Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 BANKAMERICA CORPORATION, AND BANK OF AMERICA NATIONAL TRUST & SAVINGS
Opposition No. 74,722
September 30, 1987
Milton W. Schlemmer for Bankamerica Corporation and Bank of America National Trust & Saving Association
Goldfarb & Singer for Invest America
By the Board:
J.D. Sams, R.L. Simms and G.D. Krugman
This case now comes up on opposers' motion, filed February 2, 1987, to dismiss applicant's counterclaim to cancel Registration No. 853,860 pleaded by opposer, Bank of America National Trust & Savings Association, [FN1] or in the alternative for judgment on the pleadings. Applicant filed a brief in response to the motion on February 17, 1987 and opposers filed a reply brief on March 9, 1987.
Applicant's counterclaim reads as follows:
1. The mark Bank of America, registration number 853,860, registered July 30, 1968, represents the common descriptive name of the services provided pursuant to said mark. It is a generic term for the services/products provided pursuant to that mark, specifically, commercial, savings, loan, trust, credit financing, banking services.
2. Opposer, Bank America [sic] Corporation, is the owner of said mark and has relied upon said mark in its Opposition to Counterclaimant's application for registration of its trademark, Invest America plus design, serial number 580,026, and thus petitioner has been damaged and will continue to be damaged by the maintenance of this generic and improper trademark by Opposer.
In support of the motion to dismiss, opposers assert that the counterclaim is defective because applicant has failed to: (1) properly plead its standing and (2) identify the goods or services in connection with which its mark is used. In particular, opposers contend that applicant does not have standing solely by virtue of its position as defendant in the opposition, and in the absence of an allegation that applicant has an equal right to use the mark sought to be cancelled, applicant has failed to plead its standing. Further, opposers assert that applicant is unable to allege that it has an equal right to use said mark because applicant is a nonbank corporation and under the laws of applicant's home state, California, is prohibited from using a name, such as 'Bank Of America' which would indicate that it is engaged in the banking business.
Applicant, on the other hand, maintains that it does have standing to assert a counterclaim by virtue of its position as defendant in the opposition, relying primarily on General Mills Inc. v. Nature's Way Products, Inc., 202 USPQ 840 (TTAB 1979) and M. Aron Corp. v. Remington Products, Inc., 222 USPQ 93 (TTAB 1984); that it is not required to allege that it intends to use opposers' mark; and that it has sufficiently identified its goods and services in its answer, such that it does not need to do the same in the counterclaim.
*2 Opposers, in their reply brief, maintain, inter alia, that the General Mills and M. Aron cases are distinguishable because the counterclaims involved therein were based on likelihood of confusion and not genericness.
As stated by the Court of Customs and Patent Appeals in Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 1029-30, 213 USPQ 185, 189 (CCPA 1982), '[t]he purpose in requiring standing is to prevent litigation where there is no real controversy between the parties, where a plaintiff, petitioner or opposer, is no more than an intermeddler.'
In this regard, for purposes of standing where the ground for cancellation is genericness, the plaintiff must generally allege that it has an interest in using the term in its business which is the subject of the registration sought to be cancelled. However, the Board has taken the position that the mere fact that an applicant is the defendant in an opposition which is based on likelihood of confusion does not give the applicant a real commercial interest to challenge the mark of an opposer on the ground of genericness, in the absence of an allegation that the applicant has an interest in using the term. Consolidated Foods Corporation v. Big Red; Inc. 226 USPQ 829 (TTAB 1985).
In the recent case of Jewelers Vigilance Committee, Inc. v. Ullenberg, Appeal No 86-1628 (Fed. Cir., June 9, 1987) the Court of Appeals for the Federal Circuit (the successor court to the CCPA) held that the opposer therein, a nonprofit trade association, had standing to oppose on the grounds of Sections 2(a) and 2(d) even in the absence of a proprietary interest in the mark on which the opposition was grounded. This decision seems to us to be contrary to the Board's holding in Consolidated Foods supra, and we are obliged to apply the law of Jewelers' Vigilance Committee to the facts of the present case. Thus, a defendant that seeks to cancel an opposer's pleaded registration on the ground of descriptiveness or genericness in an opposition based on likelihood of confusion need not allege that it has an interest in using the term sought to be cancelled. The defendant in such a situation cannot be characterized as a mere intermeddler, inasmuch as the registration it seeks to cancel has been asserted against it. While we recognize that this decision may have the effect of allowing more plaintiffs to assert claims of descriptiveness and/or genericness, we note that Fed. R. Civ. P. 11 requires pleading in good faith, and, moreover, if such claims are meritless, the opposing party will nonetheless be able to obtain judgment thereon by filing a motion for summary judgment, under Fed. R. Civ. P. 56, on the ground that there are no genuine issues of material fact with respect to such claims.
As to opposers' contention that applicant must also identify its services in its counterclaim, such contention is not well taken since said services have been identified in the answer.
*3 In view of the foregoing, opposers' motion to dismiss applicant's counterclaim is denied.
Opposers' reply, filed February 2, 1987, to applicant's counterclaim is noted.
In accordance with the Trademark Rules of Practice, trial dates are set as indicated below. In each instance, a copy of the transcript of testimony, together with copies of documentary exhibits, must be served on the adverse party within thirty days after completion of the taking of testimony. Trademark Rule 2.125.
THE PERIOD FOR DISCOVERY TO CLOSE: December
Testimony period for Bankamerica Corporation and Bank of America as February
plaintiffs in the opposition to close: 19, 1988
(opening thirty days prior thereto)
Testimony period for Invest America as defendant in the opposition April 19,
and as plaintiff in the counterclaim to close: 1988
(opening thirty days prior thereto)
Testimony period for Bankamerica Corporation and Bank of America as June 20,
defendants in the counterclaim and their rebuttal testimony as 1988
plaintiff in the cancellation to close:
(opening thirty days prior thereto)
Rebuttal testimony period for Invest America as plaintiff the August 4,
counterclaim to close: 1988
(opening fifteen days prior thereto)
Briefs on final hearing (Trademark Rule 2.128) shall be come due a follows:
Bankamerica Corporation and Bank of America as plaintiffs in the October 3,
Invest America as defendant in the opposition and as plaintiff in November 2,
the counterclaim: 1988
Reply brief for Bankamerica Corporation and Bank of America as December 2,
plaintiff in the opposition and brief as defendant in the 1988
Reply brief for Invest America as plaintiff in the counterclaim: December 19,
*4 An oral hearing will be set only upon request filed as provided by Trademark Rule 2.129(a).
J. D. Sams
R. L. Simms
G. D. Krugman
Members, Trademark Trial and Appeal Board
FN1.Issued July 30, 1968 under Section 2(f) for the mark 'BANK OF AMERICA' for commercial, savings, loan, trust departments, and credit financing banking services. Combined affidavit under Sections 8 and 15 filed.