Law.com Subscribers SAVE 30%

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

The Intellectual Property StrategistKickerSectionsNewsLJN Newsletters

Federal Circuit Overturns Central Component of TTAB's Medinol Doctrine

By Ted Davis
September 29, 2009

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.

Read These Next
The DOJ's New Parameters for Evaluating Corporate Compliance Programs Image

The parameters set forth in the DOJ's memorandum have implications not only for the government's evaluation of compliance programs in the context of criminal charging decisions, but also for how defense counsel structure their conference-room advocacy seeking declinations or lesser sanctions in both criminal and civil investigations.

The DOJ's Corporate Enforcement Policy: One Year Later Image

The DOJ's Criminal Division issued three declinations since the issuance of the revised CEP a year ago. Review of these cases gives insight into DOJ's implementation of the new policy in practice.

Use of Deferred Prosecution Agreements In White Collar Investigations Image

This article discusses the practical and policy reasons for the use of DPAs and NPAs in white-collar criminal investigations, and considers the NDAA's new reporting provision and its relationship with other efforts to enhance transparency in DOJ decision-making.

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.

A Lawyer's System for Active Reading Image

Active reading comprises many daily tasks lawyers engage in, including highlighting, annotating, note taking, comparing and searching texts. It demands more than flipping or turning pages.