Thursday, October 23, 2008

"GOTHAM BATMEN" Strike Out: TTAB Finds Fraud, Sustains Opposition on Summary Judgment

In a case similar to Medinol, the Board sustained DC Comics' opposition to registration of the marks GOTHAM BATMEN in standard character and design form [GOTHAM disclaimed], ruling that Applicant Gotham City Networking committed fraud on the USPTO when it falsely amended its use-based application to specify certain entertainment services for which it had never used the mark. DC Comics v. Gotham City Networking, Inc., Opposition No. 91175853 (September 24, 2008) [not precedential].

Applicant originally sought to register its marks for "recreational services in the nature of sports teams," but via examiner's amendment changed that to "entertainment services in the nature of softball, baseball, basketball and hockey games." Discovery revealed, however, that Applicant had used the mark only in connection with softball games.

Applicant claimed that the error was an "inadvertent mistake" and "immaterial." The Board was not impressed. It pointed out, once again, that "[s]tatements regarding the use of the mark on goods and services are certainly material to issuance of a registration." Moreover,

"It is irrelevant that registrations have yet to issue for applicant's marks. The timing of the misrepresentation is immaterial. Whether the false statements alleging use of the mark in commerce occur at the time of filing the application, during the examination process, or at a later point during the USPTO's review of the statement of use, the result is the same -- an application results in a registration improperly accorded legal presumptions in connection with goods and/or services on which the mark is not used."

The Board pointed out that Applicant's counsel (a co-founder of Applicant and a member of its softball team) authorized the examiner's amendments "when [Applicant] knew or should have known that it did not use the involved marks in connection with all the recited services, as amended, as of the filing dates of the applications."

"Thus, as in Medinol, a material representation of fact with regard to use of the mark on particular services was made by applicant and that statement was relied upon by the USPTO in determining applicant's right to registration."

Applicant's claim of inadvertence did not change the finding of fraud, since "proof of specific intent is not required, rather, fraud occurs when an applicant or registrant makes a false material representation that the applicant or registrant knew or should have known was false."

The Board therefore deemed the applications void ab initio.

TTABlog comment: In footnote 4, in a blatant bit of obiter dictum, the Board notes that "a misstatement in an application as to the goods or services on which a mark has been used does not rise to the level of fraud where an applicant amends the application prior to publication." For that proposition, the Board cites Universal Overall Co. v. Stonecutter Mills Corp. 154 USPQ 104 (CCPA 1967). Curiously, it does not cite its own recent precedential decision in University Games Corp. v. Inc., 87 USPQ2d 1465 (TTAB 2008), wherein two panel members ruled that such an amendment prior to publication merely raises a presumption that the applicant lacked the intent to commit fraud. Only the third panel member said that the fraud is completely cured by such an amendment. So what exactly is the law on this point?

I note again that Universal Overall is a questionable foundation for the "pre-publication amendment cures fraud" idea. In that case, Applicant did not list a number of goods, only to admit that it had used the mark on only one of them. Instead, applicant misidentified its goods as various clothing items when it fact it was selling textile fabrics. The point is, it was selling the goods involved but it just misidentified them. In the instant case, Applicant claimed to be using the mark for four services, when in fact it had used the mark only for one. Moreover, at the time Universal Overall was decided, an applicant did not have the option to file an intent-to-use application. Maybe the CCPA was looking more leniently to an applicant who could not file other than on a use basis. Maybe the availability of the intent-to-use filing basis should result in a stricter application of the fraud doctrine once an applicant chooses the Section 1(a) basis and verifies that all the listed goods and/or services are in actual use.

In any case, it certainly appears that the Board is inclined to allow fraud to be cured if an amendment is filed before publication. This approach, of course, looks to whether the USPTO has relied on the false statement -- i.e., whether the USPTO has deemed the application ready for publication. But it ignores the reliance by third-parties who search pending applications on the USPTO database and who, based on a false identification that has not yet been corrected, decide not to adopt a particular mark for particular goods or services. And, of course, this "liberal cure" approach makes the original verification in the application rather meaningless.

Text Copyright John L. Welch 2008.


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