IT'S A GIRL THING is a fraud, says TTAB

In JEM International Inc v Happy Rompers Creation Corp, the US Patent and Trademark Office's (USPTO) Trademark Trial and Appeal Board (TTAB), in a non-precedential opinion, has granted a summary judgment motion cancelling Happy Rompers Creation Corp's registration for IT'S A GIRL THING on the grounds of fraud.

Happy Romper was granted a federal registration for the trademark IT'S A GIRL THING for over 150 different items of clothing. JEM International Inc filed a petition for cancellation of the registration alleging that it so resembled JEM's earlier GIRL THING mark as to be likely to cause confusion. JEM further alleged that Happy Romper had committed fraud by falsely claiming in its statement of use that it was using its mark in connection with all of the goods listed in the application. After discovery commenced, Happy Romper filed a motion seeking to amend its registration to delete over 100 of the items of clothing from the identification of goods. JEM moved for summary judgment based on the claim that Happy Romper was not using and had never used its mark in connection with the clothing items it now sought to delete from the registration.

Happy Romper responded that its misrepresentation to the USPTO was unintentional, "the result of carelessness, not fraud", and "an administrative error and oversight resulting from a lack of knowledge as to Trademark Office procedures". JEM replied that no knowledge of USPTO procedures was needed to understand the meaning of using a mark "on or in connection with all the goods/services listed in the application/notice of allowance", the language contained in Happy Romper's statement of use. Further, JEM argued that the statement of use was false and, regardless of Happy Romper's mindset, not using the mark on the goods identified in the statement of use was sufficient to establish intent to commit fraud.

The TTAB agreed, citing Medinol Ltd v Neuro Vasx Inc:

"a trademark applicant commits fraud in procuring a registration when it makes material representations of fact in its declaration which it knows or should know to be false or misleading."

It also, as in Medinol, held that Happy Romper's subjective intent was irrelevant and the proper inquiry was the objective manifestations of that intent. The TTAB noted that, when it filed its statement of use, Happy Romper was not using its mark on or in connection with the first nine items listed on the notice of allowance and these items, being at the beginning of the list, are the most likely for a declarant to read before signing off the declaration. The TTAB concluded that a statement of use form is not complicated and, even though the list of clothing items was extensive, "the respondent knew or should have known its statement of use was materially incorrect" and "reckless disregard for the truth is all that is required to establish intent to commit fraud in the procurement of a registration".

John W McGlynn, Ladas & Parry LLP, New York

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