“Use in commerce” not necessary to support trademark opposition, just use in the United StatesJanuary 9, 2007

The Federal Circuit, reversing the Trademark Trial and Appeal Board ("TTAB"), found that a Canadian company who arguably only did business in Canada could oppose a trademark application based on "spillover" use of its unregistered trademark in the United States. The Canadian company, First Niagara Insurance Brokers, opposed several trademark applications filed by a United States company, First Niagara Financial Group. Both companies use, among others, the word mark "First Niagara," and both companies use a logo, shown below:

First Niagra First Niagara 2

The TTAB held that because the Canadian First Niagara had not used its marks "in commerce" as required by 15 U.S.C. § 1127, it could not use those marks as a basis to oppose the U.S. First Niagara's applications.

The Federal Circuit reversed. First, the court noted that 15 U.S.C. § 1052(d) states that an opposition may be filed based on a mark previously "used in the United States," as opposed to the requirement for registration that the mark be used "in commerce." In addition, a prior Federal Circuit case had held that a mark only used in intrastate commerce can support an opposition. The court found no reason to treat a foreign company who use may not rise to the level required for registration any differently than a domestic one. While there was an issue regarding whether the Canadian First Niagara had waived this argument, the court ultimately held that because there was use of the Canadian marks in the United States, the fact that there may not have been use "in commerce" necessary to register the Canadian marks did not matter for purposes of the opposition.

Accordingly, the court sent the case back to the TTAB for resolution of the opposition on the merits.

To read the full decision, click here.

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