Thursday, April 02, 2009

Precedential No. 12: TTAB Again Says False Statement of First Use Date is not Fraud

Kathleen Hiraga petitioned to cancel a registration for the mark GARDEN ORGANICS for "fertilizers, soil conditioners and soil amendment for domestic use," asserting that Sylvester J. Arena had fraudulently obtained the registration because he had not used the mark in commerce on the date claimed in the application. Citing Standard Knitting, the Board pointed out that a false statement regarding the first use date does not constitute fraud "because the first use date is not material to the Office's decision to approve a mark for publication." Kathleen Hiraga v. Sylvester J. Arena, 90 USPQ2d 1102 (TTAB 2009) [precedential].

The Board asserted that "the critical question in this case is whether the mark was in use in connection with the identified goods as of the filing date of his used-based application."

That is, if the mark was in use in commerce as of the filing date, then the claimed date of first use, even if false, does not constitute fraud because the first used date is not material to the Office's decision to approve the mark for publication. [TTABlog query: if the mark was not in use as of the filing date, does it matter whether the alleged first use date was false?]

Petitioner Hiraga argued that Arena, rather than making use in commerce "at least as early as November 1, 2003" (as Arena claimed in his application), made use in commerce "at the earliest, sometime in December 2003." Thus Hiraga acknowledged that Arena had used the mark prior to his April 14, 2005 filing date. The correctness of the first use date was therefore immaterial to the PTO's approval of the mark for publication, and there was no fraud. [TTABlog comment: This seems to me an odd way for the Board to put this. Again, if there was no use as of the time of filing, then that itself is fraudulent regardless of what first use dates were stated].

Along the way to its no-fraud ruling, the Board considered several evidentiary issues.

Hiraga's notice of reliance included many documents that are not admissible without further identification and authentication: web pages, a third-party catalogue (not a "printed publication" within Rule 2.122(e)), invoices, and a completed Post Office form of some sort (not an official record). As the Board noted, "the categories of materials that may be submitted with a notice of reliance are quite limited."

Arena had his own evidentiary problems. Hiraga objected to Arena's notice of reliance that attempted to introduce his own discovery responses into evidence. Arena claimed that this was proper because Hiraga had submitted some of his responses. The Board pointed out that in such a situation, the responding party may submit its own responses in order to avoid an unfair interpretation. However, such additional responses must be supported by a written statement explaining why each additional response was needed. Without such a statement, the Board may refuse to consider the additional response. The Board here agreed with Hiraga that the additional responses were improper: they were not accompanied by a written explanation, nor was it apparent to the Board how "they avoid any unfairness from what Petitioner submitted."

Hiraga also objected to certain screenshots from the Wayback Machine ( submitted by Arena. Although this type of evidence is generally unacceptable (see Paris Glove), both parties submitted such evidence. Hiraga, however, pointed out that Arena did not disclose this material during discovery. The Board found the evidence to be appropriate rebuttal. Although Hiraga had requested "all documents which support his claims and assertions," Arena "was not obligated to go to the Internet archive to search for documents that might be considered responsive. However, once petitioner went to the Internet archive to obtain evidence for trial, respondent was free to do the same."

In sum, the Board denied the petition for cancellation.

TTABlog note: On the issue of curing a false statement of use in order to avoid fraud, some have wondered whether the amendment must be made prior to publication of the mark for opposition, or prior to approval for publication. This case, in its discussion of materiality, suggests the latter.

Some of the confusion results from the language in University Games, the seminal "cure" case, in which the Board held that "the fact that opposer amended its identification of goods during ex parte prosecution constitutes a rebuttable presumption that opposer lacked the willful intent to deceive the Office." University Games cited the dictum in Hurley that a misstatement in an application as to the goods or services on which a mark has been used does not rise to the level of fraud where an applicant amends the application prior to publication. See Universal Overall Co. v. Stonecutter Mills Corp., 154 USPQ 104 (CCPA 1967)." Universal Overall stated that a "misstatement did not constitute fraud because [applicant], at the suggestion of the examiner, amended its application prior to publication." [All emphases added].

Here, the Board stated that a false statement cannot be fraudulent unless it is material to the PTO's approval of the mark for publication. Thus it appears that the fraud-curing amendment must be made prior to that approval.

Text Copyright John L. Welch 2009.


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