The Lanham Act provides for cancellation of a trademark “registration [that] was obtained fraudulently.” 15 U.S.C. § 1064(3) (2012). The Federal Circuit has held that such requires a showing of a subjective intent to deceive the Trademark Office. In re Bose Corp., 580 F.3d 1240, 1243, 91 U.S.P.Q.2d (BNA) 1938 (Fed. Cir. 2009). However, the Bose court left open whether reckless disregard for the truth suffices to make out a case of fraud. This article answers that question in the affirmative. We show that at common law, reckless disregard for the truth has long been recognized as sufficient to make out a case of fraud, and that has been carried over to several federal statutory contexts. Under the long-established rule that common law terms must be interpreted consistent with the common law absent some compelling statutory language to the contrary, the Lanham Act’s cancellation-for-fraud provision must be interpreted as extending to recklessness.
Recklessness at common law meant deliberately misleading someone about the state of one’s knowledge–“the pretense of knowledge when knowledge there is none.” However, when a representation is qualified to indicate that one’s knowledge may be limited, then the common law would not apply a recklessness standard. For example, a statement made “upon information and belief” would not support a fraud claim based on recklessness. We accordingly examine the formulas for verifications for various facts contained in both the Lanham Act and the Trademark Office electronic forms, some of which may qualify certain representations sufficiently to defeat a fraud cancellation petition based on recklessness. Finally, we suggest some changes the Trademark Office may want to consider making to its form verifications to clarify this issue.
Tal S. Benschar & Milton Springut, Does Reckless Indifference Suffice for a Cancellation Proceeding Predicated on Fraud?, 14 J. Marshall Rev. Intell. Prop. L. 50 (2014)