Precedential No. 41: Genericness Counterclaim Survives Dismissal of Opposer's 2(d) Claim, Says TTAB

The Board dismissed the Section 2(d) likelihood of confusion claims of opposer Delaware Quarries and sustained applicant PlayCore's counterclaim for cancellation of opposer's pleaded registration on the grounds of genericness and, alternatively, mere descriptiveness. Delaware requested reconsideration, contending that once its claims were dismissed, PlayCore lacked standing to pursue its counterclaim, and therefore the Board erred in sustaining the counterclaims. The Board, considering the issue to be one of mootness rather than standing, denied the request for reconsideration. Delaware Quarries, Inc. v. PlayCore IP Sub, Inc., 108 USPQ2d 1331 (TTAB 2013) [precedential].

Delaware Quarries opposed PlayCore's application to register the mark ROCKSCAPE for "playground equipment, namely, climbing units," claiming a likelihood of confusion with its identical, registered mark for "stone, gravel or similar products, namely boulders, stone veneer, and crushed stone for use in landscaping, building construction, and paving." The Board dismissed the opposition, finding that Delaware had failed to show a viable relationship between the goods, that the purchasers of applicant's more expensive product would be sophisticated, and that third-party use weakened the ROCKSCAPE mark. Delaware Quarries, Inc. v. PlayCore IP Sub, Inc., Opposition No. 91190282 (July 2, 2013) [not precedential]. [TTABlogged here].

As to the counterclaims, PlayCore submitted evidence of dozens of websites using the term "rockscape" in connection with landscaping with rocks, stones, etc. The Board concluded that these uses "clearly establish" that "rockscape" would be understood by relevant consumers as a generic term for Delaware's identified goods. For the sake of completeness the Board ruled that Delaware's mark was at least merely descriptive, and since Delaware did not claim acquired distinctiveness, the Board sustained the petition for cancellation on that alternative ground as well.

Delaware Quarries requested reconsideration of the Board's decision, contending that once the Board dismissed the Section 2(d) claims, PlayCore no longer had standing to seek cancellation of the ROCKSCAPE registration. The Board disagreed that PlayCore lacked standing, since standing is assessed at the time the counterclaim is filed and as a general rule a defendant in an opposition has inherent standing to assert its counterclaims.

Although the Board had previously considered these circumstances as raising an issue of standing, the Supreme Court, in Cardinal Chemical Co. v. Morton Int'l Inc., 508 U.S. 83 (1993), made it clear that the issue is one of mootness: whether the dismissal of opposer's claims rendered the counterclaims moot.

In Cardinal Chemical, the Supreme Court ruled that a counterclaim for a declaratory judgment of patent invalidity was not rendered moot when the CAFC affirmed the district court's finding of non-infringement. The Court based its decision on two points: first, a party faced with a charge of patent infringement will remain concerned about possible future infringement charges if it markets similar products in the future; second, the public has an interest in resolving questions of patent validity.

Similar concerns apply in the current case. An applicant/defendant might later face an infringement action to enjoin its use of the mark, and a finding of genericness - even in the narrow context of an opposition proceeding - would undoubtedly be "of interest" to the applicant. In addition, the public has an interest in resolving questions regarding the genericness of a registered trademark. See, e.g., Loglan Inst., Inc. v. Logical Language Group, Inc., 22 USPQ2d 1532, 1534 (Fed. Cir. 1992) (noting "the public interest in a cancellation proceeding to rid the register of a generic mark"). [Isn't "generic mark" a contradiction in terms? - ed.].

And so the Board denied the request for reconsideration.

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TTABlog comment: Is a trademark registration really that similar to a patent for purposes of the mootness question? Once a patent is declared invalid in a final decision, it's dead as a doornail. But when a trademark registration is cancelled, the "mark," if there is one, still lives on in the common law. And is a TTAB finding of genericnesss binding in a subsequent court action, with probably a different factual record? Would you appeal this decision?

Text Copyright John L. Welch 2013.