Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`ESTTA1214586
`06/09/2022
`
`ESTTA Tracking number:
`
`Filing date:
`
`Proceeding no.
`
`Party
`
`Correspondence
`address
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92079619
`
`Defendant
`NEO4J, Inc.
`
`NEO4J INC
`111 EAST 5TH AVENUE
`SAN MATEO, CA 94401
`UNITED STATES
`Primary email: tmclient@hopkinscarley.com
`No phone number provided
`
`Submission
`
`Motion for Summary Judgment
`
`Filer's name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
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`Yes, the Filer previously made its initial disclosures pursuant to Trademark Rule
`2.120(a); OR the motion for summary judgment is based on claim or issue pre-
`clusion, or lack of jurisdiction.
`
`The deadline for pretrial disclosures for the first testimony period as originally set
`or reset: 02/21/2023
`Chancellor Tseng
`
`ctseng@hopkinscarley.com
`
`/Chancellor Tseng/
`
`06/09/2022
`
`MSJ and MTD Cancellation Petition.pdf(275508 bytes )
`Tseng Decl iso MSJ and MTD.pdf(127514 bytes )
`Exhibit 1 - Registration Certificate 86267006.pdf(108886 bytes )
`Exhibit 2 - 2020 09 28 Third Amended Complaint Doc 90.pdf(1542332 bytes )
`Exhibit 3 - 2020 06 05 Defendants Second Amended Counterclaim.pdf(1409875
`bytes )
`Exhibit 4 - Rathle Declaration iso of Neo4j MSJ.pdf(349263 bytes )
`Exhibit 5 - 2019 12 09 Defendants Answer to SAC Doc 54.pdf(170141 bytes )
`Exhibit 6 - 2019 12 09 PureThink iGov First Amended CC Doc 55.pdf(1364744
`bytes )
`Exhibit 7 - 2020 02 11 Neo4j Motion for Judgment on the Pleadings doc
`60.pdf(262734 bytes )
`Exhibit 8 - 2020 05 21 Order Granting Motion for Judgment on the Plea dings
`doc 70.pdf(202903 bytes )
`Exhibit 9 - 2020 06 05 Defendants First Amended Answer to SAC.pdf(181052
`bytes )
`Exhibit 10 - 2020 06 19 Neo4j Motion to Dismiss and Strike doc 73.pdf (257412
`bytes )
`Exhibit 11 - 2020 07 06 Opposition to Neo4j Motion to Dismiss doc 78.
`pdf(187766 bytes )
`Exhibit 12 - 2020 08 20 Order Granting Neo4js Motions to Dismiss and Strike
`doc 85.pdf(1215413 bytes )
`Exhibit 13 - 2020 10 19 Defendants Answer to TAC doc 91.pdf(217510 bytes )
`Exhibit 14 - 2021 03 03 ORDER Granting Motion to Strike Doc 110.pdf(152937
`bytes )
`Exhibit 15 - 2021 01 15 Defendants Consolidated Oppo to MSJ doc 100.p
`df(2541742 bytes )
`Exhibit 16 - 2021 05 18 ORDER Granting Plaintiffs MSJ and Denying Def end-
`ants Cross-MSJ doc 118.pdf(388442 bytes )
`
`

`

`Exhibit 17 - Appellants Opening Brief.pdf(591428 bytes )
`Exhibit 18 - 2022 02 18 9th Circuit Memorandum Disposition.pdf(224349 bytes )
`Exhibit 19 - 2022 03 14 Order Denying Petition for Rehearing.pdf(341014 bytes )
`Exhibit 20 - 2014 04 30 Application for Neo4j Mark.pdf(225933 bytes )
`Exhibit 21 - 2015 04 06 Req for Reconsideration after FOA and Specim
`en.pdf(812963 bytes )
`Exhibit 22 - 2014 03 26 - Neo4j World Leading Graph Database - Neo Te chno-
`logy.pdf(413695 bytes )
`Exhibit 23 - 2014 03 26 Neo4j Commercial Subscriptions.pdf(645852 bytes )
`Exhibit 24 - Neo4j Sweden GPL License.pdf(258819 bytes )
`Exhibit 25 - AGPL - part of Exhibit C to Opposition.pdf(292886 bytes )
`Exhibit 26 - Chart of Cancellation Petition and SACC Allegations.pdf(160082
`bytes )
`Exhibit 27 - 2022.05.31 97435793 Neo4j TM Application.pdf(104897 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of U.S. Trademark Registration No. 4,784,280
`For the mark: NEO4J
`Registered: August 4, 2015
`
`
`iGov Inc.
`
`
`v.
`
`Neo4j, Inc.
`
`
`Petitioner,
`
`Registrant.
`
`
`Cancellation No.: 92079619
`
`REGISTRANT’S MOTION TO DISMISS AND FOR SUMMARY JUDGMENT
`
`I.
`
`INTRODUCTION
`
`The Petition filed by iGov Inc. and its principal John Mark Suhy (collectively “iGov” or “Petitioner”)
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`is the latest chapter in a Lanham Act action filed by Neo4j, Inc. (“Neo4j USA”) against iGov in the Northern
`
`District of California in November 2018. While iGov references that litigation in the Petition, it fails to disclose
`
`that the District Court previously dismissed with prejudice counterclaims and defenses that sought cancellation
`
`of U.S. Trademark Registration No. 4,784,280 (the “Neo4j Mark”) based on the same allegations of fraud on
`
`the PTO that are asserted in the present Petition. See Neo4j, Inc. v. PureThink, LLC, No. 5:18–CV–07182–
`
`EJD, 2020 WL 2614871 (N.D. Cal. May 21, 2020). Likewise, the District Court previously dismissed with
`
`prejudice iGov’s counterclaims and defenses based on the same theory of abandonment of the Neo4j Mark via
`
`naked licensing asserted here. See Neo4j, Inc. v. PureThink, LLC, 480 F.Supp.3d 1071 (N.D. Cal. 2020). iGov
`
`also fails to disclose that the District Court rejected the same “evidence” cited here by iGov that the Neo4j Mark
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`was invalid because Neo4j Sweden AB was the true owner of the mark when it entered summary judgment in
`
`favor of Neo4j USA, which was affirmed by the Ninth Circuit. See Neo4j, Inc. v. PureThink, LLC, No. 5:18–
`
`CV–07182–EJD, 2021 WL 2483778, at *8 (N.D. Cal. May 18, 2021), aff'd, No. 21–16029, 2022 WL 501120
`
`(9th Cir. Feb. 18, 2022), amended on denial of reh'g, No. 21–16029, 2022 WL 781037 (9th Cir. Mar. 14, 2022).
`
`Thus, warranting summary judgment in favor of Neo4j USA based on the doctrine of issue preclusion.
`
`1
`
`

`

`Even if summary judgment were not appropriate, iGov’s fraud theory based on allegations that the first
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`use dates stated in the present application for the Neo4j Mark are inaccurate is legally defective. Federal Circuit
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`and TTAB precedent makes clear that first use dates cannot constitute a material misrepresentation so long as
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`such dates precede the application date. Such is the case here. Likewise, the fact that Neo4j Sweden owns
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`foreign registrations for the Neo4j Mark and used that mark in the United States prior to registration is entirely
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`proper since the stated first use date was based on the related companies doctrine pursuant to 15 U.S.C. § 1055.
`
`As a result, iGov’s fraud theory for cancellation fails as a matter of law.
`
`iGov’s recycled allegations that Neo4j USA abandoned the Neo4j Mark via naked licensing by
`
`distributing source code underlying Neo4j® Software via the AGPL and GPL copyright licenses also fail as a
`
`matter of law. This does not meet the definition of abandonment under 15 U.S.C. § 1127, especially since there
`
`are no allegations establishing that the Neo4j Mark has lost significance. iGov’s abandonment theory also fails
`
`as a matter of law because the AGPL and GPL are not trademark licenses, thus third party modification of the
`
`licensed source code and an alleged lack of quality control over such modified software do not amount to naked
`
`licensing. In any event, two other federal courts have already specifically addressed these licenses and held
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`that they establish an intent to control trademark rights rather than an intent to relinquish them. Accordingly,
`
`the Board should dismiss the present Petition.
`
`II.
`
`FACTUAL AND PROCEDURAL BACKGROUND
`
`
`
`Neo4j Sweden, Neo4j USA and the Neo4j Mark
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`In conjunction with its business, Neo4j USA filed for and obtained U.S. Trademark Registration No.
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`4,784,280 for the word mark “NEO4J” (the “Neo4j Mark”) covering the goods and services in International
`
`Classes, 009, 035, 041, 042 and 045 (the “Neo4j Registration”). See Declaration of Chancellor W. Tseng
`
`(“Tseng Decl.”), Ex. 1. Neo4j USA is the parent corporation of Neo4j Sweden AB (“Neo4j Sweden”), which
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`in turn is a wholly owned subsidiary of Neo4j USA, and the two are related companies under 15 U.S.C. § 1127.
`
`See Tseng Decl., Ex. 4 at ¶¶ 3–4; accord id., Ex. 3 (“SACC”) at ¶ 89. Neo4j USA specializes in graph database
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`management systems and offers its graph database platform (the “Neo4j® Software”) and related goods and
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`services in connection with the Neo4j Mark throughout the world, including in the United States. Neo4j Sweden
`
`2
`
`

`

`and Neo4j USA have historically licensed the copyrights to the Neo4j® Software, including the underlying
`
`source code, under open source copyright licenses and proprietary copyright licenses, none of which grant rights
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`to use the Neo4j Mark. Tseng Decl., Ex. 4 at ¶¶ 4–15.
`
`
`
`Neo4j USA Files a Lanham Act Action Against iGov and its Founder Suhy
`
`On November 28, 2018, Neo4j USA filed a Lanham Act action in the Northern District of California
`
`(“the Federal Case”) against PureThink and its successor–in–interest, iGov, and their founder John Mark Suhy
`
`(collectively “Defendants”). See Neo4j, 480 F.Supp.3d at 1073–74. Neo4j USA’s claims are based on its rights
`
`in the Neo4j Mark and, inter alia, Defendants’ unauthorized use of the same in the sale and advertising of their
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`graph database solutions and software and related support services. Id.; see also Tseng Decl., Ex. 2.
`
`
`
`iGov Asserts Naked Licensing and Fraud Counterclaims and Affirmative Defenses
`
`On November 25, 2019, Neo4j USA filed a Second Amended Complaint. In response, iGov filed an
`
`answer asserting affirmative defenses for cancellation of Trademark Procured by Fraud based on Neo4j USA
`
`allegedly misrepresenting the dates of first use for the Neo4j Mark. See Tseng Decl., Ex. 5 at 18:20–19:3. iGov
`
`also asserted an affirmative defense for abandonment of the Neo4j Mark based on alleged “confusion whether
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`that is a company name trademark or product name trademark” and “by Neo4J Sweden’s open source license
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`for the Neo4J software.” Id. at 19:12–25. iGov further alleged abandonment of the Neo4j Mark based on the
`
`open source licensing of source code for Neo4j® Software under the GPL and AGPL copyright licenses. Id.
`
`iGov asserted these defenses as identical cancellation counterclaims. See id., Ex. 6 at ¶¶ 85–86, 88–92.
`
`
`
`The District Court Grants Neo4j USA’s Motion for Judgment on the Pleadings
`
`1.
`
`The District Court Dismisses iGov’s Fraud Arguments With Prejudice
`
`Neo4j USA moved for judgment on the pleadings on iGov’s cancellation counterclaim and affirmative
`
`defense alleging fraud on the PTO (“Fraud Arguments”). See Tseng Decl., Ex. 7 at 8:17–10:8. These arguments
`
`failed as a matter of law because an alleged misstatement of the date of first use in commerce of a mark is not
`
`material to the registration for the Neo4j Mark. See id. at 10:11–11:24. In response, iGov conceded that its
`
`Fraud Arguments were not legally viable, and as a result the District Court dismissed/struck iGov’s Fraud
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`Arguments with prejudice. See Tseng Decl., Ex. 8 at 8:4–18.
`
`3
`
`

`

`2.
`
`The District Court Finds iGov’s Naked Licensing Theory to be Non–Viable
`
`Neo4j USA also moved for judgment on the pleadings, in part, on iGov’s naked licensing theory based
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`on allegations that it had abandoned the Neo4j Registration due to Neo4j Sweden’s licensing of the underlying
`
`source code for Neo4j® Software via the open source GPL and AGPL copyright licenses. See Tseng Decl.,
`
`Ex. 7 at 11:25–15:24. On May 21, 2020, the District Court granted Neo4j USA’s motion, agreeing that iGov’s
`
`naked license theory failed as a matter of law because the open source licensing of software via the GPL and
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`AGPL constitutes an intent to control trademark rights, not a relinquishment of rights. Tseng Decl., Ex. 8 at
`
`10:26–13:14. This was because “the absence of specific quality control provisions—either in the GPL, AGPL,
`
`or in a separate trademark license—is not dispositive,” and in fact, “the notice requirements in the GPL and
`
`AGPL evidence an effort to control the use of the mark.” Id. at 13:15–23. It further held that “the fact that
`
`Plaintiff distributed Neo4j software on an open source basis pursuant to the GPL and AGPL is not, without
`
`more, sufficient to establish a naked license or demonstrate abandonment.” Id. at 13:24–26. However, the
`
`Court granted leave to amend only “[t]o the extent that Defendants are able to allege that Plaintiff failed to
`
`exercise actual control over licensees’ use of the trademark.” Id. at 13:27–14:2.
`
`
`
`The District Court Dismisses and Strikes Defendants’ Further Amended Naked License
`Counterclaim and Affirmative Defense With Prejudice
`
`iGov filed its Second Amended Counterclaim and First Amended Answer asserting the same naked
`
`licensing counterclaim and defense. Tseng Decl., Exs. 3 and 9. The core of iGov’s naked licensing theory
`
`remained that distribution of the source code for the Neo4j® Software under the terms of the AGPL and GPL
`
`amounted to naked licensing of the Neo4j Mark. iGov extended that theory to Neo4j USA’s predecessor–in–
`
`interest and current wholly–owned subsidiary and related company, Neo4j Sweden. Id., Ex. 3, ¶¶ 85–97. iGov
`
`further alleged that because third parties could modify the source code for Neo4j® Software under these
`
`licenses, Neo4j USA and Neo4j Sweden’s failure to exercise any quality control over the modified software
`
`amounted to the naked licensing of the Neo4j Mark. Id. Ex. 3, at ¶¶ 89–95; see also Ex. 9 at 19:7–23:17.
`
`Neo4j USA filed a motion to dismiss and motion to strike as these new allegations were part of the
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`same nucleus of facts as those in iGov’s prior pleadings and failed to cure the defects identified by the District
`
`4
`
`

`

`Court’s order. Tseng Decl., Ex. 10. In response, iGov simply reargued that the terms of the GPL and AGPL
`
`failed to establish control over third party modified versions of Neo4J® Software as required to maintain the
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`Neo4j Mark. Tseng Decl., Ex. 11 at 5:13–17. And, because Neo4j Sweden did not allegedly control use of the
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`mark with modified versions of the open source software, “[w]hen Neo4J USA obtained rights to the Neo4J
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`trademark years later, the Neo4J trademark was already abandoned by Neo4J Sweden’s lack of contractual and
`
`actual or adequate quality control for third party’s extensive use of the Neo4J trademark.” Id. at 5:1–6:3.
`
`On August 20, 2020, the District Court granted Neo4j USA’s motion, again rejecting iGov’s naked
`
`licensing theory based on inadequate quality control over third party modifications of open source versions of
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`software utilizing the source code licensed under the GPL and the AGPL. Tseng Decl., Ex. 12 at 7:18–10:17.
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`The District Court did so because “[t]he GPL and the AGPL are copyright licenses, not trademark licenses” and
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`that “[t]hird party developers who modify the open source version of the [Neo4j®] software pursuant to the
`
`GPL or AGPL do not have any right to use the [Neo4j Mark] absent a separate trademark license agreement”
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`Id. at 7:27–8:7. Further, because there was no allegation or evidence of Neo4j USA or Neo4j Sweden licensing
`
`the Neo4j Mark to these third parties, iGov’s naked license theory simply did “not fit comfortably within the
`
`doctrine of naked licensing.” Id. at 8:8–10:6. Likewise, because iGov failed to allege any facts establishing
`
`that either Neo4j USA or Neo4j Sweden actually licensed the Neo4j Mark, let alone failed to exercise any
`
`control under such license, iGov failed to establish abandonment of the Neo4j Mark via naked licensing based
`
`on the open source licensing of source code for the Neo4j® Software. Id. As a result, the District Court
`
`dismissed iGov’s Abandonment of Trademark counterclaim and struck its affirmative defense for Naked
`
`License Abandonment of Trademark with prejudice. Id. at 12:2–3 (emphasis in original.)
`
`
`
`The District Court Reaffirms that Petitioner’s Fraud Arguments and Naked Licensing
`Theories are Not Legally Viable
`
`On September 9, 2020, Neo4j USA filed its Third Amended Complaint. Tseng Decl., Ex. 2. A month
`
`later, iGov filed its answer wherein it resuscitated the same fraud cancelation defense it previously conceded to
`
`be unmeritorious – that the stated dates of first use of the Neo4j Mark were false because Neo4j USA did not
`
`exist at that time. Tseng Decl., Ex. 13 at 20:11–21:2. iGov further alleged that Neo4j USA committed fraud by
`
`5
`
`

`

`failing to disclose to the PTO that it was not the owner of the Neo4j Mark because it only had a non–exclusive
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`license from Neo4j Sweden for that mark. See id. iGov also attempted to revive its naked licensing defense by
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`re–alleging that the open source licensing of source code underlying the Neo4j® Software constituted naked
`
`licensing of the Neo4j Mark because there were no quality control provisions under the GPL and AGPL and
`
`licensees allegedly have the unfettered right to modify, use and distribute modified versions of Neo4j® graph
`
`database software. Id. at 21:11–22:9.
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`Neo4j USA moved to strike those defenses because they remained fatally defective as a matter of law.
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`On March 3, 2021, the District Court issued an order granting the motion, holding that the legal theories and
`
`facts underpinning iGov’s defenses were not new and were improperly re–raised by iGov. Tseng Decl., Ex. 14
`
`at 4:22–6:4. As a result, the District Court once again struck those defenses and made clear that iGov was “not
`
`permitted to reassert any affirmative defense or counterclaim in this action based on the cancellation or
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`abandonment theories asserted in the stricken defenses.” Id. at 6:2–4.
`
`
`
`The District Court Grants Summary Judgment in Favor of Neo4j USA
`
`On December 11, 2020, Neo4j USA filed a partial motion for summary judgment on the liability
`
`elements of its Lanham Act claims. In opposition to that motion, iGov asserted the same arguments made in
`
`the present Petition that the Neo4j Mark was invalid because Neo4j USA was not the true owner of that mark
`
`based on Neo4j Sweden only granted Neo4j USA a non–exclusive license thereto. Tseng Decl., Ex. 15 at
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`11:11–14, 13:4–14:9; Petition, Ex. A at ¶¶ 2–5.1 iGov also argued that Neo4j Sweden’s ownership of foreign
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`registrations for the Neo4j Mark purportedly evidenced that Neo4j USA did not have the right to register the
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`mark in the United States. Tseng Decl., Ex. 15 at 13:21–23; Petition, Ex. A at ¶ 7 and Ex. 3.
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`On May 18, 2020, the District Court granted summary judgment in favor of Neo4j USA, finding the
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`registration for the Neo4j Mark to be valid and issuing a preliminary injunction against iGov from infringing
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`the Neo4j Mark. Tseng Decl., Ex. 16 at 14:3–18:1; 32:15–34:18. The District Court recognized that the
`
`
`1 iGov only attached one of the declarations filed in opposition to Neo4j USA’s summary judgment motion as
`Exhibit A to the Petition in an apparent effort to hide the fact it is raising the same arguments before the PTO.
`
`6
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`

`

`ownership of a mark between a parent and wholly owned subsidiary was unnecessary when deciding whether
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`a registration of a mark was valid. Id. at 15:20–17:4. Specifically, the Federal Circuit previously “rejected the
`
`idea that a trademark registered by a parent company could be invalidated simply based on the fact that the
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`company’s wholly owned subsidiary technically owned the marks.” Id. at 16:22–24.
`
` The District Court also relied upon the express language of TMEP that “[e]ither a parent corporation
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`or a subsidiary corporation may be the proper applicant, depending on the facts concerning ownership of the
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`mark” and that the PTO “will consider the filing of the application in the name of either the parent or the
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`subsidiary to be the expression of the intention of the parties as to ownership in accord with the arrangements
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`between them.” Id. at 17:5–13 (emphasis original). Thus, the fact that Neo4j USA had obtained a US
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`registration for the Neo4j Mark established that Neo4j Sweden considered Neo4j USA to be the owner of the
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`mark in the US at the time of registration. Id. at 17:14–18. Citing TMEP § 1201.01, the District Court further
`
`held that since it was undisputed that (1) “that Neo4j USA wholly owns and controls Neo4j Sweden and did so
`
`at the time of the registration;” and (2) “Neo4j USA is also the only party who exercises control over the mark
`
`in the United States,” the alleged non–exclusive license between those related companies “alone [was]
`
`insufficient to rebut the presumption of ownership from which Neo4j USA benefits as the registrant of the
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`Neo4j Mark, especially where significant evidence supports that presumption.” Id. at 17:19–18:1.
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`
`
`The Ninth Circuit Affirms the Validity of the Neo4j Mark
`
`Since the District Court issued a preliminary injunction, iGov was able to immediately appeal the
`
`findings upon which it was based to the Ninth Circuit. See Tseng Decl., Ex. 17 at p. 22 of 54. In doing so,
`
`iGov once again argued (under the guise of standing) that the registration for the Neo4j Mark was invalid
`
`because Neo4j Sweden had only granted Neo4j USA a non–exclusive license for the Neo4j Mark. Id. at pp.
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`23–26 of 54; see also id. at p. 10 of 54, fn 2 (“the trial court’s resolution of the fraud issue does not foreclose
`
`the issues regarding standing and trademark validity discussed in this brief”). The appellate court ultimately
`
`affirmed the trial court’s order in a memorandum of disposition, and also denied iGov’s petition for a rehearing
`
`where it expressly stated that “[n]o future petitions for rehearing or rehearing en banc will be entertained.” See
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`Tseng Decl., Exs. 18–19.
`
`7
`
`

`

`
`
`iGov’s Petition Raises Identical Grounds for Cancellation of the Neo4j Registration
`
`On April 29, 2022, iGov filed the present cancellation proceedings. Remarkably, iGov reasserts the
`
`same fraud theory that it conceded in the Federal Case was legally deficient. Namely, that Neo4j USA could
`
`not have first used the Neo4j Mark in June 2006 as stated in the application because it did not yet exist. Compare
`
`Petition, ¶¶ 1, 8–10, 15–16, 18–19 and Tseng Decl., Ex. 6 at ¶¶ 88–92. iGov also re–alleges that because Neo4j
`
`Sweden only gave Neo4j USA a non–exclusive license, Neo4j USA was not the owner of the Neo4j Mark when
`
`it obtained the registration for the Neo4j Mark.2 Compare Petition, ¶¶ 1, 4–5, 7–8, 11–12, 15–16; and Tseng
`
`Decl., Ex. 15 at 11:11–14, 13:4–14:9; Petition, Ex. A at ¶¶ 2–5. iGov again cites to the same foreign
`
`registrations for the Neo4j Mark held by Neo4j Sweden as “evidence” that Neo4j USA did not have the right
`
`to register the Neo4j Mark in the United States.3 Compare Petition, ¶ 24 and Ex. D and Petition, Ex. A at ¶ 7
`
`and Ex. 3; see also Tseng Decl., Ex. 15 at 13:21–23.
`
`Similarly, iGov asserts the same naked licensing theory that the District Court held was insufficient as
`
`a matter of law. iGov re–alleges that the licensing of copyrights covering the source code for Neo4j® Software
`
`under the GPL and AGPL existed amounted to naked licensing because Neo4j Sweden did not implement any
`
`further quality controls beyond those licenses. Compare Petition, ¶¶ 32–39 and Tseng Decl., Ex. 3, ¶¶ 86–88,
`
`91. As a result, when Neo4j USA “obtained rights to the Neo4J trademark years later, the Neo4J trademark
`
`was already abandoned by Neo4J Sweden AB’s lack of contractual and actual or adequate quality control for
`
`third party’s extensive use of the Neo4J trademark.” Compare Petition, ¶ 33 and Tseng Decl., Ex. 3, ¶ 86.
`
`iGov further re–alleges that even after Neo4j USA was incorporated and was assigned the rights in the
`
`Neo4j Mark, “Neo4J Sweden AB has not exercise contractual control over GPL and AGPL licensee’s use of
`
`
`2 In addition, iGov asserts this was not true on June 21, 2017 when Neo4j USA submitted an assignment
`reflecting a name change to the USPTO (Petition, ¶¶ 22–23), and when Neo4j USA submitted a Section 8
`declaration of use on July 30, 2021 (id., ¶¶ 26–28). However, iGov cites to no new or additional facts purporting
`to establish that Neo4j USA was not the owner of the Neo4j Mark at those times.
`
`3 iGov also cites to a “canceled registration” that mistakenly listed Neo4j Sweden as the owner of a logo that
`uses “Neo4j.” Petition, ¶ 25. iGov misrepresents the referenced filing, which is merely a foreign based,
`abandoned application. The abandoned application is also immaterial since a corrected US–based application
`(S/N 97435793) was refiled indicating that Neo4j USA is the user and owner of the logo in the United States.
`See Tseng Decl., Ex. 27. This is consistent with the ownership of the Registration subject to the present Petition.
`
`8
`
`

`

`the Neo4J trademark.” Compare Petition, ¶ 35 and Tseng Decl., Ex. 3, ¶¶ 88–89. And, that because Neo4j
`
`USA is not the licensor of the source code for Neo4J® Software under the GPL and AGPL licenses, it “has no
`
`privity of contract to control GPL and AGPL licensees [sic] use of the Neo4J trademark [and] cannot rely on
`
`contract terms to show any control.” Compare Petition, ¶ 36 and Tseng Decl., Ex. 3, ¶ 90. iGov re–alleges in
`
`contradictory fashion that “[t]he GPL and AGPL provide that a licensee must carry prominent notices stating
`
`that you modified it and giving a relevant date.” Compare Petition, ¶ 35 and SACC, ¶ 89. Yet, it simultaneously
`
`maintains that this requirement “does not control quality to maintain the Neo4J trademark” and any person
`
`could modify the source code and convey the modified Neo4j® Software to under the GPL and AGPL licenses.
`
`Compare Petition, ¶¶ 35, 38 and Tseng Decl., Ex. 3, ¶¶ 89, 92–94. iGov then concludes that “[b]ecause Neo4j
`
`Sweden and Neo4j, Inc had no contractual controls and did not exercise actual and adequate controls over the
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`prolific use of the Neo4j trademark by third parties who modified / forked and conveyed modified / forked
`
`versions of Neo4j software, the trademark should be deemed abandoned under the doctrine of naked licensing.”
`
`Compare Petition, ¶¶ 36–37 and Tseng Decl., Ex. 3, ¶¶ 90, 97.
`
`Once again, iGov cites to the same third party repositories that it baselessly assumes could potentially
`
`be third party modified software purporting to bear the Neo4j Mark. Compare Petition, ¶¶ 33, 37–38 and Tseng
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`Decl., Ex. 3, ¶¶ 85, 91–95. Yet, iGov still does not allege any specific examples of where either Neo4j USA
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`or Neo4j Sweden failed to exercise actual quality control over Neo4j® Software (third party modified or
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`otherwise) or where the public was deceived into believing such modified software was an official unmodified
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`version of Neo4j® Software, and instead relies on the fact that third parties modified and distributed source
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`code for the Neo4j® Software as expressly contemplated by the GPL and AGPL. See id.
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`III.
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`APPLICABLE LEGAL STANDARDS
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`A motion to dismiss for failure to state a claim upon which relief can be granted tests the legal
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`sufficiency of a complaint. Advanced Cardiovascular Sys., Inc. v. Scimed Life Sys., Inc., 988 F.2d 1157, 1160
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`(Fed. Cir. 1993). In order to withstand such a motion, a “petitioner’s complaint must allege facts which would,
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`if proved, establish that: (1) petitioner has standing to maintain the proceeding; and (2) there is a valid ground
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`for cancelling” the registration. Robert Doyle v. al Johnsons Swedish Rest. & Butik, Inc., 101 USPQ2d 1780
`
`9
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`

`

`(T.T.A.B. 2012). To survive a motion to dismiss, a petition for cancellation must contain sufficient factual
`
`matter to “state a claim to relief that is plausible on its face.” Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 570
`
`(2007). When seeking to cancel a registration based on alleged fraud in procuring a trademark registration, the
`
`petitioner must plead such a claim “with particularity” under the heighted pleading standards of of Fed. R. Civ.
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`P. 9(b). See 37 C.F.R. § 2.116(a). A pleading that simply alleges the substantive elements of fraud, without
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`setting forth the particularized factual bases does not satisfy the heighted pleading requirements of Rule 9(b).
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`Exergen Corp. v. Wal–Mart Stores Inc., 575 F.3d 1312, 1326–27 (Fed. Cir. 2009).
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`While the Board may construe a petition to cancel in the light most favorable to the petitioner and
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`accept its allegations as true, it is not required to accept as true legal conclusions or unwarranted factual
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`inferences. Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (citing Twombly, 550 U.S. at 555). The Board may
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`consider exhibits to the petition and any attached exhibits without converting a motion to dismiss to one for
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`summary judgment. See In re Bill of Lading Transmission and Processing System Patent Litig., 681 F.3d 1323,
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`1337 (Fed. Cir. 2012); F.R.Civ.P. 10(c); accord Caymus Vineyards v. Caymus Medical, Inc., 107 USPQ2d
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`1519, 1522 fn. 3 (TTAB 2013) (considering exhibits attached to applicant's first amended answer and
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`counterclaim in ruling on motion to dismiss) (citing same). It must also consider “other sources courts
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`ordinarily examine when ruling on Rule 12(b)(6) motions to dismiss, in particular, documents incorporated into
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`the complaint by reference, and matters of which a court may take judicial notice. Tellabs, Inc. v. Makor Issues
`
`& Rts., Ltd., 551 U.S. 308, 322 (2007). “In ruling on a 12(b)(6) motion, a court need not ‘accept as true
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`allegations that contradict matters properly subject to judicial notice or by exhibit….’” Secured Mail Sols. LLC
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`v. Universal Wilde, Inc., 873 F.3d 905, 913 (Fed. Cir. 2017) (internal citation omitted).
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`Where a registrant moves for the dismissal of a petition based on the doctrine of issue preclusion, the
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`Board treats it as a motion for summary judgment that may be filed prior to parties making their initial
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`disclosures. See 37 C.F.R. § 2.127(e)(1); Freki Corp. N.V. v. Pinnacle Entm't, Inc., 126 USPQ2d 1697 (TTAB
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`2018). The Board may grant summary judgment where the movant shows the absence of any genuine dispute
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`of material fact, and that it is entitled to judgment as a matter of law. Freki Corp., 126 USPQ2d at 1700
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`(granting summary judgment in favor of applicant where opposer had unsuccessfully asserted a naked license
`
`10
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`

`

`defense in a prior action). The movant merely has the initial burden of demonstrating that there is no genuine
`
`dispute of material fact remaining for trial and that it is entitled to judgment as a matter of law. See Fed. R. Civ.
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`P. 56(c); see also Celotex Corp. v. Catrett, 477 U.S. 317, 322–24 (1986).
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`When the moving party sufficiently demonstrates that there is no genuine dispute of material fact, and
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`that it is entitled to judgment, the burden shifts to the nonmoving party to demonstrate the existence of specific
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`genuinely disputed facts that must be resolved at trial. Freki Corp., 126 USPQ2d at 1700. The nonmoving party
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`may not rest on the mere allegations of its pleadings and assertions of counsel, but “must point to an evidentiary
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`conflict created on the record [,] at least by a counterstatement of facts set forth in detail in an affidavit by a
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`knowledgeable affiant.” Octocom Sys., Inc. v. Hous. Computs. Servs., Inc., 918 F.2d 937, 940 (Fed. Cir. 1990).
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`As discussed below, summary judgment is appropriate because iGov’s Petition is barred by the
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`doctrines of issue preclusion and judicial estoppel. Alternatively, iGov fails to state legally viable theories of
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`fraud and abandonment via naked licensing, and the Board should dismiss the Petition. If the Board is not
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`inclined to dismiss the Petition in its entirety at this time, however, it should suspend the present proceedings
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`pending the final resolution of the Federal Action. See TBMP § 510.02(a); 37 C.F.R. § 2.117(a).
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`THE BOARD SHOULD GRANT SUMMARY JUDGMENT IN FAVOR OF NEO4J USA
`BASED ON THE DOCTRINE OF ISSUE PRECLUSION
`
`IV.
`
`
`
`
`
`The Doctrine of Issue Preclusion Bars iGov From Re–Litigating the Validity of the
`Registration Based on Neo4j USA not being the Owner of the Neo4j Mark
`
`As recognized by the Supreme Court, “[w]hen a district court, as part of its judgment, decides an issue
`
`that overlaps with part of the TTAB’s analysis, the TTAB gives preclusive effect to the court’s judgment.” B
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`& B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138, 152–53 (2015). Issue preclusion can bar the re–
`
`litigation of the same issue of law or fact in a second proceeding. Under this doctrine, “the second action is
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`upon a different cause of action and the judgment in the prior suit precludes re–litigation of issues actually
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`litigated and necessary to the outcome of the first action.” Montana v. United States, 440 U.S. 147, 153–55
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`(1979). Issue preclusion bars the re–litigation of an issue of law or fact regardless of whether or not the two
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`proceedings are based on the claim. In re Freeman, 30 F.3d 1459, 1465 (Fed. Cir. 1994). The application of
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`issue preclusion thus requires: “(1) identity of an issue in a prior proceeding, (2) the identic