If this is the TTAB, that must not be fraud
Mostly by way of linking to posts by John Welch, I have for years been following the post-Bose decline of fraud on the PTO as successful grounds for opposition or cancellation forever. Having recently filed answers to fraud-oriented attacks on a clients’ marks sounding in fraud — one by way of cancellation and one by way of opposition to registration — I was looking for a good, fairly recent summary of the state of things. I found one I liked so much that wanted to share it here.
The state of things, of course, has not moved an inch since Bose; it has only solidified. “Fraud” once provided a catch-all ground for attacking a registration, particularly overbroad descriptions of goods and services — a mistake made by both amateurs and non-specialist lawyers who assume, incorrectly, that when reciting goods and services more must be better.
Pre-Bose, of course, all you really had to prove was that the applicant listed 96 different kinds of goods (garbagio or otherwise) the mark was used with, or had a good-faith intention to use it with, and that one of them never happened. That was enough: They said X, they meant Y, and that’s fraud.
Bose taught us, no. Just as in the rest of the law, lying isn’t fraud unless there is an intention to deceive at the time of the false representation, and the lie is uttered (or, in the case of fraud by omission, the material information not disclosed) for the purpose of obtaining some advantage that, but for the misrepresentation, would not otherwise have been forthcoming.
Thus breaking a promise (to buy your car or, in this context, to use the trademark not only with t-shirts but with bandannas) is not fraud. Thus making a mistake, even a stupid one (I thought I had the money to buy your car or, in this context, I thought I was the owner of the trademark being used by my company) is not fraud. In a pleadings context, that intent, and specific facts tending to make the existence of that intent plausible, must be alleged. In a dispositive context, proof of that intent must be adduced in admissible form.
Essentially, then, there’s really no way to knock out someone else’s trademark application or registration by claiming fraud on the PTO any more. As John pointed out in a recent post:
Apparently fraud cannot be proven without testimony and/or admissions from the accused party. It’s happened only once at the TTAB since Bose. See the Nationstar case cited above [TTAB blogged here — RDC]
I come not to bury or praise the new-Bose-world-order but to live by it, as must we all. And, as I was saying, when researching for my recent submissions to the TTAB, I was looking for a good online summary of the state of the law. So before plunging into Westlaw or Lexis, I plunged into — I have to admit it — Google.
Blog and other free online research are not substitutes for reading cases. You’re going to cite cases, of course, and you’re going to have to read them. I was taught, however, when I started in a law firm whose name no longer exists, to figure out what these cases are talking about by cracking open secondary sources such as treatises to understand the topic at hand first. It was very good advice.
Today, however, in the absence of law libraries and, to a large extent, law books, that means when starting a research project, you should get the lay of the land from reliable, authoritative online materials. These include as the many well-established, non-anonymous “explainers” found on respectable law firm websites, whose purpose is to draw you in with SEO and, once there, convince you of the law firm’s quality based on the online content — not always a legitimate association, but not bad for starters.
This also means, of course, blogs, whose purpose is often quite similar. And in the case of TTAB practice, that means the TTABlog — not only because it is a repository of just about everything you need to know about the relevant law, but because John Welch’s sober, restrained treatment of the material is as reliable as that found in any treatise. You should do the same.
As I did here.
Ultimately I found a very useful 2016 piece on a very professionally-designed, if ambitious (“Become a Member Now!”), law-and-information website called Trademark Well entitled, “I Can’t Believe It’s Not Fraud! A Review of Commonly Rejected Fraud Claims by the TTAB.” If you’re facing a fraud claim in a TTAB inter-partes proceeding, you’ll want to prop this puppy right open on your second screen while you’re drafting. It is not signed, but I am guessing that it was written by Bruno Tarabachi, the “Man at the Bottom of the Well.”
And don’t we all know that feeling! With his article on how to systematically spot flaws in a TTAB fraud claim, however, there’s every hope of climbing out, a bit damp perhaps but otherwise feeling as well as possible under the circumstances — and if we’re practicing in trademark law, that’s pretty well indeed. Thanks, Bruno!