What Happens If You Lie On Your Trademark Application? | Dallas Trademark Attorney

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It never pays to lie, especially on your trademark application. What happens if you lie?

A potential client came to me, asking about how he could stop an “infringer.” The “infringer” had been using his mark on podcasts, and his registered trademark claimed use on podcasts. So how could he get her to stop? Would I write him a cease and desist letter?

In such a situation, before I send a cease and desist letter, I want to make very sure that my client was the first user. If I send an “infringer” a cease and desist letter, and the purported infringer was in fact the first user even though they didn’t bother to register the trademark, that could cause problems for my client. This is because the prior user of the mark may have “common law” trademark rights that are superior to those of my client. So I don’t want to stir the pot unless and until I have acertained where my clients’ rights stand vis a vis any possible prior users. I like to get all the facts before I go in with guns blazing.

“Well,” I said, “How long have you been using it on your podcast?”
“Well,” says he, “We’re not actually using it on podcasts yet, but we plan to. And we have a registration for podcasts.”

You may wonder how he was able to obtain a registration for podcasts without actually using the mark on podcasts. Don’t you have to submit a specimen proving use before the Trademark Office will issue you a trademark for certain goods and services? Yes, of course you have to submit a specimen. But the specimen submitted is for each class of goods. So because my prospective client’s application included other goods in the same class as podcasts (Class 009), the specimen submitted for the other Class 009 goods covered podcasts as well. Strange, but true.

Just one problem: Even though the specimen is only required for one type of goods in Class 009, the applicant still has to swear under penalty of perjury that the mark is in use for all goods in the application, even if he doesn’t have to prove it via the submission of a specimen for those goods. Because he submitted a specimen for some Class 009 goods other than podcasts, the submission of a specimen for podcasts wasn’t required.

Now comes the hard part: Because he lied on his trademark application, his trademark registration was subject to cancellation for fraud. And not just for the goods that he lied about, either. For all the goods, the whole kit and kaboodle.

So I cautioned him: “If you go after this alleged “infringer” for use of your trademark registration on podcasts, she’s going to attempt to cancel your mark for fraud. And besides, she’s got common law rights to the mark based on her prior use, even though you have the registration. If I were you, I’d quietly go away and let her be. You don’t have an enforceable claim to the goods covered by your registration, due to 1) her prior use, and 2) your fraud on your trademark application.

So, the moral of the story is...Don’t lie -- about anything -- on your trademark application. If you do, it will likely be discovered during future litigation, and you could severely compromise your rights to your registered trademark.

Find me online at https://trademarkdoctor.net. Leave questions in the comments on my Trademark Doctor Facebook page at https://facebook.com/trademarkdoctor, and I'll answer them in a future Live.
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