Wednesday, June 13, 2007

Precedential No. 41: Service Mark Application with False Use Claim is Void ab initio

In its third precedential fraud ruling of 2007, the TTAB granted summary judgment, sustaining an opposition to registration of the mark show immediately below, for "retail store services featuring bath products, gift products, [and] candy products," on the ground of fraud. Distinguishing this case from Maids to Order, the Board found that Applicant Sumatra Kendrick falsely claimed use of the mark for her services when she had never offered such services. Sinclair Oil Corp. v. Kendrick, 85 USPQ2d 1032 (TTAB 2007) [precedential].

Opposer Sinclair Oil amended its Section 2(d) opposition to add claims of fraud and nonuse. Applicant Kendrick then successfully moved to amend her application filing basis to Section 1(b) intent-to-use. However, "amending the filing basis does not protect the application from a fraud claim. See Grand Canyon West Ranch v. Haulapai Tribe, 78 USPQ2d 1696 (TTAB 2006)." [TTABlogged here].

In her interrogatory responses, Kendrick stated that she intended to do business under that name, but she had no documentation regarding use in commerce, had no income, and had done no marketing. She did give away "about 25 product samples" in a "one time creation," some five years before her filing date.

The Board ruled that Sinclair had made "a prima facie showing that there are no genuine issues of material fact remaining for trial with regard to that [fraud] claim, which showing applicant has failed to rebut."

"... applicant filed an application based on use in commerce and signed a declaration attesting to the truth of all the statements in the application when she knew or should have known that she had not used the mark in connection with the recited services.... There is no question that applicant's misrepresentation resulted in the involved application being approved for publication as a use-based application."

Although Kendrick attempted to retract her interrogatory responses in her summary judgment response, she "provided no details that are sufficient to raise a genuine issue of material fact with regard to the fraud claim."

"Even if applicant honestly believed that her activities in connection with her involved mark warranted filing the involved application based on use in commerce under Trademark Section 1(a), there is no genuine issue that, under the circumstances, it was not reasonable for applicant to believe that her activities in 1996 constituted current use or use in commerce for the identified services at the time she signed her application [in 2001]."

The Board distinguished Maids to Order of Ohio Inc. v Maid-to-Order Inc., 78 USPQ2d 1899 (TTAB 2006) [TTABlogged here], in which it found that "the defendant's limited use of its mark across state lines in connection with its recited services provided its president with a reasonable basis for her belief that the mark was being used in interstate commerce." The instant case, however, does not present a question regarding interstate use, but rather whether there was any use in connection with the recited services. Kendrick pointed to no such use.

"... applicant's activities related to the formation of her business without subsequent rendering of her retail store services do not provide a basis for a claim of use of her mark in commerce for such services. *** Further, applicant's one-time use of the mark on products does not provide a basis for asserting service mark use. See TMEP 1301.01(a) (4th ed. 2005)."

Therefore, the Board ruled that the application was void ab initio, and it granted summary judgment in Sinclair's favor.

Text Copyright John L. Welch 2007.


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