Adjunct Professor for George Mason University School of Law Brian Banner discusses what constitutes trademark fraud under the USPTO and TTAB.
Announcer: Welcome to Trademark Law Radio sponsored by Traverse Trademark Law, internet lawyers specializing in Trademark Infringement, Trademark Licensing and Trademark Registration. Now here’s your host, Damien Allen.
Damien Allen: Good afternoon, and welcome to Trademark Law Radio. My name is Damien Allen, and today joining me on the phone is Adjunct Professor for George Mason University School of Law, Brian Banner.
Brian Banner: Good afternoon, Damien.
Damien Allen: It’s a pleasure to have you on the show, sir. Today we’re talking about potential trademark fraud, and we’re talking about what’s going on with the USPTO and the TTAB and some of the cases that are going on. Could you tell us please, what constitutes trademark fraud in the eyes of the TTAB?
Brian Banner: Well, that’s a good question, as it recently has changed. Back in August of last year The Court of Appeals for the Federal Circuit handed down a decision in the Bose case. Trademark Trial and Appeal Board had found fraud where an applicant or a registrant made a material misstatement of fact in a declaration which it knew or should have known was false and misleading. In the August 2009 case, the TTAB was reversed by the Court of Appeals wherein it said, by equating should have known with a substantive intent, the TTAB erroneously lowered the fraud standard to that of simple negligence. That error began back in 2003 with another case called the Medinol case. Today, the Trademark Trial and Appeal Board or TTAB will find fraud only where an applicant or registrant knowingly makes a false material misstatement of fact with the intent to deceive the USPTO.
Damien Allen: Now the tenets of this is you file an application for registration of a trademark through the USPTO. You have 30-days for somebody to oppose this registration and trademark. If somebody is saying this is fraudulent, what are the normal procedures in this?
Brian Banner: Well, as you know, as you’ve said, it only comes up in an opposition or a cancellation where the defendant alleges fraud in either the procurement or the maintenance of the registration of the mark being asserted against it. If the applicant deliberately lies to the USPTO in a trademark application, say, alleging use of a particular mark for a particular product, the PTO cannot investigate that allegation. That application may then mature into a registration. If it is asserted against a third party by the registrant in what’s known as an inter-party’s opposition, the lies that the PTO had accepted will be discovered during the discovery in the opposition. When that occurs, the defendant will amend its answer to add an allegation of fraud on the PTO seeking cancellation and removal of the registration being cited against it. Practitioners before the USPTO are all under rules that say that they must not engage in conduct involving dishonest, fraudulent, deceptive or misrepresentations on the office.
Damien Allen: What are some steps that applicants can take to ensure they’re not listing fraudulent information upon registration?
Brian Banner: Well, in the application itself, the applicant should use common sense when signing the application, which is a legal document. The applicant should carefully read all the legal statements in the declaration before signing it and filing it at the USPTO. That’s the original application place. Now, after something matures through a registration, the registrant now has the requirement of filing a continued use declaration between the 5th and 6th anniversary of the registration and also in the 9th year of the registration when they’re filing the renewal application. Things that are not in use, goods that are not being used with the brand or the mark that is registered should not be included in those declarations. If perchance a mistake is made and some product is in fact included, then the applicant needs to amend the registration certificate under the Section 7 of the Lanham Act or take other steps to correct the misstatement before the Office. If the application is pending and unpublished and the misstatement of fact as to some of the goods in the application is then discovered by the applicant, it should immediately file an amendment to the application requesting the deletion of those goods to correct the misstatement. This will be viewed as an honest mistake. If the mistake is discovered by the applicant after publication, the applicant, again, should immediately file an amendment deleting the goods and ask that the office republish the application for opposition purposes. This, again, will be viewed as an honest mistake.
Damien Allen: Thank you very much for joining us today, Brian.
Brian Banner: You’re very welcome.
Damien Allen: We’ve been discussing curing potential trademark fraud with Adjunct Professor Brian Banner of George Mason University School of Law. He’s also a member of the D.C. and Virginia Bar. You’ve been listening to Trademark Law Radio. My name is Damien Allen. Everybody have a great afternoon.
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