Mario Diaz v. Servicios De Franquicia Pardo's S.A.C.

THIS OPINION IS PRECEDENT

OF THE T.T.A.B. UNITED STATES PATENT AND TRADEMARK OFFICE

Trademark Trial and Appeal Board

P.O. Box 1451

Alexandria, Virginia 22313-1451

Lykos

Mailed: February 16, 2007

Opposition No. 91159871

Mario Diaz

v.

Servicios De

Franquicia Pardo’s

S.A.C.

Before Walters, Hairston and Zervas, Administrative

Trademark Judges.

By the Board:

I. Introduction

On November 14, 2002, Servicios De Franquicia Pardo’s

S.A.C. (“applicant”) applied to register the mark PARDO’S

CHICKEN in the stylization displayed below

Opposition No. 91159871

for “eat-in and take-out restaurant services” in

International Class 43.1 The application is based on a

Peruvian registration for the same stylized mark and

services pursuant to Section 44(e) of the Lanham Act.2

Mario Diaz (“opposer”) has opposed registration on the

grounds that applicant's applied-for mark so resembles

opposer's previously used PARDO’S CHICKEN mark that it is

likely to cause confusion, mistake, or deceive prospective

consumers under Section 2(d) of the Lanham Act. As to the

issue of priority, opposer alleges in his notice of

opposition use of his mark in the United States in

connection with restaurant services prior to the filing date

of applicant’s application without pleading ownership of a

U.S. federal registration or application.

Applicant, in its answer to the notice of opposition,

denies the salient allegations and asserts various

affirmative defenses, including the following:

Twelth Affirmative Defense

Opposer, a Peruvian individual, is well aware of

the high-value and market presence of the

“Pardo’s Chicken” trademark. He is also aware

of its brand recognition among the Peruvian

1

Application Serial No. 76467468. The application includes a

statement that the English translation of "PARDO'S CHICKEN" is

"brownish-gray chicken," as well as a claim of acquired

distinctiveness under Section 2(f).

2

Peruvian Registration No. 012449, registered on February

17, 1997, for “restaurant services” in International Class

42, with an expiration date of February 17, 2007.

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Opposition No. 91159871

communities within The United States of America.

The Opposer in question is seeking registration

of a mark that cannot be registered in his name

(individually), if we apply the common law. If

we apply the current regulations, his

application for registration and his opposition

have to be denied because the trademark has an

owner, an owner who has applied for the

recognition of its trademark under Federal Law §

44(e) (15 U.S.C. § 1126) since The United States

of America and the Republic of Peru are

signatories of the same treaty.

This case now comes up for consideration of applicant’s

motion for summary judgment on the ground that applicant has

priority over opposer based on Article 7 of the General

Inter-American Convention for Trademark and Commercial

Protection of Washington, 1929 (“Pan American Convention”),

46 Stat. 2907, and that therefore opposer cannot as a matter

of law prevail on his Section 2(d) claim.3 The motion is

fully briefed.4

At the outset, we note that applicant has not moved to

amend its pleading to specifically assert an affirmative

defense of priority based on Article 7 of the Pan American

3

Applicant filed its motion for summary judgment on December

29, 2004. Opposer, in lieu of filing a responsive brief, filed

a motion to take discovery pursuant to Fed. R. Civ. P. 56(f).

On November 29, 2005, the Board granted opposer’s Rule 56(f)

motion to the extent that it allowed opposer time to take the

deposition of Mr. Arnold H. Wu, an officer of applicant, on the

issue of applicant’s bona fide intent to use its involved mark

in commerce. Following the taking of the deposition of Mr. Wu,

opposer filed a responsive brief in opposition to applicant’s

motion for summary judgment on January 27, 2006.

4

Applicant has submitted a reply brief which the Board

has exercised its discretion to consider because it

clarifies the issues herein. See Trademark Rule 2.127(a).

3

Opposition No. 91159871

Convention. Ordinarily, a party may not obtain summary

judgment on an issue that has not been pleaded. See Fed. R.

Civ. P. 56(a) and 56(b). However, the parties have treated

the issue on its merits in their briefs and opposer has not

objected to applicant’s motion on the ground that applicant

failed to plead the defense. In addition, we construe the

last clause of applicant’s twelfth affirmative defense noted

above as alluding to the Pan American Convention. For these

reasons, the Board deems the twelfth affirmative defense

asserted by applicant to have been amended to allege that

applicant has priority over opposer pursuant to Article 7 of

the Pan American Convention. See Paramount Pictures Corp.

v. White, 31 USPQ2d 1768 (TTAB 1994); see also Saint-Gobain

Abrasives, Inc. v. Unova Industrial Automation Systems,

Inc., 66 USPQ2d 1355 (TTAB 2003).

I. Background – The Pan American Convention

By way of background, the United States is a party to

the Pan American Convention with several Latin American

nations, including Peru.5 The Convention pertains to

trademarks, trade names, unfair competition, and false

indications of geographical origin or source. The

beneficiaries under the Convention are defined as

5

The remaining countries to the Convention are Colombia,

Cuba, Guatemala, Haiti, Honduras, Nicaragua, Panama, and

Paraguay.

4

Opposition No. 91159871

(1) nationals of contracting states, and (2) domiciled

foreigners who own a manufacturing or commercial

establishment or an agricultural development in any of the

contracting states.

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. Article 8 of the Convention

provides as follows:

When the owner of a mark seeks the registration

or deposit of the mark in a Contracting State

other than that of origin of the mark and such

registration or deposit is refused because of

the previous registration or deposit of an

interfering mark, he shall have the right to

apply for and obtain the cancellation or

annulment of the interfering mark upon proving,

in accordance with the legal procedure of the

country in which cancellation is sought, the

stipulations in Paragraph (a) and those of

either Paragraph (b) or (c) below:

(a) That he enjoyed legal protection for his

mark in another of the Contracting States

prior to the date of the application for

the registration or deposit which he seeks

to cancel; and

6

Respondent's request for reconsideration was denied by

the Board in an unpublished opinion issued February 27,

2001.

5

Opposition No. 91159871

(b) That the claimant of the interfering mark,

the cancellation of which is sought, had

knowledge of the use, employment,

registration or deposit in any of the

Contracting States of the mark for the

specific goods to which said interfering

mark is applied, prior to adoption and use

thereof or prior to the filing of the

application or deposit of the mark which

is sought to be cancelled; or

(c) That the owner of the mark who seeks

cancellation based on a prior right to the

ownership and use of such mark, has traded

or trades with or in the country in which

cancellation is sought; and that goods

designated by his mark have circulated and

circulate in said country from a date

prior to the filing of the application for

registration or deposit for the mark, the

cancellation of which is claimed, or prior

to the adoption and use of the same.

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.

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

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Opposition No. 91159871

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.7

III. Does Article 7 of the Pan American Convention Afford

Applicant the Affirmative Defense of Priority in this

Opposition Proceeding?

To prevail on his asserted Section 2(d) claim, opposer

must establish (1) that he has standing to maintain the

proceeding; (2) that he is the prior user of his pleaded

mark; and (3) that contemporaneous use of the parties'

respective marks on their respective services would be

likely to cause confusion, mistake or to deceive consumers.

See Hornblower & Weeks, Inc. v. Hornblower & Weeks, Inc., 60

USPQ2d 1733 (TTAB 2001). Priority of use is an issue in

this case because opposer failed to plead and prove

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.

7

Opposition No. 91159871

ownership of a registration that would preclude registration

of applicant's mark under Section 2(d). See King Candy Co.

v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108

(CCPA 1974).

Applicant has moved for summary judgment by asserting

priority under Article 7 of the Pan American Convention as

an affirmative defense to opposer’s Section 2(d) claim.

Article 7 provides as follows:

Any owner of a mark protected in one of the

contracting states in accordance with its

domestic law, who may know that some other

person is using or applying to register or

deposit an interfering mark in any other of the

contracting states, 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, and upon proof that the person who is

using such mark or applying to register or

deposit it, had knowledge of the existence and

continuous use in any of the Contracting States

of the mark on which opposition is based upon

goods at the same class, the opposer may claim

for himself the preferential right to use such

mark in the country where the opposition is made

or priority to register or deposit in such

country, upon compliance with the requirements

established by the domestic legislation in such

country and by this Convention.

Thus, the issue before us is whether applicant is

entitled to assert priority under Article 7 in this forum.

We will now review the parties’ respective arguments.

Applicant argues that it is entitled to assert such an

affirmative defense under Article 7 since the Board followed

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Opposition No. 91159871

in British-American Tobacco the Supreme Court’s precedent in

Bacardi that the Pan American Convention is self-executing.

Applicant also relies on British-American Tobacco to argue

that the Board has the requisite jurisdiction to entertain

applicant’s affirmative defense, contending that insofar as

the Lanham Act authorizes the Board to determine the

registerability of marks in both ex parte and inter partes

proceedings, and that Article 7 (as with Article 8) pertains

to the registerability of marks, the Board may consider

applicant’s defense.

In his responsive brief, opposer acknowledges that the

Board has previously determined that the Pan American

Convention is self-executing. Opposer maintains, however,

that Congress incorporated rights under Article 7 of the Pan

American Convention pursuant to the provisions set forth in

Section 44 of the Lanham Act, and that therefore applicant

is precluded from asserting priority under Article 7.8 In

support of his argument, opposer relies on the last clause

found in Article 7, arguing that this language implicitly

refers to the rights and remedies created for foreign

8

Section 44 of the Lanham Act, 15 U.S.C. § 1126 (1982), permits

qualified foreign applicants who own a registered mark in their

country of origin to obtain a U.S. trademark registration without

alleging actual use in U.S. commerce. If a U.S. application is

filed within six months of the filing of the foreign application,

such U.S. application will be accorded the same force and effect as

if filed in the United States on the same date on which the

application was first filed in the foreign country.

9

Opposition No. 91159871

trademark owners under Section 44, thereby acting as a bar

to the assertion of any rights found in Article 7 separate

and apart from the Lanham Act. Opposer further cites a

decision from the Court of Appeals for the Second Circuit,

Havana Club Holding, S.A. v. Galleon, S.A., 203 F.3d 116

(2d. Cir. 2000) (“Havana Club”), as well as a subsequent

district court opinion from the Southern District of New

York, Empresa Cubana Del Tobaco v. Culbro Corporation

(“Empresa”), 213 F. Supp.2d 247 (S.D.N.Y. 2002), for the

proposition that a foreign trademark owner cannot simply

obtain priority in the United States by registering its mark

abroad in a contracting party state, but must instead comply

with the provisions set forth in Section 44 of the Lanham

Act. Lastly, opposer maintains that applicant has

implicitly conceded the exclusive applicability of Section

44 to this case by virtue of filing its application under

Section 44(e).

In reply, applicant argues that neither Havana Club nor

Empressa override the Board’s holding in British-American

Tobacco because neither decision identified specific

language in the Lanham Act or its legislative history

indicating that Section 44 was intended to limit the

assertion of rights embodied in Article 7 of the Pan

American Convention. Applicant also argues that Havana Club

Holding and Empresa are inapplicable here because both cases

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Opposition No. 91159871

involve the U.S. embargo against Cuba as implemented by the

Cuban Assets Control Regulations.9

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). 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.”) 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

9

31 C.F.R. §§ 515.101-515.901 (1999), promulgated pursuant to

section 5(b) of the Trading with the Enemy Act of 1917, as

amended, 12 U.S.C. § 95a (“TWEA”). In 1996, Congress enacted the

Cuban Liberty and Democratic Solidarity (LIBERTAD) Act (“LIBERTAD

Act”), Pub.L. No. 104-114, 110 Stat. 785 (1996), which, among

other things, codified the regulations implementing the Cuban

embargo, see 22 U.S.C. § 6032(h). The Secretary of the Treasury

has the authority to administer the Cuban embargo, which he has

delegated to the Office of Foreign Assets Control (“OFAC”), see 31

C.F.R. § 515.802.

11

Opposition No. 91159871

Restatement (Third) of Foreign Relations Law of the United

States, Part III, Introductory Note at 144-145 (1987).

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 Preamble to the Convention reflects this objective:

Animated by the desire to reconcile the

different juridical systems which prevail in the

several American Republics; and

Convinced of the necessity of undertaking

this work in its broadest scope, with due regard

for the respective national legislations,

Have resolved to negotiate the present

Convention for the protection of trade marks,

trade names and for the repression of unfair

competition and false indications of

geographical origin, and for this purpose have

appointed as their respective delegates, . . .

Article 1 of the Convention further illuminates the

contracting states’ intent by adopting the principle of

national treatment:

The Contracting States bind themselves to

grant to the nationals of the other

Contracting States and to domiciled foreigners

who own a manufacturing or commercial

establishment or an agricultural development

in any of the States which have ratified or

adhered to the present Convention the same

rights and remedies which their laws extend to

their own nationals or domiciled persons with

respect to trade marks, trade names, and the

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Opposition No. 91159871

repression of unfair competition and false

indications of geographical origin or source.

Thus, the above provisions evidence the signatories’ intent

to create a uniform system for the protection of foreign

trademarks.

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.

Although not explicitly stated as such, in his

responsive brief opposer implicitly takes the position that

Section 44 of the Lanham Act abrogates the rights created

under Article 7 of the Pan American Convention. We

disagree. A “treaty will not be deemed to have been

abrogated or modified by a later statute unless such purpose

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Opposition No. 91159871

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). 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.

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. 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.

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

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Opposition No. 91159871

the Pan-American Convention within the context of statutory

provisions and regulations implementing the U.S. embargo

against Cuba.

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

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Opposition No. 91159871

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.

V. Is Applicant Entitled to Summary Judgment Under Article

7?

Having now established that applicant has properly

asserted Article 7 of the Pan Amercan Convention as an

affirmative defense to opposer’s claim of priority under

Section 2(d) in this forum, we shall now examine the

evidence presented before us to determine whether summary

judgment in applicant’s favor is warranted. First, we shall

review the arguments proffered by both parties.

In its motion for summary judgment, applicant contends

that it is the owner of well-known restaurants in Peru

operating under the mark PARDO’S CHICKEN; that it owns

trademark registrations for the PARDO’S CHICKEN mark for

restaurant and related goods and services in Peru; that

opposer was aware of applicant’s PARDO’S CHICKEN restaurant

in Peru prior to adopting and using his PARDO’S CHICKEN mark

in the United States; and that therefore, pursuant to

Article 7, applicant has priority over opposer in the United

States.

Applicant has submitted the following evidence in

support of its motion for summary judgment: (1) the

affidavit of Mr. Arnold H. Wu, Director and General Manager

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Opposition No. 91159871

of applicant; (2) the declaration of Ms. Jean Patterson, the

vendor who obtained a copy of the file history of opposer’s

application for the mark PARDO’S CHICKEN with the

application attached thereto; and (3) copies of applicant’s

first set of interrogatories and first set of requests for

admissions, and opposer’s responses thereto. Applicant has

also submitted copies of the following Peruvian trademark

registrations, with translations, owned by applicant which

Mr. Wu has attested to as valid and subsisting:

Registration No. 0032113, issued on April 16, 2003, for

the mark PARDO’S CHICKEN in the colors red and green

for the entire class heading covering commercial

business management, commercial administration, office

work, advertising, franchise demonstration and

direction and commercial administration related to

franchises in International Class 35;

Registration No. 0019995, issued on January 14, 2000,

for the mark PARDO’S CHICKEN and design, for

distribution, transportation, packing and warehousing

of food and beverages, organization of travel and other

services in International Class 39;

Registration No. 00084467, issued on October 29, 2002,

for the mark PARDO’S CHICKEN in stylized form, for the

entire class heading covering coffee, tea, cocoa,

sugar, rice, tapioca, sago, artificial coffee, flour

and preparations made from cereals, bread, pastry and

confectionery, ices, honey, treacle, yeast, baking-

powder, salt, mustard, vinegar, sauces (condiments),

spices, and ice in International Class 30;

Registration No. 00084466, issued on October 29, 2002,

for the mark PARDO’S CHICKEN in stylized form for the

entire class heading covering meat, fish, poultry and

game; meat extracts; preserved, dried and cooked fruit

and vegetables, jellies, jams, compotes, eggs, milk and

milk products, edible oils and fats International Class

29;

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Opposition No. 91159871

Registration No. 00084191, issued on October 23, 2002,

for the mark PARDO’S CHICKEN in stylized form for the

entire class heading covering agricultural,

horticultural and forestry products and grains not

included in other classes, live animals, fresh fruits

and vegetables, natural plants and flowers, foodstuffs

for animals, and malt in International Class 31; and

Registration No. 00019994, issued on January 14, 2000,

for the mark PARDO’S CHICKEN and design for the entire

class heading covering catering services, temporary

accommodations, medical, sanitary and beauty care

services, veterinary and agricultural services, legal

services, scientific and industrial research, and

computer programming services in International Class

42.

In his responsive brief, opposer contends that

applicant has failed to satisfy the statutory requirements

set forth in Section 44, arguing that a genuine issue of

material fact remains regarding applicant’s bona fide intent

to use its applied-for mark in U.S. commerce. Opposer

further maintains that applicant cannot establish its

priority vis-à-vis opposer because a genuine issue of

material fact exists regarding whether opposer had knowledge

of the existence and continuous use of the PARDO’S CHICKEN

mark in Peru. In support of his position, opposer has

submitted excerpts of the discovery deposition transcript of

Mr. Wu.

In reply, applicant contends that opposer has failed to

counter applicant’s motion with any facts concerning

opposer’s knowledge of the PARDO’S CHICKEN mark in Peru.

Applicant also maintains that opposer has selectively cited

the deposition transcript of Mr. Wu without considering

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Opposition No. 91159871

statements regarding applicant’s bona fide intent to use the

PARDO’S CHICKEN mark in commerce in the United States.

Applicant has submitted the complete deposition transcript

of Mr. Wu as well as a second affidavit executed by Mr. Wu.

Summary judgment is an appropriate method of disposing

of cases in which there are no genuine issues of material

fact in dispute, thus leaving the case to be resolved as a

matter of law. See Fed. R. Civ. P. 56(c). A party moving

for summary judgment has the burden of demonstrating the

absence of any genuine issue of material fact, and that it

is entitled to summary judgment as a matter of law. See

Celotex Corp. v. Catrett, 477 U.S. 317, 106 S.Ct. 2548

(1986). If the nonmoving party fails to make a sufficient

showing on an essential element of its case with respect to

which it would have the burden of proof at trial, judgment

as a matter of law may be entered in favor of the moving

party. See Fed. R. Civ. P. 56(c); Celotex Corp., supra, 477

U.S. 322-23. The nonmoving party must be given the benefit

of all reasonable doubt as to whether genuine issues of

material fact exist, and the evidentiary record on summary

judgment, and all inferences to be drawn from the undisputed

facts, must be viewed in the light most favorable to the

nonmoving party. See Opryland USA, Inc. v. Great American

Music Show, Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir.

1992). When the moving party's motion is supported by

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Opposition No. 91159871

evidence sufficient to indicate that there is no genuine

issue of material fact, and that the moving party is

entitled to judgment, the burden shifts to the nonmoving

party to demonstrate the existence of specific genuinely

disputed facts that must be resolved at trial. The

nonmoving party may not rest on the mere allegations of its

pleadings and assertions of counsel, but must designate

specific portions of the record or produce additional

evidence showing the existence of a genuine issue of

material fact for trial.

Based on the submissions of the parties, we find that

applicant has met its burden of demonstrating that there are

no genuine issues of material fact, and that applicant is

entitled to judgment as a matter of law.

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

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Opposition No. 91159871

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.

A. Applicant’s Ownership of a Foreign Protected Mark

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.

B. That Applicant May Have Known of Opposer’s Use of

or Application to Register an Interfering Mark in

the United States

The evidence of record clearly establishes that there

is no genuine issue of material fact that opposer has

applied to register an “interfering mark” in the United

States. Applicant has submitted records of the USPTO

showing that on November 15, 2002, opposer filed an

application pursuant to Section 1(b) to register the mark

PARDO’S CHICKEN mark for “restaurant services” in

International Class 43. Thus, there is no genuine issue

that, as identified in his application, opposer’s services

are identical to the services delineated in applicant’s

foreign registration.

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Opposition No. 91159871

In addition, it is undisputed that the literal elements

of the parties’ respective marks are the same. Opposer’s

mark as originally filed is displayed below:

The stylization clearly is identical to applicant’s

registered mark in Peru. We therefore conclude that no

genuine issue of material fact exists that opposer’s mark

clearly constitutes an “interfering mark” within the meaning

of Article 7.

It is also undisputed that on November 18, 2002, three

days after the filing of opposer’s application, applicant

sent a letter to opposer regarding opposer’s PARDO’S CHICKEN

mark. Under these circumstances, there is no genuine issue

of material fact that applicant “may have known” of

opposer’s application and use of an “interfering mark” in

the United States.

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Opposition No. 91159871

C. Opposer’s Knowledge of the Existence and

Continuous Use in Peru of the Mark in Connection

with Services in the Same Class Prior to Opposer’s

Use in the United States

We now turn to the issues of opposer’s knowledge and

date of first use in the United States. The following facts

are undisputed:

That applicant, through its predecessor in interest,

has offered restaurant services under the mark PARDO’S

CHICKEN in Peru since 1986 and has made continuous use

of the mark in Peru since that date (See Affidavit No.

1 of Mr. Arnold H. Wu, Paragraph 3 and Exhibit 1

attached thereto consisting of an advertisement in Peru

for applicant’s restaurant services illustrating use of

the mark consistent with the stylization in applicant’s

Section 44(e) application);

That opposer is a Peruvian citizen who was born in Peru

and lived in Peru prior to residing in the United

States and has traveled to Peru in the last ten years

(See opposer’s response to Interrogatory No. 2 and

opposer’s response to Admission Request Nos. 11 and

13);

That the address given by opposer for when he lived in

Peru from 1968-1993 is less than twenty blocks from a

Pardo’s Chicken restaurant (See Affidavit of Mr. Arnold

H. Wu submitted with applicant’s reply brief, Paragraph

17);

That for purposes of asserting priority in this case,

opposer claims March 2002, the date of incorporation of

Pardo’s Chicken, Inc. in Florida (See opposer’s

response to Interrogatory No. 6 and opposer’s response

to Admission Request No. 27);

That in July 2002, opposer, prior to opening his

restaurant in Florida, erected a sign over the door

with the wording PARDO’S CHICKEN in the same

stylization and color as that used by applicant in Peru

and Chile and in applicant’s Section 44(e) application

(See Affidavit No. 1 of Mr. Arnold H. Wu, Paragraph 10

and Exhibits A and D attached thereto for a comparison

of the signs);

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Opposition No. 91159871

That opposer commenced operations of his restaurant in

July 2003 (See opposer’s response to Interrogatory No.

7); and

That, as noted above, one day after applicant filed the

application which is the subject of this opposition,

opposer filed Application Serial No. 76467713 to

register the mark PARDO’S CHICKEN for restaurant

services, using the same stylization of the mark as

used by applicant in connection with applicant’s

restaurants in Peru.

For purposes of analyzing the issue of priority within the

context of opposer’s Section 2(d) claim, while opposer

states that he intends to rely on his date of incorporation

as his date of first use in commerce, the earliest date upon

which opposer may rely for priority purposes in this case is

July 2002, the date opposer posted his sign displaying the

mark.

The crux of the parties disagreement regarding

opposer’s purported knowledge of the existence and

continuous use of the PARDO’S CHICKEN mark in Peru lies in

the parties’ divergent interpretations of opposer’s

responses to applicant’s discovery requests. We find,

however, that based on opposer’s discovery responses, no

genuine issue exists with regard to opposer’s knowledge of

the existence and continuous use of the PARDO’S CHICKEN mark

in Peru prior to opposer’s use in the United States for the

identical services.

The following discovery requests and responses are at

issue:

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Opposition No. 91159871

INTERROGATORY NO. 18

Describe when and by what means Opposer first

became aware of Applicant’s PARDO’S CHICKEN mark being

used for restaurant services outside the United States,

and the person or persons having most knowledge of

these facts.

Response:

Opposer learned of applicant’s purported use of

the mark outside of the United States by its letter

dated November 18, 2002. To further answer this

interrogatory, although opposer was aware of

restaurants in Peru called Pardo’s Chicken, he was not

aware until said date of any relationship between those

establishments and applicant.

REQUEST NO. 9

Admit that Opposer had visited one of Applicant’s

PARDO’S CHICKEN restaurants outside of the United

States prior to the date Opposer adopted the PARDO’S

CHICKEN name or mark for his business in the United

States.

Response:

Denied insofar as opposer had no knowledge of

applicant’s relationship with the restaurant in Peru

known as Pardo’s Chicken.

Opposer responded to other discovery requests in a

similar manner:

REQUEST NO. 6

Admit that Opposer was aware of Applicant’s

PARDO’S CHICKEN mark for restaurant services offered in

Peru prior to the date Opposer first posted any signs

for Opposer’s PARDO’s chicken restaurant in the United

States.

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Opposition No. 91159871

Response:

Denied. Opposer had no knowledge of applicant’s

relationship with the restaurant in Peru known as

Pardo’s Chicken.

REQUEST NO. 10

Admit that Opposer had visited one of Applicant’s

PARDO’S CHICKEN restaurants outside of the United

States prior to the date Opposer first posted any signs

for Opposer’s PARDO’S CHICKEN restaurant in the United

States.

Response:

Denied insofar as Opposer had no knowledge of

Applicant’s relationship with the restaurant in Peru

known as Pardo’s Chicken.

Applicant contends that opposer’s denials are based

only on the premise that opposer was unaware of applicant’s

relationship with the PARDO’S CHICKEN restaurant in Peru and

not of the existence of the Pardo’s Chicken restaurants in

Peru. Applicant further maintains that Article 7 only

requires that the interfering party be aware of the

existence and continuous use of the mark in one of the

contracting states, and does not require knowledge of the

owner of the mark. Opposer, however, maintains that the

discovery responses are “vague on this issue” because they

fail to establish a specific date for opposer’s knowledge.

The Board rejects opposer’s contention that the

discovery responses fall short of establishing the absence

of a genuine issue of material fact regarding opposer’s

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Opposition No. 91159871

knowledge. In his discovery responses, while opposer does

state that he was unaware of the relationship between

applicant and the PARDO’S CHICKEN mark used in connection

with restaurants in Peru, these statements do not undermine

the unequivocal statements that opposer was aware of the

existence and continuous use of the PARDO’S CHICKEN

restaurants in Peru. 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. Based on

the discovery responses, it is clear that opposer was aware

of the existence and use of the mark in Peru prior to his

use in the United States. Thus, the discovery responses

applicant relies upon are sufficient to establish no genuine

issue remains as to this material fact.

Furthermore, opposer has offered no evidence to

contradict the findings summarized above. Instead, opposer

relies on semantic arguments regarding the interpretation of

his discovery responses which we have discounted as

unpersuasive.

We therefore find that the evidence of record shows the

lack of genuine issue of material fact that opposer had

knowledge of the existence and continuous use of the PARDO’S

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Opposition No. 91159871

CHICKEN mark in Peru prior to his use of the mark in the

United States for the identical services.

D. Applicant’s Compliance with U.S domestic

Legislation

Applicant, by virtue of filing its application under

Section 44(e) of the Lanham Act has complied with the

requirements set forth in the domestic legislation in the

United States. Further, we find no genuine issue of

material fact that applicant has satisfied the requirements

set forth in Section 44(e), namely, that applicant has a

bona fide intent to use its mark in commerce in the United

States. The two affidavits of Mr. Wu contain the following

unequivocal statements regarding applicant’s bona fide

intent to use its mark in commerce:

9. For the past several years, since at least as early

as May, 2000, [applicant] has undertaken exploratory

efforts to expand into the United States, by taking

such actions as making contact with suppliers of food

products in United States and advertising its

services in English on the web site accessible to

U.S. patrons at www.pardoschicken.com.

(Affidavit No. 1).

5. [Applicant] has had a bona fide intent to use the

mark PARDO’S CHICKEN for restaurant services in

commerce in the United States since it at least as

early as February 8, 1999, when it filed its initial

United States application to register the mark

PARDO’S CHICKEN.

6. [Applicant’s] initial U.S. application to register

PARDO’S CHICKEN was abandoned on January 20, 2001 for

failure to respond to a pending office action.

7. [Applicant] has been investigating U.S. markets for

the opening of a PARDO’S CHICKEN restaurant since at

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Opposition No. 91159871

least as early as 2000 and has sponsored numerous

trips by its business executives for the purpose of

visiting with realtors, visiting potential restaurant

sites, visiting with restaurant equipment vendors and

food vendors and for obtaining quotations for such

products from vendors.

14. [Applicant] has advertised its PARDO’S CHICKEN

restaurants in newspapers with a United States

distribution in at least the years 2003 and 2004.

16. [Applicant] has formed a corporation in the United

States for the purpose of being able to operate

and/or manage U.S. restaurants under the PARDO’S

CHICKEN mark. This corporation, First Florida

Chicken, Inc., was incorporated in Florida on

February 25, 2003.

(Affidavit No. 2)

The above statements made by Mr. Wu are corroborated in his

discovery deposition transcript, and the evidence submitted

by opposer is insufficient to raise a genuine issue of

material fact on this point. We therefore find no genuine

issue of material fact that applicant has complied with the

requirements set forth in U.S. domestic legislation for

invoking priority under Article 7 of the Pan American

Convention.

Based on the foregoing, applicant has demonstrated that

there is no genuine issue of material fact regarding the

requisite elements to establish priority under Article 7 of

the Pan American Convention, and that it is entitled to

judgment as a matter of law. In view of our decision in

applicant's favor on the issue of priority, opposer cannot

as a matter of law prevail on his claim of likelihood of

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Opposition No. 91159871

confusion under Section 2(d). See Leatherwood Scopes

International, Inc. v. Leatherwood, 63 USPQ2d 1699 (TTAB

2002); see also, Aktieselskabet af 21. November 2001 v. Fame

Jeans Inc, 77 USPQ2d 1861 (TTAB 2006). Accordingly,

applicant’s motion for summary judgment is granted, and the

notice of opposition is dismissed with prejudice.

30