USPTO Duty of Candor Includes "Clearly Established" Trademark Rights?

In "Patents Compared to Trademarks: The Duty of Candor/The Avoidance of Fraud," Tamsen Valoir and Professor David Hricik write in the November-December 2007 issue of The Trademark Reporter that, as with patent application prosecution, there are steps that can be taken to prevent the occurrence of fraud and the possible loss of trademark registration rights during trademark application prosecution. They suggest

• First, send trademark registration applicants a letter about the registration application oath and the duty of candor, explaining each in simple language.
• Second, disclose prior trademark uses to the USPTO, where it is “clearly established” that another user has rights in the subject mark, such as through settlement agreements, court judgments, and "trademark registrations where the registered marks are identical or confusingly similar."
• Third, if there is apparent confusion as to ownership of the mark, take additional steps to investigate true ownership. Mere licensees cannot acquire trademark registration rights.
• Finally, there may be an opportunity to “cure” any breach if an applicant amends its application prior to an opposition or cancellation proceeding being undertaken.

The authors acknowledge that, unlike the duty of candor in patent applications, there is no general “duty to disclose” known third party uses of the mark. However, they also propose that where another user's trademark rights are “clearly established,” then they must also be disclosed under eCash Techs., Inc. v. Guagliardo, 210 F. Supp. 2d 1138, 1149 (C.D. Cal. 2000) (“Only in the rare circumstance that another user of the same mark’s rights are ‘clearly established’ must this use be disclosed. In Rosso, the Federal Circuit indicated that rights may be ‘clearly established’ by ‘a court decree, by . . . a settlement agreement, or by a [trademark] registration.’ In most cases, the registration applicant has no obligation to report other users.”); and Robi v. Five Platters, Inc., 918 F.2d 1439, 1444 (9th Cir. 1990) (finding a right “clearly established” by an adverse court decision).