It's All A Matter of Class(es)

Submitted by patentadmin on Wed, 05/06/2009 - 00:21

As a refreshing change of topic, let’s turn our attention to trademarks. The T.T.A.B. (the Trademark Trial and Appeal Board – the Trademark Office internal appellate body) recently addressed a “question of first impression” (sounds impressive, doesn’t it?), namely whether fraud as to one class of a multiple class registration subjects the entire registration subject to cancellation. G&W Laboratories, Inc. v. GW Pharma Limited

G&W filed an opposition against GW (the reader can see the genesis of the problem) without, apparently, first checking to assure that its own skirts were clean. GW counterclaimed for cancellation of G&W’s trademark registration, on the grounds that G&W had not actually used the mark (the mark is “G&W,” in case the reader hasn’t guessed) in connection with the services specified in the registration.

The registration in question was in respect of two classes: one for goods and the other services. G&W admitted it had not used the mark for the specified services. There was no allegation as to any impropriety as to use of the mark by G&W on goods.

G&W took the appropriate steps to delete the services class from its registration and argued that the counterclaim should be dismissed as moot. GW, quite naturally, argued that deletion of the services class did not cure the fraud – if fraud is shown as to one class, the entire registration must be cancelled.

The T.T.A.B. decided (drum roll) that fraud as to one class of a multiple class registration does not taint the other classes. Multiple class registrations are merely a matter of convenience. The registrant could just as easily have registered the mark in each class separately. A multiple class registration is the legal equivalent of a number of single class registrations.

THE LESSONS TO BE LEARNED: Crime does not pay; the truth will out. Make sure your own house is in order before suing others who will engage in discovery.

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