778 F. Supp. 2d 1052
C.D. Cal.2011Background
- Consolidated suit where Spin Master seeks summary judgment on Zobmondo’s §1064(3) fraud-on-the-PTO counterclaim.
- Zobmondo and Randall Horn asserted the registration for Spin Master’s mark Would You Rather... was procured by fraud.
- Prior rulings included descriptiveness-based cancellation reversed by the Ninth Circuit, reviving Zobmondo’s §1064(3) counterclaim.
- Undisputed facts show Heimberg and Gomberg pursued a board game concept, engaged in licensing efforts, and began manufacturing plans before the 2005 registration.
- Key issue is whether Heimberg and Gomberg acted with the requisite intent to deceive the PTO during the ITU process and extensions.
- Court grants Spin Master’s summary-judgment motion, finding no clear and convincing evidence of deceptive intent.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Was there clear and convincing evidence of intent to deceive the PTO? | Zobmondo: deceptive intent shown | Spin Master: no clear intent to deceive | No; no clear and convincing proof of deceptive intent. |
| Did 1997 ITU and early extensions show bona fide intent or deception? | Bona fide intent supported by contemporaneous evidence | Delay and extensions suggest no deception | Evidence supports bona fide intent; no fraud established. |
| Do post-application manufacturing efforts create inference of deception? | Evidence of steps to make game shows potential deception | Post-application actions do not prove intent to deceive | Not sufficient to prove intent to deceive. |
| Can late-stage evidence negate earlier bona fide intent? | Later sales/marketing show attempt to use mark | Cannot infer deception from legitimate business activity | Late-stage evidence does not establish fraud. |
Key Cases Cited
- Robi v. Five Platters, Inc., 918 F.2d 1439 (9th Cir. 1990) (fraud burden is clear and convincing evidence)
- Eastman Kodak Co. v. Bell & Howell Document Mgmt. Prods. Co., 994 F.2d 1569 (Fed. Cir. 1993) (intent-to-use context and fraud standards)
- In re Bose Corp., 580 F.3d 1240 (Fed. Cir. 2009) (intent to deceive indispensable in fraud on PTO)