TTAB - Trademark Trial and Appeal Board - *1 KELLY SERVICES, INC. v. GREENE'S TEMPORARIES, INC. Cancellation No. 19,971 November 24, 1992

Trademark Trial and Appeal Board

Patent and Trademark Office (P.T.O.)





Cancellation No. 19,971

November 24, 1992


Before Sams, Rice and Quinn






By the Board:



J.D. Sams, J.E. Rice and T.J. Quinn






 Now up for consideration is respondent's motion to dismiss the petition for cancellation, under Fed.R.Civ.P. 12(b)(6). The parties stipulated to an extension of time for petitioner to respond to the motion. The Board approved the stipulation in an earlier order. Within the extended response period, petitioner filed a brief in opposition to the motion.



 Petitioner seeks to cancel respondent's registration of its clover leaf design trademark, registered for employment agency and temporary job placement services. [FN1] As grounds for its petition to cancel the registration, petitioner pleaded that: the parties are competitors; petitioner uses clover leaf designs on an annual basis, in interstate commerce, to promote its services; petitioner's first such use dates from a point in time well before respondent's first use of its registered clover leaf mark; in 1983 respondent initiated a lawsuit alleging petitioner's use of the clover leaf designs to be an infringement of respondent's Texas state registration for its mark; respondent obtained from petitioner, during discovery for that lawsuit, documentary proof of petitioner's prior use of its clover leaf designs; the state action was later dismissed by stipulation of the parties; respondent filed for and obtained its federal registration for its clover leaf mark subsequent to the state action; respondent's filing of the application for a federal registration was fraudulent, given its knowledge of petitioner's use of the clover leaf designs; and, respondent has recently challenged petitioner's continued use of its clover leaf designs as an infringement of respondent's federally registered mark.



 In its motion to dismiss, respondent asserts that petitioner has not pleaded grounds upon which cancellation can be granted. Specifically, respondent asserts: (1) the petition for cancellation does not state the nature of petitioner's annual use of clover leaf designs, i.e., the petition notes use of the designs but does not characterize the use as, for example, trademark use, service mark use or ornamental use; (2) petitioner is relying on alleged fraud by respondent as its basis for seeking cancellation of respondent's registration; (3) the statement in respondent's application which is alleged to be fraudulent is the declaration statement by which respondent denied knowledge of any other party with a right to use the mark sought to be registered; and, (4) in the absence of a claim of use of clover leaf designs by petitioner, as marks, the allegation of fraud cannot be proved. (Underscoring added).



 In addition, respondent asserts that petitioner has not established its standing to pursue the action, because it has not made a sufficient pleading that it will be damaged if the registration is not cancelled. Respondent notes that the cancellation petition refers to one letter from respondent to petitioner which, in its most severe characterization, constitutes only a threat of litigation. This allegation, respondent asserts, is insufficient to state a claim of damage to petitioner and, therefore, is insufficient to establish petitioner's standing.



  *2 In opposing the motion to dismiss, petitioner argues that it has pleaded grounds upon which cancellation can be granted. Specifically, petitioner asserts that it need not be using its clover leaf designs in a trademark or service mark manner to be able to pursue its petition based on the allegation that respondent's application included a fraudulent declaration; that Trademark Act Section 14 does not require a cancellation petitioner asserting fraud to be able to claim a right to use, as a trademark, the mark sought to be cancelled; and, that case law relied on by respondent in its motion to dismiss which would tend to suggest otherwise is no longer viable.



 Also, in regard to respondent's claim that petitioner has no standing because it has not alleged sufficient damage, petitioner argues that current law does not require a claim of "damage" to establish standing. Rather, petitioner asserts, all it need show is a real interest in the matter. Petitioner asserts it has met this requirement.



 To withstand a motion to dismiss for failure to state a claim upon which relief can be granted, a petition for cancellation need only allege such facts as would, if proved, establish (1) the petitioner has standing to maintain the proceeding, and (2) a valid ground exists for cancelling the subject registration. See: Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982). A distinction is to be drawn between pleaded facts which, if proved, would establish petitioner's standing and those additional facts which are necessary to the cause of action. Lipton, 213 USPQ at 188.



 We may quickly dispose of respondent's assertion that petitioner has not pleaded facts which, if proved, would establish its standing. We believe petitioner has clearly demonstrated a "real interest" in the proceeding. It has claimed use of its clover leaf designs for a significant period of time and has recounted two attempts by petitioner to interfere with that use. Clearly, these facts, if proved, would be sufficient to establish petitioner's real interest in the proceeding, that is, an interest beyond that of the general public, and that is all the law requires. See International Order of Job's Daughters v. Lindeburg and Company, 727 F.2d 1087, 220 USPQ 1017, 1020 (Fed.Cir.1984).



 Next, we turn to the question of whether petitioner has pleaded facts which, if proved, would establish grounds for cancellation. We begin by noting that the petition for cancellation, taken as a whole, must be liberally construed in the light most favorable to petitioner and may not be dismissed absent a finding, not subject to doubt, that petitioner could prove no set of facts based on the petition that would yield the relief sought. Scotch Whisky Ass'n v. United States Distilled Products Co., 952 F.2d 1317, 21 USPQ2d 1145 (Fed.Cir.1991).



  *3 Petitioner has clearly claimed a right to use its clover leaf designs in its annual St. Patrick's Day promotions. [FN2] Petitioner has also asserted, in essence, that the circumstances surrounding the parties' 1983 lawsuit tend to establish respondent's knowledge that petitioner has a right to use its clover leaf designs, notwithstanding respondent's belief that the designs are confusingly similar to respondent's registered mark. Thus, petitioner concludes, respondent's application for registration of its mark was fraudulent, because it included a statement claiming ownership of the mark and disclaiming knowledge of any "other person, firm, corporation or association [with] the right to use said mark in commerce, either in the identical form or in such near resemblance thereto as to be likely ... to cause confusion or to cause mistake, or to deceive."



 The above-quoted statement regarding an applicant's claim of ownership of a mark is a required element of an application for the federal registration of a mark. See Trademark Act Section 1 and Trademark Rule 2.33(b). Respondent has adopted the position, in its motion to dismiss, that the ownership statement constitutes a disclaimer by the declarant of knowledge of any other party with the right to use the applied for mark, as a mark. Petitioner has not directly challenged respondent's argument on this point, and we do not believe that petitioner could successfully do so.



 We view the statutorily prescribed ownership statement as comprising the following averments: (1) the declarant believes the applicant to be the exclusive owner of the applied for mark and (2) the declarant believes no other party has an equal or superior right to use, on any goods or services, the same mark or a mark so similar to applicant's that, when used on such goods or services, there would be a likelihood of confusion as to the source of the goods or services. See, e.g. An Evening at the Trotters, Inc. v. A Nite at the Races, Inc., 214 USPQ 737 (TTAB 1982).



 In the Trotters case, it was held that an applicant that believes its right to register a mark is superior to that of another user of the same or similar mark will not be held to have committed fraud by signing an application with the statutorily prescribed ownership statement. An Evening at the Trotters, 214 USPQ at 741 n. 9. The converse of this, of course, is that fraud may be found where the application is signed in the absence of such a good faith belief. However, petitioner has not cited any decision which holds that fraud may be found where the ownership statement is made by an applicant with knowledge of another's right to use the applied for mark in a descriptive sense, in an ornamental manner, or in any way that would be protected from the threat of litigation as a fair use.



 Registration of a word or design carries with it only the presumption of an exclusive right to use the same as a mark. It has been clearly held, in many cases, that registration of a word by one party does not preclude others from making descriptive or non-trademark uses of the word. See e.g., Pacific Industries, Inc. v. Minnesota Mining and Manufacturing Co., 425 F.2d 1265, 165 USPQ 631 (CCPA 1970); In re Industrial Washing Machine Corporation, 201 USPQ 953 (TTAB 1979); and Exxon Corporation v. Fill-R-Up Systems, Inc., 182 USPQ 443 (TTAB 1974). In view thereof, the statutorily prescribed application statement regarding ownership of a word or design, constitutes a claim only of the exclusive right to use the same as a mark. Before signing an application including the statement, the declarant need not consider whether fair, non-trademark uses of the word or design may be made or, if the declarant is already aware of such uses, then they need not be disclosed, since they are not antithetical to the applicant's claim.



  *4 Thus, petitioner cannot prevail upon its claim of fraud unless it pleads and proves that respondent, when it signed the application with the ownership oath, was aware of petitioner's superior right to use the same or a similar mark, as a technical trademark, or in a manner analogous to trademark use, so as to create a likelihood of confusion among consumers if the two parties used their marks contemporaneously.



 Apart from its argument concerning the import of the declaration language required by the statute, respondent also argues that the case law requires this approach. Specifically, respondent relies on the decision of Otto Roth & Company, Inc. v. Universal Foods Corporation, 640 F.2d 1317, 209 USPQ 40 (CCPA 1981), which held as follows:



 When descriptiveness or genericness is asserted as a ground for opposition   [or cancellation], the opposer [or petitioner]

   is trying to prevent a claim of exclusive ownership ... [is] asserting a privilege which he holds in common with all others ... [and] is thus concerned with the prevention of harassment, based on a registration, under which an exclusive right [is] claimed in a term which does not identify source.

When likelihood of confusion is asserted as the ground for opposition [or cancellation], the opposer [or petitioner]

   is attempting to protect his individual rights, as the owner of some means of identifying the source of his goods, by preventing registration of a mark so similar ... that concurrent use is likely to cause confusion.... In this situation, the opposer [or petitioner] must prove he has proprietary rights in the term he relies upon to demonstrate likelihood of confusion.

 Otto Roth, 209 USPQ at 43.



 Petitioner, on the other hand, asserts that the Otto Roth decision has lost its vitality because of the Lipton Industries decision, referenced at the outset of this decision. Petitioner also asserts that Section 14 of the Trademark Act does not necessarily require that it assert a proprietary interest in the clover leaf designs to be able to prevail in this action. In support of its position, petitioner cites the decisions of International Order of Job's Daughters v. Lindeburg and Company, 727 F.2d 1087, 220 USPQ 1017 (Fed.Cir.1984) (petitioner claimed the right to utilize functional emblem for use on items of jewelry), and Nature's Way Products Inc. v. Nature's Herbs Inc., 9 USPQ2d 2077 (TTAB 1989) (petitioner claimed the right to make descriptive uses of the phrase registered as a mark). Further, petitioner notes that the Board has permitted cancellation actions to be maintained in cases where the petitioners were intent-to-use applicants and had made no use whatsoever, proprietary or otherwise, of the marks in issue. See, e.g. American Vitamin Products, Inc. v. Dow Brands, Inc., 22 USPQ2d 1313 (TTAB 1992) (intent to use applicant permitted to pursue cancellation of respondent's mark on grounds of abandonment).



  *5 We disagree with petitioner's pronouncement of the death of Otto Roth. The Lipton Industries decision may arguably be viewed as modifying or clarifying prior decisions on the issue of standing, given its lengthy discussion of that issue. However, we do not find anything in the decision that would overrule the holdings from Otto Roth discussed above. Nor do we find the other decisions relied on by petitioner as inconsistent with Otto Roth.



 On the other hand, we agree with petitioner's claim that Section 14 of the Act, in and of itself, does not require a cancellation petitioner to claim a proprietary interest in the mark sought to be cancelled, or in something very similar thereto. Such a proprietary interest is not necessary to show petitioner's standing in this case. However, in order to prevail in an opposition or cancellation, a plaintiff must plead, and ultimately prove, not only its standing, but also a ground for opposition or cancellation. If one of the necessary elements of the plaintiff's pleaded ground for opposition or cancellation is plaintiff's ownership of a proprietary right in a mark which is the same as, or similar to, the defendant's mark, then the plaintiff must plead, and ultimately prove, its proprietary right, in order to establish its ground for opposition or cancellation.



 Petitioner, in its pleading, does not claim that respondent's mark is descriptive or generic. Indeed, petitioner has not challenged the capacity of respondent's mark to serve as an indicator of the source of respondent's services. Given petitioner's de facto acknowledgment that respondent's four-leaf clover design functions as a mark, petitioner cannot successfully prove that respondent's application for the registration of that mark was fraudulent unless petitioner pleads and proves (1) that the clover leaf designs it uses are confusingly similar to respondent's mark, (2) that it has a superior proprietary interest in clover leaf designs used in conjunction with the rendering of the parties' services, and (3) that respondent was aware of this superior interest when it filed its application.



 Since the petition for cancellation does not claim the proprietary interest requisite for petitioner's pleaded ground of fraud, we agree with respondent that petitioner has not pleaded sufficient facts which, if proven, would allow petitioner to obtain the relief it seeks. In essence, petitioner seeks a declaratory judgment that its use of clover leaf designs in conjunction with annual St. Patrick's Day promotions is a fair use which does not infringe respondent's mark and which cannot be stopped by respondent. The Board is not empowered to render such a judgment, which petitioner must seek from an appropriate court.



 We note that petitioner, in its brief in opposition to the motion to dismiss, included a contingent request for leave to amend its petition for cancellation. Because respondent has not objected and because leave to amend pleadings should be liberally granted, see Fed.R.Civ.P. 15(a), the request is granted. Petitioner is allowed 30 days to file an amended petition for cancellation. If petitioner either fails to amend its pleading or makes amendments which fail to address the insufficiency in the pleading as discussed herein, then respondent's motion to dismiss will be granted.



J.D. Sams



J.E. Rice



T.J. Quinn



Members, Trademark Trial and Appeal Board



FN1. Registration No. 1,346,712, issued July 2, 1985 (combined affidavit under Sections 8 & 15 filed).



FN2. One need not exercise great imagination to conceive of a variety of uses for clover leaf designs during such promotions.


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