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Category: Briefs

The Fraud Standard – In re Bose Corp.

Bose isn’t a newly issued case, but I just went to a seminar on it and the fraud standards in trademark and patent matters, so I thought I’d report on it here.

Bose opposed the registration of HEXAWAVE, and Hexawave counterclaimed by calling for the cancellation of WAVE based on fraud.  Hexawave claimed that Bose had renewed the WAVE registration on all listed goods even when it knew it had stopped making and selling some of those goods.  Bose filed a renewal application on the WAVE mark for use on many goods, including audio tape recorders and players.  However, Bose had stopped making and selling tape recorders and players, and the attorney who had signed the renewal application knew this.

The attorney claimed that he had signed it because Bose continued to repair the recorders and players, after which it had to transport them back to customers, actions which he felt satisfied the use-in-commerce requirement.  The TTAB disagreed, found his belief unreasonable, and found the statement in the renewal concerning use was material.  It therefore found fraud on Bose’s part and canceled the entire WAVE registration.

The Federal Circuit reversed.  It noted that the TTAB had been applying essentially a negligence standard to the fraud question – whether the party in question knew or should have known that their statements were misleading.  Instead, the court held that fraud is a false and material representation made willfully for the purpose of deceiving the PTO, and that that intent must be shown with clear and convincing evidence.  A ” false misrepresentation[] occasioned by an honest misunderstanding or inadvertence without a willful intent to deceive” is not fraud.  On this basis, the court reversed and remanded for the TTAB to remove the problematic goods from the WAVE registration.

Clearly, this standard is more favorable for applicants, registrants, and their attorneys.  At the seminar, one attorney recommended that we no longer ask questions regarding use, in order to avoid having actual knowledge.  I was a little taken aback at the question.  While I know that putting on blinders is certainly something some lawyers do, I never considered it a morally acceptable practice, regardless of the question of whether it was ethically acceptable.  Without doing much research on it, I would strive to parallel patent law’s requirement of candor and good faith to the PTO.

Turning a blind eye may seem to some to help a client initially, but I believe the behavior is one that is self-destructive for a practitioner in the long term and thus must be avoided at all times.



Pictures not Required on Website for Proof of Trademark Use

2009-1140 In re Michael Sones, opinion by Linn with a dissent by Newman.

Michael Sones filed an intent-to-use application for the mark ONE NATION UNDER GOD for charity bracelets.  The website where he sold the bracelets initially had no picture of a bracelet, but instead described the product as “ONE NATION UNDER GOD CHARITY BRACELET” and listing underneath “ONE NATION UNDER GOD CHARITY BRACELET, CHOICE OF BLUE OR RED $2.00 EACH.”  Sones submitted a screenshot of this webpage as a specimen to prove use of the applied-for-mark.

The PTO rejected the specimen because it did “not show a picture of the goods in close proximity to the mark.”   Sones appealed the decision to the Federal Circuit, which struck down the PTO’s rigid requirement of a picture.

The court held that there is no bright-line rule that an online trademark specimen must include a picture and that any such requirement by the PTO is in error.  It found no basis for discriminating against the virtual world when there was no similar rule in the real world.  “For brick-and-mortar stores, there is no rule that specimens of use must show pictures. … [T]angible specimens – whether labels, containers, or displays – can show use in commerce by describing the goods in sufficient detail in relation the marks.”

The court stated that the test for a proper specimen of use is  “that it must in some way evince that the mark is ‘associated’ with the goods and serves as an indicator of source.”  While a picture may be a heavy hand weighing in favor of the acceptability of a specimen, it is not necessary; the context as a whole must be considered.

The court indicated that the context includes whether the webpage has a “point of sale nature” – i.e., whether a visitor could buy or order the product directly from the page.   Also important is the depth of description of the product and whether the inherent qualities of the product can be recognized from that description.



2009-1001 Gemtron Corp. v. Saint-Gobain Corp.

Decided: July 20, 2009

Plaintiff Gemtron sued Saint-Gobain for infringement of its patent on a refrigerator shelf. Gemtron’s claim 23 detailed a one-piece plastic shelf frame that accepted a glass shelf with a “snap-secure” mechanism that locked the glass into the edges of the frame without adhesive. Saint-Gobain’s shelf system used an adhesive to attach the glass shelf to the plastic frame, but the district court granted partial summary judgment for Gemtron because it was possible to snap the glass into a Saint-Gobain shelf frame at the time of insertion, relying on expert testimony that showed that at the time of manufacture, the shelf was warm and therefore flexible enough to accept the glass.

Claim 23 stated that the frame has a “relatively resilient end edge portion which temporarily defects and subsequently rebounds to snap-secure.” Because claim construction is an issue of law, the court of appeals reviewed the construction de novo. The court held that the claim was limited to the time of manufacture, and not to all times as Saint-Gobain had argued, hoping to differentiate its glued-down shelf system. In deciding this, the court limited its construction analysis to the language of the patent itself. While the claim did not use time-limiting language, the claim itself did suggest that the resilience was necessary only when inserting the glass. Further, the court looked to the patent’s background section, which contrasted by reference the ways in which prior art shelves were assembled. The court also noted that the specification of the patent denigrated shelf systems that used an adhesive as more expensive and more complicated to produce. The court therefore affirmed the trial court’s construction of claim 23.

The court likewise reviewed the grant of partial summary judgment de novo, looking for a genuine issue of material fact. Saint-Gobain had failed to dispute that its frame could be deflected to accept insertion of the glass at assembly. Further, expert video evidence showed that the glass was actually pressed into the frame by an employee when assembled in a way that the frame deformed and snapped the glass into place. Contrary claims came from Saint-Gobain for the first time only at oral argument on appeal, which the court held was too late to be evidence that could be considered.

Saint-Gobain finally argued that because the assembly of its shelves had occurred in Mexico, outside the US, it could not infringe Gemtron’s patent. However, Section 271(a) prohibits the making, using, selling, or offering to sell in the US the claimed apparatus, or importing the apparatus into the US. Even if an infringing product is made outside the US, it infringes when it is imported, or when it is sold, used, or offered to be sold. The court affirmed the grant of summary judgment.