CAFC Requires a Clear and Convincing Intent to Deceive
By Adrienne Baker – Edited by Stephanie Young
In re Bose Corp., No. 2008-1448, 2009 WL 2709312 (Fed. Cir., Aug. 31, 2009).
On August 31, the Court of Appeals for the Federal Circuit (“CAFC”) reversed and remanded the Trademark Trial and Appeal Board (“TTAB”) decision, which ruled that fraud is committed when a registrant or applicant makes material misrepresentations it knows or should have known to be false or misleading. The CAFC held the TTAB applied the should-have-known standard too broadly and thus ruled a registrant or applicant must have specific intent to deceive the U.S. Patent and Trademark Office in order to fraudulently acquire a trademark. The evidence supporting the registrant’s or applicant’s intent to deceive must be clear and convincing. The CAFC ruling significantly limits, if not overturns, Medinol v. Neuro Vasx, Inc., 67 U.S.P.Q.2d 1205 (T.T.A.B. 2003), in which the TTAB adopted the should-have-known standard.
The TTABlog provides an overview of the case. Allen’s Trademark Digest, in addition to providing a detailed history of trademark fraud, criticizes the decision and asserts that the Bose holding implies that registrants and applicants have no duty of candor. Furthermore, the article asserts the CAFC ruling is contrary to the Lanham Act and the Trademark Law Revision Act (“TLRA”) statutory definitions of “use.” (more…)