Precedential No. 16: Fraud Claim Survives Motion to Dismiss; Facts Pleaded with Sufficient Particularity
Petitioner Löwenbräu's fraud claim alleged that, according to its investigation, Respondent White Gold, at the time of filing its Statements of Use, was using its marks only on vodka and not on on all the goods listed in the Statement. Furthermore, Löwenbräu alleged that Respondent (but not than any particular individual) had the requisite intent to deceive the USPTO. The Board found those allegations to be sufficiently specific and particular to satisfy FRCP 9(b), and it denied Respondent's motion to dismiss. Meckatzer Löwenbräu Benedikt Weiß KG v. White Gold, LLC, 95 USPQ2d 1185 (TTAB 2010) [precedential].
Registrant White Gold (a Russian company) received two registrations in 2008 for its mark WHITE GOLD (in standard character and design form) for "aperitifs; orak; brandy; wine; whiskey; gin; vodka; prepared alcoholic cocktails; liqueurs; alcoholic beverages, namely, alcoholic coffee-based beverage; alcoholic tea-based beverage; alcoholic punch; calvados; champagne; cognac; Curacao; herb liqueurs; ouzo; schnapps; tequila; alcoholic beverages containing fruit; distilled spirits; mead; peppermint liqueurs; alcoholic bitters; rum; sake; hard cider; rice alcohol." [I thought an orak was a vacuum cleaner - ed.]
Petitioner alleged "[u]pon information and belief, and upon the results of the investigation” that: (1) at the time it filed Statements of Use in connection with the applications that issued as its Registrations, Respondent’s marks "were not in use in connection with all of the goods referenced in the Statements of Use"; and that (2) "Respondent knowingly made false, material misrepresentations of fact in procuring the Registrations with the intent to defraud the U.S.P.T.O." because "Respondent knew that [its involved marks] were not in use in connection with all of the goods referenced in the Statements of Use at the time the Statements of Use were filed …."
White Gold contended that Löwenbräu did not allege sufficient facts for the Board to “reasonably infer that a specific individual knew of the withheld material information or of the falsity of the material misrepresentation, and withheld or misrepresented this information with a specific intent to deceive the PTO." It further argued that, in any case, it was entitled to registrations covering vodka. [Apparently, White Gold did not argue that it had used the marks on anything other than vodka].
The Board [if I may paraphrase, Russian-style] responded "tough shitsky." Löwenbräu's allegations were based not just on "information and belief" but on an investigation, and it alleged that “Respondent knowingly made false, material misrepresentations of fact in procuring the Registrations with the intent to defraud the U.S.P.T.O.” The Board found those allegations to be sufficiently specific and particular to satisfy Fed. R. Civ. P. 9(b).
Moreover, the Board pointed out, "the question is not whether petitioner has alleged that a nonparty 'specific individual' had the requisite intent, but rather whether petitioner has alleged with particularity that respondent, the defendant and owner of the subject Registrations, had the requisite intent."
We do not read In re Bose as requiring that a party identify a "specific individual" who "knew of the withheld material information or of the falsity of the material misrepresentation, and withheld or misrepresented this information with a specific intent to deceive the PTO," as respondent argues.
As to Respondent's argument regarding keeping its registrations, but only for vodka, the Board observed that "In re Bose did not change the consequences of fraud, when it is proved. A finding of fraud with respect to a particular class of goods or services renders any resulting registration void as to that class."
And so the Board denied the motion to dismiss.
TTABlog comment: I counted 30 items in Respondent's identification of goods. If it used the mark on only one out of 30 items, I think we have a winner in the Fraud Derby! Crank your FRAUD-O-METER's post-Bose arrow into the orange zone: RECKLESS DISREGARD FOR THE TRUTH !!
This has got to be fraud, regardless of what individual signed the verification or what his or her specific intent was. He or she was authorized to act for Respondent, and Respondent should be responsible for the statements made.
I think the Board should not only find fraud on those facts, but as an alternative ruling, find the Registrations void ab initio on the ground of filing of a false oath. Then let's see what the CAFC can do with those rulings.
Text Copyright John L. Welch 2010.