Federal Circuit Issues Opinion Reversing USPTO’s Improper Invalidation of Trademark

On October 18, 2023, the Federal Circuit issued an opinion in GREAT CONCEPTS, LLC, v. CHUTTER, INC., reversing the decision of the USPTO’s Trademark Trial and Appeal Board.  The Court analyzed very crucial point in the progeny of In re Bose— whether alleged fraud on the USPTO that could invalidate a trademark application also applies to other adjacent filings, including maintenance-type filings.

In the present case,  on March 8, 2010, Great Concepts’ attorney filed a combined Section 8 & 15 filing, which included a declaration relating to Great Concepts’ incontestable status. In doing so, the attorney affirmatively stated that there was no pending litigation on proceeding.  According to the Court–that was not accurate, because there was a cancellation proceeding at the USPTO, as well as a federal court appeal pending.

So why was this statement not considered fraud? The USPTO had no authority to cancel the mark under the statute.

The Federal Circuit noted that Section 14 of the Lanham Act provides specific instruction on what basis a mark can be cancelled:

At any time if the registered mark becomes the generic name for the goods or services, or a portion thereof, for which it is registered, or is functional, or has been abandoned, or its registration was obtained fraudulently or contrary to the provisions of section 1054 of this title or of subsection (a), (b), or (c) of section 1052 of this title for a registration under this chapter, or contrary to similar prohibitory provisions of such prior Acts for a registration under such Acts, or if the registered mark is being used by, or with the permission of, the registrant so as to misrepresent the source of the goods or services on or in connection with which the mark is used.  See 15 USC 1064.

The Federal Circuit noted that, because the Section 15 filing was not part of obtaining the registration, that Congress did not authorize the cancellation of the mark.  This is true even in the event of a false or fraudulent statement.  The key element here was that a Section 15 filing was not part of obtaining a registration.

This case likely impacts the USPTO’s recent goal to cancel thousands of trademarks due to purported fraud, especially for applicants in China utilizing the trademark filing system to sell household products on Amazon (because of the requirements of Amazon Brand Registry).  However, more clarity is needed regarding whether this case may impact the USPTO’s cancellation of thousands of applications (while retaining the filing fee) for independent applications who filed applications through Abtach, Ltd.,

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