Trademark Claims vs. Amazon Based on ‘Fraudulently Obtained’ Rights: Counterclaims
Amazon brought counterclaims against Annie Oakley Enterprises and its owner, Renee Gabet, seeking cancellation of four of Gabet's asserted trademark registrations due to her fraudulent U.S. Patent and Trademark Office registrations, said Amazon's answer Wednesday (docket 1:22-cv-02246) in U.S. District Court for Southern Indiana in Indianapolis.
Sign up for a free preview to unlock the rest of this article
Communications Daily is required reading for senior executives at top telecom corporations, law firms, lobbying organizations, associations and government agencies (including the FCC). Join them today!
Gabet and her company allege Amazon turned a blind eye to the trademark-infringing conduct of its third-party sellers (see 2305090032). But Amazon isn't liable "for acts of third parties, including parties who list, offer to sell, and sell products using Amazon's online marketplace," said its answer. Amazon doesn't infringe and hasn't infringed the plaintiffs' trademarks "in any manner," it said.
Gabet submitted at least 19 false declarations "under the penalty of perjury" when applying for, prosecuting and maintaining the registrations for the three remaining fragrance trademarks at issue -- Sunset, Indian Musk and Morning Dew, said Amazon's counterclaims. Two of the fraudulent registrations were for Sunset, it said.
The Annie Oakley Enterprises owner "fraudulently obtained and extended trademark coverage by knowingly making sworn false statements to the USPTO about her supposed 'bona fide' intention to use the marks on different types of goods," said Amazon's counterclaims. For eight years, she treated the USPTO like a "trademark reservation system," submitting at least a half-dozen "knowingly false declarations" of bona fide intent when applying to register Sunset, they said. She did so to extend the life of the registration’s application “while not actually taking steps to use the mark,” the counterclaims said.
Gabet made similarly false declarations “when applying for a registration for Indian Musk,” said the counterclaims. The USPTO relied on these declarations “by extending the abandonment deadline for her to file declarations of actual use,” counterclaims said. The agency didn’t comment Thursday.
Gabet also submitted “fraudulent sworn declarations of actual use,” said the counterclaims. They said Gabet “used the marks on more goods than she did,” they said. She submitted the false declarations to convince the USPTO “to issue the asserted registrations for Sunset and Indian Musk,” they said. Five years after the registrations’ issuance, she did this again “to convince the USPTO to allow all asserted registrations to mature to ‘incontestable’ status,” they said. She has done it since then “for all asserted registrations when submitting declarations to renew,” they said.
Gabet's complaint includes trademark claims against Amazon “based on fraudulently obtained registration rights,” said the counterclaims. “Amazon thus brings counterclaims for cancellation of the fraudulently obtained registrations,” they said. It also brings counterclaims seeking declarations of non-infringement, they said.