Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA599174
`ESTTA Tracking number:
`04/17/2014
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92058387
`Defendant
`Warner Bros Entertainment Inc.
`JAMES D WEINBERGER
`FROSS ZELNICK LEHRMAN & ZISSU PC
`866 UNITED NATIONS PLAZA, 6TH FLOOR
`NEW YORK, NY 10017
`UNITED STATES
`jweinberger@frosszelnick.com, eweiss@frosszelnick.com
`Motion to Dismiss - Rule 12(b)
`James D. Weinberger
`jweinberger@frosszelnick.com, eweiss@frosszelnick.com
`/s/ James D. Weinberger
`04/17/2014
`F1434727.pdf(4187150 bytes )
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`Proceeding
`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`

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`IN THE TRADEMARK TRIAL AND APPEAL BOARD
`OF THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`SOPHIA STEWART,
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`
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` Petitioner,
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` v.
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`WARNER BROS. ENTERTAINMENT INC.,
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` Registrant.
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`Cancellation No. 92058387
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`MOTION TO DISMISS AMENDED PETITION TO CANCEL
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`
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`Registrant, Warner Bros. Entertainment Inc. (“Registrant”), by its attorneys, Fross
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`Zelnick Lehrman & Zissu, P.C., moves to dismiss the amended petition to cancel Registrant’s
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`ENTER THE MATRIX mark pursuant to Rule 12(b)(6) of the Federal Rules of Civil Procedure.
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`The amended petition fails to state a claim on which relief may be granted because Petitioner
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`Sophia Stewart lacks standing to bring this cancellation proceeding, and she has failed to state a
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`claim for fraud, the primary ground on which she seeks to cancel the ENTER THE MATRIX
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`mark. Furthermore, the other grounds that the amended petition merely references are not
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`relevant to this proceeding. Therefore, this cancellation proceeding should be dismissed.
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`Because Petitioner has a long history of harassing Registrant with legal proceedings, Registrant
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`requests that the cancellation proceeding be dismissed with prejudice.
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`A.
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`Background and Procedural History
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`FACTS
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`
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`Registrant is a global leader in the creation, production, distribution, and marketing of
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`motion pictures. In 1999, Registrant released The Matrix, the first movie in what became one of
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`Registrant’s most successful science-fiction franchises. The Matrix depicts the world as a
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`{F1420544.3 }
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`simulated reality called the “matrix,” whose discovery by the main character, a computer hacker,
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`draws him into an ongoing rebellion against the machines that control this simulated reality. The
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`Matrix was critically praised and won four Academy Awards. In 2003, following up on the
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`success of The Matrix, Registrant released The Matrix Reloaded and The Matrix Revolutions
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`(together with The Matrix, “The Matrix Movies”).
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`In connection with The Matrix Movies, Registrant owns a registration for the mark
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`ENTER THE MATRIX, U.S. Reg. No. 3,408,950, for use in connection with, inter alia, motion
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`picture films, audio-video tapes and discs, and various types of video and computer games, all
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`featuring the fictional characters and elements from The Matrix Movies, in International Class 9.
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`This registration issued to Registrant on April 8, 2008.
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`On December 16, 2013, Petitioner filed a petition to cancel the ENTER THE MATRIX
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`mark. She asserted as her grounds for cancellation that the mark was deceptive under Section
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`2(a) of the Lanham Act, 15 U.S.C. § 1052(a), and that the mark was procured by fraud.
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`Petitioner provided no factual allegations in support of either of her claims.
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`On January 23, 2014, Petitioner filed a second petition to cancel, which appeared to be an
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`amended petition, although it was not titled as such. The second petition seeks cancellation of
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`the ENTER THE MATRIX mark primarily on the ground that the mark was procured by fraud;
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`unlike the original petition, the second petition does not allege that the mark is deceptive under
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`Section 2(a) of the Lanham Act.1 Petitioner did not serve Registrant’s counsel with her second
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`1 The amended petition also references several statutory provisions that provide other potential grounds for
`cancellation, but the amended petition only provides citations to these provisions and never makes any supporting
`factual allegations. See section C, supra. Moreover, as explained below, several of these alternative grounds for
`cancellation are no longer permissible given that Registrant’s ENTER THE MATRIX mark has been registered for
`more than five years. See section C, supra.
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`{F1420544.3 }
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`2
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`petition. Thus, on January 24, 2014, unaware of the second petition, Registrant filed a motion to
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`dismiss the original petition.
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`At Registrant’s request, on February 25, 2014, the interlocutory attorney held a telephone
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`conference regarding Petitioner’s second pleading. Under Rule 15 of the Federal Rules of Civil
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`Procedure, Petitioner’s time to file an amended pleading as of right had expired. Thus, the
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`interlocutory attorney advised the parties that the Trademark Trial and Appeal Board (the
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`“Board”) would construe Petitioner’s second pleading as a motion to amend her original petition.
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`On February 27, 2014, the interlocutory attorney issued an order summarizing the February 25
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`telephone conference, which also ordered Registrant to respond to Petitioner’s motion to amend
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`by March 19, 2014.
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`On March 11, 2014, Registrant filed its response to Petitioner’s motion to amend, stating
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`that Registrant did not oppose Petitioner’s motion to amend her pleading. As such, on March 19,
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`2014, the interlocutory attorney issued an order granting Petitioner’s motion to amend and
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`setting April 19, 2014 as the deadline for Registrant to answer or otherwise respond to the
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`amended pleading.
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`B.
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`Prior Legal Proceedings Brought by Petitioner
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`This is not the first time that Petitioner has sought legal relief based on her perceived, but
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`nonexistent, intellectual property rights in The Matrix Movies. In 2003, Petitioner filed a lawsuit
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`in the U.S. District Court for the Central District of California against, inter alia, Registrant and
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`Andy and Larry Wachowski, the creators of The Matrix Movies, alleging copyright infringement
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`and violations of the Racketeer Influenced and Corrupt Organizations Act (“RICO”). See
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`Stewart v. Wachowski, 574 F. Supp. 2d 1074, 1078 (C.D. Cal. 2005), a true and correct copy of
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`which is attached as Exhibit A to the Declaration of James D. Weinberger (“Weinberger Dec.”)
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`{F1420544.3 }
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`3
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`submitted herewith. Petitioner claimed that The Matrix Movies infringed her rights in a screen
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`treatment and a manuscript that she had authored, both of which were entitled “The Third Eye.”
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`Id. at 1079, 1080-82. The Court granted the defendants’ motion for summary judgment on the
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`copyright infringement claim, finding that the uncontroverted evidence demonstrated that the
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`defendants had not had access to Petitioner’s works. See id. at 1098. The Court also held that
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`Petitioner could not prove access through a showing of “striking similarity” because it was her
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`burden to prove such striking similarity and she had failed to provide the Court with The Matrix
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`Movies, and therefore the court could not engage in the side-by-side comparison required for a
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`“striking similarity” analysis. Id. at 1103. Furthermore, in any event, Petitioner had admitted
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`that the parties’ respective works were not similar. See id. at 1106-07. The Court also granted
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`summary judgment on the RICO claim because uncontroverted evidence showed that the alleged
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`predicate acts had not occurred. See id. at 1110.
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`Despite the dismissal of her entire case in California, Petitioner did not stop there. In
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`December 2012, she again filed a complaint against Registrant and the Wachowskis, but this
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`time in the U.S. District Court for the District of Nevada. Petitioner alleged that the defendants,
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`who were the creators and distributors of the movie Cloud Atlas, falsely claimed during
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`advertisements for Cloud Atlas that the movie was “from the creators of the Matrix Trilogy.”
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`See Order at 1, Stewart v. Warner Bros. Entm’t, Inc., 12-CV-1875 (PMP)(GWF), ECF No. 4 (D.
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`Nev. Dec. 10, 2012) (Weinberger Dec. Ex. B). Petitioner claimed that she was the creator of The
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`Matrix Movies and asserted that these advertisements constituted copyright infringement,
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`trademark infringement, and unfair trade practices in violation of the Federal Trade Commission
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`Act. Id.
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`{F1420544.3 }
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`4
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`In this Nevada action, Petitioner had applied with the Court to proceed in forma pauperis,
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`which meant that the Court screened her complaint before requiring Registrant to file a
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`responsive pleading or motion. See id. at 2. In screening Petitioner’s complaint, the Court
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`dismissed her trademark claim with prejudice because Petitioner did not allege that she owned
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`any trademark relevant to the action and the Court found that such a deficiency could not be
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`cured. See id. at 3. The court also dismissed the unfair practices claim with prejudice, but
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`provided Petitioner an opportunity to replead her copyright infringement claim. See id. at 5.
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`
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`Petitioner’s second complaint disregarded the Court’s instructions and included claims
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`for trademark infringement and unfair trade practices, in addition to copyright infringement and a
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`claim for unlawful restraint of trade in violation of the Sherman Act. See Order at 1, Stewart v.
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`Warner Bros. Entm’t, Inc., ECF No. 12 (D. Nev. Mar. 4, 2013) (Weinberger Dec. Ex. C). Again,
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`the Court screened the complaint. The Court dismissed the trademark infringement and unfair
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`trade practices claims outright based on its prior decision. Id. at 3. The Court also dismissed the
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`copyright infringement claim with prejudice because Petitioner still had not alleged any facts in
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`support of such a claim. Id. The Court dismissed the Sherman Act claim without prejudice, but
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`instructed Petitioner that she would be given only one more opportunity to file a complaint and
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`the complaint was to be limited to her Sherman Act claim. Id. at 4-5.
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`
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`Petitioner ignored the Court’s instructions and filed an amended complaint alleging
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`various claims, including those that the Court had previously dismissed with prejudice. See
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`Second Amended Complaint, Stewart v. Warner Bros. Entm’t, Inc., ECF No. 14 (D. Nev. Mar.
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`21, 2013) (Weinberger Dec. Ex. D). However, less than a month later, Petitioner moved to
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`withdraw and dismiss her complaint, which the Court granted. See Order at 1, Stewart v. Warner
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`Bros. Entm’t, Inc., ECF No. 19 (D. Nev. Apr. 11, 2013) (Weinberger Dec. Ex. E).
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`{F1420544.3 }
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`5
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`
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`Like Petitioner’s other legal proceedings against Registrant based on her claimed rights in
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`The Matrix Movies, which have never been supported by any allegations or actual evidence, her
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`amended petition to cancel the ENTER THE MATRIX mark is wholly without merit and thus
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`should be dismissed.
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`ARGUMENT
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`Under Rule 12(b)(6) of the Federal Rules of Civil Procedure and Trademark Trial and
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`Appeal Board Manual of Procedure (“TBMP”) § 503, a registrant may move to dismiss a petition
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`for cancellation for “failure to state a claim upon which relief can be granted.” To withstand
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`such a motion, “a complaint must contain sufficient factual matter, accepted as true, to ‘state a
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`claim to relief that is plausible on its face.’” Corporacion Habanos, S.A. v. Rodriguez,
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`Cancellation No. 92052146, 2011 WL 3871952, at *1 (T.T.A.B. Aug. 1, 2011) (quoting Ashcroft
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`v. Iqbal, 556 U.S. 662, 678 (2009)). In the context of a cancellation proceeding before the
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`Board, “a claim is plausible on its face when the petitioner pleads factual content that if proved,
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`would allow the Board to conclude, or draw a reasonable inference that, the petitioner has
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`standing and that a valid ground for cancellation exists.” Id.; see also TBMP § 503.02. Factual
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`allegations must not only be well-pleaded, but they also must be more than “‘[t]hreadbare
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`recitals of the elements of a cause of action, supported by mere conclusory statements.” Doyle v.
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`Al Johnson’s Swedish Rest. & Butik, Inc., 101 U.S.P.Q.2d 1780, 1782 (T.T.A.B. 2012) (quoting
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`Iqbal, 556 U.S. at 678). Such threadbare statements “do not suffice and are not accepted as
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`true.” Id. (internal quotation marks omitted).
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`Petitioner’s amended petition cannot survive a motion to dismiss under this standard.
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`First, the amended petition is filled with allegations that are irrelevant to this cancellation
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`proceeding. For example, she alleges counterfeiting, copyright infringement, wire fraud, and
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`{F1420544.3 }
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`6
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`violations of antitrust laws and RICO. See Am. Pet. at 7 (counterfeiting), 7-10, 12 (copyright
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`infringement), 11 (wire fraud), 4 (antitrust), 8 (RICO). Petitioner was reminded both during the
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`February 25 telephone conference and in the subsequent February 27 order that the Board is
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`empowered to determine only the right to register a trademark, and thus she was instructed that
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`“any allegations which go beyond respondent’s right to maintain the involved registration . . . are
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`beyond the scope of this proceeding.” Order at 1-2, Stewart v. Warner Bros. Entm’t Inc.,
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`Opposition No. 92058387 (T.T.A.B. Feb. 27, 2014). Thus, under its own prior order in this
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`proceeding, the Board should disregard these allegations that have no relevance to the merits of
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`this cancellation proceeding.
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`Moreover, even when reduced to those allegations that relate to Registrant’s ENTER
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`THE MATRIX mark, the amended petition consists mostly of recitations of the law and
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`conclusory statements that lack any factual support. As such, this cancellation proceeding
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`should be dismissed because Petitioner has failed to state a valid ground for cancellation.
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`Furthermore, given Petitioner’s history in bringing baseless suits against Registrant in connection
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`with The Matrix Movies and that this is Petitioner’s second pleading in this cancellation
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`proceeding, Registrant requests that the Board grant its motion with prejudice.
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`A.
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`Petitioner Lacks Standing
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`Petitioner has the burden of establishing that she has standing to bring this cancellation
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`proceeding, and she has not satisfied this burden. At the pleading stage, Petitioner must “allege
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`facts sufficient to show a ‘real interest’ in the proceeding and a ‘reasonable basis’ for [her] belief
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`that [she] would suffer some kind of damage if the mark is registered.” TBMP § 309.03(b). To
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`plead a “real interest,” Petitioner must allege a “direct and personal stake” in the outcome of the
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`proceeding. Ritchie v. Simpson, 50 U.S.P.Q.2d 1023, 1026 (Fed. Cir. 1999). In addition, the
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`{F1420544.3 }
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`7
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`allegations in support of Petitioner’s claim of damage must have a “reasonable basis in fact.” Id.
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`at 1027 (explaining that more than a “subjective belief” is required) (citation omitted). For the
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`reasons stated below, Petitioner has not alleged that she has a real interest in this cancellation
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`proceeding or that she has suffered any damage.
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`1.
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`Petitioner Lacks a Real Interest
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`The only allegation that is possibly relevant to whether Petitioner has a real interest in this
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`proceeding is her implication that she owns a registered mark that Registrant copied. Petitioner
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`alleges that “Warner Bros. proposed mark is copied verbatim in appearance to the registered
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`mark and incorporates the dominant term MATRIX with the Warner Bros fraudulently procured
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`mark merely adding the word ENTER.” Am. Pet. at 9. This allegation is not sufficient to show
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`that Petitioner has a direct and personal stake in the outcome of this proceeding. First, Petitioner
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`never alleges that she owns the allegedly copied “registered mark” or any other mark that is
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`affected by Registrant’s ENTER THE MATRIX mark. Moreover, even if this statement were
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`interpreted to mean that Petitioner owns a trademark registration that Registrant allegedly copied
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`—and it clearly does not—this allegation is still not enough to give Petitioner standing in this
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`cancellation proceeding. She does not allege what her mark is, its federal registration number, or
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`the goods and services it covers. A vague and unclear reference to a registered mark, which
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`Petitioner does not even clearly allege that she owns—and indeed she owns none—cannot give
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`Petitioner standing.
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`Furthermore, the United States District Court for the District of Nevada has already
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`decided that Petitioner does not own any trademark rights in any mark containing the term
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`MATRIX, thus confirming that Petitioner lacks any real interest in this cancellation proceeding.
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`Findings of federal district courts are binding on the Board. TBMP § 510.02(a). As explained
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`{F1420544.3 }
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`above, this is the third legal proceeding that Petitioner has brought against Registrant in
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`connection with The Matrix Movies. In both of the prior proceedings, the district courts rejected
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`Petitioner’s various claims regarding her alleged rights in The Matrix Movies. Specifically, with
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`respect to her alleged trademark rights, Petitioner alleged in the action before the District Court
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`for the District of Nevada that Registrant and others had infringed her trademark rights in a work
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`entitled “Third Eye” and another work entitled “Matrix 4: The Evolution—Cracking the Genetic
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`Codes.” The court dismissed Petitioner’s trademark infringement claim because she had not
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`alleged that she had registered either title as a trademark. See Weinberger Dec. Ex. B at 3.
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`Indeed, from the available filings, it appears that Petitioner did not allege any type of trademark
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`ownership. The court further decided to dismiss the trademark infringement claim with
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`prejudice because Petitioner’s alleged “Matrix 4” work postdated the defendants’ use of the
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`MATRIX name. Id. Petitioner cannot avoid the consequences of this judgment against her,
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`which bind the Board here. Therefore, the deficiencies in Petitioner’s trademark infringement
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`claim could not be cured.
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`The court’s holding that Petitioner had no prior trademark rights is binding on Petitioner
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`in this proceeding under the doctrine of issue preclusion or collateral estoppel. The doctrine of
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`issue preclusion “protects the finality of judgments by precluding relitigation in a second suit of
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`issues actually litigated and determined in the first suit.” Stephen Slesinger, Inc. v. Disney
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`Enters., Inc., 105 U.S.P.Q.2d 1472, 1474 (Fed. Cir. 2012) (citation and internal quotation marks
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`omitted). The doctrine extends to relitigation before the Board of issues that a court already has
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`decided. See, e.g., Domino’s Pizza, Inc. v. Little Caesar Enters., Inc., 7 U.S.P.Q.2d 1359, 1363
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`(T.T.A.B. 1988) (holding that applicant was barred from asserting that mark was inherently
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`distinctive or had acquired secondary meaning under doctrine of collateral estoppel because
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`{F1420544.3 }
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`9
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`court already had decided same issue). Issue preclusion requires four elements: (1) a prior
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`action presents an identical issue; (2) the prior action actually litigated and adjudged that issue;
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`(3) the judgment in that prior action necessarily required determination of the identical issue; and
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`(4) the prior action featured full representation of the estopped party. See Stephen Slesinger,
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`Inc., 105 U.S.P.Q.2d at 1474.
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`These elements are met here. The issues are identical, namely whether Petitioner owns
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`any trademarks used or registered prior to Registrant’s ENTER THE MATRIX mark.
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`Furthermore, the ownership issue was actually litigated because Petitioner alleged a claim for
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`trademark infringement, which requires proof of ownership, and the district court’s dismissal of
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`this claim with prejudice required a determination that Petitioner could not prove such
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`ownership. Finally, the prior action featured full representation of the estopped party as
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`Petitioner was the plaintiff in the district court action and had the opportunity to allege any facts
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`relevant to her trademark ownership.
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`As such, Petitioner should be estopped from asserting any trademark ownership in this
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`proceeding, and the lack of any other allegations regarding a real interest demonstrates that
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`Petitioner in fact has no actual interest in this cancellation proceeding.
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`2.
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`Petitioner’s Allegations Regarding Her Alleged Injury Lack a Factual Basis
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`The only allegations that are remotely related to whether Petitioner has a reasonable
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`belief that she has suffered some kind of damage are her vague assertions that she has been
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`“injured” as a result of the ENTER THE MATRIX registration. Specifically, Petitioner makes
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`the following statements regarding her alleged injury:
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`x
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`x
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`“These activities were commenced to restrain my ability to trade.” Am. Pet. at 4.
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`“Petitioner was injured by the willful fraudulent procurement of the Enter the
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`{F1420544.3 }
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`10
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`Matrix Trademark.” Am. Pet. at 10.
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`x
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`“The petitioner, Stewart, has been injured and suffered some damage over $3
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`billion dollars as a result of the fraud.” Am. Pet. at 11.
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`These conclusory statements are not supported by a single factual allegation. Petitioner
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`does not allege how and why she has been injured by the ENTER THE MATRIX mark, which
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`are necessary facts to establish standing. See Doyle, 101 U.S.P.Q.2d at 1783 (finding petitioner
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`had not adequately alleged damage where he did not allege “anything about respondent’s mark
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`or Registrations” that would prevent him carrying out his alleged interest). Rather, Petitioner’s
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`statements are merely her own belief that she has been injured, which are not accepted as true.
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`See Iqbal, 556 U.S. at 678. Thus, Petitioner’s claim of injury is lacking a “reasonable basis in
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`fact.” Ritchie, 50 U.S.P.Q.2d at 1026.
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`The bottom line is that the only possible way for Petitioner to establish standing is to
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`properly plead that she owns rights in the term MATRIX or some other mark that is affected by
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`Registrant’s ENTER THE MATRIX mark. A proper pleading, however, is impossible here in
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`light of the prior decisions concerning Petitioner’s claim that she created The Matrix Movies.
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`That is, Petitioner will not be able to cure the deficiencies in the amended petition because the
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`basis of Petitioner’s only possible theory of standing already has been rejected by two federal
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`courts, whose decisions are binding here. The Nevada district court found that Petitioner’s use
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`of the term MATRIX postdates any claimed use of the term by Registrant, and thus Petitioner
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`could not establish priority. See Weinberger Dec. Ex. B at 3. In addition, the California district
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`court held that Registrant and the other defendants had adduced uncontroverted evidence that the
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`creators of The Matrix Movies did not have access to Petitioner’s works and thus Petitioner
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`could not establish copyright infringement. See Weinberger Dec. Ex. A at 1098. Thus, no
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`{F1420544.3 }
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`11
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`matter how many times Petitioner is allowed to plead standing, she will not be able to allege a
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`real interest that has been damaged by Registrant’s ENTER THE MATRIX mark because courts
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`already have held that she has no real interest under any cognizable theory. Accordingly, this
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`cancellation proceeding should be dismissed on account of Petitioner’s inability to demonstrate
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`standing.
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`B.
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`Petitioner Has Not Pleaded Facts Sufficient To Support a Claim For Fraud
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`The primary claim in the amended petition to cancel is that the ENTER THE MATRIX
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`mark was procured by fraud. “Fraud in procuring a trademark registration or renewal occurs
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`when an applicant knowingly makes false, material representations of fact in connection with his
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`application.” Torres v. Cantine Torresella S.r.l., 1 U.S.P.Q.2d 1483, 1484 (Fed. Cir. 1986). In
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`petitioning to cancel on the ground of fraud, a petitioner must allege the elements of fraud with
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`particularity in accordance with Rule 9(b) of the Federal Rules of Civil Procedure. See Asian &
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`W. Classics B.V. v. Selkow, Cancellation No. 92048821, 2009 WL 4081699, at *1 (T.T.A.B. Oct.
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`22, 2009). Rule 9(b) provides that, “[i]n alleging fraud or mistake, a party must state with
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`particularity the circumstances constituting fraud or mistake.” This “requires that the pleadings
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`contain explicit rather than implied expression of the circumstances constituting fraud.” King
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`Auto., Inc. v. Speedy Muffler King, Inc., 212 U.S.P.Q. 801, 803 (C.C.P.A. 1981). In addition,
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`pleadings of fraud made “on information and belief” are not permissible unless they are
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`“accompanied by a statement of facts upon which the belief is founded.” Asian & W. Classics,
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`2009 WL 4081699, at *1 (citing Exergen Corp. v. Wal-Mart Stores, Inc., 91 U.S.P.Q.2d 1656,
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`1670 n.7 (Fed. Cir. 2009)).
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`While it is not easy to make out which allegations are relevant to Petitioner’s fraud claim,
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`it appears that Petitioner’s fraud claim is based on three types of allegations. Some of these
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`{F1420544.3 }
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`12
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`allegations do not even relate to fraud, and even those that do are not stated with the particularity
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`required by Rule 9(b). Thus, all of the allegations in support of Petitioner’s fraud claim are
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`insufficient and the claim should be dismissed.
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`1.
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`Registrant’s Use of the ENTER THE MATRIX Mark
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`Petitioner alleges that Registrant made a fraudulent statement regarding its use of the
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`ENTER THE MATRIX mark because Registrant supposedly does not use its ENTER THE
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`MATRIX mark in connection with movies, films, and television. Am. Pet. at 5 & ¶¶ 4-5.
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`Specifically, she states that when Registrant filed its “statement of intent or use . . . the mark was
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`not in use on the movie, film, television etc.” Am. Pet. ¶ 5. As part of this allegation, Petitioner
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`seems to assert that if the ENTER THE MATRIX was in fact used in connection with movies,
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`films, and television, then it should have been registered as a service mark in International Class
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`41. Id. at 5, 6 & ¶ 5.
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`These allegations are insufficient because Petitioner does not provide any accompanying
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`factual context. All she alleges is that Registrant’s ENTER THE MATRIX mark is not in use in
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`connection with movies, film, and television, but she provides no facts upon which this belief is
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`founded. Petitioner’s own belief regarding Registrant’s use of the ENTER THE MATRIX mark
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`is not enough. Rather, Petitioner must “inject[] precision and some measure of substantiation
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`into [her] allegations of fraud.” Seville Indus. Machinery Corp. v. Southmost Machinery Corp.,
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`742 F.2d 786, 791 (2d Cir. 1984). Without any such substantiation, the amended pleading is
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`nothing more than a recitation of the elements of fraud, which is not sufficient. See Orange
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`Solutions Inc. v. Net Direct Sys. L.L.C., 10-CV-2054, 2011 WL 2489413, at *4 (N.D. Tex. June
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`20, 2011) (dismissing complaint that did “little more than recite the bare elements of fraud”).
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`For these reasons, Petitioner’s unsubstantiated allegations regarding Registrant’s use of the
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`{F1420544.3 }
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`13
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`

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`ENTER THE MATRIX mark cannot sustain her claim of fraud. See Wolverine Outdoors, Inc. v.
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`Marker Volkl (Int’l) GmbH, Opposition Nos. 91161363, 91177732, 91177736, 2010 WL
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`9597362, at *3 (T.T.A.B. June 21, 2010) (dismissing fraud counterclaim where it did not set
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`forth with sufficient specificity the alleged misrepresentation underlying the fraud claim).
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`Furthermore, Petitioner does not allege that Registrant knowingly made a false statement
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`in connection with its use of the ENTER THE MATRIX mark. Petitioner states that it is
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`sufficient that Registrant “should have known” that the statement was false. Am. Pet. ¶ 5.
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`However, “a trademark is obtained fraudulently under the Lanham Act only if the . . . registrant
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`knowingly made a false material representation with the intent to deceive the PTO.” In re Bose
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`Corp., 91 U.S.P.Q.2d 1938, 1941 (Fed. Cir. 2009) (emphasis added). Indeed, the Federal Circuit
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`expressly has held that using a “should have known” standard for intent “erroneously lowers the
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`fraud standard to a simple negligence standard.” Id. at 1940. Thus, Petitioner’s allegation that
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`Registrant should have known that the alleged misrepresentation was false is insufficient, further
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`demonstrating that her allegations regarding Registrant’s alleged use of the mark cannot form the
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`basis of the fraud claim.2
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`2.
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`Title of a Single Work
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`Petitioner’s second type of allegation asserts that Registrant failed to disclose to the
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`United States Patent and Trademark Office (the “PTO”) that the ENTER THE MATRIX mark is
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`the title of a single work, which generally is not registrable. Am. Pet. at 3-4, 5. However, like
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`the other allegations, Petitioner fails to provide any factual context to accompany this allegation.
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`Most importantly, Petitioner does not explain how Registrant’s alleged failure to disclose that the
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`2 The mere recitation of the names of particular lawyers employed by Registrant also cannot satisfy Petitioner’s
`pleading obligations. It is clear that Petitioner simply took them from the file wrapper of the challenged registration
`or from her prior legal actions against Registrant.
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`{F1420544.3 }
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`14
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`ENTER THE MATRIX mark is the title of a single work amounts to a false statement, and
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`indeed there is no false statement here. First, the ENTER THE MATRIX mark is registered in
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`connection with various types of computer and video games. The PTO does not treat such
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`computer and video games as single works. See 2 J. Thomas McCarthy, McCarthy on
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`Trademark & Unfair Comp. § 10:4 (4th ed. 2012) (“McCarthy”) (citing Trademark Manual of
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`Examining Procedure § 1202.08(b) (“TMEP”)); see also In re Kabushiki Kaisha Square Enix,
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`Ser. No. 77711320, 2012 WL 3525755, at *3 (T.T.A.B. Aug. 3, 2012) (contrasting titles of
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`computer games with titles of single creative works, and finding that the former function as
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`trademarks and are registrable).
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`Second, the nature of this rule is such that it cannot form the basis of a false statement. It
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`is a rule used by the examining attorney when evaluating a mark in light of the applied for goods
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`and services. See TMEP § 1202.08 (instructing examining attorneys to refuse registration of a
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`title of a single creative work). So long as the applicant’s description of the goods and services
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`is accurate, there is no affirmative obligation for the applicant to state one way or another
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`whether the mark is the title of a single work. Rather, it is up to the examining attorney to decide
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`whether the mark comes within the “single work” rule.
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`In light of the above, Petitioner has no basis to allege that Registrant made a false
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`statement in connection with the alleged status of the ENTER THE MATRIX mark as the title of
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`a single work.
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`3.
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`Copied From Petitioner’s “The Third Eye”
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`Petitioner’s third allegation asserts that Registrant committed fraud by failing to disclose
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`in its application that the ENTER THE MATRIX mark was copied from Petitioner’s copyrighted
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`work, entitled “The Third Eye.” Am. Pet. at 10, 11. This allegation conflates Petitioner’s
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`{F1420544.3 }
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`15
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`

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`copyright claims, which are irrelevant to this cancellation proceeding, with her fraud claim.
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`Petitioner alleges:
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`Warner Bros failed to disclose to the Trademark office that they pilfered “The Matrix”
`and copy visual art images from the “The Third Eye” but for the misrepresentation, the
`federal registration either would not or should not have issued.
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`Warner Bros. knowingly made false statements to the trademark office while concealing
`that they had not created any “Source work” material and used the material from “The
`Third Eye.”
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`Am. Pet. at 10. The allegations regarding copying of “visual art images,” “source work,” and
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`“material” are irrelevant and nonsensical as the ENTER THE MATRIX mark, a word mark, does
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`not contain any visual art images or other material.
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`That leaves the allegation that Registrant “pilfered ‘The Matrix’ from the ‘The Third
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`Eye.’” This allegation cannot sustain Petitioner’s fraud claim. First, trademark law, unlike
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`copyright law, does not protect “mere reproduction of a trademark.” 1 McCarthy § 6:14. Rather,
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`trademark rights are defined by the likelihood of confusion test. Id. Petitioner does not properly
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`allege likelihood of confusion, and even if she did, it is not a permissible