AFFCO New Zealand, Ltd. V. American Fine Foods Corp., No.12-21325-CIV, 2012 WL 6644997 (S.D. Fla. Dec. 20, 2012)

On December 20, 2012, the district court of the Southern District of Florida heard a case involving a breached settlement agreement between Plaintiff AFFCO New Zealand, Ltd. (“AFFCO”) and defendant American Fine Foods Corp. (“American”). In 2006, the parties had entered into a settlement agreement in light of AFFCO’s trademark opposition proceeding against American’s application to register the mark, “AFFCO & Design.” In the agreement, American agreed to several provisions, including amending its similar registration in Saudi Arabia by January 23, 2006. Pursuant to this agreement, and after receiving some assurances of general compliance from American’s counsel, AFFCO withdrew its opposition and the USPTO granted American’s registration of “AFFCO & Design.”

On September 20, 2008, AFFCO learned—apparently for the first time—that American had not in fact amended its trademark registration in Saudi Arabia. After unsuccessfully seeking relief in Saudi Arabian court and in an initial Florida case, plaintiff AFFCO filed this action. Among other claims, AFFCO petitioned the court for cancellation of American’s U.S. registration, “AFFCO & Design.”

In its opinion, the district court noted that American had filed the necessary declarations of use and incontestability over five years after its registration was granted. Given the mark’s incontestable status, the court explained that its “power to ‘rectify the register’ under 15 U.S. § 1119 is limited by the specific provisions concerning incontestability.” Because AFFCO did not plead that any of the eight enumerated defenses applied to this mark, the court could not cancel the mark. The court thus granted summary judgment to defendant American on this claim, refusing to cancel its U.S. trademark registration.


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