TTAB - Trademark Trial and Appeal Board - *1 WILLIAM & SCOTT CO., SUBSTITUTED FOR SCOTT GRIFFITHS ASSOCIATES v. EARL'S RESTAURANTS LTD. Opposition No. 89,993 March 30, 1994

Trademark Trial and Appeal Board

Patent and Trademark Office (P.T.O.)





Opposition No. 89,993

March 30, 1994


Hardy L. Thomas, PL



Los Angeles, CA



Katie E. Sako, DEF



Christense, O'Connor, Johnson & Kindness



Seattle, WA



Before Sams, Rice and Quinn



Administrative Trademark Judges



J. D. Sams, J. E. Rice and T. J. Quinn



Administrative Trademark Judges



 Now up for consideration are applicant's motion to dismiss the opposition and opposer's motion to substitute or join William & Scott Co. as an opposer. Each party has filed a brief in opposition to the other's motion.



 Because of these motions, we must decide whether Scott Griffiths Associates may proceed with this opposition and whether William & Scott Co. should be made a party to this proceeding. Also, if William & Scott Co. is made a party to the proceeding, we must determine what claims it may pursue.



 A chronological review of the apparent facts of this case will aid in resolution of these issues.



 Registration number 1,613,169, for the mark RHINO CHASERS for "malt beverages in the form of stout," issued to Scott Griffiths Associates [hereinafter, Scott Griffiths or SGA] on September 11, 1990. On April 1, 1992, the registration was assigned to William & Scott Co. [hereinafter William & Scott or WSC]; the assignment was recorded in the Assignment Branch on April 9, 1992.



 Applicant's application number 74/188,661 for the mark ALBINO RHINO for  "alcoholic beverages, namely ale" was published for opposition in the Official Gazette of September 22, 1992. Scott Griffiths obtained an extension of time to oppose and filed a notice of opposition on November 20, 1992.



 The notice of opposition claims both ownership of the RHINO CHASERS registration referenced above and, separately, use of the RHINO CHASERS mark prior to the filing date of applicant's application for registration of ALBINO RHINO. The notice also asserts that the parties' respective marks are "virtually identical in appearance and sound" and that opposer's and applicant's goods are offered in the same or related channels of trade to the same or overlapping classes of customers, "so that prospective purchasers and others are likely to be confused, mistaken or deceived" as to the source of the parties' respective goods.



 Applicant duly answered the notice of opposition, denying the critical allegations therein. The Board then issued a discovery and trial order for this case.



 After the trial order issued, the Board received a document entitled  "communication" from opposer. It had been filed before the Board instituted the opposition, when opposer was unaware of the opposition number for this case. Therefore, opposer was unable to reference the case number and, as a result, the Board was delayed in associating it with the file for this case. The "communication" states that Scott Griffiths "has assigned" the pleaded registration to William & Scott; separately, the communication also amended two paragraphs of the notice of opposition. [FN1] Despite having acknowledged its assignment of the pleaded registration for RHINO CHASERS, SGA's amendments to the notice of opposition did not include an amendment of its claim of ownership of that registration. SGA did, however, amend its claim of use of the RHINO CHASERS mark to claim use of both that mark and a RHINO mark since August 1989. SGA also amended its claim of use of its marks to assert use for lagers and ales, in addition to stout, all since August 1989.



  *2 Since the amendments of the notice of opposition were filed before applicant's answer, the Board approved them as a matter of course under Fed.R.Civ.P. 15(a) and allowed applicant time to file a response thereto. Applicant's response to the amended notice of opposition is the motion to dismiss now up for consideration. Applicant's motion to dismiss begat opposer's combined response thereto and motion to substitute or join William & Scott as opposer.



 Applicant's motion to dismiss argues that Scott Griffiths, having assigned the RHINO CHASERS trademark and registration "does not own any rights that may be damaged by Applicant's use or registration of the mark ALBINO RHINO [and] has thus failed to state a claim upon which relief may be granted and does not have standing to lodge the present opposition." Despite the assertion that opposer SGA has failed to state a claim upon which relief may be granted, applicant's motion is, in essence, a motion to dismiss for lack of standing.



 SGA directly contests the motion to dismiss by arguing that it was not filed in timely fashion and by arguing that it, SGA, does have standing to pursue the opposition. SGA also argues that, under the Federal Rules, the proceeding should not be dismissed if the sole basis for doing so is a determination that SGA was the "wrong party" to bring this case; rather, SGA continues, if such a determination is made, then the action should go forward with WSC as the plaintiff.



 In regard to SGA's first argument, we agree that a motion to dismiss under Federal Rule 12(b) must be filed either before or concurrently with the movant's answer. However, in the case at hand, SGA amended its notice of opposition and applicant was provided with an opportunity to respond thereto. 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. Therefore, we decline to deny applicant's motion to dismiss on the ground that it was untimely.



 While we disagree with SGA's assessment of the timeliness of applicant's motion to dismiss, we agree with SGA's contention that it is appropriate to substitute WSC as opposer.



 Substitution is sought on the basis of the assignment of the RHINO CHASERS mark and that "therefore WSC is the real party in interest and has the greater interest in prosecuting this opposition." It is also asserted that "good cause exists to grant the motion because to do so will permit the matter to be prosecuted by the real party in interest, will correct an erroneous filing and will avoid the possibility of a dismissal."



 Because opposer SGA seeks to substitute or join WSC based on the former's assignment of the pleaded RHINO CHASERS registration to the latter, we grant the motion. Under the circumstances of this case, substitution, rather than joinder, is appropriate.



 When a party acquires an opposer, or the opposer's pleaded mark and the goodwill associated therewith, the acquiring party may be substituted if the assignment occurred prior to commencement of the proceeding, or if the discovery and trial periods have closed, or if the parties so stipulate. See Information Resources Inc. v. X*Press Information Services, 6 U.S.P.Q.2d 1034 (TTAB 1988) (at final hearing, survivor of merger substituted for opposer); Arbrook, Inc. v. La Citrique Belge, Naamloze Vennootschap, 184 USPQ 505 (TTAB 1974) (at final hearing, sole user of mark substituted for initial owner of registration for mark because of nunc pro tunc assignment of registration to user); Pyco, Inc. v. Pico Corporation, 165 USPQ 221 (TTAB 1969) (assignee substituted for assignor corporation which no longer existed when opposition was filed but was inadvertently named in notice of opposition as opposer); and Raker Paint Factory v. United Lacquer Mfg. Corp., 141 USPQ 407 (TTAB 1964) (owner of sole proprietorship, who signed notice of opposition as partner in partnership that no longer existed, was substituted for partnership during pendency of proceeding). Otherwise, the acquiring party will be joined to facilitate discovery and trial. See Huffy Corp. v. Geoffrey Inc., 18 U.S.P.Q.2d 1240 (Comm'r Pat.1990) (transferee of opposer's interest in pleaded mark joined as party plaintiff during proceeding).



  *3 Having granted the motion to substitute WSC, we now must discuss which claims WSC will be able to pursue herein. We note that the original notice of opposition included a claim of likelihood of confusion between applicant's ALBINO RHINO mark and opposer SGA's previously used and registered RHINO CHASERS mark. We also note that the amendments to the notice of opposition added a claim of likelihood of confusion between applicant's mark and SGA's previously used, but apparently unregistered, RHINO mark.



 WSC, as the owner of the registration pleaded by SGA, clearly may go forward with the pleaded claim of likelihood of confusion and prior registration. In addition, WSC, as substituted opposer, may rely on SGA's use of the mark RHINO CHASERS if such use inures to WSC's benefit pursuant to Section 5 of the Trademark Act of 1946. For example, if SGA is a licensee of WSC, whether by written agreement or by de facto arrangement, or if SGA's use of the registered RHINO CHASERS mark is otherwise controlled by WSC, SGA's use of the mark will inure to WSC's benefit. Similarly, SGA's claimed use of a RHINO mark may inure to WSC's benefit if WSC controls SGA's use of that mark.



 In summary, opposer's motion to substitute is granted, and applicant's motion to dismiss is denied. [FN2] Having been substituted as opposer herein, William & Scott Co. is allowed until 30 days from the mailing date of this order to file an amended notice of opposition clarifying the claims that it will pursue in this case. Applicant is allowed until 30 days after the date of service of the amended notice of opposition to file its answer or other response to the amended notice. Discovery and trial dates are reset in the attached order.



J.D. Sams



J.E. Rice



T.J. Quinn



Administrative Trademark Judges, Trademark Trial and Appeal Board



FN1. While opposer's communication did not state when the assignment occurred and was not accompanied by a copy of the assignment, the assignment had earlier been recorded in the Office's Assignment Branch. Assignment Branch records reveal that the assignment was recorded many months before the opposition was instituted.



FN2. Although applicant's contention as to SGA's asserted lack of standing is rendered moot by our granting of the motion to substitute, we note that the contention is not well taken. To the contrary, SGA's claims of priority of use, coupled with its pleading of likelihood of confusion, constitute a legally sufficient pleading of SGA's claim that it has a real interest in the proceeding and, therefore, standing to pursue the opposition. See Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982). This is so even if SGA's use of the two pleaded marks is as a licensee or distributor for WSC, for a plaintiff may have standing in a case brought under Section 2(d) of the Trademark Act even if it does not claim ownership of the assertedly similar mark, or the right to control its use. See J.L. Prescott Co. v. Blue Cross Laboratories (Inc.), 216 USPQ 1127 (TTAB 1982) (opposer that had assigned mark and obtained exclusive license from assignee held to have standing); See also, Universal Oil Products Co. v. Rexall Drug and Chemical Co., 463 F.2d 1122, 174 USPQ 458 (CCPA 1972); BRT Holdings Inc. v. Homeway Inc., 4 U.S.P.Q.2d 1952 (TTAB 1987); Chemical New York Corp. v. Conmar Form Systems, Inc., 1 U.S.P.Q.2d 1139 (TTAB 1986); and Yasutomo & Co. v. Commercial Ball Pen Co., Inc., 184 USPQ 60 (TTAB 1974). Thus, SGA, in lieu of moving to substitute WSC as opposer herein, could have gone forward as opposer itself, relying on its claims of prior use of the marks RHINO CHASERS and RHINO.


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