Jacques M. Dulin, Esq. and Innovation Law Group, Ltd.v.Charles E. Gotlieb, Esq.

Trademark Trial and Appeal Board

Aug 2, 2005

No. 92043533 (T.T.A.B. Aug. 2, 2005)

FSW

Mailed: August 2, 2005

Cancellation No. 92043533

Jacques M. Dulin, Esq. and
Innovation Law Group, Ltd.

v.

Charles E. Gotlieb, Esq.

Before Hairston, Holtzman, and Walsh, Administrative
Trademark Judges.

By the Board:

On June 21, 2000, respondent, Charles E. Gotlieb, filed
an application for registration of the mark INNOVATION LAW
GROUP on the basis of his bona fide intent to use the mark
in commerce.1 Following the submission of a statement of
use on March 12, 2004, wherein first use in commerce as of
March 9, 2004 was asserted, the registration issued.
Petitioners, Jacques M. Dulin and Innovation Law Group,
Ltd., filed a petition to cancel the registration, claiming
prior use of the identical mark for legal services and a
likelihood of confusion between the parties’ marks. The
petition also alleges that respondent “does not and did not,

1 Reg. No. 2854860 for the mark INNOVATION LAW GROUP for “legal
services relating to intellectual property law and strategy,”
registered June 15, 2004.

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
Cancellation No. 92043533
2
at any of the five times he filed for requests for
extensions to file a Statement of Use, have a bona fide
intention to use the INNOVATION LAW GROUP mark,” that
respondent “has engaged in fraud in Defendant’s executed
declarations,” and that “such fraud constitutes fraud on the
United States Patent [and] Trademark Office for which he
should be sanctioned.” Respondent filed an answer denying
the salient allegations in the complaint.
This case now comes up on petitioners’ motion for
summary judgment on the pleaded ground of likelihood of
confusion. Respondent filed a response to the motion, and a
cross-motion for summary judgment on likelihood of confusion
and on petitioners’ pleaded claim of fraud. Petitioners
responded to respondent’s cross-motion and also cross-moved
for summary judgment in petitioners’ favor on the fraud
claim. Each of these motions has been fully briefed.2
Summary judgment is appropriate where the movant has
established that there is no genuine issue of material fact
in dispute, thus leaving the case to be resolved as a matter
of law. Fed. R. Civ. P. 56(c). If the movant meets its
initial burden, the burden then shifts to the non-moving
party to present sufficient evidence to show an evidentiary
conflict as to one or more material facts in issue. See

2 We have considered the parties’ reply briefs as they clarify
the issues before us. See Trademark Rule 2.127(a).

Cancellation No. 92043533
3
Opryland USA Inc. v. Great American Music Show Inc., 970
F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992). In considering
whether to grant or deny a motion for summary judgment, the
Board may not resolve issues of material fact, but can only
ascertain whether genuine disputes exist regarding such
issues. The evidence must be viewed in a light most
favorable to the non-movant, and all justifiable inferences
are to be drawn in the non-movant’s favor. Lloyd's Food
Products Inc. v. Eli's Inc., 987 F.2d 766, 25 USPQ2d 2027
(Fed. Cir. 1993).

THE PARTIES’ CROSS-MOTIONS ON FRAUD
We first address the parties’ cross-motions for summary
judgment on the issue of fraud. Petitioners indicate that
they have fully briefed the cross-motions on the assumption
that the Board could treat the petition to cancel as having
stated a fraud claim. Petitioners contend, however, that
they have not pleaded such claim, noting: “As to the fraud
issue, Petitioners have not brought a fraud claim in their
Petition to Cancel… .” Petitioners’ Response To Defendant’s
Cross Motion For Summary Judgment, and Petitioners’ Cross
Motion For Summary Judgment For Fraud, p. 2.
In light of petitioners’ above statement, to the extent
that the petition to cancel may be construed as having
pleaded fraud as a ground for cancellation, we consider it
withdrawn.
Cancellation No. 92043533
4
Accordingly, both respondent’s motion and petitioners’
cross-motion for summary judgment on the fraud claim are
denied as moot.
THE PARTIES’ CROSS-MOTIONS ON LIKELIHOOD OF CONFUSION
Turning to the parties’ cross-motions for summary
judgment on the issue of priority and likelihood of
confusion, we first note that there is no genuine issue of
material fact that a likelihood of confusion exists. There
is no dispute that the marks of the parties are identical
and are used in association with the same services. The
issue before us on the cross-motions for summary judgment is
which party has priority of use of the mark.
Petitioners’ Supporting Evidence
Petitioners’ motion for summary judgment is supported
by the declarations and accompanying exhibits of petitioner
Jacques M. Dulin; Diane van Os and Robert F. Dennis, former
employees of Innovation Law Group, Ltd.; Kathleen Dal Bon, a
patent attorney colleague of Mr. Dulin; and Virginia P.
Shogren, an associate attorney of Innovation Law Group, Ltd.
In his declaration, Mr. Dulin contends that he first
used the mark INNOVATION LAW GROUP in 1997; that on March
30, 2000, he licensed use of his mark to a partnership named
Innovation Law Group LLP; that his partner resigned in mid-
May 2000; that he then established Innovation Law Group,
Ltd. as the corporate successor to the partnership, and that
Cancellation No. 92043533
5
the corporation now uses his mark under license. His
declaration is accompanied by evidence of use of the mark
from 1997 to 2000, including business cards distributed at
an out-of-state meeting on May 3, 2000, and PowerPoint
presentation slides used by Mr. Dulin during a presentation
on May 23, 2000 in Finland.
In her declaration, Ms. van Os states that in her
capacity as an employee of Innovation Law Group, Ltd. (a
position she held from May 1, 2000 to July 14, 2000), she
prepared various correspondence on Innovation Law Group,
Ltd.’s letterhead and sent these to clients. She also sent
letters to Mr. Dulin’s former law firm regarding the
transfer of client files from the firm to “Innovation Law
Group” and filed a “Continued Prosecution Application
Request Under 37 C.F.R. § 1.53(d)” with the USPTO, which
lists Mr. Dulin at “Innovation Law Group” as the
correspondence addressee. Each of these bears dates between
May 1, 2000 and June 21, 2000.
Mr. Dennis describes Mr. Dulin’s use of the mark in
1997; Ms. Dal Bon states her awareness of Mr. Dulin’s use of
the mark in 1997 and in May, 2000; and Ms. Shogren attests
to activities that took place in 2004.
Based on the evidence provided, petitioners have shown
use of the mark in commerce from at least as early as May 1,
2000.
Cancellation No. 92043533
6
Respondent’s Supporting Evidence
Respondent submits the declaration of Charles E.
Gotlieb and accompanying exhibits to show that respondent’s
first use of the mark predates June 21, 2000,3 and that
petitioner Dulin abandoned his mark in 1998 and did not
begin using it again until after June 21, 2000.
Respondent attempts to show that while Mr. Dulin may
have used the mark in 1997, he abandoned it in 1998 when he
went to work for a private law firm. Accompanying
respondent’s declaration is evidence showing that from 1997
to 1999, Mr. Dulin filed patent applications and other
correspondence with the USPTO as an employee of the private
law firm and without any reference to “Innovation Law
Group.” Mr. Gotlieb also shows that Mr. Dulin was listed in
the Martindale Hubbell guide for attorneys in 1993, 1994,
1996-2000 and 2002, but that the listings make no reference
to “Innovation Law Group.”
Whether this evidence shows that Mr. Dulin abandoned
his mark in 1998 is an issue that we need not reach.
Significantly, none of the evidence presented raises a
genuine issue of material fact as to petitioners’ use of the

3 Respondent may rely upon June 21, 2000, the filing date of the
registration, as his date of first use of the mark in commerce.
Section 7(c) of the Trademark Act, 15 U.S.C. § 1057(c); see
generally McCarthy, J. Thomas, 2 McCarthy on Trademarks and
Unfair Competition, § 26:17 (4th ed.).
Cancellation No. 92043533
7
mark at least as early as May 1, 2000, which date is earlier
than any date on which respondent is entitled to rely.
The earliest date of use on which respondent is
entitled to rely, absent other evidence, is the June 21,
2000 filing date of the underlying application. Respondent
has not submitted persuasive evidence that he used the mark
before June 21, 2000. Respondent is also entitled to prove
a date of use earlier than June 30, 2000, the first use date
stated in the statement of use that he filed in the
underlying application, but that proof must be clear and
convincing evidence that is not “characterized by
contradictions, inconsistencies and indefiniteness.” Elder
Manufacturing Co. v. International Shoe Co., 194 F.2d 114,
118, 92 USPQ 330, 332 (CCPA 1952).
The statements in respondent’s declaration are
characterized by inconsistency. In his declaration, Mr.
Gotlieb first states that he has been using the mark “in
connection with legal services relating to intellectual
property law and strategy at least since March 9, 2004.”
Declaration of Charles E. Gotlieb, para. 1, p. 1. Respondent
next alleges use of the mark “in connection with my legal
services as a patent attorney with the Martindale Hubbell
guide for attorneys in the year 2000, and it has appeared in
the print version of the guide each year from 2001-2004.”
Declaration of Charles E. Gotlieb, para. 3, p. 2.
Cancellation No. 92043533
8
Moreover, the Martindale Hubbell listings are not
themselves clear and convincing evidence of respondent’s use
of the mark predating May 1, 2000. Copies of four pages
from the print version of the guide are attached to
respondent’s declaration. Each page contains a single line-
item listing for “Charles E. Gotlieb,” certain biographical
data, and the words “The Innovation Law Group.” In the
upper right-hand corner of each page is a year date; the
earliest date listed appears to be either “2000” or “2001.”
There is no month or day provided, so that even if the date
is 2000, it could well be subsequent to May 1, 2000. In
short, the listings do not conclusively establish a date
prior to May 1, 2000.
In view thereof, respondent has not shown as a matter
of law that he is entitled to rely on a first use date
before June 21, 2000, or that genuine issues of material
fact exist as to whether petitioners are entitled to rely on
May 1, 2000 as the date of their first use of the mark in
commerce.
CONCLUSION
Based on the evidence presented, we find as a matter of
law that petitioners have established priority of use of the
mark INNOVATION LAW GROUP and a likelihood of confusion with
respondent’s use of the identical mark for similar services.
Petitioners have demonstrated use of the mark since at least
Cancellation No. 92043533
9
as early as May 1, 2000. The earliest date of use that
respondent can rely upon is his constructive use date of
June 21, 2000.
Accordingly, petitioners’ motion for summary judgment
on the issue of priority and likelihood of confusion is
hereby granted; respondent’s cross-motion for summary
judgment on priority and likelihood of confusion is hereby
denied. The petition to cancel is hereby granted and the
registration will be cancelled in due course.
-o0o-