Thursday, February 21, 2019

Finding No Fraud and Naked Licensing Barred by Licensee Estoppel, TTAB Denies TREE'S WINGS & RIBS Cancellation Petition

The Board dismissed this petition for cancellation of a registration for the mark TREE'S WINGS & RIBS, in standard character form, for restaurant services, ruling that petitioner's abandonment-by-naked-licensing claim was barred by the doctrine of licensee estoppel, and rejecting its fraud claim as legally and factually groundless. A & M Wings, Inc. v. Glenn Thompson, Cancellation No. 92064044 (February 14, 2019) [not precedential] (Opinion by Judge Susan J. Hightower).

Abandonment: The Board gave short shrift to Petitioner's abandonment claim. Petitioner alleged that Respondent Glenn Thompson has abandoned his mark by uncontrolled or “naked” licensing to Petitioner itself and to third parties.

Petitioner submitted evidence that Respondent licensed it to use the name “Tree’s Wings and Ribs” in 1995, and that in 2004 the parties extended the license agreement for 99 years, until 2103. * * * Because Petitioner is licensed to use the subject mark, the doctrine of licensee estoppel bars Petitioner from bringing a claim that Respondent abandoned the mark through uncontrolled licensing. See, e.g., Freeman v. Nat'l Assn. of Realtors, 1700, 1703 (TTAB 2002).

The Board therefore dismissed the abandonment claim.

Fraud: Petitioner asserted that Respondent Thompson committed fraud on the USPTO when he renewed his registration, by submitting a picture of Petitioner’s restaurant and website as specimens. According to Petitioner, its use of the mark is not “controlled” by Respondent, and therefore Petitioner’s use as depicted in the renewal specimens does not inure to Respondent’s benefit.

Respondent, when he submitted the Section 8 specimens of use, stated that "the mark is in use in commerce" and that the specimens "show the mark as used in commerce." These statements were true. The USPTO does not require "an application to specify if the applied-for mark is not being used by applicant but is being used by one or more related companies whose use inures to the benefit of applicant." Applying this policy to respondent's Section 8 Declaration, he was not required to disclose that the claimed use was by petitioner. "[T]his omission was immaterial and cannot serves as the basis for a fraud claim."

In any event, Petitioner has not shown that Respondent intended to deceive the Office. There was no false allegation that Respondent had the requisite control over Petitioner’s use, because there was no such allegation in Respondent’s submission to the Office. And Petitioner has not proven that Petitioner knew the use claimed in the Section 8 affidavit did not inure to his benefit, but falsely represented to the Office that it did. Rather, Petitioner argues that Respondent submitted the specimen “knowing that Petitioner did not consider such use to inure to Respondent.” Petitioner’s Brief at 32, 30 TTABVUE 33. Petitioner’s own belief does not establish Respondent’s intent to deceive the Office.

And so the Board dismissed the fraud claim.

Read comments and post your comment here.

TTABlog comment: Not the clearest explanation of the fraud issue, but there you have it.

Text Copyright John L. Welch 2019.


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