Kur- und Verkehrsverein St. Moritzv.Samsung America, Inc.

Trademark Trial and Appeal Board

Jul 18, 2007

No. 92044412 (T.T.A.B. Jul. 18, 2007)

Baxley Mailed: July 18, 2007

Cancellation No. 92044412

Kur- und Verkehrsverein St.
Moritz

v.

Samsung America, Inc.

Before Hohein, Holtzman, and Bergsman,
Administrative Trademark Judges

By the Board:

Samsung America, Inc. ("respondent") owns a
registration for the mark ST. MORITZ in typed form for
"mens' and ladies' outerwear -- namely, coats and jackets;
insulated underwear; sweaters; leather jackets, leather
coats and leather vests" in International Class 25.1
Kur- und Verkehrsverein St. Moritz ("petitioner") has
filed a petition to cancel respondent's registration. As
grounds for cancellation, petitioner alleges that: 1)
respondent has abandoned use of the involved mark; and 2)
respondent committed fraud in the combined declaration of
use in commerce and application for renewal of the involved

1 Registration No. 1279926, issued May 29, 1984, renewed. Such
registration was issued to Almax Sportwear Corp. and was assigned
to respondent in a document that was executed on April 9, 1991.
A document reflecting that assignment is recorded with the
USPTO's Assignment Branch at Reel 0783/Frame 0104.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Cancellation No. 92044412
2
registration under Trademark Act Sections 8 and 9, 15 U.S.C.
Sections 1058 and 1059 (hereinafter referred to as "the
combined declaration of use and application for renewal"),
by falsely averring that respondent was using the ST. MORITZ
mark on all of the goods recited in the involved
registration when respondent was not using the mark "on at
least some of" those goods. Respondent has denied the
salient allegations of the petition to cancel in its answer.
This case now comes up for consideration of: 1)
petitioner's motion (filed September 14, 2006) for summary
judgment on its fraud claim; and 2) respondent's cross-
motion (filed October 23, 2006) for summary judgment in its
favor on petitioner's fraud and abandonment claims. Each
party has filed a brief in opposition to its adversary's
motion for summary judgment.
In support of its motion for summary judgment,
petitioner contends that, in fifteen months since petitioner
served discovery requests in this proceeding, respondent has
produced nothing that indicates that respondent was using
the involved mark in connection with insulated underwear,
sweaters, leather jackets, leather coats and leather vests
when it executed the combined declaration of use and
application for renewal. Accordingly, petitioner contends
that there is no genuine issue of material fact that
respondent committed fraud on the USPTO by falsely averring
Cancellation No. 92044412
3
in the combined declaration of use and application for
renewal that the mark was in use on all of the goods
identified in the registration. Petitioner asks the Board
to enter summary judgment against respondent on that basis.
Petitioner's evidence in support of its motion for
summary judgment includes the following:
1) a copy of the combined declaration of use and
application for renewal that respondent's vice
president Sookee Lee signed on March 11, 2004 and that
respondent filed on March 15, 2004;
2) copies of respondent's responses to petitioner's first
set of interrogatories and first set of document
requests; and
3) copies of all of the documents that respondent
produced during discovery:
a. a series of drawings of coats, jackets, sweaters,
ski pants, ski vests, leather jackets, and knit
hats sold or to be sold under the ST. MORITZ mark;
b. ski pants allegedly bearing the ST. MORITZ mark;
c. a fall/winter 1990 catalog showing coats and
jackets sold under the STRATOJAC, ST. MORITZ, FLY
BOY and WORLD ALLIANCE marks; and
d. a series of computer printouts bearing the heading
"Sales Detail Report (by Style)" for the time
period from January 1, 1999 to July 7, 2006.
Cancellation No. 92044412
4
In response, and in support of its cross-motion for
summary judgment, respondent contends that petitioner has
conceded that respondent uses the involved mark on coats and
jackets and that documents produced during discovery show
use of the ST. MORITZ mark on sweaters, leather jackets and
leather coats. Respondent further contends that, given that
respondent was using the mark on insulated pants and vests,
respondent had a good faith basis for believing that the
mark was in use on insulated underwear and leather vests and
that, because respondent is a "large concern," it is
impossible to expect more direct knowledge of the relevant
facts from an officer authorized to sign the combined
declaration of use and application for renewal. Respondent
contends in addition that petitioner could not have been
harmed by any misstatements in the combined declaration of
use and application for renewal because, even in the absense
of use of the mark on insulated underwear and leather vests,
the registration would have been renewed for the remaining
goods identified therein. Accordingly, respondent asks that
the Board deny petitioner's motion for summary judgment and
grant its cross-motion for summary judgment dismissing the
petition to cancel.
Respondent's evidence in response to petitioner's
motion for summary judgment and in support of its motion for
Cancellation No. 92044412
5
summary judgment includes a declaration of respondent's vice
president, Mr. Sookee Lee.
In reply and in opposition to respondent's cross-motion
for summary judgment, petitioner contends that respondent
has essentially admitted that it was not using the mark on
insulated underwear and leather jackets and has cited no
relevant case law for its contention that the misstatements
in the combined declaration of use and application for
renewal should be excused.
Summary judgment is an appropriate method of
disposing of a case in which there are no genuine issues of
material fact in dispute, thus leaving the case to be
resolved as a matter of law. See Fed. R. Civ. P. 56(c).
A dispute as to a material fact is genuine only if a
reasonable fact finder viewing the entire record could
resolve the dispute in favor of the nonmoving party. See
Olde Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22
USPQ2d 1542, 1544 (Fed. Cir. 1992). In deciding a motion
for summary judgment, the Board must view the evidence in
the light most favorable to the nonmovant, and must draw all
reasonable inferences from underlying facts in favor of the
nonmovant. Id.
A party moving for summary judgment has the burden of
demonstrating the absence of any genuine issue of material
fact, and that it is entitled to summary judgment as a
matter of law. See Celotex Corp. v. Catrett, 477 U.S. 317
Cancellation No. 92044412
6
(1986); Sweats Fashions Inc. v. Pannill Knitting Co.
Inc., 833 F.2d 1560, 4 USPQ2d 1793 (Fed. Cir. 1987). When
the moving party's motion is supported by evidence
sufficient to indicate that there is no genuine issue of
material fact, and that the moving party is entitled to
judgment, the burden shifts to the nonmoving party to
demonstrate the existence of specific genuinely disputed
facts that must be resolved at trial. The nonmoving party
may not rest on mere denials in response to the motion, but
must designate specific portions of the record or produce
additional evidence showing the existence of a genuine issue
of material fact for trial. In general, to establish the
existence of disputed facts requiring trial, the nonmoving
party "must point to an evidentiary conflict created on the
record at least by a counterstatement of facts set forth in
detail in an affidavit by a knowledgeable affiant." Octocom
Systems Inc. v. Houston Computer Services Inc., 918 F.2d
937, 16 USPQ2d 1783, 1786 (Fed. Cir. 1990), citing Barmag
Barmer Maschinenfabrik AG v. Murata Machinery, Ltd., 731
F.2d 831, 221 USPQ 561, 564 (Fed. Cir. 1984).
To prevail on its motion for summary judgment,
petitioner must establish that there is no genuine issue of
material fact that respondent willfully withheld material
information or made a willful statement of incorrect
material information which, if disclosed to the USPTO, would
have resulted in the disallowance of the registration
Cancellation No. 92044412
7
sought. See Girard Polly-Pig, Inc. v. Polly-Pig by Knapp,
Inc., 217 USPQ 1338, 1342 (TTAB 1983). Petitioner is under
a heavy burden because fraud must be proved by clear and
convincing evidence, leaving nothing to speculation,
conjecture, or surmise. Any doubt must be resolved against
the party making the claim. See Smith International, Inc.
v. Olin Corporation, 209 USPQ 1033 (TTAB 1981).
Following the initial twenty-year registration term,
respondent's involved registration was renewed under
Trademark Act Section 9(a), 15 U.S.C. Section 1059(a), for
ten years on May 27, 2004. An essential element of the
application for such renewal is the registrant's averment
that the registered mark is in current use for the specific
goods covered by the registration. See Trademark Rules
2.181(a) and 2.183(d).
Statements regarding the use of the mark on the
identified goods and/or services are certainly material to
the issuance or renewal of a registration. See Hachette
Fillipacchi Presse v. Elle Belle, LLC, ___ USPQ2d ___ (TTAB,
Cancellation No. 92042991, April 9, 2007) (fraud found based
on applicant's allegation of use of its mark for a wide
variety of clothing items for men, women and children when
mark had not been used for any identified items for men or
children and only for a limited number of items for women);
Standard Knitting, Ltd. v. Toyota Jidosha Kabushiki Kaisha,
77 USPQ2d 1917 (TTAB 2006) (counterclaim petition for
Cancellation No. 92044412
8
cancellation of petitioner's pleaded registrations granted
when fraud found based on misrepresentation regarding use of
the mark on most of the goods identified in the filed
applications); First International Services Corp. v.
Chuckles Inc., 5 USPQ2d 1628 (TTAB 1988) (fraud found in
applicant’s filing of application with verified statement
that the mark was in use on a range of personal care
products when applicant knew it was in use only on shampoo
and hair setting lotion).
Based on the record now before us, and for the reasons
discussed below, we conclude that petitioner is entitled to
entry of summary judgment on the fraud claim as a matter of
law because petitioner has made a prima facie showing that
there are no genuine issues of material fact remaining for
trial with regard to that claim which respondent has failed
to rebut. Petitioner has included the entirety of
respondent's responses to petitioner's discovery requests
and documents produced in discovery, none of which show any
use of the involved mark on insulated underwear or leather
vests. Respondent has failed to rebut this evidence by
showing any use of the mark on such goods and instead merely
tries to explain away its material misstatements in the
combined declaration of use and application for renewal.
Based on the foregoing, petitioner has shown that respondent
falsely stated in the combined declaration of use and
application for renewal that respondent was using the mark
on all of the goods identified in the registration which
Cancellation No. 92044412
9
improperly resulted the renewal of the registration to cover
insulated underwear and leather vests.
This case is similar to Medinol Ltd. v. Neuro Vasx,
Inc., 67 USPQ2d 1205 (TTAB 2003). In Medinol, a trademark
application was filed, the mark was published, a statement
of use was submitted, and a registration issued for "medical
devices, namely, neurological stents and catheters." In
response to a petition for cancellation, registrant admitted
in its answer that the mark was not used on stents. The
Board stated as follows:
The fraud alleged by petitioner is that
respondent knowingly made a material
representation to the USPTO in order to obtain
registration of its trademark for the identified
goods. There is no question that the statement
of use would not have been accepted nor would
registration have issued but for respondent’s
misrepresentation, since the USPTO will not
issue a registration covering goods upon which
the mark has not been used. (cites omitted).

Id. at 1208.

In the case at hand, there is no genuine issue of
material fact that respondent filed the combined declaration
of use and application for renewal wherein it alleged that
respondent was using the registered mark on "all goods
and/or services listed in the existing registration" and
that its vice president, Mr. Sookee Lee, signed a
declaration in support of that combined declaration of use
and application for renewal in which he attested to the
truth of all the statements therein when he knew or should
have known that respondent was not using the mark on
Cancellation No. 92044412
10
insulated underwear and leather vests. There is no question
that the registration became renewed and continued to cover
those goods on the basis of Mr. Lee's material misstatement.
Thus, as in Medinol, a material representation of fact
with regard to use of the mark on particular goods was made
by the registrant and that statement was relied upon by the
USPTO in determining a registrant's rights to the
registration. In Board inter partes proceedings, "proof of
specific intent is not required, rather, fraud occurs when
an applicant or registrant makes a false material
representation that the applicant or registrant knew or
should have known was false." General Car and Truck Leasing
Systems Inc. v. General Rent-A-Car Inc., 17 USPQ2d 1398,
1400-01 (S.D. Fla. 1990), aff’g General Rent-A-Car Inc. v.
General Leaseways, Inc., Canc. No. 14,870 (TTAB May 2, 1988)
(intent of the signatories not material to question of
fraud).
As the Board determined in Medinol, "the
appropriate inquiry is ... not into the registrant’s
subjective intent, but rather into the objective
manifestations of that intent." Medinol Ltd. v. Neuro Vasx,
Inc., supra at 1209. In Medinol, the Board concluded that
the facts justified a finding of fraud:
The undisputed facts in this case clearly
establish that respondent knew or should have
known at the time it submitted its statement of
use that the mark was not in use on all of the
Cancellation No. 92044412
11
goods. Neither the identification of goods nor
the statement of use itself was lengthy, highly
technical, or otherwise confusing, and the
President/CEO who signed the document was clearly
in a position to know (or to inquire) as to the
truth of the statements therein.

Id. at 1209-1210.
We turn next to whether there is a genuine issue of
material fact as to whether Mr. Lee had a reasonable basis
for a good faith belief that the involved mark was being
used in interstate commerce in connection with leather vests
when respondent filed the combined declaration of use and
application for renewal. See Maids to Order of Ohio Inc. v.
Maid-to-Order Inc., 78 USPQ2d 1899 (TTAB 2006). Mr. Lee
asserts in his declaration that, because of respondent's use
of the mark on leather jackets, leather coats, and vests
made of other materials, he had a good faith belief that the
mark was in use on leather vests. We find that such use is
sufficient to raise a genuine issue of material fact
regarding whether Mr. Lee had a reasonable basis for
believing that the involved mark was being used in
interstate commerce in connection with leather vests when
respondent filed the combined declaration of use and
application for renewal.
However, we are troubled by the lack of evidence in the
record to indicate that respondent has used the involved
mark on any underwear, insulated or otherwise. Although
respondent asserts that it has used the involved mark on
Cancellation No. 92044412
12
insulated pants and vests, such goods are outerwear which is
of a sufficiently different character that they would not
provide a reasonable basis for a good faith belief that the
mark was in use on insulated underwear. Respondent has
pointed to no use of the mark in connection with any
underwear that would have provided respondent with any basis
for claiming in the combined declaration of use and
application for renewal that the mark was in use in commerce
on insulated underwear. See Sinclair Oil Co. v. Kendrick,
___ USPQ2d ___ (TTAB, Opposition No. 91152940, June 6,
2007).
Mr. Lee was in a position to have personal knowledge of
the facts or he had a duty to ascertain the facts concerning
whether respondent was using the mark on insulated
underwear. Thus, notwithstanding that respondent is a large
corporation, it was incumbent upon him to investigate
sufficiently so as to have a reasonable basis for a good
faith belief that the mark was in use on insulated underwear
prior to his signing the combined declaration of use and
application for renewal.
Inasmuch as respondent's material representations
regarding use of the mark on insulated underwear were false,
and respondent had no reasonable basis for a good faith
belief that the mark was in use on insulated underwear, we
conclude that respondent has committed fraud. Accordingly,
Cancellation No. 92044412
13
petitioner's motion for summary judgment on the fraud claim
is granted, and respondent's motion for summary judgment on
the fraud claim is denied.
Having found no genuine issue of material fact as to
fraud, it unnecessary to decide respondent's motion for
summary judgment in its favor on the abandonment claim.
However, we will do so for the sake of completeness. We
find that respondent has failed to meet its burden that
there is no genuine issue of material fact with regard
thereto and that it is entitled to entry of judgment on that
claim as a matter of law. In particular, we note that the
only evidence of actual sales of any of the goods identified
in the involved registration consists of total sales for the
time period from January 1, 1999 to July 7, 2006 with no
annual breakdown. In view of the absence of any annual
sales figures for goods under the mark, there is a genuine
issue of material fact as to whether respondent ever
discontinued use of the involved mark on the goods
identified in the involved registration with intent not to
resume such use. See Trademark Act Section 45, 15 U.S.C.
Section 1127. Accordingly, respondent's cross-motion for
summary judgment on the abandonment claim is denied.
Notwithstanding our granting of petitioner's motion for
summary judgment on the fraud claim, petitioner must
establish not only a valid ground for denying the
registration sought, as it has, but must also prove its
Cancellation No. 92044412
14
standing to prevail in this proceeding. See, e.g., Lipton
Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185 (CCPA 1982). Petitioner has not yet submitted any
evidence on this point.
Petitioner is therefore allowed until thirty days from
the mailing date set forth in the caption of this order in
which to submit a showing that there is no genuine issue of
fact as to its standing, and that it is entitled to judgment
on the issue of standing as a matter of law. Respondent is
allowed until fifty days from the mailing date set forth in
the caption of this order to file a response thereto, if
desired. If petitioner's showing is sufficient to establish
its entitlement to summary judgment on the issue of
standing, summary judgment on standing will be entered in
petitioner's favor, and the petition to cancel will be
granted on the fraud claim and petitioner will be allowed
time in which to inform the Board whether it wishes to go
forward with its pleaded abandonment claim or to have that
claim dismissed as moot. If petitioner's showing is not
sufficient on the issue of standing, proceedings will resume
on that issue and the abandonment claim.
This proceeding remains otherwise suspended.