Marc Mathersv.Yshheyna Hamilla

Trademark Trial and Appeal Board

Oct 30, 2008

No. 92032447 (T.T.A.B. Oct. 30, 2008)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

JK Mailed: October 30, 2008

Cancellation No. 92032447

MARC MATHERS

v.

YSHHEYNA HAMILLA

Before Holtzman, Cataldo and Ritchie de Larena:
Administrative Trademark Judges.

By the Board:
This proceeding is before the Board for consideration
of respondent’s motion (filed May 15, 2008 via Certificate
of Mailing) for summary judgment under Fed. R. Civ. P. 56.
The motion is fully briefed.
On August 26, 2001, petitioner filed a petition to
cancel respondent’s Registration No. 1855708.1 The petition
alleges, inter alia, that respondent committed fraud in the
execution of her Combined Declaration of Use and
Incontestability under Sections 8 and 15 of the Trademark
Act (“declaration of use” or “declarations of

1 Registration No. 1855708 registered on September 27, 1994, for
the mark RAINBOW in standard characters, for “educational and
informational cards and charts in the field of physical, mental,
and emotional health,” alleging a date of first use and first use
in commerce of November 31, 1989, Section 8 and 15 declaration
accepted on June 7, 2001, first renewal March 23, 2007.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
Cancellation No. 92032447

2
use”) filed with the USPTO on September 28, 2000.
Specifically, petitioner alleges that respondent committed
fraud by (1) using a false name when signing her declaration
of use, and (2) falsely withholding information regarding a
legal challenge to her registration in an infringement
action in a United States District Court.
The operative facts are not in dispute. On September
27, 1994, Registration No. 1855708 issued in the name of
Janet Zupcsics, an individual United States citizen. On
November 10, 1997, respondent, as plaintiff, filed a federal
trademark infringement action in the United States District
Court for the Middle District of Florida, Case No. 8:97-
2725-CIV-T-26A, against petitioner; in July and August of
2001, said Court denied petitioner’s two respective motions
to add a counterclaim to invalidate respondent’s U.S.
Registration No. 1855708.
On January 4, 2000, a Final Judgment of Change of Name
was granted in the Circuit Court of the Fifth Judicial
Circuit for Lake County, Florida, Case No. 99-3284CA,
changing respondent’s name from Janet Zupcsics to Yshheyna
Hamilla.2 On September 28, 2000 respondent filed her
declaration of use, having executed said declaration on
September 22, 2000 using her former legal name, Janet

2 On September 13, 2007, the change of name dated January 4, 2000 was
recorded with the Assignment Branch records for the subject registration
at Reel/Frame 3620/0514.
Cancellation No. 92032447

3
Zupcsics. On June 7, 2001, the USPTO issued a notice of
acceptance of the declaration of use. Petitioner filed this
cancellation proceeding on August 26, 2001.
Respondent moves for summary judgment on petitioner’s
fraud claims, Counts I and II of the petition to cancel.
With respect to petitioner’s claim of fraud in the execution
of the declaration of use, respondent asserts that her
declaration of use satisfied all of the requirements for
such a filing and does not form the basis for a fraud claim
as a matter of law. Specifically, she asserts that signing
her former legal name was not a false material
representation, but “simply a mistake in the manner in which
her name was set out,” that she was still the owner of the
registration at the time of signing and filing the
declaration of use, and that had the USPTO questioned her
ownership she could have readily provided documentation to
correct the oversight. In support thereof, respondent
submitted her declaration of May 15, 2008, which introduced
and included (1) a certified copy of the petition for change
of name filed in Lake County, Florida; and (2) the final
judgment thereon dated January 4, 2000.
With respect to petitioner’s claim of fraud alleging
that respondent falsely withheld information that her
trademark was under challenge in a U.S. District Court,
respondent asserts that when she filed her declaration of
Cancellation No. 92032447

4
use, there was no counterclaim in the District Court action
challenging her rights in the mark, and explains that the
District Court, in 2001, denied two motions filed by
petitioner as defendant therein to add a counterclaim to
invalidate her mark. In support thereof, respondent
submitted a declaration of May 15, 2008, which introduced
and included (1) the complaint respondent filed in the
District Court and petitioner’s answer thereto; (2)
petitioner’s July 3, 2001 motion to amend its answer therein
to add a counterclaim for mere descriptiveness, and the
District Court’s July 25, 2001 denial of said motion; and
(3) petitioner’s August 20, 2001 motion to amend its answer
therein to add a count for declaratory judgment, and the
District Court’s August 30, 2001 denial of said motion.
Further, respondent relies on TMEP § 1605.04, which states
that the USPTO does not consider a proceeding involving the
mark in which the owner is the plaintiff, where there is no
counterclaim involving the owner’s rights in the mark, to be
a proceeding that would preclude the filing or
acknowledgment of a Section 15 affidavit.
In response to the motion for summary judgment,
petitioner argues that (1) respondent “falsely executed” her
September 22, 2000 declaration of use “in a name which she
knew to be false;” (2) such “false statement” was not due to
mere inadvertence or mistake; (3) such “false statement” was
Cancellation No. 92032447

5
material; (4) the USPTO “was induced to accept material
documents required to maintain the validity of the trademark
in a false and nonexistent name;” (5) the USPTO required
respondent to provide change of name or assignment
documentation before accepting her September 2004 renewal
application which she signed in her new legal name; and (6)
respondent’s declaration of use “concealed” knowledge that
her trademark rights were under legal challenge by virtue of
petitioner’s filing, in the District Court civil case, of a
challenge to her trademark as merely descriptive.
In support of his assertions, petitioner submitted a
copy of respondent’s renewal application filed on September
23, 2004, and supporting documentation associated therewith,
and a September 17, 2007 request for a new certificate of
registration in the owner’s new name.
Analysis
A party is entitled to summary judgment when it has
demonstrated that there are no genuine issues as to any
material facts, and that it is entitled to judgment as a
matter of law. Fed. R. Civ. P. 56(c). The evidence must be
viewed in a light favorable to the nonmoving party, and all
justifiable inferences are to be drawn in the nonmovant’s
favor. Opryland USA Inc. v. The Great American Music Show,
Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992).
Cancellation No. 92032447

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A party seeking summary judgment bears the initial
burden of demonstrating the absence of genuine issue of
material fact, and of informing the Board of the basis for
its motion by identifying those portions of the record which
it believes demonstrates the absence of a genuine issue of
material fact. See Celotex Corp. v. Catrett, 477 U.S. 317,
106 S. Ct. 2548 (1986). When the moving party’s motion is
supported by evidence sufficient, if unopposed, 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 which must be resolved at
trial. The nonmoving party may not rest on mere allegations
of its pleadings and assertions of counsel, but must
designate specific portions of the record, or produce
additional affidavit evidence, showing the existence of a
genuine issue of material fact for trial. If the nonmoving
party does not so respond, summary judgment, if appropriate,
shall be entered in the moving party’s favor. See Fed. R.
Civ. P. 56(e).
Fraud occurs when an applicant knowingly makes false,
material representations of fact in connection with an
application to register. The obligation to refrain from
knowingly making false, material statements applies with
equal force to renewal applications. See Torres v. Cantine
Cancellation No. 92032447

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Torresella S.r.l., 808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir.
1986). See also Herbaceuticals Inc. v. Xel Herbaceuticals
Inc., 86 USPQ2d 1572 (TTAB 2008). A party asserting a fraud
claim is under a heavy burden of proof because fraud must be
proved by clear and convincing evidence, leaving nothing to
speculation, conjecture, or surmise. The very nature of the
charge of fraud requires that it be proven “to the hilt”
with clear and convincing evidence. Any doubt must be
resolved against the party making the claim. Sinclair Oil
Corp. v. Kendrick, 85 USPQ2d 1032, 1035 (TTAB 2007); Smith
International, Inc. v. Olin Corporation, 209 USPQ 1033, 1043
(TTAB 1981).
To the extent that petitioner’s fraud claim is
predicated on the allegation that respondent’s signing of
her former name on the declaration of use constitutes fraud
on the USPTO, we agree with respondent that the facts
presented cannot support a finding of fraud. Specifically,
while respondent’s signing of her former name eight months
after entry of the court decree changing her legal name was
technically in error, the record is devoid of evidence that
such action constituted a knowingly false, material
statement of a fact on which the USPTO relied in accepting
respondent’s declaration of use. A trier of fact could not
conclude, on the facts before us, that respondent made a
misrepresentation that rises to the level of or supports a
Cancellation No. 92032447

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finding of fraud in the maintenance of respondent’s
registration. Respondent was the owner of the subject
registration at the time of filing the declaration of use,
and her legal change of name did not effectuate a change in
which person or legal entity owned that registration.
Moreover, we will not substitute our judgment for that
of the examiner in the Post-Registration Division. As the
Board has previously held, an allegation of the sufficiency
of what was submitted in an application is a technical
question which is within the province of the examiner to
determine and cannot form the basis of a proceeding before
the Board. Cf. Century 21 Real Estate Corp. v. Century Life
of America, 10 USPQ2d 2034, 2035 (TTAB 1989) (the issue of
the adequacy of the specimens is solely a matter of ex parte
examination and is not a ground for an opposition). See
also Granny's Submarine Sandwiches v. Granny's Kitchen Inc.,
199 USPQ 564, 567 (TTAB 1978) (the Board will not substitute
its judgment for that of the examiner); Hyde Park Footwear
Co., Inc. v. Hampshire-Designers, Inc., 197 USPQ 639, 642
(TTAB 1977) (it is not the Board’s function to review or
supervise the work of the examiner).3

3 Moreover, the purpose of Section 8 affidavits is to remove from
the register automatically marks which are no longer in use.
The significant facts, therefore, are that an affidavit is filed
and that a mark is actually still in use. Given the fact of
continuing use, from which practically all of the user's
substantive trademark rights derive, nothing is to be gained from
and no public purpose is served by cancelling the registration of
Cancellation No. 92032447

9
Furthermore, we find unpersuasive petitioner’s argument
that the USPTO’s examination of respondent’s renewal
application filed on September 23, 2004 sets forth facts
from which we can conclude that respondent’s September 2000
declaration of use included a material misrepresentation.
We find untenable petitioner’s argument that “error” and
“falsehood” in respondent’s September 28, 2000 declaration
amounted to fraud because respondent’s later-filed renewal
application, which respondent executed using her changed
name, prompted the USPTO to require that Yshheyna Hamilla
establish ownership of the registration. Further, inasmuch
as petitioner commenced this cancellation proceeding in 2001
alleging fraud in the declaration of use filed in 2000,
petitioner’s argument regarding the examination of the 2004
renewal application is based on facts not pleaded in and
thus irrelevant to the fraud claims in the petition to
cancel. Finally, as we have stated hereinabove,
respondent’s execution of the declaration of use in her
former name does not amount to a false material
representation regarding ownership of the registration.
To the extent that petitioner’s fraud claim is
predicated on the allegation that respondent’s declaration

a technically good trademark because of a minor technical defect
in an affidavit. It is in the public interest to maintain
registrations of technically good trademarks on the register so
long as they are still in use. See Morehouse Mfg. Co. v. J.
Strickland and Co., 407 F.2d 881, 160 USPQ 715, 720 (CCPA 1969).
Cancellation No. 92032447

10
of use knowingly withheld information that a proceeding
involving respondent’s rights in the mark was pending in the
U.S. District Court for the Middle District of Florida, we
similarly find said claim to be unpersuasive. Respondent
has been forthcoming with documentation demonstrating that,
when she filed her declaration of use, no proceeding
involving her rights in the mark was pending in a court of
law. Specifically, the pleadings and subsequent filings
pertaining to the referenced District Court infringement
action indicate that respondent filed as plaintiff in said
civil action for infringement, that no counterclaim existed
in September 2000 when respondent filed her declaration of
use, that there was no final decision adverse to
respondent’s ownership of the mark when respondent filed her
declaration of use, and that petitioner’s two unsuccessful
attempts to add a counterclaim in the District Court case to
invalidate the registration did not occur until July and
August of 2001, well after respondent filed her declaration
of use. Thus, respondent did not make a false
representation of fact, in her declaration of use, with
respect to whether an adverse decision was pending against
the registration at issue.
To summarize, on the record before us, we find that
petitioner cannot prevail on his claim that respondent
committed fraud on the USPTO in the September, 2000 filing
Cancellation No. 92032447

11
of her declaration of use. Respondent has met her burden of
demonstrating that there is no genuine issue of fact with
respect to whether said declaration of use includes a false
representation of a material fact. We thus conclude that
respondent is entitled to judgment as a matter of law with
respect to the fraud claims.
In view thereof, respondent’s motion for summary
judgment is hereby granted.
Inasmuch as the Board, on November 23, 2007, struck
Count III of the petition to cancel on the ground that said
count, alleging that the mark is merely descriptive, was
time-barred under Trademark Act Section 14(3), the petition
to cancel is hereby dismissed in its entirety.