Hawaiian Moon, Inc.v.Rodney Doo

Trademark Trial and Appeal Board

Apr 29, 2004

No. 92042101 (T.T.A.B. Apr. 29, 2004)

az Mailed: April 29, 2004
Cancellation No. 92042101
Hawaiian Moon, Inc.
v.
Rodney Doo
Before Simms, Seeherman, and Holtzman, Administrative
Trademark Judges.
By the Board.
Hawaiian Moon, Inc. (“petitioner”) has petitioned to
cancel Registration No. 2,483,280 owned by Rodney Doo
(“respondent”), for the mark HAWAIIAN MOON for “clothing and
sportswear, namely, shirts, shorts, skirts, dresses, caps,
swimwear and sweatshirts.”1 Petitioner claims, inter alia,
that on October 4, 2000, respondent filed a statement of
use, asserting use of the mark on all of the seven goods
identified in the registration,2 when he had not used the
1 Registration No. 2,483,280 issued on August 28, 2001 and claims
first use and first use in commerce on August 28, 2000.
2 Application Serial No. 75732172, which matured into
Registration No. 2,483,280, claimed an intent-to-use the mark on
“clothing.” In an examiner’s amendment dated October 22, 1999,
respondent amended the identification of goods to “clothing and
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
2900 Crystal Drive
Arlington, Virginia 22202-3513
DISPOSITION
IS NOT CITABLE
AS PRECEDENT
OF THE TTAB
Cancellation No. 92042101
2
mark on or in connection with six of the seven items, i.e.,
on sweatshirts, caps, dresses, skirts, shorts, or shirts3;
and that the “signing of the Statement of Use was fraud.”
On September 22, 2003, respondent filed an answer which
denies the salient allegations of petitioner’s claim of
fraud.
This case now comes up on petitioner’s motion for
summary judgment (filed December 1, 2003) on the question of
fraud, which has been fully briefed by the parties.
Petitioner maintains that respondent admitted in his
answers to petitioner's Requests for Admissions Nos. 21 – 26
that respondent had not sold shorts, skirts, dresses, caps,
swimwear and sweatshirts in commerce under the trademark
HAWAIIAN MOON at the time he signed the statement of use4;
sportswear, namely shirts, shorts, skirts, dresses, caps,
swimwear and sweatshirts.”
3 The statement of use – which Rodney Doo signed on September 25,
2000 - states in relevant part that “[t]he owner is using the
mark in commerce on or in connection with all goods and/or
services listed in the application or Notice of Allowance”; and
concludes with the following declaration:
The undersigned being hereby warned that willful false
statements and the like are punishable by fine or
imprisonment, or both, under 18 USC § 1001, and that
such willful false statements and the like may
jeopardize the validity of this document, declares
that he/she is properly authorized to execute this
document on behalf of the Owner; and all statements
made of his/her own knowledge are true and that all
statements made on information and belief are believed
to be true.”
The examining attorney accepted the statement of use on April 30,
2001.
4 Respondent sought to amend the registration to cancel “shorts,
skirts, dresses, caps, swimwear and sweatshirts” in a request for
Cancellation No. 92042101
3
that “[i]t is apparent from the undisputed facts in this
case that Doo acted with reckless disregard for the truth,
when he signed the Statement of Use that mis-identified the
goods in commerce”; and that “the inclusion of several goods
in the statement of use not actually used by Doo constitutes
a material misrepresentation” amounting to fraud.
Petitioner also relies on the Board’s decision in Medinol
Ltd. v. Neuro Vasx, Inc., 67 USPQ2d 1205 (TTAB 2003), in
which the Board found fraud in connection with the filing of
a statement of use identifying the goods as "medical
devices, namely, neurological stents and catheters," when no
use had been made of the mark on stents. The Board stated
the following:
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 were 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.
Respondent's explanation for the misstatement
(which we accept as true) -- that the inclusion of
stents in the notice of allowance was "apparently
overlooked" -- does nothing to undercut the
conclusion that respondent knew or should have
known that its statement of use was materially
incorrect. Respondent's knowledge that its mark
was not in use on stents -- or its reckless
correction of registration filed October 3, 2003. On December
11, 2003, the Board deferred consideration of respondent's
request for correction until final decision, or until disposal of
the case on summary judgment.
Cancellation No. 92042101
4
disregard for the truth -- is all that is required
to establish intent to commit fraud in the
procurement of a registration.
As evidence in support of its motion, petitioner has
filed the declaration of petitioner’s president, Aaron Chan,
who enclosed a copy of respondent's answer, interrogatory
responses and responses to petitioner’s requests for
admissions. Mr. Chan also stated, in support of
petitioner's standing to bring this cancellation proceeding,
that petitioner has been selling HAWAIIAN MOON shirts,
skirts and dresses and other clothing items; and that
“[s]ince well before October 4, 2002, Petitioner has
operated a retail clothing store under the service mark
‘HAWAIIAN MOON.’”
In response to petitioner's motion, respondent did not
file any evidence. Rather respondent relies on the
arguments of his attorney, who explained in his opposing
brief that the application on which the registration is
based listed all goods which respondent makes and sells
using his varied trademarks; that respondent sent labels to
his attorney “[w]hen the time came for filing the amendment
to allege use [sic]”; and that:
It was understood that the labels were
attached to all of the goods which Rodney Doo
makes and sells. An amendment to allege use was
prepared and sent to Rodney Doo, indicating use of
the mark on all goods in the application, without
listing the goods. When Rodney Doo saw the
amendment to allege use, he did not have a copy of
the application before him. He assumed that the
Cancellation No. 92042101
5
amendment to allege use was in order and signed
and returned the amendment.
Respondent adds that petitioner “has never cited evidence
which indicates that the statement by Rodney Doo was
knowingly false or fraudulent”; and that Mr. Chan’s
declaration “is not evidence of fraud or fraudulent
representations on the part of Rodney Doo.”
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). The purpose of
summary judgment is to avoid an unnecessary trial where
additional evidence would not reasonably be expected to
change the outcome. See Pure Gold, Inc. v. Syntex (U.S.A.),
Inc., 739 F.2d 624, 222 USPQ 741 (Fed. Cir. 1984).
Petitioner, as the 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 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). The
evidence must be viewed in a light most favorable to the
non-movant, and all justifiable inferences are to be drawn
in the non-movant's favor. See Lloyd's Food Products Inc.
v. Eli's Inc., 987 F.2d 766, 25 USPQ2d 2027 (Fed. Cir.
Cancellation No. 92042101
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1993); and Opryland USA Inc. v. Great American Music Show
Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992).
After considering the evidence of record and the
arguments of the parties, we find that petitioner is
entitled to summary judgment in this case.
Petitioner's standing
In order to prevail, petitioner must establish not only
a valid ground for cancellation, but must also prove its
standing. Medinol, supra. We find that there are no
genuine issues of material fact as to petitioner's standing
in view of Mr. Chan’s statements in his declaration
regarding petitioner's standing (which respondent has not
contested).
No genuine issue of material fact relating to petitioner's
claim of fraud
A trademark applicant commits fraud in procuring a
registration when it makes material representations of
fact in its declaration which it knows or should know to
be false or misleading. Torres v. Cantine Torresella
S.r.l., 808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir. 1986). To
constitute fraud on the U.S. Patent and Trademark Office,
the moving party therefore must establish that (a) the
statement in its declaration is false, (b) the party
making the statement knew, or should have known, that the
Cancellation No. 92042101
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statement is false, and (c) the statement is a material
misrepresentation.
It is undisputed that respondent filed an intent-to-use
application reciting “clothing” as his intended goods, and
subsequently amended the identification of goods to
“clothing and sportswear, namely, shirts, shorts, skirts,
dresses, caps, swimwear and sweatshirts.” It is also
undisputed that at the time respondent filed his statement
of use, he had not used the mark on sweatshirts, caps,
dresses, skirts, shorts or swimwear, but stated in the
statement of use that he had used the mark on all the goods
listed in the application. Thus, there is no genuine issue
of material fact that respondent's statements regarding use
of his mark on all the claimed goods in his application (as
set forth in the statement of use) were false. There is
also no genuine issue of material fact that such statements
were material because but for the false statements of use of
the mark, the U.S. Patent and Trademark Office would not
have allowed the application. See American Hygienic
Laboratories, Inc. v. Tiffany & Co., 12 USPQ2d 1979 (TTAB
1989); and McCarthy, J. Thomas, McCarthy on Trademarks, §
31:67 (4th ed. 2004).
In order to hold for petitioner, we therefore need only
find that respondent knew or should have known that his
statements regarding use in the statement of use were false
Cancellation No. 92042101
8
or misleading. We are guided by Medinol, supra, where we
stated that a respondent’s knowledge that its mark was not
used on certain goods, or its reckless disregard for the
truth, is all that is required to establish an intent to
commit fraud in the procurement of a registration. We also
stated in Medinol that we need not inquire about
respondent's subjective intent; we need only inquire into
the objective manifestations of that intent.5
In this case, as in Medinol, “[n]either the
identification of goods nor the statement of use itself were
lengthy, highly technical, or otherwise confusing ….” Also,
like the respondent in Medinol, respondent in this case
signed a declaration in connection with his statement of use
warning that “willful false statements and the like are
punishable by fine or imprisonment, or both, … and that such
willful false statements and the like may jeopardize the
validity of this document.” Statements made in such a
document accompanied with such a warning “are – or should be
– investigated thoroughly prior to signature and submission
to the USPTO.” Id. Despite the warning of a fine or
imprisonment, respondent evidently was not prodded into
making an inquiry to see if the statement of use was
accurate.
5 Thus, respondent's contention that there must be evidence that
“the statement by Rodney Doo was knowingly false or fraudulent”
is incorrect.
Cancellation No. 92042101
9
Respondent's attorney explains that respondent did not
have a copy of the application “before him” when he reviewed
the statement of use. (The statement of use states that the
“owner is using the mark in commerce on or in connection
with all goods and/or services listed in the application or
Notice of Allowance”; thus the application or Notice of
Allowance would be needed to know the goods referenced in
the statement of use.) Additionally, respondent’s attorney
states that respondent “assumed that the amendment to allege
use was in order and signed and returned the amendment.”
Respondent's attorney’s arguments, even if taken as evidence
which we may consider,6 fail to raise a genuine issue of
material fact that respondent knew or should have known of
the falsity of his statements in the statement of use.
Respondent in this case is the owner of the mark and hence
is the one who dictates on what and how the mark would be
used. See answers to petitioner's Interrogatory Nos. 11 –
12, and 17. He thus had to have known that his mark had
only been used on shirts at the time he was signing the
statement of use. By failing to consult the application or
Notice of Allowance to determine the goods listed in the
application, yet being warned that the penalty for false
statements in the statement of use is a fine or imprisonment
or both, respondent had reckless disregard for the truth of
6 See discussion regarding respondent's lack of evidence, infra.
Cancellation No. 92042101
10
the statements regarding those goods on which he had used
the mark.
Our conclusion that respondent had reckless disregard
for the truth is reinforced by the fact that respondent
failed to act to correct his registration, shortly after his
registration issued. The registration clearly lists seven
items in the identification of goods and a first use and
first use in commerce date. However, respondent did not
file a request for correction of the registration until well
after petitioner filed the petition to cancel in this case.
In view of the foregoing, and in view of our holding in
Medinol, we find that respondent made a material
misrepresentation of fact in his statement of use which he
knew or should have known to be false or misleading. Hence,
there are no genuine issues of material fact in connection
with petitioner's motion and we find that respondent has
committed fraud in procuring his registration by filing a
false statement of use.
Respondent's failure to offer any evidence
When a moving party's motion is supported by evidence
sufficient, if unopposed, to demonstrate that there is no
genuine issue of material fact and that the moving party is
entitled to judgment, the nonmoving party may not rest on
mere denials or conclusory assertions, but rather must offer
countering evidence, by affidavit or as otherwise provided
Cancellation No. 92042101
11
in Fed. R. Cir. P. 56, showing that there is a genuine
factual dispute for trial. See Fed. R. Civ. P. 56(e), and
Octocom Systems Inc. v. Houston Computer Services Inc., 918
F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990). In this case,
respondent has not offered any evidence in opposition to the
summary judgment motion. Petitioner’s evidence in support
of its motion is sufficient to indicate that there is no
genuine issue of material fact and that petitioner is
entitled to judgment in connection with its claim of fraud.
The unsupported statements made by respondent's attorney in
his opposing brief amount to mere denials. Even if
respondent's attorney had supported his statements with an
affidavit or declaration, they would have been insufficient
to raise a genuine issue. Respondent's attorney could not
testify as to what respondent assumed, or the reasons why
respondent believed it was acceptable to sign the statement
of use. Further, as we have already stated, even if
respondent had himself submitted an affidavit, such
statements would have been insufficient to raise a genuine
issue.
Conclusion
Petitioner’s summary judgment motion on its claim of
fraud is granted, and summary judgment is entered in
petitioner’s favor on its claim of fraud.
Cancellation No. 92042101
12
We assume, in view of our granting of the petition for
cancellation on the ground of fraud, that petitioner does
not wish to go to trial on any other grounds for
cancellation set forth in the petition to cancel.
Accordingly, the registration will be forwarded to the
Office of the Commissioner of Trademark for cancellation in
due course. If petitioner does wish to pursue any other
grounds for cancellation, it should notify the Board within
thirty days of the mailing of this decision.