Fraud on PTO Refusal is not Obviated by Lack of Counsel; Amendments Cannot Expand Goods Sought to be Covered

Updating a prior post: Fraud on the PTO Jurisprudence: Further Approval for Timely Corrective Action to Avoid Cancellation

On June 25, 2009, the TTAB issued another opinion in its “Fraud on the PTO” jurisprudence. Esprit IP Limited v. Mellbeck Ltd, Opposition No. 91189412 (TTAB June 25, 2009) [not precedential]. In this case, Applicant (Mellbeck) filed an application seeking trademark registration for the following goods:

Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms; Belts; Bibs not of cloth or paper; Caps; Children’s and infants’ cloth bibs; Children’s cloth eating bibs; Cloth bibs; Cloth bibs for adult diners; Cloth bibs for use by senior citizens or physically- or mentally-challenged persons; Cloth diapers; Clothing for wear in judo practices; Clothing for wear in wrestling games; Clothing, namely, arm warmers; Clothing, namely, folk costumes; Clothing, namely, hand-warmers; Clothing, namely, khakis; Clothing, namely, knee warmers; Clothing, namely, neck tubes; Clothing, namely, throbes [sic]; Clothing, namely, wrap-arounds; Corsets; Dusters; Foulards; Hoods; Infant and toddler one piece clothing; Infant cloth diapers; Jerseys; Leather belts; Mantles; Mufflers; Nondisposable cloth training pants; Paper hats for use as clothing items; Parts of clothing, namely, gussets for tights, gussets for stockings, gussets for bathing suits, gussets for underwear, gussets for leotards and gussets for footlets; Perspiration absorbent underwear clothing; Shifts; Short sets; Shoulder wraps; Swaddling clothes; Ties; Tops; Travel clothing contained in a package comprising reversible jackets, pants, skirts, tops and a belt or scarf; Triathlon clothing, namely, triathlon tights, triathlon shorts, triathlon singlets, triathlon shirts, triathlon suits; Underarm clothing shields; Wearable garments and clothing, namely, shirts; Wraps.

The application passed initial review by the Examining Attorney without Office Actions or Examiner’s Amendments, and was published for opposition on December 2, 2009. See Full File, including Notice of Publication dated November 12, 2008.

Opposition Filed

Esprit IP Limited (“Opposer”) opposed the application on March 23, 2009, alleging that it was filed fraudulently (among other claims) and requested that registration be refused. Notice of Opposition ¶ 21.

In its answer, Applicant conceded that it “does not sell in the US all of the apparel products listed in the application” for this mark. Answer ¶ 17 (admitting Opposer’s allegation on this point without modification).

Attempts to Modify the Description of Goods

Shortly thereafter, Opposer moved for judgment on the pleadings on several of its claims, including on the fraud claim. In response, Applicant responded to the motion, admitting its error in drafting the description of goods, and filed a motion to amend the description in an attempt to fix the problem. The amendment it requested was:

Clothing, namely, fleece jackets, t-shirts, ski masks, helmet liners, neck warmers, socks, thermal underwear, windcheaters, base-layers, thermal gloves, undersuits, longjohns, sweaters, [and] hats.

In general, the USPTO might accept a modification to the description of goods or services covered by a particular application, but only if the modification is narrower than the original filing; the USPTO will not accept a broader description or one that deviates completely from the original as filed. 37 C.F.R. § 2.71(a) (“The applicant may amend the application to clarify or limit, but not to broaden, the identification of goods and/or services.”) (emphasis added); TMEP § 1402.06. Should an applicant wish to obtain a registration for the mark as applied to goods or services beyond the original description, it may only do so by filing a new application to cover the new goods or new services.

Unfortunately for Applicant, however, both Opposer and the TTAB recognized that this modified description had only one product in common with the original description: hats. Opinion at 3-4. The rest of the description covered brand new products. The TTAB denied the motion to amend, rejecting the new expanded description, concluding that it was “unacceptable because it designates goods that are outside the scope of the identification as set forth in the application as filed.” Id. at 3 (citations omitted).

Reliance on Lack of Counsel to Defend Against the Fraud Claim

In attempting to change its description completely, Applicant lamented that it was “not represented by an attorney and has no prior experience in United States trademark matters” and therefore argued that it should be excused from liability for having submitted a completely false description of goods used in connection with the mark. Id. at 5. In prior cases, however, the TTAB expressly rejected an applicant’s attempt to rely on the advice of counsel, or to hide behind its lack of counsel, in an effort to avoid refusal/cancellation of its application/registration due to fraud. See Herbaceuticals, Inc. v. Xel Herbaceuticals, Inc., Cancellation No. 92045172, 86 USPQ2d 1572 (TTAB Mar. 7, 2008) [precedential] (precluding client from relying on the advice of counsel as a defense to a fraud claim); Tequila Cazadores, S.A. De C.V. v. Tequila Centinela S.A. De C.V., Opposition No. 91125436 (TTAB Feb. 24, 2004) [not precedential] (refusing to recognize a defense of lack of counsel to a claim of fraud). Here, the TTAB held that “[t]he fact that applicant is a foreign entity that is representing itself without previous experience in United States trademark procedure cannot avoid a finding of fraud.” Opinion at 8.

Instead, it is incumbent upon applicants to be fully informed about the truth of their statements made under oath and to understand the implications of giving such a declaration in connection with their applications for trademark registration. See Hacehette Filipacchi Presse v. Elle Belle, LLC, Cancellation No. 92042991, 85 USPQ2d 1090 (TTAB Apr. 9, 2007) [precedential]; Hurley Int’l LLC v. Volta, Opposition No. 91158304, 82 USPQ2d 1339 (TTAB Jan. 23, 2007) [precedential].

TTAB Refused Registration

Ultimately, in the Esprit case, the TTAB found that “[b]y setting forth an identification of goods for more than fifty goods, when applicant was not using the mark on all of these goods, and indeed may have been actually using the mark only on one of those identified goods, applicant made a material misrepresentation of fact that the [USPTO] relied upon in determining applicant’s right to registration.” Opinion at 8. The TTAB granted Opposer’s motion for judgment on the pleadings and refused registration to Applicant. Id. at 9.

Lessons Learned

Finally, while this case may not be cited as precedent in other cases, it should suggest the following lessons for applicants: 1) descriptions of goods and services can only be narrowed during examination; 2) applicants cannot file applications based on “use in commerce” in connection with goods or services on which they have not actually used the mark in question; and 3) applicants cannot rely on the lack of counsel or claimed misunderstandings of the requirements of U.S. trademark law to avoid refusal or cancellation based on this doctrine.