Thursday, September 25, 2008

TTAB Finds Fraud in Section 8 Declaration, Cancels Registration of Italian Wine Company

Granting Petitioner Sierra's cross-motion for summary judgment and sustaining its cancellation petition, the Board found that Registrant Montelvini S.p.A. committed fraud on the USPTO when it filed its Section 8 Declaration of Use. Registrant verified that its registered mark MONTELVINI VENEGAZZU & Design (shown below) was in use on "wines, spirits, and liqueurs," when in fact it was not in use on liqueurs. Sierra Sunrise Vineyards v. Montelvini S.p.A., Cancellation No. 92048154 (September 10, 2008) [not precedential].

Montelvini's registration issued under Section 44(e), based on its Italian counterpart registration. When it came time to file the Section 8 Declaration, its US counsel inquired whether Respondent was still using the mark "in connection with the goods listed in the Certificate of Registration" and asked for two specimens of the mark as currently used in the U.S. The Declaration was signed and filed electronically by Respondent's U.S. counsel and was submitted without deletion of any of the original goods. However, the mark had not been used on liqueurs.

Montelvini here claimed that "there was a failure on the part of the Italians to appreciate the USPTO's requirement to demonstrate specific actual use of the mark on each of the various goods contained within the larger class." The Board was not moved. "Respondent had an obligation to work with its legal counsel to ensure that no false statements were made before the USPTO. *** Clearly, respondent should have known that its allegation of use of its registered mark in connection with 'liqueurs' in U.S. interstate commerce was false."

The Board was likewise not persuaded by Montelvini's assertion that "language and cultural differences in the U.S. and European viewpoint of wine in relation to other alcoholic beverages contributed to the submission of a false statement." It pointed out that "[Respondent's president] was obligated to confirm the meaning and accuracy of the statements contained in the application before signing the declaration and prior to submission to the USPTO." Quoting Hachette Filipacchi Presse v. Elle Belle, LLC, 85 USPQ2d 1090, 1094 (TTAB 2007) [precedential].

Montelvini's motion to amend the registration was denied, since deletion of goods upon which the mark has not been used "does not remedy an alleged fraud upon the Office" in the maintenance of a registration.

TTABlog comment: This was a rather straightforward decision under current TTAB fraud precedent. What this case does underscore, however, is that foreign trademark owners who obtain registrations under Section 44 (and 66) are particularly in jeopardy on the fraud issue. The idea that the mark must have been used on all the goods in a registration is, shall we say, foreign to them. For a discussion of the problem, see Section I of this article.

Text Copyright John L. Welch 2008.


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