"File wrapper" means, generally speaking, the "file" associated with a given patent or trademark filed with the USPTO. The term "estoppel" is, according to Wikipedia, " a legal term referring to a series of legal and equitable doctrines that preclude "a person from denying or asserting anything to the contrary of that which has, in contemplation of law, been established as the truth, either by the acts of judicial or legislative officers, or by his own deed, acts, or representations, either express or implied."

The question, then, is whether a party is free to deny the meaning of documents and representations contained in that file which originated with, or are based upon, that party's conduct. In considering this issue, the first question must always be what is it, in that file, which is under consideration? In this regard, the determinations of the USPTO with respect to questions of infringement, while perhaps entitled to consideration as being the judgments of experienced people, have no binding force or effect in United States federal courts, where issues of trademark infringement are ultimately decided.

On the other hand, sworn statements of fact previously made by a litigant, made in the process of securing a trademark, are far more likely to come back to haunt that litigant. The significance of material appearing in the file wrapper will, accordingly, vary from case to case.

In our case, neither party can be heard to claim that the words they adopted to reflect the use they were making of a particular mark were incorrect words, although either is free to argue that other uses of the claimed mark are included within the interpretation of the words adopted.

Everyone is familiar with the fact that prior statements or acts inconsistent with the position now taken by a litigant, wherever or whenever made, are fair game in any attempt to discredit that litigant (subject, of course to the rules of evidence adopted to preclude use of evidence deemed to be less than trustworthy as a general rule). Such statements or acts appearing in the USPTO file are no different. Whether such statements or acts amount to an "estoppel" is to be determined in court. Home       TM Overview       TM Case Index

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