Recommended Reading: Joe Dreitler on "Why the TTAB Got It Right in Medinol"
Joe Dreitler is a bona fide trademark expert, and he has strong views on the Lanham Act's "use" requirement and the TTAB's fraud doctrine. I know, because Joe sends me his comments whenever I discuss a fraud case. I recently persuaded him to set out his thoughts on the current state of fraud jurisprudence, and he provides an important historical perspective on the subject in his article, "Why the TTAB Got it Right in Medinol." (pdf here).
Joe asserts that the Medinol decision is significant "because it laid down a bright line, objective standard for fraud."
Indeed, given this background and clear language of the statute and legislative intent in 1988 to change the Lanham Act to:
1) require section 44 applicants to have a bona fide intent to use the mark on every good and service for which they apply; and
2) require every applicant to have made bona fide commercial use on each and every good in their use based application, statement of use, section 8 declaration and renewal application,
it is hard to imagine how the TTAB could have done anything other than cancel the NEUROVASX registration for “medical devices, namely, stents and catheters.”
He finds it "regrettable" that the AIPLA, passed a board resolution in 2007 critical of Medinol, and then filed "what can charitably be called a disingenuous amicus curiae brief in the appeal to the CAFC of Bose Corp. v. Hexawave Inc., 88 USPQ2d 1332 (TTAB 2007), involving fraud based upon signing a sworn statement of use when there was no use of the mark for certain goods or services." [See TTABlog here].
If trademark owners are allowed to file false, sworn declarations of use with the USPTO and not automatically have their trademark registrations cancelled, what type of system does the U.S. have? Do we have a “permissive” use system? If the Federal Circuit agrees with AIPLA’s position we are back at a quasi token use system – which is exactly opposite to the language and legislative intent of the TLRA of 1988.
I'm sure you will find Joe's provocative article both interesting and informative. I certainly did.