Trademark fraud claims aren’t going away, despite the fact that the Trademark Trial and Appeal Board (TTAB) has not found fraud in a single trademark opposition or cancellation since the Federal Circuit decided In re Bose in 2009, rejecting the prior “knew or should have known” standard in favor of the much more difficult and heightened “specific intent to deceive” the USPTO standard.
We continue to see these claims in the TTAB, but trademark fraud is being raised increasingly in federal district court cases too, perhaps to avoid In re Bose as controlling precedent, and perhaps because damage claims are possible under 15 U.S.C. 1120, and attorney fees also can be awarded in “exceptional cases” — all remedies unavailable in oppositions or cancellation before the TTAB.
In a trademark case filed just last month in U.S. District Court for the District of Minnesota, Renpure LLC, owner of the RENPURE federal trademark registration (covering personal care items, including hair care preparations) and recipient of a cease and desist letter from Ren Limited, a U.K. entity that owns an earlier federal trademark registration for REN (also covering personal care items, including hair care preparations) brought a declaratory judgment action, requesting that the court declare that: (1) the U.K. entity has no valid or enforceable trademark rights in the U.S., and (2) the REN trademark registration be cancelled due to Ren’s alleged fraud on the USPTO. Renpure’s complaint (pdf here) is also asking for damages resulting from the alleged fraudulently procured REN trademark registration under 15 U.S.C. 1120.
No doubt, this will be an interesting trademark fraud case to follow, and we’ll be sure to keep you posted, so stay tuned.
In the meantime, with Renpure fighting with Ren over the Ren trademark for hair care and personal care products, it makes me wonder about if and when Jeffrey Alan Deane a/k/a Chaz Dean’s WEN hair care trademark rights might enter the picture? You know, the Wen haircare infomercial folks?