COUNTERCLAIM FOR DECLARATORY
RELIEF OF TRADEMARK INVALIDITY
AND
FOR CANCELLATION OF
FEDERAL TRADEMARK REGISTRATIONS
August 2, 2000
Michael Foundation alleges for its Counterclaims against Urantia Foundation as follows:
PARTIES
1. Michael Foundation is a corporation organized and existing under the laws of the State of Oklahoma with its principal place of business in Oklahoma City, Oklahoma.
2. On information and belief, Urantia Foundation, Urantia Foundation, is a non-profit religious entity existing under the Laws of the State of Illinois, with its principal place of business at 533 Diversey Parkway, Chicago, Illinois, 60614.
JURISDICTION
3. This Court has jurisdiction of this Counterclaim because it arises under the Trademark Laws of the United States, 28 U.S.C. Section 1338 and 15 U.S.C. Section 1121; and because it involves federal questions, 28 U.S.C. Section 1331.
BACKGROUND
4. On information and belief, Urantia Foundation is the owner of record of the following trademark Registrations:
Registration Number
Symbol Date 948,104 Urantia July 20, 1971 915,734 Urantia June 29, 1971 1,013,544 UrantiaN Sept. 18, 1973 1,089,942 Urantia Jan. 30, 1978 1,112,713 Urantia Nov. 19, 1976
5. On information and belief, the word Urantia and the word Urantian existed long prior to the formation of Urantia Foundation.6. On information and belief, the name Urantia and the word Urantian derive from religious revelation known as The Urantia Papers which were published as The Urantia Book.
7. The word Urantian is used in The Urantia Book to denote planetary residence, and other characteristics associated with this planet.
8. The Urantia Foundation has used the word Urantians to refer to inhabitants of this planet.
9. The Urantia Foundation has used the word Urantians to refer to readers of The Urantia Book.
10. The word Urantian is commonly used by and to refer to persons who believe that the Urantia Papers are a religious revelation.
11. A religion has been established that is known by the names Urantia and Urantian.
12. On information and belief, Urantia Foundation fraudulently applied for its several trademark registrations by failing to inform the Patent and Trademark Office that the name Urantia and the word Urantian originated in a religious revelation and had religious significance.
13. On information and belief, Urantia Foundation deliberately made false statements to the Patent and Trademark Office on applications that resulted in trademark registrations for the words Urantia and Urantian, knowing that said Patent and Trademark Office would rely thereon.
14. The trademark registrations issued as Registration Nos. 915,734, 948,104, 1,089,942 and 1,112,713 of the word Urantia prevent Michael Foundation from freely using the word to denote Michael Foundation's religious affiliations, allegiances, and beliefs.
15. The trademark registration of the word Urantian issued as Registration No. 1,013,544 prevents Michael Foundation from freely using the word to denote Michael Foundation's religious affiliations, allegiances, and beliefs.
16. Urantia Foundation's registrations of the words Urantia and Urantian, were obtained by concealing from the Patent and Trademark Office their origin in a religious revelation that constitutes the foundation of a religious movement, and are invalid based on fraud in prosecuting the applications.
17. Urantia Foundation made a false and misleading statement to the United States Patent and Trademark Office in prosecuting the application that led to Registration No. 948,104 that the name Urantia came from the name of Urantia Foundation.
18. Urantia Foundation made a false and misleading statement to the United States Patent and Trademark Office in prosecuting the application that led to Registration No. 948,104 that the name Urantia was not the name of a religion.
19. Urantia Foundation intended to mislead the United States Patent and Trademark Office in prosecuting the application that led to Registration No. 948,104 that the name Urantia was not the name of a religion.
20. On information and belief, the United States Patent and Trademark Office relied upon Urantia Foundation's misrepresentation during the prosecution of the application that led to Registration No. 948,104 in issuing subsequent Registration Nos. 1,089,942 and 1,112,713.
21. On information and belief, Urantia Foundation failed to disclose to the United States Patent and Trademark Office the wide generic use of the word Urantia, as the name of a religion, of a religious revelation, of a religious movement, of many assorted religious activities, and religious functions during the prosecution of the applications which led to Registration Nos. 914,734, 1,013,544, 1,089,942 and 1,112,713.
22. Urantia Foundation's failure to disclose to the United States Patent and Trademark Office that the word Urantia is the name of a religion, of a religious movement, of a religious revelation, of religious activities and religious functions was a material omission in prosecution of aforesaid applications.
23. On information and belief, the United States Patent and Trademark Office relied upon Urantia Foundation's misrepresentation in prosecuting the application that led to Registration No. 948,104 including a misrepresentation that the word Urantia is not the name of a religion.
24. The terms Urantia and UrantiaN are generic designations.
25. The Urantia Foundation has engaged in a course of conduct that has cause the aforesaid trademarks to become generic and lose their significance as a trademark.
PRAYER FOR RELIEF
WHEREFORE, Michael Foundation prays that this Court order, adjudge and decree that:
1. United States Registration No. 915,734 be canceled from the Principal Register of the United States Patent and Trademark Office, and the mark be declared invalid.
2. United States Registration No. 948,104 be canceled from the Principal Register of the United States Patent and Trademark Office, and the mark be declared invalid.
3. United States Registration No. 1,089,942 be canceled from the Principal Register of the United States Patent and Trademark Office, and the mark be declared invalid.
4. United States Registration No. 1,112, 713 be canceled from the Principal Register of the United States Patent and Trademark Office, and the mark be declared invalid.
5. United States Registration No. 1,013,544 be canceled from the Principal Register of the United States Patent and Trademark Office, and the mark be declared invalid.
6. That Urantia Foundation be required to pay to Michael Foundation the costs of this action together with all fees, including but not limited to attorney fees, and disbursements required to defend this action.
7. That Michael Foundation have such other further relief as this Court may deem just and fair.
Respectfully submitted,
ATTORNEYS FOR MICHAEL FOUNDATION, INC.