Robert Doylev.Al Johnson's Swedish Restaurant & Butik, Inc.

Trademark Trial and Appeal Board

Feb 10, 2012

No. 92054059 (T.T.A.B. Feb. 10, 2012)

MBA Mailed: February 10, 2012

Cancellation No. 92054059
Robert Doyle

v.

Al Johnson’s Swedish
Restaurant & Butik, Inc.

Before Zervas, Cataldo and Mermelstein, Administrative
Trademark Judges

By the Board:

This case now comes up for consideration of
respondent’s motion, filed June 10, 2011, to dismiss the
petition for cancellation for failure to state a claim upon
which relief may be granted. Petitioner opposes the motion.
Background and Petitioner’s Allegations
By way of background, respondent owns two registrations
for the mark displayed below

for “restaurant services” and “Retail store and online
retail store services featuring gifts, food, clothing …”
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS OPINION IS A
PRECEDENT OF THE
T.T.A.B.
Cancellation No. 92054059
2
(the “Registrations”).1 Both of the Registrations include
descriptions of respondent’s mark, which are: “[t]he mark
consists of goats on a roof of grass” (Registration No.
2007624); and “[t]he mark consists of building décor with a
roof comprised of grass and bearing several goats on the
roof” (Registration No. 3942832). In his petition to cancel
the Registrations, petitioner alleges that
Many establishments in the classes to
which Registrant’s mark apply have,
because of Registrant’s marks, refrained
from placing goats on their grass roofs,
as a result of which Petitioner has
been, and will continued (sic) to be,
damaged in that Petitioner has been, and
will continue to be, unable to satisfy
his desire to take photographs of goats
on grass roofs.

Notice of Opposition ¶ 1. As grounds for cancellation,
petitioner alleges that “Registrant’s marks primarily serve,
and are intended by Registrant to primarily serve, as a form
of entertainment and attraction in order to enhance the
enjoyment of visiting Registrant’s restaurant; and, as such,
Registrant’s marks are functional.” Id. ¶ 2. Petitioner
further alleges that “[t]he two components of Registrant’s
marks are themselves functional,” in that: (1) respondent’s
“sod roof helps keep temperatures lower,” thus reducing
respondent’s energy costs and making its restaurant more
comfortable; and (2) the goats on respondent’s roof eat the

1 Registration No. 2007624, issued October 15, 1996, and
Registration No. 3942832, issued April 12, 2011, respectively.
Cancellation No. 92054059
3
grass, which “negates … the need to cut the grass.” Id.
¶¶ 5, 7, 8.
The Parties’ Contentions
In its motion to dismiss, respondent argues that
petitioner lacks standing and failed to state a legally
sufficient claim for relief. With respect to standing,
respondent argues that petitioner has not alleged that he
has a “real interest” or a “direct and personal stake” in
this proceeding, because petitioner does not allege that he
offers, or intends or desires to offer, restaurant or gift
shop services. Respondent further argues that the petition
“contains no facts to support that [petitioner] has … a
reasonable basis to believe he will be damaged.” With
respect to petitioner’s claim that respondent’s mark is
functional, respondent argues that the petition contains no
“[a]llegations of how the Goats on the Roof Décor is
functional with respect to the services identified in” the
Registrations. Furthermore, if respondent’s décor were
found to be functional merely because it is “entertaining
and attractive,” then “no restaurant décor could be
protected as trade dress.” Finally, respondent requests
that the petition be dismissed with prejudice, because it
“wastes the Board’s time and resources merely to test a
legal premise destined to fail ….”
Cancellation No. 92054059
4
In response, petitioner argues that he need not allege
current or intended use of a mark similar to respondent’s
mark for restaurant or gift shop services in order to
adequately allege his standing. Rather, petitioner claims
that it is enough “that he personally has been, or will be,
negatively affected by Registrant’s marks.” Petitioner also
argues that “a design feature whose primary purpose is
functional or aesthetic is not registrable.”
Decision
In order to survive respondent’s motion to dismiss for
failure to state a claim under Fed. R. Civ. P. 12(b)(6),
petitioner’s complaint must allege facts which would, if
proved, establish that: (1) petitioner has standing to
maintain the proceeding; and (2) there is a valid ground for
cancelling the Registrations. Young v. AGB Corp., 152 F.3d
1377, 47 USPQ2d 1752, 1754 (Fed. Cir. 1998); TBMP § 503.02
(3d ed. 2011). With respect to standing, petitioner must
allege facts which, if ultimately proven, would establish
that petitioner has a “real interest,” i.e., a “personal
stake,” in the proceeding. Ritchie v. Simpson, 170 F.3d
1092, 50 USPQ2d 1023, 1025-26 (Fed. Cir. 1999); Lipton
Industries, Inc. v. Ralston Purina Co., 213 USPQ 185, 189
(TTAB 1982). Furthermore, petitioner’s allegation that he
would be damaged by the Registrations “must have a
‘reasonable basis in fact.’” Ritchie, 170 F.3d 1092, 50
Cancellation No. 92054059
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USPQ2d at 1027 (quoting Universal Oil Prod. Co. v. Rexall
Drug & Chem. Co., 463 F.2d 1122, 174 USPQ 458, 459-60 (CCPA
1972)). As to whether petitioner has sufficiently alleged a
valid ground for cancellation, the petition “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)). Apart from specifying that sufficient factual
matter be “well-pleaded” and, when so pleaded be accepted as
true, the Court also explains that “[t]hreadbare 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, 129 S. Ct. 1937,
1949 (2009) (citing Twombly, 550 U.S. at 555).
Here, petitioner has not adequately alleged his
standing. Indeed, while we must assume that petitioner has
a “real interest” or “personal stake” in taking photographs
of goats on grass roofs generally, petitioner does not
relate this alleged impairment of his asserted interest in
taking such photographs to respondent’s service mark in any
manner. In other words, there is no allegation that
respondent’s mark somehow prevents petitioner himself from
placing goats on a grass roof and taking their picture, or
taking pictures of goats on a sod roof found elsewhere (or,
Cancellation No. 92054059
6
for that matter, photographing the goats found on the roof
of respondent’s restaurant).2 Similarly, petitioner fails
to relate his alleged interest in taking such photographs to
restaurant or gift shop services.
Perhaps even more importantly, petitioner’s alleged
belief that he would be damaged by the Registrations is not
reasonable. In fact, while respondent’s mark could prevent
petitioner from offering restaurant or gift shop services,
or related services, under a mark that is confusingly
similar to respondent’s mark, nothing about respondent’s
mark or trademark law prevents photography in general of, or
even the placement of, goats on sod roofs. In other words,
petitioner is entirely free to take the photographs he wants
to take, despite respondent’s Registrations. While
respondent’s Registrations might prevent petitioner from
using any photographs of goats on sod roofs as a service
mark in connection with restaurant or gift shop services, or
related services, petitioner has not alleged that he uses or
wants to use the desired photographs in such a manner, or
that he has any right to do so. To the contrary, in his
response to respondent’s motion, petitioner appears to
concede that he is not in a position to use the desired

2 To the extent that petitioner intends to allege that
respondent’s mark prevents any placement of goats on sod roofs,
there is no such prohibition under trademark law, much less any
such law cited in the petition.

Cancellation No. 92054059
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photographs as marks in connection with restaurant, gift
shop or related services. In short, petitioner alleges that
he wants to take photographs of goats on roofs, but does not
allege that anything about respondent’s mark or
Registrations prevents him from doing so. Therefore, he has
not adequately alleged a reasonable basis in fact to support
his claim of standing.3 McDermott v. San Francisco Women’s
Motorcycle Contingent, 81 USPQ2d 1212, 1214 (TTAB 2006),
aff’d, 240 Fed. Appx. 865 (Fed. Cir. 2007) (“The purpose of
the standing requirement, which is directed solely to the
interest of the plaintiff, is to prevent litigation when
there is no real controversy between the parties.”).
Turning next to petitioner’s functionality claim, “a
product feature is functional ‘if it is essential to the use
or purpose of the article or if it affects the cost or
quality of the article.’” Mag Instrument Inc. v. Brinkmann
Corp., 96 USPQ2d 1701, 1718 (TTAB 2010), aff’d, ___ Fed.
Appx. ___, 2011 WL 5400095 (Fed. Cir. 2011) (quoting Inwood
Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844,
214 USPQ 1, 4 n. 10 (1982)). Here, however, petitioner

3 As noted, petitioner alleges that “[m]any establishments in
the classes to which Registrant’s mark apply have, because of
Registrant’s marks, refrained from placing goats on their grass
roofs ….” To the extent petitioner alleges that others have been
damaged by respondent’s Registrations, such damage does not
constitute petitioner’s personal interest in this proceeding.
Petitioner does not allege facts establishing that injury to such
“establishments” constitutes damage to him or that he has any
legitimate right to petition for cancellation on their behalf.

Cancellation No. 92054059
8
fails to relate his claim of functionality to respondent’s
restaurant and gift shop services. That is, the petition is
devoid of any allegation that goats on sod roofs are
essential to the use or purpose of restaurant or gift shop
services. And while petitioner alleges that respondent’s
goats and sod roof affect respondent’s costs, by reducing
respondent’s energy and mowing expenses, this allegation is
not specific, and is in fact completely unrelated, to
restaurant or gift shop services. In other words, by
petitioner’s logic, goats on sod roofs would be functional
for any good or service provided through a facility with a
roof that could be covered in sod, because goats on sod
roofs reduce the good or service provider’s costs. Yet, it
is well settled that functionality must be assessed in
connection with the goods or services at issue, in this case
restaurant and gift shop services. See Two Pesos, Inc. v.
Taco Cabana, Inc., 505 U.S. 763, 769-70 (1992) and Duramax
Marine LLC v. R.W. Fernstrum & Co., 80 USPQ2d 1780, 1791-94
(TTAB 2006). Moreover, while respondent’s goats on a sod
roof may attract customers, there is no allegation that
goats on sod roofs are superior to other methods of
attracting customers to restaurants or gift shops, and
“there is no prohibition against a trade dress mark both
functioning to indicate source and being aesthetically
pleasing.” See, In re Hudson News Co., 39 USPQ2d 1915,
Cancellation No. 92054059
9
1920, 1923 (TTAB 1996); see also, Qualitex Co. v. Jacobson
Products Co., Inc., 514 U.S. 159, 165 (1995) (“The
functionality doctrine prevents trademark law, which seeks
to promote competition by protecting a firm’s reputation,
from instead inhibiting legitimate competition by allowing a
producer to control a useful product feature.”).
Accordingly, petitioner’s factual allegations, even accepted
as true, nevertheless cannot, as a matter of law, establish
the functionality of respondent’s marks in connection with
the subject services.
Conclusion
For all of these reasons, respondent’s motion to
dismiss the petition for cancellation is hereby GRANTED, and
the petition is DISMISSED, WITHOUT PREJUDICE. Specifically,
petitioner is allowed until TWENTY DAYS from the mailing
date of this order to, if warranted, file an amended
petition for cancellation which sufficiently alleges
petitioner’s standing, and a proper and appropriate claim of
functionality, failing which the original petition for
cancellation will stand dismissed with prejudice. However,
in considering whether to attempt to replead his
allegations, petitioner should carefully review Fed. R. Civ.
P. 11. Petitioner should also be aware of the extreme
difficulties he would likely face in ultimately proving that
respondent’s mark is functional.
Cancellation No. 92054059
10
In considering the issue of
functionality, we consider the following
(known as the Morton-Norwich factors):
(1) the existence of a utility patent
disclosing the utilitarian advantages of
the design; (2) advertising materials in
which the originator of the design touts
the design’s utilitarian advantages; (3)
the availability to competitors of
functionally equivalent designs; and (4)
facts indicating that the design results
in a comparatively simple or cheap
method of manufacturing the product.

Mag Instrument, 96 USPQ2d at 1718.
In the event petitioner files an amended petition to
cancel in accordance with this decision, respondent is
allowed until thirty (30) days from the date of service
thereof to answer or otherwise move with respect thereto.
Proceedings herein are resumed, and disclosure,
conferencing, discovery, trial and other dates are reset as
follows:
Deadline for Discovery Conference April 27, 2012

Discovery Opens April 27, 2012

Initial Disclosures Due

May 27, 2012

Expert Disclosures Due September 24, 2012

Discovery Closes October 24, 2012

Plaintiff's Pretrial Disclosures December 8, 2012

Plaintiff's 30-day Trial Period Ends January 22, 2013

Defendant's Pretrial Disclosures February 6, 2013

Defendant's 30-day Trial Period Ends March 23, 2013

Plaintiff's Rebuttal Disclosures April 7, 2013
Cancellation No. 92054059
11

Plaintiff's 15-day Rebuttal Period Ends May 7, 2013

In each instance, a copy of the transcript of
testimony, together with copies of documentary exhibits,
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 2.128(a) and (b). An oral hearing will be set only
upon request filed as provided by Trademark Rule 2.l29.
***