The Board denied Petitioner's motion to add a fraud claim to its petition for cancellation, finding that, as to the two grounds advanced, Petitioner's proposed pleading was legally insufficient. Software Freedom Law Center v. Software Freedom Conservancy, Cancellation No. 92066968 (April 26, 2018) [not precedential].
The original petition for cancellation claimed a likelihood of confusion between Petitioner's registered mark SOFTWARE FREEDOM LAW CENTER for legal services, and Respondent's registered mark SOFTWARE FREEDOM CONSERVANCY for FOSS software and related promotional and development services.
In the proposed Amended Petition, Petitioner offered two separate grounds for its fraud claim: (1) that because Respondent knew that Petitioner's rights in its mark predated any of Respondent's rights in the challenged mark, Respondent made a false, material statement when it signed the declaration for the underlying application; and (2) Respondent willfully failed to disclose, in its underlying application, that it provided legal services and, thus, the examining attorney relied on the false identification of goods and services when he/she decided to approve the application without citing Petitioner's prior registration as a basis for likelihood of confusion under Section 2(d).
(1) As to the first ground, the Board observed that the allegations in the declaration accompanying an application are made upon the declarant's subjective "belief" and/or "knowledge and belief" and, as such, cannot ordinarily be used to support a charge of fraud. Petitioner pleaded no facts that would establish that Respondent believed that there was a likelihood of confusion. Therefore, the Board found that Petitioner had failed to plead a legally sufficient claim of fraud based on the declaration.
(2) As to the second ground, the Board found the claim "implausible and legally unsupported." Petitioner cited no rule or authority holding that an applicant must verify that all of the goods or services on which it uses the mark (or intends to use the mark) are identified in the application to register the mark. "Indeed, the Office permits an applicant to limit its goods and services or remove goods from an identification during examination in order to overcome a Section 2(d) refusal whether or not the goods or services are so limited in their use. See, e.g., Dragon Bleu (SARL) v. VENM, LLC, 112 USPQ2d 1925, 1928 (TTAB 2014).
Moreover, Petitioner failed to point out any false statement made by Respondent in its application, and also did not allege that the failure to include legal services in the application was material to the USPTO's granting of the registration.
Therefore the Board ruled that Petitioner's fraud claim based on the identification of services "fails to state a claim a legally sufficient claim upon which relief may be granted. Moreover, because the claim does not include allegations of a false, material representation, the asserted claim is implausible."
Proceeding were resumed based on the original Petition for Cancellation.
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