Great Concepts, LLC v. Chutter, Inc.

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.
______________________
O PINION I SSUED: October 18, 2023
O PINION M ODIFIED: 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) . . .”
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GREAT CONCEPTS, LLC v. CHUTTER, INC. 2
L AUREN A NN D EGNAN , Fish & Richardson P.C., Wash-
ington, DC, argued for appellant. Also represented by
J ARED HARTZMAN; CYNTHIA WALDEN, Boston, MA.
BRUCE W ILLIAM BABER , King & Spalding LLP, Atlanta,
GA, argued for appellee. Also represented by K ATHLEEN 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 , T HOMAS W. K RAUSE, F ARHEENA YASMEEN
RASHEED.
______________________
Before D YK, REYNA, and STARK, Circuit Judges.
Opinion for the court filed by Circuit Judge S TARK.
Dissenting Opinion filed by Circuit Judge R EYNA.
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
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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
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GREAT CONCEPTS, LLC v. CHUTTER, INC. 4
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.
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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.
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GREAT CONCEPTS, LLC v. CHUTTER, INC. 6
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 . . .
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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.
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GREAT CONCEPTS, LLC v. CHUTTER, INC. 8
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;
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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
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GREAT CONCEPTS, LLC v. CHUTTER, INC. 10
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.
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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”).
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GREAT CONCEPTS, LLC v. CHUTTER, INC. 12
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
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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
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GREAT CONCEPTS, LLC v. CHUTTER, INC. 14
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.
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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).
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GREAT CONCEPTS, LLC v. CHUTTER, INC. 16
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
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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.
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GREAT CONCEPTS, LLC v. CHUTTER, INC. 18
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”).
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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.”).
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GREAT CONCEPTS, LLC v. CHUTTER, INC. 20
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).
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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 statute12 – 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.
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GREAT CONCEPTS, LLC v. CHUTTER, INC. 22
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.
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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.
______________________
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
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GREAT CONCEPTS, LLC v. CHUTTER, INC. 2
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 F RAUD
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
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GREAT CONCEPTS, LLC v. CHUTTER, INC. 3
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”).
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GREAT CONCEPTS, LLC v. CHUTTER, INC. 4
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.
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GREAT CONCEPTS, LLC v. CHUTTER, INC. 5
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.
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GREAT CONCEPTS, LLC v. CHUTTER, INC. 6
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.
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GREAT CONCEPTS, LLC v. CHUTTER, INC. 7
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.
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GREAT CONCEPTS, LLC v. CHUTTER, INC. 8
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
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GREAT CONCEPTS, LLC v. CHUTTER, INC. 9
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).
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GREAT CONCEPTS, LLC v. CHUTTER, INC. 10
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
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GREAT CONCEPTS, LLC v. CHUTTER, INC. 11
(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).
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GREAT CONCEPTS, LLC v. CHUTTER, INC. 12
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.
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GREAT CONCEPTS, LLC v. CHUTTER, INC. 13
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
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GREAT CONCEPTS, LLC v. CHUTTER, INC. 14
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.
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GREAT CONCEPTS, LLC v. CHUTTER, INC. 15
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).
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GREAT CONCEPTS, LLC v. CHUTTER, INC. 16
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)).
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GREAT CONCEPTS, LLC v. CHUTTER, INC. 17
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.
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GREAT CONCEPTS, LLC v. CHUTTER, INC. 18
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).
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GREAT CONCEPTS, LLC v. CHUTTER, INC. 19
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.
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