The issue of fraud presents unique challenges for parties that want to maintain a trademark portfolio as their respective product/service offerings change over time. The Trademark Trial and Appeal Board (TTAB) consistently has found fraud in filings even where a party had no intent to misrepresent or deceive, but simply filed documents about trademark use, and, unaware of the problem, may not have been using a mark for a product/service listed in its Identification of Goods/Services. Mistakes like these often can be the result of the left hand not communicating with the right hand--e.g., one person/group in an organization thinks a mark is in use with particular products or services, and another group/person has different thoughts about how the mark is used and where, but no group/person notifies the other, let alone the group/person filing Statements of Use and maintenance affidavits on the marks.
Outside the TTAB, fraud generally requires an intent to deceive, or that one acts so recklessly as to be equivalent to an intent to deceive. However, instead of requiring an intent to deceive, the TTAB determines whether a party knew or should have known about the falsity of its statements when claiming use of a mark in connection with goods/services. If a party knew or should have known a false statement was made in a use-based application, regarding the bona fide intent to use a mark, or in a Declaration of Use for the identified goods or services, then the TTAB currently indicates it will find the statement constitutes fraud on the USPTO and that fraud renders the application or registration void. However, two cases are on appeal to the Federal Circuit Court of Appeals which may change that rule: Bose v. Hexawave and Grand Canyon West Ranch v. Hualapai Tribe.
In any case, parties should clear all the goods or services from their identified lists for which their marks are not used in US interstate commerce, whether they are filing use-based applications, Statements of Use for intent-to-use applications, or Declarations of Use for applications based on foreign registrations. Otherwise, filing such inaccurate representations without amending the applications/registrations appropriately will expose those registrations to a fraud attack at a later time. Such attacks are quite common and could result in the registrations being declared void as to one or more classes of goods or services.
The TTAB is also quite concerned with Applicants' bona fide intent. Intent-to-use Applicants and foreign Applicants filing based on a foreign registration should be wary of what goods/services are identified in their US applications. The TTAB can request documentation to show actual plans to use a mark or not, and has ruled that a party's intent is not bona fide without such objective evidence of good faith. Foreign applicants should be particularly aware of vulnerabilities to fraud rulings since US filings based on foreign applications and registrations often include long lists of identified goods and/or services for which the mark has never been used and for which there are no real plans for use.
To avoid vulnerability to fraud attacks, evaluate your description of goods/services fully before filing documents with the USPTO relating to use of a mark. Perform a comprehensive audit on your trademark portfolio in order to update your registrations accordingly, and most importantly determine what registrations may be most vulnerable to attack in the future and investigate what your options may be. For more information on fraud in the USPTO and developing a trademark registration audit plan that will work for your business, please contact the writer, Bill Samuels, at .