ESTTA Tracking number:
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`ESTTA1339509
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`Filing date:
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`02/11/2024
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding no.
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`92082469
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`Party
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`Correspondence
`address
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`Defendant
`Medicom Technologies
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`TREVOR P. SCHMIDT
`HUTCHISON PLLC
`701 CORPORATE CENTER DRIVE, SUITE 250
`RALEIGH, NC 27607
`UNITED STATES
`Primary email: tschmidt@hutchlaw.com
`Secondary email(s): tmgroup@hutchlaw.com, maulin.shah@envisionip.com
`919-829-9600
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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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`Other Motions/Submissions
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`Trevor P. Schmidt
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`tschmidt@hutchlaw.com, tmgroup@hutchlaw.com
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`/Trevor P. Schmidt/
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`02/11/2024
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`Attachments
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`Opposition_Motion_Dismiss_Amended_Counterclaim.pdf(213447 bytes )
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`In the matter of Trademark
`Registration No. 5,528,767
`Filing Date: November 27, 2017
`Registration Date: July 31, 2018
`Mark: MEDICOM
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`AMD MEDICOM INC.,
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`Petitioner,
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`MEDICOM TECHNOLOGIES,
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`Respondent.
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`) Cancellation No. 92082469 (parent case)
`) Cancellation No. 92082470
`) Cancellation No. 92082471
`) Cancellation No. 92082472
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`RESPONDENT MEDICOM TECHNOLOGIES’ OPPOSITION TO PETITIONER AMD
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`MEDICOM’S MOTION TO DISMISS RESPONDENT’S AMENDED COUNTERCLAIM
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`Medicom Technologies, Inc. (“Respondent”), by and through its counsel, hereby responds
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`to the Motion to Dismiss Respondent’s Amended Counterclaim (the “Motion”) filed by AMD
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`Medicom Inc. (“Petitioner”).
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`Respondent’s Answer to Amended Petition to Cancel, includes amended counterclaims (the
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`“Amended Counterclaim”) seeking cancellation of Petitioner’s U.S. Trademark Reg. Nos. 4,800,112
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`and 6,617,480 for the MEDICOM and MEDICOM and Design marks, respectively, (the “AMD
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`Registrations”) on the grounds that Petitioner has discontinued the use of the MEDICOM and/or
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`MEDICOM and Design marks with the intent not to resume use of the marks in connection with a
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`number of goods recited in the registrations and on the basis that Petitioner made material false
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`statements in connection with the applications to register the MEDICOM and MEDICOM and
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`Design marks.
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`In response to Respondent’s Amended Counterclaim, Petitioner filed a Motion to Amend the
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`AMD Registrations and a Motion to Dismiss the Amended Counterclaim asserting only that
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`Respondent has failed to plead its fraud claims with particularity. The Motion to Amend the AMD
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`Registrations seemed intent on trying to avoid the fraud and abandonment claims raised by
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`Respondent by deleting those goods that had been abandoned and are the subject of Respondent’s
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`fraud claims. As Respondent did not consent to the Motion to Amend the AMD Registrations, and
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`was not otherwise permissible, the Board has deferred a ruling on the Motion to Amend. Respondent
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`now addresses the allegations in Petitioner’s Motion to Dismiss.
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`Respondent’s Amended Counterclaim, avers facts that establish Respondent has entitlement
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`to a statutory cause of action and a valid statutory ground for cancelling Petitioner’s registrations.
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`Respondent’s counterclaim asserting fraud, identifies with particularity facts, which at this stage are
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`to be taken as true, and that establish Petitioner knowingly made a false, material representation of
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`fact in connection with its underlying applications, with the intent to deceive the USPTO.
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`ARGUMENT
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`To sufficiently plead fraud, Respondent must allege that Petitioner knowingly made a false,
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`material representation of fact in connection with its underlying application, with the intent to
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`deceive the USPTO. See In re Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938, 1941 (Fed. Cir.
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`2009). “Knowledge” and “intent” may be averred generally so long as Respondent pleads
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`sufficient facts from which the Board may reasonably infer that a specific individual (1) knew of
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`the withheld material information or of the falsity of the material misrepresentation, and (2)
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`withheld or misrepresented this information with a specific intent to deceive the PTO. See Exergen
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`Corp. v. Wal-Mart Stores, Inc., 91 USPQ2d 1656, 575 F.3d 1312, 1328–29 (Fed. Cir. 2009).
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`Allegations based on ‘information and belief’ are permitted under Rule 9(b) if the pleading sets forth
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`the facts upon which the belief is founded. Id. at 1330. An allegation based on information and belief
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`is especially appropriate when essential information lies uniquely within the other party’s control. Id.
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`To plead the circumstances of the fraud with the particularity required under Rule 9(b), the
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`pleading must “identify the specific: who, what, when, where, and how of the material
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`misrepresentation or omission committed before the PTO.” Id. at 1326. Respondent’s amended
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`counterclaims expressly identifies the specific who, what, when, where, and how of the material
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`misrepresentation committed by Petitioner.
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`Respondent’s Amended Counterclaim includes allegations that Guillaume Laverdure, the
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`Chief Operating Officer of Petitioner, signed a Statement of Use on June 18, 2015, in connection
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`with the application that became U.S. Registration Number 4,800,112 that claimed, pursuant to a
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`sworn declaration, the mark was in use in connection with all of the goods within the application.
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`See Amended Counterclaim ⁋ 8. Respondent’s Amended Counterclaim also includes allegations
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`that Guillaume Laverdure was in a position to have direct knowledge as to the goods being offered
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`by Petitioner by virtue of his role as Chief Operating Officer of Petitioner. See Amended
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`Counterclaim ⁋ 9. The Amended Counterclaim further avers facts that Petitioner was not using
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`the MEDICOM mark in connection with all of the goods in its application and had not been using
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`the mark with all of the goods in its application for over a year prior to the date of the Statement
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`of Use. See Amended Counterclaim ⁋ 9 and Exhibit G. Mr. Laverdure’s position, combined with
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`allegations concerning the extended non-use of the MEDICOM mark with all of the goods within
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`the application provide specific facts and circumstances that would allow the Board to conclude
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`that Guillaume Laverdure had knowledge that his representation in the Statement of Use was false.
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`See Amended Counterclaim ⁋ 9 and Exhibit G. As the application to register the MEDCIOM mark
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`would not have issued to registration in connection with the same goods and services but for this
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`false representation, and the purpose of such a knowing misrepresentation is necessarily to secure
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`protection for a mark with goods and services not currently in use, Respondent has pleaded the
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`circumstances of Petitioner’s fraud with the requisite particularity to allow a reasonable trier of
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`fact to infer that Petitioner had the necessary intent to commit fraud on the USPTO. See Exergen
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`Corp, 575 F.3d at 1328.
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`Alternatively, the Amended Counterclaim asserts that the claim of use with all of the goods
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`within the application, when there is evidence that the mark was not in use with all of the goods in
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`the application, was made with a reckless disregard for the truth of the statement. See Amended
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`Counterclaim ⁋ 9. A ‘reckless disregard’ satisfies the requisite intent for fraud on the USPTO.
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`See Chutter, Inc. v. Great Management Group, LLC v. Great Concepts, LLC, 2021 WL 4494251,
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`Opposition No. 91223018 and Cancellation No. 92061951 (TTAB Sept. 30, 2021)(“reckless
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`disregard satisfies the requisite intent for fraud on the USPTO in trademark matters”). “Documents
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`submitted to the USPTO must be investigated and read thoroughly before filing” given the nature
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`of the declaration that accompanies such filings. Id. at 6. At a minimum the Statement of Use
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`signed by Guillaume Laverdure manifests a reckless disregard for the truth of the matter asserted
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`in the Statement of Use.
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`Respondent’s Amended Counterclaim also includes allegations that Corey Pedneault, the
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`Senior Vice-President of Finance and Sales Operations signed an Amendment to Allege Use on
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`April 23, 2021, in connection with the application that became U.S. Registration Number
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`6,617,480 that claimed, pursuant to a sworn declaration, the MEDICOM and Design mark was in
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`use in connection with all of the goods within the application. See Amended Counterclaim ⁋ 11.
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`Respondent’s amended counterclaim also includes allegations that Corey Pedneault was in a
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`position to have direct knowledge as to the goods being offered by Petitioner by virtue of his role
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`as Senior Vice-President Finance and Sales Operations with Petitioner. See Amended
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`Counterclaim ⁋ 12. Respondent has also averred facts that suggest Petitioner was not using the
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`MEDICOM and Design mark in connection with all of the goods in its application and had not
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`been using the mark with all of the goods in its application for over three years prior to the date of
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`the Amendment to Allege Use. See Amended Counterclaim ⁋ 12 and Exhibit D and G. Mr.
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`Pedneault’s position, combined with allegations concerning the extended non-use of the
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`MEDICOM and Design mark with all of the goods within the application provide specific facts
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`and circumstances that would allow the Board to conclude that Corey Pedneault had knowledge
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`that his representation in the Amendment to Allege Use was false. As the application to register
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`the MEDCIOM and Design mark would not have issued to registration in connection with the
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`same goods and services but for the false representation, and the purpose of such a knowing
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`misrepresentation is necessarily to secure protection for a mark with goods and services not
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`currently in use, Respondent has pleaded the circumstances of Petitioner’s fraud with the requisite
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`particularity to allow a reasonable trier of fact to infer that Petitioner had the necessary intent to
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`commit fraud on the USPTO. See Exergen Corp, 575 F.3d at 1328.
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` The Amended Counterclaim alternatively asserts that the claim of use with all of the goods
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`within the application, when there is evidence that the mark was not in use with all of the goods in
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`the application, was made with a reckless disregard for the truth of the statement. Amended
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`Counterclaim ⁋ 12. As already stated, a ‘reckless disregard’ satisfies the requisite intent for fraud
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`on the USPTO. See Chutter, Inc., at 6 (“reckless disregard satisfies the requisite intent for fraud
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`on the USPTO in trademark matters”). Signing an Allegation of Use without verifying that the
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`mark was in use with all of the goods and services claimed, as alleged in the Amended
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`Counterclaim, constitutes a reckless disregard and satisfies the requisite intent for fraud on the
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`USPTO. Id. at 9.
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`Respondent has plead sufficient allegations of underlying facts that would allow the Board to
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`reasonably infer that a specific individual knowingly made false statements that were material to the
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`registration of Petitioner’s marks and such statements were made with an intent to deceive the USPTO
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`or with a reckless disregard for the truth of the matter asserted. Such allegations are sufficient to
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`overcome Petitioner’s Motion to Dismiss. See Exergen Corp., 575 F.3d at 1328–29; Chutter, Inc.,
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`at 6.
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`CONCLUSION
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`Respondent requests that the Board deny Petitioner’s Motion to Dismiss Respondent’s
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`Amended Counterclaim. Alternatively, to the extent that the Board concludes that Respondent has
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`not satisfied the applicable pleading requirements regarding any of its counterclaims, Applicant
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`requests the Board for leave to amend and replead those counterclaims and reserves the right to move
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`to replead any counterclaims when additional facts become available.
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`Respectfully submitted, this 11th day of February 2024.
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`Trevor P. Schmidt
`N.C. State Bar No. 35558
`Hutchison PLLC
`701 Corporate Center Drive, Suite 250
`Raleigh, NC 27607
`919-829-9600 (phone)
`844-397-8265 (fax)
`tschmidt@hutchlaw.com
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`By:
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`and
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`Maulin V. Shah
`California State Bar No. 256443
`Envision IP, LLC
`555 Fayetteville St., Suite 300
`Raleigh, NC 27601
`1-888-307-6807 (toll-free)
`310-499-8624 (direct)
`646-200-5227 (fax)
`maulin.shah@envisionip.com
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`Attorneys for Registrant Medicom
`Technologies
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`6692557
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`CERTIFICATE OF SERVICE
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`This is to certify that a copy of the foregoing OPPOSITION TO PETITIONER’S
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`MOTION TO DISMISS RESPONDENT’S COUNTERCLAIM was served via email to
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`attorneys for Petitioner:
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`Jeffrey A. Lindenbaum
`Jess M. Collen
`Rothwell, Figg, Ernst & Manbeck, P.C.
`The Holyoke-Manhattan Building
`80 South Highland Ave
`Ossining, NY 10562
`jlindenbaum@rothwellfigg.com
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`this 11th day of February 2024.
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`Trevor P. Schmidt
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`Attorney for Registrant Medicom
`Technologies
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`6692557
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