Precedential No. 7: Denying FRCP 12(b)(6) Movement, TTAB Finds DOCTOR DISABILTY Fraud And Probability Of Confusion Claims Adequately Pleaded – Mental Property

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The petitioner requests the cancellation of two registrations, one for the word and design mark shown below (“the stethoscope mark”) and the other for the standard character mark PHYSICIAN DISABILITY, both for insurance brokerage services. Respondent Krugh requested, under FRCP12 (b) (6), that the two counts marked on the standard character – fraud and likelihood of confusion – be rejected, claiming that the petitioner had not provided any information on which relief could be granted. The board rejected the request., LLC v Charles Krugh, Cancellation Number 92074232 (March 5, 2021) [precedential].

In the DOCTOR DISABILITY standard character application, Krugh claimed to have acquired Section 2 (f) distinctiveness through ownership of the stethoscope mark registration and also through use of the standard character mark for at least five years.

Scam: In a properly filed fraud claim, the following must be alleged:

1) The respondent made a misrepresentation (misrepresentation) to the USPTO. 2) Misrepresentation is essential to determining the registrability (or maintenance) of a trademark. 3) the respondent was aware of the falseness of the presentation; and 4) respondent made the presentation with the intention of deceiving the USPTO to issue (or maintain) the registration. See In re Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938, 1941 (Fed. Cir. 2009). [I think reliance
by the USPTO is also required – ed.]

According to Rule 9 (b) of the Federal Code of Civil Procedure, fraud must be asserted “with particular care”. The petitioner alleged that Krugh’s claim in Section 2 (f) was false and misleading because Krugh had given up and discontinued the use of the stethoscope mark and because he had not used the standard DOCTOR DISABILITY mark in the five years prior to his Section 2 (f) claim . The petitioner also alleged that this false information was essential to his application, was made with the intention of deceiving the USPTO and that the USPTO used it to issue the registration.

The board found that the petitioner’s allegations met the requirements of FRCP 9 (b) and concluded that the petitioner had filed a fraud lawsuit against the USPTO.

Likelihood of confusion: To make a claim under Section 2 (d), a plaintiff must claim previously owned a trademark or name for their goods or services and use a trademark or name on the defendant that creates confusion can. Failure or deception by consumers as to the source of the goods or services. See Herbko Int’l., Inc., v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002); Hornblower & Weeks, Inc. v Hornblower & Weeks, Inc., 60 USPQ2d 1733, 1735 (TTAB 2001).

The petitioner claimed he had previous common law rights to the mark for the same services as Krugh’s, that the standard DOCTOR DISABILITY mark is confusingly similar to the petitioner’s mark and that there is a risk of confusion in the marketplace.

Krugh moved to dismiss the action as the petitioner could not set a priority. He claimed he had “design priority under 15 USC Section 1057 (c) due to the stethoscope brand registration in 2006,” the priority of which could be placed on the standard character mark.

However, the board found Krugh’s argument premature. A request for dismissal under FRCP 12 (b) (6) only examines the appropriateness of the allegations made, not the merits of the claim. Once Krugh has submitted his answer, he can invoke turning and then attempt to lay down “the strict elements of turning.”

Therefore, the board concluded that the petitioner had properly made a claim for confusion under Section 2 (d).

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TTABlogger like: The petitioner also alleged that Krugh committed fraud by providing incorrect data for first use. In a footnote, the board pointed out that incorrect first use dates are not essential for the issuance of the registration and therefore cannot support a fraud suit as long as the mark was in commercial use on the filing date. See Hiraga v Arena, 90 USP2.d 1102, 1108 (TTAB 2009).

BTW: Do you think Krugh’s two marks are similar enough to be stapled? In any event, the petitioner also claims that the stethoscope sign has been given up.

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