by Scott Hervey

It’s been five years since the Trademark Trial and Appeal Board dramatically changed the way Untied States trademark registrations are handled. The case of Medinol Ltd. v. Neuro Vasx, Inc. reflected an analytical shift in the way in which the Trademark Trial and Appeal Board (TTAB) determines whether an applicant committed fraud on the trademark office. The holding also provided those seeking to cancel a trademark registration with a powerful weapon, and created substantial risk for trademark applicants and registrants who overstate the goods or services in their application. The facts of Medinol Ltd. v. Neuro Vasx, Inc. are as follows:

Neuro Vasx, Inc. filed a trademark application for the mark NEUROVASX for “medical devices namely, neurological stents and catheters.” The mark was filed based on Neuro Vasx’s intent to use the mark. Eventually Neuro Vasx filed a Statement of Use which stated that they were using the mark in commerce in connection with the goods and services identified in the application. The Statement of Use concluded with the following required declaration:

The undersigned being hereby warned that willful false statement and the like so made are punishable by fine or imprisonment or both,…and that such willful and false statements may jeopardize the validity of the application or any resulting registration, declares that…the mark is now in use in commerce; and all statements made of his own knowledge are true and all statements made on information and belief are believed to be true.

The Statement of Use was signed by Neuro Vasx’s president and accepted by the trademark examining attorney. In August 2000 Neuro Vasx’s application moved forward to registration. 

In May, 2002, Medinol filed a petition to cancel Neuro Vasx’s trademark registration alleging that at the time Neuro Vasx submitted its Statement of Use it had not used the mark on or in connection with stents and that it had not done so since. Medinol alleged that Neuro Vasx’s registration was procured by knowingly false or fraudulent statements and that “said false statement were made with the intent to induce authorized agents of the Patent and Trademark Office to grant registration, and reasonably relying upon the truth of said false statements, the PTO did, in fact, grant said registration to [Neuro Vasx].”

In answer to Medinol’s cancellation petition, Neuro Vasx responded by requesting partial cancellation of its own trademark registration by deleting the word “stents” from the list of goods. Neuro Vasx admitted that it had not used its mark in connection with stents; it claimed that upon the filing of its Statement of Use, the electronic check box for the goods and services identified in a Notice of Allowance was inadvertently checked and the fact that stents was still included was “apparently overlooked.” 

The TTAB did not accept Neuro Vasx’s excuses. The TTAB found the Statement of Use would not have been accepted, nor would registration have issued but for Neuro Vasx’s misrepresentation and that Neuro Vasx’s request to delete stents from its list of goods does not remedy an alleged fraud upon the USPTO. If fraud can be shown in the procurement of a registration, the entire resulting registration is void. 

The TTAB found that at the time Neuro Vasx filed its Statement of Use, it either knew or should have known that the mark was not being used in connection with stents. (“There were only two goods identified in the Notice of Allowance; the mark was either in use of both, or it was not.”) Further, when submitting its statement of use, Neuro Vasx’s president signed its statement under penalty of “fine or imprisonment…and that such willful false statements may jeopardize the validity of the application or any resulting registration.” The TTAB found that such statements should be investigated thoroughly prior to signature and submission to the USPTO. Based on such findings, the TTAB sua sponte entered summary judgment in favor of Medinol on the issue of fraud and indicated that it would cancel Neuro Vasx’s registration provided Medinol had proved that it had standing the petition for cancellation (which it later did). 

The Lessons of Medinol.

Subsequent to Medinol, the TTAB has made short work of cases in which similar fraud allegations were made; granting little to no relief to those who can not establish use in connection with each and every single item of good or service listed on the mark owner’s application. Further, the TTAB has been freely granting plaintiffs in Oppositions and Cancellation proceedings leave to amend to allege fraud.

Prior to Medinol, some applicants sought to register trademarks for the widest range of goods and services possible. This is particularly true for foreign applicants who follow the practice in numerous foreign jurisdiction of applying for as broad a range of goods or services that appear to cover the entire international class. The registration resulting from such applications may be subject to cancellation if the mark is not in use in the United States with each and every good or service listed in the application.

When filing an application, resist the impulse to be over-inclusive. If the application is based on actual use, only file for goods that are in use. If the application is based on intent to use, a broad scope is OK initially, as long as it has been narrowed to reflect the mark’s actual use by the time the Statement of Use is filed.

A mark owner should also keep good records of the mark’s use; knowing that a potential opposer may challenge the validity of your Statement of Use and supporting evidence.