Post-Medinol Filing Considerations

© 2008 Jeremy J. Thornton

The Trademark Trial and Appeal Board’s litany of holdings in Medinol1 and its progeny make clear that material misrepresentations made during the course of prosecuting or maintaining trademark registrations can result in serious consequences, including the cancellation of any involved registrations on the ground of fraud.  Given the TTAB’s increasingly hard-line stance on the issue of fraud, trademark owners and practitioners should consider taking additional steps to avoid future inaccurate statements and minimize the potential impact of any inaccurate statements made in the past.

Review and Document

Before submitting any filing supported by a declaration,2 carefully review the identification of goods and services identified in the filing.  Parse out the identification into an item-by-item checklist and then obtain documentation (e.g., a photograph of the mark applied to the goods or an actual advertisement showing the mark in connection with the relevant services) for each individual item specified in the list.  This documentation should be kept as a permanent part of the trademark file.  If there are any goods or services identified in a filing that are not in use in commerce as of the signing date of the declaration, revise the filing accordingly before submission to ensure that the list is accurate.

Audit

Conduct an audit of the key trademark registrations within a trademark owner’s portfolio.  Review all filings involving identifications of goods and services that are supported by a declaration.  For each of these filings, make an item-by-item checklist of the identification of goods and services and attempt to verify the accuracy of the declaration.  For example, to confirm the accuracy of a declaration supporting a Statement of Use signed on March 1, 2000, for an application covering “hats, mittens, and scarves,” a trademark owner must have been using the mark in commerce for each of the three items in the application on March 1, 2000.  If there is reason to believe that a declaration supporting any of the filings is inaccurate, consider filing an additional application as a “safety net.”3

Strategic Filing

In some cases, a trademark owner may offer one or more “core” products or services that it anticipates providing indefinitely, but may also use its mark for a variety of other goods and services that change from time to time.  In such situations, it may be desirable to file one application covering the core products or services, and one or more additional applications for secondary products and services, especially where there is an extensive and changing list of secondary products and services.  By compartmentalizing the core products or services separately from secondary products and services, even if the registration for the secondary products and services were to be cancelled as a result of a fraudulent declaration, the owner would be able to maintain its registration for its core products or services without fear of challenge on the basis of a fraudulent declaration.

Similarly, where a trademark owner offers products or services that fall in multiple international classes, it may be desirable to file a separate application for each class, rather than combining multiple classes in a single application.  By taking this approach, a fraudulent declaration that would ordinarily render an entire multiple-class registration vulnerable to cancellation would instead impact only the goods or services within the single class covered by the registration.

Now more than ever, trademark owners cannot afford to be inattentive to factual representations made during the prosecution and maintenance of their trademark applications and registrations.  By implementing these and other common-sense measures, trademark owners and practitioners can help to safeguard their trademark portfolios vulnerability to attack on the basis of fraudulent misrepresentations.

1 Medinol Ltd. v. Neuro Vasx, Inc., 67 USPQ2d 1205 (TTAB 2003).  Medinol found fraud based on a trademark owner’s declaration that it was using its mark on all of the goods identified in its registration when, in fact, it was only using its mark on some of those goods.  As a consequence of this misrepresentation, the TTAB ordered the entire registration at issue cancelled.

2 Examples of such filings include: (1) statements of use, (2) statements of continued use for listed goods/services in Section 8 Declarations and Section 9 Renewal Applications, and (3) statements of continuous use for five years for listed goods/services in Section 15 Declarations.

3 See Trademark Manual of Examining Procedure §703 regarding the prohibition against duplicate registrations for guidance when preparing additional “safety net” applications.

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