UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`
`
`
`
`BUTLER
`
`
`
`
`
`
`
`
`
`
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`Mailed: August 18, 2011
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`
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`
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`Opposition No. 91197240
`
`FGN USA, INC.
`
`
`v.
`
`
`TRANS RESEARCH INTERNATIONAL TRUST
`LIMITED
`
`
`
`
`Before Bucher, Kuhlke and Taylor, Administrative Trademark
`Judges.
`
`By the Board:
`
`
`
`Applicant seeks to register the mark TPR 20 for "topical
`
`pain relief medication; topical pain relief cream; anti-
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`inflammatory cream."1
`
`
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`In an order dated March 24, 2011, the Board considered
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`applicant's then-pending motion to dismiss and opposer's proposed
`
`amended pleaded. The Board considered opposer's amended pleaded
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`to ascertain whether it stated a claim upon which relief may be
`
`granted. On page 4 of the order, the Board expressly stated that
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`opposer asserted sufficient claims of fraud and likelihood of
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`confusion.
`
`
`1 Application Serial No. 85027022, filed on April 30, 2010, and
`claiming a date of first use anywhere of January 1, 2009 and a date of
`first use in commerce of May 1, 2009.
`
`
`
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`
`
`
`
`BUTLER
`
`
`
`
`
`
`
`
`
`
`
`Mailed: August 18, 2011
`
`
`
`
`
`Opposition No. 91197240
`
`FGN USA, INC.
`
`
`v.
`
`
`TRANS RESEARCH INTERNATIONAL TRUST
`LIMITED
`
`
`
`
`Before Bucher, Kuhlke and Taylor, Administrative Trademark
`Judges.
`
`By the Board:
`
`
`
`Applicant seeks to register the mark TPR 20 for "topical
`
`pain relief medication; topical pain relief cream; anti-
`
`inflammatory cream."1
`
`
`
`In an order dated March 24, 2011, the Board considered
`
`applicant's then-pending motion to dismiss and opposer's proposed
`
`amended pleaded. The Board considered opposer's amended pleaded
`
`to ascertain whether it stated a claim upon which relief may be
`
`granted. On page 4 of the order, the Board expressly stated that
`
`opposer asserted sufficient claims of fraud and likelihood of
`
`confusion.
`
`
`1 Application Serial No. 85027022, filed on April 30, 2010, and
`claiming a date of first use anywhere of January 1, 2009 and a date of
`first use in commerce of May 1, 2009.
`
`
`
`
`Opposition No. 91197240
`
`
`
`Notwithstanding this express determination, applicant, on
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`April 15, 2011, filed a second motion to dismiss directed to the
`
`claims of priority and likelihood of confusion and fraud.
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`Although opposer has not responded to applicant's motion, the
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`Board will consider the motion on its merits rather than treat it
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`as conceded.2
`
`
`
`A motion to dismiss for failure to state a claim upon which
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`relief can be granted is a test solely of the legal sufficiency
`
`of a complaint. In order to withstand such a motion, a complaint
`
`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 (in the
`
`case of an opposition. To survive a motion to dismiss, a
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`complaint must "state a claim to relief that is plausible on its
`
`face." See TBMP § 503.02 (3d ed. 2011).
`
`1. Priority of use and likelihood of confusion
`
`
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`According to applicant, this claim is insufficiently pled
`
`because opposer did not assert that it has priority.
`
`
`2 Opposer is representing itself and, as such, should familiarize
`itself with the rules and procedures governing this proceeding. In
`its March 24, 2011 order, the Board provided opposer with general
`information about Board proceedings and urged that opposer obtain an
`attorney for purposes of this litigation. Opposer was so advised
`because strict compliance with the Trademark Rules and all other
`applicable rules is expected of all parties, even those representing
`themselves. The Board may elect to treat a motion as conceded if no
`response is filed. See Trademark Rule 2.127(a); and TBMP § 502.04 (3d
`ed. 2011). Without attorney representation to guide it, opposer risks
`future inaction or other missteps which may result in dismissal of
`this proceeding.
`
`
`
`2
`
`
`
`Opposition No. 91197240
`
`
`
`In paragraph No. 1 of the amended notice of opposition,
`
`opposer alleges that it "… has a USPTO Trade Mark Registration
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`No. 3819519 with a Word Mark APR 15 and Design …." Trademark Act
`
`§ 2(d), 15 U.S.C. § 1052(d) provides that an applicant can
`
`register a mark, unless its mark is likely to cause confusion
`
`with a mark "… registered in the Patent Office or * * *
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`previously used…." See King Candy Co. v. Eunice King's Kitchen,
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`Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974). There is a
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`statutory distinction between a registered mark and a previously-
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`used-but-unregistered mark. Id. In reading the pleading as a
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`whole, here the assertion of opposer's registration is sufficient
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`for purposes of priority. Thus, should opposer introduce
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`evidence that its pleaded registration is owned by opposer and is
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`valid and subsisting, and there is no counterclaim to cancel such
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`registration, priority is not at issue. Id.
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`
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`Accordingly, applicant's motion to dismiss opposer's
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`likelihood of confusion claim because opposer did not plead the
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`element of priority is denied.
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`
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`Although pleading ownership of the registration is adequate
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`to state a sufficient likelihood of confusion claim, the Board
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`notes in passing that opposer has not asserted common law use
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`prior to applicant's asserted date of first use, use analogous to
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`trademark use prior to applicant's asserted date of first use, or
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`
`
`3
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`
`
`Opposition No. 91197240
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`that applicant is not entitled to the dates of use claimed in its
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`application.3
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`
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`In view thereof, opposer is allowed time, set later in this
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`order, to amend its pleading to assert common law rights of
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`priority, prior use analogous to trademark use, or that applicant
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`is not entitled to the dates of use claimed in its application,
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`failing which, the December 8, 2010 amended notice of opposition
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`will be opposer's operative pleading for this case.
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`2. Fraud
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`
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`Applicant argues that opposer's fraud claim is
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`insufficiently pled because did not assert allegations concerning
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`the element of materiality and because the claim was not pled
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`with particularity. However, the Board considered this claim
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`previously and found that it was sufficiently pled (that is, pled
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`with particularity). While opposer did not use the word
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`"material," it is clear that opposer's allegations address a
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`matter material to registration of the mark in connection with
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`applicant's declaration. As the Board observed in the earlier
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`order, opposer alleges that applicant's statement that no other
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`entity was entitled to use the mark in commerce was false because
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`applicant had knowledge of opposer's use of its mark as a result
`
`
`3 Thus, based on this pleading, the earliest date upon which opposer
`may rely to establish priority is opposer's constructive use date,
`based on the April 30, 2009 filing date of the underlying application
`which matured into Registration No. 3819519. Applicant's application
`was filed one year later, on April 30, 2010. Applicant asserts,
`however, a date of first use anywhere of January 1, 2009, which, if
`proven, predates opposer's constructive use date.
`
`
`
`4
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`
`
`Opposition No. 91197240
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`of the former employment with opposer (from 2002-2007) of at
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`least one of the individuals associated with applicant (and
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`identified as the signatory to the application).
`
`
`
`Accordingly, applicant's motion to dismiss opposer's fraud
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`claim is denied.
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`
`
`Proceedings are resumed and dates are reset as follows:
`
`Amended notice of opposition, if
`any, is due
`Time to Answer (either anticipated
`amended notice of opposition, if
`filed, or December 8, 2010 amended
`notice of opposition if no newly
`filed pleading)
`Deadline for Discovery Conference
`Discovery Opens
`Initial Disclosures Due
`Expert Disclosures Due
`Discovery Closes
`Plaintiff's Pretrial Disclosures
`Plaintiff's 30-day Trial Period
`Ends
`Defendant's Pretrial Disclosures
`Defendant's 30-day Trial Period
`Ends
`Plaintiff's Rebuttal Disclosures
`Plaintiff's 15-day Rebuttal Period
`Ends
`
` 9/16/2011
`
`10/16/2011
`11/15/2011
`11/15/2011
`12/15/2011
`4/13/2012
`5/13/2012
`6/27/2012
`
`8/11/2012
`8/26/2012
`
`10/10/2012
`10/25/2012
`
`11/24/2012
`
`In each instance, a copy of the transcript of testimony,
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`
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`together with copies of documentary exhibits, must be served on
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`the adverse party within thirty days after completion of the
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`taking of testimony. Trademark Rule 2.l25.
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`
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`Briefs shall be filed in accordance with Trademark Rules
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`2.l28(a) and (b). An oral hearing will be set only upon request
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`filed as provided by Trademark Rule 2.l29.
`
`
`
`
`
`
`5
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`
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`Opposition No. 91197240
`
`***
`
`
`
`
`
`
`6
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