Monday, October 24, 2005

In a Citable Decision, TTAB Dismisses "FIRST NIAGARA" Opposition Based on Lack of Use in Commerce

In its twelfth citable decision of 2005, the Board dismissed a Section 2(d) opposition to registration of the mark FIRST NIAGARA for insurance brokerage services because Canadian Opposer First Niagara Insurance Brokers Inc. failed to establish "use of its pleaded marks on insurance brokerage services regulable by Congress." Consequently, Opposer "cannot establish priority and cannot prevail on its claim of likelihood of confusion." First Niagara Ins. Brokers Inc. v. First Niagara Financial Group, Inc., 77 USPQ2d 1334 (TTAB 2005).

Opposer FNIB claimed common law rights in the marks FIRST NIAGARA and FIRST NIAGARA INSURANCE BROKERS INC. (in block letter and design form). Applicant FNFG, located in Northpointe, New York, contended that Opposer "has no offices in the United States; that it has no state licenses to conduct insurance brokerage services in any state in the United States; and that the facts are insufficient to support a conclusion that opposer has used its marks ... in commerce in or with the United States."

The Board's opinion sets forth a lengthy discussion of Opposer FNIB's activities, noting various points of contact with the United States. For example, FNIB works with several US brokerage agencies that have U.S. clients with property located in Canada. Some of the insurance policies it has brokered extend to goods in transit in the U.S. and to incidents occurring here. It has brokered life insurance policies for Canadians who subsequently moved to the United States, as well as travel insurance covering travel to the U.S.

FNIB's advertising is "clearly directed to Canadian purchasers" and any "spillover" advertising is minimal. Moreover, advertising and promotion of a mark (whether inside or outside the USA) for services "marketed in a foreign country" does not create priority rights in the U.S. against one who in good faith adopts the mark in this country.

Most importantly, the Board found that Opposer is not licensed as an insurance broker, nor has it acted as a broker, in any state.

Opposer FNIB asserted that "the insurance business is one that squarely falls within the Commerce Clause," but the Board pointed out that federal law expressly grants to states the power to regulate the insurance industry. As noted, FNIB is not licensed in any state, but rather "is licensed in Ontario, Canada, conducts its insurance brokerage services in Ontario, and its services are regulated by Ontario Law. The nexus of its services is Ontario and the activities opposer undertakes in communicating with U.S. brokers and clients are simply a necessary part of its Canadian business."

"The activities with any connection to the United States that opposer has established in this record are de minimis and merely incidental to opposer's rendering of its insurance brokerage services in Canada. Not only are the insurance policies or riders brokered by opposer that extend certain coverages to the United States or U.S. citizens in Canada merely part and parcel of opposer's rendering of its services in Canada, but these policies and riders reflect the rights and liabilities of the underwriters, not those of the broker. Such activities do not constitute rendering of insurance brokerage services in either interstate or foreign commerce."

The Board distinguished this case from a number of TTAB and federal court precedents, including International Bancorp, L.L.C. v. Societe des Bains de Met et du Cercie des Etrangers Monaco, 66 USPQ2d 1705 (4th Cir. 2003), in which services rendered in Monaco to U.S. citizens were deemed to satisfy the commerce requirement of the Trademark Act, where the mark was "used in advertising and displays in the United States." Here, FNIB's activities in the U.S. are "minimal and incidental" and its advertising is directed to Canadian purchasers.

Moreover, the issue of licensure played a major role in the Board's decision:
"It would be antithetical to common sense to permit opposer, who is not engaged in any brokerage services subject to U.S. state regulation, to rely upon the 'use in commerce' provisions of the Trademark Act to establish priority over a New York state-licensed insurance brokerage business while itself avoiding the same state laws requiring, inter alia, licensure, name approval, and payment of taxes. Opposer cannot have it both ways."
Text Copyright John L. Welch 2005.


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