What part of “under of penalty of perjury” does the 6th Circuit Court of Appeals not understand?
Every trademark applicant must swear under penalty of perjury that the information contained in the application is true. There are two types of applications: one where you currently use the trademark, a second where you intend to use the trademark. The latter requires that you swear—under penalty of perjury—that you have a bona fide intent to use the mark for a particular class of goods or services. It is a way to reserve rights in a mark while you prepare to use it.
Creative Harbor, LLC filed a couple of applications swearing that it intended to use the mark “WorkWire” for just about every product you could imagine. The only problem is that it later admitted that it intended to use it only in connection with a few products, and wanted to reserve the name just in case it later expanded the scope of its products. That’s a big trademark no-no, and many applications have been voided in their entireties when the applicant played loosie-goosie with the truth.
But, the 6th Circuit says Pinocchio can make misrepresentations in an application, and that is o.k. We’ll just strike the little white lies and leave the rest. Nice. Everybody’s a winner in today’s world. It is no problem that Creative—who was represented by counsel—did not quite get this under penalty of perjury nonsense.
So, the 6th Circuit has created a hornet’s nest for trademark lawyers: are we now required to advised our clients that “under penalty of perjury” doesn’t mean what we thought? Must I advise every trademark applicant to expand the application to include goods or services that it doesn’t currently intend to use, but might in the future? I think that is exactly what the 6th Circuit recommends. And that is not good.