AIPLA Finds TTAB Fraud Standard Too Harsh

The American Intellectual Property Law Association (AIPLA) has adopted a series of resolutions stating its view as to what standard the TTAB should apply in determining the issue of fraud. (link here). The resolutions, set forth below, "essentially state that mistakes do not amount to fraud."

RESOLVED, that the American Intellectual Property Law Association (AIPLA) believes, in principle, that misstatements in the identification of goods and/or services in filings before the U.S. Patent and Trademark Office occasioned by an honest mistake, carelessness, inadvertence, oversight, language difficulties, misunderstanding of the law, or the like, and not made with an intent to deceive, should not constitute fraud.

RESOLVED, that the American Intellectual property Law Association (AIPLA) favors, in principle, that a trademark application or registration that contains a misstatement in the identification of goods and/or services occasioned by an honest mistake, carelessness, inadvertence, oversight, language difficulties, misunderstanding of the law, or the like, and not made with an intent to deceive, should be permitted to be amended or restricted under Section 18 [of the Lanham Act], 15 U.S.C. § 1068 to amend or delete the excess goods and/or services, and should not result in the entire application being voided or the registration cancelled.

RESOLVED, that the American Intellectual Property Law Association (AIPLA) believes, in principle, that where a trademark applicant or registrant erroneously states in filings before the U.S. Patent and Trademark Office that it is using the mark in commerce on or in connection with particular goods and/or services, such misstatement alone should not be deemed “material” for purposes of analyzing whether the applicant/registrant committed fraud on the Office if (1) the party was in fact using the mark in commerce on or in connection with other similar or related goods or services identified in the application or registration as of the filing dates for an application under [Lanham Act] Section 1(a), an affidavit under [Lanham Act] Section 8, a renewal under [Lanham Act] Section 9, a Statement of Use, or an Amendment to Allege Use; and, (2) the applicant/registrant would have been entitled to a registration covering those other goods or services.

TTABlog comment: Well, that's nice. But there are "mistakes" and then there are MISTAKES. Every applicant and registrant will assert that its error was innocent, that it had no evil intent, and that the error resulted from misunderstanding of the law, oversight, or "carelessness." Under the AIPLA's proposal, why bother to have a verification at all? I'm in favor of erring on the side of truth and carefulness in filing documents with the PTO, not nonchalance and carelessness.

I, for one, think that the term "fraud" is inappropriate in many of these cases because it does carry a connotation of an "intent to deceive." Perhaps the term "false oath" would suffice. But I still think there should be consequences for making a false oath, absent unusual circumstances.

Text Copyright John L. Welch 2007.