Monday, December 28, 2015

TTAB Tosses Out Another Bogus Fraud Claim, Dismisses RESCUE ROOTER Cancellation Petition

In a case decided under the TTAB's ACR regime, the Board dismissed a petition for cancellation of a registration for the mark RESCUE ROOTER & Design for plumbing services, finding that petitioner's allegations of abandonment and fraud were baseless. Petitioner pointed to respondent's Section 8 Declaration of Use, claiming that the registered mark was no longer in use and the declaration was fraudulent. Rescue Response Group Inc. v. American Residential Services, L.L.C., Cancellation No. 92060597 (December 22, 2015) [not precedential].

During the discovery/settlement conference, the parties stipulated to the following ACR agreement:

1. The parties agreed “to have the Board reach conclusions as to any issues of material fact in dispute”;
2. The parties agreed “to prosecute this case using the summary judgment model of ACR”;
3. The parties agreed “there would be no period of discovery”; and
4. The parties agreed their “testimony will be presented by affidavit or declaration (and, of course, any exhibits referenced by the affiants or declarants).

Abandonment: Petitioner asserted that respondent was no longer using the registered mark, but rather had been using the mark shown below:

In support of its contentions, petitioner submitted several pages from respondent's website from 2010 to the present, on which the different mark, not the registered mark, appeared. Although petitioner had the burden to present a prima facie case of abandonment (which the webpages failed to do), respondent proceeded to submit a declaration of a company officer stating that respondent "uses the original form of the mark as well as slight variations thereof." Attached as an exhibit to the declaration was a postcard sent to a prospective customer, which postcard bore the registered mark.

Petitioner argued that respondent "needed to show not just a few bare samples of advertising artwork but also use of the mark for each of the services (Plumbing services, namely, plumbing repair, drain cleaning and sewer cleaning) in the registration for each of the time periods in question for the abandonment and fraud claims." The Board disagreed: "even if we were to find that Petitioner has established a prima facie case of abandonment, and we do not, Respondent has adequately shown that it has not abandoned use of its mark, as registered."

Fraud: Having failed to prove that respondent made a false statement, petitioner's fraud claim was quickly jettisoned. "Since Petitioner has failed to show that any statements made in Respondent’s Section 8 affidavit of continuing use were false, let alone proving this to the hilt, Petitioner’s claim of fraud must fail."

Read comments and post your comment here.

TTABlog comment: My proposed "Rogers hearing" would have disposed of this case even more quickly than ACR. Once the petitioner agreed that there would be no discovery, the interlocutory attorney could have asked for the proofs behind the fraud and abandonment claims. How can one prove abandonment without taking discovery? Only via an admission of some sort.

Text Copyright John L. Welch 2015.


At 7:54 AM, Anonymous Anonymous said...

You are correct. While fraud is almost impossible with a smoking gun, why waste the paper putting down fraud if you aren't going to take discovery? Can't think of a good reason.


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