Legal Updates

Intellectual Property - Trademark Law - Trademark Cancellations for Fraudulent Statements of Use

For those wishing to file a trademark application in the USA, this is important News!

The USPTO’s Trial and Appeal Board has held that filing a Section 8 affidavit and statement of use for items on which a trademark is not being used amounts to fraud, and renders a trademark registration vulnerable to cancellation.

Nowadays, US trademark applications usually undergo strict review by the United States Patent & Trademark Office (“USPTO”).  As such, it is important for potential registrants to accurately and completely fill out their application forms.

In a number of recent rulings, the USPTO has invalidated trademark applications based upon misstatements in the original applications, specifically where parties have submitted an ‘allegation of use’ with their applications.  An allegation of use is filed with a trademark application as part of a:-

• Use-based application;
• Statement of use in connection with an intent-to-use application; and
• Section 8 affidavit demonstrating continuing use of a trademark.

It is ethical to file an ‘intent to use’ application citing several products and services to give your trademark the greatest range of coverage.  Applications run into difficulties when allegations of use are subsequently filed using a detailed list and all of the products and/or services are not actually being used in the market.  These issues also arise when a Section 8 affidavit is filed by the owner of a trademark to show current use of the mark.  The USPTO’s Trial and Appeal Board has held that filing a Section 8 affidavit and statement of use for items on which the trademark is not being used to be fraudulent, this renders the trademark registration vulnerable to cancellation.  These issues of fraud typically arise in litigation where trademark owners have asserted their ownership in their trademarks against third parties.

Trademark owners can take several steps to ensure their trademark applications and subsequent affidavits are in compliance with the rules of the USPTO.  Owners must include items on which a trademark has been used in their use-based trademark applications.  When filing a statement of use or a Section 8 affidavit, owners must delete all items where they cannot establish that a trademark has been used and/or a Section 8 affidavit is currently being used.  Lastly, owners can consider retaining proof of use for each item in their files in the event they face a future fraud allegation.

RT Coopers has a number of skilled attorneys in the USA to correctly file your trademark applications, respond to office actions and audit your trademark registrations in order that your intellectual property rights are not vulnerable to cancellation due to fraud.

For US trademark inquiries contact [email protected].

© RT COOPERS, 2008. This Briefing Note does not provide a comprehensive or complete statement of the law relating to the issues discussed nor does it constitute legal advice. It is intended only to highlight general issues. Specialist legal advice should always be sought in relation to particular circumstances.