14
Sep/06

Warning Re: Laundry Lists On US Applications


After 1989 when the U.S. allowed Intent to Use applications (which required a declaration as to bona fide intent to use), some practitioners worried that applicants with huge laundry lists of goods and services, had potential fraud exposure if it could be shown that there had never been a bona fide intent to use on ALL those goods and services, particularly since the penalty would be cancellation of the ENTIRE registration. Non-US applicants were particularly vulnerable as their ‘registered rights only’ regimes encouraged massive filings.
The years passed without significant jurisprudence on this point.
Then, as Jonathan Moskin documents in his article “Fraud Alert: Applicants for U.S. Trademarks Beware When Specifiying Goods and Services!” in the September 1 issue of the INTA Bulletin there has been a trend towards the TTAB enforcing a strict interpretation of the fraud rules, since its decision in Medinol v. Neuro Vasx, 67 U.S.P.Q.2d 1205 (TTAB 2003).
The article raises many issues, including:
– the tendency of the TTAB to designate decisions as not citable or for publication is obscuring the extent to which the TTAB is apllying the Medinol decision; and
– the Madrid Protocol is perhaps aggravating the situation, as non-US applicants are using their ‘broad’ home country application as bases for filing, and not communicating with US counsel prior to filing.
The result is that there are many broad applications at risk of rejection or cancellation.
The TTABlog Fraud collection here.

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