Pleading and Proving Trademark Fraud: A Practitioner's Guide to a Claim That Almost Never Wins
By Casey Scott McKay ·
This is the operational companion to the doctrinal article on fraud at the USPTO, and it assumes you already know that In re Bose requires subjective intent to deceive proved to the hilt. It walks twelve stages of an actual matter: deciding whether fraud belongs in the case at all, building the pre-filing investigation, choosing among expungement, reexamination, statutory nonuse, abandonment, a Section 18 restriction, and fraud, and drafting a count that survives Rule 9(b) and Exergen. It supplies model pleading language, model document requests, interrogatories and requests for admission aimed at what the declarant actually knew, and an annotated five-movement deposition outline for the person who signed. It covers the privilege fight that decides most of these cases, including at-issue waiver, the crime-fraud exception, and the filing agent who was never a lawyer, and it explains why the clear-and-convincing standard makes summary judgment a defense weapon rather than a plaintiff's one. On the registrant's side it sets out exactly how to cure a defective declaration before anyone finds it, using Section 7 amendment, deletion in or alongside a maintenance filing, and partial surrender, with the fees and the Zanella timing rule. It closes with the ethics dimension under 37 C.F.R. Part 11, where a lawyer's exposure to the Office of Enrollment and Discipline outlives the client's exposure to cancellation.
IP and Technology > Trademarks | Guide | Published 15 September 2025 - Updated 16 May 2026 | Casey Scott McKay - marksy.us
Summary. This is the operational companion to the doctrinal article on fraud at the USPTO, and it assumes you already know that In re Bose requires subjective intent to deceive proved to the hilt. It walks twelve stages of an actual matter: deciding whether fraud belongs in the case at all, building the pre-filing investigation, choosing among expungement, reexamination, statutory nonuse, abandonment, a Section 18 restriction, and fraud, and drafting a count that survives Rule 9(b) and Exergen. It supplies model pleading language, model document requests, interrogatories and requests for admission aimed at what the declarant actually knew, and an annotated five-movement deposition outline for the person who signed. It covers the privilege fight that decides most of these cases, including at-issue waiver, the crime-fraud exception, and the filing agent who was never a lawyer, and it explains why the clear-and-convincing standard makes summary judgment a defense weapon rather than a plaintiff's one. On the registrant's side it sets out exactly how to cure a defective declaration before anyone finds it, using Section 7 amendment, deletion in or alongside a maintenance filing, and partial surrender, with the fees and the Zanella timing rule. It closes with the ethics dimension under 37 C.F.R. Part 11, where a lawyer's exposure to the Office of Enrollment and Discipline outlives the client's exposure to cancellation.
Keywords: fraud on the uspto · rule 9(b) particularity · exergen pleading standard · ttab cancellation procedure · deposing the declarant · clear and convincing evidence · section 7 amendment · deleting goods from a registration · surrender in part · crime-fraud exception · advice of counsel waiver · 37 c.f.r. part 11 · office of enrollment and discipline · specimen provenance discovery · ex parte expungement petition · reexamination petition · section 18 restriction · summary judgment standard · zanella presumption · trademark self-audit
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