Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 ORDER SONS OF ITALY IN AMERICA
PROFUMI FRATELLI NOSTRA AG
Opposition No. 93,618
August 15, 1995
March 7, 1995
Before Cissel, Seeherman and Quinn
Administrative Trademark Judges
By the Board:
R.F. Cissel, E.J. Seeherman and T.J. Quinn
Administrative Trademark Judges
An application has been filed by Profumi Fratelli Nostra AG to register the mark COSA NOSTRA for "skin soaps, shaving balm, shaving cream, shaving gel, shaving lotion; perfume and perfume oil; essential oils for personal use; cosmetics, namely skin cream, skin emollients, skin lotion, skin moisturizer, skin toners, sun tanning preparations, bath pearls, milk bath, bath gel, bath oil, bath powder, bath salts; deodorants for personal use; non-medicated hair care preparations and dentifrices." [FN1]
Registration has been opposed by the Order Sons of Italy in America (Order) on the grounds that it is a fraternal organization founded in 1905, currently having 2,675 lodges in the United States and Canada; that it provides assistance, moral support and entertainment services to its members; that at social activities, door prizes, including soaps, cosmetics, and shaving creams, are given out; that the Commission for Social Justice (a separate corporate entity of the Order) fights bias, bigotry and prejudice against Italo-American citizens, and in particular, the Commission has fought to eliminate use of the terms "Mafia" and "Cosa Nostra" in general reference to Italo-American names; that the term COSA NOSTRA means "our thing" and since 1959 is used to refer to the "Mafia" by its own members; that opposer (and the Commission) object to the use of the terms "Mafia" and "Cosa Nostra" beyond the actual meaning and description of a small group of organized criminals in Italy and America; that COSA NOSTRA is the Italian name for the "Mafia" which is detested by most law- abiding Italo-American citizens; that to call an honest Italo-American citizen a member of COSA NOSTRA is an insult that disparages the character and reputation of the person by labeling him a criminal; that applicant's mark used on its goods disparages the members of the Order and brings the Order as an institution into contempt or disrepute; and that the Order is damaged thereby.
In its answer (filed June 6, 1994) applicant denied the salient allegations of the notice of opposition and raised the following three "affirmative defenses":
(1) Applicant alleges that the Notice of Opposition fails to state a claim upon which relief can be granted.
(2) Applicant alleges that the use of the term "COSTA NOSTRA" in connection with cosmetics would not disparage the male and female members of opposer's organization nor would it bring opposer's organization into contempt or disrepute.
(3) Applicant alleges that the reasonable prudent buyer would not be likely to associate the term "COSA NOSTRA" when used in connection with cosmetics with opponent's organization or its members.
*2 The Board mailed a trial order on June 20, 1994.
This case now comes up on opposer's motion (filed June 30, 1994) to strike applicant's first and second defenses; opposer's motion (filed July 7, 1994) to strike applicant's third defense; opposer's consented motion (filed September 15, 1994) to extend discovery and trial dates; and on applicant's motion (filed October 7, 1994) to suspend proceedings pending the outcome of opposer's motion to strike.
Turning first to opposer's two motions to strike, opposer essentially contends that applicant's first and second defenses are "insufficient" under Fed.R.Civ.P. 12(f); and that applicant's third defense is "insufficient" and "immaterial" under Rule 12(f).
Applicant contends that the motion to strike applicant's third defense was untimely under Rule 12(f); that the defenses are proper; and that motions to strike are not favored.
The parties are advised that both of opposer's motions to strike are untimely under that portion of Fed.R.Civ.P. 12(f) which provides for filing such motions within twenty days after service of the responsive pleading. In this case applicant's answer was served on opposer on June 6, 1994, making a motion under Rule 12(f) due on June 27, 1994. Thus, both of opposer's motions to strike are untimely. However, Rule 12(f) also provides that the court (or in this instance the Board) may act on its own initiative at any time to strike certain types of material from pleadings. The Board hereby exercises its discretion and we will review applicant's "affirmative defenses" pursuant to Rule 12(f). See American Vitamin Products Inc. v. DowBrands Inc., 22 USPQ 1313 (TTAB 1992).
While Fed.R.Civ.P. 12(b)(6) permits a defendant to assert in the answer the "defense" of failure to state a claim upon which relief can be granted, it necessarily follows that a plaintiff may utilize this assertion to test the sufficiency of the defense in advance of trial by moving under Fed.R.Civ.P. 12(f) to strike the "defense" from the defendant's answer. See S.C. Johnson & Son Inc. v. GAF Corporation, 177 USPQ 720 (TTAB 1973).
To withstand a motion to dismiss for failure to state a claim upon which relief can be granted, an opposer need only allege such facts as would, if proved, establish that (1) the opposer has standing to maintain the proceeding, and (2) a valid ground exists for opposing registration. See Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
For purposes of determining a motion to dismiss for failure to state a claim upon which relief can be granted, all of opposer's well pleaded allegations must be accepted as true, and the notice of opposition must be construed in the light most favorable to opposer. See 5A Wright & Miller, Federal Practice and Procedure: Civil 2d § 1357 (1990). Dismissal for insufficiency is appropriate only if it appears certain that the opposer is entitled to no relief under any set of facts which could be proved in support of its claim. See Stanspec Co. v. American Chain & Cable Co., Inc., 531 F.2d 563, 189 USPQ 420 (CCPA 1976).
*3 The standing question is an initial inquiry directed solely to establishing the personal interest of the plaintiff. The Federal Circuit has stated that an opposer need only show "a personal interest in the outcome of the case beyond that of the general public." See Estate of Biro v. Bic Corp., 18 USPQ 1382, 1385 (TTAB 1991); Jewelers Vigilance Committee, Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d 2021, 2023 (Fed.Cir.1987); and Lipton Industries, Inc. v. Ralston Purina Co., supra.
In this case, opposer has pleaded its standing to be heard by its allegations of the activities in which opposer is engaged; and that its good reputation will be jeopardized by registration of applicant's application. These facts, if proved, would be sufficient to establish that opposer has a personal interest in this proceeding beyond that of the general public. See Susan Shawn Harjo, et al. v. Pro Football, Inc., 30 USPQ2d 1828 (TTAB 1994).
Regarding the pleaded ground opposer has specifically pleaded what the opposer organization is and what it does; and that applicant's use of its mark on its goods will disparage the individual members of opposer as well as bringing the Order as an institution into contempt or disrepute. This is a sufficient pleading of disparagement, contempt, and/or disrepute under Section 2(a) of the Trademark Act.
Turning to applicant's second defense, applicant denied, earlier in the answer, opposer's allegations of disparagement, contempt, and/or disrepute. Applicant's second defense is nothing more than a restatement of that denial. That is, applicant's second defense does not add anything to the denial. Therefore, applicant's second defense is redundant and is hereby stricken. [[[ (Cf: Textron, Inc. v. The Gillette Company, 180 USPQ 152 (TTAB 1973) ].
Finally, applicant's third defense is an acceptable pleading in that it is an amplification of applicant's denial of opposer's claims. The third defense gives opposer more complete notice of applicant's position. See Harsco Corp. v. Electrical Sciences, Inc., 9 USPQ2d 1570 (TTAB 1988). Specifically, at trial applicant may seek to show the perception of a substantial composite of the relevant general public as to applicant's mark used on its goods. See In re Mavety Media Group Ltd., 33 F.2d 1367, 31 USPQ2d 1923 (Fed.Cir.1994).
In summary, opposer's motion to strike applicant's first and second defenses is granted, and opposer's motion to strike applicant's third defense is denied.
Applicant's request that proceedings be suspended pending this decision is granted, and proceedings herein have been considered so suspended.
*4 Opposer's consented motion to extend discovery and trial dates is granted, and said dates are rescheduled as set forth in the accompanying trial order. [FN2]
Administrative Trademark Judges, Trademark Trial and Appeal Board
FN1. Application Serial No. 74/270,804, filed April 30, 1992, on the basis of a Switzerland application. Applicant stated that the English translation of "COSA NOSTRA" is "our thing". The paper records (but not the computer records) of this Office indicate that application Serial No. 74/270,804 inadvertently issued as Registration No. 1,824,821 on March 8, 1994. The application file will be forwarded to the Assistant Commissioner for Trademarks for appropriate action.
FN2. Opposer filed discovery materials with the Board in violation of Trademark Rule 2.120(j)(8). The materials are returned herewith to opposer's attorney.