IP Law Daily, TRADEMARK—M.D. Fla.: Effort to invalidate trademark for fraud on the PTO fails for lack of intent, (Dec 4, 2023)

By Robert B. Barnett Jr., J.D.

A disagreement about which grades constitute “primary education” did not transform the claim into a fraud upon the Trademark Office.

In phase one of a bifurcated trial involving claims by a Florida agency providing online educational services to children that a for-profit company providing similar services infringed its trademarks, an Orlando federal district court has rejected the for-profit’s counterclaim that the trademarks should be invalidated for fraud, after finding that no evidence of any intent to defraud the Trademark Office existed. Furthermore, the court noted, even if the state agency erred in stating its date of first use of the mark in commerce, such a misstatement was not fatal to the registration because the state agency made valid use of the mark prior to the registration filing date (Florida Virtual School v. K12, Inc., December 1, 2023, Presnell, G.).

Background. Florida Online High School was established in 1997 as a public agency to deliver online and distance learning programs. As the name implies, the agency began its life providing only high school education. During those early years, however, Florida Online High School was also developing courses and curriculum for middle school students (grades 6-8). In 2001, Florida Online High School changed its name to Florida Virtual School, and it launched its first limited middle school programs in 2002. In 2004, the Florida legislature required that Florida Virtual School begin offering a full suite of middle school courses, which it did beginning in the 2004-2005 school year. After experiencing rapid growth in the middle school programs, Florida Virtual School expanded into elementary school (K-5) education services. Pilot programs for elementary school services were begun in 2009.

To that end, in 2008, Florida Virtual School partnered with Connections Academy, an online services company, to provide a full suite of online education program for kindergarten through eighth grade. By the 2017-2018 school year, however, Florida Virtual School had developed its own programs, and the partnership ended.

Meanwhile, in 2016, Florida Virtual School filed applications with the Trademark Office to register several trademarks, including the three at issue in this case. Two of the applications stated that the trademarks were first used in commerce at least as early as the beginning of 2002, while the third application stated that the first use in commerce was the beginning of 2008.

In 2020, Florida Virtual School sued K-12, Inc., and K12 Florida, LLC in Florida federal court, alleging that their online schools, called the Digital Academy of Florida and the Florida Cyber Charter Academy, committed trademark infringement, engaged in false advertising, violated unfair competition rules, and breached an agreement that settled previous litigation. K-12 counterclaimed, seeking cancellation of the three trademarks on the basis of a fraud on the Trademark Office. More specifically, K-12 asserted that the registrations were fraudulent because Florida Virtual School was not active in primary education in 2002, as the registrations claimed. The court agreed to bifurcate the trial, with this first phase devoted solely to K-12’s counterclaim of fraudulent registration.

False representation. The dispute devolved into a disagreement about what exactly is meant by the term “primary education.” Among the definitions offered at trial were: (1) kindergarten through fifth grade, (2) kindergarten through third grade, and (3) kindergarten through eighth grade. Because Florida Virtual School was clearly involved in middle school programs (6-8) at that time, the only way for K-12 to prevail on its counterclaim was for the court to adopt a more restrictive definition that limited “primary education” to fifth grade and under, which the court refused to do. Acknowledging that the definition has changed over time and differs among school districts, the court ruled that it was not going to conclude that Florida Virtual School had defrauded the Trademark Office based on a disagreement or confusion surrounding differences in how the term “primary education” was defined.

Furthermore, the court added, even if its conclusion about “primary education” was wrong, K-12’s counterclaim was precluded by Angel Flight of Ga., Inc. v. Angel Flight Am., Inc., 522 F.3d 1200, 1210 (11th Cir. 2008), in which the Eleventh Circuit said: “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.” It was clear from the record, the court said, that the marks were being used in commerce via the partnership with Connections Academy beginning in 2008. Also, beginning in 2009, Florida Virtual School was clearly using its marks in association with its own pilot programs as it sought to develop an in-house elementary curriculum with its marks. Because those dates were prior to the 2016 date that the applications were filed, any misstatements about first use dates failed to serve as grounds for cancellation.

Intent. The court went on to rule that, even if Angel Flight did not preclude this counterclaim, the counterclaim would still lose because no evidence existed that the “Plaintiff knowingly intended to deceive the PTO,” as was required for the counterclaim to prevail. Nor was there any evidence of reckless disregard, as K-12 asserted. It is possible, the court acknowledged, that Florida Virtual School was a bit careless in confirming the first use date when it filed its application. That possible carelessness, however, “does not come close” to supplying the fraudulent intent necessary to support K-12’s counterclaim.

The court, therefore, ruled that K-12 failed to show that the trademark registrations “contained any false representations or evidence of nefarious intent remotely rising to the level of fraud on the PTO.” Judgement was entered for Florida Virtual School and against K-12 on the counterclaim for cancellation of the registered trademarks for fraud on the Trademark Office. The case will continue on the claims in the complaint.

The Case is No. 6:20-cv-02354-GAP-EJK.

Attorneys: Stephen H. Luther (Luther Law PLLC) for Florida Virtual School. Steven P. Hollman (Sheppard, Mullin, Richter & Hampton, LLP) for K12, Inc. and K12 Florida, LLC.

Companies: Florida Virtual School; K12, Inc.; K12 Florida, LLC

Cases: Trademark FloridaNews