September 16th, 2008 by Benjamin Duranske
Opening a second front in its dispute over “SLART” with artist and “SLART” trademark registrant Richard Minsky, Second Life creator Linden Lab has filed a Petition for Cancellation (.pdf) with the USPTO’s Trademark Trial and Appeals Board seeking to cancel registration of “SLART.” Minsky has filed an Answer (.pdf). Trial (which, at the TTAB, is largely conducted by written submissions) is set for summer and fall, 2009.
Linden Lab’s core argument is that Minsky made a series of misrepresentations to the USPTO in order to secure registration of the mark and so Minsky “is not entitled to Registration No. 3399258 because [he] committed fraud in the procurement of the subject registration.” Minsky denies these claims, and further argues that “after more than four years of widespread use of SL as a generic descriptive term, [Linden Lab] had no rights in the mark SL.”
Minsky’s attorney in this action is Tamiko Franklin (Second Life’s ‘Juris Amat’), who was featured on this site earlier this year when she founded the non-profit Virtual Intellectual Property Organization, and again last month when she was elected to the Executive Board of the SL Bar Association. Linden Lab is represented by Bobby A. Ghajar and James R. Cady, of Howrey LLP.
Excerpts from Linden Lab’s Petition and Minsky’s Answer follow.
In its Petition for Cancellation (.pdf), Linden Lab argues:
14. On information and belief, at the time of filing Registrant was aware that Petitioner had rights in the mark SL.
15. On information and belief, at the time of filing Registrant was aware that members of the general public encountering his mark as used on or in connection with his services understood his mark to mean “SECOND LIFE® art” or otherwise refer to “art in SECOND LIFE®.
16. On information and belief, at the time of filing his response to the Office Action Registrant was aware and knew that SLART refers to “SECOND LIFE art” and he misrepresented that fact to the United States Patent and Trademark Office (“USPTO”) when he filed his response to the Office Action with the USPTO and claimed that SLART “is a slang term, and NOT one that refers to art in Second Life . . .” and that “[tlhe mark SLART does not 'merely describe the feature of applicant's services.' A 'SLART' is not a feature of a service."
17. On information and belief, at the time of filing the application Registrant was not using the mark SLART on or in connection with all of the services for which he claimed actual use in commerce under Section 1 (a) of the Trademark Act.
18. On information and belief, when Registrant filed the application and supporting declaration with the USPTO and claimed that he was currently using the mark on or in connection with the services listed under Section l(a) (see supra paragraph 7), that sworn statement was false.
19. Additionally, on information and belief, at the time of filing the Statement of Use Registrant was not using the mark SLART on or in connection with all of the services listed in the application, which he represented were in use in the Statement of Use.
20. On information and belief, when Registrant filed his Statement of Use with the USPTO and claimed that he was currently using the mark on or in connection with all the services identified in the application, that sworn allegation was false.
21. On information and belief, Registrant misrepresented the nature of his use in commerce of the alleged mark at the time he submitted his Statement of Use and continued to prosecute the trademark application that led to the registration that is the subject of this petition.
22. On information and belief, Registrant procured the aforementioned registration by false means and/or by knowingly and willingly making false and/or fraudulent declarations or representations to the USPTO, including inter alia falsely alleging in a Declaration under 37 C.F.R. 5 l(a) that Registrant was using the mark on "Publication and editing of printed matter; Publication of books; Publication of books, magazines, almanacs and journals; Publication of books, of magazines, of journals, of newspapers, of periodicals, of catalogs, of brochures; Publication of books, reviews; Publication of brochures; Publication of documents in the field of training, science, public law and social affairs; Publication of journals; Publication of leaflets; Publication of magazines; Publication of manuals; Publication of musical texts; Publication of printed matter; Publication of text books; Publication of texts, books, journals; Publication of texts, books, magazines and other printed matter; Education in the field of art rendered through correspondence courses; Education in the field of art rendered through video conference; Educational services in the nature of art schools; Organizing community festivals featuring a variety of activities, namely sporting events, art exhibitions, flea markets, ethnic dances and the like" when Registrant had not used the mark on these alleged services.
23. On information and belief, the aforementioned false statements were made with the intent to induce authorized agents of the USPTO to grant said registration, and reasonably relying on the truth of said false statements, the USPTO did, in fact, grant said registration to Registrant.
24. On information and belief, Registrant knew at the time they were made that the statements claiming exclusive right to use the mark SLART; claiming that SLART is a term that does not refer to art in SECOND LIFE® and therefore does not describe a feature of Registrant's services; claiming use on the services listed under Section l(a) in the application at the time of filing; and claiming actual use of the mark on all services listed in the application at the time of filing the Statement of Use that ultimately led to his application maturing into Registration No. 3399258, were all false.
25. Petitioner believes that it has been and will continue to be damaged by registration of said mark.
26. In view of foregoing, Registrant is not entitled to Registration No. 3399258 because Registrant, upon information and belief, committed fraud in the procurement of the subject registration.
Minsky has filed an Answer (.pdf) denying these claims. As is typical in formal “Answers” in legal proceedings, Minsky denies the majority of the claims laid out by Linden Lab without going into any detail regarding the denials. However, he does offer some argument in his Answer. Those paragraphs follow.
14. Registrant denies the allegations of paragraph 14 of the petition for cancellation. At the time of his filing for registration of his mark SLART on March 22, 2007, Registrant was not aware of Petitioner's June 5, 2007 intent to use application, as it did not exist.
Petitioner did not claim any rights in the term SL prior to filing its intent-to-use application, which contains a sworn affidavit that there was no prior use of the mark. Registrant had no knowledge in December 2006, at the time of commencing use of the term SLART in relation to his commercial activities that Petitioner intended to later claim rights to the generic descriptive term SL.
Petitioner promoted the generic descriptive use of the term SL for the years directly preceding the petitioner's application to register the mark 'SL’, being at least two years based on information known to the registrants, and apparently from the date petitioner first publicly promoted their support of the retention of intellectual property rights by users of petitioner's service, Second Life®, which is at least as early as a press release dated November 14, 2003.
Petitioner did not include ‘SL’ as a claimed mark on its website until March 24, 2008, six days after the SLART mark was issued its Certificate of Registration. Even if the possibility of having rights had existed previously, after more than four years of widespread use of SL as a generic descriptive term, petitioner had no rights in the mark SL.
15. Registrant denies the allegations of paragraph 15 as the phrase ‘members of the general public’ does not accurately describe people who knew that there were things known as virtual worlds, that there was a virtual world called Second Life®, that people could make art in that virtual world, and would understand that one of the things that the mark referred to was art in Second Life®.
Registrant admits that at the time of filing there were more members of the general public who would not know that art was being made in this virtual world than those who would, that prior to seeing the term “slart” used in the context of Registrant's services, the large majority of the public would not associate the word "slart" with Second Life, and would more likely think it was referring to sluts, farts, etc. as described in Registrant's application, or was just a funny sounding word. Registrant believed at the time of registration that the double entendre, or multiple entendre, of "slart" favored meanings other than "art in Second Life".
16. Registrant denies the allegations of paragraph 16 of the petition for cancellation in as much as the complete statements of the Registrant are not provided and the quotations contained in paragraph 16 are taken out of context and punctuated by the petitioner with the intent to deceive the Trademark Trial and Appeal Board regarding registrant's statements, which were made legitimately.
Registrant admits that he clearly stated that SLART describes art in Second Life®, accurately stating: "There is no widespread usage of the term SLART to describe art in Second Life beyond my use of it."
27. Fraud is the only basis petitioner alleges in its petition for cancellation, which is based on unfounded accusations that registrant did not use SLART® in commerce on or before March 22, 2007 for all of the services for which he claimed actual use in commerce in his application or respectively on or before December 21, 2007 for all of the services for which he claimed an intent to use in his trademark application. Petitioner will not be able to prove that Registrant had not truthfully and with reasonable and legitimate bases made the representations in his application and subsequent Statement of Use filed with the USPTO.
Related Posts on Virtually Blind
- Key Second Life Trademark Applications to Be Published for Opposition Over Next Month: "Several key trademark applications for Second Life creator Linden Lab..." (0 comments)
- Linden Lab Files SLART Answer, Counterclaims; Seeks Permission from Court to Terminate Minsky’s Account: "Linden Lab has filed an Answer and Counterclaims (.zip, with exhibits..." (6 comments)
- Guest Commentary: Second Life Artists Rightfully Upset Over “SLART” Trademark Registration: "Outrage recently erupted among Second Life users, particularly those..." (49 comments)
6 Responses to “Second Life Creator Linden Lab Files Petition to Cancel “SLART” Trademark Registration”
Leave a Reply
Notes on Comments: Your first comment must be manually approved, but after it is you'll be able to post freely with the same name and email. You can use some HTML (<a> <b> <i> <blockquote> etc.) but know that VB's spam blocker holds posts with five or more <a> links. VB supports gravatars. Got a gravatar? Use the associated email and it'll show with your comment. Need one? Set it up for free here.