503    Motion to Dismiss for Failure to State a Claim

Fed. R. Civ. P. 12(b) How to Present Defenses. Every defense to a claim for relief in any pleading must be asserted in the responsive pleading if one is required. But a party may assert the following defenses by motion:

  • * * * *
  • (6) failure to state a claim upon which relief can be granted;

    A motion asserting any of these defenses must be made before pleading if a responsive pleading is allowed. If a pleading sets out a claim for relief that does not require a responsive pleading, an opposing party may assert at trial any defense to that claim. No defense or objection is waived by joining it with one or more other defenses or objections in a responsive pleading or in a motion.

503.01    Time for Filing

When the defense of failure to state a claim upon which relief can be granted is raised by means of a motion to dismiss, the motion must be filed before, or concurrently with, the movant’s answer. [ Note 1.] When the motion is directed to an amended pleading, it must be filed before, or concurrently with, the movant’s answer to the amended pleading. [ Note 2.]

The filing of a motion to dismiss for failure to state a claim upon which relief can be granted tolls the time for filing an answer. [ Note 3.] If the motion is filed before the movant’s answer, and is denied, the Board will reset the time for filing an answer. As a result, the filing of a motion to dismiss for failure to state a claim upon which relief can be granted also effectively stays the time for the parties to conduct their required discovery conference because the pleadings must be complete and issues joined before the conference is held. See TBMP § 316. When a motion to dismiss is denied or is granted but the plaintiff is given leave to serve an amended pleading, the Board will not only reset the time for the defendant to answer but will also reset the discovery conference deadline and other appropriate dates or deadlines. [ Note 4.]

The defense of failure to state a claim upon which relief can be granted may be raised after an answer is filed, provided that it is raised by some means other than a motion to dismiss. For example, the defense may be raised, after an answer is filed, by a motion for judgment on the pleadings, by a motion for summary judgment, or at trial. [ Note 5.]

NOTES:

 1.   Fed. R. Civ. P. 12(b); Hollowform Inc. v. Delma Aeh, 180 USPQ 284, 285 (TTAB 1973), aff’d, 515 F.2d 1174, 185 USPQ 790 (CCPA 1975). Cf. Wellcome Foundation Ltd. v. Merck & Co., 46 USPQ2d 1478, 1479 n.1 (TTAB 1998) (although a Fed. R. Civ. P. 12(b)(6) motion should be filed prior to, or concurrently with the answer, untimeliness waived where Fed. R. Civ. P. 12(b)(6) motion filed three weeks after answer, but plaintiff responded to motion on the merits).

 2.   William & Scott Co. v. Earl’s Restaurants Ltd., 30 USPQ2d 1870, 1872 (TTAB 1994) ("Just as a motion to dismiss can be interposed in response to an original pleading, so too can it be interposed in response to an amended pleading").

 3.   Hollow form, Inc. v. Delma Aeh, 180 USPQ 284, 286 (TTAB 1973) (motion for default judgment for failure to answer denied), aff’d, 515 F.2d 1174, 185 USPQ 790 (CCPA 1975).

 4.   Cf. 37 CFR § 2.120(a)(2)  and 37 CFR § 2.127(d). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42245 (August 1, 2007) ("Because disclosure is tied to claims and defenses, in general, a defendant’s default or the filing of various pleading motions under Federal Rule 12 will effectively stay the parties’ obligations to conference and, subsequently, make initial disclosures.").

 5.   Fed. R. Civ. P. 12(h)(2); DAK Industries Inc. v. Daiichi Kosho Co., 35 USPQ2d 1434, 1436 (TTAB 1995); Western Worldwide Enterprises Group Inc. v. Qinqdao Brewery, 17 USPQ2d 1137, 1139 (TTAB 1990) (construed as motion for judgment on the pleadings); 5C C. WRIGHT & A. MILLER, FEDERAL PRACTICE AND PROCEDURE Civil 3d §1357 (2014). Cf., Order of Sons of Italy in America v. Profumi Fratelli Nostra AG, 36 USPQ2d 1221, 1222 (TTAB 1995) (Fed. R. Civ. P. 12(b)(6) permits defendant to assert in answer "defense" of failure to state a claim thereby allowing plaintiff to test sufficiency of defense by moving under Fed. R. Civ. P. 12(f) to strike the defense). Cf. NSM Resources Corp. v. Microsoft Corp. 113 USPQ2d 1029, 1039 n.19 (TTAB 2014) (Board may sua sponte dismiss any insufficiently pleaded pleading).

503.02    Nature of Motion

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. [ Note 1.] In order to withstand such a motion, a complaint need only allege such facts as would, if proved, establish that the plaintiff is entitled to the relief sought, that is, that (1) the plaintiff has standing to maintain the proceeding, and (2) a valid ground exists for denying the registration sought (in the case of an opposition), or for canceling the subject registration (in the case of a cancellation proceeding). [ Note 2.] To survive a motion to dismiss, a complaint must "state a claim to relief that is plausible on its face."[ Note 3.] In particular, the claimant must allege well-pleaded factual matter and more than "[t]hreadbare recitals of the elements of a cause of action, supported by mere conclusory statements." [ Note 4.]

Therefore, a plaintiff served with a motion to dismiss for failure to state a claim upon which relief can be granted need not, and should not respond by submitting proofs in support of its complaint. Whether a plaintiff can actually prove its allegations is a matter to be determined not upon motion to dismiss, but rather at final hearing or upon summary judgment, after the parties have had an opportunity to submit evidence in support of their respective positions. [ Note 5.]

In Board proceedings, there are certain facts not subject to proof – such as the filing date, filing basis, publication date and applicant’s name in an application that is the subject of an opposition proceeding – that the Board may consider when a party has filed a motion to dismiss under Fed. R. Civ. P. 12(b)(6). [ Note 6.]

Whenever the sufficiency of any complaint has been challenged by a motion to dismiss, it is the duty of the Board to examine the complaint in its entirety, construing the allegations therein so as to do justice, as required by Fed. R. Civ. P. 8(e), to determine whether it contains any allegations, which, if proved, would entitle the plaintiff to the relief sought. [ Note 7.]

For a further discussion regarding the elements of a complaint, see TBMP § 309.03(a)(2).

NOTES:

 1.   Advanced Cardiovascular Systems Inc. v. SciMed Life Systems Inc., 988 F.2d 1157, 26 USPQ2d 1038, 1041 (Fed. Cir. 1993); Covidien LP v. Masimo Corp., 109 USPQ2d 1696, 1697 (TTAB 2014); Corporacion Habanos SA v. Rodriguez, 99 USPQ2d 1873, 1874 (TTAB 2011); Bayer Consumer Care Ag v. Belmora LLC, 90 USPQ2d 1587, 1590 (TTAB 2009), (quoting, Fair Indigo LLC v. Style Conscience, 85 USPQ2d 1536, 1538 (TTAB 2007)); Space Base Inc. v. Stadis Corp., 17 USPQ2d 1216, 1218 (TTAB 1990); Consolidated Natural Gas Co. v. CNG Fuel Systems, Ltd., 228 USPQ 752, 753 (TTAB 1985).

 2.   Young v. AGB Corp., 152 F.3d 1377, 47 USPQ2d 1752, 1754 (Fed. Cir. 1998); Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 188 (CCPA 1982); Corporacion Habanos SA v. Rodriguez, 99 USPQ2d 1873, 1874 (TTAB 2011); Bayer Consumer Care Ag v. Belmora LLC, 90 USPQ2d 1587, 1590 (TTAB 2009); Cineplex Odeon Corp. v. Fred Wehrenberg Circuit of Theaters, 56 USPQ2d 1538, 1539 (TTAB 2000); Kelly Services Inc. v. Greene’s Temporaries Inc., 25 USPQ2d 1460, 1462 (TTAB 1992); Hartwell Co. v. Shane, 17 USPQ2d 1569, 1570 (TTAB 1990); Consolidated Natural Gas Co. v. CNG Fuel Systems, Ltd., 228 USPQ 752, 753 (TTAB 1985); Intersat Corp. v. International Telecommunications Satellite Organization, 226 USPQ 154, 156 (TTAB 1985); Springs Industries, Inc. v. Bumblebee Di Stefano Ottina & C.S.A.S., 222 USPQ 512, 514 (TTAB 1984).

 3.   Bell Atlantic Corp. v. Twombly,550 U.S. 554, 570(2007) (retiring the pleading standard set forth in Conley v. Gibson, 355 U.S. 41 (1957) that dismissal for failure to state a claim is appropriate only if it appears certain that the plaintiff is entitled to no relief under any set of facts that could be proved in support of its claim). See also Ashcroft v. Iqbal, 556 U.S.662, 678 (2009) (plausibility standard applies to all federal civil claims); Caymus Vineyards v. Caymus Medical Inc., 107 USPQ2d 1519, 1522 (TTAB 2013) (considering plausibility); Dragon Bleu (SARL) v. VENM, LLC 112 USPQ2d 1925, 1926 (TTAB 2014) (considering plausibility); Doyle v. Al Johnson’s Swedish Restaurant & Butik Inc., 101 USPQ2d 1780, 1782 (TTAB 2012) (citing Ashcroft v. Iqbal, 556 U.S. 662 (2009); Corporacion Habanos SA v. Rodriguez, 99 USPQ2d 1873, 1874 (TTAB 2011) (quoting Bell Atlantic Corp. v. Twombly, 550 U.S. 554, 570 (2007)).

 4.   Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (citing Twombly, 550 U.S. at 555). See, e.g., Dragon Bleu (SARL) v. VENM, LLC, 112 USPQ2d 1925, 1926 (TTAB 2014) (motion to dismiss applicant’s fraud, non-use and abandonment counterclaims granted); Covidien LP v. Masimo Corp., 109 USPQ2d 1696, 1697 (TTAB 2014).

 5.   Advanced Cardiovascular Systems Inc. v. SciMed Life Systems Inc., 988 F.2d 1157, 26 USPQ2d 1038, 1041 (Fed. Cir. 1993); Covidien LP v. Masimo Corp., 109 USPQ2d 1696, 1697 n.3 (TTAB 2014).

 6.   Compagnie Gervais Danone v. Precision Formulations LLC, 89 USPQ2d 1251, 1256 (TTAB 2009). In Compagnie, the Board noted the difference between the above-noted objective facts, not subject to proof, and the allegations made in an application, such as dates of first use and first use in commerce, and allegations relative to acquired distinctiveness, that are not objective facts, but are subject to proof in an inter partes proceeding.

 7.   IdeasOne Inc. v. Nationwide Better Health, 89 USPQ2d 1952, 1953 (TTAB 2009); Fair Indigo LLC v. Style Conscience, 85 USPQ2d 1536, 1539 (TTAB 2007) ("under the notice pleading rules applicable to this proceeding opposer is only required to state a valid claim."); Cineplex Odeon Corp. v. Fred Wehrenberg Circuit of Theaters, 56 USPQ2d 1538, 1539 (TTAB 2000); Intellimedia Sports Inc. v. Intellimedia Corp., 43 USPQ2d 1203, 1205 (TTAB 1997); Miller Brewing Co. v. Anheuser-Busch Inc., 27 USPQ2d 1711, 1711 (TTAB 1993); Kelly Services Inc. v. Greene’s Temporaries Inc., 25 USPQ2d 1460, 1462 (TTAB 1992); Delta Tire Corp. v. Sports Car Club of America, Inc., 186 USPQ 431, 432 (TTAB 1975); National Semiconductor Corp. v. Varian Associates, 184 USPQ 62, 64 (TTAB 1974).

503.03    Leave to Amend Defective Pleading

A plaintiff may amend its complaint within 21 days after service of a motion under Fed. R. Civ. P. 12(b)(6) or with the written consent of every adverse party or by leave of the Board, which is freely given when justice so requires. [ Note 1.] See TBMP § 507.02 for further information about the timing for amending a pleading in Board proceedings. Thus, plaintiffs to proceedings before the Board ordinarily can, and often do, respond to a motion to dismiss by filing, inter alia, an amended complaint. If the amended complaint corrects the defects noted by the defendant in its motion to dismiss, and states a claim upon which relief can be granted, the motion to dismiss normally will be moot. [ Note 2.]

If no amended complaint is submitted in response to a motion to dismiss for failure to state a claim upon which relief can be granted, and the Board finds, upon determination of the motion, that the complaint fails to state a claim upon which relief can be granted, the Board generally will allow the plaintiff an opportunity to file an amended pleading. [ Note 3.]

However, in appropriate cases, that is, where justice does not require that leave to amend be given, the Board, in its discretion, may refuse to allow an opportunity, or a further opportunity, for amendment. [ Note 4.] See TBMP § 507.02 (regarding motions to amend pleadings).

NOTES:

 1.   See Fed. R. Civ. P. 15(a)(1)(B). See , e.g., Caymus Vineyards v. Caymus Medical Inc., 107 USPQ2d 1519, 1521 (TTAB 2013).

 2.   Dragon Bleu (SARL) v. VENM, LLC 112 USPQ2d 1925, 1926 (TTAB 2014) (finding first motion to dismiss moot in view of filing of amended pleading; considering amended pleading filed in response to second motion to dismiss);Fair Indigo LLC v. Style Conscience, 85 USPQ2d 1536, 1537 (TTAB 2007). (considering amended pleading, filed in response to motion to dismiss, in connection with the motion to dismiss).

 3.   Intellimedia Sports Inc. v. Intellimedia Corp., 43 USPQ2d 1203, 1208 (TTAB 1997) (allowed time to perfect fraud claim); Miller Brewing Co. v. Anheuser-Busch Inc., 27 USPQ2d 1711, 1714 (TTAB 1993) ("the Board freely grants leave to amend pleadings found, upon challenge under Fed. R. Civ. P. 12(b)(6), to be insufficient, particularly where challenged pleading is the initial pleading"); Intersat Corp. v. International Telecommunications Satellite Organization, 226 USPQ 154, 156 (TTAB 1985) (allowed time to file an amended opposition setting forth a statutory ground). See also Pure Gold, Inc. v. Syntex (U.S.A.) Inc., 221 USPQ 151, 154 (TTAB 1983) ("Although it is the general practice of the Board to allow a party an opportunity to correct a defective pleading, in the instant case leave to amend the pleading would serve no useful purpose"), aff’d, 739 F.2d 624, 222 USPQ 741 (Fed. Cir. 1984).

 4.   Fed. R. Civ. P. 15(a)(2); Dragon Bleu (SARL) v. VENM, LLC 112 USPQ2d 1925, 1929 n.10 (TTAB 2014) (Board did not grant leave to replead fraud claim due to futility and lack of plausibility based on recited facts); Bayer Consumer Care AG v. Belmora LLC, 90 USPQ2d 1587, 1590-91 (TTAB 2009) (because petitioner twice failed to properly allege prior use, petitioner’s Trademark Act § 2(d) claim was dismissed with prejudice, however, its misrepresentation of source claim was sufficient); Institut National des Appellations d’Origine v. Brown-Forman Corp., 47 USPQ2d 1875, 1896 (TTAB 1998) (amendment would be futile because opposers cannot prevail on claim as a matter of law); McDonnell Douglas Corp. v. National Data Corp., 228 USPQ 45, 48 (TTAB 1985) (plaintiff had already been allowed two opportunities to perfect its pleading, therefore, the Board did not find that it was in the interests of justice to grant plaintiff an additional opportunity to amend the complaint); Pure Gold, Inc. v. Syntex (U.S.A.) Inc., 221 USPQ 151, 154 (TTAB 1983) (amendment would serve no useful purpose), aff’d, 739 F.2d 624, 222 USPQ 741 (Fed. Cir. 1984). Cf. Trek Bicycle Corp. v. StyleTrek Ltd., 64 USPQ2d 1540, 1542 (TTAB 2001) (where proposed pleading of dilution was legally insufficient, leave to re-plead not allowed in view of delay in moving to amend); Midwest Plastic Fabricators Inc. v. Underwriters Laboratories Inc., 5 USPQ2d 1067, 1069 (TTAB 1987) (motion to amend to add claim or defense which is legally insufficient will be denied); American Hygienic Labs, Inc. v. Tiffany & Co., 228 USPQ 855, 859 (TTAB 1986) (would serve no useful purpose).

503.04    Matters Outside the Pleading Submitted on Motion to Dismiss

For inter partes proceedings commenced on or after November 1, 2007, the Board adopted a modified disclosure and conferencing regime. As a result of the interplay of certain amended rules, the circumstances in which the Board will treat a motion to dismiss relying on matters outside the pleadings as a motion for summary judgment are very limited. More specifically, a party may not file a motion for summary judgment until it has made its initial disclosures, unless the motion is based on issue or claim preclusion or lack of Board jurisdiction. [ Note 1.] Treatment of a motion to dismiss under Fed. R. Civ. P. 12(b)(6) as a motion for summary judgment generally would result in a premature motion for summary judgment. [ Note 2.] Accordingly, when, in cases subject to the 2007 rules, a motion for summary judgment would be premature, the Board will not consider a motion to dismiss including matter outside the pleading to be a motion for summary judgment, even if the parties treat it as such. [ Note 3.]

Where a motion to dismiss is based on issue or claim preclusion or lack of Board jurisdiction, the Board may treat the motion as one for summary judgment, in which case, the parties will be given reasonable opportunity to present all material that is pertinent to the motion. [ Note 4.]

NOTES:

 1.   37 CFR § 2.127(e)(1). See Caymus Vineyards v. Caymus Medical Inc., 107 USPQ2d 1519, 1522 n.2 (TTAB 2013) (motion to dismiss amended counterclaim accompanied by evidence was not treated as a motion for summary judgment as there was nothing in the record which indicated that initial disclosures were served by opposer); Zoba International Corp. v. DVD Format/LOGO Licensing Corp., 98 USPQ2d 1106, 1108 n.4 (TTAB 2011) (motion to dismiss considered as one for summary judgment where it asserts claim preclusion); Qualcomm, Inc. v. FLO Corp., 93 USPQ2d 1768, 1769-70 (TTAB 2010) (motion for summary judgment denied as premature where movant had yet to serve initial disclosures).Cf. Corporacion Habanos SA v. Rodriquez, 99 USPQ2d 1873, 1873-74 n.2 (TTAB 2011) (Board may consider matters outside the pleading on a motion to dismiss for lack of subject matter jurisdiction under Fed. R. Civ. P. 12(b)(1) without converting to a summary judgment).

 2.   37 CFR § 2.127(e)(1); Compagnie Gervais Danone v. Precision Formulations, LLC, 89 USPQ2d 1251, 1255-56 (TTAB 2009) (proceeding involved two related oppositions, one of which was subject to the 2007 amended rules; motion to dismiss not converted to motion for summary judgment in opposition subject to the 2007 amended rules).

 3.   With respect to inter partes proceedings commenced prior to November 1, 2007, if, on a motion to dismiss for failure to state a claim upon which relief can be granted, matters outside the pleading are submitted and not excluded by the Board, the motion may be treated as a motion for summary judgment under Fed. R. Civ. P. 56. See Fed. R. Civ. P. 12(d); Stephen Slesinger Inc., v. Disney Enterprises Inc., 98 USPQ2d 1890, 1894 (TTAB 2011) (motion to dismiss treated as one for summary judgment because matters outside the pleadings considered), aff’d, 702 F.3d 640, 105 USPQ2d 1472 (Fed. Cir. 2012), cert den. 134 S. Ct. 125 (2013); Wellcome Foundation Ltd. v. Merck & Co., 46 USPQ 1478, 1479 n.2 (TTAB 1998) (matters excluded); Internet Inc. v. Corporation for National Research Initiatives, 38 USPQ2d 1435, 1436 (TTAB 1996) (matters excluded); Missouri Silver Pages Directory Publishing Corp. v. Southwestern Bell Media, Inc., 6 USPQ2d 1028, 1029 (TTAB 1988) (because applicant’s motion to dismiss contains matter outside the pleading, it has been treated as a motion for summary judgment). Ordinarily, the parties to the proceeding will be notified when a motion to dismiss is being treated as a motion for summary judgment, and the responding party will be given reasonable opportunity to present all material made pertinent to such a motion by Fed. R. Civ. P. 56. See Fed. R. Civ. P. 12(d); Advanced Cardiovascular Systems Inc. v. SciMed Life Systems Inc., 988 F.2d 1157, 26 USPQ2d 1038, 1044 (Fed. Cir. 1993) ("A movant’s challenge to the sufficiency of the complaint as a matter of law, brought under 12(b)(6), is not sufficient notice that the nonmovant must respond as if to a motion for summary judgment, and place material facts in dispute"); Selva & Sons, Inc. v. Nina Footwear, Inc., 705 F.2d 1316, 217 USPQ 641, 646 (Fed. Cir. 1983) (Board erred in treating motion to dismiss as a motion for summary judgment without notifying adverse party); Libertyville Saddle Shop Inc. v. E. Jeffries & Sons Ltd., 22 USPQ2d 1594, 1596 (TTAB 1992), summary judgment granted, 24 USPQ2d 1376 (TTAB 1992); Wells Fargo & Co. v. Lundeen & Associates, 20 USPQ2d 1156, 1156 (TTAB 1991) (not an appropriate case to treat as summary judgment; extrinsic matters excluded); Pegasus Petroleum Corp. v. Mobil Oil Corp., 227 USPQ 1040, 1042 n.2 (TTAB 1985); Exxon Corp. v. National Foodline Corp., 196 USPQ 444, 445 (TTAB 1977), aff’d, 579 F.2d 1244, 198 USPQ 407, 408 (CCPA 1978). In such a case, notice may be dispensed with as unnecessary, however, where the parties themselves clearly have treated a motion to dismiss as a motion for summary judgment, and the nonmoving party has responded to the motion on that basis. Institut National Des Appellations d’Origine v. Brown-Forman Corp., 47 USPQ2d 1875, 1876 n.1 (TTAB 1998) (both parties submitted evidentiary materials outside the pleadings). Cf. Selva & Sons, Inc. v. Nina Footwear, Inc., 705 F.2d 1316, 217 USPQ 641, 646 (Fed. Cir. 1983) (nonmoving party expected only that sufficiency, not merits of case would be decided).

 4.   Fed. R. Civ. P. 12(d). See also Zoba International Corp. v. DVD Format/LOGO Licensing Corp., 98 USPQ2d 1106, 1108 (TTAB 2011) (Board previously informed parties that motions to dismiss in consolidated case would be treated as motions for summary judgment).