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Archived updates for Thursday, March 20, 2008

Trademark Declaration Audits for Fraud Remediation

In "The Fraud Factor: U.S. Trademark Owners Beware!," Carrie Webb Olson recommends
. . . conducting an audit of any trademark registrations that are key to the company's business and are likely to be enforced against second-comers to the market. A careful review of recitations of services and identifications of goods alongside marketplace specimens in support of each and every item listed in the registration will identify misstatements and potentially vulnerable registrations. Where problems are identified, the registrant should consider filing replacement applications with the PTO.
In Grand Canyon West Ranch LLC v. Hualapai Tribe, 78 USPQ2d 1696 (TTAB 2006), the
Board distinguished between a claim of fraud and a claim of nonuse of all of the covered
goods or services. According to Beth Chapman in "TTAB Decisions on Fraud in Submissions in Trademark Applications/Registrations,"
fraud requires an element of intent and must be proved by “clear and convincing evidence,” whereas intent is not an element to a claim of nonuse and an enhanced standard of proof is not required. Provided the mark was used on or in connection with at least some of the covered goods or services at the time a use-based application is filed, and fraud is not pleaded by the Opposer, Applicant may cure its
nonuse by deleting the goods or services on which the mark was not in use.
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