What’s in a Name?: Third Party Use of a Descriptive Term Without Secondary Meaning Can Undermine Assertions of Substantially Exclusive Use of the Term

| Makoto Tsunozaki, Ph.D.


Before: Moore, Prost, Taranto. Appeal from the Trademark Trial and Appeal Board.

Summary: Evidence of use of a term even without a showing of secondary meaning, by any third party, is relevant to demonstrate that an assertion of substantially exclusive use was false.

Galperti-USA filed a petition to cancel a trademark registration for the GALPERTI mark owned by Galperti S.r.l. (Galperti-Italy), in connection with metal flange products. Galperti-Italy’s application for the trademark registration was initially rejected by the PTO on the grounds that the mark was primarily just a surname. To overcome the rejection, Galperti-Italy asserted that the mark had become distinctive through Galperti-Italy’s substantially exclusive use in the preceding five years. At the TTAB, Galperti-USA asserted that Galperti-Italy had intentionally made a false assertion of substantially exclusive use. The TTAB declined to cancel the registration, and Galperti-USA appealed. The Federal Circuit remanded for the TTAB to consider whether Galperti-USA’s evidence purporting to show falsity of Galperti-Italy’s representation to the PTO was significant or inconsequential. On remand, the TTAB found that Galperti-USA failed to prove there was significant and not inconsequential use that would render Galperti-Italy’s representation false. Galperti-USA appealed again.

On the second appeal, the Federal Circuit found legal error in the TTAB’s falsity analysis on two grounds. First, the court found that the TTAB erroneously required that Galperti-USA establish that its use of the GALPERTI mark during the relevant time period had acquired distinctiveness in order for its use to count in assessing the falsity of Galperti-Italy’s representation. The court held that third party use of a term that lacks secondary meaning can still undermine a claim of substantially exclusive use. Thus, such evidence was held to be pertinent to showing the falsity of Galperti-Italy’s representation. Second, the court found that the TTAB erred in requiring Galperti-USA to demonstrate privity with other users of the GALPERTI mark during the relevant time period. Rather, the court held that to evaluate whether an applicant has had substantially exclusive use of a mark, any use by a third party, regardless of relation to the challenger, must be analyzed with regard to the significance of such use. Thus, the court vacated and remanded for further analysis of the falsity of Galperti-Italy’s representation to the PTO.

Editor: Paul Stewart