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`UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`General Contact Number: 571-272-8500
`General Email: TTABInfo@uspto.gov
`
`May 1, 2023
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`Cancellation No. 92080451
`
`Lonita K. Baker
`
`v.
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`The Diva Lawyers Social Club Inc
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`
`
`By the Trademark Trial and Appeal Board:
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`This case is now before the Board on Respondent’s motion, filed October 10,
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`2022, to dismiss for failure to state a claim upon which relief can be granted under
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`Fed. R. Civ. P. 12(b)(6). 4 TTABVUE.1 The motion is fully briefed.2
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`I.
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`Background
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`Petitioner is seeking registration of the mark DIVA ATTORNEY LONITA
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`BAKER, with design, for use in connection with the services “Providing legal
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`information, namely, legal information about civil rights, personal injury, business
`
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`1 In this order, the Board cites to the proceeding record by the TTABVUE docket entry
`number and TTABVUE page number, in accordance with the guidance provided in
`TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) §§
`106.03, 702.05 and 801.01 (2022). The Board expects that the parties will use this method of
`citing to the record throughout this proceeding.
`2 The Board has considered the parties’ arguments and presumes the parties’ familiarity with
`the factual bases for their filings, and does not recount the facts or arguments here, except
`as necessary to explain the decision. See Guess? IP Holder LP v. Knowluxe LLC, 116 USPQ2d
`2018, 2019-20 (TTAB 2015).
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`
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`
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`Cancellation No. 92080451
`
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`law, and criminal law proffered to clients hired by an individual attorney and not
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`pertaining to membership of any social club organization,” in International Class
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`45.3
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`Respondent owns a registration for the mark DIVA LAWYERS, in standard
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`characters, for use indicating membership in a social club organization or female
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`attorneys.4
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`The parties are also involved in Opposition No. 91268921 in which they are in
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`reverse positions. In that proceeding, which was filed on April 23, 2021, Respondent
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`filed a notice of opposition against Petitioner’s pending application on the grounds
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`of likelihood of confusion, lack of bona fide intent to use, and false suggestion of a
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`connection.
`
`In this proceeding, on August 31, 2022, Petitioner filed a petition for cancellation
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`based on nonuse. In lieu of filing an answer, Respondent filed the current motion to
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`dismiss for failure to state a claim. 4 TTABVUE.
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`II.
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`Timeliness
`
`On December 30, 2022, the Board issued an order requiring the parties to submit
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`supplemental briefing to address whether the claim in this cancellation proceeding is
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`a timely counterclaim to the opposition proceeding. 11 TTABVUE. The counterclaim
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`Petitioner seeks to assert is a compulsory counterclaim within the meaning of
`
`
`3 Application Serial No. 87939686, filed April 23, 2021. Currently, the application is filed
`under Section 1(b) of the Trademark Act, 15 U.S.C. § 1(b).
`4 Registration No. 5769971, issued on June 4, 2019 from an application filed on September 4,
`2015 under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), alleging January 13, 2014
`as the date of first use and May 1, 2018 as the date of first use in commerce.
`
`
`
`2
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`
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`Cancellation No. 92080451
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`Trademark Rule 2.106(b)(3)(i) because grounds for Respondent’s alleged nonuse of
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`the mark existed at the time Petitioner filed her answer in the related opposition
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`proceeding.5 “To be timely, a [compulsory] counterclaim must be brought as part of
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`defendant’s answer or promptly after the grounds therefore are learned.” Turbo
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`Sportswear Inc. v. Marmot Mountain Ltd., 77 USPQ2d 1152, 1154 (TTAB 2005).
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`In its supplemental brief, Petitioner asserts that it learned of the grounds for this
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`claim through the discovery responses and notice of reliance filed August 2022 in the
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`related opposition proceeding. 13 TTABVUE 16. Given that Petitioner learned of the
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`grounds in August of 2022 and filed this proceeding on August 31, 2022, the Board
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`finds that Petitioner promptly filed this counterclaim and accordingly, the
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`counterclaim is timely.
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`III. Motion to Dismiss
`
`A motion to dismiss for failure to state a claim upon which relief can be granted
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`is a test solely of the sufficiency of the complaint. Advanced Cardiovascular Sys. Inc.
`
`v. SciMed Life Sys. Inc., 988 F.2d 1157, 26 USPQ2d 1038, 1041 (Fed. Cir. 1993);
`
`Covidien LP v. Masimo Corp., 109 USPQ2d 1696, 1697 (TTAB 2014); NSM Res. Corp.
`
`v. Microsoft Corp., 113 USPQ2d 1029, 1032 (TTAB 2014). To withstand a motion to
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`dismiss, a plaintiff need only allege facts that, if proved, would allow the Board to
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`conclude, or to draw a reasonable inference, that (1) the plaintiff is entitled to bring
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`a statutory cause of action;6 and (2) a valid ground exists for seeking to cancel the
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`5 Though the specific nonuse claim that has been pleaded was not available under December
`2021, a claim of abandonment because the mark had never been used was available at the
`time the notice of opposition was filed.
`6 Board decisions have previously analyzed the requirements of Sections 13 and 14 of the
`
`
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`3
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`
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`Cancellation No. 92080451
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`registration. See, e.g., Young v. AGB Corp., 152 F.3d 1377, 47 USPQ2d 1752, 1754
`
`(Fed. Cir. 1998); Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ
`
`185, 187 (CCPA 1982); Nike, Inc. v. Palm Beach Crossfit Inc., 116 USPQ2d 1025, 1028
`
`(TTAB 2015).
`
`For purposes of determining a motion to dismiss for failure to state a claim, the
`
`complaint must be examined in its entirety, construing the allegations liberally, as
`
`required by Fed. R. Civ. P. 8(e). IdeasOne Inc. v. Nationwide Better Health, 89
`
`USPQ2d 1952, 1953 (TTAB 2009); Fair Indigo LLC v. Style Conscience, 85 USPQ2d
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`1536, 1538 (TTAB 2007). “Threadbare recitals of the elements of a cause of action,
`
`supported by mere conclusory statements, do not suffice” and are not accepted as
`
`true. Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (citing Bell Atlantic Corp. v. Twombly,
`
`550 U.S. 544, 555 (2007)). However, all well-pleaded, material allegations in the
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`complaint are accepted as true and are construed in the light most favorable to the
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`plaintiff. Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1027 (Fed. Cir. 1999);
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`Young, 47 USPQ2d at 1754; Advanced Cardiovascular Sys., 26 USPQ2d at 1041; Fair
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`Indigo, 85 USPQ2d at 1538.
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`A. Entitlement to a Statutory Cause of Action
`
`Petitioner must plead that it is entitled to bring a statutory cause of action against
`
`Respondent. Peterson v. Awshucks SC, LLC, 2020 USPQ2d 11526, at *5 (TTAB 2020)
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`(citing Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370,
`
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`Trademark Act, 15 U.S.C. §§ 1063-64, under the rubric of “standing.” Despite the change in
`nomenclature, the Board’s prior decisions and those of the Federal Circuit interpreting
`Section 13 and 14 remain applicable. See Spanishtown Enters., Inc. v. Transcend Resources,
`Inc., 2020 USPQ2d 11388, at *2 (TTAB 2020).
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`
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`4
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`
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`Cancellation No. 92080451
`
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`2020 USPQ2d 10837, at *3 (Fed. Cir. 2020), cert. denied, 142 S. Ct. 82 (2021) (internal
`
`citation omitted)). In Board inter partes proceedings, to sufficiently plead entitlement
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`to a statutory cause of action under Trademark Act Section 14, a plaintiff must allege
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`that cancellation of the registration is within the zone of interests protected by the
`
`statute and that the plaintiff has a reasonable belief of damage proximately caused
`
`by continued registration of the mark. Peterson, 2020 USPQ2d at *5; See also
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`Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 2020 USPQ2d 11277, at *6-7 (Fed. Cir.
`
`2020), cert. denied, 141 S.Ct. 2671 (2021); Australian Therapeutic, 2020 USPQ2d
`
`10837 at *3; Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111
`
`USPQ2d 1058 (Fed. Cir. 2014); Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d
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`1356, 101 USPQ2d 1713, 1727 (Fed. Cir. 2012); Ritchie, 50 USPQ2d at 1025.
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`In the petition for cancellation, Petitioner alleges that the involved registration
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`has been asserted against its pending application in Opposition No. 91268921. 1
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`TTABVUE 4. Respondent argues that merely alleging ownership in a pending
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`application without use or registration is insufficient to establish entitlement to a
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`statutory cause of action. 4 TTABVUE 8. However, Petitioner’s claim that
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`Respondent’s registration has been asserted against her pending application is
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`sufficient to allege entitlement to a statutory cause of action. See Tonka Corp. v.
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`Tonka Tools, Inc., 229 USPQ 857, 859 (TTAB 1986) (petitioner has standing to cancel
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`registration that has been asserted, even defensively, in a civil action).
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`
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`5
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`
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`Cancellation No. 92080451
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`B. Nonuse
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`Section 14(6) of the Trademark Act states that a petition to cancel a registration
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`of a mark may be filed “at any time after the 3-year period following the date of
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`registration, if the registered mark has never been used in commerce on or in
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`connection with some or all of the goods or services received in the registration.”
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`Trademark Act Section 14(6), 15 U.S.C. § 1064(6). However, in the case of a collective
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`membership mark, the mark is used by its members to indicate membership and the
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`owner of the trademark registration exercises control over the use of the mark. See
`
`In re Triangle Club of Princeton Univ., 138 USPQ 332 (TTAB 1963) (collective
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`membership mark registration denied because specimen did not show use of mark by
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`members); see also TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) §
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`1304.02(a)(i). Accordingly, a nonuse claim for a collective membership mark must
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`state that the mark is not in use by any members to indicate membership in the
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`collective organization.
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`Here, Petitioner has alleged that Respondent, the owner of the registration, “has
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`never used the mark DIVA LAWYERS in interstate commerce in connection with a
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`collective mark indicating membership in a social club organization of female
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`attorneys.” 1 TTABVUE 4, ¶ 5. This is insufficient to allege nonuse as it is the
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`members, and not the owner, which use a collective membership mark. Thus,
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`Petitioner has failed to sufficiently allege a claim of nonuse.
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`
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`6
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`
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`Cancellation No. 92080451
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`In view thereof, Respondent’s motion to dismiss is granted. Notwithstanding the
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`foregoing, it is the Board’s practice to grant leave to amend, if an amended pleading
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`would not be futile, and the privilege of amendment has not been abused. See, e.g.,
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`Wise F&I, LLC, et al. v. Allstate Ins. Co., 120 USPQ2d 1103, 1110 (TTAB 2016)
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`(allowing time to cure defective pleading). If the law and facts so warrant, Petitioner
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`is allowed until twenty days from the date of this order to file an amended petition
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`for cancellation sufficiently pleading nonuse. If no amended complaint is filed, the
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`petition will be dismissed with prejudice.
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`If an amended complaint is filed, remaining dates are reset as follows:
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`Time to Answer
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`Deadline for Discovery Conference
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`Discovery Opens
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`Initial Disclosures Due
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`Expert Disclosures Due
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`Discovery Closes
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`Plaintiff's Pretrial Disclosures Due
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`Plaintiff's 30-day Trial Period Ends
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`6/9/2023
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`7/9/2023
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`7/9/2023
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`8/8/2023
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`12/6/2023
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`1/5/2024
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`2/19/2024
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`4/4/2024
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`Defendant's Pretrial Disclosures Due
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`4/19/2024
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`Defendant's 30-day Trial Period Ends
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`6/3/2024
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`Plaintiff's Rebuttal Disclosures Due
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`6/18/2024
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`Plaintiff's 15-day Rebuttal Period Ends 7/18/2024
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`Plaintiff's Opening Brief Due
`
`Defendant's Brief Due
`
`Plaintiff's Reply Brief Due
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`9/16/2024
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`10/16/2024
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`10/31/2024
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`Request for Oral Hearing (optional) Due 11/10/2024
`
`
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`7
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`
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`Cancellation No. 92080451
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`
`
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`IV.
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`Important Trial and Briefing Instructions
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`Generally, the Federal Rules of Evidence apply to Board trials. Trial testimony is
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`taken and introduced out of the presence of the Board during the assigned testimony
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`periods. The parties may stipulate to a wide variety of matters, and many
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`requirements relevant to the trial phase of Board proceedings are set forth in
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`Trademark Rules 2.121 through 2.125. These include pretrial disclosures, the
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`manner and timing of taking testimony, matters in evidence, and the procedures for
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`submitting and serving testimony and other evidence, including affidavits,
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`declarations, deposition transcripts and stipulated evidence.
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`Trial briefs shall be submitted in accordance with Trademark Rules 2.128(a) and
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`(b). Such briefs should utilize citations to the TTABVUE record created during trial,
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`to facilitate the Board’s review of the evidence at final hearing. See TBMP § 801.03.
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`Oral argument at final hearing will be scheduled only upon the timely submission of
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`a separate notice as allowed by Trademark Rule 2.129(a).
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`8
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