Monday, November 30, 2009

Joe Dreitler Expounds On "The Dangers Posed by Bose," But CAFC Chief Judge Michel Sees No Problem

The editors of World Trademark Review have kindly allowed me to provide TTABlog readers with Joe Dreitler's latest article: "The Dangers Posed by Bose," December-January 2010 World Trademark Review 13- 17 (Issue 23). (Subscribe to WTR here). CAFC Chief Judge Paul Michel, author of the court's Bose opinion, responds to the criticism and explains "why the court came to the decision it did." [Also included is a side-bar entitled "Fraud in the post-Bose era" by someone named John L. Welch].

Mr. Dreitler (whose article entitled "Why The TTAB Got It Right In Medinol" was published at the TTABlog on August 7, 2009) maintains that the CAFC, in overturning Medinol,

"equated fraud in trademark oppositions with fraud in patent infringement lawsuits. In so doing, the court rode roughshod over the principles of use of a mark implemented by the Trademark Law Revision Act of 1988 and sanctioned the development of a US Trademark Register filled with deadwood and falsely obtained registrations."

Joseph Dreitler; Chief Judge Paul Michel

Judge Michel asserts that "[t]he concern that this decision allows people to be careless during the application process is easy to exaggerate and is being exaggerated." According to the Judge,

"First, the application must be supported by a sworn affidavit. When a lawyer takes an affidavit under oath he or she is putting his or her reputation on the line. If the lawyer knowingly provides false information in an affidavit he or she is liable to criminal prosecution for perjury. Second, the USPTO can disbar any attorney and refuse to allow that attorney to appear before it ever again. Third, lawyers who specialize in trademark work are repeat advocates before the USPTO so the worst thing a lawyer can do is lie or exaggerate as he or she will quickly gain a reputation for being someone that cannot be trusted." [TTABlog comment: I believe that most trademark applications are verified not by the lawyer, but by the applicant]

Judge Michel also asserts that "the key cases on which the court relies are trademark cases, not patent cases. The decision is firmly grounded in trademark law."

As previously noted (here), the USPTO is pondering what to do in view of Bose. The first question I have is: just how big a problem is this?

Text Copyright John L. Welch 2009.


At 11:25 AM, Anonymous Anonymous said...

It would be interesting to know how many applications are signed by lawyers as opposed to signed by an Applicant. I would guess that most applications which are filed by a lawyer are signed by a lawyer. Perhaps it is just easier.

Will the new revised signature revisions change that? The rules really do not seem that different.

At 6:31 PM, Anonymous Paul Reidl said...

I agree with Joe on this one. Given the TTAB's post-Bose decisions, which require detailed pleading of "fraud", I think that the doctrine may well be dead. That is unfortunate because the Medinol doctrine served a useful "policing" function in that it kept things honest. I have seen too many applications and registrations over the years that were far too broad; this is a real problem for a registration scheme that is supposed to be limited to the specific goods.

At 2:14 PM, Blogger Missionite said...

It seems to me that the Medinol standard was trying to build a house by chopping down trees and hoping they formed a house as they fell. In other words, it was broad, sloppy, and dangerous to innocent people that got in the way. To listen to Mr. Dreitler, one would think the Medinol standard was the only way of solving the problem of policing registrations. In my view that's not true. If you want to stop laundry list applications then you can require specimens for each item. This will be much more precise and efficient in that the level of fraudulence can now be measured by direct evidence instead of inference, and any good faith mistakes will either be caught by the TE or easily established as good faith mistakes by the chain of evidence. Fraud will then become much more visible and provable, without ensnaring innocents in bogus cases. The CAFC rightfully put a stop to a practice that put rightful Trademark owners and applicants in jeapordy over honest and good faith misunderstandings, and even when they "won" were forced to spend valuable time and money defending against cynical and dishonest charges. Fraud is a serious charge, and it shouldn't be cheapened by lowering the threshold to the point that it can become an offensive tool used against people who had no intention of decieving the board. Mr. Dreitler should consider what is fair to all parties, and not just what serves his interests as an attorney who wants to keep Trademark applications a dangerous world where no layman dare tread.

At 2:14 PM, Blogger Catherine said...

I always have the client sign - though less convenient it places the burden of verification where it belongs (in the hands of one who can actually verify the facts in the app.) And as an added bonus it keeps the client more involved in the process, as they should be.

At 2:48 PM, Blogger D. McEwing said...

I have the client sign the application form via the electronic filing system. However I am not sure the client receives the entire application from the Trademark office. This would obviously impact the clent verification role, i.e., confirming the date of first use in commerce.


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