bol of three blue concentric circles. (Def.’s Answer at 3, ¶10.) “Federal registration of a trademark endows it with a strong presumption of validity.” Coca-Cola Co. v. Overland, Inc., 692 F.2d 1250, 1254 (9th Cir.1982) (citing Miss Universe, Inc. v. Patricelli, 408 F.2d 506, 509 (2d Cir.1969)); accord Park ’N Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189, 196, 105 S.Ct. 658, 662–63, 83 L.Ed.2d 582 (1985) (citation omitted); see 15 U.S.C. § 1057(b) (1988). In addition to being prima facie evidence of the registered mark’s validity, the certificates of registration are prima facie evidence of the registrant’s ownership of the mark and the registrant’s exclusive right to use the mark. Pacific Telesis Group v. International Telesis Communications, 795 F.Supp. 979, 982 (C.D.Cal.1991), aff’d, 994 F.2d 1364 (9th Cir.1993). The defendant attempts to rebut this presumption by claiming that the plaintiff’s trademarks are generic and were obtained fraudulently. The plaintiff responds by arguing that its trademarks are incontestable.
b. Presumption of Incontestability
The plaintiff claims that “since the Foundation’s marks all have been registered and continuously used for more than five years … they have become incontestable.” (Br. in Support of Pl.’s Mot. for Partial Summ. [J.] on Trademark Issues at 4.) [hereinafter Pl.’s Br.]. However, before a registered mark may be deemed incontestable “an affidavit [shall be] filed with the Commissioner within one year after the expiration of any such five-year period setting forth those goods or services stated in the registration.” 15 U.S.C. § 1065(3) (1988). No such affidavit is in the record.
Moreover, whether the plaintiff’s marks have acquired incontestable status is relatively unimportant. The defendant alleges the defenses of genericness, fraud, and “no likelihood of confusion.” Each of these allegations, if proven, overcomes a mark’s incontestable status. See 15 U.S.C. § 1068(4) (1988) (“[N]o incontestable right shall be acquired in a mark which is … generic.”); 15 U.S.C. § 1115(b)(1) (1988) (declaring incontestability subject to a defense of fraud); Gruner, 991 F.2d at 1078 (explaining Trademark Law Revision Act of 1988[1] “made clear that incontestability does not relieve the trademark owner from the requirement of proving likelihood of confusion”).
c. The Fraud Defense
The defendant claims that the plaintiff engaged in “fraudulent activities in obtaining federal trademark registrations of the concentric circles symbol and the names Urantia and Urantian.” (Def.’s Answer at. 5, ¶4.) The alleged fraudulent activities include the plaintiff’s failure to disclose to the United States Patent and Trademark Office the possible religious significance of the plaintiff’s marks. Id. at 20–21. However, “[n]othing in the Constitution prohibits a religious organization from owning property—and a trademark is a property right.” National Bd. of YWCA v. YWCA of Charleston, 335 F.Supp. 615, 625 (D.S.C.1971).
In support of her claim, the defendant offers numerous broad and unsubstantiated allegations but only one piece of evidence, a letter from a Trademark Examiner. See (Def.’s Facts at App. 1A.) The letter addresses the inconsistencies in the plaintiff’s application to register a mark identified by Serial No. 398,004. The trademarks at issue are identified by Serial Nos. 157,177; 157,234; 372,049; and 372,050. See (Pl’s Compl. at Exs. C–F.) Therefore, any statements made by the plaintiff that prompted the letter or were in response to the letter is not shown to have been a deliberate attempt to mislead the Patent and Trademark Office into registering the trademarks at issue. See Robi v. Five Platters, Inc., 918 F.2d 1439, 1444 (9th Cir.1990) (describing elements of successful fraud claim); Official Airline Guides, Inc. v. Churchfield Publications, Inc., 756 F.Supp. 1398, 1399–400 (D.Or.1990) (holding scienter required to prevail on fraud claim), aff’d sub nom., Official Airline Guides, Inc. v. Goss, 6 F.3d 1385 (9th Cir.1993). Accordingly, I find no merit in the defendant’s allegation of fraud.
- ↑ Trademark Law Revision Act of 1988, Pub.L. No. 100-667, 102 Stat. 3946 (codified as amended in scattered sections of 15 U.S.C.).
