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  • Trademark rights exist according to each country's statutes.
    • Mario Diaz v. Servicios De Franquicia Pardo's S.A.C., Opposition No. 91159871, (TTAB 2007).
      • FOOTNOTE 7 "Under the doctrine of territoriality as it pertains to trademarks, "trademark rights exist in each country solely according to that country's statutory scheme." J. Thomas McCarthy, 4 McCarthy on Trademarks and Unfair Competition § 29:1, pp. 29-4, 29-5 (4th ed. 2000) citing Person's Co. v. Christman, 900 F.2d 1565, 14 USPQ2d 1477 (Fed. Cir. 1990) ("Person's"). The Board's determination in British-American Tobacco is distinguishable from the conclusion reached in Person's, where the Board held that prior use of a mark in a foreign country does not create priority rights in the United States under the doctrine of territoriality, because no self-executing treaty was involved in the Person's case."
  • The Pan American Convention has the same force as a federal statute and provides remedies independent of the Lanham Act.
    • Mario Diaz v. Servicios De Franquicia Pardo's S.A.C., Opposition No. 91159871, (TTAB 2007).
      • Consistent with the Supreme Court's decision in Bacardi Corporation of America v. Domenech, 311 U.S. 150, 161, 47 USPQ 350, 355 (1940) ("Bacardi"), the Board noted that the Pan American Convention is self-executing, and therefore became U.S. law upon ratification, requiring no special implementing legislation. As such, the Board concluded that the Convention has the same force as a federal statute and provides remedies independent of the Lanham Act.
  • Article 8 of the Pan American Convention creates a cause of action within the Board's subject matter jurisdiction.
    • Mario Diaz v. Servicios De Franquicia Pardo's S.A.C., Opposition No. 91159871, (TTAB 2007).
      • The Board's most notable decision involving the Pan American Convention is British-American Tobacco Co. v. Phillip Morris Inc., 55 USPQ2d 1585 (TTAB 2000) ("British-American Tobacco").6 In that case, the Board denied respondent's motion to dismiss and held that it had the requisite jurisdiction to consider petitioner's claim brought under Article 8 of the Pan American Convention in a cancellation proceeding.
    • Mario Diaz v. Servicios De Franquicia Pardo's S.A.C., Opposition No. 91159871, (TTAB 2007).
      • The Board then considered the issue of whether Article 8 of the Pan American Convention created a cause of action within the Board's subject matter jurisdiction. The Board reasoned that since it was authorized under the Lanham Act to determine the registerability of marks in the context of ex parte appeals and inter partes proceedings, it had the requisite jurisdiction to consider a claim brought before it under Article 8 because that article expressly related to the registerability of marks. Lastly, the Board found that a finding of jurisdiction did not violate the doctrine of territoriality but rather constituted an exception to the doctrine explicitly created by the Convention.
Mario Diaz v. Servicios De Franquicia Pardo's S.A.C., Opposition No. 91159871, (TTAB 2007) Grand Total
Pan American Convention is British-American Tobacco Co. v. Phillip Morris Inc., 55 USPQ2d 1585 (TTAB 2000) 1
Person's Co. v. Christman, 900 F.2d 1565, 14 USPQ2d 1477 (Fed. Cir. 1990) 1
Bacardi Corporation of America v. Domenech, 311 U.S. 150, 47 USPQ 350 (1940) 1
Grand Total 3 3
No Statutes Listed.