Hurley International LLC v. Paul and Joanne Volta

       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


al                                 Mailed:    January 23, 2007

                                   Opposition No. 91158304

                                   Hurley International LLC

                                         v.

                                   Paul and Joanne Volta


Before Quinn, Bucher, and Cataldo,
Administrative Trademark Judges.

By the Board:

       Paul and Joanne Volta (“applicants”) filed an

application on April 6, 2002 for registration of the mark

THE SIGN and design1 in the following form:




in connection with the following services in International

Class 41:

       Entertainment services, being vocal performances
       and/or instrumental performances; production of
       records, tapes, CD’s, any digital media and films,
       radio, television and internet entertainment.




1
    Application Serial No. 78119982.
Opposition No. 91158304


     The application was filed based on Trademark Act

Section 1(a) reciting February 5, 2000 as the date of first

use and May 19, 2000 as the date of first use in commerce.

The listing of services was preceded by the following

statement:   “Applicant is using or is using through a

related company the mark in commerce on or in connection

with the below identified goods/services.”    The application

was accompanied by a signed declaration attesting to the

truth of the statements made in the application.

     During the prosecution of the involved application,

applicants amended the recitation of services twice,

pursuant to two separate requirements made by the examining

attorney.    For each amendment the applicants made, the

filing basis remained unchanged.   Additionally, at two

points during the prosecution of the application, the

specimen submitted in support of the services was rejected

for its failure to show use of applicants’ mark in relation

to the identified services.    Twice the applicants submitted

a substitute specimen accompanied by a signed declaration

that ”the substitute specimen(s) was in use in commerce as

of the filing date of the application.”

     On May 28, 2003, the involved mark, for the services

recited in the application as amended, was published for

opposition in connection with the following services:

     Entertainment services, being vocal performances
     and/or instrumental performances by a musical band


                               2
Opposition No. 91158304


     or solo artist; production of records; audio
     recording and production; entertainment namely,
     production of television shows, plays; motion
     picture film production; production of video discs
     for others; production of video cassettes for
     others; radio entertainment production.

     Hurley International LLC (“opposer”) filed a notice of

opposition to registration of applicants’ mark on October

17, 2003 on the grounds that (1) a likelihood of confusion

exists based on opposer’s pleaded registration and common

law rights based on its previously-used marks; and (2)

applicants’ nonuse of the mark in connection with some of

the recited services.

     On July 15, 2004, opposer filed its first motion for

summary judgment based on a claim of fraud in applicants’

filing of their application.    In an August 4, 2005 order,

the Board denied such motion on the ground that fraud was

not properly pled in the notice of opposition.

     This case now comes up for consideration of (1)

opposer’s combined motion (filed October 5, 2005) for leave

to amend its notice of opposition and for summary judgment;2

and (2) applicants’ motion (filed April 9, 2006) for leave

to amend their application.

     As an initial matter, applicants have admitted in their

answer that opposer owns its pleaded registration.       Thus,

opposer’s standing, that is, its real interest in this


2
  Concurrently therewith, opposer filed an amended notice of
opposition.


                                3
Opposition No. 91158304


proceeding, has been established.       See Lipton Industries

Inc. v. Ralston Purina Co., 

670 F.2d 1024

, 

213 USPQ 185

(CCPA 1982).

Motion to Amend Notice of Opposition

       We first consider opposer’s motion to amend the notice

of opposition.     The motion has been fully briefed.

       In support of its motion, opposer maintains that in

response to opposer’s discovery requests, applicants admit

that they had not used at the time of filing their

application, and have never used applicants’ mark in U.S.

commerce in connection with all the services recited in the

involved application.      Opposer states that it seeks to

“amplify the allegations made in its Notice of Opposition”

by adding a claim of fraud.3

       In response, applicants argue that permitting an

amendment to the notice of opposition is “unduly prejudicial

to the applicants” in that it will further delay applicants




3
    Specifically, the amended allegations read as follows:

       13.   Upon information and belief, one or more material
             representations of fact was made by Applicans [sic] at
             the time of filing Applicants’ Application and/or
             during the prosecution of Applicants’ Application.
       14.   It is alleged that Applicants knew or should have
             known that such misrepresentations of fact as
             referenced in Paragraphs 10, 11 and 12 herein were
             false and/or misleading.
       15.   It is alleged that Applicants have committed fraud in
             attempting to procure a registration for Applicants’
             Mark, thus making Applicants’ Application void ab
             initio.


                                  4
Opposition No. 91158304


“in their pursuit of their commercial interests in the

entertainment industry.”

     In reply, opposer asserts that its amendment of the

notice of opposition does not prejudice applicants and that

all evidence relevant to the claim of fraud that may benefit

applicants is already in the applicants’ possession and

control.

     Leave to amend pleadings must be freely given when

justice so requires, unless entry of the proposed amendment

would violate settled law or be prejudicial to the rights of

the adverse party.    See Fed. R. Civ. P. 15(a); TBMP Section

507.02 (2d ed. rev. 2004) and cases cited therein.    Where

the moving party seeks to add a new claim or defense, and

the proposed pleading thereof is legally insufficient, or

would serve no useful purpose, the Board normally will deny

the motion for leave to amend.     See Octocom Systems Inc. v.

Houston Computer Services Inc., 

918 F.2d 937

, 

16 USPQ2d 1783

(Fed. Cir. 1990).    Thus, in deciding opposer’s motion for

leave to amend, the Board must consider whether there is

undue prejudice to applicants and whether the amendment is

legally sufficient.    See, e.g., Cool-Ray, Inc. v. Eye Care,

Inc. 

183 USPQ 618

, 621 (TTAB 1974).

     We note that opposer’s motion for leave to file an

amended notice of opposition was filed prior to the start of

trial and the record does not indicate that applicants would



                               5
Opposition No. 91158304


be prejudiced by opposer's addition of a fraud claim to the

likelihood of confusion claim set forth in its notice of

opposition.

     In addition, we note that the fraud claim is adequately

pled in the amended notice of opposition.    The allegations

set forth in paragraphs 13 through 15, when read in

conjunction with paragraphs 11 and 12 (which existed in the

original pleading), sufficiently state a claim of fraud.

     In view thereof, opposer's motion for leave to file an

amended notice of opposition is hereby granted.    The amended

notice of opposition is now the operative pleading.

Motion for Summary Judgment

     We next consider opposer’s motion for summary judgment

on the claim of fraud.    The motion has been fully briefed.

     In support of its motion, opposer argues that

applicants have committed fraud in attempting to procure a

registration for their involved mark, thus making the

involved application void ab initio.    Opposer asserts that

applicants, at the time they filed their involved

application, at the time they amended their recitation of

services during the examination process, and to date were

not and are not using applicants’ mark in commerce in

connection with all of the recited services.    Specifically,

opposer contends that applicants have admitted in their

responses to opposer’s discovery requests that they were not



                               6
Opposition No. 91158304


and are not using the mark in commerce in connection with

the following services:

     Production of records; audio recording and
     production; production of television shows, plays;
     motion picture film production; production of
     video discs for others; production of video
     cassettes for others; radio entertainment
     production.

Opposer further contends that applicants have admitted

in their responses to opposer’s interrogatories that

they are not using the mark “anywhere in the world” in

connection with the following services:

     Production of records; production of television
     shows, plays; motion picture film production;
     production of video discs for others; production
     of video cassettes for others; radio entertainment
     production.

     Opposer argues that this case is analogous to the

case of Medinol Ltd. v. Neuro Vasx, Inc., 

67 USPQ2d 1205

 (TTAB 2003), in which fraud was found because

there was no use of the involved mark on one of the two

listed goods in the statement of use, and applicants

admitted as much.

     Additionally, opposer asserts that applicants have

admitted in their responses to opposer’s discovery

requests that the substitute specimens submitted in

support of their application was also not used in U.S.

commerce at any point, let alone prior to the April 6,

2002 filing date of the application, and does not show




                             7
Opposition No. 91158304


use of applicants’ mark in connection with any of the

recited services in the application in U.S. commerce.

     Thus, opposer argues that the involved application

is invalid because applicants falsely signed and filed

the original application oath for their use-based

application when applicants knew, or should have known,

that they were not using applicants’ mark in commerce

on all the services recited and when applicants knew,

or should have known, that the substitute specimen they

submitted was not in use in U.S. commerce as of the

application’s filing date.

     Opposer further argues that the involved

application was signed by applicants themselves “who

were clearly in a position to have personal knowledge

of the facts concerning their own use of their mark on

the services identified in the application in the

United States”; that applicants reside in Australia, an

English speaking country, and clearly have a strong

understanding of the English language; that any claim

by applicants that they were not made aware of the

requirements for filing their application based on use

in commerce under Section 1(a) would be baseless given

the “wealth of information” provided on the USPTO’s

website for those who file their trademark applications

electronically (such as applicants); that any claim by



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Opposition No. 91158304


applicants that they are not represented by counsel or

are ignorant of the law is also meritless given the

USPTO’s online warning that applicants must comply with

all substantive and procedural requirements of the

Trademark Act and the Trademark Rules of Practice, even

if they are not represented by attorneys; and that one

of the applicants, namely, Joanne Volta, holds a

bachelor’s degree in law in Australia and as such “her

education…should have provided her with enough

understanding of the law in general to know the

importance of closely reviewing legal documents and

providing accurate information when completing legal

documents….”

     As evidentiary support for each of its motions,

opposer has submitted:    (1) a copy of the complete file

history for involved application Serial No. 78119982;

(2) opposer’s first set of requests for admissions; (3)

applicants’ responses to certain of opposer’s requests

for admissions; (4) opposer’s first set of

interrogatories; (5) applicants’ responses to certain

of opposer’s interrogatories; (6) web pages from the

Patent and Trademark Office’s website located at

www.uspto.gov; (7) a copy of a web page from the

website www.fact-index.com, indicating that the

designation “LLB” or “Blaws” is used to indicate a



                               9
Opposition No. 91158304


person who has graduated with a Bachelor’s degree in

law in Australia; (8) a copy of applicants’ response to

opposer’s first motion for summary judgment filed on

August 21, 2004; and (9) a declaration of Susan M.

Natland, opposer’s counsel.

      In response to the motion, applicants contend that

they did not commit fraud.    They argue that they

misunderstood the requirements necessary under Section 1(a)

of the Trademark Act, did not understand the legal meaning

of “use in commerce,” and honestly believed that their

ownership of the same mark in Australia and their use in

commerce of such mark in Australia justified their Section

1(a) filing basis in the U.S.    Applicants state that they

are “musicians who are attempting to conduct their

entertainment services in a business like fashion” and

believed they were engaged in commerce sufficient for

purposes of their Section 1(a) claim inasmuch as they had

established a website “which is a global domain” and they

“had sold compact discs” and “were engaged in the making and

distribution of the same.”    Additionally, they argue that

each time they were required by the examining attorney to

amend the recitation of services or submit a substitute

specimen, they did so in good faith and with the honest

belief that they were providing the examining attorney with

the information he or she requested.    Applicants further



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Opposition No. 91158304


argue that because they have yet to obtain a registration

for their mark, this case is distinguishable from the facts

in Medinol and, consequently, fraud should not be found.

       In addition to their “ignorance and misunderstanding

of the process of the Trademark Office,” applicants indicate

that “Paul Volta suffered a major coronary infarct on the

4th of November 2003 and Applicants have been more concerned

with the ongoing health problem presented by the coronary

incident and were not as detailed in their response or

defence as they should have been.”     Also, applicants argue

that their ignorance of the law should not be held against

them inasmuch as they are “defending themselves and have no

legal representation as such.”

       In evidentiary support of their response, applicants

have submitted several exhibits, including copies of two

Australian registrations which they own for the same mark as

involved herein.4

       In its reply brief, opposer argues that although

applicants allege that they misunderstood the law and did

not intend to defraud the USPTO, applicants made false

material representations that applicants “knew or should

have known” were false.    Opposer argues that applicants have

failed to produce “a single piece of evidence or statement


4
  We note that the remaining exhibits submitted by applicants
are irrelevant to our consideration of the issues herein.



                               11
Opposition No. 91158304


in Applicants’ Response” to demonstrate that applicants have

“used Applicants’ Mark in U.S. commerce in connection with

any of the services” in the involved application.

Additionally, opposer asserts that there is no genuine issue

of material fact that applicants filed an application based

on actual use of their mark in U.S. commerce and signed a

declaration attesting to the truth of all the statements in

the application, when they knew they had not used

applicants’ mark in connection with all the services recited

in the application.

      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

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




                               12
Opposition No. 91158304


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., supra at 1786, 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 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 opposer has established that there are



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Opposition No. 91158304


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 no genuine issue of material

fact that applicants filed an application based on use in

commerce and signed a declaration attesting to the truth of

all the statements in the application when they knew or

should have known that they did not use the mark in

connection with all the recited services, or that the

substitute specimen used to support their application was

not in use in U.S. commerce as of the filing date of the

application.

      Statements regarding the use of the mark on goods and

services are certainly material to issuance of a



                              14
Opposition No. 91158304


registration.    See Standard Knitting, Ltd. v. Toyota Jidosha

Kabushiki Kaisha, 

77 USPQ2d 1917

 (TTAB 2006)(fraud found

based on misrepresentation regarding use of the mark on most

of the goods identified in the filed applications); First

International Services Corp. v. Chuckles Inc., 

5 USPQ2d 1628

(TTAB 1988) (fraud found in applicant’s filing of

application with verified statement that the mark was in use

on a range of personal care products when applicant knew it

was in use only on shampoo and hair setting lotion).       See

also, General Car and Truck Leasing Systems Inc. v. General

Rent-A-Car Inc., 

17 USPQ2d 1398

 (D.C. S.Fla. 1990), aff’g

General Rent-A-Car Inc. v. General Leaseways, Inc., Canc.

No. 14,870 (TTAB May 2, 1988).

        Despite applicants’ assertions to the contrary, we

agree with opposer that this case is similar to the Medinol

case.    In Medinol, a trademark application was filed, the

mark was published, a statement of use was submitted, and 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 (at 1208):

        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


                               15
Opposition No. 91158304


      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. (cites omitted).

       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 applicants’

misrepresentation regarding their use of the mark on all the

recited services in the application.     It is irrelevant,

despite what applicants would have us believe, that a

registration has yet to issue for applicants’ mark.      The

timing of the misrepresentation is immaterial.      Whether the

false statements alleging use of the mark in commerce occur

at the time of filing the application, during the

examination process, or at a later point during the USPTO’s

review of the statement of use, the result is the same--an

application results in a registration improperly accorded

legal presumptions in connection with goods and/or services

on which the mark is not used.5     Applicants have provided no

compelling argument as to why the law allows for

cancellation of a registration after it is obtained through

fraud, but does not allow for the prevention of a

registration when fraud is revealed and the issuance of a

registration is imminent.

5
  We note, however, that a misstatement in an application as to
the goods or services on which a mark has been used does not rise
to the level of fraud where an applicant amends the application




                               16
Opposition No. 91158304


       In this case, applicants have admitted that as of the

April 6, 2002 filing date of their involved application,

they were not using the mark in U.S. commerce for the

following services identified in the application:

“production of records; audio recording and production;

production of television shows, plays; motion picture film

production; production of video discs for others; production

of video cassettes for others; and radio entertainment

production.”   Additionally, we agree with opposer that

applicants’ responses to opposer’s interrogatories indicate

that applicants likely are not even using the mark “anywhere

in the world” on the following recited services:       production

of records; production of television shows, plays; motion

picture film production; production of video discs for

others; production of video cassettes for others; radio

entertainment production.     From the original filing of their

application and throughout the prosecution thereof,

applicants continued to assert their claim of use under

Section 1(a) of the Trademark Act.      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). Cf. E.I. du Pont de Nemours &


prior to publication.   See Universal Overall Co. v. Stonecutter


                                17
Opposition No. 91158304


Co. v. Sunlyra International, Inc., 

35 USPQ2d 1787

, 1791

(TTAB 1995).    The involved application includes the

following statement:    “Applicant is using or is using

through a related company the mark in commerce on or in

connection with the…identified goods/services.”    Also,

applicants 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 representation of fact with

regard to use of the mark on particular services was made by

the mark’s owner(s) and that statement was relied upon by

the USPTO in determining applicants’ rights to the

registration.

       The fact that applicants allegedly misunderstood a

clear and unambiguous requirement for an application based

on use, were not represented by legal counsel, and were

suffering health problems does not change our finding of

fraud herein.    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.”     General




Mills Corp., 

154 USPQ 104

 (CCPA 1967).


                               18
Opposition No. 91158304


Car and Truck, 17 USPQ2d at 1400-1401 (intent of the

signatories not material to question of fraud).



     As the Board determined in Medinol, supra at 1209, “the

appropriate inquiry is…not into the registrant’s subjective

intent, but rather into the objective manifestations of that

intent.”   In Medinol, supra at 1209-1210, 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.

     As previously indicated, applicants in the case

before us have admitted that they were not using, and

indeed never used, their mark for most of the recited

services in U.S. commerce as of the April 6, 2002

filing date of their involved application.   Applicants

were certainly in a position to have personal knowledge

of the facts concerning their own use of their mark on

the services identified in their application.

     Similarly, they were clearly capable of availing

themselves of the relevant information available on the

USPTO website regarding the various filing bases and




                              19
Opposition No. 91158304




their specific requirements.6    Although applicants held

an “honest belief” that their use of a similar mark in

commerce in Australia warranted their filing their

application under Section 1(a) in the U.S., they were

under an obligation to investigate thoroughly the

validity of such a belief before signing their

application under certain penalties.7     Moreover,

applicants’ asserted misunderstanding regarding the

meaning of “use in commerce” was not reasonable.      At


6
  As opposer correctly indicates, for example, when clicking on
the “Use in Commerce” (Section 1(a)) base line item on the
electronic application form which the applicants filled out, the
following explanation is provided:

    Use in Commerce

    Choose this basis if actually already using the mark in
    commerce that the U.S. Congress may regulate (i.e.,
    interstate commerce, territorial commerce, or commerce
    between the United States and a foreign country) in
    connection with goods and/or services identified in the
    application.   You must be able to provide the date of
    first use anywhere and the date of use in commerce that
    the U.S. Congress may regulate, and a specimen (sample of
    said use).   Use may be by the applicant, the applicant’s
    related company, or a licensee of the applicant. You may
    file under more than one basis, but you may not file an
    application based on both use in commerce under §1(a) and
    a bona fide intention to use a mark in commerce under §(b)
    for the identified goods and/or services (e.g., you cannot
    list “shirts” under Section 1(b) and Section 1(a), but you
    could list “shirts” under Section 1(b) and pants under
    Section 1(a)).
7
  Applicants’ assertion that they believed they were engaged in
commerce sufficient for purposes of their Section 1(a) claim
because they had established a website for selling their compact
discs is irrelevant to our analysis.     The subject application
involves services in Class 41 with no mention of compact discs.



                                20
Opposition No. 91158304


the time they filed their application, they knew they

were seeking a registration for their mark in the

United States.   It was unreasonable for them to

believe, however “honest” such a belief, that the term

“use in commerce” on a trademark application in the

United States meant anything other than use of the mark

in commerce in or with the United States, or even that

use in commerce in Australia was the legal equivalent

of use in commerce in the United States.

     In considering opposer’s claim of fraud regarding

applicants’ submission of a substitute specimen that was not

used in U.S. commerce at any point, let alone prior to the

April 6, 2002 filing date of the subject application, we

similarly find that statements regarding specimens submitted

in support of an application are certainly material to

issuance of a registration.    See for example, 

Torres, supra at 1485

 (court found it material that specimen submitted for

Section 9 renewal application was not currently in use and

cancelled the registration).   A registration filed under

Section 1 will not be granted unless and until applicant

files a verified statement, together with specimens, that it

has used the mark in commerce.      See Trademark Rules 2.56(a)

and 2.59(a).

     There is no question that applicants’ application would

have been refused but for applicants’ misrepresentation



                               21
Opposition No. 91158304


regarding its use of the submitted substitute specimen in

U.S. commerce.   In submitting the specimen, applicants

indicated that the “the substitute specimen was in use in

commerce as of the filing date of the Application.”

However, in responding to opposer’s discovery requests,

applicants admit that the Kaos Café, the location indicated

in the advertisement flyer submitted as a substitute

specimen, is located in Australia.   Hence, it is clear that

the substitute specimen was not in use in U.S. commerce as

of the filing date of the involved application, or at any

time for that matter, and, therefore, such specimen fails to

demonstrate use of the applicants’ mark in connection with

any of the recited services in the application.   Inasmuch as

applicants’ material representations were false and

applicants knew of or should have known such representations

were false, we conclude that applicants have, again,

committed fraud.

     In view of the above, we find that applicants’ material

misrepresentations made in connection with their application

were fraudulent and, therefore, the application is void ab

initio.   Accordingly, summary judgment is entered in

opposer’s favor on the issue of fraud.

Motion to Amend Application

     Applicants seek to amend the filing basis of their

opposed application to Section 44(e) of the Trademark Act.



                              22
Opposition No. 91158304


Although applicants could have originally based their

application on their Australian registration under Section

44(e),8 the proposed amendment does not serve to cure a

fraud that was committed.    See Medinol, supra at 1208

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

does not remedy an alleged fraud upon the Office).      In view

of the above finding of fraud, we find that applicants’

motion to amend is moot.

     Accordingly, opposer’s motion for summary judgment is

granted.   The opposition is   sustained on opposer’s claim of

fraud.

     In view of our finding of fraud, and inasmuch as

opposer did not move for summary judgment as to likelihood

of confusion, we need not reach the issue of likelihood of

confusion.




8
  We note that our decision does not preclude applicants from
filing a new application for their mark under Section 44(e) of
the Act.


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