Category Archives: Oppositions

The Return of Fraud? The TTAB Issues Its First Fraud Finding Since  In re Bose

 Authors: Danny M. Awdeh, Danielle Wright Bulger

For the first time since the Federal Circuit implemented heightened fraud standards in In re Bose, the Board recently sustained an opposition on fraud grounds. Based in significant part on the “manifest lack of credibility of applicant’s testimony,” the Board found that Applicant exceeded the “limits to what may be claimed in good faith.”

In Nationstar Mortgage LLC v. Mujahid Ahmad, the Applicant, a Virginia real-estate agent, filed a use-based application claiming use of the mark NATIONSTAR for a variety of real-estate services, including real-estate, insurance, and mortgage brokerage services. Opposition No. 91177036 (September 30, 2014) [precedential]. However, Applicant’s testimony revealed that at the time the application was filed, Applicant was not licensed to offer, and thus legally could not offer, many of the services identified in the application. Moreover, Applicant testified that he had not used the NATIONSTAR mark on any business documents, lawn signs, or invoices. He also claimed ignorance regarding whether the company he incorporated to offer the applied-for services had actually earned any income or generated any revenue.

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Board Rules “All Is Not Lost.” Sometimes Defective Filings By Unqualified Agents Can Be Cured

Author: Julia Anne Matheson

In its September 3, 2014 precedential decision in Birlinn Limited v. Angus Stewart, the Board held that the filing of extensions of time to oppose and a notice of opposition by a party not authorized to practice before the TTAB did not necessitate the dismissal of the action.

The Trademark Trial and Appeal Board’s Manual of Procedure (the “TBMP”) includes specific provisions detailing who is qualified to practice before the Board. See, e.g., Sections 114.01 – 06. Where the Board becomes aware of filings by an unauthorized individual, Section 114.06 requires the Board to notify the filer of the defect, and to require the filing be resubmitted by an authorized party or attorney/agent.

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Supplemental Expert Reports Cannot Be Submitted Via a Notice of Reliance

Author: Morgan E. Smith

The TTAB recently clarified its procedures for making evidence of record through notices of reliance. After the close of its testimony period, Applicant sought to reopen the period in order to file an additional notice of reliance. The exhibits attached to this notice of reliance included a “Supplemental Expert Report” and the documents referenced in the report. The Board excluded the Supplemental Expert Report because it was not proper subject matter for introduction via a notice of reliance. The Board then considered the possibility that the report was admissible because the parties had so stipulated. The report was not admissible on this basis because the parties’ stipulations covered the expert’s initial report, but did not address the admissibility of any additional expert reports, affidavits, or declaration testimony. The report also did not qualify as proper supplementation under the Federal Rules of Civil Procedure because, by Applicant’s own admission, it contained additional opinions designed to rebut Opposer’s expert report, rather than correct any inaccuracies in Applicant’s initial report. The documents referenced in the “Supplemental Expert Report” were admissible because they were printed publications and constituted proper subject matter for a notice of reliance. The Board struck the “Supplemental Expert Report” and reminded the Applicant that it could have avoided this problem altogether had it simply taken the expert’s deposition during its testimony period.

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