Reliance on examiner’s suggestion does not necessarily avoid fraud claim

In Grand Canyon West Ranch LLC v Hualapai Tribe (Case 91162008, June 30 2008), in a precedential opinion, the Trademark Trial and Appeal Board (TTAB) has narrowed the margin left open in Medinol Ltd v Neuro Vasx Inc (67 USPQ 2d 1205) concerning which type of statements may constitute fraud on the US Patent and Trademark Office (USPTO). Although it still may be true that “not all incorrect statements constitute fraud”, the decision in Grand Canyon West shows that fraud may be found even if the incorrect statement results from reliance on suggestions of the trademark examining attorney. 
The Hualapai Tribe sought to register the trademark GRAND CANYON WEST for the following services:
 “airport services; air transportation services; arranging for recreational travel tours and providing related transportation of passengers by air, boat, raft, rail, tram, bus, motorized on-road and off-road vehicles, non-motorized vehicles featuring bicycles, and domestic animals.” 
Grand Canyon West Ranch opposed the application on the grounds that the mark was merely descriptive. During the opposition, the Hualapai Tribe admitted that, at the time of filing the use-based application, the mark was not being used in connection with “rail, tram, non-motorized vehicles featuring bicycles, and domestic animals.” The TTAB granted the Hualapai Tribe’s motion to delete the reference to those services. 
After amendment of the application was granted, Grand Canyon West Ranch also asserted a claim of fraud based on the Hualapai Tribe’s inclusion in its original application of services for which it had not used the mark.
The TTAB first held that GRAND CANYON WEST was primarily geographically descriptive, but had acquired distinctiveness. Hence, Grand Canyon West Ranch's objection of descriptiveness was overcome. However, the TTAB sustained the claim of fraud. The TTAB found that the Hualapai Tribe had committed fraud by its tacit acceptance of an examiner’s amendment that identified certain services for which the Hualapai Tribe had not used the mark. Regarding its acceptance of the amendment, the Hualapai Tribe argued that its mistake was based on a misunderstanding of USPTO requirements and procedures: 
"If error was introduced by the applicant’s silence to the examining attorney’s amendment, it was neither intentional nor reckless, but inadvertently made in the context of [...] an examining attorney’s puzzling wording of a recitation of services; a layman’s understanding of what constitutes trademark use; and a layman’s innocent and reasonable reliance on the examining attorney’s instructions suggesting appropriate or applicable recitations of services."
The TTAB ruled that the Hualapai Tribe knew or should have known that it had identified services for which it had not used the mark. The TTAB relied on various factors, including the following:
  • The Hualapai Tribe was represented by counsel;
  • The tribe did not make the amendment until after the opposition was initiated;
  • False information was given (use for certain services); and
  • A misunderstanding or miscommunication is not an excuse under these circumstances.
This decision emphasizes that an applicant should not automatically adopt an examiner’s suggestion regarding the identification of goods and services. By rejecting the Hualapai Tribe’s arguments, the TTAB ruled that it was the applicant’s responsibility to correct any erroneous information that may be provided in an examining attorney’s suggested identification of goods or services. 
Laura Gary and Stephen M Schaetzel, King & Spalding LLP, Atlanta

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