G. Mathew Lombard reviews an important article in the INTA Bulletin on the reemergence, or perhaps emergence in full for the first time, of viable claims for fraud on the PTO in trademark applications:
Specifically, the article discusses the adoption of a new “bright line” test for fraud on the USPTO. Under the test, an 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.
He cites what he describes as the “seminal case” of Medinol Ltd. v. Neuro Vasx Inc., 67 U.S.P.Q.2d 1205 (T.T.A.B. 2003) and analyzes the whole topic, with lots of case citations, in law review fashion. The focus, he says, is on over-inclusive descriptions of goods and services. He says the TTAB remains less moved by stale specimens or not-too-exact dates of first use in applications, and urges that the TTAB not hold practitioners’ feet to the fire over failure to disclose similar third party uses: “As likelihood of confusion (the similarity of two marks) is a subjective standard [based on ] 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” – simply by omitting such a mark.
His analysis suggests to me that in “growing” this doctrine, the TTAB is more inclined to punish overreaching counsel representing ambitious, large companies who (a) should know better and (b) are bowling for big bucks, rather than lay people and general practitioners who may inject a little fudge into the trademark applications. This is as it should be, though that fudge can cause a lot of problems, too — cancelling an improvidently granted mark that was, for example, never even used, so that your client can register his own bona fide mark that is confusingly similar to a sham registration, can be a costly and time-consuming mess. But that, and the crisp fall air, is what keeps even cranky trademark lawyers young and spry, isn’t it?