Often, when filing a questionable specimen in connection with a statement of use, applicants for a trademark at the U.S. Patent and Trademark Office will at the same time file a request for an extension of time to file that statement of use. They do so to keep the window open for filing an alternative specimen of use.

The fruits of this strategy for an applicant were never more evident than in the Trademark Trial and Appeal Board’s first precedential ruling of 2016. On Jan. 21, in a consolidated opposition and cancellation proceeding in Embarcadero Technologies Inc. v. Delphix Corp., the board seized on applicant Delphix’s request for an extension, and relied on it to save the company’s application in the face of Embarcadero’s opposition. (The cases are Cancellation No. 92055153 and Opposition No. 91197762.)

In issuing its ruling, the board rejected yet another in what seems a long line of vague claims of fraud on the USPTO filed in recent years. And the board used its decision as a bully pulpit to emphasize the importance of filing these additional extension requests.

A quick recap. Petitioner Embarcadero sought to cancel Delphix’s mark Delphix for database management software and its design mark for the same. Embarcadero claimed that Delphix obtained its registration via fraud. Specifically, it alleged that Delphix filed fraudulent statements of use to obtain the challenged registration. To support its contention, Embarcadero argued that Delphix’s belief that its two claimed software installations constituted use in commerce of software goods was unreasonable.

Delphix moved for summary judgment as to Embarcadero's claim. It argued that summary judgment was appropriate because the facts Embarcardero relied upon did not support an inference that Delphix filed its statement of use with the requisite fraudulent intent, and thus there was an absence of evidence to support Embarcadero’s claim. At the same time, Embarcadero filed a cross-motion to amend its petition to add several more claims, including for false association, false representation and non-use.

The board observed that, even though it had to view Embarcadero’s fraud claim in a light most favorable to it (as nonmovant), the petitioner was still required to set forth specific facts supporting an inference of Delphix’s fraudulent intent. And, in this light, the board felt that Embarcadero failed to raise even a genuine issue as to Delphix's intent to deceive the USPTO. The board also noted that the reasonableness of Delphix's belief was irrelevant to the fraud analysis.

Accordingly, the board granted Delphix’s motion for summary judgment on Embarcadero’s fraud claim. At the same time, however, it granted Embarcadero's motion to amend its petition to add the ground of non-use. This latter claim argued that that, after Delphix filed a first, flawed statement of use on Aug. 12, 2009, it could not later file another statement of use claiming a first-use date after Aug. 12, 2009.

The board disagreed. It explained that, in an inter partes proceeding, it could properly consider evidence of use that occurred after the filing of the statement of use but within the original or extended period for filing said statement.

The board went on to explain that, during ex parte examination, the actual filing of a statement of use does not cut off the deadline for meeting the requirements for a statement of use. Indeed, the board noted, an applicant may amend its statement of use as long as the amendment demonstrates that the requirements for that statement were met before the expiration of the deadline for filing it. Thus, an applicant may amend its statement of use to specify dates of use that fall after the statement of use filing date, but before the expiration of the deadline for filing the statement of use.

In this case, a notice of allowance issued on July 28, 2009, gave Delphix until Jan. 28, 2010, to file its statement of use. The applicant filed its first statement of use on Aug. 12, 2009, and, on Jan. 25, 2010, it filed a request for an extension of time to file a statement of use.

This latter request gave Delphix an additional six months, to July 28, 2010, to file an additional or revised statement of use, if necessary. The board found that giving Delphix the benefit of this additional extension request satisfied the letter and the spirit of the statement-of-use rules. To be legally sufficient, Embarcadero had to plead that Delphix did not use its mark with the software listed in the registration within the time for filing a statement of use as extended—that is, no later than July 28, 2010.

Nothing in the board’s ruling is earth-shattering, but it highlights the usefulness of filing an extension request along with a statement of use. Doing so allows the applicant a second bite at the apple, if you will, in case its initial specimen of use is rejected. If it is rejected, this little-used strategy can have big benefits.

Reprinted with permission from the March 21, 2016 edition of Inside Counsel© 2016 ALM Media Properties, LLC. All rights reserved. Further duplication without permission is prohibited, contact 877-257-3382 or reprints@alm.com.

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