Monday, February 26, 2007

Precedential No. 13: Peruvian Owner of "PARDO'S CHICKEN" Invokes Pan American Convention to Establish Priority in 2(d) Opposition

The TTAB granted Applicant's motion for summary judgment in this Section 2(d) opposition, ruling that Applicant, the junior user of the mark PARDO'S CHICKEN & Design in the U.S., had established priority under Article 7 of the Pan American Convention. Diaz v. Servicios De Franquicia Pardo's S.A.C., 83 USPQ2d 1320 (TTAB 2007) [precedential].

Opposer Mario Diaz claimed use of the mark PARDO'S CHICKEN for restaurant services from a date prior to Applicant's U.S. filing date in November 2002. Applicant asserted that as the owner of the mark in Peru, it is entitled to priority as a matter of law under Article 7 of the Pan American Convention.

Although Applicant did not seek to amend its Answer to assert specifically a defense of priority under the Pan American Convention, the parties treated the issue on the merits in their briefs and Opposer did not object to Applicant's motion. Moreover, Applicant "alluded" to the Convention in one of its affirmative defenses. The Board therefore deemed that affirmative defense to have been amended to assert priority under the Convention.

In British-American Tobacco Co. v. Phillip Morris Inc., 55 USPQ 1585 (TTAB 2000), the Board ruled that the Pan American Convention "has the same force as a federal statute and provides remedies independent of the Lanham Act." The Board also concluded that it had jurisdiction to consider a claim (for cancellation) brought under Article 8 of the Convention.

Here, Applicant invoked Article 7 of the Convention to claim priority. That section provides that any owner of a mark protected by the domestic law of a contracting state may challenge or oppose anyone who is using that mark or applying to register it in another contracting state, and in such challenge or opposition said owner is entitled to "the preferential right to use such mark ... or priority to register ..." upon compliance with the requirements of the domestic legislation in both states.

"Thus, the issue before us is whether applicant is entitled to assert priority under Article 7 in this forum."

The Board's starting point was "to discern the intent of the Pan American Convention," which it found to be the creation of "a uniform system for the protection of foreign trademarks."

Next, it analyzed the text of Article 7, and found that it "clearly confers to eligible trademark owners a 'preferential' or prior right where the requirements of the article have been satisfied."

The Board then held that it has the authority (i.e., subject matter jurisdiction) to entertain Applicant's priority claim under Article 7.

Turning to the issue of whether Applicant was entitled to summary judgment, the Board found no genuine dispute that (1) Applicant is "the owner of a PARDO'S CHICKEN mark protected in Peru;" (2) that Applicant "may have known that opposer is using or seeking to register an interfering mark in the United States;" that Opposer Diaz had knowledge of Applicant's use of the mark in Peru; and (4) that Applicant has complied with the requirements of Peru and the United States by filing for protection of its mark under Section 44 of the Lanham Act.

As to the third point, the evidence showed that Applicant Diaz is a Peruvian citizen born in Peru, who lived in Peru prior to moving to the United States, and who has travelled to Peru in the past ten years. He lived in Peru at an address less than 20 blocks from one of Applicant's restaurants. And prior to opening his restaurant in Florida, Diaz erected a sign bearing the words PARDO'S CHICKEN in the same stylization and color as that used by Applicant in Peru. The Board therefore concluded that there was no genuine issue of material fact regarding Diaz's knowledge of Applicant's use of the PARDO'S CHICKEN mark in Peru prior to his first use in the U.S.

Opposer Diaz asserted that a genuine issue of material fact existed regarding Applicant's bona fide intent to use its mark in the United States, one of the requirements of Section 44. However, the affidavits of Applicant demonstrated that it has undertaken exploratory efforts to expand to the United States, has advertised its restaurants in newspapers with a U.S. distribution, and has formed a corporation in Florida. The Board therefore found no genuine issue of material fact regarding Applicant's intent to use its mark.

In view of its decision in favor of Applicant on the issue of priority, the Board concluded that Opposer could not prevail on its Section 2(d) claim, and it therefore dismissed the opposition.

TTABlog note: Applicant has opened a restaurant in New York City, at 92 Seventh Avenue in the West Villge.

Text Copyright John L. Welch 2007.


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