Strategies to Mitigate Risk of Cancellation
and Invalidation of Marks
CD of Teleconference with Q&A
Learning a trademark registration is vulnerable to cancellation is disconcerting and trademark owners must realize it could happen to them. For most purposes, fraud is the knowning misrepresentation or concealment of material fact. However, the Trademark Trial and Appeal Board (TTAB) has taken a tougher stance in recent years. The TTAB’s more unforgiving definition of fraud and willingness to void an entire application or an entire existing registration toward trademark registrations has given teeth to its warning against willful false statements. Trademark applicants and owners must be prepared to deal with the tougher standards. This teleconference will examine the recent trend at the TTAB, core components of pleading and proving fraud, and discuss best practices to mitigate the risk of inaccurate applications and registrations.- State of the law and recent developments
- General legal background pre-Medinol
- Medinol Ltd. v. Neuro Vasx Inc. (2003)
- Since Medinol
- Differentiation of fraud and void ab initio grounds
- Components of pleading fraud
- Test for fraud
- Procedural issues
- Considerations for plaintiffs
- Considerations for defendants
- Impact on opposition or cancellation proceeding
- Best practices
- Use extreme care with use-based applications and statements of use
- Monitor use of marks
- Maintaining proof of use
- Timing of “cure” and what to do if you are too late
- Fraudit
- Consider seeking separate registrations for different classes of goods/services
- Battlegrounds of the future – where will the TTAB go from here?