TTAB Dismisses Fraud Claim Based on Fabricated Specimen of Use: Opposer Failed to Prove Fraud "to the Hilt"
Applicant Bristol Technologies sought to register the mark Bristol Focus for computer operating systems programs, but Opposer raised two grounds in opposition: fraud and likelihood of confusion. The Board sustained the Section 2(d) claim, finding the applied-for mark likely to cause confusion with the registered mark FOCUS for other computer software programs. But as to the fraud claim, although Applicant fabricated a specimen and falsely stated that its mark was in use as of the application filing date, the Board ruled that Opposer failed to meet its "heavy burden of proof" to show fraud. Information Builders, Inc. v. Bristol Technologies, Inc., Opposition No. 91179897 (January 10, 2011) [not precedential].
Applicant's original specimen of use, a newspaper advertisement regarding Applicant's intended product line, was rejected by the Examining Attorney. Applicant was offered the option of amending the application to a Section 1(b) intent-to-use basis, but instead Applicant created a screen image (shown above) and submitted a photograph of the image as a specimen of use, accompanied by a declaration stating that the substitute specimen was in use as of the filing date of the application.
However, Applicant had not yet sold any products, had no distributors, representatives, or sales persons, no licensees, and no use of the product. No computer operating system program had been completed, no orders received, and no computer systems bearing the applied-for mark had been shipped.
Opposer argued that "Applicant's fabrication of a new specimen no more than six weeks after learning of the initial refusal constitutes clear and convincing evidence that Defendant sought to mislead the Patent and Trademark Office ...."
The Board agreed that Applicant's statement of use that accompanied the new specimen was incorrect - i.e., false. Applicant's statement was also material, because without this misrepresentation the application would not have been published for opposition. However, as we all know, the CAFC's Bose decision requires that fraud be proven "to the hilt."
The Board ruled that the record did not establish that Applicant's president, David W. Bristol, "knowingly made a false representation with respect to use of the mark as shown on these specimens with a willful intent to deceive the U.S. Patent and Trademark Office." "Mr. Bristol believed that the statement was true at the time he signed the statement of use." [Query: where is the support in the record for that last statement? - ed.]
The Board quoted Bose for the proposition that "[U]nless the challenger can point to evidence to support an inference of deceptive intent, it has failed to satisfy the clear and convincing evidence standard required to establish fraud."
Viewing the evidence in light of the above legal principles, we find that opposer has not established that Bristol Technologies, Inc. acted fraudulently in order to have its mark published for opposition. Rather, based upon the evidence of record, we find that Mr. Bristol, as a layperson, had an honest misunderstanding that the above activities represented a legitimate way to document his purported usage of the adopted term and that applicant had legitimately used the mark Bristol Focus as shown on the substitute specimen. We would not characterize his actions as trying to fabricate a fraudulent specimen. Under the standard set out in Bose by our principal reviewing Court, opposer has not met its “heavy burden of proof” in showing fraud. Opposer’s claim of fraud is therefore dismissed.
TTABlog comment: "The party's over. It's time to call it a day." Forget fraud. It can't be proven. Either the accused party will raise an advice of counsel defense (see Brady Bunte), or if he or she doesn't have counsel, he or she will raise an "uninformed layperson" defense. In support of its ruling the Board, in footnote 37, cited the Maids to Order case, where a layperson mistakenly averred that the mark there at issue was in use in interstate commerce when it was in use only in intrastate commerce. But isn't that a much more complicated issue that a layperson might not fully understand? Is the issue here of equal complexity? Or is it more like the issue in Hurley, where the applicants' misunderstanding or lack of knowledge of the law did not excuse them from fraud based on a false statement of use?
Perhaps the only ones who can commit fraud nowadays are trademark lawyers, since they (should) know the law. But, I maintain, a trademark lawyer shouldn't be signing anything unless he or she is the actual applicant.
I just don't understand the Board's reasoning here. Early in the decision it said that it was declining to consider Applicant's final brief because the brief was not timely filed. Yet later the Board refers to what Applicant "argues" (page 15). If Applicant's brief was jettisoned, and Applicant took no testimony and there was no final hearing, where did Applicant do this arguing? [Perhaps a reader can answer that question.]
Text Copyright John L. Welch 2011.