Fall 2005-06 Limiting trademark searches to Puerto Rico may not be enough

newsletter header


Number 61
Fall 2005

Limiting trademark searches to Puerto Rico may not be enough

The Puerto Rico Supreme Court affirmed that a prior local registrant of a trademark does not have priority rights in Puerto Rico over a prior user whose federal registration came after the local registration. Arribas v. American Home Products, 2005 TSPR 128.

American Home Products filed an "intent-to-use" trademark application for the S onata mark with the United States Patent and Trademark Office in February of 1997. In February of 1998 the company commenced using the mark in interstate commerce; and obtained its registration in Puerto Rico in June of that same year. In August of 1999, American Home began using the mark in Puerto Rico.

Arribas again

In the month of May of 1998, Arribas and Associates, Inc. registered the mark "Sonata Sleeping Aid Medicine" with the Puerto Rico State Department. This local trademark filing was also based on an intent-to-use application. The trademarks filed by American Home and Arribas were each for use with pharmaceutical products that treat insomnia.

Request of cancellation

Given the existence of the conflictive marks, American Home filed a request for cancellation of Arribas's mark with the State Department. American Home contended that it had used the mark prior to Arribas and that it had obtained its federal registration. The request for cancellation was granted by the State Department, and the Puerto Rico Court of Appeals affirmed the same, which prompted Arribas to appeal to the Supreme Court.

Arribas's claim

Arribas argued that under the Puerto Rico Trademark Act:

the right of ownership to a mark is acquired by way of the valid registration of the same with the State Department;

that the Trademark Act allows marks to be registered without prior use; and

that it obtained the local registration of the its mark prior to American Home obtaining its federal registration.

Puerto Rico law

While the Supreme Court acknowledged that the right to a mark in Puerto Rico may be attained though the registration of the same with the State Department, it also held that such right must succumb to the opportune claim by another party with priority rights based on the prior use of the mark. This is how the Puerto Rico Trademark Act combines "the right born from use with the right constituted by registration." Thus, a registrant that is first to register its mark will not wipe out a prior user's rights over a similar mark. Priority and ownership rights over a mark can only be attained through registration with the Puerto Rico State Department when there are no prior users of the mark.

Lanham Act

Under federal law, ownership and priority rights are based on prior use and not registration. Thus under the Lanham Act, unlike Puerto Rico, a certificate of registration may only be issued after evidence of use is filed with the U.S. Patent and Trademark Office. However, under the Lanham Act, an applicant is granted the benefit of a "constructive use" commencing on the date of filing of the trademark application. Accordingly, when the mark is finally registered, by fiction of law the date of first use of the mark is made retrospective to the date of application. This "constructive use" is deemed to have occurred throughout the United States.

The Supreme Court also discussed the doctrine of "constructive notice" whereby any person or entity that uses a mark after the same has been registered with the federal Trademark Office is deemed to have been given notice as to the registrant's priority rights.

Finally, the Supreme Court clarified that when there is any conflict between state legislation and the Lanham Act, the Lanham Act will preempt the local state legislation with respect to any such conflict.

Federal registration

Upon American Home's federal registration, it was afforded with the benefits of "constructive notice" and "constructive use," dating back to the date of its original application. For all practical purposes this meant that the mark was deemed to have been used in all of the United States and in Puerto Rico since February, 1997, and that all latter users had been deemed notified of such use.

Arribas, on the other hand, registered its mark locally in May, 1998. By this date, the mark was already deemed to have been used previously by American Home. In addition, Arribas had already been given "constructive notice" that the "Sonata" mark was no longer available. Under these circumstances, the mark should never have been registered with the Puerto Rico State Department in the first place. The Puerto Rico Trademark Act specifically states that a mark that is similar or identical to a previously registered, known, or used mark may not obtain registration.

Supreme Court's ruling

The Supreme Court affirmed the decision of the Court of Appeals, confirming the State Department's decision, but clarified that the State Department erred in ruling that the ownership of a mark could not be obtained through its valid registration. As mentioned previously, such ownership and priority rights may be obtained through registration, but only when there is no prior user of the mark.


© 2005 Goldman Antonetti