International Association of Sufismv.Nader Angha

Trademark Trial and Appeal Board

Sep 23, 1998

No. 92024510 (T.T.A.B. Sep. 23, 1998)

Hearing: Paper No. 19
January 8, 1998 PTH
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB 9/23/98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
International Association of Sufism
v.
Nader Angha
_____
Cancellation No. 24,510
_____
Michael B. Newman of Buchman & O’Brien for International
Association of Sufism.
Joseph D. Lewis of Cleary, Komen & Lewis, LLP for Nader
Angha.
_____
Before Hanak, Quinn and Hairston, Administrative Trademark
Judges.
Opinion by Hairston, Administrative Trademark Judge:
The International Association of Sufism has filed a
petition for partial cancellation (Class 41) of the
registration of the mark depicted below,
Cancellation No. 24,510
2
for “educational services, namely, providing courses of
Islamic Sufism instruction, seminars, lectures, workshops,
at all educational levels.”1
As grounds for cancellation, plaintiff alleges that it
is a worldwide membership association of Sufi schools,
orders, and students that practice and study Sufism; that
many of its members practice and study Islamic Sufism; and
that defendant obtained the involved registration
fraudulently because (1) neither defendant nor his
predecessor-in-interest used the mark as of the dates of
first use set forth in the application which matured into
the registration; and (2) defendant falsely represented to
the Patent and Trademark Office that the mark had no
significance in the field.
Defendant, in his answer, has denied the salient
allegations of the petition to cancel.
The record consists of the pleadings; the file of the
involved registration; plaintiff’s notices of reliance on
(1) defendant’s responses to plaintiff’s first set of
interrogatories and (2) excerpts taken from printed
publications on Sufism and symbols; and the testimony

1 Registration No. 1,440,550 issued May 26, 1987; Sections 8
& 15 affidavit filed. The registration also covers goods and
services in Classes 14, 16, 24, 26 and 42.
Cancellation No. 24,510
3
deposition of defendant’s witness with exhibits. Both
parties filed briefs on the case and were represented at the
oral hearing.
At the outset, we note that the record in this case
provides no information about plaintiff. As indicated
above, plaintiff offered into evidence only defendant’s
responses to interrogatories and excerpts from printed
publications.
We do, however, have some information about defendant’s
use of the involved mark from his responses to plaintiff’s
interrogatories. Defendant indicated therein that the mark
was first used in 1922 in Tehran, Iran by a predecessor, and
as early as 1978 in the United States by another
predecessor. According to defendant, the mark was first
used on printed publications such as books. Further,
defendant indicated that the mark is intended to convey to
consumers:
The 1400 years of goodwill established by
Respondent and his predecessors is symbolized
in the mark. “Infinity” relates to the open
heart as shown in the mark; it suggests the
eternal and infinite aspects of the human
being--the spiritual, and the physical--
each originating in the source of life in
the heart.
Also, defendant stated that the mark is subject of an
unwritten license agreement between defendant and one of his
predecessors. Defendant stated that he exercises control
Cancellation No. 24,510
4
over the quality of the goods and services provided under
the mark by serving as religious leader for the predecessor
organization.
As stated by the Board in Marshall Field & Co. v. Mrs.
Fields Cookies, 25 USPQ2d 1321, 1328 (TTAB 1992):
Fraud in procuring a registration occurs when an
applicant for registration knowingly makes false,
material representations of fact in connection
with an application to register. A party making a
claim of fraud is under a heavy burden since fraud
must be proved by clear and convincing evidence,
leaving nothing to speculation, conjecture or
surmise. Should there be any doubt, it must be
resolved against the party making the claim.
(citations omitted)
We turn first to plaintiff’s allegation that the
registration was obtained fraudulently because neither
respondent nor his predecessor used the mark as of the dates
of first use set forth in the application which matured into
the registration. In support of this allegation, plaintiff
relies on defendant’s response to plaintiff’s Interrogatory
No. 1(c) which requests that defendant identify the
documents relating to his first use of the involved mark.
In response to this interrogatory, defendant stated that
“[n]o such documents showing the first use are available.”
The mere fact, however, that no such documents are available
is not clear proof that the mark was not in use as of the
claimed dates of first use. More importantly, even if
plaintiff had shown that the mark was not in use as of the
Cancellation No. 24,510
5
claimed dates of first use, this would not prove that the
registration was obtained fraudulently. The concept of
fraud upon the Office signifies an intent to deceive the
Office; that is, a willful withholding from the Office by an
applicant of material information or facts which, if
transmitted to the Office, would have resulted in the
refusal of the registration sought. An erroneous date of
first use could not result in the allowance of a
registration which would otherwise not be allowed, as long
as there was technical trademark or service mark use prior
to the filing of the application. The only fraud that can
be perpetuated on the Patent and Trademark Office with
respect to false dates of first use in an application is
where no use of the mark was made as of the filing date of
the application. See Colt Industries Operating Corp. v.
Olivetti Controllo Numerico S.p.A., 221 USPQ 73 (TTAB 1973).
Thus, in order for plaintiff to prevail on its claim, it
would have to prove that the mark was not in use as of July
8, 1986, the filing date of the application.
We turn next to plaintiff’s allegation that defendant
falsely represented to the Patent and Trademark Office that
the mark had no significance in the field. Plaintiff
maintains that the involved mark is a representation of a
double-bladed ax, a well-known symbol of Sufism. However,
it is not clear to us that defendant’s mark is indeed a
Cancellation No. 24,510
6
representation of a double-bladed ax. There is no handle in
defendant’s mark2, and there is at least a question as to
whether double blades are depicted. While not controlling
on this question, we note that defendant, in his
application, described the mark as the “Infinity Design.”
Further, we note that nowhere in the materials made
of record by plaintiff does it indicate that a double-bladed
ax is a symbol of Sufism.3 On the contrary, defendant’s
witness, Professor Sulayman S. Nyang, an author of
publications in the fields of Islam and Sufism, testified
that a double-bladed ax is not a symbol of Sufism. Also,
while the materials made of record depict what plaintiff
purports are representations of double-bladed axes, these
axes differ substantially in appearance from defendant’s
mark. Examples of these axes are set forth below.

2 The American Heritage Dictionary (1975) defines the word “ax”
as “a tool with a bladed head mounted on a handle, used for
felling or splitting lumber.”
3 We should note that the materials contain limited references to
a double-bladed ax. In Sufi Expressions of the Mystic Quest,
(1976) it is stated that “[t]he double axe symbolizes the
individual’s active nature as agent.” In Fundamental Symbols
(1995), in the section titled “Some Symbolic Weapons,” it is
stated that the double ax “pertains particularly, though not
exclusively, to Aegean and Cretan symbolism.”
Cancellation No. 24,510
7
In view of the foregoing, we find that plaintiff’s
claim that defendant falsely represented to the Patent and
Trademark Office that his mark had no significance in the
field is without merit.
In sum, plaintiff has simply failed to demonstrate that
defendant fraudulently obtained his registration.
Decision: The petition to cancel is denied.
E. W. Hanak
T. J. Quinn
P. T. Hairston
Administrative Trademark
Judges, Trademark Trial and
Appeal Board