InsideCounsel » June 2008
Marked Out
TTAB takes a tougher stand against trademark owners’ claims.
Bose Corp. insists it did nothing wrong. At worst, the company made a small, good faith error. That’s not how the trademark office sees it.
The USPTO’s Trademark Trial and Appeal Board (TTAB) ruled in late 2007 that there was a problem with one of Bose’s filings. When the company in 2001 renewed a registration for its famous “wave” mark, Bose’s general counsel, Mark E. Sullivan, had sworn that the mark was being used on various electronic devices, including audio tape players.
However, by that time Bose had stopped making and selling audio tape players. Thus, the company was wrong when it stated it was using
the wave mark on these products, the TTAB ruled.
This was not just an error in the renewal form, according to the TTAB. This was fraud on the trademark office. So the administrative tribunal ordered the registration to be canceled. The ruling is no aberration.
In the past few years, the TTAB has adopted an extremely tough attitude toward trademark filings that contain overly broad statements of use. The agency has canceled many registrations, belonging to companies large and small, because the companies wrongly averred that they were using their marks on some goods or services.
This new, tough stance of the TTAB is creating headaches for trademark owners, especially those with well-known, long-established marks. The owners fear that somewhere, in some old filing, there is an erroneous statement of use that could void their mark’s federal registration.
“If you have vulnerabilities in your trademark portfolio, it can be a nightmare,” says Douglas Masters, an IP attorney at Loeb & Loeb.
Fraud Redefined
The TTAB wasn’t always this hard on trademark owners. Not so long ago, the agency routinely found incorrect statements of use to be mere good faith mistakes, and the agency narrowed the erroneous registrations to cover only the goods and services on which the marks were actually used.
That all changed in May 2003 when the TTAB decided Medinol Ltd. v. Neuro Vasx Inc. The trademark owner in that case incorrectly stated it was using the mark “Neurovasx” on neurological stents and catheters. However, the mark was being used only on catheters. The TTAB ruled on summary judgment that this misstatement constituted fraud and the entire registration should be canceled.
The case effectively rewrote the agency’s definition of fraud, according to trademark experts. “Fraud involves an element of intent, so it is usually very hard to get summary judgment on this claim,” says Beth Chapman, a trademark attorney at Oblon Spivak McClelland Maier & Neustadt. An individual’s subjective intent—to knowingly or recklessly make a material misstatement—is a fact-based matter that is usually difficult to prove and thus is hard to resolve on summary judgment.
