If you recognize the name Bose and if any of your products or services are trademarked, you now have another reason to thank the maker of high quality audio products.
Trademark owners know that keeping a trademarks healthy requires periodic “declarations of continued use” to be filed with the U.S. Patent and Trademark Office. A trademark can often cover more than one class of goods and when it does the continued use declaration can turn into an unintentional vehicle for, of all things, fraud.
How can such a thing happen?
Well, it’s common during the life cycle of a brand name for certain portions of the product line to be dropped and others added. There can be a problem if the corresponding product classes aren’t revised to reflect those changes.
In 2003, for example, a medical device company filed an intent-to-use trademark application for a mark to be used on both stents and catheters. By the time they were ready to roll down the street the mark was only in actual use on catheters, yet the company filed an actual use statement to cover both classes. Oops.
When a competitor later challenged the mark and tried to cancel the mark the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board agreed with them on the bases that the actual use statement was inaccurate. They said it was fraud. That decision make a lot of folks nervous. It meant that an even an innocent mistake could jeopardize the entire mark. Actual use and continued use declarations now needed to be reviewed with a fine tooth comb. No more blanket declarations.
Then along comes Bose who just last month received a ruling that lets us all breath a sigh of relief. Bose had filed a declaration of continued use for its WAVE mark which was used on a bunch of goods, including audio tape players and recorders. When a competitor tried to apply for the mark HEXAWAVE Bose opposed the registration, but the competitor fought back and tried to cancel the WAVE mark because Bose was no longer made new products with that mark at the time it filed it’s declaration of continued use. The general counsel who signed that declaration claimed it was justified because Bose was still actively repairing equipment bearing that mark.
The Board rejected Bose’s argument, but Bose won on appeal. The Federal Circuit reversed the earlier case on the basis that it used the wrong standard for fraud. The standard for deception had to be stricter than mere negligence. The applicant needs to knowingly make a false representation that’s material and it needs to be made with the intent to deceive.
Thanks to Bose’s persistence, some new law was made that lets us all breathe a little easier and ride the coattails of the WAVE.
(*WAVE is a registered trademark of Bose.)