Fraud in Procurement of Registration Concerning Use of Mark Taints Entire Trademark Application for Stents

In its Petition for Cancellation, Medinol argued that at the time Neuro Vasx submitted its required sworn affidavit to the PTO attesting to use of the mark, it had in fact not used the mark in connection with stents and, therefore, procured the registration by knowingly false or fraudulent statements. Neuro Vasx responded by denying that its intent in submitting its statement of use was fraudulent, arguing that the incorrect submission to the PTO was an 'oversight,' and filing a combined motion to amend its registration (deleting 'stents') and for summary judgment. Medinol objected to the proposed amendment and argued that ' even if it were allowed ' the amendment would not cure the fraud. Medinol's position was that: 'Allowing Registrant simply to amend its registration, without any factual showing regarding the merits of the fraud allegations or defenses thereto, essentially rewards Registrant for its fraudulent behavior since 2000.'

The TTAB agreed, and held 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.' The Board further held that the appropriate inquiry is not into the registrant's subjective intent, but rather into the objective manifestations of that intent. The Board further concluded that the registrant's knowledge that its mark was not in use on stents ' or its reckless disregard for the truth ' was all that was required to establish intent to commit fraud in the procurement of a registration.