Florida Virtual School v. K12, Inc.

UNITED STATES DISTRICT COURT

MIDDLE DISTRICT OF FLORIDA

ORLANDO DIVISION

FLORIDA VIRTUAL SCHOOL,

Plaintiff,

v. Case No: 6:20-cv-2354-GAP-EJK

K12, INC. and K12 FLORIDA, LLC,

Defendants

MEMORANDUM OPINION

This cause came before the Court following a bifurcated bench trial

conducted October 16-19, 2023. In Phase 1, the parties presented their cases on

Defendants’ Counterclaim for Cancellation of Plaintiff’s federally registered

trademarks for fraud on the U.S. Patent and Trademark Office.

I. Background

Plaintiff Florida Virtual School (“Plaintiff”) is an agency of the State of Florida

which provides online educational services to kindergarten, elementary, middle,

and high school students in Florida and around the world. Doc. 1, ¶ 2. Defendants

K12, Inc. and K12 Florida, LLC (“Defendants”) are for-profit companies similarly

engaged in the business of providing online educational services to kindergarten

through twelfth grade students in Florida and globally. Id., ¶¶ 3-4. Plaintiff filed

suit on December 22, 2020, alleging trademark infringement, false advertising,

unfair competition, and breach of the parties’ agreement resolving related prior

litigation1 (the “Settlement Agreement”). Id., ¶¶ 74-143. After discovery yielded

several factual revelations, and with leave of the Court, Defendants amended their

Answer on March 13, 2023, to include a Counterclaim for Cancellation of Plaintiff’s

trademarks on the basis of fraud on the U.S. Patent & Trademark Office (“PTO”).

Doc. 155, ¶¶ 54-75; see also Docs. 133, 151, 153. Defendants allege that Plaintiff was

not active in the primary education market in 2002, despite stating so in its

applications to the PTO. Doc. 155, ¶¶ 69-70, 74-75.

On cross motions for summary judgment, the Court determined that

Defendants’ Counterclaim was precluded as to Plaintiff’s two 2010 trademark

registrations2 by release clauses in the Settlement Agreement. Doc. 289 at 6-12. The

Court additionally found that there was no basis for Defendants’ allegations as

applied to two of Plaintiff’s other trademark registrations.3 Id. at 14-15. The Court

concluded there were disputed questions of material fact as to the issues of falsity,

1 Plaintiff previously sued Defendants for trademark infringement in Case No. 6:11-cv-

831-ORL-31-KRS. Doc. 302 at 16.

2 See also Doc. 1-1 at 2, 4 (Plaintiff’s 2010 trademarks are Registrations No. 3,830,765 and

No. 3,873,393).

3 See also Doc. 1-1 at 12, 18 (Plaintiff’s applications did not claim these trademarks—

Registrations No. 5,113,241 and No. 5,113,259—were used in commerce until 2016).

knowledge, and intent regarding Plaintiff’s three remaining trademark

registrations (the “Marks”) and set the matter for a bench trial. See id. at 15-18.

II. Findings of Fact4

The parties agree that Plaintiff is a public agency that began developing and

delivering online and distance learning programs in 1997. Doc. 302 at 15. Plaintiff

was initially named Florida Online High School before it was renamed Florida

Virtual School in 2001. Id. Defendants operate several distinct online schools in

Florida, including the Digital Academy of Florida and the Florida Cyber Charter

Academy. Id. at 16. Both parties presently offer kindergarten through twelfth grade

(K-12) online educational services. Id. at 16. Plaintiff’s three federally registered

trademarks in dispute were issued by the PTO on January 3, 2017: Registrations No.

5,113,225, No. 5,113,235, and No. 5,113,248. Id. at 16-17; see also Doc. 1-1 at 6-10, 15-

16.

Founded in 1997 as an online high school, Plaintiff had few, if any,

competitors at the time of its inception. Doc. 334 at 8:10-13. It did not operate in the

kindergarten through fifth grade (K-5) market and did not have an interest in doing

so at that time. Id. at 8:19-21, 9:22-24. However, during its early years, Plaintiff was

4 The evidence introduced in Phase 1 revolved primarily around establishing a timeline

for Plaintiff’s foundational years and growth into various educational markets.

regularly running pilot programs and developing courses and curriculum for

middle school-aged students (grades 6-8). See id. at 34:15-35:8; see also Doc. 352-7.

Indeed, Plaintiff developed and launched its first middle school courses in 2002.

Doc. 334 at 85:12-21. Then, in 2004, the Florida Legislature required Plaintiff to

create a full suite of middle school courses, which were ultimately available for the

2004-2005 school year.5 Doc. 351-20 at 31; Doc. 351-34; Doc. 352-51 at 2; see also id.;

Doc. 334 at 105:7-18.

After seeing the rapid growth of its middle school (grades 6-8) program,

Plaintiff began expanding into elementary (K-5) education services with the hiring

of Sarah Sprinkel (“Sprinkel”) in 2008. See Doc. 334 at 37:6-10, 85:18-21; Doc. 331 at

109:4-8. Sprinkel began working with smaller groups of students to initially build

out “specials” program areas like art, music, and physical education. Doc. 331 at

109:4-110:5; see also Doc. 334 at 47:3-6. One of the first such pilots was the Captain

Cardio physical education program that Sprinkel piloted in 2009.6 Doc. 331 at

5 Plaintiff’s corporate representative, John Schultz (“Schultz”), credibly testified that there

would have been approximately 100,000 semester completions in the middle school grades (6-8)

between 2002-2010. Doc. 334 at 99:1-5. Schultz estimated that since 2010 there have likely been

roughly one million semester completions in grades K-8. Id. at 99:6-13; see also Doc. 352-37, Doc.

352-38.

6 Sprinkel testified that the Captain Cardio program was run, at least in part, in

conjunction with existing schools like Audubon Park in Winter Park, Florida. Doc. 331 at 110:17-

22.

109:22-24. After the “specials” were developed, Sprinkel’s team moved on to the

core subjects of reading, math, science, and social studies. Id. at 110:25-111:2.

On July 31, 2008, Plaintiff inked a partnership with Connections Academy,

another online education services company, to provide it with a full online

education program for kindergarten through eighth grades (K-8). Doc. 334 at 97:12-

18; see also Doc. 350-4. While Connections Academy provided much of the day-to-

day instructional and operational oversight during this period, the students were

enrolled with Plaintiff’s school and were considered by the state to be Plaintiff’s

students. Doc. 334 at 96:5-98:10. During this partnership, Plaintiff deployed its

Marks alongside Connections Academy’s to co-brand their K-8 educational

program. Id. at 33:25-34:8, 102:18-104:4; see also, e.g., Doc. 351-33. Beginning in 2015,

Plaintiff tasked Clark Berry (“Berry”) and others to build off of Sprinkel’s work to

develop its own full suite of elementary programs in order to bring all of its K-8

services in-house. Doc. 330 at 36:19-37:7; see also Doc. 352-23. Plaintiff ceased its

partnership with Connections Academy following the 2017-2018 school year, after

which it provided K-12 services fully in-house. Doc. 334 at 114:4-6; see also Doc. 302

at 16.

On April 27, 2016, Plaintiff filed applications to register the Marks at issue in

this litigation. See Docs. 352-1, 352-2, 352-3. Each application listed Allison R. Imber

(“Imber”) as the corresponding attorney and each was signed by Melissa Wurzel

(“Wurzel”), Plaintiff’s Senior Director of Marketing and Communications at the

time. See id.; see also Doc. 327-9 at 30:22-31:7. In the description of services section,

Plaintiff stated that it provided online educational services, conducted distance

learning instruction, and developed curriculum—all at the primary and secondary

level. See Doc. 350-1 at 1, Doc. 350-2 at 1, Doc. 350-3 at 2-3. The applications for

Registrations No. 5,113,225 and No. 5,113,235 stated that the trademarks were first

used in commerce “[a]t least as early as 00/00/2002,” and the application for

Registration No. 5,113,248 listed the date of first use in commerce as “[a]t least as

early as 01/00/2008.” Id.

III. Legal Standard

“In any action involving a registered mark the court may…order the

cancellation of registrations, in whole or in part” when such action is warranted. See

15 U.S.C. § 1119. “One ground on which a party may petition to cancel a registered

service mark is that the registration was obtained fraudulently.” Select Export Corp.

v. Richeson, No. 10-80526-CIV-DIMITROULEAS, 2011 WL 13135114, *9 (S.D. Fla.

May 5, 2011); see 15 U.S.C. § 1064(3). Fraud occurs when an applicant “knowingly

makes false, material representations of fact in connection with an application for a

registered mark.” Sovereign Mil. Hosp. Ord. of Saint John v. Florida Priory of the Knights

Hosp. of the Sovereign Ord. of Saint John, 702 F.3d 1279, 1289 (11th Cir. 2012).

Fraud must be proven “to the hilt” with clear and convincing evidence. In re

Bose Corp., 580 F.3d 1240, 1243 (Fed. Cir. 2009). “To carry this burden, a party

alleging fraud must show: (1) the applicant made a false representation to the

[]PTO; (2) the false representation was material to the registrability of the mark; (3)

the applicant had knowledge of the falsity of the representation; and (4) the

applicant made the representation with intent to deceive the []PTO.” Flame & Wax,

Inc. v. Laguna Candles, Cancellation No. 92072343, 2022 WL 3083070, *20-21 (T.T.A.B.

Aug. 1, 2022). “If fraud can be shown in the procurement of a registration, the entire

resulting registration is void.” Nationstar Mortgage LLC v. Mujahid Ahmad, 112

U.S.P.Q.2d 1361, 2014 WL 6480655, *4 (P.T.O. T.T.A.B. 2014).

IV. Analysis

Fundamental to any successful claim for fraud on the PTO is the existence of

an applicant’s false representation. See In re Bose Corp., 580 F.3d at 1243. While there

is no question here that the statements in its application were material,7 Plaintiff

did not make any false representations to the PTO. Moreover, even if it did

misrepresent the date of first use, that alone “cannot be a basis for invalidating the

registration.” Angel Flight of Ga., Inc. v. Angel Flight Am., Inc., 522 F.3d 1200, 1210

7 On cross motions for summary judgment, the Court held that the second element here is

satisfied, recognizing that “[a]n applicant’s statements as to its use of a mark for particular goods

and services are unquestionably material to registrability.” Doc. 289 at 16 (quoting Nationstar

Mortgage LLC v. Mujahid Ahmad, 112 U.S.P.Q.2d 1361, 2014 WL 6480655, *3 (P.T.O. T.T.A.B. 2014)).

(11th Cir. 2008). Finally, Defendants have not shown clear and convincing evidence

that Plaintiff possessed the requisite intent to constitute fraud on the PTO. See In re

Bose Corp., 580 F.3d at 1243.

A. False Representation

Defendants’ Counterclaim alleges that Plaintiff’s assertion in its applications

that its Marks had been used in “primary” education markets since 2002 is false. See

Doc. 359 at 4. Their contention, however, is dependent on restricting the definition

of the term “primary” to only encompass kindergarten through fifth grade (“K-5”)

education. See id. at 5. Indeed, Defendants admit that Plaintiff was serving middle

school (grades 6-8) students at least as early as 2004. Id. at 6. And Plaintiff’s

corporate representative credibly testified that it was developing middle school

courses on a small scale in the 2002-2003 period, having launched its initial courses

in 2002. Doc. 334 at 85:12-16; see also Doc. 351-34.8 Sprinkel’s testimony further

showed that Plaintiff was developing and piloting elementary courses like “Captain

Cardio” as far back as 2009.9 Doc. 331 at 109:4-111:2, 129:11-130:3. Therefore,

8 See also Doc. 334 at 83:2-7 (“So from 2002, at that point, online learning, we were seeing

tremendous success and then also greater demand. There was the intent to grow beyond the high

school, secondary market. And in 2002, we were developing middle school courses to get into

that primary market, primary meaning kindergarten through eighth grade at that point in

time.”), id. at 87:8-11 (“2002 was the initial two courses. There was a middle school geography

course and an FCAT test prep course that were launched in 2002. The full suite of middle school

courses was released in 2004.”), id. at 90:17-8, 98:17-99:5.

9 The Court recognizes that the Marks were also plainly in use at the elementary level

contrary to Defendants’ assertion in its post-trial brief, Plaintiff’s representation can

only be false if the Court adopts Defendants’ restrictive definition of “primary.” See

Doc. 359 at 5.

Thus, the Court must determine whether “primary” education can include

middle school grades or whether it is restricted to grades K-5. First, Defendants

point to a repealed Florida Statute which defines “secondary school” as “primarily

serv[ing] students in grades 6 through 12” to show that primary cannot, therefore,

include grades 6-8.10 Fla. Stat. § 1003.413(1) (eff. 2006-2012). However, this statute’s

brief existence, together with the fact that it was not in effect when Plaintiff began

using its marks or when it filed its applications to the PTO, affords it little weight.

See id. Defendants similarly direct the Court to a provision of the Florida

Administrative Code which refers to “Primary Education” as “Age Three Through

Grade Three.” Fla. Admin. Code r. 6A-4.0142 (2000). That too, however, is collateral

at best. That reference is one example extrapolated from a complex chapter setting

out qualifications for an exhaustive array of teaching and administrative

certifications that only serves to further muddy any semblance of a concrete,

from 2008 onwards through Plaintiff’s contract with Connections Academy. See Doc. 350-4; Doc.

334 at 22:25-23:3, 33:25-34:8, 40:6-41-5.

10 The Court notes that Defendants’ proposition is undercut by their own reference to

Plaintiff’s initial “secondary services” as “(grades 9-12)” in their post-trial brief. Doc. 359 at 6.

consistent structure. See, e.g., id. at r. 6A-4.0151 (Specialization Requirements for

Certification in Elementary Education (Grades K-6)) (emphasis added), id. at r. 6A-

4.0161 (Specialization Requirements for Certification in Middle Grades English

(Grades 5-9)) (emphasis added).

Additionally, several witnesses at trial described their understanding of

“primary” education. Sprinkel and Berry considered primary to refer to

kindergarten through third grade (K-3), however Sprinkel remarked that “every

school district is different.”11 Doc. 330 at 51:14-19; Doc. 331 at 112:3-113:6. Sprinkel

also observed that the definition of elementary school had changed over time,

remarking that it was once first through sixth grade, then became kindergarten

through sixth grade, and finally the present kindergarten through fifth grade. Doc.

331 at 112:16-20. She stated that “secondary school was always going to be in your

high school.” Id. at 112:25-113:3. Kerrie DeMilio, a Senior Marketing Coordinator

employed by Defendants, defined primary school as kindergarten through fifth

grade, stating that secondary school means sixth through twelfth grade. Id. at 50:6-

15; see also id. at 42:10-13. Jason Schultz (“Schultz”), Plaintiff’s Senior Director of

Instruction and corporate representative, described primary school as kindergarten

through eighth grade. Doc. 334 at 83:6-7; see also id. at 74:11-13, 80:9-23.

11 Berry referred to grades four and five as “intermediate.” Doc. 331 at 78:6-8.

This simply is not clear and convincing evidence of a false representation to

the PTO. First, as Imber testified, Plaintiff used the preapproved language

suggested by the trademark identification manual to facilitate its reduced-fee

application. Doc. 331 at 66:16-24. She based her choice of language on internal

investigations and the specimens attached to the application that demonstrated

those services, including developing curriculum for primary level education. Id. at

68:3-10. This was corroborated by Wurzel, who testified that she would have

diligently reviewed these applications and had access to the pertinent records

necessary to do so with accuracy. Doc. 327-9 at 50:7-51:14.

Secondly, as recounted infra, specific definitions for primary and secondary

education are elusive; and they frequently change. See infra at 9-10. Plaintiff,

however, who filed the applications, has testified through its corporate

representative that it considered primary education to include kindergarten

through eighth grade. Doc. 334 at 83:6-7. Though Defendants disagree with

Plaintiff’s definition, there is ample evidence in the record to suggest that—even

apart from Schultz’s testimony—primary education is commonly understood to

encompass at least up to sixth grade, and perhaps beyond. See, e.g., Doc. 331 at

112:16-113:3. This quibble over the definition of primary is not sufficient to

constitute a false representation to the PTO. See Flame & Wax, 2022 WL 3083070 at

*20-21.

Even if the Court is wrong in its conclusion regarding the definition of

“primary,” Defendants’ Counterclaim is foreclosed by Eleventh Circuit case law.

See Angel Flight, 522 F.3d at 1210. “A misstatement of the date of first use in the

application is not fatal to the securing of a valid registration as long as there has

been valid use of the mark prior to the filing date.” Id. at 1210 (citing Car Subx Serv.

Sys., Inc. v. Exxon Corp., 215 U.S.P.Q. 345, 351 (P.T.O. T.T.A.B. 1982)).

Defendants contend that this standard is inapplicable because Plaintiff did

not make any valid use of its Marks in commerce for primary school programs or

curriculum development. See Doc. 359 at 11. However, it is clear from the record

that Plaintiff’s Marks were being used in commerce in the primary market—

regardless of how that is defined—through its agreement with Connections

Academy from 2008 onwards.12 See, e.g., Doc. 330 at 59:22-60:3, 84:9-24, Doc. 331 at

124:3-16, Doc. 334 at 24:12-18, 26:2-13, 27:23-28:4, 39:22-41:5, Doc. 350-4, Doc. 350-6,

¶¶ 6.2, 7.4, Doc. 351-33, Doc. 351-77, Doc. 351-79. Moreover, beginning in 2009,

Plaintiff was launching pilot programs and developing its own in-house elementary

curriculum branded with its Marks. See Doc. 331 at 109:14-111:2. Because Plaintiff’s

Marks were plainly used in commerce in the primary market for years prior to the

12 Plaintiff’s co-branding with Connections Academy from 2008 onwards also defeats

Defendants’ afterthought argument regarding the five-year requirement for Section 2(f) acquired

distinctiveness. See Doc. 359 at 12.

filing of its application, any misstatement of such dates of first use cannot be

grounds for cancellation. Angel Flight, 522 F.3d at 1210; see also Direct Niche, LLC v.

Via Varejo S/A, 898 F.3d 1144, 1150 (11th Cir. 2018) (describing that actual sales, in

addition to evidence of advertising, publicity, and solicitation, suffice to show use

in commerce); see also, e.g., Doc. 351-76 at 4.

Defendants’ secondary argument that Plaintiff’s statements of exclusive use

were false because the Settlement Agreement included a safe harbor has even less

merit. The parties’ Settlement Agreement—which resolved their initial trademark

dispute—granted Defendants a limited period within which to continue using

marks that are not at issue in this litigation and were not admitted or found to be

confusingly similar or infringing. See Doc. 350-14 at 3-5, 10. The existence of that

safe harbor provision is not evidence that Plaintiff’s statements in its subsequent

trademark application of exclusive use of its Marks were false. Indeed, pursuant to

the terms of the Settlement Agreement, Plaintiff was the owner of those marks at the

time it filed its trademark applications; Defendants were merely licensees. Doc. 350-

14 at 9-10, 22-23. “The law is clear that while a license is in effect, use of a licensed

mark by a licensee inures to the benefit of the licensor.” Clayton v. Howard Johnson

Franchise Sys., Inc., 730 F. Supp. 1553, 1560 (M.D. Fla. July 27, 1988) (citing 15 U.S.C.

§ 1055); see also In Dime We Trust, RLT v. Armadillo Distrib. Enters., Inc., No. 8:21-cv-

1967-SDM-AAS, 2023 WL 4931164, *3 (M.D. Fla. June 6, 2023). In fact, evidence that

Plaintiff acquired marks which “[it] claimed caused confusion” prior to filing its

applications, if anything, bolsters its statements of exclusive use of its Marks. Doc.

359 at 10; see also Doc. 331 at 74:17-76:23.

B. Knowledge & Intent

Finally, even if the Court has misinterpreted Angel Flight, there is simply no

evidence in the record that Plaintiff knowingly intended to deceive the PTO.

Relying on a Trademark Trial and Appeal Board (“T.T.A.B.”) opinion,

Defendants contend that “reckless disregard” is sufficient to constitute subjective

intent. See Doc. 359 at 12-13 (citing Chutter, Inc. v. Great Management Grp., LLC

Chutter, Inc. v. Great Concepts, LLC, 2021 WL 4494251 (P.T.O. T.T.A.B. Sept. 30, 2021)

rev’d on other grounds, Great Concepts, LLC v. Chutter, Inc., 84 F.4th 1014, 1034 n.2 (Fed

Cir. 2023)). However, T.T.A.B. decisions—though capable of carrying preclusive

effect in certain circumstances—are not binding on this Court. See B&B Hardware,

Inc. v. Hargis Indus., Inc., 575 U.S. 138, 147-60 (2015) (holding that issue preclusion

can attach to some T.T.A.B. decisions); see also Bonner v. City of Prichard, Ala., 661

F.3d 1206, 1209 (11th Cir. 1981).

Contrary to the Chutter court’s “reckless disregard” standard, in the Eleventh

Circuit, fraud “requires a purpose or intent to deceive the PTO in the application

for the mark.” Sovereign Mil. Hosps. Ord. of Saint John of Jerusalem of Rhodes and of

Malta v. Florida Priory of Knights Hosps. of Sovereign Ord. of Saint John of Jerusalem,

Knights of Malta, Ecumenical Ord., 702 F.3d 1279, 1289 (11th Cir. 2012). More

pointedly, the “declarant-focused text of the application oath requires the

signatory’s good-faith, subjective belief in the truth of its contents.” Id. at 1290

(emphasis added). “If the declarant subjectively believes the applicant has a

superior right to use the mark, there is no fraud, even if the declarant was

mistaken.” Id. at 1292. “Subjective intent to deceive, however difficult it may be to

prove, is an indispensable element in the analysis.” In re Bose Corp., 580 F.3d 1240,

1245 (Fed. Cir. 2009). The Court cannot sidestep this body of binding precedent in

favor of the T.T.A.B.’s holding in Chutter.13

It is true that, “because direct evidence of deceptive intent is rarely available,

such intent can be inferred from indirect and circumstantial evidence.” In re Bose

Corp., 580 F.3d at 1245. Here, however, there is no evidence that Plaintiff, or its

agents, had a subjective intent to deceive the PTO. Defendants contend that Wurzel,

who signed the PTO applications, was not even aware of the Marks’ first use dates

or that actual use was required. Doc. 359 at 13. Upon review of her deposition

transcript, however, Wurzel merely admitted that she did not precisely recall the

13 This conclusion is bolstered by the Federal Circuit’s holding in In re Bose Corp., 580 F.3d

1240, 1245 (Fed. Cir. 2009). In reversing its decision to cancel a mark for fraud, the Federal Circuit

noted that the T.T.A.B. had departed from long standing precedent to “erroneously lower[] the

fraud standard to a simple negligence standard.” Id. at 1244; see also id. at 1243-46.

details of events that occurred over seven years prior to the date of her testimony.14

Doc. 327-9 at 24:16-27:22; see also id. at 5:12-8:8, 21:9-12, 47-58. Wurzel also testified

that she was aware that her signature attested to the accuracy of Plaintiff’s

declarations and confirmed that she worked with and relied upon counsel in

finalizing and reviewing the documents. Doc. 327-9 at 24:21-25:1, 46:14-18, 49:9-50:6.

Though Defendants meekly imply that Imber may have failed to diligently

verify information received from Plaintiff, it is telling that Defendants did not argue

that Imber’s testimony evinced any intent to deceive the PTO. See Doc. 359 at n.13.

On the contrary, Imber’s testimony was highly credible and conveyed a thorough

knowledge and understanding of the trademark registration process, which

supports Plaintiff’s argument that it made a concerted, good-faith effort to describe

its Marks and its use thereof. See Doc. 331 at 80:7-101:11. In fact, based on Imber and

Wurzel’s testimony, the evidence would likely be insufficient to show intent even

under the Chutter standard. 2021 WL 4494251 at *9 (“[B]y failing to make an

14 See, e.g., Doc. 327-9 at 50:7-21 (“Q:…So in the course of signing this declaration attesting

to facts about the trademark use, would you have consulted records to determine whether the

statements were accurate or not at the time you executed the declaration? A: Again, it was seven

years ago so I can’t tell you exactly what I did, but I would have reviewed the document. I would

have tried to check it as best I could before signing it and then I would have signed it if I felt like,

you know, things were in line. Did I review every single word and scrutinize every single word, I

don’t know that I could say that, but I wouldn’t have signed it if I hadn’t reviewed it.”).

appropriate inquiry into the accuracy of the statements the declarant acts with a

reckless disregard for the truth.”) (emphasis added).

What amounts to, at best, evidence of negligence does not come close to

showing that Wurzel or anyone else knew that the Marks had not been used in

commerce and filed the applications anyway. See Spiral Direct, Inc. v. Basic Sports

Appeal, 293 F. Supp. 3d 1334, 1361 (M.D. Fla. Dec. 12, 2017) (“Conversely, where a

trademark owner knows that he has not used a trademark in commerce but

nonetheless submits an application based on use of the mark in commerce, the

Court may infer a fraudulent intent.”) (emphasis added). Regarding Plaintiff’s 2010

registrations, this Court has already rejected Defendants’ recycled infectious

invalidity arguments. See Doc. 289 at 13-14. Whatever concerns may be present in

those registrations are not indicative of any subjective intent to deceive the PTO in

the filing of Plaintiff’s 2016 applications. Defendants’ kitchen sink arguments

invoking Plaintiff’s statements to the legislature and during other legal

proceedings, and their arguments related to puffery and unpled claims of false

advertising fare no better.

V. Conclusion

While there may be a quibble as to the precise definition of “primary”

education, Defendants have not shown that Plaintiff’s applications contained any

false representations or evidence of nefarious intent remotely rising to the level of

fraud on the PTO. Accordingly, JUDGMENT will be entered for the Plaintiff and

against the Defendants on the Defendants’ Counterclaim for Cancellation of

Plaintiff's federally registered trademarks for fraud on the U.S. Patent and

Trademark Office. See Doc. 155, ¥ 54.

All pending motions from Phase I are hereby DENIED as moot.

DONE and ORDERED in Orlando, Florida on December 1, 2023.

hee GREGORY A. PRESNELL

UNITED STATES DISTRICT JUDGE

Copies furnished to:

Counsel of Record

Unrepresented Parties

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