A guest post by Anthony Verna
Trademark questions come up frequently among small business owners and freelancers. It’s an issue that I’ve see coming up often in the past couple of years as trademarks are being filed by trademark owners that don’t properly reflect the goods and services that trademark owner actually sells.
But it’s imperative that the goods/services description in the trademark application or registration match the goods and services that the trademark owner actually sells. Why? Because the penalties are harsh and can include cancellation of the trademark, meaning the loss of the right to use it.
The Trademark Process
When an applicant files a trademark application before the USPTO, the applicant signs an affidavit that the uses listed in the application are truthful and accurate. Because an affidavit is a sworn statement, given under oath that everything that has been represented in the application is, in fact, truthful, if any aspect of the application turns out to be false or inaccurate, the entire application is considered a “fraud on the USPTO.” The result of such “fraud” is the automatic cancellation of the registration that had been granted.
Avoiding Trademark Fraud
The USPTO has no way to investigate how trademarks are used in the marketplace. Instead, it is forced to rely on the claims made by trademark owners in their applications and other filings. To motivate trademark owners to supply accurate descriptions of their goods and services, the USPTO has, since 2003, treated any error in those descriptions — intentional or not — as a “fraud” as to the entire application, because trademark registrations and applications are considered as a whole and cannot be split or separated. The price of such fraud is draconian: the USPTO or its associated court, the Trademark Trial and Appeal Board, will cancel an entire registration if it learns of any absence of use of a mark as represented by an applicant.
The TTAB has concluded that a trademark owner should always know whether or not it has used the mark with each good or service it claims. As the TTAB’s logic goes, an applicant’s false statement about facts that are uniquely within its control, knowing that the Trademark Office will rely on that statement in acting on the application, is a fraudulent attempt to secure the benefits of a trademark registration. To avoid committing “fraud” in this way, a trademark owner must verify its claim to each item included in a description of goods and services.
This situation continues to grow in trademarks that are challenged for cancellation. It is important to review trademark applications before they are finished for the proper description of goods and services. It is important to review trademark registrations when your business plans change, also.