Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1156257
`
`Filing date:
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`08/29/2021
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`92077077
`
`Party
`
`Correspondence
`Address
`
`Defendant
`INSPR, Inc. and INSPR Partners LLC
`
`MICHAEL R. GRAIF
`MINTZ, LEVIN, COHN, FERRIS, GLOVSKY AND POPEO, P.C.
`666 THIRD AVENUE
`NEW YORK, NY 10017
`UNITED STATES
`Primary Email: mrgraif@mintz.com
`212-692-6287
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`Submission
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`Filer's Name
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`Filer's email
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`Signature
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`Date
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`Attachments
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`Response to Board Order/Inquiry
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`Michael R. Graif
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`mrgraif@mintz.com
`
`/Michael R. Graif/
`
`08/29/2021
`
`JOINT_RESPONSE_TO_BOARD_ORDER_080921.pdf(339366 bytes )
`EXH A - INSPR LLC Filed DE Certificate of Formation.pdf(383843 bytes )
`EXH B - INSPR Application.pdf(1520264 bytes )
`EXH C - INSPR LLC Cert Conversion to INSPR LLC.pdf(310148 bytes )
`EXH D - INSPR DEL Filing Cert for Cert Conversion INSPR LLC to INSPR
`INC.pdf(482124 bytes )
`EXH E - INSPR Notice of Publication.pdf(187042 bytes )
`EXH F - INSPR Notice of Allowance.pdf(643102 bytes )
`EXH G - INSPR Registration Cert.pdf(706166 bytes )
`EXH H1 - INSPR Asset Purchase K.pdf(1878958 bytes )
`EXH H2 - INSPR Asset Purchase K.pdf(1965469 bytes )
`EXH H3 - INSPR Asset Purchase K.pdf(3466484 bytes )
`EXH I - Assignment Cvr Sheet for Conversion.pdf(122923 bytes )
`EXH J - Notice of Recordation Conv Assignment.pdf(65694 bytes )
`EXH K - Nunc Pro Tunc Assignment and Cvr Sheet.pdf(4075706 bytes )
`EXH L - Notice of Recordation Nunc Pro Tunc Assignment.pdf(51725 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Registration No. 5962194
`Filed March 15, 2018
`International Classes 25, 35, 45
`INSPR
`
`
`LOREN MILES,
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`Petitioner,
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`v.
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`INSPR, LLC,
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`Predecessor to Registrant.
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`Cancellation No. 92077077
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`JOINT RESPONSE OF INSPR INC (f/k/a INSPR LLC) AND CURRENT OWNER INSPR
`PARTNERS, LLC TO ORDER DATED AUGUST 9, 2021 -
`INCLUDING THE PARTIES’ JOINT MOTION TO SUBSTITUTE PARTY AND
`COUNSEL, AND
`JOINT MOTION FOR JUDGMENT ON THE PLEADINGS
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`COME NOW, INSPR, INC., f/k/a Original Registrant INSPR INC (“INSPR INC”), by
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`and through its undersigned attorneys, and INSPR Partners, LLC (“INSPR PTNRS”), current
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`owner of Registration No. 5962194, by and through its undersigned attorney, and hereby submit
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`the following Joint Response to the Board’s Order of August 9, 2021, Joint Motion to Substitute
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`Party and Counsel, and Motion for Judgment on the Pleadings pursuant to Rule 12(c)
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`Fed.R.Civ.P. INPR INC and INSPR PTNRS respectfully move the Board for judgment in their
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`favor and against Petitioner Loren Miles (“MILES” or “Petitioner”) on all Counts of the Petition.
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`As explained in detail below, there exist no genuine issues of material fact that could allow
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`MILES to prevail on any of the asserted claims, and Registrant is therefore entitled to judgment
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`as a matter of law on all claims in the Petition.
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`
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`

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`I.
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`INTRODUCTION
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`The sole basis upon which the present Petition to Cancel is founded is that a “fraud” was
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`somehow perpetrated on the Trademark Office because Registrant was not the owner of the
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`INSPR trademark when it filed the Application. Nothing of the sort occurred.
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`Rather, as stated in Registrant’s Answer, and as set forth in more detail in this Motion,
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`INSPR LLC (the listed Registrant) was a duly registered limited liability company in the State of
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`Delaware when it filed the INSPR Application. During the time-period in which the INSPR
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`Application was being prosecuted, INSPR, LLC was administratively converted from a limited
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`liability company to a corporation, and the entity designation in its name had to be changed from
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`“LLC” to “INC.” Thereafter, due to mere oversight, INSPR INC did not promptly update this
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`entity status change with the Trademark Office.
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`Of course, had Petitioner performed reasonable due diligence before filing the present
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`Cancellation, a rudimentary investigation into this matter would not only have readily revealed
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`the INSPR Conversion record, and such an investigation would have also presented Petitioner
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`with the contact information for INSPR INC. All Petitioner had to do was contact INSPR INC to
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`present its inquiries regarding the ownership of the INSPR Mark and Registration. There is no
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`evidence of any such effort by Petitioner.
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`Although INSPR INC could have been more prompt in updating its “LLC” to “INC”
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`entity status with the Trademark Office, INSPR gained no more than it was entitled to as a result
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`of the delay caused by its oversight. Hence, contrary to Petitioner’s assertions, the same entity
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`filed, prosecuted and obtained federal registration for its INSPR trademark. Thus, there was no
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`fraud, and therefore no basis for Cancellation. The Cancellation should be dismissed.
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`Page 2 of 17
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`

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`II. STATEMENT OF UNCONTROVERTED MATERIAL FACTS
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`Application & Registration of INSPR
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`1.
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`On or about January 9, 2018, INSPR, LLC (hereafter, “INSPR LLC”) registered
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`as a limited liability company with the State of Delaware. (A copy of INSPR LLC’s Delaware
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`Certificate of Registration is attached hereto as Exh. A, and incorporated by reference herein).
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`2.
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`On or about March 15, 2018, INSPR LLC filed an application for federal
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`registration of its INSPR trademark (the “INSPR Application”). (A copy of said INSPR
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`Application is attached hereto as Exh. B, and incorporated by reference herein).
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`3.
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`On or about August 7, 2018, INSPR LLC filed a Certificate of Conversion with
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`Delaware’s Secretary of State to administratively convert the tax status of INSPR LLC from that
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`of a limited liability company into that of a corporation having the name “INSPR, INC.”
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`(hereinafter “INSPR INC”) under Delaware state law (the “INSPR Conversion”). (A copy of
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`said Certificate of Conversion is attached hereto as Exh. C, and incorporated by reference herein;
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`A copy of said Conversion Filing Receipt is attached hereto as Exh. D, and incorporated by
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`reference herein).
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`4.
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`On or about April 2, 2019, the INSPR Application was published for Opposition
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`by the U.S. Trademark Office. (A copy of said Notice of Publication is attached hereto as Exh.
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`E, and incorporated by reference herein).
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`5.
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`No Opposition was filed by any party, including Petitioner here, against the
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`registration of INSPR by INSPR LLC. (See INSPR Notice of Allowance, a copy of relevant
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`portions of which is attached hereto as Exh. F, and incorporated by reference herein).
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`6.
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`On or about January 14, 2020, the U.S. Trademark Office assigned the INSPR
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`trademark Registration No. 5962194 (the “INSPR Registration”). (A copy of said INSPR
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`Page 3 of 17
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`

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`Registration is attached hereto as Exh. G, and incorporated by reference herein).
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`7.
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`On or about October 14, 2020, and as part of a broader full asset sale of its
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`business, INSPR INC entered into an Asset Purchase Agreement with INSPR Partners, LLC, a
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`Missouri limited liability company (hereinafter, “INSPR PTNRS”) in which INSPR INC
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`assigned, inter alia, all of its right title and interest in and to its INSPR trademark and the INSPR
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`Registration to INSPR PTNRS. (See said Asset Purchase Agreement, a copy of relevant portions
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`of which is attached hereto as Exh. H, and incorporated by reference herein). Therefore, as of
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`October 14, 2020, Registrant INSPR PTNRS became the Owner and Registrant of all the right
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`tittle and interest in and to the federally registered trademark INSPR in International Classes 25,
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`35 and 45 for various clothing and apparel goods, having Federal Registration No. 5962194, and
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`having been registered on March 15, 2018.
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`
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`Petition to Cancel & Updating Ownership
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`8.
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`On or about May 5, 2021, Petitioner filed the present Petition to Cancel the
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`INSPR Registration, asserting that the INSPR Registration is “void” because:
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`i. “Registrant is not the Owner of the Mark” (Petition Count I title) because
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`“Registrant was never the owner of the Mark and thus had no valid mark to assign
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`to Owner” (Petition, ¶ 4); and
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`ii. For “fraud” and/or “deceptiveness” because Registrant obtained the registration
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`by “solely by knowingly” making “false and fraudulent statements concerning the
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`existence of INSPR INC and continuous use of the Mark to the USPTO”
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`(Petition, ¶ 10; see also ¶¶ 15-17).
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`9.
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`On or about June 15, 2021, INSPR INC filed an assignment with the U.S.
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`Page 4 of 17
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`

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`Trademark Office to update the Ownership designation of the INSPR Registration from INSPR
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`LLC to INSPR INC (the “Conversion Assignment”). (See the Assignment Cover Sheet for said
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`Conversion Assignment, a copy of which is attached hereto as Exh. I, and incorporated by
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`reference herein).
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`10.
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`On or about June 17, 2021, the U.S. Trademark Office issued its Notice of
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`Recordation of the Third Assignment. (See said Notice, a copy of which is attached hereto as
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`Exh. J, and incorporated by reference herein).
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`11.
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`On or about July 9, 2021, INSPR PTNRS filed a Nunc Pro Tunc Assignment with
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`the U.S. Trademark Office that assigns the INSPR Registration from INSPR INC to INSPR
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`PTNRS. (See said Nunc Pro Tunc Assignment and associated Cover Sheet, copies of which are
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`collectively attached hereto as Exh. K, and incorporated by reference herein).
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`12.
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`On or about July 14, 2021, the U.S. Trademark Office issued its Notice of
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`Recordation of the Nunc Pro Tunc Assignment. (See said Notice of Recordation, a copy of
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`which is attached hereto as Exh. L, and incorporated by reference herein).
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`
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`III. SUBSTITUTION OF PARTY AND COUNSEL
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`
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`With regard to substitution, the Trademark Trial and Appeal Board Manual of Procedure
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`states in relevant part the following:
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`When there has been an assignment of a mark that is the subject of, or relied upon
`in, an inter partes proceeding before the Board, the assignee may be joined or
`substituted, as may be appropriate, upon motion granted by the Board, or upon the
`Board’s own initiative.
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`When a mark that is the subject of a Federal application or registration has been
`assigned, together with the application or registration, in accordance with
`Trademark Act § 10, 15 U.S.C. § 1060, any action with respect to the application
`or registration that may or must be taken by the applicant or registrant may be
`taken by the assignee (acting itself, or through its attorney or other authorized
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`Page 5 of 17
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`

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`representative), provided that the assignment has been recorded with the USPTO
`or that proof of the assignment has been submitted in the Board proceeding
`record.
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` …
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`
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`If a mark pleaded by a plaintiff is assigned and a copy of the assignment is filed
`with the Board, the assignee ordinarily will be substituted for the originally
`named party if the assignment occurred prior to the commencement of the
`proceeding, if the discovery and testimony periods have closed, if the assignor is
`no longer in existence, or if the defendant raises no objection to substitution;
`
` …
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`The assignment does not have to be recorded with respect to a plaintiff’s pleaded
`application or registration before substitution or
`joinder (whichever
`is
`appropriate) is made.
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`TBMP 512.01.
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`Here, it is undisputed that INSPR LLC was formed on or about January 9, 2018 (SOF ¶
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`1), and that INSPR LLC was the original owner of the INSPR Application, which INSPR LLC
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`filed on or about March 15, 2018 (SOF ¶ 2). It is further undisputed that on August 7, 2018 –
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`after filing the INSPR Application but prior to the institution of this Cancellation proceeding -
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`INSPR LLC administratively converted its entity tax status from a limited liability company to
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`that of a corporation having the name “INSPR, INC.” under Delaware law (SOF ¶ 3; see also
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`Certificate of Conversion and associated Delaware Filing Receipt, Exhs. C and D). It is also
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`undisputed that thereafter the INSPR Mark was duly registered on January 14, 2020 (SOF ¶ 6),
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`and that on October 14, 2020 – prior to the institution of this Cancellation proceeding - INSPR
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`INC transferred all its rights in the INSPR Mark and the INSPR Registration to INSPR PTNRS.
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`(SOF ¶ 7).
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`Moreover, it is also undisputed that on July 9, 2021, INSPR PTNRS duly filed a Nunc
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`Pro Tunc assignment with the Trademark Office to update the ownership of the INSPR
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`Page 6 of 17
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`

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`Registration to INSPR PTNRS as of October 14, 2020 (SOF ¶ 11), and that assignment was duly
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`recorded by the Trademark Office on July 14, 2021 (SOF ¶ 12).
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`Thus, having been duly assigned all rights in the INSPR Mark and INSPR Registration
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`prior to the institution of this Cancellation proceeding, INSPR PTNRS is the current, bona fide
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`Owner and Registrant of the INSPR Registration, and is entitled to substitution as the party of
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`interest in this Cancellation under TBMP § 512.01. (See SOF ¶¶ 1-7). Accordingly, pursuant to
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`TBMP § 512.01, INSPR INC and INSPR PTNRS jointly move the Board to substitute INSPR
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`PTNRS in place of INSPR LLC as the Registrant in the present Cancellation, and substitute
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`Douglas D. Churovich of Churovich Law, LLC, as attorney of record in place of Michael R.
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`Graif of Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C., and grant all such other and
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`further relief in this regard as the Board deems appropriate under the circumstances.
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`
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`IV. LAW AND ARGUMENT FOR SUMMARY JUDGMENT1.
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`A.
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`The U.S. Supreme Court Has Repeatedly Held That Summary Judgment Is
`A Useful Tool To Render Judgment As A Matter Of Law When No Genuine
`Issue Of Material Fact Exists, And The Board Has Likewise Recognized
`Summary Judgment As An Appropriate Means To Dispose Of Disputes That
`Can Be Resolved Without The Need For Trial.
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`
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`Fed. R. Civ. P. 56(c). directs that the “…judgment sought shall be rendered forthwith if
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`the pleadings, depositions, answers to interrogatories, and admissions on file, together with
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`affidavits, if any, show that there is no genuine issue as to any material fact and that the moving
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`party is entitled to judgment as a matter of law.” Moreover, the Board recognizes that, “The
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`summary judgment procedure is regarded as ‘a salutary method of disposition,’ and the Board
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`1 Because the present Joint Motion for Judgment on the Pleadings includes facts outside the
`pleadings, it is to be treated as a Joint Summary Judgment Motion under Rule 56 Fed. R. Civ. P.
`See Rule 12(d) Fed. R. Civ. P.
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`
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`Page 7 of 17
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`

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`does not hesitate to dispose of cases on summary judgment when appropriate.” TBMP 528.01
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`Summary judgment is appropriate when there are no issues of material fact and the
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`moving party is entitled to judgment as a matter of law. Fed. R. Civ. P. 56; Anderson v. Liberty
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`Lobby, Inc., 477 U.S. 242, 247-48 (1986) (see also TBMP 528.01). Evidence, and any
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`inferences to be drawn therefrom, must be viewed in the light most favorable to the non-
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`movement. Id. at 255 (see also TBMP 528.01). While summary judgment can be overcome by
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`establishing the existence of a genuine issue of material fact, the non-movant must show more
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`than a mere metaphysical doubt regarding the material facts. Celotex Corp. v. Catrett, 477 U.S.
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`317, 322-24 (1986). Nor will the existence of a mere scintilla of evidence suffice. Anderson,
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`477 US at 251. In this regard, Rule 56 does not require that there be no factual disputes. Rather,
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`the non-movant must show the existence of a genuine issue of material fact, which exists only if
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`the evidence is such that a reasonable jury could reach a verdict in favor of the non-movant.
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`Anderson, at 247-248 (“[T]he mere existence of some alleged factual dispute between the parties
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`will not defeat an otherwise properly supported motion for summary judgment; the requirement
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`is that there be no genuine issue of material fact.”)(emph. in orig.).
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`Hence, “the party opposing summary judgment ‘must set forth specific facts showing that
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`there is a genuine issue of material fact for trial.’” Phillips Petroleum Co. v. Hunstman
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`Polymers, 157 F.3d 866, 870 (Fed. Cir. 1998)(emphasis added)(citations omitted) (see also
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`TBMP 528.01). “However, the nonmoving party must do more than simply present some
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`evidence as to an issue it asserts is in dispute. Rather, the standard is that sufficient evidence
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`must be forthcoming such as to allow a reasonable jury to return a verdict in favor of the
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`nonmoving party.” Id. (emphasis added). As will be shown, Petitioner here cannot do so.
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`By this Motion, INSPR INC and INSPR PTNRS ask the Board to dispose of this case by
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`Page 8 of 17
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`

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`summarily granting the present Motion. The evidence firmly establishes that there are no
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`genuine issues of material fact as to Petitioner’s claims for Cancellation and that INSPR INC and
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`INSPR PTNRS are entitled to summary judgment against all of those claims as a matter of law.
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`B.
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`The Relevant Law Regarding Petitioner’s Assertions Of Cancellation Based
`Upon Fraud2 Before The TM Office.
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`
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`1. Fraud before the TM Office can only be established where the Applicant-
`Registrant has knowingly made a false and material misrepresentation of fact.
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`Fraud in obtaining or maintaining a trademark registration “occurs when an applicant [or
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`later, registrant] knowingly makes false, material misrepresentations of fact in connection with
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`his application,” or in connection with a Section 8 declaration or in connection with an
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`application for renewal. Torres v. Cantine Torresella, 808 F.2d 46, 1 USPQ2d 1483, 1484 (Fed.
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`Cir. 1986). Thus, “[t]o constitute fraud on the USPTO, the statement must be (1) false, (2) a
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`material representation and (3) made knowingly.” Id.
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`2. Intent to deceive - which is required to establish fraud before the TM Office -
`must be “willful” such that “’honest’ misunderstandings, inadvertence,
`negligent omissions or the like” do not support a claim of fraud.
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`The Board has recognized that: “Fraud implies some intentional deceitful practice or
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`act designed to obtain something to which the person practicing such deceit would not
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`otherwise be entitled. Specifically, it involves a willful withholding from the Patent and
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`Trademark Office by an applicant or registrant of material information or fact, which, if
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`disclosed to the Office, would have resulted in the disallowance of the registration sought or to
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`be maintained. Intent to deceive must be “willful”. If it can be shown that the statement was a
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`“false misrepresentation” occasioned by an “honest” misunderstanding, inadvertence,
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`
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`2 Petitioner interchanges the terms “fraud” and “misrepresentation”, but provides no distinction
`between the two. (See, generally, Petition). Accordingly, this Motion will consider both “fraud”
`and “misrepresentation” as the same.
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`
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`Page 9 of 17
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`

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`negligent omission or the like rather than one made with a willful intent to deceive, fraud will
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`not be found. Fraud, moreover, will not lie if it can be proven that the statement, though false,
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`was made with a reasonable and honest belief that it was true or that the false statement is not
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`material to the issuance or maintenance of the registration.” First Int’l Services, 5 USPQ2d
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`1628, 1634 (TTAB 1988) (emph. added), citing with approval Smith Int’l, Inc. v. Olin Corp., 209
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`USPQ 1033, 1043-44 (TTAB 1981). See also Maids-to-Order v. Maid-to-Order, 78 U.S.P.Q.2d
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`1899 (TTAB 2006).
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`
`
`
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`3. Fraud before the TM Office must be established by clear and convincing
`evidence.
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`Importantly, “the very nature of the charge of fraud requires that it be proven “to the
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`hilt” with clear and convincing evidence. There is no room for speculation, inference or surmise
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`and, obviously, any doubt must be resolved against the charging party.” First Int’l Services Corp.
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`supra, 5 USPQ2d at 1634 (emph. added), citing with approval Smith Int’l, Inc., supra, 209
`
`USPQ at 1044 (emph. added).
`
`C.
`
`The Undisputed Material Facts Firmly Establish That INSPR PTNRS Is
`Entitled To Summary Judgment On All Counts Of The Petition Because The
`Undisputed Facts Show No Willful Intent To Deceive By INSPR INC Merely
`Because As An Oversight It Did Not More Promptly Update Its Ownership
`Designation For The INSPR Registration To Reflect The Corporate
`Conversion Of INSPR “LLC” To INSPR “INC”.
`
`
`The Board’s precedent and Federal Circuit authority both emphasize that fraud can only
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`
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`be proven if there was a “willful” intent to deceive, and any such claim can only be proven by
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`clear and convincing evidence. First Int’l Services Corp. supra, 5 USPQ2d at 1634. Here, not
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`only is there a complete lack of clear and convincing evidence of intent to deceive, the
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`undisputed evidence firmly establishes that there was, in fact, no such intent to deceive.
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`It is undisputed that INSPR LLC was formed on or about January 9, 2018 (SOF ¶ 1), and
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`Page 10 of 17
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`

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`that INSPR LLC was the original owner of the INSPR Application, which INSPR LLC filed on
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`or about March 15, 2018 (SOF ¶ 2). Thus, INSPR LLC filed the INSPR Application after
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`INSPR LLC had been duly formed under Delaware law. It is further undisputed that after filing
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`the INSPR Application, on August 7, 2018, INSPR LLC administratively converted its entity
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`status from a limited liability company to that of a corporation having the name “INSPR, INC.”
`
`under Delaware law (SOF ¶ 3; see also Certificate of Conversion and associated Delaware Filing
`
`Receipt, Exhs. C and D). It is also undisputed that thereafter the INSPR Mark was duly
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`registered on January 14, 2020 (SOF ¶ 6), and that on October 14, 2020, INSPR INC transferred
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`all its rights in the INSPR Mark and the INSPR Registration to INSPR PTNRS. (SOF ¶ 7).
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`In addition, it is also undisputed that after being served with the present Cancellation,
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`INSPR INC filed a corporate conversion assignment with the Trademark Office that updated the
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`Owner name for the INSPR Registration from INSPR LLC to INSPR INC. (See SOFs ¶¶ 9-10).
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`Thus, the ownership of the INSPR Mark was duly recorded by INSPR INC at the Trademark
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`Office. (See id.). Once the ownership of the INSPR Registration to reflect the conversion of
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`INSPR LLC to INSPR INC was so recorded, INSPR PTNRS duly filed a Nunc Pro Tunc
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`assignment with the Trademark Office to update the ownership of the INSPR Registration to
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`INSPR PTNRS (SOF ¶ 11), and that assignment was duly recorded by the Trademark Office on
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`July 14, 2021 (SOF ¶ 12).
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`Notably, in a misguided effort to establish “fraud” or “misrepresentation”, the Petition
`
`asserts that Petitioner conducted two meager and very limited corporate entity searches on the
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`Delaware and New York Secretary of State websites. (See Petition ¶¶ 1-2). However, there is
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`no evidence in the record to establish or even suggest that prior to filing its Petition to Cancel on
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`May 5, 2021, Petitioner made any attempt to reach any of the attorneys or representatives of
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`
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`Page 11 of 17
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`

`

`INSPR INC (f/k/a INSPR LLC) to inquire as to the status of INSPR entity, the INSPR
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`Application, or the INSPR Registration. (See, generally, Petition). Moreover, had Petitioner
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`conducted a more detailed search on the Delaware Secretary of State website, he would have
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`discovered the INSPR LLC to INSPR INC Conversion duly recorded by that office. (See SOF ¶
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`3). Alternatively, had Petitioner conducted even a rudimentary Internet search, he would have
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`readily discovered and been able to reach out to INSPR INC to inquire as to the issues in this
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`Cancellation. Consequently, had Petitioner taken any of these reasonable steps, he would have
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`discovered the lack of asserted “fraud” and/or “misrepresentation” upon which this Cancellation
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`has been founded.
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`Thus, the undisputed facts firmly establish that although it could have more promptly
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`updated the Ownership designation from INSPR LLC to INSPR INC at the Trademark Office,
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`INSPR INC’s failure to do so was no more than a mere oversight – that is, “an ‘honest’
`
`misunderstanding, inadvertence, negligent omission or the like.” First Int’l Services Corp.
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`supra, 5 USPQ2d at 1634. There is absolutely no evidence whatsoever in this undisputed record
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`of any intent to deceive, much less clear and convincing evidence of a “willful” intent to deceive.
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`Id. Under such circumstances, Board and Federal Circuit precedent make it abundantly clear that
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`there can be no finding of fraud. Id.; see also Maids-to-Order, supra, 78 U.S.P.Q.2d 1899.
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`Thus, there exist no genuine issues of material fact that would support any of the Claims in
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`Petitioner’s Petition. Petitioner’s claims are therefore without merit and judgment on the
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`pleadings as a matter of law should be entered against all Counts of the Cancellation Petition.
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`D.
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`The Undisputed Material Facts Firmly Establish That INSPR PTNRS Is
`Further Entitled To Summary Judgment On All Counts Of The Petition
`Because INSPR INC Did Not Obtain Anything That It Was Not Entitled To
`Merely Because As An Oversight It Did Not More Promptly Update Its
`Ownership Designation For The INSPR Registration To Reflect The
`Corporate Conversion Of INSPR “LLC” To INSPR “INC”.
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`The Board has repeatedly emphasized that: “Fraud implies some intentional deceitful
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`practice or act designed to obtain something to which the person practicing such deceit would
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`not otherwise be entitled.” First Int’l Services Corp. supra, 5 USPQ2d at 1634 (emph. added).
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`Of course, any such accusation of fraud on the Trademark Office can only be established with
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`clear and convincing evidence. Id. No such evidence, much less clear and convincing
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`evidence, of any such unwarranted gain by INSPR INC exists in the present case.
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`Here, in addition to being entitled to summary judgment for its lack of “willful” intent to
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`deceive (see § IV.C. above), INSPR PTNRS is also entitled to summary judgment on all Counts
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`of the Petition because INSPR INC did not obtain anything it was not entitled to when it didn’t
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`more promptly revise its ownership name from INSPR LLC to INSPR INC.
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`It is clear and undisputed that INSPR LLC was formed on or about January 9, 2018 (SOF
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`¶ 1), and that INSPR LLC was the original owner of the INSPR Application, which INSPR LLC
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`filed on or about March 15, 2018 (SOF ¶ 2). Thus, INSPR LLC filed the INSPR Application
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`after INSPR LLC had been duly formed under Delaware law. It is further undisputed that after
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`filing the INSPR Application, on August 7, 2018, INSPR LLC administratively converted its
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`entity tax status from a limited liability company to that of a corporation having the name
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`“INSPR, INC.” under Delaware law (SOF ¶ 3; see also Certificate of Conversion and associated
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`Delaware Filing Receipt, Exhs. C and D). It is also undisputed that thereafter the INSPR Mark
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`was duly registered on January 14, 2020 (SOF ¶ 6). Thus, INSPR INC (f/k/a INSPR LLC) was
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`duly formed and registered in the State of Delaware, with all rights to conduct its business -
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`including the application for and securing of a Federal Registration for its INSPR Mark.
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`The evidence is also clear and undisputed that the Trademark Office, in the ordinary
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`course of its operation, duly conducted its review and prosecution of the INSPR Application and
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`published the INSPR Application for Opposition (see SOF ¶¶ 4, 5), and then duly registered the
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`INSPR Mark (SOF ¶ 6). Thus, the INSPR Registration was fully vetted by the Trademark Office
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`in the ordinary course of its operation. Accordingly, INSPR INC obtained no more from this
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`federal administrative procedure than it was entitled to - even though INSPR INC could have
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`more promptly recorded with the Trademark Office the entity name change from INSPR “LLC”
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`to “INC”.
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`Thus, there exist no genuine issues of material fact that would support any of the Claims
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`in Petitioner’s Petition. Petitioner’s claims are therefore without merit and judgment on the
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`pleadings as a matter of law should be entered against all Counts of the Cancellation Petition.
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`E. The Undisputed Material Facts Firmly Establish That INSPR PTNRS Is
`Further Entitled To Summary Judgment On All Counts Of The Petition Because
`The INSPR Registration Ownership Designation Of “INSPR LLC” Following
`The Corporate Conversion Of INSPR “LLC” To INSPR “INC” Was Not
`“False”.
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`In order for a statement to constitute fraud at the TM Office, such statement must be
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`“false.” Torres, 1 USPQ2d at 1484. However, the continued designation of INSPR LLC as the
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`Owner/Registrant of the INSPR Registration after the corporate conversion of INSPR “LLC” to
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`“INC” was simply not false.
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`Accordingly, in addition to being entitled to summary judgment for its lack of “willful”
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`intent to deceive (see § IV.C. above), and the lack of any evidence that INSPR INC obtain
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`something it was not entitled to when it did not more promptly revise its ownership name from
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`INSPR LLC to INSPR INC (see § IV.D. above), INSPR PTNRS is also entitled to summary
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`judgment on all Counts of the Petition because its ownership and registrant designations were
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`simply not “false.”
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`As discussed above, it is undisputed that INSPR LLC was formed on or about January 9,
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`2018 (SOF ¶ 1), and was the original owner of the INSPR Application, which INSPR LLC filed
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`on or about March 15, 2018 (SOF ¶ 2). It is further undisputed that after filing the INSPR
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`Application, on August 7, 2018, INSPR LLC administratively converted its entity tax status from
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`a limited liability company to that of a corporation having the name “INSPR, INC.” under
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`Delaware law (SOF ¶ 3; see also Certificate of Conversion and associated Delaware Filing
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`Receipt, Exhs. C and D). Hence, INSPR LLC and INSPR INC are one in the same legal entity,
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`and therefore the same Owner/Registrant for the INSPR Registration.
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`While the continued designation of INSPR “LLC” as the Owner after the Corporate
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`Conversion of INSPR “LLC” to “INC” could be construed to have been incorrect, it was
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`certainly not untrue or “false” – i.e., the Owner was still the same Delaware legal entity (INSPR
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`INC f/k/a INSPR LLC), but merely with a different tax status. Consequently, the designation of
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`INSPR LLC as the owner of the INSPR Registration was not “false”, and all of the Counts in the
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`Petition must therefore fail as a matter of law. Torres, 1 USPQ2d at 1484.
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`Thus, there exist no genuine issues of material fact that would support any of the Claims
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`in Petitioner’s Petition. Petitioner’s claims are therefore without merit and judgment on the
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`pleadings as a matter of law should be entered against all Counts of the Cancellation Petition.
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`V. CONCLUSION
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`For the reasons stated herein, the undersigned respectfully request that the Board,
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`pursuant to TBMP § 512.01, substitute INSPR PTNRS in place of INSPR LLC as the Registrant
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`in the present Cancellation, and substitute Douglas D. Churovich of Churovich Law, LLC, as
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`attorney of record in place of Michael R. Graif of Mintz, Levin, Cohn, Ferris, Glovsky and
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`Popeo, P.C., and grant all such other and further relief in this regard as the Board deems
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`appropriate under the circumstances.
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`Further for at least the reasons stated herein, there exist no genuine issues of material fact
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`that would entitle Petitioner to relief on any of the Counts in the Petition. The Board should
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`therefore enter an Order granting Registrant’s Rule 12(c) Motion for Judgment on the Pleadings
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`against all Counts in the Petition, and grant all such other and further relief as the Board deems
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`just under the circumstances.
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`August 29, 2021
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`Respectfully Submitted,
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` By: s/Douglas D. Churovich /
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`Douglas D. Churovich, MO # 77,900
`Churovich Law, LLC
`11916 Paradise Lane
`Des Peres, MO 63131
`(314) 662-0711
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`ATTORNEYS FOR CURRENT REGISTRANT,
`INSPR Partners, LLC
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`By: s/Michael R. Graif/
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`Michael R. Graif
`Mintz, Levin, Cohn, Ferris, Glovsky
`and Popeo, P.C.,
`666 Third Avenue
`New York, NY 10017
`(212) 692-6287
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`ATTORNEYS FOR ORIGINAL REGISTRANT,
`INSPR IN