Pattishall IP Blog

January 26, 2010

Trademark Trial and Appeal Board Provides Post-Bose Guidance for Pleading Fraud on the Patent and Trademark Office

Filed under: Litigation, TTAB — Tags: , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 5:07 pm

By Andrew N. Downer, Trademark Attorney

Recently, the Trademark Trial and Appeal Board (“TTAB”) issued a decision providing guidance on the proper way to plead a fraud claim under the new Bose standard.  The case – DaimlerChrysler Corp. and Chrysler, LLC v. American Motors Corp., Canc. No. 92045099 (Jan. 14, 2010) – is the TTAB’s first post-Bose decision to find a fraud claim to have been sufficiently pled.  The DaimlerChrysler case also offers some interesting insights into the ability for fraud plaintiff’s to obtain summary disposition of their claims.

On August 31, 2009, the Federal Circuit overturned a line of TTAB decisions that had held that an applicant/registrant committed fraud in the procurement of a trademark registration when it “knew or should have known” that a material statement made to the PTO was false.  In re Bose Corp., 91 U.S.P.Q.2d 1938 (Fed. Cir. 2009).  The Federal Circuit found that the TTAB’s decisions lowered the standard for finding fraud to simple negligence, and instead held that an applicant’s/registrant’s subjective intent to deceive the PTO must be proven through clear and convincing evidence.  Id. at 1940-41. (more…)

October 30, 2009

Trademark Trial and Appeal Board Holds that a Formerly Registered Mark is Not Automatically Entitled to Re-Registration

Filed under: TTAB — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 4:54 pm

by Teresa Tambolas, Patent and Trademark Attorney

In In re Davey Products Pty Ltd., 92 USPQ 1198 (TTAB 2009), the Trademark Trial and Appeal Board affirmed the Trademark Office’s refusal to re-register a trademark based on a likelihood of confusion with two registered marks that it had coexisted with on the Register.

Davey Products Pty Ltd. (“DP”), had owned a registration of DAVEY for “electric motors for machines; waterpumps with fluid flow or pressure control for domestic, industrial and commercial use; and parts and fittings therefore” (Reg. No. 2,327,761).  The Trademark Office cancelled this registration because DP failed to file a declaration of continued use under Section 8 of the Trademark Act.  About a month after this cancellation, DP filed a new application to register the same mark for the same goods. (more…)

September 2, 2009

Putting the Intent Back Into Fraud: The Federal Circuit Overturns the TTAB’s Should Have Known Standard

Filed under: TTAB — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 9:30 pm

By Andrew N. Downer, Trademark Attorney

On August 31, 2009, the Federal Circuit issued an opinion that significantly impacts U.S. trademark owners, allowing them the opportunity to breathe a little easier with respect to their statements to the Patent and Trademark Office (“PTO”).   The case – In re Bose Corp., No. 08-1448[1] – essentially overturns the PTO’s decision in Medinol v. Neuro Vasx, Inc., 67 U.S.P.Q.2d 1205 (T.T.A.B. 2003), and re-grounds the establishment of a claim of fraud on the PTO in traditional notions of intent.  Medinol had relaxed the standard for proving fraud such that a claimant only had to prove that the applicant/registrant “should have known” a statement was false.  The Federal Circuit’s opinion reestablishes that the applicant/registrant must have an intent to deceive the PTO, contrary to the PTO’s post-Medinol jurisprudence.

In the underlying case, Bose challenged Hexawave’s application to register the mark HEXAWAVE based on a likely confusion with Bose’s prior registration of WAVE.  Hexawave counterclaimed for cancellation of Bose’s WAVE registration, alleging that Bose committed fraud when renewing its WAVE registration.  Hexawave contended that Bose falsely claimed use of the mark on all of the listed goods when, in fact, it knew that it had stopped selling certain of the goods, namely, audio tape recorders and players.  During discovery, Bose’s general counsel testified that he believed the WAVE mark was still in use in commerce because Bose was repairing those trademark-bearing goods and shipping them back to customers.  The Board held that Bose’s belief was not reasonable, and cancelled Bose’s WAVE registration on the ground of fraud. (more…)

June 2, 2009

Federal Circuit Oral Argument – Bose v. Hexawave: Have the Trademark Trial and Appeal Board’s Medinol Fraud Cases “Crossed a Very Fundamental Line”?

Filed under: TTAB — Tags: , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 9:57 pm

by Trademark Attorney, Janet Marvel

On May 5, 2009, the Federal Circuit heard oral argument in Bose v. Hexawave, Opposition No. 91157315.  This case has been closely watched for its impact on the U.S. Patent and Trademark Office (“PTO”) standard for finding fraud based on false claims of use.  The presiding judges’ comments during oral argument indicate that the Court may adopt a higher standard of proof of intent to deceive than the Board currently uses in fraud cases.

In 2003, the Board decided Medinol v. Neuro Vasx, Inc., 67 U.S.P.Q.2d 1205 (T.T.A.B. 2003), where it appeared to apply a strict liability/negligence standard to find fraud on the PTO. In Medinol, the registrant, Neuro Vasx, signed a Statement of Use, in which it alleged that it was using its mark in connection with “medical devices, namely neurological stents and catheters.”  Medinol petitioned to cancel Neuro Vasx’s registration for fraud because Neuro Vasx was not using its mark on stents when it filed its Statement of Use.  Neuro Vasx responded that it had made the misstatement that it was using the mark on stents unintentionally, rather than fraudulently, and tried to amend its registration to delete “stents.” The Board accepted Neuro Vasx’s explanation that it had “overlooked” inclusion of stents, but stated:  “Respondent’s explanation for the misstatement (which we accept as true) – that the inclusion of stents in the notice of allowance was ‘apparently overlooked’ – does nothing….Respondent’s knowledge that its mark was not in use on stents – or its reckless disregard for the truth – is all that is required to establish intent to commit fraud in the procurement of a registration.”   Hence the Board found that even a careless error was enough to create a fraud on the PTO. (more…)

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