Setting straight the Trademark Trial and Appeal Board (TTAB) of the U.S. Patent and Trademark Office (USPTO), the U.S. Court of Appeals for the Federal Circuit reversed a decision concerning the standard for establishing prior use in a likelihood of confusion claim. First Niagara Insurance Brokers, Inc. v. First Niagara Financial Group, Inc., Case No. 06-1202 (Fed. Cir., Jan. 9, 2007) (Clevenger, S.J.).
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 United States 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 United States contacts.
FN-US is another insurance broker and offers services similar to those offered by FN-Canada. As its name indicates, 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 the ones 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, the opposer 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 15 U.S.C. §1127. The TTAB agreed that this was the appropriate standard for establishing priority and decided in favor of FN-US, finding the 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 Board’s application of that standard, but it did appeal the TTAB decision.
The Court noted that for purposes of opposition, 15 U.S.C. §1052(d) requires only that the opposer’s prior mark was "used in the United States by another," not use in commerce, either interstate, intrastate or between the U.S. and a foreign jurisdiction. Brief references to §1052(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 Board, the Court simply reversed the TTAB decision.
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