Fraudulent Section 15 Affidavit May Void Incontestability, but it Does Not Make Registration Invalid

In Great Concepts, LLC, v. Chutter, Inc., [2022-1212] (October 18, 2023), the Federal Circuit reversed the TTAB’s cancellation of Reg. No. 2929764 on the mark DANTANNA’S due to the filing of a fraudulent declaration by a former attorney for the registrant.

Registrant’s former attorney filed combined Section 8 and 15 Declarations, Affidavits declaring, among other things, “there is no proceeding involving said rights pending and not disposed of either in the U.S. Patent and Trademark Office or in the courts.” This statement was false: as of March 2010, both the cancellation proceeding in the PTO and the Eleventh Circuit appeal from Mr. Tana’s district court action were still pending.

The issue for the Federal Circuit was whether Section 14 of the Lanham Act, 15 U.S.C. § 1064, permits the Board to cancel a trademark’s registration due to the owner’s filing of a fraudulent Section 15 declaration for the purpose of acquiring incontestability status for its already-registered mark. The Board has long believed it has such power, and it exercised such purported authority in the instant case.  The Federal Circuit concluded that Section 14 does not permit the Board to cancel a registration:

Section 14, which allows a third party to seek cancellation of registration when the “registration was obtained fraudulently,” does not authorize cancellation of a registration when the incontestability status of that mark is “obtained fraudulently.”

Fraud committed in connection with obtaining incontestable status is distinctly not fraud committed in connection with obtaining the registration itself.  The Federal Circuit said that the Board the Board may consider whether to declare that Great Concepts’ mark does not enjoy incontestable status and to evaluate whether to impose other sanctions on Great Concepts or its attorney.