Fraud in Trademark Applications and Registrations: Proving...

Fraud in Trademark Applications and

Registrations: Proving or Defeating Allegations Navigating Differing Standards at the TTAB and

in the Regional Circuits, Mitigating the Risk of Invalidation

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TUESDAY, JANUARY 13, 2015

Presenting a live 90-minute webinar with interactive Q&A

Stephen R. Baird, Shareholder, Winthrop & Weinstine, Minneapolis

Jennifer Lee Taylor, Partner, Morrison & Foerster, San Francisco

Theodore H. Davis, Jr., Partner, Kilpatrick Townsend & Stockton, Atlanta

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Proving or Defeating

Allegations of Fraud

January 13, 2015

Presented By: Jennifer Lee Taylor

(415) 268-6538

[email protected]

6

Medinol Ltd v. Neuro Vasx Inc.

• Registered mark: NEUROVASX

• Class 9: “medical devices, namely, neurological stents and

catheters”

• Statement of Use

• Petition to cancel alleged that Registration was procured by

respondent’s knowingly false or fraudulent statements, and that “said

false statements were made with the intent to induce authorized

agents of the PTO to grant said registration, and reasonably relying

upon the truth of said false statements, the PTO did, in fact, grant

said registration to Registrant.”

7


• ‘‘[T]the Trademark Office relies on the thoroughness, accuracy and

honesty of each applicant. . . . Allowing applicants to be careless . . .

Would result in a registration improperly accorded legal presumptions

in connection with goods on which the mark is not used.”

• The appropriate inquiry is “not into the registrant’s subjective intent,

but rather into the objective manifestations of that intent.”

• “Statements made with such a degree of solemnity clearly are – or

should be – investigated thoroughly prior to signature and

submission.”

8


• ‘‘The undisputed facts in this case clearly establish that respondent

knew or should have known at the time it submitted its statement of

use that the mark was not in use on all of the goods. Neither the

identification of goods nor the statement of use itself were lengthy,

highly technical, or otherwise confusing, and the President/CEO who

signed the document was clearly in a position to know (or to inquire)

as to the truth of the statements therein.”

• 67 U.S.P.Q.2d 1205, 1209-10 (T.T.A.B. 2003)

9

In re Bose

• Registered mark: WAVE

• Class 9: “television receivers, video cassette recorders, video

cassette players, camcorders, radios, clock radios, audio tape

recorders and players, portable radio and cassette recorder

combinations, compact stereo systems and portable compact disc

players”

• Section 8 and 9 Affidavit

• “Hexawave counterclaimed for cancellation of Bose’s WAVE mark,

asserting that Bose committed fraud in its registration renewal

application when it claimed use on all goods in the registration while

knowing that it had stopped manufacturing and selling certain goods.”

10

In re Bose

• “By equating ‘should have known’ of the falsity with a subjective

intent, the Board erroneously lowered the fraud standard to a simple

negligence standard.”

• [A]n allegation of fraud in a trademark case, as in any other case,

should not be taken lightly. Thus, we hold that a trademark

[registration] is obtained fraudulently under the Lanham Act only if the

applicant or registrant knowingly makes a false, material

representation with the intent to deceive the PTO.”

11

In re Bose

• “Subjective intent to deceive, however difficult it may be to prove, is

an indispensable element in the analysis. Of course, because direct

evidence of deceptive intent is rarely available, such intent can be

inferred from indirect and circumstantial evidence. But such evidence

must still be clear and convincing, and inferences drawn from lesser

evidence cannot satisfy the deceptive intent requirement.”

• In re Bose Corp., 580 F.3d 1240, 1244-45 (Fed. Cir. 2009)

12

Elements

• False representation of material fact

• Knowledge or belief that the representation is false

• Intent to induce reliance on the misrepresentation

• Subjective intent/intent to deceive

• Reasonable reliance on the misrepresentation

• Damages

13

Standard for Pleading Fraud

• Must be pleaded with particularity

• FRCP 9(b): “In alleging fraud or mistake, a party must state with

particularity the circumstances constituting fraud or mistake.”

• Exception: Malice, intent, knowledge, and other conditions of a

person's mind may be alleged generally.

14

Burden of Proof

• Clear and convincing evidence

• Intent can be inferred from indirect and circumstantial evidence

• “[M]ust still be clear and convincing, and inferences drawn from

lesser evidence cannot satisfy the deceptive intent requirement."

• Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d 1357, 1366 (Fed. Cir.

2008).

15

Pleading Fraud in District Court

• Complaint for Declaratory Relief

• Counterclaim

16

Pleading Fraud in the TTAB

• Notice of Opposition

• Petition to Cancel

• Counterclaim

• Motion to Amend pleadings

17

Timing

• Except on a ground for which application to cancel may be filed at

any time under paragraphs (3) and (5) of section 1064 of this title . . .

the right of the owner to use such registered mark in commerce for

the goods or services on or in connection with which such registered

mark has been in continuous use for five consecutive years

subsequent to the date of such registration and is still in use in

commerce, shall be incontestable. 15 U.S.C. § 1065.

• Grounds for cancellation of a mark at any time: the mark has become

generic or abandoned, the registration was obtained fraudulently, or

the mark is being used to misrepresent the source of the

goods/services in connection with which it is being used. 15 U.S.C.

§ 1064(3).

18

TTAB Remedies

• Cancel entire registration

• Delete specific goods or entire class from registration

• Reject entire application

• Delete specific goods or entire class from application

• Loss of standing in proceeding if common law rights not asserted

19

District Court Remedies

• Declaratory judgment

• Order the USPTO to cancel a registration, in whole or in part

• Order the USPTO to reject an application, in whole or in part

20

Considerations for Plaintiffs

• If a registration is more than 5 years old, consider fraud as basis to

seek cancellation

• Allege harm to establish standing in TTAB

• Investigate thoroughly and state allegations of fraud clearly and

specifically

• Prior to sending demand letter or initiating TTAB proceeding or

district court infringement action, audit applications and registrations

and file amendments or even replacement applications, as

necessary, to limit exposure to fraud claims

21

Considerations for Defendants

• Investigate plaintiff’s rights thoroughly to determine if fraud claim can

be brought as a counterclaim or in a separate opposition proceeding

• Investigate thoroughly and state allegations of fraud clearly and

specifically

• Audit applications and registrations to limit exposure to fraud claims

and file amendments or even replacement applications, as necessary

• Fraud cannot be corrected by amendments made after the fraud

claim is filed

22

Guidelines

• Investigate facts carefully and read documents thoroughly before

signing any document filed in USPTO

• Err on the side of caution

• Consider filing only single class applications

• Use broad language to describe goods and services

• Be candid in USPTO filings

• Audit all applications and registrations to ensure absolutely correct

Fraud in Trademark Applications and

Registrations: Proving or Defeating

Allegations

Ted Davis

Kilpatrick Townsend & Stockton LLP

[email protected]

Fraud On

The USPTO

• allegedly fraudulent averments of the exclusive right to use applied-for marks in commerce, see, e.g., E. W., LLC v. Rahman, 896 F. Supp. 2d 488 (E.D. Va. 2012);

• allegedly fraudulent averments of use in commerce, see, e.g., Patsy’s Italian Rest., Inc. v. Banas, 658 F.3d 254 (2d Cir. 2011);

• allegedly fraudulent averments of mark ownership, see, e.g., Country Fare LLC v. Lucerne Farms, 102 U.S.P.Q.2d 1311 (D. Conn. 2011);

They include:

Bases of Allegations of Fraudulent Procurement and

Maintenance

24 24

Fraud On

The USPTO

• allegedly fraudulent averments of dates of first use in commerce of applied-for marks, see, e.g., Pinnacle Pizza Co. v. Little Caesar Enters., 598 F.3d 970 (8th Cir. 2010);

• allegedly fraudulent averments of a bona fide intent to use applied-for marks in commerce, see, e.g., Spin Master, Ltd. v. Zobmondo Ent’mt LLC, 778 F. Supp. 2d 1052 (C.D. Cal. 2011);

• submission of allegedly fraudulent specimens, see, e.g., Edge Games, Inc. v. Elec. Arts., 745 F. Supp. 2d 1101 (C.D. Cal. 2010);

They include:


Maintenance

25 25

Fraud On

The USPTO

• allegedly fraudulent averments of the inherent distinctiveness of applied-for marks, see, e.g., Fair Isaac Corp. v. Experian Info. Sys., 650 F.3d 1139 (8th Cir. 2011);

• allegedly fraudulent averments of the acquired distinctiveness of applied-for marks, see, e.g., Southco, Inc. v. Penn Eng’g & Mfg. Corp., 768 F. Supp. 2d 715 (D. Del. 2011);

• allegedly fraudulent averments of the nonfunctionality of applied-for marks, see, e.g., Modern Fence Techs., Inc. v. Qualipac, 726 F. Supp. 2d 975 (E.D. Wis. 2010);

They include:


Maintenance

26 26

Fraud On

The USPTO

• allegedly fraudulent averments of the excusable nonuse of registered marks, see, e.g., ZAO Odessky Konjatschnyi Zawood v. SIA “Baltmark Invest,” 109 U.S.P.Q.2d 1680, 1683-84 (E.D. Va. 2013); and

• allegedly fraudulent declarations of incontestability, see, e.g., Willis v. Can’t Stop Prods., Inc., No. 92051212, 2011 WL 4871875 (T.T.A.B. Sept. 21, 2011) (nonprecedential).

They include:


Maintenance

27 27

Fraud On

The USPTO

28

Establishing Fraud: Allegedly Fraudulent

Averments of Mark Ownership

The [application] shall be verified by the applicant and

specify that ... the person making the verification believes

that he or she, or the juristic person in whose behalf he or

she makes the verification, to be the owner of the mark

sought to be registered ....

Sections 1(a)(3)(A) and 1(b)(3)(A) of the Lanham Act, 15

U.S.C. §§ 1051(a)(3)(A), 1051(b)(3)(A) (2012).

28

Fraud On

The USPTO

29



For [the defendants] to show that [the plaintiff]

committed fraud by asserting ownership of the [applied-

for] mark[] ... to the USPTO, [the defendants] must

prove, by clear and convincing evidence, that [the

plaintiff] deliberately and deceitfully misrepresented

itself to be the owner of the mark[]. Thus, if [the plaintiff]

had “at least ‘color of title’ to the mark,” it did not

commit fraud by asserting ownership.

Haggar Int’l Corp. v. United Co. for Food Indus., 906 F.

Supp. 2d 96, 112 (E.D.N.Y. 2012) (quoting Yocum v.

Covington, 216 U.S.P.Q. 210, 216-17 (T.T.A.B. 1982)).

29

Fraud On

The USPTO Country Fare LLC v. Lucerne Farms, 102 U.S.P.Q.2d

1311 (D. Conn. 2011)

30 30

Fraud On

The USPTO

31



Although a high burden applies to the Plaintiff’s

claim that Defendant committed fraud on the

Trademark Office, the Court finds that the Plaintiff has

clearly met its burden of persuasion [by] presenting

clear and convincing evidence that ... the Plaintiff had

clear rightful ownership to the [disputed] trademark and

that the Defendant made material misrepresentations in

its application ... despite its knowledge of the Plaintiff[’]s

rightful ownership of the mark.

Country Fare LLC v. Lucerne Farms, 102 U.S.P.Q.2d

1317-18 (D. Conn. 2011).

31

Fraud On

The USPTO

32

Establishing Fraud: Allegedly Fraudulent Averments of

the Exclusive Right to Use Applied-For Marks


specify that ... to the best of the verifier’s knowledge and

belief, no other person has the right to use such mark in

commerce either in the identical form thereof or in such

near resemblance thereto as to be likely ... to cause

confusion, or to cause mistake, or to deceive.

Sections 1(a)(3)(D) and 1(b)(3)(D) of the Lanham Act, 15

U.S.C. §§ 1051(a)(3)(D), 1051(b)(3)(D) (2012).

32

Fraud On

The USPTO

33

[The signatory] had no awareness that any other

organization was using the marks for which [the

applicant] sought federal protection. This fact alone

compels reversal of the fraud finding, as [the signatory]

could not have intended to deceive the PTO in attesting

to an oath that he believed was entirely accurate.

Sovereign Military Hospitaller Order of Saint John of

Jerusalem of Rhodes & of Malta v. Fla. Priory of the

Knights Hospitallers of the Sovereign Order of Saint John

of Jerusalem, Knights of Malta, the Ecumenical Order,

702 F.3d 1279, 1291 (11th Cir. 2012).



33

Fraud On

The USPTO

34

[W]hen an applicant avers that it has the exclusive right

to use the [applied-for] mark, a fraud claim against the

applicant will not lie unless the applicant knew that

another person “possess[ed] a superior or clearly

established right to use the same or substantially

identical mark” for the same or substantially the same

goods or services.

ZAO Odessky Konjatschnyi Zawod v. SIA “Baltmark

Invest,” 109 U.S.P.Q.2d 1680, 1686 (E.D. Va. 2013) (third

alteration in original) (quoting Intellimedia Sports, Inc. v.

Intellimedia Corp., 43 U.S.P.Q.2d 1203, 1208 (T.T.A.B.

1997)).



34

Fraud On

The USPTO

MPC Franchise, LLC v. Tarntino, 19 F. Supp. 3d 456

(W.D.N.Y. 2014)

35 35

Fraud On

The USPTO

36

[E]ven assuming arguendo that [the defendant]

individually had the right to use the mark, he has not

produced evidence tending to show how he could have

honestly believed that [his cousins], or even his

siblings, did not have a right to use the mark that was

at least equal to his.

MPC Franchise, LLC v. Tarntino, 19 F. Supp. 3d 456, 481

(W.D.N.Y. 2014).



36

Fraud On

The USPTO

37


specify that ... the mark is in use in commerce ....

Section 1(a)(3)(C) of the Lanham Act, 15 U.S.C.

§ 1051(a)(3)(C) (2012).


Averments of Use in Commerce

Within six months after ... the notice of allowance ..., the

applicant shall file ... a verified statement that the mark is in

use in commerce ....

Section 1(b)(1)(D)(1) of the Lanham Act, id.

§ 1051(b)(1)(D)(1).

37

Fraud On

The USPTO Nationstar Mortgage LLC v. Ahmad, 112 U.S.P.Q.2d

1361 (T.T.A.B. 2014)

38 38

Fraud On

The USPTO

39

The surrounding facts and circumstances

provide clear and convincing evidence that

applicant did not have a good faith reasonable

basis for believing that he was using [his] mark in

commerce for all the services identified in the

application.

Nationstar Mortgage LLC v. Ahmad, 112 U.S.P.Q.2d

1361, 1375 (T.T.A.B. 2014).



39

Fraud On

The USPTO

40

We do not need to resolve the issue of the

reasonableness as it is not part of the analysis.

There is no fraud if a false misrepresentation is

occasioned by an honest misunderstanding or

inadvertence without a willful intent to

deceive.... Unless the challenger can point to

evidence to support an inference of deceptive

intent, it has failed to satisfy the clear and

convincing evidence standard required to establish

a fraud claim.

In re Bose Corp., 580 F.3d 1240, 1246 (Fed. Cir. 2009)

(emphasis added) (citation omitted).



40

Fraud On

The USPTO

41

Applicant was obligated to read and understand

what he was signing and investigate the accuracy

of his statements in the application to confirm they

had evidentiary support prior to signature and

submission to the USPTO. Even if counsel had

been retained to file the involved application,

applicant would have shared the duty to ensure

the accuracy of the application and the truth of its

statements.

Nationstar, 112 U.S.P.Q.2d at 1376 (citation omitted).



41

Fraud On

The USPTO

42

[I]f an auditor is “not aware of facts indicating that

a transaction was suspicious, or part of a fraud,

the auditor’s failure to investigate the transaction—

even if negligent—does not provide a basis for a

fraud claim.”

Iowa Pub. Employee’s Retirement Sys. v. Deloitte &

Touche LLP, 919 F. Supp. 2d 321, 332 (S.D.N.Y. 2013)

(quoting In re CBI Holding Co., 419 B.R. 553, 566–67

(S.D.N.Y. 2009)).



42

Fraud On

The USPTO Patsy’s Italian Rest., Inc. v. Banas, 658 F.3d 254 (2d Cir.

2011)

43 43

Fraud On

The USPTO

[A] party alleging that a registration was fraudulently

obtained must prove the following elements by clear and

convincing evidence:

1. A false representation regarding a material fact.

2. The person making the false representation knew

or should have known that the representation was false

(“scienter”).

3. An intention to induce the listener to act or refrain

from acting in reliance on the misrepresentation.

4. Reasonable reliance on the representation.

5. Damage proximately resulting from such reliance.

Patsy’s Italian Rest., Inc. v. Banas, 658 F.3d 254, 270-71

(2d Cir. 2011) (emphasis added) (footnote omitted).



44

Fraud On

The USPTO

45

Federal courts and the TTAB consistently have

held that the date of first use is immaterial to a

registration application so long as the actual date

of initial use predated the application.... Thus, even

if [the challenger] is correct that [the registrant]

claimed the wrong date of first use in its

applications—a question on which the Court need

not take a position—it fails to demonstrate how

such an error was material.

Paleteria La Michoacana, Inc. v. Productos Lacteos

Tocumbo S.A. De C.V., No. 11–1623 (RC), 2014 WL

4759945, at *31 (D.D.C. Sept. 25, 2014).


Recitations of Dates of First Use in Commerce

45

Fraud On

The USPTO Fair Isaac Corp. v. Experian Info. Solutions, Inc., 650

F.3d 1139 (8th Cir. 2011)

46 46

Fraud On

The USPTO

[The defendants] presented a PTO expert, who

testified that a reasonable examiner would consider it

important in deciding whether to allow the registration

to know whether others were using [the claimed mark]

as a score range for credit scoring services.

Furthermore, the PTO had initially rejected [the

registrant’s] trademark application because it was

merely descriptive .... Thus, there was sufficient

evidence for a reasonable jury to determine that the

PTO relied on a false representation in deciding

whether to issue the registration.

Fair Isaac Corp. v. Experian Info. Solutions, Inc., 650 F.3d

1139, 1149 (8th Cir. 2011) (emphasis added). 47


Averments of Inherent Distinctiveness

47

Fraud On

The USPTO Caymus Vineyards v. Caymus Med. Inc., 107

U.S.P.Q.2d 1519 (T.T.A.B. 2013)

48 48

Fraud On

The USPTO

49

If ... [the mark] has geographic significance and

had such significance when the examiner’s

amendment was entered, [the applicant] was

obliged to be truthful about that fact during the

conversation with the examining attorney and, if

necessary, seek correction of the examiner’s

amendment after it was entered. Deliberately

omitting relevant information ... may be treated as

the equivalent of a false statement in its effect and

also, under certain circumstances, show the

necessary element of intent.

Caymus Vineyards v. Caymus Med. Inc., 107

U.S.P.Q.2d 1519, 1524 (T.T.A.B. 2013).


Averments of Inherent Distinctiveness

49

Fraud On

The USPTO

50


Averments of Acquired Distinctiveness

The Director may accept as prima facie evidence that

the mark has become distinctive, as used on or in

connection with the applicant’s goods in commerce,

proof of substantially exclusive and continuous use

thereof as a mark by the applicant in commerce for the

five years before the date on which the claim of

distinctiveness is made.

Section 2(f) of the Lanham Act, 15 U.S.C. § 1052(f) (2012).

50

Fraud On

The USPTO Quality Serv. Grp. v. LJMJR Corp., 831 F. Supp. 2d 705

(S.D.N.Y. 2011)

51 51

Fraud On

The USPTO

52



In evaluating a [claim of acquired distinctiveness],

the PTO considers whether the mark has become

distinctive through ... “substantially exclusive and

continuous use in commerce.” Therefore, the

existence of other bars bearing the name “Blue

Martini” does not militate against the granting of a

[registration], so long as the party seeking a

[registration] can demonstrate substantial exclusivity.

Quality Serv. Grp. v. LJMJR Corp., 831 F. Supp. 2d 705,

711 (S.D.N.Y. 2011) (quoting 15 U.S.C. § 1052(f) (2006)).

52

Fraud On

The USPTO

53



[E]ven if [the principal’s] statements in the Section 2(f)

declaration were false, [her] testimony demonstrates

that the statements were not made with the requisite

intent to deceive the USPTO.... [S]he testified that she

“believed” that the statements regarding continuous

use contained in the Section 2(f) declaration were true

based on her personal observations ..., and that she

did not merely rely on the advice of counsel to sign the

declaration but undertook “some due diligence” to

verify that the statements were true.

Alcatraz Media Inc. v. Chesapeake Marine Tours, Inc., 107

U.S.P.Q.2d 1750, 1769-70 (T.T.A.B. 2013), aff’d, 565 F.

App’x 900 (Fed. Cir. 2014). 53

Fraud On

The USPTO Southco, Inc. v. Penn Eng’g & Mfg. Corp., 768 F. Supp.

2d 715 (D. Del. 2011)

54 54

Fraud On

The USPTO

55



[T]he Examiner ... expressed the view that the

assertions in the application and affidavit were

insufficient standing alone to establish acquired

distinctiveness.... That the Examiner sought

additional evidence on the issue of distinctiveness

does not, in the Court’s view, establish that she did

not rely on the initial evidence submitted.

Southco, Inc. v. Penn Eng’g & Mfg. Corp., 768 F. Supp.

2d 715, 726 (D. Del. 2011).

55

Fraud On

The USPTO Spin Master, Ltd. v. Zobmondo Entm’t LLC, 778 F.

Supp. 2d 1052 (C.D. Cal. 2011)

56 56

Fraud On

The USPTO

57


Averments of a Bona Fide Intent to Use

[T]he falsity and intent prongs are separate, so

absent the requisite intent to mislead the PTO, even

a material misrepresentation would not qualify as

fraud under the Lanham Act warranting cancellation.

Spin Master, Ltd. v. Zobmondo Entm’t LLC, 778 F. Supp.

2d 1052, 1061 (C.D. Cal. 2011).

57

© 2014 Winthrop & Weinstine, P.A. www.winthrop.com

Avoiding or Mitigating Fraud in Trademark Applications and

Registrations: Best Practices and Strategies for Success

January 13, 2015

Stephen R. Baird

[email protected]

mailto:[email protected]

© 2012 Winthrop & Weinstine, P.A. www.winthrop.com © 2014 Winthrop & Weinstine, P.A. www.winthrop.com 59

As the Trademark Fraud Pendulum Swings

• The Way it Was Before Medinol

• The Medinol Detour

• The Post-Bose Era

• What’s Next, a Swing Back to Medinol?

• Forgiveness Given Modified TEAS Forms?

• Resisting Trademark Commodity Mindset


Consider the Many Places Where

Fraudulent Statements Might Occur

• Initial Application

• Statement During Prosecution

• Amendment to Allege Use

• Extension Requests to Submit SOU

• Statements of Use

• Section 8 Declarations

• Section 15 Declarations

• Section 9 Renewal Applications; and

• Amendments


Even When You Defeat a Fraud

Allegation, You May Lose

• Gives up Valuable Leverage

• Emboldens Adversary in Diversion

• Complicates the Issues

• Increases Cost of Defense

• Creates Client Relationship Challenges

• Results in Inevitable Finger-Pointing


Best Practices and Strategies for

Avoiding Fraud Challenges Altogether • Verify Facts at outset and Prior to Publication

• Submit Specimen of Use for Each Item

• Maintain Records of Use/Bona Fide Intent for Each Item

• Description of Goods, Less is More

• Use of “and/or” in Description of Goods/Services

• Exercise Patience in Waiting for Defensible Use

• Exercise Caution in Responding to E.A. Requests

• Select the Sworn Signatory Wisely

• Properly Educate the Signatory

• Have Signatory Rely on Advice of Counsel


Strategies for Mitigating the Harsh

Consequences of Fraud Challenge

• Consider Simple, Straight-forward Application for Core Goods in a Single Class

• Avoid Multi-class Applications Altogether

• Refile New Use-based Applications Free of Potential Defects From Vulnerable Existing Registrations

• Consider Separate Section 8 & 15 Declarations

• Don’t Have Outside Counsel Sign on Behalf of Applicant or Registrant

• Precision and Accuracy, Pick Your Words Carefully


What About This?


Specimen Identified in Statement of Use

as “Scanned Label”


Another Gatorade Label


Gatorade Label Evidences Descriptive Use

of Claimed Inherently Distinctive Mark


Descriptive Use in Two Places on Label


Compare These Images


Specimen Submitted With Section 8 & 15

Declaration

• Described as: “A digital

photograph of a bottle containing a non-alcoholic, non-carbonated fruit flavored drink.”

• Registration Permitted to Expire, Cancelled June 6, 2014

• New Identical Intent-to-Use Application Filed September 10, 2014, Published November 25, 2014


Thoughts Concerning Gatorade Example

• Carefully Select Specimens With No Invitations for Descriptiveness Refusal

• If Specimen Label Was Not Complete, Identify as “Scanned Portion of Label”

• Or, Submit Digital Photograph of Gatorade Bottle Showing Frontal View


Issues on the Horizon?

• Is “Reckless Disregard” Sufficient to Infer Subjective Intent to Deceive?

• Will “Most Cases” Continue to Have Fraud Claims?

• Will the Board Become More Friendly to Dismissing Fraud on Summary Judgment?

• Does Nationstar Mortgage Signal a Return to Medinol Era?

• Striking a Proper Balance Between Appropriate Diligence and Commodity Mindset


Thank You!

Stephen R. Baird Chair, Intellectual Property

and Trademark Brand Management

Winthrop & Weinstine, P.A. (612) 604-6585

[email protected] www.DuetsBlog.com

mailto:[email protected]

Fraud in Trademark Applications and Registrations: Proving...

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