TTAB Finds No Fraud in 2008 Specimen of Use for Section 1(a) Application Filed in 2007

The Board granted opposer Novozymes's motion for partial summary judgment, dismissing applicant Cleary Chemicals's counterclaim for fraud aimed at Opposer's specimen of use. Applicant claimed that opposer's predecessor-in-interest, in obtaining its registration, submitted a specimen of use dated 2008 while fraudulently stating that the specimen had been in use at least as early as the 2007 filing date of its underlying application. Novozymes Bioag, Inc. v. Cleary Chemicals, Inc., Opposition No. 91200105 (August 16, 2013) [not precedential].

On October 19, 2007, the original application was filed under Section 1(a) by opposer's predecessor-in-interest, but did not include a specimen of use or dates of use. In response to an office action, that applicant submitted a specimen of use dated 2008. Cleary Chemicals claimed fraud.

Opposer asserted that a specimen of use dated 2008 was submitted because the label that had been used in 2007 was discontinued when the size of the container for the goods had been changed. It further maintained that the 2007 and 2008 labels are substantially identical, differing only in the stated net weight and contents. And so it argued that no false statement was made because the 2008 specimen was an example of how the mark was used as of the 2007 filing date.

The Board found that opposer did not make a material misrepresentation. Both the 2007 and the 2008 labels display the mark TORQUE for the identified goods, and there are no material differences between the labels. The PTO does not require that a specimen of use be an archival example of the exact matter that was in use as of the application filing date. It routinely accepts specimens that were actually used subsequent to the filing date if the specimen is of the same type, in all material respects, as the matter that was in use at the appropriate time. Moreover, here the Examining Attorney did not question the specimen of use.

The Board found no material representation and it granted the motion for summary judgement as to the fraud counterclaim.

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TTABlog note: The original application was entitled to a filing date, under 37 C.F.R. §2.21(a), even though filed under Section 1(a) without a specimen of use or dates of use. All that is required to secure a filing date are: (1) The name of the applicant; (2) A name and address for correspondence; (3) A clear drawing of the mark; (4) A listing of the goods or services; and (5) The filing fee for at least one class of goods or services.

Text Copyright John L. Welch 2013.