Could the ATJs Learn Something From the APJs Concerning Handling Fraud Issues?

In re Bose Corp., 580 F.3d 1240 (Fed. Cir. 2009) overruled the Trademark Trial and Appeal Board's (TTAB) opinion in Medinol v. Neuro Vasx, Inc., 2003 TTAB LEXIS 227 (Trademark Trial & App. Bd. May 13, 2003), which held that, when determining whether a trademark registration was obtained fraudulently, "[t]he appropriate inquiry is...not into the registrant's subjective intent, but rather into the objective manifestations of that intent." In this Analysis, Charles Gholz discusses In re Bose Corp.. He writes:

[T]he TTAB went on to hold that "[a] trademark applicant commits fraud in procuring a registration when it makes material representations of fact in its declaration which it knows or should know to be false or misleading." As we all know, on the patent side of the house, a party charging fraud has to prove, not only materiality, but also intent--and intent cannot be inferred solely from materiality. So, many patent practitioners charged with fraud get off on the so-called "pure heart, empty head" defense. . . .

     The TTAB's opinion in Bose Corp. v. Hexawave Inc. 88 USPQ2d 1332 (TTAB 2007) (which, on appeal, was In re Bose Corp.) contains a strong hint that the ATJs thought that the individual, a corporate attorney named Mark Sullivan, who had signed the declaration in question was lying--that, in fact, he did not actually have the misunderstanding to which he later testified at the time that he signed that declaration. However, they didn't hold that. They only said that it was "not reasonable" for him to have actually believed at the time that he signed the declaration what he said during his deposition that he had believed back then. Moreover, the panel noted pointedly (1) that "[i]t is not clear whether...[Mr. Sullivan] consulted with his outside trademark counsel...[concerning the point in question]" and (2) that, while "Mr. Sullivan testified that he inquired of...[his] paralegal [who probably was the one who prepared the document that Mr. Sullivan signed] how the mark was being used,...the paralegal testified that no such inquiry was made."

     I think that what is going on here is that the ATJs are reluctant to come right out and say that they think that a witness is lying. However, the APJs are less reluctant to do so--and they have found a technique which, I think, makes their findings to that effect largely bullet-proof on court review--at least on a straight appeal to the Federal Circuit and, arguably, in a 35 USC 146 civil action.

(footnotes omitted)

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