Client Alert - U.S. Statements of Trademark Use Had Better be Accurate*
There has been a sea change in U.S. trademark practice regarding statements of use, and the consequences of filing an inaccurate statement can be enormous.
When you state to the U.S. Patent and Trademark Office (USPTO) that you have used your mark in commerce (meaning interstate commerce within the U.S. or international commerce to or from the U.S.) on or in connection with all of the goods or services specified in your application or registration, you had better be accurate that your mark, in fact, has been used for every one of them..
In a string of cases starting with Medinol Ltd. v. Neuro Vaxx Inc., 67 U.S.P.Q. 1205 (T.T.A.B. 2003), the USPTO's Trademark Trial and Appeal Board (TTAB) has declared that even an allegedly inadvertent error in such a statement constitutes a 'fraud' on the USPTO. The result is not just that the goods or services for which there has been no use in commerce are deleted from the U.S. filing. Rather, the TTAB has ordered that the entire application or registration be declared void as to all goods and services, even those for which the mark actually has been used.
As this is being written, the appeal of one of these decisions is before the Court of Appeals for the Federal Circuit. So it remains to be seen whether the harsh result thus far ordered by the TTAB will be upheld by the appellate court. But for now, this issue is one that is roiling the waters of U.S. trademark practice.
U.S. trademark law is grounded on the requirement that trademark rights can only be asserted in relation to a mark in actual use. The ability to base a U.S. trademark application on an intention to use it, or on country of origin or international application or registration, is an exception. But as to all registrations, whether or not use-based, a statement of use in commerce is required at various times: (a) before a U.S. intent-to-use application can mature to registration; (b) to maintain any U.S. registration after the end of its fifth year (plus a 6-month grace period except for an extension to the U.S. of an international registration as to which there is only a 3-month grace period); and (c) to renew any U.S. registration before each tenth anniversary year (plus a 6-month grace period).
Most jurisdictions outside the U.S. permit broad specifications of goods and services, and allow those registrations to be maintained if the mark has been in use for any of the specified goods or services during a 3 to 5 year period. So it may especially come as an unexpected shock to many non-U.S. trademark applicants and registrants to discover that, when the USPTO asks for a statement of use regarding the specified goods or services, it really demands an accurate statement and that a careless misstatement may be incurable and may cause the entire U.S. registration to be cancelable.
What are you to do if your portfolio contains U.S. registrations covering broad lists of goods or services, and if you have made a statement to the USPTO that the mark has been used in commerce for all of those goods and services when this is not in fact the case? You are faced with a dilemma:
- Should you continue to ignore the problem in the hope that either the
interpretation of the law will change or that no one will discover the problem? - Should you amend the specification, before anyone raises the issue, to
delete those goods or services for which use of the mark has not been
made, even though it is not clear that this will cure the defect? - Is it better to make that amendment immediately, or when the next
statement of use is filed in due course? - Should you file a fresh application to register the mark for those goods
and services for which the mark actually has been used in commerce so
the validity of the resulting registration cannot be attacked?
U.S. trademark advisors may have different views as to the corrective measures to be taken. But one thing seems crystal clear - you should pay attention when you file your future statements of use with the USPTO. Don't just mix the actual use together with the intended use. An inaccurate statement (inadvertent or not) to the USPTO may give the 'infringer' grounds to invalidate your entire registration including those on validly claimed goods or services rendering your registration useless. Under some circumstances, such as where the 'infringer' began to use its mark after your U.S. application was filed but before you began to use your mark in commerce, a winning case could turn into a losing one.
U.S. trademark practice peculiarities like this one, if not heeded, can sink your ship.
* For a later development, see Client Alert - U.S. Federal Circuit Court of Appeals Rejects Medinol “Should Have Known†Standard of Fraud, Raising the Bar in Fraud Cases publsihed September 17, 2009,