Trademark Trial and Appeal Board Electronic Filing System. httgj/estta.usQto.gov
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`91200221
`
`Defendant
`SNRG Ventures LLC
`
`VINCENT J ALLEN
`CARSTENS CAHOON LLP
`13760 NOEL ROAD, SUITE 900
`DALLAS, TX 75240
`UNITED STATES
`
`hiIton@cc|aw.com,tmdocketing@cc|aw.com,a||en@cc|aw.com
`
`Opposition/Response to Motion
`
`Zachary W. Hilton
`
`
`
`tmdocketing@cc|aw.com, hi|ton@cc|aw.com, a||en@cc|aw.com
`
`/Zachary W. Hiltonl
`07/09/2013
`
`SNRG's Resp to Mot to Dismiss (Filed 07.09.2013).pdf(659874 bytes)
`Ex. A — FB MSJ (TimeLines).pdf(792660 bytes)
`Ex. B -- FB Reply MSJ (TimeIines).pdf(198489 bytes )
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA547530
`ESTTA Tracking number:
`07/09/2013
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91200221
`Defendant
`SNRG Ventures LLC
`VINCENT J ALLEN
`CARSTENS CAHOON LLP
`13760 NOEL ROAD, SUITE 900
`DALLAS, TX 75240
`UNITED STATES
`hilton@cclaw.com,tmdocketing@cclaw.com,allen@cclaw.com
`Opposition/Response to Motion
`Zachary W. Hilton
`tmdocketing@cclaw.com, hilton@cclaw.com, allen@cclaw.com
`/Zachary W. Hilton/
`07/09/2013
`SNRG's Resp to Mot to Dismiss (Filed 07.09.2013).pdf(659874 bytes )
`Ex. A - FB MSJ (TimeLines).pdf(792660 bytes )
`Ex. B -- FB Reply MSJ (Timelines).pdf(198489 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In the matter of Application Serial No. 85/046,798
`Mark:
`SHAGBOOK
`Published:
`January 25, 2011
`
`APPLICANT SNRG VENTURES LLC’S RESPONSE IN OPPOSITION
`TO OPPOSER’S MOTION TO DISMISS COUNTERCLAIMS
`
`Applicant SNRG Ventures LLC (“SNRG”) submits this Response in Opposition
`
`
`
`to Opposer Facebook, Inc.’s (“Opposer”) Motion to Dismiss and respectfully requests
`
`that the Motion be denied in all respects. In support of its foregoing request, SNRG
`
`would show the Board as follows:
`
`I.
`
`INTRODUCTION
`
`SNRG has alleged numerous well-supported facts showing that “facebook” was
`
`and is a generic term for the types of services Opposer provides under such term, and that
`
`Opposer knew the term was generic when it filed the applications that matured into the
`
`subject registrations. Nevertheless, Opposer would have the Board disregard those facts
`
`and instead improperly adopt Opposer’s own version of the facts in dismissing SNRG’s
`
`counterclaims. However, adopting Opposer’s version of the facts would ignore the
`
`Board’s well-established precedent requiring that all disputed issues be construed
`
`
`
`
`
`
` Page 1 of 26
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`Opposition No.
`
`91200221
`
`
`
`FACEBOOK, INC.,
`
`
`
`
`
`
`
`
`Opposer,
`
`
`
`
`
`
`v.
`
`
`
`
`
`
`
`SNRG VENTURES LLC,
`
`
`
`
`Applicant.
`
`
`
`
`

`
`favorably to the complainant and that all reasonable inferences be drawn in favor of the
`
`complainant.
`
`SNRG has pled facts demonstrating that the “facebook” term was and is generic,
`
`regardless of whether Opposer had intent to deceive the USPTO. In particular, SNRG
`
`points to past and current dictionary entries defining the “facebook” term generically, and
`
`to generic usage of the term by numerous third parties. For example, the company that
`
`previously provided facebook services on facebook.com before it sold the web domain to
`
`Opposer, used the “facebook” term generically to refer to its online facebook services.
`
`However, the most powerful evidence of the genericness of the “facebook” term is
`
`Opposer’s own generic usage of the term to refer to its facebook services in public
`
`statements, and in its originally submitted specimen of use for “THEFACEBOOK.”
`
`(compare “We recently opened up Thefacebook at the following schools” to “Your
`
`facebook is limited to your own college or university.”)
`
`Opposer relies heavily on the fact that it has amassed a substantial number of
`
`users over the last decade in arguing that the “facebook” term is now famous and
`
`therefore supposedly cannot possibly be generic. However, one of the cardinal rules of
`
`trademark law, and one that Opposer itself urges courts to apply when it finds it in its
`
`interests to do so, is that a generic term can never function as a trademark. See Timelines,
`
`Inc. v. Facebook, Inc., No. 11-cv-6867, 2013 U.S. Dist. LEXIS 46490, at *26 (N.D. Ill.
`
`April 1, 2013) (“a generic term cannot become a trademark under any circumstances.”)
`
`The foregoing rule should apply even more forcefully in cases such as this, when a party
`
`such as Opposer fraudulently procures trademark registrations from the USPTO for a
`
`term it knows to be generic. It would be unjust to permit a party to procure trademark
`
`
`
`
`
`
` Page 2 of 26
`
`

`
`registrations for a generic term through fraud, use those registrations as a sword to
`
`prevent other legitimate use of the generic term by others, and then use its purported fame
`
`and whatever ill-gotten secondary meaning the term has attained to shield it against
`
`allegations of fraud and genericness.
`
`With respect to fraud, the Board has clearly stated in its post-Bose decisions that
`
`if a party alleges that an applicant knowingly made material misrepresentations to the
`
`USPTO in order to procure a registration, the deceptive intent element of a fraud claim
`
`has been sufficiently pleaded. Opposer’s own use of the “facebook” term generically in
`
`its specimen of use and in public statements demonstrates that Opposer knew the term
`
`was generic when it submitted sworn declarations to the USPTO claiming exclusive
`
`rights in the term.
`
`SNRG has not made “merely conclusory” allegations regarding fraud and
`
`genericness as argued by Opposer. Rather, SNRG has pled well-supported factual
`
`allegations buttressed by excerpts from supporting documents that SNRG has
`
`incorporated into its pleading. While Opposer improperly tries to put its own spin on
`
`these facts and documents, all reasonable inferences must be drawn in favor of SNRG.
`
`Accordingly, SNRG respectfully requests that the Board find that its pleadings are more
`
`than sufficient to meet the “facial plausibility” standard applied at this early stage of the
`
`proceeding.
`
`II.
`
`FACTUAL BACKGROUND
`
`In order to provide the Board with a better understanding of the factual context of
`
`SNRG’s Amended Counterclaims, SNRG provides the following summary of the history
`
`
`
`
`
`
` Page 3 of 26
`
`

`
`of the generic usage of the “facebook” term, and Opposer’s activities in fraudulently
`
`obtaining trademark registrations for such term.
`
`Prior to the late 1990’s, the terms “facebook” and “face book” were understood
`
`by members of the public to generically refer to books or directories in which pictures of
`
`individuals, together with information relating to those individuals, were displayed in an
`
`organized fashion. (Am. Counterclaims ¶ 1.) As the general public’s use of computers
`
`and in particular, the World Wide Web, increased dramatically in the mid to late 1990’s,
`
`it was only natural that the publicly recognized meaning of the “facebook” term would
`
`expand to encompass online web-based directories of individuals and other associated
`
`goods and services. At least as early as May 1998, Atlantic Media Corporation (“AMC”)
`
`was using the <www.facebook.com> web domain to advertise its online facebook
`
`services. (Id. ¶ 3.) In May 1998, AMC applied for a U.S. trademark registration for its
`
`ABOUTFACE mark and submitted a specimen (see partial image below) to the USPTO
`
`of one of its advertisements that heralded its online directory as “[t]he fastest and easiest
`
`way to produce an electronic facebook for your organization.” (Id. ¶¶ 3, 4.)
`
`The specimen submitted by AMC in 1998 also includes a screenshot from its
`
`www.facebook.com web domain showing the online facebook profile of an individual
`
`(see image below). (Id.) The online facebook profile included the individual’s name,
`
`position, professional licenses, work location, education, and contact information. (Id.)
`
`
`
`
`
`
` Page 4 of 26
`
`

`
`
`
`Web Domain: <http://www.facebook.com/webdemo>
`
`
`
`
`
`AMC was still using the “facebook” term generically to refer to its electronic
`
`directory web application as late as 2005, the same year that Opposer acquired the
`
`<facebook.com> domain from it. (Id. ¶ 5-6.) Opposer’s founder (Mark Zuckerberg) and
`
`other executives (Sean Parker) were keenly aware of AMC’s generic usage of the
`
`“facebook” term, both in its web domain and in the marketing of its services, at the time
`
`Opposer was in active negotiations to purchase the facebook.com domain from AMC.
`
`(Id. ¶ 7.)
`
`The facebook craze even made its way to Phillips Exeter Academy, a college
`
`preparatory school where Mark Zuckerberg (Opposer’s co-founder) was enrolled in the
`
`spring of 2002. (Id. ¶ 9.) Evidence in SNRG’s possession indicates that during
`
`Zuckerberg’s enrollment at Phillips Exeter Academy, the school implemented and
`
`published an online directory of students at <http://student.exeter.edu/facebook>. (Id. ¶
`
`
`
`
`
`
` Page 5 of 26
`
`

`
`10.) The same evidence shows that Zuckerberg was aware of the school’s online
`
`facebook service before he left to continue his education at Harvard. (Id. ¶ 11.)
`
`At least as early as August 2003, other students at Harvard University, where
`
`Mark Zuckerberg began attending as an undergraduate student in the fall of 2002, began
`
`developing online student directories and referring to them as a “facebook” or “face
`
`book.” (Id. ¶ 12.) At least as early as 2003, Zuckerberg knew the “face book” or
`
`“facebook” term was a generic term referring to a host of different social networking
`
`services, as Opposer admitted that Zuckerberg used what Opposer referred to as Think
`
`Computer Corp.’s “Universal Face Book feature” during that time period. (Id. ¶¶ 13- 14.)
`
`In early February 2004, Opposer
`
`launched
`
`its own online
`
`facebook at
`
`<thefacebook.com>. (Id. ¶ 15.) The <facebook.com> domain was already being used to
`
`provide an online facebook by AMC. Id. Moreover, the fact that Zuckerberg chose to
`
`incorporate the definite article, “the” into the <thefacebook.com> domain, further
`
`confirms that Zuckerberg considered the “facebook” term to be a generic term for the
`
`very types of services he (and later Opposer) provided under the term. (Id. ¶ 22.)
`
`Zuckerberg’s statements to the media just after launching his service further
`
`confirm that he knew that the “facebook” term was a generic term for the types of
`
`services he provided, and that the public would readily understand his use of “facebook.”
`
`For example, Mark Zuckerberg is quoted in a February 9, 2004 article from The Harvard
`
`Crimson as stating, “Everyone’s been talking a lot about a universal face book within
`
`Harvard. I think it’s kind of silly that it would take the University a couple of years to get
`
`around to it. I can do it better than they can, and I can do it in a week.” (Id. ¶ 15.) Later
`
`statements made by Zuckerberg to the media also demonstrate an understanding of the
`
`
`
`
`
`
` Page 6 of 26
`
`

`
`genericness of the “facebook” term. During an interview of Mark Zuckerberg held on or
`
`about June 2005, Zuckerberg explained that the genesis of his services originated when
`
`he was “programming what was a facebook really at that time for Harvard.” (Id. ¶ 17.)
`
`Given such common generic usage in the public of the “facebook” term to refer to
`
`the types of online social networking services being provided by Opposer and others,
`
`dictionaries, not surprisingly, expanded their definitions of the term to encompass such
`
`usage. For example, prior to at least January 2008 and thereafter, the term “facebook”
`
`was defined on dictonary.com (cited by Webster’s New Millennium Dictionary of
`
`English, Preview Edition) as being “a publication for an organization, such as a school or
`
`business, which helps members identify each other; also, an online version of this, with
`
`profiles including a picture, name, birthday, interests, etc.” (Id. ¶¶ 18, 19.) Despite
`
`Opposer’s attempts to bully certain dictionary publishers into deleting the generic entries
`
`for the “facebook” term, the entries still remain. (Id. ¶ 19.)
`
`Even though Opposer knew that the “facebook” term was and is a generic term
`
`understood by the public to refer to the types of services Opposer provides under the
`
`term, Opposer in 2005 began applying for trademark registrations for the generic term.
`
`In doing so, Opposer made material misrepresentations to the USPTO that it held
`
`exclusive rights in the term and that it was the sole owner of the so-called “mark.”
`
`Opposer’s knowledge of the genericness of “facebook” is indisputably revealed in its
`
`generic usage of the term in its specimen of use submitted to the USPTO in February
`
`2005 (see annotated partial image below). (Am. Counterclaims ¶¶ 28-30.)
`
`
`
`
`
`
` Page 7 of 26
`
`

`
`
`
`The manner in which Opposer uses the “facebook” term in its specimen,
`
`particularly in contrast to its use of “Thefacebook” term, demonstrates that Opposer knew
`
`that the “facebook” term was and is generic for the types of services it provides under the
`
`term. Id. For example, Opposer capitalizes the first letter of “Thefacebook” term, stating
`
`that “[w]e have recently opened up Thefacebook at the following schools.” In contrast, it
`
`tellingly chose not to capitalize the “facebook” term, as it intended to use the term
`
`generically. See In re Country Music Association, Inc., 100 USPQ2d 1824, 1831 (TTAB
`
`2011) (“initial capitalization of a term or phrase is generally used to designate a brand
`
`name, as opposed to a generic term.”)
`
`Opposer uses “Thefacebook” designation in the specimen to explain some of the
`
`capabilities of its services by stating, “You can use Thefacebook to: Search for people at
`
`your school, find out who is in your classes, [etc.].” (Am. Counterclaims ¶¶ 28-30.) In
`
`stark contrast, Opposer uses the term “facebook” in a generic sense to refer to the type of
`
`services it is providing by stating, “[y]our facebook is limited to your own college or
`
`university.” Opposer’s use of the possessive word “your” preceding “facebook,” shows
`
`
`
`
`
`
` Page 8 of 26
`
`

`
`that Opposer considered the term to be generic and that the public would understand such
`
`generic usage. See generally American Thermos Prod. Co. v. Aladdin Indus., Inc., 321
`
`F.2d 577, 581 (2d Cir. 1963) (permitting defendant to use generic “thermos” term so long
`
`as it was used in lowercase letters and preceded by possessive form of its own mark).
`
`In view of such material misrepresentations of exclusivity to the USPTO, which
`
`led to the issuance of multiple trademark registrations for the “facebook” term, SNRG
`
`seeks to cancel such registrations on grounds of fraud and genericness.
`
`III.
`
`PROCEDURAL BACKGROUND
`
`In its previously-pled counterclaim counts of fraud, SNRG pointed to numerous
`
`instances in which Opposer made misrepresentations to the USPTO in connection with its
`
`trademark applications that matured into the subject registrations it seeks to cancel.
`
`However, the Board in its Order dated May 18, 2013, ruled that while Opposer may have
`
`made certain misrepresentations to the USPTO (regarding dates of first use, etc.), such
`
`misrepresentations will not be considered material by the Board in the sense that they
`
`cannot serve as a basis for cancelling the subject registrations.
`
`The Board acknowledged, citing to several of its pre-Bose decisions1 that it still
`
`finds applicable, holding that fraud takes place when an applicant makes a material
`
`misrepresentation of exclusive rights to the USPTO in seeking registration of a term that
`
`the applicant knows to be generic. (Bd.’s Order at 12.) In particular, the Board stated,
`
`“the Board can find fraud based on a knowingly made assertion in an application
`
`declaration of exclusive rights in a term that opposer knew at the time of signing the
`
`
`1 G. Levor & Co. v. Nash, Inc., 123 USPQ 234 (TTAB 1959); and Bart Schwartz Int’l
`Textiles, Ltd. v. Federal Trade Comm’n, 289 F.2d 665, 129 USPQ 258 (CCPA 1961).
`
`
`
`
`
`
` Page 9 of 26
`
`

`
`application declarations that others had the right to use generically with the intent to
`
`deceive the USPTO into issuing registrations to which oppose was not entitled.” Id.
`
`The Board concluded its Order by extending an invitation to SNRG to amend its
`
`pleadings to set forth more detailed allegations supporting fraud. In response, SNRG has
`
`now significantly narrowed the basis for its counterclaim of fraud in its amended
`
`pleading to further expound on its previously pled facts supporting such a basis for fraud.
`
`Namely, Opposer perpetrated a fraud on the USPTO in procuring the subject registrations
`
`by claiming exclusive rights in the “facebook” term it knew was generic. Likewise,
`
`SNRG has amended its counterclaims to separately and distinctly set forth the
`
`genericness grounds for cancellation of the subject registrations, which does not have a
`
`deceptive intent requirement.
`
`IV. ARGUMENT
`
`SNRG has alleged facts in its amended pleading that are more than sufficient to
`
`support its counterclaims for cancellation on the grounds of both fraud and genericness.
`
`The allegations easily meet and surpass the “facial plausibility” standard set forth in
`
`Twombly and Iqbal at this relatively early stage of the proceedings. Instead of explaining
`
`how SNRG’s pleadings are facially deficient, Opposer improperly urges the Board to
`
`adopt Opposer’s version of the facts.
`
`For example, Opposer attempts to make excuses for the numerous inconvenient
`
`instances of generic usage of the “facebook” term made by its co-founder (“an arguably
`
`non-trademark use of the term “facebook” by Mr. Zuckerberg, who is not an attorney . .
`
`.”). (Opp.’s Mot at 9.) Opposer also explains how other statements made by Mr.
`
`Zuckerberg tend to weigh in Opposer’s favor on the issue of genericness (“he states that
`
`
`
`
`
`
` Page 10 of 26
`
`

`
`he needed to create something more than just a ‘facebook’”). Id. Other facts, such as
`
`AMC’s generic use of the “facebook” term, Opposer simply mischaracterizes as
`
`discussed below. When faced with the fact that Opposer submitted specimens that
`
`contain generic usage of the “facebook” term for the very same types of services Opposer
`
`provides, Opposer’s sole argument is that it could not possibly be fraud because the
`
`examining attorney allowed the application to mature to registration. Id. Under
`
`Opposer’s twisted logic, an issued trademark registration could never be cancelled on the
`
`basis of fraud. Moreover, as discussed further below, the Board has previously relied
`
`upon such generic usage of a term in a specimen to find fraud.
`
`While Opposer will have the opportunity to present such arguments again when it
`
`submits its trial brief, such arguments are inappropriate in the context of a motion to
`
`dismiss and should be disregarded by the Board. In making such arguments, Opposer is
`
`improperly urging the Board to draw all inferences in its own favor and to prematurely
`
`make decisions that should only be made at trial after the parties have had a full
`
`opportunity to engage in discovery and submit all available evidence. See Advance
`
`Cardiovascular Sys. v. SciMed Life Sys., 988 F.2d 1157, 1161 (Fed. Cir. 1993)(holding
`
`that in the context of a motion to dismiss for failure to state a claim, all disputed issues
`
`are construed favorably to the complainant and all reasonable inferences are drawn in
`
`favor of the complainant). Nevertheless, SNRG will address Opposer’s arguments to
`
`demonstrate that SNRG’s allegations are in fact sufficiently pleaded.
`
`A.
`
`SNRG’s Allegations That Opposer Knowingly Made Material
`Misrepresentations to USPTO Are Sufficient to Plead Element of
`Deceptive Intent.
`
`Apart from the intertwined issue of the sufficiency of SNRG’s allegations relating
`
`to genericness, the only aspect of SNRG’s fraud counterclaim that Opposer argues is
`
`
`
`
`
`
` Page 11 of 26
`
`

`
`insufficient, relates to the element of deceptive intent. To the extent that Opposer argues
`
`that some sort of additional direct evidence (a “smoking gun”) of deceptive intent must
`
`be alleged by SNRG, Opposer is simply in error. The Federal Circuit and the Board have
`
`long acknowledged that such direct evidence of deceptive intent is not necessary to plead
`
`and prove fraud, but rather deceptive intent can be inferred from the circumstances. See
`
`In re Bose, 580 F.3d 1240, 1245 (Fed. Cir. 2009).
`
`In its precedential decisions on this issue following the Federal Circuit’s decision
`
`in Bose, the Board has held that the element of deceptive intent is sufficiently pled when
`
`a pleading alleges that a material misrepresentation was knowingly made to the USPTO
`
`to procure a registration. See DaimlerChrysler Corp. v. American Motors Corp., 94
`
`USPQ2d 1086, 1089 (TTAB 2010) (“where a pleading asserts that a known
`
`misrepresentation, on a material matter, is made to procure a registration, the element of
`
`intent, indispensable to a fraud claim, has been sufficiently pled”). SNRG has
`
`sufficiently pled the element of deceptive intent by alleging facts showing that Opposer
`
`knew the falsity of its material misrepresentations of exclusive rights to the “facebook”
`
`term when it submitted its declarations supporting its trademark applications to the
`
`USPTO.
`
`More specifically, the following facts pled by SNRG demonstrate that Opposer
`
`knew that the “facebook” term was generic when it submitted its declarations claiming
`
`exclusivity and ownership of the term to the USPTO:
`
`• Opposer’s own specimen submitted to the USPTO uses the “facebook”
`term in a generic manner to refer to the types of services provided by
`Opposer under said term (SNRG’s Am. Counterclaims ¶¶ 28-30, 49-52,
`71, 88, 105 and 122);
`
`
`
`
`
`
` Page 12 of 26
`
`

`
`• Since as early as 2004, Opposer and its founders have made numerous
`public statements in which they have used the “facebook” term generically
`to refer to the types of services that Opposer provides under the
`“facebook” term (Am. Counterclaims ¶¶ 13-17); and
`• Opposer’s own 2004-2005 usage of the definite article “the” in connection
`with its use of THEFACEBOOK “mark” demonstrates that Opposer knew
`that the “facebook” term was and is generic (Am. Counterclaims ¶ 22).
`
`1.
`
`Opposer’s own specimen submitted to the PTO on February 24,
`2005 demonstrates that Opposer knew that “facebook” was a
`generic term for the same services it was providing under the term.
`
`On or about February 24, 2005, Opposer submitted a specimen of use to the
`
`USPTO which includes generic usage of the “facebook” term to refer to the types of
`
`services being provided by Opposer. (SNRG’s Am. Counterclaims ¶¶ 28-30, 49-52, 71,
`
`88, 105 and 122). SNRG sets forth a detailed discussion in its pleadings for why
`
`Opposer’s use of the “facebook” term constitutes a generic use of the term. Id. The
`
`generic usage of the “facebook” term to refer to the types of services Opposer provided in
`
`connection with the term, demonstrates that Opposer knew that the “facebook” term was
`
`generic. As already acknowledged by the Board in its previous Order dated May 18,
`
`2013, its prior decision in G. Levor & Co. v. Nash, Inc., 123 USPQ 234 (TTAB 1959)
`
`stands for the proposition that fraud may be found when a party claims exclusive rights in
`
`a term it knows to be generic. (Order at 12.)
`
`In Levor, the petitioner sought to cancel a trademark registration for “Cabretta,”
`
`for use in conjunction with leather billfolds, cases, and purses. Levor, 123 USPQ at 234.
`
`The petitioner alleged that for many years prior to the filing of the subject trademark
`
`application by the respondent/applicant, the term “Cabretta” had been in use by numerous
`
`other third parties in the industry as a generic2 term for leather made from the skins of
`
`
`2 In Levor, the Board refers to a term that is generic as a “common descriptive name.”
`
`
`
`
`
`
` Page 13 of 26
`
`

`
`“hair sheep.” Id. The petitioner further alleged that the respondent/applicant knew of the
`
`genericness of the applied-for mark and committed fraud on the PTO when the
`
`respondent/applicant nevertheless misrepresented that it was the owner of the mark and
`
`that no other person, firm, corporation, or association had the right to use the mark. Id.
`
`The Board agreed with the petitioner that the respondent/applicant had committed fraud
`
`by signing its false declaration when it knew that the “Cabretta” term was generic. Id. at
`
`235.
`
`The Board in Levor considered evidence of third party usage of the “Cabretta”
`
`term in analyzing whether the applicant had the requisite scienter for fraud. Id. However,
`
`the Board found the most compelling evidence of fraud and in particular, of deceptive
`
`intent, to be the specimen that was supplied to the PTO by the respondent/applicant at the
`
`time it filed the trademark application. Id. The specimen included use of the term
`
`“Cabretta” as a part of the notation “Genuine Cabretta” in the same manner as such terms
`
`as “genuine cowhide,” genuine pigskin,” and the like. Id. As to the question of whether
`
`the respondent/applicant knew of the generic nature of the “Cabretta” term when it filed
`
`its declaration, the Board stated that “any doubts as to this are completely dispelled” in
`
`view of the use of the term on the specimen. Id. Therefore, like in Levor, Opposer’s
`
`generic “facebook” term in its specimen of use, should completely dispel any doubts as to
`
`whether Opposer knew the term was generic when it filed the trademark applications that
`
`matured into the registrations SNRG seeks to cancel.
`
`2.
`
`Opposer’s and Zuckerberg’s own statements to the media in
`February 2004 and afterwards also demonstrate that Opposer knew
`that “facebook” was a generic term.
`
`
`
`While Opposer’s generic use of the “facebook” term in its specimen should be
`
`enough to remove any doubt as to Opposer’s deceptive intent, the public statements of
`
`
`
`
`
`
` Page 14 of 26
`
`

`
`Zuckerberg made both before and after February 24, 2005 (date Opposer filed first
`
`trademark application) further buttress SNRG’s allegations of fraud. For example,
`
`Zuckerberg’s statement to The Harvard Crimson in February 2004, referring to the
`
`student body’s discussion of the need for a “universal face book” and boasting that he
`
`had quickly created such a facebook, shows that he considered the “facebook” term to be
`
`a generic term for the types of online social networking related services he provided.
`
`(Am. Counterclaims ¶ 15.) Zuckerberg’s statement is also consistent with Opposer’s
`
`generic usage of “face book” term in a 2009 post-settlement press release, stating that he
`
`had been a user of Aaron Greenspan’s “Universal Face Book” feature on the
`
`houseSYSTEM at Harvard. (Id. ¶¶ 13, 14.) This generic reference to a “face book
`
`feature” is even further consistent with Zuckerberg’s generic usage of “facebook” in a
`
`June 2005 interview, to refer to the types of services provided by Opposer. (Id. ¶ 17.)
`
`3.
`
`Opposer’s use of the definite article, “the,” preceding “facebook,”
`further demonstrates Opposer’s knowledge that the “facebook”
`term is generic for the types of services it provides under the term.
`
`
`
`Numerous legal commentators on trademark law have noted that a trademark
`
`answers the question, “who am I?” See 2 Thomas J. McCarthy, MCCARTHY ON
`
`TRADEMARKS AND UNFAIR COMPETITION § 12:13 (4th ed. 2009) (“McCarthy”). In
`
`contrast, a generic term answers the question of “what am I?” Id. As discussed above,
`
`Opposer first used the term “thefacebook” to refer to its facebook service on the web
`
`domain <thefacebook.com>. Opposer’s use of the definite article, “the,” as a prefix to
`
`the “facebook” term, shows that Opposer considered the term to be a generic term for the
`
`types of services it provided under the term. (Am. Counterclaims ¶ 22.) In other words,
`
`Opposer’s use of the generic term “thefacebook” was clearly intended to answer the
`
`question, “what am I?”
`
`
`
`
`
`
` Page 15 of 26
`
`

`
`In view of Opposer’s specimen, the aforementioned statements by Opposer and
`
`Zuckerberg, and Opposer’s use of the definite article in “thefacebook” term, there can be
`
`no doubt that Opposer knew that the “facebook” term was generic when it began
`
`applying for registrations for the “mark.” Thus, SNRG respectfully submits that it has
`
`sufficiently pled the deceptive intent element of fraud and therefore, Opposer’s Motion
`
`should be denied.
`
`B.
`
`SNRG Has Sufficiently Pleaded “Reckless Disregard” and “Willful
`Blindness” as Alternative Bases of Fraud Counterclaim.
`
`The Board has indicated that in the absence of evidence of deceptive intent,
`
`evidence of a reckless disregard for the truth may serve as an alternative basis for a
`
`finding of fraud. See DaimlerChrysler Corp. v. American Motors Corp., 94 USPQ2d
`
`1086, 1089 & n.5 (TTAB 2010). Similarly, some legal commentators (including judges
`
`sitting on the Board) have also indicated that willful blindness of a party may also serve
`
`as a basis for fraud in cases where there is an absence of evidence of intent to deceive.
`
`See L. Ritchie, “Is ‘Willful Blindness’ the New ‘Recklessness’ After Global-Tech?,” 21
`
`Federal Circuit Bar Journal 165 (Dec. 2011) (pointing out that the Supreme Court in
`
`Global-Tech noted one who is willfully blind “can almost be said to have actually
`
`known” the facts.)
`
` While SNRG is confident that it has sufficiently pled and can prove all elements
`
`of its counterclaim of fraud and in particular, the element of deceptive intent, it has
`
`further pleaded fraud in the alternative on the basis of Opposer’s reckless disregard for
`
`the truth, and further in the alternative on the basis of willful blindness. In particular, if
`
`intent to deceive is not found, SNRG pleads that Opposer’s registrations should be
`
`
`
`
`
`
` Page 16 of 26
`
`

`
`cancelled on the basis that its conduct in misrepresenting its exclusive rights in the
`
`“facebook” term constitutes reckless disregard for the truth and/or willful blindness.
`
`SNRG has alleged numerous facts that demonstrate that Opposer itself, its
`
`founder, and other third parties considered the “facebook” term to be a generic term for
`
`the types of services Opposer provided under the term. The evidence of such generic
`
`usage of the term is so pervasive that even if it did not have a subjective intent to deceive
`
`the USPTO in claiming exclusive rights in the term, it must have acted with reckless
`
`disregard and/or willful blindness as to the truth. Therefore, SNRG respectfully requests
`
`that the Board deny Opposer’s Motion to the extent that it seeks to dismiss SNRG
`
`counterclaim of fraud on the basis of reckless disregard for the truth and willful
`
`blindness.
`
`C.
`
`SNRG’s Allegations Supporting Genericness Are More Than
`Sufficient.
`
`1.
`
`The types of evidence of genericness alleged by SNRG are
`“strong” and “powerful” according to Opposer.
`
`Even without showing intent to deceive, the registrations at issue should be
`
`cancelled based on genericness alone. The following types of evidence may be used to
`
`prove genericness: generic use by the proponent of the trademark, uncontested generic
`
`use by competitors, dictionary definitions, media usage, testimony of persons in the trade,
`
`and consumer surveys. See McCarthy § 12:13; see also In re Merrill Lynch, Pierce,
`
`Fenner, and Smith, Inc., 828 F.2d 1567, 1570 (Fed. Cir. 1987). SNRG has alleged
`
`numerous facts showing that the “facebook” term was and is generic, including many
`
`facts that the Board has held to be more than sufficient to cancel registrations based on
`
`genericness in past decisions. In particular, SNRG pleads the following facts showing
`
`that the “facebook” term was and is generic:
`
`
`
`
`
`
` Page 17 of 26
`
`

`
`• Existence of past and current dictionary entries supporting generic usage
`of “facebook” term in connection with types of online services provided
`by Opposer in connection with term (Am. Counterclaims ¶¶ 18-19);
`• Opposer’s own generic usage of “facebook” term in its specimen
`submitted to USPTO (Am. Counterclaims ¶¶ 28-3