UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
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`Mailed: May 7, 2009
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`Opposition No. 91184356
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`Marvin L. Stewart
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`v.
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`Jim Gilchrist's Minuteman
`Project Inc.
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`ar/apb
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`Before Grendel, Zervas, and Bergsman,
`Administrative Trademark Judges
`
`By the Board:
`
`Jim Gilchrist’s Minuteman Project, Inc. (“applicant”)
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`
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`seeks to register the mark MINUTEMAN PROJECT in standard
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`character form for “advocating in the nature of promoting
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`public awareness of volunteer citizens interested in the
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`enforcement of immigration laws and reform; association
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`services, namely, promoting the interests of volunteer
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`citizens interested in the enforcement of immigration laws
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`and reform” in International Class 35.
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`
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`Marvin L. Stewart (“opposer”), who is representing
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`himself, opposed registration of applicant’s mark on May 19,
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`2008. The May 19, 2008 filing consisted of an electronic
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`cover sheet and a copy of a May 19, 2008 corporate
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`resolution of Minuteman Project, Inc. The corporate
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`resolution lists opposer Marvin L. Stewart as the president
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`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
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`Mailed: May 7, 2009
`
`Opposition No. 91184356
`
`Marvin L. Stewart
`
`
`
`v.
`
`Jim Gilchrist's Minuteman
`Project Inc.
`
`
`
`
`
`ar/apb
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Before Grendel, Zervas, and Bergsman,
`Administrative Trademark Judges
`
`By the Board:
`
`Jim Gilchrist’s Minuteman Project, Inc. (“applicant”)
`
`
`
`seeks to register the mark MINUTEMAN PROJECT in standard
`
`character form for “advocating in the nature of promoting
`
`public awareness of volunteer citizens interested in the
`
`enforcement of immigration laws and reform; association
`
`services, namely, promoting the interests of volunteer
`
`citizens interested in the enforcement of immigration laws
`
`and reform” in International Class 35.
`
`
`
`Marvin L. Stewart (“opposer”), who is representing
`
`himself, opposed registration of applicant’s mark on May 19,
`
`2008. The May 19, 2008 filing consisted of an electronic
`
`cover sheet and a copy of a May 19, 2008 corporate
`
`resolution of Minuteman Project, Inc. The corporate
`
`resolution lists opposer Marvin L. Stewart as the president
`
`
`
`Opposition No. 91184356
`
`of Minuteman Project, Inc. In a June 17, 2008 order, the
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`Board noted that opposer’s May 19, 2008 filing did not
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`include a short and plain statement setting forth the basis
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`for opposer’s standing and grounds for opposition from which
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`the Board could determine whether suspension of the
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`proceeding pending final determination of a civil action1
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`was warranted, and allowed opposer time in which to file an
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`amended notice of opposition. Because the Board did not
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`receive an amended notice of opposition, the Board resumed
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`proceedings in an August 1, 2008 order, wherein it reset
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`applicant's time in which to file an answer.
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`
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`On August 25, 2008, in lieu of an answer, applicant
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`filed a motion to dismiss the notice of opposition under
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`Fed. R. Civ. P. 12(b)(6) for failure to state a claim upon
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`which relief can be granted. The Board granted that motion
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`in a January 28, 2009 order. In particular, the Board found
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`that opposer “has not expressly stated in his May 19, 2008
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`filing (1) why he, in his individual capacity, believes that
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`he would be damaged by registration of applicant’s mark, and
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`(2) the factual basis for any of the four grounds for
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`opposition that were identified in the electronic cover
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`sheet.” Opposer was specifically advised that he must set
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`
`1 Civil Action No. 00106582, styled “Minuteman Project,
`Inc., et al., v. Gilchrist, et al.,” was filed May 12, 2008
`in the Superior Court of the State of California, Orange
`County.
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`
`2
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`
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`Opposition No. 91184356
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`forth facts establishing his standing as an individual:
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`“Opposer is reminded that he and Minuteman, who is not a
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`party to this proceeding, are separate legal entities.
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`Accordingly, opposer must establish his standing as an
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`individual.” January 28, 2009 order at 6, fn. 4. The Board
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`also advised that it is “generally advisable for a person
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`who is not acquainted with the technicalities of the
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`procedural and substantive law involved in Board inter
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`partes proceedings to secure the services of an attorney who
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`is familiar with such matters.” Id. at 7, fn. 7. In
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`keeping with Board practice, the Board allowed opposer
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`thirty days in which to file an amended notice of
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`opposition.
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`In response to the Board’s January 28, 2009 order,
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`opposer filed a “statement of opposition” which is
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`essentially an amended notice of opposition. This case now
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`comes up for consideration of applicant’s motion (filed
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`February 27, 2009) to dismiss under Fed. R. Civ. P. 12(b)(6)
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`for failure to state a claim upon which relief can be
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`granted, or in the alternative, under Fed. R. Civ. P. 12(f)
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`to strike portions of the statement of opposition as
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`immaterial, impertinent and/or inflammatory.
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`In support of its motion, applicant argues (1) that
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`Minuteman Project Inc. filed the statement of opposition,
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`not opposer who is the individual Marvin L. Stewart; (2)
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`3
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`Opposition No. 91184356
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`that opposer has not identified any injury which would give
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`opposer standing to oppose registration of applicant’s mark;
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`(3) that opposer did not plead his fraud claim with
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`particularity as required by Fed. R. Civ. P. 9(b); and (4)
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`that the allegations in paragraphs 1-15 of the notice should
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`be stricken as immaterial, impertinent and inflammatory
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`under Fed. R. Civ. P. 12(f). Applicant requests that the
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`opposition be dismissed without leave to amend.
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`
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`In response, opposer argues that “Opposer Marvin L.
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`Stewart, President, Minuteman Project, Inc., is the same
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`individual as Marvin L. Stewart the individual” and that
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`“The Board of Directors of the Minuteman Project, Inc.,
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`request that the governing body at United States Trademark
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`Trial and Appeal Board deny the Applicant’s Motion to
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`Dismiss the Opposition No.: 91184356.”
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`In reply, applicant points out that opposer Marvin L.
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`Stewart is again relying on the rights of third party
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`Minuteman Project, Inc. in its response and has not shown
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`why opposer, as in individual, has a basis to oppose the
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`application.
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`As an initial matter, the Board rejects applicant’s
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`argument that the amended notice was not filed by Marvin L.
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`Stewart in his individual capacity. The introductory
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`paragraph of the amended notice identifies “opposer” as
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`“Marvin L. Stewart, President of Minuteman Project, Inc.”
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`4
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`Opposition No. 91184356
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`and the amended notice is signed by “Marvin L. Stewart,
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`President Minuteman Project Inc.” Opposer’s use of his
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`title as president of a corporation in signing the amended
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`notice does not negate his status as an individual opposer.
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`
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`Thus, we turn to applicant’s argument that opposer has
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`not pled facts sufficient to establish his standing to
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`maintain the opposition proceeding. To withstand a motion
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`to dismiss under Rule 12(b)(6) in an opposition proceeding,
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`an opposer must allege facts that would, if proved,
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`establish that the opposer is entitled to the relief sought:
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`that is, that (1) opposer has standing to maintain the
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`proceeding, and (2) a valid ground exists for denying the
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`registration sought. See Lipton Industries, Inc. v. Ralston
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`Purina Co., 670 F.2d 1024, 213 USPQ 185, 187 (CCPA 1982);
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`Kelly Services Inc. v. Greene’s Temporaries Inc., 25 USPQ2d
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`1460, 1462 (TTAB 1992). In deciding such a motion, the
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`Board must accept as true all well-pled and material
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`allegations of the complaint, and must construe the
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`complaint in favor of the complaining party. See Jewelers
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`Vigilance Committee, Inc. v. Ullenbery Corp., 823 F.2d 490,
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`2 USPQ2d 2021, 2023 (Fed. Cir. 1987).
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`
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`To establish standing, the opposer must set forth the
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`reasons why it believes it would be damaged by registration
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`of the opposed mark. 15 U.S.C. § 1063(a); 37 CFR §
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`2.101(b), Young v. AGB Corp., 47 USPQ2d 1752, 1755 (Fed.
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`5
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`Opposition No. 91184356
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`Cir. 1998). The opposer must allege facts sufficient to
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`show a real interest in the proceeding, and a reasonable
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`basis for its belief of damage. Ritchie v. Simpson, 170
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`F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999); Lipton
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`Industries, 670 F.2d at 189. To plead a “real interest,”
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`plaintiff must allege a “direct and personal stake” in the
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`outcome of the proceeding. Ritchie, 170 F.3d at 1026. The
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`allegations in support of plaintiff’s belief of damage must
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`have a reasonable basis “in fact.” Id. at 1027.
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`
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`Opposer has not set forth facts, which, if proved true,
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`would establish that opposer, in his individual capacity,
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`has a real interest that equates to a direct and personal
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`stake in the outcome of the proceeding. The amended notice
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`alleges the following:
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`(5.) ...transferred and diverted funds and
`property belonging to MMP Inc.
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`(6.) Defendant Gilchrist has also converted the
`donor mailing list, corporate logo,2 and website
`of “MMP Inc.” to his own use and/or the use of his
`new corporation.
`
`(7.) Defendant Gilchrist has fraudulently and
`untruthfully represented to the public that his
`new corporation is the real or authentic MMP Inc.
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`(8.) Defendant Gilchrist has also used the MMP
`Inc. logo...
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`2 Applicant’s involved mark consists of wording in standard
`character form and does not include a design element. For the
`purposes of deciding this motion, we assume that the “logo”
`includes the applied-for word mark.
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`
`6
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`Opposition No. 91184356
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`(10.) That Jim Gilchrist has willfully
`misrepresented the facts presented to the USPTO,
`that he has the authority to convey Minuteman
`Project, Inc. assets over to Jim Gilchrist’s
`Minuteman Project Inc.
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`(11.) The foregoing conduct has harmed MMP Inc.’s
`reputation and the reputation of Plaintiff
`Directors...
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`(12.) This is theft of a corporate asset that
`belongs to Minuteman Project, Inc.
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`
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`Opposer appears to allege that applicant committed
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`fraud because the owner of the mark is not applicant, but
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`rather is a third party, either the Minuteman Project, Inc.
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`or MMP Inc.3 Even construing these allegations in light
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`most favorable to opposer, opposer has, at best, alleged
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`harm only to Minuteman with these references to “property
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`belonging to MMP Inc.,” “corporate logo...of ‘MMP Inc.’”,
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`“the MMP Inc. logo,” “Minuteman Project, Inc. assets,” “MMP
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`Inc.’s reputation and the reputation of Plaintiff
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`directors,” and “corporate assets that belongs to Minuteman
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`Project, Inc.” Opposer has not alleged facts showing how he
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`would be directly and personally harmed by injuries
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`sustained by Minuteman, or how his title as president of
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`Minuteman provides him with a direct and personal stake in
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`the outcome of the proceeding as an individual.
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`3 In the amended notice of opposition, opposer refers to both
`“MMP Inc.” and “Minuteman Project, Inc.” We presume that both
`designations refer to the same entity, which we refer to
`collectively as “Minuteman.”
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`7
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`Opposition No. 91184356
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`
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`Similarly, opposer has not alleged a reasonable basis
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`for his belief of damage. Any such allegations must have a
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`reasonable basis in fact. As set forth above, each of the
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`allegations pertaining to harm relate only to Minuteman.
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`There are no facts alleged that support opposer’s belief
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`that he, as an individual, would suffer damage as a result
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`of registration of applicant’s mark. In other words,
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`opposer has not alleged facts showing how damage to the
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`corporation would result in damage to opposer as an
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`individual, and thus opposer has not shown that he has
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`standing to maintain the opposition.
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`Because we find that opposer has not established
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`standing to maintain the opposition, we need not determine
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`whether opposer has adequately pleaded grounds for
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`opposition. In view thereof, applicant’s motion to dismiss
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`for failure to state a claim is granted.4
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`Although the Board, when finding that a complaint fails
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`to state a claim upon which relief can be granted, generally
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`allows a plaintiff an opportunity to file an amended
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`complaint, the Board may, in its discretion, refuse to allow
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`a further opportunity for amendment. Fed. R. Civ. P. 15(a);
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`Institut National des Appellations d’Origine v. Brown-Forman
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`Corp., 47 USPQ2d 1875, 1896 (TTAB 1998) (amendment would be
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`futile because opposers cannot prevail on claim as a matter
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`4 Applicant's motion in the alternative to strike is moot.
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`8
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`Opposition No. 91184356
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`of law); McDonnell Douglas Corp. v. National Data Corp., 228
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`USPQ 45, 48 (TTAB 1985)(denying leave to amend because it is
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`not in the interest of justice to allow further amendment of
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`twice-amended pleadings and further delay proceedings). In
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`view of the history of this proceeding, we find that
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`granting opposer another opportunity to file an amended
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`notice of opposition is unwarranted.
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`The Board first advised opposer of the need to submit
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`"a short and plain statement setting forth the basis for
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`opposer's standing and grounds for opposition" in the June
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`17, 2008 order. In the June 17, 2008 order, the Board also
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`advised opposer that while he may represent himself, that it
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`is “generally advisable” for a person unfamiliar with the
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`procedural and substantive law of inter partes proceedings
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`before the Board to secure the services of an attorney.
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`
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`In the January 28, 2009 order, the Board again advised
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`opposer of the requirement to plead facts sufficient to
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`establish opposer’s standing, stating that “opposer has not,
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`expressly stated in his May 19, 2008 filing (1) why he, in
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`his individual capacity, believes that he would be damaged
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`by registration of applicant’s mark...” In footnote 4, the
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`Board stated “Opposer is reminded that he and Minuteman, who
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`is not a party to this proceeding, are separate legal
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`entities. Accordingly, opposer must establish his standing
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`as an individual.” The order also provided opposer with a
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`9
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`Opposition No. 91184356
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`link to the online Trademark Board Manual of Procedure and
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`again informed opposer that of the advisability of seeking
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`the services of an attorney.
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`Although the Board has twice provided opposer with
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`guidance regarding the requirement to plead facts sufficient
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`to establish standing, opposer has not alleged such facts.
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`Thus, the Board concludes that opposer cannot allege such
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`facts and as a result, permitting opposer an opportunity to
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`file another amended notice of opposition would serve no
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`useful purpose. Accordingly, the opposition is dismissed
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`with prejudice.
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`10
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