Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 MILLER BREWING COMPANY
Opposition No. 88,487
June 2, 1993.
Before Rice, Cissel and Hohein
By the Board:
J.E. Rice, R.F. Cissel and G.D. Hohein
This case now comes up for consideration of applicant's motion to dismiss the opposition, under Fed.R.Civ.P. 12(b)(6), due to the alleged failure of the notice of opposition to state a claim upon which relief can be granted. Opposer filed a motion to extend the time for filing a brief in response to applicant's motion. Not having been contested by applicant, the motion to extend is granted. Within the extended response time, opposer filed its brief in opposition to the motion to dismiss. [FN1]
To survive a motion to dismiss under Rule 12(b)(6), a notice of opposition need only allege such facts as would, if proved, establish opposer's standing to maintain the proceeding and a ground or grounds for refusing registration to applicant. See Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA1982), and Consolidated Natural Gas Co. v. CNG Fuel Systems, Ltd., 228 USPQ 752 (TTAB1985). Applicant's motion to dismiss does not dispute opposer's standing to maintain the proceeding. The motion charges only that opposer has not pleaded facts which, if proved, would establish grounds for refusing registration to applicant. Therefore, applicant's motion to dismiss requires us to examine the notice of opposition to determine whether it contains any set of allegations which, if proved, would allow opposer to prevail. See Delta Tire Corp. v. Sports Car Club of America, Inc., 186 USPQ 431 (TTAB1975).
The Application, Notice of Opposition and Motion to Dismiss
The application involved herein seeks registration of the mark G.D.L. for "beer". Applicant filed for registration under the intent-to-use provisions of the Trademark Act, on August 12, 1991, and has not, to date, claimed use of the mark in commerce.
In its notice of opposition, opposer makes the following assertions: it markets a beer identified as MILLER GENUINE DRAFT LIGHT and has done so since about April, 1990; this product "has come to be recognized and identified by the initialism GDL, or G.D.L."; applicant, since about April, 1991, has marketed a product identified as MICHELOB GOLDEN DRAFT LIGHT; the initialism G.D.L. sought to be registered by applicant "is intended ... for use on or in connection with Applicant's GOLDEN DRAFT LIGHT product" but "no significant actual use of G.D.L." was made prior to the filing date of applicant's application; applicant's "apparently contemplated" use of G.D.L. "is likely to cause confusion and to cause mistake and to deceive" consumers as to the source or sponsorship of the parties' respective products; and, opposer would be damaged if such confusion occurred.
In its motion to dismiss, applicant levels the following criticisms at the notice of opposition: the notice of opposition fails to state the section or sections of the Trademark Act which opposer is relying on; the notice can only be construed to rely on Section 2(d) of the Trademark Act as grounds for refusing registration to applicant; opposer has failed to claim use of G.D.L. as a mark or trade name; opposer has failed to claim priority of use; and, by failing to include these claims, opposer cannot prevail herein under Section 2(d).
*2 In countering the motion to dismiss, opposer has correctly argued that its pleading must be construed liberally by the Board, in the light most favorable to opposer. See Fed.R.Civ.P. 8(f); Stanspec Co. v. American Chain & Cable Co., Inc., 531 F.2d 563, 189 USPQ 420 (CCPA1976); and Space Base Inc. v. Stadis Corp., 17 USPQ2d 1216 (TTAB1990). Opposer also asserts that the Board must not only examine the notice of opposition to determine what explicit allegations are included, but must also examine it to determine what allegations are implied. Thus, opposer reasons, if its notice of opposition contains a collection of either explicit or implicit allegations, or some combination thereof, which would, if proved, allow opposer to prevail in this case, then the motion to dismiss must be denied.
Opposer appears to assert that its pleading contains explicit allegations sufficient to state a claim for relief under Section 2(a) of the Trademark Act and contains a combination of both explicit allegations and implicit allegations which are sufficient to state a claim for relief under Section 2(d) of the Trademark Act.
Opposer asserts that its pleading sets forth two distinct grounds upon which it may prevail under Trademark Act Section 2(a). First, opposer notes that it has claimed that the contemplated use of G.D.L. by applicant "is likely to cause confusion and to cause mistake and to deceive." Thus, opposer concludes that it has properly pleaded that applicant must be denied registration of G.D.L. because it is "deceptive matter" under Section 2(a). Second, opposer notes that it has claimed (1) that consumers will assume that a product bearing the G.D.L. designation is a product of opposer's, or is authorized or sponsored by opposer, or is made in accordance with instructions or specifications of opposer, or (2) consumers will assume that opposer's GENUINE DRAFT LIGHT beer is applicant's product. Thus, opposer concludes that it has properly pleaded that applicant must be denied registration of G.D.L. because the mark "falsely suggest[s] a connection" between opposer and applicant.
Opposer also argues, quite broadly, that a pleading based on either of these Section 2(a) grounds need not fail merely because the opposer cannot "allege prior rights or use of [the] mark or name." We agree only in part.
To state a claim of deceptiveness under Section 2(a), an opposer need only allege facts from which it may be inferred that opposer has a reasonable belief that it would be damaged by use of applicant's allegedly deceptive mark and facts that, if proved, would establish that purchasers would be deceived in a way that would affect materially their decision to purchase applicant's goods. An opposer asserting such a claim need not allege prior use, or any use at all, of a mark or trade name similar to applicant's mark.
*3 On the other hand, to state a claim of false suggestion of a connection under Section 2(a), an opposer must allege facts from which it may be inferred that the applicant's mark points uniquely to opposer, as an entity--i.e., that applicant's mark is opposer's identity or "persona"--and that purchasers would assume that goods bearing applicant's mark are connected with opposer. See The University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., Inc., 703 F.2d 1372, 217 USPQ 505 (Fed.Cir.1983). Also, a properly pleaded claim of false suggestion of a connection clearly must assert either opposer's prior use of applicant's mark, or the equivalent thereof, as a designation of its identity or "persona", or an association of the same with the plaintiff prior in time to the defendant's use. [FN2] See, e.g. In re Nuclear Research Corp., 16 USPQ2d 1316 (TTAB1990), and Alabama Board of Trustees v. BAMA-Werke Curt Baumann, 231 USPQ 408 (TTAB1986). In any event, we disagree with opposer's assertion that it has properly pleaded a claim for relief under Section 2(a) of the Trademark Act, whether on the grounds of deceptiveness or false suggestion of a connection.
In essence, opposer claims it has properly pleaded a claim of deceptiveness because its notice of opposition asserts that consumers will be deceived by applicant's use of the mark. The portion of the notice that sets forth this "claim" of deception, according to opposer, is in paragraph 7. However, the relevant portion of that paragraph does nothing more than repeat a variation of the language set forth in Section 2(d) of the Act, which prohibits registration of marks "likely to cause confusion, or to cause mistake, or to deceive."
A proper pleading of "deceptiveness" under Section 2(a) requires the plaintiff to do more than parrot the language of Section 2(d). The latter provision of the Trademark Act prohibits registration of marks which are likely to deceive a consumer as to the source or origin of goods or services. By contrast, Section 2(a) of the Act prohibits registration of marks which lead a consumer to draw a false conclusion about the nature or quality of goods or services under circumstances where such a conclusion will be material to the consumer's deliberations regarding purchase of the goods or services. See, e.g. Consorzio del Prosciutto di Parma v. Parma Sausage Products Inc., 23 USPQ2d 1894 (TTAB1992) (issue was whether use of PARMA for meat products not made in Parma, Italy deceived consumers in regard to geographic origin of goods); U.S. West Inc. v. BellSouth Corp., 18 USPQ2d 1307 (TTAB1990) (issue was whether use of THE REAL YELLOW PAGES for telephone directories deceived consumers by suggesting that competitive directories were somehow invalid, inaccurate or incomplete); American Speech-Language-Hearing Association v. National Hearing Aid Society, 224 USPQ 798 (TTAB1984) (issue was whether use of phrase CERTIFIED HEARING AID AUDIOLOGIST as part of a collective membership mark deceived consumers into believing that hearing aid dealers possessed training and education of audiologists); and Tanners' Council of America, Inc. v. Samsonite Corporation, 204 USPQ 150 (TTAB1979) (issue was whether use of SOFTHIDE for imitation leather material deceived consumers by leading them to conclude goods were made of real leather).
*4 When a plaintiff's allegation is that consumers are "deceived into" buying defendant's goods under the mistaken belief that they originate from the same source as plaintiff's, or vice versa, the sort of deception at issue is the basis for a Section 2(d), not a Section 2(a), claim. See Springs Industries, Inc. v. Bumblebee Di Stefano Ottina & C.S.A.S., 222 USPQ 512 (TTAB1984).
Turning to opposer's claim that it has properly pleaded a claim of false suggestion of a connection under Section 2(a), we again find the notice of opposition insufficient. Such a claim must assert that the letters [FN3] applicant seeks to register point "uniquely and unmistakably" to opposer, as an identifier of its corporate persona, rather than as an identifier of the source of particular goods. See McDonnell Douglas Corp. v. National Data Corp., 228 USPQ 45 (TTAB1985).
As with its assertion that it has properly pleaded a claim of deceptiveness, opposer relies on paragraph 7 of the notice of opposition to support its assertion that it has properly pleaded a claim of false suggestion of connection. But the portion of paragraph 7 which opposer relies on claims consumers will be confused as to the source of the parties' respective goods. This is nothing more than a claim that the marks, as indicators of source, are confusingly similar. Such a claim raises a Section 2(d) issue, not a Section 2(a) issue. In its current form, the notice of opposition fails to claim that applicant's prospective use of G.D.L. will prompt consumers to think of opposer itself, rather than opposer's goods.
Also, as noted above, for a claim of false suggestion of a connection, opposer must claim, inter alia, either that it is a prior user of the letters in question, see In re Nuclear Research, supra, or that the letters became associated with opposer prior to applicant's use or constructive use. See Alabama Board of Trustees, supra. We agree with applicant that opposer has not claimed that the acronym involved in this case became an identifier of its corporate persona prior to the filing of applicant's application. To the extent opposer does not believe that it must make such a claim for its pleading to set forth a claim of false suggestion of a connection under Section 2(a), opposer is incorrect.
Opposer's Purported Section 2(d) Claim
We now turn to opposer's argument that it has filed a pleading which sets forth a proper claim for relief under Section 2(d) of the act. We begin by noting that applicant is correct in asserting that opposer, to prevail on such a claim, must plead and prove that it has a proprietary interest in G.D.L. or GDL and that the interest was obtained prior to the filing date of applicant's intent-to-use application. See Trademark Act Section 2(d) and Zirco Corp. v. American Telephone and Telegraph Co., 21 USPQ2d 1542 (TTAB1991).
*5 Opposer argues that its pleading both explicitly alleges a likelihood of confusion and implies that opposer has "an interest in, and prior rights to, the initialism GDL". We agree only that opposer has alleged a likelihood of confusion and that the notice of opposition may be read to imply a claim of a proprietary interest, both of which are necessary to plead a claim for relief under Section 2(d). We disagree that the pleading must be read as implying a claim of priority.
In arguing that it has claimed priority, at least by implication, opposer notes that (1) it has claimed use of GENUINE DRAFT LIGHT as a designation for its goods, for some 16 months prior to the filing of the application at issue herein; (2) it has asserted that consumers commonly employ acronyms in lieu of such multi-word designations; and (3) it has claimed that its goods have come to be recognized and identified by the acronym applicant seeks to register.
This stands as nothing more than a claim of priority of use of GENUINE DRAFT LIGHT. Opposer has not specifically identified any particular point in time when consumers began to identify its products by the letters GDL, or G.D.L. The notice of opposition is so vague that it can be read to claim that the association began sometime after the filing of applicant's application, but before the filing of the notice of opposition, just as easily as it can be read to claim that the association began before the filing of the application. In short, all that the notice of opposition can unequivocally be read to imply is a claim that consumers began to identify opposer's products by the letters GDL at least as early as the date of signing of the notice of opposition.
Decision and Order
The motion to dismiss is granted. However, as noted by opposer in its brief in opposition to the motion, the Board freely grants leave to amend pleadings found, upon challenge under Fed.R.Civ.P. 12(b)(6), to be insufficient, particularly where the challenged pleading is the initial pleading. In view thereof, opposer is allowed until 20 days from the mailing date of this order to file an amended pleading stating a claim upon which, if proved, would allow opposer to prevail herein. Otherwise, the opposition shall be dismissed.
Members, Trademark Trial and Appeal Board
FN1. The Board apologizes for the delay in deciding the motion.
FN2. Or, as in this case, which involves an intent-to-use application, the claim of priority or prior association must predate the defendant's constructive use date.
FN3. It is well settled that a claim of "false suggestion of a connection" need not involve a name or likeness. It may involve any equivalent, even an acronym. See, e.g., U.S. Navy v. United States Mfg. Co., 2 USPQ2d 1254 (TTAB1987); Consolidated Natural Gas Co. v. CNG Fuel Systems, Ltd., 228 USPQ 752 (TTAB1985); and Buffet v. Chi-Chi, Inc., 226 USPQ 428 (TTAB1985).