Swiss Watch International, Inc.v.Federation of the Swiss Watch Industry

Trademark Trial and Appeal Board

Jan 30, 2012

No. 92046786 (T.T.A.B. Jan. 30, 2012)

Hearing: Mailed:
May 31, 2011 January 30, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Swiss Watch International, Inc.

v.

Federation of the Swiss Watch Industry
_____

Cancellation No. 92046786
_____

Amaury Cruz and Henry Rodriguez of Amaury Cruz & Associates
for Swiss Watch International

Abigail Rubinstein of Steptoe & Johnson LLP for Federation
of the Swiss Watch Industry
_____

Before Seeherman, Lykos and Kuczma1, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Swiss Watch International, Inc. (petitioner) has
petitioned to cancel registrations for two certification

1 Judge Walters sat on the panel at the oral argument. She has
since retired, and Judge Kuczma has been substituted for her on
this decision. The change in composition of the panel does not
necessitate a rehearing of the oral argument. Hunt Control
Systems Inc. v. Koninklijke Philips Electronics N.V., 98 USPQ2d
1558, 1560 (TTAB 2011); see also In re Bose, 772 F.2d 866, 227
USPQ 1, 4 (Fed. Cir. 1985).

THIS OPINION IS A
PRECEDENT OF THE TTAB
Cancellation No. 92046786
2
marks owned by the Federation of the Swiss Watch Industry
(respondent): Registration No. 3047277 for the mark SWISS
and Registration No. 3038819 for the mark SWISS MADE, both
in standard character form and both for certifying
geographic origin of goods identified as “horological and
chronometric instruments, namely, watches, clocks and their
component parts and fittings thereof.”2 The certification
statement in each registration is: “The certification mark,
as used by persons authorized by the certifier, certifies
geographical origin of the goods in Switzerland.”
As for its standing and grounds for cancellation
petitioner has asserted, in its amended petition for
cancellation, that it owns a registration for the mark SWISS
WATCH INTERNATIONAL; that it has applied to register the
mark SWISS LEGEND for, inter alia, watches, and that this
application has been refused registration by the USPTO on
the basis of, among other things, likelihood of confusion
with respondent’s marks; that respondent intentionally
misstated matters in the applications that resulted in its
registrations or failed to state that it is not a
government, a department of a government, or a body
operating with governmental authorization; that the
registrations were obtained fraudulently; that respondent

2 Registration No. 3047277 issued on January 24, 2006, and
Registration No. 3038819 issued on January 10, 2006.

Cancellation No. 92046786
3
has no legitimate control of the use of the terms SWISS or
SWISS MADE; that respondent has improperly permitted and
encouraged use of its marks for purposes other than to
certify; that respondent discriminates in the granting of
use of its certification marks; and that the terms SWISS and
SWISS MADE cannot function as certification marks because
they have become generic for horological and chronometric
instruments.3
Respondent has admitted that it is an unincorporated
association with offices in Switzerland, and otherwise has
denied the salient allegations in the petition to cancel.4
The record and objections
By operation of the rules, the record includes the
pleadings and the files of the registrations sought to be
cancelled. Petitioner listed at page 5 of its trial brief
the evidence that is of record:
Respondent’s responses to petitioner’s
interrogatories (Exhibits 88-96);

Respondent’s responses to petitioner’s requests
for admission (Exhibit 87);

3 Petitioner also alleged that respondent has no authority to
control the use of the terms SWISS or SWISS MADE, but did not, in
its brief on the merits, present arguments regarding this aspect
of its claim that respondent has failed to control the use of its
marks.
4 Respondent also asserted certain affirmative defenses, but
because it made no mention of them in its trial brief, we deem
them to have been waived. See, e.g., Knight Textile Corp. v.
Jones Investment Co., 75 USPQ2d 1313, 1314 n.4 (TTAB 2005). In
any event, with respect to those defenses, and as discussed
herein, petitioner has shown its standing and that its petition
to cancel states a claim.
Cancellation No. 92046786
4
Testimony depositions taken by petitioner of Lior
Ben-Shmuel, Rick Ruz and Henry Rodriguez, with
petitioner’s exhibits 1-75 and respondent’s
exhibits 1-4,5 and testimony depositions taken by
petitioner on written questions of respondent’s
employees Jean-Daniel Pasche, Yves Bugmann and
Vincent Stauffer, with petitioner’s exhibits 130-
137;6

Excerpts from printed publications, submitted by
petitioner (Exhibits 76-78);

USPTO documents, submitted by petitioner (Exhibits
97-129);

Discovery documents (Exhibits 79-86), submitted by
stipulation of the parties;

Testimony deposition upon written questions taken
by respondent of Vincent Stauffer, with
respondent’s exhibits 1-8 and petitioner’s exhibit
1-3;7

USPTO documents submitted by respondent (Exhibits
A-I);

Dictionary definitions submitted by respondent
(Exhibits J-O); and

5 Petitioner submitted CD-ROM versions of these testimony
depositions, as well as the printed versions. It was not
necessary to submit the CD-ROMs and, in fact, the rules no longer
provide that testimony can be submitted in this manner. See TBMP
§ 106.03 (3d ed. 2011).
6 We find it necessary to comment on the listing of exhibits
submitted as part of the testimony deposition of Henry Rodriguez.
Approximately 60 exhibits are listed in the index as “The
Printout.” Trademark Rule 2.123(g)(3) provides, inter alia, that
each deposition must contain “an index of the exhibits, briefly
describing their nature and giving the pages at which they are
introduced and offered in evidence.” Although each of the
exhibits are indeed “printouts,” the listing of 60 exhibits in
this manner is of almost no help to the Board, as it does not
allow the judges reviewing the record to easily find the
testimony regarding a particular exhibit.
7 Although the procedure for taking testimony by written
questions is a more cumbersome process than taking depositions
upon oral examination, see Trademark Rule 2.124, the testimony of
Messrs. Pasche, Bugmann and Stauffer was taken by this procedure
because these witnesses were located outside of the United
States.
Cancellation No. 92046786
5
Printed publications submitted by respondent
(Exhibits P-S).8

In its trial brief respondent agreed that “the record
consists of the items set forth in Petitioner’s Trial
Brief.” p. 2. We agree that the foregoing evidence is of
record.9 In addition, respondent stated that the record
also includes the file history for petitioner’s application
for the mark SWISS LEGEND, noting that petitioner asserted
in the petition to cancel that its application to register
this mark was refused by the USPTO, and that petitioner had
mentioned in its brief that it had petitioned to cancel
respondent’s registrations after its application for SWISS
LEGEND had been refused. Respondent included with its trial
brief a declaration by respondent’s attorney to which she
attached a copy of an Office action in the SWISS LEGEND
application, and copies of certain additional USPTO records.
With its reply brief petitioner objected to these exhibits,
contending that they were not properly made of record. This
presents a somewhat unusual situation. Petitioner is
correct that attaching a declaration with exhibits to a
trial brief is not an acceptable method for making the

8 Some of the articles are in foreign languages; because
respondent did not submit translations, they have no probative
value. Hard Rock Cafe Licensing Corp. v. Elsea, 48 USPQ2d 1400,
1405 (TTAB 1998)
9 To the extent that any evidence submitted under a notice of
reliance could not properly be made of record by this procedure,
we treat the parties’ statements as stipulating to the admission
of such evidence.

Cancellation No. 92046786
6
evidence of record. At the same time, we have petitioner
making statements in its brief about its own application
that are not supported by any evidence properly of record,
and respondent in its brief treating those statements as
though they are true. Normally, we would view such actions
as a stipulation by the parties that petitioner’s
application had been refused on the basis of respondent’s
registrations.10 However, in this case it appears that
respondent would not have made such a stipulation if it
could not provide further information about the grounds for
refusal of petitioner’s application. In these
circumstances, we both refuse to consider the improperly
submitted evidence and decline to treat the information
about petitioner’s application as stipulated into the
record. We add that, in any case, this does not have an
effect on our decision, since petitioner’s filing of an
application, and the Office’s refusal of it, would go to
petitioner’s standing, and petitioner has otherwise shown
its standing through the evidence of its witness Lior Ben-
Shmuel.
Petitioner also objected to certain statements made in
respondent’s brief, contending that they are based on

10 In point of fact, the September 2, 2004 Office action for
petitioner’s application that was submitted with respondent’s
brief advised petitioner of respondent’s then-prior pending
applications and stated that, if they registered, they might
serve as a basis for refusal of petitioner’s application.
Cancellation No. 92046786
7
publications and webpages that were never made of record.
With the exception of the dictionary definitions, of which
we may take judicial notice, these objections are well
taken, and no consideration has been given to evidence that
was not properly made of record or to statements based on
such evidence.
Respondent has raised objections as well, asserting
that the deposition testimony of Rick Ruz and Henry
Rodriguez consists “of nothing but unreliable hearsay
testimony and should be stricken from the record.” Brief,
p. 2, n.1. Much of this testimony consists of statements
made by the witnesses regarding information they received
from third parties during telephone conversations with those
third parties. We agree that this testimony constitutes
inadmissible hearsay, as opposed to verbal acts, as
petitioner is seeking to use what the third parties said to
the witnesses to prove the truth of those statements. The
cases that petitioner has cited in arguing that this
testimony is not hearsay are inapposite.
Respondent has also objected to the Internet printouts
submitted as exhibits to Messrs. Ruz’s and Rodriguez’s
testimony (petitioner’s exhibits 3-14 and 18-75), as
hearsay. We overrule this objection. Although they do not
prove the truth of the statements made therein, the
printouts are acceptable to show that the statements were
Cancellation No. 92046786
8
made or the information was reported in the webpages. In
fact, printouts from Internet webpages may now be made of
record by notice of reliance, without requiring the
testimony of the witness printing out the webpages to
introduce and authenticate them. See Safer Inc. v. OMS
Investments Inc., 94 USPQ2d 1031 (TTAB 2010). The benefit
to both the parties and the Board of making such evidence of
record by notice of reliance is highlighted by the testimony
depositions of these witnesses, which consist of page after
page in which they identify the exhibits as being webpages
that they printed.
Respondent also argues that the testimony of
petitioner’s witnesses Ruz and Rodriguez and the
accompanying exhibits lack probative value. We have already
ruled that the testimony reporting what third parties told
the witnesses in telephone conversations is hearsay and will
not be considered. As for the Internet evidence, respondent
states that it could not readily verify the veracity of the
evidence because Internet postings are transitory. However,
the website evidence contains the URLs from which the pages
were taken, and therefore respondent could have ascertained
whether the webpages were accurate or have been changed. If
respondent had shown that the website evidence was no longer
accurate, it could have submitted it as a rebuttal to
petitioner’s evidence. See Safer, 94 USPQ2d at 1039 (“The
Cancellation No. 92046786
9
date and source information on the face of Internet
documents allow the nonoffering party the opportunity to
verify the documents”). Respondent did not submit evidence
showing the webpages introduced by petitioner had changed or
were no longer accurate, and therefore we give the website
evidence the probative value to which it is entitled.
Respondent would also have us strike the testimony and
accompanying exhibits of Messrs. Ruz and Rodriguez regarding
use by third parties of the terms “Swiss” or “Swiss Made” in
connection with their watches because the witnesses did not
know whether or not the purveyors had been granted a license
by respondent, or if respondent was involved in a dispute
with the third parties. Although we decline to strike this
evidence, to the extent that there is no evidence as to
whether the watches satisfy respondent’s certification
standards, we have considered this in determining the
probative weight to be accorded the testimony and exhibits.
The proceeding has been fully briefed, and an oral
hearing was held before the Board.11
As a preliminary matter, we note that respondent has
filed what it has captioned a “Motion to Request
Clarification After Oral Argument,” a motion that petitioner

11 It is noted that neither party included parallel cites to The
United States Patents Quarterly (USPQ) in their citation of
authorities. When cases are cited in a brief, the case citation
should include a citation to the USPQ if the case has appeared in
that reporter. TBMP §§ 101.03 and 801.03 (3d ed. 2011).
Cancellation No. 92046786
10
has opposed. We agree with petitioner that respondent’s
motion is not seeking clarification of any statement made by
the Board during oral argument, but is attempting to submit
further comments in answer to questions raised by the judges
during oral argument. Accordingly, we have given no
consideration to this motion, nor to the statements made by
petitioner in its responsive submissions as to what it could
have argued if petitioner were to make additional comments.
We also point out that Board practice does not allow parties
to submit additional comments or clarify their positions
after oral hearing, unless specifically requested to do so
by the Board. For example, in the present case at the oral
hearing the Board, noting that petitioner had submitted all
of its evidence under seal, ordered that petitioner resubmit
copies of its evidence in which only truly confidential
material was redacted. If petitioner had some question
about how to comply with the Board’s request, perhaps in
view of the confidentiality agreements the parties had
signed, a motion for clarification might have been warranted
on this subject.
The Parties
The record shows that petitioner is a U.S. company that
is a distributor or reseller of various brands of watches.
Ben-Shmuel test., p. 6, 40. Petitioner also manufactures
Cancellation No. 92046786
11
and sells watches under its own marks, including SWISS WATCH
INTERNATIONAL and SWISS LEGEND. Id., p. 32.
Respondent is a Swiss organization whose purpose is to
contribute to the “defense and development of the Swiss
watch industry.” Stauffer test., response 7.12 It has a
membership of approximately 500 companies or associations
linked to the Swiss watch industry; such entities must, with
rare exceptions, have their headquarters in Switzerland.
Id., 10.1. Respondent visits the premises of applicants for
membership in respondent to make sure the watches are
produced in compliance with the “Ordinance governing the use
of the appellation ‘Switzerland’ or ‘Swiss’ for watches.”
(English translation, hereafter referred to as “the
Ordinance.”) Id., 10.2. The Ordinance was issued by the
Swiss Federal Government. Id., 11.1.2. The Ordinance
“provides the conditions under which one may use Swiss names
in relation with watches and other horological products.”

12 Mr. Stauffer’s testimony was taken on written questions, and
therefore each question and answer was numbered.
We also note that Mr. Stauffer’s testimony deposition was
marked “confidential” in its entirety, and respondent did not
file a redacted copy for the public record. In order to
adequately explain our analysis and the facts on which it is
based we must refer to some of the testimony and exhibits,
although we have tried to be sensitive about revealing anything
that may be truly confidential. Further, because proceedings
before the Board are public, all papers should be available to
the public, except for information that is truly confidential.
It is clear that not everything in Mr. Stauffer’s testimony fits
that description. Accordingly, respondent is allowed until
thirty (30) days after the issue date of this decision to file a
redacted version of Mr. Stauffer’s testimony, failing which the
testimony in its entirety will become part of the public record.
Cancellation No. 92046786
12
Id., 12.2. The Swiss Federal Government, in article 53 of
the Ordinance, has entrusted respondent with the task “of
attributing identification signs to all producers of Swiss
watches and movements and to keep the register thereof.”
Id., 12.4.1. The bylaws of the Swiss Federal Institute of
Intellectual Property (Switzerland’s equivalent of the
USPTO) entrust respondent with the task of combating
infringements of intellectual property rights, including
Swiss geographical indications. Id.
Standing
Mr. Ben-Shmuel has testified that his company sells,
distributes and arranges for the manufacture of watches,
including under the trademarks SWISS WATCH INTERNATIONAL and
SWISS LEGEND. Therefore, petitioner has shown that it is
not an intermeddler, but has a real interest in this
proceeding. Accordingly, it has established its standing.
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842
(Fed. Cir. 2000); Lipton Industries, Inc. v. Ralston Purina
Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
Certification marks
Because this proceeding involves certification marks,
it is useful to review the provisions of the Trademark Act
regarding such marks. “Certification mark” is defined in
Section 45 of the Act, 15 U.S.C. § 1127:
Cancellation No. 92046786
13
The term “certification mark” means any word,
name, symbol, or device, or any combination
thereof—

(1) used by a person other than its owner, or

(2) which its owner has a bona fide intention
to permit a person other than the owner to use
in commerce and files an application to
register on the principal register established
by this chapter,

to certify regional or other origin, material,
mode of manufacture, quality, accuracy, or other
characteristics of such person’s goods or services
or that the work or labor on the goods or services
was performed by members of a union or other
organization.

Section 4 of the Trademark Act, 15 U.S.C. § 1054, provides:

Subject to the provisions relating to the
registration of trademarks, so far as they are
applicable, collective and certification marks,
including indications of regional origin, shall be
registrable under this chapter, in the same manner
and with the same effect as are trademarks, by
persons, and nations, States, municipalities, and
the like, exercising legitimate control over the
use of the marks sought to be registered, even
though not possessing an industrial or commercial
establishment, and when registered they shall be
entitled to the protection provided in this
chapter in the case of trademarks, except in the
case of certification marks when used so as to
represent falsely that the owner or a user thereof
makes or sells the goods or performs the services
on or in connection with which such mark is used.
Applications and procedure under this section
shall conform as nearly as practicable to those
prescribed for the registration of trademarks.

Section 14(5), 15 U.S.C. § 1064(5) provides that a petition
to cancel a registration of a mark may be brought:
At any time in the case of a certification mark on
the ground that the registrant (A) does not
control, or is not able legitimately to exercise
control over, the use of such mark, or (B) engages
Cancellation No. 92046786
14
in the production or marketing of any goods or
services to which the certification mark is
applied, or (C) permits the use of the
certification mark for purposes other than to
certify, or (D) discriminately refuses to certify
or to continue to certify the goods or services of
any person who maintains the standards or
conditions which such mark certifies.

In addition, as with all registrations, a petition to cancel
a certification mark registration may be brought under
Section 14(3) at any time “if the registered mark becomes
the generic name for the goods or services, or a portion
thereof, for which it is registered,” or if the registration
was obtained fraudulently.
Petitioner has petitioned to cancel respondent’s
certification marks on grounds A, C and D enumerated in
Section 14(5), as well as the grounds of genericness and
fraud set forth in Section 14(3). The standard of proof for
cancelling certification mark registrations is the same as
for cancelling a trademark registration, namely, petitioner
bears the burden of proving its case by a preponderance of
the evidence. Midwest Plastic Fabricators Inc. v.
Underwriters Laboratories Inc., 906 F.2d 1568, 15 USPQ2d
1359, 1361 (Fed. Cir. 1990).
Claim 1: Respondent permits its marks to be used for
purposes other than to certify

The first ground discussed by petitioner in its brief
is that respondent has permitted use of its certification
marks for purposes other than to certify (Section 14(5)(C)).
Cancellation No. 92046786
15
Petitioner bases this claim on the fact that respondent
allows its members and licensees to use trademarks that
include the word SWISS. Petitioner points to numerous uses
of such marks, including , WENGER SWISS MILITARY,
SWISS ARMY, and DAVOSA SWISS.
The problem with petitioner’s position is that it
treats these third parties’ uses of their various marks as
though they are using the mark SWISS per se, i.e.,
petitioner views the various SWISS formative marks used by
the third parties as though they constitute a trademark use
of respondent’s certification mark SWISS. However,
respondent’s certification mark is not LEONARD SWISS or
WENGER SWISS MILITARY or any of the marks used by
respondent’s members or licensees.13 Although a
certification mark cannot also be used as a trademark, for
that prohibition to apply, the mark must be “identical or
substantially or virtually identical.” In re 88Open
Consortium Ltd., 28 USPQ2d 1314 (TTAB 1993) (88OPEN
COMPATIBILITY CERTIFIED and design could be registered as a
certification mark despite the applicant’s ownership of a
trademark registration for 88OPEN). It is clear that all of
the third-party marks that are of record contain additional
wording and/or design elements such that they cannot be

13 Petitioner has not pointed to any trademark use by third
parties of SWISS MADE, and the record does not reflect any.
Cancellation No. 92046786
16
considered identical or substantially or virtually identical
to respondent’s marks. We are not persuaded by petitioner’s
argument that respondent’s members’ and licensees’
“trademarks are not sufficiently separate and distinct from
Registrant’s certification marks to satisfy this Board’s
requirement that the difference in purpose between the marks
‘would be recognized by the purchasers of the certified
goods’” [quoting In re Monsanto, 201 USPQ 864, 869 (TTAB
1978)], and that “[t]he salient and distinguishing feature
of these trademarks is the term ‘Swiss.’” Reply brief, p.
10. On the contrary, the additional elements in the various
marks clearly make these marks different from SWISS and from
SWISS MADE.
We acknowledge that, in general, entities that use a
registrant’s certification mark do not include the mark as
part of their own trademarks, and that there are pitfalls to
allowing users of the certification mark to do so.14
However, trademark law does not prohibit a certification
mark owner from permitting such use. Petitioner has quoted
language from Section 19.92.50 of 3 J. Thomas McCarthy,

14 For example, if the certifying authority determines that a
user of the term is not complying with the certification
standards, the certifying authority may have to undertake a
cancellation proceeding or court action in order to have that
party’s registration cancelled. Further, the inclusion by many
different entities of a certification mark in their individual
trademarks may make it more difficult for the owner of the
certification mark to prove likelihood of confusion by a third
party that attempts to use that same term in its own mark.
Cancellation No. 92046786
17
McCarthy on Trademarks and Unfair Competition, 19-277 (4th
ed. 2002), to support its claim that a certification mark
owner is required to protect its mark: “[E]ven where a
defendant’s product contains ingredients which have been
certified by the owner of a certification mark, the
defendant’s incorporation of that certification mark into
its own composite trademark might be likely to cause
confusion as to sponsorship, affiliation or connection.”
The context of the quoted language relates to whether the
Board could find likelihood of confusion where a
certification mark owner brought an action against the user
of a mark that, without permission, incorporated the
certification mark into its own mark.15 It does not stand
for the proposition that a certification mark owner may not
permit an authorized user to include the certification mark
within the user’s own trademark.16
Petitioner also argues, in support of this claim, that
respondent has allowed the use by non-authorized third
parties of marks that incorporate the term SWISS, and also
has allowed the use of SWISS and SWISS MADE in a non-

15 The case cited in McCarthy in support of this statement was
Institut National Des Appellations d’Origine v. Brown-Forman
Corp., 47 USPQ2d 1875 (TTAB 1998), which McCarthy describes as
“denying summary judgment of dismissal since it is possible that
a likelihood of confusion with opposer’s COGNAC certification
mark could result from applicant’s CANADIAN MIST AND COGNAC
trademark for a blend of Canadian whiskey and genine COGNAC
brandy.”
Cancellation No. 92046786
18
trademark fashion to promote the sale of watches. Aside
from the fact that none of the third-party uses is for marks
that are “identical or substantially or virtually identical”
to SWISS or SWISS MADE, the prohibition as to using the same
mark as a certification mark and trademark applies to uses
that are made or authorized by the certification mark owner.
Thus, this argument that respondent has “allowed” non-
authorized uses is more appropriately considered in
conjunction with the claim that respondent does not control
use of its certification marks, and in fact petitioner has
referred throughout Section B of its brief (“Registrant does
not control use of its certification marks”) to the facts
and arguments it has made here. Therefore, we address it
below.
Claim 2: Respondent does not control use of its marks
Section 14(5)(A) of the Trademark Act provides that the
registration of a certification mark may be cancelled if the
registrant does not control, or is not able legitimately to
exercise control over, the use of such mark. “The purpose
of requiring control over use of a certification mark, as
with a trademark, is two-fold: to protect the value of the
mark and its significance as an indication of source, and to
prevent the public from being misled or deceived as to the
source of the product or its genuineness.” Tea Board of

16 The other cases cited by petitioner involving likelihood of
Cancellation No. 92046786
19
India v. Republic of Tea Inc., 80 USPQ2d 1881, 1886 (TTAB
2006), citing Midwest Plastic Fabricators, Inc. v.
Underwriters Labs., Inc., 906 F.2d 1568, 15 USPQ2d 1359,
1362 (Fed. Cir. 1990). The statute does not define
“control.” Case law has interpreted this provision in two
ways. One is that the owner of the mark has, implicitly or
explicitly, given permission to others to use the mark
without ensuring that their products or services meet the
certification mark owner’s standards. For example, in
Midwest Plastic Fabricators, it was claimed that the
certification mark owner, Underwriters Laboratories, did not
adequately inspect the products on which it allowed
companies to apply the UL certification mark. The second
interpretation of this provision is akin to the mark
becoming generic, i.e., that the certification mark owner
has failed to control use by third parties to the extent
that the mark no longer acts as an indicator of source, or
more particularly, as an indicator of certification of the
products or services. See Tea Board of India, 80 USPQ2d at
1886.
Petitioner bases its claim that respondent does not
control use of its certification marks on the contention
that there is “widespread unauthorized use of the term SWISS
by third parties who are not members or licensees of

confusion grounds are similarly inapposite.
Cancellation No. 92046786
20
Registrant’s organization.” Brief, p. 23. Petitioner has
listed, at pages 18-21 of its brief, approximately 22
trademarks that include the term SWISS.17 Thus,
petitioner’s claim is more akin to the second interpretation
discussed above, since petitioner does not claim that
respondent has failed to ensure that its members and
licensees follow its standards.18 To the extent that
petitioner is claiming that the unauthorized uses are so
extensive that SWISS and SWISS MADE have ceased to function
as certification marks because the words are generic, we
will address that subsequently. We confine our comments
here to whether respondent has made adequate efforts to
control the unauthorized use of its marks.
Respondent’s witness, Vincent Stauffer, has testified
as to respondent’s actions with respect to the unauthorized
uses asserted by petitioner, and to respondent’s policing

17 As part of the record adduced by petitioner, it submitted
approximately 75 exhibits consisting of Internet printouts
showing the term SWISS used for various watches offered for sale,
without making a distinction as to whether the users of the
trademarks were members or licensees of respondent, whose use
complied with respondent’s certification requirements.
Respondent had provided such lists to petitioner through
discovery, and both petitioner and respondent have made them of
record, petitioner through a notice of reliance and respondent as
an exhibit to Mr. Stauffer’s testimony. We assume that
petitioner has listed in its brief all the trademarks it believes
are being used without respondent’s permission or control.
18 There is some question about whether one or two of
respondent’s members may, with particular brands, not have
followed all of the requirements of the Ordinance. In any event,
not only has this not been clearly proven, but any such misuse is
so limited that it would not be a basis for cancelling the
Cancellation No. 92046786
21
efforts in general. We are somewhat hampered in our
discussion of these activities because, as we stated
previously, Mr. Stauffer’s testimony has been submitted
under seal.19 We have tried to respect the information in
the testimony that is truly confidential, and will refer to
it generally.
Respondent has shown, through the testimony of Mr.
Stauffer, that it engages in significant activities to
ensure that only companies adhering to its standards (and by
extension, the standards of the Swiss Ordinance) use the
terms SWISS or SWISS MADE in connection with watches. It
monitors all trademark applications in Class 14 worldwide
and files opposition proceedings when there are dubious
cases, monitors the use of SWISS, SWITZERLAND and SWISS
MOVEMENT on watches displayed in watch-specialized
magazines, buys or requests watch samples and inspects them,

registration. As stated infra, control does not have to be
absolute.

19 At the oral hearing, after noting that the entire testimony
deposition of petitioner’s witness Lior Ben-Shmuel had been
marked “confidential,” the Board ordered petitioner to submit a
redacted version for the public record. We failed to give a
similar instruction to respondent regarding Mr. Stauffer’s
testimony because we were not aware at the time that a redacted
version had not been submitted, since the Board generally reviews
only the briefs, and not the entire record, prior to oral
argument. It was clear from the parties’ briefs and the
statements made during oral argument that Mr. Ben-Shmuel’s entire
testimony had been submitted under seal, but the briefs did not
similarly reveal that the Stauffer testimony had been marked
“confidential” in its entirety. As noted in footnote 12,
respondent must now provide a redacted version of Mr. Stauffer’s
testimony.
Cancellation No. 92046786
22
and inspects watches which have been seized by police forces
or customs authorities worldwide. (response 15.1.1). In the
United States, respondent has filed 25 oppositions against
marks incorporating the terms SWISS or SWITZERLAND (response
16.1.3), with six settled via an agreement by which the
applicant agreed to comply with the standards of the Swiss
Ordinance (16.1.5, 16.1.6), and ten resolved with the
withdrawal or abandonment of the application (16.1.7).
Respondent also has worked with customs in the United States
to prevent the importation of watches bearing the term
“SWISS” which did not meet the standards of the Swiss
Ordinance. (response 15.1.4).
Of the 22 uncontrolled trademark uses asserted by
petitioner, Mr. Stauffer has testified that respondent has
brought oppositions against six of them, and is involved in
actions against two others.20 Others of the remaining
asserted uncontrolled trademark uses do not involve
registered marks, while two other applications have been
abandoned, and respondent has contacted other companies to
determine what actions will be taken.
Although petitioner acknowledges that respondent is not
required to exercise absolute control, and that respondent
has taken some actions, petitioner asserts that “it is

20 It is unclear from the wording of the questions in Mr.
Stauffer’s testimony whether these actions are oppositions.
Cancellation No. 92046786
23
reasonable to expect greater control than demonstrated by
Registrant and its predecessor in interest when they have
had over 75 years, since the alleged date of first use in
1931, to monitor and limit the unauthorized uses of ‘Swiss’
and ‘Swiss Made’ products in the U.S.” Brief, p. 23.
The statute does not define “control” or indicate the degree
of control required. As petitioner acknowledges, absolute
control is not only not required, but the Board has
recognized that absolute control would be impossible. Tea
Board of India v. Republic of Tea Inc., 80 USPQ2d at 1888;
see also Midwest Plastic Fabricators, 15 USPQ2d at 1362 (the
certification mark owner’s affirmative duty to control its
certification mark does not mean “absolute control” since
this would be “impracticable, if not impossible to
satisfy”); Engineered Mechanical Services, Inc. v. Applied
Mechanical Technology, Inc., 584 F. Supp. 1149, 223 USPQ 324
(M.D. La. 1984) (“The owner of a mark is not required to
constantly monitor every nook and cranny of the entire
nation and to fire both barrels of his shotgun instantly
upon spotting a possible infringer ….”).
The question is whether the control is adequate. As
stated in Midwest Plastic Fabricators, 15 USPQ2d at 1363,
“the owner must take reasonable steps, under all the
circumstances of the case, to prevent the public from being

Cancellation No. 92046786
24
misled.” Respondent has an extensive worldwide monitoring
and enforcement system in place, including working with U.S.
Customs officials. It has, as noted, brought numerous
oppositions in the United States, and negotiated the
abandonment or withdrawal of numerous applications. It has
also filed letters of protest with the USPTO. We find, in
the circumstances of this case, that respondent’s control is
adequate.
We also note petitioner’s contention that respondent
cannot control use of its certification marks “because of
widespread third party use prior to Registrant’s date of
registration of its Marks, of the designation SWISS in
connection with watches that do not originate in
Switzerland.” Brief, p. 24. It appears that petitioner is
arguing that respondent can take no action against such
registrations, and therefore, in effect, such third-party
uses are permanent. However, petitioner’s position is not
correct. The date of the registration of respondent’s marks
is not the operative date for respondent to bring an action,
since its rights do not arise only with the issuance of its
registrations.
Petitioner has also submitted website evidence in which
such terms as “Swiss,” “Swiss made,” “Swiss quartz,” “Swiss
movement,” and “Swiss collection” have been used in the
descriptions of watches that are offered for sale on the
Cancellation No. 92046786
25
various webpages. Our review of these exhibits shows that
in most cases SWISS is used to identify the movements used
in the advertised watches. Mr. Stauffer has also testified,
with respect to some of these uses, that he is unfamiliar
with them, or could only say that the trademarks used in
connection with the watches have not been registered in the
United States.21
We do not regard accurate statements describing that a
watch has a Swiss movement as showing that respondent has
allowed uncontrolled use of its marks. Nor are instances of
misuse that had not come to respondent’s attention, when the
record shows that respondent has made very clear efforts to
monitor third-party uses of SWISS and SWISS MADE. Although
we acknowledge that there appear to be instances of misuse
of SWISS, the instances that are in the record are not so
extensive for us to conclude that the registrations should
be cancelled. “[T]he mere fact of misuse … is not
sufficient to raise an inference that the control was not
adequate or that [SWISS or SWISS MADE] has lost all
significance as a mark. Even if control is not maintained
and misuse occurs, it must be shown that the misuse was of

21 Because of the nature of testimony on written questions, it is
not possible to pose a follow-up question upon learning of an
answer; instead, one must anticipate what the answer will be and
submit a follow-up question in advance. As a result, the
responses are not as complete as can be obtained through a
deposition upon oral examination.

Cancellation No. 92046786
26
such significance to permit an inference that the mark is
generic.” Tea Board of India, 80 USPQ2d at 1888.

Claim 3: Respondent discriminates
Section 14(5)(D) provides for the cancellation of a
certification mark if the registrant “discriminately refuses
to certify or to continue to certify the goods or services
of any person who maintains the standards or conditions
which such mark certifies.” The basis for petitioner’s
claim of discrimination is not that respondent refuses to
certify the goods of those who maintain the standards which
its marks certify, but that respondent’s standards are
wrong. Petitioner argues that respondent’s requirements
that the watch movement be cased up in Switzerland and that
the final inspection of the watch take place in Switzerland
are unnecessary. This position is not well taken. The
statutory provision is not dependent upon whether the Board
or a third party likes the standards, or sees the need for
them; the statute requires only that the owner of the
certification mark allow any entity that meets the
standards, whatever the owner determines those standards to
be, to use the mark.
Petitioner also argues that respondent discriminates in
the approval for use of its certification marks because it
may deny membership in its organization. We are not
Cancellation No. 92046786
27
persuaded by this argument. Although members of its
organization are permitted to use the certification marks
(because to be a member an entity must comply with the
standards set forth in the Ordinance), there is no
requirement that an entity be a member of respondent in
order to use the certification marks. Indeed, respondent
has provided a list of companies that are not members but
that are licensed to use its certification marks.
Petitioner has also argued that respondent’s standards
discriminate against U.S. companies that adhere to U.S.
customs regulations. In its main brief petitioner has
pointed to the Tariff Act of 1930, which provides that the
country of origin of the movement determines the country of
origin of the watch, and asserts that therefore U.S. Customs
“would recognize ‘Swiss Made’ as an appropriate marking on
the watch.” pp. 25-26. Whether or not U.S. Customs would
consider a watch to be made in Switzerland for duty
purposes, or would consider “Swiss Made” to be acceptable to
indicate the country of origin, it does not follow that
respondent is discriminating against U.S. companies in terms
of the use of its certification marks. Again, the language
of the statute is clear: the discrimination contemplated by
the statute refers to a refusal by the certification mark
owner to certify “the goods or services of any person who
Cancellation No. 92046786
28
maintains the standards or conditions which such mark
certifies.”22
In short, petitioner has not submitted any evidence
that respondent has refused to permit the use of its
certification marks for watches meeting its standards,
namely, the watch movement is made in Switzerland, the watch
is “cased up” in Switzerland, and the final inspection of
the watch takes place in Switzerland.23
Claim 4: Genericness
A registration for a certification mark, like other
trademarks, may be cancelled at any time if the mark becomes
the generic name for the goods or services. Trademark Act
Section 14(3). Petitioner claims that respondent’s marks
are generic for watches, clocks and their component parts

22 In its reply brief, petitioner has asserted a public policy
argument based on U.S. customs regulations, stating that U.S.
companies cannot simultaneously comply both with U.S. customs
regulations and with respondent’s certification mark standards.
To the extent that there is any conflict (and we do not say that
there is), this is not the forum to resolve it. The grounds upon
which a petition to cancel a certification mark may be brought
have been set out elsewhere in this opinion. “Against public
policy” or “conflicts with Customs requirements” are not
permissible grounds for a cancellation proceeding. Cf. The
Institut National Des Appellations D’Origine v. Vinters
International Company, Inc., 958 F.2d 1574, 22 USPQ2d 1190, 1197
(Fed. Cir. 1992) (“We deal here only with the issue of
registrability and what may be registered in the PTO. It is not
our concern or that of the PTO what [the applicant] must do to
comply with the BATF labelling requirements.”)
23 Petitioner has stated that respondent denied petitioner “its
certification.” Petitioner’s arguments in connection with this
statement have been marked “confidential,” and therefore we
cannot discuss them. Suffice it to say that there is no evidence
that petitioner requested respondent to allow it to use
respondent’s certification marks for watches, or that
Cancellation No. 92046786
29
and fittings because the terms “primarily signify to the
American purchaser the type of watch regardless of regional
origin.” Brief, p. 27.24
Petitioner’s first argument is based on the case In re
Cooperative Produttori Latte E Fontina Valle D’Aosta, 230
USPQ 131 (TTAB 1986). An Italian cooperative had applied to
register as a certification mark for “FONTINA cheese” the
following design,

and the examining attorney required a disclaimer of FONTINA
on the ground that it merely described or is the generic
name for a type of cheese. The Board found that “fontina”
is not a certification mark indicating regional origin, but
that the lower-case treatment of this word in various
references as naming a kind of cheese with certain
characteristics, and the evidence showing there is a
domestic fontina cheese

petitioner’s watches met respondent’s certification mark
standards.
24 In this section of petitioner’s brief, it directs its comments
to respondent’s mark SWISS, even titling the section “The term
SWISS has become a generic term for the goods in question.”
However, because there are occasional references to SWISS MADE as
well, we do not consider petitioner to have waived the ground of
genericness with respect to SWISS MADE.
Cancellation No. 92046786
30
demonstrates to us that, to the American
purchaser, “fontina” primarily signifies a type of
cheese (much like brie, swiss, parmesan or
mozzarella) regardless of regional origin, rather
than a mark of certification.

Id. at 134.
Petitioner argues that similar evidence of record in
this proceeding “supports Petitioner’s position that, for
the goods at issue, “Swiss” and “Swiss made” primarily
signify to the American purchaser the type of watch
regardless of regional origin.” Brief, p. 27. The evidence
to which petitioner points is “common usages by the press of
the terms “Swiss watch” and “Swiss precision” to convey
certain qualities associated with accurate watches.” Id. at
28. The excerpts submitted by petitioner, as part of its
Exhibit 76, include the following:
… who compares the craftsmanship of a car to a
fine Swiss watch. Milwaukee Journal Sentinel,
Sept. 7, 2003;

“It [an airplane] runs like a fine Swiss watch,”
he said, noting that the plane goes about 90 miles
per hour. The Detroit News, Sept. 5, 2003;

Manhattan is like a fine Swiss watch, the old-
fashioned kind that you wind up. They are
incredible pieces of precision workmanship ….
Chillicothe Gazette, August 20, 2003;

Instead of ticking like a Swiss watch,
Vanderbilt’s offense looked more like Swiss cheese
when it first made contact with the Commodores’
defense. The Tennessean, August 16, 2003.25

25 Besides these uses of “Swiss watch” as a simile or metaphor,
petitioner also submitted excerpts of articles in which the
phrase “Swiss watch” refers to actual Swiss watches, for example,
“Swatch, the Swiss watch maker, made a name for themselves in the
Cancellation No. 92046786
31

We find this evidence unpersuasive in showing that the
term “Swiss watch,” when it is used for watches, has the
meaning of any precise watch, regardless of geographic
origin. On the contrary, the use of “Swiss watch” as a
metaphor for something of precision workmanship shows the
renown of Swiss watches. In no way is this evidence similar
to the evidence adduced in the Fontina case, where the term
“fontina” was shown to refer to a type of cheese.
Petitioner also contends that SWISS and SWISS MADE have
become generic for a category of watches, irrespective of
where the watch is made, because of the evidence of use of
SWISS by third parties that are not respondent’s members or
licensees and use SWISS as a trademark on goods that do not
originate in Switzerland. As we indicated in discussing
petitioner’s claim that respondent does not control use of
its marks, petitioner submitted approximately 75 exhibits
consisting of Internet printouts showing the term SWISS used
in connection with various watches. The witnesses who
authenticated the Internet printout exhibits did not know
whether the watches shown therein originated in Switzerland.
In addition, during his testimony, Mr. Ben-Shmuel was asked
about various third-party SWISS-formative marks for watches.
Mr. Ben-Shmuel testified that some of the watches he was

early ’80s …”; and “For the couple with a taste for classic Swiss
watches with beautiful Volunteer faces, there were two ….”
Cancellation No. 92046786
32
asked about did not originate in Switzerland. However,
because the documents he referred to in his testimony were
not made of record, we cannot ascertain in what way SWISS or
SWISS MADE was used.26 Further, the basis for his knowledge
was, in most cases, rather vague. For example:
Q: Do their watches [Skagen] meet the Ordinance
requirements?

A: I don’t know for certain but I don’t think so.
I don’t know for certain.

Test. p. 73
***
Q: Have you--do their watches, the Aqua Swiss
watches meet the Ordinance requirement?

A: Again, and this is a brand that I have never
dealt with, but I am pretty familiar with them; I
have seen them advertised, and I have seen them
around. I was offered deals with them but I never
purchased it. And, from my understanding, not the
Swiss Federation, they probably do not abide by
the Swiss Federation rules but they do use 100
percent Swiss made movements which would provide
by that.

Q: And how would they not meet the Swiss
Ordinance?

A: Just the fact that they don’t want to assemble
the final inspection in Switzerland.

Q: And how do you know that?

A: Just from hearsay when we were discussing on
the deal or things like that. Now, they may do it
on some of their watches. But the particular
offer, you know, that I was offered at the time,

26 There is no indication in the record that the documents
reviewed by Mr. Ben-Shmuel in connection with his testimony were
the exhibits introduced during the testimony of petitioner’s
other witnesses. The transcript includes only the statement by
petitioner’s attorney that “For the following series of questions
I am just going to use a document to refresh his memory.” p. 15.
Cancellation No. 92046786
33
is going back a few years, from my recollection,
that wasn’t the case.

Test. p. 75.

This is not to say that all uses of SWISS and
SWISS MADE in connection with watches that are of
record are authorized or meet respondent’s
certification requirements. Certainly the testimony of
Vincent Stauffer, respondent’s employee, shows that
there are uses that do not conform to respondent’s
certification standards and that, while respondent has
taken many actions to stop unauthorized uses, it has
not prevented all of them. The question, though, is
whether, as a result of these unauthorized uses, SWISS
and SWISS MADE have lost their capacity to function as
certification marks indicating geographic origin of the
watches in Switzerland, and instead are viewed as
generic “indicators of certain qualities or
characteristics.” Petitioner’s Brief, p. 29.
First, we point out that a certification mark that
is used to certify geographical origin can also certify
certain qualities and characteristics of the product
that are due to factors associated with the geographic
area. Tea Board of India, 80 USPQ2d at 1887. In fact,
the very definition of a certification mark is that it
can certify quality, or accuracy, or other
characteristics. Thus, the terms SWISS and SWISS MADE
Cancellation No. 92046786
34
for watches can certify the quality or characteristic
that the watches are timepieces of great precision,
without affecting their status as certification marks.
On the contrary, the association of Switzerland with
precision watches actually enhances the certification
mark function of SWISS and SWISS MADE.
We find petitioner has not proved that SWISS and SWISS
MADE have lost their significance as indicators of
geographic source. The issue is not whether the public is
expressly aware of the certification function of the marks
or the certification process underlying use of the marks,
but rather is whether the public understands that goods
bearing the marks come only from the region named in the
marks. Institut National Des Appellations d'Origine v.
Brown-Forman Corp., 47 USPQ2d 1875, 1885 (TTAB 1998). The
relatively small number of clearly unauthorized third-party
uses of SWISS or SWISS MADE that are in the record are
insufficient to show that these terms, when used in
connection with watches, refer to any watch that works with
precision, as opposed to indicating their geographic origin.
As the Board stated in Tea Board of India, 80 USPQ2d at
1893, “even assuming applicant had produced evidence of
misuse, that is, use indicating a different geographic
source for the tea or use in connection with nongenuine tea,
we will not infer that the mark has become generic unless it
Cancellation No. 92046786
35
is also shown by applicant that the misuse is so widespread
and of such duration that it has caused DARJEELING to lose
all significance as a mark.”
Petitioner has also argued that “the terms ‘Swiss’ and
‘Swiss made’ have become generic for a category of
horological instruments, namely watches that incorporate
movements in the Swiss style or use Swiss-developed
mechanics, irrespective of where the watch is made.” Brief,
p. 29. It appears to be petitioner’s position that SWISS
identifies a type of movement, or a watch using such a type
of movement. However, the evidence of record does not
support such a finding. Certainly we cannot ascertain from
the exhibits advertising various watches as having a “Swiss
movement” that the movements do not come from Switzerland,
or that “Swiss movement” refers to a specific type of
movement that was originally developed in Switzerland but is
now made throughout the world. As noted, the witnesses who
introduced these exhibits during their testimony did not
know whether or not the watches had Swiss movements, i.e.,
movements made in Switzerland. Petitioner cites to the
testimony of Mr. Ben-Shmuel, at pages 8-9, in support of its
argument, but that testimony is far from clear, and
certainly insufficient to meet petitioner’s burden of
showing that SWISS is a generic term for watch movements,
Cancellation No. 92046786
36
and therefore generic for watches containing a particular
type of movement:
Q: Based on your knowledge of the industry, and
your experience, what is the US consuming public’s
understanding of the term “Swiss?”

A: You know, again, I guess, you know, the most
important aspect of a timepiece, you know, is the
brains of the actual timepiece, which is, you
know, a movement if it’s a quartz or an automatic
movement. And, you know, when people look for--
when consumers, in my experience, when they’re
looking into a quality, that they care about those
major components which is art--is the Movement.

Q: Based on your knowledge and industry
experience, is the term “Swiss” used in connection
with watches that are made outside of Switzerland?

A: Yes, definitely. There are many companies out
there that builds [sic] watches outside of
Switzerland, but import watches into other
countries, including the United States and abroad,
obviously, that have “Swiss” in their name or
somewhere on their watch, that the watches are not
[sic] made or assembled in China, or somewhere
else around the world.

(objections omitted).

Petitioner also asserts that “certification marks that
act as an indicator of geographic origin generally arise due
to the use of a geographic term in connection with products
tied to the land,” brief, p. 29, and appears to contend that
because respondent’s marks SWISS and SWISS made are used in
connection with manufactured goods--watches--consumers will
not view the terms as indicating goods that invariably come
from Switzerland. To the extent that petitioner is
suggesting that geographic terms cannot function as
Cancellation No. 92046786
37
certification marks unless they are used to certify goods
that come from the land, we are unaware of any case law that
would support such a position. Even in those situations
where a certification mark is used in connection with
products having an agricultural origin, there is a
recognition that processing of the product, even when that
processing does not have an intrinsic connection with the
land, can be an element of the certification standards.
See, for example, Bureau National Interprofessionnel Du
Cognac v. International Better Drinks Corp., 6 USPQ2d 1610
(TTAB 1988), in which the methods of distillation and aging
conditions were, in addition to the grapes grown in the
region, part of the standards for the use of the
certification mark COGNAC. In this case, the manufacture of
watches is so closely associated with Switzerland that even
Mr. Ben-Shmuel testified that “just like the Swiss are known
for chocolate, they are known for old watch making,” and
that “it’s [Switzerland] a region which is known for where
the watch industry kind of started,” p. 7; “the Swiss are
considered legends in the watch industry” and the “Swiss are
associated with the watch industry,” pp. 50-51.
In short, the evidence shows that the geographic
connection between watches and Switzerland is very strong,
and that when the terms SWISS and SWISS MADE are used in
connection with watches, consumers will understand that they
Cancellation No. 92046786
38
signify the geographic origin of the goods, and will not
regard the marks as generic terms.
Claim 5: Fraud
Although in its petition for cancellation petitioner
did not specify that the ground of fraud was limited to
respondent’s registration for SWISS MADE, it is clear from
petitioner’s briefs that this is the case. See Subhead C:
“Registrant committed fraud on the PTO in registering SWISS
MADE.” Brief, p. 24.27 Petitioner asserts that in response
to the Office action dated January 17, 2003, respondent
submitted an exhibit containing its certification standards
coupled with the abstract of the Swiss Ordinance on which
its standards are based. Petitioner contends that
“registrant’s decision to submit both documents was
calculated to outfox the examiner” because the certification
standards document respondent submitted “provides no
description of the standards used by Registrant to determine

27 Moreover, the basis for petitioner’s fraud claim appears to
have changed. In the petition for cancellation petitioner
alleged that respondent “intentionally misstated matters in its
application or failed to state that it is not a government, one
of the departments of a government, or a body operating with
governmental authorization ….” Petitioner did not pursue any
claim that respondent failed to inform the examining attorney
that it is not a government department and, indeed, it appears
that respondent does operate with governmental authorization.
Although petitioner did not plead, with the specificity required,
that its fraud claim was based on misstatements in connection
with respondent’s certification standards, the parties have
proceeded at trial as if that were the claim, and we therefore
treat the pleadings as amended to conform to the evidence. See
Fed. R. Civ. P. 15(b).

Cancellation No. 92046786
39
whether others may use the mark SWISS MADE”; that “[t]he
standards speak only of the indicators ‘Swiss,’ ‘Swiss
case,’ ‘Swiss dial,’ and ‘Swiss parts.’” Id. It is
petitioner’s position that the submission of the Ordinance,
“which does discuss use of ‘Swiss made,’ was made to confuse
the examiner into believing Registrant’s standards covered”
the mark SWISS MADE in order to overcome the Office action
and obtain a registration. Id.
Fraud in procuring a trademark registration or renewal
occurs when an applicant knowingly makes false, material
representations of fact in connection with its application
with an intent to deceive. In re Bose Corp., 580 F.3d 1240,
91 USPQ2d 1938, 1941 (Fed. Cir. 2009); Torres v. Cantine
Torresella S.r.l. 808 F.2d 46, 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, 153 USPQ 749, 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).
Cancellation No. 92046786
40
The file for the registration of SWISS MADE shows that,
when the underlying application was being examined, the
examining attorney, on January 17, 2003, issued an Office
action requiring respondent to “submit a copy of the
standards used to determine whether others may use the
certification mark with their goods or services.” In
response, respondent submitted “a copy of its standards as
well as an abstract of the Swiss Ordinance on which these
standards are based.” Petitioner is correct that the
standards submitted by respondent do not specifically use
the term “Swiss made,” and state that “A watch is considered
to be ‘Swiss’ if: 1. its movement is made in Switzerland;
2. its movement is cased up in Switzerland; and 3. the
manufacturer carries out the final inspection in
Switzerland.” This is essentially the same wording that
appears in Article 1(a) of the Ordinance. It is Article 3,
paragraph 4 of the Ordinance that makes reference to the
term “Swiss made”: “4. The 1st and 3rd paragraphs are also
applicable when these appellations are used in translation
(in particular “Swiss”, “Swiss made”, “Swiss movement”) with
the true indication of origin of the watch or with the
addition of words such as ‘style’, ‘type’, ‘form’ or other
word combinations.”28

28 Paragraph 1 of Article 3 states that “The name ‘Switzerland’,
indications such as ‘Swiss”, ‘Swiss product’, ‘manufactured in
Switzerland’, ‘Swiss quality’ or other appellations which contain
Cancellation No. 92046786
41
The fact that the term SWISS MADE does not appear in
respondent’s “Standards” is not a sufficient basis for us to
find fraud. Respondent’s response to the Office action was
quite clear; it advised the examining attorney that it was
submitting “a copy of its standards as well as an abstract
of the Swiss Ordinance on which these standards are based.”
The submissions are also clearly marked. The standards are
titled “The Standards,” and the Ordinance, which is a
separate document, is titled “Ordinance governing the use of
the appellation ‘Switzerland’ or ‘Swiss’ for watches.”
Respondent made no false statements to the examining
attorney, and a false statement is one of the critical
elements in proving fraud. Further, there must be an intent
to deceive the USPTO. Bose, 91 USPQ2d at 1941. Although
deliberately omitting relevant portions of a document, or
making a statement that, while true, gives only part of the
story and therefore is deliberately designed to mislead, may
be treated as a false statement in its effect and also show
the necessary element of intent, that is clearly not the
case here. Petitioner’s assertion that respondent submitted
both documents in order to “outfox the examiner” is not a

the name ‘Swiss’ or ‘Switzerland’ or which may be confused
therewith may be used solely for Swiss watches or watch
movements,” while paragraph 3 states “The indication ‘Swiss
movement’ may be applied to watches which contain a Swiss
movement. The word ‘movement’ must appear written out in full in
the same type-face, dimension and colour as the appellation
‘Swiss’.”
Cancellation No. 92046786
42
substitute for showing that submitting both documents gave
an incomplete picture and, in effect, resulted in the
withholding of necessary information. The examining
attorney was given both the Standards and the Ordinance;
both were clearly marked; and respondent clearly stated in
its response that it was submitting both, and that the
Standards were based on the Ordinance.
We find that petitioner has not proven its asserted
ground of fraud.
Decision

We find that petitioner has failed to prove that it is
entitled to judgment on any of the pleaded grounds.29
Accordingly, the petition for cancellation is dismissed.
As noted in footnote 12, respondent must submit, within
thirty (30) days, a redacted version of the testimony and
exhibits of Vincent Stauffer, marking as confidential only
material that is truly sensitive, failing which the
testimony and exhibits previously submitted under seal will
become part of the public record.

29 We have carefully considered all of petitioner’s arguments and
evidence, even if not specifically discussed herein, but have not
found them persuasive.