11th Circuit Finds No Fraud on the USPTO where Declarant had No Personal Knowledge of Use of Similar Marks

The United States District Court for the 11th Circuit surprised several legal commentators with its recent ruling of a trademark infringement case by holding that fraud upon the USPTO was not present if the declarant was personally unaware of other organizations using an identical or near-identical form mark.  Sovereign Military Hospitaller Order of Saint John of Jerusalem of Rhodes and Malta v. Florida Priory of the Knights Hospitallers of the Sovereign Order of Saint John of Jerusalem, Case No. 11-15101 (11th Cir. Sept. 11, 2012).  At issue was the standard for cancellation on the basis of fraudulent procurement of a trademark.

The Lanham Act, § 14(3), 15 U.S.C. § 1064(3), permits cancellation of a registered trademark on the grounds that the mark was procured by fraud.  Proving this type of fraud is difficult as there is generally a heavy burden upon the challenger to show that the applicant knowingly made false material representations of fact in connection with an application for a registered trademark.

The 11th Circuit, however, interpreted the declarations to the USPTO made by the applicant’s representative to be a “subjective” good-faith belief of the applicant’s superior rights to use the mark, notwithstanding the possibility the declarant’s belief was mistaken or the cause of “willful blindness.”  Consequently, the court held that that no fraud was present where the declarant lacked any actual, personal knowledge of another’s use of the same or similar mark.  Likewise, proving that the declarant “should have known” was also not enough to cancel the trademark registration on the basis of fraud.

Authored by Scott A. Meyer and John Sokatch.


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