UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`
`
`
`
`WINTER/WOLFSON
`
`
`
`
`
`
` Mailed: August 5, 2005
`
`Opposition No. 91164511
`
`DC COMICS and MARVEL
`CHARACTERS, INC.
`
`
`v.
`
`
`ONETECH COMPUTER CONSULTING,
`INCORPORATED
`
`
`
`Before Hairston, Holtzman, and Drost,
`Administrative Trademark Judges
`
`By the Board:
`
`On April 22, 2005, applicant filed a motion to dismiss,
`
`
`
`which was filed concurrently with its answer. Opposers filed a
`
`brief in response to applicant’s motion. Thereafter, applicant
`
`filed a reply brief in support of its motion.1
`
`
`
`STANDARD OF REVIEW FOR MOTION TO DISMISS
`
`
`
`A motion to dismiss is solely a test of the legal
`
`sufficiency of the notice of opposition. In order to
`
`withstand a motion to dismiss, the notice of opposition need
`
`only allege such facts as would, if proved, establish that
`
`opposer is entitled to the relief sought. Therefore,
`
`
`1The Board has exercised its discretion in considering applicant’s reply
`brief. See Trademark Rule 2.127(a).
`
`
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`
`
`
`
`WINTER/WOLFSON
`
`
`
`
`
`
` Mailed: August 5, 2005
`
`Opposition No. 91164511
`
`DC COMICS and MARVEL
`CHARACTERS, INC.
`
`
`v.
`
`
`ONETECH COMPUTER CONSULTING,
`INCORPORATED
`
`
`
`Before Hairston, Holtzman, and Drost,
`Administrative Trademark Judges
`
`By the Board:
`
`On April 22, 2005, applicant filed a motion to dismiss,
`
`
`
`which was filed concurrently with its answer. Opposers filed a
`
`brief in response to applicant’s motion. Thereafter, applicant
`
`filed a reply brief in support of its motion.1
`
`
`
`STANDARD OF REVIEW FOR MOTION TO DISMISS
`
`
`
`A motion to dismiss is solely a test of the legal
`
`sufficiency of the notice of opposition. In order to
`
`withstand a motion to dismiss, the notice of opposition need
`
`only allege such facts as would, if proved, establish that
`
`opposer is entitled to the relief sought. Therefore,
`
`
`1The Board has exercised its discretion in considering applicant’s reply
`brief. See Trademark Rule 2.127(a).
`
`
`
`Opposition No. 91164511
`
`opposer need only show that (1) it has standing to maintain
`
`the proceeding, and (2) it has a valid statutory ground for
`
`denial of the registration sought. Lipton Industries, Inc.
`
`v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 187
`
`(CCPA 1982); see also Young v. AGB Corp., 152 F.3d 1377, 47
`
`USPQ2d 1752, 1755 (Fed. Cir. 1988).
`
`When determining whether opposer has standing, the
`
`Board reviews whether the notice of opposition alleges
`
`sufficient facts to show that opposer has a real interest in
`
`the outcome of the proceeding and a reasonable basis for the
`
`belief2 that it will be damaged by the issuance of a
`
`registration. See Ritchie v. Simpson, 170 F.3d 1092, 1095,
`
`50 USPQ2d 1023, 1025 (Fed. Cir. 1999). In other words, the
`
`Board determines whether opposer’s belief “is not wholly
`
`without merit.” See Lipton, 213 USPQ at 189. See also
`
`Trademark Rule 2.104(a). Further, opposer’s allegations
`
`must be accepted as true, and the notice of opposition must
`
`be construed in the light most favorable to opposer. See
`
`TBMP § 503.02 (2d ed. rev. 2004).
`
`
`
`
`2Section 13 of the Trademark Act, 15 U.S.C. §1063, states, “[a]ny person
`who believes that he would be damaged by the registration of a mark upon
`the principal register, including as a result of dilution under section
`43(c), may, … file an opposition in the Patent and Trademark Office,
`stating the grounds therefor, within thirty days after the publication …
`of the mark sought to be registered. …” (emphasis added).
`
`
`
`
`
`2
`
`
`
`Opposition No. 91164511
`
`THE PARTIES’ ARGUMENTS
`
`
`
`Applicant’s motion to dismiss comprises a series of
`
`contentions purporting to show that there is no likelihood
`
`of confusion between applicant’s COMPUTER SUPERHEROES mark
`
`and opposers’ marks and, consequently, that opposers have no
`
`sustainable grounds upon which to oppose the registration.
`
`(Motion to Dismiss, para. 6-10 and 13). In its reply brief,
`
`applicant contends that the notice of opposition raises no
`
`genuine issues of material fact, and that opposers “must
`
`present some evidence on every material issue for which he
`
`[sic] will bear the burden of proof at trial” (Reply, para.
`
`2). Applicant also argues that opposers have no real
`
`interest to protect, or basis for injury, because opposers
`
`do not own a registration for the mark “SUPER HEROES” or
`
`“SUPER HERO” in class 42 (Reply, para. 6 and 8).
`
`
`
`In the notice of opposition, opposers allege that they
`
`have joint ownership of previously-registered marks that
`
`comprise “SUPER HERO” or “SUPER HEROES” in toto or in part
`
`(Notice of Opposition, para. 1, 4 and 5) in several
`
`international classes. Further, opposers allege prior use of
`
`the mark “SUPER HEROES” and variations thereof (Notice of
`
`Opposition, para. 4, 5 and 7), association of opposers’ SUPER
`
`HERO marks (and its variations) with opposers in the minds of
`
`the trade and public (Notice of Opposition, para. 6 and 8),
`
`ownership of related and famous marks (Notice of Opposition,
`
`
`
`3
`
`
`
`Opposition No. 91164511
`
`para. 3), and ownership of several registrations and a pending
`
`application for marks covering computer-related goods and
`
`services (Notice of Opposition, para. 9). Opposers also
`
`indicate that such registrations and application demonstrate
`
`opposers’ “natural zone of expansion” (Notice of Opposition,
`
`para. 10), and that issuance of a registration to applicant for
`
`“COMPUTER SUPERHEROES” in the related field of computer
`
`services would cause opposers injury (Notice of Opposition,
`
`para. 12-15). Finally, opposers allege a specific statutory
`
`ground for denying registration of applicant’s mark, namely,
`
`Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d) (Notice
`
`of Opposition, para. 16).
`
`
`
`DISCUSSION
`
`As stated above, a motion to dismiss under Rule
`
`12(b)(6) must challenge the legal theory of the complaint,
`
`not the sufficiency of the evidence. See, e.g., Advanced
`
`Cardiovascular Systems Inc. v. SciMed Life Systems Inc., 988
`
`F.2d 1157, 26 USPQ2d 1038, 1041 (Fed. Cir. 1993); see also
`
`TBMP §§ 503.01 and 503.02 (2d ed. rev. 2004).
`
`Applicant’s motion to dismiss does not challenge the
`
`legal sufficiency of the notice of opposition. Instead,
`
`applicant essentially argues that opposers have not proven
`
`their case under Section 2(d) of the Trademark Act and that
`
`there is no likelihood of confusion. Applicant does not
`
`
`
`4
`
`
`
`Opposition No. 91164511
`
`allege that opposers have no real interest in the outcome of
`
`the proceeding until its reply (Reply, para. 5 and 6).
`
`Further, applicant’s statement in its reply, namely, that
`
`“[o]pposers fail to identify any fact or theory upon which
`
`they base their confusion allegations” (Reply, para. 8), is
`
`not well taken. The allegations in paragraphs 4, 5, 6, 10
`
`and 16 of the notice of opposition set forth sufficient
`
`facts which would, if proven, show that opposers have a real
`
`interest in the proceeding and a statutory ground for denial
`
`of registration.3 Thus, to the extent applicant's motion
`
`could be construed as one to dismiss for failure to state a
`
`claim, the motion is denied.
`
`Applicant also argues that its motion “shall be treated
`
`as one for summary judgment” (Reply, para. 1). Inasmuch as
`
`the record in this proceeding is comprised only of the
`
`pleadings, the Board would not construe this motion to
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`dismiss as a motion for summary judgment.4
`
`To the extent that applicant is moving for judgment on
`
`the pleadings under Fed. R. Civ. P. 12(c), such motion would
`
`fail because there are insufficient undisputed facts to
`
`support a finding that applicant is entitled to judgment as
`
`
`3Of course, opposers will be left to submit proof of their claims at
`trial.
`
`4There is no extrinsic evidence of record that could be used to
`determine whether there are no genuine issues of material fact in
`dispute and that the applicant is entitled to judgment as a matter of
`law. Fed. R. Civ. P. 56(c). See TBMP § 528.01 (2d ed. rev. 2004).
`
`
`
`
`5
`
`
`
`Opposition No. 91164511
`
`a matter of law. See TBMP § 504.02 (2d ed. rev. 2004).
`
`While a review of the pleadings and the facts deemed
`
`admitted therein shows that there are certain facts not in
`
`dispute (for instance, that applicant and opposers’ marks
`
`are not identical, that certain of opposers’ marks are
`
`famous, that opposers own various registrations on the
`
`Principal Register for the mark “SUPER HEROES” and
`
`variations thereof, and that opposers own other marks
`
`covering computer services), genuine issues of material fact
`
`remain, at the least, as to whether the marks are similar
`
`and the parties’ respective goods and services are related.5
`
`Finally, the Board notes applicant’s implicit argument
`
`that there is no likelihood of confusion between the marks
`
`because the computer services set forth in its application
`
`are classified in International Class 42, whereas opposers’
`
`goods and services set forth in its registrations for “SUPER
`
`HERO” and its variations are classified in other
`
`international classes. Applicant’s argument is not well-
`
`founded. Classification by this Office of goods and
`
`services set forth in trademark and service mark
`
`applications is merely an administrative tool and has no
`
`bearing on whether there is a likelihood of confusion
`
`between marks. See Jean Patou Inc. v. Theon Inc., 9 F.3d
`
`
`5The fact that we have identified only a few genuine issues of material
`fact herein should not be construed as a finding that these are
`necessarily the only issues which remain for trial.
`
`
`
`6
`
`
`
`Opposition No. 91164511
`
`971, 29 USPQ2d 1771, 1774 (Fed. Cir. 1993); Graco Inc. v.
`
`The Warner-Graham Company, 164 USPQ 400, 402 (TTAB 1969),
`
`citing In re Knapp-Monarch Company, 132 USPQ 6, 7 (CCPA
`
`1961); see also Trademark Manual of Examining Procedure
`
`(TMEP) § 1207.01 (4th Ed. rev. April, 2005).
`
`
`
`CONCLUSION
`
`
`
`In view of the foregoing, applicant’s motion to dismiss is
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`denied.
`
`
`
`In addition, applicant’s request for sanctions against
`
`opposers under Trademark Rule 10.18 is without merit and is
`
`accordingly denied. Moreover, the Board does not award
`
`attorneys’ fees or expenses. See Trademark Rule 2.127(f).
`
`This proceeding is resumed. Trial dates, including the
`
`close of discovery, are reset as indicated below.
`
`D IS C O V E R Y P E R IO D T O C LO S E :
`
`30-day testim ony period for party in the position of
`plaintiff to close:
`
`30-day testim ony period for party in the position of the
`defendant to close:
`
`15-day rebuttal period for party in the position of the
`plaintiff to close:
`
`
`D ecem ber 2, 2005
`
`M arch 2, 2006
`
`M ay 1, 2006
`
`June 15, 2006
`
`IN EACH INSTANCE, a copy of the transcript of
`
`testimony, together with copies of documentary exhibits,
`
`must be served on the adverse party within thirty days after
`
`
`
`7
`
`
`
`Opposition No. 91164511
`
`completion of the taking of testimony. Trademark Rule
`
`2.125.
`
`Briefs shall be filed in accordance with Trademark
`
`Rules 2.128(a) and (b). An oral hearing will be set only
`
`upon request filed as provided by Trademark Rule 2.129.
`
`
`
`
`
`8
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