Monday, April 16, 2007

Precedential No. 30: Registrant's Misunderstanding No Excuse, TTAB Finds Fraud and Cancels "ELLE BELLE" Registration for Clothing

Declaring that "an applicant or registrant may not make a statement he/she knew or should have known was false or misleading," the TTAB granted summary judgment on the ground of fraud and cancelled a registration for the mark ELLE BELLE for various clothing items for men, women, and children. Respondent's assertion that its president misunderstood the statements made in its original use-based application were of no avail because he "was obligated to confirm the meaning and accuracy of the statements contained in the application." Hachette Filipacchi Presse v. Elle Belle, LLC, 85 USPQ2d 1090 (TTAB 2007) [precedential].

Respondent Elle Belle admitted in its interrogatory responses that it use of the ELLE BELLE mark has been limited to women's clothing and that it has never used the mark on men's or children's clothing. When Petitioner cried "fraud!", Elle Belle argued that it lacked the requisite intent because its false statement regarding use resulted from a misunderstanding between its president, Parajmit Singh, and its counsel. Mr. Singh, Respondent noted, is an immigrant whose primary language is Punjabi, and not English [Petitioner Hachette pointed out, however, that Mr. Singh is a U.S. citizen who has resided in this country since 1984 and studied English at one point], and he has difficulty comprehending legal documents [TTABlog comment: don't we all?]. Due to his lack of fluency in English, Mr. Singh has difficulty communicating with this attorneys [TTABlog comment: ditto].

The Board found this case "analogous" to the Board's seminal decision in Medinol Ltd. v. Neuro Vasx, Inc., 67 USPQ2d 1205 (TTAB 2003). Here, as there, there was "no question" that Elle Belle's application would have been refused registration but for the misrepresentation. Respondent's argument that a registration would have issued if it had listed only the women's clothing is "irrelevant." Respondent's misstatement "was relied upon by the USPTO in determining respondent's rights to the registration."

That Mr. Singh may have been unaware that the application alleged use on all the goods, and that he may have difficulty with English, do not change the fraud finding. The language of the 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."

As the Board stated in Medinol, proof of specific intent is not required for a finding of fraud: "the appropriate inquiry is ... not into the registrant's subjective intent, but rather into the objective manifestations of that intent."

"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. *** [A]n applicant or registrant may not make a statement he/she knew or should have known was false or misleading."

Respondent and its attorney "shared the duty to ensure the accuracy of the application and the truth of its statements."

"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."

Finally, the Board noted that, after the cancellation petition was filed, Respondent sought to amend the subject registration to limit it to certain items of women's clothing. The PTO's post-registration section (mistakenly) entered the amendment. The Board ruled that the amendment would be given no effect: it does not serve to cure the fraud that was committed on the PTO. [The Board noted that it was not considering the issue of whether an amendment to a registration filed prior to commencement of a cancellation proceeding would cure or remove fraud. The TTABlog finds it hard to fathom how such an amendment could possibly cure a fraud committed in obtaining the registration.]

And so the Board granted Hachette's motion for summary judgment.

TTABlog Note: In our recent article (here), Ann Lamport Hammitte and I pondered whether fraud could be avoided in a pending application if the false statement of use were cured before publication. If the Board really means it when it says "an applicant or registrant may not make a statement he/she knew or should have known was false or misleading," it is difficult to see how any false statement regarding use, made under oath, can be corrected so as to avoid fraud. That's what makes the Board statement in dictum here regarding curing fraud in a registration both puzzling and unhelpful.

Text Copyright John L. Welch 2007.


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