Kipling Apparel Corp.v.Michael Rich

Trademark Trial and Appeal Board

Apr 16, 2007

No. 91170389 (T.T.A.B. Apr. 16, 2007)

Butler Mailed: April 16, 2007

Opposition No. 91170389

Kipling Apparel Corp.

v.

Michael Rich

Before Walters, Bucher and Cataldo, Administrative Trademark
Judges.

By the Board:
Applicant seeks to register the mark

for “clothing, namely, pants, shorts, sweatpants, overalls,
shirts, tee-shirts, sweatshirts, dresses, skirts, blouses,
jackets, vests, coats, rainwear, lingerie, sleepwear, underwear,
loungewear, beachwear, swimwear, infantwear, gloves, socks
hoisery, belts.”1 The application was filed based on use under
Trademark Act §1(a). The following statement preceded the
identification of goods:
The applicant, or the applicant’s related company or
licensee, is using the mark in commerce, and lists below the
dates of use by the applicant, …, of the mark on or in
connection with the identified goods ….

The following statement followed the identification of goods:

1 Application Serial No. 76643592, filed July 25, 2005.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
2

In International Class 025: the mark was first used at
least as early as March 7, 2005, and first used in commerce
at least as early as March 7, 2005, and now is in use in
such commerce.

The application was accompanied by a signed declaration attesting
to the truth of the statements made in the application.
As grouds for the opposition, opposer alleges 1) likelihood
of confusion with its previously registered marks consisting in
whole or in part of the following long tailed monkey design:2

and 2) fraud on the United States Patent and Trademark Office
(USPTO) because applicant was not using his mark on all the goods
identified in the application at the time he filed his use-based
application yet he included a verified statement of use for all
goods listed. Opposer alleges further that applicant knew “or
believed” that the statement was false and made such statement with
the intent of inducing the USPTO to rely thereon and allow the
application to publish.
In his answer, applicant admits filing his application with a
statement that he was using his mark in commerce on all of the
identified goods and that the application contained a declaration.3
Applicant admits that he made a mistake and should have separated

2 Registration No. 2806067 consists solely of the design. Registration No.
1952995 is for the mark KIPLING and design. Registration No. 1511776 is for
the mark KIPLING BACK TO THE BAG and design.

3
the goods that were currently in use, “namely, shirts and hats,”
from “the remainder of the goods that were to be used in commerce.”4
Applicant further admits opposer’s ownership of its pleaded marks
“associated with the Registrations listed….”5 Applicant otherwise
denies the essential allegations of the notice of opposition.
Applicant’s denials of the remaining fraud allegations are qualified
with explanations. Applicant admits a mistake was made in the
application process whereby he inadvertently selected to file his
application completely under Trademark Act §1(a), use in commerce,
instead of under Trademark Act §1(b), intent to use, at least in
part. Applicant alleges that he was unaware at the time of filing
that he was doing so incorrectly and submits an affidavit in support
thereof with his answer.
This case now comes up on opposer’s motion, filed October 12,
2006, for summary judgment in its favor on its claim of fraud. The
motion is fully briefed.
In support of its motion, opposer argues that applicant has
committed fraud in attempting to procure a registration for his
involved mark, thus making the involved application void ab initio.
More specifically, opposer argues that applicant has admitted in his
answer and affidavit accompanying his answer that, at the time of
the filing date of the application, he was only using his mark on
“shirts and hats” and not on all of the remaining identified goods.6

3 Paragraph Nos. 16-18 of the notice of opposition and answer, respectively.
4 Paragraph Nos. 19 and 20 of the answer.
5 Paragraph No. 9 of the notice of opposition and answer, respectively.
6 Paragraph no. 20 of applicant’s answer; paragraph no. 6 of applicant’s
affidavit.

4
Opposer contends that applicant’s misstatement of fact is material
to the application and of the type that applicant knew or should
have known was false.
Opposer relies on the admissions in applicant’s answer and
applicant’s statements in his accompanying affidavit.
In response, applicant, also relying on his affidavit, notes
that he was not represented by counsel and argues that he filed the
application in good faith and believed at the time he signed the
declaration supporting the application that he did so correctly.
Applicant states that he did not realize he made a mistake until the
Notice of Opposition was filed and he requests an opportunity to
correct the application. Applicant also argues that he is the owner
of Registration No. 3089320 for the mark MONORICO for essentially
the same goods for which he now seeks to register his MONORICO and
long tailed monkey design mark. Applicant argues that he did not
have a willful intent to deceive the USPTO but believed he was
entitled to a registration because the word portion of the subject
mark is the same as his registered mark and both involve the same
goods.
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
5
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).
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). Statements regarding the use of
the mark on goods and services are certainly material to issuance
of a registration covering such goods and services. See First
International Services Corp. v. Chuckles Inc., 5 USPQ2d 1628
(TTAB 1988). See also Hachette Filipacchi Presse v. Elle Belle,
LLC, ___ USPQ2d ___ (TTAB April 9, 2007);7 Hurley International
LLC v. Paul and Joanne Volta, ___ USPQ2d ___ (TTAB January 23,
2007);8 Standard Knitting, Ltd. v. Toyota Jidosha Kabushiki
Kaisha, 77 USPQ2d 1917 (TTAB 2006); and Medinol Ltd. v. Neuro
Vasx, Inc., 67 USPQ2d 1205 (TTAB 2003).
In this case, opposer has established the absence of genuine
issues of material fact for trial with regard to its claim of
fraud and that it is entitled to summary judgment in its favor on
this ground.
There is no dispute, and applicant has admitted, that
applicant had not used his mark in connection with most of the
6
goods identified in his application at the time he filed his use-
based application. His application included a declaration
attesting to the truth of all the statements made in the
application. The subject application, filed under Section 1(a)
of the Trademark Act, would have been refused registration but
for applicant’s misrepresentation regarding his use of the mark.
Prior to publication, applicant had an opportunity to remedy the
matter because a misstatement in an application as to the goods
or services on which a mark has been used does not rise to the
level of fraud where an applicant amends the application prior to
publication. See Universal Overall Co. v. Stonecutter Mills
Corp., 154 USPQ 104 (CCPA 1967). However, applicant cannot now
correct the false statement in the involved application. Rather,
his remedy lies with filing a new application relying on an
appropriate and correct basis.
In inter partes proceedings, “ … fraud occurs when an
applicant or registrant makes a false material representation
that the applicant or registrant knew or should have known was
false.” See General Car and Truck Leasing Systems, Inc. v.
General Rent-A-Car, Inc., 17 USPQ2d 1398, 1400 (D.C. S.Fla.
1990). The fact that applicant misunderstood a clear and
unambiguous requirement for a use-based application and was not
represented by legal counsel does not shield applicant from our
finding that he knew or should have known that the representation
of fact in his application was false. Nor does such circumstance

7 Cancellation No. 92042991.
7
otherwise preclude our finding of fraud. See Hurly, supra. Even
if applicant did not act willfully or in bad faith, it was not
reasonable for applicant to state use dates in a use-based
application for goods upon which he had no use. Applicant was
under an obligation to investigate thoroughly the validity of his
belief before signing the declaration in support of the
application. Id. Further, this representation is clearly
material to the application.
We find that there are no genuine issues of material fact
that applicant’s misrepresentation was material and, thus,
fraudulent, thus making the application void ab initio.
Accordingly, opposer’s motion for summary judgment is granted on
its fraud claim only and the opposition is sustained.
In view of our finding of fraud, and because opposer did not
move for summary judgment on its likelihood of confusion claim,
we need not reach the issue of likelihood of confusion.
☼☼☼

8 Opposition No. 91158304.