Precedential No. 27: TTAB Dismisses Empresa Cubana's Pan-Am Article 8 Claim, But With Leave To Re-Plead

In a precedential decision of interest to the many aficianados of the Pan-American Convention, the Board granted a Rule 12(b)(6) motion to dismiss Petitioner Empresa Cubana's claim for cancellation under Article 8 of the Convention. Empresa's allegations fell just short of stating a proper claim, but the Board gave Empresa twenty days to re-plead. Empresa Cubana del Tabaco d.b.a. Cubatabaco v. Kretek International, Inc., Cancellation No. 92082877 (November 14, 2024) [precedential].

Empressa sought cancellation of the registrations for the two marks shown above, for "cigars," claiming likelihood of confusion Under Section 2(d) with several of its marks, and violation of Article 8 of the Pan-American Convention. The Article 8 claim was founded on Empresa's pending application for the mark shown below.

Article 8 provides, in pertinent part:

When the owner of a mark seeks the registration . . . of the mark in a Contracting State other than that of origin of the mark and such registration . . . is refused because of the previous registration . . . of an interfering mark, he shall have the right to apply for and obtain the cancellation or annulment of the interfering mark upon proving, in accordance with the legal procedure of the country in which cancellation is sought, the stipulations in Paragraph (a) and those of either Paragraph (b) or (c) below:

(a) That he enjoyed legal protection for his mark in another of the Contracting States prior to the date of the application for the registration . . . which he seeks to cancel; and

(b) That the claimant of the interfering mark, the cancellation of which is sought, had knowledge of the use, employment, registration or deposit in any of the Contracting States of the mark for the specific goods to which said interfering mark is applied, prior to adoption and use thereof or prior to the filing of the application or deposit of the mark which is sought to be cancelled; . . . . 46 Stat. 2907. (Emphasis by the Board).

Respondent Kretek argued that (1) Empresa's Article 8 claim was "premature" because the USPTO had not cited Kretek's registrations as grounds for refusal of Empresa's pending application, but had only suspended the application pending resolution of this cancellation proceeding; and (2) Empresa had not alleged a sufficient factual basis as to Kretek's knowledge of Empresa's mark prior to Kretek's adoption and use of its marks or prior to the underlying applications for the challenged registration.

Premature?  As to whether Emrepesa's claim was premature, the question was whether Empresa's application had been "refused" because of Kretek's registrations. In the Lacteos case, the Board found that a "potential for refusal" based on an opposition proceeding sufficed to satisfy Article 8.

Building on Lacteos, where “the potential for refusal” is sufficient to bring a counterclaim for cancellation, we now hold that where a Trademark Examining Attorney suspends prosecution of a plaintiff’s application for registration pending the disposition of a legal proceeding involving plaintiff’s likelihood of confusion claim against a defendant’s registration that has been identified as presenting a bar to registration of the plaintiff’s mark, the requirement in the Article 8 Preamble for “the potential for refusal” is satisfied.

Knowledge? Having decided that Empresa's claim was timely, the Board then turned to the specific allegations of the claim:

Petitioner must allege that: (1) it seeks registration in the U.S. of a mark which originated in another Contracting State; (2) during ex parte examination by the USPTO, registration to Petitioner has either been refused or the Examining Attorney has identified a potential for refusal because of Respondent’s Registrations; (3) Petitioner enjoyed legal protection for its mark in another Contracting State prior to the date of Respondent’s applications for Respondent’s Registrations; and (4) Respondent had knowledge of the use or registration in any of the Contracting States of Petitioner’s mark for the identical goods to which Respondent’s marks are applied, prior to adoption and use of Respondent’s marks or prior to the filing of Respondent’s applications for Respondent’s Registrations. See Lacteos, 2020 TTAB LEXIS 13, at *12-13. (Emphasis supplied).

After reviewing Empresa's allegations in detail, the Board found that Empresa had stated a factual basis for its claim. In particular, as to whether Kretek "had knowledge of the use, employment, registration or deposit in any of the Contracting States," the Board found sufficient the allegations that Kretek's marks are "a blatant and obvious copying" of Empresa's mark meant to "capitalize upon and exploit" the fame of its designs used in connection with its "renowned COHIBA cigars."

Leave to Re-plead: Nevertheless, the Board granted the motion to dismiss because Empresa did not include the required allegation that registration "has either been refused or the Examining Attorney has identified a potential for refusal" because of Kretek's registrations. The dismissal was without prejudice, however, and the Board allowed Empresa twenty days within which to file and serve a "supplemental petition for cancellation" that includes that allegation.

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TTABlogger comment: For a helpful explanation of the Pan-American Convention, see Professor Christine Haight Farley's TTABlog article here.

Text Copyright John L. Welch 2024.