# When Fraud Doesn't Cancel: Great Concepts v. Chutter and the Limits of Section 14

> The Federal Circuit holds that a fraudulent Section 15 incontestability declaration cannot, by itself, justify cancellation of a trademark registration under Section 14.

Topic: Trademarks  |  Author: Lidiia Levitska  |  Source: Intellectual Property Law (outsideipcounsel.com)
Canonical: https://outsideipcounsel.com/blog/great-concepts-v-chutter-ttab/


In *Great Concepts, LLC v. Chutter, Inc.*, No. 22-1212 (Fed. Cir.), decided October 18, 2023 and reported at 84 F.4th 1014, then modified and reissued on January 10, 2024 at 90 F.4th 1333 following an unopposed petition for panel rehearing, a divided panel of the U.S. Court of Appeals for the Federal Circuit reversed a Trademark Trial and Appeal Board decision that had cancelled a registration because of fraud. The Board had found fraud, and the panel left that finding standing without ever reviewing it: the court expressly declined to reach whether the Board erred in finding fraud. The registration survived anyway. Writing for the majority, Judge Stark (joined by Judge Dyk, with Judge Reyna dissenting) held that the Board's cancellation power under Section 14 of the Lanham Act reaches fraud in *obtaining a registration*. A lie told later, in a Section 15 declaration to obtain *incontestable status*, is not the same thing. The decision draws a sharp textual line through a doctrine that practitioners had treated as settled for decades.

## At a glance

- **Case:** *Great Concepts, LLC v. Chutter, Inc.*, No. 22-1212; 84 F.4th 1014 (Fed. Cir. 2023), modified and reissued as 90 F.4th 1333 (Fed. Cir. 2024).
- **Decided:** October 18, 2023, opinion modified January 10, 2024; panel of Dyk, Reyna (dissenting), and Stark, with Judge Stark writing for the court.
- **Mark at issue:** DANTANNA'S for "steak and seafood restaurant," registered to Great Concepts in 2005.
- **The lie:** In a March 2010 combined Section 8 and Section 15 filing, Great Concepts' then-counsel declared that "no proceeding involving said rights" was pending, when in fact a cancellation petition and a related court appeal were both live.
- **The Board's ruling (2021):** The TTAB cancelled the registration under Section 14, finding the Section 15 declaration fraudulent under a "reckless disregard" standard.
- **The holding:** Section 14 authorizes cancellation only where "the registration was obtained fraudulently." Fraud committed to obtain incontestability is not fraud committed to obtain the registration. Reversed and remanded.
- **What survived:** The fraud finding itself, which the court expressly declined to review, and the question of alternative remedies.

## The declaration that broke the case

The factual core is unusually clean for a fraud case. Great Concepts registered DANTANNA'S in 2005. Soon after, a competitor associated with the well-known DAN TANA's restaurant began pressing a likelihood-of-confusion challenge, which matured into a cancellation proceeding and a parallel court appeal. While those disputes were pending, Great Concepts' counsel filed the routine post-registration maintenance package: a Section 8 declaration of continued use paired with a Section 15 declaration of incontestability.

Section 15 carries a specific precondition. To convert a registration into an incontestable one (and thereby shed most of the defenses a challenger can raise against it under Section 33), the registrant must declare that "there is no proceeding involving said rights pending and not disposed of." That statement was false. Both the cancellation and the appeal were alive. The Board found the declaration fraudulent in its decision of September 30, 2021, the ruling now known as *Chutter*: it held that the declaration was filed with reckless disregard for its truth, and that reckless disregard is the legal equivalent of a specific intent to deceive the USPTO. That equation was an expansion of the deceptive-intent standard the Federal Circuit had set in *In re Bose Corp.*, 580 F.3d 1240 (Fed. Cir. 2009). The penalty the Board imposed was the strongest in its arsenal: cancellation of the entire registration.

## "Obtained fraudulently" means obtained

The majority's analysis turned almost entirely on four words. Section 14 lets the Board cancel a registration "[a]t any time if the registered mark . . . [its] registration was obtained fraudulently." The court read "obtained" at its ordinary meaning ("to get hold of by effort; to gain possession of; to procure") and asked when the registration was *gotten*. The answer was 2005, five years before the false declaration. The fraud in 2010 could not have procured a registration that already existed.

From there the panel built a structural distinction the statute itself supports. A registration and an incontestable registration are different things conferring different rights. Section 15 status is, in the majority's words, "in no way necessary to maintaining" a registration; a registrant can hold a valid registration forever without ever filing for incontestability. So the fraud here was fraud in obtaining a discrete and optional benefit, not fraud in obtaining or maintaining the registration that Section 14 protects. "Fraud committed in connection with obtaining incontestable status," the court reasoned, "is distinctly not fraud committed in connection with obtaining the registration itself."

That reading has a tidy negative-implication corollary. Congress addressed Section 15 fraud elsewhere. Section 33(b)(1) provides that incontestability does not apply (the conclusive-evidence presumption is unavailable) when the incontestable right "was obtained fraudulently." In other words, the Lanham Act already supplies a tailored consequence for a fraudulent incontestability declaration: the registrant loses the incontestability it lied to secure. Reading Section 14 to also authorize cancellation would, in the majority's view, let the Board impose a remedy Congress placed beyond its reach.

## What the Board can and cannot do on remand

The panel was careful to say what it was *not* holding. It did not bless the false declaration, did not reverse the fraud finding, and did not say the registrant walks away unscathed. It reversed only the *cancellation* and remanded so the Board could consider whether to declare that the mark does not enjoy incontestable status and whether to impose other sanctions on Great Concepts or its attorney. The court declined to delineate the scope of those remedies, though it agreed with the parties that at a minimum the Board may sanction an attorney who commits fraud before it, and it noted that a Section 15 declaration is filed under a warning that willful false statements are punishable under 18 U.S.C. § 1001.

This is the part of the opinion most likely to generate follow-on litigation. The majority drew a bright line on cancellation but left the remedial landscape downstream of that line conspicuously undefined. A registrant who commits Section 15 fraud now faces a menu of uncertain size: loss of incontestability for certain, the loss of Section 33(b)'s conclusive-evidence benefit, exposure to the equitable unclean-hands doctrine in any infringement suit, and whatever sanctions authority the Board can muster. None of those is cancellation, and that gap is the decision's practical center of gravity.

## The dissent: a green light for fraud

Judge Reyna's dissent reframed the case as one about candor to the agency rather than about the timing of a verb. In his view, a registrant filing a Section 15 declaration is "a registrant seeking continuing and additional rights," and that posture carries an ongoing duty not to defraud the Office. He read the majority's line-drawing as functionally rewarding the misconduct, creating what he called a "green-light" that tells registrants the worst consequence of fraud in an incontestability filing is the loss of a benefit they never deserved. The duty of candor, he argued, should not switch off the moment a registration certificate issues.

The disagreement is genuinely about statutory architecture, not about whether fraud is bad. The majority sees Congress as having calibrated specific consequences for specific wrongs and refuses to let the Board borrow a harsher one. The dissent sees a unified duty of honesty running through the entire registration lifecycle and reads Section 14 broadly enough to vindicate it. Both positions are defensible; the panel simply split on which the text commands.

## Open questions

- **What remedy fills the gap?** The court foreclosed cancellation but did not catalog what the Board *may* do. The remand supplied a partial answer (see below), though the outer limits of the Board's sanctions authority for Section 15 fraud remain undefined.
- **Does the recklessness standard survive?** The Federal Circuit reversed without ruling on the Board's "reckless disregard" formulation, leaving that lowered bar formally intact at the Board level but untested on appeal in this posture.
- **How far does the registration/incontestability distinction travel?** The opinion's logic may bear on other post-registration filings and on how courts treat fraud discovered after a mark issues.

## Implications

- **Section 15 fraud no longer risks the registration itself.** The downside of a false incontestability declaration is loss of incontestability, not loss of the mark. That is a materially smaller stake than challengers long assumed.
- **Plead fraud at the right stage.** Cancellation petitioners must tie alleged fraud to the *acquisition* of the registration; fraud confined to a Section 15 filing will not support a Section 14 cancellation claim.
- **Section 33(b) and equity become the live battlegrounds.** Challengers should pivot to attacking incontestability under Section 33(b)(1) and to unclean-hands defenses in infringement litigation.
- **Counsel review of declarations still matters enormously.** The fraud finding here arose partly because the declaration was filed without adequate verification; the reputational and remedial exposure remains real even if the registration survives.
- **The remand has now answered part of the question.** On February 25, 2025, in a non-precedential decision, the Board held that removal of the mark's incontestability status was necessary and appropriate, and referred the registration to the USPTO's Post Registration Division to withdraw the March 26, 2010 notice acknowledging the Section 15 declaration. The Board declined to refer the attorney's conduct to the Office of Enrollment and Discipline, citing the passage of time and the circumstances of the case. The registration itself stands. As of July 2026, that is where the case rests.

## Frequently asked questions

**Did Great Concepts get to keep its registration?**
Yes. The Federal Circuit reversed the cancellation, so the DANTANNA'S registration was not cancelled on this ground. The case was remanded for the Board to consider other consequences, and on February 25, 2025 the Board removed the mark's incontestability status while leaving the registration in place.

**Was the fraud finding overturned?**
No, but it was not affirmed either. The court expressly declined to reach whether the Board erred in finding that the Section 15 declaration was fraudulent, because Section 14 did not authorize cancellation regardless. It held only that fraud in an incontestability declaration is not a basis for cancellation under Section 14.

**What is the practical penalty for lying in a Section 15 declaration now?**
Primarily the loss of incontestable status under Section 33(b)(1), which means the registrant forfeits the conclusive-evidence presumption and remains exposed to defenses incontestability would otherwise foreclose. The registration itself, however, is not at risk under Section 14 on that basis alone.

## Authorities and sources

- *Great Concepts, LLC v. Chutter, Inc.*, No. 22-1212, slip op. (Fed. Cir. Oct. 18, 2023) (original opinion): https://www.cafc.uscourts.gov/opinions-orders/22-1212.OPINION.10-18-2023_2207653.pdf
- *Great Concepts, LLC v. Chutter, Inc.*, No. 22-1212, slip op. (Fed. Cir. Jan. 10, 2024) (opinion as modified and reissued on panel rehearing; 90 F.4th 1333): https://www.cafc.uscourts.gov/opinions-orders/22-1212.OPINION.1-10-2024_2251310.pdf
- *Chutter, Inc. v. Great Concepts, LLC*, Cancellation No. 92061951 (T.T.A.B. Feb. 25, 2025) (decision on remand, non-precedential): https://ttabvue.uspto.gov/ttabvue/ttabvue-92061951-CAN-26.pdf
- 15 U.S.C. § 1064 (Lanham Act Section 14, cancellation), Cornell LII: https://www.law.cornell.edu/uscode/text/15/1064
- 15 U.S.C. § 1065 (Lanham Act Section 15, incontestability), Cornell LII: https://www.law.cornell.edu/uscode/text/15/1065
- 15 U.S.C. § 1115 (Lanham Act Section 33, evidentiary effect and defenses), Cornell LII: https://www.law.cornell.edu/uscode/text/15/1115
- National Law Review, *Here's a Great Concept: Fraud After Registration Is Not a Basis for Cancellation*: https://natlawreview.com/article/heres-great-concept-fraud-after-registration-not-basis-cancellation
- BakerHostetler / JD Supra, *Great Concepts LLC v. Chutter, Inc.: The Federal Circuit Weighs In on TTAB's Authority*: https://www.jdsupra.com/legalnews/great-concepts-llc-v-chutter-inc-the-4942554/
- Internet & Social Media Law Blog, *Federal Circuit Limits Fraud-on-the-PTO Claims, but Leaves Chutter Recklessness Standard Intact*: https://www.internetandtechnologylaw.com/fraud-pto-claims-chutter-recklessness-standard/