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Foreign Use of a Mark May Establish Trademark Priority in the U.S.

By Deena R. Sturm
February 01, 2007

In the recent decision of First Niagara Ins. Brokers, Inc. v. First Niagara Fin. Group, Inc. (Fed. Cir. 2007) (the 'Federal Circuit's decision'), the Federal Circuit overturned a ruling by the Trademark Trial and Appeal Board (the 'Board') dismissing an opposition by First Niagara Insurance Brokers ('FN-Canada'), a Canadian company, to registration of 'First Niagara' and related marks by First Niagara Financial Group ('FN-US'), a U.S. company. In rendering its holding, the Federal Circuit declared that, in some cases, what would seem to be purely foreign trademark activity may establish superior trademark rights in the United States.

Company Histories of FN-Canada and FN-US

FN-Canada is an insurance broker that sells insurance policies issued by other companies in exchange for a commission. FN-Canada has been in business since 1886 and assumed the name 'First Niagara Insurance Brokers' in 1984. FN-Canada is located in Niagara Falls in Ontario, Canada near Niagara Falls, NY, though FN-Canada has no actual business presence in the United States and is not licensed to sell insurance in the United States. However, FN-Canada does have ties to the United States. For example:

  • FN-Canada sells insurance policies issued by U.S. companies;
  • FN-Canada sells insurance policies to U.S. citizens that have Canadian property;
  • FN-Canada provides insurance to Canadians who are traveling to the United States; and
  • FN-Canada has customers such as the Niagara Falls Bridge Commission, a joint United States-Canada commission that operates bridges between the countries.

Though FN-Canada does not own any registered U.S. trademarks, it uses several unregistered marks in its advertising and correspondence, such as 'First Niagara' and 'First Niagara Insurance Brokers.'

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