Authored By Tim O’Keeffe, Esq. & Samantha Pendley
Galperti S.r.l. of Italy (“Galperti Italy”) manufactures flanges, ring-shaped fittings of metal and forgings. Galperti, Inc. of Texas (“Galperti Texas”) specializes in forging, machining and treatment of alloys, steel flanges and forging products. While these are two legally unrelated companies, they manufacture and sell similar products. An ongoing battle between Galperti Italy and Galperti Texas over the Galperti Italy owned trademark, GALPERTI, registered for Ironmongery in the form of metal hardware, namely, flanges, ring-shaped fittings of metal, and forgings, continues as the Suit is remanded to the Trademark Trial and Appeal Board for a third review.
In April 2008, Galperti Italy gained the Registration for the GALPERTI word mark, claiming that the Mark had been used as early as September 2006. While the Mark had initially been refused registration from the USPTO for being primarily merely a surname, the Mark ultimately registered after the Applicant argued that they had acquired distinctiveness through their continuous use of the Mark in commerce. In April 2013, Galperti Texas filed a Petition to Cancel the Registration arguing that its use of the GALPERTI word mark predated Galperti Italy’s use and that Galperti Italy obtained the Registration fraudulently by claiming substantially exclusive use from 2002 to 2007 and claiming false ownership.
The Trademark Trial and Appeal Board (“Board”) deemed Galperti Texas’ ownership ground forfeited and denied the other grounds on the merits. Galperti Texas subsequently appealed the Decision to the United States Court of Appeals for the Federal Circuit. The Federal Circuit affirmed the Board’s determination that Galperti Texas failed to demonstrate its prior use of the Mark. However, the Federal Circuit vacated the determination that Galperti Texas failed to prove the fraudulent character of Galperti Italy claiming substantial exclusive use in the preceding five years.
The Federal Circuit advised that the Board had made the following two legal errors in their Decision: (1) that Galperti Texas had to have trademark-protected rights in its use of the mark in order to count as “significant” rather than “insignificant” use and (2) that Galperti Texas had to demonstrate privity with other users of the mark during the 2002–2007 period at issue in order to rely on those uses to show falsity of Galperti-Italy’s claim of substantially exclusive use. After the Appeal was remanded back to the Board, the Board once again found that Galperti Texas had only demonstrated insignificant use of the Mark and did not show any fraud tied to Galperti Italy.
Once again, Galperti Texas appealed the Board’s Decision, which was followed by the Federal Circuit remanding and explaining that “we cannot be confident that the Board’s bottom-line finding of no significant non-Galperti-Italy use was unaffected by the two legal errors.” The Cancellation Proceeding has now returned under the authority of the Trademark Trial and Appeal Board for the third time and the dispute is now longstanding . Is the third time the Charm for Galperti Texas?