Fuji Medical Instruments Mfg. Co., Ltd.v.American Crocodile International Group, Inc.

Trademark Trial and Appeal Board

Jul 28, 2021

92062760 (T.T.A.B. Jul. 28, 2021)

THIS OPINION IS A
PRECEDENT OF THE TTAB

Hearing: May 14, 2020 Mailed: July 28, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Fuji Medical Instruments Mfg. Co., Ltd.
v.
American Crocodile International Group, Inc.
_____

Cancellation No. 92062760
_____

Sarah G. Voeller of Hamre, Schumann, Mueller & Larson, P.C.,
for Fuji Medical Instruments Mfg. Co., Ltd.
Niria M. Arvizu of Law Offices Niria M. Arvizu,
for American Crocodile International Group, Inc.
_____

Before Shaw, Greenbaum, and Coggins,
Administrative Trademark Judges.

Opinion by Shaw, Administrative Trademark Judge:
American Crocodile International Group, Inc. (“Respondent” or “ACIGI”) owns a
Principal Register registration for the mark FUJIIRYOKI, in standard characters,
for “massage apparatus; massage chairs; massaging apparatus for personal use” in
International Class 10.1 William Shen, the CEO of ACIGI, filed the application

1 Registration No. 3201055 was issued January 23, 2007 from an application filed November
2, 2005, claiming September 1, 2003 as the date of first use anywhere and the date of first
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underlying the registration and is the original registrant. Shen then assigned the
registration to Respondent. Shen and ACIGI are jointly referred to as “Respondent,”
except where it is necessary to specifically discuss Shen’s status as the original
applicant or registrant.
In its Amended Petition for Cancellation, Petitioner Fuji Medical Instruments
Mfg. Co., Ltd. (“Petitioner”) alleges prior use of the mark FUJIIRYOKI for massage
chairs since at least as early as 2000 when it began exporting chairs to the U.S.
market; that Respondent first became one of Petitioner’s U.S. distributors in 2003,
later becoming Petitioner’s exclusive U.S. distributor in 2005; and the parties signed
an agreement reinforcing Respondent’s role as Petitioner’s distributor in 2015.2
Because the original Petition for Cancellation was filed more than five years after
the date the registration issued,3 the grounds for potential cancellation are limited.
E.g., Imperial Tobacco Ltd. v. Philip Morris Inc., 899 F.2d 1575, 14 USPQ2d 1390,
1392 (Fed. Cir. 1990). Fraud is one basis for cancellation that continues after the five-
year period and may be brought “[a]t any time.” 15 U.S.C. § 1064(3). See TRADEMARK
TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 307.02(a) (June 2021). In
the Amended Petition for Cancellation, Petitioner seeks cancellation on the ground
of fraud under the following theories: (1) the original applicant’s claim of ownership

use in commerce. According to a translation statement in the registration, “[t]he English
translation for the foreign term FUJIIRYOKI is Fuji Medical Device.”
2 Amend. Pet. ¶¶ 2-5, 20 TTABVUE 11-12. The Amended Petition is the operative pleading.
32 TTABVUE.
3 The original Petition was filed December 2, 2015, almost nine years after the registration
issued.
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of the mark was fraudulent because Petitioner was the owner of the mark and
Respondent was merely Petitioner’s distributor; (2) the declaration in the application
underlying the subject registration stating that no other person, firm, corporation or
association had a right to use the mark was executed fraudulently because there was
use by Petitioner of the same mark at the time the original applicant signed the
application with the statutorily prescribed oath; (3) misrepresentation to the Office,
by the submission of specimens in the underlying application, that the original
applicant had used the mark in commerce at least as early as the filing date of the
application, when the specimens showed Petitioner’s use of the mark, not
Respondent’s use; and (4) misrepresentation to the Office, by the submission of a
specimen of use in support of a Combined Declaration of Use and Incontestability
under Sections 8 & 15, purporting to show that Respondent was using the mark in
commerce as of the date the combined declaration was filed, when the specimen
showed Petitioner’s use of the mark, not Respondent’s use.4
In its Answer, Respondent admits that it became a distributor of Petitioner’s
FUJIIRYOKI massage chairs in 2003, that it became an exclusive distributor of those
massage chairs at least as early as 2005, and that it was Petitioner’s distributor in

4 See 20 TTABVUE 11-19 (amended petition), and 32 TTABVUE 8-9 (Board order inter alia
granting motion to amend petition). Although the Board stated that the amended petition
was “not a model of clarity,” 32 TTABVUE 8, and the grouping of allegations therein did “not
make complete sense,” id. at 9, Petitioner made no effort to clarify that pleading or dispute
the Board’s determination as to what claims were pleaded. To the extent Petitioner argues
that the application is void because it was not filed by the owner of the mark, see Petitioner’s
Br., p. 22, 32-33 (83 TTABVUE 23, 33-34), absent fraud, such a lack of ownership claim at
the time of filing is time-barred because the subject registration is more than five years old.
See Treadwell’s Drifters Inc. v. Marshak, 18 USPQ2d 1318, 1320 (TTAB 1990).
Cancellation No. 92062760
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2015.5 Respondent admits various other facts, but otherwise denies the salient
allegations of the Amended Petition for Cancellation. In addition, Respondent alleges
that it had Petitioner’s permission to register the mark FUJIIRYOKI, and that
Petitioner eventually signed an agreement stating that Respondent is the owner of
the mark.6 Respondent also asserts the affirmative defenses of waiver, estoppel, and
that Petitioner abandoned the mark through both non-use and naked licensing.7
I. The Record
The record includes the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), the file for the involved registration. The parties introduced the
following testimony and evidence:
A. Petitioner’s testimony and evidence:
 Petitioner’s First Notice of Reliance on USPTO records, official records, and
Internet materials. (44 TTABVUE 2-64)

 Petitioner’s Second Notice of Reliance on Respondent’s responses to certain
requests for admission. (44 TTABVUE 65-176)

 Petitioner’s Third Notice of Reliance on Respondent’s responses to certain
interrogatories. (44 TTABVUE 177-229)

 Petitioner’s Fourth Notice of Reliance on excerpts and exhibits from the
discovery depositions of William Shen, CEO of Respondent, in his own

5 Answer ¶¶ 4-5, 33 TTABVUE 3.
6 Answer ¶¶ 14, 16, 19, 21-24, 33 TTABVUE 6, 7-8.
7 Id. at ¶¶ 28-36, 33 TTABVUE 9-10. Respondent also asserted as an “affirmative defense”
that Petitioner failed to state a claim upon which relief can be granted; however, this is not
an affirmative defense, see John W. Carson Found. v. Toilets.com, Inc., 94 USPQ2d 1942,
1949 (TTAB 2010) (“The asserted defense of failure to state a claim is not a true affirmative
defense because it relates to an assertion of the insufficiency of the pleading of opposer’s claim
rather than a statement of a defense to a properly pleaded claim.”), and the Board previously
determined that the amended petition sufficiently stated a claim. See 32 TTABVUE 7-12.
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capacity and separately as a Fed. R. Civ. P. 30(b)(6) witness, and Man Yee
(Lorraine) Yeung, an employee of Respondent from 2003 to 2005 and 2007
to present. (45-47 TTABVUE)

 Testimony deposition of Sadao Kihara, a 49-year employee and former CEO
of Petitioner, with exhibits. (50 TTABVUE; 49 TTABVUE confidential)

 Testimony deposition of Toshikazu Takatori, the former overseas sales
manager of Petitioner from 1999 to 2008, with exhibits. (51 TTABVUE; 48
TTABVUE confidential)

 Petitioner’s Rebuttal Notice of Reliance on Petitioner’s supplemental
responses to certain interrogatories and a request for admission
propounded by Respondent. (72 TTABVUE)

 Cross-examination testimony deposition of William Shen, with exhibits.
(77-78 TTABVUE; 79-80 TTABVUE confidential)

B. Respondent’s testimony and evidence:
 Respondent’s Notice of Reliance on internet material, USPTO records, and
printed publications. (60 TTABVUE)

 Respondent’s amended Notice of Reliance on documents produced by
Respondent during discovery, and responses to certain interrogatories and
requests for admission propounded by Petitioner. (62 TTABVUE)

 Respondent’s Notice of Reliance on Petitioner’s responses to certain
interrogatories and requests for admission. (63 TTABVUE)

 Testimony Declaration of William Shen, with exhibits. (61 TTABVUE)

II. Background
Petitioner is a Japanese company that makes and has sold health appliances,
mainly massage chairs, since 1954.8 It claims it is a pioneer in the field, is well known
in Asia, and has received multiple awards over many years for its chairs.9 Petitioner

8 Kihara Dep., 50 TTABVUE 10-11.
9 Id., 50 TTABVUE 17-18.
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created, adopted, and applied in Japan to register the trademark FUJIIRYOKI
around 1987, receiving a Japanese registration in 1990.10 It has sold its chairs in the
U.S. since at least as early as 1968; and, since the 1987 adoption of the FUJIIRYOKI
mark, it has sold FUJIIRYOKI-branded chairs in the U.S.11 In 1991, Petitioner
applied to register the mark FUJIIRYOKI in the U.S. for “body massaging
apparatus,” but that application was abandoned in 1994 for failure to file a statement
of use.12 In 1995, Petitioner successfully registered FUJIIRYOKI in the U.S. for
various exercise machines, but that registration was cancelled in 2002 for failure to
file an affidavit of use or excusable nonuse under Section 8 of the Trademark Act.13
An application filed in 2015 to register FUJIIRYOKI in stylized lettering is
suspended pending resolution of this cancellation proceeding as discussed below.
Between 2001 and 2004 or 2005, Petitioner sold its FUJIIRYOKI chairs in the U.S.
primarily through another distributor, Sole Convenience.14
Respondent is a California corporation formed in 2002.15 It became a U.S.
distributor of Petitioner’s FUJIIRYOKI massage chairs in 2003, sold its first

10 Id., 50 TTABVUE 14-15.
11 Id., 50 TTABVUE 22.
12 Application No. 74206483 (“’483 application”) Pet. 1st NOR Ex. 2, 44 TTABVUE 11-13;
Shen Decl. ¶ 11 and Ex. 5, 61 TTABVUE 4, 51.
13 Registration No. 1930363 (“’063 registration”), Pet. 1st NOR Ex. 1, 44 TTABVUE 7-9; Shen
Decl. ¶ 11 and Ex. 5, 61 TTABVUE 4, 52.
14 Takatori Dep., 51 TTABVUE 15-16.
15 Shen Decl. ¶¶ 1-2, 61 TTABVUE 2.
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FUJIIRYOKI chair in April 2003, and became the exclusive U.S. distributor of
Petitioner’s FUJIIRYOKI chairs in June 2005.16
William Shen has been the CEO of Respondent since its formation in 2002.17 On
November 2, 2005, counsel for Shen filed the application underlying the registration
at issue in this cancellation proceeding; the application was filed in the name of
William Shen, i.e., listing Shen as the owner of the mark.18 Five days after the
registration issued it was assigned to Respondent, and the assignment was recorded
with the USPTO a few months later.19
III. Evidentiary Issues
Before proceeding to the merits of the claims, we address evidentiary matters.
A. Exhibit 3 to Petitioner’s Rebuttal Notice of Reliance
Prior to briefing, Respondent moved to strike, inter alia, Petitioner’s Third
Supplemental Objections and Responses to Respondent’s First Set of Admissions No.
43, dated October 6, 2017, which was submitted as Exhibit 3 to Petitioner’s Rebuttal
Notice of Reliance.20 Because the motion was deferred until final decision,21 we now
determine the issue.

16 Id. ¶¶ 5, 15, 61 TTABVUE 2, 5; Shen Cross-Exam Dep, p. 38, 77 TTABVUE 39.
17 Shen Decl. ¶ 2, 61 TTABVUE 2.
18 Id. ¶¶ 12-13, 61 TTABVUE 4-5; Application.
19 Pet. 4th NOR Ex. 36 (Shen Dep. pp. 184-85), 46 TTABVUE 341-42; Assignment, Reel 3520,
Frame 611-13.
20 72 TTABVUE 104-07 (Exhibit 3), 73 TTABVUE (motion).
21 82 TTABVUE 5-7 (Board order).
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Petitioner submitted by notice of reliance its amended response—a denial—to
Respondent’s request for admission No. 43, which asked Petitioner to admit the
authenticity of a Meeting Memorandum dated November 21, 2009, and signed by
Shen and Katsuya Ito of Petitioner’s Overseas Division.22 Respondent moved to strike
the amended response, arguing that denials to admission requests cannot be
submitted under a notice of reliance.23
Usually, “[d]enials to admission requests cannot be submitted under notice of
reliance,” TBMP § 704.10, because “unlike an admission (or a failure to respond which
constitutes an admission), the denial of a request for admission establishes neither
the truth nor the falsity of the assertion, but rather leaves the matter for proof at
trial.” Life Zone Inc. v. Middleman Grp., Inc., 87 USPQ2d 1953, 1957 n.10 (TTAB
2008). However, as Petitioner argues in this instance, Petitioner submitted the
amended response (a denial) because the initial response submitted by Respondent
(an admission) is misleading as it is not the final version of the response to the request
for admission. That is, Petitioner does not seek to establish the truth or falsity of the
assertion, but only to show that the response was amended to a denial and cannot be
relied on by Respondent as an admission. This is acceptable. Cf. Trademark Rule
2.120(k)(5), 37 C.F.R. § 2.120(k)(5) (“[R]esponding party may introduce . . . any other
admissions, which should in fairness be considered so as to make not misleading what
was offered by the receiving . . . party”). Accordingly, we deny Respondent’s motion

22 See 63 TTABVUE 14-15 (Petitioner’s second supplemental response), 63 TTABVUE 9-11
(meeting memorandum), and 72 TTABVUE 106 (Petitioner’s third supplemental response).
23 73 TTABVUE 5.
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to strike Petitioner’s Third Supplemental Objections and Responses to Respondent’s
First Set of Admissions No. 43, and we will not rely on the earlier admission
submitted by Respondent. Nonetheless, we note that the admission and later denial
relate to the authenticity of a document that was submitted with Shen’s testimonial
declaration and authenticated thereby.24
B. Remaining objections
The parties raise numerous other objections on the grounds of failure to produce
documents during discovery, relevance, authentication, foundation, and hearsay.
Given the number and nature of the objections, we see no compelling reason to discuss
any of them specifically. The Board is capable of assessing the proper evidentiary
weight to be accorded the testimony and evidence, taking into account the concerns
raised by the objections. Suffice it to say, we have considered all of the testimony and
exhibits submitted. In doing so, we have kept in mind the various objections raised
by Petitioner and Respondent and we have accorded whatever probative value the
subject testimony and evidence merit. See Luxco, Inc. v. Consejo Regulador del
Tequila, A.C., 121 USPQ2d 1477, 1479 (TTAB 2017).
IV. Entitlement to the Statutory Cause of Action for Cancellation25
A plaintiff’s entitlement to bring the statutory cause of action of cancellation,
formerly referred to as “standing,” must be established in every inter partes case

24 See Shen Decl. ¶¶ 6, 15, 61 TTABVUE 2-3, 5, 20-22.
25 Board decisions have previously analyzed the requirements of Section 14 of the Trademark
Act, 15 U.S.C. § 1064, under the rubric of “standing.” We now refer to this inquiry as
entitlement to bring whatever statutory cause of action is at issue. Despite the change in
nomenclature, our prior decisions and those of the Federal Circuit interpreting “standing”
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before the Board. See Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 2020 USPQ2d
11277 (Fed. Cir. 2020), cert. denied, 2021 WL 2044561 (May 24, 2021); Australian
Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370, 2020 USPQ2d
10837 (Fed. Cir. 2020),26 reh’g en banc denied 981 F.3d 1083 (Dec. 4, 2020), petition
for cert. filed, No. 20-1552 (Apr. 28, 2021); Empresa Cubana Del Tabaco v. Gen. Cigar
Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014); Spanishtown Enters.,
Inc. v. Transcend Res., Inc., 2020 USPQ2d 11388 (TTAB 2020). A party in the position
of plaintiff may petition for cancellation of a registered mark where it is within the
zone of interests protected by the statute, 15 U.S.C. § 1064, and the party has a
reasonable belief in damage proximately caused by continued registration of the
mark. See Peterson v. Awshucks SC, LLC, 2020 USPQ2d 11526, at *6 (TTAB 2020)
(citing Corcamore, 2020 USPQ2d 11277, at *6-7); Spanishtown Enters., 2020 USPQ2d
11388, at *1. See also 15 U.S.C. § 1064.
There is no dispute that the parties have a long-standing business relationship
dating back to 2003, when Respondent became a distributor of Petitioner’s massage
chairs bearing the FUJIIRYOKI mark, and that the parties have signed multiple

under § 1064 remain equally applicable. See, e.g., City of London Distillery, Ltd. v. Hayman
Grp. Ltd., 2020 USPQ2d 11487, at *3 n.43 (TTAB 2020).
26 In arguing against Petitioner’s entitlement, Respondent relies on an earlier Board decision
in Australian Therapeutic Supplies Pty. Ltd v. Naked TM, LLC, 129 USPQ2d 1027 (TTAB
2018), which was reversed by the Federal Circuit after this proceeding was briefed. We rely
on the controlling later decision, and need not discuss Respondent’s arguments based on the
now-reversed earlier decision. Similarly, Respondent argues that Petitioner is not entitled to
bring this action due to acquiescence, see Respondent’s Br., pp. 21-26 (85 TTABVUE 22-27);
however that is an affirmative defense against the merits of the claim – not to Petitioner’s
entitlement to bring a cause of action for cancellation – and, as noted below, is not available
against fraud.
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agreements confirming their business relationship since then.27 In addition,
Respondent admits that from 2010 to 2015 Petitioner shipped FUJIIRYOKI massage
chairs and parts directly from Japan to Respondent; Petitioner supplies Respondent
with catalogs, user manuals, and remote controls for the FUJIIRYOKI-branded
massage chairs; and part of Respondent’s website provides the history of and
corporate data about Petitioner.28 These facts are sufficient to establish Petitioner’s
entitlement to bring this statutory cause of action, because the question of ownership
of the mark FUJIIRYOKI forms part of the fraud claim. Cf. UVeritech, Inc. v. Amax
Lighting, Inc., 115 USPQ2d 1242, 1244 (TTAB 2015) (a dispute over ownership of a
mark establishes entitlement to bring a statutory cause of action).
In addition, Respondent admitted that “Petitioner filed a trademark application
for FUJIIRYOKI on November 5, 2015” and Petitioner introduced evidence of that
application (Serial No. 86810921) seeking registration of the mark for
“electric massage chairs; massage apparatus and instruments.”29 This too is sufficient
to establish Petitioner’s entitlement to bring a cancellation proceeding. See Toufigh
v. Persona Parfum Inc., 95 USPQ2d 1872, 1874 (TTAB 2010) (because plaintiff made
of record its pending application, entitlement established “by virtue of the fact that
both parties’ marks are identical, and their goods are at least arguably related.”). See

27 See, e.g., June 1, 2005 certificate of exclusive distributorship (Takatori Dep. Ex. 3, 51
TTABVUE 198; and Shen Decl. Ex. 7, 61 TTABVUE 59); November 21, 2009 Meeting
Memorandum (Shen Decl. Ex. 1, 61 TTABVUE 19-22); 2015 Memorandum of Understanding
(Shen Decl. Ex. 7, 61 TTABVUE 62).
28 Requests for Admission Nos. 4, 5, 17, 18, 31, 36, 37 (Pet. 2nd. NOR; 44 TTABVUE 129-31,
134-35).
29 Answer ¶ 25 (33 TTABVUE 8), Pet. 1st NOR, Ex. 4 (44 TTABVUE 18-21).
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also Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189
(CCPA 1982) (“We regard the desire for a registration with its attendant statutory
advantages as a legitimate commercial interest.”).
Respondent nevertheless argues that Petitioner lacks “standing” to bring this
cancellation proceeding because “[i]n 2009, Petitioner contracted away any rights it
may have had in the mark when Petitioner entered into a written settlement
agreement with Registrant over a dispute regarding ownership of the mark and
agreed Registrant is the owner of the mark[.]”30 This argument is unavailing because
Respondent misrepresents the nature of the agreement and its duration. As discussed
more fully below, the 2009 agreement between the parties was a temporary solution
to the present ownership dispute. In addition, the 2009 agreement was superseded
by a Memorandum of Understanding dated March 16, 2015 that terminated “any and
all prior existing agreements, certificates, understandings, and communications
between the parties (including but not limited to any notice, orally or in writing).”31
Finally, Petitioner need not have proprietary rights in a mark in order to establish a
cause of action under Section 1064. Australian Therapeutic, 2020 USPQ2d 10837, at
*5 (“Contracting away one’s rights to use a trademark does not preclude a petitioner
from challenging a mark before the Board.”).
We find that Petitioner has established that it is entitled to bring this cancellation
proceeding.

30 Respondent’s Br., p. 16, 85 TTABVUE 17.
31 46 TTABVUE 229.
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V. Affirmative Defenses
Respondent raises the affirmative defenses of waiver and estoppel by
acquiescence, arguing that Petitioner has consented to Respondent’s use of the
FUJIIRYOKI mark.32 Equitable defenses such as laches, acquiescence, equitable
estoppel, waiver, and the like, are not available against claims of fraud. Saint-Gobain
Abrasives, Inc. v Unova Indus. Automation Sys., Inc., 66 USPQ2d 1355, 1359 (TTAB
2003) (“It is well established that the equitable defenses of laches and acquiescence
are not available against claims of genericness, descriptiveness, fraud, and
abandonment.”); Harjo v. Pro Football Inc., 30 USPQ2d 1828, 1831 (TTAB 1994)
(laches and equitable estoppel not available against fraud); Treadwell’s Drifters, 18
USPQ2d at 1320 (laches and equitable estoppel not available against fraud); TBC
Corp. v. Grand Prix Ltd., 12 USPQ2d 1311, 1313 (TTAB 1989) (“The equitable
defenses [of laches, acquiescence, and estoppel] do not apply because it is in the public
interest to preclude . . . registration procured by fraud.”). We therefore find against
Respondent on the asserted defenses of waiver and estoppel by acquiescence.
Respondent also raises the defense of abandonment of the FUJIIRYOKI mark
through naked licensing. Failure to exercise sufficient quality control or supervision
over a licensee’s use of a licensed mark, i.e. uncontrolled or “naked” licensing, may
result in abandonment of the mark as to the licensed goods or services. Woodstock’s
Enters. Inc. (California) v. Woodstock’s Enters. Inc. (Oregon), 43 USPQ2d 1440, 1446
(TTAB 1997), aff’d, 152 F.3d 942 (Fed. Cir. 1998) (Table). Although this defense may

32 Respondent’s Br., p. 21, 85 TTABVUE 22.
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be available against a claim of fraud, as explained in the following discussion, we find
against Respondent on the merits.
Respondent argues that Petitioner abandoned the FUJIIRYOKI mark through
naked licensing because Respondent “exclusively used the mark since 2003, without
impediment by Petitioner[,] manufactured its own chairs under the mark, and with
Petitioner’s knowledge and without any interference or quality assurance by
Petitioner, [and] sub-licensed the use of the mark to third parties.”33 Respondent,
however, was buying its massage chairs from Petitioner and has introduced no
credible evidence that it was manufacturing its own chairs under the FUJIIRYOKI
mark or sub-licensing the manufacture of chairs by any third parties. Thus, on this
record, Respondent is arguing that, while it was a licensee of Petitioner, Respondent’s
sales of Petitioner’s FUJIIRYOKI-branded chairs caused abandonment of Petitioner’s
mark due to failure to exercise quality control over Respondent.
Under the doctrine of licensee estoppel, during the time that a license is in force,
a licensee cannot challenge the validity of the licensed mark including on the ground
that the licensor has not exercised sufficient quality control. Estate of Biro v. Bic
Corp., 18 USPQ2d 1382, 1386 (TTAB 1991) (“Inasmuch as applicant is challenging
the agreement based on facts which occurred during the time frame of the ‘license’,
we find that applicant is estopped under the doctrine of licensee estoppel.”); see also
Leatherwood Scopes Int’l Inc. v. Leatherwood, 63 USPQ2d 1699, 1703 (TTAB 2002)
(under doctrine of licensee estoppel, “licensee is estopped to challenge [licensor’s]

33 Respondent’s Br., p. 2, 85 TTABVUE 3.
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ownership of the mark” based on naked licensing); Garri Publ’n Assocs. Inc. v. Dabora
Inc., 10 USPQ2d 1694, 1697 (TTAB 1988) (“[A] licensee is estopped to challenge the
licensor’s rights in the licensed mark [based on naked licensing] during the time that
the license is in force.”). We find that Respondent’s defense of abandonment through
naked licensing fails because the basis for its defense arose while Respondent was
Petitioner’s licensee.
Respondent further claims that “Petitioner is not the manufacturer of the goods
where [another company] LITEC advertises it manufactures the chairs and [yet
another company] FUJIIRYOKI Shanghai also likely manufactures the chairs and
Petitioner cannot claim ownership of the mark.”34 Respondent bases this argument
on information purportedly discovered in 2013.35 This argument is irrelevant to the
2005 application and wholly unsupported by any credible evidence. We give it no
consideration.
VI. Fraud
Fraud in procuring or maintaining a trademark registration occurs when an
applicant for registration, or a registrant in a post-registration setting, knowingly
makes a false, material representation of fact in connection with an application to
register or a post registration document, with the intent of obtaining or maintaining
a registration to which it is otherwise not entitled. In re Bose Corp., 580 F.3d 1240,
91 USPQ2d 1938, 1939-40 (Fed. Cir. 2009); Torres v. Cantine Torresella S.r.l., 808

34 Respondent’s Br., p. 2, 85 TTABVUE 3.
35 Shen Testimony Dec., ¶ 10, 61 TTABVUE 4.
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F.2d 46, 1 USPQ2d 1483, 1484 (Fed. Cir. 1986); Embarcadero Techs., Inc. v. Delphix
Corp., 117 USPQ2d 1518, 1521 (TTAB 2016); Nationstar Mortg. LLC v. Ahmad, 112
USPQ2d 1361, 1365 (TTAB 2014). A party alleging fraud in the procurement or
maintenance of a registration bears the heavy burden of proving fraud with clear and
convincing evidence. Bose, 91 USPQ2d at 1939 (quoting Smith Int’l, Inc. v. Olin Corp.,
209 USPQ 1033, 1044 (TTAB 1981)). See also W.D. Byron & Sons, Inc. v. Stein Bros.
Mfg. Co., 377 F.2d 1001, 153 USPQ 749, 750 (CCPA 1967) (heavy burden of proof
required of one alleging fraud). Indeed, “the very nature of the charge of fraud
requires that it be proven ‘to the hilt’ with clear and convincing evidence. There is no
room for speculation, inference or surmise and, obviously, any doubt must be resolved
against the charging party.” Smith Int’l v. Olin Corp., 209 USPQ at 1044.
The Board will not find fraud if the evidence shows that a false representation
was made with a reasonable and honest belief that it was true, rather than an intent
to mislead the USPTO into issuing a registration to which the applicant was not
otherwise entitled. See id.; see also Woodstock’s, 43 USPQ2d at 1443. The Court of
Appeals for the Federal Circuit has held that intent to deceive is an indispensable
element of the analysis in a fraud case. See Bose, 91 USPQ2d at 1941.
A. False material representation
Applying the law to the present case, we first look to see whether false and
material representations were made in Respondent’s underlying application to
register the FUJIIRYOKI mark. Bose, 91 USPQ2d at 1942. The crux of the issue is
whether Shen owned the FUJIIRYOKI mark in the U.S. at the time he filed the
Cancellation No. 92062760
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application on November 2, 2005 in his own name. An application based on use in
commerce under Section 1(a), 15 U.S.C. § 1051(a), must be filed by the party who
owns the mark. See, e.g., Lyons v. Am. Coll. of Veterinary Sports Med. & Rehab., 859
F.3d 1023, 123 USPQ2d 1024, 1027 (Fed. Cir. 2017); Holiday Inn v. Holiday Inns,
Inc., 534 F.2d 312, 189 USPQ 630, 635 n.6 (CCPA 1976) (“One must be the owner of
a mark before it can be registered.”); Great Seats, Ltd. v. Great Seats, Inc., 84 USPQ2d
1235, 1239 (TTAB 2007) (“In a use-based application under Trademark Act Section
1(a), only the owner of the mark may file the application for registration of the
mark[.]”). Thus, we must determine who owned the mark and whether Shen made
any false material representations regarding ownership. Given that the claim of
fraud is based chiefly on ownership claims made in the application, we focus our
inquiry primarily on events in the months leading up to the filing date of the
application.
1. Ownership of the FUJIIRYOKI mark
Beginning in 2003, Respondent started selling Petitioner’s FUJIIRYOKI-branded
chairs in the U.S. On June 1, 2005, Petitioner made Respondent the exclusive U.S.
distributorship for FUJIIRYOKI chairs via a one-page letter. The entirety of the body
of the letter states:
CERTIFICATE
This is to certify that ACIGI RELAXATION, 762 BARBER
LANE MILPITAS, CA 95035, U.S.A. is the exclusive
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distributor/importer of FUJIIRYOKI Massage Chair in
U.S.A.
Sincerely Yours,
Fuji Medical Instruments Mfg. Co. Ltd.
[signed]
Toshikazu TAKATORI
Manager
Overseas Division36
The letter makes no mention of trademarks, and does not give Shen or Respondent
the right to register the FUJIIRYOKI mark. Shen filed the FUJIIRYOKI trademark
application five months later in his own name.
Merely being a distributor (or the CEO of a distributor) does not confer ownership
of a mark for the goods being distributed. On the contrary, as between a manufacturer
and distributor, the manufacturer is presumed to own a trademark applied to the
goods:
In the absence of an agreement determining ownership
[between a foreign manufacturer and an exclusive United
States distributor], both the courts and the Trademark
Board will presume that the manufacturer of goods is the
owner of the trademark of those goods.
* * *
An exclusive U.S. distributor does not acquire ownership of
a foreign manufacturer’s mark any more than a wholesaler
can acquire ownership of an American manufacturer’s
mark, merely through the sale and distribution of goods
bearing the manufacturer’s trademark.
J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION, § 29:8
(5th ed. 2021). See also Nahshin v. Prod. Source Int’l, LLC, 107 USPQ2d 1257, 1263

36 Ex. 3 to Takatori Dep., 51 TTABVUE 198; Ex. 7 to Shen Dec., 61 TTABVUE 59.
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(TTAB 2013) (“[T]he mere fact that a U.S. distributor distributes a foreign
manufacturer’s branded product does not, without more, give the U.S. distributor an
ownership interest in the mark.”). Respondent, therefore, cannot rely solely on its
status as Petitioner’s exclusive U.S. distributor for its ownership of the FUJIIRYOKI
mark. Likewise, Shen, in his capacity as Respondent’s CEO, had no ownership
interest in the FUJIIRYOKI mark that Respondent could rely on.
In the absence of an agreement determining ownership of a trademark between a
foreign manufacturer and an exclusive U.S. distributor, the presumption that the
manufacturer of the goods is the owner of the trademark is rebuttable. See Global
Maschinen GmbH Banking Sys., Inc., 227 USPQ 862, 866 (TTAB 1985). The following
factors are relevant when considering if the presumption has been rebutted:
(1) which party created and first affixed the mark to the
product;
(2) which party’s name appeared with the trademark on
packaging and promotional materials;
(3) which party maintained the quality and uniformity of
the product, including technical changes;
(4) which party does the consuming public believe stands
behind the product, e.g., to whom customers direct
complaints and turn to for correction of defective products;
(5) which party paid for advertising; and
(6) what a party represents to others about the source or
origin of the product.
UVeritech, 115 USPQ2d at 1249.
Using the above framework to decide the present dispute, we find that Petitioner
was the owner of the FUJIIRYOKI mark at the time Shen filed the application to
Cancellation No. 92062760
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register the FUJIIRYOKI mark. Petitioner created the FUJIIRYOKI mark and
applied it to the goods, as well as to documentation, packaging and promotional
materials sold with the goods. Petitioner manufactured the goods and created new
models as needed.37 In advertising, Petitioner was routinely represented to
consumers as the source of the goods. Indeed, advertising for the goods often touted
Petitioner’s history, dating back to the invention of the first massage chair in 1954.
We note Respondent paid for most advertising, but this is not surprising given
that Petitioner is based in Japan and had little experience with the U.S. market.
Moreover, as noted above, Respondent’s advertising routinely referred to Petitioner
and its long history of developing and manufacturing massage chairs.
Respondent also arranged for repair of broken or defective chairs, but some repairs
were handled by Petitioner.38 And Petitioner supplied Respondent with all of the
replacement parts and annual training for its repair technicians.39 Although repairs
often were made by Respondent, owner’s manuals for the chairs identified Petitioner
as the manufacturer and encouraged customers with repair issues to contact either
“your dealer or us [Petitioner] for inspection or repair.”40 Moreover, when Shen filed
the FUJIIRYOKI trademark application, Respondent had only been the exclusive
U.S. distributor of FUJIIRYOKI chairs for five months. This is hardly enough time

37 Kihara Dep., pp. 10-12, Ex. 42, 50 TTABVUE 11-13, 287-97.
38 Yeung Dep., p. 58, 47 TTABVUE 248.
39 Takatori Dep., pp. 33-34, 51 TTABVUE 33-35.
40 Id. at 33-34, 51 TTABVUE 33-35.
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for consumers to believe that only Respondent stood behind the products, particularly
in light of the evidence just discussed.
Weighing the foregoing factors, in the absence of an agreement determining
ownership of the FUJIIRYOKI mark as of November 2005, we find that Petitioner
clearly was the owner of the mark at the time Shen filed the application to register
the mark.
Respondent nevertheless puts forth several additional theories to support its
claim of ownership of the FUJIIRYOKI mark at the time Shen filed the application.
First, in its responses to Petitioner’s interrogatories, Respondent stated that it had
written permission from Petitioner to file the FUJIIRYOKI trademark application.41
However, Shen, blaming computer problems,42 never produced any written evidence
establishing that Petitioner granted him or Respondent the right to register the
FUJIIRYOKI mark. Instead, the record shows that, at most, Respondent was given
permission to use the FUJIIRYOKI mark, not register it.43
Second, during his deposition, Shen also said that he received verbal permission
to register the FUJIIRYOKI mark from Takatori, Petitioner’s former overseas sales
manager. But Shen said he didn’t remember the date and stated that Takatori
“probably wasn’t paying attention.”44 Takatori, however, denies that he ever gave

41 Pet. 3rd NOR, Ex. C, Respondent’s Response to Interrogatory No. 12, 44 TTABVUE 204.
42 77 TTABVUE 25.
43 Ex. 20 to Shen Dep., pp. 122-24, 46 TTABVUE 232-36.
44 Ex. 18 to Shen Dep., pp. 114-26, 46 TTABVUE 206-17.
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Shen verbal permission to register the mark.45 In addition, Kihara, Petitioner’s
former CEO, testified that he too never authorized Shen or Respondent to register
the FUJIIRYOKI mark.46 Because Shen’s claim that he had permission to register
the mark is not credible, we find that Petitioner did not verbally grant Respondent
the right to register the FUJIIRYOKI mark.
Third, Respondent also claims that Shen was entitled to register the FUJIIRYOKI
mark because Petitioner had abandoned it.47 For support, Respondent points to the
2002 cancellation of Petitioner’s ’063 registration and the 1994 abandonment of
Petitioner’s ’483 application.48 This argument is patently flawed. It conflates
registration of a mark with use of a mark. “[A] trademark owner does not abandon
[its] rights in a mark by abandoning prosecution.” Australian Therapeutic, 2020
USPQ2d 10837, at *5 (citations omitted). More importantly, Respondent was actively
selling Petitioner’s FUJIIRYOKI-branded chairs in the U.S. from 2003 through at
least November 2005, when Shen filed the application. Any U.S. sales by Respondent
of Petitioner’s FUJIIRYOKI chairs inured to Petitioner’s benefit, not Shen’s or
Respondent’s. See Quality Candy Shoppes/Buddy Squirrel of Wis., Inc. v. Grande
Foods, 90 USPQ2d 1389, 1392 (TTAB 2007) (“[Y]ears of precedent make it very clear
that proper use of a mark by a trademark owner’s licensee or related company
constitutes ‘use’ of that mark attributable to the trademark owner.”). Respondent’s

45 Takatori Dep., pp. 41-42, 51 TTABVUE 42-43.
46 Kihara Dep., p. 84, 49 TTABVUE 85.
47 Respondent’s Br., p. 46, 85 TTABVUE 47.
48 Id.; see also Shen Decl., ¶ 11, 61 TTABVUE 4.
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argument that Petitioner abandoned its FUJIIRYOKI mark at the same time that
Respondent—as Petitioner’s exclusive U.S. distributor—was selling Petitioner’s
FUJIIRYOKI-branded chairs not only defies logic and the law, it strains credulity.
We find that Respondent has failed to establish that Petitioner had abandoned the
FUJIIRYOKI mark at the time that Shen filed the application.
In sum, we find that neither Shen nor Respondent was the owner of the
FUJIIRYOKI mark at the time Shen filed the application for registration.
Accordingly, we next consider whether statements and representations regarding
ownership of the FUJIIRYOKI mark made by Shen during the examination of the
application were false and material.
2. Shen’s false and material representations
Petitioner claims that Shen made false material representations in his application
for the mark, including:
(1) alleging he owned the FUJIIRYOKI mark and was not
aware of anyone else who had a claim to the mark;
(2) filing the application in his own name when his wife was
the owner of ACIGI; and
(3) submitting a specimen indicating that [Respondent]
was the manufacturer of FUJIIRYOKI chairs when [Shen]
admitted he did not manufacture massage chairs at that
time, and alleging use back to 2003.49
“[I]nformation is material when a reasonable examiner would consider it
important in deciding whether to allow the application to issue[.]” Symantec Corp. v.
Comput. Assocs. Int’l, Inc., 522 F.3d 1279, 86 USPQ2d 1449, 1460 (Fed. Cir. 2008). In

49 Petitioner’s Br., p. 5, 83 TTABVUE 6.
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light of the fact that neither Shen nor Respondent owned the FUJIIRYOKI mark at
the time the application was filed, Shen’s declaration that he owned the mark and
was not aware of anyone else who had a claim to the mark was both false and
material. 15 U.S.C. § 1051. Only the owner of a mark may apply for registration. See,
e.g., Lyons 123 USPQ2d at 1027; Great Seats, 84 USPQ2d at 1239). Had the
trademark examining attorney known Shen was not the owner, registration
appropriately should have been refused.
Moreover, a U.S. distributor for a foreign manufacturer may register a mark only
if the applicant submits one of the following:
(a) written consent from the owner of the mark to
registration in the applicant’s name, or
(b) written agreement or acknowledgment between the
parties that the importer or distributor is the owner of the
mark in the United States, or
(c) an assignment (or true copy) to the applicant of the
owner’s rights in the mark as to the United States together
with the business and good will appurtenant thereto.
TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) § 1201.06(a) (October 2018);
In re Pharmacia Inc., 2 USPQ2d 1883 (TTAB 1987). Shen submitted none of the
documents listed above. Thus, under these specific circumstances, had the trademark
examining attorney known that Shen was only a distributor (or the CEO of a
distributor), without permission or consent from Petitioner to register, registration
appropriately should have been refused. Id.
Shen’s filing of the use-based FUJIIRYOKI application in his own name also was
a false and material representation. As discussed above, neither Shen nor
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Respondent owned the mark when the application was filed. Even assuming,
arguendo, that Petitioner’s grant of an exclusive U.S. distributorship to Respondent
conveyed a right to register the mark (which it did not), that right would have been
held by Respondent, not Shen.50 Clearly, the record reflects that Shen himself was
never the exclusive U.S. distributor of Petitioner’s massage chairs, and thus had no
right to apply for the mark in his own name. Great Seats, 84 USPQ2d at 1239. The
president of a corporation may not file an application in their own name for a mark
owned by the corporation. See TMEP § 1201.02(c). If an application is filed in the
name of a party who had no basis for his or her assertion of ownership of (or
entitlement to use) the mark as of the filing date, the application is void, and
registration must be refused. 37 C.F.R. § 2.71(d); Lyons, 123 USPQ2d at 1027; Chien
Ming Huang v. Tzu Wei Chen Food Co., 849 F.2d 1458, 7 USPQ2d 1335, 1335-36 (Fed.
Cir. 1988). Simply put, ownership is material to deciding whether to allow an
application for registration. Symantec, 86 USPQ2d at 1460.
Petitioner further argues that Respondent submitted a specimen “indicating that
Registrant was the manufacturer of FUJIIRYOKI chairs when Registrant admitted
he did not manufacture massage chairs at that time[.]”51 The application as filed
included a specimen of use comprising the following photograph showing
FUJIIRYOKI massage chairs offered to consumers:52

50 46 TTABVUE 227.
51 Id.
52 Application of November 2, 2005 at TSDR 3-6.
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The photograph shows a FUJIIRYOKI chair on a red floor mat featuring the
FUJIIRYOKI mark. In the background, there is a large banner advertising the
displayed model of FUJIIRYOKI-branded massage chair. The FUJIIRYOKI mark
appears at the top of the banner as well. At the lower left portion of the banner, the
wording “ACIGI Relaxation” appears above the wording “Manufacturer and
Exclusive Distributor.” Shen admitted that his company, ACIGI Relaxation, did not
Cancellation No. 92062760
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manufacture the FUJIIRYOKI chair as implied by the banner in the photograph.53
As discussed above, TMEP § 1201.06(a) explains that mere distributors are not
entitled to registration and, should a distributor apply, a refusal under Section 1 of
the Trademark Act, 15 U.S.C. § 1051, must be made by the examining attorney.
Because the photograph states that Shen’s company, ACIGI Relaxation,
manufactured FUJIIRYOKI massage chairs—when it did not— this statement on the
specimen is both false and material.
In sum, we find that Shen made multiple false and material misrepresentations
in his application for registration. We next determine whether any of these
misrepresentations were intended to deceive the USPTO.
B. Intent to deceive the USPTO
“To succeed on a claim of fraudulent registration, the challenging party must
prove by clear and convincing evidence that the applicant made false statements with
the intent to deceive [the USPTO].” Bose, 91 USPQ2d at 1940 (quoting Meineke
Discount Muffler v. Jaynes, 999 F.2d 120, 126 (5th Cir. 1993)). The standard for
finding intent to deceive is stricter than the standard for negligence or gross
negligence, and evidence of deceptive intent must be clear and convincing. Id. As
emphasized in Bose:
Subjective intent to deceive, however difficult it may be to
prove, is an indispensable element in the analysis. Of
course, “because direct evidence of deceptive intent is
rarely available, such intent can be inferred from indirect

53 Shen Cross-Exam. Dep., pp. 84-89, 77 TTABVUE 85-90 (dodging the yes-or-no question of
whether Respondent was the manufacturer of FUJIIRYOKI chairs in 2005, and finally, after
many evasive answers, answering negatively only as to the model shown).
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and circumstantial evidence. But such evidence must still
be clear and convincing, and inferences drawn from lesser
evidence cannot satisfy the deceptive intent requirement.”
Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d
1357, 1366 [88 USPQ2d 1001] (Fed. Cir. 2008). When
drawing an inference of intent, “the involved conduct,
viewed in light of all the evidence . . . must indicate
sufficient culpability to require a finding of intent to
deceive.” [Kingsdown Med. Consultants, Ltd. v. Hollister
Inc., 863 F.2d 867, 876 (Fed. Cir. 1988) (en banc)].
Bose, 91 USPQ2d at 1941.
We therefore consider whether Shen’s false and material misrepresentations were
intended to deceive the USPTO; and we focus on Shen’s declaration inasmuch as his
ownership claim is the crux of the fraud issue before us.
1. Shen’s credibility
As an initial matter, we find that Shen’s testimony demonstrates his lack of
credibility. In order for testimony to be credible and probative, it “should not be
characterized by contradictions, inconsistencies, and indefiniteness but should carry
with it conviction of its accuracy and applicability.” B.R. Baker Co. v. Lebow Bros.,
150 F.2d 580, 66 USPQ 232, 236 (CCPA 1945); see also Cerveceria Centroamericana
v. Cerveceria India, Inc., 892 F.2d 1021, 13 USPQ2d 1307, 1312 (Fed. Cir. 1989) (the
testimony of the witness regarding use was afforded little weight because it was “to
say the least, vague.”); Nationstar, 112 USPQ2d at 1370 (“We are particularly struck
by applicant’s evasiveness and his failure to respond directly to straightforward
questions asked by opposer’s counsel.”). Shen’s testimony carries no conviction of its
accuracy and is grossly evasive, inconsistent, and self-serving.
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For example, when asked who owns Respondent, ACIGI, Shen was evasive. He
alternately implied that his wife owned Respondent, they shared it 50/50 because
they were married, and, finally, he simply wasn’t very sure who owned Respondent:54
Q And you personally do not own the ACIGI company, right?
A No, it’s not.
* * *
It’s my wife’s.
Q Your wife owns 100 percent of the ACIGI company?
A Husband and wife. 50/50.
Q You own 50 percent, and your wife owns 50 percent; is that right?
* * *
A Well, this is not the question. If you’re married, you know.
Q Let me -- let me ask this: Who actually owns the stock or the
membership interest in the ACIGI company?
* * *
A That I’m not very sure. Because I’ve never really cared about that.
Mainly my wish to see how I can do my best to promote this
product. I didn’t really had [sic] known anything else.
To be clear, Shen is the CEO of Respondent, ACIGI, and has been since its
founding in 2002.55 Shen’s testimony that he is “not very sure” who owns the stock of
the company is not only contradictory, inconsistent, and indefinite, it is simply not
credible. See Nationstar, 112 USPQ2d at 1370 (lack of credibility found where the
applicant was “the owner and president of NationStar Mortgage, Inc., yet he claimed
to not know whether that business earned any income.”).

54 77 TTABVUE 145-46. Objections omitted.
55 Shen Decl. ¶ 2, 61 TTABVUE 2.
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Similarly, when discussing a later 2009 agreement between the parties, Shen, in
his testimony declaration, stated that in the agreement,
[T]he parties entered into a written agreement wherein the
parties agreed ACIGI would retain ownership of the
trademark FUJIIRYOKI for massage chairs. The
November 21, 2009 agreement in paragraph 5 states, “Fuji
Medical Instrument Mfg. Ltd. agrees ACIGI to own the
‘Fujiiryoki’ trademark”, and which confirms in writing the
validity of the mark and ACIGI’s ownership of the
FUJIIRYOKI mark for massage chairs in the US.56
But Shen’s declaration, made under oath, conspicuously omits that paragraph 5
was amended prior to signature to reflect a temporary business arrangement by the
parties to avoid further conflict over ownership. The wording “in the U.S.A. for the
time being” was hand-written at the end of paragraph 5 of the 2009 agreement by
Petitioner’s representative prior to signing by the parties. The complete paragraph
reads: “Fuji Medical Instrument Mfg. Ltd. agrees ACIGI to own the ‘Fujiiryoki’
trademark in the U.S.A. for the time being.” Shen’s declaration thus fundamentally
misrepresents the nature of the agreement.
Shen claimed he did not understand the meaning of “for the time being” because
his “level of English is limited[.]”57 However, he later testified that he “read[s] English
very well.”58 Shen’s declaration grossly misstated the terms of the 2009 agreement
and its significance. Although this 2009 agreement is not relevant to Shen’s claim of

56 Id at ¶ 5, 61 TTABVUE 3.
57 Shen Dep., p. 166, 46 TTABVUE 311.
58 Shen Cross-Exam Dep., p. 12, 77 TTABVUE 13.
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ownership at the time the application was filed in 2005, Shen’s misrepresentations
about it undermine his credibility in these proceedings.
Further, as discussed above, Shen put forth multiple unsupported theories
explaining why he was entitled to register the FUJIIRYOKI mark. For example, Shen
said he was given written permission to register the mark, but was unable to produce
any written evidence; he said he was given verbal permission to register the mark,
but was contradicted by two of Petitioner’s witnesses; and he said Petitioner had
abandoned the mark, even though Respondent was actively selling Petitioner’s goods
on Petitioner’s behalf at the time Shen filed the FUJIIRYOKI trademark application.
Such contradictions, inconsistencies, and indefiniteness diminish the overall
credibility of Shen’s testimony. Accordingly, we find Shen’s testimony is entitled to
little weight. B.R. Baker v. Lebow Bros., 66 USPQ at 236; Nationstar, 112 USPQ2d
at 1370-73 (Applicant’s evasiveness and failure to respond directly to straightforward
questions led the Board to find “applicant’s testimony not at all credible.”).
2. Shen’s declaration
“The benefits of registration are substantial,” B&B Hardware, Inc. v. Hargis
Indus., Inc., 575 U.S. 138, 113 USPQ2d 2045, 2056 (2015), and one obligation the
Lanham Act imposes on an applicant is that he not make knowingly inaccurate or
misleading statements in the verified declaration forming a part of the application
for registration. Bart Schwartz Int’l Textiles, Ltd. v. Fed. Trade Comm’n, 289 F.2d
665, 129 USPQ 258, 260 (CCPA 1961).
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Shen’s declaration in support of his application included the required statement
that:
[H]e/she believes the applicant to be the owner of the
trademark/service mark sought to be registered . . . ; to the
best of his/her knowledge and belief no other person, firm,
corporation, or association has the right to use the mark in
commerce, either in the identical form thereof or in such
near resemblance thereto as to be likely, when used on or
in connection with the goods/services of such other person,
to cause confusion, or to cause mistake, or to deceive; and
that all statements made of his/her own knowledge are
true; and that all statements made on information and
belief are believed to be true.59
The fact that Respondent’s attorney signed the above declaration does not relieve
Shen of his duty to state the truth. See Smith Int’l v. Olin Corp., 209 USPQ at 1047
(“Even if the affidavit was prepared by its attorney, Smith must be held accountable
for any false or misleading statements made therein.”).
The evidence of record—both direct and circumstantial—establishes that Shen
knew the above declaration was filed in his name, that he was not the owner of the
FUJIIRYOKI mark, and that Petitioner actually owned the mark. The following
evidence from the six-month period before Shen filed the application demonstrates
that Shen knew that neither he nor Respondent owned the mark when Shen filed the
FUJIIRYOKI application on November 2, 2005.

59 Application of November 2, 2005; see 15 U.S.C. § 1051; 37 C.F.R. § 2.33.
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a. The April 15, 2005 email
On April 15, 2005, at Shen’s request, ACIGI’s attorney sent an email to Takatori,
then Petitioner’s overseas manager, asking for authorization to use the FUJIIRYOKI
mark to promote the massage chairs. The email stated:60
ACIGI would like to have a written authorization from you
for ACIGI [to] use Fujiiryo [sic] trademark to promote the
message [sic] chair products and written notice from you
that ACIGI is an authorized dealer of Fujiiryo.
We believe this would further enhance the mutual
beneficial relationship and the marketing efforts that
ACIGI has invested in promoting Fujiiryo products.
Shen and Daiwa, Petitioner’s overseas trading company, were copied on the email.
Inasmuch as Respondent was asking Petitioner for permission to use the
FUJIIRYOKI mark in the U.S. to promote Petitioner’s goods as its authorized
distributor, Respondent’s email is an admission that neither Respondent nor Shen
were the owners of the FUJIIRYOKI mark or were entitled to register the mark in
the U.S.
b. The April 21, 2005 email
On April 21, 2005, Daiwa sent an email to Shen on behalf of Petitioner explaining
limitations on Respondent’s use of the FUJIIRYOKI mark.61 Respondent had been
using FUJIIRYOKI USA on its website and elsewhere. Daiwa and Petitioner
expressed concern that Respondent’s use of FUJIIRYOKI USA could create the false
impression that Petitioner had opened a U.S. company under that name, when in fact

60 Shen Dep. Exhibit 66 (47 TTABVUE 251-53). The same attorney filed the application on
behalf of Shen.
61 Ex. 20 to Shen Dep., pp. 122-24, 46 TTABVUE 232-36.
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Respondent was only a distributor. Shen was told he could use the FUJIIRYOKI
mark, but could never use FUJIIRYOKI USA. He also was instructed to remove
FUJIIRYOKI USA from his website. The email does not give Shen or Respondent
either the right to register the FUJIIRYOKI mark or any ownership rights in the
mark. Instead, the letter limits the ways in which Respondent could use the
FUJIIRYOKI mark and contradicts any ownership claim by Shen or Respondent.
c. The CES (Consumer Electronics Show) email
In an email dated September 8, 2005, a mere two months before Shen filed the
application, Shen asked Takatori for Petitioner’s authorization to put the
FUJIIRYOKI mark on gifts and t-shirts for the 2006 CES trade show in Las Vegas:
We have talked to some merchandise gift distributors to
supply us 5000 to 10,000 small gifts. We want to know if
we can print your company name, Fujiiryoki on the
gifts. We are going to print T-shirts with Fujiiryoki
company name for sales to wear at tradeshows. Those
products with Fujiiryoki logo names will be done in China
and we are asking for your authorization to so.62
Clearly, if Shen or Respondent owned the FUJIIRYOKI mark in the U.S., they
would not need authorization to use the mark on small gifts or on T-shirts worn by
employees. Shen stated that he only asked for authorization as “a favor to the
factory,”63 but later testified that he asked for authorization because “It’s just respect.
. . . We need to make a uniform. And I want to let them know what we’re doing. It

62 Shen Dep., 137-42, Ex. 21, 46 TTABVUE 238-46 (emphasis added).
63 Id. at p. 140. 46 TTABVUE 241.
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was just friendly. . . . He [Takatori] didn’t care. That’s me showing him respect by
just asking him.”64
Given Shen’s lack of credibility and ever-changing rationales for his justification
in registering the FUJIIRYOKI mark, we find his testimony regarding the CES trade
show is not credible. Shen’s request for authorization to use the FUJIIRYOKI mark
on gifts and clothing is an admission that neither he nor Respondent were the owners
of the FUJIIRYOKI mark or were entitled to register the mark in the U.S. In other
words, this email from Shen requesting authorization from Petitioner to use the mark
directly contradicts Shen’s declaration that he “believes [himself] to be the owner of
the trademark/service mark sought to be registered [and] to the best of his/her
knowledge and belief no other person, firm, corporation, or association has the right
to use the mark in commerce.”
We find that the foregoing emails exchanged between the parties in the months
leading up to Shen’s filing of the FUJIIRYOKI trademark application establish Shen
knew that both he and Respondent needed authorization from Petitioner to use the
FUJIIRYOKI mark. That is, a mere two months before filing the application, Shen
was asking for permission to use the mark. This means that Shen knew neither he
nor Respondent owned it. Moreover, there is no evidence that Shen directly asked for
or received authorization to register the mark after any of these emails. Both Takatori
and Kihara testified that Petitioner never gave Shen or Respondent written or verbal
authorization to register the mark.

64 Shen Cross-Exam Dep., p. 94, 77 TTABVUE 95.
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This is not a case where “a false misrepresentation is occasioned by an honest
misunderstanding or inadvertence without a willful intent to deceive.” In re Bose, 91
USPQ2d at 1942. Petitioner’s witnesses testified that Shen did not tell Petitioner that
he was filing the trademark application. In fact, Kihara and Takatori testified that
Petitioner did not know until 2008 that Respondent had registered the mark.65 Shen’s
silence on the matter evidences intent to conceal from Petitioner the fact that he
registered the mark and demonstrates that Shen both knew he was not the owner of
the mark when he filed the FUJIIRYOKI trademark application and had an intent
to deceive the Office into granting a registration to which he knew he was not entitled.
Accordingly, Shen’s statement in the application—that he believed himself to be the
owner of the mark sought to be registered and that no one else had the right to use
the mark in commerce—was a knowingly false statement made with the intent to
deceive the USPTO.
Respondent nevertheless argues in its brief that Shen was justified in filing the
application: “prompted by [Petitioner’s] abandonment and lack of interest in a
trademark, trade show criteria requiring trademark registration, and distributor
agreements Registrant entered into with third parties, Dr. Shen found it necessary
to obtain a trademark registration for FUJIIRYOKI in the U.S.”66 That is, Shen
registered the mark simply because he needed the registration. In explaining his
rationale for registering the FUJIIRYOKI mark, Shen stated:

65 Kihara Dep., p. 83, 49 TTABVUE 84; Takatori Dep., p. 40, 51 TTABVUE 41.
66 Respondent’s Br., p. 33, 85 TTABVUE 34.
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First of all, his -- the trademark was abandoned. And
also in ’03 and ’05 there are so many legal issues that had
arisen. And thirdly, we had spent just too much money in
advertising and with this trademark and also doing the
[trade] shows and also to develop distributors.
And when all of those chairs were not working, we were
the one who had to repair all of them. So I believe that, if
you were standing in my position and looking at my
perspective, then you’d know what I had to do.67
Respondent further justifies its ownership of the mark because “Petitioner was
‘naïve when it [came] to [trademarks]’” and “did not grasp the importance or concept
of trademarks or monitor trademarks in the U.S.”68
We find that Respondent’s arguments regarding Petitioner’s attitude toward
trademarks buttresses Petitioner’s case, not Respondent’s. In other words,
Respondent’s arguments make it clear that Shen (i) understood the fundamental
problem with Respondent’s relationship with Petitioner (i.e., Respondent was
spending time and money building the brand in the U.S., but could be replaced with
another distributor), (ii) thought he needed the trademark to protect his investment
made in building the FUJIIRYOKI brand in the U.S., and (iii) was willing to take
advantage of Petitioner’s inexperience to do so. Regardless of the stated justification,
neither the perceived need for a registered trademark nor Petitioner’s naiveté
permitted Respondent to take what it was not entitled to and did not own, namely
Petitioner’s FUJIIRYOKI mark. Respondent’s recourse was a better distributorship
agreement, not a fraudulently obtained registration.

67 Shen Cross-Exam. Dep., pp. 25-26, 77 TTABVUE 26-27.
68 Id. at 34, 85 TTABVUE 35.
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We find that the above emails provide “clear and convincing” evidence that Shen
intended to deceive the USPTO by claiming that he owned the FUJIIRYOKI mark
when, in fact, he did not, and he knew that he did not. Smith Int’l v. Olin Corp., 209
USPQ at 1044. Indeed, the record of Shen’s conduct, his grossly evasive testimony,
and his self-serving claims, taken as a whole, establish he intended to deceive the
USPTO.69
VII. Conclusion
Petitioner has established that Shen’s false and material claim of ownership of
the mark and declaration that no other entity had the right to use the mark in
commerce were made knowingly and with intent to deceive the USPTO. Bose, 91
USPQ2d at 1939.
VIII. Decision
The Amended Petition to Cancel is granted on the ground of fraud. Registration
No. 3201055 will be cancelled in due course.

69 Because we have found Shen intended to deceive the USPTO by filing a false claim of
ownership of the FUJIIRYOKI mark, we need not reach Petitioner’s remaining arguments
regarding Shen’s other false material representations. See Multisorb Techs., Inc. v. Pactiv
Corp., 109 USPQ2d 1170, 1171 (TTAB 2013) (“[T]he Board . . . generally use[s] its discretion
to decide only those claims necessary to enter judgment and dispose of the case. . . . More
specifically, the Board’s determination of registrability does not require, in every instance,
decision on every pleaded claim.”).