American Intellectual Property Law Association
TTAB REVIEW
CASES FROM 2014
Firm
George W. Lewis, Esq.
Westerman, Hattori, Daniels & Adrian
IP PRACTICE IN JAPAN COMMITTEE PRECONFERENCE
AIPLA MIDWINTER INSTITUTE
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ORLANDO, FLORIDA
JANUARY 28. 2015
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FRAUD
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Nationstar Mortgage LLC v. Ahmad, 112 USPQ2d 1361 (TTAB 2014)
[precedential]
The Board upheld an opposition to registration of the mark
NATIONSTAR for, Mortgage banking services, namely,
origination, acquisition, servicing, securitization and
brokerage of mortgage loans. Because the Applicant had
not used the mark for the identified services, the Board
found that Applicant’s incorrect statement alleging the use
of the mark was fraudulent.
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FACTS OF THE CASE
The Applicant was a licensed real estate agent, but he was
not a licensed real estate broker, insurance broker, or
mortgage insurance broker. In his capacity as a licensed
real estate agent, he assisted his customers in choosing the
appropriate mortgage and insurance agents/brokers and in
preparing the applications.
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STANDARDS FOR FINDING FRAUD
• Fraud in procuring a trademark registration occurs when
– (1) an applicant knowingly makes false;
– (2) material representations of fact in connection with its
application; and
– (3) with intent to deceive.
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INTENT REQUIREMENT FOR FRAUD
• Subjective intent to deceive is an indispensable element
in the analysis even though it can be very difficult to
prove.
• A false statement of material fact is not fraud if it was
made with a reasonable and honest belief that it was
true.
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CONCLUSIONS OF THE BOARD ON THE ELEMENTS
FOR FRAUD
• KNOWINGLY FALSE - The mark was not in use for the
identified services false and the Applicant knew that it was
false.
• MATERIALITY - A false allegation of use in a Section 1(a)
application is always material since in the absence of use,
the application would not issue to registration under Section
1(a).
• INTENT - As to the intent to deceive the Board found the
Applicant’s testimony to be generally unbelievable; that the
applicant made very specific false statements about his own
industry and his own activities, knowing that he did not have
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the appropriate
specimens.
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Section 14(3) – GROUNDS FOR CANCELLATION OR
OPPOSITION
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Bayer Consumer Care AG v. Belmora LLC, 110 USPQ2d
1623 (TTAB 2014) [precedential]
The Board granted Bayer’s petition to cancel Registrant
Belmora’s registration for the mark FLANAX for
“orally ingestible tablets of Naproxen Sodium for use as
an analgesic,” on the ground that the mark was being
used by Registrant Belmora to misrepresent the source
of its goods in violation of Section 14(3) of the
Trademark Act.
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FACTS OF THE CASE – FINDINGS BY THE
BOARD
Petitioner Bayer’s FLANAX brand analgesic has been
sold in Mexico since 1976 and ranks as the top-selling
pain reliever in Mexico. Belmora used the FLANAX mark
in the United States for the same goods in order to
misrepresent to U.S. consumers the source of respondent’s
products as Bayer’s Mexican products. There were many
U.S. customers of Mexican origin who were familiar with
Bayer’s FLANAX product sold in Mexico and would
assume that the U.S. product sold under the FLANAX
mark was the same product and came from the same
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BAYER’S DIFFICULTIES UNDER SECTION 2(d)
The claims of likelihood of confusion under Section 2(d) were dismissed
because Bayer:
– (1) does not own a registration for the mark FLANAX in the United
States;
– (2) had not used the mark in the U.S.; and
– (3) did not plan to use the mark here.
In the absence of use, there are no protectable trademark
rights. In order to proceed under Section 2(d), a party must
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haveFirm
prior
trademark rights.
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BAYER’S DIFFICULTIES UNDER PARIS CONVENTION
PROVISION FOR FAMOUS MARKS
Bayer's claim of violation of Section 6b of the Paris
Convention was also dismissed because the Paris
Convention is not self-executing and does not afford an
independent cause of action for parties in Board
proceedings.
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Section 14(3) of the Trademark Act
• Under Section 14(3) of the Trademark Act, a registration of
a mark may be cancelled if the mark "is being used by, or
with the permission of, the respondent so as to misrepresent
the source of the goods or services on or in connection with
which the mark is used.”
• The Board found that the record evidence “readily
establishes blatant misuse of the FLANAX mark in a
manner calculated to trade in the United States on the
reputation and goodwill of petitioner’s mark created by its
use inFirm
Mexico.”
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DILUTION BY BLURRING
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Chanel, Inc. v. Makarczyk, 110 USPQ2d 2013 (TTAB
2014) [precedential]
The Board sustained Chanel, Inc.’s opposition to
registration of the mark CHANEL for “real estate
development and construction of commercial, residential
and hotel property,” finding the mark likely to cause
dilution-by-blurring of Opposer’s famous CHANEL mark
even though Chanel had not involvement in Real Estate.
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FACTS OF THE CASE – FINDINGS OF THE BOARD
• Chanel established that it began using its mark in the United
States in the 1930s, and the mark has consistently been ranked as
one of the most recognized and famous brands in the United
States. The mark is famous for it perfume and retail outlets and
has been used for many other “so-called” designer goods and
services by itself and its licensees. Applicant was attempting to
trade on the goodwill, fame and reputation generated by the
CHANEL mark in order to promote and market his own services.
Applicant is not a counterfeiter and is not trying to pass off his
services as those of CHANEL. The Applicant sought to take
advantage of Chanel’s reputation for taste, sophistication etc. to
imply that his services shared these qualities. Applicant uses in
connection with his real estate development and construction of
commercial, residential and hotel property services not only the
CHANEL
mark but also the marks HERMES and PLAYBOY
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among others.”
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ELEMENTS OF A CLAIM OF DILUTION BY BLURRING
To prevail on a claim of Dilution by Blurring in a Board
proceeding the plaintiff must prove:
– (1) that plaintiff mark is famous and distinctive;
– (2) the defendant is using a mark in commerce that allegedly dilutes
the plaintiff’s famous mark;
– (3) the defendant’s use of its mark began after the plaintiff’s mark
became famous; and
– (4) the defendant’s use of its mark is likely to cause dilution by
blurring.
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What is Dilution by Blurring?
• Dilution by Blurring occurs when:
– (1) a substantial percentage of consumers, upon seeing the
junior party’s use of a mark on its goods or services, are
immediately reminded of the famous mark and associate the
junior party’s use with the owner of the famous mark, even if
they do not believe that the goods or services come from the
famous mark's owner, or that the famous mark’s owner
approves the goods or services; and
– (2) that such association is likely to ‘impair’ the
distinctiveness of the famous mark.
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EVIDENCE OF USE - DILUTION BY BLURRING vs.
SECTION 2(d)
Unlike a Section 2(d) Claim, the Opposer asserting a claim of
Dilution by Blurring
– does not have to allege and prove a likelihood of confusion;
– But must show that consumers of the Applicant’s goods will
make an association between the mark and the mark of the
Opposer.
An Opposer must show that there is use of the mark
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Applicant and that the use causes the
Dilution by Blurring.
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OPPOSER’S NEAR FATAL ERROR ON THE ISSUE OF
USE
• The case proceeded under the Board’s Accelerated Case
Resolution (“ACR”) regime and the Applicant did not
submit evidence or a brief. There was no direct evidence
of the use of the mark.
• An Opposer asserting a dilution claim against an
application based on an allegation of actual use in
commerce pursuant to Section 1(a) may prove
applicant’s use in commerce by direct evidence or (2)
may rely
on the application filing date as the date of
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constructive use.
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Thanks for your attention! Questions?
George W. Lewis
Westerman, Hattori, Daniels & Adrian
1250 Connecticut Avenue NW
Washington, D.C. 20036
(202) 822-4548
glewis@whda.com
www.whda.com
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