March 2010 Issue
TTAB Cases
Qualcomm Inc. v. FLO Corp.,
93 USPQ2d 1768 (TTAB Feb. 25, 2010)
ABSTRACT
Opposer attempted to base its fraud claim on the allegation that Applicant “knew or should have known” of Opposer’s prior use and registration of its pleaded marks and therefore could not have had a good-faith belief that Applicant was the owner of the mark at issue. The TTAB held that, in light of In re Bose, such a claim based on a “knew or should have known” allegation is insufficient. The TTAB also denied Opposer’s motion for summary judgment because it was filed before Opposer had served initial disclosures. It did so even though Applicant had not formally objected to the motion as prematurely filed, finding that the disclosure requirement cannot be waived.
CASE SUMMARY
FACTS
FLO Corporation (“Applicant”) filed an application to register the mark FLO for various goods and services, alleging a bona fide intent to use the mark in commerce pursuant to 15 U.S.C. § 1051(b). Qualcomm Inc. (“Opposer”) claimed that Applicant lacked a bona fide intent to use the mark on all of the identified goods and services “at the time of filing said application,” and also alleged fraud and a likelihood of confusion with its previously registered FLO and MEDIAFLO marks.
Opposer moved for summary judgment on its argument that Applicant “is, for all intents and purposes defunct and no longer in business,” and that Applicant had therefore “abandoned” the applied-for mark and could no longer have a bona fide intent to use the mark. The TTAB decided the summary judgment motion and, although Opposer had not moved for summary judgment on its fraud claim, the TTAB also addressed the sufficiency of Opposer’s fraud allegations.
ANALYSIS
The TTAB stated that in inter partes proceedings commenced after November 1, 2007, a party may not file a motion for summary judgment under Trademark Rule 2.127(e)(1) until that party has made its initial disclosures, unless the motion asserts claim or issue preclusion or lack of jurisdiction by the TTAB. Here, Applicant had not expressly objected to the motion for summary judgment as prematurely filed, but the TTAB held that the requirement that a party serve its initial disclosures prior to or concurrently with the filing of a motion for summary judgment cannot be waived. Because Opposer had not served its initial disclosures, the TTAB found the motion for summary judgment to be premature and denied it on that basis.
The TTAB also faulted Opposer’s summary judgment motion on additional grounds. First, Opposer could not obtain summary judgment on the grounds that applicant “no longer has a bona fide intent to use the applied-for mark” when the allegation in its notice of opposition was that Applicant lacked a bona fide intent to use the mark “at the time of filing [the involved] application.” Second, even if properly pled and thus suitable for summary judgment, abandonment is not available when the opposed application is based on Section 1(b).
Next, although fraud was not an issue raised in the motion for summary judgment, the TTAB discussed Opposer’s allegation in the notice of opposition that applicant “knew or should have known” of Opposer’s prior use and registration of its pleaded marks, and “therefore could not have formed the requisite good faith belief that [a]pplicant is the owner of the mark sought to be registered, and that no other person, firm, corporation or association has the right to use said mark in commerce.”
As to this claim, the TTAB found that, “[t]o the extent that opposer intends to set forth a claim in this paragraph that applicant committed fraud by making false averments in the declaration in support of its involved application, such claim is legally insufficient.” Citing the Federal Circuit’s recent decision in
In re Bose Corp., 580 F.3d 1240 (Fed. Cir. 2009), the TTAB held that fraud in procuring or maintaining a trademark registration occurs when an applicant or registrant knowingly makes specific false, material representations of fact in connection with an application to register or in a postregistration filing with the intent of obtaining or maintaining a registration to which it is otherwise not entitled. The TTAB further held that because intent is a required element to be pleaded for a claim of fraud, allegations that a party made material representations of fact that it “knew or should have known” were false or misleading are insufficient.
The TTAB then specifically delineated the proper allegations for a fraud claim that is based on alleged knowledge of a prior rights holder. The TTAB held that a plaintiff must allege particular facts that would establish (1) there was in fact another user of the same or a confusingly similar mark at the time the oath was signed; (2) the other user had legal rights superior to applicant’s; (3) applicant knew that the other user had rights in the mark superior to applicant’s, and either believed that a likelihood of confusion would result from applicant’s use of its mark or had no reasonable basis for believing otherwise; and (4) that applicant, in failing to disclose these facts to the PTO, intended to procure a registration to which it was not entitled. In this case, Opposer had failed to make these specific allegations.
The TTAB allowed Opposer an opportunity to amend its notice of opposition, and stated that failure to do so would result in the opposition proceeding only on the properly pleaded grounds of lack of a bona fide intent to use at the time of filing and a likelihood of confusion.
CONCLUSION
In another decision exploring the effects of the Federal Circuit’s In re Bose decision, the TTAB confirmed that fraud allegations based on a “knew or should have known” standard are legally insufficient.
