The TTAB granted a petition to cancel a registration for MONTELVINI VENEGAZZU for wines, spirits, and liqueurs on the ground that, despite Respondent's assertion in its Section 8/15 declaration that its mark was in use on all covered goods, the mark was not in use on liqueurs at the time of the filing and, thus, the filing of the declaration constituted a fraud on the USPTO.
Sierra Sunrise Vineyards ("Petitioner") filed a petition to cancel Montelvini S.P.A.'s ("Respondent") registration for the mark MONTELVINI VENEGAZZU covering wines, spirits, and liqueurs on the ground of fraud in Respondent's filing of its Section 8/15 declaration. Respondent moved for summary judgment, arguing that the statements made in connection with its Section 8/15 declaration were not false and that it lacked the requisite intent to commit fraud. Petitioner cross-moved for summary judgment on its claim of fraud, contending that Respondent knew or should have known that it was not using its mark on spirits and liqueurs at the time it filed its Section 8/15 declaration.
The TTAB denied Respondent's combined motion for summary judgment and motion to amend the identification of goods in its registration, and granted Petitioner's cross-motion for summary judgment. Finding that Petitioner had met its burden of demonstrating that Respondent was not using its mark on liqueurs at the time it filed its combined Section 8/15 declaration on September 8, 2005, and that Respondent failed to raise a genuine issue of material fact as to the veracity of the statements it made in its Section 8/15 declaration, or regarding its intent to deceive the USPTO, the TTAB granted judgment in Petitioner's favor. In evaluating the parties' various motions, the TTAB first considered whether Respondent's statements about the use of its mark on its identified goods (wines, spirits, and liqueurs) were material to the maintenance of its trademark registration. It was undisputed that Respondent's Section 8/15 declaration clearly stated that its mark was in use in commerce on all the goods listed in the registration, and the TTAB noted that Respondent's registration for liqueurs would not have been maintained but for that broad statement. As such, the TTAB held that the statement made in Respondent's declaration claiming use of its mark on liqueurs was material.
The TTAB then considered the falsity of Respondent's statement in its Section 8/15 declaration. In response to discovery, Respondent admitted that it has never sold or shipped liqueurs under the registered mark in the United States, although it had advertised its products in the United States. Determining that mere advertising (as contrasted with shipment or sale) did not constitute a technical trademark use, the TTAB concluded that it did not create a genuine issue of fact. Concluding that Respondent's statement that its mark was in use in interstate commerce on all of the goods listed in the registration was false, that the registration would not have been maintained for all listed goods without that false statement, and that Respondent should have known that its allegations were false at the time of filing its Section 8/15 declaration, the TTAB found in favor of Petitioner.
In defense of the fraud claim, Respondent argued that its false statement was the result of a miscommunication between itself and its U.S. and Italian trademark counsel before the declaration was filed. Respondent claimed that, given the differences in U.S. and Italian law, it had not understood the need to demonstrate specific actual use of the mark on each listed product in a registration. Respondent also argued language and cultural differences between U.S. and European views about wine in relation to other alcoholic beverages further contributed to the false statement, thereby raising a genuine issue of material fact as to its intent.
The TTAB rejected all of Respondent's arguments. As in prior decisions, the TTAB emphasized the obligation of a registrant to work with its counsel to protect against the possibility of false statements. The TTAB concluded that by signing its combined declaration, Respondent was under an obligation to investigate and thoroughly understand the applicable laws in the jurisdiction in which it is operating—namely, the United States—and that TTAB precedent mandates that distinctions in language and culture do not negate a finding of fraud.
Finally, the TTAB denied Respondent's motion to amend its registration to delete spirits and liqueurs from the identification of goods. The TTAB stated that it was confronted with this same issue in Medinol and had ruled that it was expressly prohibited: "If fraud can be shown in the procurement of a registration, the entire resulting registration is void." Thus, Respondent's motion to amend its registration was denied.
The TTAB continues to strictly adhere to its Medinol fraud standard, and defenses about miscommunications between counsel, cultural differences regarding the goods, and a lack of understanding about U.S. trademark law will not excuse an inaccurate assertion of use.