G&W Labs: Saving Multi-Class Applications From Fraud Claims

Ever since the decision in Medinol Ltd. v. Neuro Vasx Inc., 67 U.S.P.Q. 2d 1205 (TTAB 2003), trademark owners have had to risk that a trademark registration covering goods and services spanning multiple classes could be canceled in its entirety for fraud based on a false or erroneous statement regarding use of the mark, even if the false statement affected only one item in one class of goods or services. The risk of such a cancellation has prompted some applicants to forego filing multi-class trademarks in favor of separate applications. In the case of G&W Labs, Inc. v. G.W. Pharma Ltd., Opp. No. 91169571 (Jan. 29, 2009), the Trademark Trial and Appeal Board has now made it clear that the risk of cancellation is limited to the class of goods or services affected by the applicant’s false statement.