G&W Laboratories, Inc. v. GW Pharma LImited
N/AOUTCOME: Won motion to dismiss counterclaim
On behalf of my client I received a favorable precedential decision from the TTAB that directly addresses the issue of allegations of fraud with respect to multi-class trademark applications. This fra ... ud issue arises when an applicant identifies goods or services in its use-based application, statement of use, or renewal filings, that it is not actually using in commerce. The TTAB, starting with the Medinol case in 2003 held this to be fraud, and has consistently and strictly applied this standard in canceling registrations. This case presented the question of whether fraud in one class of a multi-class application can be applied to other classes and form the basis to cancel the entire registration. The TTAB noted that it had never dealt with this issue previously. The Board then held that multi-class applications are to be treated as a series of single class applications, and that fraud in one class does NOT require cancellation of any other classes. They then dismissed as moot, GW Pharma's counterclaim against my client in class 5.
