Monday, August 12, 2013

TTAB Summarily Dismisses Two Fraud Claims in INTELLOGY Fracas

In this opposition to registration of the mark INTELLOGY for golf-related computer software, Applicant Intelligolf alleged that Opposer's registration for the identical mark (for website hosting services) was obtained by fraud. Opposer moved for summary judgment on Intelligolf's four fraud counterclaims, and the Board knocked out two of them, while two survived because a genuine dispute of material fact remained as to those two. Intellogy Solutions, LLC v. IntelliGolf, Inc., Opposition No. 91198579 (July 29, 2013) [not precedential].

Initial declaration: Itelligolf's first counterclaim charged that the initial declaration that accompanied Opposer's application for registration was fraudulent because opposer knew of applicant's superior rights, or that opposer had sufficient information to require further investigation.

The Board pointed out that an applicant is under no obligation to investigate potential conflicting uses, and has no duty to "investigate specific information such as when a third party may have started using a mark." [Ignorance is indeed bliss! - ed.].

Moreover, if another's rights in a mark are not known by applicant to be superior or clearly established - for example by court decree of prior agreement between the parties - then the applicant's averment that it is entitled to registration is not fraudulent.

Here, Opposer admitted that it was aware that Intelligolf owned the domain name "," but maintained that it was not aware that Intelligolf had any trademark rights in INTELLOGY. The web address directed one to the Intelligolf website. A search by opposer failed to uncover any trademark use of INTELLOGY. [The Board noted that opposer's knowledge of the domain name did not by itself require disclosure to the PTO].

The Board observed that none of the goods offered at the applicant's Intelligolf website were offered under the trademark INTELLOGY. The Board observed that "the purely technological function of the URL directing users to applicant's Intelligolf website is not evidence of trademark use."

Moreover, in a UDRP decision between the parties, stated that applicant did not "appear to use that mark [INTELLOGY] on the home page of [its] website."

The Board therefore found no genuine dispute of material fact on this issue, and is summarily dismissed this first counterclaim.

Date of First Use and Specimen of Use: In its second counterclaim, applicant alleged that opposer's dates of first use were false. The Board pointed out, however, that a false date of use is not fraudulent or otherwise fatal as long as there has been some use of the applied-for mark in commerce prior to the application filing date. So this portion of the second counterclaim was dismissed.

The other part of this counterclaim was directed to opposer's specimen of use, a press release rather than an advertisement. This does not constitute fraud, said the Board, because the Examining Attorney could not have been misled by what was apparent on the face of the document. And so this portion of the second counterclaim was dismissed as well.

Section 8 & 15 Declaration: The third and fourth fraud counterclaims alleged that Opposer's mark was not in continuous use for the identified services during the five-year period prior to the filing of the Section 15 Declaration, and was not in use when the Section 8 declaration was filed. The Board found that the existence of genuine issues of material fact precluded the granting of summary judgment on these two counterclaims.

And so the Board ordered that proceedings be resumed.

Read comments and post your comment here.

TTABlog comment: My proposed early "Rogers" hearing would have gotten rid of these two counterclaims right off the bat. [See last paragraph of this TTABlog post.]

Text Copyright John L. Welch 2013.


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