Zanella Ltd.v.Nordstrom, Inc.

Trademark Trial and Appeal Board

May 13, 2009

No. 91177858 (T.T.A.B. May. 13, 2009)

Mailed: May 13, 2009

Opposition No. 91177858

Zanella Ltd.

v.

Nordstrom, Inc.

By the Board:

On October 23, 2008, the Board entered an order in this case
that, inter alia, denied applicant’s motion for summary
judgment on its counterclaim for cancellation with respect
to Registration Nos. 1519894, 1990695, 1992385, and 2453062.
That order was designated as non-precedential. On further
consideration, we have decided to re-designate the October
23, 2008 order as a precedent of the Board.

Attached is a copy of the October 23, 2008 order, marked
with the indication “THIS DECISION IS A PRECEDENT OF THE
T.T.A.B.”
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
Opposition No. 91177858
1

Goodman

Mailed: October 23, 2008
Designated as a Precedent of TTAB: May 13, 2009

Opposition No. 91177858

Zanella Ltd.

v.

Nordstrom, Inc.

Before Hohein, Zervas and Bergsman, Administrative
Trademark Judges

By the Board:

This case now comes up on the following motions:
1) applicant’s motion to amend its answer to add a
counterclaim, filed January 15, 2008; and

2) applicant’s motion for summary judgment, filed
January 15, 2008.

We turn first to applicant’s motion to amend.

Consistent with Fed. R. Civ. P. 15(a), the Board
liberally grants leave to amend pleadings at any stage of
the proceeding when justice requires, unless entry of the
proposed amendment would violate settled law or be
prejudicial to the rights of the adverse party. See
Commodore Electronics Ltd. v. CBM Kabushiki Kaisha, 26
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451 THIS DECISION IS
A PRECEDENT OF
THE T.T.A.B.
Opposition No. 91177858
2
USPQ2d 1503 (TTAB 1993). Trademark Rule 2.106(b)(2)(i)
governs counterclaims for cancellation of pleaded
registrations in Board opposition proceedings. Such claims
must be pleaded promptly after the grounds are learned if
not known at the time the answer is filed. See TBMP §
313.04 (2d ed. rev. 2004) and cases cited therein.
Additionally, Fed. R. Civ. P. 13(f) addresses counterclaims
and allows a party to move for leave to assert a
counterclaim if the counterclaim was originally omitted
“through oversight, inadvertence, or excusable neglect, or
when justice requires.” In deciding whether to grant leave
to add an omitted counterclaim under Rule 13(f), the same
standards governing Rule 15(a), as set forth above, apply.
See e.g., See’s Candy Shops Inc. v. Campbell Soup Co. (12
USPQ2d 1395, 1396 (TTAB 1989) (reading Rule 13(f) in
conjunction with Rule 15(a)).
Applicant's proposed counterclaim of fraud has been
sufficiently pleaded, and entry thereof would not violate
settled law. Moreover, we find the claim to have been
promptly made, inasmuch as it is based on information
applicant obtained from discovery on November 21, 2007 in
conjunction with the information received on December 28,
2007 when applicant obtained file histories for opposer’s
pleaded registrations after it had filed its answer. The
Board finds no prejudice to opposer in allowing the
Opposition No. 91177858
3
amendment as three and a half months remain with respect to
the discovery period. See TBMP § 507.02.
Accordingly, applicant’s motion for leave to amend its
answer to add a counterclaim of fraud is granted.
We now turn to the motion for summary judgment based
on applicant’s counterclaim of fraud with respect to
opposer’s five pleaded registrations.
A party is entitled to summary judgment when it has
demonstrated that there are no genuine issues as to any
material facts, and that it is entitled to judgment as a
matter of law. Fed. R. Civ. P. 56(c). The evidence must
be viewed in a light favorable to the nonmoving party, and
all justifiable inferences are to be drawn in the
nonmovant's favor. Lloyd’s Food Products Inc. v. Eli’s
Inc., 987 F.2d 766, 25 USPQ2d 2027, 2029 (Fed. Cir. 1993).
Fraud in procuring a trademark registration occurs
when an applicant for registration knowingly makes false,
material representations of fact in connection with an
application to register or, in the case of maintaining a
registration, when a registrant makes false, material
representations of fact in connection with an affidavit of
continued use under Section 8. Torres v. Cantine
Torresella S.r.l., 808 F.2d 46, 1 USPQ2d 1483, 1484 (Fed.
Cir. 1986). A party making a fraud claim is under a heavy
burden of proof because fraud must be shown by clear and
Opposition No. 91177858
4
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 (TTAB 1981).
Registration No. 15270031
With respect to opposer's pleaded registration for the
mark for “men's wearing
apparel, namely raincoats, mantels, jackets, shirts,
blouses, waistcoats, trousers, pants, socks, stockings,
ties, scarves, hats, swimwear, vests and underwear” in
International Class 25, there is no dispute and hence no
genuine issue of material fact that opposer has not used
and was not using the mark in connection with “mantles,
blouses, waistcoats, socks, stockings, ties, scarves, hats,
swimwear or underwear” at the time of filing the
application and at the time opposer filed a combined
affidavit of continued use under Sections 8 and 15 of the
Trademark Act. Statements regarding the use of the mark on
the identified goods are material to issuance of a

1 Formerly, application Serial No. 73662076. The registration
issued on February 28, 1989, with a combined Section 8 and
Section 15 affidavit respectively accepted and acknowledged on
October 26, 1995.
Opposition No. 91177858
5
registration. Herbaceuticals Inc. v. Xel Herbaceuticals
Inc., 86 USPQ2d 1572, 1576 (TTAB 2008).
There is also no dispute and thus no genuine issue of
material fact that opposer knew or should have known that it
was not using the mark in connection with “mantles,
blouses, waistcoats, socks, stockings, ties, scarves, hats,
swimwear or underwear.” See Standard Knitting Ltd. v.
Toyota Jidosha Kabushiki Kaisha, 77 USPQ2d 1917, 1928 (TTAB
2006) (“opposer is charged with knowing what it is signing”
and failing to make an appropriate inquiry is a “‘reckless
disregard for the truth’”).
Accordingly, there is no question that the registration
would not have issued nor the combined Sections 8 and 15
affidavit been respectively accepted and acknowledged but
for the material misrepresentation, since the USPTO will not
issue a registration or maintain a registration covering
goods upon which the mark has not been used. Medinol Ltd.
v. Neuro Vasx Inc., 67 USPQ2d 1205, 1208 (TTAB 2003).
In view thereof, we find that opposer’s false material
misrepresentations made in connection with its application
and in connection with the combined Sections 8 and 15
affidavit were fraudulent with respect to Registration No.
1527003.
Applicant’s motion for summary judgment is therefore
granted with respect to Registration No. 1527003. The

Opposition No. 91177858
6
counterclaim to cancel Registration No. 1527003 is granted
and Registration No. 1527003 will be cancelled in due
course.

Registration Nos. 1519894, 1990695, 1992385, and 2453062
With respect to these pleaded registrations, the
following facts are not in dispute:
Registration No. 15198942 (formerly application Serial
No. 73662018) for the mark ZANELLA, in standard character
form, was filed under Section 1(a) based on an allegation of
use on the following International Class 25 goods: “men’s
wearing apparel, namely raincoats, mantels, jackets, shirts,
blouses, waistcoats, trousers, pants, socks, stockings,
ties, scarves, hats, swimwear, vests and underwear.” On
August 31, 1995, after its mark registered, opposer filed an
amended combined Sections 8 and 15 affidavit of continued
use alleging use on all the goods stated in the
registration. Opposer admits that it has never used the
mark in connection with “men’s socks, stockings, ties,
scarves, hats, swimwear, vests and underwear.” On November
14, 2003, opposer filed a Section 7 request to amend its
registration to delete the goods on which it had never used
the mark. As amended, the identification of goods is as

2 Issued on January 10, 1989; combined Section 8 and Section 15
affidavit respectively accepted and acknowledged on October 26,
1995; Section 7 amendment filed on November 14, 2003 and entered
on January 2, 2004.
Opposition No. 91177858
7
follows: “men’s wearing apparel, namely raincoats, jackets,
shirts, trousers, pants, vests.”
Registration No. 19906953 (formerly application Serial
No. 74548674), for the mark ZANELLA in standard character
form and Registration No. 19923854 (formerly application
Serial No. 74548675) for the mark
were both filed under
Section 1(a) alleging use of the marks on “women’s
clothing, namely shorts, skirts, dresses, blouses, pants,
jackets, coats, vests, scarves, hats, swimwear, raincoats,
socks and underwear” in International Class 25. Opposer
admits that it has never used the marks on “scarves, hats,
swimwear, socks and underwear.” On September 7, 2001,
opposer filed combined Sections 8 and 15 affidavits of
continued use for both of the registrations, deleting the
goods on which it had not used the marks. As corrected,
the identification of goods for both registrations is as

3 Issued on August 6, 1996; combined Section 8 and Section 15
affidavit respectively accepted and acknowledged on September 27,
2001; Section 8 affidavit accepted and Section 9 renewal granted
on July 22, 2006.
4 Issued on August 13, 1996; combined Section 8 and Section 15
affidavit respectively accepted and acknowledged on October 5,
Opposition No. 91177858
8
follows: “women's clothing, namely shorts, skirts,
dresses, blouses, pants, jackets, coats, vests, raincoats.”5
Registration No. 24530626 (formerly application Serial
No. 76021021) for the mark was
filed under Section 1(a) alleging use in connection with
“women’s and men’s clothing, namely, shorts, skirts,
blouses, pants, jackets, coats, vests, scarves, hats,
swimwear, raincoats, socks, underwear, mantels, shirts,
waistcoats, trousers, stockings and ties” in International
Class 25. Opposer admits that it has never used the mark
in connection with “scarves, hats, swimwear, socks,
underwear, mantles, waistcoats, stockings and ties.” On
December 6, 2006, opposer filed a combined Sections 8 and
15 affidavit for this registration and deleted the goods on
which it was not using its mark. The identification of

2001; Section 8 affidavit accepted and Section 9 renewal granted
on July 22, 2006.
5 It is noted that the Office’s TARR database does not reflect
opposer’s deletion of “scarves, hats, swimwear, socks and
underwear” with respect to Registration No. 1990695.
Opposition No. 91177858
9
goods now reads as follows: “women’s and men’s clothing,
namely, shorts, skirts, blouses, pants, jackets, coats,
vests, raincoats, shirts, trousers.”7
Opposer argues that the registrations as maintained
are not fraudulent because they “were corrected prior to
Applicant’s use of its mark and prior to this proceeding”
and the corrections to its previous statements were made
voluntarily. Opposer also submits that at a minimum, this
action raises a genuine issue of material fact as to
opposer’s fraudulent intent.
In response, applicant submits that opposer has
“demonstrated a history of false claims and delays in
correcting [the registrations] spanning a number of years”
and “did not attempt to correct its registrations until the
‘occasion arose.’” Applicant asserts that such conduct
“evidences at least the same reckless disregard for the
truth” that supports “a finding of fraud.”
We find that opposer’s timely proactive corrective
action with respect to these registrations raises a genuine
issue of material fact regarding whether opposer had the
intent to commit fraud. In particular, opposer’s

6 Issued May 22, 2001; Section 8 and Section 15 filed December 6,
2006; Section 8 accepted and Section 15 acknowledged February 12,
2007.
7 Likewise, it is noted that the Office’s TARR database does not
reflect opposer’s deletion of “scarves, hats, swimwear, socks,
Opposition No. 91177858
10
action in correcting any false statements prior to any
actual or threatened challenge to the registrations creates
a rebuttable presumption that opposer did not intend to
deceive the Office. See University Games Corp. v. 20Q.net
Inc., 87 USPQ2d 1465, 1468 (TTAB 2008). In this case, we
find that applicant’s evidence submitted in support of the
motion for summary judgment, namely, opposer’s discovery
responses and the file histories of the registrations, fails
to rebut the presumption of no intent to commit fraud on the
Office. Accordingly, we find a genuine issue of material
fact remains with respect to whether opposer had the intent
to commit fraud on the USPTO with respect to these
registrations.
In view thereof, applicant’s motion for summary
judgment is denied with respect to Registration Nos.
1519894, 1990695, 1992385, and 2453062.
Proceedings herein are resumed.
Opposer is allowed until THIRTY DAYS from the mailing
date of this order to file an answer to the counterclaim.
Discovery and trial dates are reset as follows:
THE PERIOD FOR DISCOVERY TO CLOSE: February 3, 2009

30-day testimony period for
plaintiff in the opposition to close: May 4, 2009

30-day testimony period for defendant in the opposition
and as plaintiff in the counterclaim to close: July 3, 2009

underwear, mantles, waistcoats, stockings and ties” with respect
to Registration No. 2453062.
Opposition No. 91177858
11

30-day testimony period for defendant
In the counterclaim and its rebuttal testimony
As plaintiff in the opposition to close: September 1, 2009

15-day rebuttal testimony period for plaintiff
In the counterclaim to close: October 16, 2009

Briefs shall be due as follows:
[See Trademark rule 2.128(a)(2)].

Brief for plaintiff in the opposition shall be due: December 15, 2009

Brief for defendant in the opposition and as
plaintiff in the counterclaim shall be due: January 14, 2010

Brief for defendant in the counterclaim and its reply
brief (if any) as plaintiff in the opposition
shall be due: February 13, 2010

Reply brief (if any) for plaintiff in the
counterclaim shall be due: February 28, 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.
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.