Sleeping Dogs May Lie But Trademark Applicants Cannot

• Published date: 22 February 2022
• Subject Matter: Intellectual Property, Trademark
• Law Firm: Parsons Behle & Latimer
• Author: Mr Patrick Ngalamulume

In a change of precedent, the U.S. Trademark Trial and Appeal Board (TTAB) held on September 30, 2021, that reckless disregard of the truth or falsity of a material statement in a trademark prosecution filing is sufficient to establish fraud in matters before the United States Patent and Trademark Office (USPTO). Chutter, Inc. v. Great Management Group, LLC and Chutter, Inc. v. Great Concepts, LLC, 2021 USPQ2d 1001 (TTAB 2021). Previously, the Federal Circuit left open the question of whether 'reckless disregard' is sufficient for a finding of fraud. In re Bose Corp., 580 F.3d 1240, 91 USPQ2d (Fed. Cir. 2009).

In Chutter, Inc. v. Great Concepts, LLC, the plaintiff alleged that, in the Combined Declaration of Use and Incontestability filed under Sections 8 and 15 of the Trademark Act, counsel for defendant Great Concepts falsely stated to the USPTO that there were no civil actions or USPTO proceedings pending against the defendant's DANTANNA'S mark used in relation to a steak and seafood restaurant. The plaintiff also alleged that the defendant made the statements with the intent to deceive the USPTO. At the time that the Combined Declaration was filed, there were two pending proceedings involving the DANTANNA'S mark.

The TTAB held that 'it is well settled the inclusion of false statements in a Combined Declaration of Use and...