Tuesday, July 8, 2008

TTAB fires another fraud salvo into the trademark legal waters

The TTABlog® reports (link here) on another precedential decision by the Trademark Trial and Appeal Board that demonstrates again the ever increasing threat faced by trademark applicants and owners (not to mention the trademark attorneys representing them) of having their trademark applications opposed and trademark registrations cancelled due to fraud. See Grand Canyon West Ranch, LLC v. Hualapai Tribe, Opposition No. 91162008 (June 30, 2008) (precedential).

In this case, it was the Hualapai Tribe’s application to register the mark GRAND CANYON WEST. The Hualapai Tribe owns land on the west rim of the Grand Canyon and in 1986 developed a section of the land about 115 mile east of Las Vegas as a tourist destination which it named GRAND CANYON WEST.

The Hualapai Tribe’s application was opposed by a company named Grand Canyon West Ranch, LLC, which provides helicopter tours of the Grand Canyon from a ranch located along the access road to the Hualapai Tribe’s tourist site, thus the name GRAND CANYON WEST RANCH.

The Hualapai Tribe was able to fend off the opposition’s claims that the GRAND CANYON WEST mark was merely descriptive and/or primarily geographically descriptive by demonstrating its long-time use of the mark, the number of visitors and tour operators to its site on a daily basis, and its wide ranging marketing efforts in Las Vegas and beyond. The “Skywalk” – the famed (or infamous depending on your perspective) see-through glass bridge that extends 70 feet over the Grand Canyon to provide a view of the canyon floor from 4,000 feet – is located at GRAND CANYON WEST.

The "Skywalk"
at the Hualpai Tribe's Grand Canyon West

However, the fact that the Hualapai Tribe during prosecution amended its description of goods and services to include services on which it was not using the mark on the dates of claimed use was enough to doom this application – despite the fact that the specific wording was added as part of an Examiner's amendment after the Examining Attorney spoke with the Tribe’s attorney and the two agreed to an identification of services. In the Examining Attorney's final office action, the Examining Attorney had suggested "ARRANGING FOR RECREATIONAL TRAVEL TOURS AND PROVIDING RELATED TRANSPORTATION OF PASSENGERS BY AIR, BOAT, RAIL OR BUS." Then, in the Examiner's Amendment, the description, pursuant to authorization from the Tribe's attorney, was amended to "ARRANGING FOR RECREATIONAL TRAVEL TOURS AND PROVIDING RELATED TRANSPORTATION OF PASSENGERS BY AIR, BOAT, RAFT, RAIL, TRAM, BUS, MOTORIZED ON-ROAD AND OFF-ROAD VEHICLES, NON-MOTORIZED VEHICLES FEATURING BICYCLES, AND DOMESTIC ANIMALS." (Sidenote: while the Hulaipai Tribe's argument suggests that it was the Examining Attorney's own proposed description of services, one seriously doubts that an Examining Attorney would have proposed the additional, and very specific, forms of transportation that ultimately led to this application's downfall). Furthermore, it did not matter that this statement of goods and services was not a “verified statement" of goods and services such as in a statement of use. The TTAB decision makes clear that “false claims of use of the mark on goods or services, wherever they may appear, . . . are essential to the integrity of the application and registration process.”

Lessons learned: The growing threat of fraud is one that cannot be understated. For trademark applications, check, recheck, and check again every single aspect of a trademark application (whether use-in-commerce or intent-to-use) for accuracy, especially listing of goods and services. For trademark registrations, owners may want to consider conducting a “fraudit” to determine if any valuable registrations are prone to attack on the basis of fraud.

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