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Trademark owners and their counsel should take note of a recent article in the September 1st INTA Bulletin which highlights the growing willingness of the U.S. Trademark Trial & Appeal Board (“TTAB”) to entertain claims for fraud on the USPTO.

Specifically, the article discusses the adoption of a new “bright line” test for fraud on the USPTO. Under the test, a applicant is presumed to have committed fraud on the PTO for including in the specification of goods or services particular products or services on which the trademark is not actually used. This same rule is applied to Section 8 and 15 filings and Section 9 renewals.

The seminal case in this regard is Medinol Ltd. v. Neuro Vasx Inc., 67 U.S.P.Q.2d 1205 (T.T.A.B. 2003) in which the Board wrote:

Most importantly, however, deletion of the goods upon which the mark has not yet been used does not remedy an alleged fraud upon the Office. If fraud can be shown in the procurement of a registration, the entire resulting registration is void. General Car and Truck Leasing Systems, Inc. v. General Rent-A-Car Inc., 17 USPQ2d 1398, 1401 (S.D. Fla. 1990), aff’g General Rent-A-Car Inc. v. General Leaseways, Inc., Canc. No. 14,870 (TTAB May 2, 1998). Allowing respondent’s amendment would be beside the point; even if “stents” were deleted from the registration, the question remains whether or not respondent committed fraud upon the Office in the procurement of its registration.

Interestingly, most of these decisions have been designated as non-citable by the TTAB, which is somewhat curious given the recent increase in decisions based on fraud on the USPTO.

Important for trademark owners to note is that the remedy most often applied by the TTAB is cancellation of the entire registration – including for the goods on which the mark is actually used. The TTAB has apparently taken the position that such fraud on the PTO is so grievous an act that the only viable deterrent to such conduct is the threat of cancellation of the entire registration.

Thus, if a trademark owner obtains a registration for MARK Z for pharmaceutical preparations for the treatment of cardiovascular diseases and conditions, diabetes, cancer and respiratory diseases and conditions, but the owner is only using the mark for cardiovascular drugs, the entire registration for MARK Z could be cancelled by the TTAB. In a world where global trademarks are vital for most multi-national companies, this risk is quite serious.

Some practitioners have raised questions about how far the TTAB will take this doctrine. They ask, “Will fraud be found if an applicant fails to disclose third parties’ use of similar marks, mistakenly claims an incorrect date of first use or uses an old or otherwise incorrect specimen?”

In my opinion, failure to disclose use of a similar mark by a third party should not result in a finding of fraud. As likelihood of confusion (the similarity of two marks) is a subjective standard and the test for which has 13 factors, it would be difficult for the Board to conclude that the applicant has committed fraud – especially since the Examining Attorney conducts her own search for similar marks.

However, the submission of old specimens or submitting an incorrect date of first use may be another story since that is information that is exclusively in the possession of the applicant, much the same way that the goods on which a mark is used is also within the sole control of the applicant. Therefore, I would not be surprised if failure to disclose an accurate first use date or knowingly submitting an “old” specimen to support ongoing use results in a finding of fraud.

Therefore, trademark owners should carefully evaluate their portfolios and if they own U.S. registrations that are over-inclusive, they should consider promptly filing amendments to their registrations to accurately reflect only the goods on which they are using their marks.

Links to other decision in which the TTAB had presumed fraud occured and ordered cancellation of the registrations include:

Standard Knitting Ltd. v. Toyota Jidosha Kabushiki Kaisha, Opposition No. 91116242 (T.T.A.B. 2006)

J.E.M. International, Inc. v. Happy Rompers Creations Corp., Cancellation No. 92043073 (T.T.A.B. 2005) (not published)

Physicians Formula Cosmetics, Inc. v. Cosmed, Inc., Cancellation No. 92040782 (T.T.A.B. 2005) (not published)

Tequila Cazadores S.A. v. Tequila Centinela, S.A., Opposition No. 91125436 (T.T.A.B. 2004) (not published)

Orion Electric Co. v. Orion Electric Co., Opposition No. 91121807 (T.T.A.B. 2004) (not published)

Hawaiian Moon, Inc. v. Doo, Cancellation No. 92042101 (T.T.A.B. 2004) (not published)

Jimlar Corp. v. Monterexport S.P.A., Cancellation No. 92032471 (T.T.A.B. 2004) (not published)

Nougat London Ltd. v. Garber, Cancellation No. 92040460 (T.T.A.B. 2003) (not published)

If you have any questions or would like assistance with the above, please do not hestitate to contact us.

I have a question.  I seriously do not know the answer so anyone who knows the answer or who has any guidance on this question, please post a comment.  An upcoming post (when I am able to access the required links) will make the genesis my question apparent.  Here goes:

On what legal basis can the Trademark Trial & Appeal Board designate some of its decisions “not citable as precedent”?

Instictively, this doesn’t seem feasible.  The basis of nearly all U.S. law is stare decisis and the notion that the law should be predictable and litigants should be able use prior decisions to evaluate and argue cases for themselves or their clients.  While state or federal decisions (at least at the appellate level) may be unpublished, they are nonetheless citable by litigants.  The same policy rationale behind litigation should be appplicable to federal ageny decisions, no?

Is there some element of agency law that I have forgetten since the bar exam (or that I was never taught) that carves out an exception from the legal principle of stare decisis that permits the TTAB to label certain decisions non-citable?

Thanks in advance for any thoughts

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On Tuesday, the eDonkey website featured a message from the company telling visitors that the eDonkey2000 Network was no longer available, and a warning that people who steal music or movies are breaking the law.

The message concluded with ”Goodbye Everyone.”

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Hackney Council has won £320,000 settlement from footwear giant Nike in an out of court settlement after Nike produced an unauthorised range of clothing bearing the borough’s name, and an exact replica of the council’s logo. The settlement was based on a percentage of global sales figures of the range, which included trainers, footballs and t-shirts.

The council threatened Nike with court action in May this year, after Nike started selling the goods which were produced without the permission of Hackney Council. Hackney’s elected Mayor Jules Pipe pledged to spend any money gained on sports development for the young people of the borough.

Mayor Pipe said: “This is a great result for Hackney. The London Borough of Hackney logo has been in use since 1965. The council has established copyright, and Nike used it without permission, for their profit.

Nike’s products were marketed around the world and were sold as far away as Japan, Russia and the Philippines.

» Article

It started as a simple trademark-infringement spat, with Red Bull, the Goliath of the energy-drink business, claiming the packaging of competitor Redline is ”confusingly similar” to Red Bull’s.

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Red Bull calls Redline’s fat-burning boasts bogus, referring to a trademarked rhyme on Redline’s bottles that reads, “Feel the Freak / Feel the Freeze / Watch the Fat Drop / Off with Ease!”

Red Bull says its drink ”improves performance” and ”reaction speed” and ”increases endurance” and ”concentration.” Vital says those assertions are unsupported. The firm is challenging Red Bull’s purported benefits in Miami federal court.

The legal dispute turns a spotlight on whether popular energy drinks — a burgeoning realm of the soft-drink market — actually deliver on what they promise. It also raises questions about how such claims are regulated.

The namesake fraternity of “The Sweetheart of Sigma Chi” won’t be including Utah’s Penalty Box Inc. in any renditions of its timeless ballad.

Arguably the most famous fraternity in the nation, the 151-year-old Sigma Chi has filed suit in Salt Lake City’s U.S. District Court over an unauthorized online gambling site allegedly set up under the fraternity’s name by Penalty Box and owners Joshua D. Kilgrow and Troy Young.