IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
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`In the Matter of United States Trademark Registration No. 2,737,029
`Owned by Linda Rodman, issued on July 15, 2003
`For the mark DUBS for "land vehicle parts, namely wheels" in Class 012
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`AUTO ACUITY, LLC
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`Cancellation No. 92045710
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`Petitioner,
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`MOTION TO DISMISS
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`VS.
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`RODMAN, LINDA
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`Registrant.
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`Registrant moves for dismissal of Petitioner's Petition to Cancel for lack of standing.
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`I.
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`INTRODUCTION
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`Petitioner has failed to plead facts sufficient to show a personal interest in the outcome of
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`this proceeding beyond that of the general public. Petitioner's own trademark registrations
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`and/or pending applications have not been rejected or restricted by Registrant's registration.
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`Petitioner neither alleges likelihood of confusion or any other sufficient basis for future personal
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`damage. Petitioner therefore lacks standing and Registrant moves for dismissal of the Petition to
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`Cancel.
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`II.
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`LEGAL STANDARDS REGARDING STANDING
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`"For a petitioner to prevail in a cancellation proceeding, it is incumbent upon that party to
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`show .
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`.
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`. that it possesses standing to challenge the continued presence on the register of the
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`subject registration .
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`.
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`.
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`." Lipton Indus., Inc. v. Ralston Purina C0., 670 F.2d 1024, 1026
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`(C.C.P.A. 1982). Standing requires that the petitioner is suffering an "injury in fact," which must
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`be ''concrete “and particularized" and "actual or imminent, not conjectural or hypothetical."
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`Bennett v. Spear, 520 U.S. 154, 167 (1997). The petitioner must also show a "causal connection"
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`between the injury and the registrant's registration, i.e., the injury must be fairly traceable to the
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`registration, and that it is "likely, as opposed to merely speculative, that the injury will be
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`redressed by a favorable decision.
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`Id. Moreover, a party may not raise the claims of a third
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`party' or of the general public.2 See, e.g., Sierra Club v. Morton, 405 U.S. 727, 732-740 (1972).
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`Finally, a party must raise a claim within the zone of interest protected by the statute in question.
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`Assoc. ofData Processing Serv. 0rgs., Inc. v. Camp, 397 U.S. 150, 153 (1970).
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`Here,
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`the statute in question is the Lanham Act.
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`Section 14 grants standing in a
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`cancellation proceeding to petitioners who have been damaged by a trademark registration, or
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`have a good faith belief that they will be damaged in the future by the registration. See 15
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`U.S.C. § 1064. A typical past or present damage caused by a registration is the rejection of the
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`petitioner's trademark application(s) based on the registrant's registration. See Lipton, 670 F.2d
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`at 1029. An allegation of future damage is typically based on an allegation of likelihood of
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`confusion between the registrant's registration and the petitioner's marks. See id.
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`"The question of standing is to be determined upon the well-pleaded allegations of the
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`complaint .
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`.
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`."3 Id. at 1027. "A party's pleading lays the foundation for standing." Id. at 1028.
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`"Thus, if it does not plead facts sufficient to show personal interest in the outcome beyond that of
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`the general public, the case may be dismissed for failure to state a claim." Id. However "[a]
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`petitioner's allegations alone do not establish standing." Id. Moreover, only allegations that have
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`been made in good faith may be used to establish standing. See id. at 1027.
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`III.
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`APPLICATION OF LAW TO FACTS
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`Registrant's registration claims the word mark "DUBS" for "land vehicle parts, namely
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`wheels." See U.S. Trademark Registration No. 2,737,029. The Petitioner is the Applicant of
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`' This is also known as jus tertii. See, e.g., Henry Mogahan, Third Party Standing, 84 COLUM. L.
`REV. 277, 278 n.6 (1984).
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`.
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`2 This is also known as the prohibition of "generalized grievances." See Warth v. Seldin, 422
`U.S. 490, 499 (1975); see also Lujan v. Defenders of Wildlife, 504 U.S. 555, 574-75 (1992)
`(discussing the prohibition of "taxpayer suits").
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`3 This is also known as the "well-pleaded complaint rule." See, e.g., ERWIN CHEMERINSKY,
`FEDERAL JURISDICTION 274 (3d ed. 1999) (citing Louisville & Nashville R.R.. Co. v. Mottley, 211
`U.S. 149 (1908)).
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`-2-
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`:7
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`pending U.S. Trademark Application Serial No. 78/589,728 for "GET DUBS," designating
`automobile parts and accessories, but not including wheels. Petitioner's Application has been
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`allowed for publication for opposition, i.e., Registrant's registration has not caused rejection of
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`Petitioner's Application. Registrant has not moved to oppose Petitioner's Application either.
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`Hence, Petitioner's trademark rights have not been damaged by Registrant's registration.
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`Moreover, Petitioner has not pleaded likelihood of confusion between Registrant's
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`Registration and Petitioner's Application, or other marks used by Petitioner. Hence, Petitioner
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`has not alleged any future damages to its trademark rights caused by Registrant's registration
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`either.
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`With regard to Petitioner's claimof genericness, Petitioner has no good-faith basis for its
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`allegation that the term "DUBS" is generic for "wheels." See Pet. to Cancel at 2-3. Even if
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`accepting the hearsay statements contained in Petitioner's unauthenticated exhibits as true,
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`Petitioner's exhibits only allege that there are some people in some geographic areas who use a
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`slang word to refer to one specific type of rim of a size of twenty inches in diameter.
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`In fact,
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`from the material provided by petitioner,
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`it appears that "dub" is a drug culture slang
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`abbreviation for "double dime bag of marijuana" and stands for the number 20, rather than for
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`the term "wheel." See Pet. to Cancel, Ex. B., at 3.4 If any slang term used by a drug dealer or
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`user somewhere in the United States for one specific variant of a good were enough to invalidate
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`a federal trademark registration, there would probably not be many registrations left.
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`In short,
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`even if one accepted all of Petitioner's unauthenticated hearsay exhibits as true, they would not
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`prove genericness. See, e.g., NetSpeak Corp. v. Columbia Telecomm. Group, Inc., Opp. No.
`91110328, 2004 TTAB LEXIS 309, at *27-*28 (T.T.A.B. 2004) (holding that "[t]here is a high
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`standard to find a term generic" and that petitioner's dictionary definitions and articles from
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`printed publications were not enough to "establish[], by a preponderance of the evidence," that
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`4 Unfortunately, Petitioner has failed to consecutively number the pages contained within its
`exhibits. Registrant is referring to the third consecutive page found in Registrant's Exhibit B,
`which shows the first page of an unauthenticated copy of an article that was apparently printed
`off the New York Times web site.
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`-3-
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`O
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`the mark at issue was generic and should be cancelled on that basis). Hence, Petitioner's
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`allegation of genericness lacks a good-faith basis and is therefore not available to establish
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`standing either. See N0belle.com, LLC v. Qwest Communications Int’l, Inc., 66 U.S.P.Q.2d
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`1300, 1304 (T.T.A.B. 2003)
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`(finding petitioner's allegations of personal
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`injury based on
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`descriptiveness or genericness of the registered mark not sufficient to establish standing).
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`IV.
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`CONCLUSION
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`Since Petitioner has not been damaged by Registrant's registration and has failed to allege
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`a sufficient basis for likely future damage by Registrant's registration, Registrant respectfially
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`requests that Petitioner's Petition to Cancel be dismissed.
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`DATED: May 25, 2006
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`Respectfully submitted,
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`By ¢ fl
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`Edward R. Schwartz
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`2
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`CHRISTIE, PARKER & HALE, LLP
`350 West Colorado Blvd., Suite 500
`Post Office Box 7068
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`Pasadena, California 91109-7068
`Phn: (626) 795-9900
`Fax: 626-577-8800
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`Attorneys for Registrant,
`Rodman, Linda
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`MSG PAS684246.1-*-05/25/06 3:30 PM
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`

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`Docket No. 110.2*1/M522
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`CERTIFICATE OF MAILING AND SERVICE
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`I certify that on May 25, 2006, the foregoing MOTION TO DISMISS is being deposited
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`with the United States Postal Service by first-class mail addressed to:
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`Commissioner for Trademarks
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`P.O. Box 145 1
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`Alexandria, VA 22313-1451
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`It is further certified that on May 25, 2006, the foregoing MOTION TO DISMISS is
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`being served by mailing a copy thereof by first-class mail addressed to:
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`Tsan Abrahamson
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`Cobalt, LLP
`819 Bancroft Way
`Berkley, CA 94710
`Attorneys for Petitioner, Auto Acuity, LLC
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`By
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`Melissa McLaren
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`Christie, Parker & Hale, LLP
`P.O. Box 7068
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`Pasadena, CA 91109-7068
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`MMM PAS684327.1-*-05/25/06 5:05 PM