Fraud doctrine further clarified by TTAB

In Sinclair Oil Corporation v Kendrick, the US Patent and Trademark Office's Trademark Trial and Appeal Board (TTAB) has given further guidance on the scope of the doctrine of fraud. The TTAB held that a change in the basis for the filing of an application from a use application to an intent-to-use application, made after the filing of a notice of opposition, will not save the application where there was not an objectively reasonable basis at the time of filing for the claimed first use date in commerce.

The applicant, an individual named Sumatra Kendrick, filed a use application in 2001 to register the designation STAACHI'S CO 1996 (and design) for retail store services in relation to bath products, gift products and candy products, with a claimed first use date in commerce of March 20 1996. The opponent, Sinclair Oil Corporation, conducted discovery on the claimed first use date. Kendrick, in response to discovery requests, admitted that the grounds for her claimed first use date consisted of:

• the filing of a fictitious business name statement, which was not even identical to the applied-for designation; and
  
  
• the subsequent giveaway of 25 sample products.

In addition, from April 1996 through to the filing of her use application in 2001, Kendrick admitted in discovery that she had not earned income or done any marketing under the applied-for designation.

The TTAB held that Kendrick's statements did not meet its objective reasonableness test. Specifically, it reasoned that Kendrick could not have reasonably believed that either the filing of a fictitious business name statement or the giveaway of sample products constituted use in commerce of the applied-for mark for retail store services. Moreover, the subsequent attempt after discovery to convert the application from a use filing to an intent-to-use filing did not rescue her application since the initial statement as to use constituted a material representation of fact which was not true based on Kendrick's own discovery responses. On this ground alone, the TTAB voided the application ab initio.

Nonetheless, in a cautionary note to opponents, the TTAB gave the opponent 30 days to prove its standing to bring the opposition because it had not submitted the necessary evidence of use and registration of the marks it relied on in its notice of opposition in connection with its motion for summary judgment or in its opposition filing.

Rochelle D Alpert, Morgan Lewis & Bockius, LLP, San Francisco