Accuracy is crucial to the trademark registration process. Registrants are required to submit truthful applications to the United States Patent and Trademark Office (“PTO”) or face fraud liability. Pursuant to the Lanham Act, fraud liability is initiated by the submission of “false or fraudulent” statements in a trademark application. This language presents a critical problem for registrants because the terms false and fraudulent are not synonymous, and it is unclear what actually triggers fraud liability. As a result, the requirements for fraud liability and the corresponding standards for fraud have been in fluctuation over the past ten years. In 2009, the Federal Circuit decided In re Bose and implemented a standard for fraud that allows the submission of false statements to the PTO. This comment examines the conflicting standards for fraud that arise from this inconsistent statutory language and proposes a way to reconcile these terms.
Jacobi M. Fields, Acceptable Fraud? How Falsities and Misstatements Can Escape the Scope of the New Fraud Standard, 10 J. Marshall Rev. Intell. Prop. L. 410 (2011)