Prakash Melwaniv.International Whisky Company Limited

Trademark Trial and Appeal Board

Dec 21, 2011

No. 92050392 (T.T.A.B. Dec. 21, 2011)

Mailed: December 21, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Prakash Melwani
v.
International Whisky Company Limited

Opposition No. 91188230
to application Serial No. 77442055
filed on April 7, 2008

Cancellation No. 92050392
against Registration No. 2929918
_____

International Whisky Company Limited
v.
Prakash Melwani

Opposition No. 91188492
to application Serial No. 78969040
filed on September 7, 2006

_____

Anil M. Melwani for Prakash Melwani.

Robert B. Burlingame of Pillsbury Winthrop Shaw Pittman LLP
for International Whisky Company Limited.
______

Before Holtzman, Kuhlke, and Ritchie, Administrative
Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

International Whiskey Company Limited (IWC) seeks
registration of the mark ROYAL SILK in standard characters
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition Nos. 91188230 and 91188492; Cancellation No. 92050392
2
for “whisky” in International Class 33. The application is
based on an allegation of a bona fide intention to use the
mark in commerce under Section 1(b) of the Trademark Act, 15
U.S.C. § 1051(b), and based on a foreign registration under
Section 44(e) of the Trademark Act, 15 U.S.C. § 1126.
In addition, IWC owns Registration No. 2929918 for the
mark ROYAL SILK in typed form for “whisky” in International
Class 33 issued on March 8, 2005 under Section 44(e) based
on a foreign registration.1
Prakash Melwani (Melwani) opposes registration and
seeks cancellation of IWC’s ROYAL SILK mark on various
grounds discussed below.
IWC asserted several affirmative defenses, filed
counterclaims against Melwani’s pleaded registrations, and
filed a Notice of Opposition, No. 91188492, against
Melwani’s Application Serial No. 78969040 for the mark ROYAL
SILK for “handbags.” Apart from simply listing the
counterclaims and the opposition, IWC did not address these
matters at all in its brief. In view thereof, we dismiss
each of the counterclaims and Opposition No. 91188492. See
Rolex Watch U.S.A., Inc. v. AFP Imaging Corp., ____ USPQ2d
____, Opp. No. 91188993 (TTAB December 5, 2011). Cf.
Barbara’s Bakery Inc. v. Landesman, 82 USPQ2d 1283, 1292

1 A Section 8 declaration was accepted on September 10, 2011
based on registrant’s assertion of excusable nonuse in view of
this litigation.
Opposition Nos. 91188230 and 91188492; Cancellation No. 92050392
3
(TTAB 2007); Knight Textile Corp. v. Jones Investment Co.,
75 USPQ2d 1313, 1314 n.4 (TTAB 2005).
In the second amended pleading in Opposition No.
91188230, Melwani asserts as claims: (1) the subject
application is a “duplicative trademark” to IWC’s
registration; (2) likelihood of confusion; (3) dilution by
blurring; (4) dilution by tarnishment; (5) “bad faith” by
intentionally selecting the mark to engage in unfair
competition; and (6) fraud based on a lack of “actual
intent” to use the mark.
In the petition to cancel, Melwani asserts as claims:
(1) abandonment; (2) fraud based on a lack of “actual
intent” to use the mark; and (3) “faulty publication.”
In its brief, Melwani characterizes its claims in the
opposition as “(1) fraud ... (2) abandonment ... and (3)
“duplicative trademark,” and in the cancellation as “(1)
fraud ... (2) abandonment ... and (3) improper
registration.” Under the subheading “Argument,” Melwani
requests that “the mark Royal Silk should be canceled due to
fraud, abandonment, and improper registration [and] IWC’s
trademark application for the mark Royal Silk should be
denied due to fraud, abandonment, and the duplicative
trademark rule.” Br. p. 14.
Melwani did not address the claims of likelihood of
confusion, dilution or bad faith on their merits. Melwani
Opposition Nos. 91188230 and 91188492; Cancellation No. 92050392
4
discussed the issues of likelihood of confusion, dilution
and bad faith in the context of its assertion of standing,
in particular, related to Melwani’s asserted reasonable
belief of damage. See, e.g., Br. p. 15-16 (“Opposer has the
reasonable belief ... that he is or will be damaged ... due
to ... confusion, mistake deception, or dilution. ...
Opposer has the reasonable belief that IWC attempted in bad
faith to benefit ...”)
IWC requests a decision on the merits regarding
Melwani’s likelihood of confusion and dilution claims.
Melwani counters that:
[Melwani] specifically left out claims of consumer
confusion, dilution and bad faith ... [it] never
brought those claims to trial ... Melwani never
intended to bring claims of consumer confusion or
dilution to trial. Simply mentioning dilution and
confusion in the context of Melwani’s reasonable
belief that he has standing in this matter does
not amount to Melwani bringing those claims
against IWC. The standard to prove that Melwani
reasonably believed that he would be damaged is
far less than is required to prove actual
confusion or dilution. Melwani’s facts presented
to prove his belief cannot therefore be used to
hold Melwani to the fire regarding separate claims
with much higher burdens of proof. Melwani never
brought claims of consumer confusion or dilution
to trial and the Board should not rule on those
non-existent claims.

Reply Br. pp. 3-4.
There is no question that Melwani specifically pleaded
these claims in bringing the opposition:
As grounds for opposition, Opposer alleges six
counts as follows ... COUNT II: CONSUMER CONFUSION
Opposition Nos. 91188230 and 91188492; Cancellation No. 92050392
5
... COUNT III: DILUTION BY BLURRING ... COUNT IV:
DILUTION BY TARNISHMENT ... COUNT V: BAD FAITH.

Second Amended Opposition.
There is also no question that Melwani did not put on
evidence to support these claims. Reply Br. p. 3. In
proceedings before the Board a party does not have the
option to pick and chose which of its pleaded claims it will
support with evidence and then effectively have the
remainder dismissed without prejudice. In view thereof,
Opposition No. 91188230 is dismissed with prejudice as to
the claims of likelihood of confusion, dilution by blurring
and tarnishment, and bad faith. See Rolex Watch, Opp. No.
91188993 p. 2 n. 1.
We now consider the remaining asserted claims at issue
in Opposition No. 91188230: “duplicative trademark,” no bona
fide intent to use2 and fraud; and the remaining asserted
claims in Cancellation No. 92050392: “improper
registration,” abandonment and fraud.

2 To the extent Melwani argues that abandonment also applies to
the application, this is incorrect. The application is based on
allegations of an intent to use the mark in commerce under
Sections 1(b) and 44(e). Therefore, abandonment would not be an
appropriate claim. The appropriate claim would be lack of a bona
fide intent to use the mark. Opposer did not plead this as a
separate claim but merely as an element of its fraud claim.
However, based on the evidence and argument submitted we consider
the pleading in the opposition to be amended to include a claim
of no bona fide intent to use the mark.
Opposition Nos. 91188230 and 91188492; Cancellation No. 92050392
6
MOTIONS TO STRIKE BRIEFS
As a preliminary matter, we consider Melwani’s motions
to strike IWC’s reply brief, filed on July 5, 2011, and
IWC’s response brief, filed on May 23, 2011.
There is no provision for a party in the position of
defendant to file a reply brief. However, in the case where
the defendant has filed a counterclaim or the defendant is
in the position of plaintiff in a consolidated proceeding,
the defendant will be permitted to file a reply brief. TBMP
§ 801.02(d) and (e) (3rd ed. 2011). Here, inasmuch as IWC
did not pursue its counterclaims or its opposition, either
at trial or in its main brief, its “reply brief” filed after
Melwani’s reply brief is improper. In view thereof,
Melwani’s motion to strike IWC’s “reply brief” filed on July
5, 2011 is granted to the extent that all matter therein
pertaining to Melwani’s case in chief in Opposition No.
91188230 has not been considered. We have, however,
considered the arguments responding to Melwani’s motion to
strike IWC’s response brief as untimely.
Melwani’s motion to strike IWC’s main brief as untimely
is denied. IWC’s brief was due on May 23, 2011. The record
contains two briefs from IWC. One filed electronically on
May 24, 2011, and one filed by mail with a certificate of
mailing dated May 23, 2011. Trademark Rule 2.197. On May
24, 2011, IWC filed a “clarification regarding” its trial
Opposition Nos. 91188230 and 91188492; Cancellation No. 92050392
7
brief, indicating that the mailed version was the correct
brief and requesting the Board to disregard the
electronically filed version. IWC further explains that it
experienced difficulty in filing the brief electronically on
May 23, 2011, and, therefore, filed it by certificate of
mailing. Apparently, IWC also filed it electronically on
May 24, 2011. Melwani’s unsupported speculation as to the
actual date IWC’s brief was placed in the mail is not
sufficient to strike the brief.
THE RECORD
By operation of Trademark Rule 2.122 the record
includes the pleadings and the files of the subject
applications and registrations. Melwani submitted his
testimony deposition (with exhibits) and a notice of
reliance on IWC’s discovery responses. IWC submitted
notices of reliance on Melwani’s discovery responses,
official records (orders from a U.S. District Court case,
certified copies of Certificates of Label Approval (COLAs)
from the U.S. Department of Treasury Alcohol and Tobacco Tax
and Trade Bureau (TTB), a copy of a TTAB precedential
decision, affidavit and motion to dismiss filed by Melwani
in another TTAB proceeding retrieved from TTABVUE, and
third-party registrations) and printed publications
(excerpts from various publications both hard copy and
Lexis/Nexis printouts). Melwani’s objections to
Opposition Nos. 91188230 and 91188492; Cancellation No. 92050392
8
admissibility because certain of IWC’s evidence is not
proper subject matter for a notice of reliance are
overruled. All of IWC’s evidence is appropriate matter for
introduction by way of notice of reliance under Trademark
Rule 2.122(e). See TBMP §704.07 n.4 and cases cited
therein. The objections pertain more to the probative value
of the evidence which we have considered in weighing the
evidence.
STANDING
To establish standing, opposer must show a real
interest in the proceeding. Ritchie v. Simpson, 170 F.3d
1092, 50 USPQ2d 1023 (Fed. Cir. 1999). Melwani’s pleaded
registrations for the mark ROYAL SILK are of record both by
virtue of the pleaded counterclaims (see Trademark Rule
2.122(b)(1)) and by Melwani’s testimony and accompanying
exhibits.3 In view thereof, Melwani has established his
standing.

3 Melwani argues that its registrations are not of record because
IWC waived its counterclaims by failing to discuss them in its
brief. However, even if the counterclaims are “waived” this does
not expunge the registrations from the record. Further, once
standing is established for one claim it is established for all
claims. Enbridge, Inc. v. Excelerate Energy LP, 92 USPQ2d 1537,
1543 n.10 (TTAB 2009), citing, Liberty Trouser Co., Inc. v.
Liberty & Co., td., 222 USPQ357, 358 (TTAB 1983).

Opposition Nos. 91188230 and 91188492; Cancellation No. 92050392
9
IMPROPER REGISTRATION/DUPLICATIVE TRADEMARK
We begin with Melwani’s asserted claims of “improper
registration” (in the cancellation) and “duplicative
trademark” (in the opposition).
First, as to the claim of “improper registration,” it
is undisputed that the underlying application of IWC’s
subject registration was originally filed based on an intent
to use the mark in commerce under Section 1(b). After the
application was published for opposition, IWC’s petition to
amend the application to substitute the Section 1(b) basis
with a Section 44(e) basis was granted and the application
remanded to the examining attorney for consideration of the
amendment. The amendment was accepted and the Section 1(b)
basis was replaced with the Section 44(e) basis. The
application then issued into a registration without being
republished. When an applicant substitutes one basis for
another after publication, republication is required.
Trademark Rule 2.35(b)(2); TMEP §806.03(j)(i).
Melwani argues that it was a mistake for the USPTO to
grant registration without republication and “given IWC’s
bad faith in never informing the USPTO [the registration]
should be cancelled.” Br. p. 25. In particular, Melwani
asserts that it had no opportunity to oppose the amended
application. Id.
Opposition Nos. 91188230 and 91188492; Cancellation No. 92050392
10
The failure to republish the application is an ex parte
procedural issue which does not form the basis for a claim
before the Board. Cf. Flash & Partners S.P.A. v. I.E.
Manufacturing LLC, 95 USPQ2d 1813 (TTAB 2010) (issue of
compliance with application signature requirement is an ex
parte examination issue not a basis for a claim); Saint-
Gobain Abrasives Inc. v. Unova Indus. Automation Syst. Inc.,
66 USPQ2d 1355, 1359 (TTAB 2003) (fairness dictates that the
ex parte question of the sufficiency of the description of
the mark not be a ground for opposition or cancellation);
Phonak Holding AG v. ReSound GmbH, 56 USPQ2d 1057, 1059
(TTAB 2000) (failure to enforce requirement of filing of
foreign registration is examination error and not a ground
for counterclaim for cancellation); Marshall Field & Co. v.
Mrs. Fields Cookies, 11 USPQ2d 1355, 1358 (TTAB 1989) (the
insufficiency of the specimens, per se, does not constitute
grounds for cancellation); Century 21 Real Estate Corp. v.
Century Life of Am., 10 USPQ2d 2034, 2035 (TTAB 1989) (the
adequacy of specimens is solely a matter of ex parte
examination). Further, while Melwani did not have an
opportunity to oppose the 44(e) application, it had the
opportunity to petition to cancel the registration.
Second, as to the claim of “duplicative trademark,” the
USPTO does not issue duplicate registrations. Trademark
Rule 2.48. An application filed under Section 1 is not a
Opposition Nos. 91188230 and 91188492; Cancellation No. 92050392
11
duplicate of an application filed under Section 44. TMEP §
703. In an Office Action dated July 21, 2008, the examining
attorney advised as follows:
As discussed with Applicant’s counsel, the USPTO
will not issue duplicate registrations. The only
existing difference between this application and
U.S. Registration No. 2929918 is that the
registration is based solely of [sic] the
ownership of a foreign registration, under Section
44(e), while the instant application is filed
under Section 1(b) and 44(e). Should Applicant
delete the Section 1(b) basis and retain only the
Section 44(e) basis, while the existing claimed
registration is active, Applicant will have to
either abandon this application or authorize the
immediate expiration or cancellation of the
existing claimed registration.

Melwani argues that “IWC’s 44(e) application is an
exact duplicate of its current 44(e) registration, the only
difference being that its current application adds the
additional basis of 1(b) intent to use.” Br. p. 26.
However, because of the additional basis in the application,
as acknowledged by the examining attorney, it is not a
duplicate of the registration. Moreover, to the extent this
could even form the basis of a claim it is premature.
ABANDONMENT/NO BONA FIDE INTENT TO USE
We now turn to the abandonment claim. Trademark Act
Section 14, 15 U.S.C. 1064. Abandonment occurs:
When its use has been discontinued with intent not
to resume such use. Intent not to resume may be
inferred from circumstances. Nonuse for 3
consecutive years shall be prima facie evidence of
abandonment. “Use” of a mark means the bona fide
use of such mark made in the ordinary course of
Opposition Nos. 91188230 and 91188492; Cancellation No. 92050392
12
trade, and not made merely to reserve a right in a
mark.

Trademark Act Section 45, 15 U.S.C. 1127.
A petitioner for cancellation of a registration on the
ground of abandonment bears the burden of proving such
abandonment by a preponderance of evidence. Cerveceria
Centroamericana S.A. v. Cerveceria India Inc., 892 F.2d
1021, 13 USPQ2d 1307 (Fed. Cir. 1989). For a registration
issued under Section 44(e), the statutory three-year period
of nonuse that constitutes prima facie evidence of
abandonment begins from the date of registration. See
Imperial Tobacco, 899 F.2d 1575, 14 USPQ2d 1390 (Fed. Cir.
1990).
“Once a prima facie case is established, this
‘eliminates the challenger’s burden to establish the intent
element of abandonment as an initial part of [his] case,’
and creates a rebuttable presumption that the registrant
abandoned the mark without intent to resume or commence use
under the statute. This presumption shifts the burden to
the registrant to produce evidence that he either used the
mark during the statutory period or intended to resume or
commence use. The burden of persuasion, however, always
remains with the petitioner to prove abandonment by a
preponderance of evidence.” Rivard v. Linville, 133 F.3d
1446, 45 USPQ2d 1374 (Fed. Cir. 1998), citing, Imperial
Tobacco Ltd., 14 USPQ2d at 1395. Finally, proclamations of
Opposition Nos. 91188230 and 91188492; Cancellation No. 92050392
13
intent to resume or commence use during the period of nonuse
are given little, if any, weight. Id.
The respondent may rebut the presumption of abandonment
arising from its nonuse of the mark for three consecutive
years by presenting evidence showing that its nonuse during
that period was excusable, or evidence showing that, during
the period of nonuse, it maintained an intent to resume (or
commence) use of the mark. See Imperial Tobacco, 14 USPQ2d
1390. See also Rivard, 45 USPQ2d at 1376 (“To prove
excusable nonuse, the registrant must produce evidence
showing that, under his particular circumstances, his
activities are those that a reasonable businessman, who had
a bona fide intent to use the mark in United States
commerce, would have undertaken.”) To establish that it had
or has maintained an intent to resume use of the mark during
the period of nonuse, the registrant must come forward with
evidence beyond mere conclusory statements or denials that
it lacks such intent to resume use. See Imperial Tobacco
Ltd., 14 USPQ2d at 1394. See also Rivard, 45 USPQ2d 1374
(Court upheld the Board’s finding that evidence of several
trips to the United States to establish hair dressing and
beauty salons and contact with a franchising consultant was
insufficient to support an intent to commence use of the
mark and the registrant did not establish that the nonuse of
the mark during this period was reasonable.)
Opposition Nos. 91188230 and 91188492; Cancellation No. 92050392
14
There is no dispute that IWC has not used the mark in
commerce in connection with whiskey in the United States
during the relevant time period from March 8, 2005, the date
the registration issued, until December 31, 2008, the date
the petition was filed. Therefore, Melwani has established
a prima facie case of abandonment.
Melwani having established a prima facie case of
abandonment, the burden shifts to IWC to produce evidence
sufficient to rebut the prima facie showing of abandonment.
IWC contends that the record “contains evidence of IWC’s
continuing intent and efforts to use the mark in U.S.
commerce.” Br. p. 15. IWC’s evidence consists of TTB COLAs
dated 2002 – 2004, articles from what appear to be primarily
foreign publications, and IWC’s interrogatory responses
submitted by Melwani.
Inasmuch as the relevant dates for abandonment run from
2005 through 2008 the prior COLAs approved from 2002 – 2004
do not serve to rebut the prima facie case of abandonment
occurring between 2005 and 2008. The articles from various
publications about IWC’s Royal Silk whisky are not evidence
of IWC’s efforts to market its whisky in the United States,
and are also not from the relevant time period. For
example, the excerpt from Jim Murray’s Whisky Bible 2004 is
simply a listing and description of different types of
whisky and Royal Silk is listed under Scottish blends. The
Opposition Nos. 91188230 and 91188492; Cancellation No. 92050392
15
advertisement in a foreign publication “Scottish Field 2003
Scotland’s Quality Lifestyle Magazine” and the appearance in
the publication “Drinks International The Buyer’s Guide to
the Drinks Business” similarly do not show IWC’s intent to
market whisky in the United States market.
Finally, in response to Melwani’s Interrogatory No. 10,
IWC states:
IWC has not yet made sales of its ROYAL SILK
whisky directly in the United States, although
there is currently one or more Internet websites
that are accessible from the United States and
that display IWC’s ROYAL SILK mark in connection
with whisky, and attempts have long been made to
market IWC’s ROYAL SILK whisky in the United
States.

The alleged existence of these websites is unsupported
by any documentary evidence. Furthermore, the mere fact
that a company doing business somewhere in the world may
have a website does not evidence its intent to sell its
goods under its mark in a particular market, in this case,
the United States. IWC’s last statement that “attempts have
long been made to market” its whisky under the mark ROYAL
SILK in the United States are not supported by evidence
during the relevant time period and, at most, can be viewed
simply as conclusory statements of a general desire to use
the mark, which are not sufficient to rebut the prima facie
case. Imperial, 14 USPQ2d at 1394. “Nothing in the statute
entitles a registrant who has formerly used a mark to
overcome a presumption of abandonment arising from
Opposition Nos. 91188230 and 91188492; Cancellation No. 92050392
16
subsequent nonuse by simply averring a subjective
affirmative ‘intent not to abandon.’ ... the Lanham Act
was not intended to provide a warehouse for unused marks.”
Id.
With regard to the claim in the opposition of no
bona fide intent to use the mark, it shares many of the
operative facts of the abandonment claim. The
Trademark Act provides that “[a] person who has a bona
fide intention, under circumstances showing the good
faith of such person, to use a trademark in commerce
may request registration of its trademark on the
principal register...” Trademark Act Section 1(b)(1),
15 U.S.C. §1051(b)(1).
The Board has held that “...the determination of
whether an applicant has a bona fide intention to use
the mark in commerce is to be a fair, objective
determination based on all the circumstances.” Lane
Ltd. v. Jackson International Trading Co., 33 USPQ2d
1351, 1355 (TTAB 1994). The Board also has stated that
the requirement that an applicant must have a bona fide
intent to use the mark in commerce “must be read in
conjunction with the revised definition of ‘use in
commerce’ in Section 45 of the Trademark Act, which the
Trademark Law Revision Act of 1988 amended to require
that such use be ‘in the ordinary course of trade, and
Opposition Nos. 91188230 and 91188492; Cancellation No. 92050392
17
not made merely to reserve a right in a mark.’”
Commodore Electronics Ltd. v. CBM Kabushiki Kaisha, 26
USPQ2d 1503, 1507 (TTAB 1993). An “applicant’s mere
statement of subjective intention, without more, would
be insufficient to establish applicant’s bona fide
intention to use the mark in commerce.” Lane Ltd. 33
USPQ2d at 1355.
Melwani has the initial burden of demonstrating by
a preponderance of the evidence that IWC lacked on the
filing date of the application, or now lacks, a bona
fide intent to use the mark on the identified goods.
Spirits International N.V. v. S.S. Taris Zeytin Ve
Zeytinyagi Tarim Satis Kooperatifleri Birligi, 99
USPQ2d 1545 (TTAB 2011). The absence of any
documentary evidence on the part of an applicant
regarding such intent constitutes objective proof
sufficient to establish that the applicant lacks a bona
fide intention to use its mark in commerce. See Id.;
Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d
1581, 1587 (TTAB 2008).
As noted above, the only documentary evidence
regarding its intent to use its mark on whisky in the
United States consists of the COLAs which appear to be
the same labels applied for and approved in 2002, 2003
and 2004. There is no information in the record as to
Opposition Nos. 91188230 and 91188492; Cancellation No. 92050392
18
whether a COLA must be obtained on an annual basis.
However, the labeling application last made in 2004
cannot be considered reasonably contemporaneous with
the filing date of the application four years later on
April 7, 2008. There is no documentary evidence
regarding any “attempts” or “efforts” to market in the
United States in the time period before or after the
filing of the application. As such, Melwani has
satisfied his initial burden of proving that IWC did
not and does not have a bona fide intention to use its
applied-for mark on or in connection with whisky.
The burden thus shifts to applicant to come
forward with evidence which would adequately explain or
outweigh the failure to provide such documentary
evidence. Spirits, 99 USPQ2d 1545. As noted above,
there is no documentary evidence past 2004 supporting a
finding of any attempts to market in the United States
and there is also no testimony regarding such efforts.
Finally, the response to Interrogatory No. 10 is merely
a conclusory statement and does not provide sufficient
support to show a bona fide intent to use the mark in
commerce. In short, there is nothing to support a bona
fide intent to use the mark in the United States, since
2004. In view thereof, the opposition on the ground
Opposition Nos. 91188230 and 91188492; Cancellation No. 92050392
19
that IWC lacks a bona fide intent to use its mark on
whisky is sustained.
FRAUD
Finally, for completeness we turn to Melwani’s
claim of fraud in the Opposition and Cancellation.
“Fraud in procuring a trademark registration or renewal
occurs when an applicant knowingly makes false,
material representations of fact in connection with his
application.” In re Bose Corp., 91 USPQ2d 1938, 1939
(Fed. Cir. 2009), quoting, Torres v. Cantine Torresella
S.r.l., 808 F.2d 46, 48, 1 USPQ2d 1483, 1484 (Fed. Cir.
1986). A party seeking cancellation of a trademark
registration for fraudulent procurement bears a heavy
burden of proof. W.D. Byron & Sons, Inc. v. Stein
Bros. Mfg. Co., 377 F.2d 1001, 1004, 153 USPQ2d 49, 750
(CCPA 1967). Indeed, “the very nature of the charge of
fraud requires that it be proven ‘to the hilt’ 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.”
Smith Int’l, Inc. v. Olin Corp., 209 USPQ 1033, 1044
(TTAB 1981); see also Asian and Western Classics B.V.
v. Selkow, 92 USPQ2d 1478 (TTAB 2009).
There is “a material legal distinction between a
‘false’ representation and a ‘fraudulent’ one, the
Opposition Nos. 91188230 and 91188492; Cancellation No. 92050392
20
latter involving an intent to deceive, whereas the
former may be occasioned by a misunderstanding, an
inadvertence, a mere negligent omission, or the like.”
In re Bose Corp., 91 USPQ2d at 1940, quoting, Kemin
Indus., Inc. v. Watkins Prods., Inc., 192 USPQ 327, 329
(TTAB 1976). In other words, deception must be willful
to constitute fraud. In re Bose Corp., 91 USPQ2d at
1940. Thus, a trademark registration is obtained
fraudulently only if the applicant knowingly makes a
false, material representation with the intent to
deceive the USPTO. In re Bose Corp., 91 UPSQ2d at
1941. In this regard, the Federal Circuit stated the
following:
Subjective intent to deceive, however difficult it
may be to prove, is an indispensable element in
the analysis. Of course, “because direct evidence
of deceptive intent is rarely available, such
intent can be inferred from indirect and
circumstantial evidence. But such evidence must
still be clear and convincing, and inferences
drawn from lesser evidence cannot satisfy the
deceptive intent requirement.” ... When drawing
an inference of intent, “the involved conduct,
viewed in light of all the evidence ... must
indicate sufficient culpability to require a
finding of intent to deceive.”

In re Bose Corp., 91 USPQ2d at 1941 (citations
omitted).
It must be determined whether applicant’s false
statements “represent ‘a conscious effort to obtain for
his business a registration to which he knew it was not
Opposition Nos. 91188230 and 91188492; Cancellation No. 92050392
21
entitled.’” In re Bose Corp., 91 USPQ2d at 1942,
quoting Metro Traffic Control, Inc. v. Shadow Network
Inc., 104 F.3d 336, 41 USPQ2d 1369, 1373 (Fed. Cir.
1997). Unless the challenger can point to evidence to
support an inference of deceptive intent, it has failed
to satisfy the clear and convincing evidence standard
required to establish a fraud claim. In re Bose Corp.,
91 USPQ2d at 1942.
Melwani argues that IWC did not “produce a single
piece of evidence that it ever used or possessed the
bona fide intent to use the mark ‘Royal Silk’ in United
States commerce at any time.” Br. p. 21. Melwani
asserts that “[g]iven the complete historical lack of
evidence of any actual, contemplated, attempted, or
intended sales, advertising, promotion, marketing, and
distribution of Royal Silk brand whisky, IWC knowingly
and intentionally submitted fraudulent statements when
it swore that it had the bona fide intent to use the
mark Royal Silk in the United States on February 28,
2000, April 16, 2004 and April 7, 2008.” Br. p. 22.
IWC counters that Melwani did not “prove, by clear
and convincing evidence, that IWC intended to deceive
the USPTO. None of the testimony or evidence shows
that IWC made any false statements to the USPTO, let
alone demonstrates that IWC’s statements were made with
Opposition Nos. 91188230 and 91188492; Cancellation No. 92050392
22
an intent to deceive the USPTO.” Br. p. 14. IWC
references the COLAs from the TTB and its response to
Interrogatory No. 10 submitted by Melwani that “one or
more Internet websites that are accessible from the
United States.”
As noted above in the discussions of abandonment
and lack of a bona fide intent to use, IWC did not
submit evidence sufficient to support a finding of an
intent to commence use to rebut the prima facie
abandonment claim or to support a finding of bona fide
intent as a basis for its application. Thus, to that
extent, its statements of bona fide intent were false.
However, as to the intent element, there is no direct
evidence of intent and this record does not support an
inference of willful intent.
Decision: Opposition No. 91188492 is dismissed.
The counterclaims in Opposition No. 91188230 are
dismissed. Opposition No. 91188230 is sustained only
on the ground of no bona fide intent to use, and
registration of application Serial No. 77442055 is
refused. Cancellation No. 92050392 is sustained only
on the ground of abandonment. Registration No. 2929918
will be cancelled in due course.