TTAB opens door to foreign fame, but does not allow Fiat to step through

United States of America

If a mark is famous outside the United States, but is not in actual use in the United States, does it receive dilution protection under the Trademark Dilution Revision Act? In Fiat Group Automobiles SpA v ISM Inc (Opposition 91190607, March 15 2010), a case of first impression, the Trademark Trial and Appeal Board (TTAB) responded “probably not”, but left open the possibility that foreign fame, coupled by other indicia within the United States, may be protectable.

ISM Inc applied for the registration of the mark PANDA for automobiles in Class 12 of the Nice Classification. However, Fiat Group Automobiles SpA had been manufacturing and selling its own Panda cars since 1980. While Fiat apparently sold many such Pandas, they were all sold in countries outside the United States. Fiat opposed ISM’s application on two grounds: lack of good-faith intent and dilution. Fiat had also filed a Section 66(a) application coupled with an intent-to-use declaration. Rendering a decision on ISM’s motion to dismiss, the TTAB upheld Fiat’s standing to oppose based on their intent-to-use application, pending an amended complaint. The TTAB also deemed Fiat’s lack of good-faith intent claim against ISM to be properly pleaded.

With the standing and lack of good-faith intent issues resolved, the TTAB focused on Fiat’s primary claim: dilution. The thrust of Fiat’s argument was that, due to worldwide branding and promotion, its Panda cars have become “well known” and “famous” worldwide. Therefore, according to Fiat, any use of the PANDA mark in the United States amounted to dilution of Fiat’s mark, even though its mark is not in use in that country. ISM had moved to dismiss based on the lack by Fiat of "continuing use of any form of ‘Panda’ in the United States”.

The TTAB indicated that the 'foreign famous mark' doctrine upon which Fiat based its claim is a “minority view” that provides no independent cause of action, and which Congress never fully implemented from the Agreement on Trade-Related Aspects of Intellectual Property Rights. Referencing the Trademark Dilution Revision Act, the TTAB defined 'famous' as “widely recognized by the consuming public of the United States”. Combined with the definition of a 'mark' under §45, the TTAB concluded that a “famous mark” refers to a mark in use in the United States, or for which there is an intent to use, coupled with an application.

Under this definition, Fiat’s intent to use, combined with its Section 66(a) application, seemed to place it in good position for receiving famous mark status for PANDA. The TTAB continued that a “company may have a protectable property right in a term, even if it has not made use of the term, if the public has come to associate the term with the company”. It follows that, in an unusual case, “activity outside the United States related to a mark could result in the mark becoming well known within the United States, without any form of activity in the United States”.

While the TTAB may have granted such a scenario in theory, it stated that this case did not qualify. Fiat’s problem, according to the TTAB, was that it had merely asserted the fame of its PANDA mark without alleging any facts or proof. This was clearly not sufficient: “A claim cannot merely allege recognition and fame outside the United States and presume that recognition and fame in the United States follows as a matter of course”.

As a result of Fiat’s failure to plead facts that could support its claim, the TTAB granted ISM’s motion to dismiss Fiat’s dilution claim as a matter of law.

However, for future reference, the TTAB indicated that, in some circumstances, a famous mark could be protected under the Trademark Dilution Revision Act where a party can establish the foreign fame combined with both use, or an intent to use, the mark in the United States and an application for registration in the United States. The TTAB further acknowledged that the US use required could take several forms, as indicated in prior decisions. In particular, in unusual cases, activity outside the United States could potentially result in the mark becoming well known within the United States, even without any form of activity in that country. It remains to be seen which marks could qualify under these circumstances

Dennis S Prahl, Ladas & Parry LLP, New York

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