Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 COMMONWEALTH OF ARUBA
v.
EXCELSIOR, INC.
Opposition No. 76,228
December 11, 1987
James N. Palik for Commonwealth of Aruba
Bernard R. Gans for Excelsior, Inc.
By the Board:
J.D. Sams, J.E. Rice and R.L. Simms
Members
This case now comes up on applicant's motion, filed August 31, 1987, to dismiss on the basis that opposer has failed to state a claim upon which relief can be granted. Applicant contends that opposer has failed to allege facts sufficient to create standing and has failed to plead facts to support a statutory ground for opposition under Section 2(e) of the Trademark Act.
Opposer, on the other hand, contends that it is a juristic person that has standing to oppose registration of the term "ARUBA" for swimwear; and that opposer has stated sufficient facts to support claims under Sections 2(a) and 2(e)(2) of the Trademark Act. [FN1]
In order to state a claim upon which relief can be granted, opposer must allege in the notice of opposition facts which would, if proved, establish that opposer has standing to challenge applicant's right to register its mark and has set forth a statutory ground for denying the registration sought. See: Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1029, 212 USPQ 185 (CCPA 1982). For purposes of determining applicant's motion to dismiss, we must accept as true all material allegations of the opposition, and must construe the opposition in favor of opposer. See: Selva & Sons, Inc. v. Nina Footwear, Inc., 705 F.2d 1316, 217 USPQ 641, 644 (Fed.Cir.1983).
The Board first turns to the standing requirement. Standing is a threshold inquiry directed solely to establishing the interest of the plaintiff. The purpose for the standing requirement is to avoid litigation where there is no real controversy between the parties, that is to say, to weed out intermeddlers. In order to withstand a motion to dismiss, the opposer need only plead facts sufficient to show a personal interest in the outcome of the case beyond that of the general public. See: Jewelers Vigilance Committee v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d 2021, 2023 (Fed.Cir.1987).
It is our belief that opposer has set forth its standing to be heard in this case. Opposer, Commonwealth of Aruba, has asserted that it is an island known as a vacation and recreational resort; that aquatic activities on Aruba involve the wearing of swimwear; that thirty-four swimwear merchants are located on Aruba and tourists from the United States annually have purchased swimwear from these merchants; that due to the renown, importance and geographical significance of Aruba, that term should be kept free for use as an indication of a legitimate connection between Aruba and goods having a relationship thereto; and that registration of applicant's mark will clothe applicant with the authority to improperly interfere with such use, all to the detriment of opposer. These allegations indicate opposer's real interest in the outcome of this case beyond that of the general public. [FN2]
*2 Once standing is established, opposer may rely on any of the grounds set forth in Section 2 of the Trademark Act that negate applicant's right to the registration sought. Id., at 2023. A reading of the opposition clearly shows that opposer has set forth a statutory ground upon which relief can be granted, namely, that applicant's mark is primarily geographically deceptively misdescriptive under Section 2(e)(2). Opposer has alleged, in effect, that the term "Aruba" has long had geographical significance as the name of the island of Aruba; that Aruba is well known as a vacation spot; that popular activities in Aruba include aquatic activities involving the wearing of swimwear; that tourists from the United States purchase swimwear from Aruba's thirty-four swimwear merchants; that applicant's swimwear does not have an origin or connection in or with Aruba; and that the term "ARUBA", when applied to the goods of the applicant, is primarily geographically misdescriptive and deceptive in that such goods will be perceived incorrectly as originating in Aruba. Such allegations sufficiently set forth a claim under Section 2(e)(2). See: In re Nantucket, Inc., 677 F.2d 95, 213 USPQ 889 (CCPA 1982).
In view of the above, applicant's motion to dismiss is denied.
Applicant is allowed until twenty days from the date hereof in which to file an answer to the opposition.
J. D. Sams
J. E. Rice
R. L. Simms
Members, Trademark Trial and Appeal Board
FN1. As opposer has noted, applicant's motion is directed solely to the claim raised under Section 2(e)(2) of the Trademark Act. While opposer also claims in the opposition that applicant's mark is deceptive and falsely suggests a connection between opposer and applicant's goods, applicant has not attacked the sufficiency of these pleadings under Section 2(a). Thus, applicant's motion to dismiss will be considered only with respect to the Section 2(e)(2) grounds. In any event, it is the Board's view that opposer's pleading is sufficient to set forth a claim under Section 2(a) (that is, that applicant's mark is deceptive and falsely suggests a connection with opposer) upon which relief can be granted.
FN2. The Board, moreover, has no question that opposer is a "person" within the meaning of Sections 13 and 45 of the Trademark Act. Cf. United States Navy v. United States Manufacturing Co., 2 UPSQ2d 1254, 1257 (TTAB 1987).