Mario Diazv.Servicios De Franquicia Pardo's S.A.C.

Trademark Trial and Appeal Board

Feb 16, 2007

No. 91159871 (T.T.A.B. Feb. 16, 2007)

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

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, Virginia 22313-1451
THIS OPINION IS PRECEDENT
OF THE T.T.A.B.
Opposition No. 91159871
2
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.

Opposition No. 91159871
3
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).

Opposition No. 91159871
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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.

Opposition No. 91159871
5
(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.

Opposition No. 91159871
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(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
Opposition No. 91159871
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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.
Opposition No. 91159871
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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
Opposition No. 91159871
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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.
Opposition No. 91159871
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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
Opposition No. 91159871
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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.
Opposition No. 91159871
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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
Opposition No. 91159871
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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
Opposition No. 91159871
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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
Opposition No. 91159871
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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
Opposition No. 91159871
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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
Opposition No. 91159871
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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;

Opposition No. 91159871
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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
Opposition No. 91159871
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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
Opposition No. 91159871
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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
Opposition No. 91159871
21
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.
Opposition No. 91159871
22
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.

Opposition No. 91159871
23
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);

Opposition No. 91159871
24
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:
Opposition No. 91159871
25
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.
Opposition No. 91159871
26
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
Opposition No. 91159871
27
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
Opposition No. 91159871
28
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
Opposition No. 91159871
29
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
Opposition No. 91159871
30
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.