To-Ricos Ltd, a unit of JBS USA, has been given the go-ahead to use the iconic Pollo Picú brand to market its poultry products stateside and in Puerto Rico, following a recent decision by the U.S. Court of Appeals for the First Circuit in Boston.
The case involves a trademark dispute between Productos Avícolas del Sur Inc. (PAS) — which owned the brand before closing in 2011 — and To-Ricos Ltd, both competitors in Puerto Rico’s poultry sector.
Pollo Picú is a well-known in Puerto Rico for fresh chicken and was used for decades by the former Pollos Picú operation, which PAS acquired nearly 20 years ago.
The legal battle centers around PAS’ use of the Picú trademark from 2005 until it stopped selling products under the brand in 2011 due to financial difficulties.
In 2016, five years after PAS halted its operations, To-Ricos applied to register the Picú name with the U.S. Patent and Trademark Office, believing PAS had abandoned the brand.
PAS opposed the application, arguing that it had not abandoned the trademark despite its financial setbacks. In response, To-Ricos filed a lawsuit in the U.S. District Court for the District of Puerto Rico, seeking a declaratory judgment that it was the rightful owner of the Picú trademark.
The central issue in the case was whether PAS had abandoned its rights to the Picú trademark. Under U.S. trademark law, a trademark is considered abandoned if it is not used in commerce for three consecutive years without intent to resume use.
To-Ricos argued that PAS’ non-use of Picú for more than three years, from 2011 to 2016, constituted abandonment. PAS contended that its non-use was excusable due to financial difficulties and legal issues with Banco Popular de Puerto Rico, which had frozen PAS’ assets, including the Picú trademark.
The district court sided with To-Ricos, granting summary judgment in its favor, concluding that PAS had failed to provide enough evidence of its intent to resume using the Picú mark during the three-year statutory period of non-use.
Although PAS had attempted to sell its assets, including the Picú mark, in 2012, this attempt was outside the relevant time frame and did not demonstrate a concrete intent to resume use of the trademark, the legal decision stated.
Furthermore, PAS’ licensing of the mark to IMEX Américas Trading LLC in 2017 came too late to refute the presumption of abandonment, the court decision states. IMEX launched poultry products in Florida using the Picú brand in 2018, according to published reports.
On appeal, PAS argued that its financial adversity excused its non-use of the trademark and that it had always intended to resume use of the Picú mark once its financial situation improved. However, the appellate court affirmed the district court’s ruling, agreeing that PAS had not met its burden of proving an intent to resume use of the mark within the statutory period.
The court emphasized that simply claiming a vague intent to use a trademark at some future date is not sufficient to refute a claim of abandonment.
News is my Business attempted to reach PAS owner Fernando Echegaray, but he was unavailable for comment.
A source with knowledge on the case said PAS is analyzing its next steps as the “decision could have future importance because any business that experiences financial hardship and stops using a brand for a few years can be at risk of losing it.”
Rulings by the U.S. Court of Appeals are usually final, but parties can ask the U.S. Supreme Court to review cases.
