Intellectual Property Law

New Matter WINTER 2021, VOLUME 46, EDITION 4


Jane Shay Wald
Irell & Manella LLP

The Board Found Fraud
After All This Time
And We Applaud Them Here, In Rhyme

This New Matter quarter brings us two of the three Board cases finding fraud on the PTO since In re Bose Corp., 580 F. 3d 1240 (Fed. Cir. 2009) overruled the Medinol Doctrine. You’ll recall that the Medinol Doctrine evolved from the TTAB’s holding in Medinol Ltd. v. NeuroVasx Inc., 67 USPQ2d 1205 (TTAB 2003) regarding fraudulent procurement or maintenance of Federal trademark registrations. Under Medinol and its progeny, the TTAB could cancel a registration as fraudulent if it contained a material misrepresentation that the applicant knew or should have known was false at the time it was made. The case led to successful petitions to cancel registrations that, for example, had over-claimed goods in one class, based on a misunderstanding. The Federal Circuit in Bose found the Board had erred in Medinol by equating "should have known" of the falsity with a subjective intent, thereby improperly lowering the fraud standard to a simple negligence standard. Bose therefore held that a trademark is obtained or maintained by fraud only if the applicant or registrant knowingly makes a false, material representation with the intent to deceive the PTO.

In re Bose stemmed the Medinol-era tide of Board cases accusing applicants and registrants of fraud. The fraud-finding pendulum swung to such an extreme that from the period 2009 to 2014 the Board found no fraud on the PTO, despite a steady stream of cases alleging it. The first and last (until now) post-Bose fraud-finding case was Nationstar Mortgage LC v. Ahmad, 112 USPQ 2d 1361 (TTAB 2014). That case caused hopeful speculation that the Board had relented and would find fraud again, at least in the most egregious cases. But no. Except for Nationstar, the Board did not, until now, find fraud in 12 years. Cases pleading fraud—and in the opinion of many practitioners and commentators actually evidencing it—fell short of the fraud standard the Board felt bound by. Until now.

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