In 2003, we reported that the Trademark Trial and Appeal Board (“TTAB”) of the U.S. Patent and Trademark Office (“PTO”) had determined that filing a Statement of Use claiming use of a trademark on all goods or services in the Notice of Allowance, when the applicant knew or should have known it did not have such use, constitutes fraud on the PTO. Moreover, the TTAB ruled that such fraud voids the entire registration, not merely the goods/services in connection with which use of the mark had not actually been made at the time the Statement of Use was filed. Medinol Ltd. v. Neuro Vasx, Inc. (TTAB 5/13/03).
The TTAB has now clarified that the voiding of the entire registration under Medinol applies only to registrations with a single class of goods or services. Where a registration covers multiple classes of goods or services, fraud as to the goods/services in one class will not invalidate the registration as to any other classes. G&W Laboratories, Inc. v. G W Pharma Limited (TTAB 1/29/09).
G&W Laboratories, Inc. (“G&W”), owner of two registrations for the mark G&W and G&W & Design covering goods in Class 5 and services in Class 35, filed an opposition against an application by G W Pharma Limited (“Pharma”) for GW PHARMACEUTICALS & Design. Pharma filed counterclaims to cancel G&W’s two registrations in full, claiming that G&W had committed fraud by including the Class 35 services in its registrations when it had never offered those services in connection with the registered marks. Pharma did not contend that G&W had committed fraud with respect to the goods in Class 5 but requested that both registrations be voided in their entireties because of the fraud in Class 35. G&W moved to dismiss those fraud counterclaims because, after Pharma filed its counterclaims, G&W requested that all of the Class 35 services be deleted from its registration in its Declaration of Use filed under Section 8 of the Trademark Act. G&W argued that the counterclaims could no longer apply to its registrations because the allegedly fraudulent Class 35 services were deleted from the registrations and there had been no challenge to the Class 5 goods. Because G&W had not obtained Pharma’s written consent to deletion of the Class 35 services, the TTAB entered a judgment against G&W cancelling the Class 35 services.
As to the Class 5 goods, the TTAB noted that this is the first case in which it considered a fraud claim in a multiple-class registration. Medinol and the later cases applying its holdings had all involved only single-class applications. Because multiple-class applications can be viewed as a series of applications for registration of a single mark in connection with goods or services in each class, the TTAB determined that each class of goods or services in a multiple-class application must be considered separately when reviewing the issue of fraud. Therefore, a finding of fraud as to one of the classes does not require cancellation of all the classes in the registration. The TTAB did not want to encourage the filing of multiple single-class registrations when a multiple-class registration would be more practical. Accordingly, fraud as to one class will not taint the other classes in the same registration.
This case provides important guidance on the fraud issue while the trademark community awaits the ruling of the U.S. Court of Appeals for the Federal Circuit in the appeal of Bose Corp. v. Hexawave, Inc. (TTAB 2007). The goods in question in that case were no longer being manufactured or sold by Bose (although Bose would still repair them) at the time it filed a renewal application with a Declaration of Use. The TTAB found that Bose committed fraud in that Declaration of Use when Bose interpreted “use in commerce” to mean transporting back to a customer a repaired product no longer being sold by Bose.
Although the G&W decision demonstrates that the TTAB’s stance on fraud is not as severe as practitioners had believed after Medinol, a single-class registration is still vulnerable to cancellation and a multi-class registration is vulnerable to cancellation in part, where goods or services are identified that are not actually offered in connection with the mark. Under TTAB practice, it is sufficient for an invalidating fraud claim that even one good or service listed in a class is not offered under the mark. Therefore, trademark owners must continue to use care in reviewing the description of goods and services when filing a Statement of Use, Section 8 Declaration of Use or a renewal application. If you are unsure about whether your use of the mark constitutes proper trademark use on particular goods/services in the application or registration, your trademark attorney can advise you.