Trademark Fraud Claim and Self-Audit Checklist: Declarations, Specimens, and Cure

By Casey Scott McKay · 2026-02-24

This checklist is the working instrument for two jobs that share a single body of law: auditing your own USPTO declarations before someone else does, and deciding whether a fraud claim against somebody else's registration is worth bringing. Eleven phases run from pulling the complete TSDR file wrapper and reading every sworn statement in it, through pinning a false statement to a named signer and an operative date, testing materiality and USPTO reliance, assembling the intent record that In re Bose actually requires, and pricing expungement, reexamination, statutory nonuse, abandonment, and Section 18 restriction against the cost of fraud. It supplies the pleading elements that survive Rule 9(b) and Exergen, the discovery and deposition sequence aimed at what the declarant knew on the day he signed, and the defense order of operations that starts with particularity and reliance. On the registrant's side it walks the cure instruments in order — amendment during prosecution, deletion in a maintenance filing, a Section 7 request under 37 C.F.R. § 2.173, and partial surrender under § 2.172 — with the Zanella timing rule that makes correcting early worth more than any argument you could make later. It closes with the pre-signature audit that removes the falsity element entirely and with the practitioner's separate exposure under 37 C.F.R. § 11.18. A single invented matter, Konza Foods against Tallgrass Provisions, is carried through every phase so the reader can see what finished work looks like.

IP and Technology > Trademarks | Checklist | Published 24 February 2026 - Updated 23 April 2026 | Casey Scott McKay - marksy.us

Summary. This checklist is the working instrument for two jobs that share a single body of law: auditing your own USPTO declarations before someone else does, and deciding whether a fraud claim against somebody else's registration is worth bringing. Eleven phases run from pulling the complete TSDR file wrapper and reading every sworn statement in it, through pinning a false statement to a named signer and an operative date, testing materiality and USPTO reliance, assembling the intent record that In re Bose actually requires, and pricing expungement, reexamination, statutory nonuse, abandonment, and Section 18 restriction against the cost of fraud. It supplies the pleading elements that survive Rule 9(b) and Exergen, the discovery and deposition sequence aimed at what the declarant knew on the day he signed, and the defense order of operations that starts with particularity and reliance. On the registrant's side it walks the cure instruments in order — amendment during prosecution, deletion in a maintenance filing, a Section 7 request under 37 C.F.R. § 2.173, and partial surrender under § 2.172 — with the Zanella timing rule that makes correcting early worth more than any argument you could make later. It closes with the pre-signature audit that removes the falsity element entirely and with the practitioner's separate exposure under 37 C.F.R. § 11.18. A single invented matter, Konza Foods against Tallgrass Provisions, is carried through every phase so the reader can see what finished work looks like.

Keywords: trademark fraud checklist · self-audit of trademark filings · false declaration of use · in re bose · intent to deceive · materiality and reliance · rule 9(b) particularity · exergen pleading standard · section 7 amendment · deleting goods from a registration · zanella presumption · ex parte expungement · reexamination petition · section 8 declaration audit · specimen provenance · deposing the declarant · ttab cancellation · 37 c.f.r. 11.18 · uspto post-registration audit · statutory nonuse cancellation

What this checklist is for

Two tasks, one body of law. Task A: you own registrations and want to know whether any of your sworn statements is false, and how to fix it before a competitor finds it. Task B: a registration is blocking you or suing you, its identification of goods looks like fiction, and you are deciding whether to plead fraud.

Both tasks turn on the same four questions — what was said, was it false when said, did the USPTO care, and did the person who signed know. Run the phases in order. Skip nothing in Phases 1 through 4; those are the ones that determine whether the rest of the work is worth doing.

Who should use it. Trademark prosecution counsel before signing any verified statement; TTAB and district court litigators evaluating a cancellation or counterclaim; in-house counsel auditing a portfolio; deal counsel reading a target's register.

What you need before you start. TSDR access to the complete file wrapper for every application and registration in scope; the owner's SKU-level sales records by year; the docketing report showing every filing deadline for the next 24 months; the identity and current employment status of every person who has signed a USPTO declaration for the owner; and a copy of 37 C.F.R. § 2.6 current as of today, because every fee below moves.

The doctrine is not repeated here. What In re Bose Corp., 580 F.3d 1240 (Fed. Cir. 2009), holds, what Medinol used to hold, and why Great Concepts matters live in Fraud on the Trademark Office: What In re Bose Actually Requires. Model pleading language, model discovery, and the full deposition outline live in Pleading and Proving Trademark Fraud. The curated set of related instruments is the Trademark Integrity Toolkit.

The matter carried through every phase

Konza Foods, Inc. of Lawrence, Kansas applied on 14 January 2026 to register TALLGRASS TRAIL, Serial No. 98/774,215, for "meat-based snack bars" in Class 29. On 2 April 2026 the examining attorney refused under Section 2(d) citing Reg. No. 5,412,668 for TALLGRASS, owned by Tallgrass Provisions, Inc. of Wichita. That registration issued 27 March 2018 from use-based application Serial No. 87/612,904, filed 2 August 2017, covering in Class 29: "beef jerky; turkey jerky; pork rinds; meat-based snack bars; canned chili." Tallgrass sells beef jerky. It sold a turkey product for eight months in 2019. It has never made pork rinds, snack bars, or chili.

You will see the matter from both chairs — Konza's counsel in Phases 3 through 8, Tallgrass's counsel in Phases 9 through 11.

The phases at a glance

| Phase | Name | Whose job | Typical effort | |---|---|---|---| | 1 | Open the file and set the posture | Both | 1-2 hours | | 2 | Audit every sworn statement in the record | Both | 3-6 hours per registration | | 3 | Pin the false statement to a signer and a date | Challenger | 2-4 hours | | 4 | Screen for materiality and USPTO reliance | Both | 2-3 hours | | 5 | Build the intent file — or the good-faith file | Both | 10-25 hours | | 6 | Price every alternative before choosing fraud | Challenger | 2 hours, then the client decides | | 7 | Plead a count that survives Rule 9(b) | Challenger | 8-15 hours | | 8 | Discovery aimed at the declarant's knowledge | Challenger | 4-8 months | | 9 | Cure your own registration | Registrant | 90 minutes per registration | | 10 | Defend a fraud claim | Registrant | Ongoing | | 11 | Institutionalize the pre-signature audit | Both | 1 hour per filing, forever |

Phase 1 — Open the file and set the posture

[ ] Download the complete TSDR file wrapper for every application and registration in scope, including all documents, all specimens at native resolution, and the assignment records.
- Why. You cannot test reliance without the office actions and you cannot test falsity without the specimens as filed. A certificate tells you nothing.
- Trap. The TSDR "Documents" tab compresses images. Pull the native specimen files; a fabricated label often survives compression as a suspiciously clean edge.
[ ] Write a one-sentence objective statement at the top of the file: exactly what the client needs, in words a client would use.
- Why. For Konza it is "get meat-based snack bars out of Class 29 of Reg. No. 5,412,668." Not a fraud finding. Nine matters in ten end there, and the sentence keeps the budget honest.
[ ] Identify every natural person who has signed a verified statement in the file, by name, title, and current employment status.
- Authority. 37 C.F.R. § 2.193(e)(1); TMEP § 611.03(a). Only a person with legal authority to bind the owner, a person with firsthand knowledge and authority to act, or an attorney with an actual or implied power of attorney may sign.
- Trap. A departed signer is a discovery problem for the challenger and a proof problem for the registrant. Find out now, not in month nine.
[ ] Docket the clocks that are already running — response deadlines on your own application, the next Section 8 or Section 9 window, and the incontestability window.
- Authority. 37 C.F.R. § 2.62(a) (three months to respond to an office action, extendable once by three months on request and fee; six months, non-extendable, for a Section 66(a) application). See The 3-Month Office Action Deadline.
[ ] Confirm the forum consequences before you commit. The TTAB cancels; it awards no damages, no injunction, and no fees. A district court can do all three under 15 U.S.C. §§ 1119, 1120, and 1117(a).
- Authority. See Federal Court vs. TTAB and TTAB Proceedings: Opposition vs. Cancellation.

Phase 2 — Audit every sworn statement in the record

[ ] List the five moments at which somebody swore something, and pull each one: the Section 1(a) or 1(b) filing declaration, any amendment to allege use or statement of use, every Section 8 or Section 71 affidavit, any Section 9 renewal, and any Section 15 declaration.
- Authority. 15 U.S.C. §§ 1051(a)(3), 1051(b)(3), 1051(c)-(d), 1058, 1059, 1065, 1141k; 37 C.F.R. § 2.20.
[ ] Read the identification of goods aloud, line by line, against a SKU-level sales report for the operative year. Mark every item green (documented sale), amber (sale claimed but not documented), or red (never sold).
- Why. This is the entire audit. Everything else is commentary. The USPTO's own pre-rule pilot audited 500 registrations and found that 253 could not support the goods claimed.
- Trap. "We sold it once at a trade show" is amber, not green, until you can produce the invoice. Keep the distinction; you will need it in Phase 5.
[ ] Check each specimen against the three failure modes: a digital mock-up rather than a photograph, a webpage for goods with no way to order, and a mark that does not match the drawing.
- Authority. TMEP § 904.04(a) (mock-ups and renderings are not use); TMEP § 904.03(i) (webpage displays must show the mark with the goods and a means of ordering); 37 C.F.R. § 2.56(c) (a webpage specimen must include the URL and the date accessed or printed). The full taxonomy is in Specimen Refusals.
- Trap. A specimen that was fine when filed can still be a problem if it post-dates the operative date. A substitute specimen requires a verified statement that it was in use in commerce before the relevant filing. 37 C.F.R. § 2.59.
[ ] For any Section 2(f) claim, list every third-party use of the term the signer knew about when swearing to "substantially exclusive and continuous" use.
- Authority. 15 U.S.C. § 1052(f). Third-party uses count in the aggregate and the challenger need not show those users had proprietary rights. Galperti, Inc. v. Galperti S.r.l., 17 F.4th 1144 (Fed. Cir. 2021). Building that record properly is Claiming Acquired Distinctiveness at the USPTO and its Secondary Meaning Evidence Checklist.
[ ] For any Section 15 declaration, confirm no USPTO proceeding or court action involving the claimed rights was pending on the signature date.
- Authority. 15 U.S.C. § 1065; 37 C.F.R. § 2.167. This is the Great Concepts fact pattern. See Section 15 Incontestability.
[ ] Verify the owner named in the application was the owner on the filing date.
- Authority. An application filed by the wrong entity is void ab initio and cannot be cured by assignment. Huang v. Tzu Wei Chen Food Co., 849 F.2d 1458, 1460 (Fed. Cir. 1988). Founders who file personally and later form an LLC create this constantly; see the Trademark Due Diligence Checklist.
[ ] Flag any Section 44(e) or Section 66(a) registration for separate treatment.
- Why. These issued without proof of use and their identifications are usually translated from a home registration that rewards breadth. They are the largest single source of inaccurate declarations, and they are almost never fraud. See The Madrid Protocol.

Applied to Konza. The audit of Reg. No. 5,412,668 yields two green items (beef jerky, and turkey jerky for 2019 only) and three red ones. The 12 February 2024 combined Section 8 and 15 declaration was signed by office manager Dana Reyes with a photograph of a beef jerky bag. The registration is now incontestable, which forecloses a traditional nonuse attack and pushes Konza toward expungement, abandonment, or fraud.

Phase 3 — Pin the false statement to a signer and a date

[ ] Quote the false statement verbatim from the filing, with the document title and the filing date.
- Why. Rule 9(b) is a quotation requirement in practice. "Respondent misrepresented its use" is not a statement.
[ ] Name the individual who signed it and reproduce the electronic signature exactly as it appears in the file — for the Konza matter, "/Marcus T Dowell/," entered 2 August 2017.
- Authority. Fed. R. Civ. P. 9(b); Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1327 (Fed. Cir. 2009), imported into Board practice by Asian & Western Classics B.V. v. Selkow, 92 U.S.P.Q.2d 1478 (T.T.A.B. 2009).
[ ] Fix the operative date to which falsity is measured, and write it down.
- Authority. For a registration from a use-based application, the application filing date, not any earlier claimed first-use date. Clorox Co. v. Salazar, 108 U.S.P.Q.2d 1083 (T.T.A.B. 2013). For a registration from an intent-to-use application, the deadline for filing the statement of use, not the date it was filed. Embarcadero Techs., Inc. v. Delphix Corp., 117 U.S.P.Q.2d 1518 (T.T.A.B. 2016). For a maintenance declaration, the date of that filing.
[ ] Delete from your theory every allegation built on an inaccurate first-use date.
- Authority. First-use dates are informational; the office does not rely on them and they are not evidence. 37 C.F.R. § 2.122(b)(2); Hiraga v. Arena, 90 U.S.P.Q.2d 1102 (T.T.A.B. 2009); Angel Flight of Ga., Inc. v. Angel Flight Am., Inc., 522 F.3d 1200, 1210 (11th Cir. 2008).
- Trap. This single error accounts for a large share of dismissed fraud counts. If the applicant was using the mark somewhere before the operative date, a wrong first-use date is immaterial. If it was using the mark nowhere, plead nonuse — the date is not your problem, the claim of use is.
[ ] Prove falsity from sources you can authenticate without the registrant.
- Why. Archived captures of the registrant's site with the URL and capture date visible; marketplace and distributor listings; trade-show exhibitor lists; and above all regulatory registries. Tallgrass's Kansas Department of Agriculture food-establishment license, in effect since 2016, authorizes only "dried meat snacks." A party that could not lawfully sell the goods on the day it swore it was selling them has a problem no declaration fixes.
- Authority. 37 C.F.R. § 2.91(d) requires a described "reasonable investigation" for an ex parte petition; use it as your evidence standard even if you never file one. Authentication mechanics are in the Evidence and Expert Witness Toolkit.
[ ] Keep a negative-findings log: sources searched, search strings, dates, and what was not found.
- Trap. An examiner will not institute an expungement or reexamination proceeding on a gestural "we searched the internet." Describe the search so it can be replicated.

Phase 4 — Screen for materiality and USPTO reliance

[ ] Ask whether the office needed the statement to do what it did. If the answer is no, stop.
- Authority. A statement is material only if it was critical to the decision to approve the application or accept the filing. Hiraga, 90 U.S.P.Q.2d 1102.
[ ] Read the prosecution history forward and identify the specific examiner action taken after the statement — approval for publication, withdrawal of a refusal, acceptance of a maintenance filing.
- Why. In the Konza matter the examining attorney approved Serial No. 87/612,904 for publication on 21 November 2017 with no office action questioning use. That is reliance, pleadable with a date.
- Authority. Where the examining attorney maintained the refusal after receiving the challenged declaration and registered on a different showing, there is no reliance and no fraud. OTR Wheel Eng'g, Inc. v. W. Worldwide Servs., Inc., 897 F.3d 1008, 1021 (9th Cir. 2018). The reading technique is in the Office Action Response Toolkit.
[ ] Classify the statement as procurement or maintenance, and if maintenance, as mandatory or optional.
- Authority. Section 14(3) reaches fraud in obtaining a registration. 15 U.S.C. § 1064(3). Fraud in an optional Section 15 declaration does not support cancellation. Great Concepts, LLC v. Chutter, Inc., 90 F.4th 1333 (Fed. Cir. 2023). A Section 8 declaration is mandatory — without it the registration dies by operation of law, 15 U.S.C. § 1058(a) — so a registration kept alive by a false Section 8 is fairly described as having had its continued existence obtained fraudulently. That argument is contested at the edges; make it deliberately.
[ ] Check whether the registration is incontestable, and re-run your options if it is.
- Authority. Fraud pierces incontestability, 15 U.S.C. § 1115(b)(1), and so does abandonment. Traditional nonuse does not. NetJets Inc. v. IntelliJet Grp., LLC, 678 F. App'x 343, 348 (6th Cir. 2017).
[ ] Count the classes, and price the outcome class by class.
- Authority. Within one class, proved fraud takes the whole class including the goods actually sold. Meckatzer Löwenbräu Benedikt Weiß KG v. White Gold, LLC, 95 U.S.P.Q.2d 1185 (T.T.A.B. 2010). Across classes, each is judged separately. G&W Labs., Inc. v. G W Pharma Ltd., 89 U.S.P.Q.2d 1571 (T.T.A.B. 2009).

Phase 5 — Build the intent file, or the good-faith file

[ ] Challenger: name the single document or admission that shows the signer knew. Write it on the front of the file. If the space is blank, you do not have a fraud claim yet.
- Authority. "Subjective intent to deceive, however difficult it may be to prove, is an indispensable element." Bose, 580 F.3d at 1245. Circumstantial evidence is permitted, but it must still be clear and convincing, and "any doubt must be resolved against the charging party." Id. at 1243.
[ ] Inventory the six categories that actually produce intent evidence: the signer's custodial email from six months before to three months after the filing; the filing service's complete intake file; SKU-level sales records; product-development files for the never-sold goods; specimen native files with metadata; and any USPTO audit correspondence under 37 C.F.R. § 2.161(b).
- Why. Audit correspondence is the best of these when it exists — it is a prior admission of nonuse made to the office itself.
[ ] Test your theory against the credibility standard, not the smoking-gun standard.
- Authority. Deceptive intent may be inferred where the party's testimony about its own use is so lacking in credibility that it undermines the truth of what was told to the office; no smoking gun is required. Nationstar Mortg. LLC v. Ahmad, 112 U.S.P.Q.2d 1361 (T.T.A.B. 2014). That is still the Board's only precedential post-Bose fraud win, and it was won at deposition.
[ ] Do not build the claim on recklessness alone without saying so out loud to the client.
- Authority. The Board held reckless disregard sufficient in Chutter, Inc. v. Great Mgmt. Grp., LLC, 2021 U.S.P.Q.2d 1001 (T.T.A.B. 2021); the Federal Circuit reversed on other grounds and expressly declined to reach the question. Bose reserved it in footnote 2. It is the most consequential unsettled issue in this area and your claim should not silently depend on it.
- Trap. Willful blindness is not intent to deceive in the Eleventh Circuit. Sovereign Military Hospitaller Order v. Fla. Priory, 702 F.3d 1279, 1292 & n.12 (11th Cir. 2012).
[ ] Registrant: build the mirror file. Identify the source of the signer's belief and preserve it in writing now.
- Why. A genuinely held belief, however legally wrong, is a complete answer. Bose, 580 F.3d at 1246; Haggar Int'l Corp. v. United Co. for Food Indus. Corp., 906 F. Supp. 2d 96, 107 (E.D.N.Y. 2012). "I did not intend to deceive" is a legal conclusion. "I understood 'use in commerce' to include the co-packed line launching in September, and here is the 12 June co-packing agreement" is a defense.

Applied to Konza. The intent file has one item: a 19 July 2017 email from Marcus Dowell to Sunflower Filing Services LLC — "Just take the goods list off the Prairie Cut registration — we can grow into the rest of it." Two weeks later he swore the mark was already in use on all of it. That email is the difference between a fraud count and a motion to dismiss.

Phase 6 — Price every alternative before choosing fraud

[ ] Run the menu top to bottom and take the first route that delivers the objective sentence from Phase 1.

| Route | Authority | Window | Government fee (per class) | Discovery | What you get | |---|---|---|---|---|---| | Ex parte reexamination | 15 U.S.C. § 1066b | Registration under 5 years old, use-based | ~$400 | No | Goods deleted | | Ex parte expungement | 15 U.S.C. § 1066a | Registration 3-10 years old | ~$400 | No | Goods never used are deleted | | Statutory nonuse cancellation | 15 U.S.C. § 1064(6) | Any time 3+ years after registration | ~$600 | Yes | Goods deleted; survives incontestability | | Traditional nonuse / void ab initio | 15 U.S.C. §§ 1064, 1115(b) | First 5 years only | ~$600 | Yes | Registration void, or goods deleted | | Abandonment | 15 U.S.C. § 1127 | Any time; survives incontestability | ~$600 | Yes | Whole or partial cancellation | | Section 18 restriction | 15 U.S.C. § 1068 | Opposition or cancellation | ~$600 | Yes | Identification narrowed to defeat confusion | | Lack of bona fide intent | 15 U.S.C. § 1051(b) | Against ITU filings | ~$600 | Yes | Application void, or goods deleted | | Fraud | 15 U.S.C. § 1064(3) | Any time; survives incontestability | ~$600 | Yes | Entire class falls |

Verify every figure against 37 C.F.R. § 2.6 on the day you file.

[ ] Confirm the expungement or reexamination window against the registration date before drafting anything.
- Trap. These are one-shot instruments. Once a proceeding has been instituted and decided as to particular goods, the statute bars a second run at the same goods. Put the whole investigation in the first petition.
[ ] Where the mark was used and then dropped for three consecutive years, plead abandonment and let the presumption work.
- Authority. 15 U.S.C. § 1127. The proof strategy is Proving and Defeating Trademark Abandonment, and the evidence inventory is the Trademark Abandonment Evidence Checklist. Background doctrine: Use It or Lose It.
[ ] Tell the client, in writing, what a fraud win does not deliver: no damages at the Board, no fees, no injunction, and no effect on the common-law rights your opponent actually built.
- Authority. Your opponent can sue under 15 U.S.C. § 1125(a) the day after you cancel. See Establishing and Proving Common-Law Trademark Rights.

Applied to Konza. Reg. No. 5,412,668 is eight years old, so reexamination is out and expungement is in. Konza petitions the Director as to "pork rinds; meat-based snack bars; canned chili," files its negative-findings log with the petition, and moves to suspend prosecution of Serial No. 98/774,215 — while still meeting the response deadline on the outstanding Section 2(d) refusal. Total cost, roughly $6,500 against $90,000-plus for a litigated fraud count.

Phase 7 — Plead a count that survives Rule 9(b)

[ ] Confirm the vehicle: at the Board, fraud is a claim or a compulsory counterclaim, never a bare affirmative defense against a pleaded registration.
- Authority. 37 C.F.R. § 2.106(b)(3); a defense attacking the plaintiff's registration without a counterclaim is an improper collateral attack. In district court, fraud may be a claim, counterclaim, or defense. Filing mechanics: Filing a Petition for Cancellation and, pre-registration, TTAB Opposition Filing Checklist.
[ ] Plead entitlement to a cause of action first — for Konza, its own refused application.
[ ] Draft the fraud count so that each numbered paragraph maps to one element, in this order:
- [ ] The filing, its serial or registration number, its date, and its statutory basis.
- [ ] The verified statement, quoted.
- [ ] The named individual who signed, and the signature as entered.
- [ ] Falsity, pleaded with facts — sales, licenses, absence of any SKU — not with characterization.
- [ ] Contemporaneous knowledge, pleaded with the document.
- [ ] Materiality and reliance, tied to a dated examiner action.
- [ ] Deceptive intent as a plausible and logical inference from the pleaded facts, not a merely possible one.
- [ ] Damage to the petitioner.
- Authority. Exergen, 575 F.3d at 1327-29; Asian & W. Classics, 92 U.S.P.Q.2d 1478; TBMP § 309.03(c).
[ ] Strike these four phrases from the draft.

| Phrase | Why it kills the count | |---|---| | "knew or should have known" | Pleads the Medinol standard, expressly rejected. Bose, 580 F.3d at 1245. | | "upon information and belief, Registrant intended to deceive" | Requires the known facts underlying the belief. Asian & W. Classics, 92 U.S.P.Q.2d 1478. | | "the identification is implausibly broad" | An argument, not a fact. Breadth is the register's normal condition. | | "falsely claimed a first use date of…" | Immaterial. 37 C.F.R. § 2.122(b)(2); Hiraga, 90 U.S.P.Q.2d 1102. |

[ ] If you do not yet have the knowledge paragraph, do not write it. Plead nonuse and abandonment now and move to amend under Fed. R. Civ. P. 15(a) when discovery earns the count.
- Trap. A counterclaim attacking a pleaded registration must be filed with the answer or promptly after the grounds are learned. 37 C.F.R. §§ 2.106(b)(3), 2.114(b)(3). "Promptly" is measured from when you learned, so document the date you learned.
[ ] Before filing in district court, satisfy yourself the count has evidentiary support.
- Authority. Fed. R. Civ. P. 11(b)(3), with the 21-day safe harbor of Rule 11(c)(2). A fraud count filed on suspicion can support an exceptional-case fee award against your client under 15 U.S.C. § 1117(a); what that costs is quantified in What a Trademark Win Is Worth.

Phase 8 — Discovery aimed at the declarant's knowledge

[ ] Serve document requests in two tracks: requests aimed at the company prove falsity; requests aimed at the human prove intent.
- Authority. 37 C.F.R. § 2.120(a)(1) adopts Fed. R. Civ. P. 26(b)(1) proportionality. You get 75 interrogatories, 75 requests for production, and 75 requests for admission, counting subparts. 37 C.F.R. § 2.120(d), (e). Mechanics: Understanding TTAB Discovery and the Protective Order.
[ ] Request sales "under any mark" for each contested good, by SKU and by year.
- Why. The unlimited-mark phrasing forecloses the answer that sales existed under a different brand.
[ ] Request the filing service's complete file — intake forms, the client's answers, and the goods list as submitted versus as filed.
- Trap. Communications with a non-lawyer filing service, an overseas agent, or a docketing vendor are frequently not privileged at all. Establish who was on the email before you litigate crime-fraud.
[ ] Request every specimen native file with embedded metadata, and compare it against archived captures of the same page.
[ ] Serve one interrogatory asking what the signer reviewed, consulted, or relied upon before signing, and one contention interrogatory asking whether the registrant contends the signer believed the statement true.
- Why. A list gives you exhibits. An empty answer establishes that a verified statement of fact was made without consulting anything.
[ ] Serve requests for admission that force a binary on the never-sold goods and on the absence of pre-signature inquiry.
[ ] Preserve the privilege posture deliberately: get a Fed. R. Evid. 502(d) order by stipulation, and log privilege with enough detail to test the claim. Fed. R. Civ. P. 26(b)(5)(A).
- Why. The defense that the signer relied on counsel injects the advice into the case and waives privilege as to its subject matter, cabined by Fed. R. Evid. 502(a). Decide that before you answer discovery, not in hour three of a deposition.
[ ] Take the signer's deposition last, after every sales record and RFA response is in hand, and notice a Fed. R. Civ. P. 30(b)(6) deposition on specimen creation, sales by good, and how the identification was prepared.
- Authority. A discovery deposition of a party, officer, or 30(b)(6) designee may be offered in evidence by an adverse party. 37 C.F.R. § 2.120(k)(1). This transcript may be your trial record.
- Trap. If the signer is a natural person residing abroad, the discovery deposition must be by written questions unless the parties stipulate otherwise or the Board orders oral examination for good cause. 37 C.F.R. § 2.120(c). Written questions cannot win a credibility case. Negotiate an oral deposition at the discovery conference or litigate nonuse instead. For US non-party witnesses, the Board issues no subpoenas — you get one from the district court where the witness resides or is employed. 35 U.S.C. § 24.
[ ] Docket the two motion deadlines you cannot miss: a motion to compel must be filed before the deadline for the first pretrial disclosures, 37 C.F.R. § 2.120(f)(1), and summary judgment must follow initial disclosures and precede that same pretrial-disclosure deadline, 37 C.F.R. § 2.127(e)(1).
- Why. As a challenger you will rarely win summary judgment on fraud; the clear-and-convincing standard is applied at the summary judgment stage, Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 254 (1986), and Bose's tie-breaker runs against you. Spend the money on trial.

Phase 9 — Cure your own registration

This is the highest-value hour in the entire subject.

[ ] Check whether a fraud claim has been threatened or asserted. Everything below depends on the answer.
- Authority. A correction made before a challenge creates a rebuttable presumption that the registrant lacked deceptive intent. Zanella Ltd. v. Nordstrom, Inc., 90 U.S.P.Q.2d 1758 (T.T.A.B. 2008). After a claim is live, you cannot cure by amendment — including by switching the filing basis from use to intent to use. Nationstar, 112 U.S.P.Q.2d 1361.
[ ] Pick the instrument.

| Instrument | Authority | Fee | Use it when | |---|---|---|---| | Amend the application before registration | 37 C.F.R. § 2.71 | None for narrowing | Caught during prosecution | | Delete goods in the maintenance filing as submitted | 15 U.S.C. §§ 1058, 1059; TMEP § 1604 | None | You are inside a Section 8, 9, or 71 window | | Delete goods after submission and before acceptance | 37 C.F.R. § 2.6 | Per-class fee applies | You caught it late in the window | | Section 7 request to amend the registration | 15 U.S.C. § 1057(e); 37 C.F.R. § 2.173 | Modest per-request fee | Between maintenance windows | | Surrender in part | 15 U.S.C. § 1057(e); 37 C.F.R. § 2.172 | None | Relinquishing goods or a whole class outright |

Confirm every fee against 37 C.F.R. § 2.6 before filing.

[ ] File the Section 7 request now rather than waiting for the next renewal window, and have it signed and verified by a person qualified under 37 C.F.R. § 2.193(e)(1).
- Why. It creates a dated, public act of correction that predates any challenge — the Zanella predicate — moots falsity going forward, and removes the goods a competitor would use to justify an expungement petition.
- Trap. Deletions are irrevocable. Once a good is out, getting it back means a new application with a new priority date. Confirm with the client, in writing, that the good is truly dead.
[ ] Write the amendment recital so it states the three things the office needs: the goods deleted, the identification as amended, and that the mark is in use on everything that remains.
[ ] Send the client a plain-English paragraph explaining that deleting unsold goods does not reduce the rights they actually have — they own no rights in goods never sold, and the paper claim exposes the whole class.
[ ] If a Section 15 declaration was filed while a proceeding was pending, decide consciously whether to withdraw the Section 15 claim, and paper the advice.
- Why. Great Concepts means the false Section 15 will not cancel the registration, but it does forfeit the incontestable status it purported to obtain and exposes the signer to sanction under 37 C.F.R. § 11.18. Losing incontestability re-opens descriptiveness attacks, so this is a real decision.
[ ] If you are responding to a post-registration audit, treat the requested proof as the whole audit, not the sampled goods.
- Authority. 37 C.F.R. § 2.161(b). Deleting only the audited items invites a second inquiry into the rest.

Applied to Tallgrass. Had Tallgrass's counsel run Phase 2 in January 2024, the fix was a deletion of "pork rinds; meat-based snack bars; canned chili" inside the Section 8 as submitted — no separate fee, no examiner inquiry, no Zanella question, and Konza's 2026 refusal never issues because the blocking goods are gone. That is ninety minutes of work that would have prevented a $90,000 problem.

Phase 10 — Defend a fraud claim

[ ] Move to dismiss on particularity, almost always. Test whether the pleading names the signer, quotes the statement, alleges facts showing that person's contemporaneous knowledge, and alleges what the office did in reliance. If any of the four is missing, move.
[ ] Pull the prosecution history and hunt for the reliance defense before you do anything else substantive. OTR Wheel, 897 F.3d at 1021, is a complete defense most defendants never look for.
[ ] Interrogate materiality. First-use dates are not material. Statements the examiner never reached are not material. Optional filings raise Great Concepts.
[ ] Build the belief with documents. A declaration that supplies a source for the signer's understanding and a contemporaneous document consistent with it will usually carry summary judgment; a bare denial will not.
- Authority. Celotex Corp. v. Catrett, 477 U.S. 317, 322-23 (1986), lets you point to the absence of evidence on intent; the challenger must then produce evidence from which a factfinder could find deceptive intent clearly and convincingly.
[ ] Attack the remedy. Make the challenger say out loud what cancellation buys it that a nonuse deletion would not.
[ ] Do not amend the registration after the claim is live and expect it to help, and do not assert advice of counsel casually.
[ ] Prepare the signer by walking the identification line by line, in advance, with the sales records in front of him.
- Trap. A witness who has never seen the identification before the deposition will improvise. Improvisation is how Nationstar was lost.

Phase 11 — Institutionalize the pre-signature audit

[ ] Insert a mandatory use check in the docketing chain ahead of every Section 1(a) filing, statement of use, Section 8, Section 9, and Section 71 filing.
- Why. It removes the falsity element, which is a better defense than any argument about intent, and it is the only fact pattern in which an adopted reckless-disregard standard would put your client at risk.
- Authority. Build it into the Section 8 & 9 Renewal Checklist, the Annual Trademark Portfolio Review Checklist, and the Trademark Portfolio Management Toolkit. Filing mechanics: Filing a Section 8 Declaration of Continued Use and the Section 8 Declaration — Template.
[ ] Require the person who will sign to read the goods aloud against a current sales report — not a paralegal, not the docketing vendor.
[ ] Never let anyone enter another person's electronic signature, even with express permission.
- Authority. 37 C.F.R. § 2.193(e)(1); TMEP § 611.03(a). Most signature defects are curable by substitute verification and are not fraud, but a signature entered by someone else on a substantively false declaration combines a procedural defect with an actual lie.
[ ] Draft identifications you can still swear to in year six.
- Authority. Drafting an Identification of Goods and Services and the Goods and Services Identification Checklist.
[ ] When use has not begun, file an extension request instead of alleging use.
- Authority. 15 U.S.C. § 1051(d); see From Notice of Allowance to Registration, the Statement of Use Filing Checklist, and the Request for Extension of Time to File a Statement of Use — Template. The underlying doctrine is in Intent-to-Use Applications.
[ ] Read 37 C.F.R. § 11.18(b)(2) once a year.
- Why. Every USPTO paper certifies that, after "an inquiry reasonable under the circumstances," the factual allegations have evidentiary support. Forwarding a template and filing whatever comes back does not satisfy it, and the practitioner's exposure to the Office of Enrollment and Discipline outlives the client's exposure to cancellation.
- Authority. 37 C.F.R. §§ 11.18(b)-(d), 11.303(a)(1), 11.303(d) (affirmative duty to disclose material facts in an ex parte proceeding — and prosecution before an examining attorney is one), 11.804(c).

Common Mistakes

Pleading fraud because it sounds strong. It draws a motion to dismiss you will lose, costs three months in amendment cycles, and makes a Board panel read your remaining counts skeptically.
Building the count on a wrong first-use date. Immaterial, every time, unless there was no use at all — in which case plead nonuse.
Skipping the prosecution history. If the examiner maintained the refusal after the challenged statement, the claim is dead on reliance and you will learn it from the other side's brief.
Confusing breadth with dishonesty. Roughly half of audited maintenance declarations overstate use. Almost none of it is fraud, and a claim that assumes otherwise is a negligence claim in costume.
Amending after the accusation. Post-claim deletion is a concession of nonuse that leaves the fraud count standing. Pre-claim deletion buys the Zanella presumption.
Filing a thin ex parte petition "to see what happens." Institution and decision as to particular goods bars a second run at the same goods.
Forgetting that a Board win is only cancellation. No damages, no injunction, no fees, and the common-law rights survive untouched.
Letting the signer see the identification for the first time at deposition.
Treating a signature defect as fraud. Most are curable by substitute verification; fraud is about the truth of the statement, not the mechanics of the signature block.
Missing the counterclaim window. File with the answer or promptly after the grounds are learned, and document when you learned.

Deadlines at a Glance

| Event | Deadline | Authority | |---|---|---| | Section 8 declaration of continued use | Between the 5th and 6th anniversaries of registration; 6-month grace period with per-class surcharge | 15 U.S.C. § 1058(a)(1); 37 C.F.R. § 2.160 | | Combined Sections 8 and 9 renewal | Within the year before the end of each 10-year period; same grace period | 15 U.S.C. §§ 1058(a)(3), 1059(a) | | Section 71 affidavit (Section 66(a) registrations) | Same windows, run from the US registration date | 15 U.S.C. § 1141k | | Section 15 declaration | After 5 consecutive years of use; file within the year following that period | 15 U.S.C. § 1065; 37 C.F.R. § 2.167 | | Response to an examining attorney's office action | 3 months, extendable once by 3 months on request and fee; 6 months non-extendable for Section 66(a) | 37 C.F.R. § 2.62(a) | | Response to a post-registration office action or audit inquiry | The period stated in the Office action, extendable on request and fee | 37 C.F.R. § 2.163 | | Ex parte reexamination petition | Registration under 5 years old | 15 U.S.C. § 1066b(b) | | Ex parte expungement petition | Registration 3-10 years old | 15 U.S.C. § 1066a(b) | | Statutory nonuse cancellation | Any time 3+ years after registration | 15 U.S.C. § 1064(6) | | Traditional nonuse / void ab initio | First 5 years after registration only | 15 U.S.C. §§ 1064, 1115(b) | | Fraud cancellation | Any time; survives incontestability | 15 U.S.C. §§ 1064(3), 1115(b)(1) | | Answer to a petition to cancel | 40 days from institution | 37 C.F.R. § 2.114; institution order | | Counterclaim attacking a pleaded registration | With the answer, or promptly after the grounds are learned | 37 C.F.R. §§ 2.106(b)(3), 2.114(b)(3) | | Motion to compel | Before the deadline for the first pretrial disclosures | 37 C.F.R. § 2.120(f)(1) | | Motion for summary judgment | After initial disclosures; before the first pretrial-disclosure deadline | 37 C.F.R. § 2.127(e)(1) | | Rule 11 safe harbor (district court) | 21 days to withdraw the challenged paper | Fed. R. Civ. P. 11(c)(2) | | OED disciplinary proceeding | Within 1 year after the misconduct becomes known to the appropriate Office official; 10-year outer limit | 35 U.S.C. § 32; 37 C.F.R. § 11.34(d) |