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

Fraud at the TTAB: Leveraging the Lower Standard, Mitigating the Risk of Cancellation is available in Greenberg Traurig’s Client CLE Library. This free Library provides substantive legal knowledge, as well as CLE credit in several jurisdictions for registered users via on-demand programs. CLE credit is pending accreditation in the following jurisdictions: AZ, CA, FL, GA, IL, MN, NC, NJ, NV, NY, UT, & TX.

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Greenberg Traurig Shareholder Steve Baird and Associate Molly Littman will present the CLE webinar, “Fraud at the TTAB: Leveraging the Lower Standard, Mitigating the Risk of Cancellation,” on Thursday, March 16, 12:30-2:00 p.m. CT. This webinar will examine the recent trend at the TTAB on pleading fraud and discuss best practices to leverage and mitigate the risk of trademark fraud challenges.

In a fairly recent precedential decision from 2021, Chutter Inc. v. Great Management Group L.L.C. (TTAB 2021), the TTAB dramatically lowered the bar for proving trademark fraud, holding for the first time since the Federal Circuit’s 2009 Bose decision, that reckless disregard is enough to show an intent to deceive for proving trademark 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 quite firmly that intent to deceive is an indispensable element of a fraud claim, requiring those who plead trademark fraud to establish a specific intent to deceive the Trademark Office. 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.

Oral argument before the Federal Circuit in the Chutter case finally has been scheduled for March 6, 2023, so we should expect see the Federal Circuit’s ruling later in 2023. Trademark applicants, owners, and counsel for brand owners must deal with the ever-evolving standards emerging from the TTAB's recent rulings on pleading and proving fraud.