Ttab Decisions and Developments

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by

TTAB DECISIONS AND DEVELOPMENTS

Jane Shay Wald

Irell & Manella LLP

"Me First" Is Not A Doctrine In Discovery And So A Motion To Amend Was Thus Denied

You Can’t Wait To Respond Until The Other Guy Will Go The Board Has Rules And They Were Well Applied

The Board denied Applicant’s motion to extend time to respond to Opposer’s discovery requests, finding the basis for the motion improper. "The Board is liberal in granting extensions of time before the period to act has elapsed so long as the moving party has not been guilty of negligence or bad faith and the privilege of extension is not abused." Here, Applicant’s basis for the motion was to allow it to depose Opposer’s witnesses before responding to Opposer’s discovery requests. Applicant contends that because it noticed its Rule 30(b) (6) deposition first, it should not be required to respond to Opposer’s discovery requests or to produce documents until after its deposition of Opposer’s witness was completed. "Applicant’s position is improper and cannot serve as the basis for a finding of good cause." Discovery in a Board proceeding "is not governed by the concept of priority of discovery, and parties’ discovery obligations are not dependent upon the actions of the other party." Even if Opposer had failed to fulfill its own obligations, which was not alleged here, [a] party may not delay compliance with its own discovery obligations because it believes that the adverse party wrongfully failed to fulfill its own discovery obligations." OMS Investments, Inc. v. Habit Horticulture LLC, 2012 USPQ2d 1074 (TTAB 2022).

A Big Narcotics Trafficker Banned From Business Here For Years – The Board Called This "Excusable Non-Use"

Could This Be More Biographic-Er? The Kingpin’s Mark Was Saved The Fed’s Asset Seizure – Wonderful Excuse

The Board dismissed an Opposition because Opposer failed to establish priority in its pleaded EUCALIN mark. To gain priority, Opposer would have had to show that it owned the mark or that, if Applicant owned it, Applicant abandoned the mark. It proved neither. Applicant was the manufacturer of the pharmaceutical productsā€”supplementsā€”sold under the mark. Opposer was the distributor

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of the goods. A manufacturer enjoys a rebuttable presumption of ownership as against a distributor claiming to own the mark. The Board considers the following factors to determine whether a distributor has rebutted the presumption of a manufacturer’s ownership: (1) which party created and affixed the mark to the product; (2) which party’s name appeared with the trademark on packaging and promotional materials; (3) which party maintained the quality and uniformity of the product; (4) which party the consuming public believes stands behind the product (to which party do customer complaints go); (5) which party paid for advertising; and (6) what a party represents to others about the source or origin of the product. The Board found that the second, third, and sixth factors favored Applicant. Opposer thus did not rebut the presumption that Applicant was the owner of the mark. Opposer’s use of the mark therefore inured to Applicant.

The Board moved on to consider the abandonment by nonuse claim. Applicant was prohibited from doing business in the United States for seven years because it was declared a "Specially Designated Narcotics Trafficker" ("SDNT"). In October 2008, Applicant was banned from doing business in the United States when the U.S. Treasury Department, Office of Foreign Assets Control ("OFAC") designated Applicant as a SDNT under the drug Kingpin Act. As a result of being designated a SDNT under the Kingpin Act, Applicant’s "property and interests in property within the United States" were blocked while sanctions were in effect. 21 USC Sec. 1904(b). In May 2015, OFAC removed Applicant from the SDNT list, thus lifting the ban on Applicant conducting business in the United States and unblocking Applicant’s property interests in the United States. (The narcotics Applicant was declared to have trafficked in were not the nutritional supplements sold under the EUCALIN mark at issue).

The Board observed that Opposer established a prima facie case based on any three-year period of consecutive nonuse since October 2, 2008, when Applicant was declared a narcotics trafficker under the federal Kingpin Act. That shifted the burden to Applicant to produce evidence of an intent to resume use. Nonuse can be excused by a showing of special circumstances. Applicant asserted that the ban prohibiting it from conducting business in the U.S. was a special circumstance to constitute an excusable non-use. The Board agreed, citing Kelly Liquor Co. v. Nat’l Brockerage Co., 102 F. 2d 857 (CCPA 1939), where a mark-owner was unable to sell its liquor for the duration of Prohibition. Prohibition resulted in excusable non-use and did not work an abandonment. Applicant’s timely actions after the ban against it was lifted showed steps evidencing its intent to resume use in the U.S. a few months after the ban was lifted. For example, Applicant promptly filed the subject application for EUCALIN. In 2016, Applicant sought to enforce the EUCALIN mark in Mexico against Opposer’s suppliers, who were the only entities supplying Opposer’s products under the EUCALIN mark in the U.S. "Even though these proceedings took place outside the U.S., they demonstrate Applicant’s efforts to eliminate or disrupt the supply of Opposer’s EUCALIN products in an effort to remove Opposer as an obstacle to Applicant resuming use of the EUCALIN mark in the [U.S]." Applicant had also petitioned to cancel Opposer’s registration for EUCALIN. That registration was canceled in 2017 due to Opposer’s failure to file a declaration of use under Section 8 of the Trademark Act. The Board specifically found that Applicant’s nonuse during the pending dispute between the parties over the ownership of the EUCALIN mark in the U.S. constituted excusable nonuse. "Nonuse of a mark pending the outcome of litigation to determine the right to such use or pending the outcome of a party’s protest to such use constitutes excusable nonuse sufficient to overcome any inference of abandonment." ARSA Distributing, Inc. v. Salud Natural Mexicana S.A. de C.V., 2022 USPQ 2d 887 (TTAB 2022).

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Remember The Punchline From Many Years Past Where The Doctor Says "You’re Ugly, Too"?

That Old Joke Comes To Mind In This Case Where We Find

The Appellant, So Smugly, Lost Two

The Board denied Applicant’s request for reconsideration of its final decision affirming the Examining Attorney’s refusal to register its DEEP OPTO PROFILING proposed mark. Applicant argued that its Constitutional due process rights were violated, and that the Board violated the requirements of the Administrative Procedure Act. The Board refuted these arguments in detail.

The original Board decision affirmed the Examining Attorney’s finding that the mark was descriptive for various biochemical assay and scientific protocol services. During prosecution, the Examining Attorney cited Applicant’s SEC filing, also citing substantial other evidence that consumers for the Applicant’s mark would understand the term to describe the goods. The Board disagreed that it was unfair to the Applicant, in its original decision, "to consider descriptive use of the elements of the proposed mark, or the entire proposed mark, in Applicant’s own materials." The Board cited In re N.C. Lottery, 866 F. 3d 1363 (Fed. Cir. 2017) for the point that "an applicant’s own website and marketing materials may be…’the most damaging evidence’ in indicating how the relevant purchasing public perceives a term."

Applicant cited the PTAB cases where the Federal Circuit found the Patent Board had relied on a new ground for rejection of the involved claims that was not relied on by the patent examiner. Responded the TTAB: "Unlike the Patent Board in the cited cases, we did not adopt a ‘new ground’ for refusing to register Applicant’s proposed mark when we affirmed the Examining Attorney’s descriptiveness refusal. The statutory basis for refusal, mere descriptiveness under Section 2(e) (1) of the Trademark Act, did not change, nor did the ‘thrust of the rejection.’" The Board emphasized that it may rely on evidence in the record of how an applicant uses the proposed mark in determining whether consumers would perceive it as merely descriptive, and there is no unfairness to the applicant when we do so." In re Berkeley Lights, Inc. 2022 USPQ 2d 1000 (TTAB 2022).

Non-Ownership Is Not A Claim If The Applic. You’re Opposing Is Not Based On Use

You Cannot Take Aim Or Argue There’s Blame In Such Cases – No Loophole Is There, No Excuse

Here, the Board re-designated as precedential an April 2021 decision dismissing an opposition to register the mark SPINTIRES for computer games and software. The only claim in the Opposition was Applicant’s "non-ownership" under Section 1 of the Trademark Act. The Board emphasized that this claim is not available in an opposition where, as here, the application is not based on use. For that reason, the opposition was dismissed with prejudice. The matter came to the Board in the form of Applicant’s motion for summary judgment on the basis that Opposer is not entitled to a statutory cause of action (formerly known as standing). The Board did not reach the motion, and dismissed the opposition sua sponte. "Because Opposer’s pleading is before us as a result of Applicant’s motion for summary judgment, we exercise our discretion to review Opposers claims to determine their legal sufficiency…. The Board has the authority to strike an impermissible or insufficient claim from the pleading."

Where an application is a request for extension of protection of an international registration under Section 66(a), an opposer’s possible claims must be listed on the ESTTA filing form. An opposition against an application filed under Section 66(a) may not be amended to add an entirely new claim. Trademark Rule 2.107(b). The Opposer’s non-

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ownership basis could not state a claim because ownership of a mark can only arise from use of the mark. An application seeking a request for extension of protection of an international registration under Sec. 66(a) is not based on use, but on an international registration owned by the applicant and a bona fide intent to use the mark in commerce. Therefore, the non-ownership claim could not stand. Saber Interactive Incorporated v. Oovee Ltd., Opposition No. 91248894 (April 2, 2021).

In A Cell Phone Number Case A Major Wrinkle, Said The Board

With Mnemonics That Begin With # (For Pound)

So Much Action In This Space These Are Tricky, On Their Face

How Consumers See The #, Where It Is Found

The Board affirmed the Examining Attorney’s refusal to register the proposed mark #LAW for legal referral services and for providing legal services, on the basis that the term failed to function as a mark. Applicant acknowledges that #LAW is a vanity phone number, featured in its advertising: "Dial #LAW (#529) on your cell phone," and similar slogans, e.g. "Call us at #LAW, that’s #529." Applicant argues that the failure-to-function refusal is an "improper application of an alleged per se rule treating mnemonic telephone number marks as incapable as serving a source-indicating function." The Examining Attorney did not dispute registrability of alphanumeric phone numbers when appropriate. The Board observed that the record showed many examples of Applicant’s own use of the term as simply a phone number. The record also showed third-party uses of #LAW by which consumers would be disinclined to find the common term as a source indicator "because they have been exposed to third-party use of the same term in the same field."

The Board made this interesting point. "Unlike the traditional 10- or 11-digit numbers, the new shorter cell phone mnemonic numbers resemble hashtags commonly used nowadays in social media and other contexts, which create more than just a minor additional wrinkle in assessing consumer perception of such proposed marks. As the Federal Circuit described traditional phone numbers in In re Dial-A-Mattress Operating Corp., ‘telephone numbers consist of only seven numbers and typically can be used by only one entity at a time.’ Here, Applicant’s proposed mark #LAW is used by numerous competitors as a hashtag. Thus unlike the vanity phone numbers addressed by the Dial-A-Mattress court, #LAW, which is both a popular hashtag and a vanity phone number, is used by considerably more than one entity at a time."

The Board noted that Applicant’s own website usage and marketing materials used #LAW to convey information – where to callā€”rather than to indicate source. "’An applicant’s own website and marketing materials may be probative or even… the most damaging evidence’ in indicating how the relevant purchasing public perceives a term.’" (citing In re N.C. Lottery, 866 F. 3d 1363 (Fed. Cir. 2017)). The specimens showed ads that "consistently refer to the source of the legal services being provided as [law firm] Morgan & Morgan," with the use of #LAW showing only as "Dial #LAW on your cell." The Board noted that "a claim of acquired distinctiveness does not make its proposed mark registrable because ‘no amount of evidence of acquired distinctiveness can overcome a failure to function refusal.’" In re Pound Law, LLC, 2022 USPQ2d 1062 (TTAB 2022) (citing In re The Ride, LLC, 2020 USPQ2d 39644, at *10 (TTAB 2020)). #Law has now filed a lawsuit against the PTO. Complaint, Pound Law LLC v. Kathi Vidal, in her capacity as Director of the United States Patent and Trademark Office and The United States Patent and Trademark Office, No. 6:23-cv-00061-AAC-DAB (MD. Fla. Jan. 11, 2023), ECF 1.

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In A Case Of First Impression The Board Held This States A Claim: "Misrepr. Of Source" Yeah, Bring It In An Opposition Game

Opposer’s Case Was Tossed Though On A Motion To Dismiss It

It Tried But Then It Lost, A Blow – No Evidence Existed

The Board granted Applicant’s motion to dismiss Pepsico, Inc.’s Opposition on the basis that it failed to state a claim upon which relief can be granted under Fed. R. Civ. P. 12(b)(6).

Applicant sought to register the mark TORTRIX for corn based snack foods. Opposer pleaded these grounds: "(1) The TORTRIX mark is being or will be used by, or with the permission of, Applicant so as to misrepresent the source of the goods on or in connection with which the mark is used. Registration of the Application is therefore unlawful and should be refused pursuant to 15 USC Sec. 1064(3); (2) Applicant did not and does not have a bona fide intention to make lawful use of the TORTRIX mark in the United States, and (3) Applicant seeks to procure registration of the applied-for mark through fraud."

This presents a case of first impression allowing "misrepresentation of source" as an available claim in an opposition. Misrepresentation of source is identified in Sec. 14(3) of the Trademark Act as a claim that may be brought against a registered mark "at any time." 15 USC Sec. 1064(3). The Board observed: "There is nothing in the nature of a misrepresentation of source claim that would limit it to registered marks. Moreover, other claims expressly identified only in Section 14(3), e.g., fraud, abandonment and genericness, may be asserted in opposition proceedings." The Board determined that allowing a claim of misrepresentation of source in an opposition served public policy, precluding piecemeal litigation. The potential harm to a plaintiff also might be compounded if it were required to wait until a mark registers to assert misrepresentation of source."

Although the Board newly extended "misrepresentation of source" as a claim that could support an opposition, it did not find that Pepsico had pleaded it sufficiently here. Meenaxi Enter., Inc. v. Coca-Cola Co., 38 F. 4th 1067 (Fed. Cir. 2022). The Board explained that there is no need to allege ownership of a U.S. trademarkā€”registered or unregisteredā€”to plead entitlement to a statutory cause of action. Misrepresentation of source extends to the improper use of marks that cause commercial injury. A plaintiff pleading misrepresentation of source may plead its entitlement based on reputational injury or lost salesā€”but the plaintiff has to establish its reputation exists in the U.S., and the harm occurs in the U.S.

The Board ran through the pleaded grounds and as to each, noted that Opposer pleaded no facts to support that Applicant is actually using the TORTRIX mark. Nor did it plead any facts to show how its own use of TORTRIX in Central and South America resulted in any reputation in the U.S. Therefore, the Board found Opposer failed to sufficiently plead its entitlement to a statutory cause of action, the only ground for Opposition in the case. The Board nonetheless went on to explain why, even if Opposer had met this "standing" burden, it could not have [to] survived a motion to dismiss. The Board found that for the same reasons that Opposer failed to show entitlement to a statutory cause of action, it did not plead the required three elements that are the gravamen of such a case. These are (1) use of the challenged mark by the defendant; (2) passing off by defendant; (3) the nature of the injury to plaintiff. The misrepresentation of source grounds require that the defendant’s mark be in use. Here, the mark at issue was filed pursuant to an intent to use, and no amendment to allege use was filed. There were no unequivocal facts alleged to show that Applicant was actually using the TORTRIX mark. Next, Opposer didn’t allege any unequivocal facts to support that Applicant was deliberately passing off its goods as the Opposer’s goods. Third,

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as the Board discussed in the statutory entitlement section, Opposer alleged no facts about the reputation of its TORTRIX mark in the U.S.

The Board similarly dismissed Opposer’s claims regarding lack of bona fide intent to use, and fraud, as having insufficient allegations for either of these. Pepsico, Inc. v. Arriera Foods LLC, 2022 USPQ2d 856 (TTAB2022).

The Cases That Go Up In Smoke For Cannabis Are Telling

You Must Respect The Farm Bill Re The Goods That You Are Selling

And Also Mind The FDA They Have An Awful Lot To Say

But Here The Parties Well-Complied In Selling Legal Dope

But No 2(D), This Was Denied Board To Opposer: "Nope"

The Board dismissed an Opposition, finding Applicant’s design mark SMOKES for cannabis cigarettes was not likely to be confused with Opposer’s SMOK for electronic cigarettes. Applicant’s cannabis goods were claimed as "Cigarettes containing tobacco substitutes not for medical purposes containing only cannabis with a delta-9 THC concentration of not more than 0.3% on a dry weight basis, in International Class 34."

The most interesting issues in the otherwise unexceptional case are as follows.

  • How did this cannabis product survive examination?

"Applicant’s goods under the mark are registrable as they are no longer covered by the Controlled Substances Act (CSA). See ‘Examination Guide 1-19 Examination of marks for Cannabis and Cannabis Related Goods and Services after Enactment of the 2018 Farm Bill’ (addressing the enactment of the 2018 Farm Bill and the examination of hemp goods that contain no more than 0.3% THC on a dry-weight basis that no longer fall under the definition of controlled substances under the CSA). The Examination guide does note that ‘not all goods for CBD or hemp-derived products are lawful following the 2018 Farm Bill,’ ‘[t]he 2018 Farm Bill explicitly preserved FDA’s authority to regulate products containing cannabis or cannabis-derived compounds under the FDCA,’ and that ‘registration of marks for foods, beverages, dietary supplements, or pet treats containing CBD will still be refused as unlawful under the FDCA [Food Drug and Cosmetic Act].’ Exam Guide at p. 2." Shenzhen IVPS Technology Co., Ltd. v. Fancy Pants Products, LLC, p. 45, no. 60.

  • Applicant did not file a brief, and won anyhow. A plaintiff is required to file a brief; Opposer did so. It had also introduced evidence. Defendant, once it responds to the Opposition, need not file a brief. This is not a defaulting condition.
  • Ten of Opposer’s pleaded registrations were not, at first, of record, as Opposer did not properly make them of record. Only one of its registrations was allowed into the record.
  • Because Applicant did not file a brief, it did not contest the improper introduction of 10 of Opposer’s registrations into the record. The Board therefore found the 10 registrations were tried upon implied consent of Applicant.
  • Despite the Opposer’s 10 registrations that were thrust back into the record by Applicant’s inaction, Opposer’s "family of marks" arguments were unavailing as the marks were not promoted as a family, among other failings.

Shenzhen IVPS Technology Co., Ltd. v. Fancy Pants Products, LLC, Opposition No. 91263919 (October 31, 2022).

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Superman Lives Through The Ages Lost His Case In Many Pages

The Board dismissed D.C. Comics’ Opposition, finding no likelihood of confusion under Sec. 2(d) or dilution by blurring under 43(c).

The Board expressed exasperation with both parties but ruled for the Applicant in a 72-page Opinion.

Cellular Nerd LLC sought registration of the following word and design mark for "installation, maintenance and repair of cell phone and related hardware," in Int. Cl. 37.

A side-by-side comparison of a Superman-like mark by the Applicant, CellularNerd.com, and three similar images of the Superman shield marks by Opposer.

Opposer pleaded versions of its registered shield marks for comic books, entertainment services (production of motion picture series), bowls, mugs, glasses, clothing, earrings, wallets and umbrellas. It did not plead its closest looking registration, for "issuance of credit cards; rebates part of customer loyalty program." It did plead common law rights in that image for those goods.

A mark showing Clark Kent ripping off his shirt to reveal the Superman shield.

The Board was displeased that Opposer "introduced thousands of pages of evidence in the hope that as we wade through it we will find something that is probative." The Board further chastised Opposer for cumulative evidence, and for failing to highlight what it wanted the Board to focus on in the evidence.

The Board emphasized that citation of non-precedential decisions was strongly discouraged. Opposer cited 14 non-precedential Board opinions in its main brief and 9 non-precedential Board opinions in its reply brief. The Board offered this zinger to Opposer, no stranger to Board matters. "Whether Opposer is unfamiliar with Board practice or simply disregarded it, the wholesale citation of non-precedential cases lessens the persuasive value of Opposer’s briefs." The Board expressed similar exasperation with Opposer’s illegible exhibits: "Illegible evidence is given no consideration." The Board pointed out that Opposer should have ensured that submissions meet certain basic requirements, such as legibility.

As to the unpleaded registration showing Clark Kent ripping off his shirt to reveal the Superman shield, the Opposer introduced it through its Notice of Reliance. Since Opposer had not pleaded this registration, it waived the right to rely on it. Applicant could have moved to strike, and the Board would have had no choice but to exclude the unpleaded registration. However, Applicant did not move to strike, and discussed the registration. The Board found that by Applicant’s interaction with the registration in its briefs, it implicitly consented to having the un-pleaded registration treated as if it had been pleaded. The Board therefore amended the Notice of Opposition to include the previously unpleaded registration.

Applicant sought to introduce a "Facebook Poll" posted under its own name, with the question "Does the Cellular Nerd logo make anyone think of Superman? DC comics filed opposition for our trademark and it’s coming to a head." The poll offered two choices: "DC is wrong" or "DC is right." The Board explained what a survey was, and the evidentiary requirements for an admissible survey, and emphasized that this was not one of them.

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The Board explained conceptual (inherent) strengthā€”"what kind of mark is this?" And it explained commercial strength (market strength). As to conceptual strength, some of Opposer’s marks were registered pursuant to claims of acquired distinctiveness, Sec. 2(d). The Board emphasized that this is an admission that the mark is not inherently distinctive. Sec. 2(d) undermines conceptual strength. The Applicant introduced over 50 third party registrations to show an initialed chest badge is common for a variety of goods and services. Applicant argued that these show that an initialed chest badge is common and shows only a "genus of superhero musclemen" and not Superman specifically. The Board found only a handful of such registrations relevant to show descriptiveness in the conceptual strength analysis. The Board explained that third party registrations are acceptable to use in the manner of a dictionary to show descriptiveness in the analysis of conceptual strength, citing Juice Generation, Inc. v. GS Enters. LLC, 794 F. 3d 1334 (Fed. Cir. 2015).

Third party registration evidence that does not equate to proof of third party use may bear on conceptual weakness if a term is commonly registered for similar goods. The Board said that third-party registration evidence is irrelevant to disprove commercial strength, because it is not probative of actual use. (We can all probably think of examples where the Board relied on third-party registrations to undercut commercial use, despite the "rule.")

With respect to Opposer’s likelihood of confusion claim, the Board noted that there are two tests for fame, depending on the cause of action. Fame to establish likelihood of confusion is not required at all. But if the mark is famous, it helps the plaintiff. For likelihood of confusion, fame can be on a spectrum from a little bit famous to very famous. Fame for a dilution claim requires absolute fame. There is no room for "a little bit famous" in a dilution claim.

To show fame in a likelihood of confusion analysis, Opposer included many images of Clark Kent tearing his shirt off to reveal the S Superman shield. But none was found to be trademark use. Handily, Applicant’s brief did not contest Opposer’s commercial strength.

Opposer argued that because it licensed its shield marks for disparate goods and services, consumers would assume Applicant’s services emanated from Opposer. The Board dismissed that idea as advancing a trademark right in gross. The Board found the Applicant’s mark didn’t look like the Opposer’s marks, and the services were different and unrelated. Therefore, the Board saw no likelihood of confusion.

As to the dilution by blurring claim, which requires no likelihood of confusion, competition, or actual economic injury, the Board found the Opposer’s ripping-shirt logo was not famous for credit card use/consumer loyalty before the applicant used its mark and filed for registration; Applicant had priority, regarding the registration.

Opposer tried to show that Applicant intended to create an association with its Clark Kent shirt-ripping "mark" to support its dilution claim. The Board disagreed that Applicant had that intentā€”despite an admission made by its counsel in prosecution of the application being opposed. Since the Applicant’s file history was of record, Opposer properly argued this admission. Early on, the Examining Attorney had cited a third-party registration for CELL NERDS and design against Applicant’s then-pending application. The CELL NERDS goods were "cell phone battery chargers." To distinguish Applicant’s mark from the cited CELL NERDS mark, Applicant’s lawyer argued that the CELLULAR NERD and design mark was different from the CELL NERDS mark because it incorporates the letters CN in a diamond shape "reminiscent of Superman’s crest," and that its CELULARNERD.com character "is pulling his shirt open like Clark Kent would be before changing into Superman." Applicant said his trademark lawyer said that, and he didn’t

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agree with it. But the Board pointed out that client is bound by the action of its attorneys. Nonetheless, the Board found Opposer failed to prove that it used the "shirt-ripping action" as a trademark prior to Applicant’s use of the mark and therefore the Board did not consider the admission in its dilution analysis.

Finally, in footnote 109, the Board suggested that Opposer’s witness made a better case for unpleaded Section 2(a)ā€”false suggestion of a connectionā€”than the pleaded likelihood of confusion and dilution claims. D.C. Comics v. Cellular Nerd LLC, 2022 USPQ 2d 1249 (TTAB 2022).

Article 8 Of The Pan Am Convention A Blow-Your-Mind Treaty, Just Look At The Tension Don’t Take My Word, Read The Case … It’s Exciting The Law Sure Supports What The Board Did, In Writing

An Expert On This, Professor C. Farley Has Called Our Attention To This For Some Time It’s Not Trademark Law, And It’s Ever So Gnarly She’s Published Aplenty (Although Not In Rhyme)

The Board granted a Petition to Cancel two registrations, the typeset (word) mark COHIBA and the slightly stylized form COHIBA shown here. The registrations were canceled pursuant to Article 8 of the Inter-American Convention for Trade Mark and Commercial Protection, 46 Stat. 2907 (1929), ("the Pan American Convention.") The registrations were for cigars. This decision has been pending since 1997, many of the years on suspension in view of litigation, resulting in decisions by both the Second Circuit and the Federal Circuit.

Respondent, General Cigar Co., Inc., whose registrations were canceled, is based in the U.S. It was granted registration for COHIBA in 1981, and has used its mark here. The prevailing party, Petitioner, Empresa Cubana Del Tabaco d.b.a. Cubatabaco, is a Cuban company. It has sold COHIBA cigars since 1972, worldwide, but could not sell into the U.S. because of our 60 year embargo prohibiting Cuban interests from selling into the U.S. Therefore, as to use in the U.S., Respondent has priority, the marks are the same, and the cigar goods overlap. Why did Petitioner win? Because Article 8 of the Pan American Convention, that the Board found applicable here, is not based on trademark law principles. Both the U.S. and Cuba are parties to the Convention. The beneficiaries under the Pan American Convention are defined as (1) nationals of contracting states, and (2) domiciled foreigners who own a manufacturing or commercial establishment. in any of the contracting states.

The Board noted that its seminal decision pertaining to the Convention is British-American Tobacco Co. v. Phillip Morris Inc., 55 USPQ 2d 1585 (TTAB 2000). There, the Board denied respondent’s motion to dismiss the petition to cancel and held that the Board had the requisite jurisdiction to consider the petitioner’s claim brought under Article 8 of the Pan American Convention in a cancellation proceeding in the TTAB. The law was authorized under Sec. 17 of the Lanham Act, 15 USC Sec. 1067. The Board cited Bacardi Corp. of Am. v. Domenech, 311 U.S.150, 161 (1940) for the proposition that the Pan American Convention is self-executing and therefore became law upon ratification. A self-executing law requires no special implementing legislation (unlike 6bis of the Paris Convention, the "well known marks" doctrine, never implemented in the U.S.).

Trademark scholar Professor Christine Haight Farley of American University Washington College of Law has written extensively on this "stealth" provision. Her comments on the Board’s decision in this case, from an article in John Welch’s daily TTABlog, are illuminating:

"In particular, the TTAB ruled that the registrations were a violation of Article 8 of the convention, which provides the right to cancel a conflicting registration by a party that has priority for the same mark in another member state when the registrant had knowledge of the petitioner’s

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prior right. That is, the owner of a trademark right in another country that has neither used the mark nor applied for registration in the U.S., can cancel a subsequent trademark registration in the U.S. if it can show that the registrant knew of its mark. The foreign trademark need not be well-known or famous, just known to the applicant. And there is no requirement of bad faith, just knowledge. The foreign mark just needs to be protected under the trademark law of that jurisdiction, whether that be by common law or registration." Prof. Christine Haight Farley, 1/4/23 TTABlog.1

Professor Farley’s article emphasizes that there is no time bar to using the Pan American Convention to cancel registrations under Article 8. She writes this is "the first time the Convention has been applied in the service of a well-known mark. In this way, the Convention offers a novel means to circumvent the lack of implementation of Article 6bis of the Paris Convention into U.S. Law."2

The facts supported Petitioner’s rights under Article 8. Petitioner had prior enforceable rights in a member state, Cuba, going back to the early 1970s. The Board found credible the evidence that the Respondent had at least constructive or imputed knowledge of Petitioner’s COHIBA mark as a cigar brand in Cuba since at least 1977; Respondent’s Chair and President admitted he "’must have’ read" a Forbes article about Petitioner’s mark.

Respondent did not rebut the evidence Petitioner offered to show that Respondent’s acts supported its liability under Article 8. Instead, it argued at length that Petitioner was precluded from prior litigation from considering this evidence, or Article 8 at all. The Board Opinion gives extensive discussion to why it determined there is no issue or claim preclusion arising from the Second Circuit or Federal Circuit opinions to prevent the TTAB from using Article 8 to cancel Respondents registrations. To the contrary, the TTAB was persuaded that an earlier Federal Circuit holding precluded either party from asserting issue preclusion in this case. Empresa Cubana Del Tabaco d.b.a. Cubatabaco v. General Cigar Co., Inc., 2022 USPQ 2d 1242 (TTAB 2022).

The views expressed in this article are personal to the author and do not necessarily represent or reflect the views of the author’s firm, the Executive Committee of the Intellectual Property Law Section, the California Lawyers Association, or any colleagues, organization, or client.

© 2023 Jane Shay Wald.

Jane Shay Wald is a partner emeritus with Irell & Manella LLP, and chairs the firm’s trademark practice group. She is a frequent writer and speaker on trademark law. She can be reached at jwald@irell.com.

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Notes:

1. Christine Haight Farley, Prof. Christine Haight Farley Explains the Pan American Convention and the Cohiba Decision, The TTABlog (January 4 2023), http://thettablog.blogspot.com/2023/01/prof-christine-haight-farley-explains.html.

2. Other articles by Prof. Farley on the subject include:

Christine Haight Farley, The Lost Unfair Competition Law, 110 Trademark Rep. 739 (2020). (About the unfair competition provisions in the treaty),
Christine Haight Farley, The Pan-American Trademark Convention of 1929: A Bold Vision of Extraterritorial Meets Current Realities, in TRADEMARK PROTECTION AND TERRITORIALITY: CHALLENGES IN THE GLOBAL ECONOMY (Irene Calboli & Edward Lee, eds., Edward Elgar Press 2014). (About Articles 7 & 8 of the treaty).

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