DERVAES INSTITUTE FILES MOTION TO DISMISS DUH’s AMENDED PLEADING for failure to state a claim
. This is at the Trademark proceeding dated September 25, 2013. All other references can be found there under respective number found here.
DI also filed Motion to Dismiss at the Colorado Federal court a few months ago against Bertini’s lawsuit in that court which has yet to be decided. Basically, a Motion to Dismiss means there is nothing to go to court over because the one bringing the suit has not and cannot prove its case and the lawsuit should be thrown out.
Bertini originally stated to the Board that it wanted to amend his fraud pleading by stating that DI “knew”it committed fraud as required by law. However, DI attorney states in its Motion
“Petitioner [DUH] filed the instant Amended Petition to Cancel on August 31, 2013. Despite, the
Board granting its Motion to Amend, in part, due to Petitioner’s assertion that it was not adding
new allegations to its Petition to Cancel, Petitioner has refashioned its fraud claims to assert over 80 numbered paragraphs of entirely new allegations. See Petition to Cancel, August 31, 2013,… “
That’s EIGHTY paragraphs of NEW allegations! Considering that no new evidence has come forward (as discovery has long been closed) and that the Board told Bertini again that all his allegations for fraud were useless and not material, this seems like a fishing expedition to me to see if this will somehow work now for fraud. Bertini has changed his position on what the alleged fraud is, i.e., in part from the well-known “domain history” at one time posted on his website to these “new” allegations.However, the DI Motion to Dismiss shows that these new allegations are useless, too, as Bertini “misconceives” the record regarding use of specimens and date of first use, bases his fraud claim on a “typo”in a boiler-plate form used by former attorney Pelton while Bertini’s other new allegations do not support a fraud claim under the law either.I noticed that Bertini has dropped all references o the “domain history” of urbanhomesteading.com which was used to show fraud to the Board and which the community believed was so “factual” and, indeed, fraud when it wasn’t! The “domain history” has since been removed from a prominent place on his website.
Also filed at the same time as the DI Motion to Dismiss were Answers from DI to each of the new allegations in DUH’s Amended petition. The last part of this Answer
“Despite its new allegations, Petitioner [known throughout as DUH] has not made out a legally sufficient claim of fraud. Although Petitioner alleges third party use of the term “urban homesteading”, it has not alleged that there was any trademark use of “Urban Homesteading” superior to Registrant’s [known throughout as DI]. The pleaded facts, even when construed in a light most favorable to Petitioner, do not support a key element of Petitioner’s claim, i.e., that Registrant knew when it filed its application that others had a right to use the mark in the United States. Mere awareness of others use of the wording “urban homesteading” does not constitute fraud. Moreover, Petitioner fails to allege facts that alleged misrepresentations were actually false and in some cases, material to Registrant’s application. Thus, the pleaded facts do not support Petitioner’s claims of fraud and those claims must be dismissed.”
Also, here are excerpts from Dervaes Institute’s Motion to Dismiss
1. Regarding DUH’s fraud allegation based on a “typo”:”To address the most implausible allegation first – the typo or omission, clearly inadvertently
made by Registrant’s [DI] former counsel in the Allegation of Use, cannot support an allegation offraud. Petitioner is correct in alleging that no Notice of Allowance was entered into the record inApplication Serial No. 77326565, but the failure to delete the reference to a Notice of Allowance from a boilerplate Allegation of Use by Registrant’s former counsel does not raise this
“misstatement” into a knowingly made false misrepresentation intended to deceive the USPTO.
Since the USPTO issues the Notice of Allowance, it is hard to see how it would be deceived in
this regard. Also, Petitioner has failed to state how this misstatement materially affected
Registrant’s Application Serial No. 77326565. Petitioner only states that without an Allegation of Use, registration would not follow, but that does not allege how the alleged misrepresentation, the “typo”, itself was material to the granting of the registration. Just saying this misstatement is material (See Amended Petition, ¶ 83) does not make it so. “While legal conclusions can provide the framework of a complaint, they must be supported by factual allegations.” Iqbal, 129 S. Ct.
1937, 1950 (2009).”
2. Regarding the statement DI had at one time on its website a statement about it knowing others were using the mark:
“Moreover, even if construed as true and that these statements were made by Jules Dervaes,himself, or were written as official statements by the Dervaes Institute, these statements do not demonstrate knowledge of superior rights by third parties to use the mark rendering Registrant’s Declaration a false misrepresentation. The statements attributed to Registrant from the third party website, include in relevant part, that ‘We filed our trademarks for the purpose of maintaining standards and for the protection of the term and concept ….We began to see the terms ‘Urban Homestead’ and ‘Urban Homesteading’ used as ‘green-washed bandwagon’ terms solely for profit – even mentioned in an glossy magazine advertisement of a car …. In addition, more and more people began to use the term for profit….So, as the popularity of…Urban Homesteading increased and began to label everything from television productions to big
agriculture products, we couldn’t shake the warning bells in our minds. The establishment of…Urban Homesteading needed to be protected….’ See Amended Petition, Exhibit J. Contrary to evidencing knowledge of superior rights by others to use the mark at issue, these statements show that Registrant believed that it had prior rights in the mark that it needed to register and that others using the mark were using the mark subsequent to its established use. Moreover, the statements are vague and do not state the specific use to which the mark is being attached. The only specific and definite statements of use assert the mark is being used to advertise a “car”, for “television productions” and “big agriculture products”. None of these uses pertain to the class of goods and services for which Registrant applied for its mark, specifically educational services.
Even accepting these statements as representations by Dervaes, as long as the declarant
reasonably believed and was claiming in his declaration that Registrant had superior trademark rights to the wording URBAN HOMESTEADING to that of other parties who might have used or might be using that wording, Registrant’s mere awareness of other uses of wording does not constitute fraud. See Stocker v. General Conference Corp. of Seventh-day Adventists, 39 USPQ2d 1385 (TTAB 1996).”
3. Regarding the allegedly false specimens DI submitted to the USPTO as (fraudulent) proof of use in commerce:
” Petitioner[DUH] misconceivesthe requirements for a specimen in a trademark application. The specimen is not cited to show first use, but use in commerce. Thus, the specimen must show use in commerce at the time theAllegation of Use is filed, as is the case with the specimen at issue – a fact Petitioner does not challenge. Therefore, Petitioner’s claim of fraud on these allegations must also fail.”
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