Friday, November 12, 2021

PTAB decision vacated in Galperti

The outcome


Galperti-USA, a Texas corporation, and Galperti-Italy, an Italian limited liability company, are legally unrelated companies, both of which manufacture and sell metal flanges and related products.

Galperti-USA contends that the Board’s analysis of falsity includes two legally incorrect premises. One is that Galperti-USA had to have trademark-protected rights in its use of the mark at issue (in 2002–2007)—specifically, secondary meaning (i.e., acquired distinctiveness)—in order for that use to count as significant in assessing the falsity of Galperti-Italy’s assertion of “substantially exclusive use.” The other is that uses by third parties do not count in the substantially-exclusive-use assessment unless the third parties were in privity with Galperti-USA. We agree that both premises are found in the Board’s analysis and that both premises are incorrect as a matter of law—a matter we decide de novo. In re, 866 F.3d. 1315, 1322 (Fed. Cir. 2017). Because we cannot be confident that the Board’s bottom-line finding of no significant nonGalperti-Italy use was unaffected by the two legal errors, we vacate and remand. We do not reach the intent aspect of fraud.


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