## Facts

- Fred S.A. owned a federal registration for a “metallic nautical rope design as an integral feature of the goods” for clocks, watches, and precious-metal jewelry.
- After a separate cancellation proceeding involving other parties was withdrawn and the PTO acknowledged dismissal, Fred filed a Lanham Act § 15 Declaration of Use and Incontestability to claim incontestable status.
- Sunrise Jewelry Manufacturing Corp. later filed a TTAB petition to cancel the registration, alleging (1) fraud on the PTO in Fred’s § 15 declaration and (2) that the rope-design trade dress was generic for the relevant goods.
- The TTAB dismissed the petition with prejudice, finding the fraud allegations legally insufficient and concluding that an incontestable product-design mark could not be attacked as “generic” because the statute refers to a “generic name.”
- Sunrise appealed to the U.S. Court of Appeals for the Federal Circuit.

## Issues

1. Whether Sunrise adequately pleaded fraud on the PTO based on alleged misstatements or omissions in Fred’s § 15 incontestability declaration concerning challenges to the mark.
2. Whether a registered product-design trade dress, even if incontestable, may be cancelled at any time on the ground that it is generic under 15 U.S.C. § 1064(3).

## Decision

- The Federal Circuit affirmed dismissal of the fraud claim because Sunrise did not plead facts showing a material false statement made with intent to deceive the PTO.
- The court vacated the TTAB’s legal ruling that product-design trade dress cannot be “generic” and remanded for the TTAB to decide whether the rope design is generic for the goods.
- The court held that an incontestable product-design mark remains subject to cancellation if it is generic.

## Legal Principles

- Fraud in trademark prosecution requires a knowingly false, material representation (or reckless disregard for truth) made with intent to deceive; conclusory allegations are insufficient.
- A § 15 incontestability declaration is not fraudulent where the statements were true when made and the Lanham Act imposes no continuing duty to update the PTO about later-filed disputes.
- “Genericness” is not confined to word marks; trade dress and product design can be generic if consumers perceive the feature as the common form or category-identifying appearance of the goods rather than a single source.
- Incontestability limits certain challenges but does not insulate a registration from cancellation under § 1064(3) if the mark is or becomes generic.

## Conclusion

The Federal Circuit upheld the TTAB’s dismissal of Sunrise’s fraud theory but rejected the TTAB’s categorical view that product-design trade dress cannot be generic, holding that even an incontestable product-design registration may be cancelled if the design is generic and remanding for that factual determination.


Sunrise Jewelry Manufacturing Corp. v. Fred S.A., 175 F.3d 1322 (Fed. Cir. 1999)