Federal Circuit Overturns Central Component of TTAB's Medinol Doctrine

Although not the first opinion to address the standard for a finding of fraud on the PTO, Medinol has held the attention of trademark owners and practitioners alike since its issuance. In Medinol, the registrant filed a single-class intent-to-use application to register a mark for neurological stents and catheters. The registrant's statement of use averred that the mark was used in connection with all of the recited goods, and the resulting registration covered stents and catheters. In a subsequent cancellation action, the petitioner alleged that the registrant had not used the mark with stents as of the date of the statement of use. The petitioner argued that the inaccurate averment to the contrary constituted fraud not curable by any post-petition amendments. In entering summary judgment in the petitioner's favor, the Board found as a matter of law that the registrant knew, or should have known, that the mark was not in use on all of the recited goods. See 67 U.S.P.Q.2d at 1209-10. The Board then canceled the registration in its entirety, despite a successful request to amend the registration to delete stents. As it explained, “deletion of the goods upon which the mark has not yet been used does not remedy an alleged fraud upon the Office. If fraud can be shown in the procurement of a registration, the entire resulting registration is void.” Id. at 1208.

Although the Board's application of Medinol has more often than not resulted in the invalidation of applications and registrations in their entirety, two of the Board's more recent opinions have departed from the more draconian aspects of the original decision. First, in G&W Labs v. GW Pharma Ltd., 89 U.S.P.Q.2d 1571 (T.T.A.B. 2009), the Board held that fraud in connection with particular classes of goods and services covered by a multiclass registration will not result in the cancellation of the entire registration; rather, cancellation is appropriate only as to the affected classes. Second, in Zanella Ltd. v. Nordstrom, Inc., 90 U.S.P.Q.2d 1758 (T.T.A.B. 2008), the Board held that the voluntary deletion of individual goods and services may create a presumption of good faith, provided it occurs prior to a challenge to the application or registration. Significantly, however, neither decision altered the “known or should have known” standard or offered hope to those seeking to delete individual goods or services from their filings on a post-challenge basis.