UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`
`
`
`
`
`
`
`
` Mailed: July 12, 2012
`
` Cancellation No. 92054059
`
`Robert Doyle
`
`
`v.
`
`Al Johnson’s Swedish
`Restaurant & Butik, Inc.
`
`
`
`MBA
`
`
`
`Before Zervas, Cataldo and Mermelstein, Administrative
`Trademark Judges
`
`By the Board:
`
`
`This is the second time this case has come up for
`
`consideration of whether petitioner has stated a claim upon
`
`which relief may be granted. The Board granted respondent’s
`
`motion to dismiss the original petition for cancellation in
`
`its order of February 10, 2012 (the “Prior Order”), but
`
`dismissed the petition without prejudice. Doyle v. Al
`
`Johnson’s Swedish Restaurant & Butik Inc., 101 USPQ2d 1780
`
`(TTAB 2012). Petitioner filed an amended petition for
`
`cancellation on March 1, 2012. This case now comes up for
`
`consideration of respondent’s contested and essentially
`
`identical motions to dismiss the amended petition for
`
`cancellation and for sanctions, each filed April 2, 2012.
`
`
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`
`
`
`
`
`
`
`
` Mailed: July 12, 2012
`
` Cancellation No. 92054059
`
`Robert Doyle
`
`
`v.
`
`Al Johnson’s Swedish
`Restaurant & Butik, Inc.
`
`
`
`MBA
`
`
`
`Before Zervas, Cataldo and Mermelstein, Administrative
`Trademark Judges
`
`By the Board:
`
`
`This is the second time this case has come up for
`
`consideration of whether petitioner has stated a claim upon
`
`which relief may be granted. The Board granted respondent’s
`
`motion to dismiss the original petition for cancellation in
`
`its order of February 10, 2012 (the “Prior Order”), but
`
`dismissed the petition without prejudice. Doyle v. Al
`
`Johnson’s Swedish Restaurant & Butik Inc., 101 USPQ2d 1780
`
`(TTAB 2012). Petitioner filed an amended petition for
`
`cancellation on March 1, 2012. This case now comes up for
`
`consideration of respondent’s contested and essentially
`
`identical motions to dismiss the amended petition for
`
`cancellation and for sanctions, each filed April 2, 2012.
`
`
`
`Cancellation No. 92054059
`
`
`
`As set forth in the Prior Order, respondent owns two
`
`registrations for the mark displayed below
`
`
`
`for “restaurant services” and “Retail store and online
`
`retail store services featuring gifts, food, clothing …”
`
`(the “Registrations”).1 Both of the Registrations include
`
`descriptions of respondent’s mark, which are: “[t]he mark
`
`consists of goats on a roof of grass” (Registration No.
`
`2007624); and “[t]he mark consists of building décor with a
`
`roof comprised of grass and bearing several goats on the
`
`roof” (Registration No. 3942832). Although the descriptions
`
`differ slightly, we consider them to be essentially
`
`identical for these purposes.
`
`In his amended petition to cancel the Registrations,
`
`petitioner now alleges that:
`
`• “Establishments in the classes to
`which [respondent’s involved] marks
`apply (‘Covered Establishments’) are
`precluded by [respondent’s involved]
`marks from placing goats on their
`grass roofs;”
`
`
`
`1
`Registration No. 2007624, issued October 15, 1996, and
`Registration No. 3942832, issued April 12, 2011, respectively.
`
`
`2
`
`
`
`Cancellation No. 92054059
`
`• he desires to “dine and shop in
`Covered Establishments with a grass
`roof” because: (1) he “enjoys the
`look and smell of grass roofs;” (2)
`grass roofs “lesse[n] the need for
`artificial climate controls”
`increasing his enjoyment; and (3) he
`finds “goats on a grass roof to be
`entertaining;”
`
`• he “desires to interview witnesses to
`goats on the grass roofs of Covered
`Establishments, and compare the
`reactions of such witnesses to the
`reactions of witnesses to animals,
`including goats, on the roofs in
`situations in which [respondent’s
`involved] marks do not apply;”
`
`• he “desires to take photographs of
`goats on the grass roofs of Covered
`Establishments” and to use, and
`publish a book featuring, his
`interviews and photographs;
`
`• “fewer Covered Establishments
`maintain a grass roof than would be
`the case if Covered Establishments
`were not precluded by [respondent’s
`involved] marks from keeping goats on
`such roof;” and
`
`• due to respondent’s involved marks
`“petitioner has been, and will
`continue to be, damaged in that
`Petitioner has been, and will
`continue to be, unable to satisfy his
`aforementioned desires.”
`
`
`
`
`
`
`
`
`
`
`Amended Petition for Cancellation ¶¶ 1-10. As grounds for
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`cancellation, petitioner again alleges that the marks in
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`respondent’s involved Registrations are functional, or that
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`they are perceived as entertainment, rather than as an
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`indicator of source.
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`3
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`
`
`Cancellation No. 92054059
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`
`
`As set forth in the Prior Order, in order to survive
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`respondent’s motion to dismiss for failure to state a claim
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`under Fed. R. Civ. P. 12(b)(6), petitioner’s complaint must
`
`allege facts which would, if proved, establish that: (1)
`
`petitioner has standing to maintain the proceeding; and (2)
`
`there is a valid ground for cancelling the Registrations.
`
`Young v. AGB Corp., 152 F.3d 1377, 47 USPQ2d 1752, 1754
`
`(Fed. Cir. 1998); TBMP § 503.02 (3d ed. rev. 2012). With
`
`respect to standing, petitioner must allege facts which, if
`
`ultimately proven, would establish that petitioner has a
`
`“real interest,” i.e., a “personal stake,” in the
`
`proceeding. Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d
`
`1023, 1025-26 (Fed. Cir. 1999); Lipton Industries, Inc. v.
`
`Ralston Purina Co., 213 USPQ 185, 189 (TTAB 1982).
`
`Furthermore, petitioner’s allegation that he would be
`
`damaged by the Registrations “must have a ‘reasonable basis
`
`in fact.’” Ritchie, 50 USPQ2d at 1027 (quoting Universal
`
`Oil Prod. Co. v. Rexall Drug & Chem. Co., 463 F.2d 1122, 174
`
`USPQ 458, 459-60 (CCPA 1972)).
`
`Here, petitioner’s new allegations, and the amended
`
`petition’s allegations as a whole, are insufficient to
`
`adequately allege petitioner’s standing. In fact,
`
`petitioner’s presumed “real interest” or “personal stake” in
`
`4
`
`
`
`Cancellation No. 92054059
`
`dining and shopping in “Covered Establishments,”2
`
`interviewing “witnesses to goats on the grass roofs”
`
`thereof, comparing the witnesses’ “reactions” to those of
`
`other witnesses, taking photographs of goats on grass roofs
`
`and publishing books featuring his interviews and
`
`photographs does not directly relate to respondent’s
`
`involved mark, except to the extent, if any, that
`
`respondent’s involved mark allegedly prevents petitioner
`
`from engaging in the desired activities in “Covered
`
`Establishments” other than those owned by respondent.
`
`Petitioner’s Opposition to Motion to Dismiss, p. 4. Under
`
`current law, petitioner’s alleged, and presumed, “real
`
`interest” and “personal stake” in dining and shopping in
`
`such other restaurants and gift shops with goats on their
`
`roofs does not constitute an adequate allegation of
`
`standing.
`
`As a fundamental principle of trademark law, the owner
`
`of a mark for a particular product or service generally has
`
`the right to prevent the use of the same or a similar mark
`
`
`2
`“Covered Establishments” are defined by petitioner as
`“[e]stablishments in the classes to which Registrant’s marks
`apply …,” and we construe “classes” as a reference to
`International Classes. Amended Petition ¶ 1. This definition
`necessarily includes direct competitors of respondent in its
`retail store and restaurant businesses, as well as all other
`businesses trading in International Classes 35 and 42. Those
`classes of services are very broad, and it is quite possible that
`some included services are so unrelated that use of the same mark
`in connection with them would not be likely to confuse. In such
`cases, the subject Registrations would not inhibit use of
`respondent’s mark by others.
`
`5
`
`
`
`Cancellation No. 92054059
`
`to the extent that use by others would be likely to cause
`
`confusion.3 But by petitioner’s logic, the very rights
`
`which trademark law grants give rise to an “injury” to
`
`anyone who would like to purchase infringing goods or
`
`services, but is allegedly unable to do so because of those
`
`rights. For instance, some consumers who like the cachet of
`
`certain brands but are unwilling to purchase the genuine
`
`goods may be disappointed that they cannot freely – and
`
`legally – purchase products bearing marks like COACH, GUCCI,
`
`or LOUIS VUITTON from any vendor. But that is not an injury
`
`giving rise to standing before the Board; it is simply a
`
`consequence – indeed an intended consequence – of trademark
`
`law. Purveyors of goods and services have no right to use
`
`the trademarks of others if confusion would result, and
`
`purchasers desiring goods or services offered under a
`
`particular trademark do not have a right to purchase such
`
`goods or services except those which originate from the
`
`proprietor of the trademark or its licensees.
`
`
`3
`Generally speaking, a trademark owner’s remedies are limited
`to prevention of (or damages for) those uses which are likely to
`cause (or have caused) confusion. See Trademark Act §§ 32(1),
`43(a)(1). Whether confusion is likely to occur is a
`determination based on a variety of factors, including the
`similarity of the marks and the similarity of the relevant goods
`or services. See e.g. AMF Inc. v. Sleekcraft Boats, 599 F.2d
`341, 204 USPQ 808, 814 (9th Cir. 1979). Thus, as we previously
`noted, Doyle, 101 USPQ2d at 1782-83, respondent’s trademarks do
`not generally impede petitioner (or anyone else) from placing
`goats on a sod roof unless doing so would be likely to cause
`confusion in light of respondent’s prior use and registration.
`
`6
`
`
`
`Cancellation No. 92054059
`
`While the requirements to establish standing set forth
`
`in Ritchie set a low threshold, they are still requirements
`
`which must be met. In Ritchie, the Federal Circuit
`
`reaffirmed that standing before the Board requires a “real
`
`interest,” noting that a plaintiff “must show a direct
`
`injury to himself.” Ritchie, 50 USPQ2d at 1025-26 (emphasis
`
`added) (citing Jewelers Vigilance Comm., Inc. v. Ullenberg
`
`Corp., 823 F.2d 490, 2 USPQ2d 2021, 2023-24 (Fed. Cir.
`
`1987)). Further, while a petition to cancel may be filed by
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`“any person who believes that he is or will be damaged” by
`
`the registration, Trademark Act § 14, the belief at issue is
`
`not purely subjective. Rather, the petitioner’s belief in
`
`damage must be “reasonable.” Ritchie, 50 USPQ2d at 1027-28.
`
`Petitioner’s interest in this case is at most indirect:
`
`petitioner alleges that as a result of respondent’s involved
`
`Registrations, fewer ”Covered Establishments,” i.e.,
`
`respondent’s non-party competitors, will “maintain a grass
`
`roof,” Amended Petition ¶ 9, thus potentially depriving
`
`petitioner of his alleged interest in frequenting the
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`restaurants and gift shops of non-parties using respondent’s
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`mark in connection with the same or similar services. If
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`this is an injury at all, it is an indirect injury, as
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`petitioner’s complaint is that others will be prevented from
`
`using respondent’s mark. Petitioner’s mere speculation that
`
`respondent’s involved Registrations prevent nonparties from
`
`7
`
`
`
`Cancellation No. 92054059
`
`operating restaurants or gift shops with grass roofs on
`
`which goats graze, in turn potentially impairing
`
`petitioner’s alleged interest, is not an allegation of the
`
`direct stake required for standing. See McDermott v. San
`
`Francisco Women’s Motorcycle Contingent, 81 USPQ2d 1212,
`
`1214 (TTAB 2006), aff’d, 240 Fed. Appx. 865 (Fed. Cir. 2007)
`
`(“The purpose of the standing requirement, which is directed
`
`solely to the interest of the plaintiff, is to prevent
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`litigation when there is no real controversy between the
`
`parties.”) (emphasis added).
`
`We note again that petitioner does not allege that he
`
`is in the restaurant or gift shop business (or any related
`
`trade), nor does petitioner allege that he wants to put
`
`goats on a sod roof of his own or that respondent’s
`
`registration is directly preventing him from doing anything.
`
`In essence, petitioner’s complaint is not that he cannot
`
`himself engage in any business or other activity due to
`
`respondent’s Registrations, but rather that respondent’s
`
`competitors allegedly cannot do so, thus preventing
`
`petitioner from patronizing their businesses. But standing
`
`requires a direct and personal injury, and does not provide
`
`a right of redress to those who may be only tangentially and
`
`speculatively affected by a registration.4 If respondent’s
`
`
`4
`We recognize that standing does not necessarily require a
`proprietary right, and that organizations such as trade
`associations can have a direct interest when they pursue Board
`
`8
`
`
`
`Cancellation No. 92054059
`
`competitors have a reasonable belief in damage resulting
`
`from respondent’s Registrations, they can assert such claims
`
`themselves. But unless he has a direct and personal stake
`
`in the matter, petitioner may not appoint himself as their
`
`proxy.
`
`For all of these reasons, respondent’s motion to
`
`dismiss the amended petition for cancellation is hereby
`
`GRANTED. Having now failed twice to adequately allege his
`
`standing, the amended petition for cancellation is hereby
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`DISMISSED, WITH PREJUDICE.5 With respect to respondent’s
`
`motion for sanctions, “the Board may enter sanctions … up to
`
`and including the entry of judgment,” TBMP § 527.02 (3d ed.
`
`rev. 2012), and because we have already entered judgment,
`
`there is no need for us to consider respondent’s now-moot
`
`motion for sanctions.
`
`***
`
`
`litigation relevant to their members. Jewelers Vigilance, 2
`USPQ2d at 2024. But unlike a trade association, petitioner is an
`individual and does not purport to represent “Covered
`Establishments,” and there is no indication in the record that
`they have authorized him to do so.
`5
`Because petitioner lacks standing, we need not address
`respondent’s allegations that the petition for cancellation does
`not adequately set out substantive grounds for cancellation.
`
`9
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