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Fraud in Procurement of Registration Concerning Use of Mark Taints Entire Trademark Application for Stents

By ALM Staff | Law Journal Newsletters |

In Medinol Ltd. v. Neuro Vasx, Inc. (Cancellation No. 92040535), the Trademark Trial and Appeal Board (TTAB) agreed to enter summary judgment in favor of Medinol canceling Neuro Vasx's trademark registration for NEUROVASX based on fraud on the PTO. In August 2000, Neuro Vasx, was granted a registration for the mark NEUROVASX for 'medical devices, namely neurological stents and catheters.' As a result of this registration, Medinol's application for registration of the mark NIROVASCULAR for 'medical devices, namely stents' was refused.

In its Petition for Cancellation, Medinol argued that at the time Neuro Vasx submitted its required sworn affidavit to the PTO attesting to use of the mark, it had in fact not used the mark in connection with stents and, therefore, procured the registration by knowingly false or fraudulent statements. Neuro Vasx responded by denying that its intent in submitting its statement of use was fraudulent, arguing that the incorrect submission to the PTO was an 'oversight,' and filing a combined motion to amend its registration (deleting 'stents') and for summary judgment. Medinol objected to the proposed amendment and argued that ' even if it were allowed ' the amendment would not cure the fraud. Medinol's position was that: 'Allowing Registrant simply to amend its registration, without any factual showing regarding the merits of the fraud allegations or defenses thereto, essentially rewards Registrant for its fraudulent behavior since 2000.'

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