Franpovi, S.A.v.Rosalinda Wessin and Daniel Pena

Trademark Trial and Appeal Board

Feb 9, 2008

No. 91181129 (T.T.A.B. Feb. 9, 2008)

Wolfson

Mailed: February 9, 2009

Opposition No. 91181129

FRANPOVI, S.A.

v.

ROSALINDA WESSIN and DANIEL
PENA

Before Grendel, Drost and Wellington,
Administrative Trademark Judges.

By the Board:

Franpovi, S.A. (“opposer”) has filed an opposition to
registration of the mark POLLOS VICTORINA, for “fast-food
restaurants,”1 filed by Rosalind Wessin and Daniel Pena
(“applicants”). Opposer alleges that it is a joint stock
company organized and existing under the laws of the
Dominican Republic; that it owns valid registrations for the
mark POLLOS VICTORINA for restaurant services in the
Dominican Republic; and that, inter alia, it is entitled to
prevent applicants’ registration of their mark under the
terms of the Convention for the Protection of Commercial,
Industrial and Agricultural Trade Marks and Commercial Names
(the “Santiago Convention”), 44 Stat. 2494, Apr. 28, 1923.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS OPINION IS A
PRECEDENT OF THE T.T.A.B.
Opposition No. 91181129
2
Opposer further asserts that it has filed for and been
refused registration of its mark POLLOS VICTORINA SABOR A
TI2 in the United States.3
Applicants filed an answer to the notice of opposition,
admitting that they have not used their mark in the United
States or elsewhere in connection with restaurant services
and admitting that they were aware, at the time they filed
their application, of opposer’s “limited rights existing
solely within the boundaries of the Dominican Republic to
the POLLOS VICTORINA mark.” Applicants deny the remaining
salient allegations of the complaint.
On April 23, 2008, the parties held a discovery
conference under Trademark Rule 2.120 and Fed. R. Civ. P.
26, before a Board interlocutory attorney. During the
conference, the Board approved a bifurcation of the issues
in this proceeding. The parties were allowed to conduct
initial discovery regarding the rights asserted by opposer
under the Santiago Convention without curtailing their

1 Serial No. 77599842, filed April 1, 2005 on the basis of
applicants’ bona fide intent to use the mark in commerce.
2 Serial No. 77096473, filed February 1, 2007 on the basis of
applicants’ bona fide intent to use the mark in commerce, seeks
registration of the mark for “restaurant services.”

3 An additional claim was asserted by opposer in the notice of
opposition that opposer has called the “foreign famous mark”
doctrine, which is also known as the well-known mark doctrine.
Under the claim, opposer asserts that its mark, while as yet
unused in the United States, has become so well-known here that
it may not be registered by another. Opposer asserts priority
based on such status and a likelihood of confusion between the
marks.
Opposition No. 91181129
3
future rights to conduct discovery on opposer’s self-
described “foreign famous mark claim” (see fn. 3). The
Board indicated that it would entertain motions for summary
judgment on opposer’s claim under the Santiago Convention,
following the close of this focused discovery.
The parties have now filed cross-motions for summary
judgment on opposer’s claim under the Santiago Convention.
The motions are fully briefed.
This is a case of first impression. The parties have
not cited, and we have not located, relevant case law
addressing the provisions of the Santiago Convention. For
the reasons discussed below, we hold that opposer may not
avail itself of the rights provided by the Santiago
Convention and accordingly grant applicants’ motion for
summary judgment on that claim.
Legal Standard for Summary Judgment
A motion for summary judgment is a pretrial device,
intended to save the time and expense of a full trial when a
party is able to demonstrate, prior to trial, that there is
no genuine issue of material fact, and that it is entitled
to judgment as a matter of law. See Fed. R. Civ. P. 56(c);
TBMP § 528.01 (2d ed. rev. 2004). To prevail on its motion,
the moving party must establish that there is no genuine
issue of material fact in dispute, thus leaving the claim to
be resolved as a matter of law. See Celotex Corp. v.
Opposition No. 91181129
4
Catrett, 477 U.S. 317 (1986); Opryland USA Inc. v. Great
American Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed.
Cir. 1992); and Sweats Fashions Inc. v. Pannill Knitting Co.
Inc., 833 F.2d 1560, 4 USPQ2d 1793, 1795 (Fed. Cir. 1987).
The Board may not resolve issues of material fact, but can
only ascertain whether genuine disputes exist regarding such
issues. The evidence on summary judgment must be viewed in
a light most favorable to the non-movant and all justifiable
inferences are to be drawn in the non-movant’s favor. See
Lloyd’s Food Products, Inc. v. Eli’s, Inc., 987 F.2d 766,
767, 25 USPQ2d 2027, 2029 (Fed. Cir. 1993); Opryland USA, 23
USPQ2d at 1472. Because the parties have filed cross
motions for summary judgment, we have made such inferences
with respect to both opposer and applicants.
The Santiago Convention
The Santiago Convention, signed by the United States at
Santiago, Chile on April 28, 1923, was established to
protect “commercial, industrial or agricultural” trademarks
registered by persons domiciled in any of the contracting
States. See Article I Section 1. It was ratified by the
United States in 1925 and entered into force in 1926, after
having been ratified by one-third of the signatory States.
Most parties thereafter joined the General Inter-American
Convention for Trade-Mark and Commercial Protection, 46
Stat. 2907, Feb. 20, 1929 (the “Pan-American Convention”),
Opposition No. 91181129
5
which superseded the Santiago Convention as between
contracting parties. The United States has joined the Pan-
American Convention. However, the Dominican Republic has
not. The Santiago Convention has not therefore been
replaced by the Pan-American Convention as between the
Dominican Republic and the United States.
While no court has declared the Santiago Convention to
be self-executing, for purposes of deciding the parties’
motions for summary judgment we have assumed, without
deciding, that it is a self-executing treaty. Cf. Bacardi
Corp. of America v. Domenech, 311 U.S. 150, 161, 47 USPQ
350, 355 (1940). In any event, the Board has jurisdiction
under Section 13 of the Trademark Act to decide issues of
registrability of marks in trademark opposition proceedings,
and Article V Sections 1 and 2 of the Santiago Convention
expressly relate to the registrability of marks in
proceedings brought under the treaty against registration of
a mark in the United States. Cf. Diaz v. Servicios De
Franquicia Pardo’s S.A.C., 83 USPQ2d 1320, 1326 (TTAB 2007);
British-American Tobacco Co. v. Philip Morris Inc., 55
USPQ2d 1585, 1589 (TTAB 2000).
The Santiago Convention provides, inter alia, a
mechanism for a domiciliary of one signatory country to
prevent the registration of its mark to another claimant in
another signatory country. Section 2 of Article V provides
Opposition No. 91181129
6
the grounds for challenging the claimant’s application for
registration:
When refused protection under this Convention
in a signatory State because of prior
registration or a pending application for
registration, the proprietor of a mark
claiming recognition of rights under this
Convention shall have the right to seek and
obtain the cancellation4 of the previously
registered mark, upon proving, according to
the procedure by law of the country where
cancellation is sought, such refusal, and
either:

(a) That he had legal protection for his
mark in any of the contracting States
before the date of application for the
registration which he seeks to cancel; or

(b) That the registrant had no right to the
ownership, use or employment of the
registered mark at the date of its deposit;
or

(c) That the mark covered by the
registration which he seeks to cancel has
been abandoned.

Article V Section 2 must be read in conjunction with
Article I Section 1. That Article provides:
Section 1. The High Contracting Parties agree
that any commercial, industrial or
agricultural trade-mark registered or
deposited in any of the States signatory of
the Convention, by a person domiciled in any
of such States, … may obtain in the other
signatory States the same protection granted
by them to the marks registered or deposited
in their own territory, … provided that the
formalities and conditions required by the

4 Although Section 2 describes rights of cancellation only, for
reasons explained infra we interpret the provision as extending
to qualifying foreign domiciliaries the additional right to
oppose a mark filed in a signatory State.
Opposition No. 91181129
7
domestic laws of each Stat, as well as the
following requirements, are complied with:

a) Any person interested in the
registration or deposit of the mark shall
present to the proper Inter American Bureau
through the proper office of the State of
first registration or deposit, an application
for recognition of the rights claimed, in
accordance with the requirements prescribed in
the Appendix of this Convention, which is
declared to be a part hereof.

b) He shall pay, … a fee equivalent in
value to fifty dollars ($50.00) United States
gold…. Such fee shall be used to cover the
expenses of the said Inter American Bureau.

An intrinsic component of the rights accorded under
Article V is compliance with the conditions of Article I.
Thus, before a person may successfully oppose a mark in the
United States based on the treaty, it must show that it is
domiciled in one of the signatory states; that it owns a
valid registration for its mark in its home state; that it
has complied with the formalities and conditions required by
the domestic law of the state in which it is claiming
rights; and that it has applied for protection through its
home state to one of the Inter American Bureaus (“IAB” or
“Bureau”) and paid the appropriate fee.
Opposer cannot meet these conditions. Specifically,
because there is no longer a functioning IAB with which to
apply for protection, opposer cannot comply with all of the
conditions precedent to bringing an opposition of a mark in
the United States under the treaty. While an IAB was
Opposition No. 91181129
8
established in the city of Havana, Cuba, it ceased
functioning on November 2, 1949. The second Bureau,
contemplated by the treaty to be established in Rio de
Janiero, Brazil, was never opened. Yet the requirement that
a claimant file for protection through the Bureau has never
been superseded, nor has it lapsed or been replaced.
The Bureau’s functioning is integral to the treaty’s
purpose. The primary duty of the Bureau was to keep a
detailed record of applications for protection under the
Santiago Convention received through the national offices of
registration in each country, and to communicate particulars
of the applications to each of the contracting states. This
function ensured that the nationals of each contracting
state had access to a register, kept by their own state’s
trademark office, of those registrations that had been
deposited with an IAB. Without the IAB notification system,
all marks would automatically be subject to protection in
all member States of the Santiago Convention merely upon
registration thereof in the applicant’s home country. Such
result would seriously undercut the scheme of protective
measures created by the treaty and does not appear to have
been intended by the Santiago Convention signatories. In
contrast, the Pan-American Convention, which superseded the
Santiago Convention as between contracting nations
(including those that had joined the Santiago Convention
Opposition No. 91181129
9
initially), requires prior notification of a party’s rights,
either by filing with a Bureau or directly with the state in
which the foreign national desires to assert its rights.
See Pan-American Convention, Chapter II Article 2. An
additional safeguard was added to the Pan-American
Convention, that of a knowledge requirement, which was
designed to protect national rights against foreign
registrants. Id., Chapter II Article 7.
Given that the requirement of application to the Bureau
cannot be read out of the treaty, the rights established by
the Santiago Convention cannot be exercised by a potential
plaintiff because it cannot fulfill the condition of
application to the IAB. Opposer’s non-compliance with the
unambiguous terms of the treaty prevents it from obtaining
relief under the treaty.
In view thereof, there are no material facts in dispute
that opposer cannot avail itself of any of the rights
described in the treaty and summary judgment may be entered
as a matter of law. Accordingly opposer’s motion for
summary judgment is denied and applicant’s motion for
summary judgment is granted on the Santiago Convention
claim. This case will go forward on the remaining claim
under the foreign famous/well-known mark doctrine. We have
made no determination regarding the sufficiency or
applicability of this claim.
Opposition No. 91181129
10
Trial dates, including disclosure dates and the close
of discovery, are reset as indicated below.
Initial Disclosures Due 4/13/09
Expert Disclosures Due 8/11/09
Discovery Closes 9/10/09
Plaintiff's Pretrial Disclosures Due 10/25/09
Plaintiff's 30-day Trial Period Ends 12/9/09
Defendant's Pretrial Disclosures Due 12/24/09
Defendant's 30-day Trial Period Ends 2/7/10
Plaintiff's Rebuttal Disclosures Due 2/22/10
Plaintiff's 15-day Rebuttal Period
Ends 3/24/10

IN EACH INSTANCE, a copy of the transcript of
testimony, together with copies of documentary exhibits,
must be served on the adverse party within thirty days after
completion of the taking of testimony. Trademark Rule
2.125.
Briefs shall be filed in accordance with Trademark
Rules 2.128(a) and (b). An oral hearing will be set only
upon request filed as provided by Trademark Rule 2.129.