Committing Fraud on the Trademark Office: Let Me Count the Ways|
There are individuals who intentionally commit fraud on the trademark office in an attempt to obtain rights to which they are not entitled, but more often than not, it is individuals--either attorneys not schooled in trademark law or clients who decide to handle their trademark applications on their own--who are unfamiliar with trademark office practice and with the underlying law who end up committing fraud. The consequence of committing fraud in connection with a federal trademark application is that your registration may be canceled and your investment in your trademark registration lost. Following is a discussion of the legal standard for committing fraud on the trademark office and a review of some of the ways in which clients and attorneys may, either knowingly or unknowingly, commit fraud on the trademark office.
Section 14(c) of the Lanham Act (the federal trademark statute) provides that a registration may be canceled if it was obtained fraudulently. 35 U.S.C. Section 1064(3). In Medinol Ltd. v. Neuro Vasx, Inc., 2003 TTAB LEXIS 227, 67 U.S.P.Q.2d 1205 (T.T.A.B. 2003), the Trademark Trial and Appeal Board held that "if fraud can be shown in the procurement of a registration, the entire resulting registration is void." Id. at *12 (citations omitted). One commits fraud by making a "material representation[ ] of fact...which it knows or should know to be false or misleading." Id. at *13 (citation omitted). Moreover, subjective intent is not determinative; rather, it is the objective manifestations of that intent that will be taken into consideration. Id. at *15.
The standard for providing fraud on the trademark office is clear and convincing evidence (a higher standard than the preponderance of the evidence standard that normally applies in civil cases). Tri-Star Marketing LLC v. Nino Franco Spumanti S.R.L., 84 U.S.P.Q.2d 1912, 1015 (T.T.A.B. 2007). Furthermore, it has been held that clients should always know whether they have used the mark in connection with each claimed good or service, see, e.g., J.E.M. Int'l v. Happy Rompers Creations Corp., 74 U.S. P.Q.2d 1526 (T.T.A.B. 2005), and that the person who approves the filing of the trademark application has a duty to inquire as to the accuracy of the representations made in the application, Standard Knitting, Ltd. v. Toyota Jidosha Kabushiki Kaisha, 77 U.S. P.Q.2d 1917 (T.T.A.B. 2006).
1. Submitting a false date of first use.
One way to commit fraud on the trademark office is to claim a false date of first use, either in connection with an initial use-based application or in connection with a Statement of Use filed in an intent-to-use application. For goods, the date of first use is the date on which the goods were first sold across state lines with the mark physically affixed to the goods in some manner (i.e., on a product label, hang tag, packaging, etc.). For services, the date of first use is the date on which the services were first advertised across state lines with the mark displayed in the ad.
2. Submitting an overly broad list of goods and/or services.
Another way to commit fraud on the trademark office is to include an overly broad list of goods and/or services in either an initial use-based application or in a Statement of Use filed in an intent-to-use application. It is acceptable to include a broad list of goods and/or services in an intent-to-use application as long as the applicant has bona fide intent to use the mark in connection with those
goods and/or services at the time of filing, but when the Statement of Use is filed, any goods or services with respect to which the mark is not yet in use must be dropped from the application. The priority date may be preserved with respect to these goods/services by filing a divisional application.
3. Failing to narrow the scope of goods and/or services upon renewal.
Similarly, upon renewal of a trademark registration, the owner of the trademark must review the list of goods and/or services and drop from the registration any goods and/or services with respect to which the registrant (owner) is no longer using the mark. Generally speaking, a period of three years of non-use is considered abandonment of a trademark. If goods are seasonal, it is acceptable to include the goods in the renewal if they were sold during the last applicable season.
4. Failing to verify the scope of use in the U.S. in connection with an international application.
Many foreign countries allow registration of trademarks across an entire trademark class; in other words, the class heading may be used as the trademark description. In the United States, trademark owners seeking to register their marks must specify the particular goods and/or services within a trademark class with respect to which the mark is used. What this means is that foreign trademark owners who obtain international trademark registrations (under the Madrid Protocol) must be aware when extending their registrations to the U.S. to specifically tailor the list of goods and/or services in the U.S. application to those that are actually in use here.
5. Neglecting to disclose concurrent uses of the mark.
If a client is aware that someone else is using the same trademark in one or more states for the same or related goods and/or services, that use should be disclosed to the trademark office as a concurrent use. Concurrent use proceedings are beyond the scope of this article, but suffice it to say that you may not (legally) register your mark in all 50 states if you are aware that others have been using the same mark in connection with the same or related goods and/or services for longer than you have. U.S. trademark law attaches priority rights to those who use the mark in interstate commerce first; the law does not confer superior rights on someone who registers the mark before a prior user does. In other words, we are a first-to-use, not a first-to-file, jurisdiction.
When dealing with the trademark office, the examiner will not question your representations concerning date of first use, use of the mark in interstate commerce, and lack of a concurrent use. All of these statements are made to the trademark office under penalty of perjury, which means that it is incumbent upon the applicant and its attorney to conduct the necessary level of due diligence to determine that these representations are true prior to filing.
Although not technically fraud on the trademark office, use of the registered trademark symbol (®) in connection with an unregistered mark is illegal. The trademark symbols "TM" (for trademark) and "SM" (for service mark) may be used with unregistered marks.
To avoid these and other pitfalls associated with registering your mark federally, clients should seek the advice of competent and experienced trademark counsel.