Grand Canyon West Ranch, LLCv.Hualapai Tribe

Trademark Trial and Appeal Board

Mar 17, 2006

No. 91162008 (T.T.A.B. Mar. 17, 2006)

Greenbaum Mailed: March 17, 2006

Opposition No. 91162008
Grand Canyon West Ranch, LLC
v.
Hualapai Tribe
Before Seeherman, Walters and Kuhlke, Administrative
Trademark Judges.

By the Board:
Applicant seeks to register the mark GRAND CANYON WEST
for “airport services; air transportation services;
arranging for recreational travel tours and providing
related transportation of passengers by air, boat, raft,
rail, tram, bus, motorized on-road and off-road vehicles,
non-motorized vehicles featuring bicycles, and domestic
animals,” claiming February 14, 1988 as the date of first
use of the mark anywhere and in commerce.1 Opposer opposes
registration on the grounds that applicant did not use the
mark on all of the identified services as of the filing date
of the application, and that the proposed mark, when applied

1 Application Serial No. 76484111, filed January 23, 2003.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS DISPOSITION IS CITABLE
AS PRECEDENT OF THE TTAB
Opposition No. 91162008
2
to the identified services, is merely descriptive, and has
not acquired distinctiveness.
In its answer, applicant denied the salient allegations
of the notice of opposition. Applicant also asserted
several affirmative defenses, none of which is now at issue.
This case now comes up on applicant’s motion (filed
June 7, 2005) to amend the recitation of services to delete
the reference to “rail, tram, non-motorized vehicles
featuring bicycles, and domestic animals,” and to clarify
that the mark was first used in connection with “air
transportation services” on February 14, 1988; and on
opposer’s motion (filed June 27, 2005) for partial summary
judgment on the basis that the application is void ab initio
because applicant did not use the applied-for mark in
connection with transportation of passengers by rail, tram,
bicycle and domesticated animals at the time it filed the
application. The parties have fully briefed the motions,
and we have considered both reply briefs. See Trademark
Rule 2.127(a).
Opposer’s position is that, if applicant did not use
its mark on certain of its identified services prior to the
filing date of the application, the application as a whole
must fail. On the other hand, applicant’s implicit position
is that, if the mark was not used on some of its identified
services, applicant can cure this error by amending its
Opposition No. 91162008
3
application to delete those services in connection with
which the mark had not been used.
The case law is clear that holding an application to be
void is an appropriate remedy when the pleaded ground either
is fraud,2 or that the applicant has not used the applied-
for mark on any of the goods or services identified in the
application prior to the filing of the application.3
However, notwithstanding opposer’s liberal use of the term
“fraud” and its reliance on fraud cases in its summary
judgment motion, we note that opposer has not pleaded fraud
as a ground for opposition. Moreover, in its summary
judgment reply brief, opposer affirmatively states that it
does not seek summary judgment on this issue. Thus, the
question before us is whether a use-based application must
be held to be void in its entirety, in the absence of a
fraud claim, if an applicant did not use the mark on all of
the identified goods or services before filing the
application. For the reasons discussed below, we hold that
as long as the mark was used on some of the identified goods
or services as of the filing of the application, the
application is not void in its entirety.

2 Medinol Ltd. v. Neuro Vasx Inc., 67 USPQ2d 1205 (TTAB 2003).
3 Laboratories du Dr. N.G. Payot Estalissement v. Southwestern
Classics Collection Ltd., 3 USPQ2d 1600 (TTAB 1987); and CPC
International Inc. v. Skippy Inc., 3 USPQ2d 1456, 1460 (TTAB
1987).
Opposition No. 91162008
4
There are obvious distinctions between a claim of fraud
and a claim of nonuse of a mark for certain of the goods or
services identified in the application. A defendant commits
fraud by knowingly making false statements as to a material
fact in conjunction with a trademark application or
registration. Mister Leonard Inc. v. Jacques Leonard
Couture Inc., 23 USPQ2d 1063, 1065 (TTAB 1992). Moreover,
an allegation of fraud must be proven “to the hilt” with
clear and convincing evidence. Smith International, Inc. v.
Olin Corporation, 209 USPQ 1033, 1043-44 (TTAB 1981). In
contrast, a defendant’s intent is not an element of a claim
that a mark was not used on certain of the identified goods
or services, nor is an enhanced standard of proof required.
In prior decisions, the Board has made a distinction in
the remedies for fraud and for nonuse on some, but not all,
of the identified goods and/or services. For example, in
Rogers Corp. v. Fields Plastics & Chemicals, Inc., 176 USPQ
280 (TTAB 1972), aff’d, 181 USPQ 169 (CCPA 1974), in which,
inter alia, the opposer alleged fraud because “applicant has
never used the mark on some of the goods listed in the
application,” the Board found that the applicant had not
committed fraud even though the identification of goods
included some proposed, rather than actual, uses of the
mark; instead, the Board determined that the applicant
should be required to limit its identification of goods to
Opposition No. 91162008
5
those goods on which there had been use as of the filing
date of the application. Similarly, in Medinol v. Neuro
Vasx, supra, at 1208 n.9, in which the Board found fraud,
the Board stated that, if the finding of fraud were
overturned, the registration would have to be amended to
delete the goods for which the mark had not been used, thus
indicating that, in the absence of fraud, the registration
would survive.
Nor is it appropriate to treat applicant’s nonuse of
its mark on some of the identified services in the same
manner in which we would treat an applicant’s complete
failure to make use of its mark before filing the
application on any of its identified services. It is clear
that an applicant cannot obtain a registration under Section
1 of the Trademark Act for goods or services upon which it
has not used the mark. 15 U.S.C. § 1051. Prior to the
Trademark Law Revision Act of 1988 (TLRA), Public Law 100-
667, 102 Stat. 3935, which permitted applications to be
filed on the basis of an applicant’s bona fide intention to
use the mark in commerce (see Section 1(b) of the Trademark
Act), an application would be deemed void ab initio if the
applicant had made no use of the mark in commerce. See,
e.g., Intermed Communications, Inc. v. Chaney, 197 USPQ 501
(TTAB 1977). Even at that time, however, an application was
not deemed void ab initio if the applicant had made use on
Opposition No. 91162008
6
some, but not all, of the goods or services. See, e.g.,
Rogers v. Fields Plastics & Chemicals, supra.
Because there is a clear distinction between the
situations in which an applicant has committed fraud, or has
not used the mark on any of the goods or services identified
in its application, and the present situation, in which
opposer claims only that applicant did not use its mark in
connection with some of the services identified in its
application as of the filing of the application, we believe
that the remedy for the two former claims is inappropriate
in the present situation.
Moreover, changes in the Trademark Statute provide a
policy justification for our position that an application
should not be treated as void as long as the mark was used
on some of the identified goods or services at the time the
application was filed. Effective October 30, 1999, an
applicant who files under Section 1(a) of the Trademark Act
may seek to amend its application to substitute Section 1(b)
as its filing basis and maintain its original filing date.
See Trademark Law Treaty Implementation Act of 1998 (TLTIA),
Pub. L. No. 105-330, 112 Stat. 3064. In Leeds Technologies
Ltd. v. Topaz Communications Ltd., 65 USPQ2d 1303 (TTAB
2002), the Board extended the rationale behind the TLTIA
amendment to Board proceedings to permit post-publication
amendments to the filing basis of an application.
Opposition No. 91162008
7
Therefore, in the absence of a fraud claim, an applicant who
bases its application on Section 1(a) (use in commerce) but
who did not use the mark on some or all of the goods or
services identified in the application may “cure” this
problem by amending its basis to Section 1(b) (intent to
use).4
Applicant has filed a motion to amend its application
to delete the services for which opposer claims applicant
did not use the mark as of the filing of the application.
In so doing, applicant has essentially agreed to accept
judgment with respect to those services. In view of the
nature of opposer’s allegations, and the foregoing
discussion, we find that applicant’s proposed amendment is
appropriate. Accordingly, applicant’s motion to amend is
granted.5
Applicant’s recitation of services is changed from:
“airport services; air transportation services; arranging
for recreational travel tours and providing related
transportation of passengers by air, boat, raft, rail, tram,
bus, motorized on-road and off-road vehicles, non-motorized

4 We note that applicant has not filed a motion to amend the
filing basis.
5 The deletion of these services from the application does not
preclude opposer from moving to amend its notice of opposition to
assert a ground of fraud based on the initial inclusion of these
services in the application, assuming, of course, that opposer
has a good faith belief that such a ground is warranted. Medinol
v. Neuro Vasx, supra, at 1208 (“deletion of the goods upon which
the mark has not yet been used does not remedy an alleged fraud
upon the Office”).
Opposition No. 91162008
8
vehicles featuring bicycles, and domestic animals,” to:
“airport services; air transportation services; arranging
for recreational travel tours and providing related
transportation of passengers by air, boat, raft, bus, and
motorized on-road and off-road vehicles.” In addition,
applicant’s date of first use remains February 14, 1988;
applicant’s motion to clarify that this date applies to its
air transportation services is granted.
Opposer’s motion for summary judgment is granted only
to the extent that judgment is entered against applicant on
the ground that applicant did not make use of its mark in
connection with the following services: providing
transportation of passengers related to recreational travel
tours by means of rail, tram, non-motorized vehicles
featuring bicycles, and domestic animals. The motion for
summary judgment is otherwise denied.
Proceedings are resumed. Discovery remains closed, and
trial dates are reset as follows:

Opposition No. 91162008
9

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.
DISCOVERY PERIOD TO CLOSE: CLOSED
June 15, 2006
August 14, 2006
September 28, 2006
Thirty-day testimony period for party in position of plaintiff to close:
Thirty-day testimony period for party in position of defendant to close:
Fifteen-day rebuttal testimony period to close: