Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1274468
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`Filing date:
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`03/27/2023
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding no.
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`91283412
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`Party
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`Correspondence
`address
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`Submission
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`Filer's name
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`Filer's email
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`Signature
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`Date
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`Attachments
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`Defendant
`Virginia Community College System
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`ROBERT D. MICHAUX
`CHRISTIAN & BARTON, LLP
`901 EAST CRAY STREET, SUITE 1800
`RICHMOND, VA 23219
`UNITED STATES
`Primary email: trademarks@cblaw.com
`804-697-4100
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`Motion to Dismiss - Rule 12(b)
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`Robert D. Michaux
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`rmichaux@cblaw.com
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`/Robert D. Michaux/
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`03/27/2023
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`Motion to Dismiss MGCC Child App.pdf(244949 bytes )
`MTD EXhibit A.pdf(225083 bytes )
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`In the Matter of App. Ser. No. 97975240
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`For the Mark: MOUNTAIN GATEWAY COMMUNITY COLLEGE
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`Published: January 17, 2023
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`MOUNTAIN GATEWAY ORDER, INC.,
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`Opposer,
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`v.
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`VIRGINIA COMMUNITY COLLEGE SYSTEM,
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`Applicant.
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`Proceeding No. 91283412
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`APPLICANT’S MOTION TO DISMISS NOTICE OF OPPOSITION AND
`MEMORANDUM IN SUPPORT THEREOF
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`Virginia Community College System (“Applicant”), by counsel, pursuant to Rule
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`12(b)(1) and 12(b)(6) of the Federal Rules of Civil Procedure (the “Rule(s)”) and TBMP § 503,
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`moves for the Board to enter an order dismissing the notice of opposition filed by Mountain
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`Gateway Order, Inc. (“Opposer”) (Doc. No. 1) (the “Opposition”). For the reasons discussed
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`below, the Opposition should be dismissed with prejudice under Rule 12(b)(1) for lack of subject
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`matter jurisdiction and under Rule 12(b)(6) because it fails to state a claim for which relief can
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`be granted.
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`INTRODUCTION
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`Applicant filed an intent to use application to register the word mark MOUNTAIN
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`GATEWAY COMMUNITY COLLEGE (“Applicant’s Mark”) on the Principal Register on
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`September 7, 2021, for “Sweatshirts; T-shirts; Caps being headwear” in Class 25 and
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`“Educational services, namely, providing courses of instruction at the college level and
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`1
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`distribution of course material in connection therewith” in Class 41. Applicant subsequently
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`divided the application and disclaimed COMMUNITY COLLEGE. The parent application, App.
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`Ser. No. 97014470, claiming the goods in Class 25, and child application, App. Ser. No.
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`97975240, claiming the services in Class 41, were both published on January 17, 2023.1
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`Opposer timely filed the Opposition to the Application on February 14, 2023.
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`Opposer asserts that it has common law rights in the word marks MOUNTAIN
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`GATEWAY (“Opposer’s Primary Mark”) and MOUNTAIN GATEWAY ACADEMY (the
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`“Academy Mark”) for use in connection with educational services and other goods and services.
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`Opposer claims that, in contravention of 15 U.S.C. § 1052(d), Applicant’s Mark is likely to cause
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`confusion, or to cause mistake or to deceive the public as to the source of Applicant’s services
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`with Opposer and that registration of the Applicant’s Mark will cause the public to incorrectly
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`conclude that it is affiliated or connected to Opposer, and/or that Opposer authorized, sponsored,
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`endorsed, or licensed the use of the Applicant’s Mark. See Opp’n ¶¶15–16 (“Claim 1”).
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`Opposer also asserts that Opposer’s Primary Mark is “famous” and Applicant’s Mark has caused
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`or is likely to cause dilution of Opposer’s Primary Mark in violation of 15 U.S.C. § 1125(c), to
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`the detriment of both Opposer and the public. Id. ¶¶17–18 (“Claim 2”). Opposer further states
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`that Applicant lacked a bona fide intention, as required by 15 U.S.C. § 1501(b), because it also
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`filed intent to use applications for other word marks on the same day it filed the Application,
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`never made a bona fide use of those other marks, and does not currently have documentary
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`evidence of a bona fide intent to use Applicant’s Mark. Id. ¶¶19–21 (“Claim 3”). Although not
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`identified as an independent claim, Opposer finally alleges that the registration of the Applicant’s
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`Mark “would be a source of damage and injury to [Opposer] and the public, and contrary to the
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`1 The child application will be referred to hereinafter as the “Application.”
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`2
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`principles of registration set out in 15 U.S.C. § 1501 et seq.” Id. ¶22. The Opposition should be
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`dismissed for several reasons.
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`First, as an agency of the Commonwealth of Virginia, Applicant is immune from suit by
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`a private party in a federal court or tribunal, including proceedings before this Board, under the
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`doctrine of sovereign immunity. Therefore, the Board lacks subject matter jurisdiction to resolve
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`the Opposition and it should be dismissed with prejudice under Rule 12(b)(1).
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`Second, the Opposition should be dismissed under Rule 12(b)(6) because it fails to state a
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`claim for which relief can be granted. Under the doctrine of sovereign immunity, Applicant is
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`immune, at least in this tribunal, from any claim of liability by a private party arising from a
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`purported likelihood of confusion under Section 2(d) of the Lanham Act, dilution of Opposer’s
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`purportedly famous Primary Mark under Section 43(c) of the Lanham Act, or any allegation that
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`Applicant did not have a bona fide intent to use Applicant’s Mark. However, as stated below,
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`even if sovereign immunity did not preclude all claims asserted by Opposer, the Opposition fails
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`to allege sufficient facts to state a cause of action.
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`To the extent Opposer is relying upon common law rights, the Opposition fails to allege a
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`date of use for either of Opposer’s marks prior to the date of the Application or to allege where
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`any such use occurred. Thus, Claim 1 fails to state a claim for likelihood of confusion under
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`Section 2(d). Other than conclusory allegations that Opposer’s Primary Mark is “famous,” the
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`Opposition fails to allege specific facts upon which the Opposer’s Primary Mark could ever be
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`determined to be a famous mark protected under Section 43(c) or 15 U.S.C. § 1063. Thus, Claim
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`2 fails to state a claim for which relief may be granted. And rather than alleging any facts from
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`which it could be determined that Applicant lacks a bona fide intent to use Applicant’s Mark,
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`Opposer only alleges Applicant never made a bona fide use of several other marks it applied to
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`3
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`register and appears to allege that additional documentation is necessary to establish that intent.
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`Thus, Claim 3 fails to state a claim for which relief may be granted.
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`Third, Claims 2 and 3 also should be dismissed because 15 U.S.C. § 1125(c) does not
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`provide a cause of action for alleged damages to either Opposer or the public, but rather only
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`provides a cause of action for dilution by blurring or tarnishing a famous mark. Likewise, 15
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`U.S.C. § 1063 does not provide a cause of action for a person to initiate an opposition to prevent
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`damage to the public, but rather only provides a cause of action for a person that believes it
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`would be damaged by the registration of a mark, including the likely dilution of a famous mark.
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`Fourth, Claim 3 also should be dismissed because it alleges elements of the law that do
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`not exist. Specifically, there is no restriction to prevent a person filing multiple intent to use
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`applications for different marks or that doing so precludes having a bona fide intent to use any of
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`the applied-for marks. Claim 3 also incorrectly pleads an evidentiary standard as an element of a
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`lack of bona fide intent claim.
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`Finally, the Opposition should be dismissed because it seeks an unavailable remedy.
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`According to Opposer, both it and the public would be damaged by the registration of the
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`Applicant’s Mark. But the remedy for damage after a certificate of registration is issued is
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`petitioning for the cancellation of that registration, not instituting an opposition proceeding.
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`For all of these reasons, the Opposition should be dismissed.
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`RELEVANT FACTS
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`As noted in the Application, Applicant is a state agency of the Commonwealth of
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`Virginia. See also Va. Code § 23.1-2901 (establishing State Board for Community Colleges to be
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`known as the Virginia Community College System), a copy of which is attached as Exhibit A.
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`Applicant owns and operates, as divisions, 23 community colleges in Virginia with 40 campus
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`4
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`locations. Each of the 23 community colleges has one or more trademarks associated with it
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`(e.g., Blue Ridge Community College, which has been in use since 1967, BRIGHTPOINT
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`COMMUNITY COLLEGE, Reg. No. 6908597, which has been in use since July 2022,
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`LAUREL RIDGE COMMUNITY COLLEGE, Reg. No. 6914470, which has been in use since
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`July 2022, and Mountain Empire Community College, which has been in use since 1982 and the
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`Applicant’s Mark challenged in the Opposition). Applicant believes it is entitled to use
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`Applicant’s Mark in commerce, has a bona fide intent to do so and did as of the filing date of the
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`Application, and that the facts in the Application were accurate. On November 3, 2022,
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`Applicant filed an Amendment to Allege Use of Applicant’s Mark claiming a date of first use of
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`July 5, 2022. The Application was approved for publication on December 12, 2022. A week
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`later, on December 19, 2022, Opposer filed applications to register both of its marks.
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`Opposer alleges that it “is a nationally-known nonprofit organization offering educational
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`and training services in the United States and internationally.” Opp’n ¶1. Opposer also alleges
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`that it offers these “educational services, namely, providing courses of instruction at the post-
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`secondary level and distribution of course material in connection therewith,” under the word
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`marks MOUNTAIN GATEWAY (“Opposer’s Primary Mark”) and MOUNTAIN GATEWAY
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`ACADEMY (the “Academy Mark”). Id. at ¶2. Opposer filed several applications to register
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`Opposer’s Primary Mark for various goods and services in classes 9, 16, 25, 35, 36, 41, and 45,
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`and to register the Academy Mark for educational services in Class 41. Id. at ¶¶3–4. Opposer
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`also asserts that it has common law rights in both Opposer’s Primary Mark and the Academy
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`Mark, which it purportedly began using before the Application was filed. Id. at ¶¶11–12.
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`Opposer claims “widespread and continuous use” of its marks, but does not identify any specific
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`date of use or the geographic market(s) in which these common law rights purportedly exist. Id.
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`5
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`at ¶¶11–12. Opposer also asserts that Opposer’s Primary Mark enjoys “a high degree of public
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`recognition” and is “famous within the meaning of Section 43(c)[.]” Id. at ¶17.
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`APPLICABLE LAW
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`In deciding a motion to dismiss for lack of subject matter jurisdiction under Rule
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`12(b)(1), all factual allegations are assumed to be true and all reasonable inferences are drawn in
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`the pleader’s favor. Langley v. United States, 716 F. App’x 960, 962 (Fed. Cir. 2017) (citing
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`Henke v. United States, 60 F.3d 795, 797 (Fed. Cir. 1995)); Corporacion Habanos SA v.
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`Rodriguez, 99 USPQ2d 1873, 1874 (TTAB 2011). According to the Federal Circuit, under a
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`Rule 12(b)(1) motion, the plaintiff bears the burden to show by a preponderance of the evidence
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`that the district court has subject matter jurisdiction. Toxgon Corp. v. BNFL, Inc., 312 F.3d
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`1379, 1383 (Fed. Cir. 2002).
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`Unlike a motion to dismiss under Rule 12(b)(1), a motion to dismiss under Rule 12(b)(6)
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`for failure to state a claim upon which relief can be granted is a test solely of the legal
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`sufficiency of the allegations in a complaint. See Lewis Silkin LLP v. Firebrand LLC, 129
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`USPQ2d 1015, 1016 (TTAB 2018) (citing Young v. AGB Corp., 152 F.3d 1377, 47 USPQ2d
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`1752, 1754 (Fed. Cir. 1998)); TBMP § 503.02. To state a claim upon which relief can be
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`granted, and thus survive a motion to dismiss under Rule 12(b)(6), “a plaintiff need only allege
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`such facts as would, if proved, establish that (1) the plaintiff has standing to maintain the
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`proceedings, and (2) a valid ground exists for opposing the mark.” See Fair Indigo LLC v. Style
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`Conscience, 85 USPQ2d 1536, 1538 (TTAB 2007).
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`Rule 8(a)(2), applicable to Board proceedings under Trademark Rule 2.116(a), 37 C.F.R.
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`§ 2.116(a), requires that a pleading contain a “short and plain statement of the claim showing that
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`the pleader is entitled to relief.” This Trademark Rule requires more than labels, conclusions,
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`6
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`formulaic recitations of the elements of a cause of action, or naked assertions. Ashcroft v. Iqbal,
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`556 U.S. 662, 678 (2009). Indeed, “a complaint must contain sufficient factual matter, accepted
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`as true, to ‘state a claim to relief that is plausible on its face.”’ Id. (quoting Bell Atl. Corp. v.
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`Twombly, 550 U.S. 544, 570 (2007)); see also Lewis Silkin LLP, 129 USPQ2d at 1016; TBMP §
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`309.03(a)(2).
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`In the context of an inter parties proceeding before the Board, an opposer needs to allege
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`factual matter to suggest that its claim is plausible and to “raise a right to relief above the
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`speculative level.” Twombly, 550 U.S. at 555–56. But “[t]hreadbare recitals of the elements of a
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`cause of action, supported by mere conclusory statements, do not suffice.” Iqbal, 556 U.S. at
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`678. Plausibility differs from probability in that it requires “more than a sheer possibility that a
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`defendant has acted unlawfully.” Id. “Where a complaint pleads facts that are ‘merely
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`consistent’ with defendant’s liability, it ‘stops short of the line between possibility and
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`plausibility of entitlement to relief.’” Id. (quoting Twombly, 550 U.S. at 557). Therefore, to
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`survive a motion to dismiss for failure to state a claim, an opposer must allege facts sufficient to
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`state all the elements of its claim. See, e.g., Fair Indigo, 85 USPQ2d at 1538 (“The elements of
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`each claim should be stated concisely and directly, and include enough detail to give the
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`defendant fair notice.”) (citing Fed. R. Civ. P. 8(e)(1)).
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`In reviewing a motion to dismiss under Rule 12(b)(6), the Board also accepts as true all
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`of the opposer’s well-pleaded allegations and construes the opposition in the light most favorable
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`to the opposer. See Advanced Cardiovascular Sys. Inc. v. SciMed Life Sys. Inc., 988 F.2d 1157,
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`26 USPQ2d 1038, 1041 (Fed. Cir. 1993); McDermott v. San Francisco Women’s Motorcycle
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`Contingent, 81 USPQ2d 1212 (TTAB 2006). While the Board generally may not consider
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`matters outside the pleadings on a motion to dismiss for failure to state a claim, it may consider
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`such materials on a motion to dismiss for lack of subject matter jurisdiction without converting
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`the motion to one for summary judgment. Arbaugh v. Y&H Corp., 546 U.S. 500, 514 (2006).
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`There can be no dispute that Applicant is an agency of the Commonwealth of Virginia.
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`ARGUMENT
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`THE OPPOSITION SHOULD BE DISMISSED WITH PREJUDICE BECAUSE IT
`IS BARRED BY SOVEREIGN IMMUNITY
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`A.
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`It is well established that states enjoy immunity from lawsuits brought by private parties
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`as a “fundamental aspect of the sovereignty which the States enjoyed before the ratification of
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`the Constitution, and which they retain today.” Alden v. Maine, 527 U.S. 706, 713 (1999).
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`Sometimes referred to as Eleventh Amendment immunity, “the sovereign immunity of the States
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`neither derives from nor is limited by, the terms of the Eleventh Amendment.” Id. “The
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`preeminent purpose of state sovereign immunity is to accord States the dignity that is consistent
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`with their status as sovereign entities,” while collaterally “serv[ing] the important function of
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`shielding state treasuries.” Fed. Mar. Comm’n v. S.C. State Ports Auth., 535 U.S. 743, 760
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`(2002). This immunity applies not only to proceedings brought by a private party in an Article
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`III forum but also to agency adjudications brought by private parties. Id. at 760. Inter parties
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`proceedings before the Board are exactly the sort of adjudications to which this immunity
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`applies. See TBMP § 502.01 (highlighting some differences in district court proceedings but
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`acknowledging similarities). Notwithstanding the applicability of sovereign immunity in this
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`matter, it is not absolute. As the Seventh Circuit has observed:
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`Two exceptions are potentially relevant to this case. First, Congress can authorize
`suits against the states by exercising its power to enforce the Fourteenth
`Amendment to the Constitution, this exception recognizes that the Fourteenth
`Amendment, ratified more than 70 years after the Eleventh Amendment,
`represents a fundamental reorganization of our federal system and a limitation on
`the sovereign power of the states. Second, a state may voluntarily waive its
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`sovereign immunity by consenting to federal jurisdiction explicitly or by invoking
`that jurisdiction through its behavior.
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`Bd. Of Regents of Univ. Of Wisconsin Sys. V. Phoenix Int’l Software, Inc., 653 F.3d 448, 457–58
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`(7th Cir. 2011). Neither exception applies to this matter.
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`
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`There is no need to examine congressional abrogation. See id. at 458 (discussing case
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`law foreclosing abrogation of a state’s immunity under the Trademark Remedy Clarification Act
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`and its sister statute for patent infringement that the Supreme Court found unconstitutional in
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`Coll. Sav. Bank v. Fla. Prepaid Postsecondary Educ. Expense Bd., 527 U.S. 666, 691 (1999)).
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`As the Supreme Court held over twenty years ago “the power ‘to regulate Commerce’ conferred
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`by Article I of the Constitution gives Congress no authority to abrogate state sovereign
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`immunity.” Coll. Sav., 527 U.S. at 672. More recently, in Allen v. Cooper, the Supreme Court
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`upheld the sovereign immunity of North Carolina in a copyright case, 206 L. Ed. 2d 291, 140 S.
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`Ct. 994, 999 (2020), invalidating a federal statue, id., 140 S. Ct. at 1007. “In our constitutional
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`scheme, a federal court may not hear a suit brought by any person against a nonconsenting
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`State.” Id., 140 S. Ct. at 1000. Assuming an ability to state a claim not present here, Opposer
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`may be able to seek relief elsewhere, but not before the Board.
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`
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`Nor can Opposer allege that Applicant has waived its sovereign immunity. While
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`Opposer may argue Applicant’s decision to seek a federal trademark registration amounts to
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`constructive waiver, the Supreme Court rejected this argument in the patent context. See Coll.
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`Sav., 527 U.S. at 680–84; see also Bd. Of Regents, 653 F.3d at 460 (“Participation in the
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`trademark system is not the sort of conduct that voluntarily invokes the jurisdiction of the federal
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`courts.”). It also cannot be argued that Applicant voluntarily waived its immunity by being
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`hailed before the Board in this matter. Indeed, as the Federal Circuit has held, there is no waiver
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`when a state simply defends against a Lanham Act claim in federal court. See State Contracting
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`& Eng’g Corp. v. Florida, 258 F.3d 1329, 1336 (Fed. Cir. 2001).
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`In the absence of any congressional abrogation or waiver by Applicant, the sovereign
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`immunity available to Applicant in a federal district court proceeding should equally apply to
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`this tribunal. Accordingly, the Opposition should be dismissed with prejudice pursuant to Rule
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`12(b)(1) as barred by the well-established doctrine of sovereign immunity.
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`B.
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`THE OPPOSITION SHOULD BE DISMISSED BECAUSE IT FAILS TO STATE
`A CLAIM FOR WHICH RELIEF MAY BE GRANTED
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`1.
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`SOVEREIGN IMMUNITY PRECLUDES OPPOSER’S CLAIMS AGAINST
`APPLICANT
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`Sovereign immunity precludes Opposer from stating any claim against Applicant before
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`this Board. As explained above, in the absence of either congressional abrogation or waiver by
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`Applicant, there can be no cause of action against Applicant. Therefore, the Opposition cannot
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`state a claim for which relief can be granted and should be dismissed under Rule 12(b)(6). See,
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`e.g., Massey v. Wheeler, 221 F.3d 1030, 1034 (7th Cir. 2000) (upholding dismissal of FTCA
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`claims due to a sovereign immunity defense under Rule 12 (b)(6)).
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`2.
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`CLAIMS 1 AND 2 FAIL TO STATE A CLAIM FOR WHICH RELIEF
`MAY BE GRANTED
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`a.
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`OPPOSER FAILED TO PLEAD SUFFICIENT FACTS THAT IT
`HAS PRIORITY
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`To succeed on a claim under Section 2(d) of the Lanham Act, an opposer must first
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`establish its own prior proprietary rights in a trademark alleged to be confusingly similar to the
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`applicant’s mark. This is typically done by alleging that the opposer used its mark in commerce
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`prior to the applicant’s priority date. Indeed, “[i]t is axiomatic in trademark law that ownership
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`of a mark is predicated on priority of use in commerce.” Lyons v. American College of
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`10
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`Veterinary Sports Medicine and Rehabilitation, 859 F.3d 1023, 1027 (Fed. Cir. 2017); Hana
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`Financial, Inc. v. Hana Bank, 574 U.S. 418, 419 (2015) (“Rights in a trademark are determined
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`by the date of the mark’s first use in commerce”).
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`In this case, Opposer fails to set forth a plausible claim for relief because it has failed to
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`assert any facts showing that Opposer acquired trademark rights in either Opposer’s Primary
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`Mark or the Academy Mark prior to Applicant’s filing date of September 7, 2021. Opposer has
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`not alleged that it owns a prior registration or a previously filed application for its marks.
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`Opposer also fails to identify the specific date or location of any such common law use of its
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`mark. Instead, Opposer merely asserts that it has common law rights in both of its marks. Opp’n
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`¶¶11–12.
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`Notably, Opposer fails to allege it has used either of its marks in commerce prior to
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`Applicant’s filing date or Applicant’s first use of its mark. The Opposition does not contain any
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`allegations that could be reasonably inferred as alleging prior use in commerce. That is to say,
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`Opposer fails to assert that it used its marks in connection with the provision of services or goods
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`to the public prior to September 7, 2021. Indeed, Opposer has neither specifically alleged any
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`date that it used its marks prior to Applicant’s filing date, nor has it alleged where it was using
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`the marks. Opposer’s failure to include a specific date, or any reference to a date, or where it
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`used its marks is fatal.2
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`Opposer does allege in Paragraph 1 that it is “nationally-known” and offers its services
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`“in the United States and internationally[,]” but it fails to allege where it uses either of its marks
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`or that either mark was used in any particular geographic market in the United States. See
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`2 Opposer’s hesitancy to be transparent is likely the result of the acknowledgement that
`Applicant enjoys priority due to its prior use of MOUNTAIN EMPIRE.
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`11
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`United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90, 100 (1918) (“It would be a perversion
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`of the rule of priority to give it such an application in our broadly extended country that an
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`innocent party who had in good faith employed a trade-mark in one state, and by the use of it had
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`built up a trade there, being the first appropriator in that jurisdiction, might afterwards be
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`prevented from using it, with consequent injury to his trade and good will, at the instance of one
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`who theretofore had employed the same mark, but only in other and remote jurisdictions, upon
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`the ground that its first employment happened to antedate that of the first-mentioned trader.”).
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`Paragraphs 11 and 12 assert Opposer used its marks “before the date of the [] Application[,]” but
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`does not indicate any date when that use began. These same paragraphs assert that Opposer’s
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`common law rights are based on “widespread and continuous use,” but do not indicate where or
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`when such use occurred. Likewise the assertions in Paragraph 17 that Opposer’s Primary Mark
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`has been in use “for over a decade” and “resulted in a high degree of public recognition” fail to
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`identify when and where it was using this mark. And although the Opposition cites to several
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`pending applications to register Opposer’s mark, none of the allegations in the Opposition
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`indicate the date of first use for either of the marks.
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`Even accepting all of the allegations in the Opposition as true, Opposer failed to plead
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`that it used its marks in commerce prior to the filing date of the Application or where any of its
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`purported common law rights exist. Therefore, Opposer failed to plead a plausible claim of
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`priority under Section 2(d) of the Lanham Act, and the Opposition should be dismissed. See,
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`e.g., Southeast. Clinical Nutrition Centers, Inc. v. Mayo Found. for Med. Educ. & Rsch., 135 F.
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`Supp. 3d 1267, 1274 (N.D. Ga. 2013) (dismissing complaint where plaintiff failed to allege date
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`of first use despite its trademark applications including such dates).
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`12
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`b.
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`OPPOSER FAILED TO ALLEGE A CAUSE OF ACTION FOR
`DILUTION
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`To state a claim for dilution under Section 43(c) of the Lanham Act, 15 U.S.C. § 1127(c),
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`an opposer must plead that its mark is famous, that its mark became famous prior to the date of
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`applicant’s use or constructive use date, and that applicant’s mark is likely to cause dilution by
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`blurring or tarnishing the distinctiveness of opposer’s mark. Nike Inc. v. Maher, 100 USPQ2d
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`1018, 1023 (TTAB 2011). Under Section 43(c), fame for dilution purposes requires recognition
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`of the mark “by the general consuming public.” 15 U.S.C. § 1127(c)(2)(A).
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`Here, Opposer’s mere reference to the standard for fame identified in Section 43(c) of the
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`Lanham Act is insufficient to support a claim of dilution by blurring or tarnishment. Section
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`43(c) defines a mark as famous “if it is widely recognized by the general consuming public of
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`the United States as a designation of source of the goods or services of the mark’s owner.” 15
`
`U.S.C. § 1125(c)(2)(A). Opposer fails to plead sufficient facts that, if proven, would establish
`
`that Opposer's Primary Mark is widely recognized by the general consuming public in the United
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`States. See, e.g., Coach Servs. Inc., v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d
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`1713, 1724 (Fed. Cir. 2012) (for purposes of dilution “[a] famous mark is one that has become a
`
`household name”). Alleging that the Opposer’s Primary Mark enjoyed “a high degree of public
`
`recognition” and was “famous within the meaning of Section 43(c)[,]” is conclusory and
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`insufficient to survive a motion to dismiss for failure to state a claim. See Iqbal, 556 U.S. at 678.
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`Section 43(c) also notes two types of dilution: dilution by blurring or dilution by
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`tarnishment. Id. The Opposition, however, alleges no facts from which it could be concluded
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`that the registration of Applicant’s Mark would likely dilute the Opposer’s purportedly famous
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`Primary Mark by either method.
`
`13
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`

`

`Section 43(c) also identifies several factors to consider in evaluating a claim for dilution
`
`by blurring or tarnishment, including:
`
`(i)
`
`(ii)
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`The duration, extent, and geographic reach of advertising and publicity of the
`mark, whether advertised or publicized by the owner or third parties.
`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.
`
`
`Id. The Opposition fails to allege any facts that would support any of these relevant factors. But
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`even if it did, “[t]hreadbare recitals of the elements of a cause of action, supported by mere
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`conclusory statements, do not suffice.” Iqbal, 556 U.S. at 678.
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`Moreover, Section 43(c) is concerned only with damage to famous marks, not alleged
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`damage to the Opposer or the public. Assertions that Applicant’s Mark will “harm and damage
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`[Opposer] and the public[,]” do not support finding that Claim 2 alleges sufficient facts to state a
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`claim for dilution under Section 43(c). Thus, it should be dismissed under Rule 12(b)(6).
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`3.
`
`CLAIM 3 FAILS TO STATE A CLAIM FOR LACK OF A BONA FIDE
`INTENT TO USE THE APPLICANT’S MARK
`
`
`
`Opposer incorrectly pleads an evidentiary standard in an effort to establish a lack of bona
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`fide intent in support of its Opposition. In essence, Opposer asserts that because Applicant filed
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`several intent to use applications for other marks on the same day it filed the Application and
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`never made a bona fide use of those other marks, it does not currently possess evidence of a bona
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`fide intent to use the Applicant’s Mark. Opp’n ¶¶19–21. The Board has held that the absence of
`
`any documentary evidence regarding an applicant’s bona fide intention to use a mark in
`
`commerce can be sufficient to prove that an applicant lacks such intention; however, here such
`
`an argument is both premature and contradicted by the Amendment to Allege Use filed by
`
`Applicant. Boston Red Sox Baseball Club Ltd. P’ship v. Sherman, 88 USPQ2d 1581, 1587
`
`(TTAB 2008) (citing Commodore Elecs. Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503, 1507
`
`14
`
`

`

`(TTAB 1993)). Whether an applicant has a bona fide intention to use a mark in commerce is an
`
`objective determination based on the totality of the circumstances. See M.Z. Berger & Co. v.
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`Swatch AG, 787 F.3d 1368, 114 USPQ2d 1892, 1898 (Fed. Cir. 2015); Swiss Grill Ltd. v. Wolf
`
`Steel Ltd., 115 USPQ2d 2001, 2008 (TTAB 2015). Indeed, issues as to bona fide intent are not
`
`appropriate at the pleading stage, but even if they were, Opposer does not and cannot allege
`
`Applicant did not have a bona fide intent to use Applicant’s Mark.
`
`In addition, Opposer’s argument is unsubstantiated, as 15 U.S.C. § 1051(b) does not
`
`require supplemental documentation to establish a bona fide intent to use an applied-for mark.
`
`All that is required is that the applicant pay the prescribed fee and file an application with a
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`verified statement of its belief that it is entitled to use the applied-for mark, has a bona fide intent
`
`to do so, the application is factually accurate, and it does not know or believe that use of the
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`applied-for mark would result in a likelihood of confusion. Id.
`
`Opposer only alleges that Applicant did not make a bona fide use of the marks in other
`
`applications, which are not at issue in this proceeding. Opp’n ¶20. Other than the conclusory
`
`allegation that Applicant did not have a bona fide intent to use the Applicant’s Mark and does
`
`not have any documentary evidence thereof, the Opposition does not allege any facts concerning
`
`the Applicant’s intent to use or not to use the Applicant’s Mark. Here, Applicant’s filing of an
`
`Amendment to Allege Use for the Applicant’s Mark, prior to Opposer’s filing of its own
`
`applications or this Opposition, contradicts Opposer’s allegation that Applicant has no bona fide
`
`intent to use its mark in commerce. For this reason, the Opposition fails to state a claim for
`
`which relief can be granted and should be dismissed under Rule 12(b)(6).
`
`
`
`
`
`15
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`

`

`4.
`
`OPPOSER’S CLAIM THAT IT OR THE PUBLIC WILL BE DAMAGED
`BY THE ISSUANCE OF A CERTIFICATE OF REGISTRATION FOR
`APPLICANT’S MARK IS NOT A RECOGNIZED CAUSE OF ACTION
`
`In the conclusion of the Opposition, Opposer asserts that both it and the public would be
`
`damaged by the registration of the Applicant’s Mark because it “would constitute prima facie
`
`evidence of the validity of such registration, Applicant’s ownership of the mark, and Applicant’s
`
`exclusive right to use the mark . . . .” Opp’n ¶22. But 15 U.S.C. § 1063(b) dictates that a
`
`certificate of registration “shall” be issued “[u]nless registration is successfully opposed[.]”
`
`Issuance of a certificate of registration for Applicant’s Mark, therefore, presupposes that the
`
`Opposition was not successful. This is a logical paradox for Opposer. Moreover, Opposer
`
`cannot state a cause of action on behalf of the public. Indeed, 15 U.S.C. § 1063 does not provide
`
`a cause of action for a person to initiate an opposition to prevent damage to the public, but rather
`
`only someone that believes it will be damaged by the registration of the applied-for mark.
`
`In summary, the Opposition should be dismissed under Rule 12(b)(1) because it is barred
`
`by the doctrine of sovereign immunity, which also precludes Opposer’s claims under Rule
`
`12(b)(6). But even if sovereign immunity did not apply, the Opposition also should be dismissed
`
`under Rule 12(b)(6) because it fails to alleged sufficient facts for which the relief requested may
`
`be granted.
`
`CONCLUSION
`
`
`
`WHEREFORE, Applicant re