Danone Comes Out on Top in FRUITOLOGY Dispute

16 February 2009 Publication

World Trademark Review Daily

Article first appeared in the February 16, 2009 issue of World Trademark Review Daily. Reprinted with permission from The IP Media Group.

In Compagnie Gervais Danone v Precision Formulations LLC (Oppositions 91179589 and 91184174, January 5, 2009), in a precedential opinion, the Trademark Trial and Appeal Board (TTAB) has held that information available to it from its own records could be relied upon to determine whether an allegation in an opposition had been well pleaded for the purposes of determining a motion to dismiss.

The case before the TTAB revolved around a priority dispute. Specifically, Compagnie Gervais Danone requested an extension of protection to the United States of its international registration for the mark FRUITOLOGY pursuant to Section 66(a) of the Lanham Act. The international registration was based on Danone’s French trademark application and claimed the benefit of the priority filing date of the French application.

Pursuant to Section 1(b) of the act, Precision Formulations LLC filed an intent-to-use application to register the exact same mark. Precision’s filing date preceded that of Danone’s request for extension of protection, but was after the priority filing date of Danone’s French application. Danone and Precision each opposed the other’s application. The parties agreed that confusion was likely between the goods covered by the respective applications, thus leaving priority as the only disputed issue. Danone filed a motion for summary judgment in its opposition to Precision’s application, as well as a motion to dismiss the opposition filed by Precision.

Danone’s motion to dismiss urged that Precision had failed to allege a valid ground for opposition. Precision alleged that Danone had filed an intent-to-use application on May 22, 2007, subsequent to Precision’s February 21, 2007 filing date. Accordingly, Precision’s notice of opposition pleaded a valid ground if all of the allegations were accepted as true, but the notice of opposition failed to take into account the priority filing date of Danone’s French application. Danone argued that the TTAB should not accept Precision’s allegation that Danone’s application was filed based on intent to use. Instead, the TTAB should look to Danone’s application as "incorporated by reference" in the proceedings and should consider the true filing basis when deciding whether Precision had alleged a valid ground for opposition. Danone attached to its motion printouts from the US Patent and Trademark Office’s databases showing the basis for its application.

The TTAB explained that, on a motion to dismiss for failure to state a claim, it cannot consider evidence outside of the pleading. Additionally, the TTAB noted the recent rule changes that prevented it from converting the motion to dismiss to a motion for summary judgment. Precision urged the TTAB that it should thus accept as true its allegation that Danone’s application was based on intent to use, without reference to the evidence presented by Danone. The TTAB nevertheless took notice of the correct filing basis of Danone’s application. According to the TTAB, the filing basis and the priority filing date were:

"facts not subject to proof, and the [TTAB] may look to office records for such facts to determine if a party’s allegations are well pleaded."

Using this sensible approach, the TTAB held that Precision’s allegations were not well pleaded and granted Danone’s motion to dismiss.

The TTAB also granted Danone’s motion for summary judgment by relying on the same set of facts as to the parties’ respective priority filing dates.

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