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montysimmons, Patent Prosecutor
Category: Intellectual Property Law
Satisfied Customers: 328
Experience:  Electrical Engineer, South Carolina Attorney, Member of US Patent Bar
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What happens to a trademark 2nd renewal if some of the

Customer Question

What happens to a trademark 2nd renewal if some of the exhibits previously claimed but suspect that they were even legal for the first renewal and now were removed/eliminated from the recent renewal Sec 8 & 9 + (Sect. 15 incontestable) Can the remaining previous elements that appear legitimate still be incontestable and the removed/eliminated Artwork Design be permanently disallowed, thus not incontestable under the registration number?
Submitted: 2 years ago.
Category: Intellectual Property Law
Expert:  montysimmons replied 2 years ago.

When you say "exhibits" are you referring to the "specimens" that are provided along with a section 8 Declaration?

Generally speaking, if more than one class has been named, a trademark holder must submit a specimen for each class of goods/services for which the mark is registered.

If, for example, someone has a mark in class 9 and class 12 then at the 5 10 20 30 etc year marks he files a statement that the mark is in use in commerce for each class AND files a specimen as proof of same. For the example above, if the trademark owner is no longer using the mark in class 12 (for example) he drops that class and only renews for class 9.

But what if a trademark owner is only using the mark in class 9 and files a false declaration for class 12?

Well, one could file a petition for cancellation of the class 12 mark and if fraud is proven the mark will be canceled for ALL class 12 goods. But what about the class 9 goods? Perhaps.

see Medinol Ltd. v. Neuro Vasx Inc., 67 USPQ2d 1205 (TTAB 2003)

  1. Deletion of the goods upon which the mark has not yet been used does not remedy an alleged fraud upon the Office.
  2. If fraud can be shown in the procurement of a registration, the entire resulting registration is void.
  3. Note however: subsequent case law has clarified that each class in a multi-class registration is assessed independently]
  4. Intent – The appropriate inquiry is not into the registrant’s subjective intent, but rather into the objective manifestations of that intent. Knowledge that the mark was not in use on the goods, or reckless disregard for the truth, is all that is required to establish intent to commit fraud.
  5. The Medinol rule - if falsity is proven in the statement that the mark is not in use on all the goods listed in either a use-based application, a statement of use, or a §8 or §9 affidavit, then a finding of fraud could result. If fraud is found it requires cancellation of the whole registration. McCarthy, § 31:73
  6. G&W Laboratories Inc. v. GW Pharma Ltd., 89 USPQ2d 1571 (TTAB 2009) Each class of goods 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.

So there is case law on both sides of the issue, but, generally speaking, 6 above applies. The final answer is fact specific as to what occurred during the registration process.

Please keep asking questions until you are satisfied with my answers.

Customer: replied 2 years ago.
Specimens that had previously been referred to in the Registration No. but no Art Work through the course of years, and say at present (recent renewals for Sect. 8 & 9 as well as incontestability Sect.15) does not include the Art Work/graphic that was and has been referred to as part of a (two word) registration that did not officially meet the TESS requirements (Words& Design).
Now the recent renewal was approved by the TM office and the particular specimen was not included along with the others.
So, my question was, if it was never included in the Registration renewals previously in the Classes listed, should the Sect. 8 & 9 and 15 be approved without the Disputed specimen now which could have involved oversight or fraud and false claims in that regard and should all previous and present renewals be nullified? And/or should the missing Specimen be barred forever from the present registrants use and incontestability?
Hope this clarifies my question.
Expert:  montysimmons replied 2 years ago.

I am having problems understanding the question.

See if the following is correct:

  1. We are talking about only one class of goods but several different goods within such class of goods. For example:
  2. Say the Mark Owner (MO) sells goods in Class X for tires and rims for motorcycles, four-wheelers, and bicycles (all goods in the same class - class X).
  3. The Mark is the text "Apple Tires" around the perimeter of a picture of a tire - so the mark is text and a graphic. During registration specimens are submitted showing the Mark correctly associated with each type of goods.
  4. At the 5 year point, MO submits specimens showing just the text "Apple Tires" for bicycles and "Apple Tires" with the graphic for motorcycles and four-wheelers. so the specimen for motorcycles and four-wheelers was correct but was not correct for bicycles as the specimen has to show the identical mark as registered.
  5. At the 10 year point, MO submits specimens of "Apple Tires" with graphic for motorcycles and four-wheelers and drops bicycles from the list of goods.

Was the mark ever valid for bicycles? The answer is Yes, the MO mark is valid for all relevant goods UNITL fraud on the USPTO is proven. And if the MO starts using the correct mark correctly for "bicycles", in the example above, after dropping bicycles from the list of goods, he still has rights in the Mark.

If someone can prove MO committed fraud on the USPTO with regard to "bicycles" then the entire class will be canceled for all goods.

I hope I answered your question, if no, please rephrase and ask again.

Customer: replied 2 years ago.
No! the Mark was never displayed on any goods in prior Renewals as well as current one in 2015. Just displayed only in claims that it was included in the Registration Mark Number during contested litigation-but print-outs of specimens does not confirm that it was included in any products from DAY-ONE til present.
And finally, when under threat of a challenge, it appears that Registrant did not elect to include same in the current Renewal for any specimens that were included in the Renewal, PRESENT and/or PAST!!! Thereby, claiming incontestability for previous and hopefully will be overlooked, again in the current Renewal with complicit and/or non-complicit help from faulty TM investigation Management!
Expert:  montysimmons replied 2 years ago.

I am having problems following your questions. The fact pattern is complex and one false assumption changes everything.

Please make up an example or give me the name of the actual mark and I will look at it.

Customer: replied 2 years ago.
I didn't include the I.D. of the Mark since I wasn't sure if it was appropriate to include in a pending case, therefore I tried to explain the complex issues without the full details. And since the Mark was never included in the Original Reg. Number but was alluded to, like it was. The specimens from the original registration and first Renewal never displayed same in any of the
specimens of any documents. And now that I'm challenging that scenario, It was not included in the recent Renewal as one of the specimens.
It would probably be easy for you if I were able to provide the Mark, case No., with the entire case history available on the USPTO TESS (TSDR) site. Just didn't want to jeopardize my efforts & research thus far.
I am an Applicant/Defendant for my New Mark that was examined by the Trademark examiner and recommended for issue and was opposed at the last possible minute. Has been going on through all the pre-trial stages for over a year.
Sorry, if I made it too difficult for you to answer.
Thanks, ***** Jr.