Addressing a contentious area of trademark law, the Trademark Trial and Appeal Board (TTAB), in a recent precedential decision, held that “each class of goods and/or services in a multiple class registration must be considered separately when reviewing the issue of fraud, and judgment on the ground of fraud as to one class does not in itself require cancellation of all classes in a registration.” G&W Labs., Inc. v. G.W. Pharma Ltd., Opposition No. 91169571 (TTAB, Jan. 29, 2009) (Hairston, Holtzman, Mermelstein, ALJs).
The opposer, G&W Laboratories, Inc. (Labs), owned two trademark registrations for the mark G&W. Both registrations were multiple class registrations for goods in Class 5 and services in Class 35. Labs opposed the application for registration by G.W. Pharma Ltd. (Pharma) of the mark GW PHARMACEUTICALS (and design) on the grounds of priority and likelihood of confusion. Following commencement of the opposition proceeding, applicant Pharma counterclaimed to cancel Labs’ registrations on the basis of fraud.
In April 2008, Labs filed a Section 8 Declaration of Continued Use with respect to the registrations at issue, wherein it deleted Class 35 from the registrations. In May 2008, Labs filed a motion to dismiss Pharma’s counterclaims against Class 35 as moot and to dismiss the counterclaims against Class 5 for failure to state a claim. Labs argued that deletion of the Class 35 services from its registrations rendered Pharma’s counterclaims moot. In opposition, Pharma argued that deletion of a class during maintenance of a registration will not cure fraud and, moreover, that if fraud is shown as to one class of a multiple class registration, then the registration in its entirety must be cancelled.
The TTAB denied Labs’ motion to dismiss the counterclaims as moot, stating that it is settled that “fraud cannot be cured merely by deleting from the registration those goods or services on which the mark was not used at the time of the signing of a use-based application or a Section 8 affidavit.” With respect to Lab’s motion regarding the Class 5 counterclaims, the TTAB acknowledged that the line of cases since Medinol had only involved single class applications or registrations; thus, the TTAB had not had the occasion to consider whether fraud in less than all classes of a multiple class registration subjects the entire registration to cancellation for fraud. Because a multiple-class application can be viewed as a series of applications for registration of a mark that have been combined into one application, the “filer of such an application is in the same position it would be had it filed several single-class applications instead.” The TTAB therefore granted Labs’ motion to dismiss Pharma’s Class 5 counterclaims, holding that each class in a multiple class registration must be viewed separately for fraud and a finding of fraud against one class will not subject an entire multiple class registration to cancellation.