Maids to Order of Ohio, Inc.v.Maid-to-Order, Inc.

Trademark Trial and Appeal Board

Mar 31, 2006

No. 92040571 (T.T.A.B. Mar. 31, 2006)

Mailed: March 31, 2006
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Maids to Order of Ohio, Inc.
v.
Maid-to-Order, Inc.
_____

Cancellation No. 92040571
_____

Michael A. Marrero of Ulmer & Berne, LLP for Maids to Order
of Ohio, Inc.

Vangelis Economou of Ryndak & Suri for Maid-to-Order, Inc.
_____

Before Seeherman, Hairston and Bucher, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

Maids to Order of Ohio, Inc. (an Ohio corporation;
hereinafter MTO-Ohio) has petitioned to cancel the
registration of Maid-to-Order, Inc. (an Illinois
corporation; hereinafter MTO) for the mark MAID TO ORDER for
“cleaning of domestic and business premises.”1

1 Registration No. 1,155,884, issued May 26, 1981, which sets
forth a date of first use of the mark anywhere of November 21,
1971 and a date of first use in commerce of December 10, 1974;
Section 8 and 15 affidavit filed and acknowledged, respectively;
renewed.
THIS OPINION IS CITABLE AS
PRECEDENT OF THE TTAB
Cancellation No. 92040571
2
In the petition to cancel, MTO-Ohio asserts that it is
the owner of the registered mark MAIDS TO ORDER for the
following services:
franchising, namely, offering technical assistance
in the establishment and operation of commercial
and residential maid services and carpet cleaning
services in International Class 35; and

maid services in class 37;2
that it adopted and has continuously used the mark MAIDS TO
ORDER in connection with such services since as early as
November 1986; that the services identified in MTO’s
registration are closely related and in some instances
identical to MTO-Ohio’s services; and that MTO committed
fraud upon the United States Patent and Trademark Office
(USPTO) in the procurement and maintenance of its
registration. In particular, MTO-Ohio alleges that MTO’s
statement in the underlying application, the Section 8
declaration, and the application for renewal, that the mark
MAID TO ORDER had been used or was in use in interstate
commerce constitutes a material false misrepresentation

2 Registration No. 2,466,602, issued on July 3, 2001, which
alleges a date of first use of the mark in commerce of 1988 in
connection with both classes.
Cancellation No. 92040571
3
because MTO has not used the mark in interstate commerce.3
MTO, in its answer, denied the essential allegations of
the petition to cancel and asserted as an affirmative
defense that MTO-Ohio adopted its mark with knowledge of
MTO’s mark and that MTO-Ohio is guilty of unclean hands. In
addition, MTO asserted a counterclaim to cancel MTO-Ohio’s
pleaded registration on the grounds of fraud and Section
2(d) likelihood of confusion. MTO alleges that MTO-Ohio
committed fraud upon the USPTO in the procurement of its
registration because when MTO-Ohio filed its application, it
knew of MTO’s prior rights in the mark MAID TO ORDER for
cleaning services, and yet failed to disclose those rights.
Further, MTO alleges that it adopted and has continuously
used the mark MAID TO ORDER in connection with the cleaning
of domestic and business premises since 1971; that this is
long prior to MTO-Ohio’s first use of the mark MAIDS TO
ORDER; and that MTO-Ohio’s mark so resembles MTO’s
previously used and registered mark as to be likely to cause
confusion, or to cause mistake or to deceive.

3 Also, MTO-Ohio alleges that MTO committed fraud when, in a
cancellation proceeding involving MTO and a third-party, MTO
alleged that MTO “is using the mark [MAID TO ORDER] in the
Chicago metropolitan area; state of Illinois; northwestern
Indiana; state of Wisconsin; and has in the past utilized the
mark in the state of California and in Mexico.” The Board cannot
consider in this proceeding purportedly fraudulent allegations
made in another proceeding. Thus, MTO-Ohio’s “claim” of fraud in
this regard is not a claim upon which relief may be granted, and
we have given no further consideration to this allegation.
Cancellation No. 92040571
4
MTO-Ohio, in its answer to MTO’s fraud and Section 2(d)
likelihood of confusion counterclaims, denied the essential
allegations thereof.
Evidentiary matters
At the outset, we must discuss several evidentiary
matters. We note that MTO-Ohio has filed a copy of the
discovery deposition of MTO’s president, Coralee Kern. The
discovery deposition was not submitted by notice of reliance
as required by Trademark Rule 2.120(j). However, this rule
does permit a party to submit the discovery deposition of
its adversary, and in this case, MTO has treated the
discovery deposition as being of record by referring to the
deposition in its brief on the case. Thus, the discovery
deposition is considered to have been stipulated into the
record.
Further, MTO filed by notice of reliance a copy of the
declaration (with exhibits) of its president, Coralee Kern,
which was originally submitted in support of MTO’s motion
for summary judgment. Although these types of materials
generally may not be submitted by notice of reliance, MTO-
Ohio has not objected thereto and indeed has treated the
materials as being of record by referring to them in its
brief on the case. Thus, the materials are considered to
have been stipulated into the record.
Cancellation No. 92040571
5
Also, we note that each party, by notice of reliance,
seeks to rely on the adverse party’s responses to requests
for production of documents. Although responses to requests
for production of documents generally may not be submitted
by notice of reliance (See Trademark Rule 2.120(j)(3)),
because each party has treated the materials as though they
can be made of record in this fashion, each party’s
responses are considered to have been stipulated into the
record.
Finally, on January 30, 2006, well after the testimony
and briefing periods had closed in this case, MTO-Ohio
filed, by “supplemental” notice of reliance, the affidavit
of its current president, John Davies, together with
printouts of several pages from MTO’s website. MTO has
moved to strike the supplemental notice as untimely, having
been filed outside MTO-Ohio’s testimony periods in both the
cancellation and counterclaim. See Trademark Rule 2.121.
MTO’s motion to strike is granted and we have not considered
the affidavit and printouts in reaching our decision herein.
The Record
Thus, the record consists of the pleadings; the files
of the involved registrations; the testimony depositions
(with exhibits) of MTO-Ohio’s witness, Joseph Jefferys, and
MTO’s witness Coralee Kern; and the discovery deposition
(with exhibits) of Ms. Kern. MTO-Ohio submitted MTO’s
Cancellation No. 92040571
6
responses to interrogatories and request for production of
documents. MTO submitted MTO-Ohio’s responses to
interrogatories, requests for production of documents, and
requests for admissions; and the declaration (with exhibits)
of Ms. Kern which was submitted in support of MTO’s motion
for summary judgment.4
Briefs have been filed, but no oral hearing was
requested.
The Parties
MTO-Ohio

MTO-Ohio offered the testimony deposition of its vice-
president, Joseph Jefferys. MTO—Ohio began doing business
in Ohio in 1987. (Jefferys dep. at 4). MTO-Ohio “is a
corporation that was founded on professional
residential/commercial office cleaning services that was
turned into a franchise and [Mr. Jefferys and his wife] are
the franchise owners.” (Dep. at 3-4). Mr. Jefferys came up
with the mark MAIDS TO ORDER. (Dep. at 5). Mr. Jefferys
learned of MTO’s registration for the mark MAID TO ORDER in
“early October 1992” as a result of an online search. (Dep.
at 6-7). Thereafter, he telephoned MTO’s president, Coralee
Kern, and his testimony concerning this conversation is as
follows:

4 MTO also submitted a copy of its Registration No. 1,155,884.
This registration, which is the subject of the cancellation
proceeding, is of record by operation of the rules.
Cancellation No. 92040571
7
Q. And why did you telephone Miss Kern?

A. Once I found out that she was awarded the
mark Maid-to-Order, I called her personally and
asked if she was using it outside of Illinois.
Her statement to me was she was only located in
the city of Chicago. She was only cleaning in
the city of Chicago. I told her what I had in
mind. She said she had no plans whatsoever to
take the mark outside of Illinois or the city of
Chicago. I then at that time told her that I
felt that she was illegally awarded, fraudulently
awarded the name Maid to Order because she wasn’t
using it in interstate commerce.

Q. Why did you feel the need to call Miss Kern
about the Maid to Order mark?

A. Well, at that time or a couple of months
before we made a decision to franchise our system
due to its success. And we had – I put my life
savings in it to get it going and I was ready to
go and I wanted to franchise the system. And she
more or less stated she wasn’t going to use it in
interstate commerce.

Q. During the conversation of October 1992, what
did you tell Ms. Kern, about your use of your
Maids to Order mark?

A. I just told her our plans, that we had just
sold our first franchise, and we are now planning
on selling franchises from coast to coast.

Q. And during the conversation of October 1992,
what was Ms. Kern’s response to the fact that you
were using your Maids to Order mark to franchise?

A. She stated that she really didn’t care.
Again, she wasn’t going to use it in interstate
commerce as long as I stayed out of Chicago.
(Dep. at 6-7).

According to Mr. Jefferys, it was his belief from the
conversation with Ms. Kerns that MTO was not using and had
not used the mark MAID TO ORDER in interstate commerce. He
thereafter went ahead with his plans to sell MAIDS TO ORDER
Cancellation No. 92040571
8
franchises. (Dep. at 8-9.) Mr. Jefferys testified that in
1999, after MTO-Ohio had grown significantly, counsel for
MTO-Ohio spoke with Ms. Kern. Again, according to Mr.
Jefferys, Ms. Kern advised MTO-Ohio’s counsel that she did
not have plans to use the mark outside the Chicago
metropolitan area. (Dep. at 10).
With respect to filing the application which matured
into MTO-Ohio’s registration, Mr. Jefferys testified that:
Q. Did you satisfy yourself that from what you
had read on-line with regard to federal trademark
law that you were free to use the mark? Go ahead.

A. If, in fact, that was the law that I read that
the federal government put on their website, yes,
I understood it.

Q. What do you remember of the law that you read?

A. About interstate commerce.

Q. And how do you define interstate commerce?

A. Using the trademark outside of the state.
…..

Q. Explain to me your understanding of the word
“use” first of all.

A. If I recall, without having the website drawn
up in front of me from the United States
government, “use” means using it in commerce
which, especially in franchising which I was about
to do in commerce, means state to state, shore to
shore throughout the United States. That was my
understanding. (Dep. at 28-30).

Further, Mr. Jefferys testified that he had no firsthand
knowledge of MTO’s use of the MAID TO ORDER mark prior to
this cancellation proceeding. (Dep. at 16).
Cancellation No. 92040571
9
MTO
MTO offered the testimony deposition of its president
and CEO, Coralee Kern. In addition, MTO relied on the
discovery deposition and summary judgment declaration of Ms.
Kern. MTO has offered “cleaning and party staffing
service[s]” under the mark MAID TO ORDER since 1971. (Test.
Dep. at 11 and 14). MTO provides cleaning services for
homes and corporate apartments in the Chicago metropolitan
area. MTO employees have cleaned corporate apartments in
the Chicago metro area which are owned or leased by
companies with headquarters located outside the state of
Illinois. For example, since 1971 MTO employees have
cleaned the Chicago area corporate apartments of Swiss
Colony Corporation which is headquarted in Wisconsin (Test.
Dep. at 79-80). Included among MTO’s other out-of-state
clients are the American Broadcasting Corporation, IBM,
Broyhill Industries, Standard Oil Company, and Bear Stearns.
(Test. Dep. at 16-19). In 1981 and 1982 MTO employees
provided cleaning services for the Clairol Corporation of
Cancellation No. 92040571
10
New York at its booth at the annual “Housewares” show in
Chicago. (Test. Dep. at 77).
On December 10, 1974 and July 4, 1976, MTO employees
provided cleaning services at homes located in Wisconsin.
(Disc. Dep. at 29). In addition, on one occasion, MTO
employees accompanied a client from Chicago to San Diego to
assist the client in settling in at that location (Test.
Dep. at 127), and on another occasion an MTO employee
accompanied a client to Colorado to provide cleaning
services at a residence. (Test. Dep. at 127-128).
Ms. Kern has been interviewed by newspapers and
magazines, and has appeared on radio and television shows to
discuss MTO’s cleaning services. (Test Dep. at 29). She
and her company were featured in the February 20, 1979 issue
of Family Circle magazine (Test. Dep. at 32), the June 7,
1978 issue of the Chicago Tribune (Test. Dep. at 33), and in
the late 1970s Ms. Kern appeared on the Phil Donahue Show.
(Test. Dep. at 47). Insofar as advertising is concerned,
MTO has distributed letters and postcards with information
about its cleaning services to building managers of office
buildings in the Chicago metro area and to corporations at
their headquarters in New York and Philadelphia. (Test.
Dep. at 50-51 and 69-73). MTO also has sent business cards
to corporations that are headquartered outside Illinois.
(Test. Dep. at 118). MTO has advertised in the Evanston
Cancellation No. 92040571
11
Review, Chicago magazine, Landlord Journal, and Real Estate
Guide. (Test. Dep. at 56-57). In November 1980, MTO
advertised in the Chicago International Film Festival
Program book (Test. Dep. at 58). According to Ms. Kern,
persons from around the world attend this festival. (Test.
Dep. at 60). In addition, MTO employees leave the company’s
business cards in the corporate apartments they clean.
(Test. Dep. at 119). Insofar as MTO’s corporate clients
that are headquartered outside Illinois are concerned, MTO
sends invoices to their corporate headquarters. (Test. Dep.
at 102). During her discovery deposition, Ms. Kern
introduced two documents, one of which she characterized as
“a list of our clients that we service that we believed were
in interstate commerce,” and the second she characterized as
a list of companies from whom MTO had received checks and
she stated that “I believe that these checks showed that we
did interstate commerce business.” (Disc. Dep. at 130-134
and exhibit 7). The documents list companies with addresses
outside the state of Illinois.
Ms. Kern testified that during her conversation with
Mr. Jefferys, she never stated that MTO had not used the
MAID TO ORDER mark in interstate commerce.
The Issues

The following issues are before us for consideration:
Cancellation No. 92040571
12
1. MTO-Ohio’s claim that MTO obtained and maintained its
registration fraudulently;
2. MTO’s affirmative defense of unclean hands to MTO-Ohio’s
claim of fraud;
3. MTO’s claim that MTO-Ohio obtained its registration
fraudulently; and
4. MTO’s claim of likelihood of confusion.
We begin our discussion with the second issue.
MTO’s affirmative defense to MTO-Ohio’s Claim of Fraud
As previously noted, in its answer to MTO-Ohio’s fraud
claim, MTO pleaded as an affirmative defense that MTO-Ohio
adopted its mark with knowledge of MTO’s mark and,
therefore, that MTO-Ohio is guilty of unclean hands. In
their briefs on the case, the parties did not discuss
unclean hands, but rather the affirmative defense of laches.
Thus, it appears that the issue of laches was tried by the
implied consent of the parties. Fed. R. Civ. P. 15(b)
provides, in pertinent part, that when issues not raised in
the pleadings are tried by the express or implied consent of
the parties, they shall be treated in all respects as if
they had been raised in the pleadings. However, in this
case, it would be futile to treat the issue of laches as
though it were asserted as an affirmative defense in MTO’s
answer because laches is unavailable against a claim of
fraud. Bausch & Lomb, Inc. v. Leupold & Stevens Inc., 1
Cancellation No. 92040571
13
USPQ2d 1497, 1499 (TTAB 1986). The reason this equitable
defense is not available is that “it is within the public
interest to have registrations which are void ab initio
stricken from the register and that this interest or concern
cannot be waived by the inaction of any single person or
concern no matter how long the delay persists.” W. D.
Byron & Sons, Inc. v. Stein Bros. Mfg. Co., 146 USPQ 313,
316 (TTAB 1965), aff’d 377 F.2d 1001, 153 USPQ 749 (CCPA
1967). Thus, MTO may not raise the affirmative defense of
laches and we have given no consideration to the parties’
arguments with respect to this defense in their briefs.
Moreover, since MTO did not pursue the affirmative defense
of unclean hands and, in any event, this defense is also
unavailable against a claim of fraud (see W.D. Byron & Sons,
supra), we have given it no consideration.
MTO-Ohio’s Fraud Claim
MTO-Ohio’s fraud claim is based on its allegation that
MTO made material false misrepresentations by its statements
that it had used/was using the mark MAID TO ORDER in
connection with cleaning services in interstate commerce in
the application which issued as Registration No. 1,155,884,
Cancellation No. 92040571
14
in its Section 8 declaration, and in its application for
renewal.5 Specifically, MTO-Ohio maintains that, as shown
by the record, MTO has not rendered the services identified
in its registration, i.e., cleaning of domestic and business
premises, in more than one state on a significant basis.
MTO counters by contending that “at all relevant times,
MTO’s [president] always believed that MTO was using the
MAID TO ORDER mark in interstate commerce;” that
“continuously since 1971, MTO has used the MAID TO ORDER
mark in interstate commerce;” and that this “has been borne
out by MTO’s evidence of continuous advertising to, and
business relationships with, customers and prospective
customers both in Illinois and outside Illinois.” (Brief,
p. 11).
Fraud in obtaining or maintaining a trademark
registration “occurs when an applicant [or later,

5 MTO made the following statements:

“The mark [MAID TO ORDER] … was first used in commerce
among the several states which may lawfully be
regulated by Congress on December 10, 1974… and is now
in use in such commerce.” Application filed August 6,
1978.

“The mark [MAID TO ORDER] has been in continuous use in
interstate commerce, or such other commerce as may be
lawfully regulated by Congress for five consecutive
years from May 26, 1981 to the present.” Section 8
declaration filed July 2, 1986.

“[MTO] is using the mark [MAID TO ORDER] in commerce in
connection with … cleaning of domestic and business
premises… .” Application for renewal filed April 5,
2001.
Cancellation No. 92040571
15
registrant] knowingly makes false, material
misrepresentations of fact in connection with his
application,” or in connection with a Section 8 declaration
or in connection with an application for renewal. Torres v.
Cantine Torresella S.R.L., 808 F.2d 46, 1 USPQ2d 1483, 1484
(Fed. Cir. 1986); 5 J. McCarthy, Trademarks and Unfair
Competition, Section 20:58 (4th ed. updated March 2006) (“It
is relatively clear that fraud made in affidavits under §§8
and 9, to continue a registration, also constitutes fraud in
‘obtaining’ a registration sufficient for cancellation.”)
To constitute fraud on the USPTO, the statement must be (1)
false, (2) a material representation and (3) made knowingly.
Torres v. Cantine Torresella S.R.L., supra, 1 USPQ2d at
1484. Furthermore, as this Board has stated:
Fraud implies some intentional deceitful practice
or act designed to obtain something to which the
person practicing such deceit would not otherwise
be entitled. Specifically, it involves a willful
withholding from the Patent and Trademark Office
by an applicant or registrant of material
information or fact, which, if disclosed to the
Office, would have resulted in the disallowance of
the registration sought or to be maintained.
Intent to deceive must be “willful”. If it can
be shown that the statement was a “false
misrepresentation” occasioned by an “honest”
misunderstanding, inadvertence, negligent omission
or the like rather than one made with a willful
intent to deceive, fraud will not be found.
Fraud, moreover, will not lie if it can be proven
that the statement, though false, was made with a
reasonable and honest belief that it was true or
that the false statement is not material to the
issuance or maintenance of the registration. It
thus appears that the very nature of the charge of
fraud requires that it be proven “to the hilt”
Cancellation No. 92040571
16
with clear and convincing evidence. There is no
room for speculation, inference or surmise and,
obviously, any doubt must be resolved against the
charging party.

First International Services Corp. v. Chuckles Inc., 5
USPQ2d 1628, 1634 (TTAB 1988), citing Smith International,
Inc. v. Olin Corp., 209 USPQ 1033, 1043-44 (TTAB 1981).
The parties do not dispute that MTO’s representations
to the USPTO that the mark MAID TO ORDER had been used/was
in use in interstate commerce are “material” in that, but
for the representations, the registration would not have
been issued or maintained. In this regard, Section 3 of the
Trademark Act requires that a service mark be used in
commerce before it may be registered. In addition, Sections
8 and 9 of the Act require that a service mark be in use in
commerce in order to maintain the registration. A mark
shall be deemed to be in use in commerce “on services when
it is used or displayed in the sale or advertising of
services and the services are rendered in commerce, or the
services are rendered in more than one State or in the
United States and a foreign country and the person rendering
the services is engaged in commerce in connection with the
services.” 15 U.S.C. §1127.
The parties, in their briefs, primarily focus their
arguments on whether MTO’s evidence establishes that it was
rendering its cleaning services in interstate commerce when
MTO filed its application, its Section 8 declaration, and
Cancellation No. 92040571
17
its application for renewal. However, as noted previously,
fraud occurs when an applicant or later, registrant
knowingly makes false, material misrepresentations of fact
to the USPTO. Thus, in determining whether MTO procured and
maintained its registration fraudulently, we need not reach
the question of whether the activities relied on by MTO are
sufficient to establish that it rendered cleaning services
in interstate commerce. See Pennwalt Corporation v. Sentry
Chemical Company, 219 USPQ 542, 550 (TTAB 1983). [“In
determining the fraud issue we need not consider whether the
interstate shipment to Good Housekeeping was or was not
sufficient for use in commerce within the meaning of the
Trademark Act to support a claim of first use for purposes
of registration, and we do not decide that issue. We need
only determine whether Pennwalt’s reliance on this sale in
its application for registration constituted an intentional
misrepresentation or withholding of a fact material to the
examination of the application for registration.”].
In other words, we need only decide whether MTO’s
president, Ms. Kern, at the time of filing the application,
the Section 8 declaration, and the application for renewal,
knowingly made a false representation with respect to use of
the mark in interstate commerce. If she had a reasonable or
Cancellation No. 92040571
18
legitimate basis for the representations, then MTO has not
committed fraud.6
Analysis
Viewing the evidence in light of the above legal
principles, we find that MTO-Ohio has not established that
MTO procured and/or maintained its registration
fraudulently.
Ms. Kern testified that in connection with filing MTO’s
application, she provided counsel with two dates as evidence
of use of the mark MAID TO ORDER in interstate commerce.
She stated that MTO sent employees to work in homes in
Kenosha, Wisconsin on December 10, 1974 and in New Berlin,
Wisconsin on July 4, 1976. (Disc. Dep. at 29). As to the
July 4, 1976 date, in particular, Ms. Kern testified:
Q. Why did you choose that date to give to
Mr. Kinser:

A. Well, we don’t choose dates. I mean, it
states that somebody asks us, Maid-to-Order, to do
work.

Q. I’m speaking of the date you gave to Mr.
Kinser in your letter of August 8, 1978. You list
a date of July 4, 1976, with the City of New
Berlin, Wisconsin. Why did you choose that date
to give to Mr. Kinser?

A. I think he might have asked me where I had
done business out of Illinois.

6 We should point out that, where as here, MTO’s registration is
incontestable, MTO-Ohio may not challenge the registration on the
ground that the mark was not used in commerce.
Cancellation No. 92040571
19
Q. So Mr. Kinser explained to you the need for
the use of the trademark or service mark Maid-to-
Order out of the State of Illinois, correct?

A. Yes.

Q. So you were aware of that when you filed the
trademark application that you needed to have use
out of the state of Illinois, correct?

A. Yes.
(Disc. Dep. at 34-35).

Ms. Kern, however, was unable to remember the exact
number of times MTO had sent employees to clean premises
outside the state of Illinois. In this regard, she
testified as follows:
Q. Let’s concentrate, Ms. Kern, I know this may
be difficult. It’s been quite sometime back
around August or the summer of 1987, up to
1978. How many premises had Maid-to-Order
cleaned outside the State of Illinois?

A. I don’t know that.
(Disc. Dep. at 84).

As to Ms. Kern’s understanding of interstate commerce, she
stated during her testimony deposition:
Q. Does the term interstate commerce have any
specific meaning to ... any special meaning to
you?

A. In particular, it means that I believe that
you do work that involves going over state lines.
(Test. Dep. at 137).

Further, as outlined above, Ms. Kern testified that
MTO employees have cleaned corporate apartments which are
owned or leased by companies with headquarters located
outside Illinois; that she sends the invoices for these
Cancellation No. 92040571
20
cleaning services to the companies’ out-of-state addresses;
that MTO has sent postcards to companies that are
headquartered in Philadelphia and New York; and that MTO has
sent business cards to companies with out-of-state
addresses.
Also significant is that Ms. Kern introduced, during
her discovery deposition, a document which she characterized
as “a list of our clients that we service that we believed
were in interstate commerce.” (Disc. Dep. at 130). The
list includes the names of the companies, their addresses
(which are outside the state of Illinois), and the years
(1971-2000) during which MTO provided cleaning services at
their corporate apartments. Also, Ms. Kern introduced a
list of clients with out-of-state addresses from whom MTO
received checks, and she stated “I believe that these checks
showed that we did interstate commerce business.” (Disc.
Dep. at 134). Ms. Kern testified that these two lists were
merely representative and were not intended to be the
complete list of MTO’s corporate clients with out-of-state
addresses.
Based on this evidence, we find that Ms. Kern had a
reasonable basis for her belief that MTO had used/was using
the mark MAID TO ORDER in interstate commerce for cleaning
services at the time of filing the application, the Section
8 declaration, and the application for renewal. It was not
Cancellation No. 92040571
21
unreasonable for Ms. Kern, as a layperson, to believe that
the above activities constituted use of the MAID TO ORDER
mark in interstate commerce. The record shows that prior to
the filing date of the application, MTO had sent employees
out of state to clean residences on at least two occasions
and that it had provided cleaning services in the Chicago
metro area for at least five corporate clients that were
headquartered outside Illinois. Further, when MTO filed its
Section 8 declaration, it had at least five out-of-state
corporate clients, and when it filed its application for
renewal it had at least two such clients.7 In addition, the
record shows that prior to the filing of the application,
MTO had received at least ten checks from out-of-state
corporate clients; fifteen checks during the period between
the filing of the application and the filing of the Section
8 declaration; and fifteen checks during the period between
the filing of the Section 8 declaration and the renewal
application.
While these activities are not, in any way, conclusive
on the question of whether MTO has in fact used the mark
MAID TO ORDER in interstate commerce, they do serve to
establish that Ms. Kern had a good faith belief that MTO had
used/was using the mark MAID TO ORDER in interstate commerce

7 We note that the time frames for some of these clients cover
more than one period, e.g., prior to the filing date of the
application and at the time the Section 8 declaration was filed.
Cancellation No. 92040571
22
at the time of filing the application, the Section 8
declaration, and the application for renewal. This belief
is sufficient to negate an inference of fraud upon the USPTO
in obtaining and maintaining the registration. Cf. Global
Machine GmbH v. Global Banking Systems, Inc., 227 USPQ 862
(TTAB 1985) [U.S. distributor of foreign-made goods who
falsely represented to USPTO examiner that foreign
manufacturer was not the owner of the mark was found guilty
of fraud].
Further, while we need not and do not decide whether
such activities constitute use of the mark MAID TO ORDER in
interstate commerce, we nonetheless note that our primary
reviewing court and its predecessor have held that the “use
in commerce” requirement of Section 3 of the Act does not
require as a prerequisite to registration that an
applicant’s services be rendered in more than one state.
See Larry Harmon Pictures Corp. v. The Williams Restaurant
Corp., 929 F.2d 662, 18 USPQ2d 1292 (Fed. Cir.
1991)[applicant that operated a single restaurant in
Tennessee under the mark BOZO’S was found to have used the
mark in commerce where record showed that customers from out
of state had patronized the restaurant]; and In re Gastown,
Inc., 326 F.2d 780, 140 USPQ 216 (CCPA 1964)[applicant that
operated a chain of automobile and truck service stations in
Ohio under the mark GASTOWN was found to have used the mark
Cancellation No. 92040571
23
in commerce where record showed that some of applicant’s
stations were located on federal highways and were
patronized by customers from other states].
In sum, we find that MTO-Ohio has not met its “heavy
burden of proof” in showing fraud. W.D. Byron & Sons, Inc.,
supra. MTO-Ohio’s petition to cancel MTO’s registration is
therefore denied.
MTO’s Fraud Counterclaim
We turn next to MTO’s counterclaim to cancel MTO-Ohio’s
registration on the ground of fraud. The basis of MTO’s
counterclaim of fraud is that at the time MTO-Ohio filed its
application, MTO-Ohio’s president, Mr. Jefferys, knew of
MTO’s use and registration of the mark MAID TO ORDER for
cleaning services and yet MTO-Ohio, in its application,
knowingly misrepresented to the USPTO that to the best of
its “knowledge and belief no other person, firm,
corporation, or association has the right to use said mark
in commerce, either in the identical form or in such near
resemblance thereto as may be likely, when applied to the
[services] of such other person, to cause confusion, to
cause mistake or to deceive … .” MTO maintains that not
only did MTO-Ohio’s president, Joseph Jefferys, know of
MTO’s use and registration of the mark MAID TO ORDER for
cleaning services, but MTO-Ohio subsequently offered to
Cancellation No. 92040571
24
purchase MTO’s rights in the mark; and yet MTO-Ohio failed
to disclose MTO’s prior rights to the USPTO.
MTO-Ohio maintains that it has not committed fraud
because MTO has not used the mark MAID TO ORDER in
interstate commerce, and thus MTO does not have rights prior
or superior to those of MTO-Ohio.
First, we note that this Board has held that the
failure of a party filing an application to disclose the
existence of a prior registration to the USPTO is not fraud.
William Grant & Sons, Inc. v. National Distillers and
Chemical Corporation, 173 USPQ 813 (TTAB 1972)[counterclaim
did not state a cause of action since, even if opposer’s
predecessor (at the time of filing application for
registration) knew or should have known of prior
registration of same mark as instant applicant now seeks to
register, predecessor did not act fraudulently since such
prior registration was known or should have been known to
the examiner and, hence, predecessor’s statement that no
other party had right to use mark was not intended to
mislead examiner].
Further, citing Kemin Industries, Inc. v. Watkins
Products, Inc., 192 USPQ 327 (TTAB 1976), Professor McCarthy
has pointed out that “[t]he oath is phrased in terms of a
subjective belief, such that it is difficult, if not
impossible, to prove objective falsity and fraud so long as
Cancellation No. 92040571
25
the affiant or declarant has an honestly held, good faith
belief.” 5 J. Thomas McCarthy, McCarthy on Trademarks and
Unfair Competition (4th ed. updated March 2006) at Section
31.76 (emphasis in original). In determining whether an
applicant, when he signed his application oath, held an
honest, good faith belief that he was entitled to
registration of his mark, the Board has stated that “if the
other person’s rights in the mark, vis-à-vis the applicant’s
rights are not known by applicant to be superior or clearly
established, e.g., by court decree or prior agreement of the
parties, then the applicant has a reasonable basis for
believing that no one else has the right to use the mark in
commerce, and that applicant’s averment of that reasonable
belief in its application declaration or oath is not
fraudulent.” Intellimedia Sports Inc. v. Intellimedia
Corp., 43 USPQ2d 1203 (TTAB 1997).
As noted above, Mr. Jefferys’ defense to the claim of
fraud is based on his view that MTO was not using the MAID
TO ORDER mark in connection with cleaning services in
interstate commerce. However, Mr. Jefferys’ interpretation
of the law in this respect is incorrect. Even if a party is
using a mark in a limited geographical area, such use must
be disclosed if the applicant knows that that party has
rights. The question then is what exactly did Mr. Jefferys
know concerning MTO’s rights in the MAID TO ORDER mark.
Cancellation No. 92040571
26
There is, at the very least, a dispute as to whether
Mr. Jefferys knew that MTO was using the mark MAID TO ORDER
in interstate commerce at the time MTO-Ohio filed its
application. Mr. Jefferys testified that when he spoke with
Ms. Kern prior to filing MTO-Ohio’s application, she
indicated that MTO was not using the MAID TO ORDER mark
outside the city of Chicago. Of course, Ms. Kern testified
that she did not tell Mr. Jefferys that MTO was not using
the mark in interstate commerce.
However, beyond this, we have no testimony concerning
what, if any, further information concerning MTO’s use of
the MAID TO ORDER mark was disclosed by Ms. Kern to Mr.
Jeffreys. In particular, we have no testimony concerning
whether Ms. Kern indicated to Mr. Jeffreys when MTO began
using the MAID TO ORDER mark. Rather, Mr. Jefferys
testified that he had no firsthand knowledge of MTO’s use of
the mark MAID TO ORDER prior to this proceeding. Mr.
Jefferys testified as follows:
Q. Prior to this cancellation proceeding, did you
have any firsthand knowledge of any use of Miss
Kern’s Maid-to-Order mark?

A. No.

Q. If Miss Kern was using the Maid-to-Order mark
in interstate commerce, would that have had any
effect upon your use of your Maids to Order mark
and you franchising under that name?

A. Absolutely.

Q. What effect would it have had?
Cancellation No. 92040571
27
A. We wouldn’t have used the mark.

Q. Why not?

A. We had two federal trademarks, the Personal
Touch People and Maids to Order. If she was going
to use or used it in interstate commerce, we would
have been known as of today as the Personal Touch
People.
(Dep. at 16).

Thus, we cannot say that, from the information Mr.
Jeffreys received during his telephone conversation with Ms.
Kern, he had clear knowledge that MTO had the right to use
the MAID TO ORDER mark, e.g., that MTO had superior rights
to those of MTO-Ohio. In this regard, we note that a
trademark applicant has no duty to investigate potential
conflicting uses that might be found through a trademark
search, and therefore there is no duty to investigate
specific information such as when a third party may have
started using a mark. See e.g. Money Store v. Harriscorp
Finance, Inc., 689 F.2d 666, 216 USPQ 11 (7th Cir. 1982) [an
applicant has no duty to investigate and report to the
USPTO all other possible users of the same or similar mark].
In sum, we cannot say that Mr. Jefferys knew or should
have known that MTO had prior rights in the MAID TO ORDER
mark which MTO-Ohio should have disclosed. Indeed, it
appears from the above testimony that had Mr. Jeffreys
understood that MTO had prior rights in the MAID TO ORDER
mark based on use of the mark in a limited geographical
area, MTO-Ohio would not have filed its application.
Cancellation No. 92040571
28
Rather, it would have gone forward with the mark “Personal
Touch People.” In other words, it appears that MTO-Ohio
went forward with its application because Mr. Jefferys did
not believe that MTO had prior rights in the MAID TO ORDER
mark. We should add that the fact that MTO-Ohio, subsequent
to filing its application, offered to purchase whatever
rights MTO had in the MAID TO ORDER mark is not evidence
that MTO-Ohio knew that MTO had prior or superior rights.
In view of the foregoing, we find that MTO has not
established that MTO-Ohio committed fraud in signing the
declaration in its application.
MTO’s Likelihood of Confusion Counterclaim
We turn next to MTO’s counterclaim of likelihood of
confusion.8 Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set forth
in In re E. I. duPont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973). See also, In re Majestic Distilling
Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.
2003). In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and
the similarities between the goods and/or services. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d

8 In view of our denial of MTO-Ohio’s petition to cancel MTO’s
registration, we have accorded the registration full effect in
rendering our decision on the issue of likelihood of confusion.
Cancellation No. 92040571
29
1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
Priority
The record shows that MTO first used its mark MAID TO
ORDER in connection with its services, i.e., cleaning of
domestic and business premises, in 1971. This date is
earlier than the date of first use of 1987 established by
MTO-Ohio in connection with its cleaning services and
franchising services. Priority may be based on intrastate
use of a mark. Corporate Document Services, Inc. v.
I.C.E.D. Management, Inc., 48 USPQ2d 1477 (TTAB 1998).
Thus, priority lies with MTO.
The Marks
Considering first MTO-Ohio’s mark MAID TO ORDER and
MTO’s mark MAIDS TO ORDER, it is obvious that they are
virtually identical in terms of appearance and sound,
differing by only one letter. Further, the marks have very
similar connotations. Both marks are a “play” on the
expression “made-to-order” and connote a maid(s) which meets
the customer’s specific needs.9 Consequently, when
considered in their entireties, the marks MAIDS TO ORDER and

9 In this regard, we judicially notice that the phrase “made to
order” is defined in Webster’s II New Riverside University
Dictionary (1984) as: 1. Made according to particular
requirements or instructions: Custom-made. 2. Highly suitable.
Cancellation No. 92040571
30
MAID TO ORDER project essentially the same commercial
impression.
The Services
We turn next to the respective services. The class 37
“maid services” set forth in MTO-Ohio’s registration are
highly similar, if not identical, to the services set forth
in MTO’s registration, namely, “the cleaning of domestic and
business premises.” Moreover, because the class 35
franchising services set forth in MTO-Ohio’s registration
involve the franchising of maid services, such franchising
services are also similar to the services of cleaning of
domestic and business premises set forth in MTO’s
registration. Indeed, with respect to the relatedness of
the parties’ services, we note MTO-Ohio’s allegation No. 6
in the petition to cancel that MTO’s services are “closely
related and in some instances, identical to those of [MTO-
Ohio].” Also, in view of the identical and related nature
of MTO-Ohio and MTO’s services, we must presume that such
services would travel in the same channels of trade and be
offered to the same classes of consumers.
In view of the substantial similarity of the marks and
identity/relatedness of the services, we find that
contemporaneous use of the involved marks is likely to cause
confusion. Persons familiar with MTO’s cleaning services
for residential and business premises offered under the mark
Cancellation No. 92040571
31
MAID TO ORDER, upon encountering MTO-Ohio’s cleaning
services and franchising services offered under the mark
MAIDS TO ORDER would be likely to believe that the services
originated with or are somehow associated with or sponsored
by the same source.
Decision: The petition to cancel Registration No.
1,155,884 on the ground of fraud is denied. The
counterclaim to cancel Registration No. 2,466,602 on the
ground of likelihood of confusion is granted and the
registration will be cancelled in due course.