TTAB ruling clamps down tighter on fraud in filings

The Trademark Trial and Appeal Board (TTAB) of the US Patent and Trademark Office is continuing its unwavering focus on fraud with a precedential decision in Hachette Filipacchi Presse v Elle Belle LLC. The TTAB reiterated the rule established in the seminal case of Medinol Inc v Neuro Vasx Inc (67 USPQ2d 1205, TTAB 2003) (see Landmark fraud case goes to Medinol) that fraud is a strict liability claim, which does not turn on subjective intent. However, for the first time the TTAB expressly applied this rule to counsel, as well as to applicants and registrants.

On a motion for summary judgment, the TTAB reviewed the registration owned by registrant Elle Belle LLC for the mark ELLE BELLE for "clothing articles for men, women and children, namely, shirts, trousers, vests, jerseys, pants, pyjamas, T-shirts, socks and stockings, singlets, corsets, garters". The TTAB found that it was undisputed that Elle Belle did not have any evidence of use for clothing articles for men and children, and had proof of use for only certain of the women's clothing articles listed in the application at the time of filing. Rejecting each of Elle Belle's rationalizations for its inaccurate trademark filing, the TTAB cancelled the registration.

To avoid cancellation based on fraud, the registrant argued that its attorney had inadvertently misunderstood the products that Elle Belle offered as opposed to the products on which it intended to use the applied for mark. Rejecting this justification, the TTAB asserted that "respondent and its attorney shared the duty to ensure the accuracy of the application and the truth of its statements". The TTAB held that counsel has an obligation to seek facts supporting or possibly controverting the averments in trademark filings. Further, the attorney must be satisfied that the application is accurate and supported by prevailing law. If the attorney in this matter had adhered to these established obligations, the "situation herein could have been prevented".

In a further attempt to avoid cancellation, Elle Belle justified the failure to use precision in its trademark application on language difficulties. Elle Belle argued that because its president was born outside the United States and did not speak English well, he had not understood the nature of what he was signing.

The TTAB summarily rejected this excuse, noting that lack of language skills does not shield a registration from being cancelled on the basis of fraud. Elle Belle's president had an obligation to understand what he was signing.

The TTAB also summarily rejected the hypothetical argument that if the application had been properly limited to certain women's clothing items, Elle Belle would have been issued a registration, albeit covering only limited items of women's clothing. As it did in Medinol, the TTAB held that any overly broad use claim taints the entire registration.

Finally, the TTAB rejected the registrant's retroactive attempt to amend the registration to include only the goods for which it was actually used. While the cancellation action was pending, the registrant had filed an amendment with the post-registration section to limit the specification of goods so that it listed only the specific items of women's clothing on which its mark was used, which the post-registration section had accepted. However, the TTAB took no note of this. Instead it held that once a cancellation action is pending, it has sole authority "to determine the propriety of any proposed amendments to the registrations". Thus, the TTAB gave no effect to the accepted amendment, while specifically rejecting the notion that such an amendment could cure fraud. Significantly, in a footnote the TTAB once again left open the question of "whether an amendment to correct the description of goods that is submitted before a cancellation proceeding is filed would cure or remove fraud as an issue".

Until the TTAB clarifies whether it is possible to remedy an error in a trademark filing before a cancellation or opposition proceeding has been brought, attorneys and their clients should review carefully existing US use applications and registrations for vulnerability to fraud claims, and new applications should be filed if warranted. No other guaranteed avenues for remedying any inadvertent allegations of use in trademark filings exist at this time.

For discussion of another recent TTAB decision on fraud, see Fraudulent claim of use kills THE SIGN.

Rochelle D Alpert and James R Sims III, Morgan Lewis, San Francisco and Washington DC