Meckatzer Löwenbräu Benedikt Weiß KG v. White Gold, LLC

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

MBA                             Mailed:   May 13, 2010

                                Cancellation No. 92051014

                                Meckatzer Löwenbräu Benedikt
                                Weiß KG

                                   v.

                                White Gold, LLC

Before Seeherman, Bucher and Walsh, Administrative Trademark
Judges

By the Board:

      On November 3, 2009, the Board issued an order (the

“Prior Order”) denying respondent’s motion to dismiss the

original petition for cancellation, finding, contrary to

respondent’s arguments, that petitioner had adequately

alleged its standing.   However, the Board sua sponte

dismissed the original petition, finding that it did not

adequately allege fraud under the standards set forth in In

re Bose Corp., 

580 F.3d 1240

, 

91 USPQ2d 1938

 (Fed. Cir.

2009), and allowed petitioner 30 days to file an amended

petition for cancellation.   This case now comes up for

consideration of respondent’s motion to dismiss petitioner’s

first amended petition for cancellation for failure to state

a claim upon which relief may be granted, filed December 29,

2009.   The motion is fully briefed.
Cancellation No. 92051014


Background

     As set forth in the Prior Order, respondent owns

registrations of the marks WHITE GOLD in standard characters

and WHITE GOLD & Design,1 both of which are for, inter alia,

alcoholic beverages (the “Registrations”).     Petitioner seeks

to cancel the Registrations, alleging in the first amended

petition for cancellation that its pending applications to

register WEISS-GOLD in standard characters2 and MECKATZER

MECKATZER LÖWENBRÄU WEISS GOLD & Design3 were refused under

Section 2(d) based on respondent’s Registrations.      First

Amended Petition for Cancellation (“FAPC”) ¶¶ 1-3.

Petitioner further alleges that it engaged a private

investigator who

             contacted a representative for
             Respondent and a number of its U.S.
             distributors and vendors and learned
             that Respondent is using the WHITE GOLD
             and WHITE GOLD & Design marks in the
             United States only in connection with
             vodka. The investigator further learned

1
     Registration Nos. 3399843 and 3399844, both issued March 18,
2008 from applications filed February 17, 2006, based on dates of
first use in commerce of August 2005 for “Aperitifs; orak;
brandy; wine; whisky; gin; vodka; prepared alcoholic cocktails;
liquers ….”
2
     Application Serial No. 79025059, filed April 10, 2006 under
Section 66(a) for “Beers, brewed malt-based alcoholic beverages;
mineral waters, aerated waters; fruit juices, fruit juices
containing crushed fruit, fruit drinks and lemonades or other
carbonated soft drinks” and “Alcoholic beverages, namely, potable
spirits and liquers.” The English translation of “WEISS-GOLD” is
“White-gold.”
3
     Application Serial No. 79038317, filed February 19, 2007
under Section 66(a) for “Beers; mineral and aerated waters; other
non-alcoholic drinks, namely, carbonated beverages, Non-alcoholic
punch; fruit drinks and fruit juices ….”



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Cancellation No. 92051014


            that Respondent has never used the WHITE
            GOLD and WHITE GOLD & Design marks in
            the United States in connection with any
            product other than vodka.

Id. ¶ 6.    As grounds for cancellation, petitioner again

alleges fraud.    This time, petitioner specifically alleges

“[u]pon information and belief, and upon the results of the

investigation” that:    (1) at the time it filed Statements of

Use in connection with its Registrations, respondent’s

involved marks “were not in use in connection with all of

the goods referenced in the Statements of Use;” id. ¶ 7; and

(2) “Respondent knowingly made false, material

misrepresentations of fact in procuring the Registrations

with the intent to defraud the U.S.P.T.O.” because

“Respondent knew that [its involved marks] were not in use

in connection with all of the goods referenced in the

Statements of Use at the time the Statements of Use were

filed ….”   Id. ¶ 8.

Respondent’s Motion and Petitioner’s Response

     Respondent argues that petitioner has not alleged

sufficient facts for the Board to “reasonably infer that a

specific individual knew of the withheld material

information or of the falsity of the material

misrepresentation, and withheld or misrepresented this

information with a specific intent to deceive the PTO.”

Respondent further argues that even assuming petitioner’s

allegations are correct and sufficient, respondent “has not


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Cancellation No. 92051014


obtained a registration to which it would not otherwise be

entitled, since Registrant would therefore be entitled to

registration at least with respect to vodka ….”

     In response, petitioner points out that its fraud

allegations are not based solely on information and belief,

but are based also on its investigation.   Furthermore,

“Petitioner’s pleading of fraud rests on sufficient,

specific underlying facts from which the Board may

reasonably infer that Respondent acted with the requisite

state of mind.”   Finally, petitioner argues that while In re

Bose “clarified” the standards to be applied to fraud

claims, it did not change the consequences of fraud when it

is proved, i.e. that the fraudulently procured registration

should be cancelled in its entirety.

Decision

     The standard governing motions to dismiss under Fed. R.

Civ. P. 12(b)(6) is set forth below:

           In order to withstand a motion to
           dismiss for failure to state a claim, a
           plaintiff need only allege such facts as
           would, if proved, establish that (1) the
           plaintiff has standing to maintain the
           proceedings, and (2) a valid ground
           exists for opposing the mark. The
           pleading must be examined in its
           entirety, construing the allegations
           therein liberally, as required by Fed.
           R. Civ. P. 8(f), to determine whether it
           contains any allegations which, if
           proved, would entitle plaintiff to the
           relief, sought. See Lipton Industries,
           Inc. v. Ralston Purina Co., 

670 F.2d 1024

, 

213 USPQ 185

 (CCPA 1982); Kelly


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Cancellation No. 92051014


          Services Inc. v. Greene's Temporaries
          Inc., 

25 USPQ2d 1460

 (TTAB 1992); and
          TBMP §503.02 (2d. ed. rev. 2004). For
          purposes of determining a motion to
          dismiss for failure to state a claim
          upon which relief can be granted, all of
          plaintiff's well-pleaded allegations
          must be accepted as true, and the
          complaint must be construed in the light
          most favorable to plaintiff. See
          Advanced Cardiovascular Systems Inc. v.
          SciMed Life Systems Inc., 

988 F.2d 1157

,
          

26 USPQ2d 1038

 (Fed. Cir. 1993); see
          also 5A Wright & Miller, Federal
          Practice And Procedure: Civil 2d §1357
          (1990). … The purpose of a Rule 12(b)(6)
          motion is to challenge “the legal theory
          of the complaint, not the sufficiency of
          any evidence that might be adduced” and
          “to eliminate actions that are fatally
          flawed in their legal premises and
          destined to fail …” Advanced
          Cardiovascular Systems Inc. v. SciMed
          Life Systems Inc., supra at 

26 USPQ2d 1041

.


Fair Indigo LLC v. Style Conscience, 

85 USPQ2d 1536

, 1538

(TTAB 2007); see also, Young v. AGB Corp., 

152 F.3d 1377

, 

47 USPQ2d 1752

, 1754 (Fed. Cir. 1998).

     Under this standard, we find that petitioner has

sufficiently alleged fraud.   Its allegations are not based

solely on “information and belief,” but are also based on

the results of an investigation which, petitioner alleges,

revealed that respondent was not using its mark on all of

the goods listed in its Statements of Use at the time the

Statements of Use were filed.       More specifically, petitioner

alleges that its investigation revealed that respondent’s

mark was not used on any of the goods listed in its


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Cancellation No. 92051014


Statements of Use, other than vodka.    FAPC ¶ 6.   Moreover,

the FAPC, in contrast to the original petition for

cancellation, specifically alleges that “Respondent

knowingly made false, material misrepresentations of fact in

procuring the Registrations with the intent to defraud the

U.S.P.T.O.”   Id. ¶ 8.   These allegations are sufficiently

specific and particular under Fed. R. Civ. P. 9(b).

     Respondent’s arguments to the contrary are not well-

taken.   First, the question is not whether petitioner has

alleged that a nonparty “specific individual” had the

requisite intent, but rather whether petitioner has alleged

with particularity that respondent, the defendant and owner

of the subject Registrations, had the requisite intent.     In

re Bose Corp., 

580 F.3d 1240

, 

91 USPQ2d at 1941

 (“we hold

that a trademark is obtained fraudulently under the Lanham

Act only if the applicant or registrant knowingly makes a

false, material misrepresentation with the intent to deceive

the PTO”) (emphasis supplied); Exergen Corp. v. Wal-Mart

Stores Inc., 

575 F.3d 1312

, 

91 USPQ2d 1656, 1667

 (Fed. Cir.

2009) (“our precedent … requires that the pleadings allege

sufficient underlying facts from which a court may

reasonably infer that a party acted with the requisite state

of mind”) (emphasis supplied).     We do not read In re Bose as

requiring that a party identify a “specific individual” who

“knew of the withheld material information or of the falsity



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Cancellation No. 92051014


of the material misrepresentation, and withheld or

misrepresented this information with a specific intent to

deceive the PTO,” as respondent argues.   Second, as

petitioner points out, In re Bose did not change the

consequences of fraud, when it is proved.   A finding of

fraud with respect to a particular class of goods or

services renders any resulting registration void as to that

class.   G&W Laboratories Inc. v. GW Pharma Ltd., 

89 USPQ2d 1571

, 1574 (TTAB 2009).   Therefore, if petitioner proves its

allegations of fraud, it will also establish that respondent

obtained registrations to which it was not otherwise

entitled.

Conclusion

     For all of these reasons, respondent’s motion to

dismiss the FAPC is hereby DENIED.   Respondent is allowed

until June 17, 2010 to file an answer to the FAPC.

Proceedings herein are resumed, and discovery, disclosure,

conferencing, trial and other dates are reset as follows:

Time to Answer                                    June 17, 2010

Deadline for Discovery Conference                 July 17, 2010

Discovery Opens                                   July 17, 2010

Initial Disclosures Due                         August 16, 2010

Expert Disclosures Due                        December 14, 2010

Discovery Closes                               January 13, 2011

Plaintiff's Pretrial Disclosures              February 27, 2011


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Cancellation No. 92051014



Plaintiff's 30-day Trial Period Ends              April 13, 2011

Defendant's Pretrial Disclosures                  April 28, 2011

Defendant's 30-day Trial Period Ends               June 12, 2011

Plaintiff's Rebuttal Disclosures                   June 27, 2011

Plaintiff's 15-day Rebuttal Period Ends            July 27, 2011


     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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