Proving Trademark Fraud: Intent Is The Question

Author:Mr Scott Slavick
Profession:Brinks Hofer Gilson & Lione

Law360, New York (August 21, 2013, 12:58 PM ET) -- Is fraud dead? Not likely. Is proving fraud before the U.S. Patent and Trademark Office dead? Now that's a question.

Before 2002, proving fraud committed against the USPTO was considered incredibly difficult. From 2003 through 2009, it became all the rage - due to the Trademark Trial and Appeal Board's ruling in Medinol Ltd. v. Neuro Vasx Inc. In 2009, all changed again with the Federal Circuit's reversal of the decision in Bose Corp. v. Hexawave Inc.

And just this year, two further decisions point to the fineness of a distinction in proving fraud committed against the USPTO - showing that if claims of fraud are not entirely dead, they're at least on a respirator.

In Medinol, 67 USPQ2d 1205 (TTAB 2003), Neuro Vasx had registered the NEUROVASX mark for "medical devices, namely, neurological stents and catheters." Medinol petitioned to cancel that registration on the ground that at the time Neuro Vasx had obtained it, the NEUROVASX mark was not in use on stents.

Thus, contended Medinol, Neuro Vasx had knowingly made false or fraudulent statements to the USPTO in obtaining its registration. In response, Neuro Vasx requested that the reference to stents be deleted from its registration, but Medinol argued that Neuro Vasx's requested amendment after the fact of filing could not undo the fraud it had already perpetrated on the USPTO.

The TTAB agreed with Medinol that merely deleting the unused goods did not remedy the fraud that had already occurred and held that if fraud is shown as to some of the registered goods, then the entire registration is void.

The TTAB further observed that in almost all cases, a party caught making a false statement will argue that there was no intent to defraud. Therefore, to cover those situations, the board explained that: "[t]he appropriate inquiry is not into the registrant's subjective intent, but rather into the objective manifestations of that intent." Id. at 1209.

The board went on to hold that "[a] trademark applicant commits fraud in procuring a registration when it makes material representation of fact in its declaration, which it knows or should know to be false or misleading." Id.

In the case, the board suggested, Neuro Vasx had signed a sworn statement, under penalty of fine or imprisonment or both, that the trademark was in use on both stents and catheters when it was not. As a result of the fraud, the board ordered the NEUROVASX registration canceled.

Medinol and its progeny caused widespread concern among trademark owners. Many trademark registrations list numerous goods; it is possible and perhaps even likely that some of these goods will have been dropped from a product line prior to the time when the registration is granted or renewed.

For example, whether through inattentiveness or simple error, a product may not have been deleted when a filing is made to renew a subject registration. Because of that failure, the TTAB's Medinol decision meant that the registration of the mark for all products listed was in jeopardy. Somewhat predictably, a number of...

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