Precedential No. 3: TTAB Dismisses Claim Invoking Unsatisfiable Santiago Trademark Convention

In a case of first impression, Opposer Franpovi, S.A., a joint-stock company of the Dominican Republic, invoked the Santiago Convention in seeking to block registration of the mark POLLOS VICTORINA (standard characters, but in the color red) for restaurant services. The Board ruled that Opposer did not and indeed could not satisfy the requirements of that treaty, and so it granted summary judgment to Applicants, dismissing this particular claim. Franpovi, S.A. v. Rosalinda Wessin and Daniel Pena, 89 USPQ2d 1637 (TTAB 2009) [precedential].


Opposer alleged that it owns valid registrations in the Dominican Republic for the mark POLLOS VICTORINA for restaurant services, that it is entitled to prevent Applicants' registration under the Convention for the Protection of Commercial, Industrial and Agricultural Trade Marks and Commercial Names ("the Santiago Convention"), 44 Stat. 2494, April 28, 1923, and that it has filed a U.S. application for its mark POLLOS VICTORINA SABOR A TI (which, in English, means VICTORINA CHICKEN FLAVOR TO YOU). Applicants Wessin and Pena admitted that they were aware of Opposer's rights in the Dominican Republic when they filed their application.

The Board noted that the Santiago Convention was ratified by the United States in 1925 and went into force in 1926, after ratification by one-third of the signatory States. However, most parties thereafter joined the General Inter-American Convention for Trade-Mark and Commercial Protection, 46 Stat. 2907, Feb. 20, 1929 (the "Pan-American Convention"), which superseded the Santiago Convention as to the contracting parties. The United States joined the Pan-American Convention, but the Dominican Republic did not. Therefore, the Santiago Convention has not been replaced by the Pan-American Convention as between the USA and the Dominican Republic.

In order to invoke the Santiago Convention for purposes of an opposition proceeding, however, a person must meet several Convention requirements, one of which is to apply for protection through its home state to one of the "Inter American Bureaus." Opposer could not meet that condition because "there is no longer a functioning IAB with which to apply for protection." An IAB was opened in Havana, Cuba, but it ceased functioning in 1949. A second Bureau was contemplated in Brazil, but it was never opened. The Board observed that the functioning of the Bureau "is integral to the treaty's purpose" because without the IAB notification system, "all marks would automatically be subject to protection in all member States of the Santiago Convention merely upon registration thereof in the applicant's home country."

The Board pointed out that, in contrast, the Pan-American Convention requires prior notification of a party's rights, either by filing with a Bureau or directly with the state in which the foreign national desires to assert its rights. Moreover, the Pan-American Convention contains an additional safeguard: a knowledge requirement, designed to protect national rights against foreign registrants.

In short, "the rights established by the Santiago Convention cannot be exercised by a potential plaintiff because it cannot fulfill the condition of application to the IAB." Therefore the Board granted Applicant's motion for summary judgment as to the Santiago Convention claim.

Opposer had also made a claim under the "well-known marks" doctrine, and the Board allowed that claim to go forward, making "no determination regarding the sufficiency or applicability of this claim."

TTABlog notes: Two recent oppositions involving successful claims under the Pan-American Convention may have spurred the Opposer here to invoke the Santiago Convention: one by a Peruvian company (TTABlogged here) and one by a Cuban company (TTABlogged here).

However, as the Board noted, the Pan-American Convention and the Santiago Convention are two different animals. It appears that Opposer Sanpovi would have satisfied the requirements of the Pan-American Convention, had only the Dominican Republic bothered to ratify it. Instead, Opposer was left with the Santiago Convention, which seems to be a dead letter, at least in this context.

It is interesting to note that there is some confusion about what countries are members of these treaties. The confusion seems to arise because more countries signed the treaties than actually went forward and ratified them. For example, it appears that 19 countries signed the Pan-American Convention, but only 10 became members. The INTA website claims that there are 19 members to this Convention, but the TMEP (Appendix B) and the TTAB put the number at 10:

The United States participated in a number of International Conferences of American States with respect to trademarks during the early twentieth century. These conferences resulted in several multi-lateral trademark conventions. The United States is party to three trademark conventions resulting from these conferences. The United States is a party with Bolivia and Ecuador to the Buenos Aires Convention, 1910; with Brazil, the Dominican Republic and Uruguay to the Santiago Convention, 1923; and with Colombia, Cuba, Guatemala, Haiti, Honduras, Nicaragua, Panama, Paraguay and Peru to the Washington Convention, 1929. This latter convention is formally named the "General Inter-American Convention for Trade Mark and Commercial Protection of Washington, 1929," and it is known informally as the "Washington Convention" and also as the "Pan American Convention of 1929." British-American Tobacco Co. v. Philip Morris Inc., 55 USPQ2d 1585, 1587-88 (TTAB 2000).

Text Copyright John L. Welch 2009.