Recent Decision Helps Trademark Owners

"We're from the government and we're here to help." In the right situation, those words invariably produce laughter. However, the decision in a recent trademark case really does help trademark owners.

A trademark most commonly is a word, a design, or a word and design combination that serves to identify products and services as coming from a particular source. When registering a trademark with the United States Patent & Trademark Office (USPTO), an applicant files both a "drawing" identifying the trademark (i.e., the word, design, or word and design combination), as well as a written description of the goods and services associated with the trademark. This combination of elements is examined by the USPTO. If the application meets all of the legal requirements, a federal registration will issue.

A United States trademark registration can remain valid for as long as the trademark is used in commerce. For example, the well-known General Electric Company logo featuring the script "GE" inside a circle originally was registered in 1900. This registration has continued in effect from 1900 through the present day.

Although a United States trademark registration can remain valid for a very long time, each registration must be renewed periodically. At the time of renewal, the registrant must affirm that the trademark continues to be used in commerce in association with all of the goods and/or services that are recited in the registration. Because a business's product and services offerings may evolve over time, it frequently is the case that certain products and/or services covered by a trademark registration are no longer sold in association with the trademark at the time the registration is due for renewal. Care must be taken at the time of renewal to review the recitation of goods and services and determine whether it continues to be accurate. If the trademark is no longer used with all of the recited goods and services, a simple amendment reducing the scope of the goods and services recitation ordinarily will resolve any issue. However, errors can be made in this process. It is the effect of these errors on the underlying registration that was clarified by the CAFC's recent decision.

It has always been the case that a fraudulent statement made in a USPTO filing was grounds for administrative cancellation of a trademark registration. However, a 2003 USPTO Trademark Trial and Appeal Board (TTAB) decision known as Medinol vs. Neuro Vasx, Inc. (Medinol) broadened the types of statements that were considered to be fraudulent. According to the standard articulated in Medinol, a trademark applicant or registrant "commits fraud … when it makes material representations of fact in its declaration, which it knows or should know to be false or misleading" (emphasis added). Over the past five or so years, the TTAB cancelled many trademark registrations merely because of erroneous statements made by applicants/registrants in documents filed with the USPTO. Under the Medinol standard, it did not matter whether the erroneous statement was an honest mistake or misunderstanding on the part of the applicant/registrant. The Medinol standard appeared to presume that an applicant/registrant should know all the facts contained in a document filed with the USPTO, so a materially erroneous factual statement made by the applicant/registrant constituted a fraudulent statement justifying cancellation of a trademark registration by the USPTO.

The most common situation giving rise to a cancellation based on the Medinol standard involved an erroneous goods and services recitation in an application to register a trademark or renewal a trademark registration. Those were facts underlying the August 31, 2009, decision by the United States Court of Appeals for the Federal Circuit (CAFC) in the In re Bose Corporation (Bose) case. In the Bose case, the CAFC rejected the Medinol standard as being inconsistent with both precedential case law and statutory language. According to the CAFC, the Medinol standard wrongly equated the making of a fraudulent statement (i.e., a statement with an intent to deceive) with the making of a false representation (i.e., a statement that arises from a misunderstanding, inadvertence, a negligent omission or the like). According to the standard articulated in Bose, an "intent to deceive" the USPTO is required before it can be found that the statement of an applicant/registrant is fraudulent.

Although the Bose decision allows a trademark registrant to avoid having its registration cancelled due to a simply erroneous statement filed with the USPTO, trademark applicants and registrants should continue to exercise care in regard to declarations and other documents that are filed with the USPTO. The Bose standard may save an applicant/registrant from its mistake, but it still is a better practice to take the steps necessary to prevent such a mistake from happening in the first place.

Tom Walsh is the chair of Ice Miller's Indianapolis Intellectual Property Group. He assists new companies and established businesses who face intellectual property issues. His experience includes patent prosecution in a variety of technology areas, licensing, intellectual property strategies, technology transactions, trademarks and franchising. Tom can be reached at: thomas.walsh@icemiller.com or 317-236-5946.

This publication is intended for general information purposes only and does not and is not intended to constitute legal advice.  The reader must consult with legal counsel to determine how laws or decisions discussed herein apply to the reader's specific circumstances.