Articles

Client Alert - Inaccurately Alleging Use of Mark May Void U.S. Registration*

By Baila Celedonia

Dec. 1, 2003

In order to obtain a trademark registration, a U.S. applicant must have made actual use of the mark for the the goods and services listed in the application or allege a bona fide intent to use the mark in U.S. commerce for those goods and services. When perfecting the intent-to-use basis, the registration will not issue until an Amendment to Allege Use or a Statement of Use has been filed. While only one specimen of use per class is necessary, in all cases, the applicant or its agent must declare, under penalty of perjury, that the mark has been used on each and every good and service listed. The Trademark Trial and Appeal Board has recently handed down a decision highlighting the consequences of submitting an inaccurate declaration. In an opinion issued on May 13, 2003 in the case of Medinol Ltd. v. Neuro Vasx Inc., 67 U.S.P.Q. 2d 1205 (TTAB 2003), the Board completely voided a U.S. registration for which the owner had inaccurately declared that all the goods were in use in commerce in the United States.

The Neuro Vasx Inc. Application

On July 17, 1997, Neuro Vasx Inc. filed a U.S. application on the basis of intent to use in commerce for the mark NEUROVASX for 'medical devices, namely, neurological stents and catheters.' Neuro Vasx eventually filed a Statement of Use, declaring that the mark NEUROVASX was being used in commerce in the United States on all the goods covered by its application. On the basis of the acceptance of that Statement of Use, Registration No. 2,377,883 issued on August 15, 2000.

Cancellation Action Brought by Medinol Ltd.

On May 1, 2002, Medinol Ltd. filed a Petition to Cancel the trademark registration for NEUROVASX, alleging that, at the time Neuro Vasx had submitted its Statement of Use, it had not used its mark for stents and had not done so since. Medinol claimed that, due to the fraud committed in obtaining registration, Neuro Vasx's was not entitled to continue its registration for NEUROVASX.

In its answer, Neuro Vasx admitted that it had not used its mark on stents but stated that, at the time the Statement of Use was filed, the inclusion of stents in the application was 'overlooked.' Neuro Vasx also asked for partial cancellation of its registration by deletion of the word 'stents' from the list of goods. Neuro Vasx also made a combined motion to amend its registration and for summary judgment dismissing the Petition to Cancel with prejudice on the ground that amending the registration to delete 'stents' fully responded to the contentions made by Medinol in the cancellation action. The Board denied Neuro Vasx's motion, stating that 'the deletion of the goods upon which the mark has not yet been used does not remedy an alleged fraud upon [the U.S. Patent and Trademark] Office.'

The Board also granted summary judgment in Medinol's favor on the issue of fraud, entitling it to cancellation of the registration for NEUROVASX. The Board observed that '[a] trademark applicant commits fraud in procuring a registration when it makes material representations of fact ... which it knows or should know to be false and misleading.' Moreover, in determining whether fraud has been committed, '[t]he appropriate inquiry is ... not into the registrant's subjective intent, but rather into the objective manifestations of that intent.' The Board observed that neither Neuro Vasx's list of goods for its application nor its Statement of Use was lengthy, highly technical, or otherwise confusing, and that the Neuro Vasx's President/CEO was obviously in a position to know (or to inquire) about the truth of the statements made in the Statement of Use that he signed.

U.S. Trademark Applicants Should Take Particular Care When Alleging Use

Because erroneously alleging use during the prosecution process in a use-based or intent-to-use application may invalidate the entire resulting registration, applicants for U.S. trademark registrations should take particular care when making any use declarations filed with the U.S. Patent and Trademark Office. The person signing on behalf of the applicant has a duty to inquire of the responsible business people, and satisfying herself that actual use has been made for each good and service. This puts a special burden on in-house counsel. While not discussed in the opinion, the same rationale should apply to Section 8 declarations of continued use, which must be filed before the sixth and tenth anniversaries of a registration. The Registrant or its agent must carefully investigate what use is being made of the mark in U.S. commerce at that time, and only declare use for those goods and services. Lastly, the Board held that if the Registrant becomes aware of an error in its declaration, it has an obligation to correct that error immediately after becoming aware that the declaration was in error.

CONCLUSION

For more information, please contact Baila Celedonia or other members of our Trademark Group.

Baila H. Celedonia

bhc@cll.com

(212) 790-9203

*For a later development, see Baila Celedonia and Sujata Chaudhri's Client Alert - U.S. Federal Circuit Court of Appeals Rejects Medinol “Should Have Known” Standard of Fraud, Raising the Bar in Fraud Cases  published September 17, 2009.

Copyright © 2004 Cowan, Liebowitz & Latman, P.C.

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