ABSTRACT

The parties applied to register the nearly identical mark for overlapping and legally identical goods, and opposed each other’s applications on the ground of likelihood of confusion.  Danone moved for summary judgment on the issue of priority and moved to dismiss Precision’s opposition for failure to state a claim.  Because Danone’s application was filed under Section 66(a) of the Lanham Act and claimed priority based on a French application that was filed on December 6, 2006, the TTAB found that Danone was entitled to rely on that date for purposes of priority, which was earlier than Precision’s February 21, 2007, filing date, and granted summary judgment for Danone in its opposition.  In addition, because the Trademark Office’s records contradicted Precision’s allegations of priority, the TTAB granted Danone’s motion to dismiss Precision’s opposition for failure to state a claim.

CASE SUMMARY

FACTS

Precision Formulations, LLC (“Precision”) applied to register the mark FRUITOLOGY for various cosmetic products in Class 3, various nutritional goods and medicated skin creams in Class 5, and various beverage goods in Class 32.  Precision filed its application on February 21, 2007, on the basis of intent to use under Section 1(b).  Compagnie Gervais Danone (“Danone”) applied to register the mark FRUITOLOGY for various dairy products in Class 29 and various beverage goods in Class 32.  Danone filed its application on May 22, 2007, under Section 66(a), based on an international registration that issued on May 22, 2007.  Danone’s international registration, in turn, had been based on an underlying French application filed December 6, 2006.  Danone claimed Paris Convention priority from the December 6, 2006, filing date of its French application.

The parties opposed each other’s respective applications on the ground of likelihood of confusion.  In its opposition against Precision, Danone moved for summary judgment on its claim of likelihood of confusion regarding Precision’s goods in Class 5 and Class 32.  Danone argued that it had priority and was entitled to judgment as a matter of law.  Danone also moved to dismiss the opposition filed by Precision on the same grounds, alleging that Precision had failed to state a claim on which relief could be granted.  Although the two oppositions had not been formally consolidated, the TTAB exercised its discretion to issue a single order determining the motions.

ANALYSIS

The TTAB first considered Danone’s motion for summary judgment.  The TTAB found that standing was not an issue because the parties’ respective marks were nearly identical, their goods were overlapping or legally identical, and each had claimed that there was a likelihood of confusion. 

The TTAB then turned to the issue of priority.  Based on Precision’s February 21, 2007, filing date for its intent-to-use application and the fact that Precision had not alleged any earlier date for priority purposes, the TTAB found that Precision’s priority date was February 21, 2007.  Regarding Danone, the TTAB noted that it had filed its application on May 22, 2007, pursuant to Section 66(a), which provides that an application under that section shall constitute constructive use of the mark conferring the same rights as those specified in Section 7(c), as of the earliest of the following:  (1) the international registration date, if the request for extension of protection was filed in the international application; (2) the date of recordal of the request for extension of protection, if the request for extension of protection was made after the international registration date; or (3) the date of priority claimed pursuant to Section 67.  The TTAB further explained that Section 67 states that an applicant is entitled to claim a date of priority when it holds an international registration, makes a request for extension of protection to the United States, includes a claim of priority based on a right of priority under Article 4 of the Paris Convention, and the date of the international registration is within six months of the filing date of the application underlying the international registration.  Danone’s international registration issued May 22, 2007, and was based on an underlying French application filed December 6, 2006.  Accordingly, the TTAB found that Danone was entitled to a priority date of December 6, 2006.  Because this date was earlier than Precision’s filing date of February 21, 2007, the TTAB found that there was no genuine issue of material fact as to the issue of priority and granted Danone’s motion for summary judgment contingent upon its application maturing to registration. 

Regarding Danone’s motion to dismiss Precision’s opposition, the TTAB found that Precision had adequately pleaded standing because, based on Precision’s filing of an application for a mark nearly identical to Danone’s mark for overlapping or legally identical goods, Precision had established a “real interest” in the outcome of the proceeding.  On the issue of priority, Precision argued that the TTAB was required to take as true the incorrect allegation in its notice of opposition that Danone’s application for the FRUITOLOGY mark was filed on May 22, 2007, and was based on intent to use (Danone’s application was, in fact, based on Section 66(a)).  The TTAB agreed with Danone, however, that Precision had failed to properly allege priority because the facts pleaded in Precision’s notice of opposition and incorporated by reference by virtue of Danone’s application supported the conclusion that Danone, and not Precision, had priority.  The TTAB explained that despite the requirement that the TTAB must treat all well-pleaded allegations as true, there are facts that the TTAB may consider when a party has filed a motion to dismiss.  For example, the TTAB may look to such facts as the filing date, filing basis, priority date, publication date, and applicant’s name in the application that is the subject of the opposition proceeding.  These are facts not subject to proof, and the Board may look to the Trademark Office’s records for such facts even if a party’s allegations are well pleaded.  Here, the TTAB found that Precision’s allegation that Danone’s application was filed on the basis of intent to use was not supported by the Trademark Office’s records since the application was actually filed under Section 66(a), and it would not take as true any allegations contradicting those records.  The TTAB thus held that Precision’s allegations of priority were insufficient because Precision’s February 21, 2007, filing date was later than Danone’s December 6, 2006, priority date.  Accordingly, the TTAB granted Danone’s motion to dismiss Precision’s opposition on the ground that Precision had not stated a claim on which relief could be granted.

CONCLUSION

In considering a motion to dismiss, the TTAB may look to certain facts outside the pleadings that are not subject to proof, including filing date, filing basis, priority date, publication date, and applicant’s name in an application, and the TTAB will not take as true any allegations contradicting facts in the Trademark Office’s records.