Precedential No. 1: Section 66(a) Applicant Wins TTAB Priority Contest in "FRUITOLOGY" 2(d) Dispute

In a priority battle involving two applications to register the mark FRUITOLOGY for "overlapping or legally identical goods," the Board found that the Section 66(a) application filed by French company Danone had priority over the Section 1(b) application of Texas company, Precision Formulations. The Board therefore granted summary judgment to Danone in its opposition and granted Danone's motion to dismiss in the other opposition. Compagnie Gervais Danone v. Precision Formulations, LLC, 89 USPQ2d 1251 (TTAB 2009) [precedential].


Precision's filing date of February 21, 2007 for its ITU application was its constructive first use date. The question was: could Danone beat that date?

As to Danone's application under Section 66, the applicable filing date was May 22, 2007, the date of issuance of its International Registration. See TMEP Sec. 1904.1(b). As to its constructive first use date, Section 66(b) provides that a Section 66(a) application:

...shall constitute constructive use of the mark, conferring the same rights as those specified in section 7(c), as of the earliest of the following:
(1) The international registration date, if the request for extension of protection was filed in the international application.
(2) The date of recordal of the request for extension of protection, if the request for extension of protection was made after the international registration date.
(3) The date of priority claimed pursuant to section 67.

Under Section 67, "an applicant is entitled to claim a date of priority when it holds an international registration, makes a request for extension of protection (application) to the U.S., includes a claim of priority based on a right of priority under Article 4 of the Paris Convention for the Protection of Industrial Property, and the date of the international registration is within six months of the filing date of the application underlying the international registration."

Danone's International Registration claimed convention priority based upon a French application filed on December 6, 2006, and issuing on May 11, 2007.

Therefore Danone is entitled to a priority date of December 6, 2006. The Board consequently granted summary judgment to Danone on its Section 2(d) likelihood of confusion claim.

Danone's motion to dismiss Precision's opposition added another wrinkle. Precision had pleaded that it first used its mark in February 2007 and that Danone had filed an "intent-to-use application" on May 22, 2007. When Danone moved to dismiss for failure to state a claim, Precision argued that, because its notice of opposition must be construed in a light most favorable to it, the Board must accept as true its allegations regarding filing dates and priority.

Danone argued that its underlying application is "incorporated by reference" in the notice of opposition and therefore is "available to the Board for consideration on the motion."

The procedural problem was this: the Board could not consider documents outside the pleadings, so as to treat this motion as a motion for summary judgment, because in proceedings commenced after November 1, 2007, the TTAB Rules do not permit motions for summary judgment until the party has made its initial disclosures (except for motions asserting claim or issue preclusion or lack of subject matter jurisdiction).

However, on a motion to dismiss for failure to state a claim, the Board may look at other facts, including the filing date, filing basis, priority date, etc., in an application that is the subject of the opposition. Moreover, although the Board must accept as true all "well-pleaded allegations," here Precision's assertion that Danone filed an "intent-to-use" application is incorrect and "not well pleaded." Danone filed a request for extension of protection under Section 66(a), not a Section 1(b) application.

[T]he Board is under no obligation to accept such allegations as true. The Board will not take as true any allegations contradicting facts in the record.

The Board concluded that Precision's allegations "do not establish a claim of priority over Danone's effective filing date of December 6, 2006, which date is claimed in the subject application filed under Section 66 of the Trademark Act." Therefore "the allegations do not allege such facts that, if proved, would establish that Precision is entitled to the relief sought."

And so, the Board granted Danone's motion to dismiss Precision's opposition.

Note that both of Danone's motions were granted contingent upon its application maturing to registration. See Sections 66(b) and 7(c).

Text Copyright John L. Welch 2008.