DC Comicsv.Gotham City Networking, Inc.

Trademark Trial and Appeal Board

Sep 24, 2008

No. 91175853 (T.T.A.B. Sep. 24, 2008)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Pologeorgis Mailed: September 24, 2008

Opposition No. 91175853

DC Comics

v.

Gotham City Networking, Inc.

Before Quinn, Drost, and Mermelstein,
Administrative Trademark Judges.

By the Board:

Gotham City Networking, Inc. (“applicant”) filed two
applications for registration. The first application is for
the mark GOTHAM BATMEN in standard characters.1 The second
application is for the mark in the following form:2

1 Application Serial No. 78899511, filed on June 2, 2006, based
on an allegation of use in commerce under Trademark Act Section
1(a), 15 U.S.C. § 1051(a), asserting dates of first use anywhere
and first use in commerce since February 1, 2006.
2 Application Serial No. 78917938, filed on June 27, 2006, based
on an allegation of use in commerce under Trademark Act Section
1(a), 15 U.S.C. § 1051(a), asserting dates of first use anywhere
and first use in commerce since February 1, 2006.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
Opposition No. 91175853

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As originally filed, both applications recited the following
identification of services: “recreational services in the
nature of sports teams.”
USPTO records demonstrate that, during the prosecution of
each of these two applications, applicant, via examiner’s
amendment, disclaimed the exclusive right to use the term
GOTHAM apart from the mark as shown and amended its
identification of services to read as follows: “entertainment
services in the nature of softball, baseball, basketball and
hockey games” in International Class 41.
On January 23, 2007, applicant’s application Serial No.
78899511 for the mark GOTHAM BATMEN in standard characters was
published for opposition as amended. Thereafter, on January
30, 2007, applicant’s application Serial No. 78917938 for the
mark GOTHAM BATMEN and design was published for opposition as
amended.
DC Comics (“opposer”) filed a notice of opposition to
registration of applicant’s marks on February 12, 2007 on the
following grounds: (1) likelihood of confusion, (2) dilution,
(3) fraud and (4) no bona fide use of the mark in commerce.
On April 16, 2007, applicant filed a motion to dismiss
opposer’s claims of likelihood of confusion and dilution on
the ground that opposer had failed to state a claim upon
which relief may be granted. On April 26, 2007, opposer
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3
filed its response to applicant’s motion to dismiss which
included a request to strike evidence outside of the
pleadings. By order dated August 18, 2007, the Board
converted applicant’s motion to one for summary judgment
inasmuch as applicant presented matters outside the
pleadings in support of its motion to dismiss.
Additionally, the Board allowed opposer additional time in
which to supplement its already filed response to
applicant’s motion. On September 10, 2007, opposer filed a
motion for Rule 56(f) continued discovery which the Board
granted, in part, by order dated September 30, 2007. On
January 25, 2008, opposer filed its response to applicant’s
motion for summary judgment concurrently with its own cross-
motion for summary judgment on its pleaded claims of fraud,
lack of a bona fide use of the mark in commerce, likelihood
of confusion and dilution.
This case now comes up for consideration of (1)
applicant’s motion for summary judgment on opposer’s claims
of likelihood of confusion and dilution and (2) opposer’
cross-motion for summary judgment on opposer’s claims of
fraud, likelihood of confusion, dilution, and lack of a bona
fide use of the mark in commerce. The motions are fully
briefed.
We first turn to opposer’s cross-motion for
summary judgment on its claim of fraud. In support of
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its motion, opposer argues that applicant has committed
fraud in attempting to procure registrations for its
involved marks, thus making the involved applications
void ab initio. Opposer asserts that applicant, at the
time it filed its involved applications, at the time it
amended its identification of services during the
examination process, and to date was not and is not
using its involved marks in commerce in connection with
all the recited services as amended. Specifically,
opposer contends that applicant has admitted in its
responses to opposer’s Rule 56(f) discovery requests
that it was not and is not using the involved marks in
commerce in connection with entertainment in the nature
of baseball, basketball and hockey games, and has only
used the marks in connection with softball games.
Opposer argues that this case is analogous to the
case of Medinol Ltd. v. Neuro Vasx, Inc., 67 USPQ2d
1205 (TTAB 2003), in which fraud was found because
there was no use of the involved mark on one of the two
listed goods in the statement of use, and applicant
admitted as much.
Thus, opposer argues that the involved
applications are invalid because applicant falsely
represented that it used its marks on the all the
recited services, as amended, when applicant knew, or
Opposition No. 91175853

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should have known, that it was not using its involved
marks in commerce on all the services identified in the
amended identification of services.
Opposer further argues that the involved
applications were signed by applicant’s counsel, David
O. Klein, who opposer asserts is also a member of
opposer’s business networking organization, as well as
a player on the softball team which is the subject of
applicant’s applications and, therefore, was clearly in
a position to have personal knowledge of the facts
concerning applicant’s own use of its marks on the
amended services identified in the involved
applications.
As evidence in support of its motion for summary
judgment on its claim of fraud, opposer submitted the
declaration of its attorney, Andrea L. Calvaruso,
through which opposer makes of record, inter alia: (a)
true and correct copies of applicant’s involved
applications, together with the examiner’s amendments
and USPTO Snapshot of the involved applications at the
time of publication from the USPTO online records, (b)
true and correct copies of applicant’s responses to
opposer’s First Set of Requests for Admissions,
applicant’s responses to opposer’s First Set of
Requests for Interrogatories, and letters from
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applicant’s counsel regarding such responses and (c) a
true and correct copy of applicant’s entire document
production in response to opposer’s discovery requests
stamped by applicant at G0T0001-GOT0202.
In response to opposer’s motion on the claim of
fraud, applicant contends that it did not commit fraud.
Applicant asserts that its involved marks have been
used in conjunction with recreational sports
entertainment since as early as February 2006, to
identify and distinguish its GOTHAM BATMEN softball
team, as well as its business networking and referral
organization. Applicant further argues that, to the
extent that applicant’s use of its involved marks to
promote interest in its business networking and
referral services was not adequately conveyed during
the registration process, not having done so was the
product of a good faith, inadvertent mistake regarding
direct and indirect use of applicant’s involved marks.
Moreover, applicant contends that, in completing its
involved applications, applicant intended to convey
that since as early as February 2006, its use of its
involved marks was limited to the promotion of
recreational sports activities in furtherance of its
sale of memberships in its business networking
organization and that the undisputed fact that its
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involved marks have only been used in conjunction with
softball is immaterial and the additional recreational
sports identified in the involved applications were
similarly the product of an inadvertent mistake
concerning applicant’s use of the involved marks.
Additionally, applicant argues that opposer’s use
of applicant’s responses to opposer’s Rule 56(f)
discovery requests to support its motion for summary
judgment on its claim of fraud is improper inasmuch as
the Board only permitted limited discovery regarding
opposer’s claim of likelihood of confusion.
As evidence in support of its opposition to
opposer’s motion for summary judgment on the claim of
fraud, applicant has submitted the affidavit of its
counsel, David O. Klein, who attests to, among other
things, applicant’s intent regarding its filing of the
involved applications.
In its reply, opposer argues that applicant’s
subjective intent does not absolve the fraud committed
by applicant. Rather, opposer argues that the
appropriate inquiry is the objective manifestation of
applicant’s intent. Moreover, opposer contends that
applicant’s alleged inadvertent mistake of including
services in its involved applications for which
applicant does not use or has ever used its marks in
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association therewith also does not cure a finding of
fraud. Finally, opposer asserts that applicant’s claim
that the Board’s September 30, 2007 order regarding the
scope of Rule 56(f) discovery precludes opposer’s use
of facts obtained as a result of such discovery to
support its own motion for summary judgment on its
claim of fraud is baseless. Indeed, opposer contends
that, to the extent applicant’s responses bear on other
issues in this opposition proceeding, such as opposer’s
fraud claim, they may be considered for summary
judgment on any of the pleaded claims at issue.
Summary judgment is an appropriate method of disposing
of cases in which there are no genuine issues of material
fact in dispute, thus leaving the case to be resolved as a
matter of law. See Fed. R. Civ. P. 56(c). A party moving
for summary judgment has the burden of demonstrating the
absence of any genuine issue of material fact, and that it
is entitled to summary judgment as a matter of law. See
Celotex Corp. v. Catrett, 477 U.S. 317 (1986), and Sweats
Fashions Inc. v. Pannill Knitting Co. Inc., 833 F.2d 1560, 4
USPQ2d 1793 (Fed. Cir. 1987). When the moving party's
motion is supported by evidence sufficient to indicate that
there is no genuine issue of material fact, and that the
moving party is entitled to judgment, the burden shifts to
the nonmoving party to demonstrate the existence of specific
genuinely-disputed facts that must be resolved at trial.
Opposition No. 91175853

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The nonmoving party may not rest on the mere
allegations of its pleadings and assertions of counsel, but
must designate specific portions of the record or produce
additional evidence showing the existence of a genuine issue
of material fact for trial. In general, to establish the
existence of disputed facts requiring trial, the nonmoving
party "must point to an evidentiary conflict created on the
record at least by a counterstatement of facts set forth in
detail in an affidavit by a knowledgeable affiant." Octocom
Systems Inc., supra at 1786, citing Barmag Barmer
Maschinenfabrik AG v. Murata Machinery, Ltd., 731 F.2d 831,
836, 221 USPQ 561, 564 (Fed. Cir. 1984). A dispute as to a
material fact is genuine only if a reasonable fact finder
viewing the entire record could resolve the dispute in favor
of the nonmoving party. See Olde Tyme Foods Inc. v.
Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542, 1544 (Fed. Cir.
1992). Finally, in deciding a motion for summary judgment,
the Board must view the evidence in the light most favorable
to the nonmovant, and must draw all reasonable inferences
from underlying facts in favor of the nonmovant. Id.
As a preliminary matter, we find that there is no
genuine issue of material fact as to opposer’s standing.
Opposer has submitted the declaration of opposer’s special
counsel, Lillian Laserson, who attests, among other things,
to the following: (1) opposer is the owner of all rights
and interests in the world-famous BATMAN comic books and
Opposition No. 91175853

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related BATMAN character, including all trademarks,
copyrights and indicia associated with BATMANM and (2) since
as early as 1939, opposer and its predecessor in interest
have used the mark BATMAN, and related marks, including the
black silhouette image of batwings with pointed edges,
family of marks with the prefix “BAT” and related indicia,
including GOTHAM CITY, in connection with its world-famous
comics and related goods and services such as television
programs, motion pictures, and licensed consumer
merchandise. Ms. Laserson’s declaration is sufficient to
show that there is no genuine issue of material fact that
opposer has a real interest in the proceedings, i.e., a
personal interest in the outcome of the proceeding, and a
reasonable basis for a belief of damage.3 See, e.g.,
Trademark Act Section 14(a), 15 U.S.C. Section 1064(a);
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842
(Fed. Cir. 2000); Universal Oil Prod. Co. v. Rexall Drug &
Chem. Co., 463 F.2d 1122, 174 USPQ 458, 459 (CCPA 1972).
Next, the Board finds applicant’s argument that opposer
is precluded from using facts obtained during the limited
Rule 56(f) discovery permitted by the Board regarding
opposer’s likelihood of confusion claim to support its claim
of fraud in its cross-motion for summary judgment
unpersuasive. The Board notes that opposer served Rule

3 The Board notes that applicant does not contest opposer’s
standing in its motion for summary judgment or in its response to
opposer’s cross-motion for summary judgment.

Opposition No. 91175853

11
56(f) discovery requests within the scope permitted by Board
order dated September 30, 2007. The Board agrees with
opposer that the fact that applicant’s responses to such
discovery may have a bearing on other issues in this
proceeding does not preclude the party seeking such
discovery from relying on facts obtained from such discovery
to support a motion for summary judgment on any other
pleaded claims at issue in the case. Indeed, applicant has
not provided any authority to the contrary. Accordingly,
opposer’s use of applicant’s responses to opposer’s Rule
56(f) discovery requests to support its own motion for
summary judgment on its claim of fraud is permissible.
We now turn to the merits of opposer’s motion for
summary judgment on its claim of fraud. Based on the record
now before us and for the reasons discussed below, we
conclude that summary judgment is appropriate because
opposer has established that there are no genuine issues of
material fact remaining for trial with regard to its claim
of fraud, and that it is entitled to a judgment on this
ground.
Fraud in procuring a trademark registration occurs when
an applicant for registration knowingly makes false, material
representations of fact in connection with an application to
register. See Torres v. Cantine Torresella S.r.l., 808 F.2d
46, 1 USPQ2d 1483 (Fed. Cir., 1986). A party making a fraud
claim is under a heavy burden because fraud must be proved
by clear and convincing evidence, leaving nothing to
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speculation, conjecture, or surmise. Any doubt must be
resolved against the party making the claim. See Smith
International, Inc. v. Olin Corporation, 209 USPQ 1033 (TTAB
1981).
There is no dispute and no genuine issue of material
fact that applicant filed its applications based on use in
commerce and provided authorization to amend its
identification of services during the prosecution of the
involved applications to specifically delineate its services
when it knew or should have known that it did not use the
involved marks in connection with all the recited services,
as amended, as of the filing dates of the applications.
Statements regarding the use of the mark on goods and
services are certainly material to issuance of a
registration. See Standard Knitting, Ltd. v. Toyota Jidosha
Kabushiki Kaisha, 77 USPQ2d 1917 (TTAB 2006)(fraud found
based on misrepresentation regarding use of the mark on most
of the goods identified in the filed applications); First
International Services Corp. v. Chuckles Inc., 5 USPQ2d 1628
(TTAB 1988) (fraud found in applicant’s filing of
application with verified statement that the mark was in use
on a range of personal care products when applicant knew it
was in use only on shampoo and hair setting lotion). See
also, General Car and Truck Leasing Systems Inc. v. General
Rent-A-Car Inc., 17 USPQ2d 1398 (D.C. S.Fla. 1990), aff’g
Opposition No. 91175853

13
General Rent-A-Car Inc. v. General Leaseways, Inc., Canc.
No. 14,870 (TTAB May 2, 1988).
The Board agrees with opposer that this case is
similar to the Medinol case. In Medinol, a trademark
application was filed, the mark was published, a statement
of use was submitted, and a registration issued for “medical
devices, namely, neurological stents and catheters.” In
response to a petition for cancellation, registrant admitted
in its answer that the mark was not used on stents. The
Board stated the following (at 1208):
The fraud alleged by petitioner is that
respondent knowingly made a material
representation to the USPTO in order to obtain
registration of its trademark for the identified
goods. There is no question that the statement
of use would not have been accepted nor would
registration have issued but for respondent’s
misrepresentation, since the USPTO will not
issue a registration covering goods upon which
the mark has not been used. (cites omitted).

Similarly, in this case there is no question that the
applications for registration under Section 1(a) of the
Trademark Act would have been refused but for applicant’s
misrepresentation regarding its use of the mark on all the
recited services, as amended, in the involved applications.
It is irrelevant that registrations have yet to issue for
applicant’s marks. The timing of the misrepresentation is
immaterial. Whether the false statements alleging use of
the mark in commerce occur at the time of filing the
application, during the examination process, or at a later
Opposition No. 91175853

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point during the USPTO’s review of the statement of use, the
result is the same--an application results in a registration
improperly accorded legal presumptions in connection with
goods and/or services on which the mark is not used.4 See
Hurley Int’l LLC v. Volta, 82 USPQ2d 1339, 1344 (TTAB 2007).
In this case, applicant has admitted that as of the
filing dates of its involved applications, as well as during
the examination process of the same, it was not using the
mark in commerce for the following services identified in
the applications, as amended: “entertainment services in
the nature of baseball, basketball and hockey games.” From
the original filing of its involved applications and
throughout the prosecution thereof, applicant continued to
assert its claim of use under Section 1(a) of the Trademark
Act. In this instance, the law is clear that an applicant
may not claim a Section 1(a) filing basis unless the mark
was in use in commerce on or in connection with all the

4 We note, however, that a misstatement in an application as to
the goods or services on which a mark has been used does not rise
to the level of fraud where an applicant amends the application
prior to publication. See Universal Overall Co. v. Stonecutter
Mills Corp., 379 F.2d 983, 154 USPQ 104 (CCPA 1967). However,
the Board further notes that applicant did not amend its
applications during the examination process to exclude
entertainment services in the nature of basketball, baseball and
hockey games. Rather, applicant amended its applications to
specifically include such services.

Opposition No. 91175853

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goods or services covered by the Section 1(a) basis as of
the application filing date. 37 C.F.R. Section
2.34(a)(1)(i). Cf. E.I. du Pont de Nemours & Co. v. Sunlyra
International, Inc., 35 USPQ2d 1787, 1791 (TTAB 1995).
Moreover, applicant’s counsel authorized the issuance of an
examiner’s amendment in each of applicant’s involved
applications during the prosecution of these applications
whereby applicant agreed to amend its identification of
services to specifically delineate its services when it knew
or should have known that it did not use the involved marks
in connection with all the recited services, as amended, as
of the filing dates of the applications. Thus, as in
Medinol, a material representation of fact with regard to
use of the mark on particular services was made by applicant
and that statement was relied upon by the USPTO in
determining applicant’s rights to registration.
The fact that applicant’s inclusion of basketball,
baseball and hockey games in its amended identification of
services was allegedly inadvertent and that applicant’s
intent, during the examination process of its involved
applications, was to convey that its use of its involved
marks was limited to the promotion of recreational sports
activities in furtherance of its sale of memberships in its
business networking organization does not change our finding
of fraud herein. It is well established that in inter
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partes proceedings “proof of specific intent is not
required, rather, fraud occurs when an applicant or
registrant makes a false material representation that the
applicant or registrant knew or should have known was
false.” General Car and Truck, 17 USPQ2d at 1400-1401.
As the Board determined in Medinol, supra at 1209, “the
appropriate inquiry is…not into the registrant’s subjective
intent, but rather into the objective manifestations of that
intent.” In Medinol, supra at 1209-1210, the Board
concluded that the facts justified a finding of fraud:
The undisputed facts in this case clearly
establish that respondent knew or should have
known at the time it submitted its statement of
use that the mark was not in use on all of the
goods. Neither the identification of goods nor
the statement of use itself was lengthy, highly
technical, or otherwise confusing, and the
President/CEO who signed the document was clearly
in a position to know (or to inquire) as to the
truth of the statements therein.

As previously indicated, applicant in the case
before us has admitted that it was not using, and
indeed never used, its involved marks for most of the
recited services, as amended, in commerce as of the
filing dates of its involved applications. Applicant
was certainly in a position to have personal knowledge
of the facts concerning its own use of its marks in
connection with the services identified in its
applications, as amended, especially since applicant’s
counsel, who filed the applications on behalf of
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applicant and who authorized the examiner’s amendments
amending the identification of services, is a co-
founder of applicant’s business network organization,
as well as a member of applicant’s GOTHAM BATMEN
softball team.
Similarly, applicant was clearly capable of
availing itself of the relevant information available
on the USPTO website regarding the various filing bases
and their specific requirements.
In view of the above, we find applicant’s material
misrepresentations made in connection with its applications
were fraudulent and, therefore, the applications are void ab
initio. Accordingly, summary judgment is entered in
opposer’s favor on the issue of fraud. The opposition is
sustained and judgment is entered against applicant solely
on the issue of fraud.
In view of our finding of fraud, we need not reach the
remaining claims of likelihood of confusion, dilution, parody,
and lack of a bona fide use of the mark in commerce raised in
the parties’ respective motions for summary judgment.