Fraud and Federal Registration of Trademarks

There are a number of grounds for alleging fraud in a trademark registration, see the chart below for examples.

The Lanham Trade-Mark Act, which governs federally registered trademarks, provides that a registration may be canceled if it was obtained by fraud. 15 U.S. C. § 1064(c) (1982). To establish fraud, the party objecting to the registration must produce clear and convincing evidence of a deliberate attempt to mislead the PTO into registering the trademark. Money Store v. Harriscorp Finance, Inc., 689 F.2d 666, 670 (7th Cir.1982). The Lanham Act, however, does not require a federal registrant to investigate and report to the PTO all other possible users of a similar mark. Rather, the registrant will be found to have acted fraudulently if, at the time he signed the statutory oath in the application for federal registration, he actually possessed knowledge of the existence of another person's right to use that mark in commerce. V & V Food Products, Inc. v. Cacique Cheese Co., 683 F. Supp. 662 (N.D. Ill., 1988)

FRAUD ON THE USPTO and Trademark Identifications of Goods and Services

 The USPTO recently explored the implications of the growing length of identifications of goods and services in U.S. trademark registrations and how accurately such identifications reflect actual use or intent-to-use, following the decision of the Court of Appeals for the Federal Circuit in In re Bose Corporation, 580  F.3d 1240, 91 USPQ2d 1938  (Fed. Cir.  2009) dealing with fraud and trademark applications. More information can be found at the USPTO web site by searching for “Fraud on the USPTO.”

Having an application that correctly reflects the actual use or intent-to-use goods and services is as important now as it has ever been. Correctly identifying goods and services is Step 5 of our Five Step Verification for a Strong Trademark.

To verify a potential trademark is strong, available to use, and ready to register, we go much further than typical trademark services. To maximize the commercial strength and minimize the weaknesses of a trademark, we start with these FIVE VERIFICATION STEPS:

1) Verify Inherent Strength,

2) Verify Right to Use,

3) Verify Right to Register,

 4) Verify the potential mark (as currently used) Functions As A Mark, and

5) Verify that the Goods and Services ID is both the correct and the maximum claim that are user can make and verify that the Goods and Services ID meets USPTO requirements before filing.

*** We don’t stop here but this is a good start. Call us at (651) 500-7590 for details.

Fraud on the USPTO

(trademark applications and registrations)




Torres v. Cantine Torresella S.r.l., 808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir. 1986).

Appeal from decision granting summary judgment and canceling registration.

*   Fraud in obtaining renewal of a registration amounts to fraud in obtaining a registration within the meaning of section 14(c) of the Lanham Act.

* Fraud in procuring a trademark registration occurs when an applicant knowingly makes false, material representations of fact in connection with the trademark application.  

* The obligation to refrain from knowingly making false, material statements applies with equal force to renewal applications.

* Registrant “knew or should have known” that the mark as registered and the specimen submitted were not currently in use.  


First International Services Corp. v. Chuckles Inc. 5 USPQ2d 1628 (TTAB 1988)

Opposition sustained on grounds of likelihood of confusion and fraud.

* Statements regarding the use of the mark on goods/services are material to issuance of a registration.

* Applicant committed fraud in its statement regarding the use of the mark on goods for which it only intended to use the mark.

* Intent:  The analysis must be whether the person knew or should have known of the falsity of the statement (citing Torres).

* The “has adopted and is using” language is clear and unambiguous and was central to the application.

Medinol Ltd. v. Neuro Vasx Inc., 67 USPQ2d 1205 (TTAB 2003)

Cancellation petitioner’s motion for summary judgment granted on issue of fraud.

* 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. [Note: subsequent case law has clarified that each class in a multi-class registration is assessed independently]

* Intent – The appropriate inquiry is not into the registrant’s subjective intent, but rather into the objective manifestations of that intent. Knowledge that the mark was not in use on the goods, or reckless disregard for the truth, is all that is required to establish intent to commit fraud.

* The Medinol rule  - if falsity is proven in the statement that the mark is not in use on all the goods listed in either a use-based application, a statement of use, or a §8 or §9 affidavit, then a finding of fraud could result. If fraud is found it requires cancellation of the whole registration.  McCarthy, § 31:73

Turbo Sportswear Inc. v. Marmot Mountain Ltd., 77 USPQ2d 1152 (TTAB 2005)


Opposition proceeding – motion to add counterclaim for cancellation of opposer’s registrations for fraud

* Grounds for counterclaim for cancellation became known during deposition of opposer; motion was timely

* Fraud cannot be cured merely by deleting from the registration those goods on which the mark was not used at the time of the signing of a use-based application or a §8 affidavit.

Standard Knitting, Ltd. v. Toyota Jidosha Kabushiki Kaisha, 77 USPQ2d 1917 (TTAB 2006).

Opposition proceeding - counterclaim for cancellation of opposer’s registrations for fraud granted

* Critical question is whether the marks were in use as of the filing date of a use-based application or as of the filing date of the SOU in an intent-to-use application. If the mark was in current use, the date of first use, even if false, is not fraud.

Grand Canyon West Ranch, LLC v. Hualapai Tribe, 78 USPQ2d 1696 (TTAB 2006)

Opposition proceeding – applicant’s motion to amend ID to delete certain services

Opposer did not plead fraud – just non-use

* As long as the mark was used on some of the identified goods/services as of the filing in a use-based application, in the absence of fraud, the application is not void in its entirety.

* The Grand Canyon Rule: When fraud is not proven, but the mark has not been used on all of the goods or services listed, the defect may be cured by deleting those goods/services on which the mark was not used or by amending a §1(a) application to a §1(b) basis.. McCarthy, § 31:73.

Maids to Order of Ohio Inc. v. Maid-to-Order Inc., 78

USPQ2d 1899 (TTAB 2006)

Petition to cancel for fraud; counterclaim for cancellation based on fraud

* Fraud occurs when an applicant or registrant knowingly makes false, material misrepresentations of fact. If there was a reasonable or legitimate basis for the representations, the applicant/registrant has not committed fraud.

American Flange & Manufacturing Co. v. Rieke Corp., 80 USPQ2d 1397 (TTAB 2006)

Opposition proceeding – included claim of fraud

* Fraud claim dismissed for failure to allege fraud with sufficient particularity.

Nevertheless, Board found insufficient evidence that applicant had the intent required to establish fraud.  “In the absence of clear and convincing evidence that applicant acted in bad faith, we conclude, on this record, that applicant did not commit fraud.”

Hurley International LLC v. Volta, 82 USPQ2d 1339 (TTAB 2007)

Opposition – motion for summary judgment as to claim of fraud granted

* The application would have been refused but for applicants’ misrepresentation regarding their use of the mark on all the recited services.

* Irrelevant that the registration had yet to issue – the timing of the misrepresentation is immaterial.

* However, a misstatement in an application as to the goods or services on which a mark has been used does not rise to the level of fraud where an applicant amends the application prior to publication.

Hachette Filipacchi Presse v. Elle Belle LLC, 85 USPQ2d 1090 (TTAB 2007)

Cancellation petitioner granted summary judgment on ground of fraud.

* Misunderstanding on the part of the attorney does not preclude a finding of fraud.  Applicant and its attorney share the duty to ensure the accuracy of the application and the truth of its statements.

* Amendment to ID, filed after motion for summary judgment and mistakenly entered by Post Registration section, does not preempt Board’s authority to determine fraud issue with respect to original ID.

Sinclair Oil Corp. v. Kendrick, 85 USPQ2d 1032 (TTAB 2007)

Opposer granted summary judgment on ground of fraud.

Post-publication amendment of the filing basis from 1(a) to 1(b) does not protect the application from a fraud claim.

Tri-Star Marketing LLC v. Nino Franco Spumanti S.R.L., 84 USPQ2d 1912 (TTAB 2007)

Denial of petition for cancellation.

* There is nothing fraudulent in providing an Identification of goods that includes both a broad product term and a specific product term so long as the applicant/registrant is using its mark on the specific product, and the specific product is encompassed within the broad product term (assuming the broad term is sufficiently definite for registration).  The converse situation is not true.

Call us at 1-651-500-7590 or Email: .

Not Just Patents® Legal Services can respond to your office action; file or defend an opposition of cancellation; or file a trademark application or patent application on your behalf.

Not Just Patents®

Aim Higher® Facts Matter

Not Just Patents® LLC

PO Box 18716

Minneapolis, MN 55418


Call 1-651-500-7590 or email for Responses to Office Actions; File or Defend an Opposition or Cancellation; Trademark Searches and Applications; Send or Respond to Cease and Desist Letters.

For more information from Not Just Patents, see our other sites:      

Steps to a Patent    How to Patent An Invention

Should I Get A Trademark or Patent?

Trademark e Search    Strong Trademark     Enforcing Trade Names

Common Law Trademarks  Trademark Goodwill   Abandoned Trademarks

Chart of Patent vs. Trade Secret

Patent or Trademark Assignments

Trademark Disclaimers   Trademark Dilution     TSDR Status Descriptors

Oppose or Cancel? Examples of Disclaimers  Business Cease and Desist

Patent, Trademark & Copyright Inventory Forms

Verify a Trademark  Be First To File    How to Trademark Search

Are You a Content Provider-How to Pick an ID  Specimens: webpages

How to Keep A Trade Secret

State & Federal Trade Secret Laws

Using Slogans (Taglines), Model Numbers as Trademarks

Which format? When Should I  Use Standard Characters?

Opposition Pleadings    UDRP Elements    

Oppositions-The Underdog    Misc Changes to TTAB Rules 2017

How To Answer A Trademark Cease and Desist Letter

Converting Provisional to Nonprovisional Patent Application (or claiming benefit of)

Trademark Refusals    Does not Function as a Mark Refusals

Insurance Extension  Advantages of ®

How to Respond to Office Actions  Final Refusal

What is a Compact Patent Prosecution?

Acceptable Specimen       Supplemental Register   $224 Statement of Use

How To Show Acquired Distinctiveness Under 2(f)

Trademark-Request for Reconsideration

Why Not Just Patents? Functional Trademarks   How to Trademark     

What Does ‘Use in Commerce’ Mean?    

Grounds for Opposition & Cancellation     Cease and Desist Letter

Trademark Incontestability  TTAB Manual (TBMP)

Valid/Invalid Use of Trademarks     Trademark Searching

TTAB/TBMP Discovery Conferences & Stipulations

TBMP 113 Service of TTAB Documents  TBMP 309 Standing

Examples and General Rules for Likelihood of Confusion

USPTO Search Method for Likelihood of Confusion

Examples of Refusals for Likelihood of Confusion   DuPont Factors

What are Dead or Abandoned Trademarks?

 Can I Use An Abandoned Trademark?

Color as Trade Dress  3D Marks as Trade Dress  

Can I Abandon a Trademark During An Opposition?

Differences between TEAS and TEAS plus  

How do I Know If Someone Has Filed for An Extension of Time to Oppose?

Ornamental Refusal  Standard TTAB Protective Order

SCAM Letters Surname Refusal

What Does Published for Opposition Mean?

What to Discuss in the Discovery Conference

Descriptive Trademarks  

Likelihood of Confusion 2d  TMOG Trademark Tuesday

Acquired Distinctiveness  2(f) or 2(f) in part

Merely Descriptive Trademarks  

Merely Descriptive Refusals

ID of Goods and Services see also Headings (list) of International Trademark Classes

Register a Trademark-Step by Step  

Protect Business Goodwill Extension of Time to Oppose

Geographically Descriptive or Deceptive

Change of Address with the TTAB using ESTTA

Likelihood of confusion-Circuit Court tests

Pseudo Marks    How to Reply to Cease and Desist Letter

Not Just Patents Often Represents the Underdog

 Overcome Merely Descriptive Refusal   Overcome Likelihood Confusion

Protecting Trademark Rights (Common Law)

Steps in a Trademark Opposition Process   

Section 2(d) Refusals

Zombie Trademark  

What is the Difference between Principal & Supplemental Register?

Typical Brand Name Refusals  What is a Family of Marks? What If Someone Files An Opposition Against My Trademark?

How to Respond Office Actions  

DIY Overcoming Descriptive Refusals

Trademark Steps Trademark Registration Answers TESS  

Trademark Searching Using TESS  Trademark Search Tips

Trademark Clearance Search   DIY Trademark Strategies

Published for Opposition     What is Discoverable in a TTAB Proceeding?

Counterclaims and Affirmative Defenses

©2008-2017 All Rights Reserved. Not Just Patents LLC, PO Box 18716, Minneapolis, MN 55418.

Call: 1-651-500-7590 or email: This site is for informational purposes only and is provided without warranties, express or implied, regarding the information's accuracy, timeliness, or completeness and does not constitute legal advice. No attorney/client relationship exists without a written contract between Not Just Patents LLC and its client. Past performance is no guarantee of future results. Privacy Policy Contact Us