Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 THE HARTWELL COMPANY
JAMES A. SHANE
Cancellation No. 18,967
November 13, 1990
Before Sams, Rice and Rooney
By the Board:
J.D. Sams, J.E. Rice and L.E. Rooney
Petitioner, on June 7, 1990, filed a petition to cancel Registration Nos. 992,895 [FN1] and 992,894 [FN2] alleging, inter alia, that petitioner has forwarded to the Office an application to register the mark FADED GLORY for pants based on its bona fide intention to use the mark in commerce; that the continued existence of the forenamed registrations creates a serious cloud on petitioner's right to adopt FADED GLORY for clothing of any type; that upon information and belief, petitioner's application will be rejected on the basis of the forenamed registrations on the ground that petitioner's mark so resembles the marks shown in the registrations as to be likely to cause confusion, or to cause mistake, or to deceive (Section 2(d) of the Trademark Act); and that upon information and belief, registrant has abandoned use of the marks in the registrations sought to be cancelled.
Respondent, on August 20, 1990, has filed a motion to dismiss the cancellation proceeding pursuant to Fed.R.Civ.P. 12(b)(6), for failure to state a claim upon which relief can be granted. Respondent asserts that petitioner's mere intention to use respondent's marks does not rise to the level of the "real interest" necessary to find standing for petitioner.
Although a stipulated extension of time to respond to the motion was approved by the Board, petitioner has failed to file any response within the time set therein.
The Board is not bound to grant respondent's motion because of petitioner's failure to object thereto. In this case, the Board elects to exercise the discretion permitted it under Trademark Rule 2.127(a) and consider respondent's motion on the merits. See The Coach House Restaurant, Inc. v. The Coach and Six Restaurants, Inc., 223 USPQ 176 (TTAB 1984); Trademark Rule 2.127(a).
The purpose of a motion to dismiss under Fed.R.Civ.P. 12(b)(6) is to test the formal sufficiency of the statement of the claim for relief. Wright & Miller, Federal Practice and Procedure: Civil 2d § 1356 (1990). In order to state a claim upon which relief may be granted in a cancellation proceeding, a petitioner must allege facts which, if proved, would establish that (1) petitioner has standing to challenge the continued presence on the register of the named registration(s) and (2) petitioner has set forth a valid ground why registrant is not entitled to maintain its registration(s). See Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
Respondent herein has directed its attack on the pleadings only to the allegations of standing. Standing at the pleading stage is reviewed by determining whether petitioner has alleged facts, which if later proven, would establish that petitioner has a real interest in the proceeding. The facts so pled must be sufficient to show a personal interest in the outcome of the case beyond that of the general public. See Jewelers Vigilance Committee Inc. v. Ullenberg Corp., 823 F.2d 490, 2U.S.P.Q.2d 2021 (Fed Cir.1987); International Order of Job's Daughters v. Lindeburg and Company, 727 F.2d 1087, 220 USPQ 1017 (Fed Cir.1984); Lipton Industries, Inc. v. Ralston Purina Co., supra.
*2 Petitioner herein has set forth allegations not only of its bona fide intent to use the mark FADED GLORY for pants but also of its submission to the Office of an intent-to-use application. In view of the recent amendments to the Trademark Act providing for the acceptance and examination of applications based solely on a bona fide intent to use, we believe that an allegation of a petitioner's ownership of an application based solely on a bona fide intent to use, when coupled with an allegation of a reasonable basis (such as a belief of likelihood of confusion that is not wholly without merit) for petitioner's belief that it would be damaged by the continued existence of the registration(s) sought to be cancelled, is a legally sufficient pleading of standing, that is, of petitioner's real interest in the proceeding beyond that of the general public. [FN3]
Petitioner in this case has coupled its allegations of a bona fide intent to use with allegations of the cloud created by the continued existence of respondent's registrations, which the Board notes cover the same mark (with or without an additional term) for the same goods, and of its belief of the likelihood of refusal of its application under Section 2(d). Inasmuch as the latter allegations, which in essence are a claim of likelihood of confusion, clearly are not without merit, the Board finds that petitioner has set forth sufficient allegations in its petition for cancellation to show a real personal interest in the proceeding and thus to be able to establish its standing, if these allegations are later proven, to seek cancellation of respondent's marks on the ground of abandonment.
Accordingly, respondent's motion to dismiss is denied. Since respondent has concurrently filed its answer, trial dates, including the period for discovery, are scheduled as set forth in the accompanying trial order. [FN4]
Members, Trademark Trial and Appeal Board
FN1. Registration of mark FADED GLORY BY APPENDAGES for men's and women's pants, shirts, jackets, skirts and hats.
FN2. Registration of mark FADED GLORY for same articles of clothing.
FN3. Respondent's reliance upon Windsurfing International Inc. v. AMF Inc., 4 U.S.P.Q.2d 1052 (Fed.Cir 1987) is misplaced. It was held therein that the district court lacked subject matter jurisdiction to entertain a declaratory judgment action in which cancellation of the registration of a mark was sought by a party having alleged only a desire to use the mark descriptively. As pointed out by the Court, the same does not hold true for a Board proceeding under Section 14(c) [now Section 14(3) ], wherein a person who is in a position to use a term descriptively has standing to petition to cancel a registration of the term on the ground that it has become the generic name for the goods or services, or a portion thereof, for which it is registered. Here the petition is based on an intent to adopt and register a mark, not on a desire to use it descriptively, and the requirements for standing must be determined accordingly.
FN4. The Board would point out that if petitioner continues to show no interest in the proceeding and fails to take any testimony or to offer any other evidence, respondent may avail itself of Trademark Rule 2.132(a) and seek dismissal of the proceeding on the basis of petitioner's failure to prosecute.