Loss of Trademark Protection-fraud in trademark applications and affidavits!

Often times, clients file trademark applications or section 8 affidavits on their own or with a general practitioner and create a potential basis for invalidating their mark.  It is extremely important that you have a proper filing basis for your trademark in each class of goods or services you seek to register the mark.  Exact use of the mark is important, but design elements may be excluded for standard character marks.

Intent to use applications must be supported with some form of corroborative documents or records that demonstrate a desire to use the mark in each class that you include in the initial application.  Use based applications must be supported by specimens and records demonstrating use of the mark as claimed in each class that you include.

If you include a class in an initial application or a section 8 affidavit and the mark was not being used in that class of goods or services, then it is tantamount to fraud upon the USPTO.  See Turbo Sportswear v. Marmot Mountain.  This type of fraud cannot be cured by simply deleting the class after it has been filed.

Moreover, the fraud can be a basis for invalidating the entire trademark certification.  This can often ruin an entire branding or marketing strategy.  If you have any concerns or questions about any of these matters, then please feel free to contact us.

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