Written by: Mark Terry

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.”

Lessons Learned: 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.