A Narrower Approach to Determining Trademark Application Fraud
The standard for proving fraud in trademark applications, which is grounds for invalidation, has been intensely debated this year. In my post in March 2009, the Trademark Trial and Appeal Board (TTAB) suggested that "inaccurate declarations of use" could possibly amount to fraud. Months later, the TTAB issued a ruling that such inaccuracies only made a "presumption of fraud", which an applicant could overcome by correcting any falsities on the application before a challenge arose. Thus applicants were provided an "option to cure" any inaccurate statements on their trademark applications. The above standards were unfavorable to trademark applicants due to the high risk of trademark cancellation due to invalidation. Under such rule, applicants and their attorneys were required to go above and beyond due diligence in determining the course of use for their potential trademarks.
As if in step with the increasing level of protection for trademark applicants, a recent decision from the United States Court of Appeals for the Federal Circuit provided an even narrower standard to proving fraud and canceling applications. Now the challenger has the burden of proving the applicant had "actual intent to deceive the United States Patent and Trademark Office." In approving this higher standard, the Court reversed the previous TTAB decision and remarked that the TTAB "erroneously lowered the burden of proof" required to invalidate an otherwise legal trademark application.
Despite this added protection, accuracy and honesty is still extremely important in trademark applications. If you are considering obtaining a trademark, first consult with an experienced trademark attorney.
