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Client Alerts

Federal Circuit Decides In re Bose Corp.

August 31, 2009

Client Alerts

Federal Circuit Decides In re Bose Corp.

August 31, 2009

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Fish & Richardson Client Alert – In re Bose Corp., _F. 3d _ (No. 2008-1448 August 31, 2009)

In a landmark decision, the Federal Circuit Court of Appeals ruled that one seeking to cancel a registration of a mark on the grounds of fraud must prove intent to deceive the Patent and Trademark Office (PTO) by clear and convincing evidence. This decision reversed an order by the Trademark Trial and Appeal Board directing cancellation of the incontestable registration of the famous Bose WAVE trademark. The Board had ruled that Bose committed fraud on the PTO when it applied for renewal of the registration claiming use based on transportation of goods, including audio tape players bearing the mark, to and from Bose for repair. Bose had discontinued the manufacture and sale of such goods when a CD player was substituted for the audio tape player. The Board said that the belief that such use was a proper basis for renewing the registration for audio tape players, confirmed under oath, was unreasonable.

The Court followed Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d 1357, 1366 (Fed. Cir. 2008), which ruled that one charging patent fraud must prove intent to deceive the PTO by clear and convincing evidence. The Court said, “There is no fraud if a false misrepresentation is occasioned by an honest misunderstanding or inadvertence without intent to deceive.” “When a trademark registrant fulfills the obligation to refrain from knowingly making material misrepresentations, ‘[i]t is in the public interest to maintain registrations of technically good trademarks on the register so long as they are still in use.’ Morehouse Mfg. Corp. v. J. Strickland and Co. , 407 F.2d 881, 888 (CCPA 1969). Because ‘practically all of the user’s substantive rights derive’ from continuing use, when a trademark is still in use, ‘nothing is to be gained from and no public purpose is served by canceling registration’ of the trademark.” Id.

It is rare for a trademark owner to willfully deceive the PTO, and this decision will make it harder for opponents to cancel a registration based on fraud. Of course, trademark applicants and owners should continue to be careful about making accurate representations to the PTO.

To view the Federal Circuit decision, please click here.

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