United States Court of Appeals 

for the Federal Circuit ______________________

GALPERTI, INC.,

Appellant

v.

GALPERTI S.R.L.,

Appellee

______________________

2021-1011

______________________

Appeal from the United States Patent and Trademark 

Office, Trademark Trial and Appeal Board in No. 

92057016.

______________________

Decided: November 12, 2021

______________________

THEODORE H. DAVIS, JR., Kilpatrick, Townsend & 

Stockton LLP, Atlanta, GA, argued for appellant. Also represented by BETHANY R. NELSON; MELISSA DAVIS, JENNIFER 

S. SICKLER, Thompson & Knight LLP, Houston, TX.

 PAOLO STRINO, Gibbons P.C., New York, NY, argued for 

appellee. Also represented by JONATHON BRUGH LOWER, 

Newark, NJ.

______________________

Before MOORE, Chief Judge, PROST and TARANTO, Circuit 

Judges.

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2 GALPERTI, INC. v. GALPERTI S.R.L.

TARANTO, Circuit Judge.

In September 2007, Galperti S.r.l. (Galperti-Italy), to 

support its application to the Patent and Trademark Office 

(PTO) for registration of the mark GALPERTI, told the 

PTO that, in the five preceding years, its use of the mark 

was “substantially exclusive.” In 2008, the PTO granted 

the application and issued Registration No. 3411812. In 

2013, Galperti, Inc. (Galperti-USA) petitioned the PTO to 

cancel the registration, arguing, among other things, that 

the registration was obtained by fraud because GalpertiItaly’s 2007 statement of substantially exclusive use was 

false and, indeed, intentionally so. When the PTO’s Trademark Trial and Appeal Board dismissed the cancellation 

petition, we affirmed as to the non-fraud issues but vacated 

the Board’s rejection of the fraud charge and remanded for 

further consideration of that charge. Galperti, Inc. v. 

Galperti S.r.l., 791 F. App’x 905 (Fed. Cir. 2019) (2019 

CAFC Op.). On remand, the Board again dismissed the 

fraud claim, again finding no proven falsity of the statement at issue (and again not reaching the intent aspect of 

fraud). Galperti, Inc. v. Galperti S.r.l., Cancellation No. 

92057016 (TTAB Aug. 4, 2020) (2020 Board Op.). Now, on 

Galperti-USA’s second appeal, we hold that, in finding no 

falsity of Galperti-Italy’s assertion of substantially exclusive use from 2002 to 2007, the Board committed two legal 

errors: requiring Galperti-USA to establish its own proprietary rights to the mark and disregarding use of the mark

by others during the period at issue. We vacate the Board’s 

decision and remand for further consideration.

I

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. On April 15, 2008, GalpertiItaly obtained a trademark registration for the mark 

GALPERTI for “[i]ronmongery in the form of metal 

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GALPERTI, INC. v. GALPERTI S.R.L. 3

hardware, namely, flanges, ring-shaped fittings of metal, 

and forgings.” 2020 Board Op. at *1–2. The registration 

claims a priority date of September 28, 2006, based on Italian registration application No. MI2006C009605.

It is common ground here that GALPERTI is “primarily merely a surname” and, so, without more, could not be 

registered. Lanham Act § 2(e)(4), 15 U.S.C. § 1052(e)(4). 

Here, Galperti-Italy obtained a registration of GALPERTI 

on the Principal Register under Section 2(f) of the Lanham 

Act, which, even for a mark that is “primarily merely a surname,” allows registration if the mark “has become distinctive of the applicant’s goods in commerce” and allows the 

PTO to “accept as prima facie evidence” of such acquired 

distinctiveness “proof of substantially exclusive and continuous use thereof as a mark by the applicant in commerce 

for the five years before the date on which the claim of distinctiveness is made.” 15 U.S.C. § 1052(f). The PTO initially rejected Galperti-Italy’s application on the ground 

that the mark GALPERTI was not registrable because it 

was primarily just a surname. J.A. 51; see Lanham Act 

§ 2(e)(4), 15 U.S.C. § 1052(e)(4). On September 26, 2007, 

Galperti-Italy responded by asserting, in reliance on the 

Section 2(f) proof standard for acquired distinctiveness: 

“The mark has become distinctive of the goods listed in the 

application through the Applicant’s substantially exclusive 

and continuous use in commerce for at least the five years 

immediately before the date of this statement.” J.A. 68. 

The registration subsequently issued.

On April 4, 2013, within five years of the April 15, 2008 

registration, Galperti-USA petitioned to cancel the registration under Section 14 of the Lanham Act, 15 U.S.C. 

§ 1064. Its amended petition in 2014 presented three 

grounds. First, Galperti-USA argued that its use of the 

GALPERTI mark predated Galperti-Italy’s relevant use of 

the mark and Galperti-Italy’s use was likely to cause confusion. See Lanham Act § 2(d), 15 U.S.C. § 1052(d). Second, Galperti-USA argued that Galperti-Italy obtained the 

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4 GALPERTI, INC. v. GALPERTI S.R.L.

registration by fraud, namely, by intentionally making a 

false assertion of substantially exclusive use from 2002 to 

2007. See Lanham Act § 14(3), 15 U.S.C. § 1064(3) (cancellation available for registration “obtained fraudulently”); 

In re Bose Corp., 580 F.3d 1240, 1243 (Fed. Cir. 2009) (holding that an applicant commits fraud when it knowingly 

makes false, material representations of fact with an intent 

to deceive the PTO). Third, Galperti-USA alleged that 

Galperti-Italy made a false claim of ownership, again invoking fraud.

After a trial, the Board deemed the ownership ground 

forfeited and rejected the other two grounds on the merits. 

Galperti-USA appealed the two merits rulings. We affirmed the Board’s determination that Galperti-USA failed 

to demonstrate its prior use of the mark. 2019 CAFC Op., 

791 F. App’x at 907–08.1 But we vacated the Board’s determination that Galperti-USA failed to prove the falsity, 

and hence failed to prove the fraudulent character, of 

Galperti-Italy’s 2007 assertion to the PTO that its use of 

the mark had been substantially exclusive in the preceding 

five years. Id. at 909–10. We explained that “when evaluating whether an applicant has had ‘substantially exclusive’ use of a mark, we look to whether any use by a third 

party was ‘significant,’ or whether it was merely ‘inconsequential or infringing.’” Id. at 910 (quoting L.D. Kichler 

Co. v. Davoil, Inc., 192 F.3d 1349, 1352 (Fed. Cir. 1999)). 

While approving the Board’s conclusion that Galperti-Italy’s mere “‘knowledge of other players in the marketplace’” was insufficient to make its statement to the PTO 

“‘per se false,’” id., we held that the Board had erred in 

stopping at that point, because the absence of “per se”

1 We also rejected Galperti-USA’s argument about 

prior trade-name use, affirming the Board’s determination 

that Galperti-USA had not properly preserved such a contention. 2019 CAFC Op., 791 F. App’x at 908–09.

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GALPERTI, INC. v. GALPERTI S.R.L. 5

falsity does not imply the absence of falsity, id. What was 

needed was an inquiry, on remand, into whether the uses 

to which Galperti-USA pointed as showing the falsity of 

Galperti-Italy’s representation to the PTO were significant 

or, instead, inconsequential. Id. In stating the remand instruction, we referred to “Appellant’s use” (Galperti-USA 

being “Appellant”), id. (emphasis added), but given our 

statement of the legal standard in terms of “any use by a 

third party” and “other players in the marketplace,” id., the 

remand mandate could not be reasonably understood as 

limited to evidence of Galperti-USA’s own use, but required 

proper consideration of all the evidence presented of significant (rather than inconsequential) use.

On remand, the Board did not take an improper view 

of this court’s mandate. But it again found that GalpertiUSA had failed to prove the significant, not inconsequential, use that would make Galperti-Italy’s representation 

false. And in so finding, the Board stated two conclusions 

that are now at issue before us.

First, the Board concluded that Galperti-USA “had to 

show it had obtained proprietary rights in ‘Galperti’ by evidence of secondary meaning,” 2020 Board Op. at *15, and 

that Galperti-USA’s “failure to show a proprietary interest 

in the surname ‘Galperti’ as a trademark during the relevant time period renders [Galperti-USA’s] purported use 

‘inconsequential,’” id. at *17. Second, the Board concluded 

that Galperti-USA could not benefit from third-party use 

of GALPERTI because there was no proven privity (though 

there was affiliation) between Galperti-USA and the thirdparty users. Id. at *17 (stating that because two GalpertiUSA “affiliates” “were neither predecessors nor successors 

in interest” of Galperti-USA, “any common law use” by the 

affiliates “did not inure to [Galperti-USA’s] benefit”). The 

Board also addressed aspects of the evidence it found not 

to help Galperti-USA for reasons not expressly dependent 

on those two conclusions. Id. at *12–15. For the reasons it 

set forth, the Board found that Galperti-USA had 

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6 GALPERTI, INC. v. GALPERTI S.R.L.

demonstrated only insignificant use and hence had not 

shown falsity or, therefore, fraud on Galperti-Italy’s part. 

Id. at *17.

Galperti-USA timely appealed. We have jurisdiction 

under 28 U.S.C. § 1295(a)(4)(B).

II

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 i.am.symbolic, 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.

A

Galperti-Italy made its assertion of “substantially exclusive use” of GALPERTI (in the specified 2002–2007 period) specifically in order to invoke Lanham Act Section 

2(f)’s authorization to rely on “substantially exclusive and 

continuous use . . . as a mark” for the five preceding years 

to make out a prima facie case of acquired distinctiveness. 

15 U.S.C. § 1052(f). The Board thus treated the meaning 

of Galperti-Italy’s representation to the PTO in 2007, as intended by Galperti-Italy and understood by the PTO, as

mirroring the statutory provision being invoked.

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GALPERTI, INC. v. GALPERTI S.R.L. 7

Because GALPERTI is primarily just a surname, it is 

not disputed here that any proprietary rights depend on 

secondary meaning, as is true of descriptive terms. 2 J. 

McCarthy on Trademarks and Unfair Competition § 13:2 

(5th ed. 2021). Accordingly, in requiring that GalpertiUSA have proprietary rights in GALPERTI for its use of 

the term to count in showing Galperti-Italy’s assertion of 

substantially exclusive use as a mark to be false, the Board 

required that Galperti-USA show “secondary meaning,”

2020 Board Op. at *15, i.e., acquired distinctiveness. See 

Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 769 

(1992) (“This acquired distinctiveness is generally called 

‘secondary meaning.’”); Real Foods Pty. Ltd. v. Frito-Lay 

North America, Inc., 906 F.3d 965, 972 (Fed. Cir. 2018). In 

other words, the Board ruled that GALPERTI had to have 

acquired distinctiveness as a source identifier for GalpertiUSA in order for Galperti-USA’s own use to undermine 

Galperti-Italy’s claim of substantially exclusive use.

That requirement is counter to our precedent on what 

uses count as undermining a claim of acquired distinctiveness of a term based on substantially exclusive use of the 

term as a mark for the statutory five-year period. Our precedents hold that even marketplace uses of a term lacking 

secondary meaning for the users are among the uses that 

legitimately play that role. After all, a significant amount 

of marketplace use of a term not as a source identifier for 

those users does tend to undermine an applicant’s assertion that its own use has been substantially exclusive so as 

to create a prima facie case that the term has come to acquire distinctiveness as a source identifier for the applicant. An applicant’s assertion that it has attained the 

status of recognition as the source of goods carrying a given 

mark is not undermined only by uses made by another person that has attained that status for itself. We and our 

relevant predecessor court have so held, in particular, as to 

merely descriptive uses of such a term.

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8 GALPERTI, INC. v. GALPERTI S.R.L.

Thus, in De Walt, Inc. v. Magna Power Tool Corp., one 

of this court’s predecessors (whose decisions are precedential for us) rejected a claim of substantially exclusive use 

where the opposer had “a long established right to use 

‘power sh[o]p’ descriptively and prominently in connection 

with the sale of woodworking saws and it would be inconsistent to register ‘Power Shop’ to [the applicant] for those 

wares.” 289 F.2d 656, 661 (CCPA 1961). In Otto Roth & 

Co. v. Universal Foods Corp., the same court elaborated:

Any use by opposer, whether begun prior or subsequent to applicant’s, and whether in a descriptive 

context or in the manner of a mark, may be sufficient to defeat the applicant’s claim that the term 

is distinctive of its goods or has become distinctive 

thereof with the meaning of section 2(f) of the Lanham Act.

640 F.2d 1317, 1320 (CCPA 1981). And in In re Boston Beer 

Co., we affirmed a refusal to register “The Best Beer in 

America,” explaining that “[t]he examples of use of the 

phrase by others in its descriptive form support the board’s 

conclusion that the mark had not acquired distinctiveness.” 

198 F.3d 1370, 1373 (Fed. Cir. 1999). In our earlier opinion

in this case, moreover, we instructed the Board to consider 

“whether any use by a third party was ‘significant,’” without suggesting that the only uses that would count would 

be those for which acquired distinctiveness for the user was 

present. 2019 CAFC Op., 791 F. App’x at 910.

Under those precedents, the Board committed a legal 

error here. If evidence of uses lacking secondary meaning 

is pertinent under Section 2(f), the evidence is pertinent to 

showing the falsity of the assertion made by Galperti-Italy 

using the statutory language in order to meet the Section 

2(f) standard. Contrary to the Board’s ruling, therefore, we 

conclude that Galperti-USA does not need to establish secondary meaning of its own uses of GALPERTI in order for 

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GALPERTI, INC. v. GALPERTI S.R.L. 9

those uses to be counted in determining the falsity of 

Galperti-Italy’s claim of substantially exclusive use.

B

The Board also erred in its related requirement that 

Galperti-USA had to demonstrate privity with other users 

of the mark during the 2002–2007 period at issue to rely on 

those uses to show falsity of Galperti-Italy’s claim of substantially exclusive use. See 2020 Board Op. at *17. This 

requirement is inconsistent with our precedent. In Otto 

Roth, the court explained that “any” use may frustrate a 

claim for substantially exclusive use, without limiting that 

use to the party challenging registration. 640 F.2d at 1320. 

A few years ago, we confirmed the common-sense point 

that the “most relevant evidence” in a Section 2(f) inquiry 

“will be the trademark owner’s and third parties’ use in the 

recent period before first use or infringement.” Converse, 

Inc. v. Int’l Trade Comm’n, 909 F.3d 1110, 1122 (Fed. Cir. 

2018) (advising that “both Converse’s use and the use by 

its competitors” must be considered). Use by anyone, regardless of relation to the challenger, may undercut a claim 

of substantially exclusive use. This straightforward point 

is reflected in our prior opinion in the present matter, 

where we said that “any use by a third party” could be significant. 2019 CAFC Op., 791 F. App’x at 910.

III

For the foregoing reasons, we reject two aspects of the 

Board’s decision on what constitutes “use” for purposes of 

defeating a claim of substantially exclusive use. We vacate

the Board’s decision and remand. Further analysis of the 

falsity issue must proceed in the absence of the legal errors 

we have identified. We do not address the intent aspect of 

the charge of fraud, which the Board has not addressed.

The parties shall bear their own costs.

VACATED AND REMANDED

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