Tuesday, February 17, 2015

TTAB Denies Rule 12(b)(6) Motion to Dismiss Section 2(a) HAIRROIN SALON Cancellation

Finding that Petitioner Michael E. Zall had standing and adequately pleaded a claim under Section 2(a) of the Lanham Act, the Board denied Respondent's motion to dismiss this petition for cancellation of a registration for the mark HAIRROIN SALON (in standard character form) for hair salon services, on the ground that the mark is scandalous, immoral, and disparaging. Michael E. Zall v. Salon Hairroin, Inc., Cancellation No. 92059737 (February 14, 2015) [not precedential].

In considering respondent's motion under FRCP 12(b)(6) for failure to state a claim upon which relief can be granted, the Board must accept all of petitioner's well-pleaded allegations as true, and the petition must be construed in a light most favorable to petitioner.

The Board found that Petitioner Zall had pleaded a “real interest” in the proceedings "by alleging that his son died of a drug overdose; that his family suffered for twenty years dealing with his son’s addiction; that after his son’s death he became active in the addiction prevention community and is now Vice President of the Board of Directors of the Rockland Council on Alcoholism and Other Dependence, Inc. in Nanuet, N.Y.; that he has been or will be damaged by the subject registration; and that Respondent’s mark consists of or comprises matter that disparages those affected by addiction, and brings them into contempt, ridicule, and disrepute, and is scandalous and immoral in violation of Section 2(a) of the Lanham Act."

Furthermore, Mr. Zall had a reasonable belief of damage: he alleged that "others share the belief of harm from the subject registration by indicating in Paragraph 13 of the Petition that over 6,000 signatures were included on a petition to the owners of a store in which Respondent’s salon was opened demanding an end to the company’s marketing tactics and that such petition was sponsored by Shatterproof, a non-profit organization that advocates against addiction and the stigma associated therewith."

Reviewing the petition for cancellation, the Board concluded that Mr. Zall had sufficiently pleaded his claim "that the mark at issue is scandalous and immoral and is disparaging of those affected by addiction by alleging, for example, that that the mark is 'offensive, scandalous, immoral, contemptuous…' (Paragraph No. 15); by alleging that he 'finds the use of the term HARROIN for the services rendered by Registrant…despicable, scandalous, immoral and vulgar, and shocking to the sense of propriety…' (Paragraph No. 16); and by alleging that the registered mark 'consists of or comprise [sic] matter that disparages those affected by addiction, and brings contempt, ridicule, and disrepute, and is scandalous and immoral in violation of Section 2(a) of the Lanham Act, 15 U.S.C. Section 1052(a)' (Paragraph 19)."

The Board therefore denied the motion to dismiss and issued a new scheduling order.  

Read comments and post your comment here

TTABlog note: For a case in which the plaintiff failed to establish standing because of a lack of reasonable damage, see the "goats on a roof" case, Robert Doyle v. Al Johnson’s Swedish Restaurant & Butik, Inc., 101 USPQ2d 1780 (TTAB 2012) [precedential]. [TTABlogged here].

Text Copyright John L. Welch 2015.


At 6:58 PM, Anonymous Anonymous said...

This is an interesting case. The Trademark Office did not think it was disparaging, etc. If anything, the mark appears to be laudatory of addiction. Perhaps a Rule 12(b)(6) motion was worth a try, especially since standing seems so tenuous - Petitioner is a parent of an addict and the head of an organization relating to addiction - could he (or a distant cousin) “reasonably” petition for cancellation of a trademark using "heroine", or what if the registration was only "Addicted To Style" without the HAIRROIN? Also, the TTAB could have ruled as a matter of law on a 12(b)(6) that Petitioner's belief of damage (the second prong of the standing test) was not reasonable, or that the particular trademark on its face is not disparaging, scandalous, etc. However, perhaps a more successful motion would be for summary judgment with a showing that the Mark is not scandalous or disparaging etc., or perhaps survey evidence if the registrant could afford it showing that few would be offended or damaged (were the 6000 signatures on the store petition from an electronic petition or actual physical signatures). This does not seem to meet even the Redskins level of Section 2(a).


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