Firm News

Herbaceuticals, Inc. v. Xel Herbaceuticals, Inc., Trademark Trial and Appeal Board, March 7, 2008

This case highlights the diligence that trademark applicants must exercise to determine the products and services on which a trademark is used.  The Trademark Trial and Appeal Board recently cancelled 4 trademark registrations because the applicant, in its Statement of Use, incorrectly stated that the mark was in use on all of the goods listed in the Notice of Allowance, even though the mark had not yet been used on some of the products listed.  The Board held that these inaccuracies amounted to fraud, rendering the registrations void.  Even though the mark had been used on a number of the products that were listed in the Notice of Allowance, the Board cancelled the registrations in their entirety. 

Fraud is a claim that can be brought at any time against a federal registration.  It cannot be cured.

What should applicants do to avoid this fatal flaw?  First, the Notice of Allowance should be reviewed carefully.  For any products and services on which the mark has not yet been used, decide whether there is a continuing good faith intent to use the mark.  If not, these products and services should be deleted from the application.  If there is a continuing intent to use, an extension of time can be requested.  An early registration for the in-use products can be obtained by using the Request to Divide procedure.  Following these steps will help ensure that valid and enforceable registrations are obtained.

If you have any questions concerning this Alert, please contact us.  

Laura A. Genovese
Panitch Schwarze Belisario & Nadel LLP
One Commerce Square, Suite 2200
2005 Market Street
Philadelphia, PA  19103-7013
215.965.1348 (direct)
215.965.1331 (fax)
lgenovese@panitchlaw.com