Tuesday, June 08, 2010

Precedential No. 20: Per Rule 2.107(b), TTAB Denies Motion to Amend Madrid Opposition

Opposer sought to amend its Notice of Opposition to add a new ground (lack of bona fide intent), but it ran into one big problem: the opposed application is a Madrid Request for Extension of Protection and Rule 2.107(b) prohibits such an amendment in a Madrid opposition. Opposer claimed that it was merely clarifying an existing ground, but the Board disagreed and it denied the motion to amend. O.C. Seacrets, Inc. v. Hotelplan Italia S.p.A., 95 USPQ2d 1327 (TTAB 2010) [precedential].

Opposer's notice of opposition alleged, in pertinent part, that "Applicant lacks a bona fide intent to use SECRETS LINE ... and therefore, has committed fraud on the U.S. Patent and Trademark Office."

Its proposed amendment would replace that allegation with this: "In violation of 15 U.S.C. 1141(f) Applicant lacked a bona fide intent to use SECRETS LINE ...(for certain goods and services in the opposed application)."

Opposer argued that the claim that applicant lacked a bona fide intent was an element of its original fraud claim, and that the proposed amendment is therefore a permissible clarification of an existing ground. The Board found that argument unpersuasive:

Although the particular basis for opposer’s claim of fraud in this case was the allegation that applicant falsely stated it had a bona fide intent to use its mark on all of its identified goods and services, applicant was apprised of only one ground by Paragraph 13 of the original notice of opposition, that of fraud. Fraud was the ground that applicant defended against in its motion for judgment on the pleadings, and the ground upon which judgment for applicant was entered by the Board in its April 2, 2010 order. We will not parse an asserted ground to see if any of the elements that go to pleading that ground would independently state a separate ground.

And so the Board denied the motion to amend.

TTABlog comment: On March 9, 2010, Applicant moved for judgment on the pleadings as to Opposer's original fraud claim on the ground that it was inadequately pleaded under Bose. Opposer did not contest the motion, and it was granted on April 2nd.

Meanwhile, on March 29th Opposer filed a combined motion to amend the opposition to assert the bona fide intent claim, and a motion for summary judgment on that "new" claim. The denial of the motion to amend rendered the summary judgment motion moot.

Hat tip to TTABlog reader Mark Lebow, Applicant's counsel.

Text Copyright John L. Welch 2010.


At 9:54 AM, Anonymous Orrin A. Falby said...

Their first mistake they made was to plead fraud in the first place. The basis should have been that the application is void ab initio. Question for you John. Is pleading that the application is void ab initio a way around having to plead fraud?

At 2:13 PM, Blogger John L. Welch said...

Well, I think you have to have some basis or ground for holding the application void ab initio. E.g., lack of bona fide intent. The Board hasn't held an application void ab initio on the basis of a false oath: it instead went down the fraud road. So I think the Opposer had two choices: lack of bona fide intent and fraud, both of which would result in the application being declared void ab initio.
I have argued that, instead of finding fraud in Medinol and leading us down that path, the Board should have declared the application void for filing a false oath. It didn't do that.

At 6:08 PM, Anonymous Rob said...

I agree with John in that void ab initio is a relief, not a ground. My understanding is void ab initio serves to void the entire class involved, rather than just the goods/ services subject of the fraud.

As for the ground of lack of bona fide intent to use, if established, it would surely void the goods/services involved, but I am not familiar with a case that clearly says it has the effect of voiding the registered class ab initio. I've seen people cite cases to that end, but have not found there clear language to support it.

At 6:26 PM, Anonymous M Cabanski said...

I listened to your CA Bar presentation this morning on my Iphone from my dentist's chair while she drilled without Novocaine. It was an excellent presentation that kept me distracted the whole time.

At 7:13 AM, Anonymous Rob said...

One other thought. Can't opposer just start a new action in a district court, and plead there the same ground that the Board wouldn't allow?

At 8:39 AM, Blogger John L. Welch said...

M. Cabanski: Are you saying the presentation was mind-numbing? Soporific? Both?


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