U.S. Bose decision - Effects on Madrid system users

• Author: Linda K. McLeod - Jonathan M. Gelchinsky - Katherine L. Staba
• Position: Partners - Attorney at Law, at Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
• Pages: 7-9

Fraud and lack of bona fide intent to use: Potential

USPTO challenges to extensions of protection into

the U.S. under the Madrid Protocol

The USPTO’s Trademark Trial and Appeal Board

(TTAB) has recently issued a series of decisions

addressing claims of fraud and lack of

bona fide

in-

tent to use a mark in U.S. commerce. Although

none of the cases specifically involves Madrid

Protocol filings, such claims are nonetheless po-

tential grounds for opposition against applica-

tions for extension of protection into the U.S. un-

der the Protocol, and cancellation of any resulting

registration.

Fraud before the USPTO post-Bose: “Reckless disre-

gard for the truth“ and duty to investigate when

filing a declaration of use

The ruling of the U.S. Court of Appeals for the

Federal Circuit (Federal Circuit) in

In re Bose Corp.

,

91 U.S.P.Q.2d 1938 (Fed. Cir. 2009) dramatically

changed the landscape of fraud claims before the

USPTO. Prior to

Bose

, fraud was often found on

grounds of misstatements concerning use of a

mark in U.S. commerce that were arguably due to

negligence or a justifiable mistake. In

Bose

, how-

ever, the Federal Circuit held that mere negli-

gence is not sufficient to infer intent to deceive

and fraud, and gross negligence may not itself

justify an inference of intent to deceive. Instead,

the court held that, under the Lanham Act, a

trademark is considered to have been obtained

fraudulently only if there is clear and convincing

evidence that an applicant or registrant knowing-

ly made a false, material representation with the

intent to deceive the USPTO.

Following

Bose

, the TTAB now requires a pleading

of

specific facts

supporting allegations of

knowl-

edge, intent to deceive and fraud,

and clear and

convincing evidence to prove such claims.1

Although an allegation of fraud before the USPTO

has become more difficult to plead and prove, a

claim of fraud may nevertheless be upheld where

there is a “reckless disregard for the truth.“2No

cases have so far defined what would constitute

“reckless disregard for the truth“ in relation to

fraud claims. Some commentators have suggest-

ed, however, that failure to read a filing or investi-

gate the accuracy of declarations claiming use of

a mark in U.S. commerce may constitute a “reck-

less disregard for the truth“ and fraud before the

USPTO.3

For non-U.S. applicants requesting an extension

of protection into the U.S. through the Madrid

Protocol, potential fraud issues are most likely to

arise, if at all, in connection with declarations of

continued use of the mark that are filed after is-

suance of the U.S. registration. Under Section 71

of the Trademark Act, 15 U.S.C. § 1141k, the own-

er of a registered extension of protection to the

U.S. must file declarations of continued use of the

mark in U.S. commerce by the sixth and tenth an-

niversaries of registration (and every 10 years

thereafter). If registrants do not read such decla-

rations carefully before signing them or do not

take them seriously, or if they fail to take steps to

investigate and confirm use of the mark for each

of the goods and/or services listed, the registra-

tions may be vulnerable to cancellation on

grounds of fraud before the USPTO.

Objective documentary evidence establishing

bona fide intent to use a mark in U.S. commerce

Applicants requesting extension of protection to

the U.S. for international registrations under the

Madrid Protocol must declare their

bona fide

in-

U.S. BOSE DECISION –

EFFECTS ON MADRID

SYSTEM USERS

>>>

1 See Asian & Western

Classics B.V. v. Selkow,

92 U.S.P.Q.2d 1478

(T.T.A.B. 2009); Enbridge

Inc. v. Excelerate

Energy LP, 92 U.S.P.Q.2d

1537 (T.T.A.B. 2009).

2 See DaimlerChrysler

Corp. v. Am. Motors

Corp., Canc. No.

92045099 (T.T.A.B. Jan.

14, 2010).

3 See Brief of Amicus

Curiae American

Intellectual Property

Law Assoc. in Support

of Bose Corp. and

Reversal at 12-14, Bose,

91 U.S.P.Q.2d 1938

(“AIPLA Br.“); see also 37

C.F.R. § 11.18(2)(iii)

(imposing a duty to

make a reasonable

inquiry to confirm

accuracy of factual

statements made to

the USPTO).

7

In this article Linda K. McLeod and Jonathan M. Gelchinsky, Partners, and Katherine L. Staba, Attorney at

Law, at Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, explore the possible implications, for users

of the Madrid system for the international registration of marks, of recent legal decisions in the U.S. that

have redefined standards in determining whether a trademark applicant has committed fraud before the

U.S. Patent and Trademark Office (USPTO). Before joining Finnegan in 2002, Ms. McLeod gained signifi-

cant trademark expertise as an Administrative Trademark Judge at the Trademark Trial and Appeal Board

and at the USPTO.