Proposal to Restrict Use of Whole Body Image Scanners as Primary Screening Tool in Airport Security

by Christina Frangiosa

On June 4, 2009, the House passed H.R. 2200, the Transportation Security Administration Authorization Act, which authorized various programs of the TSA. There are at least two House Reports that analyzed the impact and scope of the bill, but the minute details of each are largely beyond the scope of this post. See H.R. Rep. No. 111-123 (May 19, 2009); H.R. Rep. No. 111-127 (May 21, 2009).

Instead, of particular importance was Amendment No. 10 (H. AMDT. 172), introduced on June 4, 2009, by Rep. Jason Chaffetz (R-UT). Cong. Rec. H6206 (daily ed. June 4, 2009); see also id. H6208 (Rep. Chaffetz’s arguments in further support of the Amendment). The Amendment proposed limitations on the use of Whole Body Image (WBI) scanners at airport security checkpoints as a primary screening method, and recommended that travelers be given the option to have a pat-down search instead, unless other primary screening methods identify the person as a potential security risk.

Key Provisions (from a Privacy Perspective) of the Amendment

The key sections of this Amendment are:

(2) PROHIBITION ON USE FOR ROUTINE SCREENING.—Whole-body imaging technology may not be used as the sole or primary method of screening a passenger under this section. Whole-body imaging technology may not be used to screen a passenger under this section unless another method of screening, such as metal detection, demonstrates cause for preventing such passenger from boarding an
aircraft.

(3) PROVISION OF INFORMATION.—A passenger for whom screening by whole-body imaging technology is permissible under paragraph (2) shall be provided information on the operation of such technology, on the image generated by such technology, on privacy policies relating to such technology, and on the right to request a pat-down search under paragraph (4) prior to the utilization of such technology with respect to such passenger.

(4) PAT-DOWN SEARCH OPTION.—A passenger for whom screening by whole-body imaging technology is permissible under paragraph (2) shall be offered a pat-down search in lieu of such screening.

(5) PROHIBITION ON USE OF IMAGES.—An image of a passenger generated by whole-body imaging technology may not be stored, transferred, shared, or copied in any form after the boarding determination with respect to such passenger is made.

Cong. Rec. H6207 (daily ed. June 4, 2009). These amendments were proposed as modifications to 49 U.S.C. § 44901.

House Reports Analyzing Proposed Legislation & Amendments

House Report 111-127 discusses the various amendments to the Bill, and provides another source of the text of the amendment. H.R. Rep. No. 111-127 (May 21, 2009). House Report 111-123 is also available and worth reading for its concise summary of the purpose of the bill. H.R. Rep. No. 111-123 (May 19, 2009).

Arguments in Support of the Amendment

Rep. Carol Shea-Porter (D- NH) co-sponsored the amendment and spoke in support of its adoption:

“When this full-body imaging technology was first introduced, the TSA said that it would only be used as a secondary screening method for those people who set off the metal detectors. Now it has become very clear that the TSA intends for this technology to replace metal detectors at airports all over the country. The New York Times reported as much in an April 7, 2009, article.

“The Chaffetz/Shea-Porter amendment would ensure that full-body imaging remains a secondary screening method. It would also ensure that the people who do go through it are well informed and are given the option of a pat-down.

“Mr. Chair, we do not take this amendment lightly. As a member of the Armed Services Committee, I am very aware of the security threats that are facing our country. We, too, want to ensure that the Department of Homeland Security and the TSA have the tools they need to prevent future terrorist attacks. However, the steps that we take to ensure our safety should not be so intrusive that they infringe upon the very freedom that we aim to protect.

“Two weeks ago, I went to Washington National Airport to view one of these machines. I saw how the technology is being used. I saw the pictures it produces and the inadequate procedures TSA has put into place to protect our privacy. The images are incredibly revealing as I will show you here. This is a gross violation of a person’s right to privacy. It is also illogical because, if we allow this intrusion into our lives, then there should be this same scan at every single train station, at every building that we enter and on every single bus that we board.

So I ask that my fellow Members join me in voting for this resolution and for this amendment.”

Cong. Rec. H6207 (daily ed. June 4, 2009).

In response to the opposition raised during the session (quoted in detail below), Mr. Chaffetz argued in favor of the Amendment:

“Whole-body imaging does exactly what it’s going to do. It takes a 360-degree image of your body. Now, I want to have as much safety and security on the airplanes I’m flying every week, but there comes a point in which in the name and safety and security we overstep that line and we have an invasion of privacy. This happens to be one of those invasions of privacy.

“Now I understand why the gentleman from California expressed his concern. Let me be clear that this amendment on whole-body imaging only limits primary screening. It can be used for secondary screening. You may get people with artificial hips or knees or something else, and they may elect this kind of screening. It’s perfect for them.

“But to suggest that every single American–that my wife, my 8-year-old daughter–needs to be subjected to this, I think, is just absolutely wrong. Now, the technology will actually blur out your face. The reason it does this is because there is such great specificity on their face, that they have to do that for some privacy. But down in other, more limited parts you could see specifics with a degree of certainty that, according to the TSA as quoted in USA Today, ‘You could actually see the sweat on somebody’s back.’ They can tell the difference between a dime and a nickel. If they can do that, they can see things that, quite frankly, I don’t think they should be looking at in order to secure a plane. You don’t need to look at my wife and 8-year-old daughter naked in order to secure that airplane.

“Some people say there is radio communication. There is distance. Well, it’s just as easy to say there is a celebrity or some Member of Congress or some weird-looking person. There is communication.

“You say you can’t record the devices. Many of us have mobile phones or have these little cameras. There is nothing in this technology that would prohibit the recording of these. With 45,000 good, hardworking TSA employees, 450 airports, some two million air traffic travelers a day, there is inevitably going to be a breach of security. And I want our planes to be as safe and secure as we can, but at the same time, we cannot overstep that bound and have this invasion of privacy.

“I urge my colleagues to vote in support of this amendment.”

Cong. Rec. H6208 (daily ed. June 4, 2009).

Arguments in Opposition to the Amendment

Rep. Charles Dent (R-PA) argued in opposition to the amendment, but noted that his opposition was reluctant – favoring the heightened need for security over a slight risk to an individual’s privacy rights:

“Just yesterday, I visited Reagan National Airport and took a look at the whole-body imaging machines over there, and I just have to say a couple of things about this.

“I was impressed by the technology. It seems that we have a great deal of satisfaction from passengers who utilize that type of screening. There are limitations to the magnetometer. A magnetometer can pick up metallic items, like keys, but other prohibited items, like liquids and C4 for potential explosives, will be detected under the whole-body imaging technology but not under a magnetometer. So I do believe that this technology is valid.

“As for the privacy concerns that have been raised, while I understand them, I think they have been overstated. There are strong, strong restrictions in place to make sure that those individuals, the transportation security officers who actually help the passengers go through the whole-body imaging scanning, are not in contact with the person who is actually viewing the image. Those people are in a separate room, so they’re separated. The face of the individual is also blurred, so that’s another protection.

“So I do think that this technology is very valuable. It will help make us safer. Again, I think it is a step in the right direction. So I would reluctantly oppose the amendment. I understand the concerns expressed, but nevertheless, I feel that this technology is valuable and that it enhances security.”

Cong. Rec. H6207 (daily ed. June 4, 2009).

Rep. Daniel E. Lungren (R-CA) opposed the amendment, but without suggesting any reluctance in his opposition:

“I happen to be one of those people who happens to have an artificial hip. Every time I go through, I set off the screener. Every time I go through, I get hand-patted down, and even though they do it in a very nice way, frankly, that’s far more intrusive than going out to the Reagan National Airport and going through that particular system that we’re talking about with those pictures.

“We have been working for many years since 9/11 to try and come up with devices which will allow us to be able to detect those kinds of things that, if brought on airliners, would be a threat to all passengers. The whole-body imaging technology, which this amendment seeks to stop in terms of its application as a primary means of screening, can detect many things such as small IEDs, plastic explosives, ceramic knives, and other objects that traditional metal detection cannot detect. Let me underscore that: this device that this amendment seeks to take off the table as a primary means of screening can detect small IEDs, plastic explosives, ceramic knives, and other objects that traditional metal detection cannot detect. That ought to be enough for us to understand this.

“If you look at the privacy questions, let’s be clear: the person who actually is there, the employee of TSA who is there when you go through this machine, is not the one who reads the picture. That person, he or she, is in another room–isolated. They never see you. They actually talk to one another by way of radio. So this idea that somebody is sitting in this little room, waiting to see what you look like, frankly, is sort of overblown.

“All I can say is this: I have been through many, many pat-downs because I happen to have an artificial hip. Going through this at Reagan National Airport was so much quicker so less intrusive of my privacy than what we go through now. For us to sit here now and to pass an amendment which is going to stop this development and application, frankly, I think, is misguided.

“With all due respect to the gentleman from Utah, who I know is sincere about that, and to the gentlewoman, who is also sincere, I would ask you to rethink this. From my experience, this is far more protective of my privacy than what I have to go through every time I go to the airport, number one; but more importantly, it protects me and every other passenger to a greater extent than any other procedure we have now. We aren’t doing this because we want to do it. We’re doing it because we have people around the world who want to kill us, who want to destroy our way of life, and they have utilized commercial airliners for that purpose in the greatest attack in our Nation’s history since Pearl Harbor.

“This is a device which helps us take advantage of our technological know-how to gain an advance on the enemy. I would hope we would not do this by way of this amendment.”

Cong. Rec. H6207 – H6208 (daily ed. June 4, 2009).

Current Status of the Bill and Amendment

Initially, the Amendment failed – as recorded by voice vote at 3:00 p.m. on June 4, 2009. (Cong. Rec. H6208). Mr. Chaffetz demanded a record vote, and the vote was postponed until later the same day. Id. Shortly after 4:00 p.m, the amendment passed by a vote of 310 – 118.

The full text of the Amendment can be found in the following places: Cong. Rec. H6206 (daily ed. June 4, 2009); and H.R. Rep. No. 111-127 (May 21, 2009). Text of the bill and the amendments can also be found by checking the current status of either one – they are cross-linked.

The full Bill (H.R. 2200), as amended, passed the House by a record vote of 397 – 25. Cong. Rec. H6216 (daily ed. June 4, 2009). Presumably, this Bill will now travel to the Senate for re-introduction under a new Bill number and further debate.

Update on Anticipated Appointment of a Cybersecurity Coordinator

by Christina Frangiosa

Updates a prior post: Anticipated Appointment of “Cyber Czar” on May 29, 2009.

While President Obama has not yet identified the individual who will undertake the position of Cybersecurity Coordinator (which has been referred to recently as a “Cyber Czar”), he apparently confirmed during a meeting of government officials and corporate executives on May 29, 2009, that this individual will be appointed to the staff of both the National Security Council and the National Economic Council. See Cam Simpson and August Cole, “Obama Moves to Curb Data-System Attacks,” The Wall Street Journal, at A9 (June 1, 2009) — You might need a subscription to The Wall Street Journal Online to view this article. As the Wall Street Journal put it, this individual will “effectively serve two masters.” Id. It will be interesting to see how effective this position will be, given the oversight by both agencies.

Related Links:

* President Obama’s remarks during the May 29, 2009 session, which provide a bit more information about the expected responsibilities to be assigned to the position:

“To give these efforts the high-level focus and attention they deserve — and as part of the new, single National Security Staff announced this week — I’m creating a new office here at the White House that will be led by the Cybersecurity Coordinator. Because of the critical importance of this work, I will personally select this official. I’ll depend on this official in all matters relating to cybersecurity, and this official will have my full support and regular access to me as we confront these challenges.

“Today, I want to focus on the important responsibilities this office will fulfill: orchestrating and integrating all cybersecurity policies for the government; working closely with the Office of Management and Budget to ensure agency budgets reflect those priorities; and, in the event of major cyber incident or attack, coordinating our response.

“To ensure that federal cyber policies enhance our security and our prosperity, my Cybersecurity Coordinator will be a member of the National Security Staff as well as the staff of my National Economic Council. To ensure that policies keep faith with our fundamental values, this office will also include an official with a portfolio specifically dedicated to safeguarding the privacy and civil liberties of the American people.” (Emphasis added)

* The report by Melissa Hathaway’s team was released to the public on May 29, 2009, and is available on the White House’s web site. There is also a brief discussion of her remarks during the May 29 meeting on the Briefing Room Blog.

Anticipated Appointment of “Cyber Czar” on May 29, 2009

by Christina Frangiosa

On May 26, President Obama announced among other things that he was establishing “new directorates and positions within the National Security Staff to deal with new and emerging 21st Century challenges associated with cybersecurity, WMD terrorism, transborder security, information sharing, and resilience policy, including preparedness and response.” Statement by the President on the White House Organization for Homeland Security and Counterterrorism, May 26, 2009.

These new positions directly result from the completion of an interagency cyber-security study that he commissioned on February 9, 2009, “to ensure that U.S. Government cyber security initiatives are appropriately integrated, resourced and coordinated with Congress and the private sector.” President Obama Directs the National Security and Homeland Security Advisors to Conduct Immediate Cyber Security Review, February 9, 2009. The study, lead by Melissa Hathaway, Acting Senior Director for Cyberspace for the National Security and Homeland Security Councils, was to be completed within sixty days.

The White House reported that the study was completed and delivered to White House staff on April 17, and is currently being reviewed. Statement by the Press Secretary on Conclusion of the Cyberspace Review, April 17, 2009. Once the review of the conclusions is completed, the White House “will begin discussing the results.” Id.

During a speech delivered at the RSA Conference in San Francisco in April 22, 2009, Hathaway apparently discussed some of the report’s methodologies and promised that once the report was issued to the public, it would be apparent that significant work would be required to remedy identified concerns. Reports of the speech were published in various places, but notable among them were Government Technology and Fusion Authority.

Finally, according to Information Week, the White House is expected to release the study report to the public on May 29, 2009, at the same time the new positions in the National Security Staff are announced.

CDT Recommended Keeping Advisor Position within Department of Homeland Security

On May 1, 2009, Gregory T. Nojeim, Senior Counsel and Director of the Center for Democracy & Technology’s (“CDT”) Project on Freedom, Security and Technology, testified before a subcommittee of the House Committee on Energy and Commerce on May 1, 2009, arguing that the new positions be created within the Department of Homeland Security, instead of within the National Security Agency (“NSA”). See also Reuters, “Experts: Cybersecurity Czar Needs to Be White House-Based,” published by FoxNews on May 2, 2009; Cong. Rec., Daily Digest, May 1, 2009 at D486 (confirms that hearing was held and that testimony was received by “public witnesses,” but does not identify who testified).

In his printed remarks, Nojeim admonished that the White House’s role in cybersecurity should be limited to “set[ting] policy and direction, and to budget[ing] enough resources for the program” through a newly-created White House office – to ensure transparency in the planning and budgeting phase of the process. Testimony at p. 7. He further argued, however, that as far as cybersecurity operations were concerned, “[t]he lead for cybersecurity operations should stay with the Department of Homeland Security, and the NCSC [National Cyber Security Center] should be provided with additional resources and high-level attention.” Id. at p. 8. He explained in detail why these operations should not be controlled by the NSA, including articulating CDT’s concerns that the NSA’s expertise in “spying” does not “necessarily entail superior expertise in cybersecurity.” Id. at p. 7.

The House Committee on Oversight and Government Reform held a hearing on May 5, 2009 to address “Cybersecurity : Emerging Threats, Vulnerabilities, and Challenges in Securing Federal Information Systems.” Cong. Rec., Daily Digest, May 1, 2009 at D489; see also Daily Digest, May 5, 2009, at D503 (identifying testifying witnesses).

The Senate Committee on Energy and Natural Resources also held a hearing on May 7, 2009 “to receive testimony on a Joint Staff draft related to cybersecurity and critical electricity infrastructure” at which witnesses were to testify by invitation only. Cong. Rec., Notice of Hearings, April 30, 2009, at S4994; see also Cong. Rec., Daily Digest, May 7, 2009 at D520 (identifying testifying witnesses who appeared during the hearing).

Expected Mandate of the CyberSecurity Director (“Cyber Czar”)

On May 26, 2009, after the President’s announcement, FoxNews broadcast its analysis (in video format). The analysis addressed a potentially “broad mandate” to be assigned to this new office, but did not provide any particular detail – presumably because the White House has not yet released any detail about these new positions.

Note that thus far, not only does it appear that a director-level position will be created, but also subordinate positions reporting to the director. It also appears that these positions actually may be created within the NSA, and not the Department of Homeland Security, as the CDT recommended. See Statement by the President on the White House Organization for Homeland Security and Counterterrorism, May 26, 2009.

New Bill Proposed on April 1 Supports Creation of National Cybersecurity Advisor

Several weeks before these announcements, Sen. John D. Rockefeller, IV (D-WV) introduced Senate Bill S. 778 (on April 1, 2009), which proposed certain duties and responsibilities of a “National Cybersecurity Advisor,” including acting as principal advisor to the President on cybersecurity legal issues, reviewing all cybersecurity-related budget requests, directing sponsorship for certain security clearances and employing experts or consultants as needed for “cybersecurity-related work.” S. 778, section 1(b).

An additional proposed duty is particularly troubling from a privacy perspective: “[N]otwithstanding any provision of law, regulation, rule, or policy to the contrary, [the National Cybersecurity Advisor shall] have full access to all Federal cyber-compartmented or special access programs.” While some of the terms in this provision are not defined – notably, “cyber-compartmented . . . programs”– the breadth of this provision and its clear rejection of the authority of other laws seems overreaching, perhaps permitting this Advisor to have unfettered access to certain information that may have been protected from disclosure by these other laws, regulations, rules or policies. Id., section 1(b)(5).

This bill was read twice when it was introduced and referred to the Senate Committee on Homeland Security and Governmental Affairs. Current status of the bill can be found here.

A More Detailed Bill, The Cybersecurity Act of 2009, S. 773

Senator Rockefeller proposed another bill on April 1, 2009: The Cybersecurity Act of 2009, S. 773. This bill identifies a more rigorous cybersecurity plan, including the ability to “declare a cybersecurity emergency and order the limitation or shutdown of Internet traffic to and from any compromised Federal Government or United States critical infrastructure information system or network” or disconnect these systems or networks in the “interests of national security.” Section 18, paras. 2 and 6.

The breadth of this proposed power to foreclose access to Federal government agency systems is troubling. One hopes that this power to declare an emergency – sufficient to deny access to public services – will not be wielded lightly, especially given the current Administration’s stated interest in providing transparency to government operations. The bill does not provide any guidelines for the identification of such an emergency, or for the determination of how long access should be denied, but it is anticipated that these guidelines will be included in any regulations associated with an act of this nature.

The CDT similarly criticized these powers through Mr. Nojeim’s May 1, 2009 testimony. Testimony at p. 4.

Because S. 773 does not refer to a National Cybersecurity Advisor or the powers intended to be assigned to this Advisor, further discussion of this bill is beyond the scope of this posting.

AIPLA Reports on the May 6, 2009 Federal Circuit Oral Argument on the Bose v Hexawave Case

by Christina Frangiosa

In today’s issue of AIPLA Reports, the AIPLA (American Intellectual Property Law Association) summarized very cogently an oral argument on May 6, 2009 before the Federal Circuit in the Bose Corp. v. Hexawave, Inc. case. Opposition No. 91157315 (filed July 17, 2003). The AIPLA had submitted an amicus brief in the case and partipated in the oral argument.

The AIPLA’s summary also includes a link to the MP3 file of the audio recording of the oral argument. Based on this summary, it sounds as if the Federal Circuit might consider overturning the TTAB’s opinion in the underlying case, in which the TTAB held that Bose’s reliance on its repair services to demonstrate a continued “use in commerce” in support of its Section 8 and 9 declarations (for renewal of the registration) was unreasonable. Opinion at 14-17. The TTAB found fraud in the filing of the renewal declaration, granted the counterclaim to cancel Bose’s Registration No. 1633789 and ordered that the cancellation occur in “due course.” The appeal to the Federal Circuit followed, on June 11, 2008.

It remains to be seen how the Federal Circuit will actually rule, but this promises to be a pivotal decision in the Fraud on the PTO jurisprudence, which perhaps will provide more guidance to practitioners and their clients in determining what goods and services should be included in the applications and/or renewal declarations.

Fraud on the PTO Jurisprudence: Further Approval for Timely Corrective Action to Avoid Cancellation

by Christina Frangiosa

On May 13, 2009, the Trademark Trial and Appeal Board (“TTAB”) recharacterized a previously-issued opinion in its fraud jurisprudence, making it “precedential.” In Zanella Ltd. v. Nordstrom, Inc., Opposition No. 91177858 (TTAB May 13, 2009, previously issued on Oct. 23, 2008), the TTAB continued its interpretation of the Medinol line of cases (see below).

Zanella filed a Notice of Opposition to Nordstrom’s application for registration; in response, Nordstrom counterclaimed, alleging that Zanella had failed to use its registered marks in connection with all of the clothing items included in the claimed registrations. With respect to one of Zanella’s registrations, the TTAB granted Nordstrom’s counterclaim and cancelled Zanella’s registration (despite its use of the mark on some of the products listed in the description), reasoning that Zanella knew or should have known that its mark was not being used in connection with all of the goods and services claimed in several filings with the PTO. Id. at 5.

With respect to four other claimed Registrations cited in opposition to Nordstrom’s application, Normstom raised the same counterclaim seeking cancellation of Zanella’s registrations. The TTAB was less persuaded, however, and dismissed the counterclaim. It found that in each of these other instances, Zanella sought to amend its registration by deleting goods on which the mark was not being used some significant period of time before the opposition was filed. Critical to the TTAB’s decision was the fact that the amendments happened before any dispute emerged about the validity of the registrations. Id. at 6-10.

The TTAB concluded that “opposer’s [Zanella’s] timely proactive corrective action with respect to these registrations raises a genuine issue of material fact regarding whether opposer had the intent to commit fraud.” Id. at 9. The TTAB concluded that this proactivity created a “rebuttable presumption that opposer did not intend to deceive the Office.” Id. at 10. As a result, there was at least a genuine issue of material fact with respect to the intent to commit fraud, and that the registrations could not be cancelled on a motion for summary judgment. Id.

This analysis supports the TTAB’s jurisprudence in at least two prior cases:

* Grand Canyon West Ranch, LLC v. Hualapai Tribe, Opposition No. 91162008, 78 USPQ2d 1696 (TTAB Mar. 17, 2006) [precedential]: TTAB held that amendment to the description of goods/services to remove items based on non-use, if submitted prior to registration and in the absence of any allegation of fraud, could moot a claim of fraud on the PTO; and

* University Games Corp. v. 20Q.net Inc., Opposition Nos. 91168142 and 91170668, 87 USPQ2d 1465 (TTAB May 2, 2008) [precedential]: TTAB held that correcting a false statement during ex parte prosecution creates a rebuttable presumption that the Applicant did not have the requisite willful intent to deceive the PTO.

ANALYSIS

During a recent PBI conference in Philadelphia at which one of the topics of discussion was the Medinol fraud standard, the panel and participants discussed the possibility of re-evaluating an entire portfolio of trademarks owned by a particular registrant and requesting amendment where appropriate to eliminate those goods or services on which the mark is no longer – or has never been – used in commerce.

The Zanella opinion suggests that this proactivity is a good idea. Pivotal to the TTAB’s acceptance of this modification attempt was the fact that no opposition or petition to cancel was pending at the time that the request to amend was filed. Thus, there was no active dispute that the Registrant was attempting to moot by filing an amendment. The TTAB is typically unimpressed when the Registrant’s attempts to modify occur only after a counterclaim is filed seeking cancellation of the registration(s) at issue based on fraud. See Medinol Ltd. v. Neuro Vasx, Inc., Cancellation No. 92040535, 67 USPQ2d 1205 (TTAB May 13, 2003) [precedential] (request for partial cancellation in response to counterclaim was denied; registration was cancelled); see also Sierra Sunrise Vineyards v. Montelvini S.p.A, Cancellation No. 92048154 (TTAB Sept. 10, 2008) [not precedential] (motion to amend during the pendency of the cancellation proceeding was denied; registration was cancelled); J.E.M. International Inc. v. Happy Rompers Creations Corp., Cancellation No. 92043073, 74 USPQ2d 1526 (TTAB Feb. 10, 2005) [not precedential] (motion to amend description in response to counterclaim was denied; registration was cancelled).

Another proposal floated during the conference was re-applying for critical trademarks in classes that are very narrowly defined. Depending on the size of the trademark portfolios, however, this effort is potentially very expensive and time-consuming.

The fact that registrants and their counsel are even considering such expensive protective efforts suggests that the Medinol line of cases creates an artificially severe penalty for inadvertence or even carelessness in the monitoring of their trademark portfolios. Clearly, the PTO has an interest in eliminating such careless application practice, but this line of cases resembles more the attempt to “peel a grape with an axe” (in the words of one of my favorite Philadelphia judges) than to cure pure fraud.

On February 20, 2009, the Trademark Public Advisory Committee (“TPAC”) held a public webcast in which the topic of the Medinol line of cases was raised and participants complained about the Draconian nature of the punishment (i.e., cancellation of sometimes long-standing registrations) for concededly careless submissions of renewal declarations. Transcript at 137-42.

One of the members of TPAC, James H. Johnson, Jr., explained the complexity of the issue and suggested that the TTAB find a middle ground between “a death penalty and a traffic ticket.” Transcript at 140. Below is an excerpt of his remarks:

“It still remains to be seen and there’s still concern about being accused of fraud by the U.S. Government for a misstatement in the identification of goods. And if I were ever in that position, I don’t know if I would — I would have to decide whether I would want to report it to my client or just make a run for it. That would be a very serious, serious allegation and so the question that we have on TPAC and from other members of the Trademark community is whether the characterization of that behavior, that mistake, as fraud is the appropriate description and whether the remedy of canceling the registration is the appropriate remedy.

“We, of course, all share in your desire and the Trademark Office’s desire to promote the integrity of the register. No body — I mean it helps everyone to assess the risk in adopting marks and to get a clearer picture of what the situation is. But there is a difference between a death penalty and a parking ticket and that’s what we’re wrestling with.

“So what we hope to do is put together some options for looking at the issue to try to address — to balance. Creating an incentive for people to correctly state what they’re using the mark on, to be careful about that, but not creating a situation where the behavior may be mischaracterized or, you know, what is the gravity of this; how should that be addressed.”

* * *

“I invite the people who are listening to this program to give us input and guidance on this issue; how should we address, how should we resolve and balance the desire to have a register that fully reflects accurately what’s going on with the Trademark, that discourages sloppiness with regard to filing applications.

“At the same time, provides the appropriate remedy for people who make a mistake. Is it as simple as you pay a fee for the cost of amending the registration to make it — to reflect the truth or do you do something else? I don’t know. There’s probably some mid ground or some appropriate thing but that’s what we’re wrestling with and we’re hoping to make some significant progress in the next few months and maybe by the next meeting have some proposals for you, if not before then, to consider, to think about, as what the Board can do and what the Trademark Office can do to address this increasingly important issue.”

Transcript at 139-42. It will be very interesting to see where future decisions considering allegations of fraud on the PTO as justification for cancellation of a registration will fall. It may be that the TTAB continues to find reasons (a.k.a. loopholes) why Medinol simply does not apply and therefore that cancellation is not required in a particular case – as it did in the Zanella case.

BACKGROUND ON MEDINOL JURISPRUDENCE

In 2003, the TTAB issued a precedential opinion clarifying the requirement that a trademark must be used, and continue to be used, in connection with all of the goods or services at issue. Medinol Ltd. v. Neuro Vasx, Inc., Cancellation No. 92040535, 67 USPQ2d 1205 (TTAB May 13, 2003). Ruling on Medinol’s summary judgment motion, the TTAB concluded that the Registrant (Neuro Vasx, Inc.) committed fraud when it alleged actual use as to “medical devices, namely, neurological stents and catheters” in its Statement of Use, when it knew or should have known that it was not using its trademark in connection with stents. Id. at 1209-10. Neuro Vasx conceded that it did not use the mark in connection with stents, and requested partial cancellation of its registration by deleting the term “stents” from the description of goods. It explained that it “apparently overlooked” the fact that it had included “stents” in its Statement of Use and denied Medinol’s allegation that including “stents” in the description was the result of any fraudulent intent.

The TTAB was unpersuaded. Although the TTAB acknowledged that Neuro Vasx denied any fraudulent intent, the TTAB observed that, “[t]he appropriate inquiry is … not into the registrant’s subjective intent, but rather into the objective manifestations of that intent.” Id. The TTAB found it significant that Neuro Vasx signed its Statement of Use under penalty of perjury, including “fine or imprisonment, or both, … and [knowing] that such willful false statements may jeopardize the validity of the application or any resulting registration.” Id.

On this basis, the TTAB admonished that “[s]tatements made with such degree of solemnity clearly are – or should be – investigated thoroughly prior to signature and submission to the USPTO.” Id. Accordingly, “[Neuro Vasx’s] knowledge that its mark was not in use on stents – or its reckless disregard for the truth – is all that is required to establish intent to commit fraud in the procurement of a registration.” Id. at 1210. Finally, the TTAB explained that no disputed issues of fact had been raised, and granted summary judgment in favor of Medinol on the issue of fraud. In a subsequent decision, the TTAB determined that Medinol had standing to bring the cancellation action and ordered that the registration of the mark NEUROVASX be cancelled.

Post-Medinol Cancellation Decisions

Since 2003, Medinol has become pivotal precedent in trademark application prosecution, and applicants need to be aware of the potential risk of cancellation or refusal that they face if they: 1) fail to use the mark in connection with all of the goods or services cited in the application; or 2) fail to remove specific goods or services on which they do not use the mark in question when filing any supplemental statement, including Statements of Use, Amendments to Allege Use or Declarations of Continued Use.

After Medinol, the TTAB has found the following defenses to an allegation of fraud on the PTO as invalid and insufficient to avoid cancellation:

* Failing to understand the USPTO’s requirement that the registrant must demonstrate actual use of the mark on all of the identified goods (Sierra Sunrise Vineyards v. Montelvini S.p.A, Cancellation No. 92048154 (TTAB Sept. 10, 2008) [not precedential])

* Relying on suspected “cultural differences” regarding the relationship of wine to other alcoholic beverages (Sierra Sunrise Vineyards)

* Relying on the advice of counsel – both counsel and applicant have duties to inquire about the scope of use of the mark (Herbaceuticals, Inc. v. Xel Herbaceuticals, Inc., Cancellation No. 92045172, 86 USPQ2d 1572 (TTAB Mar. 7, 2008) [precedential])

* Contending that Statements of Use are divisible into sworn and unsworn portions (Herbaceuticals)

* Asserting that the meaning of the phrase “all goods and/or services” in the body of the Statement of Use means something different from the phrase “the goods/services” in the supporting declaration (Herbaceuticals)

* Maintaining that particular goods or services were added only by Examiner’s Amendment and based on a misunderstanding of USPTO procedures (Grand Canyon West Ranch, LLC v. Hualapai Tribe, Opposition No. 91162008, 78 USPQ2d 1696 (TTAB Mar. 17, 2006) [precedential])

* Misunderstanding the requirements of the Trademark Act (Hacehette Filipacchi Presse v. Elle Belle, LLC, Cancellation No. 92042991, 85 USPQ2d 1090 (TTAB Apr. 9, 2007) [precedential])

* Having an insufficient understanding of the English language (Hachette)

* Considering shipping of products for repair purposes as “use” – which is insufficient to demonstrate “use” in commerce (Bose Corp. v. Hexawave, Inc., Opposition No. 91157315, 88 USPQ2d 1332 (TTAB Nov. 6, 2007) [not precedential])

* Misunderstanding the requirements under the Trademark Act, acting in good faith, and the poor health of Applicant were deemed (collectively) insufficient to avoid final refusal to register based on allegation of fraud (Hurley Int’l LLC v. Volta, Opposition No. 91158304, 82 USPQ2d 1339 (TTAB Jan. 23, 2007) [precedential])

* Lacking a proper understanding of the phrase “use in commerce” (Standard Knitting, Ltd. v. Toyota Jidosha Kabushiki Kaisha, Opposition No. 91116242, 77 USPQ2d 1917 (TTAB Jan. 10, 2006) [precedential])

* Relying on one-time giveaway of 25 product samples five years prior to filing the application as sufficient to demonstrate “use” in commerce (Sinclair Oil Corp. v. Kendrick, Opposition No. 91152940, 85 USPQ2d 1032 (TTAB June 6, 2007) [precedential])

* Failing to understand the legal significance of statements in a Section 8 Declaration (Jimlar Corp. v. Montrexport S.P.A., Cancellation No. 92032471 (TTAB June 4, 2004) [not precedential])

* Arguing that the registrant was using its mark in connection with “goods” identified in the Statement of Use as opposed to “the goods” identified in the Statement of Use (Nougat London Ltd. v. Garber, Cancellation No. 92040460 (TTAB May 14, 2003) [not precedential]); and

* Lacking counsel and misunderstanding of requirements for use-based application (Tequila Cazadores, S.A. De C.V. v. Tequila Centinela S.A. De C.V., Opposition No. 91125436 (TTAB Feb. 24, 2004) [not precedential]).