S. Snow Mfg. Co., Inc. v. Snowizard Holdings, Inc., 2013-1586, 2014 WL 2959480 (Fed. Cir. June 30, 2014).
In a case involving multiple segments of the snowball (shaved ice) industry, the district court ruled upon a variety of claims, including those relating to patents, trademarks, antitrust, and RICO violations.
Among the trademark issues on appeal, the Federal Circuit faced for the first time the question of whether a party may assert a claim for fraud in the procurement of a trademark if the mark was applied for, but not registered, at the time claim was filed. Looking to the reasoning of the Seventh Circuit—the only other court of appeals to address the issue—the court held that competing firms are not injured by an application, but by the registration itself. The court explained that when the applications matured into the registrations, the plaintiffs could have amended their complaint to add the fraud claims at that time, but could not have asserted them prior to registration.
And so the Federal Circuit upheld the district court’s dismissal of the fraud claims.