Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA1154799
`
`Filing date:
`
`08/23/2021
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91269705
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Defendant
`NEO4J, INC.
`
`MITESH PATEL
`HOPKINS & CARLEY
`70 SO. FIRST ST.,
`THE LETITIA BLDG.
`SAN JOSE, CA 95113
`UNITED STATES
`Primary Email: trademark@hopkinscarley.com
`Secondary Email(s): mpatel@hopkinscarley.com, ctseng@hopkinscarley.com
`408-286-9800
`
`Motion to Dismiss - Rule 12(b)
`
`Mitesh Patel
`
`mpatel@hopkinscarley.com, trademark@hopkinscarley.com, ct-
`seng@hopkinscarley.com
`
`/mp/
`
`08/23/2021
`
`FILE
`HC_DOCS-3786375-v11-_Neo4j_TTAB__-_MSJ_and_Motion_to_Dismiss.pdf
`(388409 bytes )
`FILE
`HC_DOCS-3799717-v4-_Neo4j_TTAB__-_Patel_Decl_iso_MTD_and_MSJ.pdf
`(146205 bytes )
`Exhibit 1 - Registration Certificate 86267006.pdf(176452 bytes )
`Exhibit 2 - Rathle Declaration iso of Neo4j MSJ.pdf(413906 bytes )
`Exhibit 3 - 2019 11 25 Second Amended Complaint Doc 50.pdf(5158163 bytes )
`Exhibit 4 - 2020 09 28 Third Amended Complaint Doc 90.pdf(1534149 bytes )
`Exhibit 5 - 2019 12 09 Defendants Answer to SAC Doc 54.pdf(227935 bytes )
`Exhibit 6 - 2019 12 09 PureThink iGov First Amended CC Doc 55.pdf(1448808
`bytes )
`Exhibit 7 - 2020 02 11 Neo4j Motion for Judgment on the Pleadings doc
`60.pdf(328485 bytes )
`Exhibit 8 - 2020 05 21 Order Granting Motion for Judgment on the Plea dings
`doc 70.pdf(259408 bytes )
`Exhibit 9 - 2020 06 05 Defendants First Amended Answer to SAC.pdf(237634
`bytes )
`Exhibit 10 - 2020 06 19 Neo4j Motion to Dismiss and Strike doc 73.pdf (323458
`bytes )
`Exhibit 11 - 2020 07 06 Opposition to Neo4j Motion to Dismiss doc 78.
`pdf(208446 bytes )
`Exhibit 12 - 2020 08 20 Order Granting Neo4js Motions to Dismiss and Strike
`doc 85.pdf(1236542 bytes )
`Exhibit 13 - 2020 10 19 Defendants Answer to TAC doc 91.pdf(239083 bytes )
`Exhibit 14 - 2021 03 03 ORDER Granting Motion to Strike Doc 110.pdf(181799
`bytes )
`Exhibit 15 - 2021 01 15 Defendants Consolidated Oppo to MSJ doc 100.p
`df(2541742 bytes )
`Exhibit 16 - 2021 05 18 ORDER Granting Plaintiffs MSJ and Denying Def end-
`
`

`

`ants Cross-MSJ doc 118.pdf(440956 bytes )
`Exhibit 17 - Chart of TM Opp and SACC Allegations.pdf(187749 bytes )
`Exhibit 18 - AGPL - part of Exhibit C to Opposition.pdf(251860 bytes )
`Exhibit 19 - Neo4j Sweden GPL License.pdf(218291 bytes )
`Exhibit 20 - 2021 04 13 Archive of Neo4j Certified Professional Page.
`pdf(408185 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Application Serial No. 90/056,224
`For the mark: NEO4J
`Published: December 8, 2020
`
`
`iGov Inc.
`
`
`v.
`
`Neo4j, Inc.
`
`
`Opposer,
`
`Applicant.
`
`
`Opposition No.: 91269705
`
`APPLICANT’S MOTION TO DISMISS AND FOR SUMMARY JUDGMENT
`
`I.
`
`INTRODUCTION
`
`The Opposition filed by iGov Inc. and its principal John Mark Suhy (collectively “iGov” or “Opposer”)
`
`is the latest chapter in a three-year legal dispute with Neo4j, Inc. (“Neo4j USA” or “Applicant”). While Opposer
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`discloses the existence of trademark infringement action Applicant filed against Opposer in the Northern
`
`District of California, it failed to disclose that the District Court previously rejected identical allegations of
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`fraud on the PTO and purported abandonment of the Neo4j Mark via naked licensing that are asserted in the
`
`present Opposition. As evidenced by the same typographical and grammatical errors in those prior pleadings,
`
`Opposer’s cut-and-paste opposition to the Neo4j Mark as set forth in the Application (U.S. Application Serial
`
`No. 90/056,224, as defined herein), is barred by the doctrine of issue preclusion. Thus, warranting summary
`
`judgment in favor of Applicant.
`
`Even if summary judgment were not appropriate, Opposer’s fraud theory based on allegations that the
`
`first use dates stated in the present application for the Neo4j Mark are inaccurate is fatally defective. Federal
`
`Circuit and TTAB precedent makes clear that first use dates cannot constitute a material misrepresentation so
`
`long as such dates precede the application date. Such is the case here, and as a result, iGov’s opposition to the
`
`current registration for the Neo4j mark fails as a matter of law.
`
`Opposer’s recycled allegations that Neo4j USA abandoned the NEO4j mark via naked licensing by (1)
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`creating “confusion” by using it as both a company and a trademark for software products; and (2) distributing
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`source code underlying Neo4j Software via the AGPL and GPL copyright licenses also fail as a matter of law.
`
`Neither of these grounds meet the Lanham Act’s definition of abandonment under 15 U.S.C. § 1127. Aside
`
`from the absence of allegations establishing that the Neo4j Mark has lost significance, the first theory runs
`
`contrary to established case law that holds that it is permissible to use a mark as both a trade name and
`
`trademark. The second theory fails as a matter of law because the AGPL and GPL are not trademark licenses,
`
`and thus third party modification of the licensed source code and an alleged lack of quality control over such
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`modified software cannot form the basis of a naked licensing claim. In any event, two other federal courts that
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`have specifically addressed these licenses and held that they establish an intent to control trademark rights rather
`
`than an intent relinquishing them. Accordingly, the Board should dismiss the present Opposition (“Opp.”).
`
`II.
`
`FACTUAL AND PROCEDURAL BACKGROUND
`
`
`
`Neo4j Sweden, Neo4j USA and the Neo4j Mark
`
`In conjunction with its business, Applicant filed for and obtained several federally registered
`
`trademarks, including U.S. Trademark Registration No. 4,784,280 for the word mark “NEO4J” (the “Neo4j
`
`Mark”) covering the goods and services in International Classes, 009, 035, 041, 042 and 045 (the “Neo4j
`
`Registration”). See Declaration of Mitesh Patel (“Patel Decl.”), Ex. 1. Applicant is the parent corporation of
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`Neo4j Sweden AB (“Neo4j Sweden”), which in turn is a wholly owned subsidiary of Neo4j USA, and the two
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`are related companies under 15 U.S.C. § 1127. See Opp., Ex. C (hereinafter “SACC”) at ¶ 89; Patel Decl., Ex.
`
`2 at ¶¶ 3–4. Applicant specializes in graph database management systems and offers its graph database platform
`
`(the “Neo4j® Software”) and related goods and services in connection with the Neo4j Mark throughout the
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`world, including in the United States. Applicant has historically licensed the copyrights to its Neo4j® Software,
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`including the underlying source code, under open source copyright licenses and its own proprietary copyright
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`licenses, none of which grant rights to use the Neo4j Mark. Patel Decl., Ex. 2 at ¶¶ 4–15.
`
`
`
`Neo4j USA Files a Lanham Act Action Against iGov and its Founder Suhy
`
`On November 28, 2018, Applicant filed a Lanham Act action in the Northern District of California
`
`(“the Federal Case”) against PureThink and its successor-in-interest, Opposer, and their founder John Mark
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`Suhy (collectively “Defendants”). See Opp., Ex. A. Applicant’s claims were based on its rights in the Neo4j
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`Mark and Registration and, inter alia, Defendants’ unauthorized use of the same in the sale and advertising of
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`their graph database solutions and software and related support services.
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`
`
`Opposer Asserts Naked Licensing and Fraud Counterclaims and Affirmative Defenses
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`On November 25, 2019, Applicant filed a Second Amended Complaint (“SAC”). See Patel Decl., Ex.
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`3. In response, Opposer filed an answer asserting affirmative defenses for cancellation of Trademark Procured
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`by Fraud based on Applicant allegedly misrepresenting the dates of first use for the Neo4j Mark. See Patel
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`Decl., Ex. 5 at 18:20–19:3. Opposer also asserted an affirmative defense for abandonment of the Neo4j Mark
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`based on alleged “confusion whether that is a company name trademark or product name trademark” and “by
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`Neo4J Sweden’s open source license for the Neo4J software.” Id. at 19:12–25. Opposer further alleged
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`abandonment of the Neo4j Mark based on the open source licensing of source code for Neo4J Software. Id.
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`Opposer asserted these defenses as identical counterclaims. See id., Ex. 6 at ¶¶ 85–86, 88–92.
`
`
`
`The District Court Grants Applicant’s Motion for Judgment on the Pleadings
`
`1.
`
`The Court Dismisses Opposer’s Fraud Arguments With Prejudice
`
`Applicant moved for judgment on the pleadings on Opposer’s cancellation counterclaim and
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`affirmative defense alleging fraud on the PTO (“Fraud Arguments”). See Patel Decl., Ex. 7 at 8:17–10:8. These
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`arguments failed as a matter of law because an alleged misstatement of the date of first use in commerce of a
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`mark is not material to the registration. See id. at 10:11–11:24. Opposer conceded that its Fraud Arguments
`
`were not legally viable in its opposition, and as a result the District Court dismissed/struck Opposer’s Fraud
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`Arguments with prejudice. See Patel Decl., Ex. 8 at 8:4–18.
`
`2.
`
`The District Court Finds Opposer’s Naked Licensing Theory to be Non-Viable
`
`Applicant also moved for judgment on the pleadings on Opposer’s naked licensing theory based on
`
`allegations that Applicant had abandoned the Neo4j Registration and all rights in the Neo4j Mark by (1) creating
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`“confusion” by using it as both a company name and a product name; and (2) licensing the underlying source
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`code for Neo4j® Software via the open source GPL and AGPL copyright licenses. See Patel Decl., Ex. 7 at
`
`11:24–15:24. On May 21, 2020, the District Court granted Applicant’s motion, agreeing that Opposer’s naked
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`894\3786375.11
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`license theory failed as a matter of law. See id., Ex. 8 at 8:26–10:24.
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`The District Court held that Defendants’ naked license theory also failed as a matter of law because the
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`open source licensing of software via the GPL and AGPL constitutes an intent to control trademark rights, not
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`a relinquishment of rights. Patel Decl., Ex. 8 at 10:26–13:14. This was because “the absence of specific quality
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`control provisions—either in the GPL, AGPL, or in a separate trademark license—is not dispositive,” and in
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`fact, “the notice requirements in the GPL and AGPL evidence an effort to control the use of the mark.” Id. at
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`13:15–23. It further held that “the fact that Plaintiff distributed Neo4j software on an open source basis pursuant
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`to the GPL and AGPL is not, without more, sufficient to establish a naked license or demonstrate abandonment.”
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`Id. at 13:24–26. However, the Court granted leave to amend only “[t]o the extent that Defendants are able to
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`allege that Plaintiff failed to exercise actual control over licensees’ use of the trademark.” Id. at 13:27–14:2.
`
`
`
`The District Court Dismisses and Strikes Defendants’ Further Amended Naked License
`Counterclaim and Affirmative Defense With Prejudice
`
`Opposer filed their Second Amended Counterclaim and First Amended Answer re-alleging the same
`
`naked licensing defense based on the open source licensing of the Neo4j® Software source code. The core of
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`Opposer’s naked licensing counterclaim and defense remained that distribution of the source code for the
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`Neo4j® Software under the terms of the AGPL and GPL amounted to naked licensing of the Neo4j Mark.
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`Opposer extended that theory to Applicant’s predecessor-in-interest and current wholly-owned subsidiary and
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`related company, Neo4j Sweden. SACC, ¶¶ 85–97. Opposer further alleged that because third parties could
`
`modify the source code for Neo4j® Software under these licenses, Applicant’s failure to exercise any quality
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`control over the modified software amounted to the naked licensing of the Neo4j Mark. Id. at ¶¶ 89–95.
`
`Applicant filed a FRCP 12(b)(6) motion to dismiss and FRCP 12(f) motion to strike as these new
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`allegations were part of the same nucleus of facts as those in Opposer’s prior pleadings and failed to cure the
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`defects addressed by the District Court’s order. Patel Decl., Ex. 10. In response, Opposer simply reargued that
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`the terms of the GPL and AGPL failed to establish control over third party modified versions of Neo4J®
`
`Software as required to maintain the Neo4j Mark. Patel Decl., Ex. 11 at 5:13–17. And, because Neo4j Sweden
`
`did not allegedly control use of the mark with modified versions of the open source software, “[w]hen Neo4J
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`894\3786375.11
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`USA obtained rights to the Neo4J trademark years later, the Neo4J trademark was already abandoned by Neo4J
`
`Sweden’s lack of contractual and actual or adequate quality control for third party’s extensive use of the Neo4J
`
`trademark.” Id. at 5:1–6:3.
`
`On August 20, 2020, the District Court granted Applicant’s motion, again rejecting Opposer’s naked
`
`licensing claims based on inadequate quality control over third party modifications of open source versions of
`
`software utilizing the source code licensed under the GPL and the AGPL. Patel Decl., Ex. 12 at 7:18–10:17.
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`The District Court did so because “[t]he GPL and the AGPL are copyright licenses, not trademark licenses” and
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`that “[t]hird party developers who modify the open source version of the [Neo4j®] software pursuant to the
`
`GPL or AGPL do not have any right to use the [Neo4j Mark] absent a separate trademark license agreement”
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`Id. at 7:27–8:7. Further, because there was no allegation or evidence of Applicant licensing the Neo4j Mark to
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`these third parties, Opposer’s naked license theory simply did “not fit comfortably within the doctrine of naked
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`licensing.” Id. at 8:8–10:6. Likewise, because Opposer failed to allege any facts establishing that either
`
`Applicant or Neo4j Sweden actually licensed the Neo4j Mark, let alone failed to exercise any control under
`
`such license, Opposer failed to establish abandonment of the Neo4j Mark via naked licensing based on the open
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`source licensing of source code for the Neo4j Software. Id.
`
`The Court also addressed Opposer’s failed theory that the Neo4j Mark was abandoned due to its use by
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`Suhy/PureThink, Opposer’s predecessor-in-interest. Patel Decl., Ex. 12 at 10:18–11:21. The Court held that
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`the doctrine of licensee estoppel prevented Opposer from challenging the validity of the Neo4j Mark because
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`it relied upon facts that arose during the time that Opposer’s predecessor was licensed to use the Neo4j Mark
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`(and then later terminated). Id. at 11:12–21. Based on the foregoing, the Court dismissed Defendants’
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`Abandonment of Trademark counterclaim and struck their affirmative defense for Naked License
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`Abandonment of Trademark with prejudice. Id. at 12:2–3 (emphasis in original.)
`
`
`
`The District Court Further Affirms that Opposer’s Fraud Arguments and Naked
`Licensing Theories are Not Legally Viable
`
`On September 9, 2020, Applicant filed its Third Amended Complaint. Patel Decl., Ex. 4. A month
`
`later, Opposer filed its answer wherein it resuscitated the same fraud arguments it previously conceded to be
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`894\3786375.11
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`unmeritorious – that the stated dates of first use of the Neo4j Mark were false because Neo4j USA did not exist
`
`at that time. Patel Decl., Ex. 13 at 20:11–21:2. Opposer also improperly revived its naked licensing defense
`
`re-alleging that the open source licensing of source code underlying the Neo4j® Software constituted naked
`
`licensing of the Neo4j Mark because there were no quality control provisions under the GPL and AGPL and
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`licensees allegedly have the unfettered right to modify, use and distribute modified versions of Neo4j® graph
`
`database software. Id. at 21:11–22:9. Applicant moved to strike those defenses because they remained fatally
`
`defective as a matter of law.
`
`On March 3, 2021, the District Court issued an order granting Applicant’s motion, holding that the
`
`legal theories and facts underpinning those defenses were not new. Patel Decl., Ex. 14 at 4:22–6:4. As a result,
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`the District Court once again struck those defenses and made clear that Applicant was “not permitted to reassert
`
`any affirmative defense or counterclaim in this action based on the cancellation or abandonment theories
`
`asserted in the stricken defenses.” Id. at 6:2–4.
`
`
`
`The District Court Grants Summary Judgment in Favor of Applicant
`
`On December 11, 2020, Neo4j USA filed a partial motion for summary judgment on the liability
`
`element of its Lanham Act claims. In opposition to that motion, Defendants asserted the same arguments made
`
`in the present Opposition. that the Neo4j Mark was invalid because Applicant was not the true owner of that
`
`mark because Neo4j Sweden has only granted Applicant a non-exclusive license thereto. Patel Decl., Ex. 151
`
`at 11:11–14, 13:4–14:9; Opp., Ex. G at ¶¶ 2–5. Opposer also argued that Neo4j Sweden’s ownership of
`
`registrations for the Neo4j Mark outside the US purportedly evidenced that Applicant does not have the right
`
`to register the mark in the US. Opp., Ex. G at ¶ 7.
`
`On May 18, 2020, the District Court granted summary judgment in favor of Applicant. Patel Decl., Ex.
`
`16 at 14:3–18:1. Citing Federal Circuit precedent, the District Court recognized that the ownership of a mark
`
`between a parent and wholly owned subsidiary was unnecessary when deciding whether a registration of a mark
`
`
`1 Opposer attaches all of its papers filed in opposition to Applicant’s summary judgment motion as Exhibit B
`to the Opposition. Due to the voluminous and disorganized nature of Exhibit B, Applicant is providing this
`document as Exhibit 15 to the Patel Declaration for the Board’s convenience and ease of reference.
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`894\3786375.11
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`was valid. Id. at 15:20–17:4. The District Court relied upon the express language of TMEP section 1201.03(c)
`
`that “[e]ither a parent corporation or a subsidiary corporation may be the proper applicant, depending on the
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`facts concerning ownership of the mark” and that the PTO “will consider the filing of the application in the
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`name of either the parent or the subsidiary to be the expression of the intention of the parties as to ownership in
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`accord with the arrangements between them.” Id. at 17:5–13. Thus, the fact that Applicant had obtained a US
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`registration for the Neo4j Mark established that Neo4j Sweden considered Applicant to be the owner of the
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`mark in the US, which was also confirmed by the fact that Opposer understood Neo4j USA to be the owner
`
`when it entered in to a trademark license agreement with Applicant. Id. at 17:14–18. Citing TMEP section
`
`1201.01, the District Court further held that since it was undisputed that Applicant owns and controls Neo4j
`
`Sweden, the alleged non-exclusive license between those related companies was insufficient to establish that
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`Applicant was not the owner of the Neo4j Mark. Id. at 17:19–18:1.
`
`
`
`Neo4j USA’s Present Application for the Neo4j Mark and iGov’s Opposition Thereto
`
`On July 16, 2020, Applicant filed U.S. Serial No. 90056224 for the Neo4j Mark to encompass a more
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`detailed listing of goods and services in International Classes 009 and 042, than listed on the Neo4j Registration,
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`claiming use of the Neo4j Mark for those goods and services at least as early as 2014 on an in-use basis
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`(hereinafter “the Application”). The Application was published on December 8, 2020.
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`On January 7, 2021, the Board granted Opposer a 30-day extension of time to oppose the Application.
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`TTAB Dkt. 2. On February 1, 2021, Suhy, again on behalf of himself and iGov, requested an additional 60 day
`
`extension of time to oppose the Application again because of the purported need to confer with counsel about
`
`obtaining the aforementioned license agreement, which was designated by Applicant as “Attorneys’ Eyes
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`Only.” TTAB Dkt. Nos. 7, 9. The Board provided an extension until April 7, 2021. TTAB Dkt. Nos. 8, 10.
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`Without providing notice to Applicant, Opposer deceptively sought and obtained a final 60-day extension to
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`oppose for extraordinary circumstances “due to the effects of the COVID-19 outbreak.” TTAB Dkt. No. 11.
`
`Three months after the District Court entered its final order striking Opposer’s fraud and naked
`
`licensing defenses, and nineteen days after it entered a summary judgment order rejecting Opposer’s ownership
`
`arguments, Opposer filed the instant Opposition. Remarkably, Opposer reasserts its failed allegations of fraud
`
`894\3786375.11
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`regarding the dates of first use for the Neo4j Mark. Compare Opp. at 4:3–12 and Patel Decl., Ex. 6 at ¶¶ 88–
`
`92. Likewise, Opposer asserts identical naked licensing theories that the District Court conclusive held to be
`
`insufficient as a matter of law. Compare Opp., ¶¶ 9–13, 15–20, 22 and SACC, ¶¶ 85–98.
`
`Opposer inexplicably re-alleges verbatim that “[t]here is confusion whether Neo4j is a company name
`
`trademark or a product name trademark.” Compare Opp., ¶ 17 and Patel Decl., Ex. 9, ¶ 85. Similarly, Opposer
`
`re-alleges that Neo4j Sweden’s licensing of copyrights for the source code underlying the Neo4j® Software
`
`under the GPL and AGPL existed amounted to naked licensing of the Neo4j Mark because Neo4j Sweden did
`
`not implement any further quality controls beyond those licenses. Compare Opp., ¶¶ 9–12 and SACC, ¶¶ 86–
`
`88, 91. As a result, when Applicant “obtained rights to the Neo4J trademark years later, the Neo4J trademark
`
`was already abandoned by Neo4J Sweden AB’s lack of contractual and actual or adequate quality control for
`
`third party’s extensive use of the Neo4J trademark.” Id.
`
`Opposer further re-alleges that even after Neo4j USA was incorporated and was assigned the rights in
`
`the Neo4j Mark, “Neo4J Sweden AB has not exercise contractual control over GPL and AGPL licensee’s use
`
`of the Neo4J trademark.” Compare Opp., ¶ 12 and SACC, ¶ 89. And, that because Applicant is not the licensor
`
`of the source code for Neo4J® Software under the GPL and AGPL licenses, it “has no privity of contract to
`
`control GPL and AGPL licensees [sic] use of the Neo4J trademark [and] cannot rely on contract terms to show
`
`any control.” Compare Opp., ¶ 22 and SACC, ¶ 90. Opposer re-alleges in contradictory fashion that “[t]he
`
`GPL and AGPL provide that a licensee must carry prominent notices stating that you modified it and giving a
`
`relevant date.” Compare Opp., ¶ 12 and SACC, ¶ 89. Yet, it simultaneously maintains that this requirement
`
`“does not control quality to maintain the Neo4J trademark” and “any person could modify the source code to
`
`Neo4J software and convey the modified Neo4J software to third parties” under the GPL and AGPL licenses.
`
`Compare Opp., ¶¶ 12, 20 and SACC, ¶¶ 89, 92. Opposer then concludes that “[b]ecause Neo4J Sweden and
`
`Neo4J USA had no contractual controls and did not exercise actual and adequate controls over the prolific use
`
`of the Neo4J trademark by third parties who modified and conveyed modified versions of Neo4J software, the
`
`trademark should be deemed abandoned.” Compare Opp., ¶¶ 15–16 and SACC, ¶¶ 91, 97.
`
`Once again, Opposer cites to the same third party repositories that it baselessly assumes could
`
`894\3786375.11
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`

`potentially be third party modified software purporting to bear the Neo4j Mark. Compare Opp., ¶¶ 18–20 and
`
`SACC, ¶¶ 85, 91–95. Yet, Opposer still fails to allege any specific examples of where either Neo4j USA or
`
`Neo4j Sweden failed to exercise actual quality control over Neo4j® Software (third party modified or
`
`otherwise) or where the public was deceived into believing such modified software was an official unmodified
`
`version of Neo4j® Software, and instead relies on the fact that third parties modified and distributed source
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`code for the Neo4j® Software as expressly contemplated by the GPL and AGPL. See id. In addition, Opposer
`
`recycles allegations that the modification of Neo4j® Software by Opposer’s alter ego and predecessor called
`
`“Neo4J Government Edition” amounts to naked licensing. 2 Compare Opp., ¶¶ 14, 21 and SACC, ¶¶ 95–96.
`
`Finally, Opposer reasserts that Applicant is not “the rightful owner of the Neo4j mark.” Opp. at 3:2–
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`3. Opposer again claims that because Applicant only has a non-exclusive license from Neo4j Sweden for the
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`Neo4j Mark and that ownership of various trademark registrations outside the US show Neo4j Sweden AB, not
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`applicant as being the owner of record, Neo4j USA is not entitled to obtain registration for the Neo4j Mark in
`
`the US. Compare Opp. at 3:1–4:2 and Patel Decl., Ex. 15 at 12:14–14:9. As demonstrated by the comparison
`
`chart attached to the Patel Declaration as Exhibit 17, Opposer asserts no new material facts or legal theories in
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`opposition to the current registration that were not already unsuccessfully raised in the District Court litigation,
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`and thus Opposer still fails to state a viable claim of fraud or abandonment via naked licensing.
`
`III.
`
`APPLICABLE LEGAL STANDARDS
`
`A motion to dismiss for failure to state a claim upon which relief can be granted is a test solely of the
`
`legal sufficiency of a complaint. Advanced Cardiovascular Sys., Inc. v. Scimed Life Sys., Inc., 988 F.2d 1157,
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`1160 (Fed. Cir. 1993). In order to withstand such a motion, an opposition to registration need only allege such
`
`facts as would, if proved, establish that the Opposer is entitled to the relief sought, that is, that (1) the Opposer
`
`has an entitlement to a statutory cause of action to bring the proceeding; and (2) a valid ground exists for denying
`
`the registration. Fair Indigo LLC v. Style Conscience, 85 USPQ2d 1536, 1538 (TTAB 2007). To survive a
`
`
`2 This is the same software that PureThink marketed to government entities under a partner agreement with
`Neo4j USA. Compare Opp., ¶ 14 and SACC, ¶¶ 15–19, Ex. B at §§ 4.1, 7.3.
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`motion to dismiss, a complaint in opposition must contain sufficient factual matter to “state a claim to relief
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`that is plausible on its face.” Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 570 (2007). Where opposing a
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`registration based on alleged fraud in procuring a trademark registration, the Opposer must plead such a claim
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`“with particularity” under the heighted pleading standards of meet the heightened pleading requirements of Fed.
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`R. Civ. P. 9(b). See 37 C.F.R. § 2.116(a). A pleading that simply alleges the substantive elements of fraud,
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`without setting forth the particularized factual bases for the allegation does not satisfy the heighted pleading
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`requirements of Rule 9(b). Exergen Corp. v. Wal-Mart Stores Inc., 575 F.3d 1312, 1326–27 (Fed. Cir. 2009).
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`While the Board may construe the complaint in the light most favorable to the plaintiff and accept its
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`allegations as true, it is not required to accept as true legal conclusions or unwarranted factual inferences.
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`Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (citing Twombly, 550 U.S. at 555). The Board may consider exhibits
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`to the complaint and any attached written instrument attached without converting a motion to dismiss to one
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`for summary judgment. See In re Bill of Lading Transmission and Processing System Patent Litig., 681 F.3d
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`1323, 1337 (Fed. Cir. 2012); F.R.Civ.P. 10(c); accord Caymus Vineyards v. Caymus Medical, Inc., 107
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`USPQ2d 1519, 1522 fn. 3 (TTAB 2013) (considering exhibits attached to applicant's first amended answer and
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`counterclaim in ruling on motion to dismiss) (citing same). It must also consider “other sources courts
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`ordinarily examine when ruling on Rule 12(b)(6) motions to dismiss, in particular, documents incorporated into
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`the complaint by reference, and matters of which a court may take judicial notice. Tellabs, Inc. v. Makor Issues
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`& Rts., Ltd., 551 U.S. 308, 322 (2007). “In ruling on a 12(b)(6) motion, a court need not ‘accept as true
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`allegations that contradict matters properly subject to judicial notice or by exhibit….’” Secured Mail Sols. LLC
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`v. Universal Wilde, Inc., 873 F.3d 905, 913 (Fed. Cir. 2017) (internal citation omitted).
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`Where an applicant moves for the dismissal of an opposition based on the doctrine of issue or claim
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`preclusion, the Board treats it as a motion for summary judgment that may be filed prior to parties making their
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`initial disclosures. See Freki Corp. N.V. v. Pinnacle Entm't, Inc., 126 USPQ2d 1697 (TTAB 2018); see also
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`NH Beach Pizza LLC v. Cristy's Pizza Inc., 119 USPQ2d 1861, 1863 (TTAB 2016). The Board may grant
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`summary judgment where the movant shows the absence of any genuine dispute of material fact, and that it is
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`entitled to judgment as a matter of law. Fed. R. Civ. P. 56(a); see also Freki Corp., 126 USPQ2d at 1700
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`(granting summary judgment in favor of applicant where opposer had unsuccessfully asserted a naked license
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`defense in a prior action). The movant merely has the initial burden of demonstrating that there is no genuine
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`dispute of material fact remaining for trial and that it is entitled to judgment as a matter of law. See Fed. R. Civ.
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`P. 56(c); see also Celotex Corp. v. Catrett, 477 U.S. 317, 322–24 (1986).
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`When the moving party sufficiently demonstrates that there is no genuine dispute of material fact, and
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`that it is entitled to judgment, the burden shifts to the nonmoving party to demonstrate the existence of specific
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`genuinely disputed facts that must be resolved at trial. Freki Corp., 126 USPQ2d at 1700. The nonmoving party
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`may not rest on the mere allegations of its pleadings and assertions of counsel, but “must point to an evidentiary
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`conflict created on the record [,] at least by a counterstatement of facts set forth in detail in an affidavit by a
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`knowledgeable affiant.” Octocom Sys., Inc. v. Hous. Computs. Servs., Inc., 918 F.2d 937, 940 (Fed. Cir. 1990).
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`As discussed below, summary judgment is appropriate because iGov’s efforts to oppose present
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`Application are barred by the doctrine of issue preclusion. Alternatively, Opposer fails to state legally viable
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`theories of fraud and abandonment via naked licensing, the Board should dismiss this Opposition.
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`IV.
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`THE BOARD SHOULD GRANT SUMMARY JUDGMENT IN FAVOR OF APPLICANT
`BASED ON THE DOCTRINE OF ISSUE PRECLUSION
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`As recognized by the Supreme Court, “[w]hen a district court, as part of its judgment, decides an issue
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`that overlaps with part of the TTAB’s analysis, the TTAB gives preclusive effect to the court’s judgment.” B
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`& B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138, 152–53 (2015). Issue preclusion can bar the re-
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`litigation of the same issue of law or fact in a second proceeding. Under this doctrine, “the second action is
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`upon a different cause of action and the judgment in the prior suit precludes re-litigation of issues actually
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`litigated and necessary to the outcome of the first action.” Montana v. United States, 440 U.S. 147, 153–55
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`(1979). Issue preclusion bars the re-litigation of an issue of law or fact regardless of whether or not the two
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`proceedings are based on the claim. In re Freeman, 30 F.3d 1459, 1465 (Fed. Cir. 1994). The application of
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`issue preclusion thus requires: (1) identity of an issue in a prior proceeding, (2) that the identical issue was
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`actually litigated, (3) that determination of the issue was necessary to the judgment in the prior proceeding, and
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`(4) that the party defending against preclusion had a full and fair opportunity to litigate the issue in the prior
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`894\3786375.11
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`proceeding. Mayer/Berkshire Corp. v. Berkshire Fashions, Inc., 424 F.3d 1229, 1232 (Fed. Cir. 2005).
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`
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`The Doctrine of Claim Preclusion Bars Opposer From Re-Litigating Its Fraud and
`Naked Licensing Claims/Defenses Before the Board
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`The doctrine of claim preclusion bars Opposer from re-asserting its fraud and abandonment via naked
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`licensing claims in opposition to the Application for the same rights at issue in the District Court litigation. It
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`is indisputable that the parties are identical in both actions: “The current application being opposed was started
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`after a civil case was filed by Applicant against Defendants, including iGov, accusing iGov of trademark
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`infringement related to the Neo4j Mark.” iGov Opp, ¶ 5. It is also indisputable that the District Court twice
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`dismissed/struck iGov’s fraud and naked licensing counterclaims and affirmative defenses with prejudice. See
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`Patel Decl., Exs