Friday, December 18, 2015

TTAB Dismisses Bogus Fraud Claim: No Proof of False Statement

The Board dismissed a petition for cancellation of a registration for the mark AMERICAN BEAUTY for beauty pageants, finding that petitioner had failed to prove its claim of fraud in connection with respondent's Section 8 filing. Petitioner did not establish that respondent made a false statement to the USPTO, nor that respondent had an intent to deceive the Office. Harrison Productions, L.L.C. v. Debbie Harris, Cancellation No. 92058758 (December 16, 2015) [not precedential].

A fraud claimant must prove that the other party knowingly made a false statement of material fact, with intent to deceive, that was relied upon by the injured party (the USPTO), to its detriment. The burden of proof is a heavy one: fraud must be proven "to the hilt" (or as some say, "to infinity and beyond," or even "up the Wazoo"). Clear and convincing evidence is required.

Petitioner submitted a page from respondent's website referring to "the next National Pageant (on) November 27-30, 2014 at the Empire Theater in San Antonio, Texas." According to petitioner, no such pageant was scheduled, and respondent "simply changed the date on her website to give the false  impression that she is actually using the mark in commerce."

There was a major problem with petitioner's argument. Respondent never submitted that webpage to the USPTO as proof of use. The webpage specimen she did submit did not contain an advertisement for that pageant in San Antonio. It contained only a depiction of respondent's AMERICAN BEAUTY mark, with statements about her pageants. As the Board sagely observed:

A false statement appearing on a section of Respondent’s website that was not submitted to the U.S. Patent and Trademark Office (USPTO) cannot be treated as a false statement for the purpose of proving fraud, because the statement was never made to the Office.

The fact that a single pageant advertised by respondent did not occur proved nothing about whether respondent was using the mark at all. As respondent argued, "There is no record evidence of non-use by Registrant for any period."

Respondent's statement that her mark was still in use was certainly material to the mark's continued registrability, but petitioner failed to show it was false. As to knowledge, "Petitioner has not even proved that this statement was a falsehood, let alone a knowing falsehood."

Finally, petitioner failed to prove an intentional falsehood, either with regard to respondent's verification that her mark was in use, or her (irrelevant) failure to hold the November 2014 pageant.

And so the Board dismissed the petition for cancellation.

Read comments and post your comment here.

TTABlog comment: I have been suggesting for several years that, whenever a fraud claim is made, the Board hold an early hearing (like a Markman hearing on the patent side) to ferret out these phony fraud claims at an early stage in the proceeding. I would require the fraud claimant explain up front the basis for the fraud claim, and then give the boot to the claims (pretty much every one) that cannot succeed.

Text Copyright John L. Welch 2015.


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