Hachette Filipacchi Pressev.Elle Belle, LLC

Trademark Trial and Appeal Board

Apr 9, 2007

No. 92042991 (T.T.A.B. Apr. 9, 2007)

alinnehan Mailed: April 9, 2007

Cancellation No. 92042991

Hachette Filipacchi Presse

v.

Elle Belle, LLC

Before Walters, Rogers, and Cataldo,
Administrative Trademark Judges

By the Board:

On March 15, 2000, Elle Belle LLC ("respondent") filed
an application for registration of the mark ELLE BELLE in
standard character form for the following goods in
International Class 25:
Clothing articles for men, women and
children, namely, shirts, blouses, dresses,
evening wear, skirts, trousers, vests, jerseys,
pants, pajamas, t-shirts, socks and stockings,
singlets, corsets, garters, underpants,
petticoats, hats, head scarves, neckties,
raincoats, overcoats, great coats, bathing suits,
sports overalls, wind resistant jackets and ski
pants.

The application was filed based on Trademark Act
Section 1(a), reciting October 1995 as the date of first use
and date of first use in commerce. The following statement
preceded the identification of goods: “… applicant has
adopted and is using the trademark shown in the accompanying
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 T.T.A.B.
Cancellation No. 92042991
2
drawing on ….” The application was accompanied by a signed
declaration attesting to the truth of the statements made in
the application.
On December 10, 2002, the application matured into
Registration No. 2657739.
On February 27, 2004, Hachette Filipacchi Presse
("petitioner") filed a petition to cancel respondent's
registration on the grounds of likelihood of confusion with
petitioner's pleaded registrations, dilution, and fraud. In
its answer, respondent denied the salient allegations of the
petition to cancel.
This case now comes up for consideration of
petitioner's motion (filed April 26, 2006) for summary
judgment in its favor on petitioner's claim of fraud. The
motion has been fully briefed.
As an initial matter, respondent has admitted in its
responses to petitioner’s first request for admissions that
petitioner owns, uses, and has not abandoned its pleaded
marks. Thus, petitioner’s standing, that is, its real
interest in this proceeding, has been established. See
Lipton Industries Inc. v. Ralston Purina Co., 670 F.2d 1024,
213 USPQ 185 (CCPA 1982).
In support of its motion for summary judgment,
petitioner argues that respondent committed fraud in
procuring the subject registration for its involved
Cancellation No. 92042991
3
mark. Petitioner asserts that respondent, at the time
it filed its involved application, knew that it was not
using its mark in commerce in connection with a
majority of the goods identified in the application.
Specifically, petitioner contends that respondent has
admitted in its responses to petitioner’s first set of
interrogatories that its use of the ELLE BELLE mark is
limited to use “in association with the wholesale and
retail sale of women’s clothing and accessories” and
that respondent’s president corroborated this admission
by testifying under oath in his discovery deposition
that respondent had never used its mark on any men’s or
children’s clothing and had not used its mark on over
one-half of the twenty-three items of women’s clothing
it identified in its application.
Because an applicant must use its mark on all of
the goods listed in its application in order to obtain
a registration, petitioner argues that respondent’s
misrepresentations in its application were material to
the USPTO's decision to issue the registration and that
the USPTO would not have issued a registration for the
ELLE BELLE mark but for respondent’s
misrepresentations; that respondent knew at the time it
filed its application that the accompanying declaration
was false; and that, accordingly, respondent’s
Cancellation No. 92042991
4
registration should be cancelled on the ground of
fraud.
As evidentiary support for its motion, petitioner
has submitted, inter alia, the following:
(1) petitioner’s first request for admissions; (2)
respondent’s responses to petitioner’s first request
for admissions; (3) the February 23, 2005 declaration
and accompanying exhibits of Fabienne Sultan, the IP
Vice Manager for petitioner, filed in Opposition No.
91160096 involving opposer and a third party; (4)
certain excerpts of the August 15, 2005 deposition of
Parajmit Singh, respondent’s president, and
accompanying deposition exhibits including a copy of
the application respondent submitted for its mark, a
copy of the certificate of registration issued by the
USPTO for respondent’s mark, excerpts from respondent’s
website, and respondent’s responses to petitioner’s
first set of interrogatories.
In response to the motion, respondent contends that
it did not commit fraud. Respondent explains that in
February 2000 it obtained counsel to prepare a trademark
application for its mark ELLE BELLE and that in discussing
the details of the application, respondent’s president,
Parajmit Singh, informed respondent’s attorney that it was
using its mark “in connection with women’s clothing,
Cancellation No. 92042991
5
including shirts, blouses, dresses, evening wear, skirts,
jerseys, pants, corsets, and head scarves, and would likely
also use it in the future in connection with men’s and
children’s clothing, and additional women’s clothing,
including trousers, vests, pajamas, t-shirts, socks and
stockings, singlets, garters, underpants, petticoats, hats,
neckties, raincoats, overcoats, great coats, bathing suits,
sport overalls, wind resistant jackets and ski pants.”
Respondent contends that following such conversation,
respondent’s attorney, having misunderstood part of his
discussion with Mr. Singh, prepared an application
representing that respondent was currently using its mark on
all the goods listed in the application. Such list,
however, included those goods in connection with which Mr.
Singh had told the attorney that respondent only had an
intent to use the mark. Respondent further explains that
its attorney did not personally review the application with
respondent before respondent’s president signed the
application. Respondent asserts that it was unaware that
the application indicated that respondent was at that time
using its mark in connection with items for which respondent
only intended to use its mark in the future; that Mr. Singh
is an immigrant whose primary language is Punjabi, and not
English; that Mr. Singh has difficulty comprehending legal
documents like the subject trademark application, which are
Cancellation No. 92042991
6
difficult to comprehend even for native English speakers;
that Mr. Singh was unaware that a trademark application
“could only list those items that are being sold at that
time under the applicant’s mark;” that Mr. Singh’s confusion
and lack of knowledge was evident during his deposition
where he readily stated that respondent had not used its
mark on certain of the identified goods in the application;
and that ”throughout this cancellation proceeding” Mr. Singh
has had difficulties communicating with his attorneys due to
his lack of fluency in the English language. Respondent
argues that petitioner has failed to provide any evidence
that respondent would not have been granted a registration
for its ELLE BELLE mark but for the alleged
misrepresentation and that Mr. Singh’s actions do not
constitute fraud because the registration would have issued
even if the application had “only listed the limited
description of women’s clothing.”
In evidentiary support of its response, respondent
has submitted: (1) certain excerpts from the August 15,
2005 discovery deposition of Parajmit Singh; (2) an
affidavit of Parajmit Singh; and (3) an affidavit of Hui Ri
Kim, counsel for respondent.
In its reply brief, petitioner argues that
respondent’s contention that its president did not
understand what he was signing when he signed the
Cancellation No. 92042991
7
application declaration and did not have actual or specific
knowledge that his declaration was false is unpersuasive,
especially given that respondent was represented by legal
counsel. Further, petitioner contends that respondent’s
claim that its president did not understand “the simple and
straightforward language contained in the declaration” is
unreasonable given that Mr. Singh is a U.S. citizen who has
resided in the United States since 1984; studied English at
one point in his life; took English classes when he moved to
the United States; and has been in the retail fashion
industry since coming to the United States and starting Elle
Belle, Inc. Moreover, petitioner asserts that respondent
was obligated to confirm the truth and accuracy of the
statements contained in the subject trademark application
prior to its submission to the USPTO and that any
misunderstanding on the part of respondent’s counsel when
preparing the application and declaration should not
preclude a finding of fraud.
Summary judgment is an appropriate method of
disposing of cases in which there are no genuine issues of
material fact in dispute, thus leaving the case to be
resolved as a matter of law. See Fed. R. Civ. P. 56(c). A
party moving for summary judgment has the burden of
demonstrating the absence of any genuine issue of material
fact, and that it is entitled to summary judgment as a
Cancellation No. 92042991
8
matter of law. See Celotex Corp. v. Catrett, 477 U.S. 317
(1986), and Sweats Fashions Inc. v. Pannill Knitting Co.
Inc., 833 F.2d 1560, 4 USPQ2d 1793 (Fed. Cir. 1987). When
the moving party's motion is supported by evidence
sufficient to indicate that there is no genuine issue of
material fact, and that the moving party is entitled to
judgment, the burden shifts to the nonmoving party to
demonstrate the existence of specific genuinely-disputed
facts that must be resolved at trial.
The nonmoving party may not rest on the mere
allegations of its pleadings and assertions of counsel, but
must designate specific portions of the record or produce
additional evidence showing the existence of a genuine issue
of material fact for trial. In general, to establish the
existence of disputed facts requiring trial, the nonmoving
party "must point to an evidentiary conflict created on the
record at least by a counterstatement of facts set forth in
detail in an affidavit by a knowledgeable affiant." Octocom
Systems Inc. v. Houston Computer Services Inc., 918 F.2d
937, 940, 16 USPQ2d 1783, 1786 (Fed. Cir. 1990), citing
Barmag Barmer Maschinenfabrik AG v. Murata Machinery, Ltd.,
731 F.2d 831, 836, 221 USPQ 561, 564 (Fed. Cir. 1984). A
dispute as to a material fact is genuine only if a
reasonable fact finder viewing the entire record could
resolve the dispute in favor of the nonmoving party. See
Cancellation No. 92042991
9
Olde Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22
USPQ2d 1542, 1544 (Fed. Cir. 1992). Finally, in deciding a
motion for summary judgment, the Board must view the
evidence in the light most favorable to the nonmovant, and
must draw all reasonable inferences from underlying facts in
favor of the nonmovant. Id.
Based on the record now before us and for the reasons
discussed below, we conclude that summary judgment is
appropriate because petitioner has established that there
are no genuine issues of material fact remaining for trial
with regard to its claim of fraud, and that it is entitled
to a judgment on this ground.
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. See Torres v. Cantine Torresella
S.r.l., 808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir. 1986). A
party making a fraud claim is under a heavy burden because
fraud must be proved by clear and convincing evidence,
leaving nothing to speculation, conjecture, or surmise. Any
doubt must be resolved against the party making the claim.
See Smith International, Inc. v. Olin Corporation, 209 USPQ
1033 (TTAB 1981).
There is no dispute and, in fact, respondent admitted
that it had not used its mark in connection with a
Cancellation No. 92042991
10
significant number of the listed goods at the time it filed
an application based on use in commerce which included a
signed declaration attesting to the truth of all the
statements in that application. Respondent’s responses to
petitioner’s discovery requests indicate that respondent is
not using the mark on any men’s or children’s clothing, nor
is it using it on more than half of the women's clothing
items listed. Mr. Singh specifically testified in his
August 15, 2005 discovery deposition that his corporation is
not using the mark on trousers, vests, pajamas, t-shirts,
socks, stockings, singlets, underpants, hats, neckties,
raincoats, overcoats, great coats, bathing suits, sports
overalls, wind resistant jackets, and ski pants, all of
which were listed in the application.
Statements regarding the use of the mark on goods and
services are certainly material to issuance of a
registration covering such goods and services. First
International Services Corp. v. Chuckles Inc., 5 USPQ2d 1628
(TTAB 1988) ("We find that applicant committed fraud in its
statement regarding the use of the mark on goods for which
it only intended to use the mark. There is no question that
this statement was material to the approval of the
application by the Examining Attorney.") See also Standard
Knitting, Ltd. v. Toyota Jidosha Kabushiki Kaisha, 77 USPQ2d
1917 (TTAB 2006) (applicant's counterclaim petition to
Cancellation No. 92042991
11
cancel granted because of fraud by opposer in procuring its
pleaded registrations, specifically, fraud found because of
misrepresentations regarding extent of use of the marks on
the goods identified in the applications which resulted in
issuance of opposer's pleaded registrations); General Car
and Truck Leasing Systems Inc. v. General Rent-A-Car Inc.,
17 USPQ2d 1398 (S.D. Fla. 1990), aff’g General Rent-A-Car
Inc. v. General Leaseways, Inc., Canc. No. 14,870 (TTAB May
2, 1988).
The facts herein are analogous to those in Medinol
Ltd. v. Neuro Vasx Inc., 67 USPQ2d 1205 (TTAB 2006). In
Medinol, a trademark application was filed and, following
applicant’s submission of a statement of use, a registration
issued for “medical devices, namely, neurological stents and
catheters.” In response to a petition for cancellation,
registrant admitted in its answer that the mark was not used
on stents. The Board stated the following:
The fraud alleged by petitioner is that
respondent knowingly made a material
representation to the USPTO in order to obtain
registration of its trademark for the identified
goods. There is no question that the statement
of use would not have been accepted nor would
registration have issued but for respondent’s
misrepresentation, since the USPTO will not
issue a registration covering goods upon which
the mark has not been used. (citations
omitted).

67 USPQ at 1208 (citations omitted).
Cancellation No. 92042991
12
Similarly, in this case there is no question that the
application for registration under Section 1(a) of the
Trademark Act would have been refused but for respondent’s
misrepresentation regarding its use of its mark on all the
identified goods in the application. Respondent’s
contention that a registration would have issued nonetheless
if the application listed only the limited description of
women’s clothing is irrelevant to our discussion. In this
instance, the law is clear that an applicant may not claim a
Section 1(a) filing basis unless the mark was in use in
commerce on or in connection with all the goods or services
covered by the Section 1(a) basis as of the application
filing date. 37 C.F.R. Section 2.34(a)(1)(i). See, e.g.,
First International Services Corp., supra, 5 USPQ2d at 1636.
Respondent signed the oath at the conclusion of the
application under penalty of “fine or imprisonment, or
both…that…willful false statements may jeopardize the
validity of the application or any resulting registration….”
Thus, as in Medinol, a material misrepresentation of fact
with regard to use of the mark on particular goods was made
and sworn to by the mark’s owner(s) and that statement was
relied upon by the USPTO in determining respondent’s rights
to the registration.
That Mr. Singh may have been unaware that the statement
in the application alleged use as to all the listed goods,
Cancellation No. 92042991
13
rather than use as to some and intent to use as to others,
does not change our finding of fraud herein. Nor does the
fact that English is not Mr. Singh’s native language and he
apparently has continuing difficulty with the language. The
language contained in the subject application is clear and
unambiguous. The wording “applicant has adopted and is
using the trademark shown” which precedes the listing of
goods is simple and straightforward. It is well established
that in inter partes proceedings “proof of specific intent
is not required, rather, fraud occurs when an applicant or
registrant makes a false material representation that the
applicant or registrant knew or should have known was
false.” Medinol, supra 1209 (quoting General Car and Truck,
17 USPQ2d at 1400-1401). See also First International
Services Corp., supra, 5 USPQ2d at 1636 ("we recognize that
it is difficult, if not impossible, to prove what occurs in
a person's mind, and that intent must often be inferred from
the circumstances and related statement made by that person.
Otherwise, all claims of fraud could easily be defeated by
the simple statement, 'I had no intent to do so.' The
analysis must be whether the person knew or should have
known of the falsity of the statement.")
As the Board determined in Medinol, “the appropriate
inquiry is … not into the registrant’s subjective intent,
but rather into the objective manifestations of that
Cancellation No. 92042991
14
intent.” 67 USPQ2d at 1209. In Medinol, the Board
concluded that the facts justified a finding of fraud:
The undisputed facts in this case clearly
establish that respondent knew or should have
known at the time it submitted its statement of
use that the mark was not in use on all of the
goods. Neither the identification of goods nor
the statement of use itself was lengthy, highly
technical, or otherwise confusing, and the
President/CEO who signed the document was clearly
in a position to know (or to inquire) as to the
truth of the statements therein.

Id. at 1209-10.
Respondent’s president’s misunderstanding in the case
before us does not now shield respondent from our finding
that it knew or should have known that a representation of
fact in its application was false. Mr. Singh was obligated
to confirm the meaning and accuracy of the statements
contained in the application before signing the declaration
and prior to submission to the USPTO. "The obligation which
the Lanham Act imposes on an applicant is that he will not
make knowingly inaccurate or knowingly misleading statements
in the verified declaration forming a part of the
application for registration." Bart Schwartz International
Textiles, Ltd. v. Federal Trade Commission, 289 F.2d 665,
669, 129 USPQ 258, 260 (CCPA 1961) (emphasis in original).
Therefore, as indicated supra, an applicant or registrant
may not make a statement he/she knew or should have known
was false or misleading. Medinol, supra at 1209.

Cancellation No. 92042991
15
Nor does the misunderstanding on the part of
respondent’s attorney preclude our finding of fraud.
Inasmuch as counsel represented respondent during the
application process, respondent and its attorney shared the
duty to ensure the accuracy of the application and the truth
of its statements. See Smith International, supra, 209 USPQ
at 1047 ("The error was … on the part of counsel or Smith in
drawing up the document as such and on the part of the
affiant in signing it. Even if the affidavit was prepared
by its attorney, Smith must be held accountable for any
false or misleading statements made therein.") See also
Cooper, Lunsford, McCarthy and Ropski, "Fraud in the
Trademark Office: A TMR Panel" 74 Trademark Reporter 50, 57-
58 (Jan./Feb. 1984) (The client and the attorney "share the
duty" to avoid fraud; the attorney must advise the client to
tell the truth; the client must be candid; the attorney must
seek facts supporting or possibly controverting application
averments; and the attorney must be satisfied that the
application is accurate and is supported by prevailing law.)
In this instance, had respondent’s counsel ensured that he
understood what his client was telling him and reviewed the
application with his client prior to obtaining the necessary
signed declaration, the situation herein could have been
prevented.
Cancellation No. 92042991
16
Additionally, a subsequent attempt by respondent to
eliminate the goods on which its mark has never been used
does not change our decision in this matter. On June 8,
2006, more than a month after petitioner filed its motion
for summary judgment, respondent filed an amendment with the
Post Registration section of the USPTO to limit the
identification of goods so that it lists only the women’s
clothing on which it currently uses its mark.1 On August
29, 2006, the Post Registration section entered the
amendment. Where a registration is involved in a proceeding
before the Board, it is the Board that has jurisdiction to
determine the propriety of any proposed amendments to the
registration. See Trademark Rule 2.133(a) and TBMP Section
514.01 (2d ed. rev. 2004). Thus, the amendment should not
have been filed with the Post Registration section, and the
fact that the Post Registration section mistakenly acted on
the amendment does not preempt the Board’s authority to
determine the issue of fraud with respect to the original
identification of the goods. Under the circumstances, the
amendment will be given no effect. Nevertheless, we note
that respondent’s amendment would not serve to cure the
fraud that was committed. See Medinol, supra at 1208

1 Specifically, respondent sought to amend the identification of
goods to read as follows: “Clothing articles women [sic],
namely, shirts, blouses, dresses, evening wear, skirts, jerseys,
pants, corsets, and head scarves” in International Class 25.

Cancellation No. 92042991
17
(deletion of goods upon which the mark has not yet been used
does not remedy fraud upon the Office).2 Inasmuch as there
are no genuine issues of material fact with regard to
petitioner’s claim of fraud in the procurement of
respondent’s trademark registration, the registration must
be canceled in its entirety. See Standard Knitting, 77
USPQ2d at 1928.
In view thereof, and inasmuch as petitioner did not
move for summary judgment as to likelihood of confusion or
dilution, we need not reach the issues of likelihood of
confusion or dilution.
Accordingly, summary judgment is entered in
petitioner’s favor and the petition for cancellation is
granted on the ground of fraud.3

2 We note that respondent’s amendment was filed after the
commencement of this cancellation proceeding. Whether an
amendment to correct the description of goods that is
submitted before a cancellation proceeding is filed would
cure or remove fraud as an issue, is not currently before
us.

3 If respondent by appeal of this decision is able to obtain a
reversal of our holding of fraud, or a remand to reconsider that
issue, we note that the involved registration would require
restriction. Based on the record, it is clear that the goods in
connection with which the mark was not in use at the time of
filing the application must be deleted from the registration.