Tuesday, January 11, 2011

Precedential No. 49: Following First Niagara, TTAB Rules That Foreign Owner Sufficiently Pleaded Use of Mark in USA

The Board denied Respondent Intermix's Rule 12(b)(6) motion for dismissal of this cancellation proceeding involving its registration for the mark PEMEX for petroleum products and services, finding that Petitioner Petróleos Mexicanos has standing and had properly pleaded three claims for relief: false association under Section 2(a), likelihood of confusion under Section 2(d), and fraud. Petróleos Mexicanos v. Intermix S.A., 97 USPQ2d 1403 (TTAB 2010) [precedential].


Standing: The Board noted that if Petitioner establishes standing as to any of its pleaded grounds, then it has the right to assert any other ground as well. Respondent "essentially argues that petitioner lacks standing because it neither pleaded use nor registration of its mark in the United States, nor otherwise pleaded any trademark rights in its mark that are protectable in the United States."

However, for a Section 2(a) claim of false association, petitioner need not allege proprietary rights in its name for purposes of standing. "[A] petitioner may have standing by virtue of who petitioner is, that is, its identity." Petitioner pleaded that the name and mark "PEMEX" point uniquely and unmistakeably to it. That is enough for standing.

Section 2(a): Furthermore, the Board ruled that Petitioner has properly pleaded a Section 2(a) claim: "that it is the actual institution with which consumers will presume a false suggestion of a connection when confronted with respondent's identical PEMEX mark, and which is allegedly implicated by that false suggestion."

Section 2(d): Petitioner alleged that it has "extensive business activities" in this country, but Respondent argued that these activities fall far short of a bona fide use of a trademark in commerce, "as required by 15 U.S.C. Sec. 1127."

The Board, however, pointed out that Section 2(d) requires merely that a prior mark has been "used in the United States by another." In First Niagara [TTABlogged here], the CAFC stated that "a foreign opposer can present its opposition on the merits by showing only use of its mark in the United States." [In other words, the use need not meet the standard for obtaining a registration in this country. - ed.]

Specifically, the First Niagara court found that a Canadian insurance company, operating out of Canada and having no physical presence in the United States, had connections to the United States by way of, inter alia, selling policies issued by United States-based underwriters, and selling policies to United States citizens having Canadian property, and that such connections were sufficient to establish priority.

The Board concluded that Petitioner's allegations were adequate; whether its activities "constitute use, or use analogous to trademark use ... sufficient to prove priority, is a matter for trial."

Fraud: The Board reviewed Petitioner's fraud allegations and found them to be sufficient: "petitioner alleges with particularity that respondent knowingly, with the intent to deceive the USPTO, made a material misrepresentation that it was using its mark in commerce in the United States on the identified goods and services as of the time it filed its statement of use, when no such use had been made."

And so the Board resumed proceedings and re-set all dates.

TTABlog comment: In footnote 5, the Board distinguished this case from Bayer v. Belmora [not a 2(a) claim]; compared it favorably to the "Twiggy" case, Hornby v. TJX [successful 2(a) claim despite abandonment of personal name mark in the USA]; and noted the recent Fiat decision [a dilution case recognizing that activity outside the United States could result in the mark being well-known in the USA, even without any activity here].

Text Copyright John L. Welch 2010.

2 Comments:

At 7:05 PM, Blogger Pamela Chestek said...

Does the 2(a) decision mean that a company should, as a matter of course, plead under 2(a) when the mark infringed also happens to be the company's name?

 
At 9:38 PM, Anonymous Rob said...

Do not bother moving to dismiss for lack of standing. The Board hardly ever grants them, and on appeal there has not been one instance in the last decade where the CAFC affirmed a Rule 12(b)(6) dismissal for lack of standing.

Whether standing can be proven at trial is obviously a different issue.

 

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