TTAB rules on motion to dismiss for failure to state a claim

In Fair Indigo LLC v Style Conscience (Opposition 91175571, November 21 2007), the Trademark Trial and Appeal Board (TTAB), in a precedential opinion, has addressed the issue of when a motion to dismiss for failure to state a claim may be successful in an opposition.

On February 24 2006 Style Conscience filed an intent-to-use trademark application for STYLE CONSCIENCE for jewellery. On March 23 2006 Fair Indigo LLC filed an intent-to-use trademark application for STYLE WITH A CONSCIENCE for similar jewellery. When Style Conscience's earlier application was published, Fair Indigo opposed the application on the grounds that there was a likelihood of confusion with its four-word trademark. Fair Indigo subsequently filed an amendment to allege use asserting September 18 2006 as the date of first use of its mark.

The filing of an intent-to-use application creates a constructive date of first use for priority purposes as of the filing date of the application. Usually (but not always), an intent-to-use applicant has not sufficiently used the mark in commerce regulated by the US Congress prior to filing the application. Under these facts, Style Conscience would have priority.

Instead of answering the opposition, Style Conscience filed a motion to dismiss for failure to state a claim, arguing that Fair Indigo had failed to plead priority. In order to withstand successfully a motion to dismiss, a plaintiff need only allege such facts as would, if proved, establish that:

  • it has standing to maintain the proceedings; and

  • a valid ground exists for opposing the mark.

When construing Style Conscience's motion, all of Fair Indigo's well-pleaded opposition allegations had to be accepted as true, and the complaint had to be construed in the light most favourable to Fair Indigo.

Fair Indigo responded by filing an amended notice of opposition and a brief opposing the motion to dismiss. The amended notice of opposition alleged that:

  • Style Conscience lacked a good-faith intent to use the two-word trademark in commerce as of February 24 2006; and

  • Fair Indigo had continuous use of its trademark starting on September 18 2006, and analogous use of its trademark starting January 2006.

Use analogous to trademark use must be of such a nature and extent as to create an association of the term (mark) with a single source sufficient to give rise to a proprietary right in that source (even if anonymous) that is worthy of protection.

Style Conscience opposed the amended opposition complaint, arguing that Fair Indigo had alleged only in general terms that Style Conscience lacked a good-faith intent to use the mark in commerce, without providing the necessary facts that would give Style Conscience fair notice of the reasons for its belief. Dismissal for insufficiency was appropriate only if it appeared certain that Fair Indigo was entitled to no relief under any set of facts which could be proved in support of its claim. The TTAB disagreed with Style Conscience and held that Fair Indigo could amend its complaint in response to a motion to dismiss as the amended complaint corrected the defects of adequate notice and priority raised by Style Conscience.

An intent-to-use applicant such as Fair Indigo may assert priority based on:

  • actual use;

  • use analogous to trademark use; or

  • intrastate use prior to the constructive use date of its intent-to-use application.

Fair Indigo's allegation of analogous use as of January 2006 defeated Style Conscience's motion. In denying the motion to dismiss, the TTAB noted that Style Conscience's attack would have been more appropriate in a motion for summary judgment.

Brian E Banner, Rothwell Figg Ernst & Manbeck PC, Washington DC

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