Intellectual Property News and Reports

In September 2007, Galperti S.r.l. (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, Inc. (Galperti-USA) petitioned the PTO to cancel the registration, arguing, among other things, that the registration was obtained by fraud because GalpertiItaly’s 2007 statement of substantially exclusive use was false and, indeed, intentionally so. When the PTO’s Trademark Trial and Appeal Board dismissed the cancellation petition, we affirmed as to the non-fraud issues but vacated the Board’s rejection of the fraud charge and remanded for further consideration of that charge. Galperti, Inc. v. Galperti S.r.l., 791 F. App’x 905 (Fed. Cir. 2019) (2019 CAFC Op.). On remand, the Board again dismissed the fraud claim, again finding no proven falsity of the statement at issue (and again not reaching the intent aspect of fraud). Galperti, Inc. v. Galperti S.r.l., Cancellation No. 92057016 (TTAB Aug. 4, 2020) (2020 Board Op.). Now, on Galperti-USA’s second appeal, we hold that, in finding no falsity of Galperti-Italy’s assertion of substantially exclusive use from 2002 to 2007, the Board committed two legal errors: requiring Galperti-USA to establish its own proprietary rights to the mark and disregarding use of the mark by others during the period at issue. We vacate the Board’s decision and remand for further consideration.

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