TTAB Tosses Out Fraud Claim - Insufficient Proof of Intent to Deceive the USPTO
In this cancellation proceeding, petitioner claimed that respondent had committed fraud on the USPTO when if filed its Sections 8, 9, and 15 declarations in connection with its registration for the mark shown below (translated loosely as "lucky old wang"). The declarations were signed by one Kevin Zhang as "Owner," despite the fact that he did not own the registration. Petitioner, however, did not take the testimony of Mr. Zhang or anyone else, and it failed to prove that Zhang intended to deceive the USPTO. Consequently, the Board denied the petition for cancellation. Multi Access Limited v. Wang Lao Ji Food & Beverage subsidiary, Yangcheng Pharmaceutical Stock Corp. Ltd of Guangzhou, Cancellation No. 92054959 (April 4, 2014) [not precedential].
Mr. Zhang, an attorney who worked in California for a Chinese law firm, was Respondent's domestic representative but was not authorized to practice before the USPTO. Petitioner's theory was that Zhang knew he was not the owner of the registration and knew that he was not authorized to sign the declaration on behalf of respondent. Therefore, Respondent urged, Zheng intended to deceive the USPTO into accepting the maintenance declarations. Petitioner did not question that the mark was in use; its only claim was fraud based on Mr. Zhang's calling himself "Owner."
The Board found that the record evidence "falls short of establishing that respondent is guilty of fraud."
In response to interrogatories, Respondent stated that it did not know why Zheng had called himself "Owner." Zhang had first-hand knowledge of use of the mark in the USA. Respondent had instructed Zhang's law firm to filed the combined Section 8 & 9 document, and had fixed its seal (equivalent to a signature in China). Respondent believed that by placing the seal on the document it was giving proper authority to the signatory. As to the Section 15 declaration, Respondent responded similarly. Petitioner provided no evidence to dispute these assertions.
The Board pointed out that a person who is authorized to verify facts on behalf of a registration owner may sign such declarations. That person may also serve as domestic representative. The fact that Mr. Zhang was not authorized to practice before the USPTO does not disqualify him from signing a verification on behalf of the registrant.
The Board agreed with Respondent that Petitioner's fraud claim was "based on inferences that are too speculative." Although his statement that he was the "Owner" of the registration was false, there was insufficient evidence to prove that Zhang intended to deceive the USPTO. The Board noted that the "owner" section of each declaration listed Respondent as the owner of the registration.
The Board therefore denied the petition for cancellation.
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TTABlog note: I don't understand how Petitioner possibly thought it could prove fraud given the evidence and the current state of fraud jurisprudence. So this is a WYHP?
Text Copyright John L. Welch 2014.