana,” also contained United’s letterhead and the ice mountain logo, with the word MONTANA written above the mountain peak. (Id at 87-89, 92-93; PL’s Ex. 18). Boulos admitted that this was the first invoice sent to him directly in the United States, rather than to al Masri, and that Montana Food Industry, i.e. Haggar, had not sold any product as of the time this shipment from United occurred. (Id at 89). When asked to explain why this and another invoice, marked as Defendants’ Exhibit FT, did not say “MONTANA Egypt,” which is what Boulos had claimed was United’s logo, Boulos asserted that these were merely “the inv