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  • The terms of a treaty are to be construed by the intentions of the signatory parties.
    • Mario Diaz v. Servicios De Franquicia Pardo's S.A.C., Opposition No. 91159871, (TTAB 2007).
      • The judicial obligation is to satisfy the intention of the signatory parties, in construing the terms of a treaty. Valentine v. United States, 299 U.S. 5, 11 (1936) ("it is our duty to interpret [the treaty] according to its terms. These must be fairly construed, but we cannot add or detract from them.")
    • Mario Diaz v. Servicios De Franquicia Pardo's S.A.C., Opposition No. 91159871, (TTAB 2007).
      • As discussed in Sumitomo Shoji America, Inc. v. Agagliano, 457 U.S. 176, 185 (1982), a court's role is "limited to giving effect to the intent of the Treaty parties." See generally Restatement (Third) of Foreign Relations Law of the United States, Part III, Introductory Note at 144-145 (1987).
  • In construing a treaty, the terms thereof are given their ordinary meaning in the context of the treaty and are interpreted, in accordance with that meaning, in the way that best fulfills the purposes of the treaty.
    • Mario Diaz v. Servicios De Franquicia Pardo's S.A.C., Opposition No. 91159871, (TTAB 2007).
      • In construing a treaty, the terms thereof are given their ordinary meaning in the context of the treaty and are interpreted, in accordance with that meaning, in the way that best fulfills the purposes of the treaty. See United States v. Stuart, 489 U.S. 353, 365-66 (1989) (interpreting a treaty to carry out the intent or expectations of the signatories); Kolovrat v. Oregon, 366 U.S. 187, 193-94, (1961) (a treaty should be interpreted to carry out its purpose).
  • A treaty will not be deemed to have been abrogated or modified by a later statute unless such purpose on the part of Congress has been clearly expressed.
    • Mario Diaz v. Servicios De Franquicia Pardo's S.A.C., Opposition No. 91159871, (TTAB 2007).
      • A "treaty will not be deemed to have been abrogated or modified by a later statute unless such purpose on the part of Congress has been clearly expressed." Cook v. United States, 288 U.S. 102, 120 (1933) (emphasis added); see Trans World Airlines, Inc. v. Franklin Mint Corp., 466 U.S. 243, 252 (1984).
  • The clear purpose of the Pan American Convention is to protect the foreign trademarks which fall within the treaty's purview; and the intent of the treaty is to confer a substantive right to the protection of the foreign mark.
    • Mario Diaz v. Servicios De Franquicia Pardo's S.A.C., Opposition No. 91159871, (TTAB 2007).
      • In accordance with these principles, our starting point is to discern the intent of the Pan American Convention. As stated by the Supreme Court in Bacardi, and as reiterated by the Board in British-American Tobacco: "Here, the clear purpose of the [Pan American Convention] is to protect the foreign trademarks which fall within the treaty's purview. ... The intent of the treaty is to confer a substantive right to the protection of the foreign mark ..."
  • The doctrine of territoriality means that rights to a mark in a foreign country do not create rights in other countries.
    • 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 TTAB's jurisdiction does not violate the doctrine of territoriality but rather constitutes 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).
      • 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.7
  • The TTAB's most notable decision involving the Pan American Convention is British-American Tobacco Co. v. Phillip Morris Inc., 55 USPQ2d 1585 (TTAB 2000).
    • 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.
  • The Pan American Convention is self-executing and became U.S. law upon ratification; moreover, the 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 7 provides the owner of a mark in a contracting state the right to challenge the use and registration of an interfering mark in another contracting state upon proof that the interfering party had knowledge of the existence and continuous use of the mark and upon compliance with the domestic requirements in that contracting state.
    • Mario Diaz v. Servicios De Franquicia Pardo's S.A.C., Opposition No. 91159871, (TTAB 2007).
      • Our next step is to analyze the text of Article 7. According to its plain meaning, an owner of a mark protected in a contracting state has the right to challenge the use and registration of an interfering mark in another contracting state, upon proof that the interfering party had knowledge of the existence and continuous use of the mark and upon compliance with the domestic requirements in that contracting state. The aggrieved owner may assert the preferential right to use and register the mark in the country where the claim is being asserted. Thus, the text of Article 7, when read in conjunction with the stated purpose of the treaty, clearly confers to eligible trademark owners a "preferential" or prior right where the requirements of the article have been satisfied.
  • Article 7 merely establishes as a prerequisite to assertion of a claim or defense under Article 7 compliance with the domestic legislation in the country where the actionable conduct takes place.
    • Mario Diaz v. Servicios De Franquicia Pardo's S.A.C., Opposition No. 91159871, (TTAB 2007).
      • Furthermore, opposer's interpretation of the last clause of Article 7 strains the plain meaning of the text. The clause merely establishes as a prerequisite to assertion of a claim or defense under Article 7 compliance with the domestic legislation in the country where the actionable conduct takes place.
  • Nothing in the statutory language found in either Section 44 of the Lanham Act nor the legislative history of the Lanham Act evince a clear expression by Congress to override the rights set forth in Article 7 of the Pan American Convention.
    • Mario Diaz v. Servicios De Franquicia Pardo's S.A.C., Opposition No. 91159871, (TTAB 2007).
      • Nothing in the statutory language found in either Section 44 of the Lanham Act nor the legislative history of the Lanham Act evince a clear expression by Congress to override the rights set forth in Article 7 of the Pan American Convention.
  • In the case of an application based on a foreign registration in the United States Article 7 of the Pan American Convention requires the filing of an application pursuant to either Section 44(d) or (e).
    • Mario Diaz v. Servicios De Franquicia Pardo's S.A.C., Opposition No. 91159871, (TTAB 2007).
      • In the case of an application based on a foreign registration in the United States (as is the case here), that requirement means the filing of an application pursuant to either Section 44(d) or (e). Opposer's proffered interpretation would otherwise defeat the purpose of the Convention which is to provide a uniform standard for the assertion of foreign trademark rights among the signatories.
    • Mario Diaz v. Servicios De Franquicia Pardo's S.A.C., Opposition No. 91159871, (TTAB 2007).
      • Lastly, we find opposer's arguments regarding the import of Havana Club Holdings and Empresa unconvincing. We see no reason to apply the logic from Havana Club Holdings and Empresa since those cases pertain to rights derived from the Pan-American Convention within the context of statutory provisions and regulations implementing the U.S. embargo against Cuba.
  • Elements required in order to prevail on the issue of priority pursuant to Article 7 of the Pan American Convention.
    • Mario Diaz v. Servicios De Franquicia Pardo's S.A.C., Opposition No. 91159871, (TTAB 2007).
      • In this particular case, in order to prevail on the issue of priority pursuant to Article 7 of the Pan American Convention, applicant must establish that there is no genuine dispute (1) that it is the owner of a PARDO'S CHICKEN mark protected in Peru; (2) that applicant may have known that opposer is using or applying to register an interfering mark in the United States; (3) that opposer had knowledge of the existence and continuous use in Peru of the PARDO'S CHICKEN mark in connection with services in the same class prior to his use of the PARDO'S CHICKEN mark in the United States; and (4) that applicant has complied with the requirements set forth in the domestic legislation in the United States and the requirements of the Pan American Convention - that is, filing for protection of its mark under Section 44 of the Lanham Act.
  • Pursuant to Article 7, applicant is not required to establish that opposer knew that applicant was the owner of the foreign mark, only that the opposer had knowledge of the continuous use and existence of the mark.
    • Mario Diaz v. Servicios De Franquicia Pardo's S.A.C., Opposition No. 91159871, (TTAB 2007).
      • Indeed, according to the text of Article 7, applicant is not required to establish that opposer knew that applicant was the owner of the PARDO'S CHICKEN mark in Peru. To the contrary, the terms of the treaty only require that the offending party have "knowledge of the continuous use and existence" of the mark.
  • The TTAB has the authority to hear applicant's affirmative defense of priority, based on use, under Article 7.
    • Mario Diaz v. Servicios De Franquicia Pardo's S.A.C., Opposition No. 91159871, (TTAB 2007).
      • This brings us to the question of whether the Board has the requisite subject matter jurisdiction to entertain applicant's assertion of priority under Article 7 of the Convention. We hold that the Board does have the authority to consider applicant's affirmative defense. The relevant language of Article 7 provides that "[a]ny owner of a mark protected in one of the contracting states in accordance with its domestic law, . . . shall have the right to oppose such use, registration or deposit and shall have the right to employ all legal means, procedure or recourse provided in the country in which such interfering mark is being used or where its registration or deposit is being sought . . . " (emphasis added). In this instance, opposer's claim of priority is not predicated upon ownership of a federal registration but rather upon use in the United States. Thus, applicant, in asserting priority over opposer, is challenging opposer's purported prior rights derived from common law use of his mark. The text of Article 7 specifically gives the foreign owner of a mark the right to challenge priority rights based on use. Clearly the Board has the authority to determine prior rights arising from common law usage within the context of adjudicating Section 2(d) claims. It logically follows that the Board has the subject matter jurisdiction to entertain applicant's affirmative defense of priority under Article 7 of the Pan American Convention.
  • Case Finding: Applicant has made of record copies of valid and subsisting Peruvian registrations for it's marks and thus applicant's ownership of a mark protected in a contracting state to the Pan American Convention is not at issue.
    • Mario Diaz v. Servicios De Franquicia Pardo's S.A.C., Opposition No. 91159871, (TTAB 2007).
      • As noted above, applicant has made of record copies of valid and subsisting Peruvian registrations for the mark PARDO'S CHICKEN in both typed and stylized form for use in connection with restaurants as well as various related goods and services. Accordingly, applicant's ownership of a mark protected in a contracting state to the Pan American Convention (in this case, Peru) is not at issue.
  • The affirmative defense of unclean hands, based on its contention that opposer adopted its mark with knowledge of applicant's reputation overseas does not raise an unclean hands defense.
    • Green Spot (Thailand) Ltd. v. Vitasoy International Holdings Limited, Opposition No. 91165010, (TTAB 2008)
      • Applicant also raised the affirmative defense of unclean hands, based on its contention that opposer adopted its mark with knowledge of applicant's reputation overseas. Such knowledge, even if proved, would not raise an unclean hands defense. See Person's Co, supra. On the other hand, applicant has neither pleaded nor established that its mark is well-known in the United States, within the meaning of Article 6bis of the Paris Convention. Paris Convention for the Protection of Industrial Property, Mar. 20, 1883, as rev. at Stockholm, July 14, 1967, 21 U.S.T. 1583, Art. 6bis, 828 U.N.T.S. 305. See Aktieselskabet af 21. November 2001 v. Fame Jeans Inc., 77 USPQ2d 1861, 1864 (TTAB 2006).
Green Spot (Thailand) Ltd. v. Vitasoy International Holdings Limited, Opposition No. 91165010, (TTAB 2008) Mario Diaz v. Servicios De Franquicia Pardo's S.A.C., Opposition No. 91159871, (TTAB 2007) Grand Total
Aktieselskabet af 21. November 2001 v. Fame Jeans Inc, 77 USPQ2d 1861 (TTAB 2006) 1
Empresa Cubana Del Tabaco v. Culbro Corp.,. 70 U.S.P.Q. 2d 1640 (S.D.N.Y. 2004) 1
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
United States v. Stuart, 489 U.S. 353 (1989) 1
Trans World Airlines Inc. v. Franklin Mint Corp., 466 U.S. 243 (1984) 1
Sumitomo Shoji America Inc. v. Agagliano, 457 U.S. 176 (1982) 1
Kolovrat v. Oregon, 366 U.S. 187, (1961) 1
Bacardi Corporation of America v. Domenech, 311 U.S. 150, 47 USPQ 350 (1940) 1
Valentine v. United States, 299 U.S. 5 (1936) 1
1
Grand Total 1 10 11
No Statutes Listed.