Conception of idea for mark does not constitute use required to acquire rights over mark

Puerto Rico

The US Federal Court for the District of Puerto Rico has issued its opinion and order in the case of Colón-Lorenzana v South American Restaurants Corp (2014 WL 1794459, May 6 2014).

The plaintiff, Mr Norberto Colón, argued that, during his employment with defendant South American Restaurants Corp (SARCO), he had been the original creator of the 'Pechu Sandwich'. Colón argued, among others, that SARCO had registered the trademark for PECHU SANDWICH without his consent, in a knowingly fraudulent manner. In addition, he alleged that SARCO had developed a series of products inspired by the original Pechu Sandwich, such as 'Pechu Blue', 'Pechuga Mexicana', 'Pechuga Milanesa', 'Pechu Jr' and 'Pechu Pop'. Colón asserted that, because those products were all derivatives from his original, SARCO had developed those products without his authorisation as well. In response to the amended complaint, SARCO filed a motion to dismiss all claims for failure to state a claim.

In its analysis of the motion to dismiss, the court pointed out that Colón had not argued trademark infringement in his amended complaint. Notwithstanding, even if his allegations were construed as a claim for trademark infringement, the same could not succeed as he never actually used the mark PECHU SANDWICH. The court explained that the conception of an idea for a mark or solicitation for advertising of a mark did not constitute the use required to acquire rights over a trademark under the Lanham Act.

As to the claim of fraud during the procurement of the trademark registration, the court explained that, in order for a claim of fraudulent procurement to prosper, a plaintiff would have to specify the circumstances constituting fraud with information such as time, place and content of the alleged false representations. Although Colón did establish the date when the alleged fraud took place, it failed to establish what the exact misrepresentation made by SARCO in its trademark application was. Moreover, Colón did not allege that the name of the original creator of the 'Pechu Sandwich' was a material element to the registration of the trademark. Finally, during his opposition to the motion to dismiss, Colón vaguely argued that he invented and created the concept for a new chicken sandwich and that such 'work' was entitled to copyright protection. The court dismissed Colón’s allegations stating that the Copyright Act did not protect works that merely constituted ideas, procedures or discoveries, among others.

The court declined to exercise jurisdiction over the supplemental claims brought forth by Colón and, as such, the case was dismissed in its entirety.  

Maristella Collazo-Soto, Ferraiuoli LLC, Puerto Rico 

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