DaimlerChrysler Corporation and Chrysler, LLC v. American Motors Corporation

                                       UNITED STATES PATENT AND TRADEMARK OFFICE
                                       Trademark Trial and Appeal Board
                                       P.O. Box 1451
                                       Alexandria, VA 22313-1451




       THIS OPINION IS A
    PRECEDENT OF THE TTAB

BUTLER
                                 Mailed:   January 14, 2010

                                 Cancellation No. 92045099

                                 DAIMLERCHRYSLER CORPORATION and
                                 CHRYSLER, LLC1

                                      v.

                                 AMERICAN MOTORS CORPORATION

Before Hairston, Cataldo and Taylor, Administrative Trademark
Judges.

By the Board:

        Respondent owns a registration for the following mark:




for “automobiles and structural parts thereof.”2      In accordance with

the amended petition to cancel, filed June 15, 2009, and allowed by

the Board in its June 26, 2009 order, petitioner alleges the

following grounds for cancellation of the registration:        1) priority

of use and likelihood of confusion with its AMERICAN MOTORS


1
 The Board recognizes that there are two petitioners. In this order,
the position of plaintiff is referred to in the singular (i.e.,
“petitioner”).
2
 

Registration No. 2949439,

 issued on May 10, 2005, claiming a date of
first use anywhere of October 28, 2002 and a date of first use in
commerce of January 21, 2005.
Cancellation No. 92045099


CORPORATION and AMC3 marks for “motor vehicles and parts therefor”;

2) fraud;4 and 3) abandonment.    With respect to its standing,

petitioner asserts prior common law rights in its AMERICAN MOTORS

CORPORATION and AMC marks; and that respondent’s registration has

been cited by the assigned Trademark Examining Attorney as a bar

under Trademark Act §2(d) to the registration of petitioner’s

pending application Serial No. 78661023 for the mark AMC and design

for “toy vehicle replicas.”

       In its answer to the amended petition to cancel (“pet.”),

respondent denies the salient allegations of the complaint.

Respondent admits paragraph Nos. 10-13 of the complaint wherein

petitioner alleges it filed an application to register the mark AMC

and design for “toy vehicle replicas” and that such application has

been refused in view of the existence of respondent’s registration

(pet. para. Nos. 10-11); and that respondent filed its application

to register its AMC and design mark, that a notice of allowance

issued, that respondent received two Office Actions with respect to

its Statement of Use and responded thereto; and that respondent’s

application issued as 

Registration No. 2949439

 (pet. para. Nos. 12-

13).

       In accordance with the Board’s order of June 26, 2009, the

discovery period was last set to close on July 16, 2009.       This case

3
 Petitioner alleges use of its AMC mark with and without a design
element, the latter being identical to respondent’s design element.
4
 Count II, paragraph Nos. 21-33, setting forth petitioner’s
allegations of fraud, are discussed in further detail infra.



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Cancellation No. 92045099


now comes up on petitioner’s fully briefed motion, filed two days

prior to the close of discovery, for summary judgment on its fraud

claim only.     To obtain such judgment, petitioner must establish that

there is no genuine issue regarding its standing and the merits of

its fraud claim.

     Respondent’s argument that petitioner lacks standing is without

merit.   A petition to cancel may be brought by any person who

believes he is or will be damaged by the registration of a mark.

Trademark Act §14, 

15 U.S.C. §1064

.    In order to meet the standing

requirement, a plaintiff need only show that it has a real interest,

i.e., a personal stake, in the outcome of the proceeding.     See

Ritchie v. Simpson, 

170 F.3d 1092

, 

50 USPQ2d 1023

 (Fed. Cir. 1999);

and Jewelers Vigilance Committee Inc. v. Ullenberg Corp., 

823 F.2d 490

, 

2 USPQ2d 2021

 (Fed. Cir. 1987).

     Here, petitioner has alleged that its pending application

has been refused registration in light of respondent’s existing

registration.    Respondent has admitted such allegation.   The

rejection of petitioner’s trademark application on the basis of

the challenged registration is a basis for petitioner’s standing.

See Lipton Industries, Inc. v. Ralston Purina Co., 

670 F.2d 1024, 1029

, 

213 USPQ 185, 189

 (CCPA 1982) (to have standing, it is

sufficient for petitioner to “prove that it filed an application

and that a rejection was made because of [respondent’s]

registration.”).    Thus, there exists no genuine issue of material




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Cancellation No. 92045099


fact and we find as a matter of law that petitioner has standing

in this cancellation proceeding.       See also TBMP 309.03(b) (2d ed.

rev. 2004).

     We turn next to the merits of petitioner’s fraud claim, and in

connection therewith, we must first determine whether petitioner has

adequately pled a fraud claim.

     At Count II of the amended petition, petitioner alleges, in

pertinent part, as follows:

  21.   On October 31, 2004, Registrant submitted a Statement of
        Use to the PTO in which Registrant represented to the PTO
        that it was using the AMC (and design) mark in commerce
        in connection with automobiles and structural parts
        thereof. Registrant made this representation to induce
        the PTO to issue a registration. …
  22.   On November 18, 2004, Registrant submitted substitute
        specimens and a Response to Office Action to the PTO in
        which Registrant represented to the PTO that it was using
        the AMC (and design) mark in commerce in connection with
        “automobiles and structural parts thereof.” Registrant
        made this representation to induce the PTO to issue a
        registration. …
  23.   On January 22, 2005, Registrant submitted substitute
        specimens and a Response to Office Action to the PTO in
        which Registrant represented to the PTO that it was using
        the AMC (and design) mark in commerce in connection with
        “automobiles and structural parts thereof.” Registrant
        made this representation to induce the PTO to issue a
        registration. …
  24.   As of May 26, 2009, years after Registrant represented to
        the PTO that it has used the AMC (and design) mark in
        commerce in connection with automobiles, Registrant, in
        fact, never offered, advertised, or sold any automobiles
        under the AMC (and design) mark. (See Registrant’s
        Responses to Petitioner’s First Set of Requests for
        Admission attached as Exhibit D ¶¶3, 5, 6, 8, 15.)
  25.   As of May 26, 2009, years after Registrant represented to
        the PTO that it has used the AMC (and design) mark in
        commerce in connection with structural parts for
        automobiles, Registrant, in fact, never offered,
        advertised, or sold any structural parts for automobiles
        under the AMC (and design) mark. (See Exhibit D ¶¶ 4, 7,
        9, 16, 23.)


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Cancellation No. 92045099


  26.   Registrant has never used its AMC (and design) mark in
        commerce in connection with automobiles.
  27.   Registrant has explicitly admitted that it has never used
        its AMC (and design) mark in commerce in connection with
        structural parts for automobiles.
  28.   The representations Registrant made to the PTO on October
        31, 2004, November 18, 2004, and January 22, 2005 were
        each false.
  29.   Respondent knew that the representations were false.
  30.   Respondent knowingly made material misrepresentations to
        the PTO to procure 

Registration No. 2,949,439

.
  31.   The PTO relied on the representations in issuing
        

Registration No. 2,949,439

.
  32.   The PTO would not have issued 

Registration No. 2,949,439

        but for Registrant’s false representations.
  33.   Respondent’s actions in the procurement of 

Registration No. 2,949,439

 constitute fraud, thereby invalidating
        

Registration No. 2,949,439

. Accordingly, 

Registration No. 2,949,439

 should be cancelled in its entirety.

     Fed. R. Civ. P. 9(b) provides that the circumstances

constituting the alleged fraud shall be stated with

particularity.     See also King Automotive, Inc. v. Speedy Muffler

King, Inc., 

667 F.2d 1008

, 

212 USPQ 801

 (CCPA 1981) (“[t]he

pleadings [must] contain explicit rather than implied expressions

of the circumstances constituting fraud”).    Intent to deceive is

an indispensable element of the analysis in a fraud case.     See In

re Bose Corporation, 

476 F.3d 1331

, 

91 USPQ2d 1938, 1941

 (Fed.

Cir. 2009).   As such, intent to deceive the Office, whether to

obtain a registration, or to maintain a registration, is also an

element to be pleaded in a fraud claim.    Nonetheless, intent, as

a condition of mind of a person, may be averred generally.    Fed.

R. Civ. P. 9(b).




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Cancellation No. 92045099


     In this case, petitioner has sufficiently pled a fraud

claim, including that respondent had the requisite intent to

deceive the USPTO in the procurement of its registration.

More specifically, petitioner asserts that respondent knowingly made

material misrepresentations to the Office in order to procure the

registration.   Para. No. 30, supra.   The allegations preceding and

following this assertion state with particularity numerous, specific

representations of fact that petitioner alleges were false and were

known to be false, were material, and were relied upon by the

Office.   Further, we find the assertions in para. No. 30, combining

the references “material misrepresentations” “knowingly made” and

“to procure” a registration, to constitute an allegation of

respondent’s intent.   That is, where a pleading asserts that a known

misrepresentation, on a material matter, is made to procure a

registration, the element of intent, indispensable to a fraud claim,

has been sufficiently pled.   Notwithstanding that we find this

petition to meet the particularity requirements for pleading fraud

and to meet the requirement for generally pleading intent, in light

of the Bose decision, we note that the preferred practice for a

party alleging fraud in a Board opposition or cancellation

proceeding is to specifically allege the adverse party’s intent to

deceive the USPTO, so that there is no question that this

indispensable element has been pled.

     Having found that petitioner has sufficiently pled a fraud

claim, we now determine the merits of the summary judgment motion.



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Cancellation No. 92045099


       In a motion for summary judgment, the moving party has the

burden of establishing the absence of any genuine issue of

material fact and that it is entitled to judgment as a matter of

law.    See Fed. R. Civ. P. 56(c).       A genuine dispute with respect

to a material fact exists if sufficient evidence is presented

that a reasonable fact finder could decide the question in favor

of the non-moving party.    See Opryland USA Inc. v. Great American

Music Show, Inc., 

970 F.2d 847

, 

23 USPQ2d 1471

 (Fed. Cir. 1992).

Thus, all doubts as to whether any particular factual issues are

genuinely in dispute must be resolved in the light most favorable

to the non-moving party.    See Olde Tyme Foods Inc. v. Roundy’s

Inc., 

961 F.2d 200

, 

22 USPQ2d 1542

 (Fed. Cir. 1992).

       “[A] trademark is obtained fraudulently under the Lanham Act

only if the applicant or registrant knowingly makes a false,

material representation with the intent to deceive the PTO.”

Bose, 

91 USPQ2d at 1941

.    See also Torres v. Cantine Torresella

S.r.l., 

808 F.2d 46, 48

, 

1 USPQ2d 1483, 1484

 (Fed. Cir. 1986).

The standard for finding intent to deceive is stricter than the

standard for negligence or gross negligence.5        See Bose, 

91 USPQ2d at 1941

.    Deceptive intent may be established by direct

evidence or may be inferred from indirect or circumstantial

evidence, but no matter the type of evidence, it must be clear

and convincing.    

Id.,

 citing Star Scientific, Inc. V. R.J.


5
 Still open is the question whether a submission to the PTO with
reckless disregard of its truth or falsity would satisfy the intent to
deceive requirement. Bose, 

91 USPQ2d at 1942, fn. 2

.


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Cancellation No. 92045099


Reynolds Tobacco Co., 

537 F3d. 1357, 1366

, 

88 USPQ2d 1001, 1007

(Fed. Cir. 2008).   There is no fraud if a false representation is

occasioned by an honest misunderstanding or inadvertence without

a willful intent to deceive.     Bose, 

91 USPQ2d at 1940

.

     Petitioner essentially maintains that respondent has

committed fraud because respondent falsely represented in its

Statement of Use that it was using the mark in commerce in

connection with automobiles and structural parts therefor; and

that respondent “knew or should have known” the falsity of its

statement.   See petitioner’s main brief on its motion, p. 4 and

pp. 5-6, relying on 

Torres, supra,

 and Medinol Ltd. v. Neuro

Vasx, Inc., 

67 USPQ2d 1205

 (TTAB 2003).    More specifically,

petitioner noted that Medinol held, “[t]he appropriate inquiry is

… not into the registrant’s subjective intent, but rather into

the objective manifestation of that intent,” and therefore argued

that “it is not necessary to prove intent to commit fraud, but

only that a false statement was made.”    Brief, p. 6.   Thus,

relying on the Medinol standard, petitioner introduced with its

motion respondent’s responses to petitioner’s requests for

admission Nos. 3-9 and 15, whereby respondent admitted it never

sold an automobile or structural parts therefor, as evidence of

respondent’s false statements.    Respondent, relying on its

responses to petitioner’s requests for admission Nos. 20 and 22,

asserted it made use of its AMC mark in commerce on automobiles,

maintains its statements were not false, and that it believed and



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Cancellation No. 92045099


continues to believe, that it is using the mark for the

identified goods.

     As recognized by petitioner in its reply brief, under Bose,

which issued during the pendency of petitioner’s motion for

summary judgment, petitioner’s reliance on Medinol is no longer

appropriate.6   While recognizing, in its reply brief, the change

in the law, petitioner did not point to any previously submitted

evidence which would meet the Bose standard and only tried to

distinguish Bose from the present case on its facts.      At footnote

No. 3 of its reply brief, petitioner alternatively asked that,

under Bose, respondent’s registration be restricted “to reflect

commercial reality.”    According to petitioner, such a restriction

would require removing all products from the registration,

resulting in cancellation of the registration.      As a second

alternative in the same footnote, petitioner asked that the

registration be determined to be void ab initio because

respondent’s mark was not in use in commerce as of the filing

date of the Statement of Use.    However, petitioner had not

asserted these allegations as grounds for cancellation in any

pleading.   Accordingly, as unpleaded issues, no consideration has



6
  The Medinol proposition that only objective intent is required to
prove a fraud claim is no longer operative. The Court of Appeals for
the Federal Circuit, our primary reviewing court, issued the Bose
decision during the pendency of this motion and made it clear that a
plaintiff must prove by clear and convincing evidence that the
defendant knowingly made a false statement with the intent to deceive
the USPTO. Bose, 

91 USPQ2d at 1941

.



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Cancellation No. 92045099


been given to these alternative requests.7     See Fed. R. Civ. P.

56(a); and TBMP §528.07(a) (2d ed. rev. 2004).

     It is clear that under the holding of Bose that intent must

be separately proved; and on a motion for summary judgment it

must be shown that there is no genuine issue about the existence

of intent to deceive the Office.

     In this case, petitioner has not carried its burden of

establishing the absence of a genuine issue of material fact as

to respondent’s intent to deceive.     More particularly, petitioner

has not introduced any direct evidence of respondent’s intent to

deceive the Office.8   Nor has petitioner introduced any indirect

or circumstantial evidence which would lead us to the inevitable

conclusion (which on summary judgment means the absence of any

genuine issue of material fact) that respondent had the intent to

deceive the Office, or at least had a reckless disregard for the

truth.   As to the falsity of the statements in question, it

appears that applicant may not, in fact, be using the mark

sufficiently to maintain a registration.9     However, petitioner’s


7
 Moreover, the timing of such alternative requests, i.e., being first
presented in petitioner’s reply on its summary judgment motion,
effectively deprived respondent from any opportunity to respond
thereto, because the Board does not permit the filing of surreplies on
motions. 

37 C.F.R. § 2.127

(e)(1).
8
  Petitioner’s admission requests, for example, do not seek any
admissions regarding the interaction between respondent and the USPTO
but, instead, speak only to respondent’s own activities regarding use
of the involved mark.
9
  The legal proposition being posited by respondent as to its use (e.g.,
use analogous to trademark use, use in brochures, catalogues and on
Internet websites) appears inapposite, but respondent is not represented


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Cancellation No. 92045099


motion for summary judgment was only brought on the fraud claim

and not on the abandonment claim and the existence of a genuine

issue of material fact as to intent precludes granting petitioner

judgment on the fraud claim.

     We note, too, that questions of intent are typically

unsuited to resolution by summary judgment (or other pretrial

motions).   See, e.g., Copelands’ Enterprises Inc. v. CNV Inc.,

945 F.2d 1563

, 

20 USPQ2d 1295, 1299

 (Fed. Cir. 1991).

     Accordingly, petitioner’s motion for summary judgment is

denied.

The schedule is reset.

     Proceedings are resumed.    Dates are reset as follows:

     Discovery to resume:                        February 12, 2010

     THE PERIOD FOR DISCOVERY TO CLOSE:          March 15, 2010

     30-day testimony period for party
     in position of plaintiff to close           June 13, 2010

     30-day testimony period for party
     in position of defendant to close:          August 12, 2010

     15-day rebuttal testimony period
     to close:                                   September 26, 2010

     In each instance, a copy of the transcript of testimony

together with copies of documentary exhibits, must be served on

the adverse party within thirty days after completion of the

taking of testimony.    Trademark Rule 2.l25.



by counsel and we need not, for the purpose of deciding the motion for
summary judgment, resolve the question.



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Cancellation No. 92045099


     Briefs shall be filed in accordance with Trademark Rules

2.l28(a) and (b).   An oral hearing will be set only upon request

filed as provided by Trademark Rule 2.l29.

                                ☼☼☼




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