Written by Mark Terry

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, Inc. 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.

Lessons Learned: 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.