3deceive. A showing of mistake, negligence, which is demonstrated by allegations that a party“knew or should have known” that a statement was false or misleading, or even gross negligencewill not suffice.
(“Deception must be willful to constitute fraud.”). The party alleging fraudbears a heavy burden to meet these strict standards. YSL has failed to meet its burden; theAmended Counterclaim does not plead the alleged fraud with sufficient particularity to surviveLouboutin’s motion to dismiss, even when read in a light most favorable to YSL.By failing to state particular facts showing that the registrant had an intent to deceive theUSPTO, the Amended Counterclaim lacks the requisite
Even if Mr. Louboutin had made a false statement in the March 14 Declaration, afalse statement by itself will not require the cancellation of his registrations.
See L.D. Kichler Co. v. Davoil, Inc.
, 192 F.3d 1349, 1351 (Fed. Cir. 1999) (“Merely making a false statement isnot sufficient to cancel a mark.”);
In re Bose
, 580 F.3d at 1243 (stating there is a “material legaldistinction between a ‘false’ representation and a ‘fraudulent one, the latter involving an intent todeceive, whereas the former may be occasioned by a misunderstanding, an inadvertence, a merenegligent omission, or the like) (quoting
Kemin Indus., Inc. v. Watkins Prods., Inc.
, 192 U.S.P.Q.327, 329 (T.T.A.B. 1976)). Because the Amended Counterclaim for fraud is devoid of any factsshowing that Mr. Louboutin willfully intended to deceive the USPTO when he submitted theMarch 14 Declaration, it must be dismissed.The Amended Counterclaim alleges that:[A]s an industry leader who has devoted his entire professional life towomen’s footwear, Mr. Louboutin
no doubt was exposed to some or all
YSL also incorrectly contends at page 3 of its Response that the
standard is inappropriatein the context of a motion to dismiss.
But see, e.g.
Scooter Store, Inc. v. SpinLife.com, LLC
, No.2:10-CV-18, 2011 U.S. Dist. LEXIS 32654, at *11 (S.D. Ohio Mar. 28, 2011) (applying
In re Bose Corp.
Bauer Bros. LLC, v. Nike, Inc.
, 98 U.S.P.Q.2d 1160, 1164 (S.D. Cal. Mar. 8, 2011)(same).
Case 1:11-cv-02381-VM Document 31 Filed 07/05/11 Page 3 of 6