Great Concepts, LLC v. Chutter, Inc.

• Court: Court of Appeals for the Federal Circuit
• Decided: January 10, 2024
• Docket: 22-1212
• Status: Published

Opinion

Case: 22-1212 Document: 65 Page: 1 Filed: 01/10/2024

United States Court of Appeals for the Federal Circuit ______________________

GREAT CONCEPTS, LLC, Appellant

v.

CHUTTER, INC., Appellee

KATHERINE K. VIDAL, UNDER SECRETARY OF COMMERCE FOR INTELLECTUAL PROPERTY AND DIRECTOR OF THE UNITED STATES PATENT AND TRADEMARK OFFICE, Intervenor ______________________

2022-1212 ______________________

Appeal from the United States Patent and Trademark Office, Trademark Trial and Appeal Board in Nos. 91223018, 92061951. ______________________

OPINION ISSUED: October 18, 2023 OPINION MODIFIED: January 10, 2024 * ______________________

* This opinion has been modified and reissued fol- lowing an unopposed petition for panel rehearing filed by Intervenor. The only change is the revision of the sentence on page 13 that now begins “Section 14(3) . . .” Case: 22-1212 Document: 65 Page: 2 Filed: 01/10/2024

LAUREN ANN DEGNAN, Fish & Richardson P.C., Wash- ington, DC, argued for appellant. Also represented by JARED HARTZMAN; CYNTHIA WALDEN, Boston, MA.

BRUCE WILLIAM BABER, King & Spalding LLP, Atlanta, GA, argued for appellee. Also represented by KATHLEEN E. MCCARTHY, New York, NY.

MARY BETH WALKER, Office of the Solicitor, United States Patent and Trademark Office, Alexandria, VA, ar- gued for intervenor. Also represented by CHRISTINA J. HIEBER, THOMAS W. KRAUSE, FARHEENA YASMEEN RASHEED. ______________________

Before DYK, REYNA, and STARK, Circuit Judges. Opinion for the court filed by Circuit Judge STARK. Dissenting Opinion filed by Circuit Judge REYNA. STARK, Circuit Judge. Great Concepts, LLC (“Great Concepts”) appeals the Trademark Trial and Appeal Board’s (“Board”) decision cancelling registration of its trademark, “DANTANNA’S,” due to the filing of a fraudulent declaration by a former at- torney for Great Concepts. The attorney submitted the false declaration to the U.S. Patent and Trademark Office (“PTO”) in connection with Great Concepts’ effort to obtain incontestable status for its registered trademark. Because the pertinent part of the applicable statute limits the Board’s authority to cancel registration of a mark to cir- cumstances in which the “registration was obtained fraud- ulently,” and here there is no claim that this occurred, the Board was not permitted to cancel Great Concepts’ trade- mark. Thus, we reverse and remand. I Case: 22-1212 Document: 65 Page: 3 Filed: 01/10/2024

GREAT CONCEPTS, LLC v. CHUTTER, INC. 3

Great Concepts applied to register “DANTANNA’S” as a mark for a “steak and seafood restaurant” in 2003. Its application issued as Registration No. 2929764 (the “’764 Registration”) in 2005. In 2006, Chutter, Inc.’s (“Chutter”) predecessor-in-in- terest, Dan Tana, petitioned the Board to cancel the ’764 Registration, based on an alleged likelihood of confusion with Mr. Tana’s common law “DAN TANA” mark for res- taurant services. The cancellation proceeding was sus- pended during the pendency of a civil action in the Northern District of Georgia, in which Mr. Tana sued Great Concepts for trademark infringement. On Septem- ber 15, 2009, the district court granted summary judgment in favor of Great Concepts, a ruling that was affirmed by the Eleventh Circuit on July 15, 2010. See Tana v. Dan- tanna’s, No. 08-cv-975-TWT, 2009 WL 10668358 (N.D. Ga. 2009), aff’d, 611 F.3d 767 (11th Cir. 2010). Eventually, on December 14, 2010, the Board dismissed Mr. Tana’s can- cellation proceeding “based on petitioner’s apparent loss of interest,” after he failed to respond to the Board’s order to show cause. J.A. 310. Meanwhile, on March 8, 2010, Great Concepts’ former attorney, Frederick Taylor, filed with the PTO a combined declaration of use, pursuant to Section 8 of the Lanham Act, and declaration of incontestability, pursuant to Sec- tion 15 of the same Act. See 15 U.S.C. §§ 1058, 1065. In the Section 15 portion of the declaration, relating to Great Concepts’ effort to obtain incontestable status for its al- ready-registered mark, Mr. Taylor declared, among other things, “there is no proceeding involving said rights pend- ing and not disposed of either in the U.S. Patent and Trade- mark Office or in the courts.” J.A. 51, 87; see also 37 C.F.R. § 2.167(d), (e) (noting requirements for Section 15 declara- tion); 15 U.S.C. § 1065. This statement was false: as of March 2010, both the cancellation proceeding in the PTO Case: 22-1212 Document: 65 Page: 4 Filed: 01/10/2024

and the Eleventh Circuit appeal from Mr. Tana’s district court action were still pending. In July 2015, Chutter petitioned the PTO for cancella- tion of Great Concepts’ “DANTANNA’S” mark based on Mr. Taylor’s 2010 false Section 15 affidavit. 1 On September 30, 2021, the Board issued a decision finding that Mr. Taylor’s Section 15 declaration was fraudulent and cancelling Great Concepts’ registration of its trademark under Section 14 of the Lanham Act. Great Concepts timely appealed. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(B) and 15 U.S.C. § 1071(a)(1). We apply de novo review to the Board’s legal conclusions. See Bose, 580 F.3d at 1243. II Resolution of this appeal turns on our interpretation of various provisions of the Lanham Act. We reproduce below a portion of the Supreme Court’s helpful background on the Lanham Act, which notes several trademark concepts that are pertinent to our analysis: Trademark law has a long history, going back at least to Roman times. The principle under- lying trademark protection is that distinctive

1 We use “declaration” and “affidavit” interchangea- bly, as the regulation, see 37 C.F.R. § 2.167, cases, see e.g., In re Bose Corp., 580 F.3d 1240 (Fed. Cir. 2009), and par- ties do. We refer to Mr. Taylor’s affidavit as “false” and “fraudulent” because the Board found it was both. See, e.g., J.A. 14, 26. Great Concepts admits the Section 15 affidavit was untrue, see Appellant Br. at 33, but denies it was filed with fraudulent intent, see, e.g., id. at 34. By using “false” and “fraudulent” in this opinion, essentially interchangea- bly, we do not mean to suggest we are affirming the Board’s intent findings that we do not reach. Case: 22-1212 Document: 65 Page: 5 Filed: 01/10/2024

GREAT CONCEPTS, LLC v. CHUTTER, INC. 5

marks – words, names, symbols, and the like – can help distinguish a particular artisan’s goods from those of others. One who first uses a distinct mark in commerce thus acquires rights to that mark. Those rights include pre- venting others from using the mark. Though federal law does not create trade- marks, Congress has long played a role in pro- tecting them. In 1946, Congress enacted the Lanham Act, the current federal trademark scheme. As relevant here, the Lanham Act creates at least two adjudicative mechanisms to help protect marks. First, a trademark owner can register its mark with the PTO. Second, a mark owner can bring a suit for infringement in federal court. Registration is significant. The Lanham Act confers important legal rights and benefits on trademark owners who register their marks. Registration, for instance, serves as constructive notice of the registrant’s claim of ownership of the mark. It also is prima facie evidence of the validity of the registered mark and of the registration of the mark, of the owner’s ownership of the mark, and of the owner’s exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the certifi- cate. And once a mark has been registered for five years, it can become incontestable. B & B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138, 142-43 (2015) (internal citations and quotation marks omitted). Once obtained, continued registration of a mark re- quires compliance with Section 8 of the Lanham Act. Case: 22-1212 Document: 65 Page: 6 Filed: 01/10/2024

Section 8 requires the mark owner, “at the end of the sixth year after the date of registration and at the end of each successive ten-year period after the date of registration,” to “file a Section 8 Declaration of Continued Use, ‘an affidavit setting forth those goods or services recited in the registra- tion on or in connection with which the mark is in use in commerce.’” Bose, 580 F.3d at 1242 n.1 (quoting 15 U.S.C. § 1058(b)(1)). A registered mark may be challenged as invalid on grounds including that the mark is confusing, descriptive, generic, functional, or abandoned. See 15 U.S.C. § 1052. To make it more difficult for a mark to be invalidated, the owner of a registered mark may seek to obtain “incontest- able” status for it. Incontestability is governed by Section 15 of the Lanham Act. Section 15 provides that a regis- tered trademark may acquire incontestable status (subject to certain conditions not at issue here) after “such regis- tered mark has been in continuous use for five consecutive years subsequent to the date of such registration and is still in use in commerce.” 15 U.S.C. § 1065. An incontestable mark “shall be conclusive evidence of the validity of the registered mark.” 15 U.S.C. § 1115(b) (emphasis added). A registered mark that has not achieved incontestable status, however, is only “prima facie evidence of the validity of the registered mark.” Id. § 1115(a) (em- phasis added). Thus, it is more burdensome to prove inva- lidity of a registered incontestable mark than it is to do so for a mark that is not incontestable. Section 14 of the Lanham Act sets out the circum- stances under which the registration of a mark may be challenged. In pertinent part, it provides: A petition to cancel a registration of a mark, . . . may . . . be filed as follows by any person who believes that he is or will be damaged . . . Case: 22-1212 Document: 65 Page: 7 Filed: 01/10/2024

GREAT CONCEPTS, LLC v. CHUTTER, INC. 7

by the registration of a mark on the principal register . . . (3) At any time if . . . its registration was ob- tained fraudulently . . . . 15 U.S.C. § 1064 (emphasis added). “Fraud in procuring a trademark registration or renewal occurs when an appli- cant knowingly makes false, material representations of fact in connection with his application.” Bose, 580 F.3d at 1243 (internal quotation marks omitted). 2 III In this appeal, we must decide whether Section 14 of the Lanham Act, 15 U.S.C. § 1064, permits the Board to cancel a trademark’s registration due to the owner’s filing of a fraudulent Section 15 declaration for the purpose of acquiring incontestability status for its already-registered mark. The Board has long believed it has such power, see J.A. 14-15; see also Crown Wallcovering Corp. v. Wall Pa- per Mfrs. Ltd., 188 U.S.P.Q. 141, 1975 WL 20837, at *4 (T.T.A.B. 1975), and it exercised such purported authority here to cancel Great Concepts’ registration. We conclude, however, that Section 14 does not permit the Board to can- cel a registration in these circumstances. A

2 While Great Concepts challenges the Board’s find- ings that the elements of fraud were proven here, we do not reach that portion of its appeal because we agree with Great Concepts that, even assuming fraud occurred, Sec- tion 14 does not provide authority for the PTO to cancel Great Concepts’ registration based on a fraudulent Section 15 affidavit. Case: 22-1212 Document: 65 Page: 8 Filed: 01/10/2024

Before turning to the issue of statutory interpretation presented in this case, we must address two preliminary matters. First, we reject Chutter’s and the PTO’s contention that Great Concepts failed to preserve its statutory inter- pretation argument at the Board. We do not agree that this issue was forfeited. Instead, we find that Great Concepts adequately presented its contentions to the Board. In its briefing to the Board, Great Concepts explained that a Section 15 declaration only relates to a mark’s in- contestability, not its registration. See J.A. 1756-60; see also J.A. 1757 (Great Concepts arguing to Board that “while an allegedly fraudulent section 15 affidavit may af- fect a registration’s incontestability status, it does not nec- essarily provide grounds for cancellation of the registration”). Great Concepts then cited to a treatise, which stated that “‘fraud in a Section 15 incontestability affidavit or declaration should only serve to eliminate the incontestable status of the registration and not result in the cancellation of the registration itself.’” J.A. 1757 (quoting 6 J. Thomas McCarthy, Trademarks and Unfair Competition § 31:81 (5th ed. 2019) (“McCarthy”)). Great Concepts’ ar- gumentation provided the Board a fair opportunity to ad- dress whether Section 14 authorizes it to cancel a registration based on a fraudulent Section 15 declaration. 3

3 Even if the issue were forfeited (and it was not), we have discretion to resolve an issue not passed on in the tri- bunal we are reviewing “[i]f . . . the ground urged is one of law, and that issue has been fully vetted by the parties on appeal.” Glaxo Grp. Ltd. v. TorPharm, Inc., 153 F.3d 1366, 1371 (Fed. Cir. 1998). That situation is presented here. See Appellant Br. at 14-32; Appellee Br. at 23-40; Case: 22-1212 Document: 65 Page: 9 Filed: 01/10/2024

GREAT CONCEPTS, LLC v. CHUTTER, INC. 9

Second, we reject Chutter’s contention, with which the dissent agrees, that we should view this case as involving a fraudulent Section 8 declaration, and not just a fraudu- lent Section 15 declaration. The PTO has not joined Chut- ter in making this argument on appeal. 4 Furthermore, the

Intervenor Br. at 26-33; Reply Br. at 2-18. We have discre- tion to reach the statutory interpretation issue for the ad- ditional reason that it presents a question of exceeding importance: whether an agency, which is a creature of stat- ute, has been acting ultra vires for years. 4 In practice, the PTO appears to treat combined Sec- tion 8 and 15 declarations as separate filings, even when they are included together in a single document. See gen- erally Trademark Manual of Examining Procedure (“TMEP”) § 1605.05 (“The filing fee for a combined §8 and §15 affidavit or declaration is the sum of the cost of the in- dividual filings.”); see also id. §§ 1605, 1605.05 (describing separate remedies for curing deficiencies in Section 8 or Section 15 portions of combined declaration). The dissent’s citation to 37 C.F.R. § 2.168, which provides in pertinent part that “[t]he affidavit or declaration filed under section 15 . . . may also be used as the affidavit or declaration re- quired by Section 8, if the affidavit or declaration meets the requirements of both Sections 8 and 15,” does not indicate that a declaration seeking to meet the requirements of both sections is treated by the PTO as a single declaration. Likewise, that the PTO finds it convenient to provide infor- mation about Section 15 declarations on the same webpage as it provides information about Section 8 (as well as Sec- tions 9 and 71) declarations, and chose to identify this page as “Definitions for maintaining a trademark registration,” does not, of course, alter the legal relationship between two different sections of the Lanham Act. See https://www.uspto.gov/trademarks/maintain/forms-file/def Case: 22-1212 Document: 65 Page: 10 Filed: 01/10/2024

Board did not base its cancellation decision on the fact that Great Concepts’ Section 15 declaration happened to have been filed in connection with its Section 8 declaration of use. See J.A. 26. Chutter’s basis for asking us to treat the situation here as one involving a false Section 8 affidavit is that Mr. Tay- lor filed a combined declaration that addressed the require- ments of Section 8 – for continued registration – and Section 15 – for the incontestability of the registered mark. J.A. 87-88. While we have held that fraud in connection with maintaining a registration is actionable in a Section 14 cancellation proceeding, see Torres v. Cantine Torresella S.r.l., 808 F.2d 46, 48 (Fed. Cir. 1986) (“Fraud in obtaining renewal of a registration amounts to fraud in obtaining a registration within the meaning of section 14(c) of the Lan- ham Act.”), here there was no such fraud, because there is no evidence (or even allegation) that Mr. Taylor’s Section 8 declaration was false. A Section 15 declaration is in no way necessary to maintaining registration of a mark. Here, the happenstance that Mr. Taylor filed a combined declaration, which had one portion devoted to Section 8 and another to Section 15, does not render the Section 8 portion false or fraudulent, and neither does it make the Section 15 portion part of an effort to “maintain” a registration. Thus, as the case comes to us, the issue is only whether a fraudulent Section 15 affidavit, filed in pursuit of incon- testable status of an already-registered mark, is a proper

initions-maintaining-trademark (last visited September 22, 2023); see also https://www.uspto.gov/trade- marks/maintain (“Because the time for filing a Section 8 declaration coincides with the time for filing a Section 15 declaration of incontestability for many applicants, a com- bined Sections 8 & 15 form exists, above.”) (last visited Sep- tember 22, 2023); Dissent at 13-14 n.6. Case: 22-1212 Document: 65 Page: 11 Filed: 01/10/2024

GREAT CONCEPTS, LLC v. CHUTTER, INC. 11

basis on which to predicate a Section 14 cancellation of a registration. 5 We turn squarely to that question now. B We conclude that Section 14, which allows a third party to seek cancellation of registration when the “registration was obtained fraudulently,” does not authorize cancella- tion of a registration when the incontestability status of that mark is “obtained fraudulently.” “As in any case of statutory construction, our analysis begins with the language of the statute.” Hughes Aircraft Co. v. Jacobson, 525 U.S. 432, 438 (1999) (internal quota- tion marks omitted). “[W]here the statutory language pro- vides a clear answer, it ends there as well.” Id. Moreover, “we must read the words in their context and with a view to their place in the overall statutory scheme.” King v. Bur- well, 576 U.S. 473, 486 (2015) (internal quotation marks omitted). In sum, “we employ traditional tools of statutory construction and examine the statute’s text, structure, and legislative history, and apply the relevant canons of inter- pretation.” Atilano v. McDonough, 12 F.4th 1375, 1380 (Fed. Cir. 2021) (internal quotation marks omitted). Un- dertaking this analysis, we conclude that Section 14 does

5 Even Chutter does not contend that this case in- volves any allegation that Great Concepts obtained its orig- inal registration fraudulently. Nor could it, as Chutter is collaterally estopped from making such an allegation, given its earlier failures to prove such fraud. See J.A. 299 (Board concluding that Chutter’s predecessor, Mr. Tana, “failed to identify clearly any specific false, material mis- representations of fact that [Great Concepts] made . . . with the intent of obtaining a registration to which [it] was not entitled”). Case: 22-1212 Document: 65 Page: 12 Filed: 01/10/2024

not authorize the Board to cancel a registration based on a fraudulent Section 15 declaration. As we have already noted, Section 14 permits a third party to file “[a] petition to cancel a registration of a mark” “[a]t any time if” the registered mark’s “registration was obtained fraudulently.” 15 U.S.C. § 1064 (emphasis added). “Obtaining” has a plain and ordinary meaning, “‘[t]o get hold of by effort; to gain possession of; to procure; to acquire, in any ways.’” W. Union Tel. Co. v. Hansen & Rowland Corp., 166 F.2d 258, 260-61 (9th Cir. 1948) (quot- ing Webster’s New International Dictionary, 2d ed. at 1682); see also Obtain, Black’s Law Dictionary (11th ed. 2019) (“To bring into one’s own possession; to procure, esp. through effort”). The parties do not appear to dispute that Great Concepts obtained something through Mr. Taylor’s Section 15 declaration. The question becomes what Great Concepts obtained, but this is not difficult to answer. What Great Concepts acquired through Mr. Taylor’s fraudulent Section 15 decla- ration was incontestable status for its already-registered trademark. Under the Lanham Act, registration and in- contestability are different rights. See Duffy-Mott Co. v. Cumberland Packing Co., 424 F.2d 1095, 1099-100 (CCPA 1970) (acquiring incontestable status under Section 15 is “a matter of acquiring a new right,” distinct from “maintaining the registration in force” under Section 8). Indeed, registration is a prerequisite to incontestability. Rendering an already-registered mark harder to invali- date, which is the impact of incontestable status, is not the same thing – or even nearly the same thing – as getting, acquiring, or securing registration of the mark in the first place. Hence, fraud committed in connection with obtain- ing incontestable status is distinctly not fraud committed in connection with obtaining the registration itself. See generally McCarthy § 31:81 (“[I]ncontestable status does Case: 22-1212 Document: 65 Page: 13 Filed: 01/10/2024

GREAT CONCEPTS, LLC v. CHUTTER, INC. 13

not ‘obtain’ the ‘registration.’ The registration already ex- isted with ‘contestable’ status.”). Mr. Taylor’s Section 15 declaration in no way caused or even contributed to Great Concepts obtaining registration for its mark. Nor could it have, for Great Concepts ob- tained its registration back in 2005 and Mr. Taylor did not file his declaration until 2010. Given that registration and incontestability are different rights, and Section 14 only identifies fraud in connection with acquiring one of these rights (registration) as being a basis for a cancellation pro- ceeding at the Board, it follows that fraud in connection with acquiring incontestable status is not a basis for a Sec- tion 14 cancellation proceeding. Section 14(3) lists numerous bases on which a third party may seek Board cancellation of a registered mark at any time, including that the mark has become generic for the goods or services, is functional, has been abandoned, the registration was fraudulently obtained, or the mark is being used to misrepresent the source of the goods. See 15 U.S.C. § 1064(3). Notably absent from this list is fraud committed in connection with an incontestability declara- tion. When, as here, Congress sets out a lengthy list of statutory provisions, we will not lightly add to that list, lest we contradict what may well have been an intentional omission. See, e.g., Schlafly v. Saint Louis Brewery, LLC, 909 F.3d 420, 425 (Fed. Cir. 2018) (“The statutory interpre- tative canon of expressio unius est exclusio alterius, pro- vides that ‘expressing one item of [an] associated group or series excludes another left unmentioned.’”) (quoting NLRB v. Sw. Gen., Inc., 580 U.S. 288, 302 (2017)). Section 33(b) of the Lanham Act further confirms that a Section 14 cancellation proceeding is not available as a remedy for a fraudulent Section 15 incontestability decla- ration. Section 33(b) provides that an accused infringer may attempt to prove in an infringement action that “the Case: 22-1212 Document: 65 Page: 14 Filed: 01/10/2024

incontestable right to use the mark [being asserted against the infringer] was obtained fraudulently” by the mark owner. 15 U.S.C. § 1115(b)(1). Importantly, the remedy Congress provided for litigants in Section 33(b) – for the specific circumstances presented here, i.e., fraud in connec- tion with obtaining incontestable status – was loss of in- contestable status, and not also loss of registration. See Park ’N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 199 n.6 (1985) (stating that “defenses enumerated in § 33(b) are not substantive rules of law which go to the va- lidity or enforceability of an incontestable mark” but rather impact only “the evidentiary status of registration where the owner claims the benefit of a mark’s incontestable sta- tus”). Given that Congress, in Section 33(b), expressly con- templated our very circumstances – an incontestable registered mark, where incontestable status was obtained by fraud – and provided that the remedy for it was loss of incontestable status, we are unpersuaded that Congress also, in Section 14, silently authorized the PTO to impose a different, more severe remedy, cancellation of registra- tion, for this same offense. See generally Jama v. Immigr. & Customs Enf’t, 543 U.S. 335, 341 (2005) (“We do not lightly assume that Congress has omitted from its adopted text requirements that it nonetheless intends to apply, and our reluctance is even greater when Congress has shown elsewhere in the same statute that it knows how to make such a requirement manifest.”). It follows that Congress did not provide the Board authority to cancel registration when a mark owner commits fraud in connection with seek- ing to obtain incontestability status. C In pressing us to reach a different conclusion, Chutter presents several arguments. While they are not unreason- able, neither are they persuasive. Case: 22-1212 Document: 65 Page: 15 Filed: 01/10/2024

GREAT CONCEPTS, LLC v. CHUTTER, INC. 15

First, like the dissent and the Director, Chutter argues that we should adhere to the Board’s longstanding prece- dent, as announced in the Board’s 1975 opinion in Crown Wallcovering, holding that a fraudulent declaration filed in support of incontestability status can be the basis for Board cancellation of a registered mark. Board decisions do not, of course, bind this court. See, e.g., In re Rudy, 956 F.3d 1379, 1383 (Fed. Cir. 2020). In Crown Wallcovering, the Board held: [I]t is clear that the filing of a fraudulent Sec- tion 15 affidavit would enable a registrant to obtain a new right, namely, incontestability, to which he would not otherwise be entitled . . . . Under such circumstances, it is ad- judged that the filing of a fraudulent Section 15 affidavit constitutes a ground for cancela- tion of the involved registration within the purview of Section 14(c). 1975 WL 20837, at *4. 6 The Board felt that the decision of our predecessor, the Court of Customs and Patent Appeals (“CCPA”), in Duffy-Mott – a case in which a new applicant for a registered mark was opposed by a mark owner who already had obtained an incontestable mark – “buttressed” its conclusion. Id. We disagree. Duffy-Mott involved a mark owner, whose predecessor-in-interest had acquired an incontesta- ble mark by filing a combined Section 8 and Section 15 af- fidavit, in which the Section 15 portion contained a false

6 Congress amended Section 14 of the Lanham Act in 1988, replacing the lettered subsections with the current numbered subsections. See 15 U.S.C. § 1064, amended by Pub. L. No. 100-667, sec. 1883, 102 Stat. 3935 (Nov. 10, 1988). Section 14(c) thereby became Section 14(3). Case: 22-1212 Document: 65 Page: 16 Filed: 01/10/2024

statement, and the Section 8 portion did not – precisely the situation we confront here. See 424 F.2d at 1098-99. That mark owner then opposed an applicant’s attempt to regis- ter its own similar mark. See id. at 1096. The applicant in Duffy-Mott did not ask the Board to cancel the mark owner’s registered mark due to the fraudulent Section 15 affidavit, believing the Board had no authority to do so, just as we hold today. See id. at 1099. And, importantly, the CCPA expressly declined to reach the question of whether Section 14 permitted cancellation based on fraudulent statements in a Section 15 declaration. See id. at 1099 n.8. The sanction the applicant sought in Duffy-Mott, which is the sanction the CCPA imposed, was to preclude the mark owner from relying on its incontestable, registered mark as a basis to oppose applicant’s application for its own mark. See id. at 1099-1100. 7 Consequently, the mark

7 Chutter and the Director argue that the sanction imposed in Duffy-Mott effectively cancelled the mark owner’s registration because the mark owner was pre- cluded from relying on its registration “for any purpose in the Patent Office or in this court [i.e., the CCPA] on appeal therefrom.” 424 F.2d at 1099 (emphasis added); see also Stardust, Inc. v. Birdsboro Knitting Mills, Inc., 119 U.S.P.Q. 270, 1958 WL 6011, at *1 n.5 (T.T.A.B. 1958) (holding that owner of incontestable registered mark, who made false statement about continued use of its mark, may not “rely on this registration for any purpose in the Patent Office”) (cited in Duffy-Mott, 424 F.2d at 1099). But the very next sentence of the opinion states that “filing a sworn statement as far from the truth as was that which was filed precludes opposer from relying on the reg- istration in these proceedings.” Duffy-Mott, 424 F.2d at 1099 (emphasis added). We understand the sanction Case: 22-1212 Document: 65 Page: 17 Filed: 01/10/2024

GREAT CONCEPTS, LLC v. CHUTTER, INC. 17

owner in Duffy-Mott came away from the proceeding still in possession of a registered mark – which could be as- serted against infringers in subsequent actions – just as Great Concepts seeks to do here, and just as we hold Great Concepts may do. Therefore, we do not view Duffy-Mott – a case in which our predecessor court declined to reach the question posed to us here, and in which no party thought the Board could do what it did here – as particularly sup- portive of the Board’s decision in Crown Wallcovering or of the decision we are reviewing today. 8 Relatedly, the dissent states that we have already en- dorsed the holding of Crown Wallcovering, and further sug- gests that our decision today is a break with stare decisis. See Dissent at 10, 15. We disagree. Neither of our prece- dents on which the dissent relies, Torres, 808 F.2d at 47,

imposed on the mark owner in Duffy-Mott to have been lim- ited to precluding the mark owner’s reliance on its regis- tration in the very proceeding under review and not also to have cancelled that registration for all purposes. In other words, the CCPA only granted the narrower relief the ap- plicant actually sought in the case.

8 In fact, in the course of not deciding the issue we are required to resolve today, Duffy-Mott “consider[ed] the purpose for which the false affidavit was filed in order to determine the importance of the untrue allegations.” 424 F.2d at 1099. It went on immediately thereafter to distinguish between fraud in a Section 15 affidavit filed in connection with obtaining incontestability and fraud in connection with “maintaining the registration in force, which can be done by an affidavit under section 8(a).” Id. If anything, these statements in Duffy-Mott support our view that Section 15 fraud is not a basis for cancellation of a registration. Case: 22-1212 Document: 65 Page: 18 Filed: 01/10/2024

and Bose, 580 F.3d at 1243, 1245, involved a Section 15 declaration or even mentions Section 15. As Great Con- cepts observes, see Appellant Br. at 10, the question we are now deciding – whether a false or fraudulent Section 15 declaration can itself be a sufficient basis on which the Board may, pursuant to Section 14, cancel a registration – has not been previously decided by our court. Accordingly, there is no binding precedent and we are not failing to let one of our earlier decisions stand. Second, Chutter points to a decision of one of our sister circuits as support for its position. In Robi v. Five Platters, Inc., 918 F.2d 1439, 1444 (9th Cir. 1990) (internal citations omitted), the Ninth Circuit stated: “Any false statements made in an incontestability affidavit may jeopardize not only the incontestability claim, but also the underlying reg- istration. In particular, filing a fraudulent incontestability affidavit provides a basis for canceling the registration it- self.” Robi cites to Duffy-Mott and Crown Wallcovering as the bases for its conclusions. See id. As we disagree with the Board’s reading of Duffy-Mott and disagree that Duffy- Mott supports the Board’s holding in Crown Wallcovering, we are likewise unpersuaded by Robi. 9 Next, Chutter suggests that if we disagree with its stat- utory interpretation, we should simply approve “an extra- statutory basis for cancellation.” Appellee Br. at 33. In support of its invitation for this act of judicial procreation, Chutter cites a law review article. See id. (citing Theodore

9 We agree, instead, with the conclusion reached by the district court in O’Reilly Auto. Stores, Inc. v. Bearing Techs. Ltd., No. 16-3102-CV-S-BP, 2018 WL 4323943, at *5 (W.D. Mo. 2018) (holding Section 14 “does not state that a registration can be canceled because of a fraudulent Sec- tion 15 filing”). Case: 22-1212 Document: 65 Page: 19 Filed: 01/10/2024

GREAT CONCEPTS, LLC v. CHUTTER, INC. 19

H. Davis Jr. & Lauren Brenner, Allegations of Fraudulent Procurement and Maintenance of Federal Registrations Since In re Bose Corp., 104 Trademark Rep. 933, 998-99 (2015)). 10 We believe, instead, we are obligated to enforce the limitations on the Board’s cancellation authority im- posed by statute. Finally, Chutter makes arguments based on policy. It contends our holding will encourage fraud. The dissent likewise fears that we have “construct[ed] a milepost in the trademark administrative continuum, at which point (Sec- tion 15) fraudulent wrongdoing is green-lighted.” Dissent at 12. Together, Chutter and the dissent contend that if the only consequence for filing a fraudulent affidavit in pursuit of incontestability is the loss of incontestability, there is no consequence, since the mark owner was not en- titled to incontestable status in the first place. We certainly do not intend by our holding today to en- courage fraud – of any type. We fully agree with the CCPA that intentionally using a false statement to acquire an im- portant right, including the right of incontestable status, “can scarcely be characterized as mere carelessness or mis- understanding,” so we further agree that some significant sanction is “necessary to deter the further development of

10 Both parties identified secondary sources support- ing their interpretation of the statute. Compare Appellee Br. at 32 (citing 3 Jerome Gilson & Anne Gilson Lalonde, Trademarks § 9.03 (2022)) (“A fraudulent Section 15 affi- davit is grounds for cancellation of the registration under Section 14(3).”), with Appellant Br. at 26 (citing McCarthy § 31.81) (“[F]raud in a Section 15 incontestability affidavit or declaration should serve only to eliminate the incontest- able status of the registration and not result in cancellation of the registration itself.”). Case: 22-1212 Document: 65 Page: 20 Filed: 01/10/2024

such a cavalier attitude toward statements in affidavits un- der section 15.” Duffy-Mott, 424 F.2d at 1100. We do not, however, think our opinion means that com- mitting fraud in connection with obtaining incontestability becomes a costless offense. As suggested in Duffy-Mott (and not contested by Great Concepts), the Board can re- move the mark’s incontestability status. See 424 F.3d at 1099-1100; see also Park ’N Fly, 469 U.S. at 199 n.6; 15 U.S.C. § 1115(b)(1); 3 McCarthy § 31:81. Loss of incontest- able status is not nothing; it means that, if challenged, a mark owner will have a harder time preserving the validity of its registered mark. More importantly, nothing in this opinion should be read to mean that the Board is powerless to address fraud, including fraud committed solely in conjunction with the filing of a Section 15 declaration. While this case does not call upon us to delineate the scope of remedies available to the Board, or even to identify “the maximum penalty for fraud committed to obtain incontestability,” Dissent at 16, we are in full agreement with the parties that, at mini- mum, the Board may sanction any attorney who commits fraud before it. 11 A Section 15 declaration is filed under penalty of perjury, see J.A. 87 (“The undersigned being hereby warned that willful false statements and the like

11 For example, Great Concepts urged that “when an investigation uncovers attorney misconduct,” the attorney should be referred the PTO’s Office of Enrollment and Dis- cipline. See Appellant Br. at 30 n.12 (citing Hirshfeld & Gooder, USPTO’s Comprehensive Strategy to Fight Trade- mark Fraud, Director’s Blog: the latest from UPSTO lead- ership (Aug. 18, 2021), https://www.uspto.gov/blog/director/entry/uspto-s-compre- hensive-strategy-to). Case: 22-1212 Document: 65 Page: 21 Filed: 01/10/2024

GREAT CONCEPTS, LLC v. CHUTTER, INC. 21

are punishable by fine or imprisonment, or both, under 18 U.S.C. Section 1001.”), so the attorney filing such an affi- davit is vulnerable to penalties that might even include criminal prosecution. Our ruling that a Section 14 cancel- lation of registration is not an available remedy for a fraud- ulent Section 15 declaration – a conclusion we reach because Congress chose not to empower the Board with the ability to impose that specific consequence – is a ruling only that this one remedy is unavailable, leaving the Board, we expect, with sufficient mechanisms to adequately deter fraud. Even if it were true that our decision would result in an unwelcome increase in fraud perpetrated against the Board – which, again, we do not believe it will – we would nonetheless adhere to the unambiguous language of the statute. See, e.g., W. Union Tel. Co. v. Lenroot, 323 U.S. 490, 501 (1945) (“[W]e take the Act as Congress gave it to us, without attempting to confirm it to any notions of what Congress would have done if the circumstances of this case had been put before it.”). Whether we would prefer a dif- ferent result be reflected in the statute is irrelevant to our responsibility to decide the case before us based on the law as it exists. IV We have considered Chutter’s remaining arguments – including its analogy to patent law, see Appellee Br. at 60, which is governed by a different statute 12 – and find them unpersuasive. Because Section 14 does not authorize the Board to cancel a registration based on a fraudulent Sec- tion 15 declaration, which is necessarily directed only to obtaining incontestable status of an already-registered

12 Great Concepts, too, makes comparisons to patent law. See, e.g., Appellant Br. at 35-38. Case: 22-1212 Document: 65 Page: 22 Filed: 01/10/2024

mark and does not involve a “registration [that] was ob- tained fraudulently,” we do not reach the issue of whether the Board erred in finding that Mr. Taylor committed fraud. Based on the statute, we reverse the Board’s cancel- lation of Great Concepts’ registration. We remand, how- ever, so that the Board may consider whether to declare that Great Concepts’ mark does not enjoy incontestable status and to evaluate whether to impose other sanctions on Great Concepts or its attorney. REVERSED AND REMANDED COSTS Costs awarded to appellant. Case: 22-1212 Document: 65 Page: 23 Filed: 01/10/2024

United States Court of Appeals for the Federal Circuit ______________________

KATHERINE K. VIDAL, UNDER SECRETARY OF COMMERCE FOR INTELLECTUAL PROPERTY AND DIRECTOR OF THE UNITED STATES PATENT AND TRADEMARK OFFICE, Intervenor ______________________

Appeal from the United States Patent and Trademark Office, Trademark Trial and Appeal Board in Nos. 91223018, 92061951. ______________________

REYNA, Circuit Judge, dissenting. Today, the majority instructs the Patent and Trade- mark Office that it is without authority to cancel a trade- mark registration in situations where a registrant defrauds the agency with false declarations intended to de- ceive the agency into granting incontestable rights for its continued use of a mark. It instructs the agency, and the general public, that there exists a milepost in the Case: 22-1212 Document: 65 Page: 24 Filed: 01/10/2024

trademark administrative continuum, a green-light, be- yond which inequitable conduct is encouraged by the prom- ise of great gain with little to no meaningful risk to the registrant. But there is harm. First, this court should be wary not to excuse fraud that is undertaken at any stage within an administrative process. Second, this court must recognize that the grant and protection of intellectual prop- erty rights involves a pact with the general public. This case represents a violation of that pact. I respectfully dissent. I. CANCELLATION BASED ON FRAUD Great Concepts, LLC (“Great Concepts”) submitted a single declaration through counsel, who declared under penalty of perjury that there were no adverse judgments or any pending proceedings involving Great Concepts’ regis- tered mark. The declaration was false. The false declara- tion enabled Great Concepts to maintain its registration and to obtain valuable incontestability rights for its mark. Upon discovery of the falsehood, Great Concepts took no remedial action to correct it, and failed to inform the Trade- mark Trial and Appeal Board (the “Board”) even after the false declaration was challenged. The Board determined that the circumstances supported a finding of fraud. Based on its longstanding interpretation of the Lanham Act as al- lowing cancellation of a trademark registration based on fraud, the Board cancelled Great Concepts’ trademark reg- istration. I would affirm the Board’s action because it ac- cords with precedent, fits with statutory objectives, safeguards the integrity of the trademark system, and pro- tects public interest. The Lanham Act creates a federal registration system to enforce and protect trademark rights. See B & B Hard- ware, Inc. v. Hargis Indus., Inc., 575 U.S. 138, 142 (2015). The system is administered by the United States Patent and Trademark Office (the “PTO”). See id. The statute es- tablishes a process by which a trademark owner applies to Case: 22-1212 Document: 65 Page: 25 Filed: 01/10/2024

have its mark registered with the PTO. Among other things, registration secures ownership of and exclusive rights to use the underlying mark in commerce. See id. at 142–43 (discussing rights and benefits a registrant can ob- tain under the Lanham Act). Section 8 of the Lanham Act provides a process that grants a registrant continued rights to the registered mark. To obtain such rights, the registrant must submit a sworn declaration to affirm that its mark has been in continued use. See 15 U.S.C. § 1058 (requirements for affirming con- tinued use); see also In re Bose Corp., 580 F.3d 1240, 1242 n.1 (Fed. Cir. 2009) (explaining requirements for renewing a registration and affirming continued use). This declara- tion is a mandatory filing to keep the registration alive and avoid its cancellation. See 15 U.S.C. § 1058(a) (the regis- tration “shall be canceled” if the registrant fails to file the Section 8 declaration). A Section 8 declaration is therefore a critical part of the registration process. In addition to the Section 8 filing, the registrant may also file a Section 15 declaration. Id. § 1065 (requirements for “[i]ncontestability of right to use” a mark). Section 15 provides that a registrant can secure “incontestable” rights to use its mark by declaring that the mark has not been subject to any adverse decisions, and that at the time of filing, the mark was not involved in any pending proceed- ings. Id. Incontestability is prized because it constitutes “conclusive evidence” of not only the validity and owner- ship of a mark, but also the registrant’s exclusive rights to use the mark. Id. § 1115(b). In this manner, the regis- trant’s exclusive and continued rights to the mark become incontestable for the life of the mark. An incontestable reg- istration discourages decisions to challenge the registrant’s ownership of and rights to use the mark. See Park ’N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 198 (1985) (explaining the value of incontestability, stating that in- contestability “provide[s] a means for the registrant to quiet title in the ownership of his mark”). Case: 22-1212 Document: 65 Page: 26 Filed: 01/10/2024

A registrant may elect to file a combined declaration of continued use and incontestability, if the requirements un- der both Sections 8 and 15 are met. Trademark Manual of Examining Procedure § 1605.05 (5th ed. 2007); see also 37 C.F.R. § 2.168(a). 1 Through this single combined filing, a registrant keeps its registration alive and attains incon- testability status for its mark. A. Finding of Fraud Great Concepts, through counsel, filed a combined dec- laration for its mark, “DANTANNA’s.” The one-page sub- mission states that “Great Concepts . . . is filing a Combined Declaration of Use and Incontestability under Sections 8 & 15.” J.A. 87. For incontestability, Great Con- cepts declared that no pending proceeding involving the mark existed at the PTO or in a court. Id. The declaration warns that: “[W]illful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. Section 1001, and that such willful false statements and the like may jeopardize the validity of this document.”

1 For clarity, and relevant here, this combined decla- ration requires Great Concepts to declare, The mark has been in continuous use in commerce for five (5) consecutive years after the date of reg- istration, or the date of publication under Section 12(c), and is still in use in commerce. There has been no final decision adverse to the owner’s claim of ownership of such mark, or to the owner’s right to register the same or to keep the same on the reg- ister; and there is no proceeding involving said rights pending and not disposed of either in the U.S. Patent and Trademark Office or in the courts. J.A. 87; see also 15 U.S.C. §§ 1058, 1065. Case: 22-1212 Document: 65 Page: 27 Filed: 01/10/2024

Id. The document was signed by counsel for Great Con- cepts. J.A. 87–88. It is undisputed that, on the date of the signing and filing and contrary to the sworn declaration, Great Con- cepts’ mark was involved in a cancellation proceeding at the PTO and in a trademark infringement civil action. See Tana v. Dantanna’s, 611 F.3d 767, 772–73 (11th Cir. 2010); see also Chutter, Inc. v. Great Management Group, LLC, No. 91223018, 2021 WL 4494251, at *7–8 (T.T.A.B. Sept. 30, 2021) (“Decision”). In addition, the counsel for Great Concepts that signed the declaration was also counsel to Great Concepts in the cancellation proceeding and the civil action. See Decision, 2021 WL 4494251, at *8; see also J.A. 612–13 (counsel testimony regarding his representation of Great Concepts). The Board determined that Great Con- cepts submitted false representations with intent to de- ceive, and thereby committed fraud. 2 Decision, 2021 WL 4494251, at *13. In reaching its finding of fraud, the Board considered that the same counsel represented Great Concepts in the other then-pending proceedings when he attested to the ab- sence of those very proceedings, see id. at *8 & n.47; that he admittedly “was not aware of the legal requirements for filing a Section 15 declaration” when he directed a parale- gal to file Great Concepts’ combined declaration, id. at *8– 9; and that before signing the sworn-declaration, he failed

2 The majority opinion concedes the falsity of Great Concepts’ declaration and appears to recognize its inequi- table nature. See Maj. Op. 3, 20–21. The majority, how- ever, does not reach the issue of whether Great Concepts committed fraud, deciding instead to reverse on the basis of no harm no foul, concluding that the registrant should be restored to the status quo prior to the filing. See id. at 21–22. Case: 22-1212 Document: 65 Page: 28 Filed: 01/10/2024

to read it with enough care to notice that the falsity was repeated twice on the same page, id. The Board also found that Great Concepts failed to cor- rect the false information it submitted. Id. at *8. After filing the declaration, Great Concepts’ counsel received: (1) a PTO notice confirming receipt of the document, which includes a recitation of the false declaration; and (2) a par- alegal email attaching the PTO confirmation. Id.; J.A. 816–20. Great Concepts did not notify the PTO of the falsehood nor otherwise take any corrective action. Deci- sion, 2021 WL 4494251, at *8 (noting that Great Concepts became aware of the falsehood at least as early as February 2014). Counsel failed to undertake any corrective action, and he continued to represent Great Concepts. Id. The PTO approved the submission, and Great Concepts’ regis- tration continued, now cloaked with incontestability. 3 Id.; see also J.A. 94 (PTO acceptance and acknowledgement). The deception did not end at the PTO, as from that mo- ment, the public was falsely informed that the mark was legally incontestable. Fraud requires a finding of intent to deceive. Bose, 580 F.3d at 1245. “[B]ecause direct evidence of deceptive intent is rarely available, such intent can be inferred from indi- rect and circumstantial evidence.” Id. (quoting Star Scien- tific, Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d 1357, 1366 (Fed. Cir. 2008)). Great Concepts does not dispute these legal principles. See, e.g., Appellant’s Br. 13 (noting the intent requirement for fraud); id. at 33 (noting that a de- ceptive intent can be inferred). Great Concepts also

3 In practice, the PTO’s “approval” is pro forma and does not involve verification or formal review of this sworn declaration. See Decision, 2021 WL 4494251, at *7 & n.44. As a result, unless by chance the false information is oth- erwise detected, the false declaration can for years effec- tively deflect potential challenges to the registration. Case: 22-1212 Document: 65 Page: 29 Filed: 01/10/2024

concedes that an intent to deceive can be inferred from cir- cumstances demonstrating reckless disregard. See Oral Arg. 6:53–7:18; id. at 7:00–11 (“[O]ne can prove intent to deceive or malice based on reckless disregard for the truth.”). The circumstances surrounding Great Concepts’ sub- mission exhibit a “cavalier attitude” indicative of an intent to deceive the agency. See Duffy-Mott Co. v. Cumberland Packing Co., 424 F.2d 1095, 1100 (C.C.P.A. 1970); see also Decision, 2021 WL 4494251, at *9 (discussing various as- pects of recklessness). They constitute sufficient evidence that “a reasonable mind might accept as adequate” to sup- port the Board’s finding of reckless disregard and inference of intent to deceive. On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085 (Fed. Cir. 2000) (quoting In re Gartside, 203 F.3d 1305, 1312 (Fed. Cir. 2000)). Great Concepts attempts to analogize the facts here to those in Bose and Kingsdown, where we found no intent to deceive. See, e.g., Appellant’s Br. 35–37 (relying on Bose, 580 F.3d 1240 and Kingsdown Med. Consultants, Ltd. v. Hollister Inc., 863 F.2d 867 (Fed. Cir. 1988)); Reply Br. 19– 21 (same). Both cases, however, are readily distinguisha- ble. In Bose, the “false misrepresentation [was] occasioned by an honest misunderstanding.” 580 F.3d at 1246. Here, by contrast, Great Concepts’ counsel admittedly knew that “the statement was [not] true at the time he signed [it].” Id.; see J.A. 667 (“I clearly knew that there was a pending action”). And in Kingsdown, the patent prosecution coun- sel, in “a ministerial act,” negligently transferred “numer- ous claims en masse from a parent to a continuing application,” which required renumbering and reproducing similar claim language. 863 F.2d at 875. This case does not involve a misunderstanding or ministerial act. Here, Great Concepts submitted a one-page sworn declaration that twice repeated the false statements immediately pre- ceding an express warning against false statements. J.A. Case: 22-1212 Document: 65 Page: 30 Filed: 01/10/2024

87. In addition, Great Concepts failed to take remedial ac- tion once it became aware of the false submission. Great Concepts argues that it should not be punished for its attorney’s conduct. See, e.g., Appellant’s Br. 53–57. But Great Concepts forfeited this argument by failing to raise it to the Board. In any event, Great Concepts cannot now “avoid the consequences of the acts or omissions of [its] freely selected agent.” Link v. Wabash R. Co., 370 U.S. 626, 633–34 (1962) (finding “no merit” and as “inconsistent with our system of representative litigation” for a party to “avoid the consequences of the acts or omissions of [its] freely se- lected” attorney). In sum, substantial evidence supports the Board’s find- ing of reckless disregard and inference of an intent to de- ceive. I would affirm the Board’s finding of fraud. B. Cancellation The Lanham Act contemplates sanctioning and deter- ring fraud committed to obtain rights and benefits under the statute. Section 14 provides, in pertinent part, if a “reg- istration was obtained fraudulently,” the PTO is author- ized to sanction the registrant by cancelling the mark. 15 U.S.C. § 1064 (Section 14 of the Lanham Act titled “Can- cellation of registration”); see also id. § 1068 (authority to fashion relief in inter partes proceedings). The Board de- cided to cancel Great Concepts’ registration because Great Concepts’ combined declaration contained false material representations of fact with the intent to deceive. Decision, 2021 WL 4494251, at *12–13. The Board’s decision is sup- ported by legal precedent. There exists an unbroken line of decisions that sup- ports cancelling a mark under Section 14 when a registrant fraudulently procures rights and benefits it is not entitled to. In Duffy-Mott, for example, our predecessor-court in 1970 approved the PTO’s decision in an opposition proceed- ing to sanction a registrant who “attempted by false Case: 22-1212 Document: 65 Page: 31 Filed: 01/10/2024

representations in the [PTO] to secure through [its] regis- tration incontestable rights.” 424 F.2d at 1100. “In con- formity with” the Board’s precedent addressing fraudulent filings and “in accord with the principle of the equitable doctrine of ‘unclean hands,’” the court barred the registrant from “rely[ing] on its registration for any purpose in the [PTO] or in this court on appeal therefrom.” Id. at 1099 (emphasis added). Five years later, the Board held that fraud committed in filing a Section 15 declaration constituted a ground for cancellation. See Crown Wallcovering Corp. v. the Wall Pa- per Mfgs. Ltd., 188 U.S.P.Q. 141, 1975 WL 20837, at *4 (T.T.A.B. 1975). The Board emphasized the invaluable benefits of attaining incontestability. See id. at *3. It ex- plained that the words “‘obtained fraudulently’ compre- hend not only the initial securance of a registration, but also the maintenance thereof, i.e., the securance of contin- uing rights of registration, by fraud.” Id.; see also, e.g., Volkswagenwerk Aktiengesellschaft v. Advance Welding & Mfg. Corp., 184 U.S.P.Q. 367, 1974 WL 20103, at *2 (T.T.A.B. 1974) (“A contrary ruling would in effect sanction open and notorious fraud by those filing false affidavits un- der Sections 8, 9, 12(c) and 15 of the Statute and thereby serve to contravene and place in doubt the presumptions afforded registrations.”). A decade later, in addressing sanctions for fraudulent filings with the PTO, this court relied on Crown Wallcover- ing’s holding. See Torres v. Cantine Torresella S.r.l., 808 F.2d 46, 48 (Fed. Cir. 1986). In Torres, the court affirmed the Board’s cancellation of a mark based on the registrant’s fraudulent filings to renew a registration. Id. at 49. The court cited and affirmed two Board decisions cancelling the involved registration based on fraudulent post-registration filings. Id. at 48 (citing G. B. Kent & Sons, Ltd. v. Colonial Chem. Corp., 162 U.S.P.Q. 557, 1969 WL 9139 (T.T.A.B. 1969) and Crown Wallcovering, 1975 WL 20837). Case: 22-1212 Document: 65 Page: 32 Filed: 01/10/2024

More recently in Bose, this court, citing Torres, reiter- ated that the Lanham Act imposes an obligation to “refrain from knowingly making false, material statements.” Bose, 580 F.3d at 1245. That obligation applies to “an applicant” seeking a registration, but also to “a registrant” seeking continuing and additional rights through the registration. Id. (emphasis added). We “[held] that a trademark is ob- tained fraudulently under the Lanham Act only if the ap- plicant or registrant knowingly makes a false, material representation with the intent to deceive the PTO.” Id. (emphasis added). There is thus significant, sufficient legal support for the Board’s cancellation decision. Great Concepts has not shown otherwise. Nor does this case present any special circumstance warranting a departure from longstanding law. See, e.g., CSX Transp., Inc. v. McBride, 564 U.S. 685, 699 (2011) (restricting longstanding law would “ill serve the goals of ‘stability’ and ‘predictability’” that stare decisis aims to ensure). II. MAINTAINING A MARK Great Concepts contends, and the majority agrees, that a fraudulent Section 15 declaration cannot form the basis for cancellation under Section 14. As noted supra, it is well-settled that fraud sanctionable under Section 14 en- compasses fraud committed in “obtaining” or “maintain- ing” a trademark registration. Great Concepts does not dispute this. See, e.g., Reply Br. 2. Great Concepts argues that a Section 15 declaration falls outside of the purview of Section 14 because a Section 15 declaration is exercised to obtain incontestability which, in its view, does not consti- tute “obtaining” or “maintaining” a registration. See Ap- pellant’s Br. 10, 17; Reply Br. 3. The parties appear to be in agreement that filing a Section 15 declaration does not “obtain” a registration, and instead, focus their contentions on whether a Section 15 declaration is undertaken to “maintain” the registration. See, e.g., Appellant’s Br. 17 Case: 22-1212 Document: 65 Page: 33 Filed: 01/10/2024

(asserting that a Section 15 declaration “does not maintain the registration”); Appellee’s Br. 30 (“[Great Concepts’] dec- laration was indisputably necessary to ‘maintain’ the reg- istration.”). Great Concepts rests on an assumption that its filing was an “optional Section 15 Declaration of Incontestabil- ity.” Appellant’s Br. 10. The majority agrees and views this case as “just a fraudulent Section 15 declaration.” Maj. Op. 9. I disagree. The fraudulent filing at issue is a combined Sections 8 and 15 declaration, which Great Concepts submitted for the purpose of maintaining its registration. See J.A. 87; see also J.A. 899 (Great Concepts CEO testimony); J.A. 614 (counsel testimony). Great Concepts intended for the filing to satisfy the mandatory requirements to maintain its reg- istration; and as a result of this filing, Great Concepts’ reg- istration was kept alive and maintained in force. See J.A. 87; see also Appellee’s Br. 30 (“the registration would have been cancelled under Section 8 if the declaration had not been filed”). The fact that Great Concepts elected to make a combined filing does not change the maintenance purpose or nature of this filing. 4 And because Great Concepts does not dispute that cancellation can be based on fraud com- mitted in “maintaining” a registration, the Board’s cancel- lation decision should be affirmed on this basis alone.

4 False statements render the entirety of this com- bined declaration untruthful. As noted supra, the declara- tion explicitly warns that willful false statements “may jeopardize the validity of this document,” not just the falsi- fied part. J.A. 87 (emphasis added). The declaration does not purport to apply in one part to Section 8, and in another part to Section 15. There is no such division. Instead, in “execut[ing] this document,” Great Concepts declared “all statements” to be true. See id. (emphasis added). Case: 22-1212 Document: 65 Page: 34 Filed: 01/10/2024

Great Concepts also urges, and the majority agrees, that the agency’s cancellation authority under Section 14 applies to certain types of fraud but never to fraud commit- ted to obtain incontestability rights. See Appellant’s Br. 14 (contending that the Board cannot cancel a registration based on fraud committed in a Section 15 filing); Reply Br. 2, 4; see also Maj. Op. 13. The majority thus constructs a milepost in the trademark administrative continuum, at which point (Section 15) fraudulent wrongdoing is green- lighted. The majority does not provide a principled ra- tionale for such a milepost. The rights and benefits that a registrant attains under the Lanham Act are part of a progressive administrative continuum. See B & B Hardware, 575 U.S. at 142–43 (dis- cussing rights and benefits conferred under the Lanham Act); see also Maj. Op. 4–5 (quoting B & B Hardware, 575 U.S. at 142–43). The process commences with an applicant filing the initial application to register. B & B Hardware, 575 U.S. at 143; see also 15 U.S.C. § 1051 (requirements for application to register). Post application, a registrant may, by fulfilling perti- nent statutory requirements, obtain continuing and addi- tional rights extending from the registration. These rights include: continued ownership of and exclusive rights to use the mark, and incontestability status for the mark. 15 U.S.C. § 1058 (continued use); id. § 1059 (renewal); id. § 1065 (incontestability). The statute contemplates deter- ring fraud committed in procuring rights and benefits un- der the statute—either by “an applicant” seeking registration, or “a registrant” seeking continuing and addi- tional rights. See Bose, 580 F.3d at 1245 (stressing the ob- ligation the Lanham Act imposes on the “applicant” and the “registrant” to refrain from fraud). Notably, the statute does not limit the PTO’s authority to penalize fraudulent behavior that only occurs in the early stages of this admin- istrative continuum. Case: 22-1212 Document: 65 Page: 35 Filed: 01/10/2024

The same rationale for ensuring truthful submissions applies throughout the trademark administrative contin- uum. See, e.g., 37 C.F.R. § 11.18 (setting forth require- ments for signing and filing documents with the PTO, and warning penalties for violating the same); J.A. 87 (warning against willful false statements, citing 18 U.S.C. § 1001). The necessity for sanctions to deter fraud recognizes the PTO’s vested authority and discretion to regulate miscon- duct regardless of at which point it occurs along the contin- uum. 5 I am not persuaded by Great Concepts’ assertions on the purported meaning of “maintaining.” Great Concepts asserts a restricted definition for “maintaining” that ex- cludes fraudulent declarations used to obtain incontesta- bility. According to Great Concepts, “[m]aintaining a registration” only encompasses “a Section 8 declaration of continuing use or a Section 9 renewal declaration.” Reply Br. 2. The majority similarly states that “[a] Section 15 declaration is in no way necessary to maintaining registra- tion of a mark” and is not “an effort to ‘maintain’ a regis- tration.” Maj. Op. 10. I agree that a Section 15 declaration is optional. But the fact that a Section 15 submission is optional does not make it something other than an action of “maintaining” the registration. 6 Indeed, a Section 15 declaration “may

5 As the PTO noted in its decision, “[t]he agency, as well as applicants and registrants, and all who rely on the accuracy of the Registers of marks and the submissions made to the USPTO in furtherance of obtaining or main- taining registration, must be able to rely on declarations and the truth of their contents.” Decision, 2021 WL 4494251, at *12. 6 The PTO advises the public that a Section 15 dec- laration is a “maintenance” form and lists this filing under Case: 22-1212 Document: 65 Page: 36 Filed: 01/10/2024

also be used as the affidavit or declaration required by sec- tion 8,” which the majority does not dispute is an action of “maintaining” a mark. See 37 C.F.R. § 2.168 (emphasis added); see also Maj. Op. 10. Dicta cited by Great Concepts does not support a con- trary conclusion. Great Concepts points us to a statement in Duffy-Mott that Section15 “is not a question of maintain- ing a registration in force, which can be done by an affidavit under section 8(a).” Duffy-Mott, 424 F.2d at 1099; see Ap- pellant’s Br. 17 (citing Duffy-Mott, 424 F.2d at 1099). The Duffy-Mott court continued, “[i]t is a matter of acquiring a new right with respect to the goods specifically recited in the affidavit.” Duffy-Mott, 424 F.2d at 1100. The court there made these statements to emphasize the value of in- contestability in that it confers an additional new right. 7

the various actions for “maintaining a trademark registra- tion.” See, e.g., Registration Maintenance/Renewal/Cor- rection Forms, USPTO, https://www.uspto.gov/trademarks/maintain (last visited Sept. 14, 2023); Definitions for maintaining a trademark registration, USPTO, https://www.uspto.gov/trade- marks/maintain/forms-file/definitions-maintaining-trade- mark (last visited Sept. 14, 2023). 7 Great Concepts’ citation to Bose does not support its proposed meaning of “maintaining,” either. See Reply Br. 2 (citing Bose, 580 F.3d at 1246). In addressing fraud committed in renewing a registration, the court stated that Section 14 (15 U.S.C. § 1064) allows cancellation based on “[f]raud in procuring a trademark registration or renewal.” See Bose, 580 F.3d at 1243 (quoting Torres, 808 F.2d at 48); id. at 1246 (addressing alleged fraud in connection with the renewal filings at issue). This statement, while affirming that fraud in renewal falls within the purview of Section 14, does not address what actions constitute maintaining a registration under the Lanham Act. Case: 22-1212 Document: 65 Page: 37 Filed: 01/10/2024

Great Concepts next contends that the maximum sanc- tion for fraud committed to obtain incontestability rights should be limited to the revocation of the incontestability status. See Appellant’s Br. 18. To support its contention, Great Concepts asks the court to reverse the Board’s deci- sion in Crown Wallcovering, where the Board held that “the filing of a fraudulent Section 15 affidavit constitutes a ground for cancellation” under Section 14. Crown Wallcov- ering, 1975 WL 20837, at *4; see Reply Br. 3 (contending Crown Wallcovering “impermissibly extended Section 14 to cover fraud in Section 15 filings”). Great Concepts asserts that the Board was wrong in believing that its holding was “buttressed” by Duffy-Mott, because the Duffy-Mott court did not cancel the mark at issue. Appellant’s Br. 17–18. This argument fails for several reasons. First, Duffy-Mott involves an opposition proceeding. See Duffy-Mott, 424 F.2d at 1096. Unlike here, the appli- cant there did not ask for the opposer’s mark to be can- celled. See id. at 1099. Indeed, the Duffy-Mott court imposed the sanction it deemed necessary and appropriate under the circumstances. See id. at 1100 (discussing the sanction imposed, deeming it “necessary” to deter the wrongdoing “as appears in this case”). 8 The court, how- ever, was not declaring a maximum penalty for fraudulent wrongdoing. Great Concepts has not demonstrated why after nearly 50 years Crown Wallcovering should be overturned. As dis- cussed supra, this court affirmed Crown Wallcovering in

8 Notably, the sanction in Duffy-Mott deprived the opposer “not only of the right of incontestability but also of the presumptions afforded to all registrations of marks upon the Principal Register under Section 7(b) of the Act.” See Crown Wallcovering, 1975 WL 20837, at *4 (emphasis added) (discussing effect of the sanction imposed in Duffy- Mott, 424 F.2d 1095). Case: 22-1212 Document: 65 Page: 38 Filed: 01/10/2024

Torres. See Torres, 808 F.2d at 48. In turn, we then en- dorsed and reiterated Torres’s holding in Bose. See Bose, 580 F.3d at 1243, 1245. These decisions continue to govern practice and conduct before the PTO, on which the public has acted in reliance. 9 Such a repeated and consistent agency position “in this area of evident public reliance, pro- vide[s] a powerful reason” to “preserve, not upset, the es- tablished position.” Immersion Corp. v. HTC Corp., 826 F.3d 1357, 1365 (Fed. Cir. 2016); see also id. at 1359 (de- clining to upset “consistent, clearly articulated agency practice going back at least half a century, which has plau- sibly engendered large-scale reliance”). The majority agrees with Great Concepts’ proposal that the maximum penalty for fraud committed to obtain incontestability is losing incontestability, the very thing the registrant was not entitled to ab initio. See Maj. Op. 13–14. And this potential loss would only materialize if the registrant somehow “gets caught.” This is unreasonable and overlooks the spirit and purpose of intellectual prop- erty protection. The law is clear that it is the obligation of the applicant and registrant to refrain from any form of in- equitable conduct. See, e.g., Bose, 580 F.3d at 1245–46 (dis- cussing obligation under the Lanham Act to refrain from fraud). It is not up to the public to act as “attorney gener- als” and detect fraud. And it is the wrongdoer that should

9 See, e.g., Mecanicos Unidos S.A. v. Victorio, LLC, No. 92058060, 2016 WL 6833508, at *5 (T.T.A.B. Aug. 2, 2016) (“[F]raud in procuring a trademark registration oc- curs when an applicant for registration knowingly makes false, material representations of fact in connection with an application to register or, in the case of maintaining a registration, when a registrant makes false, material rep- resentations of fact in connection with a Section 8 or 15 af- fidavit.” (citing Bose, 580 F.3d 1240, and Torres, 808 F.2d 46)). Case: 22-1212 Document: 65 Page: 39 Filed: 01/10/2024

bear the consequence of committing fraud, not the general public. I disagree that Section 33(b) of the Lanham Act sup- ports a different conclusion by somehow precluding the Board from cancelling a registration under Section 14 based on fraud in obtaining incontestability. See Maj. Op. 14. The majority does not dispute that Congress contem- plated that fraud may occur in obtaining incontestability and that such fraud must carry a meaningful consequence. And I agree that under Section 33(b), Congress allows a litigant, in an infringement suit, to raise a defense and re- duce the evidentiary weight of incontestability based on fraud. See 15 U.S.C. § 1115(b). The language of this sec- tion, however, does not “silently” dispossess the agency, in an administrative setting, of its authority to act under Sec- tion 14. We must not lose sight of the fact that the agency’s authority in sanctioning fraud is important because it is the general public that remains falsely informed that a mark was incontestable. Finally, we must decline the invitation to instruct the PTO on how to sanction fraudulent conduct. 10 In imple- menting and enforcing the Lanham Act, the PTO makes discretionary determinations based on “specialized experi- ence” in regulating conduct before the agency, furthering “uniformity in its administrative and judicial understand- ings of what a national law requires.” United States v. Mead Corp., 533 U.S. 218, 234 (2001); see Skidmore v. Swift & Co., 323 U.S. 134, 140 (1944) (explaining that

10 The majority remands for the PTO to “evaluate whether to impose other sanctions on Great Concepts or its attorney.” Maj. Op. 22. To the extent there is a remand, I would consider it appropriate that the PTO be given the opportunity to clarify its position on whether filing a Sec- tion 15 declaration is an action of “maintaining” a registra- tion. See supra note 6. Case: 22-1212 Document: 65 Page: 40 Filed: 01/10/2024

interpretation and opinions of the agency “constitute a body of experience and informed judgment to which courts and litigants may properly resort for guidance”). The court has no business rejecting or usurping the agency’s exercise of its vested authority. Sanctioning inequitable conduct, as here, is an action within the PTO’s authority and discretion in implementing a statute that Congress entrusted it to ad- minister. And we have long held that trademark rights un- der the Lanham Act, and conduct before the PTO to secure such rights, are not “divorced from equitable principles.” See Duffy-Mott, 424 F.2d at 1099. Fraud falls within a range of misconduct that equitable doctrines have come to identify and embrace. Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276, 1287 (Fed. Cir. 2011) (discussing evolution of equitable doctrines and range of inequitable conduct). As Great Concepts recog- nizes, “patent inequitable conduct cases,” although not binding in the trademark context, provide valuable refer- ence for fraud in trademark cases. 11 Appellant’s Br. 35 (Great Concepts stating that in cases involving fraud, this court has looked to “patent inequitable conduct cases” (cit- ing Bose, 580 F.3d at 1244–45)). In the patent context, “in- equitable conduct regarding any single claim renders the entire patent unenforceable” and may further endanger the patentee’s rights in related patents. Therasense, 649 F.3d at 1288; see also, e.g., Kingsdown, 863 F.2d at 877. I see no reason to disturb the agency’s determination that

11 The majority states that it finds unpersuasive “[ap- pellee] Chutter’s . . . analogy to patent law.” Maj. Op. 21. But it is Great Concepts that repeatedly urges the court to look to patent inequitable conduct cases to support its case. See e.g., Appellant’s Br. 33–38 (Great Concepts relying on Kingsdown, 863 F.2d 867 and Therasense, 649 F.3d 1276— both are patent inequitable conduct cases—to argue no fraud); Reply Br. 19–21 (same). Case: 22-1212 Document: 65 Page: 41 Filed: 01/10/2024

cancelling the trademark registration is the appropriate sanction for the fraud committed here. Like the patent sys- tem, under the Lanham Act, a registrant secures owner- ship of and exclusive rights to use a mark in commerce, barring everyone else from using the same. See, e.g., 15 U.S.C. § 1115 (registration as evidence of exclusive rights to use the mark). The public therefore has a “paramount interest in seeing that [such exclusive rights] spring from backgrounds free from fraud.” Precision Instrument Mfg. Co. v. Auto. Maint. Mach. Co., 324 U.S. 806, 816 (1945). CONCLUSION I would affirm the Board’s cancellation of Great Con- cepts’ mark based on fraud. I respectfully dissent.