Wednesday, May 01, 2019

Precedential No. 10: TTAB Dismisses Rare Section 2(c) Opposition Due to Death of Named Individual

In a rare inter partes proceeding involving Section 2(c), the Board dismissed an opposition to registration of the mark MANIKCHAND for "snuff." Opposer claimed that the mark identified its founder, Rasiklal Manikchand Dhariwal, and that the application was filed without his consent, but because Mr. Dhariwal died during the pendency of this proceeding the Board ruled that Opposer no longer could claim any right under Section 2(c). M/S R.M. Dhariwal (HUF) 100% EOU v. Zarda King Ltd. and Global Technology & Trade Marks Limited, 2019 USPQ2d 149090 (TTAB 2019) [precedential] (Opinion by Judge Cheryl S. Goodman).

Evidentiary Issue: The Board first granted applicant's motion to strike an unsworn declaration submitted by opposer, that was made under the penalty of perjury but did not refer to United States law.

Rule 2.123(a)(1) provides that testimony may be submitted in the form of a sworn affidavit or an unsworn declaration under Rule 2.20. The latter Rule states that, in lieu of a sworn statement, the language of 18 U.S.C. § 1001, or a specified paragraph referring to 18 U.S.C. § 1001, may be used. In addition, 35 U.S.C. Section 25 authorizes the USPTO to accept a declaration under Section 2.20 or the language of 28 U.S.C. § 1746. In either case, a declarant is subject to United States perjury laws if willful or knowing false statements are made.

When the declaration is signed in the United States, the laws of the United States apply automatically. However, if the declaration is signed outside the country, the declarant must state his or her intention to be bound by United States law. As observed in Jack v. Trans World Airlines, 854 F. Supp. 654, 658 n.3 (N.D. Cal. 1994):

When a person executes a document outside the United States, a recitation that it is made under penalty of perjury without reference to which country’s perjury laws will be applied provides no assurance of truthfulness because the penalty of perjury may be non-existent or trivial in the place where the person signed the document.

Here, the declaration in question, which was executed in Pune, India, did not include the necessary language and reference to 18 U.S.C. § 1001. As to Section 1746, an unsworn declaration must be "substantially in the following form:"

I declare (or certify, verify, or state) under penalty of perjury under the laws of the United States of America that the foregoing is true and correct. Executed on (date). (Signature).

The challenged declaration did not substantially comply with 28 U.S.C. § 1746 due to the absence of the wording “under the laws of the United States” or its substantial equivalent. Therefore the Board granted the motion to strike.

Section 2(c): Section 2(c) prohibits registration of a mark that consists of or comprises a name, portrait, or signature identifying a particular living individual except with his or her written consent. This provision applies not only to full names but also to shortened names and nicknames, as long as the name identifies a particular living individual.

Opposer claimed that MANIKCHAND identifies its founder, Rasiklal Manikchand Dhariwal. Each of opposer's tobacco products bears the statement: "Formulation by Rasiklal Manikchand Dhariwal." The Board therefor found that opposer and its founder were in privity for purposes of bringing an opposition under Section 2(c).

When the opposition was filed Mr. Dhariwal was alive, but he died during the pre-trial phase of the proceeding. Opposer argued that his death has no effect on the Section 2(c) issue, but the Board disagreed.

Because a § 2(c) claim is based on public association with the name of a particular living individual, the question of present-day recognition by the public must be considered at the time registration is sought, since an individual’s notoriety with the public could fade over time.

The Board concluded that any right that opposer may have had under § 2(c) expired upon Mr. Dhariwal's death because he was the “particular living individual” protected by § 2(c).

Whatever the facts were at the time the subject application was filed or when this proceeding commenced, evidence adduced at trial establishes that Mr. Dhariwal had by then passed away, extinguishing any right to oppose on the ground that the mark in the subject application is the name of a living individual. To the extent that Opposer has rights regarding the use or registration of the MANIKCHAND name after Mr. Dhariwal’s death, they do not arise under § 2(c).

And so the Board dismissed the opposition.

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TTABlog comment: In its main brief, opposer argued the ground of false association under Section 2(a), a claim that presumably would have survived the death of Mr. Dhariwal. However, this ground was not pleaded and applicant objected to its consideration. The Board concluded that the Section 2(a) issue was not tried by consent and it therefore refused to consider it.

Text Copyright John L. Welch 2019.


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