The Federal Circuit recently published an opinion that the USPTO did not have the right to strip a trademark or its registration, due to a false claim of incontestability. This was the first time the Circuit had to decide if a fraudulent incontestability declaration warranted the cancellation of a trademark.
Law360 discussed the Federal Circuit’s opinion on the fraudulent declaration with Eric Perrott.
Perrott was hopeful the opinion would provide additional information regarding what the standard is for committing fraud in USPTO filings.
“I think that is what I’m frustrated with,” he said, adding that the current fraud standard “is just seemingly very forgiving when someone signs a sworn statement to the U.S. government attesting to certain facts.”
Perrott referenced a 2009 Federal Circuit decision (In re Bose Corp) that has made it more difficult to prove fraud in trademark registrations, after judges found that trademark applicants commit fraud when they “knowingly” make false material representations.
At the same time, Perrott admits that the recent Federal Circuit ruling was perhaps not the best vehicle to set a new standard for what constitutes fraud.
“This has very little application to any other part of the trademark registration process,” Perrott said. “So I’m hopeful someone else will bring the case in a situation that doesn’t involve incontestability and actually involves the renewal of a trademark or the registration of a trademark so we can get better clarity.”
Source: Moreno, Ivan. https://www.law360.com. “Fed. Circ. Ruling Sheds Light on ‘Overlooked’ TM Declarations”. 20 October 2023.