Precedential No. 40: Applying Bose, TTAB Denies Fraud-Based Summary Judgment Motion Due to Factual Issues Regarding Intent

In this Section 2(d), 2(e)(1) and dilution-based opposition, Opposer Enbridge, Inc. moved for summary judgment on the ground of fraud, claiming that Applicant Excelerate had never used the applied-for mark ENERGY BRIDGE for various services recited in the subject use-based application. Excelerate admitted that it had never used the mark for one of the listed services, the transmission of oil, but disputed the lack-of-use charge as to other services. The Board applied the CAFC's fraud standard set out in In re Bose Corporation, 91 USPQ2d 1938 (Fed. Cir. 2009), in denying the motion because there existed genuine issues of material fact regarding whether Applicant "knowingly made this representation of use with the intent to deceive the USPTO." Enbridge, Inc. v. Excelerate Energy Limited Partnership, 92 USPQ2d 1537 (TTAB 2009) [precedential].


In Bose, the Federal Circuit "held that fraud occurs when an applicant knowingly makes a false, material representation with the intent to deceive the USPTO. The standard for finding intent to deceive is stricter than the standard for negligence or gross negligence, and evidence of deceptive intent must be clear and convincing." Moreover, "there is no fraud if a false misrepresentation is occasioned by an honest misunderstanding or inadvertence without a willful intent to deceive." And "[u]nless a party alleging fraud can point to clear and convincing evidence that supports drawing an inference of deceptive intent, it will not be entitled to judgment on a fraud claim."

Excelerate characterized "the statement in its application that it provided 'transmission of oil' as 'an inadvertent, honest mistake,'" and maintained that its subsequent amendment of its recitation of services [after the opposition was filed] "corrected its error in good faith." [Note: these assertions made by Excelerate appear in its opposition brief, without any citation to supporting testimony or affidavit evidence. - ed.]. That was enough for the Board:

Based on the record before us, and applying the standard set forth in In re Bose, we conclude that opposer has failed to meet its burden of establishing that there is no genuine issue that applicant had the intent to deceive the USPTO when it stated in its application that it was using its ENERGY BRIDGE mark for “transmission of oil” as of the filing date of the application. At a minimum, whether applicant knowingly made this representation of use with the intent to deceive the USPTO remains a genuine issue of fact to be determined at trial.

The Board also found that genuine issues of material fact precluded summary judgment on the issue of fraud with respect to Excelerate's use of its mark in connection with the "production of energy." As to these services, Excelerate did not admit non-use of the mark.

We conclude that opposer has failed to meet its burden of establishing the absence of a genuine issue that applicant had the intent to deceive the USPTO when it stated in its application that it was using its ENERGY BRIDGE mark for “production of energy” as of the filing date of the application. In addition, the record does not support the conclusion that there is no genuine issue that applicant had the requisite intent to deceive when it asserted use of its mark in connection with the services, as amended on January 23, 2007. At a minimum, whether applicant knowingly made either of these representations of use with the intent to deceive the USPTO remains a genuine issue of fact to be determined at trial.

Moreover, because the record was "unclear with respect to the meaning of 'production of energy,' a genuine issue exists as to a pivotal element of the fraud claim, namely, whether applicant’s statement that it was using its mark in connection with 'production of energy' was, in fact, false."

And so the Board denied Opposer's summary judgment motion.


TTABlog comment: Another stake has been driven through the Medinol decision. There, you will recall, the Board entered summary judgment sua sponte on the ground of fraud. The pendulum has now swung pretty much to the other extreme. You'll now need the proverbial "smoking gun" to get summary judgment on the ground of fraud.

Text Copyright John L. Welch 2009.