Archive for August, 2009


Sunday, August 23rd, 2009

An overly broad listing of goods and services in a trademark application constitutes fraud on the U.S. Trademark Office (USPTO) and will result in cancellation of the registration. Pro-active measures to correct false statements may mitigate loss of the registration. Contact the office today for an audit of your trademark portfolio.

The USPTO adopted a firm approach to eliminate the overly broad enumeration of goods and services in a trademark registration. In Medinol Ltd. V. Neuro Vasx, Inc., 67 USPQ 2d 1205 (TTAB 2003), the Trademark Trial and Appeal Board (TTAB) canceled a trademark registration premised upon a finding that the trademark owner had defrauded the USPTO when filing a Statement of Use misstating use of the trademark on all goods listed in the application.

In the past, trademark owners have over-reached in listing goods within a particular class (the laundry list) or have over-reached in identifying classes of goods with which the mark is or will be used. This type of miss-statement can occur at several points in the trademark process: the listing of goods/services or classes may be overly inclusive at the time the intent to use application is filed; the overly inclusive list may be maintained when the applicant files a statement of use or amendment to allege use in support of an intent to use application; the overly inclusive list may occur at the time the 5th year Section 8 affidavit is filed; or the overly inclusive list may occur at any subsequent 10 year renewal.

Trademark applicants must be accurate in listing goods within an application. The intent to use “1(b)” application must not be misused as a vehicle for reserving every possible use imaginable. The application should identify only those goods/services that the owner has a “bona fide” intent to use. The resulting registration must be accurate as to the goods and services with which the trademark is used. Trademark registrants must be diligent in maintaining use of the trademark in connection with each and every one of the goods and services enumerated in the registration or they must identify the goods/services with which the mark is not used at one of the foregoing points. A false statement with regard to actual use (i.e. wrongfully indicating that the mark is in use in connection with all listed goods or services) constitutes FRAUD on the USPTO. Such fraud will result in the cancellation of the registration. The USPTO will not entertain the excuse of inadvertent mistake to mitigate of finding of fraud. In the Medinol case, the trademark owner claimed its inclusion of un-used goods in its Statement of Use was an inadvertent mistake. The TTAB held that the registrant’s “explanation for the misstatement . . . – that the inclusion of stents in the notice of allowance was ‘apparently overlooked’ – does nothing to undercut the conclusion that [the trademark owner] knew or should have known that its statement of use was materially incorrect.” Medinol at 1210.

Recently the Medinol result of cancellation of the registration has been limited to a one class registration. In G&W Laboratories, Inc. v. G W Pharma Limited (TTAB Jan. 29, 2009) the TTAB addressed the situation of the fraudulent inclusion of a class of goods within a multi-class registration. In the G&W Labs case, the TTAB cancelled the fraudulently included class from the registration but did not result in the loss of the entire registration.

Most recently, the TTAB has signified that it will consider an applicant/registrant’s proactive steps to correct the identification of goods/services as a rebuttable presumption that fraud was not intended. In Zanella Ltd. V. Nordstrom, Inc., 90 USPQ2 d 1758 (TTAB 2008), the TTAB refused to grant a summary judgment where the registrant had affirmatively deleted those goods on which it was not using its mark. Three of the deletions occurred within the Section 8 Affidavits and one of the deletions occurred upon a voluntary request of the registrant after the Section 8 Affidavit was filed. The TTAB found that the registrant’s “timely proactive … action . . . in correcting any false statements prior to any actual or threatened challenge to the registrations creates a rebuttable presumption” that the registrant “did not intend to deceive” the USPTO.

In conclusion, the TTAB has taken a stringent approach to the inaccurate listing of goods and services in trademark applications and resulting registrations. Most of the cases on point have occurred when the registrant attempted to enforce a registration against a third party. Rather than enforcing their registrations, these trademark owners lost their registrations. To avoid this outcome, trademark applicants and registration owners should review the listing of goods and services they submitted to the USPTO. Proactive steps to correct any inaccuracies may save the registrations. Failure to take any corrective measures will clearly result in the cancellation of the trademark registration on the basis of fraud.

If you are concerned about the listing of goods or services in your trademark application or registration, contact our office today to discuss a portfolio audit.

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