Fraudulent Nonuse Voids Trademark Registration in Classes Where Fraud Was Committed

Thanks to John Welch's TTABlog for writing about Herbaceuticals, Inc. v. Xel Herbaceuticals, Inc., Cancellation No. 92045172 (March 7, 2008) where the U.S. Trademark Trial and Appeal Board stated that a registration is void in the international class or classes in which fraud based on nonuse has been committed. According to the Board,

Contrary to Xel’s assertion, partial cancellation is not the appropriate remedy here. Partial cancellation would merely place Xel in the same position in which it would have been had it filed statements of use which accurately reflected the goods on which the marks were being used. Rather, if fraud can be shown in the procurement of a registration, the registration is void in the international class or classes in which fraud based on nonuse has been committed.

[FOOTNOTE 5: Xel's reliance upon Grand Canyon West Ranch LLC v. Hualapai Tribe, 78 USPQ2d 1696 (TTAB 2006), in support of its contention that partial cancellation is the appropriate remedy under the circumstances is misplaced. In that case, the Board found that, in view of applicant's nonuse of the involved mark on some of the services identified in the involved application, partial judgment as to the goods for which use of the mark was not made was appropriate. However, that was because no fraud claim had yet been pleaded and the Board was only concerned with the question of use or non-use for particular items.]

See General Car and Truck Leasing Systems, Inc. v. General Rent-A-Car Inc., 17 USPQ2d 1398, 1401 (S.D. Fla. 1990), aff'g General Rent-A-Car Inc. v. General Leaseways, Inc., Canc. No. 14,870 (TTAB May 2, 1998).

"In other words, fraud may knock out a single class in a multiple-class registration," notes Welch. "In the instant case, however, each registration of the six registrations involved a single class of goods."