Discovering that your trademark registrations are vulnerable to cancellation because they may have been fraudulently obtained is disconcerting, to say the least, but discovering these vulnerabilities in the midst of litigation can be downright disastrous. Yet, this is exactly what is happening with increasing consistency as a result of a string of recent rulings by the PTO’s Trademark Trial and Appeal Board.

Each of these cases share one common element: the filing of an allegation of use that included products or services in connection with which the trademark had not been used. These allegations of use are filed in a number of contexts: (i) as part of a use-based application, (ii) as part of a

statement of use in connection with an intent-to-use application, and (iii) as part of a Section 8

affidavit demonstrating continuing use of a trademark. Such Section 8 affidavits must be filed between the fifth and sixth year following registration, and again each time the registration is renewed. To date, most of the fraud allegations seem to have arisen in connection with statements of use filed after intent-to-use applications are allowed or in connection with Section 8 affidavits.[1]