Law.com Subscribers SAVE 30%

Call 855-808-4530 or email [email protected] to receive your discount on a new subscription.

The Intellectual Property StrategistKickerFeaturesSectionsNewsLJN Newsletters

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.'

This premium content is locked for Entertainment Law & Finance subscribers only

  • Stay current on the latest information, rulings, regulations, and trends
  • Includes practical, must-have information on copyrights, royalties, AI, and more
  • Tap into expert guidance from top entertainment lawyers and experts

For enterprise-wide or corporate acess, please contact Customer Service at [email protected] or 877-256-2473

Read These Next
Bankruptcy Sales: Finding a Diamond In the Rough Image

There is no efficient market for the sale of bankruptcy assets. Inefficient markets yield a transactional drag, potentially dampening the ability of debtors and trustees to maximize value for creditors. This article identifies ways in which investors may more easily discover bankruptcy asset sales.

Judge Rules Shaquille O'Neal Will Face Securities Lawsuit for Promotion, Sale of NFTs Image

A federal district court in Miami, FL, has ruled that former National Basketball Association star Shaquille O'Neal will have to face a lawsuit over his promotion of unregistered securities in the form of cryptocurrency tokens and that he was a "seller" of these unregistered securities.

Why So Many Great Lawyers Stink at Business Development and What Law Firms Are Doing About It Image

Why is it that those who are best skilled at advocating for others are ill-equipped at advocating for their own skills and what to do about it?

Blockchain Domains: New Developments for Brand Owners Image

Blockchain domain names offer decentralized alternatives to traditional DNS-based domain names, promising enhanced security, privacy and censorship resistance. However, these benefits come with significant challenges, particularly for brand owners seeking to protect their trademarks in these new digital spaces.

Coverage Issues Stemming from Dry Cleaner Contamination Suits Image

In recent years, there has been a growing number of dry cleaners claiming to be "organic," "green," or "eco-friendly." While that may be true with respect to some, many dry cleaners continue to use a cleaning method involving the use of a solvent called perchloroethylene, commonly known as perc. And, there seems to be an increasing number of lawsuits stemming from environmental problems associated with historic dry cleaning operations utilizing this chemical.