Galperti, Inc. v. Galperti S.R.L., No. 21-1011 (Fed. Cir. 2021)
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In 2007, Galperti-Italy, to support its application to the Patent and Trademark Office (PTO) for registration of the mark GALPERTI, told the PTO that, in the five preceding years, its use of the mark was “substantially exclusive.” In 2008, the PTO granted the application and issued Registration No. 3411812. In 2013, Galperti-USA petitioned the PTO to cancel the registration, 15 U.S.C. 1064, arguing that the registration was obtained by fraud because Galperti-Italy’s 2007 statement of substantially exclusive use was intentionally false. The Trademark Trial and Appeal Board, on remand, dismissed the fraud claim, again finding no proven falsity of the statement at issue (and again not reaching the intent aspect of fraud).
The Federal Circuit vacated. in finding no falsity of Galperti-Italy’s assertion of substantially exclusive use in 2002-2007, the Board committed two legal errors: requiring Galperti-USA to establish its own proprietary rights to the mark and disregarding the use of the mark by others during the period at issue. The court noted that Galperti is a surname. Galperti-USA does not need to establish secondary meaning of its own uses of GALPERTI in order for those uses to be counted in determining the falsity of Galperti-Italy’s claim of substantially exclusive use.
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