All TTAB practitioners are familiar with the heightened standard of proof required to prove fraud before the USPTO. However, many forget that proving an intent to deceive the USPTO, not the falsity of the statement or its materiality, is the lynchpin of every fraud claim. In a recent decision, the TTAB reminded practitioners of this critical fact.
Petitioner Jason Green commenced a cancellation proceeding against a registration for the mark OMNI BIOTIC for food supplements, claiming priority and likelihood of confusion with his common law mark OMNIBIOTICS for supplements. Green also asserted a fraud claim against Respondent based on Green’s allegation that Respondent did not have a bona fide intent to use the OMNI BIOTIC mark when it filed its Section 66(a) application that matured into the subject registration.
The TTAB dismissed Green’s likelihood of confusion claim finding that he failed to show, by a preponderance of the evidence, that he used his OMNIBIOTICS mark in the United States before Respondent used its OMNI BIOTIC mark in the United States. The TTAB further ruled that, although minimal, Respondent’s sales in the United States were sufficient to establish priority.
The TTAB similarly found Green’s fraud claim deficient. To show fraud, Green needed to prove that (1) Respondent made a false representation to the USPTO, (2) the false representation was material to the registrability of the subject mark, (3) Respondent had knowledge of the falsity of the representation, and (4) Respondent made the representation with intent to deceive the USPTO. Decision, at p. 40.
Green alleged that Respondent had perpetrated a fraud on the USPTO because it introduced “no documentary evidence to show any intention of [sic] plans for using its mark in the United States at the time of filing the OMNI BIOTIC mark.” Id., at p. 41. The TTAB discounted this argument, noting, at the outset, that it did not need to decide whether Respondent had a bona fide intent because “that is not the claim before us.” To the contrary, Green asserted fraud. Accordingly, the TTAB held, “[E]ven if Respondent materially misrepresented to the USPTO that it had a bona fide intention to use the mark in commerce, Petitioner must show that the false representation was made with a ‘knowing intent to deceive.’” Id., at p. 42 (emphasis added).
The TTAB dismissed Green’s fraud claim, finding he made no effort to establish that Respondent had a “knowing intent to deceive.” Id. Instead, he simply assumed the existence of such intent based on the fact that Respondent purportedly made “knowingly false material representations of fact.” Id. The TTAB concluded: “Absent proof of the requisite intent to mislead the PTO, ‘even a material misrepresentation would not qualify as fraud under the Lanham Act.’” Id. at p. 43.
Takeaway: Proof of a knowingly false material representation of fact is not enough to prove fraud; petitioner must present sufficient evidence to establish that respondent made the knowing and false representation for the express purpose of deceiving the USPTO.
The decision is Jason Green v. Institut Allergosan Pharmazeutische Produkte Forschungs-und Vertriebs GmbH, Cancellation No. 92069600 (TTAB Sept. 1, 2021) (non-precedential).