Single Source, Related Companies and Section 2 (d) rejections for Trademarks!

The USPTO will typically issue a section 2 (d) rejection for any mark that is confusingly similar to the mark described in your trademark (“TM”) application. Often times, through a merger, sale, acquisition or reorganizations companies have different names and structures, but maintain a unity of interest in their intellectual property (such as a TM). 

However, unless a proper assignment or transfer is recorded with the USPTO, a derivative version of a mark owned by a prior company will be the basis of section 2(d) rejection.  Fortunately, the Federal Circuit has stated that if the applicant and the prior company are related companies that qualify as a single source of a good or service, then there is no likelihood of confusing the consumer.  In re Wella A.G., 787 F.2d 1549 (Fed. Cir. 1986). 

An examiners section 2(d) rejection may be overcome by filing an affidavit from the appropriate owner(s) asserting that the prior company and the applicant are related and share unity of control over their trademarks.  Unless there is contradictory evidence, the Examiner will usually accept the affidavit and withdraw the USPTO’s objection to registration of your mark under section 2(d).

Understanding how to properly apply for intellectual property (trademark) rights in the face of a merger, acquisition, sale or reorganization is often crucial to the continued growth of a business enterprise.

Motions to Dismiss and the new Plausibility Standard under Rule 8!

The Supreme Court extended and changed the requirements for pleading a cause of action under Rule 8.  In Twombly, the Court first applied the plausibility standard to a claim for antitrust violations by telecommunications providers.  The Court, stated merely reciting that the telecommunications providers had entered into a contract, combination or conspiracy to prevent competition was insufficient to make the Plaintiffs’ claim plausible. 

In Ashcroft, the Court applied the plausibility standard to a Plaintiff’s complaint of discriminatory treatment of detainees by the Immigration and Naturalization Officers.  The Court stated that merely asserting conclusory allegations that Ashcroft was the principal architect of invidious discrimination and that Mueller was instrumental in adopting the policy was insufficient to meet the plausibility standard.

The Court went to on to reiterate that we must still accept all well plead allegations as true, but essentially, stated that we are not required to accept legal conclusory allegations, unless there are facts that turn the conceivable into the plausible.  However you interpret Twombly or Ashcroft, it is clear that a Defendant’s motion to dismiss in Federal court has greater teeth and district court judges are now empowered to dispose of claims they find incredible. 

It also seems that the plausibility standard is not limited to Antitrust complaints. 

See.  Ashcroft