OVERTURNED BY: In Re Bose Corp., Opp. No. 91/157,315 (August 31, 2009).
HCI, the opposer, sought to cancel six registrations owned by Xel, the registrant, for various permutations of the mark "XEL HERBACEUTICALS" on the basis of (1) fraud/nonuse and (2) likelihood of confusion with its own mark "HCI HERBACEUTICALS, INC." The Board, in considering HCI's motion for summary judgment on fraud, noted that in response to requests for admissions, Xel had admitted that it was not using in commerce four of its marks in connection with several goods listed in their respective Statements of Use. The Board summarily found that fraud existed as to those four registrations and partially granted HCI's motion for summary judgment (see below for the legal standards applied) thus canceling those registrations. The remaining two registrations survived summary judgment on the basis of Xel's affirmation of use.
The interesting aspect of this case was Xel's argument that statements of use are divisible into "sworn" declaration portions attesting to "use on the goods/services" and "unsworn" portions attesting to "use on all goods/services" on "information and belief." The Board corrected the assertion:
A declaration relates to all statements in the document of which the declarant is a part. Treating statements of use as divided sworn and unsworn sections would encourage applicants to conclude that they could make misrepresentations willfully and without penalty. We reject Xel's contention that use of the wording "all goods and/or services" in the body of the statements of use and "the goods/services" in the supporting declaration gives the respective phrases different meanings. In the declaration for each statement of use, Xel's attorney averred that Xel was "using the mark in commerce or in connection with the goods/services identified above." The goods identified above in the body of the statements of use are "all goods and/or services listed in the application or Notice of Allowance." Accordingly, the wording at issue is synonymous.Full text available here.
You can always count on the TTAB to provide a useful rehashing of case law on the matter at hand. By assembling a few such "rehashings", you can create a great legal road-map regarding fraud against the U.S. Trademark Office:
Fraud in procuring a trademark registration occurs when an applicant for registration (1) knowingly makes (2) false, (3) material representations of fact in connection with an application to register. (numbered elements added) See Torres v. Cantine Torresella S.r.l., 808 F.2d 46 (Fed. Cir. 1986). A party making a fraud claim is under a heavy burden because fraud must be proved by clear and convincing evidence, leaving nothing to speculation, conjecture, or surmise. Any doubt must be resolved against the party making the claim. See Smith International, Inc. v. Olin Corporation, 209 USPQ 1033 (TTAB 1981).(1) As to the knowledge of the applicant/registrant:
If fraud can be shown in the procurement of a registration, the registration is void in the international class or classes in which fraud based on nonuse has been committed. See General Car and Truck Leasing Systems, Inc. v. General Rent-A-Car Inc., 17 USPQ2d 1398, 1401 (S.D. Fla. 1990), affig General Rent-A-car Inc. v. General Leaseways, Inc., Canc. No. 14,870 (TTAB May 2, 1998).
In Board inter partes proceedings, proof of specific intent to commit fraud is not required, rather, fraud occurs when an applicant or registrant makes a false material representation that the applicant or registrant knew or should have known was false. General Car and Truck Leasing Sys., Inc. v. General Rent-A-Car Inc., supra. The appropriate inquiry is not into the registrant's subjective intent, but rather into the objective manifestations of that intent. See Medinol Ltd. v. Neuro Vasx, Inc., 67 USPQ2d 1205 (TTAB 2003)[finding that "neither the identification of goods nor the statement of use itself was lengthy, highly technical or otherwise confusing, and the applicant who signed the document was clearly in a position to know (or inquire) as to the truth of the statements therein."](2) As to the falsity of a representation made to the Trademark Office: Where the applicant/registrant admits nonuse or another type of material representation (generally through Requests for Admissions, Interrogatories, Depositions, or some other discovery mechanism), the TTAB will analogize Medinol and generally grant a Motion for Summary Judgement on fraud. (finding no genuine issue of material fact on fraud where applicant admitted nonuse in its response to a petition for cancellation).
Statements under oath [e.g. Statements of Use] are made with a degree of solemnity requiring through investigation prior to signature and submission to the USPTO. Id.; Patent and Trademark Office Rule 10.18(b)(2).
(3) As to the materiality of a representation made to the Trademark Office:
Statements regarding the use of [a] mark on identified goods and/or services are certainly material to issuance to registration. See Hachette Fillipacchi Presse v. Elle Belle, LLC, 85 USPQ2d 1090 (TTAB 2007) (use alleged for a wide variety of clothing items for men, women and children when mark had not actually been used for any identified items for men or children); Sinclair Oil Corporation v. Kendrick, 85 USPQ2d 1032 (TTAB 2007) (use alleged for retail store services when mark had only been used on small number of product samples, which were given away four years before application); Hurley International LLC v. Volta, 82 USPQ2d 1339 (TTAB 2007) (use alleged for various entertainment and production services, when mark had not been used anywhere in the world for some services); Standard Knitting Ltd. v. Toyota Jidosha Kabushiki Kaisha, 77 USPQ2d 1917 (TTAB 2006) (misrepresentation regarding use of the mark on most of the goods identified in filed applications); First Int'l Serv. Corp. v. Chuckles Inc., 5 USPQ2d 1628 (TTAB 1988) (use alleged on range of personal care products when mark only actually used on shampoo and hair setting lotion).
As long as the general product terminology encompasses the specific product terminology in an identification of goods, and there is use on the specific product, there can be no fraud ... the converse situation, however, is not true. See Tri-Star Marketing, LLC v. Nino Franco Spumanti S.r.l, 84 USPQ2d 1912 (TTAB 2007) (finding "wine" to be a general classification for the more specific "sparkling wine").