J.E.M. Inter-national, Inc.v.Happy Rompers Creations Corp.

Trademark Trial and Appeal Board

Feb 10, 2005

No. 92043073 (T.T.A.B. Feb. 10, 2005)

THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
UNITED STATES PATENT AND TRADEMARK
OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451

Butler Mail date: February 10, 2005

Cancellation No. 92043073

J.E.M. International, Inc.

v.

Happy Rompers Creations Corp.

Before Chapman, Bucher and Drost, Administrative Trademark
Judges.

By the Board:
Petitioner seeks to cancel respondent’s registration for the
mark IT’S A GIRL THING for a wide variety of clothing items.
Respondent’s subject registration is No. 2751107, issued on
August 12, 2003, claiming use and use in commerce since June 20,
2002. The goods are identified as follows:
aprons, ascots, babies rompers, baby sleepers, babushkas,
baby buntings, balloon pants, bandannas, bath robes, bathing
suits, bathing trunks, beach cover-ups, belts, berets,
Bermuda shorts, bikinis, blazers, blouses, body suits,
boleros, boots, booties, boxers, bras, breeches, briefs,
burp cloths, caftans, camisoles, caps, capes, chemises,
cloth belts, cloth bibs, corselets, costumes, coveralls,
cravats, crop tops, culottes, denim jackets, denim jeans,
diaper covers, dresses, dressing gowns, earmuffs, evening
gowns, fishing vests, frocks, gabardines, galoshes, garter
belts, girdles, gloves, golf shirts, gym shorts, Halloween
costumes, halter tops, hats, head wear, hooded tops, hoods,
hosiery, jackets, jerseys, jogging suits, jumpers,
kerchiefs, kimonos, kilts, knit pullovers, knit shirts, lab
coats, leggings, leotards, loungewear, maillots, men's
slacks, money belts, mufflers, neck bands, negligees,
nightgowns, night shirts, nylons, pajama tops, pajama
bottoms, pantaloons, pants, panties, pantsuits, parkas,
Cancellation No. 92043073
pedal pushers, pinafores, play suits, pocket squares, polo
shirts, ponchos, quilted vests, rain coats, rompers, safety
shoes, sandals, sashes, scarves, shawls, shirts, shoes, shoe
laces, shorts, skirts, ski pants, sleep shirts, slippers,
slips, smocks, sneakers, snow pants, snow suits, socks,
sport bras, sport coats, sports uniforms, stockings, suit
coats, sweaters, sweat pants, sunvisors, suspenders,
sweatshirts, t-shirts, tops, tank tops, tap pants, thermal
socks, thermal underwear, thongs, ties, tights, toe boxes,
turtle neck sweaters, undershirts, uniforms, unitards, v-
neck sweaters, veils, vests, visors, waistcoats, windshirts,
wind resistant jackets, winter coats, workout tops and
tights, wrist bands.

As grounds for cancellation, petitioner alleges that
respondent’s registered mark so resembles petitioner’s previously
used mark GIRL THING for clothing as to be likely to cause
confusion, mistake or to deceive. Petitioner further alleges
that respondent is not using, and has never used, the mark IT’S A
GIRL THING on all of the goods identified in the application,
Notice of Allowance, Statement of Use and subsequent
registration; that respondent’s Statement of Use claiming use of
the mark on each of the goods identified in the application and
Notice of Allowance was false; and that respondent procured its
registration by falsely alleging in its Statement of Use that it
is using the mark on all identified goods, and that the date of
first use and first use in commerce for all the identified goods
is June 20, 2002.
In its answer, respondent denies the salient allegations of
the petition to cancel.
On May 26, 2004, respondent filed a motion to amend its
registration to delete numerous items from the identification of
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Cancellation No. 92043073
goods. Respondent identifies the goods to be deleted as follows
(copied from respondent’s proposed amendment):

Petitioner filed a response in opposition to the proposed
amendment. On July 1, 2004, and in accordance with Board
practice, the Board deferred consideration of respondent’s
proposed amendment to its registration until final decision, or
until the case is decided on summary judgment. See TBMP §514.03
(2nd ed. rev. 2004).
This case now comes up on petitioner’s fully briefed motion,
filed August 4, 2004, for summary judgment in its favor on its
claim that respondent fraudulently procured its registration by
falsely representing in its Statement of Use, which was accepted
by the USPTO as a basis for issuing the resulting registration,
that it was using the mark on all the goods identified in the
application and Notice of Allowance. In view of petitioner’s
pending summary judgment motion, respondent’s motion to amend its
registration to delete goods is now ripe for determination.
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Cancellation No. 92043073
As background, respondent (as applicant then) filed, on
October 16, 2001, application Serial No. 76326255 for the mark
IT’S A GIRL THING for a wide variety of clothing items
(approximately 150), claiming a bona fide intention to use the
mark in commerce. See Trademark Act §1(b). A Notice of
Allowance was issued on October 15, 2002 for all of applicant’s
listed goods; and a first extension was filed and granted on
April 3, 2003, contemporaneously with the filing of applicant’s
Statement of Use. Respondent (as applicant) used the standard
electronic form for a Statement of Use; indicated “Yes” for “All
goods and/or services in the Notice of Allowance” in identifying
the goods upon which it is using the mark; and further indicated
the first use and first use in commerce date as June 20, 2002.
Registration No. 2751107 then issued on August 12, 2003 for all
the goods indicated in the first paragraph of this decision,
supra, which were all the goods identified in application and in
the subsequently issued Notice of Allowance.
In support of its motion for summary judgment, petitioner
argues that respondent fraudulently procured its registration by
falsely stating in its Statement of Use that it was using the
mark on all the over 150 items of clothing identified in the
Notice of Allowance when respondent was not using, and has never
used, its mark in connection with over 100 of the identified
clothing items. Petitioner argues that respondent knew at the
time it filed its Statement of Use that respondent was not using,
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Cancellation No. 92043073
and had not used, the mark on over 100 of the over 150 clothing
items; and that, upon receipt of its registration, respondent
further failed to take corrective steps. Rather, petitioner
argues, respondent took no steps to correct the registration
until after the institution of this proceeding. Petitioner
contends that, when an applicant fraudulently states use of a
mark on various goods and does not use the mark on all the goods
for which it sought a registration, cancellation of the entire
registration is appropriate.
In addition to the pleadings, petitioner’s motion is
supported by the following:
1) the declaration of its attorney stating that
petitioner, on May 28, 2003, filed an application
to register its mark GIRL THING for “footwear,
pajamas, robes, and nightgowns; sportswear,
namely, tops, shorts and pants; underwear, hosiery
and socks” (Serial No. 76520470); and that such
application has been refused registration in view
of respondent’s existing registration.
Petitioner’s attorney further introduces a copy of
the November 17, 2003 Office action refusing
registration of petitioner’s pending application.
2) A copy of respondent’s Statement of Use, filed
April 3, 2003.
3) A copy of respondent’s responses to petitioner’s
first set of interrogatories.
4) A copy of respondent’s responses to petitioner’s
requests for admissions.
5) A copy of respondent’s responses to petitioner’s
first requests for production of documents and
things.

In response, respondent argues that it never intended to
make misrepresentations to the USPTO; that its failure to amend
its application to divide or separate the goods upon which it is
actually using its mark from those which it never offered was the
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Cancellation No. 92043073
result of carelessness, not fraud; and that, upon realizing its
mistake, respondent took corrective steps, seeking to amend its
registration to delete those goods which it is not offering, nor
has offered, under its mark. Respondent explains that its
submission of the Statement of Use without a request to divide
was an administrative error and oversight resulting from a lack
of knowledge as to Trademark Office procedures; and that
respondent did not advise its counsel to file a request to
divide. Respondent argues that, because it lacked an intent to
defraud the USPTO, petitioner has not carried its burden of
establishing that no genuine issue of material fact exists,
entitling petitioner to judgment in its favor as a matter of law.
Respondent’s response is accompanied by the declaration of
its president stating, among other things, that respondent never
intended to make fraudulent representations to the USPTO
concerning the products upon which it is using the mark; and that
respondent took steps to correct its mistake.
In reply, petitioner argues that respondent’s claims of
mistake and unfamiliarity with Office procedure are rebutted by
respondent’s proffering in its Statement of Use that it is “…
using or is using through a related company the mark in commerce
on or in connection with all the goods/services listed in the
Application/Notice of Allowance.” Petitioner contends that no
special knowledge is needed to understand the plain meaning of
the term “all.” Relying on the determination made in Medinol
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Cancellation No. 92043073
Ltd. v. Neuro Vasx Inc., 67 USPQ2d 1205 (TTAB 2003), petitioner
argues that respondent’s mistake still resulted in the submission
of a false statement of use; and that respondent’s actual
knowledge, or even implied knowledge and disregard therefor, that
it was not using the mark on the identified goods, is sufficient
to establish intent to commit fraud.
In a motion for summary judgment, the moving party has the
burden of establishing the absence of any genuine issue of
material fact and that it is entitled to judgment as a matter of
law. See Fed. R. Civ. P. 56. A genuine dispute with respect to
a material fact exists if sufficient evidence is presented that a
reasonable fact finder could decide the question in favor of the
non-moving party. See Opryland USA Inc. v. Great American Music
Show, Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992). Thus,
all doubts as to whether any particular factual issues are
genuinely in dispute must be resolved in the light most favorable
to the non-moving party. See Olde Tyme Foods Inc. v. Roundy’s
Inc., 961 F.2d 200, 22 USPQ 1542 (Fed. Cir. 1992).
We agree with petitioner that the holding in Medinol Ltd.
v. Neuro Vasx Inc., 67 USPQ2d 1205 (TTAB 2003) is applicable
here.
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. Id. at 1209, citing Torres v. Cantine Torresella
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Cancellation No. 92043073
S.r.l., 808 F.2d 46, 1 USPQ2d 1483, 1484-85 (Fed. Cir. 1986). As
in Medinol, respondent herein denies that its intent in
submitting its statement of use was fraudulent. Ordinarily,
cases involving questions of intent are unsuited to resolution by
summary judgment. See, e.g., Copelands’ Enterprises Inc. v. CNV
Inc., 945 F.2d 1563, 20 USPQ2d 1295, 1299 (Fed. Cir. 1991).
However, taking into consideration the circumstances of a case,
the appropriate inquiry is not into the registrant’s subjective
intent, but rather into the objective manifestations of that
intent. Medinol v. Neuro Vasx, 67 USPQ2d at 1209.
Here, respondent’s application published for, and a Notice
of Allowance issued for, over 150 clothing items.
Notwithstanding that the mark was not in use on over 100 of these
clothing items (2/3 the identified goods), respondent indicated
when it filed its Statement of Use that the mark was in use on:

(Copied from respondent’s Statement of Use document.)
Among the items that respondent was not using the mark on
when it filed its Statement of Use were the first nine items
listed in the Notice of Allowance and resulting registration. In
their position at the beginning of the list, such items would be
the first to catch a reader’s eye and bring into question the
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Cancellation No. 92043073
breadth of actual use being made by respondent at the time of
filing.
While respondent now acknowledges its error and, for
purposes of this summary judgment motion, we accept its statement
that it did not intend to make a misrepresentation and that its
mistake was inadvertent, respondent filled in the form checking
the box for use on “all” goods; respondent further made a
statement that “all” the goods were being used in commerce by it
or a related company; and respondent signed its statement of use
under penalty of “fine or imprisonment, or both, ... and
[knowing] that such willful false statements may jeopardize the
validity of the application or any resulting registration....”
Statements made with such degree of solemnity clearly are — or
should be — investigated thoroughly prior to signature and
submission to the USPTO. See Medinol v. Neuro Vasx, 67 USPQ2d at
1209.
Inasmuch as the USPTO will not issue a registration based on
use covering goods upon which the mark has not been used, there
is no question that respondent’s Statement of Use would not have
been accepted nor would the registration have issued but for
respondent’s representation that it was using the mark on all the
goods identified in the Notice of Allowance. See Trademark Rule
2.88(c). See Id. at 1208. Thus, 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
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Cancellation No. 92043073
not in use on all of the goods. While the listing of goods was
quite lengthy (over 150 items), it was not complicated (i.e.,
these were all simply items of clothing). Respondent was not
using the mark on over 100 (2/3) of the items. Non-use on this
great a number of items in a long list of items must be accorded
significance when filling in a form requiring a verification
stating that respondent was using the mark on “all” of the goods
(or allowing respondent to delete those goods or divide out those
goods upon which it is not using the mark). In addition, the
Board notes that the Statement of Use form is not complicated,
and the term “all” has a commonly understood meaning in general
as well as in the context of the form.
We conclude 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 about 100 of the
approximately 150 identified items - or "its reckless disregard
for the truth - is all that is required to establish intent to
commit fraud in the procurement of a registration." See Medinol
v. Neuro Vasx, 67 USPQ2d at 1210. While it is clear that not all
incorrect statements constitute fraud, the relevant facts in this
record allow no other conclusion. We find that respondent’s
material misrepresentations made in connection with its statement
of use were fraudulent. Id at 1210.
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Cancellation No. 92043073
Accordingly, petitioner’s motion for summary judgment is
granted; the petition to cancel is granted; and Registration No.
2751107 will be cancelled in due course.1
☼☼☼

1 Respondent’s motion to amend the identification of goods in its
registration is denied as moot.
11