TTAB Dismisses Fraud-Based Opposition for Failure to Prove Intent to Deceive

The Board tossed out this fraud-based opposition to registration of the mark PLAN B JEANS for various clothing items. Opposers claimed that Applicant had admittedly not used the mark on all the goods at the time he filed his use-based application to register, and in fact has never used the mark on some of the goods. However, Opposers failed to prove one critical element of fraud: intent to deceive. Daniel Ryan Way and CMDW, Inc. v. Anthony R. Falwell, Opposition No. 91184128 (May 3, 2011) [not precedential].


Applicant Falwell filed an Answer admitting that his mark had not been used on all the goods, but also stating that he had “in no way” attempted to mislead the PTO or to commit fraud. However, he did not properly serve that answer and, after the Board notified him of the lack of proper service, his attorney submitted a new answer denying all the allegations in the notice of opposition.

Opposers moved for judgment on the pleadings, which the Board denied, characterizing the first filing as informal and the second as the operative pleading.

Turning to the issue of fraud, Opposers again relied on statements made by Applicant in his informal answer, but the Board pointed out that it had already ruled that this was not the operative pleading. In any case, even if the Board had considered the statements made in the informal answer, it still would not have found fraud.

"Although the statements in the June 4 filing can be read as indicating that applicant did not use the mark on all of the goods identified in the application, these statements are not sufficient to prove a necessary element of fraud, namely, intent. On the contrary, the statements are replete with applicant's assertions that there was no attempt to mislead the USPTO."

The Board acknowledged Opposers' observation that "it would be hard to elicit direct evidence of intent, e.g., testimony that the applicant intended to deceive the USPTO, or papers containing such a statement," but it showed no sympathy for Opposers' plight.

Other evidence indicated that Applicant had ceased selling any of the goods since early 2006, but that evidence had nothing to do with whether Applicant committed fraud in his original filings.

And so the Board dismissed the opposition. However, it remanded the application to the Examining Attorney (under Rule 2.131) to consider whether a refusal should be made based on non-use for some of the goods, or whether some goods should be deleted.

TTABlog comment: Why didn’t Opposer allege non-use in the first place (as a sort of "plan B")? Probably because a finding of non-use would not knock out the entire application, but only the non-used goods, leaving Opposer’s application still blocked.

What about abandonment? It seems as though Opposer may have a claim for cancellation if and when the subject application ever moves to registration.

Text Copyright John L. Welch 2011.