Fraud in less than all classes of a multiple-class registration: G&W Laboratories, Inc. v. G W Pharma Limited, 2009 TTAB LEXIS 2 (January 29, 2009)
In G&W Laboratories, Inc. v. G W Pharma Limited, 2009 TTAB LEXIS 2 (January 29, 2009), GW Pharma (Pharma) filed a trademark application, and an opposition was commenced by G&W Laboratories (Labs), which owned multiple-class trademark registrations that covered Class 5 goods and Class 35 services. Pharma counterclaimed to cancel these registrations in their entireties on the ground of fraud, alleging that Labs had not rendered the Class 35 services in the registrations on behalf of others and had not used the marks in commerce for those services. Pharma did not allege fraud in connection with the Class 5 goods. Labs deleted the Class 35 services from its registrations and argued that the counterclaims against Class 35 were moot. Labs also moved to dismiss the counterclaims against Class 5 for failure to state a claim.
The Trademark Trial and Appeal Board (TTAB) refused to dismiss the counterclaims as moot with respect to Class 35 because the fraud claim was not rendered moot by the deletion of services. However, in granting the motion to dismiss the counterclaims as to Class 5 for failure to state a claim, the TTAB rejected Pharma's contention that fraud as to one class of a multiple class registration subjected the entire registration to cancellation. The TTAB had not considered whether fraud in less than all classes of a multiple-class registration would subject the entire registration to cancellation for fraud. In addressing this issue, the TTAB stated that:
a multiple-class application can be viewed as a series of applications for registration of a mark in connection with goods or services in each class, combined into one application. As a general matter, the filer of such an application is in the same position it would be had it filed several single-class applications instead. In view thereof, we find that 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.
(emphasis added) (footnotes and citations omitted)