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Private label and white label cosmetics: who owns the trademark when a manufacturer makes your product

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If a manufacturer makes your skincare to your order and puts your brand name on it at your instruction, you own the trademark, not the manufacturer. Ownership follows control of the brand and the quality of what's sold under it, not who mixed the formula or filled the jar. The risk isn't that the manufacturer secretly owns your name. The risk is that your arrangement is loose enough that it's unclear who controls what, and that you file the application in the wrong name or let the brand drift out of your control.

The owner is whoever controls the nature and quality

The statute says "the owner of a trademark used in commerce may request registration," and the person who signs the application has to believe they are "the owner." The Trademark Manual of Examining Procedure (TMEP) explains who that is when more than one company touches the product: "the owner is the party who controls the nature and quality of the goods sold or services rendered under the mark."

That rule is built for exactly your situation. TMEP 1201.05 says an applicant who "contracts with another party to have goods produced for the applicant" and has the mark placed on the goods at its instruction is treated as having applied the mark itself. The manufacturer's hands on the product don't make the manufacturer the owner. Your decisions about the formula, the packaging, the name, the specs and what's acceptable to ship do.

Private label vs. white label, and why the difference matters here

The two terms get used loosely, so here's the version that matters for ownership.

In a private label deal, you bring the brand. The manufacturer makes the product to your spec, or from their stock formulas you've chosen, and it goes out under your name. You own that name.

In a white label deal, the manufacturer may already sell the product under its own name, and you're reselling it. If you're just moving the manufacturer's branded goods, the TMEP is clear that a distributor "does not acquire a right of ownership in the manufacturer's or producer's mark" by moving goods, and an application by a party that merely distributes the owner's goods must be refused. If you put your own brand on a stock product, you're back in the private label situation for your brand, and the manufacturer keeps its own.

The place things get muddy is a hybrid: the manufacturer's trade name on the back panel, your brand on the front, the manufacturer's stock product name on the product page. The TMEP tells examining attorneys to ask when a specimen shows a party other than the applicant. Decide who the brand belongs to before the first label is printed, and make the packaging say so.

Why filing in the wrong name is fatal

Here is the part that surprises people. An application filed by the wrong party can't be fixed. The rules say "an application filed in the name of an entity that did not own the mark as of the filing date of the application is void," and "the application cannot be amended to set forth a different entity as the applicant." The TMEP repeats it: when an application is filed in the wrong name, "this defect cannot be cured by amendment or assignment."

In practice that comes up two ways. A manufacturer offers to "handle the trademark" as part of its package and files in its own name. Or a founder files personally when the LLC is the one selling. Either way the application is void, and the filing date goes with it. I wrote about the personal-versus-company version in the article on your LLC and your trademark.

If a manufacturer already filed for your brand in its name and you both agree the brand is yours, the fix is a written assignment. The statute says marks are assignable "with the good will of the business in which the mark is used," and "assignments shall be by instruments in writing duly executed." I go through that process in the article on buying a brand.

Quality control cuts the other way too

Control gives you ownership. It can also lose it. The statute's related-company rule says use of your mark by another company "shall inure to the benefit of the registrant or applicant" when that use is controlled by you "with respect to the nature and quality of the goods or services." Flip that around: if you let another company use your brand and don't actually control the quality, the TMEP warns that a licensor "that fails to exercise sufficient control may be found to have abandoned its rights." The statute defines abandonment to include "any course of conduct of the owner, including acts of omission as well as commission," that causes the mark "to lose its significance as a mark."

Beauty brands hit this in two spots. The first is the manufacturer relationship itself. If the manufacturer picks the formula, the packaging and the claims, and you just approve the invoice, it's a fair question who's controlling quality. The second is when you let a salon, a retailer or a collaborator sell product under your name. I wrote about what control looks like in the article on licensing and quality control.

What to put in the contract

Your manufacturing agreement should settle ownership on paper, so that the USPTO, a future buyer and the manufacturer all read it the same way. The terms I look for:

  • A statement that you own the brand name, logo, product names and packaging design, and that the manufacturer gets no rights in them.
  • A statement that the manufacturer applies the mark only at your direction and only to goods made to your specification.
  • Your written specs for the product, and a right to approve samples, inspect batches and reject goods that don't meet them. That's the quality control that makes you the owner.
  • A written assignment to you of any logo or product name the manufacturer's team creates for the product. I wrote about that in the article on contractor-created logos.
  • A promise not to file for your brand anywhere, and to assign any filing it makes.
  • A rule for the end of the relationship: the manufacturer stops using the name, returns or destroys labeled packaging, and doesn't sell leftover product under your brand.
  • Whether the formula is yours or theirs. That's a contract question, not a trademark one, but the two get confused.

What this means for your brand

File the trademark in the name of the entity that sells the product and controls what goes in the jar. Put the ownership terms in the manufacturing agreement before the first run. Then act like the owner: keep the specs, approve the samples, and keep records of the approvals. The registration proves you own the name; the control is what makes it true.

If you want to talk through how a private label brand sets up ownership before filing, you can see how the search and filing packages work on the services page, and the FAQs page answers most of what comes up before a first call.

Book a free 15-minute discovery call with the attorney (opens in a new tab)

(No legal advice is given on the discovery call. It's a chance to tell me what you're building and hear how the process works.)

Sources

This article is general information, not legal advice. Reading it does not create an attorney-client relationship.

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