August/September 2011 Issue
Fair Isaac Corp. v. Experian Info. Solutions, Inc.,
2011 WL 3586429 (8th Cir. Aug. 17, 2011)
Plaintiffs sought review of a summary judgment decision finding of descriptiveness of mark and jury determination of fraud in procurement of a registration. The Eighth Circuit upheld the summary judgment decision that plaintiffs’ “300-850” mark was merely descriptive in light of evidence that consumers immediately understood plaintiffs’ mark to describe the scoring range for their credit-scoring system. It also found that there was sufficient evidence to support the jury’s determination that plaintiffs procured the registration by fraud based on false statements offered by plaintiffs in response to an office action issued on the issue of descriptiveness.
Plaintiffs Fair Isaac Corporation and MyFICO Consumer Services, Inc. (collectively “FICO”) developed a sophisticated credit-scoring system to rate consumers’ financial credit worthiness that relies on aggregate information. These so-called FICO credit scores are the most widely used scores in the industry because of their high rate of consistency and predictivity. The FICO credit-score range is 300-850. In 2004, FICO applied for a trademark registration for the mark “300-850,” which was later issued.
Defendants are Experian Information Solutions, Inc., Equifax, Inc., and TransUnion, LLC (“TransUnion”), which are individual credit bureaus, and VantageScore Solutions, LLC (“VantageScore”), a joint venture between the other defendants (collectively the “Credit Bureaus”). The individual credit bureaus produce their own credit scores. Because the individual credit-bureau scores rely only on the data of the individual bureau, however, they are less reliable than FICO scores. In an effort to compete with FICO, the three credit bureaus formed the joint venture VantageScore in 2006, which relies on data common to all three bureaus.
FICO sued the Credit Bureaus, alleging trademark infringement, false advertising, antitrust, and other claims. FICO’s trademark-infringement and other Lanham Act claims were based on VantageScore’s overlapping 501-850 scoring range. The Credit Bureaus counterclaimed, seeking cancellation of FICO’s registration for the mark “300-850” on the ground that FICO had procured the registration through fraud.
The district court found on summary judgment that FICO’s “300-850” mark was merely descriptive. After the summary judgment ruling, a jury found that FICO’s “300-850” mark had not acquired secondary meaning, and therefore did not function as a mark. The jury also found that FICO’s registration for the mark had been procured by fraud. FICO appealed the district court’s determination that its “300-850” mark was merely descriptive, as well as the jury’s determination that its registration had been procured by fraud as lacking sufficient evidentiary support.
On appeal, FICO argued that the district court erred in finding that its “300-850” mark was merely descriptive because the mark had no meaning in the credit industry when FICO adopted the mark. FICO also argued that the absence of competitive need to use its particular scoring system, or even to use a numeric scoring system at all, reflected that its mark was not descriptive. The Eighth Circuit disagreed. Noting that consumers viewed the “300-850” mark as generally conveying the scoring range for the FICO system, the appeals court concluded that there was no genuine issue that the mark immediately described the qualities and characteristics of FICO’s credit scores, and upheld the district court’s finding of mere descriptiveness.
The Eighth Circuit also found that the record contained sufficient evidence to support the jury’s conclusion that the “300-850” registration was procured by fraud. The Credit Bureaus submitted evidence of two statements made by or on behalf of FICO in response to the U.S. Patent and Trademark Office’s (“PTO”) initial refusal to register the mark based on descriptiveness. In one statement, a FICO employee stated that, “[t]o the best of [her] knowledge, only the FICO score uses the 300-850 range as a unique identifier for credit bureau risk scores.” In another statement, FICO’s counsel stated that the mark was not descriptive because “300-850 is the credit scoring scale only for [FICO’s] credit bureau-based risk products and not for . . . other credit bureau-based risk products that competitors develop.” Evidence in the record established that TransUnion also used a credit-score range of 300-850. FICO argued that this evidence was not contrary to its counsel’s statement because FICO was the only company that used the score as a “unique identifier.” FICO pointed to TransUnion’s disclaimer of any use of 300-850 as a mark to support this position.
FICO argued that, even if the statements made in its office-action response were false, there was no evidence that they were made with an intent to deceive the PTO and, in any event, the statements were not material to the PTO’s determination to register the mark. FICO contended that third-party use would have been relevant only if there was an issue of priority. As TransUnion claimed no trademark rights in 300-850, priority was not at issue.
The Eighth Circuit nonetheless found that there was sufficient evidence to support the jury’s determination that the PTO relied on FICO’s false representation in deciding whether to issue a registration for the “300-850” mark. The court noted that the PTO initially refused registration, reversing its position on registrability only after FICO responded with the false statements identified above. Thus, the court upheld the jury’s decision that FICO’s registration was procured by fraud.
This decision presents one of the first circuit court decisions discussing fraud in the context of descriptiveness of a mark. Whereas fraud claims frequently relate to the question of a mark’s use, in this case, the question was whether FICO used the mark as a source identifier rather than merely as a functional range defining its scoring system, and whether it was aware of third-party uses of identical or similar designations as trademarks or otherwise. This case also provides a good practice-point reminder that submissions in office-action responses, not just in statements of use, can form the basis for a claim of fraud.