TTAB dismisses petition for cancellation of ‘goats on roof’ marks

United States of America

In Doyle v Al Johnson’s Swedish Restaurant & Butik Inc (Cancellation 92054059, February 10 2012), the Trademark Trial and Appeal Board (TTAB) has granted the respondent's motion to dismiss a petition for cancellation of two marks consisting of goats on a grass roof.

The Lanham Act says in part that:

"A petition to cancel a registration of a mark, stating the grounds relied upon, may, upon payment of the prescribed fee, be filed as follows by any person who believes that he is or will be damaged... by the registration of a mark on the principal register established by this chapter... (3) at any time if the registered mark becomes... or is functional..." §14 (15 USC §1064). 

The TTAB has previously held that “[t]he purpose of the standing requirement... is to prevent litigation when there is no real controversy between the parties”.  

In what is so far this year’s oddest argument, the petitioner alleged that the “[r]egistrant’s marks primarily serve, and are intended by [r]egistrant to primarily serve, as a form of entertainment and attraction in order to enhance the enjoyment of visiting [r]egistrant’s restaurant; and, as such, [r]egistrant’s marks are functional”.  He also alleged that “[t]he two components of [r]egistrant’s marks are themselves functional” in that: 

  • the respondent’s “sod roof helps keep temperatures lower”, thus reducing the respondent’s energy costs and making its restaurant more comfortable; and
  • the goats on the respondent’s roof eat the grass, which “negates... the need to cut the grass”.

The respondent owns incontestable Registration 2007624, issued on October 15 1996 and renewed for "restaurant services" in Class 42 of the Nice Classification, and Registration 3942832, issued under Section 2(f) on April 21 2012 for "retail store and online retail store services featuring gifts, food, clothing, toys, linens, dolls, books and music” in Class 35. The service mark is described in both registrations as “consist[ing] of goats on a roof of grass. The dotted lines in the drawing are intended to indicate the location of the mark and are not a feature of the mark.”

As to whether the petitioner had sufficiently alleged a valid ground for cancellation for the purposes of deciding the motion to dismiss, the TTAB noted that a petition must contain sufficient factual matter, accepted as true, to "state a claim to relief that is plausible on its face". Apart from specifying that sufficient factual matter be "well-pleaded" and, when so pleaded be accepted as true, the TTAB also noted that threadbare recitals of the elements of a cause of action, supported by mere conclusory statements by the petitioner, do not suffice and are not accepted as true. 

Here, assuming that the petitioner had a “real interest” or “personal stake” in taking photographs of goats on grass roofs generally, the petitioner did not relate this alleged impairment of his asserted interest in taking such photographs to the respondent’s service mark in any manner. The petitioner is free to take the photographs he wants to take, despite the respondent’s registrations. While the respondent’s registrations might prevent the petitioner from using any photographs of goats on sod roofs as a service mark in connection with restaurant or gift shop services, or related services, the petitioner had not alleged that he uses, or wants to use, the desired photographs in such a manner, or that he has any right to do so. There was no allegation that the respondent’s mark somehow prevented the petitioner himself from placing goats on a grass roof and taking their picture, or taking pictures of goats on a sod roof found elsewhere. The petitioner therefore failed to relate his alleged interest in taking such photographs to restaurant or gift shop services listed in the two registrations. This failure showed a lack of standing by the petitioner.

With regard to the petitioner’s functionality claim, the TTAB noted that a product feature is functional if it is essential to the use or purpose of the article, or if it affects the cost or quality of the article. Here, the petition was devoid of any allegation that goats on sod roofs are essential to the use or purpose of restaurant or gift shop services. While the petitioner alleged that the respondent’s goats and sod roof affected the respondent’s costs (by reducing the respondent’s energy and mowing expenses), this allegation was not specific and was factually unrelated to restaurant or gift shop services. While the respondent’s goats on a sod roof may attract customers, there was no allegation that goats on sod roofs are superior to other methods of attracting customers to restaurants or gift shops, and there was no prohibition against a trade dress mark both functioning to indicate source and being aesthetically pleasing. Therefore, the petitioner’s factual allegations, even accepted as true, could not, as a matter of law, establish the functionality of the respondent’s marks in connection with the subject services. The petitioner’s alleged belief that he would be damaged by the registrations was simply not reasonable. 

Therefore, the respondent’s motion to dismiss the petition for cancellation was granted, and the petition was dismissed, without prejudice.

Arguably, this petition would not pass what some call the 'snicker test'.

Brian Edward Banner, H & A Intellectual Property Law PLLC, Alexandria

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