Scienter is adequately pled in trademark suit
ING BANK fsb (d/b/a ING DIRECT), et al. v. The PNC Financial Services Group, Inc., et al., Civ. No. 08-514-LPS, June 22 , 2009.
Stark, M. J. Plaintiff’s motion to dismiss defendants’ counterclaim is denied.
Defendant’s counterclaim seeks cancellation of plaintiff’s design mark registration due to fraud on the PTO. Plaintiff contends that the counterclaim must be dismissed for failure to state a claim in that it fails to adequately allege scienter and fails to identify an injury. The parties have consented to the Magistrate’s jurisdiction to determine this case dispositive motion. The Court applies the Fifth Circuit’s standard in Southland Sec. Corp. v. INSpire Ins. Solutions Inc. A party alleging that a corporation made a fraudulent statement may do so adequately by alleging that the declarant or anyone at the corporation advising or assisting the declarant or anyone participating in any way in preparation of the allegedly false statement knew or should have known it was false. Applying this standard, the Magistrate finds that the defendants have adequately pled scienter. In addition, the Court finds that the defendants have adequately alleged that plaintiff has no rights in the mark.
