Florida Virtual School v. K12, Inc.

           UNITED STATES DISTRICT COURT                           
             MIDDLE DISTRICT OF FLORIDA                           
                  ORLANDO DIVISION                                


FLORIDA VIRTUAL SCHOOL,                                                

          Plaintiff,                                              

v.                                    Case No:  6:20-cv-2354-GAP-EJK   

K12, INC. and K12 FLORIDA, LLC,                                        

          Defendants                                              



               MEMORANDUM OPINION                                 
This  cause  came  before  the  Court  following  a  bifurcated  bench  trial 
conducted October 16-19, 2023. In Phase 1, the parties presented their cases on 
Defendants’  Counterclaim  for  Cancellation  of  Plaintiff’s  federally  registered 
trademarks for fraud on the U.S. Patent and Trademark Office.          
I.   Background                                                   
Plaintiff Florida Virtual School (“Plaintiff”) is an agency of the State of Florida 
which provides online educational services to kindergarten, elementary, middle, 
and high school students in Florida and around the world. Doc. 1, ¶ 2. Defendants 
K12, Inc. and K12 Florida, LLC (“Defendants”) are for-profit companies similarly 
engaged in the business of providing online educational services to kindergarten 
through twelfth grade students in Florida and globally. Id., ¶¶ 3-4. Plaintiff filed 
suit on December 22, 2020, alleging trademark  infringement, false advertising, 
unfair competition, and breach of the parties’ agreement resolving related prior 
litigation1 (the “Settlement Agreement”). Id., ¶¶ 74-143. After discovery yielded 
several factual revelations, and with leave of the Court, Defendants amended their 

Answer on March 13, 2023, to include a Counterclaim for Cancellation of Plaintiff’s 
trademarks on the basis of fraud on the U.S. Patent & Trademark Office (“PTO”). 
Doc. 155, ¶¶ 54-75; see also Docs. 133, 151, 153. Defendants allege that Plaintiff was 

not  active  in  the  primary  education  market  in  2002,  despite  stating  so  in  its 
applications to the PTO. Doc. 155, ¶¶ 69-70, 74-75.                    
On  cross  motions  for  summary  judgment,  the  Court  determined  that 
Defendants’  Counterclaim  was  precluded  as  to  Plaintiff’s  two  2010  trademark 

registrations2 by release clauses in the Settlement Agreement. Doc. 289 at 6-12. The 
Court additionally found that there was no basis for Defendants’ allegations as 
applied to two of Plaintiff’s other trademark registrations.3 Id. at 14-15. The Court 

concluded there were disputed questions of material fact as to the issues of falsity, 



1 Plaintiff previously sued Defendants for trademark infringement in Case No. 6:11-cv-
831-ORL-31-KRS. Doc. 302 at 16.                                        
2 See also Doc. 1-1 at 2, 4 (Plaintiff’s 2010 trademarks are Registrations No. 3,830,765 and 
No. 3,873,393).                                                        
3 See also Doc. 1-1 at 12, 18 (Plaintiff’s applications did not claim these trademarks—
Registrations No. 5,113,241 and No. 5,113,259—were used in commerce until 2016). 
knowledge,  and  intent  regarding  Plaintiff’s  three  remaining  trademark 
registrations (the “Marks”) and set the matter for a bench trial. See id. at 15-18.  
II.  Findings of Fact4                                            
The parties agree that Plaintiff is a public agency that began developing and 

delivering online and distance learning programs in 1997. Doc. 302 at 15. Plaintiff 
was initially named Florida Online High School before it was renamed Florida 
Virtual School in 2001. Id. Defendants operate several distinct online schools in 

Florida, including the Digital Academy of Florida and the Florida Cyber Charter 
Academy. Id. at 16. Both parties presently offer kindergarten through twelfth grade 
(K-12) online educational services. Id. at 16. Plaintiff’s three federally registered 
trademarks in dispute were issued by the PTO on January 3, 2017: Registrations No. 

5,113,225, No. 5,113,235, and No. 5,113,248. Id. at 16-17; see also Doc. 1-1 at 6-10, 15-
16.                                                                    
Founded  in  1997  as  an  online  high  school,  Plaintiff  had  few,  if  any, 

competitors at the time of its inception. Doc. 334 at 8:10-13. It did not operate in the 
kindergarten through fifth grade (K-5) market and did not have an interest in doing 
so at that time. Id. at 8:19-21, 9:22-24. However, during its early years, Plaintiff was 




4 The evidence introduced in Phase 1 revolved primarily around establishing a timeline 
for Plaintiff’s foundational years and growth into various educational markets. 
regularly  running  pilot  programs  and  developing  courses  and  curriculum  for 
middle school-aged students (grades 6-8). See id. at 34:15-35:8; see also Doc. 352-7. 
Indeed, Plaintiff developed and launched its first middle school courses in 2002. 
Doc. 334 at 85:12-21. Then, in 2004, the Florida Legislature required Plaintiff to 

create a full suite of middle school courses, which were ultimately available for the 
2004-2005 school year.5 Doc. 351-20 at 31; Doc. 351-34; Doc. 352-51 at 2; see also id.; 
Doc. 334 at 105:7-18.                                                  

After seeing the rapid growth of its middle school (grades 6-8) program, 
Plaintiff began expanding into elementary (K-5) education services with the hiring 
of Sarah Sprinkel (“Sprinkel”) in 2008. See Doc. 334 at 37:6-10, 85:18-21; Doc. 331 at 
109:4-8. Sprinkel began working with smaller groups of students to initially build 

out “specials” program areas like art, music, and physical education. Doc. 331 at 
109:4-110:5; see also Doc. 334 at 47:3-6. One of the first such pilots was the Captain 
Cardio physical education program that Sprinkel piloted in 2009.6 Doc. 331 at 




5 Plaintiff’s corporate representative, John Schultz (“Schultz”), credibly testified that there 
would have been approximately 100,000 semester completions in the middle school grades (6-8) 
between 2002-2010. Doc. 334 at 99:1-5. Schultz estimated that since 2010 there have likely been 
roughly one million semester completions in grades K-8. Id. at 99:6-13; see also Doc. 352-37, Doc. 
352-38.                                                                
6 Sprinkel testified that the Captain Cardio program was run, at least in part, in 
conjunction with existing schools like Audubon Park in Winter Park, Florida. Doc. 331 at 110:17-
22.                                                                    
109:22-24. After the “specials” were developed, Sprinkel’s team moved on to the 
core subjects of reading, math, science, and social studies. Id. at 110:25-111:2. 
On July 31, 2008, Plaintiff inked a partnership with Connections Academy, 
another  online  education  services  company,  to  provide  it  with  a  full  online 

education program for kindergarten through eighth grades (K-8). Doc. 334 at 97:12-
18; see also Doc. 350-4. While Connections Academy provided much of the day-to-
day instructional and operational oversight during this period, the students were 

enrolled with Plaintiff’s school and were considered by the state to be Plaintiff’s 
students. Doc. 334 at 96:5-98:10. During this partnership, Plaintiff deployed its 
Marks  alongside  Connections  Academy’s  to  co-brand  their  K-8  educational 
program. Id. at 33:25-34:8, 102:18-104:4; see also, e.g., Doc. 351-33. Beginning in 2015, 

Plaintiff tasked Clark Berry (“Berry”) and others to build off of Sprinkel’s work to 
develop its own full suite of elementary programs in order to bring all of its K-8 
services in-house. Doc. 330 at 36:19-37:7; see also Doc. 352-23. Plaintiff ceased its 

partnership with Connections Academy following the 2017-2018 school year, after 
which it provided K-12 services fully in-house. Doc. 334 at 114:4-6; see also Doc. 302 
at 16.                                                                 
On April 27, 2016, Plaintiff filed applications to register the Marks at issue in 

this litigation. See Docs. 352-1, 352-2, 352-3. Each application listed Allison R. Imber 
(“Imber”) as the corresponding attorney and each was signed by Melissa Wurzel 
(“Wurzel”), Plaintiff’s Senior Director of Marketing and Communications at the 
time. See id.; see also Doc. 327-9 at 30:22-31:7. In the description of services section, 
Plaintiff stated that it provided online educational services, conducted distance 
learning instruction, and developed curriculum—all at the primary and secondary 

level. See Doc. 350-1 at 1, Doc. 350-2 at 1, Doc. 350-3 at 2-3. The applications for 
Registrations No. 5,113,225 and No. 5,113,235 stated that the trademarks were first 
used in commerce  “[a]t least as early  as 00/00/2002,” and the application for 

Registration No. 5,113,248

 listed the date of first use in commerce as “[a]t least as 
early as 01/00/2008.” 

Id.

                                              
III.  Legal Standard                                              
“In  any  action  involving  a  registered  mark  the  court  may…order  the 

cancellation of registrations, in whole or in part” when such action is warranted. See 

15 U.S.C. § 1119

. “One ground on which a party may petition to cancel a registered 
service mark is that the registration was obtained fraudulently.” Select Export Corp. 

v. Richeson, No. 10-80526-CIV-DIMITROULEAS, 

2011 WL 13135114

, *9 (S.D. Fla. 
May 5, 2011); see 

15 U.S.C. § 1064

(3). Fraud occurs when an applicant “knowingly 
makes false, material representations of fact in connection with an application for a 
registered mark.” Sovereign Mil. Hosp. Ord. of Saint John v. Florida Priory of the Knights 

Hosp. of the Sovereign Ord. of Saint John, 

702 F.3d 1279, 1289

 (11th Cir. 2012).  
Fraud must be proven “to the hilt” with clear and convincing evidence. In re 
Bose Corp., 

580 F.3d 1240, 1243

 (Fed. Cir. 2009). “To carry this burden, a party 
alleging fraud must show: (1) the applicant made a false representation to the 
[]PTO; (2) the false representation was material to the registrability of the mark; (3) 

the  applicant  had  knowledge  of  the  falsity  of  the  representation;  and  (4)  the 
applicant made the representation with intent to deceive the []PTO.” Flame & Wax, 
Inc. v. Laguna Candles, Cancellation No. 92072343, 

2022 WL 3083070

, *20-21 (T.T.A.B. 

Aug. 1, 2022). “If fraud can be shown in the procurement of a registration, the entire 
resulting  registration  is  void.”  Nationstar  Mortgage  LLC  v.  Mujahid  Ahmad,  

112 U.S.P.Q.2d 1361

, 

2014 WL 6480655

, *4 (P.T.O. T.T.A.B. 2014).           
IV.  Analysis                                                     

Fundamental to any successful claim for fraud on the PTO is the existence of 
an applicant’s false representation. See In re Bose Corp., 

580 F.3d at 1243

. While there 
is no question here that the statements in its application were material,7 Plaintiff 

did  not  make  any  false  representations  to  the  PTO.  Moreover,  even  if  it  did 
misrepresent the date of first use, that alone “cannot be a basis for invalidating the 
registration.” Angel Flight of Ga., Inc. v. Angel Flight Am., Inc., 

522 F.3d 1200

, 1210 


7 On cross motions for summary judgment, the Court held that the second element here is 
satisfied, recognizing that “[a]n applicant’s statements as to its use of a mark for particular goods 
and services are unquestionably material to registrability.” Doc. 289 at 16 (quoting Nationstar 
Mortgage LLC v. Mujahid Ahmad, 

112 U.S.P.Q.2d 1361

, 

2014 WL 6480655

, *3 (P.T.O. T.T.A.B. 2014)). 
(11th Cir. 2008). Finally, Defendants have not shown clear and convincing evidence 
that Plaintiff possessed the requisite intent to constitute fraud on the PTO. See In re 
Bose Corp., 

580 F.3d at 1243

.                                          
     A. False Representation                                      

Defendants’ Counterclaim alleges that Plaintiff’s assertion in its applications 
that its Marks had been used in “primary” education markets since 2002 is false. See 
Doc. 359 at 4. Their contention, however, is dependent on restricting the definition 

of the term “primary” to only encompass kindergarten through fifth grade (“K-5”) 
education. See id. at 5. Indeed, Defendants admit that Plaintiff was serving middle 
school  (grades  6-8)  students  at  least  as  early  as  2004.  Id.  at  6.  And  Plaintiff’s 
corporate representative credibly testified that it was developing middle school 

courses on a small scale in the 2002-2003 period, having launched its initial courses 
in 2002. Doc. 334 at 85:12-16; see also Doc. 351-34.8 Sprinkel’s testimony further 
showed that Plaintiff was developing and piloting elementary courses like “Captain 

Cardio”  as  far  back  as  2009.9 Doc.  331  at  109:4-111:2,  129:11-130:3.  Therefore, 


8 See also Doc. 334 at 83:2-7 (“So from 2002, at that point, online learning, we were seeing 
tremendous success and then also greater demand. There was the intent to grow beyond the high 
school, secondary market. And in 2002, we were developing middle school courses to get into 
that primary market, primary meaning kindergarten through eighth grade at that point in 
time.”), id. at 87:8-11 (“2002 was the initial two courses. There was a middle school geography 
course and an FCAT test prep course that were launched in 2002. The full suite of middle school 
courses was released in 2004.”), id. at 90:17-8, 98:17-99:5.           
9 The Court recognizes that the Marks were also plainly in use at the elementary level 
contrary to Defendants’ assertion in its post-trial brief, Plaintiff’s representation can 
only be false if the Court adopts Defendants’ restrictive definition of “primary.” See 
Doc. 359 at 5.                                                         
Thus, the Court must determine whether “primary” education can include 

middle school grades or whether it is restricted to grades K-5. First, Defendants 
point to a repealed Florida Statute which defines “secondary school” as “primarily 
serv[ing] students in grades 6 through 12” to show that primary cannot, therefore, 

include grades 6-8.10 

Fla. Stat. § 1003.413

(1) (eff. 2006-2012). However, this statute’s 
brief existence, together with the fact that it was not in effect when Plaintiff began 
using its marks or when it filed its applications to the PTO, affords it little weight. 
See  

id.

  Defendants  similarly  direct  the  Court  to  a  provision  of  the  Florida 

Administrative Code which refers to “Primary Education” as “Age Three Through 
Grade Three.” Fla. Admin. Code r. 6A-4.0142 (2000). That too, however, is collateral 
at best. That reference is one example extrapolated from a complex chapter setting 

out  qualifications  for  an  exhaustive  array  of  teaching  and  administrative 
certifications  that  only  serves  to  further  muddy  any  semblance  of  a  concrete, 



from 2008 onwards through Plaintiff’s contract with Connections Academy. See Doc. 350-4; Doc. 
334 at 22:25-23:3, 33:25-34:8, 40:6-41-5.                              
10 The Court notes that Defendants’ proposition is undercut by their own reference to 
Plaintiff’s initial “secondary services” as “(grades 9-12)” in their post-trial brief. Doc. 359 at 6. 
consistent structure. See, e.g., 

id.

 at r. 6A-4.0151 (Specialization Requirements for 
Certification in Elementary Education (Grades K-6)) (emphasis added), 

id.

 at r. 6A-
4.0161  (Specialization  Requirements  for  Certification  in  Middle  Grades  English 
(Grades 5-9)) (emphasis added).                                        

Additionally,  several  witnesses  at  trial  described  their  understanding  of 
“primary”  education.  Sprinkel  and  Berry  considered  primary  to  refer  to 
kindergarten through third grade (K-3), however Sprinkel remarked that “every 

school district is different.”11 Doc. 330 at 51:14-19; Doc. 331 at 112:3-113:6. Sprinkel 
also observed that the definition of elementary school had changed over time, 
remarking that it was once first through sixth grade, then became kindergarten 
through sixth grade, and finally the present kindergarten through fifth grade. Doc. 

331 at 112:16-20. She stated that “secondary school was always going to be in your 
high school.” 

Id. at 112:25-113:3

. Kerrie DeMilio, a Senior Marketing Coordinator 
employed by Defendants, defined primary school as kindergarten through fifth 

grade, stating that secondary school means sixth through twelfth grade. 

Id.

 at 50:6-
15; see also 

id. at 42:10-13

. Jason Schultz (“Schultz”), Plaintiff’s Senior Director of 
Instruction and corporate representative, described primary school as kindergarten 
through eighth grade. Doc. 334 at 83:6-7; see also 

id. at 74:11-13, 80:9-23

.   



11 Berry referred to grades four and five as “intermediate.” Doc. 331 at 78:6-8. 
This simply is not clear and convincing evidence of a false representation to 
the  PTO.  First,  as  Imber  testified,  Plaintiff  used  the  preapproved  language 
suggested  by  the  trademark  identification  manual  to  facilitate  its  reduced-fee 
application. Doc. 331 at 66:16-24. She based her choice of language on internal 

investigations and the specimens attached to the application that demonstrated 
those services, including developing curriculum for primary level education. 

Id. at 68:3-10

.  This  was  corroborated  by  Wurzel,  who  testified  that  she  would  have 

diligently reviewed  these applications and had  access to the pertinent records 
necessary to do so with accuracy. Doc. 327-9 at 50:7-51:14.            
Secondly, as recounted infra, specific definitions for primary and secondary 
education  are  elusive;  and  they  frequently  change.  See  infra  at  9-10.  Plaintiff, 

however,  who  filed  the  applications,  has  testified  through  its  corporate 
representative  that  it  considered  primary  education  to  include  kindergarten 
through  eighth  grade.  Doc.  334  at  83:6-7.  Though  Defendants  disagree  with 

Plaintiff’s definition, there is ample evidence in the record to suggest that—even 
apart from Schultz’s testimony—primary education is commonly understood to 
encompass at least up to sixth grade, and perhaps beyond. See, e.g., Doc. 331 at 
112:16-113:3.  This  quibble  over  the  definition  of  primary  is  not  sufficient  to 

constitute a false representation to the PTO. See Flame & Wax, 

2022 WL 3083070

 at 
*20-21.                                                                
Even if the Court is wrong in its conclusion regarding the definition of 
“primary,” Defendants’ Counterclaim is foreclosed by Eleventh Circuit case law. 
See Angel Flight, 

522 F.3d at 1210

. “A misstatement of the date of first use in the 
application is not fatal to the securing of a valid registration as long as there has 

been valid use of the mark prior to the filing date.” 

Id.

 at 1210 (citing Car Subx Serv. 
Sys., Inc. v. Exxon Corp., 

215 U.S.P.Q. 345

, 351 (P.T.O. T.T.A.B. 1982)).  
Defendants contend that this standard is inapplicable because Plaintiff did 

not make any valid use of its Marks in commerce for primary school programs or 
curriculum development. See Doc. 359 at 11. However, it is clear from the record 
that  Plaintiff’s  Marks  were  being  used  in  commerce  in  the  primary  market—
regardless  of  how  that  is  defined—through  its  agreement  with  Connections 

Academy from 2008 onwards.12 See, e.g., Doc. 330 at 59:22-60:3, 84:9-24, Doc. 331 at 
124:3-16, Doc. 334 at 24:12-18, 26:2-13, 27:23-28:4, 39:22-41:5, Doc. 350-4, Doc. 350-6, 
¶¶ 6.2, 7.4, Doc. 351-33, Doc. 351-77, Doc. 351-79. Moreover, beginning in 2009, 

Plaintiff was launching pilot programs and developing its own in-house elementary 
curriculum branded with its Marks. See Doc. 331 at 109:14-111:2. Because Plaintiff’s 
Marks were plainly used in commerce in the primary market for years prior to the 



12 Plaintiff’s co-branding with Connections Academy from 2008 onwards also defeats 
Defendants’ afterthought argument regarding the five-year requirement for Section 2(f) acquired 
distinctiveness. See Doc. 359 at 12.                                   
filing of its application, any misstatement of such dates of first use cannot be 
grounds for cancellation. Angel Flight, 

522 F.3d at 1210

; see also Direct Niche, LLC v. 
Via Varejo S/A, 

898 F.3d 1144, 1150

 (11th Cir. 2018) (describing that actual sales, in 
addition to evidence of advertising, publicity, and solicitation, suffice to show use 

in commerce); see also, e.g., Doc. 351-76 at 4.                        
Defendants’ secondary argument that Plaintiff’s statements of exclusive use 
were false because the Settlement Agreement included a safe harbor has even less 

merit. The parties’ Settlement Agreement—which resolved their initial trademark 
dispute—granted Defendants a limited  period within  which to continue using 
marks that are not at issue in this litigation and were not admitted or found to be 
confusingly similar or infringing. See Doc. 350-14 at 3-5, 10. The existence of that 

safe harbor provision is not evidence that Plaintiff’s statements in its subsequent 
trademark application of exclusive use of its Marks were false. Indeed, pursuant to 
the terms of the Settlement Agreement, Plaintiff was the owner of those marks at the 

time it filed its trademark applications; Defendants were merely licensees. Doc. 350-
14 at 9-10, 22-23. “The law is clear that while a license is in effect, use of a licensed 
mark by a licensee inures to the benefit of the licensor.” Clayton v. Howard Johnson 
Franchise Sys., Inc., 

730 F. Supp. 1553, 1560

 (M.D. Fla. July 27, 1988) (citing 

15 U.S.C. § 1055

); see also In Dime We Trust, RLT v. Armadillo Distrib. Enters., Inc., No. 8:21-cv-
1967-SDM-AAS, 

2023 WL 4931164

, *3 (M.D. Fla. June 6, 2023). In fact, evidence that 
Plaintiff acquired marks which “[it] claimed caused confusion” prior to filing its 
applications, if anything, bolsters its statements of exclusive use of its Marks. Doc. 
359 at 10; see also Doc. 331 at 74:17-76:23.                           
     B.  Knowledge & Intent                                       

Finally, even if the Court has misinterpreted Angel Flight, there is simply no 
evidence in the record that Plaintiff knowingly intended to deceive the PTO.  
Relying  on  a  Trademark  Trial  and  Appeal  Board  (“T.T.A.B.”)  opinion, 

Defendants contend that “reckless disregard” is sufficient to constitute subjective 
intent. See Doc. 359 at 12-13 (citing Chutter, Inc. v. Great Management Grp., LLC 
Chutter, Inc. v. Great Concepts, LLC, 

2021 WL 4494251

 (P.T.O. T.T.A.B. Sept. 30, 2021) 
rev’d on other grounds, Great Concepts, LLC v. Chutter, Inc., 

84 F.4th 1014

, 1034 n.2 (Fed 

Cir. 2023)). However, T.T.A.B. decisions—though capable of carrying preclusive 
effect in certain circumstances—are not binding on this Court. See B&B Hardware, 
Inc. v. Hargis Indus., Inc., 

575 U.S. 138

, 147-60 (2015) (holding that issue preclusion 

can attach to some T.T.A.B. decisions); see also Bonner v. City of Prichard, Ala., 

661 F.3d 1206, 1209

 (11th Cir. 1981).                                      
Contrary to the Chutter court’s “reckless disregard” standard, in the Eleventh 
Circuit, fraud “requires a purpose or intent to deceive the PTO in the application 

for the mark.” Sovereign Mil. Hosps. Ord. of Saint John of Jerusalem of Rhodes and of 
Malta v. Florida Priory of Knights Hosps. of Sovereign Ord. of Saint John of Jerusalem, 
Knights  of  Malta,  Ecumenical  Ord.,  

702 F.3d 1279, 1289

  (11th  Cir.  2012).  More 
pointedly,  the  “declarant-focused  text  of  the  application  oath  requires  the 
signatory’s  good-faith,  subjective  belief  in  the  truth  of  its  contents.”  

Id. at 1290

 
(emphasis  added).  “If  the  declarant  subjectively  believes  the  applicant  has  a 

superior  right  to  use  the  mark,  there  is  no  fraud,  even  if  the  declarant  was 
mistaken.” 

Id. at 1292

. “Subjective intent to deceive, however difficult it may be to 
prove, is an indispensable element in the analysis.” In re Bose Corp., 

580 F.3d 1240, 1245

 (Fed. Cir. 2009). The Court cannot sidestep this body of binding precedent in 
favor of the T.T.A.B.’s holding in Chutter.13                          
It is true that, “because direct evidence of deceptive intent is rarely available, 
such intent can be inferred from indirect and circumstantial evidence.” In re Bose 

Corp., 

580 F.3d at 1245

. Here, however, there is no evidence that Plaintiff, or its 
agents, had a subjective intent to deceive the PTO. Defendants contend that Wurzel, 
who signed the PTO applications, was not even aware of the Marks’ first use dates 

or that actual use was required. Doc. 359 at 13. Upon review of her deposition 
transcript, however, Wurzel merely admitted that she did not precisely recall the 



13 This conclusion is bolstered by the Federal Circuit’s holding in In re Bose Corp., 

580 F.3d 1240, 1245

 (Fed. Cir. 2009). In reversing its decision to cancel a mark for fraud, the Federal Circuit 
noted that the T.T.A.B. had departed from long standing precedent to “erroneously lower[] the 
fraud standard to a simple negligence standard.” 

Id. at 1244

; see also 

id. at 1243-46

. 
details of events that occurred over seven years prior to the date of her testimony.14 
Doc. 327-9 at 24:16-27:22; see also id. at 5:12-8:8, 21:9-12, 47-58. Wurzel also testified 
that  she  was  aware  that  her  signature  attested  to  the  accuracy  of  Plaintiff’s 
declarations  and  confirmed  that  she  worked  with  and  relied  upon  counsel  in 

finalizing and reviewing the documents. Doc. 327-9 at 24:21-25:1, 46:14-18, 49:9-50:6. 
Though Defendants meekly imply that Imber may have failed to diligently 
verify information received from Plaintiff, it is telling that Defendants did not argue 

that Imber’s testimony evinced any intent to deceive the PTO. See Doc. 359 at n.13. 
On the contrary, Imber’s testimony was highly credible and conveyed a thorough 
knowledge  and  understanding  of  the  trademark  registration  process,  which 
supports Plaintiff’s argument that it made a concerted, good-faith effort to describe 

its Marks and its use thereof. See Doc. 331 at 80:7-101:11. In fact, based on Imber and 
Wurzel’s testimony, the evidence would likely be insufficient to show intent even 
under  the  Chutter  standard.  

2021 WL 4494251

  at  *9  (“[B]y  failing  to  make  an 





14 See, e.g., Doc. 327-9 at 50:7-21 (“Q:…So in the course of signing this declaration attesting 
to facts about the trademark use, would you have consulted records to determine whether the 
statements were accurate or not at the time you executed the declaration? A: Again, it was seven 
years ago so I can’t tell you exactly what I did, but I would have reviewed the document. I would 
have tried to check it as best I could before signing it and then I would have signed it if I felt like, 
you know, things were in line. Did I review every single word and scrutinize every single word, I 
don’t know that I could say that, but I wouldn’t have signed it if I hadn’t reviewed it.”). 
appropriate inquiry into the accuracy of the statements the declarant acts with a 
reckless disregard for the truth.”) (emphasis added).                  
What amounts to, at best, evidence of negligence does not come close to 
showing that Wurzel or anyone else knew that the Marks had not been used in 

commerce and filed the applications anyway. See Spiral Direct, Inc. v. Basic Sports 
Appeal, 

293 F. Supp. 3d 1334, 1361

 (M.D. Fla. Dec. 12, 2017) (“Conversely, where a 
trademark  owner  knows  that  he  has  not  used  a  trademark  in  commerce  but 

nonetheless submits an application based on use of the mark in commerce, the 
Court may infer a fraudulent intent.”) (emphasis added). Regarding Plaintiff’s 2010 
registrations,  this  Court  has  already  rejected  Defendants’  recycled  infectious 
invalidity arguments. See Doc. 289 at 13-14. Whatever concerns may be present in 

those registrations are not indicative of any subjective intent to deceive the PTO in 
the  filing  of  Plaintiff’s  2016  applications.  Defendants’  kitchen  sink  arguments 
invoking  Plaintiff’s  statements  to  the  legislature  and  during  other  legal 

proceedings, and their arguments related to puffery and unpled claims of false 
advertising fare no better.                                            
V.   Conclusion                                                   
While  there  may  be  a  quibble  as  to  the  precise  definition  of  “primary” 

education, Defendants have not shown that Plaintiff’s applications contained any 
false representations or evidence of nefarious intent remotely rising to the level of 
fraud on the PTO. Accordingly,    JUDGMENT will be entered for the Plaintiff and 
against  the  Defendants  on  the  Defendants’  Counterclaim  for  Cancellation  of 
Plaintiff's  federally  registered  trademarks  for  fraud  on  the  U.S.  Patent  and 
Trademark Office. See Doc. 155, ¥ 54. 
 All pending motions from Phase I are hereby DENIED as moot. 

 DONE and ORDERED in Orlando, Florida on December 1, 2023. 

                          hee           GREGORY A. PRESNELL 
                                     UNITED STATES DISTRICT JUDGE 

Copies furnished to: 
Counsel of Record 
Unrepresented Parties 

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