Tuesday, July 05, 2011

TTAB Non-Shocker: Summary Judgment Denied as to Fraud

In a nonprecedential interlocutory order [pdf here], the Board denied cross-motions for summary judgment based on fraud in this cancellation proceeding directed at a registration for the mark GOLDEN VISION FLOWER INC. & Design for flowers, seeds, and plants. Petitioner claimed that Respondent committed fraud when it submitted a Statement of Use that was sign by a person who falsely claimed to be president of the company, when she was not an officer at all, and who signed the statement based on use of the mark by a third party. Atlas Flowers, Inc. d/b/a Golden Flowers v. Golden Vision Flower Inc., Cancellation No. 92050966 (June 28, 2001) [not precedential].

Fraud: The Board found that genuine issues of material fact precluded the granting of either motion for summary judgment.

"At a minimum, genuine issues of material fact exist as to respondent's intent to commit fraud on the Office. The parties are advised that the factual question of intent is particularly unsuited to disposition on summary judgment."

Defect in SOU Signature: Petitioner also sought to add a separate claim for cancellation based on the fact that the person who signed the Statement of Use was not qualified to do so, and furthermore that the statement she signed was based on use of the mark by a third party. However, the Board pointed out that such an amendment would be futile because "the signature, and basis therefor, as opposed to fraud in executing the declaration, do not by themselves form a statutory ground for cancellation."

"Petitioner is correct to plead the relevant allegations under a ground of fraud, but petitioner may not separately plead them to allege that the resulting registration is invalid. The acceptability of the signature on respondent's statement of use is an issue that may be raised by the Office during examination, but it is not a statutory ground for opposition or cancellation by third parties." [TTABlog query: How would the PTO know to question the signature in this case?]

And so the Board resumed proceedings and re-set the discovery and trial dates.

TTABlog comment: Suppose Petitioner cannot prove an intent to deceive the USPTO. Does the registration survive despite the defective declaration? In a case like this, where the USPTO would have had no reason to question the signature on the Statement of Use, shouldn't a third party be able to challenge the validity of the registration without having to prove fraud?

The petitioner in this proceeding also claimed non-use, so maybe that claim will prove to be fatal to the registration.

Text Copyright John L. Welch 2011.


At 9:49 AM, Anonymous Orrin A. Falby said...

John - the signature issue to me seems futile. Unlike the application, which is required to be signed by someone with legal authority to bind the company, anyone with knowlege that the mark is being used in commerce could sign the SOU. Stating that the signatory is the President, when she is not, is a simple error that could be corrected and is not material.


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