TTAB applies more lenient Section 2(d) test in FIRST NIAGARA

On remand from the US Court of Appeals for the Federal Circuit, the Trademark Trial and Appeal Board (TTAB) of the US Patent and Trademark Office has upheld three oppositions against trademark applications containing the term 'FIRST NIAGARA' after reconsidering the test set out by Section 2(d) of the Lanham Act. The Federal Circuit held that in an opposition based on Section 2(d), the opponent need only show prior use in the United States of its trademark or trade name, not prior use "in commerce lawfully regulated by Congress" (see Prior use need not be "in commerce").

First Niagara Insurance Brokers Inc (FN-Canada) is a Canadian insurance provider based in Ontario, Canada that has operated under that name since 1984. While the majority of its business is conducted in Canada with Canadian entities, First Niagara Insurance Brokers also provides insurance to:

• US citizens who own property in Canada;
  
  
• Canadian citizens who travel within the United States; and
  
  
• Canadian companies doing business in the United States.

Additionally, First Niagara Insurance Brokers has advertising that spills over into the United States and has correspondence with US citizens that bears its unregistered trademarks, including FIRST NIAGARA and FIRST NIAGARA INSURANCE BROKERS.

First Niagara Financial Group Inc (FN-US) is an insurance broker based in the United States that offers similar services to those offered by FN-Canada. FN-US filed six intent-to-use applications in 2000, including applications for FIRST NIAGARA and FIRST NIAGARA FINANCIAL GROUP. FN-Canada filed timely oppositions to these applications, arguing a likelihood of confusion under Section 2(d). In response, FN-US argued that the oppositions must fail because FN-Canada had not used its marks "in commerce" under 15 USC §1127. The board held that FN-Canada's use was de minimis, not amounting to a use in commerce. The board dismissed the oppositions accordingly.

The Federal Circuit relied on the plain language of Section 2(d), which bars registration of a mark that would be confusingly similar to "a mark or trade name previously used in the United States by another" to reverse the board's decision. Declining to read a limitation of "in commerce" into Section 2(d), the Federal Circuit found that "the record unquestionably reveals more than ample use of [FN-Canada's] marks in the United States to satisfy the use requirements of Section 2(d)".

On remand, the TTAB sustained FN-Canada's opposition to three of the marks for insurance services, but dismissed the remaining three for banking and leasing services, finding that these services were insufficiently related to insurance services in this case, and as such, they would not be likely to cause confusion.

Susan M Natland and Jeffrey Larson, Knobbe Martens Olson & Bear LLP, Irvine