In Tommie Copper IP Inc v Gcool-Tech Usa LLC (Opposition No 91223768 (9 May 2018) [not precedential]), the Trademark Trial and Appeal Board (TTAB) has dismissed an opposition where the applicant did not have use in commerce at the time of filing the application and used a mocked-up specimen.
Opponent Tommie Copper sought to prevent registration of the mark below in relation to clothing made up of fabric containing copper on the grounds that the mark was likely to cause confusion with Tommie Copper’s registered marks, and that applicant Gcool-Tech USA had committed fraud on the Trademark Office by claiming to have valid use in commerce at the time it filed its application when it did not have such use.
The applicant filed to register the mark COPPER 88 (and design) (Application No 86/577,505) on 26 March 2015 in connection with apparel on the basis of use in commerce with a claim of first use dating back to 16 September 2013. After an office action, the applicant entered a disclaimer of the wording ‘copper 88’ as descriptive and clarified the identification of goods to specify that the apparel was “made of fabric containing copper”.
Opponent Tommie Copper opposed the application on 11 September 2015 on the basis of an alleged likelihood of confusion with four of its registered marks, including TOMMIE COPPER (Registration No 4,236,726) and the design below (Registration No 4,590,309), all in connection with copper-infused clothing.
After discovery commenced, the applicant sought leave to amend the application to a basis of ‘intent to use’ after the applicant’s counsel at the time, Matthew Swyers of The Trademark Company, apparently became aware that the applicant was “mistaken” with respect to the meaning of ‘use’ in commerce. Although the TTAB eventually allowed the amendment, it did not dismiss the fraud claims because fraud cannot be cured by an amendment after an inter partes proceeding has commenced. The opponent subsequently moved to amend the pleadings to include claims of fraud.
In addressing the opponent’s Section 2(d) claims, the TTAB focused on its design mark, as the wording ‘copper’ was descriptive and the design portion was dominant. Although the TTAB found that the respective goods of each party were identical in part, it was not convinced that the design elements were confusingly similar, and therefore denied the opposition on the Section 2(d) claim.
Turning to the fraud claims, the TTAB restated the Federal Circuit’s holding in In re Bose Corp (580 F3d 1240, 91 USPQ2d 1938, 1941 (Fed Cir 2009)), that fraud “occurs when an applicant knowingly makes false, material representations of fact in connection with its application with the intent to deceive the USPTO”. The TTAB emphasised that proving fraud entails a heavy burden of proof, and that fraud must be proven “to the hilt”.
During discovery, the applicant’s witness, Aaron Fisher, testified that the applicant had not sold any goods in the United States under the mark at the time the application was filed, although some samples may have been given away. Fisher further testified that several goods identified in the application, such as sweatshirts, had never got past the prototype stage and were never manufactured. Fisher also testified that the specimens were mock-ups created in connection with the samples and that the dates of use provided in the application referred to a different brand, CU COMPRESSION.
Although the TTAB found that the applicant had made false, material representations of fact, it held that these misrepresentations were not made with the requisite intent to deceive. Fisher repeatedly testified that his father, a principal of the company, worked with counsel to file the application, and was confused by the legal standards. The TTAB therefore found that the misrepresentations were the result of honest misunderstandings. Accordingly, the TTAB found that the applicant did not commit fraud, and denied the opposition on the fraud claims.
The application should be allowed in due course and proceed to registration after evidence of use in US commerce is timely submitted or the basis is further amended. The owner notably owns registrations in Canada, inter alia, for the same mark in black and white (Registration No TMA 992,470) and the word mark COPPER 88 (Registration No TMA 943,950), but these would not support a foreign registration basis for this US application.
Although not precedential, Tommie Copper IP demonstrates the difficulty of establishing fraud before the USPTO, even where there is direct evidence that an applicant made false and material representations. Because the applicant testified that it misunderstood the requirements of use in commerce, despite being represented by an attorney during prosecution of the application, the TTAB could not find that the applicant had “wilful intent to deceive” the Trademark Office required under Bose. As the USPTO struggles with phony specimens of use and overly broad identifications of goods and services, claims of fraud continue to have only a limited ability to assist in cleaning up the register.
The article was originally published on June 5th, 2018 in the World Trademark Review (WTR).