Academy of Motion Picture Arts and Sciences v. Alliance of Professionals & Consultants, Inc.

UNITED STATES PATENT AND TRADEMARK OFFICE

THIS OPINION IS A Trademark Trial and Appeal Board

PRECEDENT OF THE TTAB P.O. Box 1451

Alexandria, VA 22313-1451

Faint

Mailed: September 27, 2012

Cancellation No. 92055081

Academy of Motion Picture

Arts and Sciences

v.

Alliance of Professionals &

Consultants, Inc.

Before Ritchie, Lykos and Shaw,

Administrative Trademark Judges.

By the Board:

On January 24, 2012, the Academy of Motion Picture Arts

and Sciences (“petitioner”) filed a petition to cancel the

Alliance of Professionals & Consultants, Inc.’s (“respondent”)

registration for the mark OSCAR for “providing recognition and

incentives by the way of awards and contests to demonstrate

excellence in the field of business consultation and

information technology” in International Class 41.1 As grounds

for cancellation, petitioner alleges that respondent’s mark (1)

so resembles petitioner's previously used and registered OSCAR

marks that it is likely to cause confusion, mistake, or deceive

Cancellation No. 92055081

prospective consumers pursuant to Section 2(d) of the Trademark

Act,2 (2) falsely suggests a connection with petitioner

pursuant to Section 2(a) of the Trademark Act, and (3) will

dilute petitioner's marks within the meaning of Section 43(c)

of the Lanham Act as amended.

Respondent, in lieu of filing an answer to the petition to

cancel, filed on March 26, 2012 a motion to dismiss

petitioner’s dilution claim under Fed. R. Civ. P. 12(b)(6) on

the ground that respondent’s ownership of the federally-

1

Registration No. 3974726, registered Jun. 07, 2011 on the

Principal Register in standard character form, claiming dates of

use and first use in commerce of Mar. 13, 2009.

2

Petitioner pleaded ownership of the following registrations:

Registration No. 1096990 for OSCAR for “entertainment and

educational service-namely, telecasts in connection with the

recognition of distinguished achievement in the motion picture

industry; library and reference services; theatrical exhibitions

of motion pictures” in Class 41, registered Jul. 18, 1978;

Registration No. 1118751 for OSCAR for “books and supplements

thereto, pamphlets, brochures, dealing with the motion picture

industry and personalities; press kits containing detailed

information as to broadcasts and presentations of awards,

including chronological list of events, program format,

personalities involved, motion pictures involved and other

elements comprising the broadcasting of motion picture awards” in

Class 16, registered May 22, 1979; Registration No. 1528890 for

OSCARS for “entertainment services, namely, telecasts in

connection with the recognition of distinguished achievement in

the motion picture industry” in Class 41, registered Mar. 7,

1989; Registration No. 1996585 for OSCAR for “sweatshirts;

jackets; T-shirts; and, caps” in Class 25, registered Aug. 27,

1996; Registration No. 2021582 for OSCAR for “prerecorded

videotapes featuring entertainment relating to motion pictures

and award ceremonies” in Class 9, registered Dec. 10, 1996;

Registration No. 2029445 for OSCAR NIGHT for “educational and

entertainment services rendered through the medium of an annual

live, televised program dealing with motion pictures” in Class

41, registered Jan. 14, 1997; Registration No. 2341104 for SUNDAY

AT THE OSCARS for “educational and entertainment services

rendered through the medium of an annual live, televised program

dealing with motion pictures” in Class 41, registered Apr. 11,

2000.

2

Cancellation No. 92055081

registered mark at issue acts as “an absolute and complete

defense to the [p]etitioner’s dilution claim.” (D. Mot.

Dismiss 1). The motion is fully briefed.

Background

A petition to cancel may be based on allegations that the

petitioner believes that the accused registered mark damages,

or will damage, the petitioner, including by trademark dilution

“under Section 43(c)” of the Lanham Act, 15 U.S.C. § 1125(c).

See 15 U.S.C. § 1064. Subsection (6)(B) of Section 43(c),

however, 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.”3

3

Although § 43(c)(6)(B) uses the terms “action” and “claim,” which may

have common-law connotations, we note that use of these terms does not

mean that the federal registration defense is limited to court dilution

actions. Such a reading would eviscerate the incorporation of § 43(c)

into § 14, 15 U.S.C. § 1064. To give effect to § 14’s incorporation of

§ 43(c), the Board is required to apply other subsections of § 43(c)

which contain terms that, in other contexts, may conventionally be

associated with courts. For example, the Board has to apply subsection

(c)(1), in which the prohibition against dilution by blurring or

tarnishment is set forth, albeit in a provision referencing injunctive

relief, which is beyond the Board’s power to award. The Board also has

to apply subsection (2), which defines fame, dilution by blurring, and

dilution by tarnishment — despite that subsection’s reference to what “a

court may consider.” Subsection (4) sets forth the burden of proof “in

a civil action” when the dilution claimant asserts unregistered trade

dress as the basis of dilution, yet the Board clearly would have to

apply this procedural provision if that were the basis of the dilution

allegations. If the Board could not apply these subsections because

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Cancellation No. 92055081

The federal registration defense was first enacted in

federal law as part of the Federal Trademark Dilution Act of

1995 (“FTDA”).4 The FTDA created a new federal cause of action

to protect “famous” trademarks through amendment of Section 43

of the Lanham Act, but also provided that “ownership by a

person of a valid registration,” is a “complete bar” to any

action brought under “common law or a statute of a State and

that seeks to prevent dilution of the distinctiveness of a

mark, label, or form of advertisement.”5 In 2006 Congress

enacted amendments to the Lanham Act as the Trademark Dilution

Revision Act (“TDRA”).6 The amendments sought to expand the

federal registration defense to include all types of dilution

claims under state law by replacing FTDA’s language barring

only claims for “dilution of the distinctiveness of a mark”

with language barring claims for “dilution by blurring or

dilution by tarnishment.”7

Analysis

they refer to courts and court-related activities, then § 14’s

incorporation of § 43(c) would be essentially meaningless — an

impermissible construction of § 14. See, e.g., United States v.

LaBonte, 520 U.S. 751, 760 (1997) (one provision should not be read to

render meaningless other provisions to which it refers); Buchanan v.

Nicholson, 451 F.3d 1331, 1336 (Fed. Cir. 2006) (it is unreasonable to

read a statutory provision in a way that renders other related

provisions meaningless). Because, in deciding cancellation proceedings

raising allegations under § 43(c), the Board necessarily has to apply

several subsections of § 43(c) that refer to “courts” and “civil

actions,” subsection (6)’s similar use of terms typically associated

with courts does not disqualify the federal registration defense from

applying in TTAB proceedings based on § 43(c).

4

Pub. L. No. 104-98, 109 Stat. 985 (1996).

5

15 U.S.C. § 1125(c), repealed by the TDRA in 2006.

6

Pub.L. 109-312, § 2, 120 Stat. 1730 (2006).

4

Cancellation No. 92055081

An affirmative defense may be raised prior to answer

through a motion to dismiss pursuant to Rule 12(b)(6), without

resort to the summary judgment procedure, if the defense

appears on the face of the complaint. See Jones v. Bock, 549

U.S. 199, 215 (2007)(complaint is subject to Rule 12(b)(6)

dismissal if pleadings show relief is barred by affirmative

defense); see also 5B Charles A. Wright & Arthur R. Miller, et

al., Federal Practice and Procedure Civil §§ 1277, 1357 (3d ed.

Westlaw update 2012). A dismissal under Rule 12(b)(6) for

failure to state a cognizable claim is a test of whether the

complaint contains sufficient factual matter, accepted as true,

to “state a claim to relief that is plausible on its face.”

Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009). See also, Doyle

v. Al Johnson’s Swedish Restaurant & Butik, Inc., 101 USPQ2d

1780, 1782 (TTAB 2012).

In its motion to dismiss, respondent does not challenge

petitioner’s standing to bring this proceeding, but rather,

maintains that its ownership of a federal registration acts as

a complete bar to petitioner’s dilution claim after the 2006

TDRA amendments. Petitioner argues that its dilution claim is

based not only on Section 43(c), but also on Section 14 of the

Lanham Act, 15 U.S.C. § 1064, which was not repealed when TDRA

was enacted. Petitioner asserts the conforming amendments

which rearranged Section 43(c) cannot be read as repealing

7

H.R. 683, 109th Cong. 1st. Sess., 6 (Feb. 9, 2005).

5

Cancellation No. 92055081

statutory dilution remedies by implication, as this

interpretation would result in inconsistencies in the statute

and lead to “absurd” results.8

The “starting point” for a case involving statutory

construction is the language of the statute itself. United

States v. Hohri, 482 U.S. 64, 68 (1987) (quoting Kelly v.

Robinson, 479 U.S. 36, 43 (1986)). Where the statutory terms

are unambiguous, “judicial inquiry is complete, except ‘in rare

and exceptional circumstances.’” Rubin v. United States, 449

U.S. 424, 430 (1981) (quoting TVA v. Hill, 437 U.S. 153, 187

n.33 (1978)). “Absent a clearly expressed legislative

intention to the contrary,” a statute’s plain language must be

given effect. Consumer Product Safety Commission v. GTE

Sylvania, Inc., 447 U.S. 102, 108 (1980).

The parties agree with legal commentators that a clerical

error occurred during the passage of TDRA, but disagree as to

how that “error” should be interpreted. During Senate

consideration of the House bill, Section 43(c)(6) was slightly

reorganized. As a result, the statute was amended to read that

ownership of a federal registration acts as a “complete bar” to

a federal claim of dilution. The comparison below illustrates

8

Both parties also argue that TBMP § 303.01 provides “an

independent basis” for petitioner’s dilution claim. The cited

section of the Board’s manual of procedure is merely a copy of

the statute and cannot be interpreted as “independent” from that

statute.

6

Cancellation No. 92055081

the difference between the Senate and House versions, and it is

the Senate version that was enacted:

TDRA Section 43(c)(6)(Enacted)9 House Bill H.R. 68310

(6) Ownership of valid The ownership by a person of

registration a complete bar to a valid registration ... shall

action be a complete bar to an action

The ownership by a person of a against that person, with

valid registration ... shall be a respect to that mark, that--

complete bar to an action against (A) is brought by another

that person, with respect to that person under the common law or

mark, that-- a statute of a State; and

(A)(i) is brought by another (B)(i) seeks to prevent

person under the common law or a dilution by blurring or dilution

statute of a State; and by tarnishment; or

(ii) seeks to prevent (ii) asserts any claim of

dilution by blurring or dilution actual or likely damage or

by tarnishment; or harm to the distinctiveness or

(B) asserts any claim of actual reputation of a mark....

likely damage or harm to the

distinctiveness or reputation of a

mark....

Although the wording of the bill as enacted remains the

same as the House draft, by reorganizing the sections and

including the word “or” before subparagraph (B), the meaning of

the statute was altered. 11 As a result, the federal

registration defense is now available to both state and federal

9

15 U.S.C. § 1125(c)(6).

10

H.R. 683, 109th Cong. 1st Sess., 6 (Feb. 9, 2005).

11

See U.S. H.R. Comm. on Judiciary, Statement of Judiciary

Committee Chairman Lamar Smith, Full Committee Markup of H.R.

6215, a bill to amend the Federal Trademark Dilution Act at

http://judiciary.house.gov/hearings/Markups%202012/mark_08012012.

html (accessed Sept. 12, 2012). See also, 4 J. Thomas McCarthy,

McCarthy on Trademarks and Unfair Competition § 24:129 (4th ed.

Westlaw update 2012).

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Cancellation No. 92055081

dilution claims.12 The statute applies equally to cases before

this Board.13

While a “most extraordinary showing of contrary

intentions” by Congress may justify a departure from the plain

language of a statute, Garcia v. United States, 469 U.S. 70, 75

(1984), there is scant legislative history, and certainly not

enough to support an alternative reading in this case.14 The

Board must apply and enforce the statute as written, rather

than picking and choosing a preferred interpretation.

“Congress’ intent is found in the words it has chosen to use.”

Harbison v. Bell, 556 U.S. 180, 198 (2009) (Thomas, J.,

concurring). Petitioner characterizes the Senate

reorganization of the language as creating an “unintended”

change to the statute, and argues Congress clearly meant to

retain possible federal dilution claims. Nonetheless, this

Board must assume that Congress means what it says. If

Congress has enacted into law something different from what was

intended, then Congress must amend the statute to achieve its

desired results. Lamie v. United States, 540 U.S. 526, 542

(2004).

12

See id., Statement of Judiciary Committee Chairman Lamar Smith.

13

See, e.g., TBMP § 303.01 (3d ed. rev. 2012) (citing 15 U.S.C. §

1064).

14

See 4 McCarthy § 24:101 (“The 2006 TDRA must largely speak from

the text of the statute itself. There is very little legislative

history.”).

8

Cancellation No. 92055081

Petitioner’s argument that the Board has entertained

dilution claims in other cancellation proceedings since passage

of the TDRA also is not persuasive. There has been no showing

that the federal registration defense has been raised

previously before the Board, and the cases cited by petitioner

were not precedential and thus are not binding on the Board.15

See TBMP § 101.03 (3d ed. rev. 2012).

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.

Dates Reset

Proceedings are resumed. Dates, including respondent’s

time to answer, are reset as set out below.

Time to Answer: 10/28/2012

Deadline for Discovery Conference: 11/27/2012

Discovery Opens: 11/27/2012

Initial Disclosures Due: 12/27/2012

Expert Disclosures Due: 4/26/2013

Discovery Closes: 5/26/2013

Plaintiff's Pretrial Disclosures Due: 7/10/2013

Plaintiff's 30-day Trial Period Ends: 8/24/2013

Defendant's Pretrial Disclosures Due: 9/8/2013

Defendant's 30-day Trial Period Ends: 10/23/2013

Plaintiff's Rebuttal Disclosures Due: 11/7/2013

Plaintiff's 15-day Rebuttal Period Ends: 12/7/2013

In each instance, a copy of the transcript of

testimony, together with copies of documentary exhibits,

15

Indeed it appears there have been no cases raising this issue

before the federal courts.

9

Cancellation No. 92055081

must be served on the adverse party within thirty days after

completion of the taking of testimony. Trademark Rule

2.l25.

Briefs shall be filed in accordance with Trademark

Rules 2.l28(a) and (b). An oral hearing will be set only

upon request filed as provided by Trademark Rule 2.l29.

***

10