TTAB Dismisses Fraud Counterclaims in "M & Design" Kerfuffle

In this consolidated proceeding involving likelihood of confusion between various "M" design marks for sport bags and clothing, Defendant Marker counterclaimed for cancellation of two of Plaintiff Wolverine's pleaded registrations, on the ground of fraud. Marker, however, failed to prove its fraud claims "to the hilt" because it failed to show that Wolverine intended to defraud the PTO. Wolverine Outdoors, Inc. v. Marker Volkl (International) GmbH, Oppositions Nos. 91161363, 91177732, and 9117736 (Sept. 30, 2013) [not precedential].

Marker claimed that, when Wolverine filed its Statements of Use in connection with the applications that issued as the two challenged registrations, Wolverine knew that it was not using the marks on all of the goods identified in the registrations. The Board considered the testimony of Wolverine’s corporate counsel and of a Wolverine’s employee, regarding the circumstances surrounding the signing of the respective statements of use, and concluded that they did not have the requisite intent to defraud the Office.

Each independently testified to Wolverine’s corporate procedures, which we find reasonable, for ensuring that the statements accurately represented the goods upon which the marks were used, and each independently advised that they followed those procedures at the time.

The Board went on, in its 47-page decision, to sustain in part Wolverine's opposition, but dismissed Marker's opposition as well as its fraud counterclaims.

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TTABlog note: The shutout streak continues. Not a single fraud claim has been upheld by the Board since the CAFC's Bose decision.

Text Copyright John L. Welch 2013.

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