Friday, March 17, 2017

Finding Misuse of "R" Symbol But No Intent To Deceive, TTAB Dismisses FACETS Opposition

The Board dismissed this 10-year old opposition to registration of the mark FACETS for computer software in the health care management field, finding that although applicant had misused the federal registration symbol, there was no evidence that applicant had an intent to deceive. Farmaco-Logica B.V. v. The TriZetto Corporation, Opposition No. 91184047 (March 14, 2017) [not precedential].

Improper use of the registration symbol will negate an applicant's right to registration only when it is conclusively shown that the misuse was intended to deceive the purchasing public or others in the trade that the mark was registered. Copeland's Enters. Inc. v. CNV Inc., 20 USPQ2d 1295 (Fed. Cir. 1991).

Applicant's mark was registered for computer software in 1995 but the registration expired in 2005 when applicant failed to renew it. However, applicant has owned other registrations for the mark FACETS for a number of services, including application service provider (ASP) services in the health care management field. Opposer contended that applicant could use the registration symbol in connection with ASP services, but not software, and that it misused the symbol with the intent to deceive purchasers, former shareholders, and others in the trade into believing that the mark was registered for the software recited in the opposed application.

The Board found that applicant misused the symbol in certain SEC filings and other documents in references to is FACETS software.

Applicant mistakenly treats its application service provider activities and its software-as-a-service activities as being one and the same. This led to Applicant misusing the federal registration symbol in connection with its unregistered FACETS software-as-a-service activities despite Applicant’s efforts to ensure that it was properly using the federal registration symbol.

The USPTO's acceptance of applicant's specimens of use for its Section 8 declarations in connection with the two ASP registrations compounded the misunderstanding. The specimens showed use of the mark for a software application, not for ASP activities. Moreover, in some documents, applicant used the R symbol and the TM symbol at different points in connection with the mark, further demonstrating applicant's intent.

As noted earlier, Applicant’s focus in deciding when and how to use the federal registration symbol was an attempt to comply with the law. From that finding, we conclude that Applicant’s use of the federal registration symbol was not an attempt to market through deception. More generally, Opposer simply did not introduce any evidence regarding how Applicant misused the federal registration with the intent to deceive anyone.

Opposer relied only on circumstantial evidence in an effort to show applicant's bad intent, asserting that applicant is an experienced trademark owner, and its attorney (17 years of trademark experience) "should - and must - have known that many of her authorizations were not reasonable."

The Board pointed out, however, that the CAFC in Bose rejected the argument that proof that someone acted on an arguably objectively unreasonable belief (as to what constituted use in commerce through repair of returned goods) is enough to prove fraud. In re Bose Corp., 91 USPQ2d at 1942. "An honestly-held belief that is objectively mistaken does not give rise to fraud because of the absence of a subjective intent to deceive."

We found that no evidence that Applicant intended to deceive the purchasing public, former shareholders, or others that FACETS was a registered mark for software or software-as-a-service.

And so the Board dismissed the opposition.

Read comments and post your comment here.

TTABlog comment: In 2015, the Board granted applicant's motion for summary judgment on opposer's Section 2(d) claim (here).

Text Copyright John L. Welch 2017.


At 5:27 PM, Anonymous Anonymous said...

I don’t agree with the definitions used by the Board as 10+ years ago ASP was the term everyone used for what is now called SAAS. And nowadays no one in the industry says they are an ASP. In any event, the result is correct.

At 6:44 AM, Anonymous Anonymous said...

The Board cites In Re Bose Corp as the justification for its decision to dismiss the opposition, but "Bose" involved misuse by an individual with no professional knowledge about trademark law, AND there was no evidence of fraudulent intent. In this case, the misusing party had an employee who was responsible for legal trademark matters, who was well-trained for this task, who could have prevented the misuse, AND there was evidence of fraudulent intent (such as the CEO knowingly signing filings with the SEC in which the trademark was misused). Does In Re Bose Corp have a bearing on this case? I don't think so!

At 1:24 PM, Blogger John L. Welch said...

On May 5, 2017, the Board denied opposer's request for reconsideration. Opposer claimed that the Board ignored its evidence of deceptive intent. The Board, however, found again that "the testimony and evidence fail to establish that Applicant knew it was not using FACETS in connection with its application service provider services."

At 3:58 AM, Anonymous Anonymous said...

This is an astonishing decision. The Board dismisses clear evidence of intent to deceive (applicant's CEO signed SEC filings in which he registration symbol was misused) by stating that the opposer did "not address whether Applicant misused the federal registration symbol with the intent to deceive." This element has been described elaborately in opposer's main brief.
Moreover and unfortunately, the Board avoids the issue of whether In Re Bose applies to this case at all. Can a trademark professional, who personally approved misuse of the registration symbol on a considerable scale, credibly maintain that he/she was unaware of such misuse?


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