May 1, 2012
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UNITED STATES: Misstatement of First Use Date Is Not Fraud
In the latest Trademark Trial and Appeal Board (TTAB) case addressing a claim of fraud, the TTAB held that a false claim of a first use date was not material to an application. Bio-One, Inc. v. A.L.E.G., Inc., Cancellation No. 92052195 (T.T.A.B. Mar. 8, 2012) (non-precedential).
Bio-One filed a petition to cancel the trademark registration for BIO1ONE owned by A.L.E.G., based on a claim that the first use date in the application was fraudulent and that the mark was confusingly similar to a mark in which Bio-One had superior rights. Regarding the fraud claim, Bio-One alleged that the BIO1ONE registration was “riddled with fraud” because A.L.E.G.’s original application stated that the date of first use was 1988. After a cease and desist letter from Bio-One, A.L.E.G. amended the claimed date of first use to 2004.
The TTAB held that a false claim in a use date is not material to the validity of the application or the resulting registration so long as the mark was in use in commerce at the time the application was filed (if the application was based on use in commerce) or at the time the Statement of Use was filed (if the application was based on intent to use). The petition on the ground of fraud was dismissed, as Bio-One failed to prove A.L.E.G. did not make use of its mark before the filing date of the application. Bio-One did prevail on its likelihood-of-confusion argument for reasons wholly unrelated to the fraud claim.
U.S. trademark owners can rest assured that the TTAB does not appear to be encouraging a return to the days of rampant opposition and cancellation filings on the basis of fraud.
Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers
are urged to check independently on matters of specific concern or interest.
© 2012 International Trademark Association