For a third time, respondent moved to dismiss the amended petition for failure to state a claim pursuant to FED. For a third time, respondent moved to dismiss the amended petition for failure to state a claim pursuant to FED. . In the Lewis Silkin proceeding, Respondent Firebrand moved to dismiss a petition for cancellation of its registration for the mark FIREBRAND for a “newsletter dealing with brand and product development” and “business consultation services.” The cancellation petition pleads merely that “[o]n information and belief, Respondent is not using Respondent’s Mark on or in connection with Respondent’s Goods and Services with no intent to resume such use.” Under the Lanham Act, a mark is deemed to be “abandoned” when its use has been discontinued with intent not to resume such use. TTAB Rules on Abandonment of Madrid Protocol Markby PLC Intellectual Property & TechnologyRelated ContentIn SaddleSprings, Inc. v. Mad Croc Brands, Inc., the Trademark Trial and Appeal Board (TTAB) denied a trademark owner's motion to dismiss a petition to cancel the owner's US trademark registration for failure to state a claim upon which relief may be granted. In summary, applicant’s motion to dismiss the petition to cancel for lack of standing is denied. Precedential No. On May 20, 1988, applicant filed with the TTAB a motion to dismiss the opposition and register its trademark FORTIFLEX and design pursuant to the District Court Order. Here’s one from December 2015 (although I can’t understand why it earned the precedential label). 20: TTAB Declines To Strike Summary Judgment Motion As Untimely After Respondent Consented To Extension Wolf, Greenfield & Sacks, P.C. The motion to dismiss was granted and the opposition was dismissed with prejudice on July 20, 1988. In its motion to dismiss, applicant argues that opposer. Whether the Board is ultimately right – and whether its standard for cancellation claims passes muster under Iqbal and Twombly – will have to await a decision by the Federal Circuit or, better yet, the Supreme Court. The case is Warren Distribution, Inc. v. Royal Purple, LLC (Opposition No. The TTAB denied Corcamore’s motion to dismiss, concluding that Lexmark did not extend to cancellation of registered marks under 15 U.S.C. The Board did provide some clues as to the policy rationale for its arguably questionable application of the Iqbal/Twombly standard to cancellation claims. We are not acting as your legal counsel unless separately retained in a written agreement signed by us. R. Civ. In Fair Indigo LLC v Style Conscience, the TTAB, in a precedential opinion, has addressed the issue of when a motion to dismiss for failure to state a claim may be successful in an opposition. P. 12(f) 31. ASK JAMES Stay Connected. In the context of a motion to dismiss a petition for cancellation of a trademark registration, however, not much appears to have changed since Twombly and Iqbal, at least in the context of a claim of abandonment. Intermix S.A., 97 USPQ2d 1403, 1405 (TTAB 2010). Unlike some courts, the Board will generally grant stipulated requests to extend discovery, even repeated requests. the motion except as otherwise specified in the Board’s suspension order. The judge therefore granted Inter Milan’s motion to dismiss with respect to MLS’s likelihood of confusion claim. In October, Nirvana responded to Jacobs’ opposition with a motion to suspend, alerting the TTAB to the pending civil action, and noting that “the claims in [Nirvana’s] complaint and [Jacob’s] affirmative defenses thereto, present issues and may have bearing on” on the opposition proceeding. 70% Precedential No. P. 12 (b) (6) motion to dismiss. Canada’s Broad Interpretation of Trademark “Use” Gives U.S. In each of those cases, the Board held that the Iqbal/Twombly standard did not require more than the traditional pleading of nonuse plus intent not to resume. Analysis A motion to dismiss for failure to state a claim upon which relief can be granted is a test solely of the legal sufficiency of the allegations set forth in a pleading. D%������ 93. That motion shall be granted in part and denied in part. 113 0 obj <>stream That motion shall be granted in part and denied in part. R. Civ. Sandy's practice focuses on trademarks and unfair competit... Stefan is an attorney in the firm’s Trial Group, focusin... Fara assists clients in the development and execution of all type... Charlene Krogh is a Partner in Dorsey’s top-ranked Tradem... All Trademark Group Content Search Dorsey, Legal Developments in the World of Trademarks, Copyrights, Advertising and Beyond. January 31, 2019, The U.S. Supreme Court’s blockbuster rulings in Bell Atlantic Corp. v. Twombly and Ashcroft v. Iqbal represented a major shift in federal pleading standards. Resolution of motions to dismiss frequently turns on whether a complaint meets Twombly’s so-called “plausibility” standard. R. Civ. In my most recent experience with TTAB on a contested motion, the ruling took almost 9 months on a motion to dismiss for failure to state a claim upon which relief could be granted (12(b)(6)). Firebrand LLC, the Trademark Trial and Appeal Board denied a motion to dismiss, holding that an allegation that a trademark owner is not using a … 41: TTAB Refuses Reconsideration of its Denial of Rule 12 (b) (6) Motion to Dismiss Once in a great while, a precedential interlocutory ruling of the TTAB slips through the TTABlog crack. P. 12(b)(6). As such, it would be unrealistic to expect a petitioner for cancellation to know and plead all the facts necessary to prevail on an abandonment claim. The amount of time can vary. The TTAB suspended the opposition as a result of the filing of the civil action and Caterpillar filed a Motion to Dismiss upon Discretionary Dismissal asking the district court not to exercise jurisdiction over Tigercat's claims. R. Civ. be granted. The Trademark Trial and Appeal Board may render judgment against the party in the position of plaintiff, or the Board may decline to render judgment until all testimony periods have passed. (914) 941-5668 jhastings@collenip.com. 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