Prior use need not be "in commerce"

The US Court of Appeals for the Federal Circuit has reversed a decision of the US Patent and Trademark Office's (USPTO) Trademark Trial and Appeal Board (TTAB) concerning the standard for establishing prior use in a likelihood of confusion claim.

First Niagara Insurance Brokers Inc (FN-Canada) is an insurance broker that operates entirely out of Ontario, Canada. It has no physical presence in the United States and is not licensed to act as an insurance broker outside of Canada. It also does not own any registered US marks. Nevertheless, FN-Canada regularly uses several unregistered marks in advertising that spills over into the United States, and in correspondence that it sends to US contacts.

First Niagara Financial Group Inc (FN-US) is another insurance broker and offers services similar to those offered by FN-Canada. FN-US is located in the United States and, like FN-Canada, it has customers in both countries.

When FN-US filed intent-to-use applications at the USPTO for certain marks similar to those already in use by FN-Canada, the Canadian broker filed oppositions. FN-Canada argued that the FN-US marks were likely to cause confusion with FN-Canada's marks.

In order to prevail on a likelihood of confusion claim, an opponent must establish priority of use. FN-US challenged the ability of FN-Canada to establish priority on the basis that FN-Canada had not used its marks "in commerce" under Section 45 of the Lanham Act. The TTAB agreed that this was the appropriate standard for establishing priority and decided in favour of FN-US, finding FN-Canada's use of its marks in the United States was limited to advertising and correspondence, rather than in commerce. FN-Canada did not challenge the TTAB's application of that standard, but it did appeal the TTAB decision.

The court noted that for purposes of opposition, Section 2(d) of the act requires only that the opponent's prior mark was "used in the United States". There is no standard that the prior use must be in commerce, either interstate, intrastate or between the United States and a foreign jurisdiction. Brief references to Section 2(d), Federal Circuit case law and a treatise led the court to the unambiguous conclusion that to sustain an opposition, a prior use in the United States need not have been "in commerce". After chastising FN-Canada for not attempting to relieve itself of the high burden incorrectly imposed on it by the TTAB, the court simply reversed the TTAB decision.

Tiffany M Scurry, McDermott Will & Emery, Los Angeles

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