Asian and Western Classics B.V.

Trademark Trial and Appeal Board

Oct 22, 2009

No. 92048821 (T.T.A.B. Oct. 22, 2009)

Goodman Mailed: October 22, 2009

Cancellation No. 92048821

Asian and Western Classics
B.V.

v.

Lynne Selkow

Before Walters, Zervas and Wellington, Administrative
Trademark Judges.

By the Board:

This case now comes up on petitioner’s motion, filed
May 15, 2009, for summary judgment on its fraud claim as set
forth in its amended petition to cancel. Specifically,
petitioner’s motion argues that there is no genuine issue
that “there was no use of the mark on some of the goods
[bracelets] set forth in the registration” when respondent
filed her Section 8 and 15 declaration. The motion is fully
briefed.
A decision on summary judgment necessarily requires a
review of the operative pleading in this case, filed on July
17, 2008 and accepted by the Board on December 22, 2008. In
view of the recent decision of In re Bose Corp., 580 F.3d
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451 THIS OPINION IS
A PRECEDENT OF
THE T.T.A.B.
Cancellation No. 92048821
2
1240, 91 USPQ2d 1938 (Fed. Cir. 2009), we find the fraud
claim insufficiently pleaded.1
In petitioning to cancel on the ground of fraud, a
petitioner must allege the elements of fraud with
particularity in accordance with Fed. R. Civ. P. 9(b), made
applicable to Board proceedings by Trademark Rule 2.116(a).
Under Rule 9(b), together with Fed. R. Civ. P. 11 and USPTO
Rule 11.18, “the pleadings [must] contain explicit rather
than implied expression of the circumstances constituting
fraud.” King Automotive, Inc. v. Speedy Muffler King, Inc.,
667 F.2d 1008, 212 USPQ 801, 803 (CCPA 1981). See also
Wright & Miller, Federal Practice and Procedure: 5A § 1296

1 Petitioner alleges the following with regard to the fraud
claim:

3. Petitioner is informed and believes that Selkow did not have
bona fide use in commerce of the KL Design Mark at either
the time the application for registration was filed or the
date of the registration.

4. Petitioner is informed and believes that despite not having
any bona fide use of the mark in commerce, Selkow submitted
false statements to the trademark office attesting to such
use when she filed her application for registration. Selkow
knew or should have known that the statements were false,
and thus the registration was obtained fraudulently and
should be cancelled.

5. Petitioner is also informed and believes that at the time
Selkow filed her Declaration under Section 8&15, she did not
have bona fide use of the KL Design Mark in commerce.

6. Petitioner is informed and believes that despite not having
any bona fide use of the mark in commerce, Selkow submitted
false statements to the trademark office attesting to such
use when she filed her Declaration under Sections 8&15.
Selkow knew or should have known that the statements were
false, and thus, the Declaration was submitted fraudulently,
and the registration should be cancelled.
Cancellation No. 92048821
3
n. 11 (2004) (citing cases that discuss purposes of the Rule
9(b) heightened pleading standard to include providing
notice, weeding out baseless claims, preventing fishing
expeditions and fraud actions in which all facts are learned
after discovery, and serving the goals of Rule 11).
Pleadings of fraud made "on information and belief,"
when there is no allegation of “specific facts upon which
the belief is reasonably based” are insufficient. Exergen
Corp. v. Wal-Mart Stores Inc., 91 USPQ2d 1656, 1670 (Fed.
Cir. 2009) and cases cited therein (discussing when pleading
on information and belief under Fed. R. Civ. P. 9(b) is
permitted); see also In Re Bose Corp., 91 USPQ2d at 1938.
Additionally, under USPTO Rule 11.18, the factual basis for
a pleading requires either that the pleader know of facts
that support the pleading or that evidence showing the
factual basis is “likely” to be obtained after a reasonable
opportunity for discovery or investigation. Allegations
based solely on information and belief raise only the mere
possibility that such evidence may be uncovered and do not
constitute pleading of fraud with particularity. Thus, to
satisfy Rule 9(b), any allegations based on “information and
belief” must be accompanied by a statement of facts upon
which the belief is founded. See Exergen Corp., 91 USPQ2d
at 1670 n.7, citing Kowal v. MCI Commc'n Corp., 16 F.3d
1271, 1279 n.3 (D.C. Cir. 1994) “(‘[P]leadings on
Cancellation No. 92048821
4
information and belief [under Rule 9(b)] require an
allegation that the necessary information lies within the
defendant's control, and … such allegations must also be
accompanied by a statement of the facts upon which the
allegations are based’).”
In this case, petitioner’s allegations in Paragraphs 4
and 6 of the amended petition to cancel regarding
respondent’s alleged false statements to the Office are
based solely upon information and belief. These allegations
fail to meet the Fed. R. Civ. P. 9(b) requirements as they
are unsupported by any statement of facts providing the
information upon which petitioner relies or the belief upon
which the allegation is founded (i.e., known information
giving rise to petitioner’s stated belief, or a statement
regarding evidence that is likely to be discovered that
would support a claim of fraud).2 Media Online Inc. v. El
Clasificado Inc., 88 USPQ2d 1285, 1287 (TTAB 2008) (finding
the proposed amended pleading insufficient in part under
Fed. R. Civ. P. 9(b) because the false statements that
purportedly induced the Office to allow registration were
not set forth with particularity). See also Wright &

2 Although paragraphs 3 and 5 of the fraud claim assert lack of
bona fide use in commerce based on information and belief, the
necessary supplementary factual information on which these
allegations are based is provided in paragraphs 8, 9 and 10.

Cancellation No. 92048821
5
Miller, supra, § 1298 (discussing particularity requirement
of Fed. R. Civ. P. 9(b)).
A pleading of fraud on the USPTO must also include an
allegation of intent. In re Bose, 91 USPQ2d at 1939-1940.
Moreover, although Rule 9(b) allows that intent may
be alleged generally, the pleadings must allege sufficient
underlying facts from which a court may reasonably infer
that a party acted with the requisite state of mind.
Exergen Corp., 91 USPQ2d at 1667, n.4. Pleadings of fraud
which rest solely on allegations that the trademark
applicant or registrant made material representations of
fact in connection with its application or registration
which it “knew or should have known” to be false or
misleading are an insufficient pleading of fraud because it
implies mere negligence and negligence is not sufficient to
infer fraud or dishonesty. In re Bose, 91 USPQ2d at 1940,
quoting Symbol Techs., Inc. v. Opticon, Inc., 935 F.2d 1569,
1582 (Fed. Cir. 1991). Thus under Bose, intent is a
specific element of a fraud claim and an allegation that a
declarant “should have known” a material statement was false
does not make out a proper pleading. See also Media Online,
88 USPQ2d at 1287 (finding proposed amended pleading
insufficient in part because the pleading lacked allegations
of scienter); Crown Wallcovering Corp. v. The Wall Paper
Mfrs. Ltd., 188 USPQ 141, 144 (TTAB 1975) and cases cited
Cancellation No. 92048821
6
therein (“in order to state a claim upon which relief can be
granted on the ground of fraud, it must be asserted that the
false statements complained of were made willfully in bad
faith with the intent to obtain that to which the party
making the statements would not otherwise have been
entitled”).
Petitioner’s allegations in Paragraphs 4 and 6 of the
amended petition to cancel which state that “registrant knew
or should have known…” are insufficient to infer
respondent’s intent to commit fraud on the USPTO.
In view thereof, petitioner’s fraud claim is
insufficient.
Because petitioner’s fraud claim was not properly
pleaded and is insufficient to state a claim, the motion for
summary judgment is deemed moot. Intermed Communications,
Inc. v. Chaney, 197 USPQ 501, 503 n. 2 (TTAB 1977) (“If a
claim has not been properly pleaded, one cannot obtain
summary judgment thereon”). See also Consolidated Foods
Corporation v. Berkshire Handkerchief Co., Inc., 229 USPQ
619, 621 (TTAB 1986) (The rule that only properly pleaded
issues may be the subject of a grant of summary judgment “is
especially important where the asserted ground for summary
judgment is fraud since in pleading fraud, ‘the
circumstances . . . shall be stated with particularity.’
Fed. R. Civ. P. 9(b)”).
Cancellation No. 92048821
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We note in any event, that even if we were to consider
petitioner’s motion for summary judgment on the fraud claim
on its merits, the motion would have to be denied because
genuine issues remain at least with respect to respondent’s
intent to commit fraud on the USPTO. A party making a fraud
claim is under a heavy burden because fraud must be “proven
‘to the hilt’ by clear and convincing evidence,” leaving
nothing to speculation, conjecture, or surmise; any doubt
must be resolved against the party making the claim. Smith
International, Inc. v. Olin Corp., 209 USPQ 1033, 1043-1044
(TTAB 1981). The factual question of intent is particularly
unsuited to disposition on summary judgment. Copelands'
Enterprises Inc. v. CNV Inc., 945 F.2d 1563, 20 USPQ2d 1295,
1299 (Fed. Cir. 1991).
Petitioner is allowed until TWENTY DAYS from the
mailing date of this order to file and serve an amended
pleading properly alleging fraud, if petitioner has a sound
basis for doing so, failing which, the existing allegations
regarding fraud are hereby stricken.3

3 If petitioner repleads the fraud claim consistent with Bose, we
note that the basis for its summary judgment motion (i.e., fraud
based on non-use on one of the goods at the time of filing the
Section 8 and 15 declaration) was narrower than the fraud claim
petitioner attempted to assert in the operative amended petition
to cancel (i.e., fraud based on lack of bona fide use of the mark
in commerce at the time of filing the application and at the time
of filing the Section 8 and 15 declaration). Therefore,
petitioner may wish to narrow the basis for any prospective fraud
claim it may replead.

Cancellation No. 92048821
8
If petitioner does file an amended pleading, respondent
is allowed until FORTY days from the mailing date of this
order to file its answer thereto.
Proceedings are resumed. Dates in this proceeding are
reset as follows:
Discovery Closes 11/4/09
Plaintiff's Pretrial Disclosures 12/19/09
Plaintiff's 30-day Trial Period Ends 2/2/10
Defendant's Pretrial Disclosures 2/17/10
Defendant's 30-day Trial Period Ends 4/3/10
Plaintiff's Rebuttal Disclosures 4/18/10
Plaintiff's 15-day Rebuttal Period Ends 5/18/10

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.