TTAB grants rare summary judgment motion cancelling trademark registration

United States of America

In SARL Corexco v Webid Consulting Ltd (Cancellation No 92056456, March 27 2014), in a precedential decision, the Trademark Trial and Appeal Board (TTAB) has granted summary judgment to the petitioner and cancelled the registration for the mark BEARWW for social networking services. 

Through a cancellation petition, petitioner SARL Corexo, a French corporation, sought to cancel the registration of Webid Consulting Ltd, a United Kingdom corporation on multiple grounds. First, Corexo alleged that it had used the mark BEARWWW for social networking services prior to the registrant, and therefore, there was a likelihood of confusion between its prior used BEARWWW mark and the registered mark BEARWW due to the similarity of the marks and the overlapping services. Second, Corexo alleged that the registration was void ab initio because the original applicant (an individual who was Webid’s predecessor in interest) did not own a foreign registration in Canada that could serve as the grounds for a registration to issue under Section 44(e) in the United States. Specifically, the petitioner asserted that the Canadian registration was not owned by the same party as the US registration at the time the Section 44(e) claim was made before the United States Patent and Trademark Office (USPTO).

After Webid failed to timely respond to requests for admission, Corexo moved for summary judgment on both grounds. As to the motion for summary judgment on likelihood of confusion, the petitioner premised its arguments only on the registrant’s lack of timely responses to the requests for admission to establish that, as a matter of law, no material issue of disputed fact existed. In response, Webid asked that its late filed responses to the requests for admission be taken into consideration under Rule 36 of the Federal Rules of Civil Procedure. In connection with the motion for summary judgment, the TTAB exercised its discretion under Rule 36 and allowed the late filed admissions to be amended. Once the responses were deemed admissible, there remained no basis for summary judgment on likelihood of confusion. As to the likelihood of confusion ground, the TTAB held that there were disputed issues of material fact.

The TTAB, however, went on to consider on the merits the motion for summary judgment on the second ground that the registration is void ab initio. In this regard, the TTAB reviewed and relied on the tardy responses to the relevant requests for admissions about ownership. In those admissions, the registrant admitted that, on August 11 2011, Webid was the owner of the Canadian registration, but it was not the owner of the then pending corresponding US trademark application. Rather, Webid’s predecessor in interest, an individual, owned the US application on April 11 2011. That individual on April 11 2011 did not own any Canadian registration for BEARWW. 

Initially, the US trademark application for BEARWW was filed as a use application. When, however, the specimen of use was rejected by the USPTO, the application was amended to be based on intent to use with a priority claim emanating from a Canadian registration. Subsequently, the application was again amended (on April 11 2011), but this time to a Section 44(e) claim to seek registration based on an issued Canadian registration. At that time, however, the individual was not the owner of any Canadian registration which formed the basis for the Section 44 (e) claim for registration. The fact that, subsequently in 2012, the individual applicant assigned the registered mark in the United States to Webid, the same entity that owned the Canadian registration on which the application was based, did not serve to remedy the deficiency that existed at the time of the initial assertion of the Section 44(e) claim. The individual applicant never owned any Canadian registration before asserting the Section 44(e) filing basis. Accordingly, the TTAB cancelled the registration for BEARWW as void ab initio.

This case underscores the need to carefully consider the timing of assignments and claims of ownership, particularly when the claimed foreign registration serves as the grounds for registration in the United States.

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

Unlock unlimited access to all WTR content