Academy of Motion Picture Arts and Sciencesv.Alliance of Professionals & Consultants, Inc.

Trademark Trial and Appeal Board

Sep 27, 2012

No. 92055081 (T.T.A.B. Sep. 27, 2012)

Faint

Mailed: September 27, 2012

Cancellation No. 92055081

Academy of Motion Picture
Arts and Sciences

v.

Alliance of Professionals &
Consultants, Inc.

Before Ritchie, Lykos and Shaw,
Administrative Trademark Judges.

By the Board:

On January 24, 2012, the Academy of Motion Picture Arts
and Sciences (“petitioner”) filed a petition to cancel the
Alliance of Professionals & Consultants, Inc.’s (“respondent”)
registration for the mark OSCAR for “providing recognition and
incentives by the way of awards and contests to demonstrate
excellence in the field of business consultation and
information technology” in International Class 41.1 As grounds
for cancellation, petitioner alleges that respondent’s mark (1)
so resembles petitioner's previously used and registered OSCAR
marks that it is likely to cause confusion, mistake, or deceive
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 TTAB
Cancellation No. 92055081

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prospective consumers pursuant to Section 2(d) of the Trademark
Act,2 (2) falsely suggests a connection with petitioner
pursuant to Section 2(a) of the Trademark Act, and (3) will
dilute petitioner's marks within the meaning of Section 43(c)
of the Lanham Act as amended.
Respondent, in lieu of filing an answer to the petition to
cancel, filed on March 26, 2012 a motion to dismiss
petitioner’s dilution claim under Fed. R. Civ. P. 12(b)(6) on
the ground that respondent’s ownership of the federally-

1 Registration No. 3974726, registered Jun. 07, 2011 on the
Principal Register in standard character form, claiming dates of
use and first use in commerce of Mar. 13, 2009.

2 Petitioner pleaded ownership of the following registrations:
Registration No. 1096990 for OSCAR for “entertainment and
educational service-namely, telecasts in connection with the
recognition of distinguished achievement in the motion picture
industry; library and reference services; theatrical exhibitions
of motion pictures” in Class 41, registered Jul. 18, 1978;
Registration No. 1118751 for OSCAR for “books and supplements
thereto, pamphlets, brochures, dealing with the motion picture
industry and personalities; press kits containing detailed
information as to broadcasts and presentations of awards,
including chronological list of events, program format,
personalities involved, motion pictures involved and other
elements comprising the broadcasting of motion picture awards” in
Class 16, registered May 22, 1979; Registration No. 1528890 for
OSCARS for “entertainment services, namely, telecasts in
connection with the recognition of distinguished achievement in
the motion picture industry” in Class 41, registered Mar. 7,
1989; Registration No. 1996585 for OSCAR for “sweatshirts;
jackets; T-shirts; and, caps” in Class 25, registered Aug. 27,
1996; Registration No. 2021582 for OSCAR for “prerecorded
videotapes featuring entertainment relating to motion pictures
and award ceremonies” in Class 9, registered Dec. 10, 1996;
Registration No. 2029445 for OSCAR NIGHT for “educational and
entertainment services rendered through the medium of an annual
live, televised program dealing with motion pictures” in Class
41, registered Jan. 14, 1997; Registration No. 2341104 for SUNDAY
AT THE OSCARS for “educational and entertainment services
rendered through the medium of an annual live, televised program
dealing with motion pictures” in Class 41, registered Apr. 11,
2000.
Cancellation No. 92055081

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registered mark at issue acts as “an absolute and complete
defense to the [p]etitioner’s dilution claim.” (D. Mot.
Dismiss 1). The motion is fully briefed.
Background
A petition to cancel may be based on allegations that the
petitioner believes that the accused registered mark damages,
or will damage, the petitioner, including by trademark dilution
“under Section 43(c)” of the Lanham Act, 15 U.S.C. § 1125(c).
See 15 U.S.C. § 1064. Subsection (6)(B) of Section 43(c),
however, provides that the registrant’s ownership of a valid
federal trademark registration on the Principal Register “shall
be a complete bar to an action against that person, with
respect to that mark, that . . . asserts any claim of actual or
likely damage or harm to the distinctiveness or reputation of a
mark….” In other words, Section 43(c)(6)(B) affords a party
accused of federal trademark dilution a “federal registration
defense.”3

3 Although § 43(c)(6)(B) uses the terms “action” and “claim,” which may
have common-law connotations, we note that use of these terms does not
mean that the federal registration defense is limited to court dilution
actions. Such a reading would eviscerate the incorporation of § 43(c)
into § 14, 15 U.S.C. § 1064. To give effect to § 14’s incorporation of
§ 43(c), the Board is required to apply other subsections of § 43(c)
which contain terms that, in other contexts, may conventionally be
associated with courts. For example, the Board has to apply subsection
(c)(1), in which the prohibition against dilution by blurring or
tarnishment is set forth, albeit in a provision referencing injunctive
relief, which is beyond the Board’s power to award. The Board also has
to apply subsection (2), which defines fame, dilution by blurring, and
dilution by tarnishment — despite that subsection’s reference to what “a
court may consider.” Subsection (4) sets forth the burden of proof “in
a civil action” when the dilution claimant asserts unregistered trade
dress as the basis of dilution, yet the Board clearly would have to
apply this procedural provision if that were the basis of the dilution
allegations. If the Board could not apply these subsections because
Cancellation No. 92055081

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The federal registration defense was first enacted in
federal law as part of the Federal Trademark Dilution Act of
1995 (“FTDA”).4 The FTDA created a new federal cause of action
to protect “famous” trademarks through amendment of Section 43
of the Lanham Act, but also provided that “ownership by a
person of a valid registration,” is a “complete bar” to any
action brought under “common law or a statute of a State and
that seeks to prevent dilution of the distinctiveness of a
mark, label, or form of advertisement.”5 In 2006 Congress
enacted amendments to the Lanham Act as the Trademark Dilution
Revision Act (“TDRA”).6 The amendments sought to expand the
federal registration defense to include all types of dilution
claims under state law by replacing FTDA’s language barring
only claims for “dilution of the distinctiveness of a mark”
with language barring claims for “dilution by blurring or
dilution by tarnishment.”7

Analysis

they refer to courts and court-related activities, then § 14’s
incorporation of § 43(c) would be essentially meaningless — an
impermissible construction of § 14. See, e.g., United States v.
LaBonte, 520 U.S. 751, 760 (1997) (one provision should not be read to
render meaningless other provisions to which it refers); Buchanan v.
Nicholson, 451 F.3d 1331, 1336 (Fed. Cir. 2006) (it is unreasonable to
read a statutory provision in a way that renders other related
provisions meaningless). Because, in deciding cancellation proceedings
raising allegations under § 43(c), the Board necessarily has to apply
several subsections of § 43(c) that refer to “courts” and “civil
actions,” subsection (6)’s similar use of terms typically associated
with courts does not disqualify the federal registration defense from
applying in TTAB proceedings based on § 43(c).
4 Pub. L. No. 104-98, 109 Stat. 985 (1996).
5 15 U.S.C. § 1125(c), repealed by the TDRA in 2006.
6 Pub.L. 109-312, § 2, 120 Stat. 1730 (2006).
Cancellation No. 92055081

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An affirmative defense may be raised prior to answer
through a motion to dismiss pursuant to Rule 12(b)(6), without
resort to the summary judgment procedure, if the defense
appears on the face of the complaint. See Jones v. Bock, 549
U.S. 199, 215 (2007)(complaint is subject to Rule 12(b)(6)
dismissal if pleadings show relief is barred by affirmative
defense); see also 5B Charles A. Wright & Arthur R. Miller, et
al., Federal Practice and Procedure Civil §§ 1277, 1357 (3d ed.
Westlaw update 2012). A dismissal under Rule 12(b)(6) for
failure to state a cognizable claim is a test of whether the
complaint contains 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, 678 (2009). See also, Doyle
v. Al Johnson’s Swedish Restaurant & Butik, Inc., 101 USPQ2d
1780, 1782 (TTAB 2012).
In its motion to dismiss, respondent does not challenge
petitioner’s standing to bring this proceeding, but rather,
maintains that its ownership of a federal registration acts as
a complete bar to petitioner’s dilution claim after the 2006
TDRA amendments. Petitioner argues that its dilution claim is
based not only on Section 43(c), but also on Section 14 of the
Lanham Act, 15 U.S.C. § 1064, which was not repealed when TDRA
was enacted. Petitioner asserts the conforming amendments
which rearranged Section 43(c) cannot be read as repealing

7 H.R. 683, 109th Cong. 1st. Sess., 6 (Feb. 9, 2005).
Cancellation No. 92055081

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statutory dilution remedies by implication, as this
interpretation would result in inconsistencies in the statute
and lead to “absurd” results.8
The “starting point” for a case involving statutory
construction is the language of the statute itself. United
States v. Hohri, 482 U.S. 64, 68 (1987) (quoting Kelly v.
Robinson, 479 U.S. 36, 43 (1986)). Where the statutory terms
are unambiguous, “judicial inquiry is complete, except ‘in rare
and exceptional circumstances.’” Rubin v. United States, 449
U.S. 424, 430 (1981) (quoting TVA v. Hill, 437 U.S. 153, 187
n.33 (1978)). “Absent a clearly expressed legislative
intention to the contrary,” a statute’s plain language must be
given effect. Consumer Product Safety Commission v. GTE
Sylvania, Inc., 447 U.S. 102, 108 (1980).
The parties agree with legal commentators that a clerical
error occurred during the passage of TDRA, but disagree as to
how that “error” should be interpreted. During Senate
consideration of the House bill, Section 43(c)(6) was slightly
reorganized. As a result, the statute was amended to read that
ownership of a federal registration acts as a “complete bar” to
a federal claim of dilution. The comparison below illustrates

8 Both parties also argue that TBMP § 303.01 provides “an
independent basis” for petitioner’s dilution claim. The cited
section of the Board’s manual of procedure is merely a copy of
the statute and cannot be interpreted as “independent” from that
statute.
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the difference between the Senate and House versions, and it is
the Senate version that was enacted:
TDRA Section 43(c)(6)(Enacted)9 House Bill H.R. 68310
(6) Ownership of valid
registration a complete bar to
action
The ownership by a person of a
valid registration ... shall be a
complete bar to an action against
that person, with respect to that
mark, that--
(A)(i) is brought by another
person under the common law or a
statute of a State; and
(ii) seeks to prevent
dilution by blurring or dilution
by tarnishment; or
(B) asserts any claim of actual
likely damage or harm to the
distinctiveness or reputation of a
mark....

The ownership by a person of
a valid registration ... shall
be a complete bar to an action
against that person, with
respect to that mark, that--
(A) is brought by another
person under the common law or
a statute of a State; and
(B)(i) seeks to prevent
dilution by blurring or dilution
by tarnishment; or
(ii) asserts any claim of
actual or likely damage or
harm to the distinctiveness or
reputation of a mark....

Although the wording of the bill as enacted remains the
same as the House draft, by reorganizing the sections and
including the word “or” before subparagraph (B), the meaning of
the statute was altered. 11 As a result, the federal
registration defense is now available to both state and federal

9 15 U.S.C. § 1125(c)(6).
10 H.R. 683, 109th Cong. 1st Sess., 6 (Feb. 9, 2005).
11 See U.S. H.R. Comm. on Judiciary, Statement of Judiciary
Committee Chairman Lamar Smith, Full Committee Markup of H.R.
6215, a bill to amend the Federal Trademark Dilution Act at
http://judiciary.house.gov/hearings/Markups%202012/mark_08012012.
html (accessed Sept. 12, 2012). See also, 4 J. Thomas McCarthy,
McCarthy on Trademarks and Unfair Competition § 24:129 (4th ed.
Westlaw update 2012).
Cancellation No. 92055081

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dilution claims.12 The statute applies equally to cases before
this Board.13
While a “most extraordinary showing of contrary
intentions” by Congress may justify a departure from the plain
language of a statute, Garcia v. United States, 469 U.S. 70, 75
(1984), there is scant legislative history, and certainly not
enough to support an alternative reading in this case.14 The
Board must apply and enforce the statute as written, rather
than picking and choosing a preferred interpretation.
“Congress’ intent is found in the words it has chosen to use.”
Harbison v. Bell, 556 U.S. 180, 198 (2009) (Thomas, J.,
concurring). Petitioner characterizes the Senate
reorganization of the language as creating an “unintended”
change to the statute, and argues Congress clearly meant to
retain possible federal dilution claims. Nonetheless, this
Board must assume that Congress means what it says. If
Congress has enacted into law something different from what was
intended, then Congress must amend the statute to achieve its
desired results. Lamie v. United States, 540 U.S. 526, 542
(2004).

12 See id., Statement of Judiciary Committee Chairman Lamar Smith.
13 See, e.g., TBMP § 303.01 (3d ed. rev. 2012) (citing 15 U.S.C. §
1064).
14 See 4 McCarthy § 24:101 (“The 2006 TDRA must largely speak from
the text of the statute itself. There is very little legislative
history.”).

Cancellation No. 92055081

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Petitioner’s argument that the Board has entertained
dilution claims in other cancellation proceedings since passage
of the TDRA also is not persuasive. There has been no showing
that the federal registration defense has been raised
previously before the Board, and the cases cited by petitioner
were not precedential and thus are not binding on the Board.15
See TBMP § 101.03 (3d ed. rev. 2012).
Accordingly, respondent’s motion to dismiss the dilution
claim is granted, and petitioner’s dilution claim set forth in
paragraph 22 is stricken from the petition to cancel. This
case will move forward on petitioner’s remaining claims.
Dates Reset
Proceedings are resumed. Dates, including respondent’s
time to answer, are reset as set out below.
Time to Answer: 10/28/2012
Deadline for Discovery Conference: 11/27/2012
Discovery Opens: 11/27/2012
Initial Disclosures Due: 12/27/2012
Expert Disclosures Due: 4/26/2013
Discovery Closes: 5/26/2013
Plaintiff's Pretrial Disclosures Due: 7/10/2013
Plaintiff's 30-day Trial Period Ends: 8/24/2013
Defendant's Pretrial Disclosures Due: 9/8/2013
Defendant's 30-day Trial Period Ends: 10/23/2013
Plaintiff's Rebuttal Disclosures Due: 11/7/2013
Plaintiff's 15-day Rebuttal Period Ends: 12/7/2013

In each instance, a copy of the transcript of
testimony, together with copies of documentary exhibits,

15 Indeed it appears there have been no cases raising this issue
before the federal courts.
Cancellation No. 92055081

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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.l28(a) and (b). An oral hearing will be set only
upon request filed as provided by Trademark Rule 2.l29.
***