Assessing Impact of Bose on Fraud Standard in Trademark Practice

In a prior post, Fraud Doctrine On Trademark Applications Remains Minefield, also NYLJ August 19, 2009, we discussed developments related to claims of fraud on the Patent and Trademark Office in obtaining trademark registrations and recent Trademark Trial and Appeal Board (TTAB or the Board) opinions on that issue. 

As anticipated, the Federal Circuit weighed in on the issue in an August 31 opinion entitled In Re Bose Corp., 580 F.3d 1240 (2009) and rejected the six-year old standard for showing fraud ― “should have known” of the falsity ― which the Board had previously adopted in Medinol Limited v. Neuro Vasx, Inc., 67 USPQ2d 1205 (TTAB 2003).  That standard, according to the Federal Circuit, constituted mere negligence and did not rise to the level of fraud.  Rather, fraud requires a showing of “subjective intent to deceive.” 

As explained in the opinion, intent to deceive generally implicates a knowing falsehood, which the facts in Bose simply did not support.  We discuss here what impact that decision will have on practice before the TTAB, what issues remain unresolved and what future developments in this area may be expected. 

Fraud Doctrine on Trademark Applications Remains Minefield

Since Medinol Ltd. v. Neuro Vasx, Inc., 67 U.S.P.Q.2d 1205 (TTAB 2003), the Trademark Trial and Appeal Board (“TTAB” or “The Board”), has taken a particularly hard line on misrepresentations in trademark applications.  In Medinol, the TTAB construed as fraud any false statement that the applicant “knew or should have known” was false.  Recent decisions have somewhat narrowed the application of this doctrine, yet it remains a potential minefield for trademark owners.