March 2009 Issue

TTAB Cases

Franpovi, S.A. v. Wessin,
Opp’n Nos. 91179589, 91181129 (TTAB Feb. 9, 2009)

ABSTRACT
Opposer sought to prevent the registration of Applicants’ mark POLLOS VICTORINA based on Opposer’s alleged rights under the Santiago Convention.  The parties filed cross-motions for summary judgment on Opposer’s claim under the Santiago Convention.  The TTAB explained that one of the Santiago Convention’s conditions for such an opposition was that the party must apply for protection through an Inter American Bureau (“IAB”).  However, the IAB had closed in 1949.  Because this condition could not be satisfied, the TTAB found that Opposer could not bring an opposition based on the Santiago Convention in the United States, and granted summary judgment for Applicants on that claim.

CASE SUMMARY

FACTS
Franpovi, S.A. (“Opposer”) opposed registration of the mark POLLOS VICTORINA for fast-food restaurants owned by Rosalind Wessin and Daniel Pena (“Applicants”).  Opposer was a Dominican Republic company that owned registrations for the mark POLLOS VICTORINA for restaurant services in the Dominican Republic.  Opposer alleged that it was entitled to prevent Applicants’ registration of their mark in the United States under the terms of the Convention for the Protection of Commercial, Industrial, and Agricultural Trade Marks and Commercial Names (the “Santiago Convention”). 

In their answer, Applicants admitted that they had not used their mark in the United States, or elsewhere, in connection with restaurant services and that they were aware of Opposer’s “limited rights existing solely within the boundaries of the Dominican Republic to the POLLOS VICTORINA mark” when they filed their application.  Applicants denied the remaining allegations in the notice of opposition. 

During the parties’ discovery conference, the TTAB approved a bifurcation of the issues in the proceeding.  Per the bifurcation, the TTAB decided first to entertain motions for summary judgment on Opposer’s claim under the Santiago Convention and then open discovery for Opposer’s foreign famous/well-known mark claim.

ANALYSIS
The TTAB noted that no relevant case law existed addressing the Santiago Convention, which was established in 1923 to protect “commercial, industrial, or agricultural” trademarks registered by persons domiciled in any of the contracting states.  The United States ratified the Santiago Convention in 1925.  Most parties to the Santiago Convention, including the United States, joined the General Inter-American Convention for Trade-Mark and Commercial Protection (the “Pan-American Convention”) a few years later, which superseded the Santiago Convention as between contracting parties.  The Dominican Republic did not, however, join the Pan-American Convention.  Accordingly, the TTAB determined that the Santiago Convention had not been replaced by the Pan-American Convention as between the Dominican Republic and the United States. 

The Santiago Convention provides, inter alia, a mechanism for a domiciliary of one signatory country to prevent the registration of its mark to another claimant in another signatory country.  However, before a party may successfully oppose a mark in the United States based on the treaty, it must show (1) that it is domiciled in one of the signatory states; (2) that it owns a valid registration for its mark in its home state; (3) that it has complied with the formalities and conditions required by the domestic law of the state in which it is claiming rights; and (4) that it has applied for protection through its home state to one of the IABs and paid the appropriate fee.

The TTAB held that Opposer could not meet these conditions.  Specifically, the TTAB noted that there was no longer a functioning IAB with which to apply for protection as required by Article I, Section 1 of the Santiago Convention.  An IAB previously existed in the city of Havana, Cuba, but it ceased functioning in 1949.  The second IAB was to be established in Rio de Janeiro, Brazil, but it never opened.  The TTAB explained that the IAB acted as a record keeper for applications under the Santiago Convention, so that each contracting state had access to a record of all registrations deposited with the IAB.  Without this notification system, all marks would automatically be subject to protection in all member states of the Santiago Convention merely upon registration in the applicant’s home country.

Because of the requirement of application to the IAB, the TTAB found that the rights established by the Santiago Convention could not be exercised by a potential plaintiff because it could not fulfill the condition of application to the IAB.  Opposer’s noncompliance with the unambiguous terms of the treaty thus prevented it from obtaining relief under the treaty.  As a result, the TTAB granted Applicants’ motion for summary judgment on the Santiago Convention claim.

CONCLUSION
A foreign party may no longer rely on the Santiago Convention as a vehicle for opposing a trademark application in the United States.