In two recent precedential opinions, the Trademark Trial and Appeal Board (TTAB) clarified whether certain fact-based circumstances constituted fraud before the United States Patent and Trademark Office (USPTO). Since its 2003 ruling in Medinol v. Neurovasx, where the TTAB cancelled a trademark registration after it found fraud in that the registrant had not used its trademark on all the goods recited in a Statement of Use, the TTAB has voided several other challenged trademark applications and registrations on the same grounds when claims of use are materially inaccurate. In these two recent opinions, the TTAB clarified that fraud with respect to one class in a multi-class trademark application or registration may only result in cancellation in the class in which fraud was found, and that, in at least one circumstance, fraud might be cured by the trademark owner if corrected before the trademark was challenged.   

In G&W Laboratories, Inc. v. G W Pharma Limited, after GW Pharma claimed that two of  G&W's trademark registrations for Class 5 (suppositories and the like) and Class 35 services (distributorships in the field of suppositories and the like) were fraudulent, G&W filed a Section 8 declaration that deleted the Class 35 services with which it had never used the mark.  Despite GW Pharma's arguments that the entirety of both trademark registrations should be cancelled, the TTAB held 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."

In Zanella Ltd. v. Nordstrom, Inc., the registrant, Zanella, had never used its marks on certain clothing products ("mantles, blouses, waistcoats, socks, stockings, ties, scarves, hats, swimwear or underwear") and deleted these goods when it filed a Section 8 Declaration in four out of five registrations prior to any challenge to the registrations. Despite Nordstrom's arguments that Zanella's actions constituted fraud, the TTAB recognized that the correction of false statements prior to any actual or threatened challenge to a registration creates a rebuttable presumption that the registrant did not intend to commit fraud and  held that Zanella's actions raised a genuine issue of material fact as to whether there was an intent to commit fraud on the USPTO with respect to these registrations. Accordingly, the board denied Nordstrom's motion to for summary judgment as to the four registrations that had been corrected.  

Both of these decisions suggest that trademark owners should take a close look at their trademark portfolios to ensure that their trademarks are used on all of the goods and services listed in the application or registration. In the case of registrations that rely on a registrants home country registration and not on actual use, there still must be a good faith intent to use the mark with all the listed goods and services. In instances where the trademark has not been used on specific items, amendments to correct the applications or registrations may be considered. If you have questions regarding trademark use, please contact a member of the firm's Intellectual Property Group.