Is it too late for a New Year’s resolution? If not, in-house counsel may want to make a pledge to conduct an annual review of certain IP assets and their use. The purpose of this practice is to help avoid Trademark Trial and Appeal Board (TTAB) rulings that last year alone invalidated trademark registrations owned by technology, oil, apparel and other companies.

Throughout 2007, the TTAB continued to take a “use it all or lose it all” approach to rulings on trademark challenges. Late in the year, for example, it ordered the cancellation of an entire trademark registration owned by Bose Corporation. In connection with a renewal filing, the company had asserted to the USPTO that its mark was in use for all six of the goods listed in its registration. The facts were determined to show that the mark was no longer in use for one of the half-dozen products. Bose Corporation v. Hexawave, Inc., Opposition No. 91157315 (TTAB, November 6, 2007) (not citable as precedent).

What Sparked the Rulings?

In 2003, the TTAB issued the landmark decision Medinol Ltd. v. Neuro Vasx Inc., 67 U.S.P.Q.2d 1205 (TTAB 2003). The case addressed a trademark registrant, Neuro Vasx, Inc., which had asserted to the USPTO in a statement of use filed in 2000 that its mark was being used in connection with two types of goods – stents and catheters. The registrant, however, was actually using the mark in connection only with catheters. Two years later, another company, having had its trademark application refused based on the existence of Neuro Vasx’s registration, brought a cancellation proceeding, alleging that Neuro Vasx had committed fraud when it claimed that its mark was being used for both stents and catheters. The TTAB agreed and voided Neuro Vasx’s entire registration.

In effect, Medinol made it possible for companies to commit fraud even without a specific intent to mislead the USPTO. If a business attests to the USPTO (in verified statements such as statements of use or Section 8 affidavits filed with renewal requests) that it is using its trademark in connection with goods or services for which the mark isn’t actually in use, third-party companies that are allegedly damaged by the resulting registration can challenge the registration on the basis of fraud. The registrations for these marks could be completely voided by the USPTO – the registrant even loses its registered rights in connection with the goods/services for which the mark is actually in use.

The TTAB has repeatedly stated that mistakes or neglect will not serve as a valid excuse; registrants must carefully consider the goods or services listed in their applications, and may lose their entire registration if their conduct is deemed to constitute an “objective manifestation of intent” to defraud the USPTO.

In 2003, the TTAB issued the landmark decision Medinol Ltd. v. Neuro Vasx Inc., 67 U.S.P.Q.2d 1205 (TTAB 2003). The case addressed a trademark registrant, Neuro Vasx, Inc., which had asserted to the USPTO in a statement of use filed in 2000 that its mark was being used in connection with two types of goods – stents and catheters. The registrant, however, was actually using the mark in connection only with catheters. Two years later, another company, having had its trademark application refused based on the existence of Neuro Vasx’s registration, brought a cancellation proceeding, alleging that Neuro Vasx had committed fraud when it claimed that its mark was being used for both stents and catheters. The TTAB agreed and voided Neuro Vasx’s entire registration.

What Do We Recommend?

Trademark counsel may wish to conduct an internal audit to determine whether any registrations in their portfolios may be vulnerable to charges of fraud. Any discrepancies should be investigated, and the filing of a new application with an accurate goods/services description should be considered. Although this would affect the nationwide priority date for the mark at issue, it would protect the trademark registration from total cancellation on the basis of fraud.

Companies should also consider taking the offensive. Medinol provides a tool to challenge third party marks. If a company, through investigation or during discovery, uncovers an overly broad description in an opponent’s trademark registration, counsel can challenge that description on the basis of fraud and seek to have the registration cancelled entirely. It worked for Toyota in acquiring the trademark name Tundra, one of the most popular full-size pickup trucks on the road.