Charles Bertini v. Apple Inc.

Opinion

1 2 3 4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA 6 SAN JOSE DIVISION

7 CHARLES BERTINI, Case No. 24-cv-03437-VKD 8 Plaintiff, 9 ORDER GRANTING IN PART AND v. DENYING IN PART PLAINTIFF'S 10 MOTION FOR LEAVE TO FILE APPLE INC., THIRD AMENDED COMPLAINT 11 Defendant. Re: Dkt. No. 92 12 13 In this trademark action, plaintiff Charles Bertini moves for leave to file a third amended 14 complaint (“TAC”) to reassert several claims for fraud. Dkt. Nos. 92, 94. Defendant Apple Inc. 15 (“Apple”) opposes the motion. Dkt. No. 93. The matter is deemed suitable for determination 16 without oral argument. Civil L.R. 7-1(b). Upon consideration of the moving and responding 17 papers, the Court grants in part and denies in part Mr. Bertini’s motion.1 18 I. BACKGROUND 19 This action is the latest in a long history of disputes between Mr. Bertini and Apple 20 involving use of the APPLE trademark for educational and entertainment services. The Court 21 assumes familiarity with the general background facts, which are recited in Judge Gonzalez 22 Rogers’s April 14, 2025 order granting in part and denying in part Apple’s Rule 12(b)(6) motion 23 to dismiss the second amended complaint (“SAC”), the operative pleading. See Dkt. No. 69. 24 Briefly stated, in his SAC Mr. Bertini asserted claims for cancellation of the APPLE mark due to 25 alleged abandonment, as well as several claims for fraud based on materials Apple submitted to 26

27 1 This action was reassigned to this Court after all parties expressly consented that all proceedings 1 the U.S. Patent & Trademark Office (“USPTO”). See Dkt. No. 64. 2 Judge Gonzalez Rogers denied Apple’s motion to dismiss the abandonment claim, finding 3 that the allegations of Mr. Bertini’s SAC “provide sufficient, and plausible, multiple three-year 4 timeframes in which it is possible that Apple did not use the mark in commerce.” Dkt. No. 69 at 5 6.2 The Court was not persuaded by Apple’s arguments for dismissal of the abandonment claim, 6 noting that those arguments turned on disputed facts and that it was “not yet proper to consider 7 evidence and testimony” at that stage of the proceedings. Id. at 6-7. 8 Judge Gonzalez Rogers granted Apple’s motion to dismiss Mr. Bertini’s fraud claims, 9 finding that his SAC “does not plead facts that [Apple] knew that [its] representation was false or 10 that it intended to induce reliance on the misrepresentation.” Dkt. No. 69 at 7. The dismissal of 11 those fraud claims was “without prejudice to possible amendment at a future date” only “if 12 discovery on the abandonment issue reveals evidence that [Apple] knowingly made a false 13 representation to the USPTO about the specimens at issue, and that [Apple] intended to induce 14 reliance upon that misrepresentation.” Id. at 8. “Should discovery so reveal,” the Court stated that 15 Mr. Bertini “may bring a motion to amend.” Id. 16 Claiming that “[d]iscovery on the abandonment issue has revealed evidence that [Apple] 17 knowingly made false representations to the USPTO about the specimens at issue,” Mr. Bertini 18 now seeks leave to file his proposed TAC to reassert several claims for fraud. See Dkt. Nos. 92, 19 94. Apple maintains that matters cited by Mr. Bertini are not new and were not “revealed” in 20 discovery, and do not support a finding of fraud in any event. See Dkt. No. 93. 21 II. LEGAL STANDARD 22 Rule 15(a) provides that leave to amend “‘should [be] freely give[n] . . . when justice so 23 requires,’ because the purpose of the rule is ‘to facilitate decision on the merits, rather than on the 24 pleadings or technicalities.’” Novak v. United States, 795 F.3d 1012, 1020 (9th Cir. 2015) 25 (citation omitted). “The decision of whether to grant leave to amend nevertheless remains within 26 the discretion of the district court,” which may deny leave to amend if allowing amendment would 27 1 unduly prejudice the opposing party, cause undue delay, or be futile, or if the party seeking 2 amendment has acted in bad faith. Leadsinger v. BMG Music Pub., 512 F.3d 522, 532 (9th Cir. 3 2008) (citing Foman v. Davis, 371 U.S. 178, 182 (1962)). 4 In evaluating Mr. Bertini’s motion for leave to amend, the Court necessarily considers 5 whether the proposed amendment states a claim for relief. For claims sounding in fraud, courts 6 apply Rule 9(b), which requires a party to “state with particularity the circumstances constituting 7 fraud or mistake.” Fed. R. Civ. P. 9(b); La Terra Fina USA, LLC v. Reser’s Fine Foods, Inc., No. 8 3:23-cv-02631-JSC, 2024 WL 1973468, at *1 (N.D. Cal. May 3, 2024) (“Because this claim [for 9 fraud in procurement of a trademark] sounds in fraud, Federal Rule of Civil Procedure 9(b) 10 applies.”); see also AirWair Int’l Ltd. v. Schultz, 84 F. Supp. 3d 943, 951 n.3 (N.D. Cal. 2015) 11 (same). 12 III. DISCUSSION 13 A. Mr. Bertini’s Request for Judicial Notice 14 Mr. Bertini asks the Court to take judicial notice of 27 documents. See Dkt. No. 92 at 10- 15 13. Federal Rule of Evidence 201 permits the Court, on its own or on a party’s request, to take 16 judicial notice of “a fact that is not subject to reasonable dispute because it: (1) is generally known 17 within the trial court’s territorial jurisdiction; or (2) can be accurately and readily determined from 18 sources whose accuracy cannot reasonably be questioned.” Fed. R. Evid. 201(b); see also Khoja 19 v. Orexigen Therapeutics, Inc., 899 F.3d 988, 999 (9th Cir. 2018). Accordingly, a court may take 20 judicial notice of matters of public record. Khoja, 899 F.3d at 999. “But a court cannot take 21 judicial notice of disputed facts contained in such public records.” Id. Although Apple disputes 22 that any of these documents supports Mr. Bertini’s proposed fraud claims, Apple does not oppose 23 Mr. Bertini’s request for judicial notice. 24 The Court takes judicial notice of the following documents because they are “generally 25 known within the trial court’s territorial jurisdiction” or “can be accurately and readily determined 26 from sources whose accuracy cannot reasonably be questioned.” The Court also takes judicial 27 notice of “publicly available webpages” listed below as “proper subjects of judicial notice.” See • Trademark application, Serial No. 77428980 (Dkt. No. 91-2 at 1-7, Bertini Decl., 1 Ex. 1) 2 • February 13, 2008 First 30 Day Request for Extension of Time to Oppose (Dkt. No. 3 92-2 at 9, Bertini Decl., Ex. 2)

4 • July 14, 2008 Notice of Opposition (Dkt. No. 92-2 at 11-16, Bertini Decl., Ex. 3)

5 • November 11, 2011 Statement of Use and Extension Request (Dkt. No. 92-2 at 18- 6 28, Bertini Decl., Exs. 4A, 4B)

7 • Printout of a webpage https://web.archive.org/web/20111007234801/https://edseminars.apple.com/semina 8 rs/ (Dkt. No. 92-2 at 30-32, Bertini Decl., Ex. 5). The proposed TAC appears to 9 contain a similar exhibit, omitting certain portions of the web page Dkt. No. 92-7 (Ex. 6). 10 • A portion of the Declaration of Thomas R. La Perle bearing the caption for Apple 11 Inc. v. Amazon.com, No, 11-cv-01327-PJH (N.D. Cal.) (Dkt. No. 92-2 at 34-35, 12 Bertini Decl., Ex. 6A)

13 • A portion of the Declaration of Thomas R. La Perle, bearing the caption for Microsoft Corporation v. Apple Inc., TTAB Opposition No. 91195582 (Dkt. No. 14 92-2 at 36-45, Bertini Decl., Ex. 6B)

15 • Printout of web page 16 http://web.archive.org/web/20111111005016/http://www.apple.com/sitemap/ (Dkt. No. 92-2 at 47-49, Bertini Decl., Ex. 7) 17 • Form 10-K for fiscal year ended September 29, 2012 (Dkt. No. 92-2 at 51-56, 18 Bertini Decl., Ex. 8) 19 • January 17, 2018 Combined Declaration of Use and Incontestability (Dkt. No. 92-2 20 at 58-66, Bertini Decl., Ex. 9)

21 • Form 10-K for fiscal year ended September 29, 2018 (Dkt. No. 92-3 at 10-13, Bertini Decl., Ex. 14); 22

23 • January 14, 2022 Combined Declaration of Use and/or Excusable Nonuse/Application for Renewal of Registration of a Mark (Dkt. No. 92-3 at 17-25, 24 Bertini Decl., Ex. 16). The proposed TAC appears to contain a similar exhibit, omitting some portions (Dkt. No. 92-7, Ex. 16). 25

26 • August 21, 2018 Response to Office Action (Dkt. No. 92-3 at 39-43 (Bertini Decl., Ex. 19) 27 1 • 2025 printout of web page https://www.uspto.gov/trademarks/ laws/mandatory- 2 electronic-filing (Dkt. No. 93-7, Mazzello Decl., Ex. 6)

3 • Post Publication Amendment of Application and Conditional Stipulation of Dismissal without Prejudice dated August 19, 2008 and filed on September 5, 2008 4 in connection with TTAB Opposition Proceeding No. 91185195 (Dkt. No. 93-12, Mazzello Decl., Ex. 11 at 2). 5 6 B. Proposed Fraud Claims 7 Mr. Bertini seeks leave to assert several claims for cancellation of the APPLE mark due to 8 alleged fraud on the USPTO in the procurement and maintenance of the mark (proposed Claims 2 9 through 4). The proposed TAC also seeks damages (proposed Claim 5). See Dkt. No. 92-6 ¶¶ 99- 10 192. 11 A trademark is fraudulently obtained “only if the applicant or registrant knowingly makes 12 a false, material representation with the intent to deceive the [US]PTO.” In re Bose, 580 F.3d 13 1240, 1245 (Fed. Cir. 2009). To allege a claim for cancellation based on fraud, a party must plead 14 the following elements: “1) a false representation regarding a material fact; 2) the registrant’s 15 knowledge or belief that the representation is false; 3) the registrant’s intent to induce reliance 16 upon the misrepresentation; 4) actual, reasonable reliance on the misrepresentation; and 17 5) damages proximately caused by that reliance.” OTR Wheel Eng’g, Inc. v. W. Worldwide Servs., 18 Inc., 897 F.3d 1008, 1019 (9th Cir. 2018) (citing Hokto Kinoko Co. v. Concord Farms, Inc., 738 19 F.3d 1085, 1097 (9th Cir. 2013)). Such claims leave “no room for speculation, inference or 20 surmise and, obviously, any doubt must be resolved against the charging party.” In re Bose, 580 21 F.3d at 1243. A party seeking cancellation of a mark due to fraud must establish its fraud claim by 22 clear and convincing evidence. Id.; see also OTR Wheel Eng’g, 897 F.3d at 1020. “[B]ecause 23 direct evidence of deceptive intent is rarely available, such intent can be inferred from indirect and 24 circumstantial evidence.” In re Bose, 580 F.3d at 1245. “But such evidence must still be clear and 25 convincing, and inferences drawn from lesser evidence cannot satisfy the deceptive intent 26 requirement.” Id. 27 At the outset, Apple argues that as a general matter, Mr. Bertini’s motion for leave to 1 amend should be denied to the extent it relies on materials that are not “new” and that he himself 2 produced in discovery. See Dkt. No. 93 at 5. While much of the material on which Mr. Bertini 3 relies appears to have been available to him at the outset of the litigation and is not evidence 4 developed during discovery on the abandonment issue, the Court declines to deny Mr. Bertini’s 5 motion on that basis. The Court does not read the April 14, 2025 order as precluding an otherwise 6 proper motion for leave to amend solely because the amendment relies on materials that pre-date 7 this litigation or that were produced by Mr. Bertini (rather than by Apple) in discovery. 8 1. Proposed Claim 2 (Fraud in Procurement) 9 Mr. Bertini’s proposed TAC alleges that Apple made false statements in connection with 10 its 2008 application to register the APPLE mark. At issue are a March 22, 2008 declaration, as 11 well as a November 11, 2011 statement of use and request for extension, submitted to the USPTO 12 by Thomas La Perle, Apple’s Senior Intellectual Property Counsel. See Dkt. No. 92-6 ¶¶ 99-124. 13 a. Third-Party Marks 14 The proposed TAC alleges that Apple committed fraud on the USPTO when applying to 15 register the APPLE mark by concealing Apple’s knowledge of a third party’s use of the mark 16 APPLEJAXX for entertainment services. Specifically, Mr. Bertini points out that in a March 22, 17 2008 declaration submitted with Apple’s application, Mr. La Perle stated under oath that “to the 18 best of his[] knowledge and belief no other person . . . has the right to use the mark in commerce, 19 either in the identical form thereof or in such near resemblance thereto as to be likely, when used 20 on or in connection with the goods/services of such other person, to cause confusion[.]” Dkt. No. 21 92-6 ¶ 100; see also Dkt. No. 92-2 at 6 (Bertini Decl., Ex. 1). Mr. Bertini claims that this 22 statement is false because Apple was at that time aware of a third party’s application for 23 registration of the mark APPLEJAXX, for which Apple sought an extension of time in February 24 2008 to file an opposition. Dkt. No. 92-6 ¶¶ 101-103; see also Dkt. No. 92-2 at 9 (Bertini Decl., 25 Ex. 2). Additionally, Mr. Bertini alleges that in its opposition to the APPLEJAXX registration, 26 Apple stated that the use of APPLEJAXX is “likely to cause confusion” with Apple’s marks. See 27 id. ¶ 101; see also Dkt. No. 92-2 at 13 (Bertini Decl., Ex. 3). The proposed TAC claims that 1 in ‘near resemblance . . . to cause confusion.’” Dkt. No. 92-6 ¶ 101. 2 Mr. Bertini’s proposed TAC does not sufficiently allege falsity, knowledge, or intent 3 necessary to state a plausible claim for fraud based on the APPLEJAXX mark. Mere knowledge 4 of the existence of the APPLEJAXX mark is not sufficient to establish fraud. See Quiksilver, Inc. 5 v. Kymsta Corp., 466 F.3d 749, 755 (9th Cir. 2006) (“The statement of an applicant that no other 6 person ‘to the best of his knowledge’ has the right to use the mark does not require the applicant to 7 disclose those persons whom he may have heard are using the mark if he feels that the rights of 8 such others are not superior to his.”) (quotation modified; citation omitted). Rather, courts have 9 held that “an applicant must only disclose ‘conflicting rights’ of another user ‘which are clearly 10 established, for example, by a court decree, by the terms of a settlement agreement, or by a 11 registration.’” AirWair Int’l, 84 F. Supp. 3d at 952 (quoting Ross & Mastracco, Inc. v. Giant 12 Food, Inc., 720 F.2d 1263, 1266 (Fed. Cir. 1983)). The proposed TAC’s allegation that “another 13 person used [Apple’s mark] in a similar form with clear priority rights” (Dkt. No. 92-6 ¶ 102) is 14 conclusory. Mr. Bertini does not allege facts from which it reasonably may be inferred that the 15 third-party applicant for APPLEJAXX had rights superior to those of Apple or that Apple believed 16 that the applicant had such rights. Indeed, documents submitted by Mr. Bertini for judicial notice 17 indicate that Apple opposed the APPLEJAXX registration on the ground that the third party did 18 not have the right to use that mark. See Dkt. No. 92-2 (Bertini Decl., Ex. 3). While the proposed 19 TAC alleges that “Apple could not stop the registration of the APPLEJAXX mark for 20 entertainment services and it was registered on October 21, 2008” (Dkt. No. 92-6 ¶ 116), Apple 21 submits evidence showing the stipulated disposition of the APPLEJAXX opposition. Dkt. No. 93- 22 12 (Mazzello Decl., Ex. 11 at 2); see also https://tmsearch.uspto.gov/search/search- 23 results/77239699 (last visited July 7, 2026). That disposition reflects that the third party in 24 question amended his application for registration of APPLEJAXX to narrow the relevant services 25 to “live performances by the musician Ernest Owens” and “performing live musical concerts 26 featuring Ernest Owens,” such that Apple argues his use and registration would not be likely to 27 cause confusion with the APPLE mark. Id. 1 statement, the TAC’s allegations regarding intent (see Dkt. No. 92-6 ¶ 103) are conclusory and 2 speculative. See, e.g., Dkt. No. 92-6 ¶ 103 (“Apple didn’t use the [APPLE] Mark for 3 entertainment service but it wanted to prevent registration of other marks comprising [the] word 4 ‘apple’ in this field. The filed Opposition of APPLEJAXX and the false statement in the 5 Declaration show intent to deceive the USPTO in order to avoid denial of Apple’s Application and 6 later to obtain registration for mark ‘Apple.’”). Equally speculative is Mr. Bertini’s bare 7 allegation regarding the subsequent registration for another third-party mark, APPLE JAM, 8 apparently cited as “indirect and circumstantial evidence” of Mr. La Perle’s “motivat[ion] to 9 register the single word mark Apple for entertainment services to prevent additional registrations 10 of marks comprising the word ‘apple’ in this field.” See id. ¶ 116. Such allegations fall far short 11 of plausibly asserting “sufficient culpability to require a finding of intent to deceive.” In re Bose, 12 580 F.3d at 1245 (citation omitted); see id. at 1243 (noting that “absent the requisite intent to 13 mislead the PTO, even a material misrepresentation would not qualify as fraud under the Lanham 14 Act warranting cancellation.”). 15 b. November 11, 2011 Statement of Use and Request for Extension 16 Mr. Bertini’s proposed TAC appears to claim fraud on the USPTO based on an alleged 17 discrepancy in statements Mr. La Perle made in a November 11, 2011 statement of use and a 18 November 11, 2011 request for extension of time to file a statement of use. The proposed TAC 19 alleges that the “two documents contradict each other” in that the statement of use says that Apple 20 “is using the [APPLE] mark in commerce” as evidenced by an attached specimen, while the 21 extension request states that Apple “has a continued bona fide intention to use . . . the mark in 22 commerce.” See Dkt. No. 92-6 ¶¶ 117, 118; see also Dkt. Nos. 92-2 at 22, 26 (Bertini Decl. Exs. 23 4A, 4B). In particular, pointing out that the extension request sought additional time to file a new 24 statement of use if “the USPTO finds the [statement of use] to be fatally defective,” Mr. Bertini 25 alleges that Apple knew the submitted specimen was deficient to show the claimed use of the 26 APPLE mark, and that Apple intended to “deceive the examiner into acceptance of an otherwise 27 unacceptable specimen[.]” See Dkt. No. 92-6 ¶ 118. These allegations are insufficient to support 1 11, 2011 statement of use and November 11, 2011 extension request were disclosed to the USPTO 2 and nothing was withheld or concealed. Indeed, there are no facts alleged suggesting that the 3 examiner was misled or prevented from evaluating what the specimen showed regarding use of the 4 mark or the alleged inconsistency between the statements in the two documents. See Belstone 5 Cap., LLC v. Bellstone Partners, LLC, No. 2:16-cv-01124-KJM-GGH, 2017 WL 1153111, at *4- 6 *5 (E.D. Cal. Mar. 28, 2017) (finding that allegations of fraud were “undermin[ed]” by “plaintiff’s 7 own pleadings demonstrat[ing] [that] defendants provided the USPTO with the information 8 plaintiff alleges defendants withheld”); Paris Glove of Canada, Ltd. v. SBC/Sporto Corp., 84 9 U.S.P.Q.2d 1856, 1863, 2007 WL 2422997, at *8 (T.T.A.B. 2007) (finding no genuine issue 10 regarding fraud where “nothing was concealed or withheld from the [USPTO] and petitioner 11 showed no “issues of material fact in dispute with respect to respondent’s intent”), abrogated on 12 other grounds as stated in Safer, Inc. v. OMS Invs., Inc., 94 U.S.P.Q.2d 1031 (T.T.A.B. 2010). 13 Moreover, an intent to deceive cannot reasonably be inferred from the mere fact that an applicant 14 submitted a statement of use together with a request for an extension of time to submit an 15 additional specimen, if the USPTO finds the first specimen insufficient. See 37 C.F.R. § 2.89(e) 16 (contemplating extension request filed in conjunction with or after a statement of use). 17 c. Alleged Withheld URLs 18 Mr. Bertini’s proposed TAC alleges that intent to deceive may be inferred from Apple’s 19 presentation of a web page as a specimen without a URL, when other evidence shows that for 20 another mark, Apple presented a specimen (i.e., a screenshot) with a URL. See Dkt. No. 92-6 21 ¶ 121; see also Dkt. No. 92-4 (Bertini Decl., Ex. 27A); Dkt. No. 94 at 6. Mr. Bertini further 22 alleges that Apple withheld the URL from the specimen submitted with the November 11, 2011 23 statement of use “to prevent the examiner from navigating to pages where service was rendered to 24 see that service was provided under [the] mark Education Seminars & Events.” Dkt. No. 92-6 25 ¶ 121. The Court agrees with Apple that Mr. Bertini fails to plausibly allege an intent to deceive 26 on this basis. As Mr. Bertini acknowledges, the USPTO did not require that a website specimen 27 include a URL. See Dkt. No. 94 at 6; Dkt. No. 93-1 (Mazzello Decl., Ex. 6). Moreover, the 1 was able to locate a web page with precisely the information Apple supposedly sought to hide 2 from the examiner. See id. ¶¶ 106-108, 121; see also Dkt. No. 92-2 at 30-32 (Bertini Decl., Ex. 5). 3 d. Apple’s Form 10-K 4 Citing to an Apple Form 10-K filing with the U.S. Securities and Exchange Commission 5 (“SEC”), Mr. Bertini’s proposed TAC alleges that “Mr. La Perle and Apple had knowledge that no 6 service under [the] mark [APPLE] was offered by Apple on the date of the [November 11, 2011 7 statement of use].” Dkt. No. 92-6 ¶ 113. Mr. Bertini alleges that Apple’s Form 10-K filing for the 8 fiscal year ended September 29, 2012 shows many trademarks but not service mark [APPLE].” 9 Id.; see also Dkt. No. 92-2 at 51-56 (Bertini Decl., Ex. 8). He argues that “the fact that the single 10 word ‘Apple’ is not shown as a trademark . . . is relevant to show intent to deceive the USPTO.” 11 Dkt. No. 92 at 11. There are no facts alleged regarding how or why Apple’s Form 10-K, filed to 12 comply with the SEC’s disclosure requirements, has any bearing on Apple’s disclosures to the 13 USPTO for purposes of trademark registration. Mr. Bertini’s motion papers do not offer further 14 explanation or clarification in support of his allegation, but merely repeat the conclusory 15 allegations of the proposed TAC. See Dkt. No. 92 at 16-17; Dkt. No. 94 at 5, 7. 16 e. Apple’s Site Map 17 Mr. Bertini’s proposed TAC alleges that the mark “APPLE is not listed among other marks 18 on the site map of apple.com website on November 11, 2011.” Dkt. No. 92-6 ¶ 113; see also Dkt. 19 No. 92-2 at 47-49 (Bertini Decl., Ex. 7). He argues that this is “relevant to show that [Apple] did 20 not list the mark with its other important marks, which helps show intent to deceive the USPTO.” 21 Dkt. No. 92 at 11. Mr. Bertini does not allege facts from which it reasonably may be inferred that 22 Apple’s site map, showing a directory of the contents of its website, indicates that Mr. La Perle’s 23 submissions to the USPTO were false, much less that Mr. La Perle had knowledge or intent to 24 deceive the USPTO. 25 f. Attorney’s Experience 26 Mr. Bertini’s proposed TAC asserts various allegations that Mr. La Perle is an experienced 27 attorney who is highly knowledgeable about trademark law and rules. See, e.g., Dkt. No. 92-6 1 Rogers stated that “[t]he experience level of counsel does not show one way or another whether 2 the counsel in question intended to deceive or had knowledge of falsity.” Dkt. No. 69 at 8. In the 3 context of the allegations for Mr. Bertini’s proposed Claim 2, the Court agrees. Accordingly, 4 except as discussed below regarding proposed Claim 3, Mr. Bertini’s argument that the proposed 5 TAC now alleges counsel’s experience in “great detail,” including by reference to declarations Mr. 6 La Perle filed in other unrelated legal proceedings in this District and before the USPTO, is of no 7 particular import with respect to Mr. Bertini’s proposed fraud claims. See Dkt. No. 92-6 ¶ 111; 8 Dkt. No. 94 at 11; see also Dkt. No. 92-2 at 33-45 (Bertini Decl., Exs. 6A, 6B). 9 Equally unpersuasive is the proposed TAC’s allegation that Mr. La Perle’s declarations 10 and exhibits filed in those other unrelated proceedings demonstrate that the APPLE mark was used 11 to refer to Apple Inc. See Dkt. No. 92-6 ¶ 111. Mr. Bertini does not dispute the general 12 proposition that “[a] designation may function as both a trade name and a trademark or service 13 mark.” See Trademark Manual of Examining Procedure § 1202.01 (citing Walker Process Equip., 14 Ind., 233 F.2d 329, 332 (C.C.P.A. 1956)); see also Dkt. No. 94 at 5. Thus, the fact that Mr. La 15 Perle may have used APPLE as a trade name in those declarations does not establish that Apple 16 knowingly made a false, material representation with the intent to deceive the USPTO by stating 17 that the APPLE mark functions as a service mark in other contexts. 18 * * * 19 For the reasons discussed above, Mr. Bertini’s proposed Claim 2 and proffered 20 documentation, considered as a whole, fall far short of demonstrating that he has a plausible claim 21 for fraud in the procurement of Apple’s mark. Mr. Bertini’s motion for leave to amend to assert 22 proposed Claim 2 is denied because such amendment would be futile. 23 2. Proposed Claim 3 (Fraud in Maintenance) 24 Mr. Bertini’s proposed TAC alleges that in 2018 and 2022, Apple submitted to the USPTO 25 false declarations with fabricated and/or altered specimens (i.e., copies of web pages), so as to 26 deceive the USPTO about the claimed use of the APPLE mark. See Dkt. No. 92-6 ¶¶ 125-166. At 27 issue are a January 17, 2018 Combined Declaration of Use and Incontestability and specimen 1 and/or Excusable Nonuse/Application for Renewal of Registration of a Mark and specimen 2 submitted to the USPTO by Mr. La Perle and another Apple attorney, Karen Kitterman. See Dkt. 3 No. 92-2 at 58-66 (Bertini Decl., Ex. 9); Dkt. No. 92-3 at 17-25 (Bertini Decl., Ex. 16). 4 a. “Apple Professional Learning” 5 The overarching thesis of Mr. Bertini’s proposed Claim 3 is that the 2018 and 2022 6 declarations contain false statements about the use of the APPLE mark because, according to the 7 proposed TAC, the pertinent mark is “Apple Professional Learning,” an assertedly three-word 8 unitary mark that is distinct from the standalone APPLE mark. Mr. Bertini maintains that the 9 APPLE mark refers only to Apple Inc. and is not used in connection with services. See Dkt. No. 10 92-6 ¶¶ 134-140, 144, 146, 154. Thus, Mr. Bertini alleges that in Mr. La Perle’s January 17, 2018 11 declaration, “Mr. La Perle knowingly and intentionally made a false representation of a material 12 fact to the USPTO” by stating that the submitted specimen showed use of the APPLE mark “in the 13 advertising of the services.” See id. ¶ 127; see also Dkt. No. 92-2 at 60 (Bertini Decl., Ex. 9). In 14 the January 14, 2022 declaration, Ms. Kitterman allegedly made a similarly “false representation 15 of a material fact to the USPTO” by stating that the specimen submitted with that declaration 16 showed use of the APPLE mark “in the advertising of the services.” See Dkt. No. 92-6 ¶¶ 151, 17 154; see also Dkt. No. 93-2 at 19 (Bertini Decl., Ex. 16). Mr. Bertini’s proposed TAC does not 18 state a plausible claim for fraud on this basis. 19 To the extent Mr. Bertini’s allegations concern the adequacy of the submitted specimens to 20 demonstrate the claimed use of Apple’s mark, such allegations do not plausibly support a claim of 21 fraud. As Judge Gonzalez Rogers observed in her April 14, 2025 order dismissing Mr. Bertini’s 22 fraud claims, “[w]hile this Court’s review is de novo and acceptance by the USPTO is not 23 dispositive, it is unlikely that a party intended to deceive the USPTO by submitting specimens for 24 their review.” Dkt. No. 69 at 8 (citing Zero Motorcycles, Inc. v. Pirelli Tyre S.p.A, 802 F. Supp. 25 2d 1078, 1088 (N.D. Cal. 2011), rev’d and remanded on other grounds, 517 F. App’x 589 (9th 26 Cir. 2013)). Mr. Bertini is not aided by allegations that Mr. La Perle and Ms. Kitterman used a 27 “deceptive arrow pointing to one word, ‘Apple’, in the composite mark Apple Professional 1 No. 92-6 ¶¶ 147, 162; see also Dkt. No. 92-2 at 65 (Bertini Decl., Ex. 9); Dkt. No. 92-3 at 24 2 (Bertini Decl., Ex. 16). The arrows do not conceal any information from the USPTO, and there 3 are no facts alleged suggesting that the examiner was misled or prevented from evaluating the 4 contents of the specimens for him or herself. See Paris Glove, 84 U.S.P.Q.2d at 1863, 2007 WL 5 2422997, at *8. 6 Mr. Bertini’s proposed TAC alleges that in a response to Mr. Bertini’s written deposition 7 questions,3 “Mr. La Perle acknowledged that service was provided under unitary mark Apple 8 Professional Learning and not standalone mark Apple by stating ‘the Apple Professional Learning 9 service continued in 2024.’” Dkt. No. 92-6 ¶ 144 (emphasis added). Both parties invite the Court 10 to review Mr. La Perle’s deposition response to Question No. 64 which asked Mr. La Perle 11 whether a particular exhibit (reportedly, a web page preservation) “show[s] that Apple 12 Professional Learning program continued in 2024[.]” See Dkt. No. 93 at 12; Dkt. No. 93-5 at 5 13 (Mazzello Decl., Ex. 4); Dkt. No. 94 at 5-6; Dkt. No. 92-4 at 32 (Bertini Decl., Ex. 30). Mr. La 14 Perle responded, “Yes, the webpage . . . is one of the webpages that show that the Apple 15 Professional Learning service continued in 2024.” See Dkt. No. 93-5 at 5 (Mazzello Decl., Ex. 4); 16 Dkt. No. 92-4 at 32 (Bertini Decl., Ex. 30). Nothing in Mr. La Perle’s deposition response 17 provides a basis from which it may reasonably be inferred that Mr. La Perle “acknowledged” that 18 the subject “service was provided under unitary mark Apple Professional Learning and not 19 standalone mark Apple.” Dkt. No. 92-6 ¶ 144. 20 Accordingly, to the extent Mr. Bertini seeks leave to assert proposed Claim 3 based on 21 “Apple Professional Learning,” his motion is denied because such amendment would be futile. 22 b. Mr. La Perle’s January 17, 2018 Declaration 23 Mr. Bertini claims that Apple fabricated the web page specimen submitted with Mr. La 24 Perle’s January 17, 2018 declaration, and that Mr. La Perle therefore falsely stated that the 25 specimen was a “screen shot of [Apple]’s website” showing use of the APPLE mark “in the 26 advertising of the services.” See Dkt. No. 92-6 ¶ 126; Dkt. No. 92-2 at 58-66 (Bertini Decl., Ex. 27 1 9). The proposed TAC alleges that the purported web page shown in the specimen “was not 2 available for public view on [Apple]’s website” until May 2018, several months after the date of 3 Mr. La Perle’s declaration. Dkt. No. 92-6 ¶¶ 129, 131. According to Mr. Bertini, evidence 4 obtained from the Internet Archive shows that the Wayback Machine saved the subject web page 5 for the first time on May 14, 2018. See Dkt. No. 92-6 ¶ 131; see also Dkt. No. 92 at 19; Dkt. No. 6 94 at 8-9. Mr. Bertini points out that the specimen Apple submitted “did not include a URL and 7 access date stamp” and “instead . . . shows ‘Apple Inc.’ in green color,” which he maintains is “the 8 address bar of the browser,” and not a website. See Dkt. No. 92-6 ¶¶ 126-133, 142, 145. 9 According to Mr. Bertini, these circumstances demonstrate that, contrary to Mr. La Perle’s 10 declaration, the specimen was not a screen shot of a web page and was not then “available for 11 public view” on Apple’s website, and thus did not show “actual ‘advertising of the services.’” See 12 Dkt. No. 92-6 ¶ 129. Mr. Bertini contends that Apple’s intent to deceive the USPTO may be 13 inferred from the submission of this allegedly fabricated specimen, together with other 14 circumstances he describes as “indirect” evidence of intent. Dkt. No. 92 at 12, 23; 92-6 ¶¶ 142, 15 146. 16 Apple contends that Mr. Bertini’s allegations are based on a misunderstanding of how the 17 Safari browser and the Wayback Machine work. Apple maintains that, during the period in 18 question, Safari displayed a green padlock and company name as an indication to users that the 19 web page bore an Extended Validation SSL certificate verifying the website’s identity and 20 security. See Dkt. No. 93 at 18. Additionally, Apple says that it produced to Mr. Bertini in 21 discovery a preservation of the website at issue dated December 22, 2017, i.e., weeks before the 22 submission of the January 18, 2018 specimen. Apple argues that the Wayback Machine itself 23 indicates that the Internet Archive does not include preservations of every web page from every 24 day of the year. Thus, Apple maintains that the fact that the Wayback Machine did not happen to 25 archive a copy of the web page at an earlier date does not indicate that the web page shown in the 26 specimen did not exist or was not publicly available. In response, Mr. Bertini argues that Apple’s 27 litigation counsel is not competent to testify regarding the provenance of the December 2017 1 the Wayback Machine saved the subject web page for the first time in May 2018 because it was 2 not available before that date. See Dkt. No. 94 at 8-9; Dkt. No. 94-1. 3 The Court does not resolve these or any other evidentiary disputes at this time. Viewing 4 the proposed allegations in a light most favorable to Mr. Bertini, and drawing all reasonable 5 inferences in his favor, if Apple fabricated the 2018 specimen and/or represented to the USPTO 6 that the specimen was a screen shot of a publicly available web page, when it was not publicly 7 available at that time, then that is sufficient to plausibly allege a material, false representation from 8 which intent to deceive could be inferred. Mr. Bertini’s motion for leave to assert his proposed 9 Claim 3 is granted as to this basis. Additionally, the proposed TAC’s citations to counsel’s 10 knowledge and experience (see, e.g., Dkt. No. 92-6 ¶¶ 141, 156) may be relevant to support a 11 contention that any such misrepresentation could not have been “an honest misunderstanding or 12 inadvertence.” See In re Bose, 580 F.3d at 1246. 13 c. Mr. La Perle’s and Ms. Kitterman’s January 14, 2022 Declaration 14 15 According to the proposed TAC, Apple altered the 2022 specimen Apple submitted with 16 the January 2022 declaration to “deceptively” show “the URL apple.com in the address bar,” so 17 as to conceal that the specimen was from a website in Canada and had no bearing on the claimed 18 use of the APPLE mark in the United States. See Dkt. No. 92-6 ¶¶ 151-153, 157, 159, 161. 19 Additionally, Mr. Bertini alleges that a formatting discrepancy (i.e., a “wide gap” appearing in a 20 screen capture saved by the Wayback Machine, but not appearing in the 2022 specimen) also 21 indicates that Apple altered the 2022 specimen. See id. ¶ 160. Mr. Bertini thus alleges that Ms. 22 Kitterman falsely stated in the January 2022 declaration that the APPLE mark was used “in the 23 sale or advertising of the services.” See id. ¶ 158; see also Dkt. No. 92-3 at 17-25 (Bertini Decl., 24 Ex. 16). 25 On this record, and viewing the proposed allegations in a light most favorable to Mr. 26 Bertini, and drawing reasonable inferences in his favor, the Court finds that Mr. Bertini’s proposed 27 TAC plausibly states a claim for fraud based on Apple’s submission, without acknowledgment or 1 declaration. Mr. Bertini contends that “[u]se of the mark in a foreign county has no bearing on 2 excusable nonuse of a mark in commerce that can be regulated by the U.S. Congress.” Dkt. No. 3 92-6 ¶ 153 (citing TMEP § 1604.11 and In re Conusa Corp., 32 U.S.P.Q.2d 1857, 1993 WL 4 760210, at *3 (Comm’r Pat. & Trademarks Sept. 3, 1985)). Apple does not dispute this 5 proposition, nor does it argue that use of the mark in Canada supports its claim of use in 6 commerce in the United States. Instead, Apple argues that the URL for the specimen, cited in the 7 declaration, clearly shows that its source is a Canadian website, and for that reason, there can be 8 no fraud, as the declaration “shows that Apple provided the USPTO with the exact location of the 9 website.” Dkt. No. 93 at 18. However, unlike the other specimens challenged in the proposed 10 TAC, the fact that the specimen allegedly was sourced to a Canadian URL 11 (“www.apple.com/ca/education/k12/apple-professional-learning/”) is a detail the examiner easily 12 might have overlooked. Because the 2022 declaration could plausibly be read as affirmatively 13 representing to the USPTO that the submitted specimen shows a relevant use in commerce in the 14 United States, and did not alert the examiner to the fact that the specimen was from Canada, an 15 intent to deceive the examiner may reasonably be inferred. Additionally, the proposed TAC’s 16 citations to counsel’s knowledge and experience (see, e.g., Dkt. No. 92-6 ¶¶ 141, 156) may be 17 relevant to support a contention that any such misrepresentation could not have been “an honest 18 misunderstanding or inadvertence.” See In re Bose, 580 F.3d at 1246. Accordingly, the Court 19 grants Mr. Bertini’s motion for leave to file his proposed Claim 3 based on the 2022 declaration 20 and submission of a screenshot from a Canadian website. 21 The Court takes a different view with respect to Mr. Bertini’s allegations of a “wide gap” 22 appearing in a screen capture saved by the Wayback Machine, but not appearing in the 2022 23 specimen. The parties appear to dispute the reason for any such gap. See Dkt. No. 92 at 27; Dkt. 24 No. 93 at 20. But the salient point is that Mr. Bertini’s allegations and evidence do not plausibly 25 show that any content in the specimen was concealed or altered, or that the content of the 26 specimen differs from the material Mr. Bertini says he found in the Wayback Machine. To the 27 extent Mr. Bertini seeks to assert his proposed Claim 3 based on the “wide gap,” the alleged 1 d. Other Evidence and Allegations 2 To the extent Mr. Bertini’s proposed Claim 3 relies on other evidence, including Apple’s 3 Form 10-K filed with the SEC for the fiscal year ending September 29, 2018 (see Dkt. No. 92-3, 4 Bertini Decl. Ex. 14), those allegations and materials do not support a fraud claim for the reasons 5 discussed above. 6 * * * 7 To the extent Mr. Bertini seeks leave to assert his proposed Claim 3 for fraud based on 8 (1) the January 17, 2018 declaration and specimen of a website that allegedly was not publicly 9 available; and (2) the January 14, 2022 declaration and Canadian website specimen, his motion is 10 granted. Mr. Bertini’s motion with respect to his proposed Claim 3 is otherwise denied in all other 11 respects, because such amendment would be futile. 12 3. Proposed Claim 4 (Fraud in Audit/Maintenance) 13 Mr. Bertini’s proposed TAC alleges that in response to a 2018 office action (i.e., a USPTO 14 audit), Ms. Kitterman submitted two specimens to the USPTO and falsely stated that the 15 specimens show use of the APPLE mark (1) “in providing on-line publications in the field of 16 computers” and (2) “in the advertisement of the production of a live musical performance, namely 17 a P!nk concert produced by Apple at the Ace Hotel in downtown Los Angeles.” See Dkt. No. 92- 18 6 ¶¶ 167-187 & Exs. 7, 8; see also Dkt. No. 92-3 at 39-52 (Bertini Decl., Ex. 19). 19 a. First 2018 Specimen 20 According to the proposed TAC, Ms. Kitterman’s statement regarding the first specimen 21 and use of the APPLE mark is false because the specimen shows “Apple Machine Learning 22 Journal,” which Mr. Bertini contends is a three- or four-word mark that is distinct from the one- 23 word APPLE mark. Id. ¶¶ 169, 171, 172. He further alleges that a third-party article produced by 24 Apple in discovery demonstrates that “[t]he public and media view all four words” as the pertinent 25 mark. Id. ¶¶ 170-171. For present purposes, the Court does not address the parties’ competing 26 arguments about what constitutes use (or not) of the APPLE mark. However, even assuming the 27 truth of Mr. Bertini’s allegations, his allegations and evidence regarding what the public or media 1 that Apple had knowledge of any falsity or that it intended to deceive the USPTO. 2 The proposed TAC further alleges that the falsity of Ms. Kitterman’s statement regarding 3 the first specimen is demonstrated by her response to Mr. Bertini’s written deposition questions. 4 Specifically, the TAC alleges that Ms. Kitterman “recognized” that in a sentence in the first 5 specimen, the word “‘Apple’ is used as a reference to Apple Inc.” Id. ¶ 179. Both parties invite 6 the Court to consider Ms. Kitterman’s response to Mr. Bertini’s written deposition Question No. 7, 7 which asked whether the word “Apple” in a particular sentence in the specimen is “a reference to 8 Apple Inc.” See Dkt. No. 92-4 at 4 (Bertini Decl., Ex. 21); Dkt. No. 93-6 (Mazzello Decl., Ex. 5). 9 In her response, Ms. Kitterman expressly stated that the specimen shows “multiple uses of Apple,” 10 including as a reference to Apple Inc. and as a service mark. See Dkt. No. 92-4 at 4 (Bertini Decl., 11 Ex. 21); Dkt. No. 93-6 (Mazzello Decl., Ex. 5). Ms. Kitterman’s deposition response does not 12 plausibly support a fraud claim, as it indicates that she believed the first specimen includes use of 13 the APPLE mark as a service mark. 14 To the extent Mr. Bertini’s proposed Claim 4 also relies on an alleged “deceptive red 15 arrow” and “circle” around the word “Apple” (see Dkt. No. 96-2 ¶ 183), that allegation does not 16 support a plausible fraud claim for the reasons discussed above. 17 b. Second 2018 Specimen 18 Mr. Bertini’s proposed TAC alleges that Ms. Kitterman’s statement regarding the second 19 specimen and use of the APPLE mark is false because the specimen shows use of “APPLE 20 MUSIC,” which Mr. Bertini contends is a “unitary mark.” He further alleges that “Ms. Kitterman 21 drew a red arrow on [the] specimen pointing to one word ‘APPLE’ to pretend that standalone 22 mark is used, because she knew it is not so.” Id. ¶¶ 180-183. To the extent Mr. Bertini’s proposed 23 Claim 4 relies on an alleged “deceptive red arrow,” that allegation does not support a plausible 24 fraud claim for the reasons discussed above. 25 * * * 26 Mr. Bertini’s proposed Claim 4 and proffered documentation, considered as a whole, fall 27 far short of demonstrating that he has a plausible claim for fraud in the audit/maintenance of ] because such amendment would be futile. 2 C. Further Leave to Amend 3 Mr. Bertini has had prior opportunities to amend his complaint. Fact discovery is closed. 4 || On the record presented, the Court finds that there are no additional facts that could be asserted to 5 || remedy the deficiencies in Mr. Bertini’s proposed fraud claims. Accordingly, with the exception 6 || of the two specific bases (discussed above) for which Mr. Bertini is granted leave to file a TAC, 7 || the Court finds that further amendment would be futile and denies further leave to amend. See 8 || Salameh v. Tarsadia Hotel, 726 F.3d 1124, 1133 (9th Cir. 2013) (“A district court’s discretion to 9 || deny leave to amend is ‘particularly broad’ where the plaintiff has previously amended.” (citation 10 || omitted)). 1] IV. CONCLUSION 12 For the reasons discussed above, the Court denies Mr. Bertini’s motion for leave to amend 13 || to file a third amended complaint asserting claims for cancellation of the APPLE mark based on 14 || fraud, except as expressly discussed above with respect to Mr. Bertini’s proposed Claim 3 (and as 15 || may be relevant, his proposed Claim 5). a 16 By July 23, 2026, Mr. Bertini shall file his proposed TAC, amended to comply with the 17 || rulings above. Mr. Bertini may not otherwise alter or amend his proposed allegations to expand Zz 18 || his TAC beyond the permission granted by this order. 19 By August 6, 2026, Apple shall file its answer to the TAC. 20 By August 13, 2026, the parties shall submit a joint statement regarding any limited 21 discovery to be conducted, and proposed date(s) for completing such discovery, in view of the 22 || rulings in this order. This order in no way re-opens discovery on the abandonment issue, as to 23 || which discovery remains closed. Following submission of the parties’ joint statement, the Court 24 || intends to separately issue a scheduling order, as discussed at the April 14, 2026 conference. 25 IT IS SO ORDERED. 26 || Dated: July 9, 2026 <«.e 27 Vrain ®, Qe □□□□□□ Virginia K. DeMarchi 28 United States Magistrate Judge