Fraud in Trademark Applications and Registrations: Proving or Defeating Allegations

Description

Many of the post-In re Bose rulings demonstrate the importance of avoiding complacency on the issue of fraud when applying for or maintaining trademark registrations. This is especially true in light of lingering uncertainty in pre-Bose case law on the consequences of findings of fraud where multiple-class applications or registrations are concerned.

Further, the USPTO has reiterated the agency's commitment to combating both fraudulent trademark applications and improper maintenance of registrations on the Register. There has been an influx of fraudulent foreign trademark applications--most originating from China--and the USPTO has taken steps, including training for examiners, increased number of audits, requiring correspondents to be U.S. practitioners, and using software to detect altered photos, to minimize the number of fraudulent applications. Additionally, the new expungement and reexamination procedures created by the Trademark Modernization Act of 2020 provide an important alternative avenue for clearing the register of marks that should never have registered, with a lower evidentiary burden of providing nonuse of a mark in US commerce as opposed to fraudulent misrepresentation and an intent to deceive.

While Bose set a high bar in the context of inter partes proceedings, trademark owners and counsel should be aware that other federal courts may not apply the same strict standard as the Federal Circuit court. Opinions from those courts demonstrate that the risk of a finding of fraud, although perhaps less than that which existed before Bose, remains a real one for trademark applicants and registrants alike.

Listen as our authoritative panel provides a brief overview of Bose and examines the subsequent treatment of fraud allegations by the USPTO since that decision at the TTAB and in the courts, including Chutter Inc. v. Great Management Group LLC and Fuji Medical Instruments Mfg. Co. v. American Crocodile Int’l Group. The panel will also discuss proving fraud and defeating those allegations and suggest best practices for avoiding findings of fraudulent procurement and maintenance.