Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA518752
`ESTTA Tracking number:
`01/29/2013
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91206850
`Defendant
`HulkShare Ltd.
`RICHARD G SANDERS
`AARON | SANDERS PLLC
`11 LEA AVENUE, SUITE 606
`NASHVILLE, TN 37210
`UNITED STATES
`rick@aaronsanderslaw.com, docket@aaronsanderslaw.com
`Opposition/Response to Motion
`Richard G. Sanders
`rick@aaronsanderslaw.com, docket@aaronsanderslaw.com
`/Richard G. Sanders/
`01/29/2013
`Response to Motion to Strike.pdf ( 23 pages )(117061 bytes )
`Hill v Vanderbilt Capital.pdf ( 6 pages )(2184458 bytes )
`Barnes Noble v LSI.pdf ( 16 pages )(6252843 bytes )
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`Proceeding
`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Marvel Characters, Inc.,
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`Opposer,
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`v.
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`Hulkshare, Ltd.,
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`Applicant.
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`Opposition No. 91206850
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`Mark: HULKSHARE
`Serial No.: 85482222
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`Filed: November 29, 2011
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`HULKSHARE’S BRIEF IN RESPONSE TO OPPOSER’S MOTION TO STRIKE
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`The applicant of Application Serial No. 85482222 (the “Application”), Hulkshare,
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`Ltd. (“Applicant” or “Hulkshare”), responds to Opposer’s Motion to Strike as follows:
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`BACKGROUND
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`On November 29, 2011, Hulkshare filed a use-based application for registration of
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`its mark HULKSHARE for “providing online non-downloadable software for the uploading,
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`transferring and viewing of files across a global computer network” in International Class
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`42. It was published for opposition May 8, 2012.
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`Opposer, Marvel Characters, Inc., filed its Notice of Opposition (the “Complaint”)
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`on September 5, 2012, with two bases: likelihood of confusion and dilution. Opposer
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`alleged that it owned a number of registrations (the “Cited Registrations”) for marks related
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`to the comic-book character The Incredible Hulk (the “Opposer’s Marks”). The Complaint
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`mostly set forth entertainment products—comic books, television shows, motion pictures
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`and computer games—that featured the Incredible Hulk character, without indicating how
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`widespread the use and recognition of products bearing the Opposer’s Marks were, in fact,
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`in the United States. For example, the Complaint mentions the television series The
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`Incredible Hulk and that it ran for 82 episodes from 1978 to 1982. But it says nothing
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`1
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`about how many people watched the program in the United States. ¶ 101. For another
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`example, the Complaint set forth that the film Hulk grossed $132 million in North America
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`and that it was reviewed by several newspapers, but the Complaint does not set out how
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`many persons saw the film in the United States. ¶ 15.
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`The Opposer’s Marks are for INCREDIBLE HULK (including a THE INCREDIBLE
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`HULK COASTER), HULK by itself, and for images of the comic-book character himself.
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`None of these marks claim the color green, except one of the images. ¶ 22. With one
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`exception, none of the goods and services set forth in the Complaint relates in any way to
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`any type of computer software, relating instead to comic books, toys, clothing, animated
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`television programs and the like. ¶ 22. The one exception is Registration No. 3593678,
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`which does not cover online computer software, let alone non-downloadable software that
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`enables the uploading, transferring and viewing of computer files. Instead, it is limited to
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`computer games in International Class 9 (specifically “video game software, interactive
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`multimedia video game program[s], interactive video game programs, computer game
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`programs [and] computer game software”). ¶¶ 14 & 22. The Complaint mentions that an
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`obscure film, Hulk VS, can be “instantly streamed,” but provides no further technical
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`details. ¶ 17.
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`The Complaint makes no mention of amounts spent on advertising using the
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`Opposer’s Marks. It sets out generally categories of products on which the Opposer’s
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`Marks are alleged to be used, but, except for what appear to be DVD covers, it provides
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`1 References to paragraphs are to the Complaint, unless otherwise indicated.
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`2
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`no further details about those products.2 ¶ 20. The Complaint prominently mentions the
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`popular film Marvel’s The Avengers, which featured the Incredible Hulk character, but it
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`also mentions that that film was not released until 2012, well after the filing date of the
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`Application.
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`After two 30-day extensions, Hulkshare filed an Answer. The Answer included two
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`defenses, listed under the title “Affirmative Defenses”: (1) failure to state a claim for which
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`relief can be granted (“failure to state a claim” for short), and (2) lack of standing:
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`Opposer has failed to state a claim on which relief may
`1.
`be granted.
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`Opposer has failed to state a claim for likelihood
`a.
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`of confusion because it has not alleged that any confusion,
`mistake or confusion would result from Hulkshare’s use of
`HULKSHARE in connection with the goods and services set
`forth in the Application. Indeed, the Notice of Opposition is
`silent with respect to Hulkshare’s goods and services, other
`than to quote the goods and services set forth in the
`Application. Hulkshare submits that, on its face, “Providing
`online non-downloadable software for uploading, transferring
`and viewing of files across a global computer network” is so
`far removed from any of the goods and services of Opposer set
`forth in the Notice of Opposition that no confusion, mistake or
`deception could result.
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`Opposer has failed to state a claim for dilution
`b.
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`because, among other reasons, it has not alleged facts to
`support the essential element of fame. The Notice of
`Opposition lacks any allegations about the extent of actual
`recognition of “Hulk,” for example. Applicant is aware of no
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`2 These DVD covers are described as “representative samples” of the “extensive and consistent use of
`green.” ¶ 20. But these covers appear to be all of fairly recent vintage and all appear to be the same type
`of product.
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`3
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`case in which a single word in common use in the English
`language was found to be famous.
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`Opposer lacks standing because, on information and
`2.
`belief, it does not own any of the Hulk-related marks or the
`associated goodwill. Hulkshare understands that Opposer’s
`ownership of the The Incredible Hulk character is currently the
`subject of lawsuits pending in the U.S. District Court of the
`District of Colorado and the U.S. Court of Appeals for the
`Ninth Circuit. Opposer admits that it is not the original owner
`of the registrations asserted in this Opposition but does not set
`forth the chain of title by which it obtained such ownership.
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`Opposer filed the instant Motion to Strike on January 9, 2013. Opposer wishes to
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`strike the defense of failure to state a claim on grounds that the Complaint does, in fact,
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`state a claim. Regarding likelihood of confusion (and putting aside priority), the Motion to
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`Strike points the Board to these two allegations:
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`The parties' respective marks are highly similar in
`29.
`sound, appearance, and connotation. The first and dominant
`term in Applicant's mark—HULK—is identical to Opposer's
`HULK Name and Mark and highly similar to its THE
`INCREDIBLE HULK Name and Mark.
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`31. Applicant's HULKSHARE mark so resembles Opposer's
`prior used and registered HULK Name and Mark, as to be
`likely, when used and registered in connection with
`Applicant's services, to cause confusion, or to cause mistake,
`or to deceive under Section 2(d) of the Lanham Act, as
`amended, 15 U.S.C. § 1052(d).
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`Motion to Strike (“Mot.”) at 4 (citing ¶¶ 29 & 31). With regard to dilution, Opposer’s
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`Motion to Strike points the Board to these three allegations:
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`Further, through its long use of the HULK Name and
`21.
`Mark, and substantial advertising and promotion, Opposer has
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`4
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`developed valuable goodwill in its HULK Name and Mark,
`and it has long been famous.
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` Opposer's HULK Name and Mark became famous
`33.
`well before the filing date of the opposed Application Serial
`No. 85482222, and the December 1, 2009 date of first use
`alleged by Applicant.
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`In view of the similarities of the parties' marks and the
`34.
`fame of Opposer's foregoing names and marks, Applicant's
`mark so closely resembles Opposer's famous HULK Name
`and Mark as to be likely to dilute the distinctive quality of
`such name and mark.
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`Mot. at 5 (citing ¶¶ 21, 33–34).
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`With regard to the defense of lack of subject-matter jurisdiction, Opposer argues
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`that questioning Opposer’s ownership of the Cited Registrations constitutes a collateral
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`attack on the validity of those registrations.
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`ARGUMENT
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`Opposer’s Motion to Strike seeks to force the equivalent of a full-blown pre-answer
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`motion to dismiss or for judgment on the pleadings, but with much lower stakes.
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`Regarding the first affirmative defense, Opposer argues that the Complaint states claims for
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`likelihood confusion and dilution, but it cites to very little of the Complaint to support this
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`argument, even though Opposer bears the burden. It is up to Hulkshare, says Opposer, to
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`show how the Complaint fails, even though Hulkshare obviously declined the opportunity
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`to do so before filing the Answer. Hulkshare is now perhaps obligated—the legal
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`authorities are at odds on this point—to point out the many pleading deficiencies of the
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`Complaint. Perhaps Opposer will make up for the deficiencies of its Motion in its reply.
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`5
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`Regarding the second affirmative defense, it is difficult to tell what Opposer seeks.
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`Opposer argues that Hulkshare cannot attack the validity of Opposer’s Marks and
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`Registrations, which is true, though it misses the point of Hulkshare’s defense. But that will
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`be as true now as it will be at trial. In any event, Hulkshare’s defense relates to the
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`ownership of the registrations, the burden of proving which still remains on Opposer, not
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`the validity of those registrations, or the ownership of the Opposer’s Marks.
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`For these reasons, and for those set forth below, Opposer’s Motion to Strike should
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`be denied.
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`I.
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`Motions to Strike Are Not Favored.
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`The Board may strike from a pleading "any insufficient defense or any redundant,
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`immaterial, impertinent or scandalous matter." Fed. R. Civ. P. 12(f). However, motions to
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`strike are not favored, and matter will not be stricken unless such matter clearly has no
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`bearing upon the issues in the case. Ohio State Univ. v. Ohio Univ. 51 USPQ2d 1289,
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`1292 (TTAB 1999). After all, the primary purpose of pleadings is to give fair notice of
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`claims and defenses. Id. Thus, the Board may decline to strike even objectionable
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`pleadings where their inclusion will not prejudice the adverse party, but merely "provide
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`fuller notice of the basis for a claim or defense." Id.
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`There is, however, authority (not cited by Opposer) for the proposition that the
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`defense of failure to state a claim may be tested by a motion to strike because no proofs
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`need be adduced. See Order of Sons of Italy of Am. v. Profumi Fratelli Nostra AG, 36
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`USPQ2d 1221 (TTAB 1995); S.C. Johnson & Son, Inc. v. GAF Corp. 177 USPQ 720 (TTAB
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`1973). Not all courts agree, however. Many courts treat the defense as the equivalent of a
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`general denial. See Salcer v. Envicon Equities Corp., 744 F.2d 934, 939 (2d Cir. 1984)
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`(denying a motion to strike a defense of failure to state a claim on grounds that the
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`plaintiff’s chance of success could not be established with legal certainty); New York v.
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`Almy Bros., 971 F. Supp. 69, 71 (N.D.N.Y 1997). Furthermore, allowing such a defense to
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`remain does not prejudice the opposer, since all it does it give the opposer notice of
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`factual avenues the applicant might take. See Calif. Dep’t of Toxic Substances v. Alco
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`Pacific, 217 F. Supp. 2d 1028, 1044 (C.D. Cal. 2002).
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`Regardless of how the Board comes out on this issue, two important things do not
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`change. First, the burden of showing that the Complaint does state a claim remains with
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`Opposer. See id. at 1043. Second, this logic (of permitting motions to strike the defense of
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`failure to state a claim) does not apply to other defenses, since they cannot be seen as
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`relating solely to the pleadings. See Lipton Indus., Inc. v. Ralston Purina Co. 670 F.2d
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`1024, 1028, 213 USPQ 185, 188 (CCPA 1982) (holding that standing must be sufficiently
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`pleaded and proved: “allegations alone do not establish standing”).
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`II.
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`Are Hulkshare’s Defenses Affirmative Defenses, and if Not, Should They Be Struck
`Therefore?
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`Before proceeding, there is an initial issue, not raised by Opposer, that must be
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`resolved: whether Hulkshare’s defenses are, in fact, affirmative defenses, and if they are
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`not, whether they may be struck simply for that reason. Hulkshare is constrained to point
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`the Board to its decision Blackhorse v. Pro Football, Inc., 98 USPQ2d 1633 (TTAB 2011)
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`(involving a claim of disparagement in connection with the REDSKINS mark for
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`professional football), in which the Board struck the registrant’s defenses of failure to state
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`a claim and lack of standing because they were not “affirmative defenses.” Id. at 1637.
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`7
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`Hulkshare would respectfully submit that, while the Board was justified under the
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`extraordinary circumstances of that case in striking those defenses, it is not normally
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`correct to strike such defenses for that reason. While failure to state a claim and lack of
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`subject-matter jurisdiction are not affirmative defenses insofar as Hulkshare does not bear
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`the burden of proof and need not introduce any additional proofs, see, e.g., In re Rawson
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`Food Service, Inc., 846 F.2d 1343, 1349 n.9 (11th Cir. 1988), courts generally treat these
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`defenses as affirmative defenses for purposes of pleading. See Robinson v. Johnson, 313 F.
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`3d 128, 139 (3d Cir. 2002) (describing both defenses as affirmative defenses); Painesville
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`Bd. of Trustees v. City of Painesville, 200 F.3d 396, 398 (6th Cir. 1999) ("Lack of subject
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`matter jurisdiction is an affirmative defense that a defendant may assert in a motion to
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`dismiss."); County Vanlines Inc. v. Experian Information Solutions, Inc., 205 F.R.D. 148,
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`153 (S.D.N.Y. 2002) (“Furthermore, it is well settled that the failure-to-state-a-claim
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`defense is a perfectly appropriate affirmative defense to include in the answer. ... Although
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`the defense is arguably redundant in that it is essentially a general denial, there is no
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`prejudicial harm to plaintiff and the defense need not be stricken.”).
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`Even if these defenses are not affirmative defenses, the Trademark Rules of Practice
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`plainly permit the pleading of all defenses, not just affirmative defenses. They specifically
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`allow an applicant to plead "any defense, including the affirmative defenses of unclean
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`hands, laches, estoppel, acquiescence, fraud, mistake, prior judgment, or any other matter
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`constituting an avoidance or affirmative defense." 37 C.F.R. § 2.106(b)(1) (emphasis
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`added). Further, the Federal Rules of Civil Procedure specifically permits pleading the
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`defense of failure to state a claim and lack of subject-matter jurisdiction in an answer. See
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`Fed. R. Civ. P. 12(h)(2)(A), (h)(3); see also Barnes & Noble, Inc. v. LSI Corp., Case No.
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`C-11-2709 (N.D. Cal. 2012) (denying a motion to strike defenses expressly allowed by
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`Fed. R. Civ. P. 12(h)). If it were otherwise, the other Rule 12(b) defenses would be
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`essentially waived because they could automatically be stricken. See Rule 12(h)(1)(B)(ii)
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`(requiring defendants to plead certain defenses in their answers to avoid waiver).
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`Blackhorse was an unusual case, in that the registrant raised a very large number of
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`affirmative defenses. Several of these defenses, particularly those challenging the
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`constitutionality of certain portions of the Lanham Act, were plainly beyond the Board’s
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`powers. The Board saw that the case had the potential of becoming excessively
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`contentious or of creating an excessively large record. 98 USPQ2d at 1634. There is no
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`similar call for such concern in this matter.
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`III. Many of Opposer’s Allegations Fail to Meet Current Pleading Standards.
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`As noted above, the fact that Opposer is essentially forcing a challenge of its own
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`Complaint changes neither the Opposer’s burden nor the standard for pleading a claim
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`upon which relief may be granted. See Calif. Dep’t of Toxic Substances, 217 F. Supp. 2d at
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`1044. The complaint must still provide “sufficient factual matter, accepted as true, to state
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`a claim to relief that is plausible on its face.” SaddleSprings, Inc. v. Mad Croc Brands, Inc.,
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`104 USPQ2d 1948, 1949 (TTAB 2012) (quoting Ashcroft v. Iqbal, 556 U.S. 662, 678
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`(2009) and Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007)). To state a claim
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`plausible on its face, Opposer must “allege[] well-pleaded factual matter and more than
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`‘threadbare recitals of the elements of a cause of action, supported by mere conclusory
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`statements.” Johnson & Johnson v. Obschestvo s. Ogranitchennoy, 104 USPQ2d 2037,
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`2038 (TTAB 2012) (quoting Iqbal 556 U.S. at 678).
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`Immediately, it may be perceived that certain of the allegations on which Opposer
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`relies in its Motion to Strike fail to meet this test and should be ignored. In particular,
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`paragraphs 31, 33 and 34 do nothing more than recite the elements of Opposer’s cause of
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`action. Under Johnson & Johnson and Iqbal, these allegations are inconsequential.
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`A.
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`The Complaint Does Not State a Claim for Likelihood of Confusion Because
`it Fails to Allege Any Facts That, if Proven, Would Establish a Sufficient
`Degree of Similarity in the Respective Goods and Services.
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`To establish a claim based on likelihood of conclusion, Opposer must plead and
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`prove that HULKSHARE "so resembles a mark registered in the Patent Office or a mark or
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`trade name previously used in the United States by another and not abandoned, as to be
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`likely, when applied to the goods of the applicant, as to cause confusion, or to cause
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`mistake or to deceive." 15 U.S.C. § 1052(d) (emphasis added). "[T]he question of
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`confusion is related not to the nature of the mark but to its effect 'when applied to the
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`goods of the applicant.'" In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 1360-61
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`(CCPA 1973) (emphasis in original). The "when applied" clause in the statute is not a
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`"mental exercise." Id. at 1361.
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`In testing for likelihood of confusion under § 2(d), the Board takes the following
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`factors into account:
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`(1) The similarity or dissimilarity of the marks in their entireties
`as to appearance, sound, connotation and commercial
`impression.
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`(2) The similarity or dissimilarity and nature of the goods or
`services as described in an application or registration or in
`connection with which a prior mark is in use.
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`(3) The similarity or dissimilarity of established, likely-to-
`continue trade channels.
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`(4) The conditions under which and buyers to whom sales are
`made, i.e. "impulse" vs. careful, sophisticated purchasing.
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`(5) The fame of the prior mark (sales, advertising, length of
`use).
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`(6) The number and nature of similar marks in use on similar
`goods.
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`(7) The nature and extent of any actual confusion.
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`(8) The length of time during and conditions under which there
`has been concurrent use without evidence of actual
`confusion.
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`(9) The variety of goods on which a mark is or is not used
`(house mark, "family" mark, product mark).
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`(10) The market interface between applicant and the owner of
`a prior mark: (a) a mere "consent" to register or use; (b)
`agreement provisions designed to preclude confusion, i.e.
`limitations on continued use of the marks by each party; (c)
`assignment of mark, application, registration and good will of
`the related business; (d) laches and estoppel attributable to
`owner of prior mark and indicative of lack of confusion.
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`(11) The extent to which applicant has a right to exclude
`others from use of its mark on its goods.
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`(12) The extent of potential confusion, i. e., whether de
`minimis or substantial.
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`(13) Any other established fact probative of the effect of use.
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`Id. at 1361.
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`If the Complaint’s conclusory allegations are ignored under Johnson & Johnson and
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`Iqbal, then Opposer points to only one factual allegation in the Motion Strike to support its
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`claim for likelihood of confusion: that the marks are “highly similar in sound, appearance
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`and connotation and that the first syllable of HULKSHARE is the “dominant term” in the
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`mark.3 Mot. at 4 (citing ¶ 29).
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`However, mere similarity of the marks is not by itself sufficient to establish a claim
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`for likelihood of confusion. See 4 J. Thomas McCarthy, McCarthy on Trademarks and
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`Unfair Competition § 24.11 (4th ed. 2012) (setting forth sets of identical marks that
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`“peacefully co-exist”). To the contrary, even where the marks are absolutely identical
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`(which is not the case here), there still must be a “viable relationship between the goods or
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`services” to state a claim for likelihood of confusion. In re Concordia Int’l Forwarding
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`Corp., 222 USPQ 355, 356 (TTAB 1983). Opposer must allege “the conditions and
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`activities surrounding the marketing of the goods are such that they would or could be
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`encountered by the same persons under circumstances that could, because of the
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`similarity of the marks, give rise to the mistaken belief that they originate from the same
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`source.” Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d 1100, 1109 (TTAB 2007).
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`Nowhere in its Motion to Strike does Opposer attempt to make this “viable relationship.”
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`Further, there could be no such connection between the goods set forth anywhere
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`in the Complaint and those set forth in the Application. Where would one encounter
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`towels, bicycle helmets and roller-coaster rides on the one hand and file-uploading and -
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`transferring software on the other? The Complaint does mention the use of the Opposer’s
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`marks on computer games, which at least is a kind of software, but software is itself an
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`3 Hulkshare denied these allegations. Answer ¶ 29.
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`12
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`exceptionally broad category that appeals to different markets. See Edwards Lifesciences
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`Corp. v. VigiLanz Corp., 94 USPQ2d 1399, 1410 (TTAB 2010). The Complaint does not set
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`forth facts giving rise to even an inference that computer games would appeal to the same
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`market as online software for uploading and transferring computer files.
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`Where the marks are identical and the parties are in the same general type of
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`industry, it is a “close case … not entirely free from doubt” whether there is likelihood of
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`confusion. In re Concordia, 222 USPQ at 357. In In re Concordia, the applicant sought to
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`register CONCORDIA for a kind of air-freight shipping service. Id. at 356. The examiner
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`rejected the application based on a likelihood of confusion with the registered mark
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`CONCORDIA for shipborne-freight shipping services. Id. On appeal to the TTAB, the
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`applicant argued that the goods were sufficiently different to permit registration of its
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`mark, despite the identity of the marks. In what the TTAB called a "close case … not
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`entirely free from doubt," the rejection was upheld. Id. at 357.
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`In In re Concordia, the marks were identical. Here, they plainly are not.
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`HULKSHARE is noticeably different from HULK. Even if “HULK” is assumed to be the
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`dominant part of HULKSHARE, the term is an ordinary word in the English language, and
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`fairly obviously references and is suggestive of the large quantities of data that may be
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`uploaded and transferred using Hulkshare’s service. Further, there are no allegations in the
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`Complaint to support even an inference that Hulkshare and Opposer are in the same
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`general lines of business. To the contrary, according to the Complaint, Opposer has no
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`more of an online presence than anyone who has uploaded a video to YouTube. See ¶ 17
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`(alleging that the obscure film Hulk VS may be streamed). In Kohler, which held that door
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`hardware and plumbing fixtures, like toilets and sinks, were sufficiently related where the
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`13
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`DEVONSHIRE marks were identical, the petitioner was at least able to show that doors
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`and toilets would both be encountered by a consumer in a bathroom. 82 USPQ2d at
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`1109. Here, Opposer makes no such attempt.
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`Finally, although the Motion to Strike ignores these allegations, Complaint alleges
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`that Hulkshare’s uses the color green in connection with its use of HULKSHARE. ¶ 25.
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`Elsewhere in the Complaint, Opposer speculates that this use of green is evidence of bad-
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`faith adoption. ¶ 30. This allegation is irrelevant because the Application does not claim
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`the color green. Further, green is a claimed feature of only one of the Cited Registrations,
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`which is itself irrelevant here because it is for a design of the Incredible Hulk character,
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`not a text mark including “hulk.” ¶ 22. There can be no serious claim that HULKSHARE is
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`in any way similar to “[t]he color bright green for the skin and eyes of super-human
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`characters toys, to include entire figure drawn above,” particularly with respect to the
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`limited range of goods associated with that mark, which consists of “toys and playthings.”
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`¶ 22; see NASDAQ Stock Market, Inc. v. Antarctica, S.r.I., 69 USPQ2d 1718, 1733 (TTAB
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`2003) (finding no bad-faith adoption where the junior user’s goods fall outside the scope
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`of the goods claimed in by the senior user’s relevant registration).
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`
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`Even if the use of green were somehow relevant, it is not enough to state a claim for
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`likelihood of confusion. Where confusion is not likely to result from the use of the marks,
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`the applicant's motive is irrelevant. Boston Red Sox Baseball Club LP v. Sherman, 88
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`USPQ2d 1581, 1593 (TTAB 2008). “[I]ntent may, and ought to, be taken into account
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`when resolving the issue of likelihood of confusion when that issue is not free from doubt.
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`However, if confusion is not likely to result from the use of the marks, the motive of an
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`applicant cannot affect its right to the registration sought.” Id. Here, coincidental use of
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`color is not enough to bridge the wide gap between Opposer’s goods and Hulkshare’s.
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`B.
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`The Complaint Does Not State a Claim for Dilution Because it Is Bereft of
`Any Factual Allegations Supporting a Finding of Requisite Fame.
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`
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`To state a claim for dilution, Opposer must allege and prove (1) that the Opposer’s
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`Marks are “famous” and became so before the application date of the Application, and (2)
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`that the use of these famous marks is likely to blur their distinctiveness. See Research in
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`Motion, Ltd. v. Defining Presence Mkg., 102 USPQ2d 1187, 1196–97 (TTAB 2012). As
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`pleaded in Hulkshare’s Answer, Opposer’s Complaint does not allege facts sufficient to
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`make a plausible case that the Opposer’s Marks are famous for purposes of dilution.
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`
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`“Fame for likelihood of confusion and dilution are not the same. Fame for dilution
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`requires a more stringent showing.” Lacoste Alligator S.A. v. Maxoly, Inc., 91 USPQ2d
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`1594, 1597 n.8 (TTAB 2009). Fame for likelihood of confusion varies along a spectrum
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`from very strong to very weak while dilution is an "either/or proposition—either it exists or
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`it does not exist.” Id. “A mark, therefore, may have acquired sufficient public recognition
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`and renown to be famous for purposes of likelihood of conclusion without meeting the
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`more stringent requirement for dilution fame.” Id.
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`
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`It is well-established that dilution fame is difficult to prove. Coach Servs., Inc. v.
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`Triumph Learning, LLC, 668 F.3d 1356, 1372 (Fed. Cir. 2012). There is no such thing as
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`“niche fame” under current dilution law. See id. To the contrary, fame requires
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`“widespread recognition by the general public.” Id. Further, the mark must be so
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`distinctive that the general public associates the mark with the owner even when it is
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`stripped of its “trademark context,” i.e., it is encountered apart from the owner’s goods and
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`services. See Toro Co. v. ToroHead, Inc., 61 USPQ2d 1164, 1177 (TTAB 2001). As the
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`Board has explained:
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`In effect, the owner of a famous mark is attempting to
`demonstrate that the English language has changed. … What
`was once a common noun, a surname, a simple trademark,
`etc., is now a term the public primarily associates with the
`famous mark. To achieve this level of fame and distinctiveness,
`the party must demonstrate that the mark has become the
`principal meaning of the word.
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`Id. at 1180.
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`
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`Where the mark in question is a “common English word that has different meanings
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`in different contexts,” proving dilution fame is even more difficult. See Coach Servs., 668
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`F.3d at 1373.
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`
`
`Dilution fame is statutorily defined as “widely recognized by the general
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`consuming product of the United States as a designation of the goods or services of the
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`mark's owner.” 15 U.S.C. § 1125(c)(2)(A). To determine whether a mark possesses the
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`requisite degree of recognition, courts may consider "all relevant factors," including:
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`(i) The duration, extent, and geographic reach of advertising
`and publicity of the mark, whether advertised or publicized by
`the owner or third parties.
`(ii) The amount, volume, and geographic extent of sales of
`goods or services offered under the mark.
`(iii) The extent of actual recognition of the mark.
`(iv) Whether the mark was registered under the Act of March
`3, 1881, or the Act of February 20, 1905, or on the principal
`register.
`
`Id.
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`
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`Opposer thus has a tall task to plead dilution fame. It must plead facts, if proven,
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`would tend to show that the English language has changed such that “hulk” no longer
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`primarily means a dismantled ship, a large unwieldy person or a large wieldy mass, but
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`that its primary function now is to cause an association with Opposer. To do so, Opposer
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`must plead actual facts, not legal conclusions. See Johnson & Johnson, 104 USPQ2d at
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`2038 (quoting Iqbal, 556 U.S. at 678). The statute suggests how this may be accomplished:
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`facts tending to show the “duration, extent and geographic reach of advertising and
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`publicity” of the Opposer’s Marks; “the amount, volume and geographic extent of sales of
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`goods and services” under the Opposer’s Marks; and the “extent of actual recognition” of
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`the Opposer’s Marks.
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`
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`Despite the Complaint’s breathless descriptions of the television shows and movies
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`that feature the Incredible Hulk character, there is, in fact, very little (if anything) of
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`substance in those pleadings to support a finding of fame dilution. The television series ran
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`for nearly five years, the two relevant movies grossed $132 million and $134 million in
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`North America, and Hulk VS is available for streaming (no revenues are given), but how
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`many people in the United States actually watched these shows? More important, who
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`watched these shows? Could the viewers truly be said to represent the general public, or
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`were they mostly comic-book fans? If the latter, then any fame would merely be niche
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`fame. The Complaint alleges the movies, at least, received “unsolicited media attention” in
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`certain periodicals—but, then, nearly all movies are reviewed, regardless of their
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`advertising or geographic reach, so that (if true) proves almost nothing.
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`
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`Beyond those allegations, the Complaint is devoid of any information about any
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`advertising or publicity using the Opposer’s Marks, or the sales of goods and services using
`
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`the Opposer’s Marks. The Complaint alleges that the Opposer’s Marks were first used in
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`1962, but since that use was limited to comic books, it can hardly be probative of wide-
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`spread public recognition. (If that were not the case, then every Golden and Silver Age
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`comic book character would constitute a famous mark.) The Complaint alleges that the
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`Opposer’s Marks slowly spread to other types of goods, but it says nothing about the sales,
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`advertising or customers those goods.
`
`
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`Curiously, Opposer does not point to these any of these allegations in the Motion to
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`Strike. Instead, it points to paragraphs 21, 33 and 34 of its Complaint. But these allegations
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`are inconsequential for purposes of stating a claim for relief under Johnson & Johnson and
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`Iqbal. Paragraphs 33 and 34 do nothing but recite the elements of a claim for dilution in
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`conclusory fashion. Paragraph 21 is not much better, making vague references to
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`“substantial advertising and promotion” and the “develop[ment] of valuable goodwill in
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`[the] HULK Name and Mark.”