In this opposition to registration of the mark TORTRIX for "corn-based snack foods," the Board ruled that a claim for misrepresentation of source under Section 14(3) of the Lanham Act is available not just to a cancellation petitioner, but also to an opposer. However, it dismissed Opposer PepsiCo's Section 14(3) claim due to the insufficiency of its allegations. The Board also dismissed PepsiCo's inadequately pleaded claims of fraud and lack of bona fide intent, but it allowed PepsiCo thirty days to file an amended notice of opposition.
Section 14(3) Misrepresentation of Source: The Board began with the observation that Section 14(3) does not expressly provide that misrepresentation of source is an available claim in an opposition. Section 14(3) says the claim may be brought "if the registered mark is being used" to misrepresent source. However, the Board saw "nothing in the nature of a misrepresentation of source claim that would limit it to registered marks."
Recognizing the requirement of "use" in Section 14(3), the Board held that "misrepresentation of source is an available ground for opposition: (1) against a use-based application (either filed as use or amended to allege use) under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a); or (2) a non-use based application, provided that the opposer alleges sufficient facts to support use of the applied-for mark in commerce."
PepsiCo did not plead lost sales but did claim injury to its reputation in
The Board found that PepsiCo had failed to plead "a plausible entitlement to relief." PepsiCo's allegations that Arriera "intends to make, or is making, blatant misuse" of the TORTIX mark were mere speculation.
And so, the Board concluded that PepsiCo had failed to adequately plead its entitlement to a cause of action under Section 14(3).
Moreover, PepsiCo failed to plead a proper cause of action under section 14(3) because it did not allege "unequivocal facts" to support its claim that Arriera is using its mark in commerce or has engaged in "specific acts or conduct" that amounts to deliberately passing off its goods as those of PepsiCo. Nor did PepsiCo allege that its mark TORTRIX has a reputation among relevant
Lack of Bona Fide Intent: PepsiCo also alleged that any use of the TORTRIX mark in
PepsiCo did not allege that there had been a prior determination regarding legality of the intended use. As to per se illegality, the Board pointed out that, in a proceeding under Section 14(3), the Board does not decide where use of a mark is "lawful." And as to Section 43(a), the Board has no jurisdiction over such a claim.
And so, the Board found that PepsiCo failed to adequately plead a lack-of-bona-fide-intent claim.
Fraud: PepsiCo alleged that Arriero, in its application, made three false statements with the intent to deceive the USPTO: that Arriero is "entitled to use the mark;" that it had a bona fide intention to use the mark in commerce; and that no other person had a right to use a confusingly similar mark. PepsiCo further alleged that Arriero "knew or should have known" that these statement were false. Not good enough, said the Board.
PepsiCo did not allege any facts to support the claim that Arriero was not entitled to use the mark in
And so, the Board dismissed the fraud claim.
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