Fraud on The PTO: Understanding The Consequences and How to Avoid It

DEREK FAHEY, ESQ.

Trademark and brand owners must be honest and accurate when filing documents with the United States Patent and Trademark Office (USPTO). Fraud on the USPTO—often called “Fraud on the PTO”—is a serious issue that can have severe consequences when trademark rights are most important.

Fraud generally occurs when an applicant makes a material misrepresentation to the USPTO with the intent to deceive the Office while obtaining or maintaining a trademark registration.

What Constitutes Fraud on The PTO?

Fraud may arise when an applicant or registrant knowingly makes a false statement of material fact with an intent to deceive. Common examples include:

1. False claims of use in commerce: stating that a mark is used for goods or services when it is not.
2. Deceptive specimens: submitting doctored or fabricated evidence of use.
3. Misrepresenting ownership: falsely claiming ownership when another party has superior rights.
4. Knowingly omitting material information: failing to disclose information that would affect registrability.

The Federal Circuit and the Trademark Trial and Appeal Board apply a high burden of proof. The accusing party must show that the false statement was made knowingly and with intent to deceive. Even with that high standard, applicants should never make statements they know are false.

Legal Consequences

• Cancellation of the registration: a fraudulent registration may be voided entirely.
• Invalidation of the application: fraud during prosecution may jeopardize the full application, not merely selected goods or services.
• Civil exposure: a competitor or third party may seek remedies if it suffered harm from the fraudulent conduct.

Best Practices to Avoid Fraud Claims

• Verify that the mark is genuinely used with every listed good and service before claiming use.
• Submit authentic, unaltered specimens that reflect real-world use.
• Maintain documentation supporting ownership and use claims.
• Work with experienced trademark counsel when filing or maintaining registrations.

Conclusion

Fraud on the USPTO can jeopardize trademark rights and create significant legal risk. Careful due diligence, truthful submissions, and complete records help protect a brand and its registration.