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  • Definition: Fraud
    • Qualcomm Incorporated v. FLO Corporation, Opposition No. 91182244, (TTAB 2010).
      • Fraud in procuring or maintaining a trademark registration occurs when an applicant for registration or a registrant in a declaration of use or a renewal application knowingly makes specific false, material representations of fact in connection with an application to register or in a post-registration filing with the intent of obtaining or maintaining a registration to which it is otherwise not entitled. See In re Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir. 2009).
    • Standard Knitting, Ltd. v. Toyota Jidosha Kabushiki Kaisha, Opposition No. 91116242, (TTAB 2006).
      • Fraud in obtaining a trademark registration occurs "when an applicant knowingly makes false, material representations of fact in connection with his application." Torres v. Cantine Torresella S.r.l, 808 F.2d 46, 1 USPQ2d 1483, 1484 (Fed. Cir. 1986); Mister Leonard Inc. v. Jacques Leonard Couture Inc., 23 USPQ2d 1064, 1065 (TTAB 1992) ("Thus, according to Torres, to constitute fraud on the PTO, the statement must be (1) false, (2) a material representation and (3) made knowingly."). See also Medinol Ltd. v. Neuro Vasx Inc., 67 USPQ2d 1205 (TTAB 2003) ("A Trademark applicant commits fraud in procuring a registration when it makes material representations of fact in its declaration which it knows or should know to be false.").
    • Grand Canyon West Ranch, LLC v. Hualapai Tribe, Opposition No. 91162008, (TTAB 2006).
      • A defendant commits fraud by knowingly making false statements as to a material fact in conjunction with a trademark application or registration. Mister Leonard Inc. v. Jacques Leonard Couture Inc., 23 USPQ2d 1063, 1065 (TTAB 1992).
    • Maids to Order of Ohio, Inc. v. Maid-to-Order, Inc., Cancellation No. 92040571, (TTAB 2006).
      • Fraud in obtaining or maintaining a trademark registration "occurs when an applicant [or later, registrant] knowingly makes false, material misrepresentations of fact in connection with his application," or in connection with a Section 8 declaration or in connection with an application for renewal. Torres v. Cantine Torresella S.R.L., 808 F.2d 46, 1 USPQ2d 1483, 1484 (Fed. Cir. 1986); 5 J. McCarthy, Trademarks and Unfair Competition, Section 20:58 (4th ed. updated March 2006) ("It is relatively clear that fraud made in affidavits under §§8 and 9, to continue a registration, also constitutes fraud in ‘obtaining' a registration sufficient for cancellation.")
    • Tri-Star Marketing, LLC v. Nino Franco Spumanti S.R.L., Cancellation No. 92043953, (TTAB 2007).
      • We now turn to consider petitioner's claim of fraud. Fraud in procuring a registration occurs when an applicant knowingly makes false, material representations of fact in connection with an application to register or, in the case of maintaining a registration, when a registrant makes false, material representations of fact in connection with an affidavit of continued use under Section 8. Torres v. Cantine Torresella S.r.l., 808 F.2d 46, 1 USPQ2d 1483, 1484 (Fed. Cir. 1986).
    • Hurley International LLC v. Paul and Joanne Volta, Opposition No. 91158304, (TTAB 2007).
      • Fraud in procuring a trademark registration occurs when an applicant for registration knowingly makes false, material representations of fact in connection with an application to register. See Torres v. Cantine Torresella S.r.l., 808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir., 1986).
    • Hachette Filipacchi Presse v. Elle Belle, LLC, Cancellation No. 92042991, (TTAB 2007).
      • Fraud in procuring a trademark registration occurs when an applicant for registration knowingly makes false, material representations of fact in connection with an application to register. See Torres v. Cantine Torresella S.r.l., 808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir. 1986).
    • Sinclair Oil Corporation v. Sumatra Kendrick, Opposition No. 91152940, (TTAB 2007).
      • Fraud in procuring a trademark registration occurs when an applicant for registration knowingly makes false, material representations of fact in connection with an application to register. See Torres v. Cantine Torresella S.r.l., 808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir. 1986).
  • Discussion of the issue of fraud.
    • Maids to Order of Ohio, Inc. v. Maid-to-Order, Inc., Cancellation No. 92040571, (TTAB 2006).
      • Furthermore, as this Board has stated: "Fraud implies some intentional deceitful practice or act designed to obtain something to which the person practicing such deceit would not otherwise be entitled. Specifically, it involves a willful withholding from the Patent and Trademark Office by an applicant or registrant of material information or fact, which, if disclosed to the Office, would have resulted in the disallowance of the registration sought or to be maintained. Intent to deceive must be "willful". If it can be shown that the statement was a "false misrepresentation" occasioned by an "honest" misunderstanding, inadvertence, negligent omission or the like rather than one made with a willful intent to deceive, fraud will not be found. Fraud, moreover, will not lie if it can be proven that the statement, though false, was made with a reasonable and honest belief that it was true or that the false statement is not material to the issuance or maintenance of the registration. It thus appears that the very nature of the charge of fraud requires that it be proven "to the hilt" with clear and convincing evidence. There is no room for speculation, inference or surmise and, obviously, any doubt must be resolved against the charging party." First International Services Corp. v. Chuckles Inc., 5 USPQ2d 1628, 1634 (TTAB 1988), citing Smith International, Inc. v. Olin Corp., 209 USPQ 1033, 1043-44 (TTAB 1981).
  • Fraud in the procurement of a trademark registration is a different concept with a different application than a breach of the duty to disclose in patent matters.
    • American Flange & Manufacturing Co., Inc. v. Rieke Corporation, Opposition No. 91153479, (TTAB 2005).
      • Preliminarily, both opposer and applicant refer to "inequitable conduct" rather than fraud in their briefs in discussing this claim. This suggests that both parties may be equating fraud in the procurement of a trademark registration with a breach of the duty to disclose in patent matters. The two are very different in concept and application. See generally J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, §§ 31:62-31:64 (4th Ed. 2006). In the patent context, the term "fraud on the Patent Office" has been supplanted by "inequitable conduct." Id. The change in terminology recognizes that the patent concept differs from fraud in the law more generally. In the patent context the applicant or its attorney has "an almost fiduciary-like duty of full disclosure." Id.
  • The concept of "fraud" in the trademark registration context is more akin to fraud in other fields of law.
    • American Flange & Manufacturing Co., Inc. v. Rieke Corporation, Opposition No. 91153479, (TTAB 2005).
      • The concept of "fraud" in the trademark registration context is more akin to fraud in other fields of law. For purposes of the Trademark Act, an applicant commits fraud by knowingly making a false statement as to a material fact in conjunction with a trademark application. Mister Leonard Inc. v. Jacques Leonard Couture Inc., 23 USPQ2d 1064, 1065 (TTAB 1992). Thus the statement in question: (1) must be false; (2) must be made with knowledge that it is false; and (3) must be material to the examining attorney's decision to approve the application.
  • Elements for a finding of fraud.
    • Maids to Order of Ohio, Inc. v. Maid-to-Order, Inc., Cancellation No. 92040571, (TTAB 2006).
      • To constitute fraud on the USPTO, the statement must be (1) false, (2) a material representation and (3) made knowingly. Torres v. Cantine Torresella S.R.L., supra, 1 USPQ2d at 1484.
  • Elements for a finding of fraud in a declaration or oath.
    • Qualcomm Incorporated v. FLO Corporation, Opposition No. 91182244, (TTAB 2010).
      • A plaintiff claiming that the declaration or oath in a defendant's application for registration was executed fraudulently, in that there was another use of the same or a confusingly similar mark at the time the oath was signed, must allege particular facts which, if proven, would establish that: (1) there was in fact another use of the same or a confusingly similar mark at the time the oath was signed; (2) the other user had legal rights superior to applicant's; (3) applicant knew that the other user had rights in the mark superior to applicant's, and either believed that a likelihood of confusion would result from applicant's use of its mark or had no reasonable basis for believing otherwise; and that (4) applicant, in failing to disclose these facts to the U.S. Patent and Trademark Office, intended to procure a registration to which it was not entitled. Intellimedia Sports Inc. v. Intellimedia Corp., 43 USPQ2d 1203, 1205 (TTAB 1997).
  • Burden of Proof: A party making a fraud claim is under a heavy burden because fraud must be proved to the hilt with clear and convincing evidence, leaving nothing to speculation, conjecture, or surmise.
    • Tri-Star Marketing, LLC v. Nino Franco Spumanti S.R.L., Cancellation No. 92043953, (TTAB 2007).
      • A party making a fraud claim is under a heavy burden because fraud must be proved to the hilt with clear and convincing evidence, leaving nothing to speculation, conjecture, or surmise. Any doubt must be resolved against the party making the claim. Sinclair Oil Corp. v. Sumatra Kendrick, ___USPQ2d___ (TTAB, Opp. No. 91152940, June 6, 2007).
    • Sinclair Oil Corporation v. Sumatra Kendrick, Opposition No. 91152940, (TTAB 2007).
      • 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).
    • Hachette Filipacchi Presse v. Elle Belle, LLC, Cancellation No. 92042991, (TTAB 2007).
      • 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).
    • Hurley International LLC v. Paul and Joanne Volta, Opposition No. 91158304, (TTAB 2007).
      • 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).
    • Grand Canyon West Ranch, LLC v. Hualapai Tribe, Opposition No. 91162008, (TTAB 2006).
      • Moreover, an allegation of fraud must be proven "to the hilt" with clear and convincing evidence. Smith International, Inc. v. Olin Corporation, 209 USPQ 1033, 1043-44 (TTAB 1981).
    • Standard Knitting, Ltd. v. Toyota Jidosha Kabushiki Kaisha, Opposition No. 91116242, (TTAB 2006).
      • Fraud must be proven with clear and convincing evidence, and any doubt must be resolved against a finding of fraud. See Giant Food, Inc. v. Standard Terry Mills, Inc., 229 USPQ 955, 962 (TTAB 1986) and cases cited therein.
    • American Flange & Manufacturing Co., Inc. v. Rieke Corporation, Opposition No. 91153479, (TTAB 2005).
      • The standard of proof for a fraud claim is the rigorous clear-and-convincing-evidence standard, and it is strictly applied. Standard Knitting Ltd. v. Toyota Jidosha Kabushiki Kaisha, 77 USPQ2d 1917, 1926 (TTAB 2006); Smith International Inc. v. Olin Corp., 209 USPQ 1033, 1044 (TTAB 1981)("It thus appears that the very nature of the charge of fraud requires that it be proven ‘to the hilt' with clear and convincing evidence. There is no room for speculation, inference or surmise and, obviously, any doubt must be resolved against the charging party.").
  • Where the TTAB has found fraud it is generally crystal clear that the statement in question is false.
    • American Flange & Manufacturing Co., Inc. v. Rieke Corporation, Opposition No. 91153479, (TTAB 2005).
      • In similar cases where the Board has found fraud it is generally crystal clear that the statement in question is false. Usually the applicant or registrant effectively admits that the statement is false, or the record otherwise clearly establishes that the relevant statement is false. See, e.g., Torres v. Cantine Torresella S.r.L., 808 F.2d 46, 1 USPQ2d 1483, 1484-85 (Fed. Cir. 1986); Medinol Ltd. v. Neuro Vasx Inc., 67 USPQ2d 1205, 1209 (TTAB 2003); First International Services Corp. v. Chuckles Inc., 5 USPQ2d 1628, 1636 (TTAB 1988).
  • Statements regarding the use of the mark on goods and services are certainly material to issuance of a registration.
    • Hurley International LLC v. Paul and Joanne Volta, Opposition No. 91158304, (TTAB 2007).
      • Statements regarding the use of the mark on goods and services are certainly material to issuance of a registration. See Standard Knitting, Ltd. v. Toyota Jidosha Kabushiki Kaisha, 77 USPQ2d 1917 (TTAB 2006)(fraud found based on misrepresentation regarding use of the mark on most of the goods identified in the filed applications); First International Services Corp. v. Chuckles Inc., 5 USPQ2d 1628 (TTAB 1988) (fraud found in applicant's filing of application with verified statement that the mark was in use on a range of personal care products when applicant knew it was in use only on shampoo and hair setting lotion). See also, General Car and Truck Leasing Systems Inc. v. General Rent-A-Car Inc., 17 USPQ2d 1398 (D.C. S.Fla. 1990), aff'g General Rent-A-Car Inc. v. General Leaseways, Inc., Canc. No. 14,870 (TTAB May 2, 1988).
    • Sinclair Oil Corporation v. Sumatra Kendrick, Opposition No. 91152940, (TTAB 2007).
      • Statements regarding the use of the mark on the identified goods and/or services are certainly material to issuance of a registration. See Hachette Fillipacchi Presse v. Elle Belle, LLC, ___ USPQ2d ___ (TTAB, Cancellation No. 92042991, April 9, 2007) (fraud found based on applicant's allegation of use of its mark for a wide variety of clothing items for men, women and children when mark had not been used for any identified items for men or children and only for a limited number of items for women); Hurley International LLC v. Volta, 82 USPQ2d 1339 (TTAB 2007) (fraud found based on applicants' allegation of use of their mark for various entertainment services and production services, when mark had not been used anywhere in the world for some of the services and had not been used in commerce with or in the United States for other services); Standard Knitting, Ltd. v. Toyota Jidosha Kabushiki Kaisha, 77 USPQ2d 1917 (TTAB 2006) (counterclaim petition for cancellation of petitioner's pleaded registrations granted when fraud found based on misrepresentation regarding use of the mark on most of the goods identified in the filed applications); First International Services Corp. v. Chuckles Inc., 5 USPQ2d 1628 (TTAB 1988) (fraud found in applicant's filing of application with verified statement that the mark was in use on a range of personal care products when applicant knew it was in use only on shampoo and hair setting lotion).
    • Hachette Filipacchi Presse v. Elle Belle, LLC, Cancellation No. 92042991, (TTAB 2007).
      • Statements regarding the use of the mark on goods and services are certainly material to issuance of a registration covering such goods and services. First International Services Corp. v. Chuckles Inc., 5 USPQ2d 1628 (TTAB 1988) ("We find that applicant committed fraud in its statement regarding the use of the mark on goods for which it only intended to use the mark. There is no question that this statement was material to the approval of the application by the Examining Attorney.") See also Standard Knitting, Ltd. v. Toyota Jidosha Kabushiki Kaisha, 77 USPQ2d 1917 (TTAB 2006) (applicant's counterclaim petition to cancel granted because of fraud by opposer in procuring its pleaded registrations, specifically, fraud found because of misrepresentations regarding extent of use of the marks on the goods identified in the applications which resulted in issuance of opposer's pleaded registrations); General Car and Truck Leasing Systems Inc. v. General Rent-A-Car Inc., 17 USPQ2d 1398 (S.D. Fla. 1990), aff'g General Rent-A-Car Inc. v. General Leaseways, Inc., Canc. No. 14,870 (TTAB May 2, 1988).
    • Hurley International LLC v. Paul and Joanne Volta, Opposition No. 91158304, (TTAB 2007).
      • Despite applicants' assertions to the contrary, we agree with opposer that this case is similar to the Medinol case. In Medinol, a trademark application was filed, the mark was published, a statement of use was submitted, and a registration issued for "medical devices, namely, neurological stents and catheters." In response to a petition for cancellation, registrant admitted in its answer that the mark was not used on stents. The Board stated the following (at 1208):
        The fraud alleged by petitioner is that respondent knowingly made a material representation to the USPTO in order to obtain registration of its trademark for the identified goods. There is no question that the statement of use would not have been accepted nor would registration have issued but for respondent's misrepresentation, since the USPTO will not issue a registration covering goods upon which the mark has not been used. (cites omitted)."
    • Hurley International LLC v. Paul and Joanne Volta, Opposition No. 91158304, (TTAB 2007).
      • The involved application includes the following statement: "Applicant is using or is using through a related company the mark in commerce on or in connection with the…identified goods/services." Also, applicants signed the oath at the conclusion of the application under penalty of "fine or imprisonment, or both…that…willful false statements may jeopardize the validity of the application or any resulting registration…." Thus, as in Medinol, a material representation of fact with regard to use of the mark on particular services was made by the mark's owner(s) and that statement was relied upon by the USPTO in determining applicants' rights to the registration.
  • The timing of the misrepresentation is immaterial for a finding of fraud.
    • Hurley International LLC v. Paul and Joanne Volta, Opposition No. 91158304, (TTAB 2007).
      • Similarly, in this case there is no question that the application for registration under Section 1(a) of the Trademark Act would have been refused but for applicants' misrepresentation regarding their use of the mark on all the recited services in the application. It is irrelevant, despite what applicants would have us believe, that a registration has yet to issue for applicants' mark. The timing of the misrepresentation is immaterial. Whether the false statements alleging use of the mark in commerce occur at the time of filing the application, during the examination process, or at a later point during the USPTO's review of the statement of use, the result is the same—an application results in a registration improperly accorded legal presumptions in connection with goods and/or services on which the mark is not used.5 Applicants have provided no compelling argument as to why the law allows for cancellation of a registration after it is obtained through fraud, but does not allow for the prevention of a registration when fraud is revealed and the issuance of a registration is imminent.
  • A misstatement in an application as to the goods or services on which a mark has been used does not rise to the level of fraud where an applicant amends the application prior to publication.
    • Hurley International LLC v. Paul and Joanne Volta, Opposition No. 91158304, (TTAB 2007).
      • FOOTENOTE 5 "We note, however, that a misstatement in an application as to the goods or services on which a mark has been used does not rise to the level of fraud where an applicant amends the application prior to publication. See Universal Overall Co. v. Stonecutter Mills Corp., 154 USPQ 104 (CCPA 1967)."
  • The inquiry is not into the applicant's subjective intent, but the objective manifestations of that intent.
    • Hachette Filipacchi Presse v. Elle Belle, LLC, Cancellation No. 92042991, (TTAB 2007).
      • As the Board determined in Medinol, "the appropriate inquiry is … not into the registrant's subjective intent, but rather into the objective manifestations of that intent." 67 USPQ2d at 1209.
    • Sinclair Oil Corporation v. Sumatra Kendrick, Opposition No. 91152940, (TTAB 2007).
      • As the Board determined in Medinol, "the appropriate inquiry is ... not into the registrant's subjective intent, but rather into the objective manifestations of that intent." Medinol Ltd. v. Neuro Vasx, Inc., supra at 1209.
        As the Board determined in Medinol, supra at 1209, "the appropriate inquiry is…not into the registrant's subjective intent, but rather into the objective manifestations of that intent." In Medinol, supra at 1209-1210, the Board concluded that the facts justified a finding of fraud:
    • Hurley International LLC v. Paul and Joanne Volta, Opposition No. 91158304, (TTAB 2007).
      • "The undisputed facts in this case clearly establish that respondent knew or should have known at the time it submitted its statement of use that the mark was not in use on all of the goods. Neither the identification of goods nor the statement of use itself was lengthy, highly technical, or otherwise confusing, and the President/CEO who signed the document was clearly in a position to know (or to inquire) as to the truth of the statements therein."
    • Hurley International LLC v. Paul and Joanne Volta, Opposition No. 91158304, (TTAB 2007).
      • It was unreasonable for them to believe, however "honest" such a belief, that the term "use in commerce" on a trademark application in the United States meant anything other than use of the mark in commerce in or with the United States, or even that use in commerce in Australia was the legal equivalent of use in commerce in the United States.
  • Proof of specific intent is not required, instead, the inquiry is whether the applicant knew or should have known of the falsity of the statement.
    • Hachette Filipacchi Presse v. Elle Belle, LLC, Cancellation No. 92042991, (TTAB 2007).
      • That Mr. Singh may have been unaware that the statement in the application alleged use as to all the listed goods, rather than use as to some and intent to use as to others, does not change our finding of fraud herein. Nor does the fact that English is not Mr. Singh's native language and he apparently has continuing difficulty with the language. The language contained in the subject application is clear and unambiguous. The wording "applicant has adopted and is using the trademark shown" which precedes the listing of goods is simple and straightforward. It is well established that in inter partes proceedings "proof of specific intent 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." Medinol, supra 1209 (quoting General Car and Truck, 17 USPQ2d at 1400-1401). See also First International Services Corp., supra, 5 USPQ2d at 1636 ("we recognize that it is difficult, if not impossible, to prove what occurs in a person's mind, and that intent must often be inferred from the circumstances and related statement made by that person. Otherwise, all claims of fraud could easily be defeated by the simple statement, 'I had no intent to do so.' The analysis must be whether the person knew or should have known of the falsity of the statement.")
    • Hachette Filipacchi Presse v. Elle Belle, LLC, Cancellation No. 92042991, (TTAB 2007).
      • In Medinol, the Board concluded that the facts justified a finding of fraud:
        "The undisputed facts in this case clearly establish that respondent knew or should have known at the time it submitted its statement of use that the mark was not in use on all of the goods. Neither the identification of goods nor the statement of use itself was lengthy, highly technical, or otherwise confusing, and the President/CEO who signed the document was clearly in a position to know (or to inquire) as to the truth of the statements therein." Id. at 1209-10.
    • Hachette Filipacchi Presse v. Elle Belle, LLC, Cancellation No. 92042991, (TTAB 2007).
      • Respondent's president's misunderstanding in the case before us does not now shield respondent from our finding that it knew or should have known that a representation of fact in its application was false. Mr. Singh was obligated to confirm the meaning and accuracy of the statements contained in the application before signing the declaration and prior to submission to the USPTO. "The obligation which the Lanham Act imposes on an applicant is that he will not make knowingly inaccurate or knowingly misleading statements in the verified declaration forming a part of the application for registration." Bart Schwartz International Textiles, Ltd. v. Federal Trade Commission, 289 F.2d 665, 669, 129 USPQ 258, 260 (CCPA 1961) (emphasis in original).
    • Sinclair Oil Corporation v. Sumatra Kendrick, Opposition No. 91152940, (TTAB 2007).
      • In Board inter partes proceedings, "proof of specific intent 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 Systems Inc. v. General Rent-A-Car Inc., 17 USPQ2d 1398, 1400-01 (S.D. Fla. 1990), aff'g General Rent-A-Car Inc. v. General Leaseways, Inc., Canc. No. 14,870 (TTAB May 2, 1988) (intent of the signatories not material to question of fraud).
  • Allowing registrants to be careless in their statements of use would result in registrations improperly accorded legal presumptions in connection with goods on which the mark is not used.
    • Standard Knitting, Ltd. v. Toyota Jidosha Kabushiki Kaisha, Opposition No. 91116242, (TTAB 2006).
      • The specific or actual intent of Mr. Wang and Mr. Yarnell is not material to the question of fraud. As stated in General Car and Truck Leasing Systems, Inc. v. General Rent-A-Car Inc., 17 USPQ2d 1398, 1400 (S.D. Fla. 1990), "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."14 See also Medinol, supra. FOOTENOTE 14 "It is important to note that the United States Patent and Trademark Office relies on the thoroughness, accuracy and honesty of each applicant. In general, the Office does not inquire as to the use of the mark on each good listed in a single class and only requires specimens of use as to one of the listed goods, relying on applicant's declaration with regard to use on the other listed goods. TMEP Sections 806.01(a) and 904.01(a) (4th ed. 2005). Allowing registrants to be careless in their statements of use would result in registrations improperly accorded legal presumptions in connection with goods on which the mark is not used."
    • Hachette Filipacchi Presse v. Elle Belle, LLC, Cancellation No. 92042991, (TTAB 2007).
      • Proof of specific intent is not required; only that applicant made a false material representation that the applicant or registrant knew or should have known was false.Therefore, as indicated supra, an applicant or registrant may not make a statement he/she knew or should have known was false or misleading. Medinol, supra at 1209.
    • Hurley International LLC v. Paul and Joanne Volta, Opposition No. 91158304, (TTAB 2007).
      • The fact that applicants allegedly misunderstood a clear and unambiguous requirement for an application based on use, were not represented by legal counsel, and were suffering health problems does not change our finding of fraud herein. It is well established that in inter partes proceedings "proof of specific intent 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, 17 USPQ2d at 1400-1401 (intent of the signatories not material to question of fraud).
    • Sinclair Oil Corporation v. Sumatra Kendrick, Opposition No. 91152940, (TTAB 2007).
      • In Medinol, the Board concluded that the facts justified a finding of fraud: "The undisputed facts in this case clearly establish that respondent knew or should have known at the time it submitted its statement of use that the mark was not in use on all of the goods. Neither the identification of goods nor the statement of use itself was lengthy, highly technical, or otherwise confusing, and the President/CEO who signed the document was clearly in a position to know (or to inquire) as to the truth of the statements therein." Id. at 1209-1210.
  • Mere allegations in the notice of opposition are insufficient to set forth a claim that applicant committed fraud by making false averments in the declaration is legally insufficient to establish fraud.
    • Qualcomm Incorporated v. FLO Corporation, Opposition No. 91182244, (TTAB 2010).
      • As an additional matter, opposer alleges in paragraph 9 of the notice of opposition that applicant "knew or should have known" of opposer's prior use and registration of its pleaded marks and "therefore could not have formed the requisite good faith belief that [a]pplicant is the owner of the mark sought to be registered, and that no other person, firm, corporation or association has the right to use said mark in commerce." To the extent that opposer intends to set forth a claim in this paragraph that applicant committed fraud by making false averments in the declaration in support of its involved application, such claim is legally insufficient.
  • Since intent is a required element to a fraud claim, allegations that a party made material representations of fact that it "knew or should have known" were false or misleading are insufficient.
    • Qualcomm Incorporated v. FLO Corporation, Opposition No. 91182244, (TTAB 2010).
      • Because intent is a required element to be pleaded for a claim of fraud, allegations that a party made material representations of fact that it "knew or should have known" were false or misleading are insufficient. See id.
  • Fraud will not lie if it can be proven that the statement, though false, was made with a reasonable and honest belief that it was true.
    • Standard Knitting, Ltd. v. Toyota Jidosha Kabushiki Kaisha, Opposition No. 91116242, (TTAB 2006).
      • Furthermore, fraud will not lie if it can be proven that the statement, though false, was made with a reasonable and honest belief that it was true. See Woodstock's Enterprises Inc. (California) v. Woodstock's Enterprises Inc. (Oregon), 43 USPQ2d 1440 (TTAB 1997).
  • Inaccurate information regarding claimed dates of first use does not, by itself, constitute fraud.
    • L. & J.G. Stickley, Inc. v. Ronald C. Cosser, Cancellation No. 92040202, (TTAB 2007).
      • FOOTNOTE 17 "We point out that inaccurate information regarding claimed dates of first use does not, by itself, constitute fraud. Western Worldwide Enterprises Group Inc. v. Qinqdao Brewery, 17 USPQ2d 1137, 1141 (TTAB 1990) ("The Board repeatedly has held that the fact that a party has set forth an erroneous date of first use does not constitute fraud unless, inter alia, there was no valid use of the mark until after the filing of the [Section 1(a)] application")."
  • If the mark was in current use, then the first use, even if false is not fraud.
    • Standard Knitting, Ltd. v. Toyota Jidosha Kabushiki Kaisha, Opposition No. 91116242, (TTAB 2006).
      • If the mark was in current use, then the first use, even if false is not fraud. See Colt Industries Operating Corp. v. Olivetti Controllo Numerico S.p.A., 221 USPQ 73, 76 (TTAB 1983) ("The Examining Attorney gives no consideration to alleged dates of first use in determining whether conflicting marks should be published for opposition.").
  • A misunderstanding on the part of an attorney does not necessarily preclude a finding of fraud.
    • Hachette Filipacchi Presse v. Elle Belle, LLC, Cancellation No. 92042991, (TTAB 2007).
      • Nor does the misunderstanding on the part of respondent's attorney preclude our finding of fraud. Inasmuch as counsel represented respondent during the application process, respondent and its attorney shared the duty to ensure the accuracy of the application and the truth of its statements. See Smith International, supra, 209 USPQ at 1047 ("The error was … on the part of counsel or Smith in drawing up the document as such and on the part of the affiant in signing it. Even if the affidavit was prepared by its attorney, Smith must be held accountable for any false or misleading statements made therein.") See also Cooper, Lunsford, McCarthy and Ropski, "Fraud in the Trademark Office: A TMR Panel" 74 Trademark Reporter 50, 57-58 (Jan./Feb. 1984) (The client and the attorney "share the duty" to avoid fraud; the attorney must advise the client to tell the truth; the client must be candid; the attorney must seek facts supporting or possibly controverting application averments; and the attorney must be satisfied that the application is accurate and is supported by prevailing law.)
    • Hachette Filipacchi Presse v. Elle Belle, LLC, Cancellation No. 92042991, (TTAB 2007).
      • In this instance, had respondent's counsel ensured that he understood what his client was telling him and reviewed the application with his client prior to obtaining the necessary signed declaration, the situation herein could have been prevented.
  • As fraud is the making of a false, material misrepresentation of fact to the USPTO, there is no need to determine whether the activities relied upon by applicant are sufficient to establish the alleged misrepresentation of fact.
    • Maids to Order of Ohio, Inc. v. Maid-to-Order, Inc., Cancellation No. 92040571, (TTAB 2006).
      • However, as noted previously, fraud occurs when an applicant or later, registrant knowingly makes false, material misrepresentations of fact to the USPTO. Thus, in determining whether MTO procured and maintained its registration fraudulently, we need not reach the question of whether the activities relied on by MTO are sufficient to establish that it rendered cleaning services in interstate commerce. See Pennwalt Corporation v. Sentry Chemical Company, 219 USPQ 542, 550 (TTAB 1983). ["In determining the fraud issue we need not consider whether the interstate shipment to Good Housekeeping was or was not sufficient for use in commerce within the meaning of the Trademark Act to support a claim of first use for purposes of registration, and we do not decide that issue. We need only determine whether Pennwalt's reliance on this sale in its application for registration constituted an intentional misrepresentation or withholding of a fact material to the examination of the application for registration."].
  • However, the facts underlying the alleged misrepresentation of fact do serve to establish whether applicant had a good faith belief as to the alleged misrepresentation of fact.
    • Maids to Order of Ohio, Inc. v. Maid-to-Order, Inc., Cancellation No. 92040571, (TTAB 2006).
      • While these activities are not, in any way, conclusive on the question of whether MTO has in fact used the mark MAID TO ORDER in interstate commerce, they do serve to establish that Ms. Kern had a good faith belief that MTO had used/was using the mark MAID TO ORDER in interstate commerce at the time of filing the application, the Section 8 declaration, and the application for renewal. This belief is sufficient to negate an inference of fraud upon the USPTO in obtaining and maintaining the registration. Cf. Global Machine GmbH v. Global Banking Systems, Inc., 227 USPQ 862 (TTAB 1985) [U.S. distributor of foreign-made goods who falsely represented to USPTO examiner that foreign manufacturer was not the owner of the mark was found guilty of fraud].
  • Voiding an application is an appropriate remedy when the pleaded ground either is fraud, or that the applicant has not used the applied for mark on any of the goods or services identified in the application prior to the filing of the application.
    • Grand Canyon West Ranch, LLC v. Hualapai Tribe, Opposition No. 91162008, (TTAB 2006).
      • The case law is clear that holding an application to be void is an appropriate remedy when the pleaded ground either is fraud,2 or that the applicant has not used the applied for mark on any of the goods or services identified in the application prior to the filing of the application.3

        FOOTNOTE 2 "Medinol Ltd. v. Neuro Vasx Inc., 67 USPQ2d 1205 (TTAB 2003)."

        FOOTNOTE 3 "Laboratories du Dr. N.G. Payot Estalissement v. Southwestern Classics Collection Ltd., 3 USPQ2d 1600 (TTAB 1987); and CPC International Inc. v. Skippy Inc., 3 USPQ2d 1456, 1460 (TTAB 1987)."

  • There are obvious distinctions between a claim of fraud and a claim of nonuse of a mark.
    • Grand Canyon West Ranch, LLC v. Hualapai Tribe, Opposition No. 91162008, (TTAB 2006).
      • There are obvious distinctions between a claim of fraud and a claim of nonuse of a mark for certain of the goods or services identified in the application.
  • A defendant's intent is not an element of a claim that a mark was not used on certain of the identified goods or services, nor is an enhanced standard of proof required.
    • Grand Canyon West Ranch, LLC v. Hualapai Tribe, Opposition No. 91162008, (TTAB 2006).
      • In contrast, a defendant's intent is not an element of a claim that a mark was not used on certain of the identified goods or services, nor is an enhanced standard of proof required.
  • It is inappropriate to treat applicant's nonuse of its mark on some of the identified services in the same manner in which we would treat an applicant's complete failure to make use of its mark before filing the application on any of its identified services.
    • Grand Canyon West Ranch, LLC v. Hualapai Tribe, Opposition No. 91162008, (TTAB 2006).
      • Nor is it appropriate to treat applicant's nonuse of its mark on some of the identified services in the same manner in which we would treat an applicant's complete failure to make use of its mark before filing the application on any of its identified services.
  • If fraud is found as to even one of the goods listed in a single class registration, then the entire registration is subject to cancellation.
    • Turbo Sportswear, Inc. v. Marmot Mountain Ltd., Opposition No. 91157260, (TTAB 2005).
      • Opposer is advised that if applicant is able to establish the elements of fraud even as to one of the goods listed in opposer's single-class registration, the entire registration is subject to cancellation.
  • Fraud cannot be cured merely by deleting from the registration those goods on which the mark was not used at the time of the signing of a use-based application or a Section 8 affidavit.
    • Standard Knitting, Ltd. v. Toyota Jidosha Kabushiki Kaisha, Opposition No. 91116242, (TTAB 2006).
      • We find that opposer committed fraud on the USPTO in procuring each of the three registrations. Accordingly the registrations will be cancelled in their entireties. Fraud cannot be cured by the deletion of goods from the registrations. See Medinol, supra.
    • Turbo Sportswear, Inc. v. Marmot Mountain Ltd., Opposition No. 91157260, (TTAB 2005).
      • Fraud cannot be cured merely by deleting from the registration those goods on which the mark was not used at the time of the signing of a use-based application or a Section 8 affidavit. Thus, applicant's proposed counterclaims are not futile.
  • Deletion of goods upon which the mark has not yet been used does not remedy an alleged fraud upon the USPTO.
    • Hurley International LLC v. Paul and Joanne Volta, Opposition No. 91158304, (TTAB 2007).
      • In considering opposer's claim of fraud regarding applicants' submission of a substitute specimen that was not used in U.S. commerce at any point, let alone prior to the April 6, 2002 filing date of the subject application, we similarly find that statements regarding specimens submitted in support of an application are certainly material to issuance of a registration. See for example, Torres, supra at 1485 (court found it material that specimen submitted for Section 9 renewal application was not currently in use and cancelled the registration). A registration filed under Section 1 will not be granted unless and until applicant files a verified statement, together with specimens, that it has used the mark in commerce. See Trademark Rules 2.56(a) and 2.59(a).
    • Hurley International LLC v. Paul and Joanne Volta, Opposition No. 91158304, (TTAB 2007).
      • Although applicants could have originally based their application on their Australian registration under Section 44(e),8 the proposed amendment does not serve to cure a fraud that was committed. See Medinol, supra at 1208 (deletion of goods upon which the mark has not yet been used does not remedy an alleged fraud upon the Office). In view of the above finding of fraud, we find that applicants' motion to amend is moot.
  • It is irrelevant that the mark would be granted registration even if applicant had not included the misrepresentation that the mark was in use on an additional class of goods.
    • Hachette Filipacchi Presse v. Elle Belle, LLC, Cancellation No. 92042991, (TTAB 2007).
      • It is irrelevant that the mark would be granted registration even if applicant had not included the misrepresentation that the mark was in use on an additional class of goods. Similarly, in this case there is no question that the application for registration under Section 1(a) of the Trademark Act would have been refused but for respondent's misrepresentation regarding its use of its mark on all the identified goods in the application. Respondent's contention that a registration would have issued nonetheless if the application listed only the limited description of women's clothing is irrelevant to our discussion. In this instance, the law is clear that an applicant may not claim a Section 1(a) filing basis unless the mark was in use in commerce on or in connection with all the goods or services covered by the Section 1(a) basis as of the application filing date. 37 C.F.R. Section 2.34(a)(1)(i). See, e.g., First International Services Corp., supra, 5 USPQ2d at 1636.
  • A material misrepresentation of fact with regard to use of a mark on particular goods occurs where the applicant signs that oath at the conclusion of a trademark application.
    • Hachette Filipacchi Presse v. Elle Belle, LLC, Cancellation No. 92042991, (TTAB 2007).
      • Respondent signed the oath at the conclusion of the application under penalty of "fine or imprisonment, or both…that…willful false statements may jeopardize the validity of the application or any resulting registration…." Thus, as in Medinol, a material misrepresentation of fact with regard to use of the mark on particular goods was made and sworn to by the mark's owner(s) and that statement was relied upon by the USPTO in determining respondent's rights to the registration.
  • A trademark applicant has no duty to investigate potential conflicting uses that might be found through a trademark search, and therefore there is no duty to investigate specific information such as when a third party may have started using a mark.
    • Maids to Order of Ohio, Inc. v. Maid-to-Order, Inc., Cancellation No. 92040571, (TTAB 2006).
      • In this regard, we note that a trademark applicant has no duty to investigate potential conflicting uses that might be found through a trademark search, and therefore there is no duty to investigate specific information such as when a third party may have started using a mark. See e.g. Money Store v. Harriscorp Finance, Inc., 689 F.2d 666, 216 USPQ 11 (7th Cir. 1982) [an applicant has no duty to investigate and report to the USPTO all other possible users of the same or similar mark].
  • Even if a party is using a mark in a limited geographical area, such use must be disclosed if the applicant knows that that party has rights.
    • Maids to Order of Ohio, Inc. v. Maid-to-Order, Inc., Cancellation No. 92040571, (TTAB 2006).
      • As noted above, Mr. Jefferys' defense to the claim of fraud is based on his view that MTO was not using the MAID TO ORDER mark in connection with cleaning services in interstate commerce. However, Mr. Jefferys' interpretation of the law in this respect is incorrect. Even if a party is using a mark in a limited geographical area, such use must be disclosed if the applicant knows that that party has rights. The question then is what exactly did Mr. Jefferys know concerning MTO's rights in the MAID TO ORDER mark.
  • Failure of a party filing an application to disclose the existence of a prior registration to the USPTO is not fraud.
    • Maids to Order of Ohio, Inc. v. Maid-to-Order, Inc., Cancellation No. 92040571, (TTAB 2006).
      • First, we note that this Board has held that the failure of a party filing an application to disclose the existence of a prior registration to the USPTO is not fraud. William Grant & Sons, Inc. v. National Distillers and Chemical Corporation, 173 USPQ 813 (TTAB 1972)[counterclaim did not state a cause of action since, even if opposer's predecessor (at the time of filing application for registration) knew or should have known of prior registration of same mark as instant applicant now seeks to register, predecessor did not act fraudulently since such prior registration was known or should have been known to the examiner and, hence, predecessor's statement that no other party had right to use mark was not intended to mislead examiner].
  • An amendment to correct the description of goods during a cancellation proceeding does not cure or remove fraud as an issue before the TTAB.
    • Hachette Filipacchi Presse v. Elle Belle, LLC, Cancellation No. 92042991, (TTAB 2007).
      • Additionally, a subsequent attempt by respondent to eliminate the goods on which its mark has never been used does not change our decision in this matter. On June 8, 2006, more than a month after petitioner filed its motion for summary judgment, respondent filed an amendment with the Post Registration section of the USPTO to limit the identification of goods so that it lists only the women's clothing on which it currently uses its mark.1 On August 29, 2006, the Post Registration section entered the amendment. Where a registration is involved in a proceeding before the Board, it is the Board that has jurisdiction to determine the propriety of any proposed amendments to the registration. See Trademark Rule 2.133(a) and TBMP Section 514.01 (2d ed. rev. 2004). Thus, the amendment should not have been filed with the Post Registration section, and the fact that the Post Registration section mistakenly acted on the amendment does not preempt the Board's authority to determine the issue of fraud with respect to the original identification of the goods. Under the circumstances, the amendment will be given no effect. Nevertheless, we note that respondent's amendment would not serve to cure the fraud that was committed. See Medinol, supra at 1208 (deletion of goods upon which the mark has not yet been used does not remedy fraud upon the Office).2

        FOOTNOTE 2 "We note that respondent's amendment was filed after the commencement of this cancellation proceeding. Whether an amendment to correct the description of goods that is submitted before a cancellation proceeding is filed would cure or remove fraud as an issue, is not currently before us."

  • Fraud in obtaining a renewal of a registration amounts to fraud in obtaining a registration.
    • Paris Glove of Canada, Ltd. v. SBC/Sporto Corp., Cancellation No. 92044132, (TTAB 2007).
      • Fraud in obtaining a renewal of a registration amounts to fraud in obtaining a registration. See Torres v. Cantine Torresella S.r.L., 808 F.2d. 46, 1 USPQ2d 1483 (Fed. Cir. 1986). Fraud in obtaining a trademark registration occurs "when an applicant knowingly makes false, material representations of fact in connection with his application." Id. "If a registrant files a verified renewal application stating that its registered mark is currently in use in interstate commerce and that the label attached to the application shows the mark as currently used when, in fact, he knows or should know that he is not using the mark as registered and that the label attached to the registration is not currently in use, he has knowingly attempted to mislead the PTO." Id. (Emphasis added.) The Court in Torres, citing In re Holland, 737 F.2d 1015, 1019, 222 USPQ 273 (Fed. Cir. 1984), recognized that "[i]t is the practice of the office to allow renewal on the basis of a label which presents the mark in a somewhat different form from the form in which the mark is registered if the specimen does not show a material alteration of the mark as registered."
    • Paris Glove of Canada, Ltd. v. SBC/Sporto Corp., Cancellation No. 92044132, (TTAB 2007).
      • Here, no genuine issue of material fact exists that when respondent filed its combined §§8 and 9 declaration it submitted the duckman specimen with the semicircular display of the term AQUASTOP. Nor is there a genuine issue that respondent was using the mark in the form shown in the duckman specimen at that time. The Office reviewed the submissions and accepted the declaration. Thus, there is no genuine issue that respondent truthfully apprised the Office of the manner of use of its mark when it filed its declaration, and nothing was concealed or withheld from the Office. Petitioner has not shown that there are any issues of material fact in dispute with respect to respondent's intent and as to whether respondent's activities constituted use of the registered mark. Because the statements made by respondent in its combined declaration were truthful, i.e., that it was using the mark as shown in the specimen submitted with the declaration, respondent's intent in making the statements is not material. As for the adequacy of the specimen to demonstrate use of the registered mark, that does not go to the issue of fraud. At most, it can go to the issue of abandonment, but as discussed above, because we find that the semicircular form is not a material alteration of the rectangular form, there has been no abandonment of the mark. Accordingly, we find that there are no genuine issues of material fact with respect to the ground of fraud and that, as a matter of law, respondent did not commit fraud in maintaining its registration.
  • As fraud only relates to the acquisition of the registrations, opposer is still entitled to rely on its common law rights in asserting its claim of likelihood of confusion in the opposition.
    • Standard Knitting, Ltd. v. Toyota Jidosha Kabushiki Kaisha, Opposition No. 91116242, (TTAB 2006).
      • As fraud only relates to the acquisition of the registrations, opposer is still entitled to rely on its common law rights in asserting its claim of likelihood of confusion in the opposition. See Volkswagenwerk AG v. Wheeler, 814 F.2d 812, 2 USPQ2d 1264 (1st Cir. 1987).
  • The affirmative defense of laches in unavailable against a claim of fraud.
    • Maids to Order of Ohio, Inc. v. Maid-to-Order, Inc., Cancellation No. 92040571, (TTAB 2006).
      • However, in this case, it would be futile to treat the issue of laches as though it were asserted as an affirmative defense in MTO's answer because laches is unavailable against a claim of fraud. Bausch & Lomb, Inc. v. Leupold & Stevens Inc., 1 USPQ2d 1497, 1499 (TTAB 1986).
  • The reason laches is unavailable is because it is within the public interest to have registrations which are void ab initio stricken from the register and that this interest or concern cannot be waived by the inaction of any single person or concern no matter how long the delay persists.
    • Maids to Order of Ohio, Inc. v. Maid-to-Order, Inc., Cancellation No. 92040571, (TTAB 2006).
      • The reason this equitable defense is not available is that "it is within the public interest to have registrations which are void ab initio stricken from the register and that this interest or concern cannot be waived by the inaction of any single person or concern no matter how long the delay persists." W. D. Byron & Sons, Inc. v. Stein Bros. Mfg. Co., 146 USPQ 313, 316 (TTAB 1965), aff'd 377 F.2d 1001, 153 USPQ 749 (CCPA 1967). Thus, MTO may not raise the affirmative defense of laches and we have given no consideration to the parties' arguments with respect to this defense in their briefs.
  • The affirmative defense of unclean hands is unavailable against a claim of fraud.
    • Maids to Order of Ohio, Inc. v. Maid-to-Order, Inc., Cancellation No. 92040571, (TTAB 2006).
      • Moreover, since MTO did not pursue the affirmative defense of unclean hands and, in any event, this defense is also unavailable against a claim of fraud (see W.D. Byron & Sons, supra), we have given it no consideration.
  • Case Finding: In the absence of a fraud claim, an applicant who bases its application on Section 1(a) (use in commerce) but who did not use the mark on some or all of the goods or services identified in the application may "cure" this problem by amending its basis to Section 1(b) (intent to use).
    • Grand Canyon West Ranch, LLC v. Hualapai Tribe, Opposition No. 91162008, (TTAB 2006).
      • It is clear that an applicant cannot obtain a registration under Section 1 of the Trademark Act for goods or services upon which it has not used the mark. 15 U.S.C. § 1051.
    • Grand Canyon West Ranch, LLC v. Hualapai Tribe, Opposition No. 91162008, (TTAB 2006).
      • Prior to the Trademark Law Revision Act of 1988 (TLRA), Public Law 100- 667, 102 Stat. 3935, which permitted applications to be filed on the basis of an applicant's bona fide intention to use the mark in commerce (see Section 1(b) of the Trademark Act), an application would be deemed void ab initio if the applicant had made no use of the mark in commerce. See, e.g., Intermed Communications, Inc. v. Chaney, 197 USPQ 501 (TTAB 1977).
    • Grand Canyon West Ranch, LLC v. Hualapai Tribe, Opposition No. 91162008, (TTAB 2006).
      • Even at that time, however, an application was not deemed void ab initio if the applicant had made use on some, but not all, of the goods or services. See, e.g., Rogers v. Fields Plastics & Chemicals, supra.
    • Grand Canyon West Ranch, LLC v. Hualapai Tribe, Opposition No. 91162008, (TTAB 2006).
      • Because there is a clear distinction between the situations in which an applicant has committed fraud, or has not used the mark on any of the goods or services identified in its application, and the present situation, in which opposer claims only that applicant did not use its mark in connection with some of the services identified in its application as of the filing of the application, we believe that the remedy for the two former claims is inappropriate in the present situation.
    • Grand Canyon West Ranch, LLC v. Hualapai Tribe, Opposition No. 91162008, (TTAB 2006).
      • Moreover, changes in the Trademark Statute provide a policy justification for our position that an application should not be treated as void as long as the mark was used on some of the identified goods or services at the time the application was filed. Effective October 30, 1999, an applicant who files under Section 1(a) of the Trademark Act may seek to amend its application to substitute Section 1(b) as its filing basis and maintain its original filing date. See Trademark Law Treaty Implementation Act of 1998 (TLTIA), Pub. L. No. 105-330, 112 Stat. 3064. In Leeds Technologies Ltd. v. Topaz Communications Ltd., 65 USPQ2d 1303 (TTAB 2002), the Board extended the rationale behind the TLTIA amendment to Board proceedings to permit post-publication amendments to the filing basis of an application.
    • Grand Canyon West Ranch, LLC v. Hualapai Tribe, Opposition No. 91162008, (TTAB 2006).
      • Therefore, in the absence of a fraud claim, an applicant who bases its application on Section 1(a) (use in commerce) but who did not use the mark on some or all of the goods or services identified in the application may "cure" this problem by amending its basis to Section 1(b) (intent to use).
  • Case Finding: Fraud was found where applicant obtained a registered mark based on its use on stents, but never used the mark on those goods.
    • Sinclair Oil Corporation v. Sumatra Kendrick, Opposition No. 91152940, (TTAB 2007).
      • This case is similar to Medinol Ltd. v. Neuro Vasx, Inc., 67 USPQ2d 1205 (TTAB 2003). In Medinol, a trademark application was filed, the mark was published, a statement of use was submitted, and a registration issued for "medical devices, namely, neurological stents and catheters." In response to a petition for cancellation, registrant admitted in its answer that the mark was not used on stents. The Board stated as follows: "The fraud alleged by petitioner is that respondent knowingly made a material representation to the USPTO in order to obtain registration of its trademark for the identified goods. There is no question that the statement of use would not have been accepted nor would registration have issued but for respondent's misrepresentation, since the USPTO will not issue a registration covering goods upon which the mark has not been used. (cites omitted)." Id. at 1208.
  • Case Finding: In the absence of clear and convincing evidence that applicant acted in bad faith, we conclude, on this record, that applicant did not commit fraud.
    • American Flange & Manufacturing Co., Inc. v. Rieke Corporation, Opposition No. 91153479, (TTAB 2005).
      • Here we do not have that kind of clarity. On the contrary, we have genuine ambiguity. First with regard to applicant's alleged failure to provide the specifications, as applicant notes, the European specifications are not relevant here. It is also questionable, as applicant argues, as to whether the defunct U.S. specifications were within the scope of the Examining Attorney's request or otherwise relevant. As to the consumer statements and the failure to mention Allen-Stevens or Contech, applicant has argued at length as to why those uses should not be considered. Although we have generally rejected those arguments, we believe applicant presented the arguments in good faith. Thus, we find insufficient evidence that applicant had the intent required to establish fraud. In the absence of clear and convincing evidence that applicant acted in bad faith, we conclude, on this record, that applicant did not commit fraud.
  • Case Finding: Applicant's misunderstandings, lack of legal representation, and health problems do not change the finding of fraud.
    • Hurley International LLC v. Paul and Joanne Volta, Opposition No. 91158304, (TTAB 2007).
      • The fact that applicants allegedly misunderstood a clear and unambiguous requirement for an application based on use, were not represented by legal counsel, and were suffering health problems does not change our finding of fraud herein. It is well established that in inter partes proceedings "proof of specific intent 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, 17 USPQ2d at 1400-1401 (intent of the signatories not material to question of fraud).
  • Case Finding: Fraud not found where the error in identifying the goods and services appeared to be a mistake that resulted from respondent's unfamiliarity with the intricacies of trademark law regarding the differences between a service mark for custom furniture making services and a trademark for furniture.
    • L. & J.G. Stickley, Inc. v. Ronald C. Cosser, Cancellation No. 92040202, (TTAB 2007).
      • FOOTNOTE 21 "While we conclude that respondent had not used his mark on furniture as of the application's filing date, we do not find that this was as a result of fraud. Fraud "must be proved to the hilt." Carefirst of Maryland Inc. v. FirstHealth of the Carolinas Inc., 77 USPQ2d 1492, 1502 n.11 (TTAB 2005). Inasmuch as respondent was making and selling furniture and using the mark in association with furniture-related services, this is not a case where we would conclude that respondent disregarded the significance of trademark law. See, e.g., Standard Knitting Ltd. v. Toyota Jidosha Kabushiki Kaisha, 77 USPQ2d 1917, 1927 (TTAB 2006) (In this case, the declarant "could not have honestly believed that ‘use' simply meant that the goods were ‘made.' This is not a situation where opposer misunderstood the significance of the statements it signed. Rather, opposer disregarded the significance"). Instead, this error appears to be a mistake that resulted from respondent's unfamiliarity with the intricacies of trademark law regarding the differences between a service mark for custom furniture making services and a trademark for furniture.
  • Case Finding: Applicant is obligated to inquire when a mark was in use and merely looking at prior representations, relying on attorney representations and asking others were grossly insufficient.
    • Standard Knitting, Ltd. v. Toyota Jidosha Kabushiki Kaisha, Opposition No. 91116242, (TTAB 2006).
      • Considering that Mr. Groumoutis did not personally know whether the marks were in use on children's clothing in the United States, he was obligated to inquire and to the extent he did inquire, by looking at prior registrations, relying on his attorney's representations, and asking Mr. Sacco and/or Mr. Rentz whether the goods were ever made or sold, those inquiries were grossly insufficient.13 See Medinol, supra at 1209 ("Statements made with such degree of solemnity clearly are — or should be — investigated thoroughly prior to signature and submission to the USPTO."). FOOTNOTE 13 "The case of Kingsdown Med. Consultants Ltd. v. Hollister, Inc., 863 F.2d 867, 9 USPQ2d 1384 (Fed. Cir. 1988) cited by opposer is not applicable here. See Minnesota Mining & Manufacturing Co. v. Shurtape Technologies Inc., 62 USPQ2d 1606 (DC Minn 2002) (providing that reliance on patent cases to resolve issues of trademark fraud is misplaced)."
  • Case Finding: Signing a Statement of Use knowing or should have known that the statement was not accurate, and not making an appropriate inquiry, constitutes a "reckless disregard for the truth."
    • Standard Knitting, Ltd. v. Toyota Jidosha Kabushiki Kaisha, Opposition No. 91116242, (TTAB 2006).
      • As to the statement of use, it is clear that Mr. Yarnell had no idea which, if any, of the listed items were being sold in the United States and that when Ms. Schroeder delivered the statement of use to Mr. Yarnell for signature she made no representations as to its accuracy. Mr. Yarnell signed the document stating that TUNDRA SPORT is used on children's clothing, among other items of clothing, when he knew or should have known that the mark was not being used on those goods. Opposer is charged with knowing what it is signing and by failing to make any appropriate inquiry, Mr. Yarnell signed the statement of use with a "reckless disregard for the truth." See Medinol, supra.
  • Case Finding: No finding of fraud concerning material fact related to use of the mark in interstate commerce at the time of filing the application.
    • Maids to Order of Ohio, Inc. v. Maid-to-Order, Inc., Cancellation No. 92040571, (TTAB 2006).
      • In sum, we find that MTO-Ohio has not met its "heavy burden of proof" in showing fraud. W.D. Byron & Sons, Inc., supra. MTO-Ohio's petition to cancel MTO's registration is therefore denied.
  • Case Finding: The oath is worded as to subjective belief of the declarant, thus making it difficult to establish fraud provided the declarant held an honest good faith belief as to the statement.
    • Maids to Order of Ohio, Inc. v. Maid-to-Order, Inc., Cancellation No. 92040571, (TTAB 2006).
      • Further, citing Kemin Industries, Inc. v. Watkins Products, Inc., 192 USPQ 327 (TTAB 1976), Professor McCarthy has pointed out that "[t]he oath is phrased in terms of a subjective belief, such that it is difficult, if not impossible, to prove objective falsity and fraud so long as the affiant or declarant has an honestly held, good faith belief." 5 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition (4th ed. updated March 2006) at Section 31.76 (emphasis in original).
  • Case Finding: In prior decisions, the Board has made a distinction in the remedies for fraud and for nonuse on some, but not all, of the identified goods and/or services.
    • Grand Canyon West Ranch, LLC v. Hualapai Tribe, Opposition No. 91162008, (TTAB 2006).
      • In prior decisions, the Board has made a distinction in the remedies for fraud and for nonuse on some, but not all, of the identified goods and/or services. For example, in Rogers Corp. v. Fields Plastics & Chemicals, Inc., 176 USPQ 280 (TTAB 1972), aff'd, 181 USPQ 169 (CCPA 1974), in which, inter alia, the opposer alleged fraud because "applicant has never used the mark on some of the goods listed in the application," the Board found that the applicant had not committed fraud even though the identification of goods included some proposed, rather than actual, uses of the mark; instead, the Board determined that the applicant should be required to limit its identification of goods to those goods on which there had been use as of the filing date of the application.
    • Grand Canyon West Ranch, LLC v. Hualapai Tribe, Opposition No. 91162008, (TTAB 2006)
      • Similarly, in Medinol v. Neuro Vasx, supra, at 1208 n.9, in which the Board found fraud, the Board stated that, if the finding of fraud were overturned, the registration would have to be amended to delete the goods for which the mark had not been used, thus indicating that, in the absence of fraud, the registration would survive.
  • 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.
    • University Games Corporation v. 20Q.net Inc., Opposition Nos. 91168142 91170668 (TTAB 2008)
      • 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.
    • Zanella Ltd. v. Nordstrom, Inc., Opposition No. 91177858 (TTAB 2009)
      • A party making a fraud claim is under a heavy burden of proof because fraud must be shown by clear and convincing evidence, leaving nothing to speculation, conjecture, or surmise. Any doubt must be resolved against the party making the claim. Smith International, Inc. v. Olin Corp., 209 USPQ (TTAB 1981).
  • Fraud in procuring a trademark registration occurs when an applicant for registration knowingly makes false, material representations of fact in connection with an application to register or, in the case of maintaining a registration, when a registrant makes false, material representations of fact in connection with an affidavit of continued use under Section 8.
    • Zanella Ltd. v. Nordstrom, Inc., Opposition No. 91177858 (TTAB 2009)
      • Fraud in procuring a trademark registration occurs when an applicant for registration knowingly makes false, material representations of fact in connection with an application to register or, in the case of maintaining a registration, when a registrant makes false, material representations of fact in connection with an affidavit of continued use under Section 8. Torres v. Cantine Torresella S.r.l., 808 F.2d 46, 1 USPQ2d 1483, 1484 (Fed. Cir. 1986).
    • Kathleen Hiraga v. Sylvester J. Arena, Cancellation No. 92047976 (TTAB 2009)
      • Fraud in procuring a trademark registration occurs when an applicant knowingly makes false, material representations of fact in connection with the trademark application. The test is whether applicant "knew or should have known" that the challenged statements in the application were false. Torres v. Cantine Torresella S.r.l., 808 F.2d 46, 1 USPQ2d 1483, 1485 (Fed. Cir. 1986); and Mister Leonard Inc. v. Jacques Leonard Couture Inc., 23 USPQ2d 1064, 1065 (TTAB 1992).
    • University Games Corporation v. 20Q.net Inc., Opposition Nos. 91168142 91170668 (TTAB 2008)
      • Fraud in procuring a trademark registration occurs when an applicant for registration knowingly makes false, material representations of fact in connection with an application to register. See Torres v. Cantine Torresella S.r.l., 808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir. 1986); Standard Knitting, Ltd. v. Toyota Jidosha Kabushiki Kaisha, 77 USPQ2d 1917 (TTAB 2006); Medinol Ltd. v. Neuro Vasx, Inc. 67 USPQ2d 1205 (TTAB 2003).
  • Fraud as to one class of a multiple class registration does not subject the entire registration to cancellation.
    • G&W Laboratories, Inc. v. G W Pharma Limited, Opposition No. 91169571 (TTAB 2009)
      • Pharma's contention that fraud as to one class of a multiple class registration subjects the entire registration to cancellation is incorrect. The line of cases to have considered fraud since Medinol has involved single class applications or registrations. These cases have consistently held that fraud as to any goods or services in a single class will lead to a finding that the application or registration is void in the class in which fraud has been committed. See, e.g., Herbaceuticals Inc. v. Xel Herbaceuticals, 86 USPQ2d 1572, 1577 (TTAB 2008) (fraud found as to four of six single class registrations); Hachette Filipacchi Presse v. Elle Belle LLC, 85 USPQ2d 1090, 1095 (TTAB 2007) (fraud found in single class registration); Sinclair Oil Corp. v. Kendrick, 85 USPQ2d 1032, 1037 (TTAB 2007) (fraud found as to services in single class application even after allowance of amendment of application to one based on intent to use); Hurley Int'l LLC v. Volta, 82 USPQ2d 1339, 1344 (TTAB 2007) (fraud found as to non-use for services in single class registration); Standard Knitting Ltd. v. Toyota Jidosha Kabushiki Kaisha, 77 USPQ2d 1917, 1928 (TTAB 2006) (counterclaim petition for cancellation of petitioner's pleaded registrations granted when fraud found as to some goods identified in single class registrations). However, we have not had occasion to consider whether fraud in less than all classes of a multiple-class registration will subject the entire registration to cancellation for fraud.
  • "Materiality" of any false application statement is determined in the context of whether the false statement is critical to the Trademark Examining Attorney's decision to approve a mark for publication.
    • Kathleen Hiraga v. Sylvester J. Arena, Cancellation No. 92047976 (TTAB 2009)
      • "Materiality" of any false application statement is determined in the context of whether the false statement is critical to the Trademark Examining Attorney's decision to approve a mark for publication. Standard Knitting, Ltd. v. Toyota Jidosha Kabushiki Kaisha, 77 USPQ2d 1917, 1926 (TTAB 2006).
  • An applicant for a trademark registration may file for registration in more than one class by filing a single application.
    • G&W Laboratories, Inc. v. G W Pharma Limited, Opposition No. 91169571 (TTAB 2009)
      • An applicant for a trademark registration may file for registration in more than one class by filing a single application. See Trademark Rule 2.86.
  • An application with multiple classes requires, for each class, payment of the application filing fee and submission of dates of use and a specimen of use for each class before the application will proceed to registration.
    • G&W Laboratories, Inc. v. G W Pharma Limited, Opposition No. 91169571 (TTAB 2009)
      • Such an application requires, for each class, payment of the application filing fee and submission of dates of use and a specimen of use for each class before the application will proceed to registration. Id.
  • Any doubt as to the existence of fraud must be resolved against a finding of fraud.
    • Kathleen Hiraga v. Sylvester J. Arena, Cancellation No. 92047976 (TTAB 2009)
      • Any doubt as to the existence of fraud must be resolved against a finding of fraud. Giant Food, Inc. v. Standard Terry Mills, Inc., 229 USPQ 955, 962 (TTAB 1986), and cases cited therein.
  • Any doubt must be resolved against the party making the claim
    • University Games Corporation v. 20Q.net Inc., Opposition Nos. 91168142 91170668 (TTAB 2008)
      • Any doubt must be resolved against the party making the claim. Smith International, Inc. v. Olin Corporation, 209 USPQ 1033 (TTAB 1981).
  • Any doubt must be resolved against the party making the claim.
    • Zanella Ltd. v. Nordstrom, Inc., Opposition No. 91177858 (TTAB 2009)
      • A party making a fraud claim is under a heavy burden of proof because fraud must be shown by clear and convincing evidence, leaving nothing to speculation, conjecture, or surmise. Any doubt must be resolved against the party making the claim. Smith International, Inc. v. Olin Corp., 209 USPQ (TTAB 1981).
  • Case Finding: Opposer's false material misrepresentations made in connection with its application and in connection with the combined Sections 8 and 15 affidavit were fraudulent with respect to Registration No. 1527003.
    • Zanella Ltd. v. Nordstrom, Inc., Opposition No. 91177858 (TTAB 2009)
      • In view thereof, we find that opposer's false material misrepresentations made in connection with its application and in connection with the combined Sections 8 and 15 affidavit were fraudulent with respect to Registration No. 1527003.
  • Case Finding: Petitioner has failed to state a claim for fraud because it has failed to plead particular facts sufficient to establish that respondent knowingly made false statements.
    • Media Online Inc. v. El Clasificado, Inc., Cancellation No. 92047294 (TTAB 2008)
      • We find that petitioner has failed to state a claim for fraud because it has failed to plead particular facts sufficient to establish that respondent knowingly made false statements. As a threshold matter, petitioner's proposed pleading is devoid of any allegations with regard to respondent's scienter. Petitioner's proposed pleading also fails to set forth with particularity the allegedly false statement or statements that purportedly induced the Office to allow registration of respondent's EL CLASIFICADO ONLINE mark. The allegation that respondent currently does not offer the services identified in its registration is insufficient because it lacks details regarding which statement(s) made by respondent before the Office were purportedly false at the time respondent filed its application.
  • Case Finding: There is no question that the registration would not have issued nor the combined Sections 8 and 15 affidavit been respectively accepted and acknowledged but for the material misrepresentation, since the USPTO will not issue a registration or maintain a registration covering goods upon which the mark has not been used.
    • Zanella Ltd. v. Nordstrom, Inc., Opposition No. 91177858 (TTAB 2009)
      • Accordingly, there is no question that the registration would not have issued nor the combined Sections 8 and 15 affidavit been respectively accepted and acknowledged but for the material misrepresentation, since the USPTO will not issue a registration or maintain a registration covering goods upon which the mark has not been used. Medinol Ltd. v. Neuro Vasx Inc., 67 USPQ2d 1205, 1208 (TTAB 2003).
  • Each class of goods or services in a multiple class registration must be considered separately when reviewing the issue of fraud, and judgment on the ground of fraud as to one class does not in itself require cancellation of all classes in a registration.
    • G&W Laboratories, Inc. v. G W Pharma Limited, Opposition No. 91169571 (TTAB 2009)
      • In view thereof, we find that each class of goods or services in a multiple class registration must be considered separately when reviewing the issue of fraud, and judgment on the ground of fraud as to one class does not in itself require cancellation of all classes in a registration.
  • Factual questions involving intent and good faith are particularly unsuited to disposition on summary judgment.
    • University Games Corporation v. 20Q.net Inc., Opposition Nos. 91168142 91170668 (TTAB 2008)
      • As often stated by the Board, factual questions involving intent and good faith are particularly unsuited to disposition on summary judgment. Copelands' Enterprises Inc. v. CNV Inc., 945 F.2d 1563, 20 USPQ2d 1295, 1299 (Fed. Cir. 1991).
  • Fraud in procuring or maintaining a trademark registration occurs when an applicant for registration or a registrant in a declaration of use or renewal application knowingly makes false, material representations of fact in connection with an application to register or in a post-registration filing.
    • Media Online Inc. v. El Clasificado, Inc., Cancellation No. 92047294 (TTAB 2008)
      • Fraud in procuring or maintaining a trademark registration occurs when an applicant for registration or a registrant in a declaration of use or renewal application knowingly makes false, material representations of fact in connection with an application to register or in a post-registration filing. See Torres v. Cantine Torresella S.r.l., 808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir. 1986); Standard Knitting, Ltd. v. Toyota Jidosha Kabushiki Kaisha, 77 USPQ2d 1917 (TTAB 2006); Medinol Ltd. v. Neuro Vasx Inc., 67 USPQ2d 1205 (TTAB 2003).
  • Fraud will not lie if it can be proven that the statement, though false, was made with a reasonable and honest belief that it was true.
    • Kathleen Hiraga v. Sylvester J. Arena, Cancellation No. 92047976 (TTAB 2009)
      • Furthermore, fraud will not lie if it can be proven that the statement, though false, was made with a reasonable and honest belief that it was true. See Woodstock's Enterprises Inc. (California) v. Woodstock's Enterprises Inc. (Oregon), 43 USPQ2d 1440 (TTAB 1997).
  • If the mark was in use in commerce as of the filing date, then the claimed date of first use, even if false, does not constitute fraud because the first use date is not material to the Office's decision to approve a mark for publication.
    • Kathleen Hiraga v. Sylvester J. Arena, Cancellation No. 92047976 (TTAB 2009)
      • Ms. Kathleen Hiraga brings her claim of fraud based upon Sylvester J. Arena's allegedly false statement of his date of first use. However, the critical question in this case is whether the mark was in use in connection with the identified goods as of the filing date of his use-based application. That is, if the mark was in use in commerce as of the filing date, then the claimed date of first use, even if false, does not constitute fraud because the first use date is not material to the Office's decision to approve a mark for publication. Standard Knitting, Ltd., 77 USPQ2d at 1926; Colt Industries Operating Corp. v. Olivetti Controllo Numerico S.p.A., 221 USPQ 73, 76 (TTAB 1983) ["The [Trademark] Examining Attorney gives no consideration to alleged dates of first use in determining whether conflicting marks should be published for opposition."].
  • In all averments of fraud or mistake, the circumstances constituting fraud or mistake shall be stated with particularity. Malice, intent, knowledge, and other condition of mind of a person may be averred generally.
    • Media Online Inc. v. El Clasificado, Inc., Cancellation No. 92047294 (TTAB 2008)
      • "In addition, pursuant to Trademark Rule 2.116(a), the sufficiency of petitioner's pleading of its fraud claim in this case also is governed by Fed. R. Civ. P. 9(b), which provides as follows: ""(b) Fraud, Mistake, Condition of the Mind. In all averments of fraud or mistake, the circumstances constituting fraud or mistake shall be stated with particularity. Malice, intent, knowledge, and other condition of mind of a person may be averred generally."""
  • In Universal Overall the Court found that applicant acted in good faith and held that its misstatement regarding the goods did not constitute fraud because at the suggestion of the examiner, applicant amended its application prior to publication, and the assertion of belief in damage in an opposition, must under the terms of Section 13 of statute, be predicated on the application as published rather than as originally filed.
    • University Games Corporation v. 20Q.net Inc., Opposition Nos. 91168142 91170668 (TTAB 2008)
      • "In Universal Overall, supra, the applicant in that case incorrectly stated that it used its mark on finished clothing. The Court found that applicant acted in good faith and held that: "". . . such misstatement did not constitute fraud because [applicant], at the suggestion of the examiner, amended its application prior to publication to recite fabrics rather than finished clothing, and the assertion of belief in damage in an opposition, must under the terms of [S]ection 13 of statute, be predicated on the application as published rather than as originally filed."" Id. at 985."
  • It is settled that fraud cannot be cured merely by deleting from the registration those goods or services on which the mark was not used at the time of the signing of a use-based application or a Section 8 affidavit.
    • G&W Laboratories, Inc. v. G W Pharma Limited, Opposition No. 91169571 (TTAB 2009)
      • It is settled that fraud cannot be cured merely by deleting from the registration those goods or services on which the mark was not used at the time of the signing of a use-based application or a Section 8 affidavit. Turbo Sportswear v. Marmot Mountain Ltd., 77 USPQ2d 1152, 1155 (TTAB 2005). See also Medinol, 67 USPQ2d at 1208.
  • No justification for treating applications or registrations differently based solely on whether the applicant originally sought single-class registrations or a single, multiple-class one.
    • G&W Laboratories, Inc. v. G W Pharma Limited, Opposition No. 91169571 (TTAB 2009)
      • FOOTNOTE 3 "As a practical matter, holding otherwise would simply provide an incentive against the filing of multiple-class applications. For example, had Labs instead sought and obtained two separate registrations – one in Class 5 and one in Class 35, its Class 5 registration would effectively be insulated from a claim of fraud, even if we held that fraud as to one class taints other classes in the same registration. We see no justification for treating applications or registrations differently based solely on whether the applicant originally sought single-class registrations or a single, multiple-class one.
  • Opposer is charged with knowing what it is signing and failing to make an appropriate inquiry is a reckless disregard for the truth.
    • Zanella Ltd. v. Nordstrom, Inc., Opposition No. 91177858 (TTAB 2009)
      • There is also no dispute and thus no genuine issue of material fact that opposer knew or should have known that it was not using the mark in connection with "mantles, blouses, waistcoats, socks, stockings, ties, scarves, hats, swimwear or underwear." See Standard Knitting Ltd. v. Toyota Jidosha Kabushiki Kaisha, 77 USPQ2d 1917, 1928 (TTAB 2006) ("opposer is charged with knowing what it is signing" and failing to make an appropriate inquiry is a "‘reckless disregard for the truth'").
  • Opposer's action in correcting any false statements prior to any actual or threatened challenge to the registrations creates a rebuttable presumption that opposer did not intend to deceive the Office.
    • Zanella Ltd. v. Nordstrom, Inc., Opposition No. 91177858 (TTAB 2009)
      • We find that opposer's timely proactive corrective action with respect to these registrations raises a genuine issue of material fact regarding whether opposer had the intent to commit fraud. In particular, opposer's action in correcting any false statements prior to any actual or threatened challenge to the registrations creates a rebuttable presumption that opposer did not intend to deceive the Office. See University Games Corp. v. 20Q.net Inc., 87 USPQ2d 1465, 1468 (TTAB 2008).
  • Statements regarding the use of the mark on the identified goods are material to issuance of a registration.
    • Zanella Ltd. v. Nordstrom, Inc., Opposition No. 91177858 (TTAB 2009)
      • Statements regarding the use of the mark on the identified goods are material to issuance of a registration. Herbaceuticals Inc. v. Xel Herbaceuticals Inc., 86 USPQ2d 1572, 1576 (TTAB 2008).
  • The fact that opposer amended its identification of goods during ex parte prosecution constitutes a rebuttable presumption that opposer lacked the willful intent to deceive the Office.
    • University Games Corporation v. 20Q.net Inc., Opposition Nos. 91168142 91170668 (TTAB 2008)
      • "The Board holds, however, that the fact that opposer amended its identification of goods during ex parte prosecution constitutes a rebuttable presumption that opposer lacked the willful intent to deceive the Office. Indeed, the circumstances presented in this case are similar to those contemplated by the Board in Hurley International LLC v. Volta, 82 USPQ2d 1339 (TTAB 2007). In dicta, the Board remarked: ""We note . . . that a misstatement in an application as to the goods or services on which a mark has been used does not rise to the level of fraud where an applicant amends the application prior to publication. See Universal Overall Co. v. Stonecutter Mills Corp., 154 USPQ 104 (CCPA 1967)."" Id. at n.5."
  • The filer of an application with multiple classes is in the same position it would be had it filed several single-class applications instead.
    • G&W Laboratories, Inc. v. G W Pharma Limited, Opposition No. 91169571 (TTAB 2009)
      • As a general matter, the filer of such an application is in the same position it would be had it filed several single-class applications instead. See, e.g., Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1101-02, 192 USPQ 24, 28 (CCPA 1976) (noting combined application is regarded as though it were group of individual applications); In re Bonni Keller Collections Ltd., 6 USPQ2d 1224, 1226 (TTAB 1987)(noting multiple-class application for goods and services is essentially two separate applications combined for convenience of applicant and USPTO); Electro-Coatings, Inc. v. Precision National Corp., 204 USPQ 410, 420 (TTAB 1979)("there are, in law, three applications and three oppositions to be adjudicated, because each class in a multiple class application constitutes a separate case.").
  • The standard of proof for a fraud claim is the rigorous, clear-and-convincing evidence standard, and it is strictly applied.
    • Kathleen Hiraga v. Sylvester J. Arena, Cancellation No. 92047976 (TTAB 2009)
      • Moreover, the standard of proof for a fraud claim is the rigorous, clear-and-convincing evidence standard, and it is strictly applied. Id.; Smith International Inc. v. Olin Corp., 209 USPQ 1033, 1044 (TTAB 1981) ["It thus appears that the very nature of the charge of fraud requires that it be proven ‘to the hilt' with clear and convincing vidence. There is no room for speculation, inference or surmise … "].
  • The test is whether applicant "knew or should have known" that the challenged statements in the application were false.
    • Kathleen Hiraga v. Sylvester J. Arena, Cancellation No. 92047976 (TTAB 2009)
      • Fraud in procuring a trademark registration occurs when an applicant knowingly makes false, material representations of fact in connection with the trademark application. The test is whether applicant "knew or should have known" that the challenged statements in the application were false. Torres v. Cantine Torresella S.r.l., 808 F.2d 46, 1 USPQ2d 1483, 1485 (Fed. Cir. 1986); and Mister Leonard Inc. v. Jacques Leonard Couture Inc., 23 USPQ2d 1064, 1065 (TTAB 1992).
  • The Medinol proposition that only objective intent is required to prove a fraud claim is no longer operative. A plaintiff must prove by clear and convincing evidence that the defendant knowingly made a false statement with the intent to deceive the USPTO
    • DaimlerChrysler Corp. & Chrysler, LLC v. American Motors Corporation, Cancellation No. 92045099 (TTAB 2010)
      • FOOTNOTE 6 "The Medinol proposition that only objective intent is required to prove a fraud claim is no longer operative. The Court of Appeals for the Federal Circuit, our primary reviewing court, issued the Bose decision during the pendency of this motion and made it clear that a plaintiff must prove by clear and convincing evidence that the defendant knowingly made a false statement with the intent to deceive the USPTO. Bose, 91 USPQ2d at 1941."
  • Case Finding: Where petitioner has failed to show that any statements made in respondent's Statement of Use declaration were false, let alone proving this to the hilt, petitioner's claim of fraud fails.
    • Anosh Toufigh v. Persona Parfum, Inc., Cancellation No. 92048305 (TTAB 2010)
      • Petitioner has not submitted any evidence that shows respondent's mark was not in use on its goods on that date. Since petitioner has failed to show that any statements made in respondent's Statement of Use declaration were false, let alone proving this to the hilt, petitioner's claim of fraud fails.2 FOOTNOTE 2 "In addition, although the question of the sufficiency of petitioner's pleading of fraud was not raised, we note that it is not, under the Bose decision, a sufficient pleading. See Asian and Western Classics B.V. v. Selkow, 92 USPQ2 1478 1479 (TTAB 2009)."
  • Fraud in procuring a trademark registration or renewal occurs when an applicant knowingly makes false, material representations of fact in connection with his application.
    • Anosh Toufigh v. Persona Parfum, Inc., Cancellation No. 92048305 (TTAB 2010)
      • The Court in In re Bose Corp., 476 F.3d 1331, 91 USPQ2d 1938, 1939 (Fed. Cir. 2009), set out the relevant standard for proving fraud: "Fraud in procuring a trademark registration or renewal occurs when an applicant knowingly makes false, material representations of fact in connection with his application." Torres v. Cantine Torresella S.r.l., 808 F.2d 46, 48 [1 USPQ2d 1483] (Fed. Cir. 1986). A party seeking cancellation of a trademark registration for fraudulent procurement bears a heavy burden of proof. W.D. Byron & Sons, Inc. v. Stein Bros. Mfg. Co., 377 F.2d 1001, 1004 [153 USPQ 749] (CCPA 1967). Indeed, "the very nature of the charge of fraud requires that it be proven 'to the hilt' with clear and convincing evidence. There is no room for speculation, inference or surmise and, obviously, any doubt must be resolved against the charging party." Smith Int'l, Inc. v. Olin Corp., 209 USPQ 1033, 1044 (TTAB 1981)."
Qualcomm Incorporated v. FLO Corporation, Opposition No. 91182244, (TTAB 2010) Anosh Toufigh v. Persona Parfum, Inc., Cancellation No. 92048305 (TTAB 2010) Prakash Melwani v. Allegiance Corporation, Opposition No. 91190682 (TTAB 2010) Petróleos Mexicanos v. Intermix S.A., Cancellation No. 92052292 (TTAB 2010) DaimlerChrysler Corp. & Chrysler, LLC v. American Motors Corporation, Cancellation No. 92045099 (TTAB 2010) Kathleen Hiraga v. Sylvester J. Arena, Cancellation No. 92047976 (TTAB 2009) G&W Laboratories, Inc. v. G W Pharma Limited, Opposition No. 91169571 (TTAB 2009) Zanella Ltd. v. Nordstrom, Inc., Opposition No. 91177858 (TTAB 2009) Media Online Inc. v. El Clasificado, Inc., Cancellation No. 92047294 (TTAB 2008) University Games Corporation v. 20Q.net Inc., Opposition Nos. 91168142 91170668 (TTAB 2008) Grand Canyon West Ranch, LLC v. Hualapai Tribe, Opposition No. 91162008 (TTAB 2008) Hachette Filipacchi Presse v. Elle Belle, LLC, Cancellation No. 92042991, (TTAB 2007) Hurley International LLC v. Paul and Joanne Volta, Opposition No. 91158304, (TTAB 2007) L. & J.G. Stickley, Inc. v. Ronald C. Cosser, Cancellation No. 92040202, (TTAB 2007) Paris Glove of Canada, Ltd. v. SBC/Sporto Corp., Cancellation No. 92044132, (TTAB 2007) Sinclair Oil Corporation v. Sumatra Kendrick, Opposition No. 91152940, (TTAB 2007) Tri-Star Marketing, LLC v. Nino Franco Spumanti S.R.L., Cancellation No. 92043953, (TTAB 2007) Grand Canyon West Ranch, LLC v. Hualapai Tribe, Opposition No. 91162008, (TTAB 2006) Maids to Order of Ohio, Inc. v. Maid-to-Order, Inc., Cancellation No. 92040571, (TTAB 2006) Standard Knitting, Ltd. v. Toyota Jidosha Kabushiki Kaisha, Opposition No. 91116242, (TTAB 2006) American Flange & Manufacturing Co., Inc. v. Rieke Corporation, Opposition No. 91153479, (TTAB 2005) Grand Total
Medinol Ltd. v. Neuro Vasx Inc., 67 USPQ2d 1205 (TTAB 2003) 1
In re Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir. 2009) 1
Asian and Western Classics B.V. v. Selkow, 92 USPQ2 1478 (TTAB 2009) 2
In re Bose Corp., 476 F.3d 1331, 91 USPQ2d 1938 (Fed. Cir. 2009) 3
Exergen Corp. v. Wal-Mart Stores Inc., 575 F.3d 1312, 91 USPQ2d 1656 (Fed. Cir. 2009) 1
Herbaceuticals Inc. v. Xel Herbaceuticals Inc., 86 USPQ2d 1572 (TTAB 2008) 2
University Games Corp. v. 20Q.net Inc., 87 USPQ2d 1465 (TTAB 2008) 1
Hurley International LLC v. Volta, 82 USPQ2d 1339 (TTAB 2007) 3
Hachette Filipacchi Presse v. Elle Belle LLC, 85 USPQ2d 1090 (TTAB 2007) 2
Sinclair Oil Corp. v. Kendrick, 85 USPQ2d 1032 (TTAB 2007) 2
Standard Knitting, Ltd. v. Toyota Jidosha Kabushiki Kaisha, 77 USPQ2d 1917 (TTAB 2006) 11
Carefirst of Maryland Inc. v. FirstHealth of the Carolinas Inc., 77 USPQ2d 1492 (TTAB 2005) 1
Turbo Sportswear v. Marmot Mountain Ltd., 77 USPQ2d 1152 (TTAB 2005) 1
Medinol Ltd. v. Neuro Vasx Inc., 67 USPQ2d 1205 (TTAB 2003) 11
Leeds Technologies Ltd. v. Topaz Communications Ltd., 65 USPQ2d 1303 (TTAB 2002) 1
Mining & Manufacturing Co. v. Shurtape Technologies Inc., 62 USPQ2d 1606 (DC Minn 2002) 1
Intellimedia Sports Inc. v. Intellimedia Corp., 43 USPQ2d 1203 (TTAB 1997) 1
Woodstock's Enterprises Inc. (California) v. Woodstock's Enterprises Inc. (Oregon), 42 USPQ2d 1440,  (TTAB 1997) 2
Mister Leonard Inc. v. Jacques Leonard Couture Inc., 23 USPQ2d 1064 (TTAB 1992) 5
Copelands' Enterprises Inc. v. CNV Inc., 945 F.2d 1563, 20 USPQ2d 1295 (Fed. Cir. 1991) 1
Western Worldwide Enterprises Group Inc. v. Qinqdao Brewery, 17 USPQ2d 1137 (TTAB 1990) 1
General Car and Truck Leasing Systems Inc. v. General Rent-A-Car Inc., 17 USPQ2d 1398 (S.D. Fla. 1990) 1
First International Services Corp. v. Chuckles Inc., 5 USPQ2d 1628 (TTAB 1988) 6
Kingsdown Med. Consultants Ltd. v. Hollister Inc., 863 F.2d 867, 9 USPQ2d 1384 (Fed. Cir. 1988) 1
General Car and Truck Leasing Systems Inc. v. General Rent-A-Car Inc., 17 USPQ2d 1398 (S.D. Fla. 1990) 3
CPC International Inc. v. Skippy Inc., 3 USPQ2d 1456 (TTAB 1987) 1
In re Bonni Keller Collections Ltd., 6 USPQ2d 1224 (TTAB 1987) 1
Laboratories du Dr. N.G. Payot Estalissement v. Southwestern Classics Collection Ltd., 3 USPQ2d 1600 (TTAB 1987) 1
Volkswagenwerk AG v. Wheeler, 814 F.2d 812, 2 USPQ2d 1264 (1st Cir. 1987) 1
Bausch & Lomb Inc. v. Leupold & Stevens Inc., 1 USPQ2d 1497 (TTAB 1986) 1
Giant Food Inc. v. Standard Terry Mills Inc., 229 USPQ 955 (TTAB 1986) 2
Torres v. Cantine Torresella S.r.l, 808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir. 1986) 14
Global Machine GmbH v. Global Banking Systems Inc., 227 USPQ 862 (TTAB 1985) 1
Global Maschinen GmbH v. Global Banking Systems Inc., 227 USPQ 862, (TTAB 1985) 1
In re Holland, 737 F.2d 1015, 1019, 222 USPQ 273 (Fed. Cir. 1984) 1
Colt Industries Operating Corp. v. Olivetti Controllo Numerico S.p.A., 221 USPQ 73, 76 (TTAB 1983) 2
Pennwalt Corporation v. Sentry Chemical Company, 219 USPQ 542 (TTAB 1983) 1
Money Store v. Harriscorp Finance Inc., 689 F.2d 666, 216 USPQ 11 (7th Cir. 1982) 1
Smith International Inc. v. Olin Corp., 209 USPQ 1033 (TTAB 1981) 11
King Automotive, Inc. v. Speedy Muffler King, Inc., 667 F.2d 1008, 212 USPQ 801 (CCPA 1981) 1
Electro-Coatings, Inc. v. Precision National Corp., 204 USPQ 410 (TTAB 1979) 1
Intermed Communications Inc. v. Chaney, 197 USPQ 501 (TTAB 1977) 1
Federated Foods Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976) 1
Kemin Industries Inc. v. Watkins Products Inc., 192 USPQ 327 (TTAB 1976) 1
Rogers Corp. v. Fields Plastics & Chemicals Inc., 176 USPQ 280 (TTAB 1972), aff'd, 181 USPQ 169 (CCPA 1974) 1
William Grant & Sons Inc. v. National Distillers and Chemical Corporation, 173 USPQ 813 (TTAB 1972) 1
Universal Overall Co. v. Stonecutter Mills Corp., 154 USPQ 104 (CCPA 1967) 2
W. D. Byron & Sons Inc. v. Stein Bros. Mfg. Co., 146 USPQ 313 (TTAB 1965), aff'd 377 F.2d 1001, 153 USPQ 749 (CCPA 1967) 2
Bart Schwartz International Textiles, Ltd. v. Federal Trade Commission, 289 F.2d 665, 129 USPQ 258 (CCPA 1961) 1
Grand Total 2 5 1 2 3 7 10 6 3 7 7 7 7 3 2 8 2 8 10 10 6 116

Sec. 1051. Application for registration; verification

  1. (a) Application for use of trademark
    1. (1) The owner of a trademark used in commerce may request registration of its trademark on the principal register hereby established by paying the prescribed fee and filing in the Patent and Trademark Office an application and a verified statement, in such form as may be prescribed by the Director, and such number of specimens or facsimiles of the mark as used as may be required by the Director.
    2. (2) The application shall include specification of the applicant's domicile and citizenship, the date of the applicant's first use of the mark, the date of the applicant's first use of the mark in commerce, the goods in connection with which the mark is used, and a drawing of the mark.
    3. (3) The statement shall be verified by the applicant and specify that--
      1. (A) the person making the verification believes that he or she, or the juristic person in whose behalf he or she makes the verification, to be the owner of the mark sought to be registered;
      2. (B) to the best of the verifier's knowledge and belief, the facts recited in the application are accurate;
      3. (C) the mark is in use in commerce; and
      4. (D) to the best of the verifier's knowledge and belief, no other person has the right to use such mark in commerce either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods of such other person, to cause confusion, or to cause mistake, or to deceive, except that, in the case of every application claiming concurrent use, the applicant shall--
        1. (i) state exceptions to the claim of exclusive use; and
        2. (ii) shall \\1\\ specify, to the extent of the verifier's knowledge--
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          \\1\\ So in original. The word ``shall'' probably should not appear.
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          1. (I) any concurrent use by others;
          2. (II) the goods on or in connection with which and the areas in which each concurrent use exists;
          3. (III) the periods of each use; and
          4. (IV) the goods and area for which the applicant desires registration.
  2. (4) The applicant shall comply with such rules or regulations as may be prescribed by the Director. The Director shall promulgate rules prescribing the requirements for the application and for obtaining a filing date herein.
  3. (b) Application for bona fide intention to use trademark
    1. (1) A person who has a bona fide intention, under circumstances showing the good faith of such person, to use a trademark in commerce may request registration of its trademark on the principal register hereby established by paying the prescribed fee and filing in the Patent and Trademark Office an application and a verified statement, in such form as may be prescribed by the Director.
    2. (2) The application shall include specification of the applicant's domicile and citizenship, the goods in connection with which the applicant has a bona fide intention to use the mark, and a drawing of the mark.
    3. (3) The statement shall be verified by the applicant and specify--
      1. (A) that the person making the verification believes that he or she, or the juristic person in whose behalf he or she makes the verification, to be entitled to use the mark in commerce;
      2. (B) the applicant's bona fide intention to use the mark in commerce;
      3. (C) that, to the best of the verifier's knowledge and belief, the facts recited in the application are accurate; and
      4. (D) that, to the best of the verifier's knowledge and belief, no other person has the right to use such mark in commerce either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods of such other person, to cause confusion, or to cause mistake, or to deceive.
    Except for applications filed pursuant to section 1126 of this title, no mark shall be registered until the applicant has met the requirements of subsections (c) and (d) of this section.
    1. (4) The applicant shall comply with such rules or regulations as may be prescribed by the Director. The Director shall promulgate rules prescribing the requirements for the application and for obtaining a filing date herein.
  4. (c) Amendment of application under subsection (b) to conform to requirements of subsection (a) At any time during examination of an application filed under subsection (b) of this section, an applicant who has made use of the mark in commerce may claim the benefits of such use for purposes of this chapter, by amending his or her application to bring it into conformity with the requirements of subsection (a) of this section.
  5. (d) Verified statement that trademark is used in commerce
    1. (1) Within six months after the date on which the notice of allowance with respect to a mark is issued under section 1063(b)(2) of this title to an applicant under subsection (b) of this section, the applicant shall file in the Patent and Trademark Office, together with such number of specimens or facsimiles of the mark as used in commerce as may be required by the Director and payment of the prescribed fee, a verified statement that the mark is in use in commerce and specifying the date of the applicant's first use of the mark in commerce and those goods or services specified in the notice of allowance on or in connection with which the mark is used in commerce. Subject to examination and acceptance of the statement of use, the mark shall be registered in the Patent and Trademark Office, a certificate of registration shall be issued for those goods or services recited in the statement of use for which the mark is entitled to registration, and notice of registration shall be published in the Official Gazette of the Patent and Trademark Office. Such examination may include an examination of the factors set forth in subsections (a) through (e) of section 1052 of this title. The notice of registration shall specify the goods or services for which the mark is registered.
    2. (2) The Director shall extend, for one additional 6-month period, the time for filing the statement of use under paragraph (1), upon written request of the applicant before the expiration of the 6-month period provided in paragraph (1). In addition to an extension under the preceding sentence, the Director may, upon a showing of good cause by the applicant, further extend the time for filing the statement of use under paragraph (1) for periods aggregating not more than 24 months, pursuant to written request of the applicant made before the expiration of the last extension granted under this paragraph. Any request for an extension under this paragraph shall be accompanied by a verified statement that the applicant has a continued bona fide intention to use the mark in commerce and specifying those goods or services identified in the notice of allowance on or in connection with which the applicant has a continued bona fide intention to use the mark in commerce. Any request for an extension under this paragraph shall be accompanied by payment of the prescribed fee. The Director shall issue regulations setting forth guidelines for determining what constitutes good cause for purposes of this paragraph.
    3. (3) The Director shall notify any applicant who files a statement of use of the acceptance or refusal thereof and, if the statement of use is refused, the reasons for the refusal. An applicant may amend the statement of use.
    4. (4) The failure to timely file a verified statement of use under paragraph (1) or an extension request under paragraph (2) shall result in abandonment of the application, unless it can be shown to the satisfaction of the Director that the delay in responding was unintentional, in which case the time for filing may be extended, but for a period not to exceed the period specified in paragraphs (1) and (2) for filing a statement of use.
  6. (e) Designation of resident for service of process and notices
    If the applicant is not domiciled in the United States the applicant may designate, by a document filed in the United States Patent and Trademark Office, the name and address of a person resident in the United States on whom may be served notices or process in proceedings affecting the mark. Such notices or process may be served upon the person so designated by leaving with that person or mailing to that person a copy thereof at the address specified in the last designation so filed. If the person so designated cannot be found at the address given in the last designation, or if the registrant does not designate by a document filed in the United States Patent and Trademark Office the name and address of a person resident in the United States on whom may be served notices or process in proceedings affecting the mark, such notices or process may be served on the Director.

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