Pay no attention to that IP lawyer behind the curtain

The American Intellectual Property Law Association (AIPLA) wants to see a climb down on findings of “fraud on the PTO” based on the innocent misdescription of goods in trademark applications. The problem is trademark lawyers who tell the PTO, when applying for a trademark registration, that a mark has been used along with a raft of goods and services which are, perhaps, exaggerations shall we say?, in order to get as broad protection as possible for the applicant. As the AIPLA explains:

The resolutions respond to a series of decisions by the Trademark Trial and Appeal Board that have found fraud on the Office based on a heightened duty of candor, including Medinol Ltd. v. Neuro Vasx, Inc., 67 USPQ2d 1205, 1209-10 (TTAB 2003). In Medinol, a cancellation petition was filed against a registrant whose intent-to-use application listed stents and catheters as the goods to which its mark would be applied. It subsequently filed its statement of use, in which it checked a box next to a statement that it was using the mark with the goods in the Notice of Allowance; however, it in fact had stopped using the mark for stents.

The TTAB agreed with the cancellation petitioner that the registrant committed fraud in filing the erroneous statement of use.

The AIPLA (a group which is dominated by patent lawyers, by the way — just so you know) says hey, we all make mistakes. It is a crime to err? Should the whole trademark be cancelled because of a little puffing or a slip of the quill?

To which John Welch says, “Yeah, we’ve all of us here been framed, too – so what’re you in for, bub?”

By Ron Coleman

LIKELIHOOD OF CONFUSION blog author Ron Coleman is a member of Dhillon Law Group in their New York City and Montclair, New Jersey offices. He is a graduate of Northwestern University School of Law and Princeton University.

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