United States District Court, D. New Hampshire
Julia O. Faigel DMD, P.C., Plaintiff
IADMD Holdings, LLC, Defendant
J. McAULIFFE UNITED STATES DISTRICT JUDGE.
Fagel brings this action seeking a declaratory judgment of
non-infringement, as well as an order cancelling four
trademark registrations held by IADMD Holdings. The
parties' dispute arises from their competing uses of the
mark “DR DENTAL, ” as well as variations of that
mark. Dr. Faigel operates more than 40 dental clinics in the
New England region under the name “Dr. Dental.”
IADMD, however, holds trademark registrations for the
following marks: “DOCTOR DENTAL MD, ” “DR
DENTAL, ” and “DOCTOR DENTAL.” Therein lies
to Faigel, she has been subjected to “baseless threats
and demands made by Defendant IADMD Holdings, purporting to
be supported by Defendant's registered trademarks - all
of which are subject to cancellation.” Complaint
(document no. 1) at para. 2. Defendant, IADMD, of course
tells a different story. It says the various challenged
trademarks are all properly registered, have been used
continuously in commerce for many years by the principals of
IADMD, and are not subject to cancellation. IADMD also claims
that, after Faigel was unsuccessful in her efforts to
purchase one of the trademarks from it, she began willfully
infringing it. IADMD advances several counterclaims against
Faigel for trademark infringement, as well as claims for
unfair and deceptive trade practices under New
Hampshire's Consumer Protection Act.
before the court is IADMD's motion for judgment on the
pleadings with respect to several of Faigel's claims. For
the reasons discussed, that motion is necessarily denied.
motion for judgment on the pleadings under Fed.R.Civ.P. 12(c)
is subject to the same standard of review applicable to a
motion to dismiss under Rule 12(b)(6). See
Portugues-Santana v. Rekomdiv Int'l, Inc., 725 F.3d
17, 25 (1st Cir. 2013). Accordingly, the court must accept as
true all well-pleaded facts in Dr. Faigel's complaint and
indulge all reasonable inferences in her favor. See Doe
v. Brown Univ., 896 F.3d 127, 130 (1st Cir. 2018);
SEC v. Tambone, 597 F.3d 436, 441 (1st Cir. 2010).
To survive defendant's motion, the complaint must allege
each of the essential elements of a viable cause of action
and “contain 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) (citation and internal punctuation omitted).
Legal boilerplate and general conclusory statements are
insufficient to state a cognizable claim. See Menard v.
CSX Transp., Inc., 698 F.3d 40, 45 (1st Cir. 2012).
Nevertheless, while “evaluating the plausibility of a
legal claim requires the reviewing court to draw on its
judicial experience and common sense, the court may not
disregard properly pled factual allegations, even if it
strikes a savvy judge that actual proof of those facts is
improbable.” Ocasio-Hernandez v.
Fortuno-Burset, 640 F.3d 1, 12 (1st Cir. 2011)
(citations and internal punctuation omitted).
the case here. While Faigel's claims regarding the
alleged invalidity of IADMD's trademarks seem decidedly
weak, they are sufficient to survive IADMD's motion.
complaint, Dr. Faigel advances six distinct counts. In the
first, she seeks a judicial declaration that she has not
infringed any of the IADMD registered trademarks. She then
seeks a judicial declaration that those marks are
“subject to cancellation” on four grounds (Counts
2(a), 2(b), 2(c), and 2(d)). Finally, she asserts that
IADMD's marks should be cancelled, on the same four
grounds (counts 3, 4, 5, and 6). All of Faigel's
arguments in support of her cancellation claims focus on the
alleged insufficiency of specimens provided to the USPTO in
support of trademark registration applications.
to Faigel, each of those specimens fails to demonstrate that
the relevant mark was in “current use” and/or
that it was actually owned and being used by the applicant.
So, for example, Faigel alleges that the specimens submitted
in 2015 in support of the application for the mark
“DOCTOR DENTAL” suggest that they were produced
in 2004 (thus, failing to show current use) and are owned by
John J. Ryan, DMD (thus failing to show they are owned by
IADMD). Complaint at paras. 25-27. Faigel raises the same
issues with respect to the specimens submitted in support of
the application for registration of “DR DENTAL.”
According to Faigel, each of those specimens is dated 2004,
and each implies that it is owned by Dr. Ryan, rather than
the applicant, IADMD. See Id. at para. 28. She
raises similar arguments with respect to the application to
register DOCTOR DENTAL MD, saying the specimens filed in
support of that application failed to show current use,
feature “markedly inconsistent branding, ” and
display a different phone No. from the other specimens.
Id. at para. 32.
upon those alleged deficiencies, Faigel asserts that the
specimens submitted in connection with each of the various
applications for registration “bear indicia of
fabrication and call into question both IADMD's ownership
of [the] mark and whether [the] mark is, or has ever actually
been in bona fide use in Commerce.” Id. at
para. 33. See also Id. at paras. 27, 29, 31 (same).
Faigel does not appear to be alleging that IADMD or its
predecessors committed fraud in obtaining the registrations
(nor has IADMD treated the complaint as alleging any
fraudulent conduct). Rather, Faigel merely claims that the
specimens submitted to the USPTO were insufficient to support
the registration applications. Additionally, she alleges
that, on information and belief, none of the IADMD marks were
in bona fide use in commerce for the claimed services at the
time their respective applications for trademark protection
were submitted. See Id. at paras. 47-50.
moves for judgment on the pleadings on all counts that allege
its trademarks are subject to cancellation based upon: lack
of bona fide use in commerce; abandonment; and lack of
ownership by the trademark registrant. IADMD concedes that
three of Faigel's counts - her request for a judicial
declaration of non-infringement (count 1) and her assertions
that the marks are merely descriptive (count 2(d) and count
6) -set forth the essential elements of viable claims and are
not subject to dismissal at this point.
courts are vested with the authority to cancel federal
trademarks issued by the USPTO when the challenger has
standing and there is a valid ground, under the Lanham Act,
for cancellation. See, e.g., Brookfield Office Properties
v.Manhattan West Hotel, 2016 WL 6906713, at *3
(S.D.N.Y. Nov. 18, 2016); PlayNation Play Sys., Inc. v.
Velex Corp., 924 F.3d 1159, 1169 (11th Cir. 2019). See
also 15 U.S.C. § 1119 (“In any action involving a
registered mark the court may determine the right to
registration, order the cancelation of registrations, in