Friday, August 19, 2011

8th Circuit Affirms Jury's Finding of Fraud on The PTO in Fair Isaac "300-850" Case

The U.S. Court of Appeals for the Eighth Circuit affirmed a district court judgment that Plaintiff/Appellant Fair Isaac Corporation committed fraud on the USPTO when it obtained its registration for the alleged mark 300-850 for "credit scoring ,credit and risk management." The appellate court refused to overturn the jury's finding that Fair Isaac, during prosecution of the trademark application, had intentionally made false and material statements that were relied upon by the PTO in issuing the registration. Fair Isaac Corp. v. Experian Information Services, Inc., Appeal No. 10-2281 (8th Cir. Aug. 17, 2011).

The court first affirmed the lower court's grant of summary judgment on the issue of mere descriptiveness of the 300-850 mark: "[T]here is no genuine issue of fact that consumers in this market immediately understand '300-850' to describe the qualities and characteristics of FICO's credit score - that the score will be within the range of 300-850."

As to fraud, the court applied the Bose fraud standard in reviewing the evidence and the jury's findings. It focused on two statements made by FICO, one by an employee and one by its outside counsel, in response to the PTO's initial refusal to register the mark on descriptiveness grounds. FICO stated that it was the only entity using 300-850 as a "unique identifier;" the appellate court concluded that a reasonable jury could have determined that those statements were false because FICO was not using the term as a unique identifier but only descriptively.

As to FICO's intent, the court observed that FICO's employee was aware that FICO and others "were using the same credit-score range, for the same purpose," and that she knew that FICO was not using 300-850 as a trademark. The defendants had pointed to her "artful" use of the phrase "unique identifier." Again, a reasonable jury counld have inferred an intent to deceive the PTO.

Finally, as to materiality and reliance, the court noted that the registration was not issued until after the false statements were made, and so a reasonable jury could determine that the PTO relied on the misrepresentation in deciding whether to issue the registration.

Text Copyright John L. Welch.


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