Febal Cucine, S.p.A.v.Mariner Ventures, Inc.

Trademark Trial and Appeal Board

Dec 18, 2007

No. 92042704 (T.T.A.B. Dec. 18, 2007)

Mailed:
18 December 2007
AD

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Febal Cucine, S.p.A.
v.
Mariner Ventures, Inc.
_____

Cancellation No. 92042704
_____

William J. Sapone of Coleman Sudol Sapone P.C. for Febal
Cucine, S.p.A.

Thomas E. Toner of Smith & Hopen, P.A. for Mariner Ventures,
Inc.
______

Before Drost, Kuhlke, and Mermelstein, Administrative
Trademark Judges.

Opinion by Drost, Administrative Trademark Judge:

On November 28, 2000, respondent, Mariner Ventures,
Inc., was issued Registration No. 2408536 for the mark FEBAL
U.S.A., in typed or standard character form, for household
furniture; kitchen furniture, namely, kitchen cabinetry in
Class 20. The registration is based on an application filed
November 29, 1999, and it contains a disclaimer of the term
“U.S.A.” Affidavits under Sections 8 and 15 have been
accepted or acknowledged.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Cancellation No. 92042704
2
On April 3, 2001, respondent was issued a second
registration (No. 2439999) for the mark shown below for the
same goods with the term “USA” disclaimed. The registration
is based on an application filed March 30, 1999. Affidavits
under Section 8 and 15 have also been accepted or
acknowledged.

On November 17, 2003, Febal Cucine, S.p.A. (petitioner)
filed a petition to cancel respondent’s registrations on the
ground that:
2. Petitioner is the owner of European Community
Trademark Registration No. 001132877 for FEBAL…

4. Petitioner, on or about January 1999, entered into
discussions with Mr. Ricky Wingate and Mr. Paolo Della
Casa concerning distribution of petitioner’s Italian
kitchen furniture and cabinets in the United States,
through a company to be known as “Febal USA LLC.”

5. A distribution agreement was prepared and was
executed…

6. Unbeknownst to petitioner, upon information and
belief, during discussions with petitioner, Mr. Della
Casa and Mr. Wingate arranged through a separate
company, Mariner Ventures, Inc., located at the same
address as the proposed “Febal USA LLC,” to apply for
the above-referenced trademark registrations, knowing
the petitioner to be the true owner of the mark
“FEBAL,” the application papers signed by “Sally N.
Sawh, Secretary,” who, upon information and belief, is
the wife of Mr. Della Casa.

Cancellation No. 92042704
3
7. In filing and prosecuting the applications leading
to the issued registrations, fraudulent
misrepresentations were made as to the owner of the
trademark FEBAL, for kitchen furniture and cabinets.

8. Among other things, to secure the registration, the
registrant submitted a magazine, featuring photographs
of Mr. Wingate and Mr. Della Casa, with a picture of a
kitchen containing petitioner’s kitchen products.

9. Upon information and belief, registrant fraudulently
claimed ownership in the mark FEBAL USA knowing the
mark FEBAL, was owned and used by petitioner, and
concealing that fact from the Trademark Office.

Petition to Cancel at 2-3.

Respondent has denied the salient allegations of the
petition to cancel.
The Record
The record consists of the following items:
1. The files of the involved registrations;
2. The trial testimony declaration submitted by
stipulation of petitioner’s managing director, Marco
Zanotti, with exhibits; and
3. The parties’ notices of reliance on answers to
interrogatories, admissions, and requests for documents and
a third-party registration (No. 1885795).
Background
Petitioner argues that respondent’s trademark
registrations (Nos. 2408536 and 2439999) “were procured by
fraud and should be cancelled.” Brief at 8. Specifically,
petitioner maintains that:
Cancellation No. 92042704
4
There was a distribution agreement that specified that
the distributor would not have any rights in the FEBAL
trademark. Ms. Sawh, a member of Febal USA, the
designated distributor, thus had a duty not to file or
register the mark FEBAL in the name of Febal USA, or
any other entity. To do so, without disclosing the
distributor relationship was fraud.

But that is not the only fraudulent act. Ms. Sawh
claimed ownership of the mark FEBAL USA, which she knew
to be false, and failed to identify the significance of
the term FEBAL in the relevant trade. She also allowed
photographs of the Febal Cucine kitchens to be
presented to the [e]xamining attorney representing they
showed “applicant[’]s products,” when they were the
products of Febal Cucine.

Even the initial drawing submitted was of a copy of the
Febal Cucine style FEBAL mark, with the letters U.S.A.
added by hand. A clearer case of fraud would be
difficult to conceive.

Brief at 15-16.

In response, respondent argues:

Even assuming all facts favorable to Petitioner,
including arguendo that the exclusive distribution
agreement was effective at the time the declaration was
signed, Section 7.1 of the exclusive distribution
agreement clearly states:

The distribution task under this agreement is
given to [Registrant] for the territory of the US;
for said territory [Registrant] shall have
exclusive rights (Emphasis added)

The exclusive right to use a name in the United States
provides a reasonable belief that, to the best of ones
knowledge, that no other person, firm, corporation or
association would have the right to use the subject
mark in commerce.

Brief at 13 (punctuation in original).

Furthermore, “Registrant was in fact the owner of the
mark based on its applications filed on a bona fide intent
to use the marks in commerce. Ownership of trademark rights
Cancellation No. 92042704
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in the United States depends solely upon priority of use in
the United States, including constructive use under 15
U.S.C. § 1057(c), and not on priority of use anywhere in the
world.” Brief at 15.
Facts
1. Petitioner has been manufacturing and selling
kitchen cabinets, kitchen furniture, and kitchen hardware
for more than forty years. Zanotti declaration, ¶¶ 2-3 and
Ex. B.
2. Petitioner is the owner of numerous foreign
registrations and applications for the mark FEBAL. Zanotti
declaration, ¶ 3 and Ex. C. The copies of many of these
registrations and applications are often in a foreign
language without an English translation. Zanotti Ex. C.
3. In 1998, Paolo Della Casa approached petitioner and
suggested that he become petitioner’s exclusive distributor.
Zanotti declaration, ¶ 8.
4. Petitioner had no United States distributor at that
time. Zanotti declaration, ¶ 7.
5. “A verbal agreement was reached in 1998 between
Febal Cucine, S.p.a. and Mr. Della Casa, and Febal Cucine
S.p.a. started drafting a distribution contract and a
company to be set up by Mr. Della Casa, Febal USA, LLC.”
Zanotti declaration, ¶ 9.
Cancellation No. 92042704
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6. Febal U.S.A., LLC was incorporated on March 18,
1999. Zanotti Ex. G.
7. On March 30, 1999, a day before Paola Della Casa
signed the exclusive distributor agreement between Febal
U.S.A., LLC and petitioner, Mariner Ventures, Inc.
(respondent) applied to register the mark FEBAL USA and
design with the U.S. Patent and Trademark Office. The
application (No. 75672290) is for the mark shown below for
household furniture; kitchen furniture, namely, kitchen
cabinetry.

8. The next day, March 31, 1999, Paolo Della Casa of
Febal U.S.A., LLC signed an agreement to exclusively
distribute petitioner’s goods in the United States. Zanotti
declaration, ¶ 10 and Ex. E (in Italian).
9. Mariner Ventures’ intent-to-use application
ultimately registered on April 3, 2001. The dates of first
use are identified as October 29, 1999.
10. Apparently on April 9, 1999, petitioner filed what
would become European Community Registration No. 001132877
(Zanotti Ex. C), for the mark FEBAL for furniture. The
registration issued on February 19, 2001.
Cancellation No. 92042704
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11. According to petitioner’s list of “Trademarks
owned by Febal S.p.A. All Over the World” (Zanotti Ex. C),
this is the earliest filing date among its trademark
filings.
12. On April 26, 1999, Mr. Cavalier Ermanno Ferri
signed the English language version of the distribution
agreement on behalf of petitioner along with Mr. Della Casa
and Mr. Wingate for Febal U.S.A., LLC. Zanotti Ex. F.
13. The parties to the agreement are identified as
petitioner and Febal U.S.A., LLC, represented by Paolo Della
Casa and Ricky Wingate. Zanotti Ex. F.
14. Clause 11.2 of the agreement provides:
The DISTRIBUTOR shall not utilize in any way, including
the registration or deposit, and shall not allow the
utilization in any way, including the registration or
deposit, both the business name or sign of FEBAL, and
any distinguishing name, patent, trademark, logo, mark,
model or drawing, whether or not registered and/or
deposited, or any other industrial or intellectual
property right invented or know-how relating to the
PRODUCTS or procedures owned by, or invented or
developed by or in the name of FEBAL, without the
latter’s previous written consent.

Zanotti Ex. F.
15. On September 1, 1999, in the 75672290 application,
Sally N. Sawh filed a “Combined Revocation and Power of
Attorney” appointing Anton J. Hopen, Esq. and Ronald E.
Smith, Esq. as attorneys for respondent. Ms. Sawh signed
the power of attorney as “Secretary Febal U.S.A.” not
Mariner Ventures, Inc. Zanotti Ex. I.
Cancellation No. 92042704
8
16. Ms. Sawh is “the wife and lawyer of Mr. Della
Casa.” Zanotti declaration, ¶ 10.
17. On November 19, 1999, in Serial No. 75672290,
respondent/applicant responded to an Office action by
submitting “a photo story of Applicant’s products in the
magazine Casa & Estillo International.” Zanotti Ex. L.
18. The article does not mention Marine Ventures, but
it does mention “Febal-USA.” Zanotti Ex. K.
19. On November 29, 1999, respondent filed another U.S.
application (No. 75859414) for the mark FEBAL U.S.A., in
typed or standard character form.
20. The application identified the dates of first use
as October 29, 1999, and the application issued as
Registration No. 2408536 on November 28, 2000.
21. On December 23, 1999, Ms. Sawh sent a letter to
petitioner alleging that: “You have been in breach of your
contract with the clients since June 1999.” Zanotti Ex. O.
22. On December 24, 1999, petitioner filed Canadian
Application No. 1040824 for the mark FEBAL. It is not clear
if the application issued as a Canadian registration.
Zanotti Ex. C.
23. Febal U.S.A., LLC, Mariner Ventures Inc., and the
Law Offices of Sally N. Sawh, P.A., all identify their
Cancellation No. 92042704
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addresses as “1054 Kane Concourse, Bay Harbor1, Florida.”
Zanotti Exhibits F at 1, N, and O.
Standing
In Cunningham v. Laser Golf Corp., 222 F.3d 943, 55
USPQ2d 1842, 1844 (Fed. Cir. 2000), the Federal Circuit
explained that: “The Lanham Act allows for cancellation of
a Principal Register registration by anyone ‘who believes
that he is or will be damaged ... by the registration.’ 15
USCA § 1064 (West 1996 & Supp. 2000); see also Golden Gate
Salami Co. v. Gulf States Paper Corp., 51 CCPA 1391, 332
F.2d 184, 188, 141 USPQ 661, 664 (CCPA 1964) (quoting and
explaining the statute). The party seeking cancellation
must prove two elements: (1) that it has standing; and (2)
that there are valid grounds for canceling the
registration.” Therefore, the first issue we must address
is whether petitioner has standing.
No absolute test can be laid down for what must be
proved to establish standing as a petitioner in a
cancellation proceeding or as an opposer in an
opposition. The starting point is the statute.
Congress has defined the class in section 14 as “any
person who believes he is or will be damaged by the
registration.” (Emphasis added.) In construing
comparable language of section 13, this court stated in
Federated Foods, Inc. v. Ft. Howard Paper Co., 544 F.2d
1098, 1101, 192 USPQ 24, 27 (CCPA 1976):

A party has standing to oppose within the meaning
of § 13 if that party can demonstrate a real
interest in the proceeding. Universal Oil

1 Occasionally, the addresses add the term “Island(s)” and/or
“Miami.”
Cancellation No. 92042704
10
Products Co. v. Rexall Drug and Chemical Co., 59
CCPA 1120, 463 F.2d 1122, 174 USPQ 458 (1972).

The same general statement is applicable to
cancellation proceedings. The purpose in requiring
standing is to prevent litigation where there is no
real controversy between the parties, where a
plaintiff, petitioner or opposer, is no more than an
intermeddler. Congress, however, has specified a broad
class who must be deemed proper litigants. Thus, this
court has found standing based on widely diverse
interests:

1. importation of petitioner's products deterred
by a registration, Plastilite Corp. v. Kassnar
Imports, 508 F.2d 824, 184 USPQ 348 (CCPA 1975).
2. use of copyrighted appearance of doll,
Knickerbocker Toy Co. v. Faultless Starch Co., 467
F.2d 501, 175 USPQ 417 (CCPA 1972).
3. pecuniary interest of trade association,
Tanners’ Council of America, Inc. v. Gary
Industries, Inc., 58 CCPA 1201, 440 F.2d 1404, 169
USPQ 608 (1971).
4. prior registration but not priority in use,
King Candy Co. v. Eunice King's Kitchen, Inc., 496
F.2d 1400, 182 USPQ 108 (CCPA 1974).
5. protection of subsidiary's mark, Universal Oil
Products Co. v. Rexall Drug & Chemical Co., supra.
6. descriptive use of term in registered mark,
Golomb v. Wadsworth, 592 F.2d 1184, 201 USPQ 200
(CCPA); cert. denied, 444 U.S. 833 (1979).
7. advertising emphasis of American origin, Singer
Manufacturing Co. v. Birginal-Bigsby Corp., 50
CCPA 1380, 319 F.2d 273, 138 USPQ 63 (1963).

Lipton Industries, Inc. v. Ralston Purina Company, 670 F.2d
1024 213 USPQ 185, 189 (CCPA 1982). See also Ritchie v.
Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999).
Petitioner has not alleged any traditional basis for
standing. It is not the owner of a registered trademark nor
does it allege that it has been using the mark in United
States commerce. Petitioner instead alleges that it is the
owner of a European Community Trademark registration and
Cancellation No. 92042704
11
that it has filed an application to register the mark FEBAL
COLLEZIONE BAGNO in the USPTO. Petition to Cancel, ¶¶ 2 and
3. Respondent has admitted these allegations. Answer at 1.
Neither of these facts demonstrates petitioner’s standing.
The simple ownership of a U.S. trademark application,
without any indication that the application has been or will
be refused registration in view of a registration or a
pending application, does not provide a basis for standing.
Also, the ownership of a foreign trademark registration does
not give a party a license to petition to cancel a U.S.
trademark registration or oppose any trademark application.
However, if a petitioner’s application has been refused
registration because of respondent’s registration, the
petitioner would have standing to petition to cancel.
Lipton Industries, 213 USPQ at 189 (“Appellee asserts an
interest arising from its attempt to obtain a registration
for the mark FANCY FIXINS for cat food which is blocked by
appellant's registration. We regard the desire for a
registration with its attendant statutory advantages as a
legitimate commercial interest”). In this case, petitioner
has not alleged, much less shown, that its application has
been blocked by respondent’s registrations. Id. at 188 (“A
petitioner's allegations alone do not establish standing”).
In addition, petitioner’s use of its mark in Italy and
other countries would not by itself establish standing for
Cancellation No. 92042704
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canceling respondent’s United States registration. Person's
Co. Ltd. v. Christman, 900 F.2d 1565, 14 USPQ2d 1477, 1480
n. 18 (Fed. Cir. 1990) (“Although Person's did adopt the
mark in Japan prior to Christman's use in United States
commerce, the use in Japan cannot be relied upon to acquire
U.S. trademark rights”). Petitioner does not allege
priority under Section 44 of the Trademark Act (15 U.S.C.
§ 1126). Person’s Co., 14 USPQ2d at 1479 n. 16 (“The
statutory scheme set forth in §44 is in place to lower
barriers to entry and assist foreign applicants in
establishing business goodwill in the United States.
Person's Co. does not assert rights under §44, which if
properly applied, might have been used to secure priority
over Christman”). See Petitioner’s Responses to
Registrant’s First Request for Admissions at 3, ¶ 11
(Petitioner’s application, No. 78254408, does not claim
priority under Section 44).2
Thus, at this point, we would ordinarily find that
petitioner does not have standing and dismiss the petition
to cancel. However, Person’s suggests that a foreign entity
without use in the United States may nonetheless have
potential to be damaged by the registration of another

2 While not argued, we also point out that it “is well settled
that the Trademark Trial and Appeal Board cannot adjudicate
unfair competition issues in a cancellation or opposition
proceeding.” Person’s Co., 14 USPQ2d at 1481.

Cancellation No. 92042704
13
party’s mark and thus have standing. The Federal Circuit
sets out two examples.
Knowledge of a foreign use does not preclude good faith
adoption and use in the United States. While there is
some case law supporting a finding of bad faith where
(1) the foreign mark is famous here or (2) the use is a
nominal one made solely to block the prior foreign
user's planned expansion into the United States…

14 USPQ2d at 1480-81.

Petitioner has not submitted evidence that would permit
us to conclude that its mark is famous in the United States.
See, e.g., The All England Lawn Tennis Club (Wimbledon)
Limited v. Creations Aromatiques, Inc., 220 USPQ 1069 (TTAB
1983) (“In our view, opposer has shown that it owns the
rights in the term ‘WIMBLEDON’ for the conducting of the
tennis championships held annually in England since opposer
licenses the club to present these annual championships.
Opposer has also shown that these championships have been
widely reported in media circulating in the United States”).
However, petitioner has submitted evidence that
supports a conclusion that respondent’s use was made solely
to block petitioner’s planned expansion into the United
States, which Mr. Della Casa is asserted to have promoted.3
In this case, petitioner has submitted evidence showing
that it has been in business for over forty years
manufacturing and selling kitchen cabinets, furniture, and
Cancellation No. 92042704
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hardware. Zanotti dec. at 1. It has registered its mark in
numerous countries. Zanotti dec. at 2 and Ex. C.
Petitioner’s witness states that petitioner was contacted by
Paolo Della Casa requesting that he become petitioner’s
exclusive distributor. Zanotti dec. at 2. “On March 18,
1999, Mr. Della Casa founded FEBAL USA, Inc., the company on
whose behalf he executed the Agreement.” Zanotti dec. at 3.
Mr. Zanotti (declaration, ¶¶ 16 - 18, paragraph numbers and
citation to exhibits omitted) also declared that:
Unbeknownst to Febal Cucine, Mr. Della Casa had
arranged through his wife and attorney, Sally Sawh, to
set up a company, Mariner Ventures, Inc. at some point
during the discussions with Febal Cucine, and using
that entity, had already filed a U.S. trademark
application seeking to register the mark FEBAL USA,
application no. 75/672290, originally filed November
27, 1998, but having an effective filing date of March
30, 1998.

Mariner Ventures has the same address as the Law
offices of Sally Sawh, and of Febal USA.

Ms. Sally Sawh signed several papers in the
application, including a revocation and change of power
of attorney form on September 1, 1999, as Secretary of
Febal USA, though Febal USA was not the applicant.

We add that even if the facts of this case did not
exactly fit the Person’s example, they nonetheless convince
us that petitioner has standing. The evidence supports
petitioner’s standing inasmuch as petitioner has shown that
it has marketed its goods in numerous countries, it was

3 We note that to have standing, petitioner does not have to
establish that it will prevail on its substantive claim, it must
simply establish that it will be damaged.
Cancellation No. 92042704
15
interested in expanding into the United States, and that it
entered into an agreement with Febal U.S.A., LLC, while at
the same time, a related entity filed a trademark
application for the mark FEBAL USA and design. Petitioner
is likely to suffer damage to the extent that its expansion
into the United States for its FEBAL goods is likely to
suffer as a result of respondent’s two FEBAL USA
registrations. Even a foreign manufacturer who was assumed
not to own the mark in the United States was presumed to
have standing to oppose the registration of the mark to an
unauthorized party. See, e.g., Compania Insular Tabacalera,
S. A. v. Camacho Cigars, Inc., 167 USPQ 299, 302 n.1 (TTAB
1970) (“But, even assuming arguendo that there could
possibly be any question as to whether opposer was the owner
of the mark in this country, as the manufacturer of the
goods and the exporter of ‘DON MARCOS’ cigars to the United
States over the years, opposer acquired rights sufficient to
possess standing to oppose the registration of the same or a
similar mark for like goods. Section 13 gives any person
who believes he will be damaged the right to oppose, and
damage may well result to such a manufacturer through loss
of sales to him in this country as well as to the owner of
the mark”). This evidence is enough to establish that
petitioner is not a mere interloper and it has standing to
petition to cancel respondent’s mark.
Cancellation No. 92042704
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Objection to Brief
Respondent has objected to petitioner’s brief.
Petitioner’s trial brief raises allegations of fraud
outside the pleadings. Petitioner’s claim of fraud is
limited to the submission of the magazine article
submitted by Registrant during prosecution because it
is the only act alleged with sufficient particularity
in the Petition to Cancel.

Brief at 8.

Respondent objects to petitioner’s reliance on the
declarations from respondent’s registrations.4 We overrule
respondent’s objection. Petitioner’s allegation of fraud
clearly explains that respondent falsely claimed to be the
owner of the FEBAL mark when it filed its applications.
Petitioner asserts that it is the owner of the mark.
Respondent was on notice that its ownership of the FEBAL
marks was being challenged by petitioner. The reference to
the publication that respondent submitted was simply
petitioner’s example of one way that respondent
misrepresented its ownership status of the FEBAL USA marks
to the Office. In addition, petitioner also alleged that
Mr. Della Casa and Mr. Wingate entered into a
distributorship agreement to distribute petitioner’s goods
through Febal USA LLC at the same time that they “arranged
through a separate company, Mariner Ventures, Inc.… to apply

4 We add that under 37 CFR § 2.122(b)(1) the “file of … each
registration against which a petition or counterclaim for
cancellation is filed forms part of the record of the proceeding
Cancellation No. 92042704
17
for the above-referenced trademark registrations, knowing
the petitioner to be the true owner of the mark ‘FEBAL.’”
Petition to Cancel at 2. Petitioner’s allegations of fraud
in its petition are much broader than respondent argues and,
therefore, we deny respondent’s objections to petitioner’s
brief.
Fraud
We now address the ultimate issue in this case, which
is whether respondent committed fraud when it applied to
register its two FEBAL USA marks. The board has recently
set out the requirements for establishing that fraud has
occurred in a trademark application.
Fraud in obtaining a trademark registration occurs
“when an applicant knowingly makes false, material
representations of fact in connection with his
application.” Torres v. Cantine Torresella S.r.l, 808
F.2d 46, 1 USPQ2d 1483, 1484 (Fed. Cir. 1986); Mister
Leonard Inc. v. Jacques Leonard Couture Inc., 23 USPQ2d
1064, 1065 (TTAB 1992) (“Thus, according to Torres, to
constitute fraud on the PTO, the statement must be (1)
false, (2) a material representation and (3) made
knowingly.”). See also Medinol Ltd. v. Neuro Vasx
Inc., 67 USPQ2d 1205 (TTAB 2003) (“A Trademark
applicant commits fraud in procuring a registration
when it makes material representations of fact in its
declaration which it knows or should know to be
false.”).

Fraud must be proven with clear and convincing
evidence, and any doubt must be resolved against a
finding of fraud. See Giant Food, Inc. v. Standard
Terry Mills, Inc., 229 USPQ 955, 962 (TTAB 1986) and
cases cited therein. Furthermore, fraud will not lie
if it can be proven that the statement, though false,

without any action by the parties and reference may be made to
the file for any relevant and competent purpose.”
Cancellation No. 92042704
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was made with a reasonable and honest belief that it
was true. See Woodstock's Enterprises Inc.
(California) v. Woodstock's Enterprises Inc. (Oregon),
43 USPQ2d 1440 (TTAB 1997).

Standard Knitting Ltd. v. Toyota Jidosha Kabushiki Kaisha,
77 USPQ2d 1917, 1926 (TTAB 2006).
Petitioner argues that respondent’s registrations
should be cancelled because:
It is also well established that if the applicant
merely distributes or imports goods for the owner of
the mark, registration must be refused under § 1 of the
Trademark Act, except where 1) there is a parent and
wholly owned subsidiary relationship; or 2) if the
applicant submits (a) written consent from the owner of
the mark to registration in the applicant’s name, or
(b) written agreement or acknowledgment between the
parties that the importer or distributor is the owner
of the mark in the United States, or (c) an assignment
to the applicant of the owner’s rights in the mark as
to the United States.

None of the above applies in this case. There was a
distribution agreement that specified that the
distributor would not have any rights in the FEBAL
trademark. Ms. Sawh, as a member of Febal USA, the
designated distributor, thus had a duty not to file or
register the mark FEBAL in the name of Febal USA, or
any other entity. To do so, without disclosing the
distributor relationship was fraud.

Brief at 16 (citation omitted).
Petitioner also alleges that the photographs of Febal
Cucine kitchens were “presented to the [e]xamining attorney
representing they showed ‘applicant[’]s products,’ when they
were the products of Febal Cucine.” Brief at 15.
Respondent alleges that the exclusive distribution
agreement was signed “after Registrant had already filed its
first application. The agreement was not executed by both
Cancellation No. 92042704
19
parties until April 26, 1999, almost a month later.
Disagreement between the parties occurred shortly after the
agreement was executed. By June of 1999, Petitioner had
failed to perform under the terms of the agreement and was
in material breach.” Brief at 6.
This case is somewhat unusual inasmuch as there are two
companies whose actions we must consider. We will begin by
looking at the actions of Febal U.S.A., LLC. Then, we will
look at the actions of the actual applicant, Mariner
Ventures, Inc.
In this case, petitioner is the foreign manufacturer of
various items of furniture sold under the FEBAL mark. Mr.
Della Casa and Febal U.S.A., LLC sought to distribute these
goods in the United States. Febal U.S.A., LLC eventually
entered into an exclusive agreement with petitioner to that
effect. The case law is clear at this point: “It is
settled law that between a foreign manufacturer and its
exclusive United States distributor, the foreign
manufacturer is presumed to be the owner of the mark unless
an agreement between them provides otherwise.” Global
Maschinen GmbH v. Global Banking Systems, Inc., 227 USPQ
862, 866 (TTAB 1985). See also Sengoku Works Ltd. v. RMC
International Ltd., 96 F.3d 1217, 40 USPQ2d 1149, 1151-52
(9th Cir. 1996) (“But in the absence of an agreement between
the parties, the manufacturer is presumed to own the
Cancellation No. 92042704
20
trademark … Although some courts have suggested that the
presumption may be different in the case of foreign
manufacturers, frequently the identical standard has in fact
been applied, and we see no reason for doing otherwise”);
Hank Thorp, Inc. v. Minilite, Inc., 474 F. Supp 228, 205
USPQ 598, 605-606 (D. Del. 1979), quoting McCarthy,
Trademarks and Unfair Competition, § 16.15 (1973) (“An
exclusive U.S. distributor does not acquire ownership of a
mark of a foreign manufacturer any more than a wholesaler
can acquire ownership of a mark of an American manufacturer
merely through the sale and distribution of goods bearing
the manufacturer's trademark”); and Compania Insular
Tabacalera, 167 USPQ at 302 n.1 (“And, where as in this
case, the contract, oral or written, setting up the
exclusive distributorship in the United States, does not
contain an acknowledgement, whether by assignment or
otherwise by the manufacturer of the goods abroad, that the
trademark it affixes to the goods is the property right of
the exclusive distributor in the United States, the foreign
manufacturer and exporter will be deemed to be the owner of
the mark in this country”).
In the exclusive distribution agreement between
petitioner and Febal U.S.A., LLC, Clause 11.2 of that
agreement specifically prohibited Febal U.S.A., LLC from
“the registration … of FEBAL … without the latter’s previous
Cancellation No. 92042704
21
written consent.” Contrary to respondent’s argument, Febal
U.S.A., LLC did not have any authority under the
distribution agreement to register a mark containing the
term FEBAL. The exclusive license agreement makes it clear
that Febal U.S.A., LLC had no right to register the FEBAL
mark without petitioner’s consent, which it did not have.
Indeed, the clause provided that Febal USA “not allow the
utilization in any way, including the registration … of
FEBAL.” This provision would prohibit Febal USA from even
assisting Mariner Ventures in any way in obtaining a
registration of FEBAL. Also, Clause 11.4, directs that upon
“termination of this Agreement, the DISTRIBUTOR shall
immediately cease to use in any way said … logo or marks.”
Therefore, respondent’s alternative argument that the
exclusive right to distribute goods bearing a mark provides
a reasonable belief to claim ownership of the mark based on
this right to use, is contradicted by the very document on
which respondent bases its argument. See Audioson Vertriebs
- GmbH v. Kirksaeter Audiosonics, Inc., 196 USPQ 453, 457
(TTAB 1977):
[Similar] provisions in the agreements between
petitioner and respondent's assignor Kirksaeter in
America, Inc., remove any doubt as to the clear
intention of the parties pertaining to the trademark
rights in the term “KIRKSAETER.” The complete silence
as to the transfer or assignment of any such rights,
and the above-quoted provisions pertaining to the
manner of control and the methods of promoting the
mark, clearly evidence the intent of the respective
parties that all trademark rights in the mark
Cancellation No. 92042704
22
“KIRKSAETER” were to remain as the property right of
petitioner.

See also Major-Prodotti Dentari-Societa In Nome Collettivo
Di Renaldo Giovanni & Figli v. Shimer, 161 USPQ 437, 438
(TTAB 1968) (“In view of the express provisions of the
contract governing the relationships between petitioner and
respondent, it is clear that when the agreement expired, any
rights which respondent may have had in the mark during the
life of the agency immediately reverted to petitioner”).
At this point, we conclude that Febal U.S.A., LLC,
could not have filed and truthfully asserted that it was the
owner of the mark FEBAL USA or that it could obtain a
trademark registration for that mark. To have done so would
have been a fraud on the Office, because there was no
reasonable basis to believe that it owned the mark.
However, Febal U.S.A., LLC did not file the application
for the FEBAL USA marks. Mariner Ventures, Inc. is the
identified applicant/registrant in both applications.
Federal Circuit case law has recognized that there is no
absolute bar to an entity with use in the United States
registering a trademark despite earlier use of the same mark
by a foreign entity outside the United States even if the
U.S. entity was aware of the foreign use. Person’s, 14
USPQ2d at 1480. Thus, under Persons, even if Mariner
Ventures had seen petitioner’s foreign use of the FEBAL
mark, it may nonetheless have been able to register the mark
Cancellation No. 92042704
23
unless the foreign mark was well-known in the United States
or it was used to block the planned expansion of the foreign
owner into the United States. However, unlike Person’s,
respondent in this case is not simply an entity that adopted
a mark it saw in a foreign country. Petitioner alleges that
Mr. Della Casa and Mr. Wingate, who signed the exclusive
distribution agreement with petitioner, arranged through
respondent to apply for the marks at issue here.
The evidence supports petitioner’s argument. First,
both Febal U.S.A., LLC and respondent have the identical
mailing address. Second, Ms. Sawh attended the meeting on
March 31, 1999, in which Mr. Della Casa signed the
distribution agreement with petitioner. The distribution
agreement acknowledged petitioner’s rights in the mark.
Subsequently, Ms. Sawh signed respondent’s FEBAL USA and
design application’s amendment to allege use and the FEBAL
U.S.A. application in which she asserted that respondent was
the owner of the mark. Zanotti Ex. J (“She believes
applicant to be the owner of the mark sought to be
registered”) and N (“she is properly authorized to execute
this application on behalf of the owner of the mark sought
to be registered and that he/she believes that applicant to
be the owner of the trademark/service mark”).5 Also, Ms.

5 The declaration is set up to apply to use or intent-to-use
situations. Respondent points to the intent-to-use clause, which
does not refer to the “owner” of the mark, and argues that the
Cancellation No. 92042704
24
Sawh is listed as the Registered Agent of Febal U.S.A., LLC.
Zanotti Ex. G. In addition, in prosecuting respondent’s
FEBAL USA and design application, Ms. Sawh signed at least
one paper as Secretary of “Febal U.S.A.” Zanotti Ex. I.
Finally, respondent submitted a “photo story on
Applicant’s products in Casa & Estillo” magazine. Zanotti
Ex. L at 1-2. The article actually refers to “Febal USA,”
not Mariner Ventures, Inc. (Zanotti Ex. K (English
translation)):
Two partners, Rick Wingate and Paolo Della Casa – each
with more than 20 year[s] … created the firm Febal-
USA.

Pioneer of design and technology, Febal-USA employs 3-D
Cad-Cam…

But, fortunately, I also comprises [sic] the business
ethics in U.S.A., that requires service and trust. I
can offer, after, the best of two cultures, that allow
a benefit of FEBAL USA.

In the Autumn of 2000, FEBAL–USA will open a salon…

The free contact number of Febal-USA is …

The evidence of record convinces us that Mariner
Ventures, Inc. worked in tandem with Febal U.S.A., LLC to

declarant only “believed that she [sic] was entitled to use the
mark in commerce and that to her knowledge no other entity had
the right to do so.” Brief at 13. Respondent is not correct.
The application was based on applicant’s use of the mark in
commerce under 15 U.S.C. § 1051(a) and not its intent to use
under § 1051(b). In an application pursuant to § 1(a), a
declaration of intent to use is insufficient because the mark
must have been in use prior to the filing date of the
application. Therefore, the examining attorney was relying on
respondent’s declaration of ownership when the mark was approved
for publication.
Cancellation No. 92042704
25
register trademarks that Febal U.S.A., LLC could not
register itself because it was a distributor, which did not
have any right to register the mark. Petitioner “was not
required to pry an admission out of [respondent’s]
representatives on the stand in order to meet its burden of
proof.” United Phosphorus Ltd. v. Midland Fumigant Inc.,
205 F.3d 1219, 53 USPQ2d 1929, 1933 (10th Cir. 2000). There
is an overlap in the personnel of both entities that would
have been aware of this limitation on Febal U.S.A., LLC’s
rights. Mastic Inc. v. Mastic Corporation, 230 USPQ 699,
702 (TTAB 1986):
Applicant, at the time of its first use, was still a
part of opposer's organization and privy to opposer's
plans for ACCORD. Mr. Gruber has testified that the
thrust of opposer's promotional program was to be [in]
the United States and other English speaking countries.
Applicant has questioned why it took opposer from the
time of the stock sale in late 1982 until 1984 to
actually get into the U.S. market but has not otherwise
contradicted Mr. Gruber's testimony. It seems to us,
therefore, that applicant must be charged with
knowledge of opposer's intentions with respect to the
U.S. market.

Under Person’s, if respondent knew of petitioner’s mark
but it believed that petitioner did not have rights in the
United States, it could have commenced its own use of the
mark. On the other hand, respondent could have itself
sought to become an exclusive distributor of petitioner’s
products. However, a party cannot both negotiate an
exclusive distributorship agreement with petitioner and work
with another entity to register that same mark that it was
Cancellation No. 92042704
26
prohibited from registering in its own name. Under these
circumstances, respondent cannot escape the case law that
clearly holds that, without evidence to the contrary, the
foreign manufacturer retains ownership of the mark instead
of the exclusive distributor.
Therefore, when statements were made in application
Nos. 75672290 and 75859414 that Mariner Ventures, Inc. was
the owner of the marks, they were made knowingly. They were
also false and material to the application inasmuch as the
Office would not have published the mark for opposition or
registered it if the applicant was not the owner of the mark
in the United States. Thus, respondent has committed fraud
in procuring these registrations and respondent’s
registrations must be cancelled.

Decision: The petition to cancel Registration Nos.
2408536 and 2439999 is granted.