Johnson & Johnson and Roc International S.A.R.L.v.Obschestvo s Ogranitchennoy Otvetstvennostiu WDS

Trademark Trial and Appeal Board

May 16, 2012

No. 91182207 (T.T.A.B. May. 16, 2012)

Faint Mailed: May 16, 2012

Opposition No. 91182207
Opposition No. 91184467

Johnson & Johnson and Roc
International S.A.R.L.

v.

Obschestvo s Ogranitchennoy;
Otvetstvennostiu WDS

Before Quinn, Holtzman and Ritchie,
Administrative Trademark Judges.

By the Board:

This case now comes up on opposer/counterclaim
respondent’s (“J&J”) motion, filed July 27, 2011, to dismiss
applicant/counterclaim petitioner’s (“OsO”) counterclaim for
partial cancellation of J&J’s Registration No. 1015041 under
Fed. R. Civ. P. 12(b)(6). The motion is fully briefed.
By way of background, on June 27, 2011, the Board held a
telephone conference with the parties and subsequently issued
an order granting OsO’s motion for leave to amend its answers
in Opposition Nos. 91182207 and 91184467 to add a counterclaim.
By its counterclaim, OsO invokes Section 18 of the Trademark
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
This Decision is a
Precedent of the TTAB
Opposition Nos. 91182207 & 91184467

2
Act, 15 U.S.C. § 1068,1 and seeks partial cancellation of J&J’s
registration as to three of the goods in Class 3, namely, skin
powder, rouge and liquid foundation, on the ground of
abandonment due to nonuse without an intent to resume use of
the mark for those goods. J&J filed this motion to dismiss in
lieu of filing an answer to the counterclaim.
In support of its motion to dismiss, J&J, relying on DAK
Industries Inc. v. Daiichi Kosho Co., 35 USPQ2d 1434 (TTAB
1995), contends that the counterclaim is legally insufficient
because OsO’s counterclaim is “premised solely on [Trademark
Act] Section 18 and Sections 309.03(d) and 313.01 of the… TBMP
… and fails to plead avoidance of likelihood of confusion….”
(J&J’s mot. at pp. 2 and 4, emphasis in original).2 In its

1 Section 18 of the Lanham Act, 15 U.S.C. § 1068 provides:
§ 1068. Action of Director in interference,
opposition, and proceedings for concurrent use
registration or for cancellation
In such proceedings the Director may refuse to
register the opposed mark, may cancel the
registration, in whole or in part, may modify the
application or registration by limiting the goods or
services specified therein, may otherwise restrict or
rectify with respect to the register the registration
of a registered mark, may refuse to register any or
all of several interfering marks, or may register the
mark or marks for the person or persons entitled
thereto, as the rights of the parties under this
chapter may be established in the proceedings….
2 Contrary to the essential point in J&J’s argument, that the
counterclaim is deficient because it fails to allege that
likelihood of confusion will be avoided, TBMP § 313.01 (3d ed.
2011) provides, in relevant part, that “a counterclaim to delete
goods or services from the registration on the ground that
registrant does not use the mark on those goods or services and
has no intent to resume use, without regard to likelihood of
confusion, is a straightforward abandonment claim and not a claim
under Trademark Act § 18, 15 U.S.C. § 1068 and in such case,
Opposition Nos. 91182207 & 91184467

3
response, OsO explains its reliance on Section 18. OsO argues
that Section 18 is the sole source of the Board’s authority to
grant the remedy of partial cancellation of a mark and that DAK
Industries “never states or implies that a ‘straightforward’
abandonment claim is not also a claim pursuant to Section 18.”
(OsO’s resp. at p. 7, emphasis in original).
A motion to dismiss under Rule 12(b)(6) is a test of the
sufficiency of the complaint. To survive a motion to
dismiss, a petitioner or, as in this case, counterclaim
petitioner, need only allege sufficient factual matter as
would, if proved, establish that 1) petitioner has standing
to maintain the proceeding, and 2) a valid ground exists for
cancelling the mark, in whole or in part, as may be
applicable. Lipton Industries, Inc. v. Ralston Purina Co.,
670 F.2d 1024, 213 USPQ 185, 187 (CCPA 1982). Specifically,
a complaint “must contain 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, 129 S.Ct. 1937,
1949-50 (2009) (quoting Bell Atlantic Corp. v. Twombly, 550
U.S. 544, 570 (2007)). In the context of inter partes
proceedings before the Board, the claimant must plead factual
content that allows the Board to draw a reasonable inference
that the petitioner has standing and that a valid ground for

counterclaimant need not allege that a likelihood of confusion
will be avoided through the restriction.” TBMP § 313.01
(emphasis added). TBMP § 309.03(d) contains a similar provision.
Opposition Nos. 91182207 & 91184467

4
cancellation exists. Cf. Bell Atlantic v. Twombly, 550 U.S.
at 556. In particular, the claimant must allege well-pleaded
factual matter and more than “[t]hreadbare recitals of the
elements of a cause of action, supported by mere conclusory
statements,” to state a claim plausible on its face. Iqbal,
556 U.S. 662, 129 S. Ct. at 1949 (citing Twombly, 550 U.S. at
555).
Here, OsO’s allegation of standing is based on its
position as defendant in the oppositions. This is sufficient
to plead its standing. See Ohio State University v. Ohio
University, 51 USPQ2d 1289, 1293 (TTAB 1999).
We now turn to the sufficiency of the counterclaim, and
note that both parties misapprehend the real issue regarding
the sufficiency of OsO’s pleading of the counterclaim.
Notwithstanding OsO’s invocation of Section 18 in its
counterclaim, and OsO’s argument that Section 18 is the only
source of the Board’s authority to effect the remedy of
partial cancellation, OsO’s counterclaim of abandonment is
sufficient without reference to Section 18. To the extent
that J&J is asserting that the counterclaim does not set
forth a proper pleading under Section 18 because it does not
include an allegation that granting the counterclaim will
help avoid a likelihood of confusion, the assertion is
inapposite because, as noted, this particular counterclaim
Opposition Nos. 91182207 & 91184467

5
for partial abandonment does not require reference to
Section 18.
We find the counterclaim is sufficient as a claim of
partial abandonment, which does not require any reference to
avoidance of a likelihood of confusion. OsO has
sufficiently pleaded a ground for partial cancellation by
alleging abandonment of the mark as to particular goods
through nonuse with no intent to resume use. See DAK
Industries, 35 USPQ2d at 1438. See also Otto International,
Inc. V. Otto Kern GmbH, 83 USPQ2d 1861, 1863 (TTAB 2007)
(pleading of abandonment must set forth prima facie case by
pleading either at least three consecutive years of non-use,
or facts that show period of non-use less than three years
coupled with pleading of defendant’s intent not to resume
use).
Section 18 provides, among other powers, the power to
“cancel the registration in whole or in part,” to “modify the
application or registration by limiting the goods or services
specified therein” and to “otherwise restrict or rectify with
respect to the register the registration of a registered mark.”
DAK Industries explains, however, that a party can seek partial
cancellation of a registration on a theory of abandonment as to
discrete goods or services, without the need to resort to
Section 18, contrary to OsO’s contention. DAK Industries, at
1437-38 (“Because applicant seeks to strike from opposer’s
Opposition Nos. 91182207 & 91184467

6
registration goods specifically listed therein, applicant need
not plead (as was required in Eurostar) that a finding of
likelihood of confusion will be avoided by the restriction it
seeks.”). DAK Industries also clarified that a party asserting
a Section 18 claim, or counterclaim, must include an allegation
that confusion would be avoided only when it seeks to “modify”
or “restrict” the identification of goods or services, rather
than where, as here, the party seeks to have discrete goods or
services deleted on a theory of abandonment. Id.
OsO’s contention that Section 18 is the “sole source” of
authority for granting the remedy of partial cancellation is
plainly at odds with the instruction of DAK Industries. While
Section 18 provides the authority to partially cancel, restrict
or modify a registration, it must be construed together with
the other statutory sections, such as Section 14. For
instance, the Board has authority under Section 14 to cancel
part of a registration when use of a mark has been abandoned
for specific goods or services listed in the identification, or
to cancel part of a registration when a mark becomes a generic
term for some, but not all, goods or services in a
registration.
In Selfway, Inc. v. Travelers Petroleum, Inc., 579 F.2d
75, 198 USPQ 271, 276 (CCPA 1978), the predecessor of our
primary reviewing court indicated that the power to cancel
provided for in Section 18 must be presumed to be exercised in
Opposition Nos. 91182207 & 91184467

7
a Section 14, or cancellation, proceeding. The Court went on
to interpret Section 18 as providing that the Commissioner (now
Director) may cancel a registration as the result of a
cancellation proceeding. Id. at 276-77. Although the Court
held that Section 18 did not grant the USPTO power to cancel a
registration in part, but only in its entirety, Congress
subsequently amended Section 18 to permit the USPTO to allow
for partial cancellation. Applying the Court’s reasoning to
the case at hand, Section 14 necessarily includes the authority
to cancel the registration in part. Thus, while Section 18
allows the Board to consider claims it could not entertain in
an opposition under Section 13 or a cancellation under Section
14, for example, a restriction in a concurrent use case, or the
entry of a modification to an identification of goods where the
modification would avoid a likelihood of confusion, it does not
change the statutory basis for cancellation where a valid
ground for cancellation exists, such as a partial abandonment
under Section 14, as is the case here.3
Accordingly, J&J’s motion to dismiss OsO’s counterclaim of
partial cancellation of specific goods in the registration due
to abandonment is denied.

3 Our decision in Montecash LLC v. Anzar, 95 USPQ2d 1060 (TTAB
2010) is not to the contrary. There the Board considered whether
Section 18 provides for entry of a disclaimer as an equitable
remedy where a registration is more than five years old. The
Board held that it does not so provide, because to do so would
mean that Section 18 conflicts with Section 14(3) of the Lanham
Opposition Nos. 91182207 & 91184467

8
Proceedings are resumed and dates are reset as set out
below. Discovery has closed, and J&J’s answer to the
counterclaim is due as noted.
Answer to Counterclaim Due: June 15, 2012
Discovery Closes: CLOSED
Plaintiff's Pretrial Disclosures Due: July 30, 2012
30-day testimony period for
plaintiff's testimony to close: September 13, 2012
Defendant/Counterclaim Plaintiff's
Pretrial Disclosures Due: September 28, 2012
30-day testimony period for defendant
and plaintiff in the counterclaim to
close: November 12, 2012
Counterclaim Defendant's and
Plaintiff's Rebuttal Disclosures Due: November 27, 2012
30-day testimony period for defendant
in the counterclaim and rebuttal
testimony for plaintiff to close: January 11, 2013
Counterclaim Plaintiff's Rebuttal
Disclosures Due: January 26, 2013
15-day rebuttal period for plaintiff
in the counterclaim to close: February 25, 2013
Brief for plaintiff Due: April 26, 2013
Brief for defendant and plaintiff in
the counterclaim due: May 26, 2013
Brief for defendant in the
counterclaim and reply brief, if any,
for plaintiff due: June 25, 2013
Reply brief, if any, for plaintiff in
the counterclaim due: July 10, 2013

In each instance, a copy of the transcript of
testimony, together with copies of documentary exhibits,

Act. Id. at 1065. The case at hand does not involve a conflict
between Section 18 and Section 14.
Opposition Nos. 91182207 & 91184467

9
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.
***