Osmosis Technology, Inc.v.GE Osmonics, Inc.

Trademark Trial and Appeal Board

Mar 30, 2004

No. 92024275 (T.T.A.B. Mar. 30, 2004)

Mailed: March 30, 2004
Paper No. 74
CEW
UNITED STATES PATENT AND TRADEMARK OFFICE
_______
Trademark Trial and Appeal Board
_______
Osmosis Technology, Inc.
v.
GE Osmonics, Inc.1
_______
Cancellation No. 92024275
regarding
Registration No. 1,807,321
_______
Donald B. Finkelstein, Esq. for Osmosis Technology, Inc..
Steve Lucke and Paul J. Robbennolt of Dorsey & Whitney for
GE Osmonics, Inc.
______
Before Cissel, Hairston and Walters, Administrative
Trademark Judges.
Opinion by Walters, Administrative Trademark Judge:
Osmosis Technology, Inc. (petitioner) filed a petition
to cancel the registration of GE Osmonics, Inc. (respondent)
for the mark OSMONICS for “fluid separation systems for

1 Though the petition was filed against Osmonics, Inc., the records of
the USPTO show that Osmonics, Inc. became Oasis Acquisition, Inc.
through a merger, and subsequently changed its name to GE Osmonics, Inc.
Thus we have changed the heading in this case to reflect the current
respondent of record.
THIS DISPOSITION
IS NOT CITABLE AS
PRECEDENT OF
THE TTAB
Cancellation No. 92024275
2
water purification, pollution control and fluid,”2 in
International Class 11.
As grounds for cancellation, petitioner asserted, in
its amended petition, that respondent’s mark, when applied
to respondent’s goods, so resembles petitioner’s previously
used mark OSMOTIK for “reverse osmosis solvent separation or
ultrafiltration units used[,] for example[,] in separating
water from a salt solution”3 as to be likely to cause
confusion under Section 2(d) of the Trademark Act.
Additionally, petitioner asserted that respondent
committed fraud in obtaining its registration because the
person who executed the application, Mr. Spatz, “willfully
and fraudulently” falsely represented that “to the best of
his knowledge and belief no other person, firm, corporation,
or association has the right to use the above-identified
mark in commerce, either in the identical form or in such
near resemblance thereto as to be likely, when used on or in
connection with the goods/services of such other person, to
cause confusion, or to cause mistake, or to deceive …”;

2 Registration No. 1,807,321 registered on November 30, 1993, to
Osmonics, Inc., and USPTO records show it is now owned by GE Osmonics,
Inc. [Section 8 declarations accepted; renewal application filed;
renewal pending.]
3 Petitioner asserted that its Registration No. 864,726 on the
Supplemental Register for the mark OSMOTIK for the recited goods expired
and petitioner filed a new application to register the mark, which was
refused. Petitioner has not alleged a valid registration and, thus, we
decide petitioner’s Section 2(d) claim based on petitioner’s allegation
of a common law mark in use since February 10, 1967.
Cancellation No. 92024275
3
notwithstanding the fact that registrant “has been aware of
the trademark OSMOTIK and has been fully aware that said
mark precludes registration of respondent’s mark OSMONICS.”
(Amended Petition, para. 6.)
Respondent, in its answer, either claimed it had
insufficient knowledge to admit or deny or denied the
salient allegations of both claims and asserted as
affirmative defenses laches, acquiescence, estoppel and
unclean hands, that petitioner does not have priority of
use, and abandonment.
Procedural Matters
We begin by addressing several questions regarding the
nature of the issues and record in this case.
First, petitioner asserts that respondent had an
affirmative duty following discovery to amend its answer to
the amended petition to cancel wherein respondent claimed
insufficient knowledge to admit or deny petitioner’s claim
of likelihood of confusion; that this statement constitutes
an absolute denial; and that, therefore, respondent must be
found to have admitted that confusion is likely. Petitioner
has provided absolutely no legal basis for concluding that
respondent has admitted that a likelihood of confusion
exists and the Board declines to draw such a conclusion from
petitioner’s assertions.
Cancellation No. 92024275
4
Second, petitioner objects to the admission of selected
portions of the discovery deposition of Michael Van de
Kerckhove, submitted by respondent. Petitioner contends
that it stipulated to the admission of this deposition, but
petitioner believed that the entire deposition, not merely
portions thereof, would be submitted, and that petitioner
objects thereto. Petitioner asks, further, that, if the
selected portions of Mr. Van de Kerckhove’s deposition are
considered, petitioner objects to Mr. Van de Kerckhove’s
statements at p. 60, ln. 9 through p. 61, ln. 17, as
violating the parol evidence rule because the witness “is
attempting to contradict the terms of a written document
which he signed by oral testimony that he did not know what
he signed.” (Brief, p. 8.) Respondent, in its brief,
argues that parts of this discovery deposition are
admissible under Trademark Rule 2.120(j)(3)(i) and that
petitioner could have submitted additional portions thereof,
but chose not to.
We overrule petitioner’s objection and find that the
portions of the discovery deposition of Mr. Van de Kerckhove
are properly of record under the above-cited Trademark Rule.
Moreover, we overrule petitioner’s objection to the specific
statements noted above. Rather that attempting to
contradict the written document and state that he did not
know what he signed, Mr. Van de Kerckhove merely states
Cancellation No. 92024275
5
that, at the time of the deposition in 1996, he cannot say
“from knowledge” that the statement in the 1986 assignment
document regarding use of the mark “is correct.”
Third, petitioner objects to our consideration of the
copies of respondent’s Registration Nos. 1,732,692 and
1,721,002 because they are not certified documents and
therefore do not establish the status or ownership of the
registrations. Trademark Rule 2.122(d)(2) permits any party
to make a registration it owns of record “by appropriate
identification and introduction during the taking of
testimony or by filing a notice of reliance, which shall be
accompanied by a copy (original or photocopy) of the
registration prepared and issued by the [USPTO] showing both
the current status of and current title to the
registration.” The documents to which petitioner objects
are not status and title copies required by Trademark Rule
2.122(d), 37 C.F.R. 2.122(d). Thus, these documents are
insufficient to establish respondent’s ownership, or the
status, of the registrations. However, we have considered
respondent’s testimony and determined that ownership and
status of the claimed registrations have been established.
Finally, petitioner stated in its brief (p. 8):
“Petitioner made various objections during the taking of the
depositions submitted by Registrant. Petitioner repeats and
re-alleges each of the objections so made.” An objection to
Cancellation No. 92024275
6
testimony or exhibits introduced during testimony must be
seasonably made during trial and maintained in the party’s
brief on the case. Volkswagenwerk Aktiengesellschaft v.
Clement Wheel Co., 204 USPQ 76, 83 (TTAB 1979) (objections
made during depositions considered dropped because not
argued in briefs). See also, Trademark Trial and Appeal
Board Manual Of Procedure (TBMP), 2nd ed., 2003, Section
707.03 and cases cited therein. Petitioner’s short
statement in its brief neither identifies the objections
with specificity nor argues the validity thereof. We do not
consider petitioner’s blanket statement to be sufficient to
maintain the objections. Therefore, any objections not
otherwise individually addressed by the Board herein that
were made by petitioner during registrant’s depositions of
its witnesses are considered to have been waived.
Finally, petitioner objects to specified testimonial
exhibits consisting of respondent’s alleged annual reports,
on the ground that neither Mr. Spatz nor Mr. Paulson are
qualified to establish a proper foundation for these
reports, and that the reports constitute hearsay. We
disagree and find that both Mr. Spatz, respondent’s chairman
and CEO, and Mr. Paulson, respondent’s director of corporate
technical services, adequately testified to their personal
knowledge of these regularly-kept business records. Thus,
we have considered these exhibits. However, the contents of
Cancellation No. 92024275
7
the reports are hearsay as to the truth of the facts
contained therein, and so have not been considered for that
purpose. To the extent that the reports evidence use of the
mark on items ancillary to the claimed products, i.e., the
annual reports, as well as on products pictured therein,
they have been considered.
The Record
The record consists of the pleadings; the file of the
involved registration; the several depositions, all with
accompanying exhibits, of Donald D. Spatz, respondent’s
founder, chairman and CEO, David J. Paulson, respondent’s
director corporate technical services, and Mike O.
Joulakian, petitioner’s president; the depositions, all with
accompanying exhibits, of David Furukawa, Randolph Truby,
Anthony G. Lickus, Robert W. Thompson and David Frederick
Needham, all of whom who held positions with one or more
alleged predecessor companies of petitioner; portions of the
discovery deposition, with accompanying exhibits, of Michael
Van de Kerckhove, senior counsel and officer of an alleged
predecessor company of petitioner; and by notices of
reliance containing, inter alia, excerpts from the USPTO
Assignment records, a copy of a 1977 letter to the USPTO
Commissioner, and, submitted by petitioner, respondent’s
Cancellation No. 92024275
8
responses to petitioner’s first request for admissions.4
Both parties filed briefs on the case, but a hearing was not
requested.
Factual Findings
The record establishes the following facts in this
case.
The general field involved in this case is fluid
separation using cross-flow membrane technology. This
includes, in order of particle size filtered from smallest
to largest, reverse osmosis, nanofiltration, ultrafiltration
and microfiltration. The products identified by the
parties’ respective marks pertain to reverse osmosis and
both parties’ witnesses describe the processes of reverse
osmosis and ultrafiltration and its various applications.
Mr. Paulson explained the technology of reverse osmosis
as follows:
Natural osmosis occurs from an imbalance in energy
of fluids on opposite sides of a semipermeable
membrane. The energy is higher in the more pure
water, and nature tends to move the water from the
more pure state trying to dilute the water in the
less pure state until they reach the same energy
level.
…
Reverse osmosis is to take the process of osmosis
and reverse it by applying hydraulic pressure to
the water that is less pure, the side, the fluid
that has … less energy and more solids in it.
Force that water against the surface of the
membrane, of a semipermeable membrane. Such a

4 The various discovery depositions (of Spatz, Paulson, Joulakian and
Van der Kerckhove) were entered into the record by the adverse party to
that deposition either as an exhibit to testimony or by notice of
reliance.
Cancellation No. 92024275
9
membrane has to have very small pores, as they’re
called, and allow only water to go through or very
little of the contaminated material. So you’re
reversing the natural osmosis procedure. … The aim
is to allow pure water to go through [the pores]
while retaining and not allowing the transfer of
other solutes and suspended material to go
through.
…
Reverse osmosis allows the purification of water
by excluding dissolved material, solutes,
including down to the ionic range, which is a very
small solute. Salt ions don’t pass though
[reverse osmosis] membranes well.
[David J. Paulson deposition, November 3, 2001, pgs. 17-18,
22, “Paulson Dep.”]
Mr. Paulson stated that fluid separation product
applications are divided into three broad categories: waste
treatment, process separation and water purification. In
its 1988 annual report, respondent identified sixteen
distinct markets for fluid separation products across all
three applications, e.g., the pulp and paper market, the
beverage manufacturing market, the dairy processing market,
the medical market and the potable water market. These
markets include commercial and industrial categories and,
more recently, the residential market. [Paulsen Dep.,
November 3, 2001, and Exhibit 23, p. 7, Respondent’s 1988
Annual Report.]
The process of reverse osmosis was developed during the
1960s. Early reverse osmosis encompassed technologies
including tubular membrane modules and spiral wound membrane
modules. Spiral wound technology was and is most efficient
Cancellation No. 92024275
10
for dealing with relatively clean feed sources, such as
desalting brackish water or seawater or purifying home
drinking water. On the other hand, tubular technology
functions to filter high levels of suspended solids and
requires very little pretreatment for its feed source. It
is applicable to, for example, removal of enzymes from
syrupy, thick mixtures such as waste water. (See Furukawa
Dep., pps. 91-95.)
In determining facts about petitioner, its predecessors
and the ownership and use of the mark OSMOTIK, we rely
principally on the notice of reliance documents and the
depositions, with exhibits, of Mssrs. Joulakian, Lickus,
Truby, Furukawa, Thompson, Needham and Van de Kerckhove.
Petitioner is a company that was formed by Mike
Joulakian in February 1984 under the name Osmotech
International, Inc. Subsequent to a letter dated August 24,
1984 from respondent in this case, petitioner changed its
name to Osmosis Technology, Inc. (“OTI”). Petitioner
“manufactures water purification, water treatment component
products, namely reverse osmosis membranes and housings to
contain those membranes … called pressure vessels in the
industry.” [Joulakian Dep., July 13, 2001, p. 18.] Mr.
Joulakian stated that petitioner began with a “home business
in [1984] when we opened our doors and within years we moved
to the next larger product and so on and so forth … but over
Cancellation No. 92024275
11
the years we have grown and we are in the commercial
membrane business today.” [Id., p. 81-82.] Mr. Joulakian
indicated that petitioner has been involved in reverse
osmosis commercial applications for approximately ten years.
On February 19, 1986, petitioner entered into an
agreement with UOP, Inc., which was originally Universal Oil
Products Company (“UOP”), wherein the mark OSMOTIK, the
goodwill associated therewith and the trademark registration
therefore, were assigned from UOP to petitioner OTI. Within
a few months petitioner began using the OSMOTIK mark on
labels affixed to its products and has used the mark on its
products continuously to the time of trial.5
We turn now to the history of the ownership, use and
registration of the OSMOTIK mark from its first adoption up
to the time it was assigned to petitioner. In the late
1960s Glenn Havens, doing business as Havens Industries,
developed a tubular reverse osmosis product, obtained
several patents, and began manufacturing and selling tubular
reverse osmosis products. Mr. Havens used the mark OSMOTIK
in connection therewith. Mr. Havens formed a corporation
and, in a written document dated January 14, 1969, Mr.
Havens assigned the mark OSMOTIK along with the business to

5 Respondent contends that petitioner has not established its continuous
use of the OSMOTIK mark. While the evidence in this regard is limited
and vague, we find it sufficient to establish respondent’s use of
OSMOTIK as a trademark on its products from at least late 1986 to the
time of trial.
Cancellation No. 92024275
12
Havens International. On February 11, 1969, Havens
International obtained a Federal trademark registration for
the mark OSMOTIK (Registration No. 864,726, now expired) for
“reverse osmosis solvent separation or ultrafiltration units
used, for example, in separating water from a salt
solution.”
Merck & Co., Inc. acquired, first, Calgon Corporation
and, next, Havens International, combining them under Calgon
Corporation. The written assignment of the mark OSMOTIK,
and the goodwill and registration therefore, from Havens
International to Calgon Corporation is dated November 13,
1970.
In a written assignment dated March 11, 1973, Calgon
Corporation assigned, inter alia, the mark OSMOTIK, and the
goodwill and registration therefore, to UOP. The UOP
tubular reverse osmosis module manufacturing operation was
named the Fluid Sciences Division of UOP.
Approximately one to two years later, UOP acquired the
ROGA Division of General Atomics. The ROGA Division
manufactured spiral wound reverse osmosis products under the
marks ROGA and TFC. In the mid-1970s, ROGA and Fluid
Sciences were merged and became the Fluid Systems Division
of UOP (“Fluid Systems”). Fluid Systems continued to
manufacture reverse osmosis products under two lines.
Spiral wound reverse osmosis products were sold under the
Cancellation No. 92024275
13
marks ROGA and TFC, and tubular reverse osmosis products
were sold under the OSMOTIK mark.
Anthony Lickus began working for UOP in 1958 and was
vice president and general manager of UOP’s Fluid Systems
Division from January 1981 to September 1983. He stated
unequivocally that when he joined Fluid Systems in January
1981, Fluid Systems was not selling tubular reverse osmosis
products, had no means for manufacturing same, and was not
using the mark OSMOTIK on any products. He stated that
Fluid Systems five-year business plan for 1981-1985 had no
provision for the manufacture of tubular reverse osmosis
products [Ex. 2 to Lickus Dep.]6; and that it had become an
obsolete product line, noting that spiral wound technology
had superceded tubular technology because it was more
efficient and cost effective. He stated that OSMOTIK was
not used on other products manufactured by Fluid Systems;
and that Fluid Systems was the only division within UOP that
was involved with water treatment products and applications,
ultrafiltration or reverse osmosis.
David Needham joined Fluid Systems on June 1, 1983 as
marketing director and, in September 1983, he succeeded Mr.
Lickus as general manager of Fluid Systems and remained in
that position until September 1986. During his first three

6 This business plan superceded the prior business plan, dated 1980-1984
[Ex. 4 to Lickus Dep], which included the statement on p. 19 that
“Tubular Product Line to be discontinued after 1980.”
Cancellation No. 92024275
14
months at Fluid Systems, Mr. Needham participated in a major
review of Fluid System’s current business and future plans.
After this review, Fluid Systems decided to focus on
membrane and spiral wound membrane production. Mr. Needham
was aware that Fluid Systems had manufactured tubular
reverse osmosis products in the past, but stated that Fluid
Systems had no capacity to manufacture tubular reverse
osmosis products, and did not manufacture, sell or advertise
any tubular products or other OSMOTIK products during his
tenure.
Randolph Truby worked for General Atomic from 1969-1971
and from 1971-1973. Mr. Truby joined Fluid Systems in 1983
and, except for approximately two years from 1993 to 1995,
continued to work for Fluid Systems until recently. He
stated that during his tenure, beginning in 1983, Fluid
Systems did not maintain any inventory for the OSMOTIK line.
He noted, however, that there was a storage area with pieces
and parts of many products, including some from the old
OSMOTIK line.7
At the time of trial, Robert Thompson was a senior
project engineer for respondent. However, he worked for
ROGA from 1975 to December 1976. He was hired by Fluid
Systems in August 1978 as a quality assurance technician and

7 While the record is vague on this point, it appears that individuals
at Fluid Systems would respond to phone calls seeking repairs for
previously-sold OSMOTIK tubular products, using parts that they could
find in storage.
Cancellation No. 92024275
15
later moved into research and development, where he remained
until May 1993. Mr. Thompson stated that during his tenure
at Fluid Systems in the 1970s, Fluid Systems was located in
an old World War II hangar in San Diego. He described the
physical plant, stating that the machinery for manufacturing
tubular products was different from the machinery for
manufacturing spiral wound products and the two sets of
machinery were located in different rooms. The stock room
contained parts for both tubular and spiral wound products.
Mr. Thompson stated that Fluid Systems moved to a new
facility in 1981; that prior to the move, Fluid Systems
stopped manufacturing tubular products and the machinery
therefor was taken from the facility, noting that the room
where tubular products were manufactured was empty for a
time and then filled with new machinery for manufacturing
spiral wound products; and that no tubular products were
ever manufactured at the new facility, nor was inventory for
such products maintained, although a few parts of old
tubular equipment may have remained.
The equipment for manufacturing the OSMOTIK line of
tubular products was leased by Fluid Systems to a
corporation in Israel under a written agreement dated
October 27, 1980 [Exhibit 5 to Lickus Dep.]. The lease was
for a term of three years and provided for a royalty to be
paid to Fluid Systems “for each linear foot of Reverse
Cancellation No. 92024275
16
Osmosis tube or equivalent product produced by the
Equipment….”8 No royalty payments were received by Fluid
Systems during Mr. Lickus’ tenure as general manager from
January 1981 to September 1983, or during Mr. Needham’s
tenure as general manager, which began in September 1983.
In December 1984, the lease agreement was terminated and the
equipment was sold by Fluid Systems to the Israeli
corporation for $25,000 [Ex. 12 to Needham Dep.].
Mr. Needham testified that he first became aware of the
OSMOTIK mark when he was contacted by UOP Inc.’s trademark
counsel, John Lanahan in a letter dated October 2, 1984,
indicating that UOP Inc. had received an offer to purchase
the OSMOTIK registration for $500 - $1000 [Ex. 9 to Needham
Dep.]. Mr. Needham stated that he contacted all of his
managers and concluded that Fluid Systems was not using the
mark and had no interest in it. He instructed Mr. Lanahan
to make a counteroffer of $5000 and, as indicated in a
letter of March 11, 1986, from Mr. Lanahan to Mr. Needham,
the assignment of the mark OSMOTIK and U.S. registration was
concluded [Ex. 19 to Needham Dep.].
Michael Van der Kerckhove stated that he was Secretary
of UOP, Inc. between 1985 to 1988 and that he signed the
document, dated February 19, 1986, assigning the trademark
and registration for OSMOTIK to OTI, petitioner herein. The

8 The lease contained no reference to the OSMOTIK trademark.
Cancellation No. 92024275
17
assignment document includes, inter alia, the following
statements [Ex. 6A to Joulakian Dep., November 6, 1996]:
WHEREAS UOP, Inc. … “hereinafter assignor” through
its predecessor has adopted, used and [is] using a
mark which is registered in the United States
Patent and Trademark Office, Registration No.
864,726 dated February 11, 1969; and
WHEREAS, Osmosis Technology, Inc., … “hereinafter
assignee” is desirous of acquiring said mark and
the registration thereof;
NOW, THEREFORE, for good and valuable
consideration, receipt of which is hereby
acknowledged, said assignor does hereby assign
unto the said assignee all right, title and
interest in and to the said mark, together with
the good will of the business symbolized by the
mark, and the above identified registration
thereof.
Mr. Joulakian testified that he did not receive any patents,
inventory, equipment or other materials with the assignment.
He stated that his attorney received from UOP Inc. a packet
containing, inter alia, OSMOTIK labels, but he never saw
what was in the packet other than the labels. Mr. Joulakian
stated that petitioner did use some of the OSMOTIK labels
received from UOP Inc. with the assignment, but not until
some time after the assignment. Having taken title to the
registration in February 1986, petitioner allowed the
registration to lapse when it came due for renewal in 1989
and did not record its assignment with the USPTO until 1996,
ten years after the assignment.
In determining facts about respondent and its use of
its mark OSMONICS, we rely principally on the notice of
Cancellation No. 92024275
18
reliance documents and the various depositions, with
exhibits, of Mr. Spatz and Mr. Paulson.
Respondent’s business is, and has always been, in the
general field of fluid separation using cross-flow membrane
technology. Respondent manufactures, markets and applies
membranes in each of the categories for waste treatment,
process separation and water purification. Respondent was
founded in August 1969 with the goal of applying reverse
osmosis technology, invented in 1959 at UCLA, to the
marketplace. Respondent sold its first reverse osmosis
systems in 1970 under the trademark OSMONICS.
Reverse osmosis is respondent’s core technology, and
its concentration is on spiral membrane technology.
Respondent’s first applications were medical, e.g.,
producing purified water for artificial kidneys. Respondent
added ultrafiltration products in the early 1970s,
nanofiltration products in the late 1970’s to early 1980s,
and microfiltration products in the early 1980s.
Starting in mid to late 1970, respondent used, and has
continued to use, the trademark OSMONICS to identify its
whole reverse osmosis system and its larger machines, as
well as its fluid filtration and purification systems. The
OSMONICS mark has been used on various units and components,
which are also sold separately from systems, from
Cancellation No. 92024275
19
approximately 1970 to the present. The mark is affixed to
equipment with decals or labels.
Respondent initially promoted its products with press
releases, which resulted in articles in several trade
magazines, and product brochures. Its advertising
expenditures expanded from 1% of sales, mostly magazine
exposure and brochures, to approximately 3-4% of sales in
the 1980s. Respondent’s sales totaled approximately
$300,000 in 1970; sales grew to $36 million by 1989; and
sales were $200 million in 2000.
Respondent used manufacturer’s representatives to
market its products until approximately 1986/1987, when it
had developed its own in-house distributor organization.
Respondent sells its components and systems to systems
manufacturers, original equipment manufacturers, and
commercial and industrial end-users.
Analysis
1. Fraud.
Petitioner contends that respondent “had full knowledge
of the prior use of OSMOTIK by Glenn Havens since
[respondent’s] first application to register OSMONICS was
refused registration because of the existence of the mark
OSMOTIK in [R]egistration [No.] 864,726” (Brief, p. 19);
that Glenn Havens’ company is petitioner’s predecessor in
interest to its OSMOTIK mark; that the parties herein have
Cancellation No. 92024275
20
attended at least some of the same trade shows; and that
respondent was aware of petitioner and its use of the
OSMOTIK mark. Petitioner concludes that, therefore, Mr.
Spatz willfully and knowingly committed fraud by signing the
declaration in respondent’s application, i.e., by attesting
that “to the best of his knowledge and belief he did not
know of any other person, firm, corporation or association
which had the right to use the mark in commerce either in
the identical form or in such near resemblance thereto as to
be likely, when used on the goods of the other person, to
cause confusion, mistake or to deceive.”
Respondent contends that no fraud was involved in the
procurement of its registration because respondent did not
apply to register its mark until the OSMOTIK registration
had lapsed; that respondent was “unaware of any use of the
OSMOTIK mark by Havens or any other company after the mid-
to late 1970s” (Brief, p. 40); that petitioner “did not
record its alleged ownership by assignment of the OSMOTIK
registration until 1996, after this cancellation matter had
been commenced and seven years after such registration had
been allowed to expire” (id.); and that respondent “did not
learn of [petitioner’s] alleged priority until this matter
was filed.” (Id.)
In order to prevail on a claim of fraud for
misstatements in an application, a plaintiff must plead and
Cancellation No. 92024275
21
prove that the applicant knowingly made "false, material
representations of fact in connection with [its]
application." Torres v. Cantine Torresella S.r.L., 808 F.
2d 46, 1 USPQ2d 1483, 1484 (Fed. Cir. 1986). To constitute
fraud on the U.S. Patent and Trademark Office, a statement
must be (1) false, (2) made knowingly, and (3) a material
representation. The charge of fraud upon the Office must be
established by clear and convincing evidence. See, Giant
Food, Inc. v. Standard Terry Mills, Inc., 229 USPQ 955 (TTAB
1986).
Professor McCarthy has stated the following (McCarthy
on Trademarks and Unfair Competition, 4th ed., 2003, §31.76,
citations omitted):
It should be noted that in the application “oath”
declarant states that to the best of his or her
“knowledge and belief” no other firm "has the
right to use" the mark or a confusingly similar
mark "in commerce." The 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 the affiant or declarant has an
honestly held, good faith belief. The application
oath is essentially an averment of the affiant or
declarant's belief that no other firm has the
legal right to use the mark or a confusingly
similar mark in interstate or foreign commerce.
There is nothing in the oath or the statute which
requires applicant to disclose anyone who in fact
may be using the mark, but does not, in the
applicant's belief, possess the legal right to
use. The oath is not a guarantee that no other
firm has a legal right to use the mark. Simply
because after litigation, another may succeed in
proving in the PTO or in court that it does have a
legal right to use, does not mean that the signer
of the oath committed fraud and was a liar. The
signer of an application oath should not be put in
Cancellation No. 92024275
22
the position of a fortune teller as to what the
courts will hold in future as to the trademark
rights of others.
The Board has found that there is no fraud in signing
the application oath if an applicant knew of third-party
uses, but reasonably believed that its rights were superior
to those third-party uses. See, Space Base, Inc. v. Stadis
Corp., 17 USPQ2d 1216 (TTAB 1990); and Heaton Enterprises of
Nevada, Inc. v. Lang, 7 USPQ2d 1842 (TTAB 1988).
The record clearly establishes that while respondent
knew of the OSMOTIK registration, it also knew the
registration had lapsed, believed that the registrant was no
longer using the mark, and that respondent either did not
know of petitioner’s use of the mark prior to the
commencement of this proceeding or did not believe that
petitioner had “superior rights.” Therefore, petitioner has
not established fraud in the execution by Mr. Spatz of the
application oath. Petitioner’s claim of fraud is denied.
2. Likelihood of Confusion.
To establish its case under Section 2(d) of the
Trademark Act, 15 U.S.C. §1052(d), petitioner must establish
both its priority and that a likelihood of confusion exists
between the parties’ marks as used in connection with their
respective goods. We begin by considering the question of
priority, which petitioner must prove because its pleaded
mark is not the subject of a registration.
Cancellation No. 92024275
23
In this regard, petitioner contends that in 1984 it
became aware of Supplemental Register Registration No.
864,726 that issued on February 11, 1969, for the mark
OSMOTIK, owned in 1984 by UOP, Inc.; that the mark, its
attendant good will, and the registration were assigned to
petitioner in February 1986; and that on February 19, 1986,
petitioner began use of the OSMOTIK mark and has used the
mark continuously to the time of trial. Petitioner also
contends that the record establishes the continuous use of
the OSMOTIK mark from its registration date by petitioner’s
predecessors up to December 1984, and that petitioner’s
predecessor had no intention to abandon the mark.
Respondent devoted its brief primarily to its
contention that petitioner does not have priority of use.
Respondent contends that it has established its continuous
use of its registered mark in connection with the identified
goods since 1969. Respondent contends that, on the other
hand, petitioner has not established its use of the OSMOTIK
mark subsequent to petitioner’s purchase of the OSMOTIK
registration from its alleged predecessor (UOP Inc.) in
1986; that petitioner cannot claim UOP Inc.’s use of the
OSMOTIK mark because such use was on entirely different
products and because in 1980, prior to the assignment to
petitioner, UOP Inc. had abandoned its use of the mark; that
the assignment to petitioner is invalid because, in view of
Cancellation No. 92024275
24
UOP Inc.’s abandonment, UOP Inc. had no rights to assign;
that, additionally, the assignment is invalid because it was
a transfer in gross of the mark and registration without the
attendant good will; and that petitioner has not established
that its OSMOTIK mark acquired distinctiveness prior to
respondent’s first use in 1969.
On the facts established by this record, we conclude
that petitioner has not proved its priority of use.
Respondent has clearly established its use of the mark
OSMONICS in connection with the goods identified in its
registration, “fluid separation systems for water
purification, pollution control and fluid,” since at least
1969.
The first use that petitioner can rely on is 1986.
Regarding petitioner’s claim through its predecessors in
interest, Mr. Havens originally adopted and used the mark
OSMOTIK in connection with tubular reverse osmosis products
by at least 1969. The testimony and evidence establish a
continuous chain of title and use of the mark in connection
with such products until approximately 1980, when UOP, Inc.
was the owner of the mark, which was used through its Fluid
Systems Division. However, the testimony and evidence also
establish that after 1980 UOP, Inc. through its Fluid
Systems Division, stopped using the mark OSMOTIK on tubular
reverse osmosis products or any other products, divested
Cancellation No. 92024275
25
itself of all equipment in connection therewith, and clearly
demonstrated its intent not to resume use of the OSMOTIK
mark. The 1986 assignment of the mark to petitioner and the
statements contained in the assignment document are
insufficient to contradict the voluminous evidence showing
UOP Inc.’s nonuse of the mark since after 1980 and the lack
of an intent to resume use thereof.
We conclude, therefore, that the mark OSMOTIK was
abandoned by UOP Inc. and that the assignment was void both
because it was an assignment of an abandoned mark in which
UOP Inc., the assignor, no longer had rights, and further,
because it was an assignment of rights in gross,
unaccompanied by any goodwill. The fact that petitioner
began using the mark in 1986 fails to confer priority upon
it.9
In view of petitioner’s failure to establish priority,
it is unnecessary to consider whether a likelihood of
confusion exists. Petitioner’s claim under Section 2(d) of
the Trademark Act is denied.
Decision: The petition to cancel is denied on both
grounds.

9 It is unnecessary to determine whether, or to what extent, the goods
of petitioner may differ from those identified by the OSMOTIK mark prior
to 1980. Additionally, it is unnecessary to determine whether OSMOTIK
is merely descriptive in connection with the goods upon which it has
been used and, if it is, whether and when it acquired distinctiveness.