Wednesday, June 06, 2007

Precedential No. 38: TTAB Dismisses Cancellation Petitioner's Inadequately Pleaded Section 14(3) "Misrepresentation of Source" Claim

Petitioner Otto International, Inc. was called out on strikes in its attempt to cancel a registration for the mark OTTO KERN for bags and clothing. Otto failed on all three pleaded grounds: likelihood of confusion, abandonment, and a rare "misrepresentation of source" claim under Section 14(3) of the Trademark Act. The Board therefore dismissed the petition to cancel. Otto Int'l, Inc. v. Otto Kern GmbH, 83 USPQ2d 1861 (TTAB 2007) [precedential].

Section 2(d): Petitioner's likelihood of confusion claim contained a fatal flaw: the OTTO KERN registration was more than five years old, and therefore this claim was barred under Section 14(3).

Abandonment: Petitioner alleged that Respondent "has abandoned use of Registration No. 2432890" for bags and clothing. However, it "provided no facts to support its conclusory allegations," made no claim that respondent failed to use its mark for a period greater than three years, and failed to aver that Respondent discontinued use with an intent not to resume use. Thus the abandonment claim was legally insufficient.

Misrepresentation of Source: Finally, Petitioner alleged that Respondent "is using its mark so as to misrepresent that petitioner is the source of respondent's goods." Under Section 14(3), a claim that the registered mark is being used by the registrant so as to misrepresent the source of the goods is not barred after five years.

However, such a claim must be supported by "allegations of blatant misuse of the mark ... in a manner calculated to trade on the goodwill and reputation of the petitioner." A petitioner must do more than "make a bald allegation in the language of the statute, as this does not give fair notice of the basis of petitioner's claim."

Reviewing Petitioner's pleading, the Board found that Petitioner failed to allege "facts reflecting respondent's deliberate misrepresentation of the source of its products, 'blatant misuse' of the mark, or conduct amounting to the deliberate passing-off of respondent's goods." There was "no mention of specific acts or conduct by respondent aimed at deceiving the public ...."

"In interpreting Trademark Act Section 14, because Congress barred a likelihood of confusion claim after five years, we cannot conclude that the same facts recast as a misrepresentation of source claim would constitute a cognizable ground for relief. If it were otherwise, Congress’ exclusion of claims under Trademark Act Section 2(d) after five years would be rendered meaningless."

The Board therefore dismissed this claim as well.

Text Copyright John L. Welch 2007.


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