On January 21, 2016, the TTAB granted a motion for summary judgment finding that the applicant did not commit fraud on the USPTO.

Delphix Corporation filed an application in 2009 to register the following mark for “computer software for use in database storage and provisioning functions”:

Delphix had initially alleged March 1, 2009 as its date of first use in commerce, but later substituted December 3, 2009 in response to an Office action. The trademark registration issued on March 30, 2010. Nearly two years later, Embarcadero Technologies filed a petition to cancel the mark, pleading, among other things, fraud based on Delphix’s allegation of use. Delphix moved for summary judgment on the fraud claim.

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The standard to prove fraud in procuring a trademark registration is high, requiring deceptive intent that must be established by clear and convincing evidence. Delphix contended that Embarcadero’s initial disclosures and pretrial disclosures identified no documents or witnesses  to support the fraud claim. Further, Delphix submitted the declaration of its CEO and founder stating that: 1) Delphix first provided software bearing the mark to a customer in December 2009 and provided user manuals bearing the mark to two customers in 2009; and 2) the CEO therefore believed when Delphix filed its amended statement of use that Delphix had used the mark in commerce as of December 3, 2009.

For its part, Embarcadero submitted an attorney declaration and excerpts from the deposition of Delphix’s CEO. The attorney declaration alleged that Delphix’s document production included no sales documents, purchase orders, or shipment confirmations of the DELPHIX software. The deposition testimony did little more than establish that Delphix’s CEO studied at Harvard and had a general awareness of trademarks. Based on this evidence, Embarcadero argued that a fact dispute existed over whether Delphix filed its statement of use with the necessary fraudulent intent.

The Board granted Delphix summary judgment, stating: “Testimony regarding the education and trademark experience of [Delphix’s] CEO who signed the statement of use is not evidence, direct or indirect, of fraudulent intent, a necessary element of the fraud claim.” The case is a good reminder that parties alleging fraud need at least some circumstantial evidence of fraudulent intent in order to withstand summary judgment.

The case is Embarcadero Techs., Inc. v. Delphix Corp., Cancellation No. 92055153 (TTAB Jan. 21, 2016).