Hachette Filipacchi Presse v. Elle Belle, LLC

   THIS OPINION                 UNITED STATES PATENT AND TRADEMARK OFFICE
 IS A PRECEDENT                 Trademark Trial and Appeal Board
 OF THE T.T.A.B.                P.O. Box 1451
                                Alexandria, VA 22313-1451



alinnehan                     Mailed:     April 9, 2007

                              Cancellation No. 92042991

                              Hachette Filipacchi Presse

                                     v.

                              Elle Belle, LLC

Before Walters, Rogers, and Cataldo,
Administrative Trademark Judges

By the Board:

     On March 15, 2000, Elle Belle LLC ("respondent") filed

an application for registration of the mark ELLE BELLE in

standard character form for the following goods in

International Class 25:

          Clothing articles for men, women and
     children, namely, shirts, blouses, dresses,
     evening wear, skirts, trousers, vests, jerseys,
     pants, pajamas, t-shirts, socks and stockings,
     singlets, corsets, garters, underpants,
     petticoats, hats, head scarves, neckties,
     raincoats, overcoats, great coats, bathing suits,
     sports overalls, wind resistant jackets and ski
     pants.

     The application was filed based on Trademark Act

Section 1(a), reciting October 1995 as the date of first use

and date of first use in commerce.   The following statement

preceded the identification of goods:     “… applicant has

adopted and is using the trademark shown in the accompanying
Cancellation No. 92042991

drawing on ….”   The application was accompanied by a signed

declaration attesting to the truth of the statements made in

the application.

     On December 10, 2002, the application matured into

Registration No. 2657739

.

     On February 27, 2004, Hachette Filipacchi Presse

("petitioner") filed a petition to cancel respondent's

registration on the grounds of likelihood of confusion with

petitioner's pleaded registrations, dilution, and fraud.     In

its answer, respondent denied the salient allegations of the

petition to cancel.

     This case now comes up for consideration of

petitioner's motion (filed April 26, 2006) for summary

judgment in its favor on petitioner's claim of fraud.     The

motion has been fully briefed.

     As an initial matter, respondent has admitted in its

responses to petitioner’s first request for admissions that

petitioner owns, uses, and has not abandoned its pleaded

marks.   Thus, petitioner’s standing, that is, its real

interest in this proceeding, has been established.    See

Lipton Industries Inc. v. Ralston Purina Co., 

670 F.2d 1024

,

213 USPQ 185

 (CCPA 1982).

     In support of its motion for summary judgment,

petitioner argues that respondent committed fraud in

procuring the subject registration for its involved



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Cancellation No. 92042991

mark.   Petitioner asserts that respondent, at the time

it filed its involved application, knew that it was not

using its mark in commerce in connection with a

majority of the goods identified in the application.

Specifically, petitioner contends that respondent has

admitted in its responses to petitioner’s first set of

interrogatories that its use of the ELLE BELLE mark is

limited to use “in association with the wholesale and

retail sale of women’s clothing and accessories” and

that respondent’s president corroborated this admission

by testifying under oath in his discovery deposition

that respondent had never used its mark on any men’s or

children’s clothing and had not used its mark on over

one-half of the twenty-three items of women’s clothing

it identified in its application.

     Because an applicant must use its mark on all of

the goods listed in its application in order to obtain

a registration, petitioner argues that respondent’s

misrepresentations in its application were material to

the USPTO's decision to issue the registration and that

the USPTO would not have issued a registration for the

ELLE BELLE mark but for respondent’s

misrepresentations; that respondent knew at the time it

filed its application that the accompanying declaration

was false; and that, accordingly, respondent’s



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Cancellation No. 92042991

registration should be cancelled on the ground of

fraud.

     As evidentiary support for its motion, petitioner

has submitted, inter alia, the following:

(1) petitioner’s first request for admissions; (2)

respondent’s responses to petitioner’s first request

for admissions; (3) the February 23, 2005 declaration

and accompanying exhibits of Fabienne Sultan, the IP

Vice Manager for petitioner, filed in Opposition No.

91160096 involving opposer and a third party; (4)

certain excerpts of the August 15, 2005 deposition of

Parajmit Singh, respondent’s president, and

accompanying deposition exhibits including a copy of

the application respondent submitted for its mark, a

copy of the certificate of registration issued by the

USPTO for respondent’s mark, excerpts from respondent’s

website, and respondent’s responses to petitioner’s

first set of interrogatories.

         In response to the motion, respondent contends that

it did not commit fraud.    Respondent explains that in

February 2000 it obtained counsel to prepare a trademark

application for its mark ELLE BELLE and that in discussing

the details of the application, respondent’s president,

Parajmit Singh, informed respondent’s attorney that it was

using its mark “in connection with women’s clothing,



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Cancellation No. 92042991

including shirts, blouses, dresses, evening wear, skirts,

jerseys, pants, corsets, and head scarves, and would likely

also use it in the future in connection with men’s and

children’s clothing, and additional women’s clothing,

including trousers, vests, pajamas, t-shirts, socks and

stockings, singlets, garters, underpants, petticoats, hats,

neckties, raincoats, overcoats, great coats, bathing suits,

sport overalls, wind resistant jackets and ski pants.”

Respondent contends that following such conversation,

respondent’s attorney, having misunderstood part of his

discussion with Mr. Singh, prepared an application

representing that respondent was currently using its mark on

all the goods listed in the application.   Such list,

however, included those goods in connection with which Mr.

Singh had told the attorney that respondent only had an

intent to use the mark.   Respondent further explains that

its attorney did not personally review the application with

respondent before respondent’s president signed the

application.   Respondent asserts that it was unaware that

the application indicated that respondent was at that time

using its mark in connection with items for which respondent

only intended to use its mark in the future; that Mr. Singh

is an immigrant whose primary language is Punjabi, and not

English; that Mr. Singh has difficulty comprehending legal

documents like the subject trademark application, which are



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Cancellation No. 92042991

difficult to comprehend even for native English speakers;

that Mr. Singh was unaware that a trademark application

“could only list those items that are being sold at that

time under the applicant’s mark;” that Mr. Singh’s confusion

and lack of knowledge was evident during his deposition

where he readily stated that respondent had not used its

mark on certain of the identified goods in the application;

and that ”throughout this cancellation proceeding” Mr. Singh

has had difficulties communicating with his attorneys due to

his lack of fluency in the English language.   Respondent

argues that petitioner has failed to provide any evidence

that respondent would not have been granted a registration

for its ELLE BELLE mark but for the alleged

misrepresentation and that Mr. Singh’s actions do not

constitute fraud because the registration would have issued

even if the application had “only listed the limited

description of women’s clothing.”

      In evidentiary support of its response, respondent

has submitted:   (1) certain excerpts from the August 15,

2005 discovery deposition of Parajmit Singh; (2) an

affidavit of Parajmit Singh; and (3) an affidavit of Hui Ri

Kim, counsel for respondent.

      In its reply brief, petitioner argues that

respondent’s contention that its president did not

understand what he was signing when he signed the



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Cancellation No. 92042991

application declaration and did not have actual or specific

knowledge that his declaration was false is unpersuasive,

especially given that respondent was represented by legal

counsel.   Further, petitioner contends that respondent’s

claim that its president did not understand “the simple and

straightforward language contained in the declaration” is

unreasonable given that Mr. Singh is a U.S. citizen who has

resided in the United States since 1984; studied English at

one point in his life; took English classes when he moved to

the United States; and has been in the retail fashion

industry since coming to the United States and starting Elle

Belle, Inc.   Moreover, petitioner asserts that respondent

was obligated to confirm the truth and accuracy of the

statements contained in the subject trademark application

prior to its submission to the USPTO and that any

misunderstanding on the part of respondent’s counsel when

preparing the application and declaration should not

preclude a finding of fraud.

      Summary judgment is an appropriate method of

disposing of cases in which there are no genuine issues of

material fact in dispute, thus leaving the case to be

resolved as a matter of law.   See Fed. R. Civ. P. 56(c).    A

party moving for summary judgment has the burden of

demonstrating the absence of any genuine issue of material

fact, and that it is entitled to summary judgment as a



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Cancellation No. 92042991

matter of law.   See Celotex Corp. v. Catrett, 

477 U.S. 317

(1986), and Sweats Fashions Inc. v. Pannill Knitting Co.

Inc., 

833 F.2d 1560

, 

4 USPQ2d 1793

 (Fed. Cir. 1987).    When

the moving party's motion is supported by evidence

sufficient to indicate that there is no genuine issue of

material fact, and that the moving party is entitled to

judgment, the burden shifts to the nonmoving party to

demonstrate the existence of specific genuinely-disputed

facts that must be resolved at trial.

     The nonmoving party may not rest on the mere

allegations of its pleadings and assertions of counsel, but

must designate specific portions of the record or produce

additional evidence showing the existence of a genuine issue

of material fact for trial.   In general, to establish the

existence of disputed facts requiring trial, the nonmoving

party "must point to an evidentiary conflict created on the

record at least by a counterstatement of facts set forth in

detail in an affidavit by a knowledgeable affiant."     Octocom

Systems Inc. v. Houston Computer Services Inc., 

918 F.2d 937, 940

, 

16 USPQ2d 1783, 1786

 (Fed. Cir. 1990), citing

Barmag Barmer Maschinenfabrik AG v. Murata Machinery, Ltd.,

731 F.2d 831, 836

, 

221 USPQ 561, 564

 (Fed. Cir. 1984).    A

dispute as to a material fact is genuine only if a

reasonable fact finder viewing the entire record could

resolve the dispute in favor of the nonmoving party.    See



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Cancellation No. 92042991

Olde Tyme Foods Inc. v. Roundy’s Inc., 

961 F.2d 200

, 

22 USPQ2d 1542, 1544

 (Fed. Cir. 1992).   Finally, in deciding a

motion for summary judgment, the Board must view the

evidence in the light most favorable to the nonmovant, and

must draw all reasonable inferences from underlying facts in

favor of the nonmovant.    

Id.

     Based on the record now before us and for the reasons

discussed below, we conclude that summary judgment is

appropriate because petitioner has established that there

are no genuine issues of material fact remaining for trial

with regard to its claim of fraud, and that it is entitled

to a judgment on this ground.

      Fraud in procuring a trademark registration occurs

when an applicant for registration knowingly makes false,

material representations of fact in connection with an

application to register.    See Torres v. Cantine Torresella

S.r.l., 

808 F.2d 46

, 

1 USPQ2d 1483

 (Fed. Cir. 1986).    A

party making a fraud claim is under a heavy burden because

fraud must be proved by clear and convincing evidence,

leaving nothing to speculation, conjecture, or surmise.     Any

doubt must be resolved against the party making the claim.

See Smith International, Inc. v. Olin Corporation, 

209 USPQ 1033

 (TTAB 1981).

      There is no dispute and, in fact, respondent admitted

that it had not used its mark in connection with a



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Cancellation No. 92042991

significant number of the listed goods at the time it filed

an application based on use in commerce which included a

signed declaration attesting to the truth of all the

statements in that application.    Respondent’s responses to

petitioner’s discovery requests indicate that respondent is

not using the mark on any men’s or children’s clothing, nor

is it using it on more than half of the women's clothing

items listed.   Mr. Singh specifically testified in his

August 15, 2005 discovery deposition that his corporation is

not using the mark on trousers, vests, pajamas, t-shirts,

socks, stockings, singlets, underpants, hats, neckties,

raincoats, overcoats, great coats, bathing suits, sports

overalls, wind resistant jackets, and ski pants, all of

which were listed in the application.

     Statements regarding the use of the mark on goods and

services are certainly material to issuance of a

registration covering such goods and services.     First

International Services Corp. v. Chuckles Inc., 

5 USPQ2d 1628

(TTAB 1988) ("We find that applicant committed fraud in its

statement regarding the use of the mark on goods for which

it only intended to use the mark.    There is no question that

this statement was material to the approval of the

application by the Examining Attorney.")    See also Standard

Knitting, Ltd. v. Toyota Jidosha Kabushiki Kaisha, 

77 USPQ2d 1917

 (TTAB 2006) (applicant's counterclaim petition to



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Cancellation No. 92042991

cancel granted because of fraud by opposer in procuring its

pleaded registrations, specifically, fraud found because of

misrepresentations regarding extent of use of the marks on

the goods identified in the applications which resulted in

issuance of opposer's pleaded registrations); General Car

and Truck Leasing Systems Inc. v. General Rent-A-Car Inc.,

17 USPQ2d 1398

 (S.D. Fla. 1990), aff’g General Rent-A-Car

Inc. v. General Leaseways, Inc., Canc. No. 14,870 (TTAB May

2, 1988).

      The facts herein are analogous to those in Medinol

Ltd. v. Neuro Vasx Inc., 

67 USPQ2d 1205

 (TTAB 2006).     In

Medinol, a trademark application was filed and, following

applicant’s submission of a statement of use, a registration

issued for “medical devices, namely, neurological stents and

catheters.”    In response to a petition for cancellation,

registrant admitted in its answer that the mark was not used

on stents.    The Board stated the following:

      The fraud alleged by petitioner is that
      respondent knowingly made a material
      representation to the USPTO in order to obtain
      registration of its trademark for the identified
      goods. There is no question that the statement
      of use would not have been accepted nor would
      registration have issued but for respondent’s
      misrepresentation, since the USPTO will not
      issue a registration covering goods upon which
      the mark has not been used. (citations
      omitted).

67 USPQ at 1208 (citations omitted).




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Cancellation No. 92042991

     Similarly, in this case there is no question that the

application for registration under Section 1(a) of the

Trademark Act would have been refused but for respondent’s

misrepresentation regarding its use of its mark on all the

identified goods in the application.   Respondent’s

contention that a registration would have issued nonetheless

if the application listed only the limited description of

women’s clothing is irrelevant to our discussion.     In this

instance, the law is clear that an applicant may not claim a

Section 1(a) filing basis unless the mark was in use in

commerce on or in connection with all the goods or services

covered by the Section 1(a) basis as of the application

filing date.   37 C.F.R. Section 2.34(a)(1)(i).   See, e.g.,

First International Services Corp., supra, 5 USPQ2d at 1636.

Respondent signed the oath at the conclusion of the

application under penalty of “fine or imprisonment, or

both…that…willful false statements may jeopardize the

validity of the application or any resulting registration….”

Thus, as in Medinol, a material misrepresentation of fact

with regard to use of the mark on particular goods was made

and sworn to by the mark’s owner(s) and that statement was

relied upon by the USPTO in determining respondent’s rights

to the registration.

     That Mr. Singh may have been unaware that the statement

in the application alleged use as to all the listed goods,



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Cancellation No. 92042991

rather than use as to some and intent to use as to others,

does not change our finding of fraud herein.   Nor does the

fact that English is not Mr. Singh’s native language and he

apparently has continuing difficulty with the language.    The

language contained in the subject application is clear and

unambiguous.   The wording “applicant has adopted and is

using the trademark shown” which precedes the listing of

goods is simple and straightforward.   It is well established

that in inter partes proceedings “proof of specific intent

is not required, rather, fraud occurs when an applicant or

registrant makes a false material representation that the

applicant or registrant knew or should have known was

false.”   Medinol, supra 1209 (quoting General Car and Truck,

17 USPQ2d at 1400-1401).    See also First International

Services Corp., supra, 5 USPQ2d at 1636 ("we recognize that

it is difficult, if not impossible, to prove what occurs in

a person's mind, and that intent must often be inferred from

the circumstances and related statement made by that person.

Otherwise, all claims of fraud could easily be defeated by

the simple statement, 'I had no intent to do so.'   The

analysis must be whether the person knew or should have

known of the falsity of the statement.")

     As the Board determined in Medinol, “the appropriate

inquiry is … not into the registrant’s subjective intent,

but rather into the objective manifestations of that



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Cancellation No. 92042991

intent.”   67 USPQ2d at 1209.    In Medinol, the Board

concluded that the facts justified a finding of fraud:

     The undisputed facts in this case clearly
     establish that respondent knew or should have
     known at the time it submitted its statement of
     use that the mark was not in use on all of the
     goods. Neither the identification of goods nor
     the statement of use itself was lengthy, highly
     technical, or otherwise confusing, and the
     President/CEO who signed the document was clearly
     in a position to know (or to inquire) as to the
     truth of the statements therein.

Id. at 1209-10.

     Respondent’s president’s misunderstanding in the case

before us does not now shield respondent from our finding

that it knew or should have known that a representation of

fact in its application was false.      Mr. Singh was obligated

to confirm the meaning and accuracy of the statements

contained in the application before signing the declaration

and prior to submission to the USPTO.      "The obligation which

the Lanham Act imposes on an applicant is that he will not

make knowingly inaccurate or knowingly misleading statements

in the verified declaration forming a part of the

application for registration."       Bart Schwartz International

Textiles, Ltd. v. Federal Trade Commission, 

289 F.2d 665, 669

, 

129 USPQ 258

, 260 (CCPA 1961) (emphasis in original).

Therefore, as indicated supra, an applicant or registrant

may not make a statement he/she knew or should have known

was false or misleading.    Medinol, supra at 1209.




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Cancellation No. 92042991

     Nor does the misunderstanding on the part of

respondent’s attorney preclude our finding of fraud.

Inasmuch as counsel represented respondent during the

application process, respondent and its attorney shared the

duty to ensure the accuracy of the application and the truth

of its statements.   See Smith International, supra, 209 USPQ

at 1047 ("The error was … on the part of counsel or Smith in

drawing up the document as such and on the part of the

affiant in signing it.   Even if the affidavit was prepared

by its attorney, Smith must be held accountable for any

false or misleading statements made therein.")   See also

Cooper, Lunsford, McCarthy and Ropski, "Fraud in the

Trademark Office: A TMR Panel" 74 Trademark Reporter 50, 57-

58 (Jan./Feb. 1984) (The client and the attorney "share the

duty" to avoid fraud; the attorney must advise the client to

tell the truth; the client must be candid; the attorney must

seek facts supporting or possibly controverting application

averments; and the attorney must be satisfied that the

application is accurate and is supported by prevailing law.)

In this instance, had respondent’s counsel ensured that he

understood what his client was telling him and reviewed the

application with his client prior to obtaining the necessary

signed declaration, the situation herein could have been

prevented.




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Cancellation No. 92042991

     Additionally, a subsequent attempt by respondent to

eliminate the goods on which its mark has never been used

does not change our decision in this matter.      On June 8,

2006, more than a month after petitioner filed its motion

for summary judgment, respondent filed an amendment with the

Post Registration section of the USPTO to limit the

identification of goods so that it lists only the women’s

clothing on which it currently uses its mark.1      On August

29, 2006, the Post Registration section entered the

amendment.   Where a registration is involved in a proceeding

before the Board, it is the Board that has jurisdiction to

determine the propriety of any proposed amendments to the

registration.   See Trademark Rule 2.133(a) and TBMP Section

514.01 (2d ed. rev. 2004).    Thus, the amendment should not

have been filed with the Post Registration section, and the

fact that the Post Registration section mistakenly acted on

the amendment does not preempt the Board’s authority to

determine the issue of fraud with respect to the original

identification of the goods.    Under the circumstances, the

amendment will be given no effect.     Nevertheless, we note

that respondent’s amendment would not serve to cure the

fraud that was committed.    See Medinol, supra at 1208

1
  Specifically, respondent sought to amend the identification of
goods to read as follows: “Clothing articles women [sic],
namely, shirts, blouses, dresses, evening wear, skirts, jerseys,
pants, corsets, and head scarves” in International Class 25.




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Cancellation No. 92042991

(deletion of goods upon which the mark has not yet been used

does not remedy fraud upon the Office).2     Inasmuch as there

are no genuine issues of material fact with regard to

petitioner’s claim of fraud in the procurement of

respondent’s trademark registration, the registration must

be canceled in its entirety.    See Standard Knitting, 77

USPQ2d at 1928.

     In view thereof, and inasmuch as petitioner did not

move for summary judgment as to likelihood of confusion or

dilution, we need not reach the issues of likelihood of

confusion or dilution.

     Accordingly, summary judgment is entered in

petitioner’s favor and the petition for cancellation is

granted on the ground of fraud.3




2
  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.
3
  If respondent by appeal of this decision is able to obtain a
reversal of our holding of fraud, or a remand to reconsider that
issue, we note that the involved registration would require
restriction. Based on the record, it is clear that the goods in
connection with which the mark was not in use at the time of
filing the application must be deleted from the registration.


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