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TTAB's Tougher Stance on Fraud in Trademark Applications

Strategies to Mitigate Risk of Cancellation

CD/DVD of a 90-minute CLE teleconference with Q&A

Conducted on Tuesday, May 6, 2008
Now available on CD/DVD

Description

The TTAB recently established a more unforgiving definition of fraud. It gives teeth to TTAB's warnings against trademark owners' and applicants' willful false statements with its willingness to deny an entire application or void an existing trademark registration upon a finding of fraud.

Trademark applicants, owners and their counsel must deal with the tougher standards that are emerging out of TTAB rulings on pleading fraud.

Listen as our authoritative panel of intellectual property attorneys examines the recent trend at the TTAB, pleading fraud, and discusses best practices to mitigate the risk of inaccurate applications and registrations.

Outline

State of the law and recent developments
1. General legal background pre-Medinol
2. Medinol Ltd. v. Neuro Vasx Inc. (2003)
3. Since Medinol
4. Differentiation of fraud and void ab initio grounds
Components of pleading fraud
1. Test for fraud
2. Procedural issues
3. Considerations for plaintiffs
4. Considerations for defendants
5. Impact on opposition or cancellation proceeding
Best practices
1. Use extreme care with use-based applications and statements of use
2. Monitor use of marks
3. Maintaining proof of use
4. Timing of “cure” and what to do if you are too late
5. Fraudit
6. Consider seeking separate registrations for different classes of goods/services
7. Battlegrounds of the future – where will the TTAB go from here?

Benefits

The panel reviewed these and other key questions:

What is the current state of the law concerning allegations of fraud before the TTAB?
What are the next steps for plaintiffs and defendants in the event of fraud pleadings?
What strategies and procedures should trademark owners utilize to mitigate the risk of fraud allegations?

Faculty

Stephen R. Baird, Shareholder
Winthrop & Weinstine, Minneapolis

He heads the firm's Intellectual Property and Trademark and Brand Management Practice groups and handles trademark litigation matters in proceedings in federal court and before the TTAB. He counsels clients on trademark usage and clearance, branding strategies, portfolio management, litigation and enforcement, internet domain name disputes, licensing and prosecution.

Jennifer Lee Taylor, Partner
Morrison & Foerster, San Francisco

She focuses on intellectual property litigation and counseling. She has extensive experience litigating opposition and cancellation proceedings before the Trademark Trial and Appeal Board. She counsels clients on trademark and copyright matters, including registering trademarks, service marks and copyrights, managing portfolios, policing marks and copyrights, and licensing agreements.

Beth A. Chapman, Of Counsel
Oblon Spivak McClelland Maier & Neustadt, Alexandria, Va.

She is a member of the firm's Trademark and Copyright Department. Prior to joining the firm, she served as a U.S. Patent and Trademark Office Trademark Trial and Appeal Board (TTAB) Judge (1998–2005). Before her judicial appointment, she served as an examining attorney, then a managing attorney of a law office, before taking a position as an interlocutory attorney at the TTAB.

Ordering

Teleconference on CD

Purchase a CD of the full event proceedings, including Q&A and PDF files of all handouts (available 10 days after the seminar).

For CLE only, this program is pre-approved for self-study credit in AK, AZ, CA, MO, MT, VT, WV.

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CD $297.00 plus $9.45 S&H

CLE Processing on CD/DVD (NY and CT Only)

CLE processing for listening to the CD/DVD is available for an additional $65 per person per state in NY and CT.

CLE on CD Processing $65.00

Program Materials

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CLE Credit

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