University Games Corporation v. 20Q.net Inc.

THIS DISPOSITION

IS A PRECEDENT UNITED STATES PATENT AND TRADEMARK OFFICE
OF THE TTAB Trademark Trial and Appeal Board
P.O. Box 1451

Alexandria, VA 22313-1451

Lykos Mailed: May 2, 2008

Opposition Nos.. 91168142
91170668

University Games Corporation
Vv.

20Q0.net Inc.

Before Quinn, Grendel and Walsh, Administrative Trademark
Judges.

By the Board:

On December 23, 2003, 200.net, Inc. (“applicant”) filed
applications to register the mark 20Q for “software for
collecting data in the field of artificial intelligence” in
International Class 9, and “entertainment services, namely,
providing an on-line interactive question and answer

1

computer game” in International Class 41;° as well as the

stylized version of the 20Q mark displayed below:

* Application Serial No. 78344917, filed December 23, 2003,
alleging a bona fide intent to use the mark in commerce for the
goods identified in International Class 9, and February 28, 1997
as the date of first use anywhere and in commerce for the
services identified in International 41.

for “hand-held unit for playing electronic games software
for collecting data in the field of artificial intelligence”
in International Class 28.”

In each instance, University Games Corporation
(“opposer”) has opposed registration on the grounds that
applicant's applied-for marks (1) so resemble opposer's
previously used and registered mark TWENTY QUESTIONS for a
board game that they are likely to cause confusion, mistake,
or deceive prospective consumers under Section 2(d) of the
Lanham Act; and (2) will dilute the distinctive quality of
opposer's previously used and registered mark under Section
43(c) of the Lanham Act as amended. In both notices of
opposition, opposer pleaded ownership of the following

registration on the Supplemental Register:

? Application Serial No. 78344922, alleging a bona fide intent to
use the mark in commerce.



Registration No. 1498165

 for the mark TWENTY QUESTIONS

for “a board game for correctly identifying well-known

persons, places, things and years using game cards and

board pieces” in International Class 28.°

Applicant, in its answers to the notices of opposition,
denied the salient allegations therein, asserted various
affirmative defenses, and counterclaimed for cancellation of
opposer’s pleaded registration on the ground of genericness.

In these subsequently consolidated proceedings, this
case now comes before the Board for consideration of (1)
applicant’s motion to amend its answers to adda
counterclaim of fraud, and (2) applicant’s motion for
summary judgment on its proposed counterclaim of fraud.
Opposer has filed a responsive brief in opposition to
applicant’s motion for summary judgment.
I. Motion to Amend

Inasmuch as opposer has not contested this motion,
applicant’s motion to amend is granted as conceded. See
Trademark Rule 2.127(a) and Fed. R. Civ. P. 15(a).

In view thereof, applicant’s amended answers to assert
a counterclaim of fraud are hereby noted and made of record

in these consolidated proceedings.

3 Registered July 26, 1988, alleging November 5, 1986 as the date
of first use anywhere and in commerce, Section 8 affidavit
acknowledged.

II. Applicant’s Motion for Summary Judgment

For the reasons set forth below, we deny applicant’s
motion for summary judgment.

Summary judgment is an appropriate method of disposing
of cases in which there are no genuine issues of material
fact in dispute, thus leaving the case to be resolved as a
matter of law. See Fed. R. Civ. P. 56(c). A party moving
for summary judgment has the burden of demonstrating the
absence of any genuine issue of material fact, and that it
is entitled to summary judgment as a matter of law. See
Celotex Corp. v. Catrett, 

477 U.S. 317

, 

106 S.Ct. 2548

(1986). The nonmoving party must be given the benefit of
all reasonable doubt as to whether genuine issues of
material fact exist, and the evidentiary record on summary
judgment, and all inferences to be drawn from the undisputed
facts, must be viewed in the light most favorable to the
nonmoving party. See Opryland USA, Inc. v. Great American
Music Show, Inc., 

970 F.2d 847

, 

23 USPQ2d 1471

 (Fed. Cir.
1992).

Fraud in procuring a trademark registration occurs when
an applicant for registration knowingly makes false,
material representations of fact in connection with an
application to register. See Torres v. Cantine Torresella
S.r.1., 

808 F.2d 46

, 

1 USPQ2d 1483

 (Fed. Cir. 1986);

Standard Knitting, Ltd. v. Toyota Jidosha Kabushiki Kaisha,



77 USPQ2d 1917

 (TTAB 2006); Medinol Ltd. v. Neuro Vasx, Inc.

67 USPQ2d 1205

 (TTAB 2003). A party making a fraud claim is
under a heavy burden because fraud must be proved by clear
and convincing evidence, leaving nothing to speculation,
conjecture, or surmise. Any doubt must be resolved against
the party making the claim. Smith International, Inc. v.
Olin Corporation, 

209 USPQ 1033

 (TTAB 1981).

The undisputed relevant ex parte prosecution history of

opposer’s pleaded registration is as follows:

-In its original use-based application filed April 9,
1987 to register the mark TWENTY QUESTIONS, opposer
paid a fee for a single class of goods, but alleged use
of the mark in commerce on goods falling in several
classes. The original identification of goods reads as
follows: “Board games, t-shirts and supporting
promotional materials including videos and paper
products” in International Class 28. See Prosecution
History of 

Registration No. 1498165

.

-Prior to applying for registration of its TWENTY
QUESTIONS mark, opposer promoted its board games at
gift and toy fairs by distributing catalogs,
promotional cards, and t-shirts bearing the mark. See
Declaration of A. Robert Moog, CEO, Paragraph 7 (“Moog
Declaration”).

-In his first Office action dated June 15, 1987, the
examining attorney objected to the classification of
opposer’s goods as improper, in part because t-shirts
did not fall in International Class 28. The Office
action then stated that opposer “must amend [the]
application by restricting the goods and/or services to
one class(es) [sic] or by paying the additional fee for
each class.” The examining attorney also objected to
the wording “supporting promotional materials including
videos and paper products” in the identification of
goods as indefinite. See Prosecution History of

Registration No. 1498165

.

-In its December 13, 1987 response to the first Office
action, opposer amended its identification of goods to
delete the references to t-shirts, paper products, and
videos, and restricted the identification to the
following: “a board game for correctly identifying
well-known persons, places, things and years using game
cards and board pieces” International Class 28. See
Prosecution History of 

Registration No. 1498165

.

-On June 18, 1988, the examining attorney approved the
application with the amended identification for
registration on the Supplemental Register. See
Prosecution History of 

Registration No. 1498165

.

During discovery in this case, applicant obtained the

following relevant information from opposer:

-In response to Interrogatory No. 9 of applicant's
first set of interrogatories which requested that
opposer “[i]ldentify each variation of the term ‘twenty
questions’ that Opposer is using or has used, the
products or services with which each variation is being
used or has been used, and the dates during which each
variation has been used with each product,” opposer
interposed several objections and responded “ [ol] pposer
has sold board games for correctly identifying well-
known persons, places, things and years using game
cards and board pieces under its TWENTY QUESTIONS mark
and stylized 20 QUESTIONS mark continuously since
November 1986.”

Applicant has moved for summary judgment on its
counterclaim of fraud by arguing that opposer fraudulently
misrepresented at the time it filed its application that it
used its mark in commerce on “t-shirts and supporting
promotional materials including videos and paper products,”

and that such fraud cannot be cured by a subsequent
amendment deleting the goods. More specifically, applicant
contends that opposer’s allegation of use in connection with
“t-shirts and supporting promotional materials including
videos and paper products” at the time of filing constituted
a “false and material representation” knowingly made by
opposer’s CEO, Mr. Moog, and that opposer’s subsequent
deletion of such goods was not to correct “any innocent
mistake or oversight” but rather in response to an ex parte

examination requirement.

In opposition thereto, opposer argues that applicant’s
motion for summary judgment should be denied because
opposer’s initial assertion of use of its TWENTY QUESTIONS
mark on “t-shirts and supporting promotional materials
including videos and paper products” in its application was
not false in view of the distribution of such materials at
trade fairs. Opposer further contends that because the
goods were deleted prior to approval of the mark for
registration on the Supplemental Register, even if the
statements had been false, the deletion thereof negates the

materiality element necessary to prove fraud.

Based on the record before us, we find that that
applicant has failed to sustain its burden of proof on
summary judgment. Opposer’s responses to applicant’s
discovery requests and the ex parte prosecution history of

opposer’s registration by themselves fail to establish the

absence of a genuine issue of material fact regarding
opposer’s intent to deceive the USPTO. As often stated by
the Board, factual questions involving intent and good faith
are particularly unsuited to disposition on summary
judgment. Copelands’ Enterprises Inc. v. CNV Inc., 

945 F.2d 1563

, 

20 USPQ2d 1295, 1299

 (Fed. Cir. 1991).

The Board holds, however, that the fact that opposer
amended its identification of goods during ex parte
prosecution constitutes a rebuttable presumption that
opposer lacked the willful intent to deceive the Office.
Indeed, the circumstances presented in this case are similar
to those contemplated by the Board in Hurley International
LLC v. Volta, 

82 USPQ2d 1339

 (TTAB 2007). In dicta, the

Board remarked:

We note .. . that a misstatement in an
application as to the goods or services on which
a mark has been used does not rise to the level
of fraud where an applicant amends the
application prior to publication. See Universal
Overall Co. v. Stonecutter Millis Corp., 

154 USPQ 104

 (CCPA 1967).

Id. at n.5

.

In Universal Overall, supra, the applicant in that case
incorrectly stated that it used its mark on finished
clothing. The Court found that applicant acted in good
faith and held that:

such misstatement did not constitute fraud because

[applicant], at the suggestion of the examiner, amended
its application prior to publication to recite fabrics

rather than finished clothing, and the assertion of ©
belief in damage in an opposition, must under the terms
of [Slection 13 of statute, be predicated on the
application as published rather than as originally filed.

Id. at 985.

Here, there is a genuine issue of material fact as to
the nature of the use registrant made of its mark on t-
shirts and other promotional materials prior to filing its
application to register. Moreover, even if we assume that
such use was insufficient to support registration of
applicant's mark for those items, applicant has failed to
adduce facts in support of its motion for summary judgment
that rebut the presumption of no intent to commit fraud, in
view of registrant's amendment of its application during
examination to delete those goods from the application.

In view thereof, applicant’s motion for summary
judgment on its counterclaim of fraud is denied.*
III. Counsel for Opposer’s Request to Withdraw

On May 30, 2007, opposer's attorneys filed a request to
withdraw as opposer's counsel of record in this case. The
request to withdraw as counsel is in compliance with the

requirements of Trademark Rule 2.19(b) and Patent and

* The parties should note that all evidence submitted in support
of and in opposition to the motion for summary judgment is of
record only for consideration of said motion. Any such evidence
to be considered in final hearing must be properly introduced in
evidence during the appropriate trial periods. See Levi Strauss
& Co. v. Josephs Sportswear Inc., 

28 USPQ2d 1464

 (TTAB 1993); and
Pet Inc. v. Bassetti, 

219 USPQ 911

 (TTAB 1983).
Trademark Rule 10.40, and is accordingly granted. The law
firm of Fenwick and West no longer represents opposer in this
proceeding.

In view of the withdrawal of opposer's counsel, and in
accordance with standard Board practice, proceedings herein
are suspended, and opposer is allowed until thirty (30) days
from the mailing date of this order to appoint new counsel,
or to file a paper stating that opposer chooses to represent
itself. If opposer files no response, the Board may issue
an order to show cause why default judgment should not be
entered against opposer based on opposer's apparent loss of
interest in the case.

The parties will be notified by the Board when
proceedings are resumed.

A copy of this order has been sent to all persons listed
below.
cc:

Jedediah Wakefield
Fenwick & West LLP

555 California Street, 12 Floor
San Francisco, CA 94104

James A. Dimitrijevs
Grant A. Monachino
McDonald Hopkins Co., LPA
600 Superior Avenue, E.
Suite 2100

Cleveland, OH 44114

University Games Corporation
4055 Bohannon Drive
Menlo Park, CA 94025

kek ke k& Kk ok

Walsh, Administrative Trademark Judge, concurring in part,
dissenting in part:

While I fully agree with the majority’s decision to
deny applicant’s summary judgment motion on the fraud claim,
I would go further and grant summary judgment sua sponte to
opposer on that claim. I commend the majority for
recognizing that opposer’s action in amending its
application creates a rebuttable presumption that opposer
did not intend to deceive the Office, but I would go further
and dispose of the fraud claim entirely.

I would find for opposer because, before registration
and before any actual or threatened challenge to the
application/registration, opposer amended its application to
correct the alleged false statement regarding opposer's
goods. The fact that opposer amended the application to
delete the relevant goods is not in dispute. In my view,
opposer’s corrective action should preclude a fraud claim:
(i) because the action effectively negated the intent
required to establish fraud, if such an intent ever existed,
and (ii) because the allegedly false statement, once
deleted, was not material to the Office's later approval of
the application.

This approach is not only consistent with the Board’s
longstanding policy disfavoring fraud claims, but it

provides greater clarity and certainty for applicants and

registrants. It would also encourage applicants to correct
errors promptly. It provides both a bright line and a safe
harbor for applicants who are proactive in correcting
errors. I would grant summary judgment sua sponte in favor
of opposer because the law disfavors fraud claims even
though intent is an element of the claim.

As the majority opinion above notes, “A party making a
fraud claim is under a heavy burden because fraud must be
proved by clear and convincing evidence, leaving nothing to
speculation, conjecture, or surmise. Any doubt must be
resolved against the party making the claim. Smith
International, Inc. v. Olin Corporation, 

209 USPQ 1033

 (TTAB
1981).” Timely action by an applicant to correct an error
raises obvious doubt as to whether the applicant had the
intent to commit fraud. Therefore, the applicant’s
proactive corrective action dictates that we resolve that
doubt in favor of the applicant and bar any fraud claim
related to the corrected matter. See Universal Overall Co.
v. Stonecutter Mills Corp., 

154 USPQ 104

, 105 (CCPA 1967).

In Universal Overall, which the majority cited, at
filing the applicant incorrectly stated that it used its
mark on finished clothing, but the applicant amended the
application to correct the error in response to an Office
action. The Court affirmed the Board’s determination in an

opposition proceeding that there was no basis to find fraud

because the applicant had corrected its error before
publication for opposition. 

Id. at 105

. Thus, the Court
recognized the curative effect of a timely amendment.

The Court decided Universal Overall long before the
Trademark Act was amended to permit intent-to-use
applications and filings of statements of use after
publication and after issuance of a notice of allowance.
Trademark Act Section 1(b), (c) and (d), 

15 U.S.C. § 1051

(b), (c) and (d). Under the current law, the logical
application of the approach in Universal Overall is to
extend the same opportunity to correct errors and thereby
avoid fraud claims to all applicants, including intent-to-
use applicants filing statements of use. In this regard, I
note that the rights residing in all applications under the
current Act are contingent on registration of the mark.
Trademark Act Section 7(c), 

15 U.S.C. § 1057

(c). Therefore,
providing a safe harbor, at least prior to registration, is
also consistent with the statutory scheme for the grant of
rights related to registration. The approach I adopt here
is also fully consistent with the dicta in the Board’s
recent decision in Hurley International LLC v. Volta, 

82 USPQ2d 1339

 (TTAB 2007), which the majority discussed.

NEWS FROM THE TTAB:

The USPTO published a notice of final rulemaking in the
Federal Register on August 1, 2007, at 

72 F.R. 42242

. By
this notice, various rules governing Trademark Trial and

Appeal Board inter partes proceedings are amended. Certain
amendments have an effective date of August 31, 2007, while
most have an effective date of November 1, 2007. For
further information, the parties are referred to a reprint
of the final rule and a chart summarizing the affected
rules, their changes, and effective dates, both viewable on
the USPTO website via these web addresses:

http:/Awww.us pto.gov/web/offices/com/sol/notices/72fr42242.pdf
http://www.uspto.gov/web/offices/com/sol/notices/72fr42242 FinalRuleChart.pdf

By one rule change effective August 31, 2007, the Board's
standard protective order is made applicable to all TTAB
inter partes cases, whether already pending or commenced on
or after that date. However, as explained in the final rule
and chart, this change will not affect any case in which any
protective order has already been approved or imposed by the
Board. Further, as explained in the final rule, parties are
free to agree to a substitute protective order or to
supplement or amend the standard order even after August 31,
2007, subject to Board approval. The standard protective
order can be viewed using the following web address:

http://Awww.uspto.gov/web/offices/dcom/ttab/tbmp/stndagmnt.htm