Fraud on the PTO: Understanding the Consequences and How to Avoid It

I often find myself speaking with trademark and brand owners about the importance of being honest and truthful when filing documents with the United States Patent and Trademark Office (USPTO).    It may sound trivial to some, but I have this conversation more often than people might expect. Fraud on the USPTO, also known as “Fraud on the PTO,” is a serious legal issue that can have severe consequences for trademark owners when stakes are highest. Fraud on the PTO generally occurs when an applicant makes a material misrepresentation to the USPTO with the intent to deceive the USPTO in obtaining or maintaining a trademark registration. Given the strict legal standards for proving fraud, trademark applicants and registrants must exercise caution to ensure that all statements made to the USPTO are accurate and truthful.

• What Constitutes Fraud on the PTO?

Fraud on the PTO arises when an applicant or registrant knowingly makes a false statement of material fact with the intent to deceive the Office. Common examples of fraudulent conduct include:

1. False Claims of Use in Commerce – Stating that a mark is in use for goods or services when, in fact, it is not.
2. Submitting Deceptive Specimens – Providing doctored or fabricated evidence of use.
3. Misrepresenting Ownership – Falsely claiming ownership of a mark when another party has superior rights.
4. Knowingly Omitting Material Information – Failing to disclose information that would impact the registrability of the mark.

The Federal Circuit and the Trademark Trial and Appeal Board (TTAB) have established a high burden of proof for fraud claims. The accusing party must demonstrate that the false statement was made knowingly and with intent to deceive, which is a difficult standard to meet. While the standard is high, brand owners should be cautious about making statements they know to be false.

• Legal Consequences of Fraud on the PTO

If a trademark registration is found to have been obtained or maintained through fraud, the consequences can be severe. The USPTO or TTAB may:

1. Cancel the Registration – Fraudulent registrations can be voided entirely, leaving the owner without trademark protection.
2. Render the Entire Application Void – If fraud is found in the application process, the entire application may be deemed invalid, not just specific goods or services.
3. Expose the Registrant to Civil Liability – If a competitor or third party has suffered damages due to the fraudulent trademark, they may seek legal remedies.

• Best Practices to Avoid Fraud Claims

To mitigate the risk of fraud allegations, trademark applicants and registrants should adhere to the following best practices:

1. Ensure Accurate Use Claims – Before claiming use in commerce, verify that the mark is genuinely used in connection with all listed goods and services.
2. Provide Genuine Specimens – Submit legitimate, unaltered specimens that accurately reflect real-world use of the mark.
3. Work with Experienced Trademark Counsel – Given the complexity of trademark law, seeking guidance from a qualified attorney can help navigate compliance issues.

• Conclusion

Fraud on the USPTO is a serious matter that can jeopardize a trademark owner’s rights and expose them to significant legal risks. Given the stringent standards required to prove fraudulent intent, it is crucial for applicants to ensure that all representations made to the USPTO are truthful and well-documented. By exercising due diligence and seeking legal counsel, trademark owners can protect their rights while avoiding the severe consequences of fraud. Click HERE to learn more about Derek Fahey, a patent and intellectual property attorney with The Plus IP Firm, and the author of this article.