## Facts

- Precision Formulations, LLC filed a Lanham Act § 1(b) intent-to-use application on February 21, 2007, to register the mark **FRUITOLOGY** for various goods, including cosmetics (Class 3), nutritional and medicated skin-care goods (Class 5), and beverages (Class 32).
- Compagnie Gervais Danone sought U.S. protection for **FRUITOLOGY** through a Lanham Act § 66(a) application (Madrid Protocol extension) based on an International Registration.
- Danone’s International Registration traced back to a French application filed **December 6, 2006**; Danone claimed Paris Convention priority from that French filing date.
- The parties filed opposing proceedings against each other involving the same mark **FRUITOLOGY** and overlapping goods (including beverage-related goods in Class 32).
- The parties did not dispute that the marks were confusingly similar for purposes of the motions addressed by the Board.
- Danone moved for **summary judgment** against Precision’s application on priority (and, given the identical mark and overlapping goods, likelihood of confusion).
- In the related opposition brought by Precision against Danone’s § 66(a) application, Danone moved to **dismiss for failure to state a claim**, arguing that Precision’s pleaded priority theory was contradicted by the USPTO’s official records showing Danone’s earlier Convention-based priority date.
- The TTAB issued a single precedential opinion resolving the pending summary judgment and dismissal motions in the related proceedings.

## Issues

1. May a § 66(a) (Madrid Protocol) applicant rely on its **foreign filing date** claimed under the Paris Convention as its priority date in a TTAB inter partes dispute against a later-filed § 1(b) intent-to-use applicant?
2. Was Danone entitled to **summary judgment** on priority (and the resulting likelihood-of-confusion claim) where the relevant filing and priority dates were undisputed and the mark and goods overlapped?
3. Did Precision’s opposition against Danone fail to state a claim where Precision alleged priority despite USPTO records reflecting Danone’s earlier Convention priority date?

## Decision

- The TTAB held Danone could rely on its **December 6, 2006** French filing date (claimed under the Paris Convention in its § 66(a) application) for priority purposes, and that this date was earlier than Precision’s **February 21, 2007** § 1(b) filing date.
- The TTAB **granted Danone’s motion for summary judgment** in Danone’s opposition against Precision as to the overlapping goods addressed by the motion, because there was no genuine dispute of material fact on priority and the confusion analysis followed from identical marks and overlapping or legally identical goods.
- The TTAB **granted Danone’s motion to dismiss** Precision’s opposition against Danone for failure to state a claim, because Precision’s priority allegations were contradicted by the USPTO’s application records showing Danone’s earlier Convention-based priority.

## Legal Principles

- In TTAB priority disputes, where an applicant properly claims **Paris Convention priority**, the priority date may be the **foreign filing date** rather than the later U.S. filing date of the related § 66(a) request for extension of protection.
- Summary judgment is proper when there is **no genuine dispute of material fact** and the moving party is entitled to judgment as a matter of law; undisputed USPTO filing records can establish priority for this purpose.
- A pleading may be dismissed for failure to state a claim when its key allegation (such as priority) is directly contradicted by **official USPTO records** that the Board may recognize in resolving a motion to dismiss.
- Where the parties seek registration of the **same mark** for **overlapping or legally identical goods**, a priority determination can be dispositive of the likelihood-of-confusion claim raised in the oppositions.

## Conclusion

Compagnie Gervais Danone v. Precision Formulations, LLC confirms that a § 66(a) applicant claiming Paris Convention priority may rely on the foreign filing date to establish priority in TTAB proceedings; applying that rule to undisputed USPTO records, the Board granted Danone summary judgment against Precision’s FRUITOLOGY application for overlapping goods and dismissed Precision’s opposition to Danone’s application for failure to state a viable priority claim.


Compagnie Gervais Danone v. Precision Formulations, LLC, 98 U.S.P.Q.2d 1251 (2009)