Written by Mark Terry
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  a statement was false,  the falsity was intentional, and that  the false statements were material to obtaining or maintaining a registration. Moreover, fraud must be proven  to the hilt with clear and convincing evidence.” Slaska Wytwornia Wodek Gatunkowtch “Polmos” SA v. Stawski Distributing Co., Inc., Cancellation No. 92044806 (TTAB 2010).
The Bose holding was so revolutionary,
it spawned the following exemplary titles for law review and legal articles:
“Bose changes everything,” “Is there any reason to still be concerned about
fraud?” “Has Bose blown away the trademark fraud cancellation crusade?,”
“Curtain falls on fraud on the Trademark Office.” Legal pundits have opined
that Bose may have raised the bar for committing fraud on the
Trademark Office to a nearly unattainable level. Indeed, in light of the facts
of the Bose case, a reasonable argument can be made that fraud
has been virtually eliminated.
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.