Post Bose: The TTAB Cancels a Registration on the Ground of Fraud
Nationstar opposed an application for NATIONSTAR filed by an individual named Mujahid Ahmad. Nationstar claimed Mr. Ahmad committed fraud on the U.S. Patent and Trademark Office. tMr. Ahmad is a real estate agent. He filed his application to register NATIONSTAR for various services including real estate brokerage, mortgage brokerage and insurance brokerage services. Mr. Ahmad was not licensed to provide any brokerage services. He filed the application himself, claiming he had used the mark in commerce in connection with all of the services at the time of filing the application.
As established in In re Bose Corp. (580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir. 2009)), Nationstar had to establish the Mr. Ahmad knowingly made false, material representations of fact in connection with his application with intent to deceive the USPTO. Further, the evidence of fraud must be clear and convincing. Fortunately, Mr. Ahmad made it easy for Nationwide to meet this heavy burden.
For example, despite including “real estate brokerage” services in his application, Mr. Ahmad specifically testified that he is not a real estate broker. Mr. Ahmad is the owner and president of his real estate agency business, but claimed to not know if the business had earned any income. Mr. Ahmad ultimately testified that the company had not done any business and had not filed any tax returns. He was also unable or unwilling to identify documents he created or had created to advertise the services he might have provided. Rather, he claimed no knowledge about creation of any advertising materials. The Board expressed “grave concerns about the credibility” of any of Mr. Ahmad’s testimony and ultimately held that he was not using the mark in commerce in connection with any of the services identified in the application prior to filing the application.
Nationwide still had to establish that Mr. Ahmad’s false representations were made knowingly and with intent to deceive. The Board found this conclusion to be inescapable. The record clearly established that Mr. Ahmad knew he was not offering all of the identified services when he filed the application. The Board will infer deceptive intent if the evidence indicates sufficient culpability, including in cases such as this where the testimony is found to lack credibility. For example, Mr. Ahmad demonstrated that he knew and understood that many of the services identified in his application require a special license that he did not have. Unlike in In re Bose, Mr. Ahmad was found to have made false statements about his own industry and activities, knowing that he did not have the appropriate licenses to provide such services.
Finally, during the opposition, Mr. Ahmad amended his application to change the filing basis from “use in commerce” to “intent to use.” The Board confirmed that once an opposition has been filed, fraud cannot be cured merely by amending the filing basis. Rather, fraud is measured by the statements made at the time of filing the application.
Nationstar Mortgage LLC v. Mujahid Ahmad, Opposition No. 91177036 (TTAB September 30, 2014) [precedential].
A Lamb in Cotton Clothing: L.A.M.B. is Found to Function as a Trademark
Singer Gwen Stefani launched a clothing and accessory line in 2004 under the mark L.A.M.B., which is an acronym for “Love Angel Music Baby,” the title of her first solo album which sold more than 7 million copies worldwide. Ms. Stefani’s company owns four registrations for the L.A.M.B. mark for clothing, handbags, watches and other accessory items. The company filed a new application for L.A.M.B. that includedvarious clothing items. The Patent and Trademark Office refused registration on the ground the mark wasdeceptive when considered in relation to the clothing. During prosecution the Applicant informed the PTO that most of the clothing was made of cotton. The Applicant appealed the refusal to register.
A mark is deceptive under the Trademark Act if: (1) the term is misdescriptive of the character, quality, function, composition or use of the goods; (2) prospective purchasers are likely to believe that the misdescription actually describes the goods; and (3) the misdescription is likely to affect a significant portion of the relevant consumers’ decision to purchase the goods.
The Board acknowledged that the existence of punctuation in the middle of a mark generally does not change the commercial impression of the mark. Consumers will still pronounce L.A.M.B. as “lamb” despite the punctuation. Nevertheless, the Board found the mark was not deceptive because the majority of the relevant consumers associate L.A.M.B. with “Love Angel Music Baby” and not as the word “lamb.”
The Applicant submitted evidence of extensive use and consumer recognition of the L.A.M.B. brand. Although a showing of distinctiveness in the market does not help to overcome a deceptiveness refusal, such evidence can be considered in determining whether the mark misdescribes the goods and whether prospective purchasers are likely to believe that the misdescription actually describes the goods.
The Applicant’s evidence demonstrated that it promoted the association of L.A.M.B. with “Love Angel Music Baby” on its website and in advertising and promotional materials. The Board was also persuaded by the fact that consumers will know when they purchase clothing in stores or online, if it is made from lambskin, and will not be deceived. The Applicant affirmatively stated that its clothing is made of cotton and like materials, and media reports and the online catalog pages demonstrated this fact. In addition, the Applicant demonstrated that it used the L.A.M.B. mark to identify all of its clothing, footwear and headwear items, no matter the type of materials used.
Thus, the Applicant’s evidence was sufficient to demonstrate that prospective purchasers would perceive that L.A.M.B. is a source identifier for all of the Applicant’s clothing items, and would not believe that L.A.M.B. identifies only clothing items that are made of lamb.
In re LAMB-GRS, LLC, Serial No. 77756492 (TTAB September 30, 2014) [not precedential].
The TTAB Finds Consumers will not Confuse ZOMBIE CINDERELLA with WALT DISNEY’S CINDERELLA
The Applicant sought to register ZOMBIE CINDERELLA for dolls. The Examining Attorney refused the application as confusingly similar to the earlier registered mark WALT DISNEY’S CINDERELLA, also for dolls. On appeal, the Board found that although the goods are identical, and thus are presumed to move in the same trade channels and to be offered to the same classes of consumers, there is no likelihood of confusion.
The Board found that “CINDERELLA” as used with a doll is a weak term and entitled to a limited scope of protection, in that it names the fairytale character depicted by the doll. The story of Cinderella has been around since 1697 and the Board agreed the character has widespread public recognition. The Board also found the term CINDERELLA to have limited source-identifying power in the marketplace after reviewing evidence of numerous “Cinderella” dolls in the marketplace sold by different companies.
Comparing the marks directly, the Board found that the “WALT DISNEY’S” portion of the cited registration, in the possessive form indicates that the dolls are the Registrant’s version of the character as opposed to another’s version. Finally, it was the combination of the terms ZOMBIE and CINDERELLA in the Applicant’s mark that tipped the scales against a finding of likelihood of confusion. The Board found the combined terms create a unitary mark with an incongruous impression; an “uneasy mixture of innocence and horror.”
In re United Trademark Holdings, Inc., Serial No. 85706113 (TTAB, October 9, 2014) [not precedential].