Friday, May 11, 2018

Despite Phony Specimen of Use, TTAB Finds No Fraud, Dismisses COPPER 88 Opposition

The Board dismissed this opposition involving the two marks shown immediately below, for clothing embedded or infused with copper [COPPER 88 disclaimed], finding the marks too dissimilar to support a Section 2(d) likelihood of confusion claim. The Board also dismissed Opposer Tommie Copper's fraud claim, despite applicant's admission that its specimen of use were "mock ups" that were never used. Tommie Copper IP, Inc. v. Gcool-Tech Usa LLC, Opposition No. 91223768 (May 9, 2018) [not precedential] (Opinion by Judge Thomas Shaw).

Applicant's brand manager testified that applicant was not selling any goods bearing its COPPER 88 + Design mark in this country as of the filing date of the opposed application. Samples were given out to reps and his mother gave a few items to friends. The claimed dates of first use actually applied to goods offered under a different mark.

The Board found that applicant "was not selling any of its goods under the applied-for mark in the United States as of the filing date," and that applicant's statement that it was "using the mark in commerce was a false, material representation of fact to the USPTO."

The question, then, was whether applicant intended to deceive the USPTO.

Applicant's witness testified that his father (applicant's founder) "was under the mistaken impression that its use of the mark in other countries constituted use in commerce in the United States."

A: So the way that I see it, I think he got confused because he was using it. And I think he was confused. Also, I think he was confused about using CU Compression by GCool as something. So my dad’s – my dad’s not a lawyer.

Of course, the witness expressly denied that Applicant had any intent to deceive the USPTO. He agreed with with the question posed by opposer's lawyer that applicant "just didn't really understand legally what it meant to use a trademark in commerce." "I honestly think there was a lot of confusion."

The Board found no direct evidence of an intent to deceive the USPTO and insufficient evidence to warrant the inference of an intent to deceive.

As established above, at the time of filing the application, Applicant had distributed samples to prospective distributors in the United States, was developing prototype garments including “hooded sweatshirts,” was selling copper-embedded fabric under a different brand, and had sold goods in Canada under the applied-for mark.

None of those acts qualified as use in commerce, but just because applicant was wrong in thinking that these acts satisfied the requirements for filing an application does not mean that applicant had a deceptive intent. As stated in In re Bose:

There is no fraud if a false misrepresentation is occasioned by an honest misunderstanding or inadvertence without a willful intent to deceive. . . . Unless the challenger can point to evidence to support an inference of deceptive intent, it has failed to satisfy the clear and convincing evidence standard required to establish a fraud claim.

Opposer pointed to no evidence of a deceptive intent. In fact, in its questioning of the witness, opposer expressly assumed that applicant had a "mistaken belief" at the time of filing, and that it "didn't really understand" the concept of use in commerce.

And so the Board dismissed opposer's fraud claim.

Read comments and post your comment here.

TTABlog comment: What about the mock-up specimen? Did applicant think that was a real specimen? And the false first use dates?
BTW: applicant hired an attorney, who amended the application to Section 1(b) intent-to-use. How, then, could the phony specimen be material to the examination?

Text Copyright John L. Welch 2018.


At 9:00 AM, Blogger Unknown said...

Key move by Applicant to amend back to 1(b) during the opposition.

Apparently, one might be better off waiting for the mark with the fabricated specimen to register based on 1(a) and then Petitioning to Cancel on the grounds that the registration is void ab initio due to non-use.

At 9:32 AM, Blogger John L. Welch said...

If the intrastate sale of two hats at a church bookstore qualifies as use in commerce, why doesn't giving a few items to friends qualify as use in commerce? "Use" of a trademark, under Section 45, does not require "sale."

At 9:41 AM, Blogger John L. Welch said...

This comment has been removed by the author.

At 10:34 AM, Anonymous Anonymous said...

Doesn't the holding of this case fly in the face of the PTO's efforts to assure that the register does not have deadwood and that uses are genuine -- the so-called balaclava problem?

At 4:38 PM, Blogger Unknown said...

The USPTO is not interested in being responsive to applicants' concerns, despite their call for reporting suspected falsfied specimens, based on my recent experience. I've reported clear evidence of an abuse of the USPTO's lax policy for accepting specimens of use, through a well-argued letter and supported with numerous examples, only to receive a 2 page USPTO response months later saying they'd take no action.

I'm currently awaiting the outcome of an MSJ, which uses much of the aforesaid evidence as support for a fraud claim. I honestly couldn't invent a better set of circumstantial evidence for arguing intent to deceive.


At 3:13 PM, Anonymous Anonymous said...

This specimen could win for most fraudulent.

At 6:29 AM, Blogger John L. Welch said...

By the way, since the application was amended to Section 1(b) intent-to-use before publication, how was the phony specimen "material" to the examination?


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