Oracle has filed a motion to dismiss a fraud claim in a trademark dispute over its long-standing “JAVASCRIPT” mark.
The motion – submitted to the United States Patent and Trademark Office (USPTO) Trademark Trial and Appeal Board (TTAB) – argues that the petitioner, Deno Land Inc., has failed to state a plausible claim for fraud.
The dispute centres on Oracle’s Registration No. 2416017 for the JAVASCRIPT mark, which covers computer programs and related services. Deno Land Inc. filed a petition to cancel the registration, alleging that Oracle committed fraud on the USPTO by submitting a fraudulent specimen to support the renewal of its trademark.
Oracle’s motion, filed under Federal Rule of Civil Procedure 12(b)(6), seeks to dismiss the fraud claim, arguing that the petition fails to meet the heightened pleading standards required for such allegations. Oracle contends that the petition ignores the fact that it submitted two specimens during the renewal process, one of which – the Primary Specimen – remains unchallenged by the petitioner.
Background of the Oracle trademark dispute over JavaScript
Oracle has used the JAVASCRIPT mark since at least 1996 in connection with various offerings, including educational services, developer tools, and computer programs. The mark was registered on 26 December 2000 and has been maintained through several renewals, including a Combined Section 8 and 9 Declaration of Use and Application for Renewal filed on 26 December 2019.
During the 2019 renewal, Oracle submitted two specimens: the Primary Specimen, which showed the JAVASCRIPT mark in use on Oracle’s website in connection with the JAVASCRIPT Extension Toolkit, and a secondary specimen, which consisted of a screenshot of the node.js website (the Node.js Specimen).
Deno Land Inc. alleges that the Node.js Specimen did not show any use of the mark by Oracle and that Oracle knowingly submitted a fraudulent specimen. However, Oracle argues that the petition fails to address the Primary Specimen, which was also submitted and remains unchallenged.
The legal arguments
Oracle’s motion asserts that the petition fails to meet the legal standards for a fraud claim. Under Rule 12(b)(6), a claim must be plausible on its face to survive a motion to dismiss. Oracle argues that the petition’s allegations are insufficient to give rise to a plausible entitlement to relief.
The motion highlights that fraud must be pled with particularity and proven with clear and convincing evidence. Oracle contends that the petitioner has not met this burden, as it has not alleged any false statements with respect to the Primary Specimen.
Oracle also argues that the petition fails to allege materiality, as it does not claim that the USPTO relied solely on the Node.js Specimen in granting the renewal. Additionally, the petition lacks any allegation of deceptive intent—an essential element of a fraud claim.
Oracle has requested that the TTAB dismiss the fraud claim with prejudice, arguing that the petition’s deficiencies cannot be remedied through amendment. The company has also asked that its deadline to answer the remaining claims be reset to at least 30 days after the Board’s decision on the motion.
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