Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 INTERNET, INC.
v.
INTERNET SOCIETY AND CORPORATION FOR NATIONAL RESEARCH INITIATIVES
Opposition Nos. 91,237, 94,357
Cancellation No. 23,324
January 4, 1996
By the Board
J.D. Sams , J.E. Rice and E.J. Seeherman
Administrative Trademark Judges
In Opposition No. 94,357 and in Cancellation No. 23,324, defendant Internet, Inc. (hereinafter IINC, or respondent, or applicant) has moved under FRCP 12(b)(6) to dismiss the Section 2(a) and Section 2(d) claims asserted in both cases by plaintiffs Internet Society (hereinafter ISOC, or petitioner, or opposer) and Corporation for National Research Initiatives (hereinafter CNRI, or petitioner, or opposer). Defendant IINC also has moved under FRCP 12(f) to strike the allegations pertaining to those claims from the notice of opposition (paragraphs 1-4 and 9) and the petition for cancellation (paragraphs 8 and 9). Because the motions in the two cases involve the same substantive legal analysis, and because, as noted below, Cancellation No. 23,324 is to be consolidated with the previously consolidated Opposition Nos. 91,237 and 94,357, we are deciding the motions in a single opinion. [FN1]
After careful consideration of the parties' arguments, we decide these motions as follows.
As a preliminary matter, we note that petitioners ISOC and CNRI, in response to IINC's FRCP 12(b)(6) motion to dismiss, have submitted materials outside the pleadings. [FN2] In accordance with the discretion given us under the rules, we have excluded these materials, and therefore have not converted IINC's motion to dismiss into a motion for summary judgment. See FRCP 12(b). We have not relied on these extraneous materials in deciding the motion to dismiss, and have determined the sufficiency of petitioners' pleading by looking solely to the pleading itself. [FN3]
We turn first to respondent's motion to dismiss petitioners' claim under Section 2(a). [FN4] Petitioners have alleged, in paragraph 8 of the petition for cancellation, that:
Continued existence of the Registrations is contrary to law and specifically, 15 U.S.C. Section 1052(a), as the mark of the Registrations consists of matter (the word INTERNET) which falsely suggests a connection with institutions or national symbols [FN5], namely, the Internet.
In National Aeronautics and Space Administration v. Bully Hill Vineyards Inc., 3 USPQ2d 1671, 1676 (TTAB 1987), the Board explained the derivation and purpose of the false suggestion of a connection claim under Section 2(a):
This Lanham Act claim [false suggestion of a connection] evolved out of the concepts of the rights of privacy and publicity, protecting an individual's control over the use of his "identity" or "persona." University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co. Inc., 703 F.2d 1372, 217 USPQ 505 (Fed.Cir.1983). While a party's interest in its identity does not depend for its existence on the adoption of and use of a technical trademark, a party must nevertheless have a protectible interest in a name (or its equivalent). Where a name claimed to be appropriated does not point uniquely and unmistakably to that party's personality or "persona," there can be no false suggestion. Buffett v. Chi-Chi's, Inc., 226 USPQ 428, 429 (TTAB 1985).
*2 Thus, in inter partes proceedings before the Board, an essential element of a Section 2(a) claim of false suggestion of a connection is that the defendant's mark must point uniquely and unmistakably to the identity or persona of the "person" or "institution" asserting the claim. If the defendant's mark does not point uniquely and unmistakably to the plaintiff's identity or persona, then there can be no false suggestion of a connection. See, e.g., National Aeronautics and Space Administration v. Bully Hill Vineyards Inc., supra (generic term SPACE SHUTTLE cannot serve as the basis for NASA's Section 2(a) claim.)
In this case, petitioners have failed to state a claim showing that they are entitled to relief under the "false suggestion of a connection" provision of Section 2(a) because they have not alleged, nor can it reasonably be inferred from their pleading, that INTERNET points "uniquely and unmistakably" to petitioners' own identity or persona. Indeed, by the affirmative allegations in their pleading, petitioners have admitted that INTERNET is not their name or identity, but rather the name of the "network of networks" itself.
For example, in paragraph 1 of the petition, petitioners allege that " 'Internet' is a well-known name for tens of thousands of globally interconnected networks." In paragraph 2, petitioners allege that "[t]he term 'Internet' is used by the U.S. Government and others to describe the 'network of networks' ... offering service to the public at large." Again, at paragraph 7, petitioners allege that "Internet is the well-known name of a global network of networks that are connected to each other ..." In Paragraph 9, petitioners allege that "Internet" has been previously used in the U.S. "by many others."
In view of petitioner's allegations to the effect that INTERNET is widely known and used as the name of the "network of networks" itself, rather than as petitioners' (or anyone else's) [FN6] name or identity, we find that they have failed to state a claim showing that they are entitled to relief under Section 2(a). Accordingly, we grant respondent's motion to dismiss petitioners' Section 2(a) claim. See FRCP 12(b)(6). Furthermore, we find that respondents' motion to strike paragraph 8 of the petition for cancellation is well-taken, and therefore we grant that motion as well. See FRCP 12(f).
We turn next to respondent's motion to dismiss petitioners' Section 2(d) claim. [FN7] In paragraph 9 of the petition for cancellation, petitioners have alleged as follows:
Continued existence of the Registrations is contrary to law, and specifically, 15 U.S.C. Section 1052(d), as the mark INTERNET of the Registrations so resembles Internet previously used in the U.S. by many others and not abandoned, so as to be likely, when used in connection with the services of Respondent, to cause confusion, or to cause mistake, or to deceive.
A successful Section 2(d) claim of likelihood of confusion between the defendant's mark and the plaintiff's previously used mark "requires that the latter, in fact, function as a mark, that is, as an indication of source." Jewelers Vigilance Committee Inc. v. Ullenberg Corp., 853 F.2d 888, 7 USPQ2d 1628 at 1632 (Fed.Cir.1988). As noted by the Federal Circuit, a prerequisite to a Section 2(d) claim is that someone must have proprietary rights in the previously used term, such that the term serves as an indication of a single, albeit anonymous, source. [FN8] If no one owns proprietary rights in the previously used term, i.e., if the previously used term does not perform a source-indicating function, then the defendant's use of the term cannot cause source confusion, as a matter of law. Id. See, e.g., NASA v. Bully Hill, supra generic term SPACE SHUTTLE cannot serve as the basis for NASA's Section 2(d) likelihood of confusion claim).
*3 In this case, petitioners have failed to allege that they, or anyone else, possesses proprietary rights in the term INTERNET which are superior to respondent's, such that respondent's use of the term would be likely to result in source confusion. [FN9] Indeed, rather than allege that INTERNET has been used by petitioners or any other particular person as a proprietary trademark or trade name or in some other source-indicating manner, petitioners instead have alleged throughout their pleading that INTERNET is used "by many others" in a descriptive or generic sense to refer to or describe the "network of networks" itself.
Because petitioners have failed to allege that they or anyone else has superior proprietary rights in the term INTERNET by virtue of prior use of the term as a source indicator, petitioners have failed to state a claim under Trademark Act Section 2(d). Accordingly, respondent's motion to dismiss is granted. See FRCP 12(b)(6). Furthermore, we grant respondent's motion to strike paragraph 9 of the petition for cancellation. See FRCP 12(f).
As applicant and defendant in Opposition No. 94,357, IINC has filed a motion under FRCP 12(b)(6) to dismiss the Section 2(a) and 2(d) claims of opposers CNRI and ISOC. Because the motion was filed after answer, we have treated it as a motion for judgment on the pleadings as to those claims. See FRCP 12(c) and 12(h)(2). However, we have excluded the matters outside the pleadings submitted by opposers in opposition to applicant's motion, and accordingly have not converted the motion to one for summary judgment. See FRCP 12(c). [FN10]
The substantive issues to be decided in connection with applicant's motion to dismiss in Opposition No. 94,357 are identical to those in Cancellation No. 23,324. In view of the admissions contained in opposers' pleading, and for the reasons discussed above, we find that, as to opposer's Section 2(a) and Section 2(d) claims, applicant is entitled to judgment as a matter of law. Accordingly, we grant applicant's motion for judgment on the pleadings as to the Section 2(a) and Section 2(d) claims. See FRCP 12(c).
Furthermore, on our own initiative under FRCP 12(f), we hereby strike paragraphs 8 and 9 of the notice of opposition in Opposition No. 94,357. However, we decline to strike paragraphs 1-4 of the notice of opposition.
The answer filed by respondent IINC in Cancellation No. 23,324 is noted. Inasmuch as that case now is at issue, it is hereby consolidated with the previously-consolidated Opposition Nos. 91,237 and 94,357. Opposition No. 91,237 remains the "parent" case for this consolidated proceeding.
CONSOLIDATED TRIAL DATES SET
This case shall go forward on the pleaded claims remaining in each of the three cases, namely: IINC's Section 2(d) claim in Opposition No. 91,237 against CNRI's application Serial No. 74/302,079; CNRI and ISOC's Section 2(e) mere descriptiveness claim in Opposition No. 94,357 against IINC's application Serial Nos. 74/374,577, 74/374,583, 74/374,587, 74/374,629, 74/374,753, and 74/360,834; and CNRI and ISOC's Section 2(e) mere descriptiveness and Section 14(3 genericness claims in Cancellation No. 23,324 against IINC's Registration Nos. 1,560,167 and 1,576,857.
*4 Discovery and testimony periods for these consolidated proceedings are hereby set as follows.
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 2.125.
5THE PERIOD FOR DISCOVERY TO CLOSE: April 4, 1996
Testimony period for IINC as plaintiff in Opp. No. 91,237 to June 3, 1996
close: opening thirty days prior thereto)
Testimony period for CNRI as defendant in Opp. No. 91,237 August 2, 1996
and for CNRI and ISOC as plaintiffs in Opp. No. 94,357 and
Canc. No. 23,324 to close: (opening thirty days prior
thereto)
Testimony period for IINC as defendant in Opp. No. 94,357 Oct. 1, 1996
and Canc. No. 23,324, and its rebuttal testimony as
plaintiff in Opp. No. 91,237 to close: (opening thirty
days prior thereto)
Rebuttal testimony period for CNRI and ISOC in Opp. No. Nov. 15, 1996
94,357 and Canc. No. 23,324 to close: (opening fifteen
days prior thereto)
Briefs shall be due as follows: [See Trademark Rule
2.128(a)(2) ].
Brief for IINC as plaintiff in Opp. No. 91,237 shall be due: Jan. 14, 1997
Brief for CNRI as defendant in Opp. No. 91,237 and for CNRI Feb. 13, 1997
and ISOC as plaintiffs in Opp. No. 94,357 and Canc. No.
23,324 shall be due:
Brief for IINC as defendant in Opp. No. 94,357 and Canc. No. March 15, 1997
23,324, and its reply brief as plaintiff in Opp. No.
91,237 shall be due:
Reply brief, (if any), for CNRI and ISOC in Opp. No. 94,357 March 30, 1997
and Canc. No. 23,324 shall be due:
*5 If the parties stipulate to any extension of these dates, the papers should be filed in triplicate and should set forth the dates in the format shown in this order. See Trademark Rule 2.121(d). An oral hearing will be set only upon request filed as provided by Trademark Rule 2.129. See Trademark Rule 1.7 regarding periods closing on Saturday, Sunday or Federal holiday.
In summary, IT IS HEREBY ORDERED THAT:
1. IINC's motion to dismiss the Section 2(a) and Section 2(d) claims in Cancellation No. 23,324 is granted. Paragraphs 8 and 9 of the petition for cancellation in that case are stricken.
2. IINC's motion for judgment on the pleadings as to the Section 2(a) and Section 2(d) claims in Opposition No. 94,357 is granted. Paragraphs 8 and 9 of the notice of opposition in that case are stricken.
3. Cancellation No. 23,324 is consolidated with the previously-consolidated Opposition Nos. 91,237 and 94,357.
4. Discovery and testimony periods for the consolidated cases are set as indicated above. [FN11]
FN1. We note by way of background that, in Cancellation No. 23,324, CNRI and ISOC have petitioned to cancel IINC's Registration Nos. 1,560,167 and 1,576,857, which are both for INTERNET (in typed and in stylized forms, respectively) for Class 38 electronic data transmission services in the banking and retail marketing field. As grounds for cancellation, petitioners have alleged Section 2(a) false suggestion, Section 2(d) likelihood of confusion, Section 2(e) mere descriptiveness, and Section 14(3) genericness. In Opposition No. 94,357, CNRI and ISOC have opposed six IINC applications (Serial Nos. 74/374,577, 74/374/583, 74/374,587, 74/374,629, 74/374,753, and 74/360,834) to register various INTERNET and INTERNET MOST designations as marks for various goods and services, alleging as grounds therefor Section 2(a) false suggestion, Section 2(d) likelihood of confusion, and Section 2(e) mere descriptiveness. Opposition No. 91,237, in which IINC has opposed (under Section 2(d)) CNRI's application Serial No. 74/302,079 to register INTERNET SOCIETY for Class 16 goods, is not at issue in the present motions.
FN2. We also note that CNRI and ISOC have retained separate counsel. The parties are advised that the Board will not engage in duplicate correspondence. See Trademark Rule 2.18. Inasmuch as CNRI is a party to all three proceedings herein, the Board will send its correspondence to the attorneys who have appeared on behalf of CNRI. If CNRI and ISOC desire that the Board's correspondence be sent to counsel for ISOC instead, they should so notify the Board in writing. Furthermore, the Board expects that CNRI and ISOC will be litigating these cases together, and that no duplicate or separate briefs or other papers shall be filed.
FN3. However, we have reviewed the extraneous materials submitted by petitioners in response to the motion to dismiss, as well as the exhibits attached to the petition for cancellation itself. (The latter-referenced exhibits are not of record in this case. See Trademark Rule 2.122(c).) This historical and informational material regarding the Internet network, even if we were to consider it, would not change our decision on the motion to dismiss nor would it change our opinion as to the underlying merits of petitioner's Section 2(a) and Section 2(d) claims, in view of the admissions contained in petitioners' pleading.
FN4. 15 U.S.C. Section 1052(a) provides:
No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it--
(a) consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.
FN5. In their brief in response to the motion to dismiss, petitioners have expressly stated that they are not claiming that INTERNET is a "national symbol."
FN6. In their argument in opposition to the motion to dismiss, petitioners contend that the U.S. Government is the "institution" with which respondent's INTERNET mark would falsely suggest a connection. However, this argument is contrary to petitioner's allegation in paragraph 8 of the petition for cancellation, wherein the Internet itself is expressly identified as the Section 2(a) "institution." Furthermore, it is apparent from petitioners' pleading that the U.S. Government does not use the term "Internet" as its name or identity, inasmuch as petitioners have expressly alleged in paragraph 2 of the petition for cancellation that the U.S. Government uses the term "Internet" to describe the "network of networks."
FN7. Trademark Act Section 2(d) bars registration of a mark which
Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive ...
FN8. Additionally, the Board has held that, "where the plaintiff [in an inter partes proceeding before the Board] does not have a proprietary interest--that is, does not own--the mark which it pleads as the basis for a likelihood of confusion ground, it must have some other legitimate interest in preventing confusion between the pleaded mark on which it predicates its Section 2(d) claim and the mark whose registration it opposes." Holmes Products Corp. v. Duracraft Corp., 30 USPQ2d 1549, 1552 (TTAB 1994). Because, as discussed below, petitioners have not alleged that any such third person owns proprietary rights in the term INTERNET, we do not reach the additional issue of whether petitioners also have a legitimate interest in preventing confusion between that third person's previously used INTERNET mark and respondent IINC's use and registration of INTERNET.
FN9. Petitioners conspicuously have omitted from their pleading any allegation that they, or anyone else, has previously used INTERNET as a "mark" or a "trade name." Compare petitioners' recitation of their Section 2(d) claim in paragraph 9 of the petition for cancellation to the language of Section 2(d), quoted above at footnote 8.
FN10. See our discussion regarding this extraneous material, supra at footnote 3.
FN11. This decision is interlocutory in nature. Appeal may be taken within two months after the entry of a final decision in the case. See Copelands' Enterprises Inc. v. CNV Inc., 887 F.2d 1065, 12 USPQ2d 1562 (Fed.Cir.1989).