DaimlerChrysler Corporation and Chrysler, LLCv.American Motors Corporation

Trademark Trial and Appeal Board

Jan 14, 2010

No. 92045099 (T.T.A.B. Jan. 14, 2010)

BUTLER
Mailed: January 14, 2010

Cancellation No. 92045099

DAIMLERCHRYSLER CORPORATION and
CHRYSLER, LLC1

v.

AMERICAN MOTORS CORPORATION

Before Hairston, Cataldo and Taylor, Administrative Trademark
Judges.

By the Board:
Respondent owns a registration for the following mark:

for “automobiles and structural parts thereof.”2 In accordance with
the amended petition to cancel, filed June 15, 2009, and allowed by
the Board in its June 26, 2009 order, petitioner alleges the
following grounds for cancellation of the registration: 1) priority
of use and likelihood of confusion with its AMERICAN MOTORS

1 The Board recognizes that there are two petitioners. In this order,
the position of plaintiff is referred to in the singular (i.e.,
“petitioner”).

2 Registration No. 2949439, issued on May 10, 2005, claiming a date of
first use anywhere of October 28, 2002 and a date of first use in
commerce of January 21, 2005.
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 TTAB
Cancellation No. 92045099
2
CORPORATION and AMC3 marks for “motor vehicles and parts therefor”;
2) fraud;4 and 3) abandonment. With respect to its standing,
petitioner asserts prior common law rights in its AMERICAN MOTORS
CORPORATION and AMC marks; and that respondent’s registration has
been cited by the assigned Trademark Examining Attorney as a bar
under Trademark Act §2(d) to the registration of petitioner’s
pending application Serial No. 78661023 for the mark AMC and design
for “toy vehicle replicas.”
In its answer to the amended petition to cancel (“pet.”),
respondent denies the salient allegations of the complaint.
Respondent admits paragraph Nos. 10-13 of the complaint wherein
petitioner alleges it filed an application to register the mark AMC
and design for “toy vehicle replicas” and that such application has
been refused in view of the existence of respondent’s registration
(pet. para. Nos. 10-11); and that respondent filed its application
to register its AMC and design mark, that a notice of allowance
issued, that respondent received two Office Actions with respect to
its Statement of Use and responded thereto; and that respondent’s
application issued as Registration No. 2949439 (pet. para. Nos. 12-
13).
In accordance with the Board’s order of June 26, 2009, the
discovery period was last set to close on July 16, 2009. This case

3 Petitioner alleges use of its AMC mark with and without a design
element, the latter being identical to respondent’s design element.

4 Count II, paragraph Nos. 21-33, setting forth petitioner’s
allegations of fraud, are discussed in further detail infra.
Cancellation No. 92045099
3
now comes up on petitioner’s fully briefed motion, filed two days
prior to the close of discovery, for summary judgment on its fraud
claim only. To obtain such judgment, petitioner must establish that
there is no genuine issue regarding its standing and the merits of
its fraud claim.
Respondent’s argument that petitioner lacks standing is without
merit. A petition to cancel may be brought by any person who
believes he is or will be damaged by the registration of a mark.
Trademark Act §14, 15 U.S.C. §1064. In order to meet the standing
requirement, a plaintiff need only show that it has a real interest,
i.e., a personal stake, in the outcome of the proceeding. See
Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999);
and Jewelers Vigilance Committee Inc. v. Ullenberg Corp., 823 F.2d
490, 2 USPQ2d 2021 (Fed. Cir. 1987).
Here, petitioner has alleged that its pending application
has been refused registration in light of respondent’s existing
registration. Respondent has admitted such allegation. The
rejection of petitioner’s trademark application on the basis of
the challenged registration is a basis for petitioner’s standing.
See Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024,
1029, 213 USPQ 185, 189 (CCPA 1982) (to have standing, it is
sufficient for petitioner to “prove that it filed an application
and that a rejection was made because of [respondent’s]
registration.”). Thus, there exists no genuine issue of material

Cancellation No. 92045099
4
fact and we find as a matter of law that petitioner has standing
in this cancellation proceeding. See also TBMP 309.03(b) (2d ed.
rev. 2004).
We turn next to the merits of petitioner’s fraud claim, and in
connection therewith, we must first determine whether petitioner has
adequately pled a fraud claim.
At Count II of the amended petition, petitioner alleges, in
pertinent part, as follows:
21. On October 31, 2004, Registrant submitted a Statement of
Use to the PTO in which Registrant represented to the PTO
that it was using the AMC (and design) mark in commerce
in connection with automobiles and structural parts
thereof. Registrant made this representation to induce
the PTO to issue a registration. …
22. On November 18, 2004, Registrant submitted substitute
specimens and a Response to Office Action to the PTO in
which Registrant represented to the PTO that it was using
the AMC (and design) mark in commerce in connection with
“automobiles and structural parts thereof.” Registrant
made this representation to induce the PTO to issue a
registration. …
23. On January 22, 2005, Registrant submitted substitute
specimens and a Response to Office Action to the PTO in
which Registrant represented to the PTO that it was using
the AMC (and design) mark in commerce in connection with
“automobiles and structural parts thereof.” Registrant
made this representation to induce the PTO to issue a
registration. …
24. As of May 26, 2009, years after Registrant represented to
the PTO that it has used the AMC (and design) mark in
commerce in connection with automobiles, Registrant, in
fact, never offered, advertised, or sold any automobiles
under the AMC (and design) mark. (See Registrant’s
Responses to Petitioner’s First Set of Requests for
Admission attached as Exhibit D ¶¶3, 5, 6, 8, 15.)
25. As of May 26, 2009, years after Registrant represented to
the PTO that it has used the AMC (and design) mark in
commerce in connection with structural parts for
automobiles, Registrant, in fact, never offered,
advertised, or sold any structural parts for automobiles
under the AMC (and design) mark. (See Exhibit D ¶¶ 4, 7,
9, 16, 23.)
Cancellation No. 92045099
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26. Registrant has never used its AMC (and design) mark in
commerce in connection with automobiles.
27. Registrant has explicitly admitted that it has never used
its AMC (and design) mark in commerce in connection with
structural parts for automobiles.
28. The representations Registrant made to the PTO on October
31, 2004, November 18, 2004, and January 22, 2005 were
each false.
29. Respondent knew that the representations were false.
30. Respondent knowingly made material misrepresentations to
the PTO to procure Registration No. 2,949,439.
31. The PTO relied on the representations in issuing
Registration No. 2,949,439.
32. The PTO would not have issued Registration No. 2,949,439
but for Registrant’s false representations.
33. Respondent’s actions in the procurement of Registration
No. 2,949,439 constitute fraud, thereby invalidating
Registration No. 2,949,439. Accordingly, Registration
No. 2,949,439 should be cancelled in its entirety.

Fed. R. Civ. P. 9(b) provides that the circumstances
constituting the alleged fraud shall be stated with
particularity. See also King Automotive, Inc. v. Speedy Muffler
King, Inc., 667 F.2d 1008, 212 USPQ 801 (CCPA 1981) (“[t]he
pleadings [must] contain explicit rather than implied expressions
of the circumstances constituting fraud”). Intent to deceive is
an indispensable element of the analysis in a fraud case. See In
re Bose Corporation, 476 F.3d 1331, 91 USPQ2d 1938, 1941 (Fed.
Cir. 2009). As such, intent to deceive the Office, whether to
obtain a registration, or to maintain a registration, is also an
element to be pleaded in a fraud claim. Nonetheless, intent, as
a condition of mind of a person, may be averred generally. Fed.
R. Civ. P. 9(b).
Cancellation No. 92045099
6
In this case, petitioner has sufficiently pled a fraud
claim, including that respondent had the requisite intent to
deceive the USPTO in the procurement of its registration.
More specifically, petitioner asserts that respondent knowingly made
material misrepresentations to the Office in order to procure the
registration. Para. No. 30, supra. The allegations preceding and
following this assertion state with particularity numerous, specific
representations of fact that petitioner alleges were false and were
known to be false, were material, and were relied upon by the
Office. Further, we find the assertions in para. No. 30, combining
the references “material misrepresentations” “knowingly made” and
“to procure” a registration, to constitute an allegation of
respondent’s intent. That is, where a pleading asserts that a known
misrepresentation, on a material matter, is made to procure a
registration, the element of intent, indispensable to a fraud claim,
has been sufficiently pled. Notwithstanding that we find this
petition to meet the particularity requirements for pleading fraud
and to meet the requirement for generally pleading intent, in light
of the Bose decision, we note that the preferred practice for a
party alleging fraud in a Board opposition or cancellation
proceeding is to specifically allege the adverse party’s intent to
deceive the USPTO, so that there is no question that this
indispensable element has been pled.
Having found that petitioner has sufficiently pled a fraud
claim, we now determine the merits of the summary judgment motion.
Cancellation No. 92045099
7
In a motion for summary judgment, the moving party has the
burden of establishing the absence of any genuine issue of
material fact and that it is entitled to judgment as a matter of
law. See Fed. R. Civ. P. 56(c). A genuine dispute with respect
to a material fact exists if sufficient evidence is presented
that a reasonable fact finder could decide the question in favor
of the non-moving party. See Opryland USA Inc. v. Great American
Music Show, Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992).
Thus, all doubts as to whether any particular factual issues are
genuinely in dispute must be resolved in the light most favorable
to the non-moving party. See Olde Tyme Foods Inc. v. Roundy’s
Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir. 1992).
“[A] trademark is obtained fraudulently under the Lanham Act
only if the applicant or registrant knowingly makes a false,
material representation with the intent to deceive the PTO.”
Bose, 91 USPQ2d at 1941. See also Torres v. Cantine Torresella
S.r.l., 808 F.2d 46, 48, 1 USPQ2d 1483, 1484 (Fed. Cir. 1986).
The standard for finding intent to deceive is stricter than the
standard for negligence or gross negligence.5 See Bose, 91
USPQ2d at 1941. Deceptive intent may be established by direct
evidence or may be inferred from indirect or circumstantial
evidence, but no matter the type of evidence, it must be clear
and convincing. Id., citing Star Scientific, Inc. V. R.J.

5 Still open is the question whether a submission to the PTO with
reckless disregard of its truth or falsity would satisfy the intent to
deceive requirement. Bose, 91 USPQ2d at 1942, fn. 2.
Cancellation No. 92045099
8
Reynolds Tobacco Co., 537 F3d. 1357, 1366, 88 USPQ2d 1001, 1007
(Fed. Cir. 2008). There is no fraud if a false representation is
occasioned by an honest misunderstanding or inadvertence without
a willful intent to deceive. Bose, 91 USPQ2d at 1940.
Petitioner essentially maintains that respondent has
committed fraud because respondent falsely represented in its
Statement of Use that it was using the mark in commerce in
connection with automobiles and structural parts therefor; and
that respondent “knew or should have known” the falsity of its
statement. See petitioner’s main brief on its motion, p. 4 and
pp. 5-6, relying on Torres, supra, and Medinol Ltd. v. Neuro
Vasx, Inc., 67 USPQ2d 1205 (TTAB 2003). More specifically,
petitioner noted that Medinol held, “[t]he appropriate inquiry is
… not into the registrant’s subjective intent, but rather into
the objective manifestation of that intent,” and therefore argued
that “it is not necessary to prove intent to commit fraud, but
only that a false statement was made.” Brief, p. 6. Thus,
relying on the Medinol standard, petitioner introduced with its
motion respondent’s responses to petitioner’s requests for
admission Nos. 3-9 and 15, whereby respondent admitted it never
sold an automobile or structural parts therefor, as evidence of
respondent’s false statements. Respondent, relying on its
responses to petitioner’s requests for admission Nos. 20 and 22,
asserted it made use of its AMC mark in commerce on automobiles,
maintains its statements were not false, and that it believed and
Cancellation No. 92045099
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continues to believe, that it is using the mark for the
identified goods.
As recognized by petitioner in its reply brief, under Bose,
which issued during the pendency of petitioner’s motion for
summary judgment, petitioner’s reliance on Medinol is no longer
appropriate.6 While recognizing, in its reply brief, the change
in the law, petitioner did not point to any previously submitted
evidence which would meet the Bose standard and only tried to
distinguish Bose from the present case on its facts. At footnote
No. 3 of its reply brief, petitioner alternatively asked that,
under Bose, respondent’s registration be restricted “to reflect
commercial reality.” According to petitioner, such a restriction
would require removing all products from the registration,
resulting in cancellation of the registration. As a second
alternative in the same footnote, petitioner asked that the
registration be determined to be void ab initio because
respondent’s mark was not in use in commerce as of the filing
date of the Statement of Use. However, petitioner had not
asserted these allegations as grounds for cancellation in any
pleading. Accordingly, as unpleaded issues, no consideration has

6 The Medinol proposition that only objective intent is required to
prove a fraud claim is no longer operative. The Court of Appeals for
the Federal Circuit, our primary reviewing court, issued the Bose
decision during the pendency of this motion and made it clear that a
plaintiff must prove by clear and convincing evidence that the
defendant knowingly made a false statement with the intent to deceive
the USPTO. Bose, 91 USPQ2d at 1941.

Cancellation No. 92045099
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been given to these alternative requests.7 See Fed. R. Civ. P.
56(a); and TBMP §528.07(a) (2d ed. rev. 2004).
It is clear that under the holding of Bose that intent must
be separately proved; and on a motion for summary judgment it
must be shown that there is no genuine issue about the existence
of intent to deceive the Office.
In this case, petitioner has not carried its burden of
establishing the absence of a genuine issue of material fact as
to respondent’s intent to deceive. More particularly, petitioner
has not introduced any direct evidence of respondent’s intent to
deceive the Office.8 Nor has petitioner introduced any indirect
or circumstantial evidence which would lead us to the inevitable
conclusion (which on summary judgment means the absence of any
genuine issue of material fact) that respondent had the intent to
deceive the Office, or at least had a reckless disregard for the
truth. As to the falsity of the statements in question, it
appears that applicant may not, in fact, be using the mark
sufficiently to maintain a registration.9 However, petitioner’s

7 Moreover, the timing of such alternative requests, i.e., being first
presented in petitioner’s reply on its summary judgment motion,
effectively deprived respondent from any opportunity to respond
thereto, because the Board does not permit the filing of surreplies on
motions. 37 C.F.R. § 2.127(e)(1).

8 Petitioner’s admission requests, for example, do not seek any
admissions regarding the interaction between respondent and the USPTO
but, instead, speak only to respondent’s own activities regarding use
of the involved mark.

9 The legal proposition being posited by respondent as to its use (e.g.,
use analogous to trademark use, use in brochures, catalogues and on
Internet websites) appears inapposite, but respondent is not represented
Cancellation No. 92045099
11
motion for summary judgment was only brought on the fraud claim
and not on the abandonment claim and the existence of a genuine
issue of material fact as to intent precludes granting petitioner
judgment on the fraud claim.
We note, too, that questions of intent are typically
unsuited to resolution by summary judgment (or other pretrial
motions). See, e.g., Copelands’ Enterprises Inc. v. CNV Inc.,
945 F.2d 1563, 20 USPQ2d 1295, 1299 (Fed. Cir. 1991).
Accordingly, petitioner’s motion for summary judgment is
denied.
The schedule is reset.
Proceedings are resumed. Dates are reset as follows:
Discovery to resume: February 12, 2010

THE PERIOD FOR DISCOVERY TO CLOSE: March 15, 2010

30-day testimony period for party
in position of plaintiff to close June 13, 2010

30-day testimony period for party
in position of defendant to close: August 12, 2010

15-day rebuttal testimony period
to close: September 26, 2010

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.

by counsel and we need not, for the purpose of deciding the motion for
summary judgment, resolve the question.

Cancellation No. 92045099
12
Briefs shall be filed in accordance with Trademark Rules
2.l28(a) and (b). An oral hearing will be set only upon request
filed as provided by Trademark Rule 2.l29.
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