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Federal Circuit Overturns Central Component of TTAB's Medinol Doctrine

By Ted Davis

In one of the most closely watched trademark-related appeals in recent memory, In re Bose Corp., No. 2008-1448, slip op. (Fed. Cir. Aug. 31, 2009), the Federal Circuit overturned the central holding of Medinol Ltd v. NeuroVasx Inc., 67 U.S.P.Q.2d 1205 (T.T.A.B. 2003). Specifically, the Federal Circuit disapproved of the Board's practice of finding fraud if a registrant or applicant “should have known” that a material representation to the U.S. Patent and Trademark Office (“PTO”) was false. According to the court:

  1. a federal application or registration can be successfully attacked “only if the applicant or registrant knowingly makes a false, material representation with the intent to deceive the PTO”;
  2. the record evidence and testimony necessary to support a successful fraud-based challenge to an application or registration must be “clear and convincing”; and
  3. in contrast to the Board's practice of invalidating applications and registrations either in their entirety or with respect to entire classes of goods and services based on a finding of fraud, a more appropriate remedy may be to “restrict” those filings based on the non-use of the underlying mark in connection with individual goods and services.

Medinol

Although not the first opinion to address the standard for a finding of fraud on the PTO, Medinol has held the attention of trademark owners and practitioners alike since its issuance. In Medinol, the registrant filed a single-class intent-to-use application to register a mark for neurological stents and catheters. The registrant's statement of use averred that the mark was used in connection with all of the recited goods, and the resulting registration covered stents and catheters. In a subsequent cancellation action, the petitioner alleged that the registrant had not used the mark with stents as of the date of the statement of use. The petitioner argued that the inaccurate averment to the contrary constituted fraud not curable by any post-petition amendments. In entering summary judgment in the petitioner's favor, the Board found as a matter of law that the registrant knew, or should have known, that the mark was not in use on all of the recited goods. See 67 U.S.P.Q.2d at 1209-10. The Board then canceled the registration in its entirety, despite a successful request to amend the registration to delete stents. As it explained, “deletion of the goods upon which the mark has not yet been used does not remedy an alleged fraud upon the Office. If fraud can be shown in the procurement of a registration, the entire resulting registration is void.” Id. at 1208.

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