Originally published April 2006
The First Circuit’s recent decision in Borinquen Biscuit Corp. v. M.V. Trading Corp., 2006 U.S. App. LEXIS 8206 (1st Cir. April 4, 2006), illustrates the importance of filing Section 15 affidavits to claim incontestable status for trademarks that have been registered for more than five years.
Borinquen is a manufacturer of "galletas" (crackers/cookies) and has sold them throughout Puerto Rico under the RICA trademark since 1976, when it acquired the galleta recipe and RICA trademark from Sunland Biscuit Company. Sunland had sold galletas in Puerto Rico since 1962 and had registered the RICA trademark on the Principal Register of the U.S. Patent and Trademark Office in 1969. The registration for RICA states that RICA may be translated as "rich."
A Section 15 affidavit may be filed in the U.S. Patent and Trademark Office in connection with any federal trademark registration where a trademark has been registered for at least five years and there are no pending cases or proceedings regarding the trademark owner’s rights in the mark. Once a Section 15 affidavit has been filed, the registration is deemed "incontestable" and can no longer be challenged on certain grounds, including descriptiveness. Although the RICA mark has been in continuous use for over 40 years, neither Sunland nor Borinquen ever filed a Section 15 affidavit claiming incontestability.
In 2003, M.V. began offering galletas under the name NESTLE RICAS. Borinquen filed a trademark infringement action, seeking both damages and injunctive relief. M.V. counterclaimed, seeking cancellation of Borinquen’s RICA mark. The District Court granted Borinquen’s motion for preliminary injunction, and M.V. filed an interlocutory appeal from that order. M.V. argued that the District Court erred by not requiring Borinquen to establish that the RICA mark had acquired secondary meaning and by finding a likelihood of confusion. The First Circuit affirmed the District Court’s order.
The First Circuit concluded that because neither Borinquen nor its predecessor-in-interest had filed a Section 15 affidavit claiming incontestability, the 37-year-old registration remained "contestable." The First Circuit did not agree, however, with M.V.’s argument that Borinquen was required to demonstrate secondary meaning for its contestable registration. The court correctly noted that when a trademark is registered without proof of secondary meaning, the trademark owner is entitled to a presumption that the trademark is inherently distinctive. If the trademark owner has filed a Section 15 affidavit for such a registration, this presumption is conclusive. If the trademark owner, as in the Borinquen case, has not filed a Section 15 affidavit, however, the presumption is rebuttable. In such a case, the defendant can overcome the presumption that the trademark is inherently distinctive if it offers sufficient evidence that the mark is merely descriptive. The trademark owner is then afforded the opportunity to offer evidence of secondary meaning. In the Borinquen case, M.V. failed to offer sufficient evidence of descriptiveness to rebut the presumption, so Borinquen was not required to offer any evidence of secondary meaning.
While Borinquen successfully obtained a preliminary injunction based on M.V.’s failure to offer sufficient evidence of descriptiveness, Borinquen’s success would have been much more certain had it filed a Section 15 affidavit prior to initiating the litigation. Had it done so, it would have eliminated altogether M.V.’s ability to contest the validity of its registration on descriptiveness grounds, and M.V. would never even have had the opportunity to present evidence on that issue. Accordingly, this case illustrates the importance to trademark owners of making sure that their trademark rights, including the filing of Section 15 affidavits, are in order before they pursue infringers.
Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.
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