TTAB Disregards Subjective Intent Element

Continuing a recent trend of toughening its position on fraud, the Trademark Trial and Appeal Board (“TTAB”) has cancelled yet another registration because the registrant had failed to use the mark on every good for which it was registered. Hachette Filipacchi Presse v. Elle Belle, LLC, Cancellation No. 92042991 (T.T.A.B. April 9, 2007). This case is the second precedential decision this year in which the TTAB has cancelled a registration as fraudulently obtained because of overly broad claims regarding use of the mark. See also Hurley Int’l LLC v. Volta, 82 U.S.P.Q.2d 1339 (T.T.A.B. 2007).

These cases join an already substantial body of TTAB case law that takes a hard line with respect to use allegations in applications, statements of use, and post-registration filings. See, e.g., Standard Knitting Ltd. v. Toyota Jidosha K.K., 77 U.S.P.Q.2d 1917 (T.T.A.B. 2006); J.E.M. Int’l, Inc. v. Happy Rompers Creations Corp., 74 U.S.P.Q.2d 1526 (T.T.A.B. 2005) (not citable as precedent); Tequila Cazadores, S.A. de C.V. v. Tequila Centinela S.A. de C.V., 2004 T.T.A.B. LEXIS 109 (Feb. 24, 2004) (not citable as precedent); Jimlar Corp. v. Montrexport S.P.A., 2004 T.T.A.B. LEXIS 333 (June 4, 2004) (not citable as precedent); Hawaiian Moon, Inc. v. Rodney Doo, 2004 T.T.A.B. LEXIS 274 (Apr. 29, 2004) (not citable as precedent); and Medinol Ltd. v. Neuro Vasx, Inc., 67 U.S.P.Q.2d 1205 (T.T.A.B. 2003). Attempts to cure the problem and avoid cancellation by amending the registration to narrow the list of goods or services included in the registration have been rejected as ineffectual in undoing the fraud that was perpetrated in the first instance. Thus far, such amendments have always been attempted after the commencement of cancellation proceedings. However, in Elle Belle, the TTAB left open the possibility that it might accept an amendment correcting the goods if the amendment was made prior to the commencement of cancellation proceedings: “We note that respondent’s amendment was filed after the commencement of this cancellation proceeding. 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, is not currently before us.” Elle Belle, Cancellation No. 92042991 (T.T.A.B. April 9, 2007).