Another Fraud Claim Fails to Clear the "Deceptive Intent" Hurdle

Fraud is very difficult to prove. It's not the falsity of the statement, or its materiality, that causes the problem. It's proving an intent to deceive the USPTO. Petitioner Jason Green tripped over that particular hurdle in this proceeding seeking cancellation of a registration for the mark OMNI BIOTIC for food supplements. Green claimed priority and likelihood of confusion with his common law mark OMNIBIOTICS for supplements, as well as fraud. He proved neither. Jason Green v. Institut Allergosan Pharmazeutische Produkte Forschungs- und Vertriebs GmbH, Cancellation No. 92069600 (September 1, 2021) [not precedential] (Opinion by Judge Christopher Larkin).

Section 2(d):  The Board dismissed this claim because Petitioner Green failed to show, by a preponderance of the evidence, that he used the OMNIBIOTICS mark prior to respondent’s first use of its OMNI BIOTIC mark in the United States in 2009, 2011, and 2014. Although respondent's sales in the U.S. may have been minimal, they sufficed to establish priority.

Fraud: Petitioner's fraud claim was based on the allegation that respondent did not have a bona fide intent to use the OMNI BIOTIC mark when it filed its Section 66(a) application that matured into the challenged registration.

To show fraud, Petitioner must prove that (1) Respondent made a false representation to the USPTO, (2) the false representation was material to the registrability of the mark, (3) Respondent had knowledge of the falsity of the representation, and (4) Respondent made the representation with intent to deceive the USPTO.

Petitioner Green insisted that respondent did not have a bona fide intent because it introduced "no documentary evidence to show any intention of [sic] plans for using its mark in the United States at the time of filing the OMNI BIOTIC mark." The Board pointed out that it didn't need to decide whether respondent had a bona fide intent because "that is not the claim before us." Greem asserted fraud, and "even if Respondent materially misrepresented to the USPTO that it had a bona fide intention to use the mark in commerce, Petitioner must show that the false representation was made with a 'knowing intent to deceive.'"

Petitioner makes no effort to do so, instead arguing that “the submitted OMNI BIOTIC application contained knowingly false material representations of fact with the intent to deceive the USPTO regarding use of food supplement products in International Class 5, and therefore constitutes fraud.” ***  Petitioner essentially assumes the existence of a “knowing intent to deceive” from the fact that a misrepresentation was made.

Respondent's witness testified that "since at least as early as 2009, IAP has steadfastly intended to use the OMNI BIOTIC mark in U.S. commerce in connection with the goods identified in the registration under attack in this proceeding." Petitioner did not cross-examine her or otherwise impeach her testimony.

"Absent proof of the requisite intent to mislead the PTO, 'even a material misrepresentation would not qualify as fraud under the Lanham Act,'" 40-0, 2021 USPQ2d 253, at *24 (quoting Bose, 91 USPQ2d at 1940), and Petitioner's "fraud claim fails and is dismissed."

Read comments and post your comment here.

TTABlogger comment: In the two cases since Bose in which the Board found fraud, the finding of deceptive intent was based on the contradictory and evasive testimony of the defendant. So if you want to prove fraud and you don't have a "smoking gun" document, you need to examine the other side's witnesses.

Text Copyright John L. Welch 2021.