TTAB Finds MYUNDIES Registration Void Ab Initio: Mark Not in Use As Of Filing Date
The Board summarily granted a petition for cancellation of a registration for the mark MYUNDIES for various clothing items, finding the registration to be void ab initio because Respondent was not using the mark on any of the goods at the time he filed the application to register. Respondent asserted that he is using the mark and has no intention to abandon it, but that did not cure the initial, fatal error. MeUndies, Inc. v. Drew Massey dba myUndies Inc., Cancellation No. 92055585 (August 13, 2014) [not precedential].
A registration may be found void ab initio under Trademark Act Section 1(a) when the mark in the underlying use-based application was not in use in commerce as of the application filing date.
Respondent Drew Massey admitted that he did not use the registered mark as of the filing date of the underlying application. He stated that he was "pro se and should have filed as ‘intend to use’ versus referring to ‘first known use’ which was done by a prior separate company."
The founder and owner of a company called "myUndies.com, Inc," which existed from 1999 to 2001, had used the mark MYUNDIES in connection with online retail services, but Respondent was not involved in
his company. Respondent contacted him regarding Respondent’s possible use of the mark, but the mark MYUNDIES had been abandoned for nearly eight years.
In response to Petitioner's summary judgment motion,Respondent merely argued that he has been and is using the mark MYUNDIES and has no intention to abandon the mark, and did not commit fraud when he filed the underlying application. The Board was unmoved.
Whether Respondent is currently using the registered mark or whether he has any current intent to resume use is not the issue. *** Similarly, it is irrelevant that Respondent represented himself and possibly misunderstood the law when he filed his use-based application. A use-based application is void if the mark is not in use on the identified goods at the time of filing, regardless of whether the applicant understood the statutory requirement for use or intended to mislead the USPTO.
The Board therefore granted Petitioner's summary judgment motion and granted its petition for cancellation.
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TTABlog note: Petitioner did not claim fraud. Too bad. We are approaching the fifth anniversary of the post-Bose "no fraud" era, and this case might have opened the door.
Text Copyright John L. Welch 2014.