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INTA Grapevine Symposium report 6

By Jeremy

The second pre-lunch session, "The Pit and the Pendulum", dealt with a topic of which European Kats have little knowledge or experience: fraud on the US Patent and Trademark Office (USPTO). The allusion in the title was to the oscillation of the law between a fault-based approach to the question whether a trade mark owner/applicant was pulling the wool over the USPTO's eyes and a no-fault standard of strict liability.

The panel of Linda K. McLeod (Finnegan, Etc, Etc, Etc and Etc, US), Rick McMurtry (Turner Broadcasting, US) and the Hon. Carlisle Walters (Trademark Trial and Appeal Board: TTAB), moderated by Curt Krechevsky (Cantor & Colborn, US), revisited the classic decision of the TTAB in Medinol and reviewed post-Medinol decisions -- all of which seem, curiously, to have involved only single Class applications. An honest, subjective and reasonably held belief will not be regarded as fraud, but not much else is, it seems, particularly if the erroneous nature of the belief is a misapprehension as to what the law is -- particularly as to what constitutes "use in commerce".

Questions raised include whether and when to bring fraud (the statute says you can raise it any time), the relevance and use of abandonment claims -- and the apparent inconsistency of alleging both abandonment of a mark and a false declaration that it was ever used in the first place. Carlisle reminded the symposium that it was possible to go for restriction of the mark in contention -- one of the most underutilised provisions of the Lanham Act. Carlisle then shared her experiences with the TTAB, listing a "top ten" list of favourite defences to alleged fraud. Semantic games (eg deleting the word "the" so as to say that the mark is used on "goods" rather than "the goods" on the notice of allowance: see Nougat London Ltd v Carole Garber, TTAB 2003).

Rick asserted the importance of putting the fear of God into a client: do it right, check what you are declaring to the USPTO before you declare it -- or your entire trade mark might be lost. Use a checklist for each item on or in respect to which the mark is supposed to be used. Keep samples or other evidence -- and be specific as to the goods or services that you say are used: don't just cite Class headings. If you've not used the mark on particular goods, that may not be fatal in commercial terms; but self-inflicted damage may be suffered if you claim you've used the mark for goods if you haven't.

Is there any plan afoot to amend the law and mitigate the harsh effects of post-Medinol practice? The panellists felt that, in the absence of any clear reform process, INTA and the USPTO should do as much as they can in order to publicise the dangers inherent in the fraud doctrine and in better training.

Does the fraud doctrine breach international treaty obligations? Other countries don't have such a doctrine and most victims of the doctrine in the US are foreign businesses. The doctrine can be characterised as an extreme form of 'bad faith', which other countries understand. Good tips for avoiding problems in terms of internationally protectable marks are (i) to use separate lists of goods and services for US and non-US applications and (ii) not to use a US application as the basis for Madrid Protocol protection.

The IPKat wonders how much use the US fraud on the USPTO doctrine actually is. Most other countries seem to cope pretty well without it. Is it just an unfortunate means by which businesses are given an opportunity to burn up financial and management resources that might otherwise be devoted to creating and marketing new products?

Full post as published by IPKat on March 18, 2008 (boomark / email).