UNITED STATES PATENT AND TRADEMARK
`OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`General Contact Number: 571-272-8500
`
`
`
`
`
`
`
`
`
`Mailed: November 7, 2016
`
`Cancellation No. 92063675
`
`Xpress Benefits Solutions, Inc.
`
`v.
`
`Premier Companies, Inc.
`
`
`
`
`
`
`
`DUNN
`
`
`
`Before Seeherman, Ritchie and Masiello, Administrative Trademark Judges:
`
`By the Board:
`
`
`This case comes up on the motion of Respondent, filed June 20, 2016, to dismiss
`
`the petition to cancel for failure to state a claim upon which relief can be granted on
`
`the basis that Petitioner has failed to plead its standing to bring the petition. The
`
`motion is fully briefed.
`
`On September 3, 2013, Registration No. 4397439 issued to Premier Companies,
`
`Inc., a corporation of Nebraska, for the mark PREMIER NATIONAL BENEFITS for
`
`“insurance services, namely, insurance eligibility review and verification and
`
`consultation in the worksite products industry.” The registration includes a claim of
`
`acquired distinctiveness for the term PREMIER and a disclaimer of the term
`
`NATIONAL BENEFITS.
`
`
`
`
`OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`General Contact Number: 571-272-8500
`
`
`
`
`
`
`
`
`
`Mailed: November 7, 2016
`
`Cancellation No. 92063675
`
`Xpress Benefits Solutions, Inc.
`
`v.
`
`Premier Companies, Inc.
`
`
`
`
`
`
`
`DUNN
`
`
`
`Before Seeherman, Ritchie and Masiello, Administrative Trademark Judges:
`
`By the Board:
`
`
`This case comes up on the motion of Respondent, filed June 20, 2016, to dismiss
`
`the petition to cancel for failure to state a claim upon which relief can be granted on
`
`the basis that Petitioner has failed to plead its standing to bring the petition. The
`
`motion is fully briefed.
`
`On September 3, 2013, Registration No. 4397439 issued to Premier Companies,
`
`Inc., a corporation of Nebraska, for the mark PREMIER NATIONAL BENEFITS for
`
`“insurance services, namely, insurance eligibility review and verification and
`
`consultation in the worksite products industry.” The registration includes a claim of
`
`acquired distinctiveness for the term PREMIER and a disclaimer of the term
`
`NATIONAL BENEFITS.
`
`
`
`
`
`Cancellation No. 92063675
`
`
`On April 20, 2016, Xpress Benefits Solutions, Inc., a corporation of Missouri, filed
`
`a petition to cancel Registration No. 4397439 based on claims of likelihood of
`
`confusion and fraud. In lieu of an answer, Respondent filed the instant motion to
`
`dismiss.
`
`In order to withstand a motion to dismiss, Petitioner need only allege such facts
`
`which, if proved, would establish that Petitioner is entitled to the relief sought; that
`
`is, (1) Petitioner has standing to bring the proceeding, and (2) a valid statutory
`
`ground exists for cancelling the registration. Cunningham v. Laser Golf Corp., 222
`
`F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000). “Standing is the more liberal of the two
`
`elements and requires only that the party seeking cancellation believe that it is likely
`
`to be damaged by the registration. A belief in likely damage can be shown by
`
`establishing a direct commercial interest. Id. (citations omitted).
`
`With respect to standing, Petitioner alleges that it owns 50% of a limited liability
`
`company named Premier National Benefits, LLC (PNB) (Par. 2); that PNB first used
`
`the mark PREMIER NATIONAL BENEFITS in interstate commerce in connection
`
`with insurance eligibility review and verification and consultation in the worksite
`
`products industry, the same services listed in subject Registration No. 4397439, at
`
`least as early as March 2012 (Par. 3); that Respondent sent a letter to PNB citing the
`
`subject registration and demanding that PNB cease its use of the PREMIER
`
`NATIONAL BENEFITS mark (Par. 8); and that as 50% owner of PNB Petitioner has
`
`a “bona fide and legitimate interest in [PNB’s] continued right to use the Common
`
`Law PREMIER NATIONAL BENEFITS Mark [and c]onsequently, the continuance
`
`
`
`2
`
`
`
`Cancellation No. 92063675
`
`of the [subject registration] harms Petitioner’s interest in and to the Common Law
`
`PREMIER NATIONAL BENEFITS Mark” (Par. 11).
`
`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 a complaint. Advanced Cardiovascular
`
`Systems Inc. v. SciMed Life Systems Inc., 988 F.2d 1157, 26 USPQ2d 1038, 1041 (Fed.
`
`Cir. 1993). 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 (2009), quoting Bell Atlantic Corp. v. Twombly, 550
`
`U.S. 544, 570 (2007). The Board must accept as true all of the plaintiff’s well-pleaded
`
`allegations, and must construe the complaint in the light most favorable to the
`
`plaintiff. Advanced Cardiovascular Systems Inc. v. SciMed Life Systems Inc., 26
`
`USPQ2d at 1041. Whether a plaintiff can actually prove its allegations is a matter to
`
`be determined after the parties have had an opportunity to submit evidence in
`
`support of their respective positions. Guess? IP Holder LP v. Knowluxe LLC, 116
`
`USPQ2d 2018, 2019-2020 (TTAB 2015).
`
`In support of the motion to dismiss for lack of standing, Respondent alleges that
`
`Petitioner does not plead its own use of the PREMIER NATIONAL BENEFITS mark
`
`in its individual capacity. However, the Board’s primary reviewing court has held
`
`that standing “requires only a belief of damage resulting from the [defendant’s]
`
`registration, and while that belief must have some reasonable basis in fact, this
`
`statutory provision . . . has been liberally construed”; and that “Proprietary rights in
`
`the [plaintiff] are not required.” See Jewelers Vigilance Committee, Inc. v. Ullenberg
`
`
`
`3
`
`
`
`Cancellation No. 92063675
`
`Corp., 823 F.2d 490, 2 USPQ2d 2021, 2024 (Fed. Cir. 1987). See also J. Thomas
`
`McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION §20.7 (4th ed.
`
`September 2016 update) (“Even a party with no direct proprietary ownership interest
`
`in a trademark can have standing to oppose if it meets the requirement of having a
`
`real commercial interest and is not merely an intermeddler.”).
`
`In fact, a plaintiff pleading an interest in a mark, based on the plaintiff’s
`
`relationship with the user of the mark, may reasonably believe that financial injury
`
`to itself will result from injury to the user of the mark. See Tanners’ Council of
`
`America, Inc. v. Gary Industries Inc., 440 F.2d 1404, 169 USPQ 608, 609-10 (CCPA
`
`1971) (“In the case now before us, the opposer is an incorporated organization which
`
`has established that its income is dependent upon the volume of the sales made by
`
`its members. It seems clear enough that registration of the mark as applied for could
`
`weaken the sales positions of appellants’ members and hence reduce the income of
`
`appellant. We think this last factor is alone sufficient to bring appellant within the
`
`category of ‘any person who believes he would be damaged’ by the registration.”);
`
`General Motors Corp. v. Aristide & Co., Antiquaire de Marques, 87 USPQ2d 1179,
`
`1181 (TTAB 2008) (because opposer “used the mark LASALLE for vehicles until 1940,
`
`and … presently licenses the mark LASALLE …. opposer has an interest in this
`
`proceeding beyond that of the general public”); BRT Holdings Inc. v. Homeway Inc.,
`
`4 USPQ2d 1952, 1956 (TTAB 1987) (“opposer owns a substantial portion (or, in one
`
`case, all) of the stock of the six corporations which own the physical assets of the six
`
`
`
`4
`
`
`
`Cancellation No. 92063675
`
`‘HOMEWAY’ retail furniture stores. Thus, any damage to the six corporations is
`
`likely to result also in financial injury to opposer.”)
`
`Accordingly, the Board finds that Petitioner’s pleading of its 50% ownership
`
`interest in the entity which uses the pleaded PREMIER NATIONAL BENEFITS
`
`mark is sufficient to plead Petitioner’s standing to bring this petition. See Young v.
`
`AGB Corp., 152 F.3d 1377, 47 USPQ2d 1752, 1753 (Fed. Cir. 1998).
`
`Respondent also alleges that Petitioner “is contractually prohibited from acting
`
`on behalf of PNB LLC to challenge the ‘439 Registration.” The petition to cancel does
`
`not plead that Petitioner is acting on behalf of PNB, but on its own behalf. Moreover,
`
`a contractual prohibition is not an argument relevant to Petitioner’s standing, but an
`
`affirmative defense. See M-5 Steel Mfg. Inc. v. O'Hagin's Inc., 61 USPQ2d 1086
`
`(TTAB 2001) (“applicant asserts as an affirmative defense that opposer is
`
`contractually estopped from opposing applicant's applications, that opposer has
`
`waived its rights to oppose and that opposer has breached an agreement by filing
`
`these oppositions”). See also Danskin, Inc. v. Dan River, Inc., 498 F.2d 1386, 182
`
`USPQ 370, 372 (CCPA 1974) (affirming grant of summary judgment dismissing the
`
`opposition because the terms of the parties' settlement agreement barred opposer
`
`from challenging applicant's registration of its mark); Ron Cauldwell Jewelry Inc. v.
`
`Clothestime Clothes Inc., 63 USPQ2d 2009, 2013 (TTAB 2002) (Board ruling on
`
`summary judgment that the parties' agreement prevented opposer from objecting to
`
`registration of applicant's mark).
`
`
`
`5
`
`
`
`Cancellation No. 92063675
`
`
`With respect to the grounds for cancellation, the sufficiency of which is not
`
`disputed, the Board has reviewed the petition to cancel and finds that it sufficiently
`
`pleads the grounds of likelihood of confusion and fraud. See Wet Seal Inc. v. FD
`
`Management Inc., 82 USPQ2d 1629, 1634 (TTAB 2007) citing Otto Roth & Co. v.
`
`Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40, 43 (CCPA 1981) and
`
`Daimlerchrysler Corporation and Chrysler, LLC v. American Motors Corporation, 94
`
`USPQ2d 1086, 1089 (TTAB 2010).
`
`Inasmuch as the petition to cancel pleads Petitioner’s standing and grounds for
`
`cancellation, Respondent’s motion to dismiss the petition to cancel for failure to state
`
`a claim upon which relief can be granted is DENIED.
`
`The Board notes that the parties refer to multiple corporate disputes. The Board
`
`orders the parties to notify the Board promptly in writing if they become parties to,
`
`or involved in, a civil action involving related marks or other issues of law or fact
`
`which overlap with, or may otherwise affect, this case.
`
`Proceedings are resumed, and Respondent is allowed until THIRTY DAYS from
`
`the mailing date of this order to file its answer to the petition to cancel.
`
`Dates are reset below:
`
`Time to Answer
`Deadline for Discovery Conference
`Discovery Opens
`Initial Disclosures Due
`Expert Disclosures Due
`Discovery Closes
`Plaintiff's Pretrial Disclosures
`Plaintiff's 30-day Trial Period Ends
`Defendant's Pretrial Disclosures
`Defendant's 30-day Trial Period Ends
`
`
`
`6
`
`12/5/2016
`1/4/2017
`1/4/2017
`2/3/2017
`6/3/2017
`7/3/2017
`8/17/2017
`10/1/2017
`10/16/2017
`11/30/2017
`
`
`
`Cancellation No. 92063675
`
`
`Plaintiff's Rebuttal Disclosures
`Plaintiff's 15-day Rebuttal Period Ends
`
`12/15/2017
`1/14/2018
`
`In each instance, a copy of the transcript of testimony together with copies of doc-
`
`
`
`umentary exhibits, must be served on the adverse party within thirty days after com-
`
`pletion 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.
`
`***
`
`
`
`
`
`NOTICE: CHANGES TO THE TRADEMARK TRIAL AND APPEAL BOARD
`(“BOARD”) RULES OF PRACTICE WILL BE EFFECTIVE JANUARY 14, 2017
`
`The USPTO published a Notice of Final Rulemaking in the Federal Register on Oc-
`tober 7 2016, at 81 F.R. 69950. It sets forth several amendments to the rules that
`govern inter partes (oppositions, cancellations, concurrent use) and ex parte appeal
`proceedings.
`For complete information, the parties are referred to:
`• The Board’s home page on the uspto.gov website
`• The final rule
`• A chart summarizing the affected rules and changes.
`
`
`For all proceedings, including those already in progress on January 14, 2017,
`some of the changes are:
`• All pleadings and submissions must be filed through ESTTA. Trademark Rules
`2.101, 2.102, 2.106, 2.111, 2.114, 2.121, 2.123, 2.126, 2.190 and 2.191.
`• Service of all papers must be by email, unless otherwise stipulated. Trademark
`Rule 2.119.
`• Response periods are no longer extended by five days for service by mail.
`Trademark Rule 2.119.
`• Deadlines for submissions to the Board that are initiated by a date of service
`are 20 days. Trademark Rule 2.119. Responses to motions for summary judg-
`ment remain 30 days. Similarly, deadlines for responses to discovery requests
`remain 30 days.
`• All discovery requests must be served early enough to allow for responses prior
`to the close of discovery. Trademark Rule 2.120. Duty to supplement discovery
`responses will continue after the close of discovery.
`
`
`
`7
`
`
`
`Cancellation No. 92063675
`
`
`• Motions to compel initial disclosures must be filed within 30 days after the
`deadline for serving initial disclosures. Trademark Rule 2.120.
`• Motions to compel discovery, motions to test the sufficiency of responses or ob-
`jections, and motions for summary judgment must be filed prior to the first
`pretrial disclosure deadline. Trademark Rules 2.120 and 2.127.
`• Requests for production and requests for admission, as well as interrogatories,
`are each limited to 75. Trademark Rule 2.120.
`• Testimony may be submitted in the form of an affidavit or declaration. Trade-
`mark Rules 2.121, 2.123 and 2.125
`• New requirements for the submission of trial evidence and deposition tran-
`scripts. Trademark Rules 2.122, 2.123, and 2.125.
`
`• For proceedings filed on or after January 14, 2017, in addition to the
`changes set forth above, the Board’s notice of institution constitutes service of
`complaints. Trademark Rules 2.101 and 2.111.
`
`This is only a summary of the significant content of the Final Rule. All parties in-
`volved in or contemplating filing a Board proceeding, regardless of the date of com-
`mencement of the proceeding, should read the entire Final Rule.
`
`
`
`8
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