UNITED STATES PATENT AND TRADEMARK
`OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
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`BUTLER
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`Mailed: August 13, 2008
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`Cancellation No. 92049013
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`CONTESSA PREMIUM FOODS, INC.
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`v.
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`INA GARTEN LLC, substituted for
`GARTEN FOOD CORPORATION1
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`Before Seeherman, Grendel and Kuhlke, Administrative Trademark
`Judges.
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`By the Board:
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`Petitioner seeks to cancel respondent’s registration for the
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`mark BAREFOOT CONTESSA for, inter alia, food products and beverages
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`in Classes 29, 30, 31, and 32.2 Petitioner alleges fraud in the
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`procurement of respondent’s registration as grounds for the
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`complaint. This case now comes up on respondent’s fully briefed
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`motion, filed April 28, 2008, to dismiss or, alternatively, for a
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`more definite statement. Contemporaneously with its motion,
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`respondent filed its answer denying the salient allegations of the
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`petition to cancel.3
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`1 In view of the assignment recorded at Reel 3750, Frame 0833, Ina Garten LLC
`is hereby substituted for Garten Food Corporation and the caption of this
`proceeding is so amended. See TBMP §512.01 (2d ed. rev. 2004).
`2 Registration No. 2892226, issued on October 12, 2004, claiming first use
`anywhere and first use in commerce as of 1978 (Class 35). The mark is also
`registered for “retail stores services featuring gourmet foods and books” in
`Class 35. However, the petition to cancel does not include Class 35.
`3 Contrary to petitioner’s position, a motion to dismiss is considered timely
`even if filed contemporaneously with an answer. See TBMP §503.01 (2d ed. rev.
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`Cancellation No. 92049013
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`Petitioner, after asserting that it is being damaged by
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`respondent’s registration, alleges as follows:
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`1.
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`2.
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`3.
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`4.
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`5.
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`Garten Food Corporation (“GFC”) is the listed owner
`of United States Trademark Registration No. 2,892,226
`(“the ‘226 Registration”) for BAREFOOT CONTESSA. The
`goods identified in the ‘226 registration are “dips,
`namely, vegetable, yogurt, fish and herb based dips;
`hummus, chili, stews ribollita, soups, namely,
`gazpacho and chowders; salads except macaroni, rice
`and pasta; cranberry sauce; apple sauce, dried
`fruits, processed nuts, candied nuts, snack mix
`consisting primarily of processed fruits, processed
`nuts and/or raisins; processed peas with wasabi
`flavoring” in International Class 029, and “vegetable
`strudel, vegetable cobblers, spring rolls, coffee,
`bread crumbs, croutons, granola, cakes, namely sour
`cream coffee cake; candy, namely, strawberry flavored
`laces; quesadilla, salsa” in International Class 030,
`and “fresh vegetables and fresh nuts” in
`International Class 031, and “orange juice,
`grapefruit juice, lemonade; non-alcoholic cocktail
`mixes” in International Class 032. The ‘226
`Registration has a filing date of November 22, 2006
`(sic)4 and an issuance date of October 12, 2004.
`GFC is not entitled to continued registration of the
`‘226 Registration because GFC committed fraud in the
`procurement of that registration.
`Contessa alleges on information and belief that GFC
`or its agent made material representations of fact in
`its application and/or during the prosecution of its
`application, that GFC knew or should have known were
`false.
`Contessa alleges on information and belief that GFC
`was not using the subject mark of the ‘226
`Registration on all of the goods identified in the
`registration at the time it filed the Use-Based
`application or when it may have submitted any other
`subsequent and relevant declaration of use during the
`prosecution of the application.
`Contessa alleges on information and belief that GFC
`or its agent made these false statements with the
`intent to induce authorized agents of the United
`States Patent and Trademark Office to grant the ‘226
`Registration, and, reasonably relying upon the truth
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`2004). Thus, petitioner’s objection that respondent’s motion is untimely is
`overruled.
`4 The filing date of the underlying application was November 22, 2000.
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`2
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`Cancellation No. 92049013
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`of said false statements, the PTO did, in fact, grant
`this registration to GFC.
`The continuous registration of the subject mark of
`the ‘226 Registration is causing injury to Contessa’s
`business plans, is impairing Contessa’s rights in its
`own trademarks for CONTESSA, is inconsistent with
`Contessa’s rights, and will continue to cause injury
`to Contessa until the registration is cancelled.
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`6.
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`In support of its motion, respondent argues that petitioner has
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`not sufficiently alleged its standing because petitioner fails to
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`allege it is using the same or similar mark on the same or related
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`goods and services; and because petitioner’s general allegation of
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`injury does not aver how any marks petitioner owns are impaired, or
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`any business plans of petitioner are impacted, by the existence of
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`respondent’s registration. As to petitioner’s fraud claim,
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`respondent argues that petitioner proffers vague and conclusory
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`allegations which do not meet the heightened pleading requirements
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`of Fed. R. Civ. P. 9(b), and that the petition to cancel, as it
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`stands, would allow petitioner to go on an unlawful “fishing
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`expedition.” Respondent alternatively moves for a more definite
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`statement as to petitioner’s standing and the basis for the fraud
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`claim.
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`In response, petitioner argues that its allegation of injury is
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`sufficient to plead its standing because the allegation encompasses
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`its commercial interest in its own CONTESSA marks. Petitioner
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`argues that it specifically pled facts supporting its fraud claim at
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`paragraph Nos. 3-5 of the complaint. Alternatively, petitioner asks
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`for leave to amend the petition to cancel should the Board find the
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`pleading insufficient.
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`3
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`Cancellation No. 92049013
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`In reply, respondent argues that petitioner fails to provide
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`specificity for its fraud claim because it does not identify the
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`false representation and it does not identify the goods allegedly
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`not in use at the time of such representation. Pointing out that
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`its application was pending for four years before it registered,
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`respondent contends that “petitioner cannot simply canvas (sic) 4
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`years of correspondence with the USPTO with general allegations of
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`misrepresentation.” Similarly, pointing out that its mark is
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`registered for over 35 items, respondent argues that petitioner’s
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`failure to identify the specific goods upon which respondent
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`purportedly had no use “would create an opportunity for unfettered
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`discovery on use dates concerning every product covered by a
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`registration.” In addition, respondent argues that petitioner has
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`not identified any harm it has incurred as a result of respondent’s
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`purported conduct or any direct and personal stake in the outcome of
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`this proceeding.5
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`In order to withstand a motion to dismiss for failure to
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`state a claim upon which relief can be granted, a pleading need
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`only allege such facts as would, if proved, establish that the
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`plaintiff is entitled to the relief sought; that is, that (1) the
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`plaintiff has standing to maintain the proceeding, and (2) a
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`valid ground exists for opposing registration of applicant’s
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`mark. See Lipton Industries, Inc. v. Ralston Purina Co., 670
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`5 No consideration is given to respondent’s supplemental reply brief, filed
`June 23, 2008. Once a timely reply brief is filed, the Board will consider no
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`4
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`Cancellation No. 92049013
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`F.2d 1024, 213 USPQ 185 (CCPA 1982). For purposes of determining
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`a motion to dismiss for failure to state a claim upon which
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`relief can be granted, all of the plaintiff's well-pleaded
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`allegations must be accepted as true, and the complaint must be
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`construed in the light most favorable to the plaintiff. See
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`Advanced Cardiovascular Systems Inc. v. SciMed Life Systems Inc.,
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`988 F.2d 1157, 26 USPQ2d 1038 (Fed. Cir. 1993); Fed. R. Civ. P.
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`12(b)(6); and TBMP §503.02 (2d. ed. rev. 2004).
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`Turning first to petitioner’s allegations of standing, a
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`petition to cancel, stating the grounds relied thereon, may be
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`brought by any person who believes he is or will be damaged by
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`the registration of a mark. See Trademark Act §14. In order to
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`meet the standing requirement, a plaintiff need only show that it
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`has a real interest, a personal stake, in the outcome of the
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`proceeding. See Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d
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`1023 (Fed. Cir. 1999); and Jewelers Vigilance Committee Inc. v.
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`Ullenberg Corp., 823 F.2d 490, 2 USPQ2d 2021 (Fed. Cir. 1987).
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`Here, petitioner stated that it believes it is being damaged
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`by the continued registration of respondent’s mark. Petitioner
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`also alleged in paragraph No. 6 that it owns trademarks for the
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`term CONTESSA and that respondent’s registration impairs
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`petitioner’s trademark rights. Petitioner further alleged injury
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`to its business plan. However, petitioner has not articulated
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`the nature of its trademark rights or aspects of its business
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`further papers in support of or in opposition to a motion. See Trademark Rule
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`5
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`Cancellation No. 92049013
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`plan that it believes are affected. Thus, petitioner has not
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`alleged sufficient facts as to its damage that, if proven at
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`trial, would establish that it has a real interest in this case
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`beyond that of the general public and, thus, would establish
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`petitioner’s standing to maintain this proceeding.
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`We turn next to the sufficiency of petitioner’s fraud claim.
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`Fraud in the procurement of a registration is a valid, cognizable
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`ground for cancellation of a registration. See Trademark Act
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`§14(3); and Marshall Field & Co. v. Mrs. Fields Cookies, 25
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`USPQ2d 1321 (TTAB 1992). Fed. R. Civ. P. 9(b) provides that the
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`circumstances constituting the alleged fraud shall be stated with
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`particularity. See also King Automotive, Inc. v. Speedy Muffler
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`King, Inc., 667 F.2d 1008, 212 USPQ 801 (CCPA 1981). That is,
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`the time, place and contents of the false representations, the
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`facts misrepresented, and identification of what has been
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`obtained, shall be stated with specificity. See Saks, Inc. v.
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`Saks & Co., 141 USPQ 307 (TTAB 1964).
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`In view of the numerous items listed in the identification
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`of goods covering several international classes, we find that
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`petitioner’s claim of fraud is not set forth with particularity
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`because it does not identify the specific goods (the facts
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`misrepresented) for which applicant purportedly was not using its
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`mark either at the time it filed its application or when any
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`2.127(a).
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`6
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`Cancellation No. 92049013
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`other papers were filed asserting use of the mark for the
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`identified goods.
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`In view thereof, respondent’s motion to dismiss is well-
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`taken. However, if the allegations of fraud are not sufficiently
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`particularized, the proper remedy is not to dismiss the case, but
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`to require the pleader to amend to correct the deficiency. See
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`J. Thomas McCarthy, 3 McCarthy on Trademarks and Unfair
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`Competition §20:58 (2008). Moreover, upon a determination on a
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`motion to dismiss that the complaint fails to state a claim upon
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`which relief can be granted, the Board generally will allow the
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`plaintiff an opportunity to file an amended pleading. See TBMP
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`§503.03 (2d ed. rev. 2004).
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`Accordingly, petitioner’s alternative request for leave to
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`file an amended petition to cancel is granted. Petitioner is
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`allowed until THIRTY DAYS from the mailing date of this order in
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`which to file and serve its amended petition to cancel with
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`respect to its allegations of standing and with respect to its
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`fraud claim. Petitioner is reminded of its obligations under
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`Fed. R. Civ. P. 11. Consequently, the Board expects petitioner
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`to list only those goods as to which petitioner has a good faith
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`claim that respondent misrepresented its use of the mark.
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`Operative dates, including the due date for respondent’s answer,
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`are reset as follows:
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`Time to Answer
`Deadline for Discovery Conference
`Discovery Opens
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`10/15/2008
`11/14/2008
`11/14/2008
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`7
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`Cancellation No. 92049013
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`Initial Disclosures Due
`Expert Disclosures Due
`Discovery Closes
`Plaintiff's Pretrial Disclosures
`Plaintiff's 30-day Trial Period Ends
`Defendant's Pretrial Disclosures
`Defendant's 30-day Trial Period Ends
`Plaintiff's Rebuttal Disclosures
`Plaintiff's 15-day Rebuttal Period Ends
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`12/14/2008
`4/13/2009
`5/13/2009
`6/27/2009
`8/11/2009
`8/26/2009
`10/10/2009
`10/25/2009
`11/24/2009
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`In each instance, a copy of the transcript of testimony
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`together with copies of documentary exhibits, must be served on
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`the adverse party within thirty days after completion of the
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`taking of testimony. Trademark Rule 2.l25.
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`Briefs shall be filed in accordance with Rule 2.l28(a) and
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`(b). An oral hearing will be set only upon request filed as
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`provided by Trademark Rule 2.l29.
`☼☼☼
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