New York Trademark Attorney Blog
In a recent decision from the Trademark Trial and Appeal Board (the “Board”), a Cancellation Petition is denied on all grounds. Both parties are claiming rights to the same mark for use with a magazine. The subject mark is THE NATIONAL POLICE GAZETTE & Design Logo, and the Petitioner’s grounds for cancellation included: (1) priority and likelihood of confusion; (2) no use of the mark at the time the application was filed; (3) abandonment; (4) false suggestion of a connection; (5) deceptiveness; (6) the registration is misrepresenting the source of the services; and (7) fraud. The Petitioner was not successful in proving any of its claims. See Steven Westlake v. Edgar Alexander Barrera and Richard K. Fox Publishing Company, Cancellation No. 92067884 (June 10, 2022).
Since the registration was more than five years old, Petitioner could not challenge based on priority and likelihood of confusion, nor on the claim of no use at the time of filing the application. See In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790, 1793 (TTAB 2017) (registration more than five years old is immune to attack on likelihood of confusion grounds). See also, Maids to Order of Ohio, Inc. v. Maid-to-Order, Inc., 78 USPQ2d 1899, 1906 (TTAB 2006) (registration more than five years old may not be challenged on the ground that the mark was not used in commerce at the time of application filing). See our web page entitled, Challenging Trademark Rights After Five Years of Registration at the TTAB, for the specific claims that can be asserted once a trademark registration is five years old. Various other grounds were denied because the Petitioner only argued the claims of abandonment and fraud in his brief, so the Board only considered those claims.
Regarding the claim of abandonment, the Petitioner argued that the Respondent hadn’t used its trademark in commerce since December 31, 2013. As evidence of non-use, the Petitioner stated that an online search for the magazine on April 14, 2019, returned a “404 Not Found” page message. In response, the Respondent submitted declarations each declaring that the specimens attached to the Declaration of Use respectively on January 29, 2016, and on the February 3, 2020, were authentic. Respondent further alleged that on each respective date that submissions were made to the USPTO, he was using the mark in Class 16 on all the goods listed and the same could be said for class 41, Respondent was using the mark on all services listed and submitted acceptable specimens consisting of advertisements and magazine covers. Based on this evidence the Board concluded that the mark was not abandoned. See our web page entitled, Abandonment and Nonuse of Trademark, for more information on this topic.
Regarding the fraud claim, the Petitioner alleged that the Respondent committed fraud by knowingly submitting digital renderings instead of proper specimens and by claiming the trademark was in use when it was not. Fraud in procuring or maintaining a trademark registration occurs when an applicant for registration or a registrant in a declaration of use or a renewal application knowingly makes specific false, material representations of fact with the intent of obtaining or maintaining a registration to which it is otherwise not entitled. See Illyrian Imp., Inc. v. ADOL Sh.p.k., 2022 USPQ2d 292 (TTAB 2022).
Again, the Respondent points to the 2016 Declaration of Use and 2020 Combined Declaration of Use and Application for Renewal and to his testimony, stating: “I [Edgar Alexander Barrera] affirm the statements made therein were true and accurate.” When it comes to the claim of fraud there is no room for speculation, and any doubt must be resolved against the Petitioner. The Board concluded that based on the evidence of record, the Petitioner did not prove by clear and convincing evidence that the Respondent committed fraud in obtaining the registration and maintaining the registration. See our web page entitled, Challenging Trademark Applications on Fraud and NonUse Claims, to review the standards of proof required for these types of claims. If you have questions pertaining to trademark abandonment or fraud claims in procuring or maintaining a trademark registration, please feel free to contact the firm for a courtesy consultation.