Is Congressional intent always reflected in enacted statutory language?

United States of America
In the recent precedential decision of the Trademark Trial and Appeal Board (TTAB) in Academy of Motion Picture Arts and Sciences v Alliance of Professionals & Consultants Inc (Cancellation 92055081, September 27 2012), the TTAB was asked to consider whether Congressional intent is always reflected in enacted statutory language. The case involved a clearly famous registered family of marks and the 'federal registration defence'. 

The petitioner - the Academy of Motion Picture Arts and Sciences - owns six valid and existing OSCAR and OSCAR derivative federal registrations, of which four are for services in Class 41 of the Nice Classification. One is Registration 1,096,990 for the mark OSCAR in connection with "entertainment and education service - namely, telecasts in connection with the recognition of distinguished achievement in the motion picture industry; library and reference services; theatrical exhibitions of motion pictures" in Class 41. The petitioner's six OSCAR marks were distinctive and famous at least as of, and long before, March 13 2009, the alleged date of first use in the respondent's application to register its OSCAR mark. 

The respondent - Alliance of Professionals & Consultants Inc - owns US Registration 3974726 (issued on June 7 2011) for the word service mark OSCAR for “providing recognition and incentives by the way of awards and contests to demonstrate excellence in the field of business consultation and information technology” in Class 41. 

The petitioner failed to timely file an opposition to the respondent’s application for the OSCAR service mark during the 30-day opposition term; upon issuance of the registration certificate, the petitioner filed a three-count petition to cancel the registration, alleging that it:

  • so resembled the petitioner's previously used and registered six OSCAR marks that it was likely to cause confusion, mistake or deceive prospective consumers pursuant to Section 2(d) of the Trademark Act;
  • falsely suggested a connection with the petitioner pursuant to Section 2(a) of the act; and
  • would dilute the petitioner's six registered marks within the meaning of Section 43(c) of the Lanham Act, as amended.

The respondent deferred filing an answer to the petition to cancel and filed a motion to dismiss against the dilution claim on the ground that the ownership of this federally registered mark acts as an absolute and complete defence to the dilution claim. A dismissal of a cause of action under Rule 12(b)(6) of the Federal Rules of Civil Procedure  must be correct as a matter of law when the allegations of the complaint are taken as true. Dismissal is proper when a complaint is not plausible on its face. The purpose of the rule is to foster judicial economy by allowing the court to eliminate actions that are fatally flawed in their legal premise and destined to fail. 

The motion to dismiss requires a review of the trademark dilution law. The Trademark Dilution Revision Act (TDRA) was enacted by Congress in 2006 to repeal the Federal Trademark Dilution Act of 1995. In repealing the 1995 act, the TDRA replaced the 'actual dilution' standard applied by the US Supreme Court with the 'likelihood of dilution' standard, and defined 'dilution by blurring' and 'dilution by tarnishment' claims under the act. More importantly for this matter, the TDRA expanded the scope of the federal registration defence to owners of valid registered marks as follows:

"The ownership by a person of a valid registration… on the principal register under this chapter shall be a complete bar to an action against that person, with respect to that mark, that -

(A) (i) is brought by another person under the common law or statute of a State; and (ii) seeks to prevent dilution by blurring or dilution by tarnishment;


(B) asserts any claim of actual or likely damage or harm to the distinctiveness or reputation of a mark, label, or form of advertisement. 15 USC. § 1125 (c) (6) (2006)."

Section 43(c) (6) (B) affords a defendant accused of federal trademark dilution a 'federal registration defence' provided the defendant owns a valid federal registration for the mark in question on the Principal Register.   

Both parties agreed with legal commentators that the 2006 enactment of the TDRA included the word 'or' before subparagraph (B) in error and that this working differed from the House Bill which was passed. The Senate wording that was signed into law altered the meaning of the statute. As a result, the federal registration defence is now available to both state and federal dilution claims and applies equally to cases before the TTAB. The petitioner however argued that the enacted statutory language created an 'unintended' change and Congress clearly meant to retain possible federal dilution claims. The respondent agreed that the error occurred, but argued the position that Congress and the president must have intended the language signed into law.

The TTAB noted that, while a most extraordinary showing of contrary intentions by Congress may justify a departure from the plain language of a statute, here there was scant legislative history for the TDRA and certainly not enough to support the petitioner’s argument for an alternative reading of the statute in this case. The TTAB assumed that Congress meant what it said and, if the statute is something different from what was intended, then Congress must amend the statute to achieve its desired result. The motion to dismiss was therefore granted and the petition to cancel will move forward on the remaining two claims. 

This well-reasoned judicial approach was clearly warranted under the facts of this case.

Brian Edward Banner, The Banner Firm LLC, Washington DC

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