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Course Details

Course Information
  • smart_display Format

    On-Demand

  • signal_cellular_alt Difficulty Level

  • work Practice Area

    Trademark and Copyright

Date & Time
  • event Date

    Tuesday, April 18, 2023

  • schedule Time

    1:00 p.m. ET./10:00 a.m. PT

  • timer Program Length

    90 minutes

Credit Information

  • This 90-minute webinar is eligible in most states for 1.5 CLE credits.

$347.00
CLE
ALL

This CLE course will review TTAB and court treatment of fraud in the procurement and maintenance of trademark registrations. The panel will suggest best practices for trademark applicants, owners, and their counsel to mitigate the risk of findings of fraud arising from inaccurate recitations in trademark applications and post-registration maintenance filings.

Faculty

Jacqueline M. Lesser
Counsel
BakerHostetler

Ms. Lesser has represented trademark and copyright clients for more than 25 years, protecting and defending clients in the U.S. and internationally. Her clients include a wide array of companies in the consumer products, apparel, food and beverage, entertainment, pharmaceutical, media, and technical industries. Bridging litigation and transactional practices,Ms. Lesser supports technology and media clients on protection of their brands and creative content. She also works with clients on acquisition and commercialization of technologies, and on enforcement and defense of rights in federal court and administrative forums. As a trusted counselor and advisor, Ms. Lesser partners with her clients to achieve favorable results.

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Nancy Rubner Frandsen
Senior Counsel
Royer Cooper Cohen Braunfeld, LLC

For more than 35 years, Ms. Frandsen has guided clients not only through the core areas of trademark and copyright strategic counseling and portfolio management but also through the more complex areas of the practice, including enforcement before the federal courts and the Trademark Trial and Appeal Board (TTAB). Her in-depth knowledge of her clients’ businesses, from individual entrepreneurs to major corporations, enables her to support and advance their unique objectives and goals and has made her their go-to trademark lawyer. 

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Lesley M. Grossberg
Partner
Ice Miller LLP

Ms. Grossberg focuses her practice on all aspects of intellectual property litigation, including patent, copyright, trademark, trade secret and unfair competition litigation, as well as trademark prosecution and enforcement. Her experience extends to the e-commerce, financial services, social media, software, consulting, telecommunications and food services industries. Ms. Grossberg represents clients in federal district and appellate court litigation, as well as in inter partes proceedings before the Trademark Trial and Appeal Board (TTAB). She also represents clients in commercial litigation matters, including breach of contract, fraud and other general business cases, before state and federal courts and administrative agencies.

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Description

Many of the post-In re Bose rulings demonstrate the importance of avoiding complacency on the issue of fraud when applying for or maintaining trademark registrations. This is especially true in light of lingering uncertainty in pre-Bose case law on the consequences of findings of fraud where multiple-class applications or registrations are concerned.

Further, the USPTO has reiterated the agency's commitment to combating both fraudulent trademark applications and improper maintenance of registrations on the Register. There has been an influx of fraudulent foreign trademark applications--most originating from China--and the USPTO has taken steps, including training for examiners, increased number of audits, requiring correspondents to be U.S. practitioners, and using software to detect altered photos, to minimize the number of fraudulent applications. Additionally, the new expungement and reexamination procedures created by the Trademark Modernization Act of 2020 provide an important alternative avenue for clearing the register of marks that should never have registered, with a lower evidentiary burden of providing nonuse of a mark in US commerce as opposed to fraudulent misrepresentation and an intent to deceive.

While Bose set a high bar in the context of inter partes proceedings, trademark owners and counsel should be aware that other federal courts may not apply the same strict standard as the Federal Circuit court. Opinions from those courts demonstrate that the risk of a finding of fraud, although perhaps less than that which existed before Bose, remains a real one for trademark applicants and registrants alike.

Listen as our authoritative panel provides a brief overview of Bose and examines the subsequent treatment of fraud allegations by the USPTO since that decision at the TTAB and in the courts, including Chutter Inc. v. Great Management Group LLC and Fuji Medical Instruments Mfg. Co. v. American Crocodile Int’l Group. The panel will also discuss proving fraud and defeating those allegations and suggest best practices for avoiding findings of fraudulent procurement and maintenance.

Outline

  1. TTAB and federal courts' treatment of pleading and proving fraudulent prosecution and maintenance
  2. Defenses to fraud allegations
  3. Best practices to mitigate the risk of inaccurate applications and registrations and resulting findings of fraud
  4. USPTO efforts to combat fraud

Benefits

The panel will provide practitioners with a thorough understanding of:

  • The applicable standards governing fraud claims and defenses
  • How to leverage the current state of the case law
  • Strategies and procedures to mitigate exposure to findings of fraud