914-908-6757 anthony@vernalaw.com

Quite often, many litigants are pro se (representing themselves) in the Trademark Trial and Appeal Board (TTAB).  Also quite often, many litigants do not take the procedural rules of the TTAB seriously.  This is unfortunate, as the TTAB is a federal administrative court that hears serious questions of likelihood of confusion, trademark dilution, and fraud.

When the plaintiff in the TTAB does not take the requirements of a pleading seriously, and do not meet the requirements for a pleading (which is called a Complaint in many courts, but is either called a Notice of Opposition or a Petition for Cancellation in the TTAB), a Motion to Dismiss should be the first step a defendant takes.

Recently, there have been TTAB cases started by extremely insufficient pleadings.  One case was only started with pictures and no real Petition for Cancellation filed.  Another case was only started with the following Petition for Cancellation:
“1. Petitioner has standing to oppose the Registered Mark, as it has a direct and personal stake in the outcome; and

2. Petitioner has a reasonable belief in fact that: (a) Petitioner’s mark was used in commerce at an earlier date and therefore has Priority; and (b) continued allowance of the Registered Mark to exist will continue to cause a likelihood of confusion to the general public and will continue to dilute Petitioner’s mark.”

A motion to dismiss for failure to state a claim is a test solely of the legal sufficiency of the complaint. To withstand a motion to dismiss for failure to state a claim in a Board opposition proceeding, the opposer need only allege such facts in the notice of opposition as would, if proved, establish that (1) it has standing, and (2) a valid ground exists for opposing the subject application. Lipton Industries, Inc. v. Ralston Purina Co. , 670 F.2d 1024, 213 USPQ 185, 187 (CCPA 1982). Specifically, “a complaint must contain sufficient factual matter, accepted as true, to ‘state a claim to relief that is plausible on its face.’” Ashcroft v. Iqbal, 556 U.S. 662, 129 S. Ct. 1937, 1949 (2009), quoting Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 570 (2007). In particular, a plaintiff need only allege “enough factual matter … to suggest that [a claim is plausible]” and “raise a right to relief above the speculative level.” Totes-Isotoner Corp. v. U.S., 594 F.3d 1346, 1354 (Fed. Cir. 2010).

The problem is that those facts just don’t exist in either described filing.  Even in the Petition quoted above, counsel for the plaintiff uses the word “dilute” when no trademark dilution is even pleaded.  So it is important that a Motion to Dismiss be the defendant’s first move in cases like these, because if a faulty pleading (be it a Petition for Cancellation or a Notice of Opposition) is allowed, then the TTAB has the right to read it as correctly plead.  If the plaintiff is unable to plead the case properly, then it should be dismissed.  This recommendation is not made lightly, but it is made to help the defendant end the case early.