Grand Canyon West Ranch, LLC v. Hualapai Tribe

THIS DISPOSITION IS CITABLE
AS PRECEDENT OF THE TTAB                 UNITED STATES PATENT AND TRADEMARK OFFICE
                                         Trademark Trial and Appeal Board
                                         P.O. Box 1451
                                         Alexandria, VA 22313-1451




   Greenbaum                           Mailed:   March 17, 2006

                                       Opposition No. 91162008

                                       Grand Canyon West Ranch, LLC

                                           v.

                                       Hualapai Tribe

   Before Seeherman, Walters and Kuhlke, Administrative
   Trademark Judges.

   By the Board:

          Applicant seeks to register the mark GRAND CANYON WEST

   for “airport services; air transportation services;

   arranging for recreational travel tours and providing

   related transportation of passengers by air, boat, raft,

   rail, tram, bus, motorized on-road and off-road vehicles,

   non-motorized vehicles featuring bicycles, and domestic

   animals,” claiming February 14, 1988 as the date of first

   use of the mark anywhere and in commerce.1        Opposer opposes

   registration on the grounds that applicant did not use the

   mark on all of the identified services as of the filing date

   of the application, and that the proposed mark, when applied




   1
       Application Serial No. 76484111, filed January 23, 2003.
Opposition No. 91162008


to the identified services, is merely descriptive, and has

not acquired distinctiveness.

     In its answer, applicant denied the salient allegations

of the notice of opposition.    Applicant also asserted

several affirmative defenses, none of which is now at issue.

     This case now comes up on applicant’s motion (filed

June 7, 2005) to amend the recitation of services to delete

the reference to “rail, tram, non-motorized vehicles

featuring bicycles, and domestic animals,” and to clarify

that the mark was first used in connection with “air

transportation services” on February 14, 1988; and on

opposer’s motion (filed June 27, 2005) for partial summary

judgment on the basis that the application is void ab initio

because applicant did not use the applied-for mark in

connection with transportation of passengers by rail, tram,

bicycle and domesticated animals at the time it filed the

application.   The parties have fully briefed the motions,

and we have considered both reply briefs.   See Trademark

Rule 2.127(a).

     Opposer’s position is that, if applicant did not use

its mark on certain of its identified services prior to the

filing date of the application, the application as a whole

must fail.   On the other hand, applicant’s implicit position

is that, if the mark was not used on some of its identified

services, applicant can cure this error by amending its



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Opposition No. 91162008


application to delete those services in connection with

which the mark had not been used.

     The case law is clear that holding an application to be

void is an appropriate remedy when the pleaded ground either

is fraud,2 or that the applicant has not used the applied-

for mark on any of the goods or services identified in the

application prior to the filing of the application.3

However, notwithstanding opposer’s liberal use of the term

“fraud” and its reliance on fraud cases in its summary

judgment motion, we note that opposer has not pleaded fraud

as a ground for opposition.    Moreover, in its summary

judgment reply brief, opposer affirmatively states that it

does not seek summary judgment on this issue.      Thus, the

question before us is whether a use-based application must

be held to be void in its entirety, in the absence of a

fraud claim, if an applicant did not use the mark on all of

the identified goods or services before filing the

application.   For the reasons discussed below, we hold that

as long as the mark was used on some of the identified goods

or services as of the filing of the application, the

application is not void in its entirety.




2
  Medinol Ltd. v. Neuro Vasx Inc., 

67 USPQ2d 1205

 (TTAB 2003).
3
  Laboratories du Dr. N.G. Payot Estalissement v. Southwestern
Classics Collection Ltd., 

3 USPQ2d 1600

 (TTAB 1987); and CPC
International Inc. v. Skippy Inc., 

3 USPQ2d 1456

, 1460 (TTAB
1987).


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Opposition No. 91162008


     There are obvious distinctions between a claim of fraud

and a claim of nonuse of a mark for certain of the goods or

services identified in the application.    A defendant commits

fraud by knowingly making false statements as to a material

fact in conjunction with a trademark application or

registration.   Mister Leonard Inc. v. Jacques Leonard

Couture Inc., 

23 USPQ2d 1063

, 1065 (TTAB 1992).   Moreover,

an allegation of fraud must be proven “to the hilt” with

clear and convincing evidence.    Smith International, Inc. v.

Olin Corporation, 

209 USPQ 1033

, 1043-44 (TTAB 1981).    In

contrast, a defendant’s intent is not an element of a claim

that a mark was not used on certain of the identified goods

or services, nor is an enhanced standard of proof required.

     In prior decisions, the Board has made a distinction in

the remedies for fraud and for nonuse on some, but not all,

of the identified goods and/or services.   For example, in

Rogers Corp. v. Fields Plastics & Chemicals, Inc., 

176 USPQ 280

 (TTAB 1972), aff’d, 

181 USPQ 169

 (CCPA 1974), in which,

inter alia, the opposer alleged fraud because “applicant has

never used the mark on some of the goods listed in the

application,” the Board found that the applicant had not

committed fraud even though the identification of goods

included some proposed, rather than actual, uses of the

mark; instead, the Board determined that the applicant

should be required to limit its identification of goods to



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Opposition No. 91162008


those goods on which there had been use as of the filing

date of the application.    Similarly, in Medinol v. Neuro

Vasx, supra, at 1208 n.9, in which the Board found fraud,

the Board stated that, if the finding of fraud were

overturned, the registration would have to be amended to

delete the goods for which the mark had not been used, thus

indicating that, in the absence of fraud, the registration

would survive.

     Nor is it appropriate to treat applicant’s nonuse of

its mark on some of the identified services in the same

manner in which we would treat an applicant’s complete

failure to make use of its mark before filing the

application on any of its identified services.     It is clear

that an applicant cannot obtain a registration under Section

1 of the Trademark Act for goods or services upon which it

has not used the mark.    

15 U.S.C. § 1051

.   Prior to the

Trademark Law Revision Act of 1988 (TLRA), Public Law 100-

667, 

102 Stat. 3935

, which permitted applications to be

filed on the basis of an applicant’s bona fide intention to

use the mark in commerce (see Section 1(b) of the Trademark

Act), an application would be deemed void ab initio if the

applicant had made no use of the mark in commerce.    See,

e.g., Intermed Communications, Inc. v. Chaney, 

197 USPQ 501

(TTAB 1977).   Even at that time, however, an application was

not deemed void ab initio if the applicant had made use on



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Opposition No. 91162008


some, but not all, of the goods or services.    See, e.g.,

Rogers v. Fields Plastics & Chemicals, supra.

     Because there is a clear distinction between the

situations in which an applicant has committed fraud, or has

not used the mark on any of the goods or services identified

in its application, and the present situation, in which

opposer claims only that applicant did not use its mark in

connection with some of the services identified in its

application as of the filing of the application, we believe

that the remedy for the two former claims is inappropriate

in the present situation.

     Moreover, changes in the Trademark Statute provide a

policy justification for our position that an application

should not be treated as void as long as the mark was used

on some of the identified goods or services at the time the

application was filed.    Effective October 30, 1999, an

applicant who files under Section 1(a) of the Trademark Act

may seek to amend its application to substitute Section 1(b)

as its filing basis and maintain its original filing date.

See Trademark Law Treaty Implementation Act of 1998 (TLTIA),

Pub. L. No. 105-330, 112

 Stat. 3064.    In Leeds Technologies

Ltd. v. Topaz Communications Ltd., 

65 USPQ2d 1303

 (TTAB

2002), the Board extended the rationale behind the TLTIA

amendment to Board proceedings to permit post-publication

amendments to the filing basis of an application.



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Opposition No. 91162008


Therefore, in the absence of a fraud claim, an applicant who

bases its application on Section 1(a) (use in commerce) but

who did not use the mark on some or all of the goods or

services identified in the application may “cure” this

problem by amending its basis to Section 1(b) (intent to

use).4

     Applicant has filed a motion to amend its application

to delete the services for which opposer claims applicant

did not use the mark as of the filing of the application.

In so doing, applicant has essentially agreed to accept

judgment with respect to those services.     In view of the

nature of opposer’s allegations, and the foregoing

discussion, we find that applicant’s proposed amendment is

appropriate.   Accordingly, applicant’s motion to amend is

granted.5

     Applicant’s recitation of services is changed from:

“airport services; air transportation services; arranging

for recreational travel tours and providing related

transportation of passengers by air, boat, raft, rail, tram,

bus, motorized on-road and off-road vehicles, non-motorized

4
  We note that applicant has not filed a motion to amend the
filing basis.
5
  The deletion of these services from the application does not
preclude opposer from moving to amend its notice of opposition to
assert a ground of fraud based on the initial inclusion of these
services in the application, assuming, of course, that opposer
has a good faith belief that such a ground is warranted. Medinol
v. Neuro Vasx, supra, at 1208 (“deletion of the goods upon which
the mark has not yet been used does not remedy an alleged fraud
upon the Office”).


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Opposition No. 91162008


vehicles featuring bicycles, and domestic animals,” to:

“airport services; air transportation services; arranging

for recreational travel tours and providing related

transportation of passengers by air, boat, raft, bus, and

motorized on-road and off-road vehicles.”       In addition,

applicant’s date of first use remains February 14, 1988;

applicant’s motion to clarify that this date applies to its

air transportation services is granted.

     Opposer’s motion for summary judgment is granted only

to the extent that judgment is entered against applicant on

the ground that applicant did not make use of its mark in

connection with the following services: providing

transportation of passengers related to recreational travel

tours by means of rail, tram, non-motorized vehicles

featuring bicycles, and domestic animals.       The motion for

summary judgment is otherwise denied.

     Proceedings are resumed.       Discovery remains closed, and

trial dates are reset as follows:




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Opposition No. 91162008


DISCOVERY PERIOD TO CLOSE:                                                 CLOSED

Thirty-day testimony period for party in position of plaintiff to close:   June 15, 2006


Thirty-day testimony period for party in position of defendant to close: August 14, 2006


Fifteen-day rebuttal testimony period to close:                            September 28, 2006


       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.

       Briefs shall be filed in accordance with Trademark

Rules 2.128(a) and (b).               An oral hearing will be set only

upon request filed as provided by Trademark Rule 2.l29.




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