G&W Laboratories, Inc.v.G W Pharma Limited

Trademark Trial and Appeal Board

Jan 29, 2009

No. 91169571 (T.T.A.B. Jan. 29, 2009)

Faint Mailed: January 29, 2009

Opposition No. 91169571

G&W Laboratories, Inc.

v.

G W Pharma Limited

Before Hairston, Holtzman and Mermelstein,
Administrative Trademark Judges.

By the Board:

Opposer G&W Laboratories, Inc. (hereinafter “Labs”)
owns two trademark registrations: G&W in typed form1 and the
following mark,2

both for “suppositories; tablets, namely, laxative tablets
and anti-diarrheal tablets; pharmaceutical preparations in
topical semi-liquid dosage forms, namely, topical
dermatological creams and ointments; liquid-containing pads
for treating hemorrhoid-related conditions and for cleansing
the rectal and vaginal areas” in Class 5; and

1 Registration No. 2577687, registered June 11, 2002 with dates
of first use anywhere and first use in commerce of 1919.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS OPINION IS A
PRECEDENT OF THE TTAB
Opposition No. 91169571
2
“distributorships in the field of suppositories and
pharmaceutical preparations in the forms of tablets, topical
semi-solid dosages, namely, topical creams and ointments,
and liquid-containing pads to drug wholesalers, healthcare
providers, managed care organizations and retail pharmacy
services and retail grocery stores” in Class 35.
Following commencement of this opposition on the ground
of priority and likelihood of confusion, applicant GW Pharma
Limited (hereinafter “Pharma”) filed counterclaims to cancel
these registrations in their entireties on the ground of
fraud, alleging that Labs had not rendered the Class 35
services in the registrations on behalf of others and had
not used the marks in commerce for those services. Pharma
did not allege that Labs committed fraud in connection with
the goods in Class 5.
On May 22, 2008, Labs filed a motion which we construe
as one to dismiss the counterclaims against Class 35 as
moot, and to dismiss the counterclaims against Class 5 for
failure to state a claim. The motion has been fully
briefed.
As background for the motion, on April 7, 2008, during
the course of this proceeding, and after assertion of
Pharma’s counterclaims, Labs made its required filings under

2 Registration No. 2606786, registered August 13, 2002 with dates
of first use anywhere and first use in commerce of 1981.

Opposition No. 91169571
3
Trademark Act Section 8 with respect to each of the
registrations subject to Pharma’s counterclaims. By its
Section 8 filings, Labs deleted Class 35 from its
registrations, stating “[t]his entire class is to be deleted
from the registration.” (Emphasis in original).
Labs argues that Pharma’s counterclaims for
cancellation were based on a single contention, namely, that
Labs fraudulently obtained its registrations as to the
recited Class 35 services, and not as to the goods in Class
5. Because such services have now been deleted from the
registration, Labs argues that the counterclaims should be
dismissed as moot.
In opposition to the motion, Pharma argues that
deletion of the class of services during maintenance of the
registrations does not cure fraud. Pharma moreover argues
that if fraud is shown as to Labs’ Class 35 services, the
registration must be cancelled in its entirety. Pharma
relies on Medinol Ltd. v. Neuro Vasx Inc., 67 USPQ2d 1205,
1208 (TTAB 2003) which provides,
[D]eletion of the goods upon which the mark has
not yet been used does not remedy an alleged
fraud upon the Office. If fraud can be shown in
the procurement of a registration, the entire
resulting registration is void.

(Citation omitted).
In reply, Labs admits that it does not and never has
used the marks in connection with the services listed in
Opposition No. 91169571
4
Class 35, but contends that any claim of fraud directed to
its now deleted Class 35 services cannot be “bootstrapped to
the remaining class of goods in the registrations.”
Labs' motion to dismiss the counterclaims as moot with
respect to Class 35 of the registrations is denied. Pharma
is correct that the fraud claim is not rendered moot by the
deletion of services through a Section 8 filing. It is
settled that fraud cannot be cured merely by deleting from
the registration 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. Turbo Sportswear v.
Marmot Mountain Ltd., 77 USPQ2d 1152, 1155 (TTAB 2005). See
also Medinol, 67 USPQ2d at 1208.
However, Labs' motion to dismiss the counterclaims as
to Class 5 for failure to state a claim is well taken.
Pharma's contention that fraud as to one class of a multiple
class registration subjects the entire registration to
cancellation is incorrect. The line of cases to have
considered fraud since Medinol has involved single class
applications or registrations. These cases have
consistently held that fraud as to any goods or services in
a single class will lead to a finding that the application
or registration is void in the class in which fraud has been
committed. See, e.g., Herbaceuticals Inc. v. Xel
Herbaceuticals, 86 USPQ2d 1572, 1577 (TTAB 2008) (fraud
Opposition No. 91169571
5
found as to four of six single class registrations);
Hachette Filipacchi Presse v. Elle Belle LLC, 85 USPQ2d
1090, 1095 (TTAB 2007) (fraud found in single class
registration); Sinclair Oil Corp. v. Kendrick, 85 USPQ2d
1032, 1037 (TTAB 2007) (fraud found as to services in single
class application even after allowance of amendment of
application to one based on intent to use); Hurley Int’l LLC
v. Volta, 82 USPQ2d 1339, 1344 (TTAB 2007) (fraud found as
to non-use for services in single class registration);
Standard Knitting Ltd. v. Toyota Jidosha Kabushiki Kaisha,
77 USPQ2d 1917, 1928 (TTAB 2006) (counterclaim petition for
cancellation of petitioner's pleaded registrations granted
when fraud found as to some goods identified in single class
registrations). However, we have not had occasion to
consider whether fraud in less than all classes of a
multiple-class registration will subject the entire
registration to cancellation for fraud.
An applicant for a trademark registration may file for
registration in more than one class by filing a single
application. See Trademark Rule 2.86. Such an application
requires, for each class, payment of the application filing
fee and submission of dates of use and a specimen of use for
each class before the application will proceed to
registration. Id. Thus, a multiple-class application can
be viewed as a series of applications for registration of a
Opposition No. 91169571
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mark in connection with goods or services in each class,
combined into one application. As a general matter, the
filer of such an application is in the same position it
would be had it filed several single-class applications
instead. See, e.g., Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 1101-02, 192 USPQ 24, 28 (CCPA
1976) (noting combined application is regarded as though it
were group of individual applications); In re Bonni Keller
Collections Ltd., 6 USPQ2d 1224, 1226 (TTAB 1987)(noting
multiple-class application for goods and services is
essentially two separate applications combined for
convenience of applicant and USPTO); Electro-Coatings, Inc.
v. Precision National Corp., 204 USPQ 410, 420 (TTAB
1979)(“there are, in law, three applications and three
oppositions to be adjudicated, because each class in a
multiple class application constitutes a separate case.”).
In view thereof, we find 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 of fraud as to one class does not in itself
Opposition No. 91169571
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require cancellation of all classes in a registration.3
Accordingly, the counterclaims to cancel Class 5 fail
to state a valid basis for cancellation, and the motion to
dismiss the counterclaims as to that class is granted.
As we noted, Pharma's counterclaims to cancel the
registrations as to Class 35 are not moot. In a
cancellation proceeding against a registration having
multiple classes, the respondent’s request in a Section 8
affidavit to delete a class that is subject to cancellation
is governed by Trademark Rule 2.134(a). Trademark Rule
2.134(a) provides that after the commencement of a
cancellation proceeding, if the respondent applies for
cancellation of the involved registration under Section 7(e)
of the Act without the written consent of every adverse
party to the proceeding, judgment shall be entered against
the respondent. The request to delete a class of goods or
services sought to be cancelled is, in effect, a voluntary
cancellation of the registration as to that class under

3 As a practical matter, holding otherwise would simply provide
an incentive against the filing of multiple-class applications.
For example, had Labs instead sought and obtained two separate
registrations – one in Class 5 and one in Class 35, its Class 5
registration would effectively be insulated from a claim of
fraud, even if we held that fraud as to one class taints other
classes in the same registration. We see no justification for
treating applications or registrations differently based solely
on whether the applicant originally sought single-class
registrations or a single, multiple-class one.

Opposition No. 91169571
8
Section 7(e) of the Trademark Act. See TBMP § 602.02(a) (2d
ed. rev. 2004).
With regard to its services in Class 35, Labs has
stated that it deleted those services from each of its
registrations when it filed its Section 8 affidavits in
connection with the registrations, and provided copies of
the relevant Section 8 affidavits. Labs’ failure to file
affidavits of continued use with respect to its Class 35
services and its explicit request to delete such services
from its registrations – resulting in cancellation of that
class – fit squarely within the ambit of Trademark Rule
2.134(a). In view thereof, and because Pharma's written
consent to Labs’ voluntary cancellations is not of record,
judgment is hereby entered against Labs.
In sum, judgment on the counterclaims as to the
services in Class 35 in Registration Nos. 2577687 and
2606786 is hereby entered. The counterclaims as to Class 5
in Registration Nos. 2577687 and 2606786 are dismissed.4
The opposition proceeding is resumed. Dates are reset
as set out below.
DISCOVERY PERIOD TO CLOSE: CLOSED

30-day testimony period for party in
position of plaintiff to close: CLOSED

4 In view of our decision herein, Pharma’s contested motion to
compel discovery on the counterclaims is denied as moot.

Opposition No. 91169571
9
30-day testimony period for party in
position of defendant to close: March 19, 2009

15-day rebuttal testimony period for
plaintiff to close: May 3, 2009

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.l28(a) and (b). An oral hearing will be set only
upon request filed as provided by Trademark Rule 2.l29.
***