In order to register a trademark with the United States Patent and Trademark Office (PTO), and in order to maintain and renew that registration after it is issued, a trademark owner must certify in writing to the PTO that it is actually using the trademark on or in connection with all of the products identified in the trademark application. In use-based applications, the certification is made at the time the application is filed. In intent-to-use applications, the certification is made later in the registration process. Often, applicants include in trademark applications a listing of a number of products that the applicant is selling or intends to sell under the trademark. In a rush to complete the trademark application and/or registration, an applicant may inadvertently submit a declaration of use to the PTO claiming that it is using the trademark on all of the products identified in the application when, in fact, the applicant is using the trademark on some, but not all, of the products identified in the trademark application. A recent decision by the Trademark Trial and Appeal Board (TTAB) highlights the critical importance of the applicant confirming that it is using the mark on each and every product or service identified in the application prior to filing a declaration of use with the PTO. In Medinol Ltd. v. Neuro Vasx Inc., the TTAB completely voided an issued United States trademark registration because the owner had inaccurately stated in a declaration of use filed with the PTO that it was using the mark on all of the goods identified in the application. In fact, the applicant was using the mark on some, but not all, of the goods when the declaration of use was filed. The TTAB held in favor of the party challenging the trademark registration on the basis of fraud. The decision resulted in a cancellation of the entire trademark registration, notwithstanding the fact that the owner of the registration was actually using the trademark on some of the products at the time the declaration of use was filed with the PTO. The TTAB observed that "[a] trademark applicant commits fraud in procuring a registration when it makes material representations of fact...which it knows or should know to be false and misleading." Moreover, in determining whether fraud has been committed, "[t]he appropriate inquiry is...not into the registrant's subjective intent, but rather into the objective manifestations of that intent." By way of example, if an applicant files a trademark application to register its trademark BLASTER USA for "firearms and ammunition" in Class 13, it must either at the time of filing or at a later date prior to registration certify to the PTO that it is using the trademark on both "firearms" and "ammunition." If the applicant begins its business with the manufacture of firearms only, with the intent to commence production of ammunition at a later date, the applicant should not submit to the PTO a declaration of use claiming use of the mark until such time as the applicant is selling both firearms and ammunition under the BLASTER USA mark. If the applicant submits to the PTO a declaration of use wrongfully attesting that it is using the trademark on all of the goods at a time when it is actually using the mark in connection with only firearms, any registration issued by the PTO based on that declaration could be subject to cancellation upon challenge. If, at the time of a declaration of use deadline, an applicant cannot show use for all goods included in the application, it may amend the application to remove certain products from the description of goods or, in some cases, may petition the PTO to divide the application. Because erroneously alleging use during the prosecution of a trademark application may invalidate the entire resulting registration, trademark applicants should take particular care when making any declarations of use to the PTO. If you have any questions regarding the information in this bulletin, please contact Bob Felber at (615) 850-8741 or Mark Plotkin at (615) 850-8567 or any other member of our Intellectual Property Practice Group. The opinions expressed in this bulletin are intended for general guidance only. They are not intended as recommendations for specific situations. As always, readers should consult a qualified attorney for specific legal guidance.