Trademark

The Day the Medinol Died: The CAFC’s decision in In re Bose and subsequent decisions of the TTAB

On August 31, 2009, the United States Court of Appeals for the Federal Circuit (“CAFC”) handed down its decision in In re Bose, 91 USPQ2d 1938 (Fed. Cir. 2009).  The collective sigh of relief taken by trademark attorneys across the country created enough wind energy to power a mid-size city.  The CAFC had overruled the Draconian rule of Medinol Ltd. v. NeuroVasx, Inc., 67 U.S.P.Q.2d 1205 (TTAB 2003), which previously applied a “knew or should have known” standard to allegations of fraud on the Trademark Office.  In its place, In re Bose had re-instated an “intent” element for proving fraud against the Trademark Office, aligning the offense with common law concepts of fraud.

What does the In re Bose decision mean for trademark owners and intellectual property practitioners going forward?  Will a trademark registration be voided for fraud on the Trademark Office ever again?  Will the number of fraud claims brought before the TTAB plummet?  While we don’t have answers to all of the questions raised by In re Bose, we can glean several pieces of information from the TTAB’s handling of fraud claims post-Bose:

1.  In pleading fraud, a claimant must now include an allegation that the false statement in question was made with intent to deceive the Trademark Office.  Moreover, claimants must include specific facts supporting the intentional nature of the false statement and cannot plead the facts on mere “information and belief.”  Asian Western Classics BV v. Slekow, 92 USPQ 2d 1478 (TTAB 2009).

2.  While In re Bose raised the burden of proof for proving fraud against the Trademark Office, it did not change the penalty, when proven.  “A finding of fraud with respect to a particular class of goods or services renders any resulting registration void as to that class.”  Meckatzer Löwenbräu Benedikt Weiß KG v. White Gold, LLC, 95 USPQ2d 1185 (TTAB 2010).

3.  While In re Bose shut the door on the negligence standard of Medinol, it may have cracked a window to a recklessness standard that would serve as a middle ground.  In footnote 2 of Bose, the CAFC wrote:  “The PTO argues that under Torres, making a submission to the PTO with reckless disregard of its truth or falsity satisfies the intent to deceive requirement. We need not resolve this issue here.”  The TTAB confirmed the possibility of a recklessness standard shortly after In re Bose, stating that it is undecided “whether a submission to the PTO with reckless disregard of its truth or falsity would satisfy the intent to deceive requirement.”  DaimlerChrysler Corp. v. American Motors Corp., 94 USPQ2d 1086 (2010).

Of course, trademark owners and attorneys alike should always make every effort to ensure the truth of information included in any documentation provided to the Trademark Office.  Even if a registration is not voided by a claim of fraud, mistakes in the application and renewal process can lead to goods or services being deleted from a registration and to unnecessary expenses and delay in enforcing the registration against third-parties.  What In re Bose tells us, however, is that reasonable efforts to be truthful on the part of trademark owners and attorneys will protect registrations against the harsh penalties that accompany a finding of fraud on the Trademark Office.

Jeffrey Fridman

About Jeffrey Fridman

Jeffrey Fridman is an associate in the Triangle office practicing in the Intellectual Property group. Since joining the firm, Mr. Fridman focuses his practice in the areas of domestic and international trademark prosecution and protection, trademark opposition and cancellation, copyright, intellectual property licensing and transactional work.

Discussion

No comments yet.

Leave a comment

Your email address will not be published. Required fields are marked *

Welcome to the MVA IP Law Blog!

Moore & Van Allen’s IP Law Blog covers hot topics in U.S. and international intellectual property law and provides insight into critical litigation, legislative, regulatory and policy developments. In today’s highly competitive and rapidly developing business climate, technological advancements and the protection of intellectual property rights are paramount concerns common to companies, universities, and individuals operating in nearly every industry.

Connect to Recent Authors

  • Matt Witsil:  View Matt Witsil's Bio View Matt Witsil's LinkedIn profile
  • Emmett Weindruch: View Emmett Weindruch's Bio View Emmett Weindruch's LinkedIn profile
  • Todd Taylor:  View Todd Taylor's Bio View Todd Taylor's LinkedIn profile
  • John Slaughter:  View John Slaughter's Bio View John Slaughter's LinkedIn profile
  • Nick Russell:  View Nick Russell's Bio
  • Ellen Rubel:  View Ellen Rubel's Bio View Ellen Rubel's LinkedIn profile
  • Esther Queen:  View Esther Queen's Bio View Esther Queen's LinkedIn profile
  • Steve Phillips:  View Steve Phillip's Bio View Steve Phillip's LinkedIn profile
  • Chuck Moore:  View Chuck Moore's Bio View Chuck Moore's LinkedIn profile
  • Mark Wilson:  View Mark Wilson's Bio View Mark Wilson's LinkedIn profile
  • Chris Knors:  View Chris Knors' Bio View Chris Knors' LinkedIn profile
  • Jeff Gray:  View Jeff Gray's Bio View Jeff Gray's LinkedIn profile
  • Andy Gerschutz:  View Andy Gerschutz's Bio View Andy Gerschutz's LinkedIn profile
  • Jim Edwards:  View Jim Edwards' Bio View Jim Edwards' LinkedIn profile

  • Subscribe to Blog via Email

    Follow MVA

    Facebooktwitterlinkedinrss

    Blog Topics

    Archives


    Our IP Practice

    Moore & Van Allen is located in the Research Triangle and Charlotte, North Carolina – two emerging hubs in the areas of biotech and energy. Moore & Van Allen’s intellectual property lawyers are highly-skilled and innovative in their approach to assisting clients in using patents, trademarks, copyrights, trade secrets and technology to achieve their business objectives.

    Our “business focused” team combines legal know-how with the technical proficiency and industry experience necessary to navigate our clients through matters in areas as diverse as nuclear power, navigation systems, microprocessor design, pollution control, pharmaceuticals, semi-conductor manufacturing, food processing, telecommunications, internet applications, computer software, business methods and consumer products.

    We offer a full range of patent, trademark, and copyright services, and our team is equipped with IP litigators with substantial state, federal, and international experience. To benefit and best serve our clients, we leverage our ongoing working relationships with highly qualified intellectual property practitioners and agents in virtually every country in the world. Read More About Our Practice and Meet the MVA IP Team.

    Disclaimer

    No Attorney-Client Relationship Created by Use of this Website: Neither your receipt of information from this website, nor your use of this website to contact Moore & Van Allen or one of its attorneys creates an attorney-client relationship between you and Moore & Van Allen. As a matter of policy, Moore & Van Allen does not accept a new client without first investigating for possible conflicts of interests and obtaining a signed engagement letter. (Moore & Van Allen may, for example, already represent another party involved in your matter.) Accordingly, you should not use this website to provide confidential information about a legal matter of yours to Moore & Van Allen.


    No Legal Advice Intended: This website includes information about legal issues and legal developments. Such materials are for informational purposes only and may not reflect the most current legal developments. These informational materials are not intended, and should not be taken, as legal advice on any particular set of facts or circumstances. You should contact an attorney for advice on specific legal problems. (Read All)