Recommended Reading: "Welcome To The Land Of Trademark Cancellation -- Where Not All Fraud Is Created Equal"

Janelle Barbier, Editor-in-Chief of the Santa Clara High Tech Law Journal, has written an interesting and informative article on the CAFC's recent ruling in Great Concepts, LLC v. Chutter, Inc. [TTABlogged here], in which a divided court panel reversed the TTAB's finding of fraud because "a Section 14 cancellation proceeding is not available as a remedy for a fraudulent Section 15 incontestability declaration." A .pdf of the article is available here.

ABSTRACT

The intellectual property community is buzzing about a recent decision by the U.S. Court of Appeals for the Federal Circuit handing down a ruling on trademark cancellation under the Lanham Act. A divided panel grappled with whether the Agency had authority to cancel a trademark registration as a punishment for filing a false declaration. The majority held that the Agency was precluded from canceling the registration as a remedy for fraud unrelated to the issuance or maintenance of that mark. However, the dissent took aim at the majority’s reasoning, making a compelling argument that green- lighting any type of fraud harms the general public. Ultimately, the decision upended Agency precedent––of nearly fifty years–– presumably because stare decisis is no shield for ultra vires agency action. As such, this outcome is an important stepping stone in the ever-changing landscape of the reviewability of agency decisions.

Read comments and post your comment here.

TTABlogger comment: Preferred citation: Barbier, Janelle, WELCOME TO THE LAND OF TRADEMARK CANCELLATION––WHERE NOT ALL FRAUD IS CREATED EQUAL, 39 SANTA CLARA HIGH TECH. L.J. 521 (2023).

Text Copyright John L. Welch 2023.