Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA1026946
`01/06/2020
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`ESTTA Tracking number:
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`Filing date:
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding
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`91251839
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`Party
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`Correspondence
`Address
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`Submission
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`Filer's Name
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`Filer's email
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`Signature
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`Date
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`Attachments
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`Plaintiff
`Tolmar Therapeutics, Inc.
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`MIRIAM D. TRUDELL
`SHERIDAN ROSS P.C.
`1560 BROADWAY, SUITE 1200
`DENVER, CO 80202
`UNITED STATES
`mtrudell@sheridanross.com
`3038639700
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`Motion to Dismiss - Rule 12(b)
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`Caroline E. Bryce
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`mtrudell@sheridanross.com, sbialecki@sheridanross.com,
`cbryce@sheridanross.com
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`/Caroline E. Bryce/
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`01/06/2020
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`Opposer Motion to Dismiss.pdf(257413 bytes )
`Exhibit A - Eligard File Wrapper.pdf(2284733 bytes )
`Exhibit B - Atrigel File Wrapper.pdf(2414019 bytes )
`Exhibit C - Form 10K.pdf(2268511 bytes )
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`In the Matter of Trademark Application Serial No. 88/048,084
`Filed on July 23, 2018
`For the mark "ELEGARD"
`Published in the Official Gazette on July 2, 2019
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`Tolmar Therapeutics, Inc.
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`Opposer,
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`Minnesota Resuscitation Solutions, LLC,
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`Applicant.
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`________________________________________________)
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`Opposition No. 91251839
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`OPPOSER’S RULE 12(b)(6) MOTION TO DISMISS APPLICANT’S
`COUNTERCLAIMS
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`Pursuant to Fed. R. Civ. P. 12(b)(6) and TBMP Section 503, et seq., Opposer Tolmar
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`Therapeutics, Inc. (“Opposer”) respectfully moves the Board to dismiss all of Applicant Minnesota
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`Resuscitation Solutions, LLC’s (“Applicant”) counterclaims as set forth in its December 2, 2019,
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`Answer, Affirmative Defenses and Counterclaims (“Counterclaims”) for failing to state a claim
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`for which relief may be granted. In an attempt to level the playing field in the Opposition against
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`Applicant’s ELEGARD application, Applicant has brought meritless counterclaims against
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`Applicant’s ELIGARD trademark registration based on events involving Opposer’s predecessor-
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`in-interest over a decade ago. Applicant’s Counts I and II fail to establish a basis for fraud by
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`Opposer’s predecessor-in-interest and Count III does not set forth how the requested restriction
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`under 15 U.S.C. § 1068 avoids a likelihood of confusion between the parties’ marks. All of
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`Applicant’s Counterclaims fail and should be dismissed in their entirety with prejudice.
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`As the Board’s determination of Opposer’s Motion will affect the scope of discovery in
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`this proceeding, Opposer further moves that this proceeding be suspended pending consideration
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`of its Motion to Dismiss and that, after the Board decides the Motion, the deadlines for the initial
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`discovery conference, discovery, and trial be reset.
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`I.
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`BACKGROUND1
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`Opposer sells an injectable, hormone-releasing product called ELIGARD, which is used to
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`treat prostate cancer. (Counterclaims, ttabvue-91251839-OPP-4, ¶¶ 1-3.) As Applicant
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`acknowledges, the “ELIGARD product uses a special delivery system Opposer calls the ATRIGEL
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`delivery system to ensure the controlled release of the ELIGARD product in the body over time.”
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`(Counterclaims, ttabvue-91251839-OPP-4, ¶ 34.) Opposer owns U.S. trademark registrations for
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`both ELIGARD and ATRIGEL. (Counterclaims, ttabvue-91251839-OPP-4, ¶¶ 1 and 16.)
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`1 The following facts are taken from the allegations in the Counterclaims, the documents
`referenced therein, and U.S. Registration No. 2,645,629 for ELIGARD and its associated USPTO
`file wrapper, which is made part of the record of the proceeding under 37 C.F.R §2.122(b)(1) and
`attached as Exhibit A for convenience.
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`Further, while documents not attached to a complaint are ordinarily excluded from
`consideration on a motion to dismiss, the Board may consider documents referenced in the
`Counterclaims if their authenticity is not in dispute, they are central to Applicant’s claim, or they
`are sufficiently referred to in the Counterclaims. See Schaefer v. IndyMac Mortg. Servs., 731 F.3d
`98, 100 n.1 (1st Cir. 2013); see also Branch v. Tunnell, 14 F.3d 449, 454 (9th Cir. 1994)
`(“Documents whose contents are alleged in a complaint and whose authenticity no party questions,
`but which are not physically attached to the pleading, may be considered in ruling on a Rule
`12(b)(6) motion to dismiss). Consideration of such documents does “not convert a motion to
`dismiss into a motion for summary judgment.” Branch, 14 F.3d at 454 (quoting Romani v.
`Shearson Lehman Hutton, 929 F.2d 875, 879 n. 3 (1st Cir. 1991)). Here, the Board may consider
`the following documents which are referenced in Applicant’s Counterclaims, but not physically
`attached or only attached in part, and whose authenticity is unquestionable since all of the
`documents are government records: (1) the file wrapper of Registration No. 1,912,166 for
`ATRIGEL, referenced in paragraphs 20-23 and 34-35 of Applicant’s Counterclaims, and attached
`herein as Exhibit B; and (2) QLT Inc.’s FORM l0-K filed with the United States Securities and
`Exchange Commission, attached in part as Exhibit 5 of Applicant’s Counterclaims, and attached
`herein in full as Exhibit C.
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`2
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`Opposer’s U.S. Registration No. 2,645,629 for ELIGARD (the “Registration”) was filed
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`on October 30, 2001, and registered on November 5, 2002, for “pharmaceutical preparations for
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`the treatment of cancer; drug delivery systems for the treatment of cancer comprised of chemicals
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`to facilitate the internal delivery of pharmaceuticals in the body” in Class 5. (Counterclaims,
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`ttabvue-91251839-OPP-4, ¶ 16; Exhibit A, pages 1-2.) The application for Opposer’s Registration
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`was filed by Opposer’s predecessor-in-interest, Sanofi-Synthelabo, with a filing basis under
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`Section 44(e), based on French Registration No. 96604552. (Exhibit A, pages 90-93.) In 2008,
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`Sanofi-Aventis, f/k/a Sanofi-Synthelabo2, filed a Section 8 and 15 Declaration of Use for
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`“pharmaceutical preparations for the treatment of cancer,” and the goods of “drug delivery systems
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`for the treatment of cancer comprised of chemicals to facilitate the internal delivery of
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`pharmaceuticals in the body” were deleted from the Registration. (Exhibit A, pages 27-33.)
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`Opposer’s Registration was assigned to Opposer on May 7, 2014, as recorded at Reel/Frame No.
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`005301/0992. (Exhibit A, page 4.) Opposer’s U.S. Trademark Registration No. 1,912,166 for
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`“ATRIGEL” was filed on October 2, 1990, and registered on August 15, 1995. (Counterclaims,
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`ttabvue-91251839-OPP-4, ¶¶ 20 and 21.)3
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`In 2003, TAP Pharmaceutical Products, Inc., Takeda Chemical Industries Ltd., and Wako
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`Pure Chemical Industries, Ltd. filed a patent infringement suit against QLT USA, Inc.4 and Sanofi-
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`Synthelabo in the U.S. District Court for the Northern District of Illinois (“Patent Lawsuit”)
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`alleging infringement of U.S. Patent No. 4,728,721 (“the ‘721 Patent”). (Counterclaims, ttabvue-
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`91251839-OPP-4, ¶ 7 and page 33.) In February 2006, the Northern District of Illinois Court
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`issued an order in the Patent Lawsuit relating to the ‘721 Patent, which did not contain any findings
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`2 Name Change was recorded on February 15, 2005, at Reel/Frame No. 003037/0973. (Exhibit A, page 3.)
`3 Applicant’s Counterclaims mistakenly refer to ARTIGEL in some paragraphs.
`4 Opposer was f/k/a as QLT USA, Inc.
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`3
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`relating to any trademark usage by any party. (Counterclaims, ttabvue-91251839-OPP-4, pages
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`17-22.) The Patent Lawsuit was subsequently appealed by QLT USA, Inc. and Sanofi-Synthelabo
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`to the U.S. Court of Appeals for the Federal Circuit. (Counterclaims, ttabvue-91251839-OPP-4,
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`page 33.)
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`In February of 2007, QLT USA, Inc. and Sanofi-Synthelabo entered into a “Settlement,
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`Release and Patent License” to resolve the dispute regarding the ‘721 Patent and settle the Patent
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`Lawsuit and the related Federal Circuit Appeal. (Counterclaims, ttabvue-91251839-OPP-4, page
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`33.) Under the terms of the Settlement, Release and Patent License, QLT USA, Inc. and Sanofi-
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`Synthelabo were released of all claims in the Patent Lawsuit. (Id.) Additionally, a license to make,
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`use and sell ELIGARD products in the United States under all past and future patents was granted.
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`(Id.) The Patent Lawsuit and related Federal Circuit Appeal were dismissed in February of 2007.
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`(Id.)
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`Applicant filed U.S. Trademark Application No. 88/048,084 for “ELEGARD” on July 23,
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`2018, on the basis of intent to use for “medical device, namely, a patient placement system
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`comprising a base with circumferential handles, lower back and thoracic plates, adjustable head
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`and neck support, control panel, back plate holder, back plate release knob, battery and carrying
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`case, for administering cardiopulmonary resuscitation.” Opposer filed Opposition No. 91251839
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`on October 23, 2019, against U.S. Trademark Application No. 88/048,084 for “ELEGARD,” on
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`the grounds of priority and likelihood of confusion under Trademark Act Section 2(d).
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`Applicant filed its Answer and Counterclaims in Opposition No. 91251839 on December
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`2, 2019.5 Applicant’s Counterclaims include three counts: (I) Cancellation of Opposer’s
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`5 The Board set Opposer’s deadline to answer the Counterclaims to January 4, 2020. As January
`4, 2020, is a Saturday, Opposer’s deadline to answer the Counterclaims is January 6, 2020.
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`4
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`Registration based on fraud/unlawful use in commerce; (II) Cancellation of Opposer’s Registration
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`based on fraud/lack of bona fide intent to use; and (III) Partial cancellation/restriction of Opposer’s
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`Registration. Count I pertains to Opposer’s predecessor-in-interest’s Section 15 filing in 2008.
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`Count II focuses on Opposer’s predecessor-in-interest’s intent to use ELIGARD on the “drug
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`delivery systems for the treatment of cancer comprised of chemicals to facilitate the internal
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`delivery of pharmaceuticals in the body” goods listed in its 2001 U.S. trademark application filed
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`under Section 44(e). Count III proposes to narrow Opposer’s existing goods description in the
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`Registration to what Applicant believes is Opposer’s current use. As explained below, in support
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`of its meritless Counterclaims, Applicant has cherrypicked portions of public records and conflated
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`a judge’s findings about patent infringement (which were appealed) with the requirements of
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`trademark law, ignored the evidence of actual use of the ELIGARD mark and amendments made
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`prior to this proceeding, and sought to restrict Opposer’s Registration with no bearing on likelihood
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`of confusion. All of Applicant’s Counterclaims fail and should be dismissed in their entirety with
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`prejudice.
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`II.
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`RULE 12(b)(6) STANDARD
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`The purpose of Rule 12(b)(6) “is to allow the court to eliminate actions that are fatally
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`flawed in their legal premises and destined to fail, and thus to spare litigants the burdens of
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`unnecessary pretrial and trial activity.” Advanced Cardiovascular Sys., Inc. v. SciMed Life Sys.,
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`Inc., 988 F.2d 1157, 1160, 26 USPQ2d 1038, 1041 (Fed. Cir. 1993). In assessing a motion to
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`dismiss, the Board must accept as true all of the Applicant’s well-pleaded allegations and construe
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`the complaint in the light most favorable to the Applicant. Id. Thus, to the extent that factual
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`questions are raised and are material to the result, dismissal is improper unless there is no
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`reasonable view of the facts which could support the claim. Id.
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`5
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`To survive a motion to dismiss, a petition for cancellation must allege sufficient factual
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`content that, if proved, would allow the Board to conclude, or to draw a reasonable inference, that
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`a valid ground exists for cancelling the registration of Opposer. See Doyle v. Al Johnson's Swedish
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`Restaurant & Butik Inc., 101 USPQ2d 1780, 1782 (TTAB 2012) (citing Young v. AGB Corp., 152
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`F.3d 1377, 1380, 47 USPQ2d 1752, 1754 (Fed. Cir. 1998)). “While a complaint attacked by a
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`Rule 12(b)(6) motion to dismiss does not need detailed factual allegations… a plaintiff's obligation
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`to provide the ‘grounds’ of his ‘entitle[ment] to relief’ requires more than labels and conclusions,
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`and a formulaic recitation of the elements of a cause of action will not do.” Bell Atl. Corp. v.
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`Twombly, 550 U.S. 544, 555 (2007) (internal citations omitted). Additionally, in 2009, the
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`Supreme Court further clarified that in order to survive a motion to dismiss, one must allege a
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`claim that is “plausible,” not just “possible” under the prevailing rules of law. See Ashcroft v. Iqbal,
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`556 U.S. 662, 678 (2009). Here, Applicant’s Counterclaims fall short of this standard.
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`III. APPLICANT HAS FAILED TO STATE A CLAIM OF FRAUD WITH REGARD
`TO ITS FIRST AND SECOND COUNTERCLAIMS
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` Under In re Bose Corp., 580 F.3d 1240, 1245, 91 USPQ2d 1938, 1941 (Fed. Cir. 2009), a
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`showing of the following four elements is required to prove fraud:
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`(1) applicant/registrant made a false representation to the USPTO;
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`(2) the false representation is material to the registrability of a mark;
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`(3) applicant/registrant had knowledge of the falsity of the representation; and
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`(4) applicant/registrant made the representation with intent to deceive the USPTO.
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`Fraud in the procurement of a trademark registration must be alleged with particularity. Fed. R.
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`Civ. P. 9(b). Indeed, a pleading must contain an explicit rather than an implied allegation of the
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`factual circumstances alleged to constitute fraud. See King Automotive, Inc. v. Speedy Muffler
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`King, Inc., 667 F.2d 1008, 1010, 212 USPQ 801, 803 (CCPA 1981). Under Fed. R. Civ. P. 9(b),
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`6
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`the pleader must state the time, place, and content of the false representation, the fact
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`misrepresented and what was obtained as a consequence. See W. R. Grace & Co. v. Arizona Feeds,
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`195 USPQ 670, 672 (Comm'r Pat. & Trademarks 1977). “Pleadings of fraud made on information
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`and belief, when there is no allegation of specific facts upon which the belief is reasonably based
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`are insufficient.” Asian and Western Classics B.V. v. Selkow, 92 USPQ2d 1478, 1479 (TTAB
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`2009) (citing Exergen Corp. v. Wal-Mart Stores Inc., 575 F.3d 1312, 1331, 91 USPQ2d 1656,
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`1670 (Fed. Cir. 2009) (internal quotations omitted). A party seeking cancellation of a trademark
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`registration for fraudulent procurement bears a heavy burden of proof. See W.D. Byron & Sons,
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`Inc. v. Stein Bros. Mfg. Co., 377 F.2d 1001, 1003, 153 USPQ2d 749, 750 (CCPA 1967). “[T]he
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`charge of fraud requires that it be proven ‘to the hilt’ with clear and convincing evidence. There is
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`no room for speculation, inference or surmise and, obviously, any doubt must be resolved against
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`the charging party.” Smith Int'l, Inc. v. Olin Corp., 209 USPQ 1033, 1044 (TTAB 1981).
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`Further, “deception must be willful to constitute fraud.” In re Bose Corp., 91 USPQ2d at
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`1940 (emphasis added). Thus, a trademark registration is obtained fraudulently “only if the
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`applicant or registrant knowingly makes a false, material representation with the intent to deceive
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`the PTO.” Id. at 1941 (emphasis added). It must be determined whether an applicant's false
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`statements represent a “conscious effort to obtain for his business a registration to which he knew
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`it was not entitled.” Id. at 1942 (quoting Metro Traffic Control, Inc. v. Shadow Network Inc., 104
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`F.3d 336, 341, 41 USPQ2d 1369, 1373 (Fed. Cir. 1997)). “Unless the challenger can point to
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`evidence to support an inference of deceptive intent, it has failed to satisfy the clear and convincing
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`evidence standard required to establish a fraud claim.” In re Bose Corp., at 1942. Here, in its First
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`and Second Counterclaims, Applicant has not pleaded and cannot plead Opposer made knowingly,
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`false, material representations with an intent to deceive.
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`7
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`A. Applicant’s First Counterclaim does not support that Opposer made a statement
`that was false, material, or made with intent to deceive.
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`Applicant’s First Counterclaim is fatally flawed and destined to fail for the following
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`reasons.
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`1. Opposer’s claim of five years of continuous lawful use in commerce in the
`Section 15 Declaration was not false
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`Applicant’s Count I for fraud cannot succeed as Applicant cannot prove the first element
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`under fraud, namely, that Opposer made a false representation. A claim for fraud cannot succeed
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`if Applicant cannot prove the first element under fraud, namely, that a false representation was
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`made to the USPTO. See In re Bose Corp., at 1941; see also Tri-Star Mktg. LLC v. Nino Franco
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`Spumanti S.R.L., 84 USPQ2d 1912, 1916 (TTAB 2007) (fraud claim failed because petition could
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`not “prove an essential element of the ground of fraud, namely that the statement is not true”).
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`In Count I, Applicant alleges that Opposer committed fraud when it submitted its Section
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`15 Declaration. (Counterclaims, ttabvue-91251839-OPP-4, ¶¶ 1-15.) In support of its Count,
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`Applicant summarily concludes that the Section 15 Declaration contained a false representation
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`regarding five years of continuous lawful use in commerce. Applicant arrives at this conclusion
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`by including findings by the District Court judge in the Patent Lawsuit of patent infringement and
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`surmising that the ELIGARD mark was unlawfully used during the period of alleged patent
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`infringement from 2002 to 2006. (Id. at ¶ 13.) However, Applicant has not identified any finding
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`by any Court addressing any trademark rights for ELIGARD. Rather, it conflates an appealed
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`patent ruling with trademark law. While Applicant presents a creative argument, Courts have
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`noted that “use” under trademark law carries an entirely different meaning than for patent
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`purposes. See LA Gear Inc v ES Originals Inc., 859 F. Supp. 1294, 1299, 32 USPQ2d 1613, 1617
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`(C.D. Cal. 1994) (citing In re Mogen David Wine Corp., 328 F.2d 925, 930, 140 USPQ 575, 579
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`(CCPA 1964) (holding that trademark rights ‘exist independently of [patent rights], under different
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`law and for different reasons)). Applicant’s arguments for unlawful use are simply not supported
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`by law, as there was no adjudication with respect to Opposer’s predecessor-in-interest’s use of the
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`trademark ELIGARD.
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`Furthermore, at the time the statement of continuous use was made in 2008, Opposer’s
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`predecessor-in-interest in fact had five years of continuous lawful use in commerce because
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`Opposer’s predecessor-in-interest had been fully released from any claims of patent infringement,
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`and was fully licensed to all past and present patents pertaining to the Patent Lawsuit.
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`(Counterclaims, ttabvue-91251839-OPP-4, page 33.) As no unlawful use occurred, Applicant has
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`failed to plead a false representation was made to the USPTO, a requisite element for fraud. Count
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`I should be dismissed.
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`2. Opposer's claim of five years of continuous lawful use in commerce in the
`Section 15 Declaration was not material to the maintenance of the Registration
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`Applicant’s Count I for fraud cannot succeed, as Applicant also cannot prove the second
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`element under fraud, namely, that the false representation was material to the registrability of a
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`mark. Opposer remains adamant that its claim of five years of continuous lawful use in commerce
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`in the Section 15 Declaration was not false. However, even if Opposer’s claim of five years of
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`continuous lawful use in commerce in the Section 15 Declaration was false, this statement was not
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`material to the USPTO’s position to maintain the Registration. TMEP Section 1605 states that:
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`Section 15 of the Trademark Act, 15 U.S.C. Section 1065, provides a procedure by which
`the exclusive right to use a registered mark in commerce on or in connection with the goods
`or services covered by the registration can become ‘incontestable,’ if the owner of the
`registration files an affidavit or declaration stating that the mark has been in continuous use
`in commerce for a period of five years after the date of registration. . . . Filing an affidavit
`or declaration of incontestability under Section 15 of the Trademark Act . . . is optional.
`An eligible registrant may choose to claim the benefits of incontestability and file an
`appropriate affidavit or declaration, or may elect to retain the registration without those
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`benefits. The requirements for maintaining and renewing a federal registration are not
`affected [by the filing of a Section 15 Declaration].
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`TMEP § 1605 (2018) (emphasis added). Furthermore, TMEP Section 1605 states that:
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`[t]he USPTO does not ‘accept’ §15 affidavits or declarations. . . . Rather, the USPTO
`reviews the affidavit or declaration to determine whether it is consistent with the
`requirements of the statute and rules (e.g., whether it is signed, whether it was filed at an
`appropriate time, and whether the §15 claims are properly set forth). When a §15 affidavit
`or declaration complies with the requirements of the statute and rules, the USPTO updates
`its records to acknowledge receipt of the affidavit or declaration and sends a notice of
`acknowledgment to the owner of the registration. 37 C.F.R. §2.167(i). Acknowledging
`receipt of the affidavit or declaration provides notice to the public that an affidavit or
`declaration of incontestability has been filed; it is not a determination by the USPTO that
`the registration is in fact incontestable. The question of whether the registration is
`incontestable arises and is determined by a court if there is a proceeding involving the
`mark.
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`Id.
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`The TMEP Rules are extremely clear with respect to Section 15 Declarations. Section 15
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`Declarations are optional, the USPTO does not “accept” them, they are not a determination by the
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`USPTO of anything, and the requirements for maintaining and renewing a federal registration are
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`not affected by a Section 15 Declaration. Therefore, the USPTO was not deceived into maintaining
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`the Registration based upon the Section 15 Declaration, as “the requirements for maintaining and
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`renewing a federal registration are not affected” by filing or not filing the Section 15 Declaration.
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`Id.
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` In fact, the Board has stated that “the provisions of Section 15 of the Act, 15 U.S.C. §
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`1065, which address the incontestability of right to use rather than register, are essentially
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`irrelevant in a Board proceeding.” Caymus Vineyards v. Caymus Medical, Inc., 107 USPQ2d 1519,
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`1525 n.8 (TTAB 2013). McCarthy has also commented that:
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`[F]raud in a Section 15 incontestability affidavit or declaration should only serve to
`eliminate the incontestable status of the registration and not result in cancellation of the
`registration itself. If a “defect” is proven, the registration itself is not destroyed. The
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`different language of Section 14(3) and Section 33(b)(1) dictates this result. While Section
`8 and renewals go to the continuance of the registration itself, Section 15 does not.
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`§ 31:81 McCarthy on Trademarks and Unfair Competition, Fifth Edition (November 2019).
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`Likewise, the U.S. Supreme Court in the 1985 Park 'N Fly case, citing Rep. Lanham's comments,
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`stated that:
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`Representative Lanham made his remarks to clarify that the seven defenses enumerated in
`§ 33(b) are not substantive rules of law which go to the validity or enforceability of an
`incontestable mark. 92 Cong.Rec. 7524 (1946). Instead, the defenses affect the evidentiary
`status of registration where the owner claims the benefit of a mark's incontestable status.
`If one of these defenses is established, registration constitutes only prima facie and not
`conclusive evidence of the owner's right to exclusive use of the mark.
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`Park 'N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 220, USPQ 327, 340 n.6 (1985)
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`(emphasis added). Because a Section 15 declaration is not “material” to the registration of a
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`trademark, even if Opposer’s claim of five years of lawful use of the ELIGARD mark was false,
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`it was not material to Opposer’s Registration and cannot serve as a basis for a claim of fraud.
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`3. There is no reasonable inference of deceptive intent with regard to the Section
`15 Declaration
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`Finally, Applicant’s Count I for fraud cannot succeed, as Applicant also cannot prove the
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`final element under fraud, namely, that the false representation was knowingly made with intent
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`to deceive. As noted supra, Applicant must plead that Opposer knowingly made a false, material
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`representation with the intent to deceive the USPTO in order to support a claim of fraud. See In
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`re Bose Corp., 91 USPQ2d at 1941. The deception must be willful; “fraud will not lie if it can be
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`proven that the statement, though false, was made with a reasonable and honest belief that it was
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`true.” Smith Int'l, 209 USPQ at 1043. “In determining whether a statement is fraudulent, courts
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`must focus on the “declarant's subjective, honestly held, good faith belief.” In re Bose Corp., 91
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`USPQ2d at 1940 (quoting San Juan Prods., Inc. v. San Juan Pools of Kan., Inc., 849 F.2d
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`468, 472, 7 USPQ2d 1230, 1233 (10th Cir. 1988)). To draw an inference of intent, “the involved
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`11
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`conduct, viewed in light of all the evidence . . . must indicate sufficient culpability to require a
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`finding of intent to deceive.” Kingsdown Med. Consultants, Ltd. v. Hollister Inc., 863 F.2d
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`867, 876, 9 USPQ2d 1384, 1392 (Fed. Cir. 1988). There is no fraud if a false misrepresentation
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`is occasioned by an honest misunderstanding or inadvertence without a willful intent to
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`deceive. See Smith Int'l, 209 USPQ at 1043.
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`Even if Opposer’s claim of five years of lawful use in commerce is ultimately found to be
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`“false” based on the appealed decision in the Patent Lawsuit, Applicant cannot allege and/or prove
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`the requisite intent to deceive. As Applicant’s pleading reveals, at the time of filing of the Section
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`15 Declaration, Opposer had been absolved of the claims of patent infringement and there had
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`been no cited findings of illicit trademark use by any Court or the Board. (Counterclaims, ttabvue-
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`91251839-OPP-4, page 33.) Indeed, Applicant cherrypicked the parts of the Patent Lawsuit that
`
`suited its needs while ignoring the subsequent appeal and dismissal of the District Court decision,
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`settlement between the parties in which the claims of patent infringement were released, and lack
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`of admission of wrongdoing by Opposer. (Id.) Simply stated, Applicant has not and cannot plead
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`the requisite intent to deceive the USPTO when Applicant’s position is not grounded in fact or
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`caselaw. There can be no fraud when the facts reveal at best, an honest misunderstanding by
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`Opposer as to its absolution in the Patent Lawsuit. For the foregoing reasons, Count I should be
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`dismissed.
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`B. Applicant’s Second Counterclaim does not support that Opposer made a
`statement that was false or made with intent to deceive.
`
`
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`Applicant’s Second Counterclaim is also fatally flawed in its legal premises and destined
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`to fail for the following reasons.
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`1. Opposer’s claim of bona fide intent to use in the ELIGARD trademark
`application was not false
`
`
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`Applicant’s Count II should be dismissed because Applicant has failed to plausibly plead
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`that there was no bona fide intent to use the mark ELIGARD on drug delivery systems at the time
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`of filing the ELIGARD trademark application. Applicant argues that Opposer’s use in connection
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`with such “delivery systems” was limited to Opposer’s ATRIGEL product. (Counterclaims,
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`ttabvue-91251839-OPP-4, ¶¶ 16-26.). However, Applicant conveniently omits several references
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`from its own pleading that clearly demonstrate that ATRIGEL is a component of the ELIGARD
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`product. Applicant knows this as it admits that ATRIGEL is a “drug delivery system” and “[t]he
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`ARTIGEL (sic) drug delivery system is used in conjunction with the ELIGARD product to ensure
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`the controlled release of the ELIGARD product in the body over time.” (Counterclaims, ttabvue-
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`91251839-OPP-4, ¶ 22) (emphasis added.) Applicant ignored the specimen of use filed for the
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`ATRIGEL mark which shows the ATRIGEL delivery system is included in the ELIGARD
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`packaging as one of two syringes “designed to deliver 45 mg leuprolide acetate with 330 mg
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`ATRIGEL delivery system.” (Exhibit B, page 10-12.) Applicant likewise omitted the pages of
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`Opposer’s SEC filing which clearly state that “[t]he Eligard product includes four different
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`commercial formulations of our Atrigel technology combined with leuprolide acetate for the
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`treatment of prostate cancer.” (Exhibit C, page 6; see also Exhibit C, pages 12, 15, 16, and 21.)
`
`Applicant relies on a District Court opinion to bolster its position regarding unlawful use in
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`commerce, but ignores the same opinion when the District Court acknowledges three times that
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`the Opposer’s ELIGARD product is a drug delivery system: (1) “Eligard, a drug delivery device
`
`that competes with Lupron Depot, Plaintiffs’ product” (Counterclaims, ttabvue-91251839-OPP-4,
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`page 17) (emphasis added); (2) “Though Eligard is a relative newcomer, it has been on the market
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`for over three years yet has only achieved an insignificant market share in comparison to Lupron
`
`Depot. The purchasers of both products are Board Certified urologists well able to judge the
`
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`superiority of one drug delivery system over another” (Counterclaims, ttabvue-91251839-OPP-4,
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`page 18) (emphasis added); and (3) “There is also credible clinical evidence that a change of
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`delivery systems is not medically significant.” (Counterclaims, ttabvue-91251839-OPP-4, page
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`20) (emphasis added). Applicant’s own evidence shows use of the ELIGARD mark on “delivery
`
`systems” and as such, demonstrates a bona fide intent to use the mark for these goods by Opposer.
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`Count II should be dismissed.6
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`2. There is no reasonable inference of deceptive intent with regard to the bona
`fide intent to use requiring the cancellation of Opposer’s Registration
`
`Finally, Applicant’s Count II for fraud cannot succeed, as Applicant cannot prove the final
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`element under fraud, namely, that the false representation was knowingly made with intent to
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`deceive. Opposer does not concede that its predecessor-in-interest lacked a bona fide intent to use
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`its ELIGARD mark on all listed goods in its October 30, 2001, U.S. trademark application.
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`However, even if Applicant could establish that Opposer’s predecessor-in-interest did not use or
`
`have an intent to use ELIGARD on “delivery systems,” it cannot establish an intent to deceive the
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`USPTO. Where the registrant corrects the description of goods in a Section 8 affidavit prior to
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`any actual or threatened challenge to the registration, there is a presumption of no intent to deceive.
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`See Zanella Ltd. v. Nordstrom, Inc., 90 USPQ2d 1758, 1761-62 (TTAB 2009); see also University
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`Games Corp. v. 20Q.net Inc., 87 USPQ2d 1465, 1468 (TTAB 2008) (amendment during ex parte
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`prosecution constitutes a rebuttable presumption of no willful intent to deceive). In August of
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`2008, Opposer’s predecessor-in-interest deleted “drug delivery systems for the treatment of cancer
`
`
`
`6 Applicant’s Count II is also fatally flawed because Applicant pleaded Paragraphs 24-26 “upon
`information and belief” with no allegations of specific facts upon which the belief is based. See
`Asian and Western Classics B.V. v. Selkow, 92 USPQ2d at 1479 (“Pleadings of fraud made on
`information and belief, when there is no allegation of specific facts upon which the belief is
`reasonably based are insufficient.”); Exergen Corp. v. Wal-Mart Stores Inc., 91 USPQ2d at 1670.
`
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`comprised of chemicals to facilitate the internal delivery of pharmaceuticals in the body” from the
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`goods for the Registration. (Exhibit A, pages 27-33.) There was no intent to deceive.
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`Moreover, to allow Applicant’s Count II to survive would violate public policy. Applicant
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`has not contested Opposer’s continued use of ELIGARD in connection with the goods now
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`covered by the Registration-- “pharmaceutical preparations for the treatment of cancer.” For when
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`a trademark is still in use, “nothing is to be gained from and no public purpose is served by
`
`cancelling the registration of the trademark.” In re Bose Corp., 91 USPQ2d at 1942 (quoting
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`Morehouse Mfg. Corp. v. J. Strickland & Co., 407 F.2d 881, 888, 160 USPQ 715, 720 (CCP