Precedential No. 11: Foreign Mark's Fame in US Plus ITU Application Provides Dilution Cause of Action, Says TTAB

In this case of first impression, the Board ruled that a foreign trademark owner who has filed an ITU application may rely on the fame of its mark in the United States to support a dilution claim in an opposition. In other words, although the TTAB does not recognize the "well known mark" or "famous foreign mark" doctrine as a basis for preventing registration by another, the fame of the foreign mark in this country may support a dilution claim, provided that the owner has filed an ITU application for the mark. Fiat Group Automobiles S.p.A. v. ISM, Inc., 94 USPQ2d 1111 (TTAB 2010) [precedential].


Opposer filed an opposition to registration of the mark PANDA for automobiles, asserting lack of bona fide intent to use the mark, and dilution of Fiat's "internationally famous" marks FIAT PANDA and PANDA. Applicant moved to dismiss for failure to state a claim upon which relief can be granted, asserting that Fiat "has no reasonable basis for damage in the absence of an allegation of 'continuing prior use of any form of 'Panda' in the United States.'"

The Board found that Fiat has standing to bring the opposition because it owns an US intent-to-use application for FIAT PANDA that has been provisionally refused based on prior pending applications, including the application here opposed.

The Board found the lack-of-bona-fide intent claim to be properly pled. The real question was whether the dilution claim could survive in light of Fiat's lack of use in the United States.

The Board turned to the requirements of the Trademark Dilution Revision Act (Section 43(c)), which affords certain relief to the "owner of a famous mark." The Act does not define the term "mark," and so the Board looked to Section 45 of the Trademark Act for its meaning.

Utilizing the statutory definition of “mark” to infuse our understanding of “famous mark” as referenced in the TDRA leaves no doubt that any reference in that act to a “famous mark” is a reference to a mark in use in the United States, or for which there is an intent to use the mark in the United States coupled with an application for registration.

The Board concluded that it must "at least recognize the possibility that, in an unusual case, activity outside the United States related to a mark could potentially result in the mark becoming well-known within the United States, even without any form of activity in the United States."

Therefore, while Section 43(c) provides a dilution cause of action for the protection of famous unregistered marks, it does not provide a cause of action for famous unregistered marks not in use, in some way, in the United States, in the absence of a specific pleading of intent to use, the filing of an application for registration, and some basis for concluding that recognition of the mark in the United States is sufficiently widespread as to create an association of the mark with particular products or services, even if the source of the same is anonymous and even if the products or services are not available in the United States.

The Board then ruled that Fiat had not properly pleaded a dilution claim because it did not allege "any particular type of use or specific facts which could be proved at trial as demonstrating widespread recognition of its mark in the United States." Fiat was given thirty days to replead its dilution claim.

Text Copyright John L. Welch 2010.