Federal Circuit Clarifies Which Third Party Uses Are Germane To Challenge A Registrant's Section 2(f) Claim Of "Substantially Exclusive" Use

• Published date: 15 December 2021
• Subject Matter: Intellectual Property, Litigation, Mediation & Arbitration, Trademark, Trials & Appeals & Compensation
• Law Firm: Oblon, McClelland, Maier & Neustadt, L.L.P
• Author: Mr Brian Darville

In Galperti, Inc. v. Galperti S.r.L., 2021 USPQ2d 1115, 2021 U.S. App. LEXIS 33616 (Fed. Cir. Nov. 12, 2021), the Federal Circuit addressed a challenge to Galperti S.r.L.'s ("Galperti-Italy") registration of the mark GALPERTI based on a claim of substantially continuous and exclusive use for five years under Section 2(f) of the Trademark Act. The Section 2(f) standard for acquired distinctiveness states:

The mark has become distinctive of the goods listed in the application through the Applicant's substantially exclusive
and continuous use in commerce for at least the five years immediately before the date of the statement.

15 U.S.C. ' 1052(f).

Galperti, Inc. ("Galperti-USA") had petitioned to cancel the registration on several grounds including that the registration was obtained by fraud because GAlperti-Italy's statement of "substantially exclusive" use was intentionally false.

After an initial remand, the Trademark Trial and Appeal Board again dismissed Galperti-USA's fraud cancellation petition ruling that (a) Galperti-USA's use of GALPERTI had not acquired secondary meaning and therefore could not be the basis for showing that Galperti-Italy's use of the mark was not "substantially exclusive;" and (b) because Galperti-USA failed to demonstrate privity with other third party users of the GALPERTI mark during the relevant period, Galperti-USA could not rely on those other third party uses to show falsity...