Fed. Cir. Vacates and Remands Piping Trademark Dispute

The US Court of Appeals for the Federal Circuit on November 13, 2019, reversed a Trademark Trial and Appeal Board (TTAB) decision that dismissed Texas-based Galperti Inc.’s attempt to cancel Italy-based Galperti Srl’s mark. Galperti Inc. v. Galperti Srl, Fed. Cir., No. 2019-1150, 11/13/19.

Though the companies are unrelated, both manufacture and sell metal flanges and related piping products. The Italian company secured an Italian trademark in 2006 and used that to apply for a US registration in 2007. In that application, Galperti Srl affirmed that it had “substantially exclusive” use of the mark, which the Texas company claimed was fraud. The TTAB held that just because the Italian company knew it had a competitor didn’t mean it lied when it claimed its use of the trademark was “substantially exclusive.” But the Federal Circuit said the board needed to analyze whether the record showed the claim was true, not just whether it could have been true.