Trademark owners of US multiple class registrations and applications in the post-Medinol world can now breath a sigh of relief. The Trademark Trial and Appeal Board (TTAB) recently held that a finding of fraud in one class does not automatically result in the cancellation of all classes in a multiple class registration.
In the case of G & W Labs., Inc. v. G.W. Pharma Ltd., Opp. No. 91169571 (January 29, 2009), G&W Labs., Inc. (Labs) asserted two multiple class registrations in Classes 5 and 35 against G.W. Pharma Ltd. (Pharma). Pharma counterclaimed, alleging Labs committed fraud for non-use of the services in Class 35 and asserted that G & W’s fraud in Class 35 subjected the entire registration to cancellation. Labs did not contest the allegations of non-use in Class 35. During the course of the opposition and after Pharma filed its counterclaims, Labs filed the required (Section 8) affidavit stating continued use of the mark, deleting the Class 35 goods. Labs then filed a motion to dismiss Pharma’s counterclaims.
The Board denied Lab’s motion to dismiss Pharma’s counterclaims as to Class 35 in view of the well-settled principle that fraud cannot be cured by deleting those goods or services on which the mark was not used at the time of the signing of a use-based application or a Section 8 Affidavit. However, the Board found that Medinol did not support Pharma’s contention that fraud as to one class of a multiple class registration subjects the entire registration to cancellation. Rather, the Board acknowledged that the question was one of first impression.
The Board viewed multiple class applications as a “series of applications for registration of a mark in connection with goods or services in each class,” which puts the owner of such an application “in the same position it would be had it filed several single class applications instead.” Thus, the TTAB held that “each class of goods or services in a multiple class registration must be considered separately when reviewing the issue of fraud, and judgment on the ground as to one class does not in itself require cancellation of all classes in a registration.”
Ultimately, Pharma’s counterclaims as to Class 5 were dismissed and judgment on the counterclaims as to Class 35 was entered against Labs.