‘BEARWW' Registration Ordered Cancelled; Was Improperly Issued Under Section 44(e)

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April 1 --The Trademark Trial and Appeal Board on March 27 granted a petitioner summary judgment on its bid to cancel the “BEARWW” registration on the grounds that the registration was improperly granted in the first place.

In 2012, the Patent and Trademark Office issued a registration for BEARWW for Internet social marketing and dating services. The registration was issued to Marie Laure Leclerq, a Canadian citizen, and it issued under Section 44(e), which allows for the holder of a registered foreign mark to apply for a U.S. trademark. At the time, Leclerq claimed to be the owner of a Canadian Registration for the subject mark. After the mark was registered, Leclerq transferred ownership of the mark to Webid Consulting Ltd., a United Kingdom Corporation.

The instant cancellation proceeding, which was initiated by SARL Corexco, a French corporation, seeks a cancellation of the registration on likelihood of confusion grounds--based on SARL's use of the BEARWWW mark since 2001 in the United States--and on the grounds that Leclerq never owned the Canadian registration in question.

Webid in fact admitted that Leclerq never owned the Canadian registration that served as the basis for the issuance of the U.S. registration under Section 44(e).

“In view thereof, issuance of the registration was improper and the registration is void,” the board said. It accordingly granted SARL summary judgment on its claim that the registration was void ab initio and it ordered the BEARWW registration cancelled.

Text is available at http://pub.bna.com/ptcj/TTAB92056456March27.pdf.

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