Automated Summary
Key Facts
Academy of Motion Picture Arts and Sciences filed a petition to cancel the respondent's OSCAR trademark registration for business consultation and IT services. Respondent filed a motion to dismiss the dilution claim under Section 43(c) of the Lanham Act, arguing ownership of a valid federal trademark registration provides a complete bar to dilution claims. The Board granted respondent's motion to dismiss the dilution claim and the case will proceed on petitioner's remaining claims.
Issues
- The Board examined whether the 2006 Trademark Dilution Revision Act amendments expanded the federal registration defense to cover all dilution claims under state law. The Board found that the reorganization of Section 43(c)(6) during Senate consideration altered the statute's meaning, making the federal registration defense available to both state and federal dilution claims, and this applies equally to cases before the Board.
- The Board addressed whether Section 43(c)(6)(B) of the Lanham Act's federal registration defense applies in TTAB cancellation proceedings based on Section 43(c) dilution claims, despite the statutory language referencing 'courts' and 'civil actions.' The Board determined that the federal registration defense does apply in TTAB proceedings, noting that subsections of Section 43(c) that refer to courts must be applied regardless of terminology.
Holdings
The TTAB granted respondent's motion to dismiss the petitioner's trademark dilution claim under Section 43(c) of the Lanham Act, holding that the respondent's ownership of a valid federal trademark registration on the Principal Register constitutes a complete bar to the dilution claim. The Board determined that the 2006 Trademark Dilution Revision Act amendments expanded the federal registration defense to cover both state and federal dilution claims, and that this defense applies equally to cases before the TTAB. The petitioner's dilution claim was stricken from the petition to cancel, and the case will proceed on remaining claims.
Remedies
The court granted respondent's motion to dismiss the dilution claim under Fed. R. Civ. P. 12(b)(6). Petitioner's dilution claim set forth in paragraph 22 was stricken from the petition to cancel, and the case will move forward on petitioner's remaining claims.
Legal Principles
- An affirmative defense may be raised prior to answer through a motion to dismiss pursuant to Rule 12(b)(6) if the defense appears on the face of the complaint. The complaint must contain sufficient factual matter to state a plausible claim to relief. The Board must apply the statute as written rather than picking and choosing a preferred interpretation when statutory terms are unambiguous.
- Under Section 43(c)(6)(B) of the Lanham Act, as amended by the 2006 Trademark Dilution Revision Act (TDRA), ownership of a valid federal trademark registration on the Principal Register acts as a complete bar to any claim of actual or likely damage or harm to the distinctiveness or reputation of a mark, including dilution claims. This federal registration defense applies equally to both state and federal dilution claims.
Precedent Name
- Lamie v. United States
- Harbison v. Bell
- Ashcroft v. Iqbal
- Garcia v. United States
- Buchanan v. Nicholson
- Jones v. Bock
- Consumer Product Safety Commission v. GTE Sylvania, Inc.
- United States v. LaBonte
Cited Statute
- Lanham Act
- Trademark Dilution Revision Act (TDRA)
- Federal Rules of Civil Procedure Rule 12(b)(6)
- Federal Trademark Dilution Act of 1995 (FTDA)
Judge Name
- Shaw
- Lykos
- Ritchie
Passage Text
- Accordingly, respondent's motion to dismiss the dilution claim is granted, and petitioner's dilution claim set forth in paragraph 22 is stricken from the petition to cancel. This case will move forward on petitioner's remaining claims.
- As a result, the federal registration defense is now available to both state and federal dilution claims. The statute applies equally to cases before this Board.
- Subsection (6)(B) of Section 43(c) provides that the registrant's ownership of a valid federal trademark registration on the Principal Register 'shall be a complete bar to an action against that person, with respect to that mark, that... asserts any claim of actual or likely damage or harm to the distinctiveness or reputation of a mark....' In other words, Section 43(c)(6)(B) affords a party accused of federal trademark dilution a 'federal registration defense.'