CAFC refers GALPERTI case to TTAB again due to legal errors in assessing the falsity of an acquired distinctiveness claim – Intellectual property
United States: CAFC refers GALPERTI case back to TTAB due to legal errors in assessing falsity of assertion of acquired distinctiveness
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The CAFC again dismissed the GALPERTI case at TTAB, finding for the second time that the Board erred in dismissing petitioner Galperti, Inc.’s (Galperti-USA) fraud allegation. Respondent Galperti SRL (Galperti-Italy), in applying for registration on the basis of distinctiveness acquired under Article 2 (f), asserted that its use of the mark had been “essentially exclusive” during of the previous five years. Gaoperti-USA alleged that this claim was false and fraudulent. In the first call
here], the court ruled that the Commission had erred in not considering, on the issue of falsity, whether the use of GALPERTI by others was substantial or inconsequential. On remand, the Board again dismissed the fraud allegation, but the CAFC concluded that the Board erred in law in holding that (1) for Galperti-USA’s use of the mark to be taken into account account, she had to prove that she had acquired the rights to the GALPERTI trademark via a secondary sense, and (2) Galperti-USA could not rely on the use of GALPERTI by third parties as there was no evidence confidentiality between Galperti-USA and third-party users. Galperti, Inc. v Galperti SRL, Call n ° 2021-1011 (Federal Cir. November 4, 2021) [precedential].
It was not disputed that GALPERTI was above all a family name, and Galperti-Italy therefore had to prove acquired distinctiveness in order to obtain its registration. Section 2 (f) of the Lanham Act allows the USPTO to accept as prima facie evidence of acquired distinctiveness, “evidence of the substantially exclusive and continuous use” of the mark in commerce for the five years preceding the claim of distinctiveness. In order to assess whether an applicant has had an ‘essentially exclusive’ use of a mark, one must examine whether ‘a use by a third party was’ significant ‘or whether it was simply’ inconsequential or infringing ” (citing LD Kichler Co. v. Davoil, 192 F.3d 1349, 1352 (Fed. Cir. 1999)). On the first referral, the Board concluded that the third party uses were inconsequential, not substantial, but refused to consider the uses by Galperti-USA or by certain third party affiliates of Galperti-USA to determine the falsity of the section. by Galperti-Italy 2 (f). It was a mistake.
The CAFC pointed out that “even market users of a term that has no secondary meaning to users are among the uses” that must be considered in assessing whether a mark has been subject to “substantially exclusive use.” “. See,
for example, De Walt, Inc. v Magna Power Tool Corp., 289 F.2d 656, 661 (CCPA 1961); In the case of Boston Beer Co., 198 F.3d 1370, 1373 (Fed. Cir. 1999). In short, “Galperti-USA does not need to establish a secondary meaning of its own uses of GALPERTI for these uses to be considered in determining the falsity of Galperti-Italy’s claim of a use. substantially exclusive ”.
The Council’s decision regarding confidentiality between Galperti-USA and third-party users was also contrary to the court’s precedent.
See Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 1320 (CCPA 1981); Converse, Inc. v. Int’l Trade Comm’n, 909 F.3 (Fed. Cir. 2018).
Use by anyone, regardless of their relationship to the challenger, can undermine a substantially exclusive use claim. This simple point is reflected in our earlier opinion in this case, where we said that “any third party use” could be material. 2019 CAFC Op., 791 F. App’x at 910.
The CAFC therefore overturned the decision and referred the matter back to Council. “Further analysis of the issue of falsity must continue in the absence of the legal errors that we have identified. We do not address the intentional aspect of the fraud charge, which the Council did not address. . “
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