By Steven P. Lipowski
December 4, 2009
The recently decided case of In re Bose Corporation provided much needed clarity and relief to trademark owners regarding fraud in the filing, prosecuting and maintaining of federal trademark registrations.
In this case, decided in August 2009, the United States Court of Appeals for the Federal Circuit reversed a decision by the U.S. Trademark Trial and Appeal Board that Bose Corporation engaged in fraud when it renewed its federal trademark registration for WAVE when the mark itself was not actually being used on all goods in commerce. The court took the opportunity to clarify that fraud on the U.S. Patent and Trademark Office does not occur without a willful intent to deceive. Thus, mistakes that do not involve a willful intent to deceive do not threaten registrations.
This decision marks a significant shift from the policy advanced by the U.S. Trademark Trial and Appeal Board which has held, most notably in the Medinol v. Neuro Vasx case from 2003, a trademark registration could be cancelled on the basis of fraud whenever the applicant or registrant incorrectly stated information in its application or other filings which it knew or should have known was incorrect. Under Medinol and subsequent holdings, even a mistake or misunderstanding on this point could qualify as fraud and result in cancellation of a registration. This has created significant risks to the security and enforceability of owners’ trademark registrations based even upon innocent mistakes. Many commentators find the In re Bose Corporation decision represents a more reasonable approach to the fraud issue.
Whenever a filing is made with the U.S. Patent and Trademark Office regarding an application or registration, accuracy of all statements by the applicant or registrant remains important. However, with the In re Bose Corporation decision, trademark owners can take greater comfort that innocent mistakes or misunderstandings will not cause the loss of trademark registrations on the basis of fraud.
If you have questions regarding the above, please contact Steve Lipowski, the author of this article, or any of the attorneys in the Business Transactions Practice Group of Ruder Ware.
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