TTAB clarifies requirements for country of origin
United States of America
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In Kallamni v Khan (Cancellation 92051344, February 14 2012), the Trademark Trial and Appeal Board (TTAB) has granted summary judgment cancelling a registration for OZO ENERGY DRINK (and design), which had been registered under Section 44(e) of the Lanham Act and was based on a corresponding registration in the European Union. The registration was cancelled because the TTAB found that, at the time the registration was issued, the respondent did not have a bona fide and effective industrial or commercial establishment in the European Union to support a registration under Section 44(e), or own a registration from any country he could validly claim as a country of origin.
The respondent was a Pakistani national domiciled in Pakistan. He filed a US application claiming priority based on an application pending in Pakistan. He also submitted a Community trademark (CTM) registration, claiming that this registration was from his country of origin. The US registration was issued under Section 44(e) based on the respondent’s CTM registration. At the time the US registration was issued, the only foreign registration of the mark that the respondent had was the CTM registration; his application in Pakistan was still pending.
The respondent’s contacts with the European Union consisted of retaining a Romanian company, SC Trade Venture, to act on his behalf in obtaining product placement and identifying customers in Romania. The respondent paid SC Trade Venture's office fees, marketing fees and technical fees. He also retained a firm in Pakistan to assist with marketing activities, and to ship and sell OZO ENERGY DRINK-branded goods to third-party distributors in Romania and Bulgaria, both of which are members of the European Union. All of the respondent’s products distributed in Romania and Bulgaria were shipped from Pakistan. The respondent had no use of the mark in commerce in the United States.
The term 'country of origin' is defined in Section 44(c) of the Lanham Act as:
“the country in which [an applicant] has a bona fide and effective industrial or commercial establishment, if he has not such an establishment in the country in which he is domiciled, or if he has not a domicile in any of the countries described in Subsection (b) of this section, the country of which he is a national.”
An 'establishment' is defined as “the place where one is permanently fixed for... business;... an institution or place of business, with its fixtures and organised staff”. An office or storefront or mere postal address is insufficient. Factors to consider in determining whether a bona fide and effective industrial or commercial establishment exists include the presence of production facilities, business offices and personnel. These requirements are the same for applications filed under Section 44 as they are for Section 66 applications.
There was no dispute that the respondent did not have a permanently fixed place of business with employees or production facilities located in the European Union. The TTAB found as a matter of law that a bona fide and effective industrial and commercial establishment could not be created by the respondent’s reliance on the commercial facilities of an independent legal entity that the respondent retained to source his EU business. The TTAB further found as a matter of law that the respondent’s shipment of product from Pakistan to third-party distributors in Romania and Bulgaria did not create a bona fide and effective commercial establishment in the European Union. In addition, the respondent’s activities in Pakistan, including the creation of targeted marketing for EU countries, did not support a claim of a bona fide and effective commercial establishment in the European Union. There was also no dispute that the respondent was neither domiciled in, nor a national of, an EU country.
The TTAB thus found as a matter of law that the respondent had not established the European Union as his country of origin and that his ownership of a CTM registration could not serve as a basis for a US registration issued under Section 44(e). Accordingly, the TTAB granted summary judgment to the petitioner and cancelled the respondent’s registration.
Susan Progoff, Dorsey & Whitney LLP, New York
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