Seattle Trademark Lawyer

After starting to audit trademark registrations, the U.S. Patent and Trademark Office has rolled out a pilot program inviting trademark owners to rat out their competitors’ filing of fraudulent specimens.

Specimens are proofs of use that a trademark owner submits to show its mark is being used in customer sales — usually a prerequisite to registration. Apparently, some file bogus proof in order to get a registration.

I didn’t realize this was a problem. The USPTO seems to think so. It identifies two scenarios in which it invites notice of a suspicious filing: when the reporting party (1) has “objective evidence of third party use of the identical image without the mark in question, such as the URL and screenshot from an active website or a digital copy of a photograph from a print advertisement and the publication in which it was featured”; or (2) can identify “prior registration numbers and/or serial numbers of applications in which identical images of objects, mock ups of websites, etc., all bearing different marks[,] have been submitted to the USPTO.”

In these cases, the USPTO asks that notice be sent to: TMSpecimenProtest@uspto.gov.

Timing is key. The USPTO states that emails must be received no later than 30 days after the date the subject mark is published for opposition. It doesn’t say what it will do in response to the notices. Apparently, it will decide whether (and what) action is warranted. The USPTO states the program will continue based on “operational need,” and may be discontinued at any time.

As with its auditing program, I support efforts that promote honesty in trademark filings and the accuracy of our trademark registers. It doesn’t benefit bona fide trademark owners to have fraudsters lurking in their midst. It’s just curious that there apparently are enough bogus filings that the USPTO believes there is a problem. 

If the USPTO is correct, rat ‘em out!

If the court’s jury instructions aren’t correct, the verdict that follows can’t stand.

That’s the principle the Ninth Circuit applied last week in Neurovision Med. Products Inc. v. NuVasive, Inc., a trademark infringement case in which the jury awarded Neurovision $60M.

The basis for the jury’s finding was that NuVasive committed fraud in procuring its trademark registrations, that Neurovision had prior rights in its trademark, and that NuVasive willfully infringed Neurovision’s trademark rights. At issue were the parties’ competing rights to NEUROVISION as a trademark.

The Ninth Circuit found the jury’s verdict that NuVasive fraudulently obtained its trademark registrations must be vacated because the Central District of California erroneously instructed the jury as to the elements needed to prove fraud on the U.S. Patent and Trademark Office. Such proof requires a “material misrepresentation in the affidavit on the basis of which the mark was registered.” Pony Express Courier Corp. of Am. v. Pony Exp. Delivery Serv., 872 F.2d 317, 319 (9th Cir. 1989).

The court noted: “There is no requirement that an applicant for a trademark registration disclose all prior use of a mark, contrary to the district court’s instruction. Instead, an applicant must disclose only those prior users that the applicant believes have acquired superior rights to the mark in the classification for which registration is sought. The district court erred by instructing the jury to determine only whether NuVasive omitted knowledge of [Neurovision’s] prior use of the NEUROVISION mark; the proper inquiry is whether NuVasive wilfully omitted knowledge of a superior right held by [Neurovision]. Moreover, the district court erroneously omitted from the jury instructions a key element of proving fraud on the USPTO: that a trademark applicant intend to induce reliance on a misrepresentation.”

The Ninth Circuit also found the district court erred in instructing the jury about what was required to challenge an incontestable trademark.

“The judgment below must be vacated because the district court instructed the jury to answer only whether [Neurovision] ‘establish[ed] trademark rights in the mark ‘NEUROVISION’ through prior use of the mark in commerce,’ and failed to require that the jury determine both the geographic scope of [Neurovision’s] rights and whether [Neurovision] maintained continuous use of the mark following the acquisition of any state law rights in the mark.”

Because it found the district court had “ignored our precedent, persistently cut off or excluded relevant testimony, and repeatedly instructed the jury incorrectly,” the Ninth Circuit took the unusual position of requiring that the case be reassigned to a different judge on remand.

The case cite is Neurovision Med. Products Inc. v. NuVasive, Inc., No. 11-55120, 2012 WL 3900682 (9th Cir. Sept. 10, 2012).

When you file an application to register a trademark with the U.S. Patent and Trademark Office, you take an oath.

You swear under penalty of perjury that the facts you have stated in your application are true.

For an intent-to-use application, that means you have a bona fide intent to use your mark in connection with all of your listed goods and services; and for a use-based application, you have actually used your mark — again, in connection with all listed goods and services.

You also swear that you own the mark; that no one else has a claim to your or a confusingly similar mark; and that the listed first-use date (for a use-based application) is accurate. Among other things.

Here’s the text of what you sign:

“The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. Section 1001, and that such willful false statements, and the like, may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. Section 1051(b), he/she believes applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; and that all statements made of his/her own knowledge are true; and that all statements made on information and belief are believed to be true.”

There’s a lot there. So beware.

The penalty for a false (or inaccurate) statement? Well, for practical purposes, you won’t go to jail or be fined for committing perjury, though you technically could. But you risk losing the very thing you’re trying to obtain: your trademark registration.

I’m saying all this to encourage you to make sure everything in your application is correct. If your lawyer completed your application, it’s still up to you to make sure it’s right. It’s your registration — not your lawyer’s — that may suffer the consequences.