Fraud at the TTAB: Leveraging the Lower Standard, Mitigating Risk of Cancellation

Course Details
- smart_display Format
On-Demand
- signal_cellular_alt Difficulty Level
- work Practice Area
Trademark and Copyright
- event Date
Tuesday, February 21, 2023
- schedule Time
1:00 p.m. ET./10:00 a.m. PT
- timer Program Length
90 minutes
-
This 90-minute webinar is eligible in most states for 1.5 CLE credits.
This CLE webinar will guide trademark counsel on the recent trend at the Trademark Trial and Appeal Board (TTAB) on pleading fraud. The panel will discuss best practices to mitigate the risk of inaccurate applications and registrations.
Faculty

Mr. Baird works with clients to address their most difficult trademark problems. He provides strategic guidance on trademark usage and clearance, branding strategies, domestic and worldwide portfolio management, litigation and enforcement, internet domain name and trademark disputes, licensing, and prosecution. His trademark and brand protection work has gained notoriety for the protection and registration of nontraditional trademarks, product configuration trademarks, and trade dress and product packaging trademarks.

Mr. Heavner's practice covers all aspects of trademark and unfair competition law, with a particular focus on trademark infringement, counterfeiting, and false advertising litigation. He assists clients in developing strategies for establishing and enforcing their trademark rights. Mr. Heavner counsels on issues regarding trademark clearance searching, trademark and copyright licensing, and certification mark programs.

Ms. Liou co-leads the firm’s Trademark Group and is a partner in the firm’s Intellectual Property Group. She maintains a broad intellectual property practice that includes trademark, false advertising, unfair competition, and copyright litigation, as well as domestic and international trademark prosecution. Ms. Liou has litigated trademark, copyright, and design patent infringement cases, as well as proceedings before the Trademark Trial and Appeal Board. In addition to litigation, she advises clients on complex intellectual property issues such as counterfeit and gray market goods. Her clients come from a wide range of industries and fields, including wireless networking, consumer electronics, computer software, financial services, medical devices, pharmaceuticals, plants, and food products.
Description
In a recent precedential decision, Chutter Inc. v. Great Management Group L.L.C. (TTAB 2021), the TTAB held that reckless disregard is enough to show an intent to deceive for proving fraud on the USPTO. Fraud in a trademark registration occurs when an applicant or registrant "knowingly makes a false, material representation of fact in connection with an application to register, or a post-registration document, with the intent of obtaining or maintaining a registration to which it is otherwise not entitled."
The Federal Circuit's 2009 decision In re Bose Corp. held that intent to deceive is an indispensable element of a fraud claim. However, the court left open the question of whether reckless disregard of the truth or falsity of a material statement made in a filing with the USPTO meets the intent requirement. Now, the Board has held that reckless disregard does satisfy this requirement.
Trademark applicants, owners, and counsel must deal with the evolving standards emerging from the TTAB's recent rulings on pleading fraud.
Listen as our authoritative panel of IP attorneys examines the recent trend at the TTAB on pleading fraud. The panel will discuss best practices to mitigate the risk of inaccurate applications and registrations.
Outline
- Recent developments and court treatment
- Pleading fraud
- Best practices
Benefits
The panel will review these and other vital questions:
- What is the current state of the law concerning allegations of fraud before the TTAB?
- What are the next steps for plaintiffs and defendants in the event of fraud pleadings?
- What strategies and procedures should trademark owners utilize to mitigate the risk of fraud allegations?
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