Last Friday, the Supreme Court decided it will hear the Brunetti case, and take a closer look at Section 2(a) of the Lanham Act, the portion forbidding federal registration of trademarks having matter that is scandalous or immoral.

So, it appears my big prediction for 2019 is pointing in the affirmative direction:

“In terms of my big trademark prediction for 2019, it will be revealed whether the scandalous bar to federal registration is invalidated, whether or not the Supreme Court agrees to hear Brunetti.”

Now that the Court has decided to review Brunetti, it will be the one to decide whether the “scandalous” and “immoral” bars to registration violate the First Amendment, not the Court of Appeals for the Federal Circuit.

So, perhaps Chief Justice John Roberts was foreshadowing a review of Brunetti, when he was speaking in Minneapolis, and said: “Obviously, if any court finds an Act of Congress unconstitutional, we will take it . . . .

To piggyback on what I wrote back in October:

“There are plenty of good reasons for the Court to decide the constitutionality of the “scandalous” and “immoral” language, separate and apart from the disparagement language found to violate the First Amendment in Tam (here, here, here, here, here, and here).”

“If the Court does hear Brunetti, let’s hope Section 7 of the Lanham Act — the provision expressly noting that federal registrations are issued ‘in the name of the United States of America‘ — won’t be some uninteresting and ignored ‘nuance’ of trademark law to the justices.”

You may recall, I previously said this about the Federal Circuit’s overreach in Brunetti:

“What is striking about the CAFC ruling is its breadth. It isn’t guided by the Supreme Court’s Tam decision — requiring viewpoint discrimination — as the Tam Court found with disparagement.”

“The CAFC did not decide whether the ‘scandalous and immoral’ clause constitutes impermissible viewpoint discrimination, instead it seized on mere content as lower hanging fruit for invalidation.”

“The problem with focusing on content alone is that it proves too much. Trademarks, by definition, are made up of content, and many other provisions of federal law limit the right to register based on content, so, if this analysis holds, what additional previously-thought-well-settled provisions of federal trademark law will fall? Importantly, some even allow for injunctive relief: tarnishment.”

I’m thinking the Court will decide that the Federal Circuit went too far in Brunetti, and it will find a way to retain the “scandalous” bar to federal registration, though I’m doubting the “immoral” bar will survive, so stay tuned.

What are your predictions dear readers?

It’s not every day you’re presented with the unique opportunity of seeing and hearing the Chief Justice of the United States Supreme Court live in your own backyard, thanks very much Caleb!

Tuesday was that day, Chief Justice John G. Roberts, Jr. was here in Minneapolis for the 2018 Stein Lecture at the University of Minnesota’s Northrup Auditorium, as the Star Tribune reported.

SCOTUSBlog had this to say about the Chief Justice’s remarks. To listen to a recording of the event, to a sell out crowd of 2,700, check out MPR’s coverage, here.

Others reporting on this event don’t appear to care about trademarks as much as we do, so this may be the only place you’ll learn about Justice Roberts’ remarks relating to trademarks.

As you can imagine, knowing the vast body of legal subject matter confronted by the Supreme Court, clearly my ears perked up in hearing Justice Roberts utter the word “trademark” five times!

Moderator Robert Stein, former University of Minnesota Law School Dean, asked Chief Justice Roberts whether any highly technical subject matter might be unsuited for the Court to decide.

My mind went to the creation of the CAFC in 1982, specifically designed to hear all federal district court patent appeals, yet the Supreme Court has repeatedly reversed the CAFC since 2005.

Justice Roberts never mentioned the CAFC, instead he waxed a bit about trademark expertise:

“My answer, I think is, no, because usually no matter how complex and involved the legal issue, the case may seem, it implicates a broader legal question about, you know, the statute may be complicated, but the question is going to be, well, how do you go about reading the statute, what sources do you look at in a particular case. We don’t take technical legal cases because we like technical legal cases. They’re usually because they implicate a broader question. When I was practicing law, this is a speech I gave a lot of times, because I was not an expert in any area of the law. I like to think of myself as somebody who was good arguing in a particular court, in the Supreme Court, and so I’d have to, you know, convince someone who comes in with an important trademark case, who could hire the world’s leading expert in trademark law, or me.  And, I would tell them, look, the Supreme Court does not think your case is a big deal for trademark law. It thinks your case is a big deal for how regulations relate to the statute, how particular provisions in the statute should be read. So, you need somebody who, you know, can look at it in that broader perspective that the justices do, and you know, I would say, half of the time, they would say, well, I actually want somebody who knows something about trademark law, and that was understandable, but, then it would be, and, you know, they would get there in front of the Court, and they’re too expert in trademark law, and the justices just aren’t that interested in a lot of those nuances, and sometimes they would just be speaking over each other.”

My ears also perked up with Justice Roberts’ remarks about the Court’s fewer decisions:

“We have particular criteria for the cases we want to take. Obviously, if any court finds an Act of Congress unconstitutional, we will take it, we think as a matter of comity to the branches across the street, we should be the ones to say that, if any court is . . . .”

Do you see where I’m going with that remark, dear readers? I’m thinking about Erik Brunetti.

As you will recall, presently before the Supreme Court, is whether to hear the Brunetti case, and the issue presented in Brunetti is:

“Whether Section 2(a) of the Lanham Act’s prohibition on the federal registration of ‘immoral’ or ‘scandalous’ marks is facially invalid under the free speech clause of the First Amendment.”

Given the clarity of Justice Roberts’ statement, “if any court finds an Act of Congress unconstitutional, we will take it,” I’ll be amending my prediction otherwise, since the CAFC did just that, in Brunetti.

There are plenty of good reasons for the Court to decide the constitutionality of the “scandalous” and “immoral” language, separate and apart from the disparagement language found to violate the First Amendment in Tam (here, here, here, here, here, and here).

If the Court does hear Brunetti, let’s hope Section 7 of the Lanham Act — the provision expressly noting that federal registrations are issued “in the name of the United States of America” — won’t be some uninteresting and ignored “nuance” of trademark law to the justices.

Last Friday, both slanted arguments and red herrings were present during the 90 minute en banc oral argument before the Court of Appeals for the Federal Circuit (CAFC) in In re Tam.

The question invited by the CAFC to be addressed in Tam is whether Section 2(a) of the Lanham Act’s prohibition on the federal registration of trademarks that consist of or comprise matter that may disparage persons violates the First Amendment.

The CAFC previously had affirmed the Trademark Trial and Appeal Board’s decision in Tam upholding the USPTO’s refusal to federally-register THE SLANTS mark for “entertainment in the nature of live performances by a musical band,” concluding that when used in connection with applicant’s services, THE SLANTS would be perceived as disparaging to a substantial composite of the referenced group — persons of Asian descent, violating Section 2(a) of the Lanham Act.

After vacating that decision, now, the CAFC is asking whether Congress even has the power to refuse registration of a trademark consisting of or comprising matter that may disparage persons. And, although the court didn’t specifically ask for briefing on whether the scandalous and immoral portions of Section 2(a) must fall too under the same First Amendment theory, the lawyer for the American Civil Liberties Union, who was permitted 10 minutes of oral argument, as amicus curiae, encouraged the court to “embrace” that idea.

Although I have already shared some thoughts on the subject, here, after springing out of my chair a few times while listening to the audiotape of the Tam oral argument, I couldn’t resist sharing a few more thoughts on the subject. Some now, more later.

One of those jarring moments was when Circuit Judge Kimberly Ann Moore, the initial Tam panelist who appeared to spearhead the sua sponte Constitutional review en banc, consistent with her “additional views” appended to the original panel affirmance, asked our friend Ron Coleman (counsel for Mr. Tam) about how the court’s decision would impact the federal government’s copyright registration system.

This led to an unfortunate diversion and a substantial amount of time devoted to the purely academic question of whether Congress could amend the Copyright Act to add a disparagement provision that refuses registration of copyrights on that basis. It seems to me, this kind of question, assuming it is even relevant to the analysis, deserves far more than shoot from-the-hip responses, but since that is what was sought in oral argument, I’ll offer a few thoughts off the top of my head, instead of from the hip.

To my knowledge, correct me if I’m wrong Ron, but Congress has never forbidden and has no plans to forbid copyright registration to disparaging works of authorship, so a parade of horribles based on this fear seems misplaced. And the underlying premise and multiple suggestions during the oral argument that trademark should be treated like copyright is certainly not the law, not obvious, and the premise has multiple flaws, it seems to me.

First, copyright and trademark flow from very different origins and have very different purposes. Copyright protection flows from an express provision in the U.S. Constitution, whereas federal trademark protection flows from the very general Commerce Clause language permitting Congress to make laws affecting interstate commerce. In fact, Congress’ first attempt to create a federal trademark regime in 1870 failed, and was struck down by the Supreme Court, because it improperly relied upon the Copyright Clause of the U.S. Constitution for its authority.

Federal copyright law is preemptive and as a result States cannot seek to protect copyright under State law. Not so with trademark protection, there is no preemption, so States are free to and do protect trademark rights at the State level.

Moreover, a prerequisite to any enforcement of a copyright is federal registration, but again not so with trademarks, unregistered marks may be protected by the States at common law.

Moreover, in terms of Congress’ legitimate interest in discouraging all sorts of confusion in the marketplace, it is reasonable and accurate for the public and potential consumers to infer governmental approval of a trademark when the federal registration symbol (®) is used, because it is unlawful to use it without first having obtained a Certificate of Registration for the mark in question. But again, not so with copyright — there is no prohibition on the use of the copyright registration symbol (©) and there is no registration requirement in order to use it.

In terms of the governmental speech argument there are material differences there too. A trademark registration certificate, when issued by the federal government has its name and fingerprints all over it, positioned immediately adjacent to the approved mark in question. On the other hand, when a copyright registration issues, the material subject to copyright protection does not appear anywhere on the certificate, nor is it even attached to the certificate.

So, to suggest that all forms of IP (copyright, patent and trademark) should be treated the same ignores the careful balance that Congress struck over the last century and longer in legislating unique protections and limitations for each form of intellectual property.

There is so much more to say, but I’ll have to circle back for the rest later, sorry duty calls.

As our friend John Welch reported last week, the place to be on March 10, 2015, is Washington, D.C., at the 25th Annual “PTO Day,” sponsored by the Intellectual Property Owners Association:

PTODay

John will be part of the panel update on TTAB practice, and I’ll be providing the overview of Section 2(a) of the Lanham Act, that pesky provision of the federal trademark statute that bars registration of certain types of marks that violate public policy, including any trademark that “[c]onsists of or comprises immoral . . . or scandalous matter; or matter which may disparage . . . persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute . . . .”

The “scandalous” prong of Section 2(a) has barred registration of vulgar marks like 1-800-JACK-OFF, MOMSBANGTEENS, SEX ROD, and BULLSHIT, to name a few.

The “may disparage” prong of Section 2(a) has been invoked to refuse registration of racially-slurring marks like THE SLANTS, HEEB, and SQUAW, and to revoke registration of the R-Word, as disparaging to Native Americans, because it was found to be improperly issued.

No doubt, there are critics of Section 2(a) that question the constitutionality of these statutory bars to registration — I’m alright withholding registration and use of ® — the federal registration symbol — next to those words, because doing so doesn’t prevent their commercial use.

I’m looking forward to hearing Ron Coleman’s perspective on Section 2(a), as counsel for The Slants, a case currently on appeal to the Court of Appeals for the Federal Circuit, and Jesse Witten, as counsel for Amanda Blackhorse and other Native American petitioners who prevailed against the Washington R*dskins last June.

Ron has provided a preview of his thoughts on his Likelihood of Confusion blog, in a three-part series scandalously titled “Indian givers” (parts 1, 2, and 3), suggesting the USPTO assumed this role in ordering the cancellation of the R-Word trademarks of the NFL professional football franchise located in the nation’s capital.

From my perspective, scandal aside, the title of Ron’s series is a misnomer, since the evidence of record in Harjo and Blackhorse showed that the R-Word was improperly granted registration in the first place, so I’m thinking, it looks far more like a windfall to the team than a taking.

In any event, sympathy for the team and other Section 2(a) losers is also unwarranted given the law for some seventy-five years: “The field is almost limitless from which to select words for use as trade-marks, and one who uses debatable marks does so at the peril that his mark may not be entitled to registration.”

Do you think that the registration prohibitions of Section 2(a) will withstand constitutional scrutiny? The Justice Department intends to see to it.

Remember this little gem on trademark pronunciation from the DuetsBlog archives two years ago?

Judging from a search of Google, the JD Supra version of this post has gotten lots of traction.

Well, a few weeks ago the Court of Appeals for the Federal Circuit (CAFC) issued an interesting decision on trademark pronunciation in the likelihood of confusion analysis. John Welch reported on and discussed the CAFC’s Stoncor Group, Inc. v. Specialty Coatings, Inc. decision here.

So, how would you pronounce StonCor’s STONCLAD, STONHARD, and STONSHIELD marks, if you were shopping for epoxy coatings for use on concrete floors? Long “o” or short “o” sound?

This is what the Trademark Trial and Appeal Board (TTAB) said in StonCor’s 2012 opposition challenging ARMORSTONE for a competitor’s related goods, hearing no likelihood of confusion:

“At the outset, we note several key distinctions between applicant’s ARMORSTONE and each of opposer’s STONCLAD, STONHARD, and STONSHIELD marks. Applicant’s mark incorporates the grammatically correct spelling of the word ‘stone.’ Opposer’s marks, while pronounced by counsel for opposer at oral argument as ‘stoneclad,’ ‘stonehard,’ and ‘stoneshield,’ are not spelled in a manner consistent with this pronunciation. Rather, according to the spelling of each mark, the letter ‘o’ is pronounced as a short vowel sound as opposed to the long vowel sound. Opposer did not introduce any evidence at trial that ‘STON-‘ would be pronounced and perceived by prospective consumers as the equivalent of the word ‘stone.'”

The CAFC heard the evidence differently, agreed with StonCor that the record evidence supported a long “o” sound, reminded the TTAB about the rules on trademark pronunciation, and held the TTAB erred by creating its own pronunciation rule (not supported by substantial evidence):

“There is no correct pronunciation of a trademark that is not a recognized word. . . . Where a trademark is not a recognized word and the weight of the evidence suggests that potential consumers would pronounce the mark in a particular way, it is error for the [TTAB] to ignore this evidence entirely and supply its own pronunciation.”

In the end, however, the TTAB’s erroneous view on trademark pronunciation was considered harmless, because there was other substantial evidence to support no likelihood of confusion.

For brand owners that adopt marks not consisting of recognized words, this normally will yield a broader scope of protection when it comes to enforcing those rights, because of the variety of possible ways consumers and prospective consumers will perceive the prior mark.

As StonCor demonstrates, however, similar pronunciation of a portion of the marks at issue, alone, may not be enough to support a likelihood of confusion.

A couple of months ago you will recall that the USPTO’s Trademark Trial and Appeal Board (TTAB) held “Pretzel Crisps” generic for pretzel crackers.

Here are links to our previous coverage of the case:

It appears the TTAB’s decision will not be the final word on the matter, as last week, Princeton Vanguard gave notice it is appealing that unfavorable decision to the U.S. Court of Appeals for the Federal Circuit (CAFC).

The decision to appeal to the CAFC (as opposed to asking for a de novo trial in federal district court) is an interesting one given the CAFC’s SCREENWIPE genericness precedent — I’m thinking that will be a difficult case and precedent to avoid, but we’ll see how it goes.

Another consequence of selecting the CAFC as the reviewing court is the inability of either side to introduce further evidence in the case.

Our friend John Welch over at the TTABlog efficiently explains the CAFC’s genericness precedent this way (albeit in the ex parte context):

“[T]he PTO’s evidentiary burden in establishing genericness ‘is different depending on the type of mark an applicant seeks to register.’ For compound terms, it is sufficient to produce evidence ‘that each of the constituent words is generic, and that the separate words retain their generic significance when joined to form a compound that has ‘a meaning identical to the meaning common usage would ascribe to those words as a compound.'” In re Gould Paper Corp., 5 USPQ2d 1110, 1111-1112 (Fed. Cir. 1987) (SCREENWIPE held generic as applied to premoistened antistatic cloths for cleaning computer and television screens). However, when a mark is “more in the nature of a phrase, the PTO ‘must provide evidence of the meaning of the composite mark as a whole.'” In re American Fertility Society, 51 USPQ2d 1832, 1837 (Fed. Cir. 1999) (SOCIETY FOR REPRODUCTIVE MEDICINE not generic for association services in the field of reproductive medicine because where the mark is a phrase evidence that each separate term is generic is not sufficient).”

I’m calling “Pretzel Crisps” a compound term governed by In re Gould Paper Corp., not a phrase governed by In re American Fertility Society, do you agree?

In the end, I’m not sure it really matters, as the TTAB also held it would have found “Pretzel Crisps” generic under either test, given all the evidence of record.

How do you come down on this one?

 

 

 

 

 

 

 

 

A hot dog is a type of sandwich, and “footlong” denotes a type, category, or class of sandwiches (those measuring about a foot in length), making “footlong” a generic term and part of the public domain — incapable of serving as a trademark for any kind of sandwich.

This is true despite Subway’s claimed use of FOOTLONG since 1967, the more than four billion FOOTLONG sandwiches sold between 2000 and 2009, and the near doubling of annual FOOTLONG sales from $541 million to $936 million, following its highly successful $5 FOOTLONG marketing campaign which started in 2008.

Any secondary meaning in FOOTLONG that might have resulted from the extensive marketing campaign, is de facto, so it doesn’t count for distinctiveness — it doesn’t create enforceable rights, because purchasers readily understand that FOOTLONG identifies 12 inch sandwiches.

These are some of the findings and conclusions by the TTAB last week in the long-anticipated decision Sheetz of Delaware, Inc. v. Doctor’s Associates, Inc., rejecting Subway’s desire to own FOOTLONG as a federally-registered trademark for “sandwiches, excluding hot dogs.” For a more complete analysis of the 61-page decision, check out John Welch’s coverage over at the TTABlog.

If you’ve followed my writing on the subject, you’ll fully appreciate that the TTAB’s decision finding FOOTLONG generic for sandwiches — even if hot dogs are excluded — is not surprising:

The decision was written to be bullet-proof on an appeal that the TTAB assumes Subway will file. So, for the sake of completeness, the TTAB decided that even in the unlikely event it is wrong about genericness and FOOTLONG is actually descriptive, the evidence still does not show acquired distinctiveness. If there is an appeal it will be interesting to see whether Subway pursues a de novo federal district court trial (which would permit the introduction of new evidence) or whether it takes the existing record up to the Court of Appeals for the Federal Circuit (CAFC).

My prediction is it won’t make a difference, the result will be the same, FOOTLONG is generic for sandwiches, just like LIGHT and LITE is for beer. In my opinion, Subway’s pursuit was doomed from the start with its initial specimen of use from November 2007:

As the TTAB noted: “If the above-noted specimen shows trademark use of “Footlong,” then it must also show trademark use of 6″ Sub and Wrap.  As used in the specimen all three terms are displayed in the same manner (font, size, color, position), and used in the same way (i.e., to identify a type of sandwich).”

Of course, as shown at the top of this post, now when you see Subway’s FOOTLONG advertising (and in-store signage) it is littered with TM notice symbols closely associated with the term FOOTLONG. I’m not sure when that tactic started, but I believe it has been going on now for at least a couple of years. I remember being struck by the tiny after-the-fact TM stickers applied to the menu signage at the Subway located in the Minneapolis – St. Paul airport when I started following the Subway trademark bullying story a few years back.

With more than 26,000 Subway locations throughout the United States, and all the advertising done on the local and national level for the largest restaurant chain in the world, I shutter to think how many errant TM symbols are swinging in the wind, must be millions upon millions.

Even if an appeal of this decision would be hopeless for Subway, it might be worth filing one to at least avoid immediately facing the decision of whether to remove the multitude of stickers and the millions of false or misleading TM notices in advertising and on signage, given the TTAB’s ruling that FOOTLONG is not and cannot be a trademark for sandwiches.

Having said that, if an appeal over-turned the genericness part of the ruling, that would avoid the need for removal, even if the lack of acquired distinctiveness portion of the decision were affirmed, since it would keep the door open for Subway proving acquired distinctiveness down the road, and surely it would be able to freely use the TM symbol while it is still making that effort.

I’m just not seeing it though, I believe the genericness ruling will stand, but what do you think?

Spring break brings my family to Las Vegas this year; when we made the plans, we never anticipated leaving behind better weather in Minneapolis, especially this time of year. Oh, well. At least it isn’t slowing down our hiking adventures in the amazing Red Rock Canyon area.

Meanwhile, closer to the strip and all the over-the-top commercial activity, one of the notable trends on steroids here in Vegas is the frequent use of lower case branding and visual identity — I’ll be sure to share some photos on this subject  later on. Until then, please remember these oldies, but goodies on the subject:

  1. lower case branding & visual identity
  2. i am ben
  3. Mayo Clinic Logo loses lower case visual identity

Since I’m largely unavailable and figuratively fishing in Vegas at the moment, if you’re looking for some fresh content on the nuances of trademark law, I’d encourage you to check out John Welch’s post today on the TTABlog. In his typically capable fashion, he reports on an appeal of a very interesting likelihood of confusion case involving federal registration of the automobile tire marks MILANZA, POTENZA, and TURANZA.

I remember being surprised a couple of years ago when the USPTO’s Trademark Trial and Appeal Board found MILANZA unlikely to be confused with Bridgestone’s prior POTENZA and TURANZA marks. As John reports, the Court of Appeals for the Federal Circuit just reversed that decision, with this little gem and sober reminder for our naming consultant readership:

“There is a heavy burden on the newcomer to avoid consumer confusion as to products and their source. *** This court has cautioned that there is ‘no excuse for even approaching the well-known trademark of a competitor.’ *** This caution applies here; the prior user is entitled to the traditional protections of its marks of trade, as against newcomers choosing a confusingly similar mark for the same goods.”

Last, as I close out this potpourri post, I’d like to thank Marsha Ajhar of Hartman Craven and Katherine Brown of IBM, for their grand hospitality and the very kind invitation to speak last week at the International Intellectual Property Society’s monthly meeting in New York City, where we had a great discussion on trademark enforcement strategies and avoiding the social media shame-wagon in the context of trademark bullying.

Just over two years ago, we reported on the CAFC’s landmark trademark fraud decision of In re Bose, here, here, and here.

In addition, I wrote a piece for Thomson Reuters’ Client Times Online called True Lies, Trademark Fraud, and the Medinol Detour: The Federal Circuit Reverses In re Bose."

Our friend, John Welch over at the TTABlog, on the second anniversary of In re Bose, genuinely piqued my interest with his recent and seductive post entitled "TTABlog Special Report: List of Fraud Claims Sustained by TTAB Since In re Bose Corporation."

I thought to myself, what have I missed, but apparently and thankfully nothing, as John explained:

"None. The TTAB has not sustained a single fraud claim in the two years since the CAFC issued its decision in In re Bose Corporation. Nor has it decided whether reckless disregard for the truth is sufficient to satisfy the ‘intent’ element."

I’m thinking that at least until the CAFC provides further guidance on the subject or the TTAB goes out on a limb and decides to adopt "reckless disregard" even before the CAFC decides whether that standard is sufficient, we’ll continue to await decisions that grant successful trademark fraud claims, at least at the USPTO and TTAB.

I’m also thinking that if trademark fraud is an important claim in a case, the client might be best served litigating and proving that claim in federal district court, at least for the time being, since there is at least one federal district court (District of Minnesota) that has sustained a jury’s finding of trademark fraud under the more stringent In re Bose standard, and that decision has now been affirmed by the Eighth Circuit Court of Appeals.

Whatever the forum though, why on earth do trademark attorneys continue to sign verified use statements on behalf of their clients and submit them to the USPTO, when it appears that they are the only class of human beings capable of committing trademark fraud on the USPTO, at least as far as the TTAB is currently concerned.

If you want more, please join us at the Midwest IP Institute on Thursday and Friday, more info here.

Aaron Keller was busy yesterday making weighty predictions about the basis for our next economy: The Designed Economy.

As I prepare to provide attendees at the Midwest IP Institute tomorrow with a trademark fraud update — today, I thought I’d provide a preview — and even go out on a small limb — making a couple of predictions of my own, relating to the far more scintillating topic of trademark fraud before the United States Patent and Trademark Office (USPTO).

As you may recall last year, I wrote about the Court of Appeals for the Federal Circuit’s (CAFC) groundbreaking decision In re Bose, here, here, here, and here, in which the CAFC rejected the Trademark Trial and Appeal Board’s (TTAB) less stringent "knew or should have known" negligence standard of fraud, instead coming down in favor of a much more stringent — and difficult to prove standard — subjective intent to deceive the USPTO.

Over the last year, much attention has been given to the fact that the CAFC left open and chose not to decide, in In re Bose, the question of whether a "reckless disregard for the truth" may suffice in proving the necessary subjective intent to deceive. Many argue that "reckless disregard" should suffice in proving fraud for the sake of the integrity of the U.S. trademark system, to ensure that trademark owners and their counsel are kept honest and/or don’t become lazy or complacent about the solemnity of the oath in their trademark filings.

Reading the tea leaves, I’m predicting that the TTAB will not wait for the CAFC to decide the issue and the TTAB will rule that "reckless disregard" constitutes a sufficient level of culpability to infer a specific intent to deceive. If so, what does that mean? What kind of trademark conduct might satisfy a "reckless disregard" standard?

Continue Reading Trademark Fraud = Reckless Disregard For The Truth?