Wednesday, March 28, 2012

TTAB Discards Lame Fraud Claim but Grants 2(d) Petition to Cancel "BIO1ONE" Registration

The Board sustained this petition for cancellation of a registration for the mark BIO1ONE for "fertilizers and soil amendments for agricultural use," finding it likely to cause confusion with the earlier-used mark BIO-ONE for the identical goods. However, Petitioner's fraud claim withered and died, for the reason discussed below. Bio-One, Inc. v. A.L.E.G., Inc., Cancellation No. 92052195 (March 1, 2012).

Petitioner based its fraud claim on Respondent's assertion of a first use date that was false. While the application was still pending, Respondent amended the first use date from 1988 to 2004. Petitioner asserted that this "deliberate submission of a false and misleading declaration" under the penalty of perjury constituted fraud.

However, one critical element of fraud was missing:

[A] false claim in a date of use is not material so long as the mark was in use in commerce at the time the application was filed, if the application was based on use in commerce (Section 1(a) of the Trademark Act), or at the time the Statement of Use was filed, if the application was based on intent-to-use (Section 1(b) of the Act.)

Here, Petitioner neither alleged nor proved that Respondent had not made use of its mark as of the filing date of its Section 1(a) application. Even if Petitioner's allegations were taken as true, they do not state a ground of fraud. In other words, the date stated as the first use date has no bearing on the registrability of the mark. It is not material for purposes of a claim of fraud on the USPTO.

So the Board weeded out the fraud claim, but Petitioner's well-fertilized Section 2(d) claimed blossomed.

Text Copyright John L. Welch 2012.


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