Auditing a Trademark Filing for Fraud Risk and Defending a Fraud Claim: A Practical Guide

The docketing reminder lands on a Tuesday: Section 8 declaration due for a six-year-old registration. The registration lists thirty-one goods across three classes, because whoever filed it in the founder's garage days copied a competitor's identification. The form will pre-populate all thirty-one. The vice president who will sign has been at the company for two years. If she clicks through, she will swear that the mark is in use on all of them, under a warning that mentions federal criminal law, and it will take about four minutes.

Those four minutes are the cheapest moment in the life of a trademark fraud problem. An hour of checking now may cost nothing, and deleting the goods nobody sells may cost nothing too. The same deletion made after a competitor's petition arrives will not cure anything, and made the wrong way it can produce a judgment against you.

This guide follows that timeline. Part 1 is the audit. Part 2 is the fix. Parts 3 and 4 are the fight, from each side. The doctrine behind the steps, from Medinol through Great Concepts, is in the companion article, Fraud on the USPTO: How a False Declaration Can Cost You a Trademark Registration.

The short answer

• Audit good by good, against records. A declaration is true or false item by item. Match every listed good or service to a dated sale, shipment, or rendering of service, and to the specific entity that made it.
• Have a person who can look at the records sign. Give that person the goods list, the proof, and the actual declaration text, and keep a record that they did so. Honest belief defeats fraud under In re Bose Corp., 580 F.3d 1240 (Fed. Cir. 2009), and at the Board, an unread declaration can be treated as reckless.
• Fix it before anyone complains. Corrections before an "actual or threatened challenge" earn a rebuttable presumption of no intent to deceive. After a challenge, deletion trims your exposure but cures nothing.
• If a proceeding has started, do not touch the registration on your own. Amendments need consent or a motion, and an unconsented surrender of challenged goods can mean judgment.
• Pleading fraud takes facts. "Knew or should have known" fails, and so does bare "information and belief." State who signed, what they said, why it was false, why they knew, and allege intent to deceive in terms.
• Defending fraud starts with falsity, then belief. Many claims fail on those two elements. Prepare the signer early, and decide about privilege before the first deposition, because a good-faith defense can put counsel's advice in play.
• Plead the easier ground too. Nonuse needs no intent and only a preponderance. A challenger who pleads only fraud may lose on intent and walk away with nothing, even where the goods were plainly unused.

Find your situation

Part 1: Audit before anyone signs

Who does this: a trademark lawyer or experienced paralegal runs it; a business owner of the facts answers it; the eventual signer reviews the result. Allow one to three weeks for a small registration and much longer for a portfolio, and start well before the deadline. The Section 8 window is the year before the sixth anniversary, and the year before each tenth anniversary, with a six-month grace period at a surcharge (15 U.S.C. § 1058(a)). The verified statement must be signed on or after the start of that window (37 C.F.R. § 2.161(a)(2)), so an early signature can be a defective one.

Step 1: Pull the whole file

Download everything from the USPTO's status and document system (TSDR): application, specimens, office actions, responses, examiner's amendments, statements of use, prior maintenance, assignments. Make a one-page chronology of who signed what, in what capacity, and on what basis. Two things commonly surprise people here.

An examiner's amendment counts. In Grand Canyon West Ranch, LLC v. Hualapai Tribe, 88 USPQ2d 1501 (T.T.A.B. 2008), the Board said statements of use on goods or services are essential "wherever they may appear," and told applicants that information must be true whether or not it is verified. That decision applied the old "should have known" standard, but the point about where a statement appears survives.

Prior responses count too. In Fair Isaac Corp. v. Experian Information Solutions, Inc., 650 F.3d 1139 (8th Cir. 2011), the statements that sank the registration were not in the application oath. They were an employee's statement and outside counsel's argument in response to a refusal.

Step 2: Confirm the owner, then the signer's relationship to it

An application filed by someone other than the owner on the filing date is void, and that cannot be amended away (37 C.F.R. § 2.71(d); Huang v. Tzu Wei Chen Food Co., 849 F.2d 1458 (Fed. Cir. 1988)). A Section 8 filed by a party who is not the current owner is defective too. Founder-versus-company and parent-versus-subsidiary mismatches are the usual cause. If the mark moved, check the chain of title; see Recording a Trademark Assignment: A Practical Checklist and the Trademark Ownership Audit Checklist.

When use is by an affiliate or licensee, the registrant gets credit only if it controls the nature and quality of the goods or services (15 U.S.C. § 1055; 15 U.S.C. § 1127). The application need not disclose the arrangement, as NRRM, LLC v. Empire Auto Protect, LLC, No. 4:25-cv-716 (E.D. Mo. 2026), recently noted when rejecting a fraud counterclaim. But the control must exist, and you should be able to show it. A sister company using the mark with nobody supervising is not a safe source of use.

Step 3: Work through the goods and services one line at a time

Build a table with one row per listed item. Columns: exact wording; who used it; first and most recent dated sale or shipment; proof; whether it was in use on the relevant date; and whether it is in use now. Ask the following questions for every row.

Is it "use in commerce" at all? The statute requires "bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right" (15 U.S.C. § 1127). For goods, the mark must be on the goods, their containers, tags, or associated displays, and the goods must be sold or transported in commerce. For services, the mark must be used in selling or advertising the services, and the services must actually have been rendered. Some recurring patterns:

Software needs its own questions. Software is where trademark identifications and system reality most often drift apart. Ask how the product actually reaches users.

• Downloadable or hosted? Class 9 covers downloadable or recorded software. Software that runs only on your servers and reaches users through a browser is generally a Class 42 service. An old product that shipped as an installer and is now pure SaaS may have quietly left Class 9. If so, your Section 8 for Class 9 has a problem even though customers are happy and revenue is up.
• Has it shipped, to whom? A private beta, an internal tool, a pilot at no charge, or a handful of installations invites an argument. In Embarcadero Technologies, Inc. v. Delphix Corp., 117 USPQ2d 1518 (T.T.A.B. 2016), the challenger argued that two "installations" could not be use of software goods. The fraud claim failed because there was no evidence of intent, but the dispute over use still consumed years. Pull the real record: release tags, app-store publication dates, license server logs, invoices, and first customer contract.
• Do the listed functions exist? Identifications often describe features. "Software for database provisioning, analytics, and machine learning" is a three-part claim. If the machine-learning module was on the roadmap and not in the product, that clause is an unused item.
• Is the mark on the thing? An internal code name in a repository or an engineering blog is not trademark use. Look for the mark in the app listing, login screen, or the point-of-sale page.

Keep the technical evidence with the audit. Billing exports, deployment logs, and dated web captures age badly, and a signer's memory is worse. In one bench trial a signer could not recall her process seven years later, and the record was what mattered (Florida Virtual School v. K12, Inc., No. 6:20-cv-2354 (M.D. Fla. Dec. 1, 2023)).

Which date matters? It depends on the filing.

Step 4: Trace the specimen to its source

Ask who created the image, when, and from what. A specimen must show the mark "as actually used in commerce," and "[a]n artist's rendering, a printer's proof, a computer illustration, digital image, or similar mockup" does not qualify (37 C.F.R. § 2.56(a), (c)). Web specimens need a URL and access or print date. Keep the native photo with its metadata and a dated screen capture. Do not use a mockup from a print vendor or an image generator. If it is the most flattering image you have, it belongs in your marketing, not your filing.

In Look Cycle International v. Kunshan Qiyue Outdoor Sports Goods Co., Canc. No. 92079409 (T.T.A.B. Aug. 9, 2024), the Board said an applicant "is charged with knowing the specimen submitted to support its averment of use" shows actual U.S. sales of the displayed goods. Anything in the specimen that is not what it purports to be is your problem, including invoices or order pages your vendor assembled. The Trademark Specimen Preparation Checklist covers capture technique.

Step 5: For Section 15, run a litigation and proceedings check

Section 15 requires the sworn statement that there has been no final decision adverse to the owner's claim of ownership or right to register, and "no proceeding involving said rights pending" in the USPTO or a court (15 U.S.C. § 1065; 37 C.F.R. § 2.167). Ask the litigation group, not the trademark group. Check TTABVUE, the Board's docket, and federal dockets. Remember appeals: in the DANTANNA'S matter, the Eleventh Circuit appeal was still pending. A case on appeal is not "finally disposed of."

Not everything adverse counts. A settlement and abandoned applications were not treated as final adverse decisions or pending proceedings in Residential Energy Services Network, Inc. v. Building Science Institute, Ltd., No. 22-cv-1641 (S.D. Cal. Nov. 21, 2025). If something is live, defer Section 15. It has its own timing: you may file within one year after any five-year period of continuous use, so you need not take it with the Section 8. When the Section 8 is due and a proceeding is pending, file the Section 8 alone.

Under Great Concepts, LLC v. Chutter, Inc., 90 F.4th 1333 (Fed. Cir. 2023), a false Section 15 statement does not support Section 14 cancellation at the Board. That is no reason to relax. The panel pointed to loss of incontestability and possible sanctions, and the attorney who filed that declaration ended up deposed as a fact witness.

Step 6: Check domicile, representation, and signature mechanics

• Domicile. The address of record must be the owner's real domicile: for a company, the headquarters where senior executives direct and control the business (37 C.F.R. § 2.2(o), (p); § 2.189). A virtual office or a registered agent's address is the classic false answer. The domicile requirement survived a procedural challenge in In re Chestek PLLC, 92 F.4th 1105 (Fed. Cir. 2024).
• U.S. counsel. An owner domiciled abroad must appear through a U.S.-licensed attorney (37 C.F.R. § 2.11(a)). False information on this point is treated as a paper presented for an improper purpose (§ 2.11(e)).
• Personal signature. Each signature must be personally entered by the named person (37 C.F.R. § 2.193(a)). An assistant typing the boss's name, or a filing service typing the client's, is a violation whatever the boss intended. If someone else prepares the form, use the emailed signature link or document-signing software so the signer enters it personally. The Director's precedential order in In re Stelcore Management Services, LLC, 2025 Commr. Pat. LEXIS 3 (Dir. USPTO 2025), and TMEP § 611.01(b) treat the requirement as substantive.
• Accounts. A USPTO.gov account belongs to the person who verified it. Sharing one violates the terms of use. A lawyer who sponsors support staff is responsible for the sponsored accounts.

Step 7: Choose the signer and make the signing real

Under 37 C.F.R. § 2.193(e)(1), a verified statement can be signed by someone with legal authority to bind the owner, someone with firsthand knowledge and actual or implied authority, or an attorney with a power of attorney. Prefer a business person who knows the product line or can read the proof. A lawyer's signature tends to make the lawyer a fact witness and is imputed to the client in any event; the Board said so in Look Cycle.

Then make the review specific. Give the signer the final goods list marked to the audit table, the specimen with a note of where it came from, and the literal declaration language. For Section 15, include the proceedings check. Ask the signer to confirm, in an email, that they reviewed the items and believe them accurate. The point is not to create a magic document. The record shows a person forming a belief, and belief is what Bose asks about.

In contrast, Chutter turned on a filer who knew the facts and testified he did not read what he signed. The Board said the declarant "is charged with knowing what is in the declaration being signed." (Chutter, Inc. v. Great Concepts, LLC, Canc. No. 92061951, 2021 WL 4494251 (T.T.A.B. Sept. 30, 2021), reversed on other grounds.) Whatever a court eventually says about recklessness, a signer who read and checked is out of that argument.

Also consider 37 C.F.R. § 11.18(b). The lawyer or paralegal who submits the paper is also certifying, after reasonable inquiry, that its factual contentions have support, even if someone else signed the declaration. "My client told me" is a start, not an inquiry, when the identification looks like a dictionary.

Step 8: Keep the right records

Create a file with the audit table, proof, specimen source note, signer's confirmation, and filing receipt. Think in advance about what could be disclosed. Business records of use are not privileged and you will want to produce them. Legal advice about what to delete generally is, and a registrant who later defends by saying "I relied on counsel" may put that advice at issue. Separate the two from the beginning: facts in one folder, advice in another. On the boundaries, see Attorney-Client Privilege and Work Product for Businesses.

Read the receipt. In Chutter, the filing receipt repeated the false sentence and was forwarded to the attorney, and the Board relied on that fact.

Worked example: the three-class audit

Suppose Quillhaven Stationery holds a registration in Classes 16 (notebooks, journals, greeting cards), 25 (t-shirts, hats), and 35 (online retail store services). The audit shows steady notebook and journal sales and a real online store. Greeting cards stopped in 2022. T-shirts exist, but only as gifts to wholesale buyers, and hats never existed. The Section 8 window has just opened, and no one has complained.

Class 16: delete greeting cards, keep the rest. Class 25: the shirts are promotional and the hats were never sold, so delete the entire class. Class 35: keep it, and capture the store's checkout page with URL and date.

Should Quillhaven worry about the original application? If it claimed use on hats at filing in 2019 with no use, that statement was false when made. A voluntary Section 7 deletion now, or omitting those goods from the Section 8, gets the falsehood off the register before any challenge, and supports the presumption from Zanella Ltd. v. Nordstrom, Inc., 90 USPQ2d 1758 (T.T.A.B. 2009). Because of G&W Laboratories, Inc. v. G W Pharma Ltd., 89 USPQ2d 1571 (T.T.A.B. 2009), any fraud problem in Class 25 would stay in Class 25, and Class 16 would not be at risk because of it.

If the brand expects to launch hats, a new Section 1(b) application is the honest vehicle. Keeping the words on the old registration in case they become true is what fraud cases are made of.

Part 2: Fix it before it is challenged

Why timing is everything

Two lines of authority define the window.

Before a challenge: in University Games Corp. v. 20Q.net Inc., Opp. No. 91168142 (T.T.A.B. 2008), and Zanella, corrective action taken before any actual or threatened challenge creates a rebuttable presumption of no intent to deceive. In Zanella, corrections made years after the original filings still qualified, because no one had yet raised the issue.

After a challenge: "fraud cannot be cured merely by deleting from the registration those goods or services on which the mark was not used," G&W held, following Turbo Sportswear, Inc. v. Marmot Mountain Ltd., 77 USPQ2d 1152 (T.T.A.B. 2005). And a late fix may even be used against you, since Grand Canyon pointed out that the applicant amended only once the opposition challenged it.

What counts as "threatened"? The cases do not draw the line for you. A demand letter that says "your registration is fraudulent" surely does. A watch notice or a coexistence inquiry probably does not. If you are unsure, correct anyway, since a correction that is too late for the presumption is still evidence of good faith and still removes the bad goods. See Hokto Kinoko Co. v. Concord Farms, Inc., 738 F.3d 1085 (9th Cir. 2013), where amendment upon realizing the error was part of a record showing no fraud.

Doing nothing is the worst choice once you know. "[A] person can commit fraud upon the Office by willfully failing to correct his or her own misrepresentation, even if originally innocent," as the Board quoted Space Base Inc. v. Stadis Corp. in Chutter, where the Office has relied on it and the person knows of a benefit to which they are not entitled.

The tools

How to word a correction

Keep it factual and short. You are correcting a record, not writing a confession, and the form does not ask for one. A Section 7 request might read:

Registrant requests amendment of the identification in Class [number] to delete the following goods: "[goods]." The identification as amended reads: "[remaining goods]." The signatory, being warned as provided in 37 C.F.R. § 2.20, declares that the foregoing is true.

Certificates of correction under Section 2.175 differ: they require you to describe how the mistake arose and show it occurred in good faith. So be accurate, and do not overexplain. A lawyer should draft any statement about how the error arose.

In a pending application facing a real false specimen problem, substitute a proper specimen under 37 C.F.R. § 2.59 with the required verification that it was in use as of the relevant date. Do not substitute a specimen that creates a new false statement to cure the old one.

Worked example: the discovered specimen

Suppose Larkspur Skin Co. used a filing vendor in 2023 for its Section 1(a) registration. New counsel in 2026 finds that the specimen is a vendor mockup, a bottle render on a white background. The goods were real and had been on sale for two years at filing. A retail photo from 2022 exists. No one has complained.

The false statement here is narrower than it first looks. The declaration said the specimen shows the mark as used, and it did not. Use itself was true, so the registration is not void for nonuse. Larkspur has a good story on intent if the founder never knew what the vendor uploaded. The practical path: document the facts, keep the real photo and sales records, and file the next maintenance declaration with a genuine specimen. Check whether the vendor signed for the founder, because that is the more serious problem. A signature entered by someone else is not a defect the founder can casually fix, and it may be raised by the USPTO years later.

If your filer is the problem

If a low-cost online service or foreign agent handled your filing, check your record now. Warning signs: you never signed anything; the declaration bears your name but you did not enter it; the owner email is not yours; or you receive a notice that your application has been named in a USPTO show cause order.

USPTO sanctions orders can reach your record even when you did nothing wrong. In the order against Shenzhen Huanyee Intellectual Property Co. (Apr. 16, 2026), the agency found more than 19,000 improper submissions across at least 15,932 records and terminated the proceedings still pending (an exhibit of about 3,360 records), after sending courtesy notice to owners and allowing a period to request removal. Only three owners responded, and one succeeded. Earlier, in the Shenzhen Seller Growth Network matter, the USPTO announced it had terminated more than 52,000 applications and registrations. The agency's stated position is that serious signature defects made to circumvent its rules are not curable, and 37 C.F.R. § 2.193(f) warns that violations may jeopardize validity.

What to do:

1. Correct the owner email and appoint a qualified U.S. attorney, if needed, so USPTO notices reach you.
2. Respond within any show cause period. Explain your independent use, with evidence, and show that you did not participate.
3. Refile immediately if you have a real mark and any doubt that the existing record will survive. A new application gives you a filing date you can defend. Do not abandon the old one until you have advice.
4. Report your experience to the USPTO if asked, and keep the vendor's invoices and communications.

The USPTO's reopening process is young, and its limits are unsettled. An affected owner with significant priority at stake should get counsel quickly, because the path to review may be short.

Part 3: Pleading fraud (the challenger's side)

First, should you?

Run the comparison honestly. A fraud count adds a heightened pleading burden, depositions of signers and possibly lawyers, a Rule 11 and Section 11.18 obligation, and a clear and convincing burden. If what you want is the goods off the register, it is a lot of effort.

Plead nonuse alongside fraud where the facts support it. Nonuse has no intent element, and the Board noted the distinction expressly in Grand Canyon West Ranch, LLC v. Hualapai Tribe, 78 USPQ2d 1696 (T.T.A.B. 2006). In Look Cycle, the petitioner won on Section 2(d), nonuse, and fraud together.

Standing to bring it

You need an entitlement to a statutory cause of action: a real interest within the zone of interests and a reasonable belief in damage proximately caused by the registration (Corcamore, LLC v. SFM, LLC, 978 F.3d 1298 (Fed. Cir. 2020); Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370 (Fed. Cir. 2020)). A refusal of your application based on the registration suffices, and so does a claim of infringement against you.

What to investigate before you plead

• The full file history, including who signed and every version of the identification.
• Marketplace evidence, item by item: the owner's website over time (public web archives), retail listings, catalogues, trade show appearances, and test purchases.
• Specimen forensics: reverse image searches, repeated backgrounds, whether the page in the specimen ever existed, and non-existent addresses. Look Cycle turned on addresses that did not exist. A vague claim that an image looks retouched fails, as it did in La Terra Fina USA, LLC v. Reser's Fine Foods, Inc., No. 3:23-cv-2631 (N.D. Cal. May 3, 2024).
• Facts bearing on knowledge. Who is the signer, what did they do at the company, and what did they say publicly? Fair Isaac turned on the signer's prior knowledge. MPC Franchise turned on a signer who worked at the very restaurant whose pizza box he used.

The investigation should tell you whether you can allege knowledge in good faith. Rule 11.18 and Fed. R. Civ. P. 11 apply to you. Fraud claims made reflexively tend to cost credibility. A broad accusation that fails may also draw a fee request; see Lanham Act Attorney's Fees Under 15 U.S.C. § 1117(a).

The pleading standard

Fed. R. Civ. P. 9(b) applies at the Board through 37 C.F.R. § 2.116(a). The leading Board authority is Asian & Western Classics B.V. v. Selkow, 92 USPQ2d 1478 (T.T.A.B. 2009). Its rules:

1. "Knew or should have known" does not state a claim. It implies negligence.
2. "On information and belief" allegations need a statement of the facts on which the belief is founded, following Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312 (Fed. Cir. 2009).
3. Intent may be alleged generally, but with underlying facts from which it can reasonably be inferred.

Further Board guidance:

• DaimlerChrysler Corp. v. American Motors Corp., Canc. No. 92045099 (T.T.A.B. 2010), found an allegation of known misrepresentations made to procure a registration sufficient, but said the "preferred practice" is to allege intent to deceive specifically. Do that.
• Meckatzer Löwenbräu Benedikt Weiß KG v. White Gold, LLC, 95 USPQ2d 1185 (T.T.A.B. 2010), held that you need not identify a "specific individual" who had the intent, and accepted allegations on information and belief tied to an investigation.

The federal cases are similar. See La Terra Fina, requiring the "who, what, when, where, and how," and Colón-Lorenzana v. South American Restaurants Corp., 799 F.3d 31 (1st Cir. 2015), which affirmed dismissal of a Section 38 claim for failing to allege any false statement.

Plead to your forum's elements. In the Ninth Circuit, that means actual, reasonable reliance and damages proximately caused (OTR Wheel Engineering, Inc. v. West Worldwide Services, Inc., 897 F.3d 1008 (9th Cir. 2018)). Check the prosecution history for this, because a statement superseded by a later filing may not have been relied on, as Madaket LLC v. Sweet Grace Distilling Co., No. 23-2928 (D.D.C. June 21, 2024), shows.

On reckless disregard, plead actual knowledge first. Add recklessness in the alternative at the Board. In federal court, do not rely on it alone: Nallapati v. Justh Holdings LLC, No. 5:20-cv-47 (E.D.N.C. Mar. 9, 2023), Florida Virtual, and La Terra Fina all rejected it.

Sample allegations (for a statement of use overclaim)

These are illustrative and must be adapted to true facts.

12. On [date], Respondent, through [name], its [title], signed and filed a statement of use for Application Serial No. [number], declaring under 37 C.F.R. § 2.20 that the mark was in use in commerce on "[goods]."

13. That statement was false. As of [date], Respondent had not sold or transported [specific goods] under the mark in commerce. Petitioner bases this allegation on: [the archived versions of Respondent's website from X to Y, which offer only Z]; [Respondent's admission in response to demand of (date) that it "has never sold" the goods]; [results of investigator's inquiry on (date)].

14. The statement was material. Without it, the Office would not have registered the mark for those goods.

15. [Name] knew the statement was false when made. [Name] is Respondent's founder and sole officer and, on information and belief based on the facts in paragraph 13 and [Respondent's press statement of (date) announcing that it would "begin exploring" those goods the following year], knew that Respondent had not sold those goods.

16. Respondent made the statement with the intent to deceive the Office into issuing a registration covering goods to which it was not entitled.

Notice what is missing: "knew or should have known," and any claim of wrongdoing not tied to a fact. If a Section 15 declaration is your only false statement, stop and read Great Concepts. At the Board, it supports only relief as to incontestability, and you should plead accordingly.

Picking the forum

If the fraud finding would help you later, note how the TTAB route worked in Nationstar Mortgage, LLC v. Ahmad, 155 F. Supp. 3d 585 (E.D. Va. 2015): the unappealed Board finding became summary judgment on a fraud count in the district court. A related registered mark, used to sue you, often means the case is in court already; see Trademark Cancellation in Federal Litigation. The route for federal jurisdiction is in Getting Into or Staying Out of Federal Court. Foreign registrants can often be reached, as Jekyll Island-State Park Authority v. Polygroup Macau Ltd., 140 F.4th 1304 (11th Cir. 2025), demonstrates.

Time is more forgiving than usual: fraud may be raised "at any time" (Marshak v. Treadwell, 240 F.3d 184 (3d Cir. 2001)), but do not get careless. If you are in a TTAB proceeding and the registration is pleaded against you, a counterclaim attacking it is compulsory if the grounds exist when you answer, and must be pleaded promptly once learned (37 C.F.R. §§ 2.106(b)(3), 2.114(b)(3)). In federal court, consider Fed. R. Civ. P. 13. And do not settle a case on a registration you suspect, then come back later: Marco Destin, Inc. v. Levy, 111 F.4th 214 (2d Cir. 2024), refused to undo a stipulated judgment where the fraud could have been found with diligence. Section 38 damages have their own clock, borrowed from state law (Beauty Time, Inc. v. VU Skin Systems, Inc., 118 F.3d 140 (3d Cir. 1997)).

Proving it

Discovery should seek the facts of use item by item, the source of the specimen, how the declaration was prepared and reviewed, and what the signer knew. Depose the signer, the paralegal, and the employee with sales knowledge, plus a designee under Fed. R. Civ. P. 30(b)(6). See Discovery Practice in TTAB Trademark Proceedings and TTAB Discovery: A Practical Checklist.

Expect summary judgment to be hard for you. The Board said in Asian & Western Classics that intent is "particularly unsuited to disposition on summary judgment," and in Enbridge, Inc. v. Excelerate Energy, L.P., 92 USPQ2d 1537 (T.T.A.B. 2009), it denied a challenger's motion despite an admission that the applicant had not used the mark for "transmission of oil," because intent remained a fact question. But MPC Franchise, LLC v. Tarntino, 826 F.3d 653 (2d Cir. 2016), shows it can happen when the signer's own admissions leave nothing to try.

Look for what makes an inference strong. Evidence of a stated plan to overclaim. A pattern across filings. A fabricated document, since an invented sale is hard to explain as a mistake, as Look Cycle illustrates. A signer who changed explanations. Failure to correct after notice. Evidence that the statement was crafted around a known weakness, as in Fair Isaac and in the record described in Weems Industries, Inc. v. Teknor Apex Co., Nos. 24-3608, 25-2956 (8th Cir. July 30, 2026). That last case also shows that candor evidence has value even if the fraud count fails: it supported a fee award exceeding $3 million.

Damages under Section 38

A Section 38 claim is available only in court, and only once a registration has issued (Country Mutual Insurance Co. v. American Farm Bureau Federation, 876 F.2d 599 (7th Cir. 1989)). Under Gilbert/Robinson, Inc. v. Carrie Beverage-Missouri, Inc., 989 F.2d 985 (8th Cir. 1993), an infringer cannot recover defense costs and lost opportunities unless it also proves the owner had no right to exclusive use. Plan your damages evidence around harm caused by the registration, such as a blocked application, a marketplace takedown enabled only by the registration, or a lost deal that required clear title. If those facts are absent, this count may add cost without adding value.

Part 4: Defending a fraud claim

The first thirty days

The Board sets an answer date not less than thirty days from its notice (37 C.F.R. § 2.113(a)). Use the time as follows.

1. Issue a litigation hold, covering sales records, specimen sources, emails with the filer, and system logs.
2. Stop filing. Do not amend, delete, surrender, or file maintenance on the challenged goods without advice. After a cancellation begins, amendments require consent and Board approval, or a granted motion (37 C.F.R. § 2.133(a)); a voluntary surrender without written consent results in judgment (37 C.F.R. § 2.134(a)). In G&W, a registrant deleted a challenged class through a Section 8 filing and got a judgment on that class for its trouble. A Section 8 still due during the proceeding must be filed truthfully. Discuss the handling of unused goods with counsel.
3. Audit privately and quickly. Run Part 1 on the challenged filing under privilege. You need to know how bad it is before you answer.
4. Identify every person involved. Signer, preparer, filer, outside counsel, sales lead. Find out who is still at the company.
5. Check for conflicts. If prior counsel made the false statement or advised it, that lawyer is a witness and may have interests different from the client's. New counsel should handle the case. The client may also want to preserve claims.
6. Consider early business resolution. If the challenger's real interest is a coexistence, a consented restriction may end the case cheaply. See Negotiating a Trademark Coexistence Agreement.

Attack the pleading

Move under Fed. R. Civ. P. 12(b)(6) and Rule 9(b) when the claim is thin. Grounds that win:

• It alleges "knew or should have known" (Asian & Western Classics).
• It rests on "information and belief" without facts.
• The statement challenged is not false, or the fact was not required to be disclosed (NRRM).
• The statement concerned others' use rather than their clearly established rights (Rosso & Mastracco, Inc. v. Giant Food Inc., 720 F.2d 1263 (Fed. Cir. 1983); Quiksilver, Inc. v. Kymsta Corp., 466 F.3d 749 (9th Cir. 2006); Sovereign Military Hospitaller Order v. Florida Priory, 702 F.3d 1279 (11th Cir. 2012)). Common-law users do not have to be disclosed merely because the applicant has heard of them.
• The challenge rests only on a date of first use, while use preceded filing (Hiraga v. Arena, 90 USPQ2d 1102 (T.T.A.B. 2009); Angel Flight of Georgia, Inc. v. Angel Flight America, Inc., 522 F.3d 1200 (11th Cir. 2008)).
• At the Board, the challenge rests only on a false Section 15 declaration, and the relief sought is cancellation (Great Concepts). Note that the challenger can still ask to strip incontestability. In the Ninth Circuit, you will have to address Robi v. Five Platters, Inc., 918 F.2d 1439 (9th Cir. 1990), which Residential Energy Services treated as displaced, though no Ninth Circuit panel has said so in the opinions we reviewed.
• In a circuit requiring reliance, the prosecution history shows the examiner relied on something else (OTR Wheel; Madaket).
• A Section 38 count pleads no injury from the registration itself (Gilbert/Robinson).

Be realistic about the result. Asian & Western gave the challenger twenty days to replead. A motion may only educate the other side, so use it when the defect goes to the merits or will narrow the case.

Sample answer language

Fraud allegations should be answered paragraph by paragraph. A general denial of intent paired with careful affirmative statements is typical:

13. Respondent denies the allegations of paragraph 13, except admits that on [date] it filed the statement of use, which speaks for itself. Respondent further states that it had sold [goods] under the mark in commerce before that date.

14. Denied. At the time of signing, [name] believed, in good faith and after [describe steps], that the statements in the statement of use were true.

Additional defense: The Petition fails to plead fraud with the particularity required by Fed. R. Civ. P. 9(b).

Be careful with the second paragraph. "After consulting counsel" in the answer may open the door to privileged advice. Decide on that strategy before drafting, not after. Also note that an amplified denial is not a true affirmative defense, and that unclean hands and laches against a fraud claim face stiff resistance, because of the Marshak reasoning about the integrity of the register. Do not plead a list of boilerplate defenses.

Prepare the signer

The signer is the case. In Bose, sworn testimony of honest belief, unrebutted, ended the matter: unless the challenger "can point to evidence to support an inference of deceptive intent, it has failed." Prepare accordingly.

• Review the actual filing, the file history, and what the signer saw. Do not rely on memory. A real gap in memory is acceptable. The Florida Virtual signer said it was seven years ago, she could not say exactly what she did, and she would have reviewed the document and tried to check it. The court saw negligence at most.
• Ask about what they believed each word meant. Bose protects a mistaken legal belief. But the belief has to be real and it has to pre-date the dispute.
• Address sophistication. Experience alone is not evidence of intent (Embarcadero). The signer should still be ready to explain why an experienced person read the statement as they did.
• Address the failure to correct, if any. What happened after they learned? Chutter shows that silence reads badly.

For deposition mechanics, including how to handle privilege instructions, see Handling Objections, Coaching, and Misconduct at a Deposition and Preparing and Defending a Rule 30(b)(6) Deposition.

The privilege decision

If the signer relied on counsel's explanation of what "use" means, this may be your best fact. It may also waive privilege on the subject. Look at it early, with these questions: Is the advice helpful in full? Who else got it? Can good faith be shown without it, through business records and the signer's own understanding? If outside counsel signed, the choice is harder, because counsel's knowledge and communications may be directly at issue. Decide before depositions, and instruct consistently.

Win on the evidence

At summary judgment or trial, the winning structure is usually:

1. Not false. Prove use, item by item. Many claims stop here, as Brenner and Davis note: a failure to show the inaccuracy of a claim of use makes the inquiry into scienter moot.
2. Not material, or not a statement of fact. Date of first use is the classic example. In OTR Wheel, a manager's statement that customers could identify a tire by its tread, which did not purport to report any survey, was not clear and convincing evidence of a false representation.
3. Not known. Who knew what? A lawyer's error unknown to the client helps, as Hokto Kinoko shows, while in Board practice a lawyer's signature can be imputed.
4. Not intended. Good-faith belief, process evidence, correction history, lack of motive. The goods at issue may have been commercially insignificant, and thus no reason to lie.
5. Not reckless, even if that counts. At the Board, show the steps taken, however imperfect. Florida Virtual observed that the evidence would likely fall short "even under the Chutter standard," because the signer did make an inquiry.

Preserve the legal issue on recklessness for appeal. The Federal Circuit has left it open, so an argument that Bose requires subjective intent is live, and a Board ruling turning on recklessness alone is a candidate for review. Kingsdown-style arguments about gross negligence belong in your brief.

Fallback: limit the damage

• Restriction instead of cancellation. If you lose on use but win on fraud, the registration is restricted, as in Bose. Ask for this in the alternative under 37 C.F.R. § 2.133(b).
• Class containment. Insist on G&W: other classes stand.
• File new applications now. In parallel, file a clean application covering the goods truly in use. If the registration falls, you have a filing date. Consider the optics, but a truthful new filing is rarely a mistake.
• Remember your common-law rights. A cancellation does not end your right to use the mark or to sue on it under 15 U.S.C. § 1125(a).
• Appeal timely. Sixty-three days, and a civil action under Section 1071(b) lets you add evidence. Do not let a Board finding of fraud go final by accident: Nationstar shows the consequence.

Worked example: the thin petition and the honest founder

Suppose Hollowell Robotics sends Quarrybend Tools a demand. Quarrybend holds a seven-year-old registration for QUARRYBEND in Class 7 covering "power drills, sanders, and routers," and its founder signed the application in 2019 and the Section 8 in 2025. Quarrybend has made drills and sanders since 2018 but made routers only in 2019 and 2020, and then stopped. Hollowell petitions to cancel, alleging that Quarrybend "knew or should have known" routers were not in use in 2025.

Quarrybend's counsel first checks the facts: the 2019 application was true, routers were on sale. The 2025 Section 8 was false as to routers. Counsel moves to dismiss the fraud count under Asian & Western Classics. Hollowell repleads, adding that the founder is the sole officer, and that Quarrybend's 2022 website announced "we no longer make routers." That is probably enough to plead knowledge.

Now the founder's testimony matters. Suppose she says she signed a form her former bookkeeper prepared, did not notice the word "routers," and that she obviously knew routers were discontinued. Under Bose, a court could find no intent to deceive, as this looks like inattention. At the Board, under Chutter and Look Cycle, she is "charged with knowing" what she signed and did not check it, so a finding of recklessness is a serious risk. If fraud is found, Class 7 falls in its entirety, drills and sanders with it, because they share the class. And because Quarrybend did not correct the filing before the demand arrived, the presumption from early correction is not available.

Quarrybend's sensible response is to seek the restriction, offer a stipulated deletion of routers in exchange for dismissal, and simultaneously file a new application for drills and sanders. It should also argue that the Board's recklessness standard departs from Bose, preserving the issue for appeal. The result would have been far better with a five-minute check in 2025.

Costs and trade-offs

USPTO fees below are from the fee schedule last revised 1 November 2026, for electronic filing. Check the USPTO fee schedule before filing, because surcharges and categories change.

The trade-offs are simple. An audit costs a few hours per registration. Deleting goods feels like giving something up, and you are, but you are giving up something you do not have. Overclaimed goods also create exposure in the expungement and audit programs: the USPTO says more than half of audited registrations have lost goods or been cancelled. A fully fought fraud proceeding will cost far more than an audit and take years. The Weems fee award is the outlier that shows the upper end.

For challengers, the trade-off is credibility and cost against remedy. A narrow, documented fraud count alongside a nonuse count is defensible. A broad fraud allegation based on suspicion tends to produce a dismissal, a motion for fees, and a lost opportunity to be taken seriously.

Common mistakes

For filers and registrants

1. Copying a competitor's identification. Every word is a sworn claim. "Wherever they may appear," in the Board's phrase.
2. Listing goods you plan to sell in a use-based application. Use a Section 1(b) basis for those.
3. Treating Section 15 as a checkbox attached to Section 8. It has its own sworn statements. Check the docket, including appeals.
4. Having the lawyer sign because it is faster. The lawyer becomes a witness, the client is bound anyway, and the lawyer has less knowledge of use than a business person.
5. Letting anyone enter someone else's name. A paralegal typing the attorney's signature, or a vendor typing the owner's, can be a sanctionable, uncorrectable defect.
6. Using a mockup because the real product photo looks bad. A printed label in bad light is a specimen. A clean render is not.
7. Assuming the fix is free after a dispute starts. Unconsented amendments can be denied, and an unconsented deletion can produce a judgment.
8. Hiding the discovery. Finding an error and leaving it is how an innocent mistake becomes a fraud case.
9. Believing the vendor's price was the whole cost. A bargain filing service may be why your record is on a show cause list.
10. Overlooking the SaaS shift. A move from installed software to hosted service can change your class without anyone at the company noticing.

For challengers

11. Pleading "knew or should have known." It does not state a claim at the Board, and is wrong in the Second and Eleventh Circuits.
12. Pleading only fraud. Add nonuse, which requires no intent.
13. Attacking only the Section 15 at the Board and seeking cancellation. Great Concepts forecloses that.
14. Confusing awareness of other users with knowledge of superior rights. See Rosso and Sovereign Military. This theory almost never wins.
15. Waiting. Section 14(3) has no time bar, but Section 38 does, and a settled case may stay settled (Marco Destin).

For both

16. Citing pre-Bose Board decisions for the intent standard. They were decided under a test the Federal Circuit rejected. Use them only for facts or for points Bose left alone.
17. Relying on a recent opinion that recites "should have known." A few still do. It does not revive the standard.

This guide is general information and not legal advice for a specific situation. If you are reviewing a filing or responding to a claim, the steps above are a good way to organize the conversation with trademark counsel, and that conversation is usually most useful before the declaration is signed.

Related Documents

Related Articles

• Fraud on the USPTO: How a False Declaration Can Cost You a Trademark Registration: the doctrine, cases, and open questions behind this guide.
• Trademark Cancellation in Federal Litigation: A Practical Guide: how a cancellation claim works in court.
• Lanham Act Attorney's Fees Under 15 U.S.C. § 1117(a): A Practical Guide: the exceptional-case standard that candor problems can trigger.
• Attorney-Client Privilege and Work Product for Businesses: Upjohn, In-House Counsel, and the Common Interest: keeping use facts and legal advice apart.
• Preparing and Defending a Rule 30(b)(6) Deposition: testifying for the company about use and filings.
• Discovery Practice in TTAB Trademark Proceedings: the Board's discovery limits and tools.

Related Guides

• Filing or Responding to a Trademark Expungement or Reexamination Petition: A Practical Guide: the cheaper alternative for clearing unused goods.
• Negotiating a Trademark Coexistence Agreement: A Practical Guide: resolving the dispute behind the fraud claim.
• Handling Objections, Coaching, and Misconduct at a Deposition: A Practical Guide: conduct at the signer's deposition.
• Getting Into or Staying Out of Federal Court: A Practical Guide to Jurisdiction and Removal: forum questions for Section 38 and cancellation claims.

Related Checklists

• Trademark Declaration Accuracy Checklist: A Practical Checklist: the desk version of Part 1.
• Trademark Specimen Preparation Checklist: A Practical Checklist: capturing a real specimen.
• Trademark Ownership Audit Checklist: A Practical Checklist: chain-of-title checks.
• Recording a Trademark Assignment: A Practical Checklist: fixing the owner of record.
• TTAB Discovery: A Practical Checklist: organizing discovery on a fraud claim.

Related Toolkits

• Trademark Fraud Toolkit: Use Audits, Deletion Records, and Pleading Frameworks: worksheets and templates for each step here.