90 F.4th 1333
Fed. Cir.2023Background
- Great Concepts registered the mark DANTANNA’S in 2005 (Reg. No. 2929764). A cancellation petition by Dan Tana/Chutter was pending and an appeal from related district-court litigation was ongoing when Great Concepts’ former attorney filed a combined Section 8 (continued use) and Section 15 (incontestability) declaration in March 2010.
- The Section 15 portion falsely stated there were no pending proceedings; that statement was untrue as both the PTO cancellation and an Eleventh Circuit appeal were then pending.
- Chutter petitioned in 2015 to cancel the registration based on the allegedly fraudulent Section 15 affidavit. In 2021 the Trademark Trial and Appeal Board found fraud and cancelled the registration under Section 14.
- Great Concepts appealed to the Federal Circuit. The court assumed (but did not decide) the Board’s factual finding of fraud and focused on statutory interpretation of the Lanham Act.
- The Federal Circuit held Section 14 authorizes cancellation only when the registration was obtained fraudulently; fraud in obtaining incontestability under Section 15 does not equal fraud in obtaining the registration itself. It reversed the Board’s cancellation and remanded for the Board to consider removal of incontestability and other sanctions.
Issues
| Issue | Plaintiff's Argument (Chutter) | Defendant's Argument (Great Concepts) | Held |
|---|---|---|---|
| Whether Section 14 permits cancelling a registration based on a fraudulent Section 15 incontestability affidavit | Fraud in post-registration filings (including a Section 15 affidavit) amounts to fraud in maintaining/obtaining registration; prior Board precedent supports cancellation | Section 14 covers fraud in obtaining the registration itself; Section 15 only affects incontestability and Congress provided remedies under Section 33(b) (loss of incontestability), not cancellation | Held: No. Section 14 does not permit cancellation for fraud only in obtaining incontestability; reversed. |
| Whether Great Concepts forfeited its statutory-interpretation argument before the Board | Forfeiture asserted by Chutter | Great Concepts contends it raised the argument and cited authorities; issue was fully briefed on appeal | Held: No forfeiture; Federal Circuit considered and resolved the statutory interpretation issue. |
| Whether the combined Sections 8/15 filing means Section 8 (maintenance) was false or that cancellation could be predicated on Section 8 fraud | Combined filing can be treated as maintenance; prior decisions treated post-registration filings as grounds for cancellation | The record contains no allegation/evidence that the Section 8 portion was false; only the Section 15 statement is at issue | Held: Court treats the case as involving only a fraudulent Section 15 affidavit; it did not find Section 8 fraud here. |
| Available remedies and sanctions for fraud in a Section 15 filing | Cancellation is an appropriate and necessary sanction to deter fraud and protect the registry | Loss of incontestability (and other disciplinary or criminal remedies against counsel) suffices; Section 14 does not authorize cancellation for Section 15 fraud | Held: Cancellation under Section 14 unavailable for Section 15-only fraud; remanded for Board to consider removing incontestability and imposing other sanctions (e.g., attorney discipline). |
Key Cases Cited
- B & B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138 (2015) (overview of federal trademark registration benefits and incontestability)
- In re Bose Corp., 580 F.3d 1240 (Fed. Cir. 2009) (fraud requires a knowing, material misrepresentation with intent to deceive the PTO)
- Duffy-Mott Co. v. Cumberland Packing Co., 424 F.2d 1095 (C.C.P.A. 1970) (distinguishing registration from incontestability and sanctioning misuse of affidavits)
- Torres v. Cantine Torresella S.r.l., 808 F.2d 46 (Fed. Cir. 1986) (fraud in renewal/maintenance can support cancellation)
- Park ’N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189 (1985) (incontestability affects evidentiary status, not substantive defenses)
- Robi v. Five Platters, Inc., 918 F.2d 1439 (9th Cir. 1990) (held fraudulent incontestability affidavits may jeopardize registration — cited and discussed but disagreeed with)
- Kingsdown Med. Consultants, Ltd. v. Hollister Inc., 863 F.2d 867 (Fed. Cir. 1988) (patent-era inequitable-conduct precedent cited in dissent)
- Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011) (patent inequitable-conduct standard discussed in dissent)
- Precision Instrument Mfg. Co. v. Auto. Maint. Mach. Co., 324 U.S. 806 (1945) (equitable principle that rights should not spring from fraud; cited in dissent)