Today's post is about the third of five US trademark cases that I will be discussing as part of a Case Law wrap-up for 2024. Stay tuned for the others as well.
In Great Concepts, LLC v Chutter Incorporated, the question was whether a false declaration of incontestability is grounds for cancellation of a trademark in the U.S. This case, as shown in the images above was between Great Concepts, the owner of the DANTANNAS registered mark, and Dan Tana the owner of a similar common law mark.
In 2006, Dan Tana filed for cancellation of the Dantanna’s mark. In 2008, a companion case was brought in the Norther District of Georgia based on trademark infringement. In 2010, the trademark infringement case went up to the 11th Circuit on appeal and when Dan Tana (Chutter) failed to file documentation in the case, the trademark infringement case and the PTAB cancellation were dropped.
Also in 2010, Great Concepts' attorney, the same attorney handling the cancellation and infringement proceedings, filed a combined declaration of use and incontestability for the Dantanna's mark. This declaration is commonly referred to as a combined Section 8 and Section 15 declaration.
In 2015, Dan Tana (Chutter) filed a second cancellation against the Dantanna's mark. This time, the fraudulent declaration filed in the combined Section 8 and Section 15 renewal was the cited reason. Chutter wanted the Dantanna's mark canceled, not just removal of its fraudulently obtained incontestability status.
At this stage in the litigation, it became unclear whether or not the USPTO has authority to cancel a trademark registration due to a fraudulent renewal as opposed to cancelling a mark that was fraudulently obtained. In 2022, the case went to the CAFC for review of that question.
The CAFC found that the combined Section 8 and Section 15 declaration was not one declaration, so fraud committed in one would not be fatal to the other. This is important because if no renewal is filed in a timely fashion, the mark automatically goes abandoned.
The CAFC further found that a fraudulent Section 15 declaration is not grounds for cancellation in this case. The CAFC held that the USPTO does not have authority to cancel a mark unless it was obtained fraudulently and since this case was about a fraudulent affidavit regarding incontestability the mark could not be canceled. The court added that Chutter had no right to seek cancellation in this case either.
The dissent in this case made it clear that in their opinion this case overturns about 50 years of precedent. They mentioned that not only does it go against USPTO precedent, but several cases as well, namely, Crown Wallcovering, Torres, and Bose, to name a few. The dissent also made clear that the holding encourages fraud as even in a case such as this. Here, the same attorney handling the cancellation and trademark infringement cases stated under oath that there were no pending proceedings involving the trademark, as well as that there hadn't been any court decisions affecting the ownership of the mark.
This case is troubling for the reasons stated in the dissent. If you have questions, please reach out.
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