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  • A motion to dismiss for failure to state a claim upon which relief may be granted is a test solely of the legal sufficiency of the complaint.
    • Marilyn Carano a/k/a Lynn Carano d/b/a Lynn Carano Graphics v. Vina Concha Y Toro S.A., Opposition No. 125,728, (TTAB 2003).
      • A motion to dismiss for failure to state a claim upon which relief may be granted is a test solely of the legal sufficiency of the complaint. See Libertyville Saddle Shop Inc. v. E. Jeffries & Sons Ltd., 22 USPQ2d 1594 (TTAB 1992).
  • Ground for withstanding a motion to dismiss.
    • Fair Indigo LLC v. Style Conscience, Opp. No. 91175571 (TTAB 2007).
      • In order to withstand a motion to dismiss for failure to state a claim, a plaintiff need only allege such facts as would, if proved, establish that (1) the plaintiff has standing to maintain the proceedings, and (2) a valid ground exists for opposing the mark. The pleading must be examined in its entirety, construing the allegations therein liberally, as required by Fed. R. Civ. P. 8(f), to determine whether it contains any allegations which, if proved, would entitle plaintiff to the relief, sought. See Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982); Kelly Services Inc. v. Greene's Temporaries Inc., 25 USPQ2d 1460 (TTAB 1992); and TBMP § 503.02 (2d. ed. rev. 2004).
    • Michael J. McDermott v. San Francisco Women's Motorcycle Contingent, Opposition No. 91169211, (TTAB 2006).
      • In order to withstand a motion to dismiss for failure to state a claim, a plaintiff need only allege such facts as would, if proved, establish that (1) the plaintiff has standing to maintain the proceeding, and (2) a valid ground exists for opposing the mark. The pleading must be examined in its entirety, construing the allegations therein liberally, as required by Fed. R. Civ. P. 8(f), to determine whether it contains any allegations, which, if proved, would entitle plaintiff to the relief sought. See Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982); Kelly Services Inc. v. Greene's Temporaries Inc., 25 USPQ2d 1460 (TTAB 1992); and TBMP § 503.02 (2d ed. rev. 2004).
    • Seculus Da Amazonia S/A v. Toyota Jidosha Kabushiki Kaisha t/a/ Toyota Motor Corporation, Opposition No. 152,062, (TTAB 2003).
      • It has often been stated that in order to withstand a motion to dismiss under Fed. R. Civ. P. 12(b)(6), a pleading need only allege such facts as would, if proved, establish that the plaintiff is entitled to the relief sought, that is, that (1) the plaintiff has standing to maintain the proceeding, and (2) a valid ground exists for denying the registration sought. See Selva & Sons, Inc. v. Nina Footwear, Inc., 705 F.2d 1316, 217 USPQ 641 (CAFC 1983); and Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
    • Marilyn Carano a/k/a Lynn Carano d/b/a Lynn Carano Graphics v. Vina Concha Y Toro S.A., Opposition No. 125,728, (TTAB 2003).
      • In order to withstand such a motion, a pleading need only allege such facts as would, if proved, establish that the plaintiff is entitled to the relief sought, that is, (1) the plaintiff has standing to maintain the proceeding, and (2) a valid ground exists for denying the registration sought therein. See Lipton Industries, Inc. v. Ralston Purina Company, 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
  • For purposes of determining a motion to dismiss for failure to state a claim upon which relief can be granted, all of plaintiff's well-pleaded allegations must be accepted as true, and the complaint must be construed in the light most favorable to plaintiff.
    • Fair Indigo LLC v. Style Conscience, Opp. No. 91175571 (TTAB 2007).
      • For purposes of determining a motion to dismiss for failure to state a claim upon which relief can be granted, all of plaintiff's well-pleaded allegations must be accepted as true, and the complaint must be construed in the light most favorable to plaintiff. See Advanced Cardiovascular Systems Inc. v. SciMed Life Systems Inc., 988 F.2d 1157, 26 USPQ2d 1038 (Fed. Cir. 1993); see also 5A Wright & Miller, Federal Practice And Procedure: Civil 2d § 1357 (1990).
  • Dismissal for insufficiency is appropriate only if it appears certain that opposer is entitled to no relief under any set of facts which could be proved in support of its claim.
    • Fair Indigo LLC v. Style Conscience, Opp. No. 91175571 (TTAB 2007).
      • Dismissal for insufficiency is appropriate only if it appears certain that opposer is entitled to no relief under any set of facts which could be proved in support of its claim. See Stanspec Co. v. American Chain & Cable Company, Inc., 531 F.2d 563, 189 USPQ 420 (CCPA 1976).
  • If the amended complaint corrects the defects noted by the defendant in its motion to dismiss, and states a claim upon which relief can be granted, the motion to dismiss normally will be moot.
    • Fair Indigo LLC v. Style Conscience, Opp. No. 91175571 (TTAB 2007).
      • If the amended complaint corrects the defects noted by the defendant in its motion to dismiss, and states a claim upon which relief can be granted, the motion to dismiss normally will be moot. See TBMP § 503.03 (2d. ed. rev. 2004) and cases cited therein.
  • Notice of opposition may not be grounded on applicant's alleged misconduct before the U.S. Customs Service, whether under Section 18 or any other provision of the Trademark Act.
    • Seculus Da Amazonia S/A v. Toyota Jidosha Kabushiki Kaisha t/a/ Toyota Motor Corporation, Opposition No. 152,062, (TTAB 2003).
      • In its response to applicant's motion to dismiss, opposer states that its notice of opposition is based upon applicant's "lack of forthrightness," specifically applicant's "misconduct and unclean hands in its dealing with the U.S. Customs Service." The Board is aware of no authority to support opposer's contention that its notice of opposition may be grounded on applicant's alleged misconduct before the U.S. Customs Service, whether under Section 18 or any other provision of the Trademark Act.
  • A registration will be deemed to have been issued inadvertently if it issues despite a notice of opposition or a request for extension of time to oppose being timely and properly filed.
    • Schering-Plough Animal Health Corporation v. Aqua Gen AS, Opposition No. 91176641 (TTAB 2009).
      • A registration will be deemed to have been issued inadvertently if it issues despite a notice of opposition or a request for extension of time to oppose being timely and properly filed. See Quality S. Manufacturing Inc. v. Tork Lift Central Welding of Kent, Inc., 60 USPQ2d 1703 (Comm'r 2000).
  • An inadvertently issued registration does not provide grounds for dismissal.
    • Schering-Plough Animal Health Corporation v. Aqua Gen AS, Opposition No. 91176641 (TTAB 2009).
      • The fact that the application was inadvertently forwarded for issuance of a registration during the course of this proceeding cannot, under any reasonable view, provide applicant with a ground for seeking dismissal.
  • Counsel must first secure permission from the appropriate interlocutory attorney by telephone before filing any unconsented or unstipulated motion.
    • Schering-Plough Animal Health Corporation v. Aqua Gen AS, Opposition No. 91176641 (TTAB 2009).
      • The filing of a motion to dismiss in this instance represents a misunderstanding of Board practice and procedure. Under the circumstances presented herein, and to more closely manage the prosecution and defense of this proceeding, counsel for applicant and his co-counsel must first secure permission from the appropriate interlocutory attorney by telephone before filing any unconsented or unstipulated motion in this matter. See generally TBMP Section 527.03 (2d ed. rev. 2004) and authorities cited therein; see also Carrini Inc. v. Carla Carini S.R.L., 57 USPQ2d 1067, 1071 (TTAB 2000) ("Board possesses the inherent authority to control the disposition of cases on its docket"); International Finance Corp. v. Bravo Co., 64 USPQ2d 1597, 1604 n.23 (TTAB 2002) (Board prohibited opposer from filing any further motions to compel without prior Board permission).
  • Requirements to defeat a motion to dismiss.
    • Otto International, Inc. v. Otto Kern GMBH, Cancellation No. 92046167, (TTAB 2007)
      • In order to withstand a motion to dismiss, a pleading need only allege such facts as would, if proved, establish that the petitioner is entitled to the relief sought, that is, that (1) the petitioner has standing to maintain the proceeding, and (2) a valid ground exists for cancelling the respondent"s registration. See Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999); Young v. AGB Corp., 152 F.3d 1377, 47 USPQ2d 1752, 1755 (Fed. Cir. 1998); Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
  • A valid ground for denying registration that must be alleged, and ultimately proved, must be a statutory ground which negates the right to the subject registration.
    • Flash & Partners S.P.A. v. I. E. Manufacturing LLC, Opposition No. 91191988 (TTAB 2010)
      • A valid ground for denying registration that must be alleged, and ultimately proved, must be a statutory ground which negates the right to the subject registration. See Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 190 (CCPA 1982).
  • Dismissal under Fed. R. Civ. P. 12(b)(6) is appropriate only if it appears to a certainty that applicant is entitled to no relief under any state of facts which could be proved in support of the claim.
    • Flash & Partners S.P.A. v. I. E. Manufacturing LLC, Opposition No. 91191988 (TTAB 2010)
      • Dismissal under Fed. R. Civ. P. 12(b)(6) is appropriate only if "it appears to a certainty that [applicant] is entitled to no relief under any state of facts which could be proved in support of the claim." Stanspec Co. v. Am. Chain & Cable Co., Inc., 531 F.2d 563, 189 USPQ 420, 422 (CCPA 1976) (emphasis in original).
  • For purposes of determining a Rule 12(b)(6) motion to dismiss, all of plaintiff's well-pleaded allegations must be accepted as true, and the complaint must be construed in the light most favorable to plaintiff.
    • Fiat Group Automobiles S.p.A. v. ISM, Inc., Opposition No. 91190607 (TTAB 2010)
      • For purposes of determining a Rule 12(b)(6) motion to dismiss, all of plaintiff's well-pleaded allegations must be accepted as true, and the complaint must be construed in the light most favorable to plaintiff. See Advanced Cardiovascular Systems Inc. v. SciMed Life Systems Inc., 988 F.2d 1157, 26 USPQ2d 1038 (Fed. Cir. 1993); see also 5A Wright & Miller, Federal Practice And Procedure: Civil 2d § 1357 (1990).
  • In order to withstand a motion to dismiss for failure to state a claim, a plaintiff need only allege such facts as would, if proved, establish that (1) the plaintiff has standing to maintain the proceeding, and (2) a valid ground exists for opposing or cancelling registration of the mark.
    • IdeasOne, Inc. v. Nationwide Better Health, Inc., Cancellation No. 92049636 (TTAB 2009)
      • In order to withstand a motion to dismiss for failure to state a claim, a plaintiff need only allege such facts as would, if proved, establish that (1) the plaintiff has standing to maintain the proceeding, and (2) a valid ground exists for opposing or cancelling registration of the mark.
  • In order to withstand a motion to dismiss under Fed. R. Civ. P. 12(b)(6) for failure to state a claim, a plaintiff need only allege such facts as would, if proved, establish that (1) the plaintiff has standing to maintain the proceedings, and (2) a valid ground exists for opposing the mark.
    • Fiat Group Automobiles S.p.A. v. ISM, Inc., Opposition No. 91190607 (TTAB 2010)
      • In order to withstand a motion to dismiss under Fed. R. Civ. P. 12(b)(6) for failure to state a claim, a plaintiff need only allege such facts as would, if proved, establish that (1) the plaintiff has standing to maintain the proceedings, and (2) a valid ground exists for opposing the mark. Fair Indigo LLC v. Style Conscience, 85 USPQ2d 1536, 1538 (TTAB 2007) and cases cited therein.
  • The pleading must be examined in its entirety, construing the allegations therein liberally, as required by Fed. R. Civ. P. 8(f), to determine whether it contains any allegations which, if proved, would entitle plaintiff to the relief sought.
    • IdeasOne, Inc. v. Nationwide Better Health, Inc., Cancellation No. 92049636 (TTAB 2009)
      • The pleading must be examined in its entirety, construing the allegations therein liberally, as required by Fed. R. Civ. P. 8(f), to determine whether it contains any allegations which, if proved, would entitle plaintiff to the relief sought. See Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982); Kelly Services Inc. v. Greene's Temporaries Inc., 25 USPQ2d 1460 (TTAB 1992); and TBMP § 503.02 (2d ed. rev. 2004).
  • The purpose of a Rule 12(b)(6) motion is to allow for elimination of actions that are fatally flawed in their legal premises and destined to fail, and thus to spare litigants the burdens of unnecessary pretrial and trial activity.
    • Fiat Group Automobiles S.p.A. v. ISM, Inc., Opposition No. 91190607 (TTAB 2010)
      • The purpose of a Rule 12(b)(6) motion is to allow for elimination of "actions that are fatally flawed in their legal premises and destined to fail, and thus to spare litigants the burdens of unnecessary pretrial and trial activity." Advanced Cardiovascular Systems, 26 USPQ2d at 1041.
  • The TTAB freely grants leave to amend pleadings found, upon challenge under Fed. R. Civ. P. 12(b)(6), to be insufficient.
    • IdeasOne, Inc. v. Nationwide Better Health, Inc., Cancellation No. 92049636 (TTAB 2009)
      • The Board freely grants leave to amend pleadings found, upon challenge under Fed. R. Civ. P. 12(b)(6), to be insufficient.
  • To withstand the motion to dismiss, applicant must demonstrate (1) its standing to challenge the continued presence on the register of the subject registration, and (2) a valid ground why the registrant is not entitled under law to maintain the registration.
    • Flash & Partners S.P.A. v. I. E. Manufacturing LLC, Opposition No. 91191988 (TTAB 2010)
      • To withstand the motion to dismiss, applicant must demonstrate (1) its standing to challenge the continued presence on the register of the subject registration, and (2) a valid ground why the registrant is not entitled under law to maintain the registration. See Order of Sons of Italy in Am. v. Profumi Fratelli Nostra AG, 36 USPQ2d 1221, 1222 (TTAB 1995).
  • The TTAB will not take as true any allegations contradicting facts in Office records.
    • Compagnie Gervais Danone v. Precision Formulations, LLC, Opposition No. 91179589 & 91184174 (TTAB 2009)
      • Precision's allegation that Danone filed an intent-to-use application on May 22, 2007 is not well-pleaded. Therefore, the Board is under no obligation to accept such allegation as true. The Board will not take as true any allegations contradicting facts in Office records.
  • The pleading must be construed so as to do justice, as required by Fed. R. Civ. P. 8(e).
    • Petróleos Mexicanos v. Intermix S.A., Cancellation No. 92052292 (TTAB 2010)
      • The pleading must be construed so as to do justice, as required by Fed. R. Civ. P. 8(e). See also Otto Int'l Inc. v. Otto Kern GmbH, 83 USPQ2d 1861, 1862 (TTAB 2007).
  • Conversion of a motion to dismiss would result in a premature motion for summary judgment.
    • Compagnie Gervais Danone v. Precision Formulations, LLC, Opposition No. 91179589 & 91184174 (TTAB 2009)
      • Conversion of a motion to dismiss would result in a premature motion for summary judgment.
  • Because respondent's motion is based on materials from outside the pleadings, it is in fact a motion for summary judgment.
    • Orouba Agrifoods Processing Company v. United Food Import, Cancellation No. 92050739 (TTAB 2010)
      • Because respondent's motion is based on materials from outside the pleadings, it is in fact a motion for summary judgment. TBMP § 528.04 (2d ed. rev. 2004).
  • A motion to dismiss for failure to state a claim upon which relief can be granted is a test solely of the legal sufficiency of a complaint.
    • Petróleos Mexicanos v. Intermix S.A., Cancellation No. 92052292 (TTAB 2010)
      • A motion to dismiss for failure to state a claim upon which relief can be granted is a test solely of the legal sufficiency of a complaint.
  • Case Finding: Applicant's motion for involuntary dismissal is granted, judgment is hereby entered against opposer and the opposition is hereby dismissed with prejudice.
    • Prakash Melwani v. Allegiance Corporation, Opposition No. 91190682 (TTAB 2010)
      • Opposer, then, has no evidence of record on which he can meet his burden of proof as plaintiff. Accordingly, applicant's motion for involuntary dismissal is granted, judgment is hereby entered against opposer and the opposition is hereby dismissed with prejudice.21 Trademark Rule 2.132(a), 37 C.F.R. §2.132(a).
  • For purposes of determining the motion, all of the petitioner's well-pleaded allegations must be accepted as true, and the complaint must be construed in the light most favorable to petitioner.
    • Petróleos Mexicanos v. Intermix S.A., Cancellation No. 92052292 (TTAB 2010)
      • For purposes of determining the motion, all of the petitioner's well-pleaded allegations must be accepted as true, and the complaint must be construed in the light most favorable to petitioner.
  • The valid ground for cancellation of a registration that must be alleged and ultimately proved must be a statutory ground which negates the registrant's right to maintain the subject registration.
    • Petróleos Mexicanos v. Intermix S.A., Cancellation No. 92052292 (TTAB 2010)
      • The "valid ground" for cancellation of a registration that must be alleged and ultimately proved must be a statutory ground which negates the registrant's right to maintain the subject registration. Cf. Young v. AGB, 47 USPQ2d at 1754.
  • If a motion to dismiss is filed that references matters outside the pleadings, the TTAB may exclude from consideration the matters outside the pleadings and may consider the motion for whatever merits it may present as a motion to dismiss.
    • Compagnie Gervais Danone v. Precision Formulations, LLC, Opposition No. 91179589 & 91184174 (TTAB 2009)
      • However, if a motion to dismiss is filed that references matters outside the pleadings, the Board may exclude from consideration the matters outside the pleadings and may consider the motion for whatever merits it may present as a motion to dismiss.
  • To withstand a motion to dismiss, a notice of opposition need only allege such facts that, if proved, would establish that opposer is entitled to the relief sought, that is, that (1) opposer has standing to challenge the application, and (2) a valid ground exists for seeking to oppose registration.
    • Compagnie Gervais Danone v. Precision Formulations, LLC, Opposition No. 91179589 & 91184174 (TTAB 2009)
      • To withstand a motion to dismiss, a notice of opposition need only allege such facts that, if proved, would establish that opposer is entitled to the relief sought, that is, that (1) opposer has standing to challenge the application, and (2) a valid ground exists for seeking to oppose registration. See Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
  • The TTAB does not allow a party to file a motion for summary judgment prior to the moving party's service of initial disclosures on the adverse party, and will generally will no longer exercise its discretion to convert motions to dismiss that refer to matters outside the pleadings into motions for summary judgment.
    • Compagnie Gervais Danone v. Precision Formulations, LLC, Opposition No. 91179589 & 91184174 (TTAB 2009)
      • Because the Board does not allow a party to file a motion for summary judgment prior to the moving party's service of initial disclosures on the adverse party, the Board generally will no longer exercise its discretion to convert motions to dismiss that refer to matters outside the pleadings into motions for summary judgment, if such motions are filed before the moving party serves its initial disclosures.
  • When we grant a motion to dismiss, it is general practice to allow the plaintiff time to amend its pleading, if appropriate or not futile.
    • Compagnie Gervais Danone v. Precision Formulations, LLC, Opposition No. 91179589 & 91184174 (TTAB 2009)
      • FOOTNOTE 9 "When we grant a motion to dismiss filed under Fed. R. Civ. P. 12(b)(6), it is our general practice to allow the plaintiff time to amend its pleading, if appropriate. However, in view of the evidence submitted by Precision in opposition to Danone's motion for summary judgment, Precision cannot plead priority of use. Accordingly, it would be futile to allow Precision time to file an amended pleading."
  • For purposes of determining whether a valid ground exists for seeking to oppose registration, all well-pleaded allegations must be accepted as true, and the notice of opposition must be construed in the light most favorable to the non-movant.
    • Compagnie Gervais Danone v. Precision Formulations, LLC, Opposition No. 91179589 & 91184174 (TTAB 2009)
      • For purposes of determining whether a valid ground exists for seeking to oppose registration, all of Precision's well-pleaded allegations must be accepted as true, and the notice of opposition must be construed in the light most favorable to Precision as the non-movant. See Advanced Cardiovascular Systems Inc. v. SciMed Life Systems Inc., 988 F.2d 1157, 26 USPQ2d 1038 (Fed. Cir. 1993); see also 5A Wright & Miller, Federal Practice And Procedure: Civil 2d § 1357 (1990).
  • In order to withstand such a motion, a pleading need only allege such facts as would, if proved, establish that petitioner is entitled to the relief sought, that is, that 1) petitioner has standing to maintain the proceeding, and 2) a valid ground exists for cancelling the subject registration.
    • Petróleos Mexicanos v. Intermix S.A., Cancellation No. 92052292 (TTAB 2010)
      • In order to withstand such a motion, a pleading need only allege such facts as would, if proved, establish that petitioner is entitled to the relief sought, that is, that 1) petitioner has standing to maintain the proceeding, and 2) a valid ground exists for cancelling the subject registration. Fair Indigo LLC v. Style Conscience, 85 USPQ2d 1536, 1538 (TTAB 2007); Young v. AGB Corp., 152 F.3d 1377, 47 USPQ2d 1752, 1755 (Fed. Cir. 1998). See also TBMP § 503.02 (2d ed. rev. 2004).
  • By pleading that it has filed an application for a nearly identical mark, a party may have sufficiently alleged that it has a real interest and a direct and personal stake in the outcome of the proceeding.
    • Compagnie Gervais Danone v. Precision Formulations, LLC, Opposition No. 91179589 & 91184174 (TTAB 2009)
      • Precision has adequately alleged standing in this proceeding by pleading in the notice of opposition that it has filed an application for a mark nearly identical to Danone's mark for overlapping or legally identical goods. By pleading that it has filed such an application, Precision has sufficiently alleged that it has a "real interest" and a "direct and personal stake" in the outcome of the proceeding. See Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999).
  • If, on a motion to dismiss for failure to state a claim upon which relief can be granted, matters outside the pleadings are submitted and not excluded by the TTAB the motion will be treated as a motion for summary judgment under Fed. R. Civ. P. 56.
    • Compagnie Gervais Danone v. Precision Formulations, LLC, Opposition No. 91179589 & 91184174 (TTAB 2009)
      • If, on a motion to dismiss for failure to state a claim upon which relief can be granted, matters outside the pleadings are submitted and not excluded by the Board, the motion will be treated as a motion for summary judgment under Fed. R. Civ. P. 56. See, for example, Fed. R. Civ. P. 12(b); Advanced Cardiovascular Systems Inc. v. SciMed Life Systems Inc., 988 F.2d 1157, 26 USPQ2d 1038 (Fed. Cir. 1993); Libertyville Saddle Shop Inc. v. E. Jeffries & Sons Ltd., 22 USPQ2d 1594 (TTAB 1992); TBMP § 503.04 (2nd ed. rev. 2004).
  • For all practical purposes, such conversions will not be effected for motions to dismiss filed in opposition or cancellation proceedings commenced on or after November 1, 2007.
    • Compagnie Gervais Danone v. Precision Formulations, LLC, Opposition No. 91179589 & 91184174 (TTAB 2009)
      • For all practical purposes, such conversions will not be effected for motions to dismiss filed in opposition or cancellation proceedings commenced on or after November 1, 2007. The USPTO published a notice of final rulemaking in the Federal Register on August 1, 2007, at 72 Fed. Reg. 42242. By this notice, various rules governing Trademark Trial and Appeal Board inter partes proceedings were amended. Certain amendments had an effective date of August 31, 2007, while most had an effective date of November 1, 2007. In inter partes proceedings commenced prior to November 1, 2007, a party is permitted to file a motion for summary judgment under Trademark Rule 2.127(e)(1) at any time after notification of the proceeding had been sent to the parties by the Board but before commencement of the first testimony period.
  • Despite the requirement that the Board must treat all well-pleaded allegations as true, there are facts the Board may consider when a party has filed a motion to dismiss under Fed. R. Civ. P. 12(b)(6). For example, the Board may look to such facts as the filing date, filing basis, priority date, publication date, and applicant's name in an application that is the subject of an opposition proceeding. These are facts not subject to proof, and the Board may look to Office records for such facts to determine if a party's allegations are well-pleaded. In contrast, allegations made in an application, for example, dates of first use and first use in commerce, and allegations relative to acquired distinctiveness, are not objective facts but are subject to proof in an inter partes proceeding.
    • Compagnie Gervais Danone v. Precision Formulations, LLC, Opposition No. 91179589 & 91184174 (TTAB 2009)
      • Despite the requirement that the Board must treat all well-pleaded allegations as true, there are facts the Board may consider when a party has filed a motion to dismiss under Fed. R. Civ. P. 12(b)(6). For example, the Board may look to such facts as the filing date, filing basis, priority date, publication date, and applicant's name in an application that is the subject of an opposition proceeding. These are facts not subject to proof, and the Board may look to Office records for such facts to determine if a party's allegations are well-pleaded. 8 FOOTNOTE 8 "In contrast, allegations made in an application, for example, dates of first use and first use in commerce, and allegations relative to acquired distinctiveness, are not objective facts but are subject to proof in an inter partes proceeding. See Yamaha International Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001, 1004 (Fed. Cir. 1988)(acquired distinctiveness); Miss Universe, Inc. v. Drost, 189 USPQ 212, 213 (TTAB 1975)(dates of use)."
Fiat Group Automobiles S.p.A. v. ISM, Inc., Opposition No. 91190607 (TTAB 2010) Flash & Partners S.P.A. v. I. E. Manufacturing LLC, Opposition No. 91191988 (TTAB 2010) Petróleos Mexicanos v. Intermix S.A., Cancellation No. 92052292 (TTAB 2010) Schering-Plough Animal Health Corporation v. Aqua Gen AS, Opposition No. 91176641 (TTAB 2009) IdeasOne, Inc. v. Nationwide Better Health, Inc., Cancellation No. 92049636 (TTAB 2009) Compagnie Gervais Danone v. Precision Formulations, LLC, Opposition No. 91179589 & 91184174 (TTAB 2009) Fair Indigo LLC v. Style Conscience, Opp. No. 91175571 (TTAB 2007) Otto International, Inc. v. Otto Kern GMBH, Cancellation No. 92046167, (TTAB 2007) Michael J. McDermott v. San Francisco Women's Motorcycle Contingent, Opposition No. 91169211, (TTAB 2006) Marilyn Carano a/k/a Lynn Carano d/b/a Lynn Carano Graphics v. Vina Concha Y Toro S.A., Opposition No. 125,728, (TTAB 2003) Seculus Da Amazonia S/A v. Toyota Jidosha Kabushiki Kaisha t/a/ Toyota Motor Corporation, Opposition No. 152,062, (TTAB 2003) Grand Total
Fair Indigo LLC v. Style Conscience, 85 USPQ2d 1536 (TTAB 2007) 2
Otto Int'l Inc. v. Otto Kern GmbH, 83 USPQ2d 1861 (TTAB 2007) 1
International Finance Corp. v. Bravo Co., 64 USPQ2d 1597 (TTAB 2002) 1
Quality S. Manufacturing Inc. v. Tork Lift Central Welding of Kent, Inc., 60 USPQ2d 1703 (Comm'r 2000) 1
Carrini Inc. v. Carla Carini S.R.L., 57 USPQ2d 1067 (TTAB 2000) 1
Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999) 2
Young v. AGB Corp., 152 F.3d 1377, 47 USPQ2d 1752 (Fed. Cir. 1998) 2
Order of Sons of Italy in Am. v. Profumi Fratelli Nostra AG, 36 USPQ2d 1221 (TTAB 1995) 1
Advanced Cardiovascular Systems Inc. v. SciMed Life Systems Inc., 988 F.2d 1157, 26 USPQ2d 1038 (Fed. Cir. 1993) 3
Kelly Services Inc. v. Greene's Temporaries Inc., 25 USPQ2d 1460 (TTAB 1992) 2
Libertyville Saddle Shop Inc. v. E. Jeffries & Sons Ltd., 22 USPQ2d 1594 (TTAB 1992) 2
Yamaha Int'l Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001 (Fed. Cir. 1988) 1
Selva & Sons Inc. v. Nina Footwear Inc., 705 F.2d 1316, 217 USPQ 641 (CAFC 1983) 2
Lipton Industries Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982) 8
Miss Universe Inc. v. Drost, 189 USPQ 212 (TTAB 1976) 1
Stanspec Co. v. American Chain & Cable Company Inc., 531 F.2d 563, 189 USPQ 420 (CCPA 1976) 2
Grand Total 2 3 3 3 2 6 4 3 2 2 2 32
No Statutes Listed.