Trademark Office Clarifies Difference Between Fraud and Oops!
In a citable decision from the Trademark Trial and Appeal Board at the U.S. Patent and Trademark Office (”PTO”), the Board held inter alia, that (1) an opposer may not maintain a claim of fraud against an applicant if the opposer does not actually allege fraud in its opposition; and (2) an applicant does not automatically commit fraud if it does not use all the goods listed in the application.
In the opposition, the Hualapai Tribe (”Opposer”) sought to remove a mark from consideration at the PTO on the grounds that the applicant (Grand Canyon West Ranch) did not use the mark on all the services listed, as of the filing date of the application. The Opposer, however, asserted that it was not seeking summary judgment based upon fraud. The Board, therefore, dismissed this claim in relevant part.
In looking at whether the applicant’s application for the mark was void for non-use reasons, the Board outlined the distinctions it sees between fraud and simple non-use. In short, the Board stated that “a defendant commits fraud by knowingly making false statements as to a material fact in conjunction with a trademark application or registration”[.] and showing a “complete failure to make use of the mark before filing the application on any of its identified services.” In the instant case, applicant was using the mark for most of the services. Accordingly, the Board accepted the applicant’s amended identification of goods as the appropriate remedy for the infraction. The case is resumed for other reasons.
Practioner query: On the one hand, it seems a reasonable enough remedy to require an applicant to amend its goods based upon actual use, or, in the alternative, amend its application to a 1(b) (intent-to-use) application and file an appropriate statement of use once all the goods in question are being used. On the other hand, if an applicant’s liability for embellishing its goods and services is a hand-slap and a requirement that it amend its goods only if it gets caught, we question the motivation for client to be honest about their actual use.
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