Foreign and domestic trademark owners can oppose United States trademark applications on the basis of likelihood-of-confusion even if they do not own a trademark registration in the United States. A trademark owner need only show prior use of its trademark in the United States. It is not necessary that the trademark owner use its trademark in a type of commerce lawfully regulated by United States Congress, such as interstate commerce. Mere use in the United States is sufficient.
In 2007, in First Niagara Ins. Brokers Inc. v. First Niagara Financial Group, Inc. (“First Niagara”), the Federal Circuit held that a trademark owner need only show prior use in the United States, and not necessarily use lawfully regulated by United States, in order to have standing to oppose a United States trademark application. In so doing, the Federal Circuit reversed and remanded the Trademark Trial and Appeal Board decision holding that prior use lawfully regulated by United States Congress is necessary to have standing to oppose. See First Niagara Ins. Brokers Inc. v. First Niagara Financial Group, Inc., 77 USPQ2d 1334 (TTAB 2005), rev’d, 476 F.3d 867 (Fed. Cir. 2007).
The facts in First Niagara are undisputed. Opposer First Niagara Insurance Brokers (“FN-Canada”) operated entirely out of Ontario, Canada and had no physical presence in the United States. FN-Canada is not licensed to operate as an insurance broker in any country other than Canada. FN-Canada did have business connections to the United States, including selling insurance policies to United States-based underwriting companies; selling insurance to United States citizens who own Canadian property via brokers located in the United States; providing insurance to Canadians to facilitate their travel to the United States, and providing insurance to the Niagara Falls Bridge Commission, a joint United States-Canada venture. FN-Canada did not own any registered United States trademarks, but used the marks “First Niagara” and “First Niagara Insurance Brokers” in advertising that spilled over to the United States.
The Trademark Trial and Appeal Board found that FN-Canada’s activities in the United States were de minimis and only incidental to its business in Canada and did not meet the use in commerce requirement it deemed necessary to have standing to oppose a United States trademark application. The Federal Circuit overturned the Trademark Trial and Appeal Board decision, holding that mere use in the United Statesas opposed to use in a type of commerce lawfully regulated by the United States Congressis sufficient to have standing to oppose, and that FN-Canada met that standard.