Intellogy Solutions, LLCv.IntelliGolf, Inc.

Trademark Trial and Appeal Board

Jul 29, 2013

No. 91198579 (T.T.A.B. Jul. 29, 2013)

Goodman

Mailed: July 29, 2013

Opposition No. 91198579

Intellogy Solutions, LLC

v.

IntelliGolf, Inc.

Before Quinn, Wolfson, and Hightower, Administrative
Trademark Judges.

By the Board:

Applicant/counterclaim petitioner, Intelligolf, Inc.,
(hereafter applicant) has counterclaimed to cancel
opposer/counterclaim respondent Intellogy Solutions, LLC’s
(hereafter opposer) pleaded registration for the mark
INTELLOGY1 on the basis that opposer fraudulently filed a
false declaration with the initial filing of its
application, fraudulently filed improper specimens and
asserted false dates of first use in its initial filing of

1 Registration No. 2498402, for Class 42: “computer services,
namely, hosting and maintaining the web sites of others on a
computer server for a global computer network.” Registration
issued October 16, 2001; Section 8 accepted, Section 15
acknowledged October 11, 2007; Section 8 (ten year) accepted,
Section 9 granted August 12, 2011.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS OPINION IS NOT
A PRECEDENT OF
THE TTAB
Opposition No. 91198579

2
its application, and fraudulently filed false Section 8 and
Section 15 declarations.2
In its answer, opposer denied that it has committed
fraud on the USPTO.
This case now comes up on opposer’s motion, filed
February 12, 2013, for summary judgment on applicant’s four
fraud counterclaims.3 The motion is fully briefed.
Summary judgment is an appropriate method of disposing
of cases in which there are no genuine disputes of material
fact, thus leaving the case to be resolved as a
matter of law. See Fed. R. Civ. P. 56(a). A party moving
for summary judgment has the burden of demonstrating the
absence of any genuine dispute of material fact. See
Celotex Corp. v. Catrett, 477 U.S. 317 (1986). On summary
judgment, the evidence must be viewed in a light favorable
to the non-moving party, and all justifiable inferences are
to be drawn in the nonmovant's favor. See, e.g., Lloyd's
Food Products Inc. v. Eli's Inc., 987 F.2d 766, 25
USPQ2d 2027 (Fed. Cir. 1993).
Fraud in procuring a trademark registration occurs
when an applicant for registration knowingly makes false,

2 The second amended counterclaim was filed on March 31, 2012.
3 On November 16, 2011 the Board required the parties to seek
leave prior to filing any pretrial motions. On October 25, 2012,
the Board granted opposer’s request for leave to file a motion
for summary judgment on the counterclaims.

Opposition No. 91198579

3
material representations of fact in connection with an
application to register or, in the case of maintaining a
registration, when a registrant makes false, material
representations of fact in connection with a Section 8 or
15 affidavit. In re Bose Corp., 580 F.3d 1240; 91 USPQ2d
1938, 1939 (Fed. Cir. 2009); Torres v. Cantine Torresella
S.r.l., 808 F.2d 46, 1 USPQ2d 1483, 1484 (Fed. Cir. 1986).
Specifically, it involves a willful withholding from the
United States Patent and Trademark Office by an applicant
or registrant of material information or facts which, if
disclosed to the Office, would have resulted in the
disallowance of the registration sought or to be
maintained. First International Services Corp. v. Chuckles
Inc., 5 USPQ2d 1628, 1634 (TTAB 1988).
The evidence on summary judgment consists of the
declaration of Member-Manager of opposer, Robert Rhodes II,
and accompanying exhibits, and the declaration of a
customer of opposer, Jeffrey J. Segal, Chief Executive
Officer of Medical Justice Corporation, and accompanying
exhibits.
Applicant’s evidence in response to opposer’s motion
for summary judgment consists of the declaration of a
representative of applicant, Craig Schmidt, and
accompanying exhibits.
Opposition No. 91198579

4
In reply, opposer submitted the supplemental
declaration of Robert Rhodes II, and accompanying exhibits.
First counterclaim
We turn to the first fraud counterclaim, for which
applicant has alleged that opposer’s initial application
declaration was fraudulent.
The Board found, in our March 13, 2012 order that this
claim was sufficiently pleaded. However, we do note that
with regard to the third element of the claim i.e.,
opposer’s knowledge of applicant’s alleged superior rights,
that in addition to applicant alleging that opposer knew of
applicant’s superior rights, applicant has also alleged
that opposer “had sufficient information to require/warrant
that opposer pursue further investigation . . . ” of
applicant’s superior rights.
In this regard, we note that a trademark applicant has
no duty to investigate potential conflicting uses that
might be found through a trademark search, and therefore,
there is no duty to investigate specific information such
as when a third party may have started using a mark. Maids
to Order of Ohio Inc. v. Maid-to-Order Inc., 78 USPQ2d
1899, 1909 (TTAB 2006) citing Money Store v. Harriscorp
Finance, Inc., 689 F.2d 666, 216 USPQ 11 (7th Cir. 1982)
(an applicant has no duty to investigate and report to the
Opposition No. 91198579

5
USPTO all other possible users of the same or similar
mark). Accordingly, a failure on the part of opposer to
investigate when applicant started using the mark INTELLOGY
or the domain name Intellogy.com would not constitute
fraud.
The Board, in determining whether an applicant when he
signed his application oath held an honest good faith
belief that he was entitled to registration of his mark,
has stated that “if the other person’s rights in the mark,
vis-à-vis the applicant’s rights are not known by applicant
to be superior or clearly established, e.g., by court
decree or prior agreement of the parties, then the
applicant has a reasonable basis for believing that no one
else has the right to use the mark in commerce, and that
applicant’s averment of that reasonable belief in its
application declaration or oath is not fraudulent.”
Intellimedia Sports Inc. v. Intellimedia Corp., 43 USPQ2d
1203, 1207 (TTAB 1997).
Opposer maintains that at the time of filing its
application to register its mark INTELLOGY, it was aware of
applicant’s registration of the domain name Intellogy.com,
but was not aware that applicant had any trademark rights
to the mark INTELLOGY. Robert Rhodes II declares that a
trademark search was conducted on behalf of his company by
Opposition No. 91198579

6
Rhodes & Mason PLC which “returned no usage of the mark
‘intellogy’ in commerce whatsoever.” A copy of the search
has been submitted with the declaration. Mr. Rhodes
further declares that in November 2000 he “personally
performed Internet searches for the term ‘intellogy’ and
found no trademarked use of the mark in commerce,” only
finding use in connection with “the registration of the
domain ‘intellogy.com’” which “pulled up the same identical
website content” as applicant’s Intelligolf site. Mr.
Rhodes declares that there appeared to be no “valid
trademarked usage of the domain name” and no “trademarked
usage of the mark ‘intellogy’ online via Internet searches,
and in reliance on the clearance search services,” he
proceeded with re-branding his “content management software
services from ‘eMPOWER’ to ‘Intellogy.’” We note that
opposer’s knowledge of the registration of the domain name
Intellogy.com did not, by itself, subject opposer to the
duty to disclose applicant’s existence to the Office.
Applicant argues that opposer’s clearance search of
the INTELLOGY mark was deficient as the search excluded the
Sacramento Bee newspaper. However, even if the search was
incomplete in some way, opposer’s reliance thereon would
not result in a finding of fraud absent a showing that
Opposition No. 91198579

7
opposer knew that applicant had superior rights in the
INTELLOGY mark.
Applicant attempts to raise a genuine dispute by
arguing that opposer became aware of applicant’s alleged
superior trademark rights when it searched the internet and
accessed applicant’s Intelligolf website via the
intellogy.com domain name, since the Intelligolf website
provided for the sale of goods in trade. However, none of
the goods were offered for sale under the trademark
INTELLOGY. Despite applicant’s arguments to the contrary,
the purely technological function of the intellogy.com URL
directing users to applicant’s Intelligolf website is not
evidence of trademark use. See, e.g., In re Supply Guys,
Inc., 86 USPQ2d 1488, 1493 (TTAB 2008) (use of LEADING EDGE
TONERS as part of an internet address on a webpage was not
use as a trademark for goods sold on the website).
Applicant also has argued that opposer should have
been aware of its trademark use of INTELLOGY or
Intellogy.com because its Intelligolf website, to which the
domain name intellogy.com pointed, contained “active URL
links” which referenced “‘Trademark Copyrights and Terms of
Use,’” which then linked to a “‘Trademark, Copyrights and
Terms of Use web page,’” which then linked to “Applicant’s
list of trademarks web page” which then linked to a
Opposition No. 91198579

8
“‘Trademark Notice web page.’” Applicant states that
“Intellogy™” was listed on the second page of the
“‘Trademark Notice’ web page.” However, trademark notice
does not per se give a term trademark significance. See In
re A La Vieille Russie, Inc., 60 USPQ2d 1895 (TTAB 2001)
(use of SM symbol in connection with RUSSIANART was not
dispositive in determining service mark use, wherein such
use was buried amid other informational matter).4 See also
In re Remington Products Inc., 3 USPQ2d 1714, 1715 (TTAB
1987) (“Mere intent that a term function as a trademark is
not enough in and of itself, any more than attachment of
the trademark symbol would be, to make a term a
trademark”).
Moreover, applicant’s own submissions further support
opposer assertions that applicant’s rights in INTELLOGY or
Intellogy.com as trademarks were not known by opposer to be
superior or clearly established at the time opposer filed
its INTELLOGY application.
In particular, the administrative panel decision from
the WIPO Arbitration and Media Center involving the

4 Applicant’s arguments regarding opposer’s actions in connection
with the parties’ WIPO dispute, other domain name disputes, and
opposer’s actions in filing this opposition are simply not
relevant to the issue of whether opposer’s initial application
declaration for the mark INTELLOGY was false.

Opposition No. 91198579

9
parties, Intellogy Solutions, LLC v. Craig Schmidt and
Intelligolf, Inc., Case No. D2009-1244 (November 24, 2009),
noted that
Respondents . . . do not appear to use that mark
[INTELLOGY] on the home page of their
website. . . . [P]rior to filing
the [domain name] Complaint, Complainant had no
actual knowledge of Respondent’s prior use of the
INTELLOGY mark in connection with its Intelligolf
technology goods and services. . . . Respondents
had no registration, and Respondents did not seem
to be making any legitimate use of the INTELLOGY
mark on the home page of its website.

Accordingly, we find that there is no genuine dispute
of material fact that applicant’s rights were not known by
opposer to be superior or clearly established at the time
of filing its INTELLOGY application, and the fraud claim
fails on this basis alone.
In view thereof, opposer’s motion for summary judgment
on the first counterclaim is granted, and the first
counterclaim is dismissed.
Second counterclaim
Turning next to the second counterclaim, our review of
the pleadings in connection with the motion for summary
judgment reveals that applicant has insufficiently alleged
fraud in its second counterclaim.
In particular, applicant alleges that opposer’s
claimed date of first use as set forth in the underlying
Opposition No. 91198579

10
application was false. It is well settled that a
misstatement of a date of first use in commerce is not
fraudulent nor is it otherwise fatal to the securing of a
valid registration provided that there has been use of the
mark in commerce prior to the filing date of registrant’s
application. Giant Food, Inc. v. Standard Terry Mills,
Inc., 231 USPQ 626, 630 (TTAB 1986). Inasmuch as the
second counterclaim is based on allegedly false dates of
first use, the Board finds this portion of the second fraud
counterclaim insufficient on its face.
With regard to applicant’s allegations related to
improper specimens, i.e., the submission of a press release
by opposer rather than an advertisement as a specimen of
service mark use, this allegation without more does not
constitute fraud as the examining attorney could not have
been misled as to what is apparent on the face of the
specimen. Neapco Inc. v. Dana Corp., 12 USPQ2d 1746, 1748
(TTAB 1989) citing W. D. Byron & Sons, Inc. v. Stein Bros.
Mfg. Co., 377 F.2d 1001, 153 USPQ 749 (CCPA 1967) (finding
no fraud as nothing was concealed from the examining
attorney; the examining attorney was or should have been
put on notice that the mark may also function as a part or
model number in view of submission of a specimen which
displayed it in such a manner).
Opposition No. 91198579

11
Accordingly, inasmuch as these allegations fail to
state a claim of fraud and are insufficient, the second
counterclaim is dismissed with prejudice.5 See, e.g., Bayer
Consumer Care AG, 90 USPQ2d 1587, 1592-93 (TTAB 2009)
(dismissing with prejudice the second amended petition with
respect to an untenable fraud claim without leave to
replead).
Third and Fourth Counterclaims
With regard to the third and fourth counterclaims, we
find that opposer has not met its initial burden of showing
the absence of a genuine dispute of material fact such that
it is entitled to judgment as a matter of law on
applicant’s Section 8 and 15 fraud counterclaims.6 In
particular, a genuine dispute of material fact remains, at
least, with respect to whether opposer (1) had continuous
use of the INTELLOGY mark in connection with web hosting
services during the five years prior to the time of filing

5 Having determined that the claim is insufficient on its face,
we need not consider opposer’s motion for summary judgment on
this claim. See Asian and Western Classics B.V. v. Selkow, 92
USPQ2d 1478, 1480 (TTAB 2009) (finding motion for summary
judgment moot on fraud claim due to improper and insufficient
pleading).
6 We note that applicant also has pleaded that opposer acted with
reckless disregard in connection with these claims. It is not
established whether reckless disregard of the truth or falsity of
a submission to the USPTO satisfies the intent to deceive
requirement to constitute fraud. In re Bose Corp., 580 F.3d
1240, 91 USPQ2d 1938, 1942 n.2 (Fed. Cir. 2009); DaimlerChrysler
Corp. v. American Motors Corp., 94 USPQ2d 1086, 1089 n.5 (TTAB
2010) (citing Bose).
Opposition No. 91198579

12
the Section 15 declaration, and (2) was using the INTELLOGY
mark in connection with web hosting services at the time it
filed the Section 8 declarations.
In view thereof, opposer’s motion for summary judgment
with respect to the third and fourth fraud counterclaims is
denied.7
This is the second motion for summary judgment that
the Board has entertained. Applicant filed a motion for
summary judgment on opposer’s claim of likelihood of
confusion on April 13, 2011, which was denied by the Board
on July 18, 2011.
Inasmuch as the Board now has entertained motions for
summary judgment on both the claims for opposition and the
counterclaims for cancellation, the Board expects the
parties to proceed to trial. As the Board has stated
previously, no further pretrial motions will be entertained
unless, prior to the filing thereof, the moving party

7 The fact that we have identified and discussed certain genuine
disputes of material fact as a sufficient basis for denying
opposer’s motion for summary judgment on these counterclaims
should not be construed as a finding that these are necessarily
the only disputes which remain for trial.
The parties are reminded that evidence submitted in support of
or in opposition to a motion for summary judgment is of record
only for consideration of that motion. Any such evidence to be
considered at final hearing must be properly introduced during
the appropriate trial period. See Levi Strauss & Co. v. R.
Joseph Sportswear Inc., 28 USPQ2d 1464 (TTAB 1993).

Opposition No. 91198579

13
seeks, and is granted, leave to file its motion by the
Board. If the parties seek to expedite matters, they may
wish to consider the Board’s accelerated case resolution
(ACR) procedures.
Proceedings are resumed.
Dates are reset as follows:
Expert Disclosures Due October 4, 2013
Discovery Closes November 3, 2013
Plaintiff's Pretrial Disclosures
Due
December 18, 2013
30-day testimony period for plaintiff's
testimony to close
February 1, 2014
Defendant/Counterclaim Plaintiff's
Pretrial Disclosures Due
February 16, 2014
30-day testimony period for defendant
and plaintiff in the counterclaim to
close
April 2, 2014
Counterclaim Defendant's and Plaintiff's
Rebuttal Disclosures Due
April 17, 2014
30-day testimony period for defendant in
the counterclaim and rebuttal testimony
for plaintiff to close
June 1, 2014
Counterclaim Plaintiff's Rebuttal
Disclosures Due
June 16, 2014
15-day rebuttal period for plaintiff in
the counterclaim to close
July 16, 2014
Brief for plaintiff due September 14, 2014
Brief for defendant and plaintiff in the
counterclaim due
October 14, 2014
Brief for defendant in the counterclaim
and reply brief, if any, for plaintiff
due
November 13, 2014
Reply brief, if any, for plaintiff in
the counterclaim due
November 28, 2014

Opposition No. 91198579

14
In each instance, a copy of the transcript of
testimony, together with copies of documentary exhibits,
must be served on the adverse party within thirty days
after completion of the taking of testimony. Trademark
Rule 2.l25.
An oral hearing will be set only upon request filed as
provided by Trademark Rule 2.l29.