April 2, 2021
On March 22, 2021, Haug Partners successfully obtained a dismissal of ADP LLC’s (ADP) petition for cancellation on behalf of TransferWise Ltd. (TransferWise). TransferWise is a market leader in the financial technology space, transferring more than 5 billion dollars between its users per month. It is considered one of the most valuable financial technology companies in Europe.
At the TTAB, Petitions are subject to the statutory standing requirements of 15 U.S.C. § 1064, which the Board has interpreted to require that a petitioner plead “a real interest in the proceeding where the opposition or cancellation is within the zone of interests protected by statute, and a reasonable belief in damage that is proximately caused by continued registration of the mark.”1 The purpose of the standing requirement, in the Board’s view, is to ensure that petitions are not filed by “intermeddlers,” and therefore it requires little more than a plausible allegation of brand dilution or likelihood of confusion to satisfy the statute.2
Here, ADP filed a petition to cancel two registrations for the WISECARD mark on grounds of abandonment and fraud on the United States Patent and Trademark Office (USPTO). To establish standing, ADP relied on two factual allegations. First, it alleged that TransferWise has filed opposition proceedings against one of ADP’s EU trademark applications “in an attempt to gain leverage over Petitioner.”3 The Board disagreed with this “vague” allegation; stating that “[b]ecause Petitioner does not allege that the involved registration has been asserted against it in the EU proceeding, the allegations are insufficient to establish that Petitioner has a reasonable belief in damage proximately caused by the registration.4 Second, ADP alleged that TransferWise had “acquired the involved registration to claim priority over Petitioner’s WISE-formative marks in the U.S.”5 The Board rejected this “because Petitioner has failed to allege a belief in damage due to a likelihood of confusion between the subject mark and Petitioner’s WISE-formative marks.”6 Having no other basis for ADP’s interest in the proceeding, the Board concluded that ADP lacked standing.
Despite the seemingly low threshold for standing under the statute, the Board may be willing to take a closer look at the nature of a Petitioner’s stake in the proceeding.
The TTAB went on to dismiss ADP’s allegation of fraud with prejudice, noting that a heightened pleading standard applies to allegations that a party intended to deceive the USPTO. This standard requires allegations of specific conduct, but ADP’s pleading consisted of conclusory allegations with respect to TransferWise’s failure to use the mark in commerce and subsequent recordation of an assignment. The TTAB also rejected ADP’s allegation that TransferWise’s pleading in a different matter should be considered a true admission of fact. Even though the TTAB denied TransferWise’s motion with respect to the abandonment claim, since ADP did not have any standing to bring the action at the first place, the denial was considered redundant.
TransferWise was represented by Ben Natter of Haug Partners.
1ADP, LLC v. TransferWise, Ltd., No. 92074346, Slip Op. at 6 (T.T.A.B. Mar. 22, 2021).
2Id. at 7.
5Id. at 8.