IEP Technologies, LLC v. KPM Analytics, Incorporated et al. (D. Mass. 21-cv-10417).

After IEP sued KPM for federal and common law trademark infringement of IEP’s  “hexagonal shape” trademarks for explosion containment and detection equipment, KPM filed counterclaims seeking cancellation of the mark for fraud and for non-use.  IEP moved for summary judgment on these counterclaims, which Judge Kobick granted.  She found that no reasonable jury could find, under the clear and convincing evidence standard, that IEP knowingly made a material misrepresentation of fact with an intent to deceive the PTO or that IEP had not used the mark in commerce on the goods or services covered by the registration.

As has become customary in this case, Judge Kobick first had to address motions to exclude expert testimony.  The PTO had produced a spreadsheet showing  the IP addresses from which the signature and submission of IEP’s Section 8 and 15 Declaration, and KPM submitted proposed expert testimony that this showed that the same person signed and submitted the Declaration.  Judge Kobick excluded this testimony, finding that the two experts had failed to conduct any analysis of the data and instead merely assumed it to be correct and merely parroted the information in the spreadsheet, which added no value to the court.  Judge Kobick did allow the testimony from one of the experts regarding PTO filing procedures generally, finding that the expert (an experienced patent attorney) was qualified to testify on the subject.

Moving to the summary judgment motion, Judge Kobick discarded KPM’s contention that someone other than the purported signatory to the declaration actually entered the electronic signature.  KPM relied on the PTO’s spreadsheet showing that the signature arose from the same IP address as the submission and that the submission was made by a paralegal at IEP’s law firm to argue that the paralegal had been the person who entered the electronic signature of IEP’s Vice-President.  Adding to this theory, the Vice-President testified that he did not remember signing the application and normally capitalizes his name instead of writing it in lowercase, as it appeared on the Declaration.  Judge Kobick noted that the Vice-President revised his lack of memory testimony upon being shown e-mails exchanged at the time of signature that indicated that he had signed it and was attaching the signed copy.  Further, the paralegal testified that she had never signed a declaration.  Given the high burden of proof – clear and convincing – required to prove fraud, Judge Kobick determined that the evidence could not rise to that level to create a material dispute of fact that the signature was forged.

Judge Kobick also rejected KPM’s argument that the specimen showing current use was improper because it was the same specimen from the 2014 application.  She noted that IEP testified that the particular specimen, a control panel bearing the mark, was unchanged during that time frame and that IEP provided images demonstrating this.  Finally, Judge Kobick rejected the argument that IEP improperly relied on interrogatory responses and other hearsay documents in its motion, noting that this evidence could be made admissible at trial through live witnesses.  Further, even if there were a misrepresentation, KPM provided no evidence that IEP knew such to be false or that IEP intended to deceive the PTO.

Judge Kobick was equally skeptical of KPM’s non-use argument, which was based on the same evidence discussed with respect to KPM’s failed fraud allegations.  Accordingly, she granted IEP’s motion for summary judgment on the cancellation claims.