Florida Patent Lawyer Blog

What has happened in the courts and the Trademark Trial and Appeal Board (TTAB) since In re Bose? Surprisingly, not much. As a trademark attorney in Miami with a large trademark docket, fraud on the trademark office is a topical issue I continually follow.

You are well aware that last year's Bose decision - In re Bose Corp., 580 F.3d 1240 (Fed. Cir. 2009) - has completely changed the criteria for finding fraud on the Trademark Office. The Bose fraud criteria can be summed up as follows: "in order to prove fraud, [the charging party] must show that [1] a statement was false, [2] the falsity was intentional, and that [3] the false statements were material to obtaining or maintaining a registration. Moreover, fraud must be proven [4] to the hilt with clear and convincing evidence." Slaska Wytwornia Wodek Gatunkowtch "Polmos" SA v. Stawski Distributing Co., Inc., Cancellation No. 92044806 (TTAB 2010).

In light of the above, it is no surprise that since the Bose decision, there is not one reported District Court or Federal Circuit case regarding fraud on the Trademark Office (as of early Dec. 2010). Further, since Bose, there have been 43 cases involving fraud at the TTAB (as of early Dec. 2010), and of those 43, none have resulted in a finding of fraud. This illustrates how difficult it has become post-Bose to succeed in cancelling a registration based on fraud. As a result, a finding of fraud in any District Court or TTAB case could be negative legal history for Bose, would almost certainly be a reported decision and would surely be written about and scrutinized by the legal journals. But don't hold your breath, I suspect it will be a very long time before we see any forum find fraud after Bose.

Can you get attorneys fees in a Trademark Infringement suit under the Lanham Act? In short, the answer is yes, but only in exceptional cases. This is an issue that often comes up in lawsuits of all types, especially intellectual property cases. As a Florida Intellectual Property Attorney, damages are a topical subject I'm often asked about.

As the prevailing party under the Lanham Act, a party is entitled to an award of attorney's fees in "exceptional cases." 15 U.S.C. § 1117. Intentional, deliberate or willful conduct is usually sufficient to make out an "exceptional case." See, e.g., Playboy Enterprises, Inc. v. P.K. Sorren Export Co., 546 F.Supp. 987, 999 (S.D.Fla.1982) (attorneys' fees awarded where infringement was deliberate); Hallmark Cards, Inc. v. Hallmark Dodge, Inc., 634 F.Supp. 990, 999 (W.D.Mo.1986) (deliberate and intentional infringement makes the case "exceptional").

How to determine attorney's fees is another matter altogether. The Court normally applies the "lodestar" approach set forth in Hensley v. Eckerhart, 461 U.S. 424, 103 S.Ct. 1933, 76 L.Ed.2d 40 (1983) and Norman v. The Housing Authority of the City of Montgomery, 836 F.2d 1292 (11th Cir.1988). To arrive at the lodestar amount, the Court is required to multiply the number of hours reasonably expended on the litigation by a reasonable hourly rate for the services of the prevailing party's attorney. Norman, 836 F.2d at 1299. Once the Court arrives at the lodestar figure, it may be adjusted according to whether the results were excellent, whether the fee was fixed or contingent, and other factors. In intellectual property cases, other courts have held that "a party should be entitled to retain the most competent counsel available" because the issues are difficult and require great skill and experience on the part of the attorneys. Howes v. Medical Components, Inc., 761 F.Supp. 1193, 1196, 1199 (E.D.Pa.1990).

Can you get punitive damages in a Trademark Infringement case? In short, the answer is yes, but only in certain cases and certain jurisdictions. This is an issue that often comes up in trademark infringement cases where compensatory damages are not adequate to compensate the aggrieved party. As a Miami Trademark Lawyer currently litigating trademark infringement cases in the Southern District of Florida, I am constantly dealing with the subject of damages.

Punitive damages are damages intended to reform or deter the defendant and others from engaging in conduct similar to that which spawned the lawsuit. The purpose of punitive damages is not to compensate the plaintiff. The plaintiff in a trademark infringement case, however, will in fact receive the punitive damage award. Often, punitive damages are awarded where compensatory damages are deemed an inadequate remedy. The public policy behind punitive damages is that the court may impose them to prevent under-compensation of plaintiffs, to allow redress for undetectable torts.

The Trademark Trial and Appeal Board (TTAB) of the U.S. Patent and Trademark Office (USPTO)issued another decision evidencing how enormously difficult it is to invalidate a trademark registration on the basis of fraud on the USPTO. In the decision of MCI Foods v. Brady Bunte (TTAB 92046056), the TTAB found that a knowingly overly-expansive description of goods and services did not constitute fraud on the USPTO. As a Miami Trademark Lawyer with a full docket of trademark disputes, this case is instructive in its exposition of the law surrounding fraud on the USPTO.

The registrant owned a federal trademark registration for CABO PRIMO in association with a plethora of Mexican foods, such as burritos, tortillas, tacos, etc. The problem is that the registrant had ONLY used the mark in association with burritos. And the registrant testified to this in his deposition. That is, he admitted that he had not used the mark with any other products other than burritos. You'd think this would constitute fraud on the USPTO, wouldn't you? No.

The TTAB held: "While MCI sought to obtain a registration covering as broad a description of goods as possible despite the fact that it was not using the mark on all the goods listed in the description of goods, there is no evidence or testimony indicating that MCI was advised that it could not or should not apply for Mexican food products not identified by its ... mark." Consequently, the TTAB allowed the registration to stand and merely restricted the registration to burritos only. That is, the TTAB deleted all other goods, except for burritos, from the registration, which remained valid.

The educational moment here is how Courts respond when there is a misrepresentation during trademark prosecution that does not rise to the level of fraud on the USPTO. The answer is restriction of the registration - not invalidation of the registration. This and recent decisions of the TTAB seem to indicate that it's practically impossible today to invalidate a registration based on fraud on the USPTO. Restriction of the registration is more likely.

It's an issue that comes up often. A manufacturer makes a widget and sells it to a U.S. importer, who registers the mark associated with the widget. The manufacturer later claims it owns the mark and seeks to cancel the importer's trademark registration. As a Florida Trademark Lawyer, this is a situation I've seen more than once and I'm constantly looking for the courts' and the Trademark Trial and Appeal Board's (TTAB's) take on this issue. The TTAB's recent decision on this issue in the ZYTNIA vodka case affirms the widely held stance that it's usually the registrant that wins.

As originally reported in the Property Intangible blog, strike one against the manufacturer was that it brought the cancellation action almost 11 years after the mark was registered, well after incontestablity is established. Incontestability means, of course, that there are limited bases for cancelling a registration, and incorrect ownership isn't one of them. The manufacturer therefore had to rely on fraud as its basis for cancellation, i.e., the manufacturer. The court stated:

"claims that respondent fraudulently obtained the registration by asserting that it was the owner of the mark when, in point of fact, petitioner owned the mark. Because petitioner has alleged and attempted to establish a willful withholding of ownership information by respondent when it prosecuted the underlying application that matured into the involved registration, the ownership question may be addressed, but only in the context of fraud."

(italics in original.) Fraud has to be "proven to the hilt," showing that a statement was false, the falsity was intentional, and that the false statement was material to obtaining or maintaining a registration.

There's more than one lesson to be learned here. First, ownership of the mark is not a premise for cancelling an incontestable mark. Second, fraud on the USPTO is really hard to prove, since the Bose case.

The Trademark Trial and Appeal Board (TTAB) has issued another decision highlighting the "heavy burden" in proving fraud on the USPTO during prosecution of a trademark application (Ex Parte Metal Gear). As a Florida Trademark Attorney, I constantly monitor TTAB decisions for golden nuggets that help me prosecute my client's rights at the USPTO. The holding in this case illustrates how a "fraud on the USPTO" claim can and cannot be won.

The Court in In re Bose Corp., 476 F.3d 1331, 91 USPQ2d 1938, 1939 (Fed. Cir. 2009), set out the relevant standard for proving fraud. The TTAB stated in the Metal Gear decision: "To prove its claim of fraud, opposer would need to prove "to the hilt" with "clear and convincing evidence" that applicant knowingly" made a "false, material misrepresentation of fact" regarding the ownership of the relevant mark." In the Bose decision, the Court emphasized that proving falsity was insufficient. Citing earlier precedent, the Court noted, "absent the requisite intent to mislead the PTO, even a material misrepresentation would not qualify as fraud under the Lanham Act warranting cancellation." Id. at 1940, citing King Auto., Inc. v. Speedy Muffler King, Inc., 667 F.2d 1008, 1011 n.4, 212 USPQ 801 (CCPA 1981).

The TTAB went on to state: "Even if applicant's witness is incorrect in his belief that applicant owns the mark, however, opposer has not carried its heavy burden of proving the "subjective intent to deceive," which, the Court in Bose noted, "however difficult it may be to prove, is an indispensable element in the analysis." Id. at 1941, citing Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d 1357, 1366, 88 USPQ2d 1001 (Fed. Cir. 2008). Accordingly, since we find that opposer has not proven "to the hilt" with "clear and convincing evidence," the "subjective intent" of applicant "to deceive" the USPTO by falsely claiming ownership in the METAL GEAR mark, the claim of fraud fails."

The lesson here is that prosecuting a "fraud on the USPTO" claim is super difficult. If you can't get the registrant to admit under oath that he intended to deceive the USPTO, and you don't have a smoking gun document, the fraud claim will lose.

What constitutes abandoning a trademark, thereby opening the door for someone else to use it? How long can you cease use of a trademark without losing trademark rights? These are common questions I field regularly as a Miami Trademark Attorney. And the answer depends on a few factors.

The landmark case often cited in trademark abandonment disputes is Imperial Tobacco Ltd. v. Philip Morris Inc., 899 F.2d 1575, 14 USPQ2d 1390 (Fed. Cir. 1990), which involved the abandonment of a cigarette brand. We all know that two years of non-use of a mark is prima facie abandonment. The Imperial Tobacco Federal Circuit case stands for the holding that the trademark owner may rebut the presumption of abandonment arising from its non-use by presenting evidence showing that its non-use during that period was excusable, or evidence showing that, during the period of non-use, it maintained an intent to resume use of the mark. So what constitutes intent to resume and what constitutes an excuse?

The court in Imperial Tobacco set a high bar for proving intent to resume use. Even though the party claiming trademark rights took steps each year from 1981-1987 - the period of non-use - towards introduction of the cigarette brand bearing the mark, the court held this was not enough to prove intent to resume use. Specifically, the following activity was found to be inadequate: 1) developing a marketing strategy for the products bearing the mark, 2) seeking registration of the mark for the goods in question, and 3) making efforts to license the mark.

Similarly, in another case the registrant was found not to have the intent to resume use even though he took the following steps during the non-use period: 1) making trips abroad in an effort to establish stores under the mark 2) meeting with real estate agents and 3) visiting possible sites for the stores and examining stores of competitors. Richard v. Linville, 133 F.3d 1446 (Fed. Cir. 1998).

The only acceptable excuse outlined explicitly in the Imperial Tobacco case was the pending resolution of trademark litigation, see, e.g., La Societe Anonyme des Parfums Le Galion v. Jean Patou, Inc., 495 F.2d 1265, 1274, 181 USPQ 545, 550 (2nd Cir.1974); New England Duplicating Co. v. Mendes, 190 F.2d 415, 418, 90 USPQ 151, 153 (1st Cir.1951). But the court in Imperial Tobacco did not agree that pending litigation was the cause of the non-use in that case.

In conclusion, the bar is pretty high when attempting to rebut a presumption of abandonment of a trademark due to non-use. A successful rebuttal requires a substantial factual showing of a concrete and uninterrupted series of actions to get the mark in use in commerce during the entire period of non-use.