TO-RICOS, LTD.,

Plaintiff, Appellee,

v.

PRODUCTOS AVÍCOLAS DEL SUR, INC.,

Defendant, Appellant.

APPEAL FROM THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF PUERTO RICO

[Hon. Jay A. García-Gregory, U.S. District Judge]

Before

Montecalvo, Lipez, and Thompson, Circuit Judges.

Luis A. Oliver-Fraticelli, with whom Adsuar Muñiz Goyco Seda & Pérez-Ochoa, P.S.C. was on brief, for appellant.

Sheila J. Torres Delgado, with whom Puerto Rico Legal Advisers, LLC, Walter A. Winslow, and Coan, Payton & Payne, LLC were on brief, for appellee.

September 19, 2024 LIPEZ, Circuit Judge. This case arises from a dispute between two companies vying for the right to use the "Pollo Picú" trademark in the sale of fresh chicken. Appellant Productos Avícolas del Sur, Inc. ("PAS") sold chicken under the "Pollo Picú" trademark ("Picú mark") until 2011, when the company stopped selling products because of financial difficulties. Five years later, in 2016, appellee To-Ricos, Ltd. ("To-Ricos") applied to register the Picú mark, believing that PAS had abandoned it. When PAS opposed To-Ricos's trademark applications, To-Ricos sued PAS in federal district court, seeking a declaratory judgment that it is the rightful owner of the Picú mark.

Concluding that PAS had abandoned the mark, the district court granted summary judgment for To-Ricos. On appeal, PAS argues that it never abandoned the Picú mark because the company's financial adversity excused its nonuse of the mark. PAS also asserts that, between 2011 and 2016, the company manifested its intent to resume, not abandon, use of the Picú mark. We disagree with PAS on both points and thus affirm the district court's grant of summary judgment for To-Ricos.

I.

We summarize the relevant facts, which are undisputed unless otherwise noted, in the light most favorable to PAS, the non-moving party. See González-Arroyo v. Drs.' Ctr. Hosp. Bayamón, Inc., 54 F.4th 7, 18 (1st Cir. 2022).

- 2 - A. PAS Stops Using the Trademark

PAS is a Puerto Rico corporation that sold Picú branded chicken from 2005 to 2011.1 The Picú trademark consists of the phrase "Pollo Picú" along with a cartoon chicken:

The brand was, at one point, well-recognized among Puerto Ricans, with one industry executive going so far as to call "Pollo Picú" the "Coca-Cola" of Puerto Rico chicken. However, PAS faced administrative and financial challenges maintaining the Picú tradition. For example, the U.S. Patent and Trademark Office ("USPTO") cancelled PAS's registrations of the Picú mark in 2006 and 2009 for failure to file a declaration, as required by Section 8 of the Lanham Act, attesting that the mark was either: (1) in use, or (2) not in use due to excusable circumstances.2

1PAS temporarily paused sales for fourteen months within this period because of a sudden increase in the price of corn. 2 In relevant part, Section 8 of the Lanham Act provides that, at specified times, a registrant must submit an affidavit stating that "the mark is in use in commerce," 15 U.S.C. § 1058(b)(1)(A), or that the "mark is not in use in commerce," id. § 1058(b)(2)(A), "due to special circumstances which excuse such

- 3 - PAS ultimately stopped selling chicken bearing the Picú mark in 2011 after its bank -- Banco Popular de Puerto Rico ("the Bank") -- froze PAS's financing.3 It soon became apparent that the Bank was auditing PAS's credit accounts. In January 2012, the Bank sued PAS in the Puerto Rico Commonwealth Court of First Instance ("Commonwealth