Verna Law, P.C. is proud to announce the dismissal of Verify Him, LLC vs. Jessica Lanning, Trademark Trial and Appeal Board Opposition No. 91252600, in which Verna Law represents Ms. Lanning, the Defendant in the case.
In its Notice of Opposition, the plaintiff, Verify Him, LLC, alleged that the plaintiff had common-law trademark rights senior or Ms. Lanning’s filing of the VERIFY HIM trademark (U.S. Serial No. 88372554), which would cause a likelihood of confusion. The Notice of Opposition also alleged that Ms. Lanning fraudulently used the R-in-a-circle symbol ® in her use of the VERIFY HIM in connection to her goods and services.
Ms. Lanning, through Verna Law, filed a motion to dismiss the opposition proceeding.
Fraud by Misuse of the R-in-a-circle symbol
The motion to dismiss started by attacking the portion of the Notice of Opposition that pleaded fraud by misuse of the R-in-a-circle symbol ®.
How to plead fraud
First off, to assert a viable claim of fraud, the plaintiff must allege with “particularity” rather than by “implied expression”, that the defending party knowingly made a false, material representation in the procurement of or renewal of a registration with the intent to deceive the U.S. Patent and Trademark Office (USPTO). In re Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938, 1942 (Fed. Cir. 2009); Enbridge Inc. v. Excelerate Energy LP, 92 USPQ2d 1537 (TTAB 2009).
It is the preferred practice of the Board that the element of intent be pleaded specifically; however, intent, as a condition of mind of a person, may be averred generally. Fed.R.Civ.P. 9(b); see also DaimlerChrysler Corp. v. American Motors Corp., 94 USPQ2d 1086, 1089 (TTAB 2010) finding allegations of material misrepresentations knowingly made to procure a registration constitute sufficient allegation of intent element for pleading fraud.
Allegations made on information and belief, as the Plaintiff did in this Notice of Opposition, are disfavored in fraud complaints, as the party pleading on information and belief must identify the factual basis for the belief; allegations based on information and belief will not meet particularity requirement unless the allegations are accompanied by a statement of the facts upon which the belief is founded and the matters alleged. Here, the Plaintiff said that all fraud was committed “upon information and belief” in its Notice of Opposition.
Improper use of the federal registration symbol, “®,” that is deliberate and with the intent to deceive or mislead the public or the USPTO is fraud. See Copelands’ Enters. Inc. v. CNV Inc., 945 F.2d 1563, 20 USPQ2d 1295 (Fed. Cir. 1991); Wells Fargo & Co. v. Lundeen & Assoc., 20 USPQ2d 1156 (TTAB 1991).
The improper use of a registration notice in connection with an unregistered mark, if done with intent to deceive the purchasing public or others in the trade into believing that the mark is registered, is a ground for denying the registration of an otherwise registrable mark. Copelands’ at 1298.
Here, by contrast, Ms. Lanning is not trying to bar registration of goods on which the plaintiff, Verify Him, LLC, has allegedly misused the trademark symbol. Furthermore, there is insufficient pleading that the trademark symbol has been applied to goods for which there is no registration. Finally, the Plaintiff has not pleaded the required “intent to deceive.” Accordingly, the Plaintiff did not plead this claim properly.
Pleading a Likelihood of Confusion
Then the motion to dismiss turned to the claims of common-law trademark use. It is well-settled that priority belongs to the party who can establish the earliest proprietary rights in its mark; such rights “may arise from a prior registration, prior trademark or service mark use, prior use as a trade name, prior use analogous to trademark or service mark use, or any other use sufficient to establish proprietary rights.” Herbko Int’l Inc. v. Kappa Books Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002); Corporate Document Services Inc. v. I.C.E.D. Mgmt. Inc., 48 USPQ2d 1477, 1479 (TTAB 1998).
Thus, Section 2(d) of the Lanham Act requires only that the mark at issue be previously used in, as opposed to throughout the entirety of, the United States and not abandoned; indeed, priority can be established solely on the basis of prior intrastate use of a mark. See Daniel J. Quirk, Inc. v. Vill. Car Co., 120 USPQ2d 1146, 1150 n.19 (TTAB 2016); Panda Travel Inc. v. Resort Option Enterprises Inc., 94 USPQ2d 1789, 1793-95 (TTAB 2009); L. & J.G. Stickley Inc. v. Cosser, 81 USPQ2d 1956, 1965 (TTAB 2007).
In this case, the Plaintiff did not plead actual use. The Plaintiff mentions videos. The Plaintiff mentions apps, without mentioning the use or the users or the publication of the software. For a company that is based in Singapore, there is no mention of use, specifically, in the United States. In view of the Plaintiff’s failure, and apparently inability, to allege that it is the prior use of its pleaded mark anywhere in the United States, the Plaintiff has failed to plead priority in its Notice of Opposition.
The key philosophies to learn from this situation are that the Plaintiff needs to 1) plead fraud with particularity, including the facts that lead to fraud, 2) that it is difficult to plead fraud because of the misuse of the R-in-a-circle ® symbol, and 3) that there must be actual use of a common-law trademark, including the tying together of goods or services and the use, if the Plaintiff is claiming a likelihood of confusion.
The case was dismissed on February 18, 2020.
If you have any questions about Trademark Trial and Appeal Board oppositions or cancellations, the professionals at Verna Law are open to hear from you. Our phone number is 914-908-6757 and Anthony M. Verna III can be reached at firstname.lastname@example.org.
Please note that past results cannot and do not represent future decisions. Please know and understand that all lawsuits and litigation have differing facts and applications under any statutes mentioned above. Please consult your attorney before the beginning of any litigation.
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Here is a video blog on what to expect during depositions at the Trademark Trial and Appeal Board (TTAB) or in Federal District Court: