Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 THE SCOTCH WHISKY ASSOCIATION
UNITED STATES DISTILLED PRODUCTS CO.
Cancellation No. 17,568
February 12, 1991
Before Sams, Rooney and Simms
By the Board:
J.D. Sams, L.E. Rooney and R.L. Simms
Members, Trademark Trial and Appeal Board
On November 27, 1989 the Board granted respondent's motion to dismiss for failure to state a claim under Fed.R.Civ. P. 12(h)(2), but allowed petitioner time in which to submit an amended pleading. On August 15, 1990 the Board denied petitioner's request for reconsideration, and reset petitioner's time in which to file an amended pleading. Finally, on September 17, 1990 the Board noted petitioner's amended petition to cancel, allowed respondent time in which to file an answer thereto, and if the answer included the same affirmative defenses, then the Board allowed petitioner time in which to advise the Board if petitioner renewed its motion to strike said affirmative defenses (originally filed June 26, 1990-via a certificate of mailing).
Respondent's answer to the amended petition to cancel was timely filed on September 18, 1990, and it included four of the five affirmative defenses originally included in the answer. [FN1]
This case now comes up on respondent's motion to dismiss the amended petition to cancel for failure to state a claim (filed October 9, 1990); [FN2] petitioner's renewal of its motion to strike respondent's affirmative defenses (filed October 15, 1990); and on petitioner's motion for an oral hearing before the Board on respondent's motion to dismiss. [FN3]
Turning first to the question of the sufficiency of petitioner's pleading, in the initial Board decision (dated November 27, 1989) the Board held essentially that petitioner had not sufficiently pleaded that the surname MCADAMS was a deceptive (in a geographical sense) term for respondent's goods; and the Board also held that petitioner's claim of unfair competition under Articles 10 and 10bis of the Paris Convention could not, standing alone, separately state a claim.
In its amended petition to cancel, petitioner has alleged all of its original allegations (which will not be reiterated here), and petitioner has added allegations that MCADAMS is a Scottish surname; that, as such, MCADAMS is strongly associated by the United States public with Scotland; that it is a common practice to market Scotch whisky in the United States under marks composed in whole or in part of Scottish surnames; and that as a result of such significance, association and use of Scottish surname marks for Scotch whisky in the United States, such marks have come to be understood by the public to identify the geographic origin of such goods.
In support of its motion to dismiss respondent contends that petitioner has not pleaded that the term MCADAMS has primary significance as a place name; that, in fact, petitioner has, if anything, alleged primary significance of the term as a surname and that it is merely evocative of Scotland; that petitioner's amended pleading fails to state a claim under Section 2(a); and that because there is no separate properly pleaded ground in this case, petitioner's claim under Articles 10 and 10bis cannot stand alone. [FN4]
*2 Petitioner argues in response thereto that with its added claims [ (i) MCADAMS is a Scottish surname strongly associated by the public with Scotland, (ii) there is a common practice of marketing Scotch whisky in the United States under Scottish surname marks, and (iii) based on such significance, association and use, Scottish surname marks are understood to identify geographic origin of such goods], the amended pleading sufficiently states a claim upon which relief can be granted; that petitioner need not allege in a claim under Section 2(a) that the mark is 'primarily' geographic, because the limiting term 'primarily' is used only in Section 2(e)(2) of the Trademark Act; and that petitioner has sufficiently pleaded facts which, if proven, would establish that the mark MCADAMS, when used on whisky not produced in Scotland, constitutes, at least indirectly, a false designation of geographic origin and is prohibited by Articles 10 and 10bis of the Paris Convention.
Respondent filed a reply brief.
In order to have a claim dismissed under Fed.R.Civ. P. 12 for failure to state a claim, the moving party must meet a high standard. The purpose of a motion to dismiss is to test the sufficiency of the complaint, not to decide the merits of the case. Under the "simplified notice pleading" of the Federal Rules of Civil Procedure, the allegations of a complaint should be construed liberally and the "complaint should not be dismissed for failure to state a claim unless it appears beyond doubt that the plaintiff can prove no set of facts in support of his claim which would entitled him to relief." See Conley v. Gibson, 355 U.S. 41, 78 S.Ct. 99, 102 L.Ed.2d 80 (1957). See also Stanspec Co. v. American Chain and Cable Co., Inc., 531 F.2d 563, 189 USPQ 420 (CCPA 1976).
As the Board explained in granting respondent's motion to dismiss the original petition to cancel, in asserting a claim under Section 2(a) of the Trademark Act the plaintiff must allege facts which, if proved, would establish that the mark (in this case MCADAMS) is geographically misdescriptive as applied to the goods (in this case whisky), that purchasers believe the misrepresentation, and that the misrepresentation is a material factor in the decision to purchase. See In re House of Windsor, Inc., 221 USPQ 53 (TTAB 1983); and In re Quady Winery, Incorporated, 221 USPQ 1213 (TTAB 1984).
In our decision on petitioner's request for reconsideration we had clarified that there are terms which are not specifically place names, but which may have geographical significance. See ConAgra, Inc. v. Saavedra, 4 USPQ2d 1245 (TTAB 1987); and In re Cooperative Productori Latte Ex Fontina Valle D'Acosta, 230 USPQ 131 (TTAB 1986). We further clarified that, nonetheless, when asserting geographic deceptiveness, a plaintiff must plead that the mark has primary geographic significance.
*3 We have carefully reviewed petitioner's amended petition to cancel, and we find it to be legally insufficient. That is, petitioner's amended petition to cancel does not set forth a sufficient claim of geographic deceptiveness under Section 2(a) of the Trademark Act.
Petitioner has now alleged that the mark MCADAMS is a Scottish surname, and as such the term is strongly associated by the United States public with Scotland; that it is a common practice to market Scotch whisky in the United States under marks composed in whole or in part of Scottish surnames; and that because of such use, the marks have come to be understood by the United States public to identify the geographic origin of such goods. Thus, petitioner has pleaded that the purchasing public recognizes the name MCADAMS is Scottish, and that the purchasing public might believe the goods are of Scottish origin. But petitioner has still not pleaded that the mark in question is primarily recognized as a geographical term, as required for a proper pleading of geographical deceptiveness under Section 2(a). The inclusion in the Trademark Act of a prohibition against registration of geographical terms [Section 2(e)(2) ] was to prohibit registration of terms which others must be free to use. A plaintiff need not allege that the mark is a geographic place name but the plaintiff must allege that the mark is a geographic designation (i.e. has geographic association), if the plaintiff bases its claim on geographical deceptiveness [Section 2(a) ] or geographical descriptiveness or misdescriptiveness [Section 2(e)(2) ]. That is, petitioner herein must plead that the term MCADAMS is primarily recognized as a geographical term in and of itself. It is not sufficient to plead, as we believe petitioner has done in this case, that the term is just suggestive or evocative of a geographical place. Because petitioner has not alleged that the mark in question, MCADAMS, is primarily geographical or has primary geographic significance, the petition to cancel fails to state a claim of geographical deceptiveness.
Because petitioner has not pleaded a separate ground on which to base the petition to cancel, petitioner's claims under Articles 10 and 10bis cannot be considered by the Board. See Person's Co. Ltd. v. Christman, 10 USPQ2d 1634 (TTAB 1989), aff'd --- F.2d ----, 14 USPQ2d 1477 (Fed.Cir.1990).
Accordingly, respondent's motion to dismiss is granted.
The Board, finding no plausible reason to allow petitioner a further opportunity to amend its petition to cancel, hereby dismisses the petition to cancel. [FN5]
J. D. Sams
L. E. Rooney
R. L. Simms
Members, Trademark Trial and Appeal Board
FN1. Respondent's amended answer does not include the affirmative defense that petitioner lacks standing to bring this action, which was included as an affirmative defense in the original answer.
FN2. Respondent filed the motion under Fed.R.Civ. P. 12(c) and 12(h)(2). As explained in the Board order dated November 27, 1989 (footnote 1) this motion will be treated as a motion to dismiss for failure to state a claim under Fed.R.Civ. P. 12(h)(2).
FN3. Petitioner's motion under Trademark Rule 2.127(a) for an oral hearing on respondent's motion to dismiss is denied. Oral hearings on motions are held only by order of the Board, and it is not the practice of the Board to conduct hearings on motions except where it appears necessary in order to clarify the issues. In this case, it is believed that the motion under consideration has been adequately briefed, and an exception to the usual practice is not warranted. See Giant Foods, Inc. v. Standard Terry Mills, Inc., 229 USPQ 955, at 957 (TTAB 1986), and cases cited therein. That is, the issues presented in this case are not so extraordinary as to warrant an oral hearing, but rather the issues involve the sufficiency of the pleadings, and the Board need not and cannot go beyond the four corners of the pleadings in order to determine respondent's motion.
FN4. Respondent requested that costs be awarded to respondent on this matter. The request is denied, not only because it is unwarranted on the record before the Board, but also because the Board has no authority to award fees and/or costs. See Trademark Rule 2.127(f).
FN5. Petitioner's motion and renewed motion to strike respondent's affirmative defenses are considered moot. Additionally, as a clarification for the record, respondent's consented motion filed July 17, 1989 to extend discovery and trial dates, which had not previously been decided by the Board, is also considered moot.