Court Overrules Trademark Office on Fraud Standard

On August 31, 2009, the Federal Circuit Court of Appeals overruled the Trademark Trial and Appeals Board's decisions that a finding of fraud on the Trademark Office could be based on a false declaration of trademark use if the person signing the declaration "should have known" that the mark was not, in fact, being used on or in connection with the goods or services stated in the declaration. In the Federal Circuit's In re Bose Corporation decision, the Court held that Bose's trademark registration for WAVE should not have been canceled by the Board, because although the WAVE mark was no longer being used on some of the goods referenced in the declaration, the declarant did not have a willful intent to deceive, which is required to make a representation fraudulent. This holding overruled the Board's previous position, as held in Medinol v. Neuro Vasx Inc., 67 USPQ2d 1205 (TTAB 2003), that a false declaration of trademark use was fraudulent if the declarant "should have known" the actual facts. As a result of the Bose decision, it will be more difficult to prove fraud on the Trademark Office based on a false declaration, because it will be necessary to demonstrate a willful intent to deceive, rather than just having to demonstrate that the declarant should have known the actual facts.