On Remand, Great Concepts Escapes With TTAB Wrist Slap for its Fraudulent Section 15 Declaration

Last year, a divided panel of the CAFC reversed the TTAB's decision in Chutter, Inc. v. Great Management Group, LLC and Great Concepts, LLC [TTABlogged here]. The Board had granted Chutter's petition for cancellation of a registration for the mark DANTANNA'S for restaurant services on the ground of fraud, but the CAFC concluded that "a Section 14 cancellation proceeding is not available as a remedy for a fraudulent Section 15 incontestability declaration." The CAFC remanded the case to the Board for consideration of "whether to declare that Great Concepts’ mark does not enjoy incontestable status and to evaluate whether to impose other sanctions on Great Concepts or its attorney." [TTABlogged here]. The Board has now ruled on remand. Chutter, Inc. v. Great Management Group, LLC and Great Concepts, LLC , Cancellation No. 92061951 (February 25, 2025) [not precedential] (Opinion by Judge Michael B. Adlin).

The Board noted the CAFC'S holding that "the Board can remove the mark’s incontestability status," and that's what the Board did. That's all the Board did.

We find that removal of the registered mark’s incontestability status is necessary and appropriate. We decline, however, to refer the practitioner’s conduct to the Director of the Office of Enrollment and Discipline pursuant to 37 C.F.R. § 11.18(c)(2) and 37 C.F.R. § 2.193(f) for action under 37 C.F.R. §11.19 et seq. given the passage of time and the specific circumstances of this case. See generally , 35 U.S.C. § 32 (proceeding shall be commenced not later than the earlier of either the date that is 10 years after the date on which the misconduct forming the basis for the proceeding occurred, or 1 year after the date on which the misconduct forming the basis for the proceeding is made known to an officer or employee of the Office).

The USPTO was ordered to withdraw its Notice of Acknowledgement of Respondent’s Section 15 declaration and to include in the registration file "an indication that ion file should include that "the Notice of Acknowledgement has been withdrawn pursuant to this order."

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TTABlogger comment: CAFC Judge Reyna, in dissent, pointed out that "if the only consequence for filing a fraudulent affidavit in pursuit of incontestability is the loss of incontestability, there is no consequence, since the mark owner was not entitled to incontestable status in the first place."

P.S. Will Grand Concepts file a new Section 15 declaration when appropriate?

Text Copyright John L. Welch 2025.