Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 CONSORZIO DEL PROSCIUTTO DI PARMA
v.
PARMA SAUSAGE PRODUCTS, INC.
Cancellation No. 15,433
June 17, 1992
Hearing: February 27, 1992
Cary H. Sherman, Philip Horton and Roberta L. Horton of Arnold & Porter for Consorzio del Prosciutto di Parma.
Harry B. Keck of Zurawsky & Keck for Parma Sausage Products, Inc.
Before Rooney, Cissel and Seeherman
Members
Member
Consorzio del Prosciutto di Parma, an association organized and existing under the laws of Italy, petitioned to cancel the registration of Parma Sausage Products, Inc., a Pennsylvania corporation, for the mark PARMA BRAND and design, shown below, for "meat products--namely, sausage, salami, capicollo, prosciutto and lunch meats." This registration issued on August 26, 1969. [FN1]
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE
As grounds for cancellation petitioner alleged that it is the official body to certify the regional origin and characteristics of "Parma Ham", the ham product originating in Parma, Italy; that, pursuant to Italian law, petitioner has adopted three certification marks, i.e., "Parma Ham," "Prosciutto di Parma" and "Parma" with a crown design; that petitioner filed applications to register these marks in the U.S. Patent and Trademark Office on August 7, 1984; that registration was refused under Section 2(d) on the basis of respondent's registration, and action on the applications has been suspended pending the disposition of this proceeding; that respondent's meat products do not originate in Parma, Italy and do not comply with the mode of production and characteristics required by Italian law for products bearing petitioner's certification marks; and that respondent's registered mark of PARMA BRAND is deceptive within the meaning of Section 2(a) because the mark is used by respondent with intent to deceive the public into believing (a) that its products originate in Parma, Italy or (b) comply with the mode of production and characteristics required by Italian law for products bearing petitioner's certification marks, or (c) have been so certified by petitioner. Petitioner did not refer to (b) and (c) in its trial brief, and we have thus treated the issue of whether respondent's mark is geographically deceptive as the sole ground for cancellation.
In its answer respondent admitted that its PARMA BRAND meat products do not originate in Parma, Italy, and denied the remaining allegations of the petition for cancellation. Respondent also raised certain affirmative defenses.
After the proceeding commenced respondent amended its registration, with the consent of petitioner, to delete the term "prosciutto" from the identification of goods. The parties also submitted a settlement agreement which, inter alia, stated that they had determined that the marketing in the United States of imported prosciutto under petitioner's certification marks would not create confusion with respondent's marketing of non-prosciutto products under respondent's PARMA BRAND mark and that, upon approval of the agreement and approval of petitioner's certification marks for registration, petitioner would move to dismiss the instant proceeding with prejudice. The amendment to respondent's identification of goods was subsequently entered by the Commissioner, and the Board dismissed the cancellation proceeding with prejudice.
*2 Thereafter, petitioner moved to reopen proceedings. According to the papers which it submitted, the Trademark Examining Attorney had initially accepted the settlement agreement at a meeting between the Examining Attorney and the parties, and confirmed this in an Office Action dated November 6, 1987 in which the Examining Attorney stated that "the settlement agreement appears to obviate the likelihood of confusion." As a result of this Office Action, respondent submitted the amendment to its registration deleting "prosciutto," and the cancellation proceeding was terminated. Thereafter, in January 1989 the Examining Attorney issued Office Actions in all three of petitioner's applications which essentially reversed the position taken in the November 6, 1987 Office Action, and registration was finally refused on the basis of respondent's now-amended registration for PARMA BRAND. [FN2] Action on petitioner's applications has since been suspended.
As a result of the Examining Attorney's refusal, petitioner moved to reopen the cancellation proceeding and, in view of the unforeseen and exceptional circumstances detailed herein, the Board granted relief from judgment under Fed.R.Civ.P. 60(b).
The record includes the pleadings; the file of the registration sought to be cancelled; respondent's responses to certain of petitioner's requests for admission and excerpts, with exhibits, of the discovery deposition of Luigi Spinabelli, relied on by petitioner; and the testimony, with exhibits, of witnesses for both parties. The parties have also stipulated to certain information regarding respondent's manufacturing process. The parties have fully briefed the case, [FN3] and an oral hearing was held.
Petitioner is an association of producers of prosciutto di Parma, or Parma prosciutto. [FN4] "Prosciutto," which means ham in Italian, is used in the United States to refer to ham which is, at least in part, dry-cured. Prosciutto has been prepared in the Parma province of Italy for a long time, but the first commercial, as opposed to personal, use began at the end of the 19th or beginning of the 20th century. Large industrialization started in the 1950's, with the creation of numerous firms, and by the end of the 1950's or early 1960's production was well established.
Petitioner was created in 1963 to monitor, standardize and protect the production of prosciutto di Parma. Petitioner currently has as members more than 200 producers of prosciutto, who are located in the Parma region of Italy. In 1970 the Italian government passed a law restricting the use of the name "Prosciutto di Parma" to ham having certain qualities relating to its geographic situation and production, and regulations were subsequently issued specifying these qualities and processes in great detail. Petitioner's function is to oversee the correct use of the name "Prosciutto di Parma" and the certification marks PARMA and Crown Design and PROSCIUTTO DI PARMA/PARMA and Crown design; oversee the production of the prosciutto to safeguard its special characteristics; promote awareness of the product in Italy and abroad; and assist its members in order to facilitate the production and sale of prosciutto.
*3 The record is unclear about sales of prosciutto di Parma in the United States prior to 1989. There is some testimony by petitioner's witnesses that the prosciutto was reintroduced in 1989, thereby indicating that it was formerly available. However, there is no evidence as to the amount of the prosciutto that was sold during this period, or whether, or the manner in which, its geographic origin was made known. What is clear is that in the late 1960's (the exhibits refer to both 1967 and 1968) the United States government banned the importation of pork products, including prosciutto di Parma, from Italy. This ban was occasioned by an outbreak of African swine flu in that country, and the fear that it might be transmitted by pork products such as prosciutto to the U.S. swine population.
In September 1989, after extensive lobbying by petitioner, prosciutto di Parma was again allowed to be imported. The news of the lifting of the ban was heavily promoted by petitioner. Fact sheets, press releases and brochures about the product and its availability in the United States were distributed shortly before and after the product reappeared in the American market. Petitioner engaged in radio advertising, too, airing more than 5,000 messages of 60 seconds each on stations in such cities as New York, San Francisco, Boston and Chicago. Petitioner also disseminated point of purchase material, including posters, brochures, leaflets, note pads, buttons and napkins, and provided samplings of prosciutto di Parma by women wearing aprons and caps bearing petitioner's certification mark. In addition, through its advertising and public relations agencies in the United States, petitioner held seminars with press representatives, restaurant owners and the like, where petitioner distributed promotional material and educated attendees about prosciutto di Parma. It is not clear from the record how much of its worldwide advertising expenditures of $3 million in 1989 were directed to its U.S. activities, but of the estimated $8 million it planned to spend in 1991, $1.5 million or $1.6 million was slated for the United States.
The availability of prosciutto di Parma also received a great deal of publicity in the popular press. Articles about the Parma product appeared in such newspapers as the "Boston Globe," "The Los Angeles Times," the "San Francisco Chronicle" and the "Chicago Tribune," and in the "Atlantic Monthly" and the "New York Times Magazine." References also appeared in two cookbooks published in 1990.
From September 1989, when prosciutto di Parma was first allowed back into the United States, through the end of 1990, 90,000 prosciutti, having a value of more than $15 million and a total weight of 600,000 kilograms, were sold in this country.
Defendant was started in 1954 or 1955 by Alessio Spinabelli, a native of Parma, Italy, who came to the United States in 1949, and who named his company Parma Sausage Products in honor of his hometown. He adopted the mark PARMA BRAND with an Eagle Design for the same reason. When the company opened, defendant sold sausage, salami, capicollo, prosciutto, coppa secca and pancetta, and it currently sells sausage, salami, capicollo, prosciutto and lunch meats under the PARMA BRAND mark. All of these products are made from pork, and all are made in the United States from pork purchased from a U.S. company.
*4 At the outset, we find that petitioner has established its standing to bring this action since it is the organization charged with certifying prosciutto which originates in Parma and protecting the PARMA certification marks which it uses. Petitioner's interest in this matter is, thus, greater than that of the general public. Jewelers Vigilance Committee Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d 2021 (Fed.Cir.1987).
In order to prove that a mark is geographically deceptive under Section 2(a), it must first be shown that it is geographically deceptively misdescriptive. To do so, it must be established that the mark consists of or incorporates a term that denotes a geographical location which is neither obscure nor remote, that there is a goods/place association between the goods on which the mark is used and the geographical place named by the term, and that the goods do not, in fact, originate in that geographical place. Proving geographic deceptiveness requires the further step of showing that the misdescription is likely to affect the customer's purchasing decision. In re Sharky's Drygoods Co., --- USPQ2d ---, SN 74/017,286 (TTAB March 4, 1992).
This case hinges on the legal question of the time as to which geographic deceptiveness must be established, i.e., the date the registration issued or the time of trial. Petitioner has not even attempted to show that respondent's mark was geographically deceptive in 1969, when it registered. Indeed, as of the date this cancellation proceeding was commenced there is only minimal evidence (an article in a 1985 issue of "Gourmet" magazine) that the consuming public was aware of Parma, Italy as a geographical location which was the source of prosciutto. [FN5] There is insufficient evidence to establish a goods/place association between Parma and meat products prior to the publicity campaign initiated by petitioner in 1988/89.
While this is a case of first impression, we are confident, after reviewing the language of the statute and the policy indicated in the statute and articulated in the Congressional reports generated in conjunction with the enactment of the Lanham Act, that the operative date to establish geographic deceptiveness is the date of issuance of the respondent's registration, in this case August 26, 1969.
Respondent's registration was, at the time this cancellation action was brought in 1986, more than 15 years old. Accordingly, the only basis on which cancellation is possible is Section 14(3), which provides that a petition to cancel a registration of a mark may be filed:
At any time if the registered mark becomes the generic name for the goods or services, or a portion thereof, for which it is registered, or has been abandoned, or its registration was obtained fraudulently or contrary to the provisions of section 4 or of subsection (a), (b), or (c) of section 2 for a registration under this Act, or contrary to similar prohibitory provisions of such prior Acts for a registration under such Acts, or if the registered mark is being used by, or with the permission of, the registrant so as to misrepresent the source of the goods or services or in connection with which the mark is used.
*5 The statute, thus, states that a petition to cancel a registration may be filed if the registration was obtained contrary to the provisions of Section 2(a). In other words, if a registration is more than five years old, it is only if the mark was geographically deceptive at the time the registration issued that the registration may be cancelled on the ground of geographic deceptiveness. The statutory language makes a distinction between a mark which "becomes" the generic name or "has been" abandoned, or which "is being used by" the registrant so as to misrepresent, and a registration that "was obtained" fraudulently or contrary to certain statutory provisions including Section 2(a). The shifting of tense, back and forth and back again, cannot be dismissed as sloppy drafting. Nor can the distinction made between the use of "mark" in connection with the grounds of genericness, abandonment and misrepresentation, and the use of "registration" in connection with the grounds of fraud and the statutory references be so dismissed. Rather, these language choices indicate a clear Congressional intent that a registration may be cancelled whenever the registered mark becomes generic or is abandoned or is used by the registrant to misrepresent, no matter when in the life of the registration that should occur. On the other hand, the difference in the language used regarding fraud and the enumerated statutory provisions shows an intent that only if it should not have issued in the first place should a registration more than five years old be cancelled. [FN6] The statute does not say that registrations more than five years old may be cancelled because the marks might not be registrable if registration were sought under the circumstances obtaining when a cancellation proceeding commences or during trial.
The issue of the operative date for establishing that a mark is geographically deceptive has apparently not been decided heretofore. Presumably this is because the case before us presents such an unusual fact situation. However, in a case involving the cancellation of a 30-year-old registration pursuant to the "false suggestion of a connection" ground under Section 2(a), the petitioner acknowledged that, in order for it to prevail on the ground of false suggestion, it had to demonstrate that, at least at the time of issuance of the registration sought to be cancelled (1955), the term had to have pointed uniquely to petitioner. The Board implicitly accepted this test, finding that the evidence demonstrated that the term uniquely identified petitioner's constituent member. Board of Trustees of the University of Alabama v. BAMA-Werke Curt Baumann, 231 USPQ 408, 410-11 (TTAB1986). See also, Neapco Inc. v. Dana Corp., 12 USPQ2d 1746 (TTAB1989), concerning the legal standard to be applied in a cancellation proceeding of a registration not yet five years old, when the claim is that the registered mark is merely descriptive and is devoid of acquired distinctiveness. The Board stated in that case that even if, at present, the registered mark possesses secondary meaning, the petitioner would prevail if it is established that as of the time of registration the mark was merely descriptive and was devoid of secondary meaning.
*6 We recognize that our holding that a mark's geographic deceptiveness must be established as of the time the registration issues could lead to what seems, at first, an anomalous result, namely that, even though a mark were to be proven to deceive the public at the present time, a registration of the mark cannot be cancelled by the Board. However, when Section 14 and the legislative history are more carefully considered, it appears that the framers of the Act were attempting to strike a balance between the needs of the public and the needs of trademark owners.
The Senate report accompanying one bill in the extensive series of bills which eventually resulted in the Trademark Act of 1946 supports this view. Section 14 of the particular bill (S. 895, 77th Cong., 1st Sess. (1941)) was similar to the present Act's Section 14, but provided that cancellation of a registration might be applied for within ten years from the date of registration. The bill went on to state that "if a registered mark has been abandoned or its registration was obtained fraudulently, or contrary to the provisions of section 2, subsection (a), (b) or (c) hereof, application for its cancellation may be made at any time." The Senate report explained:
Naturally, as in dealing with any other kind of property, there should be some ultimate period of repose when rights will adhere, and it has seemed to your committee that a 10-year period is ample. Even so, if a registered mark has been abandoned or if its original registration was obtained fraudulently, or contrary to the act itself, an application for cancellation may be made at any time, and consequently to the extent previously used in commerce, a registrant's right becomes incontestable after the period for cancellation of his registration has expired. S.Rep. No. 568, 77th Cong., 1st Sess. 2 (1941).
This balancing of property rights and public interest seems to us to have resulted in a statutory scheme whereby, once a trademark owner has had a registration for five years, his property interests come to the fore, and his registration will thenceforth be safe from attack unless he makes the registration vulnerable through his own actions, or unless he was never entitled to the registration to begin with. For example, if the registrant fails to perform actions which are within his control, e.g., he abandons his mark or uses his mark so as to misrepresent the source of the goods or allows the mark to become, or promotes it as, the generic name for the goods, his registration can be cancelled because he has, in effect, participated in its destruction. However, a petitioner cannot attack a trademark registration more than five years old on the ground of priority of use and likelihood of confusion. It matters not that the petitioner in such a case can prove rampant actual confusion. The likelihood, or even certainty, of confusion or deception of the public is not a factor. So, too, is the case when a mark might currently be geographically deceptive, as long as the registration was valid when issued.
*7 The soundness of this statutory scheme becomes evident when it is viewed in connection with the factual situation of the present case. Respondent's mark was registered in 1969, but it is on the basis of geographic deceptiveness resulting from publicity generated almost 20 years later that petitioner seeks to cancel the registration. Moreover, to the extent that respondent's mark can be alleged to be geographically deceptive, it is largely as a result of the activities of the very party that is seeking cancellation. There is something manifestly unfair about a trademark owner's being deprived of its validly obtained and long-held registration because of recent activities by its adversary.
As we stated previously, petitioner has not met its burden of proving that PARMA BRAND and Design was geographically deceptive as of the date the registration issued on August 26, 1969. Petitioner has submitted virtually no evidence to establish that, in 1969 or earlier, consumers in the United States recognized "Parma" as a geographic place, or that they made an association between meat products and Parma, Italy. In connection with this, even petitioner's expert witnesses, restaurant manager Vincent MacDonald and food writer Corby Kummer, did not testify that they knew, as of 1969, that Parma was a geographic place from which prosciutto or other meat products originated.
Accordingly, since petitioner has failed to prove a goods/place association between Parma and the meat products identified in respondent's registration as of 1969, petitioner's claim that respondent's mark is geographically deceptive within the meaning of Section 2(a) must also fail.
We would also point out that, even if the operative date for proving geographic deceptiveness were the trial phase of the cancellation proceeding, we would still dismiss the petition for cancellation. In short, we find that petitioner has not proven the element of materiality required for finding geographic deceptiveness. That is, even if consumers were to believe that respondent's meat products, sold under the mark PARMA BRAND and Design, came from Parma, Italy, there is no evidence that this fact would be likely to affect their purchasing decision. In re Budge Mfg. Co., Inc., 857 F.2d 773, 8 USPQ2d 1259 (Fed.Cir.1988).
The examples of publicity which are of record all go to the fame and special qualities of prosciutto from Parma. The emphasis in these articles concerns the particulars of the production of the prosciutto, especially the curing process of the ham, and the unique taste of the final product. There is much discussion of the contribution to the curing process of the geographic situation of Parma, e.g., "the prosciutti are hung to dry in special rooms with tall windows, where they are bathed in the sea breezes that blow from the Ligurian sea (sic) and over the Appenine mountains." Petitioner's exhibit 62.
The publicity about prosciutto di Parma might well lead consumers to think that this product is special, and their belief that PARMA BRAND prosciutto comes from Parma could affect their purchasing decision. As a result, the use of PARMA BRAND for prosciutto might be deceptive. However, respondent's registration does not include prosciutto in the identification of goods. It is petitioner's burden to prove that respondent's mark is geographically deceptive for the goods identified in the registration. We are not willing to make an assumption that, because the consuming public would want prosciutto because they believe it comes from Parma, they would be motivated to purchase other pork products such as sausage and salami for the same reason.
*8 There is, of course, a connection between prosciutto and the meat products identified in respondent's registration, in that all are made from pork. This connection is sufficient for us to conclude that consumers, knowing that prosciutto comes from Parma, would believe that the other pork products sold under the mark PARMA BRAND originate there as well. However, we cannot conclude simply on the basis that prosciutto and respondent's products are all pork products that the special qualities associated with prosciutto from Parma would be assumed by consumers to apply as well to salami, sausage and lunch meats.
In reaching this conclusion, we are aware that some of the articles and brochures refer to the pigs from which prosciutto di Parma is made, mentioning, in particular, their special feed. However, we simply cannot conclude from these passing references that consumers would connect 1) the special feed to 2) special qualities in the pig flesh to 3) the assumption that the pig carcass, once the hams are removed to make prosciutto, is used to make other pork products, such as salami and sausage, to 4) the assumption that these other pork products are somehow special because of the special feed. There is no evidence to show that consumers would make such an in-depth analysis, particularly where, as we previously stated, the references to the swine themselves are minor, and the emphasis in all the articles and brochures is on the special curing process which is used to create the prosciutto and the resulting unique taste of this particular meat product.
We have also considered the testimony of petitioner's expert witnesses relating to the sale of pork products in Parma. They each made some general statements to the effect that the Parma region is famous for pork products, but the details of their testimony persuade us that the region is primarily known for prosciutto di Parma and parmigiano reggiano cheese. In any event, both Corby Kummer, a food writer who is a senior editor of "Atlantic Monthly" and Vincent MacDonald, the manager of an Italian restaurant in Washington, D.C., testified that their knowledge of the agricultural products of Parma is based on their travels and research. Thus, even if we accept that sausages are important products of Parma, we cannot ascribe the particular knowledge of these food experts to the consuming public. Except for prosciutto di Parma, no pork products from Italy have been imported into the United States for almost 25 years. The evidence of record is simply not sufficient for us to conclude that consumers in the United States would recognize sausages or any pork product other than prosciutto as principal products of Parma.
Petitioner has pointed to In re House of Windsor, Inc., 221 USPQ 53, 57 (TTAB1983) in support of its argument that PARMA BRAND and design is geographically deceptive, and specifically in support of its argument on "materiality." In that case, the Board stated:
*9 If the evidence shows that the geographical area named in the mark is an area sufficiently renowned to lead purchasers to make a goods-place association but the record does not show that goods like applicant's or goods related to applicant's are a principal product of that geographical area, then the deception will most likely be found not to be material and the mark, therefore, not deceptive. On the other hand, if there is evidence that goods like applicant's or goods related to applicant's are a principal product of the geographical area named by the mark, then the deception will most likely be found material and the mark, therefore, deceptive.
It is as [sic] bit risky to suggest the kind or amount of evidence that would be sufficient to establish that goods like or related to applicant's come from a particular geographical region, but we are willing to take that risk in the attempt to give some guidance to Examining Attorneys and applicants. For us, in the ordinary case, if the record contains a concession that the area named by the mark has, as one of its principal products, applicant's goods or related goods or if the record contains a reliable gazeteer entry (or the like) to the effect that applicant's goods (or sufficiently related goods) are a principal product of the geographical area named by the mark, such evidence is sufficient to establish the materiality of the deception.
Petitioner's position, essentially, is that prosciutto is a principal product of Parma, that respondent's salami, sausage and other pork products are related to prosciutto, and that petitioner has therefore established the materiality of the deception.
We do not believe that the language used in Windsor compels us to find that respondent's mark is geographically deceptive, or that the misdescriptive nature of respondent's mark is likely to affect the consumer's decision to purchase. There are two major differences between Windsor and the case before us now. First, there is a difference between the manner in which the Windsor applicant's goods were related to the principal products of the geographic region and the manner in which respondent's goods are related to prosciutto. Windsor involved an application for BAHIA for cigars, and the evidence of record showed, inter alia, that Bahia is the name given to Brazilian tobaccos grown in the Bay of Salvador; tobacco is a principal product of Bahia province Brazil; Bahia has had a large cigar leaf crop; and cigars and wrappers were produced in the province. In connection with proving materiality or deceptiveness, the opinion refers to a showing that the applicant's goods be either the principal product or related to the principal product of the area named in the mark. While the Board's intent was to set forth a general principle, the context of the Board's statement must be taken into account. The goods in the application were cigars, and the principal product of the region was tobacco. The phrase "related goods," for purposes of determining materiality, was never intended to mean the same thing as that term is used in the context of determining likelihood of confusion. Thus, while pork products such as salami and sausage would be considered related to prosciutto for purposes of determining likelihood of confusion, they are not necessarily related when the issue is geographic deceptiveness.
*10 In Windsor, it was reasonable to treat the finished product, cigars, as being related to the raw material, tobacco, from which the cigars are made. That is, to the extent that a region is known for production of tobacco, consumers are likely to assume that cigars, bearing the geographic name as a mark, are made from the tobacco of that region and have the same qualities for which the tobacco is known.
In the present case, the "raw material" for the sausage, salami and other meat products identified in respondent's registration is swine. However, the product for which the Parma region is known is prosciutto, not swine. It is not the pigs which are a principal product of Parma, such that consumers would assume that all pork products originating in Parma have special qualities. It is prosciutto which is the principal product, and while prosciutto and other pork products may be related in the sense that they are all made from pigs, these other pork products are not made from prosciutto. The evidence is insufficient to prove that consumers would purchase salami, sausage, coppocollo and lunch meats because they come from Parma, simply because prosciutto is a principal, and a special, product of Parma.
The second, and more important, reason why Windsor is distinguishable from this case is that Windsor was an ex parte appeal, involving an Examining Attorney's refusal to register the mark. In ex parte prosecution, the burden is initially on the Patent and Trademark Office to put forth sufficient evidence to show that the mark for which registration is sought meets the criteria of unregistrability. Once the PTO makes such a prima facie case, the burden is on the applicant to come forward with countering evidence to overcome the rejection. In re Budge Mfg. Co., Inc., supra. The Court of Appeals for the Federal Circuit has specifically recognized that the PTO has limited facilities for acquiring evidence, and the practicalities of the limited resources available to the PTO are routinely taken into account in reviewing its administrative actions. In re Loew's Theatres, Inc., 769 F.2d 764, 768, 226 USPQ 865, 868 (Fed.Cir.1985). Thus, the PTO can make a prima facie showing of a goods/place association between a product and a geographic name simply by citing a Gazetteer reference that the product is one in a short list of principal crops of the region, and no more can be expected from the PTO in the way of proof. Id. The PTO is not expected to conduct a survey of the marketplace or obtain consumer affidavits. In re Budge Mfg. Co., Inc., supra.
However, the case before us is not an ex parte prosecution, and petitioner is not an Examining Attorney with the limited resources available to the PTO. Here we have an inter partes proceeding in which petitioner is attempting to cancel a registration which is more than 20 years old. The proof required after this long period of registration, and after respondent has built up good will in its mark over this period of time, must necessarily be more than the evidence submitted by petitioner, e.g., that respondent's goods and prosciutto are all pork products, that a food writer has seen markets in Parma filled with pork products, and that there are some references in articles and brochures to the fact that the pigs from which prosciutto di Parma is made are fed the whey of Parmigiano-Reggiano cheese.
*11 We candidly acknowledge that this case has presented us with a difficult situation to resolve. On the one hand, petitioner has expended great efforts to promote prosciutto from Parma, and has apparently developed a world-wide reputation for this product. It also has extensively used and promoted certification marks containing the word PARMA and is faced with not being able to register them in the United States because of respondent's registration. Further, the absence of prosciutto di Parma from the United States market for 22 years was not petitioner's fault, and indeed was a situation which it sought vigorously to change. On the other hand, respondent has used its PARMA BRAND mark for more than 35 years, and has owned a registration for it for more than 20 years. At the time it adopted and at the time it registered its mark, PARMA BRAND and design was neither geographically deceptively misdescriptive nor geographically deceptive. [FN7] It is only as a result of petitioner's publicity efforts in the United States, undertaken almost 20 years after the issuance of respondent's registration, that the cloud of geographic deceptiveness has been raised over respondent's mark. We also note that, despite the ban on importation of pork products from Italy at the time respondent's registration issued, petitioner could have filed an opposition proceeding before the registration issued, or brought a cancellation action within the first five years after the registration issued, in which case the trial phase of the proceeding would have been the operative date for establishing geographic deceptiveness. Petitioner chose not to bring an action during these periods, but waited until 1986, when the registration was 15 years old. To the extent that equities are permitted to be considered, they must favor respondent in these circumstances.
Decision: The petition for cancellation is dismissed.
L.E. Rooney
R.F. Cissel
E.J. Seeherman
Members, Trademark Trial and Appeal Board
FN1. Registration No. 875,721, which issued from an application filed April 1, 1968, and claimed first use and first use in commerce on October 1, 1955. Section 8 affidavit accepted; Section 15 affidavit received; renewed.
FN2. This case bears certain similarities to Bongrain International (American) Corp. v. Delice de France Inc., 1 USPQ2d 1775 (Fed.Cir.1987). In that case, the cancellation proceeding evolved from the citation of the registrations sought to be cancelled (Bongrain's registrations) as references against an application to register a mark filed by the petitioner-to-cancel (Delice), which undertook cancellation of the registrations as a way to overcome the PTO's ground of rejection. Previously, when Bongrain and Delice still had applications pending before the Trademark Examining Attorneys, the parties had entered into an agreement reflecting their conclusion that their marks could be used on their respective goods without causing confusion. Although Bongrain thereafter obtained its registrations, Delice was denied registration on the basis of Bongrain's registrations even though the agreement was made of record in Delice's application. Delice thereupon filed a petition for cancellation of Bongrain's registrations, although the parties continued to cooperate on the basis of their belief that there was no likelihood of confusion. Bongrain filed a motion for summary judgment on the ground that there was no likelihood of confusion. In reply, Delice did not object to the granting of the motion, but stated that it had brought the cancellation proceeding in order to deal with the objections by the Examining Attorney, which objections would be overcome either if Bongrain's registrations were cancelled or, in the alternative, if Delice's petition were denied on the ground that there was no likelihood of confusion between the parties' marks. The Court, in reversing the Board's decision finding likelihood of confusion, criticized the Board for thwarting the parties' attempts to resolve their dispute and deciding what neither party had asked it to decide, i.e. that a likelihood of confusion existed.
Mindful of the Court's criticism in that case, and being confronted with another situation in which the impetus for the cancellation proceeding is the Examining Attorney's decision to refuse registration despite the submission of a settlement agreement, we can only point out that the sufficiency of the agreement, and indeed the issue of likelihood of confusion between petitioner's and respondent's marks is not before us. The ground on which the instant proceeding has been brought is deceptiveness under Section 2(a), not likelihood of confusion under Section 2(d). We make no comment on what the result might be if the Examining Attorney's refusals to register under Section 2(d) were to come before us in the context of an ex parte appeal.
FN3. Trademark Rule 2.128(b) provides that briefs be submitted in double spaced form, and that, without prior leave of the Board, a main brief shall not exceed 55 pages in its entirety, including the table of contents, index of cases, description of the record, statement of the issues, recitation of facts, argument and summary. Petitioner's brief contains 50 pages of text and 4 pages of table of contents/index of cases, and is therefore technically within the page limitations set forth in the rule. However, we note that petitioner's brief contains 47 footnotes, and that many of these footnotes, which are single- rather than double-spaced, contain substantial discussion. Although the Board has not yet had the need to adopt the Federal Circuit's rule that footnotes, too, must be double-spaced, we caution that single-spaced footnotes are not to be used as a subterfuge to avoid the page limitations set forth in Trademark Rule 2.128.
FN4. Because petitioner's witnesses have referred to the prosciutto from Parma as "prosciutto di Parma" throughout their testimony, we will also use this term to refer to the product, despite petitioner's claim that PROSCIUTTO DI PARMA is a certification mark.
FN5. We note petitioner's evidence regarding its advertising and sales efforts in Europe, and its registrations and policing efforts for its certification marks abroad, but this is insufficient to prove that consumers in the United States would make a goods/place association between prosciutto and Parma, Italy. It is simply too speculative for us to conclude that U.S. consumers would have become aware of prosiutto di Parma as a result of these activities. Similarly, the fact that, because of their work and their travels, petitioner's expert witnesses--a food critic and a restaurant manager--were aware of prosciutto di Parma, does not prove recognition by the consuming public.
FN6. The Court of Appeals for the Federal Circuit and the Board have also held that fraud in the filing of a postregistration paper such as a renewal application and a Section 15 affidavit constitutes fraud in obtaining a registration within the meaning of Section 14(3), since by such documents the registrant is securing additional or continuing rights of registration by fraud. Torres v. Cantine Torresella S.r.1., 808 F.2d 46, 1 USPQ2d 1483 (Fed.Cir.1986); Crown Wallcovering Corp. v. The Wall Paper Mfrs. Ltd., 188 USPQ 141 (TTAB 1975).
FN7. Petitioner suggests that respondent's adoption and use of PARMA was not made in good faith because respondent's founder was from Parma. However, there is no evidence that the province of Parma had any geographic recognition or reputation in the United States at that time on which an intent to trade can be presumed. Petitioner also points to the fact that respondent's president attempted to become a distributor of prosciutto for a company located in Parma, Italy, one reason for this action being respondent's ownership of the PARMA mark in the United States. We decline to find any bad faith based on this evidence, since several "good faith" interpretations of these events are equally plausible. We would also add, on the subject of respondent's good faith, that respondent's labels, with the slogan "Made in the U.S.A." prominently displayed in close proximity to the mark, evidence an intent to indicate clearly the domestic geographic origin of its products.