Trademark Owners and Applicants Beware – Overstating the Goods and Services of Your Mark Can Result in Cancellation of the Registration

The Trademark Trial and Appeal Board (“TTAB”) of the United States Patent and Trademark Office (“USPTO”) recently adopted a new standard for trademark applications that can have disastrous consequences for trademark owners. To understand the significance of the new standard, one must first understand the nature of trademark rights.

A trademark is any symbol, such as a word, name or logo, used by a party to identify its own goods or services and distinguish them from goods or services made or offered for sale by others. Generally speaking, trademark rights are acquired in connection with the specific goods and services with which the trademark is used by the trademark owner. For this reason, when a party applies to register a trademark with the USPTO, that party must specify the specific goods and services in connection with which it seeks to apply to register its trademarks. The broader the description of goods and services in the trademark application, the broader the scope of rights granted by the trademark registration. As a result, many parties historically included in the description of goods and services in their applications, goods and services beyond those in connection with which they actually used the trademark.

The new standard initially adopted by the TTAB in the case of Medinol Ltd. v. Neuro Vasx Inc., 67 U.S.P.Q.2d 1205 (T.T.A.B. 2003), and elaborated on in the TTAB’s decision in Hurly Int’l LLC v. Volta, Opposition No. 91158304 (T.T.A.B. Jan. 23, 2007), provides a significant disincentive for trademark owners to exaggerate the goods and services in connection with which their trademarks are used in their trademark applications. Distilled to its essence, the new standard adopted by the TTAB in those decisions is that any error in specifying the goods or services claimed in a trademark application, or in an affidavit submitted in support of the renewal of a trademark registration, gives justification for denying the application, or canceling the registration, as applicable, on the ground of “fraud.”

The degree of fraud required under the Medinol standard is relatively small. Unlike traditional notions of fraud, where intent to deceive must be proven with specificity and by clear and convincing evidence, the Medinol standard presumes fraud upon a showing of any mistake in the description of goods or services. In short, Medinol requires that no mistakes be made in listing the goods or services in a trademark application or trademark registration renewal.
The lessons to be learned from Medinol and the decisions which follow it are that each trademark applicant must engage competent legal counsel and that each applicant must have open and frank communications with the counsel it retains. The inclusion of any good or service in a trademark application which the trademark owner does not actually offer under the trademark jeopardizes the entire application or registration for that mark. There is no room for error. More so than ever, the responsibility for prosecuting trademark application and renewing registration should be delegated to experienced legal counsel.

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