Finanz St. Honore, B.V.v.Johnson & JohnsonJohnson & Johnson v. Finanz St. Honore, B.V.

Trademark Trial and Appeal Board

Jun 6, 2007

No. 92044444 (T.T.A.B. Jun. 6, 2007)

Mailed: June 6, 2007

CONSOLIDATED:

Opposition No. 91161028

FINANZ ST. HONORE, B.V.

v.

JOHNSON & JOHNSON

- - - - - - - - - - -

Cancellation No. 92044444

JOHNSON & JOHNSON

v.

FINANZ ST. HONORE, B.V.

Before Walters, Zervas, and Wellington,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

On March 29, 2006, the Board granted applicant Johnson &
Johnson’s (“Johnson”) motion for leave to file an amended
answer with a counterclaim in the consolidated opposition
proceeding. By way of the counterclaim, Johnson seeks to
cancel two of opposer Finanz St. Honore, B.V.’s (“Finanz”)
pleaded registrations (Registration Nos. 1199240 and 1746723,
both for the same mark, LOVE’S BABY SOFT, and both over five
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS OPINION IS A PRECEDENT
OF THE T.T.A.B.
Opposition No. 91161028
Cancellation No. 92044444

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years old).1 As grounds for the counterclaim, Johnson asserts
that both registrations were fraudulently procured and were
obtained without disclaimers of generic terms in the marks.
In addition, Johnson asserts that Registration No. 1746723 was
“fraudulently renewed due to false statements of fact” and the
mark therein has been abandoned, in part, as to certain goods
identified in the registration.
On April 21, 2006, Finanz filed a motion to dismiss
applicant’s counterclaim for lack of standing, under Fed. R.
Civ. P. 12(b)(1), and to strike one of the grounds in the
counterclaim because said ground is time-barred under
Section 14 of the Trademark Act.
We turn first to the issue of Johnson’s standing to
bring the counterclaim.
In order to properly plead its grounds for cancellation
in the counterclaim and avoid dismissal thereof at this
stage of the proceeding, Johnson need only allege facts in
its pleading which, if proved, would establish there is a
valid ground for seeking to cancel the registrations. See

1 Registration No. 1199240 issued on June 29, 1982 and covers
“cologne.” Registration No. 1746723 issued on May 26, 1992 and
covers “cologne spray, light cologne splash, body mist, cologne
mist, skin moisturizing lotion, body wash, body powder, personal
deodorant, perfume, all over body spray, and gift sets containing
two or more of these products.”
Johnson & Johnson, as petitioner in the consolidated
Cancellation No. 92044444, also seeks to cancel a third
registration owned by Finanz St. Honore B.V., namely,
Registration No. 854850 for the mark BABY SOFT on “hair
preparations, namely, shampoo.”
Opposition No. 91161028
Cancellation No. 92044444

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Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d
1024, 213 USPQ 185 (CCPA 1982). As a counterclaim
plaintiff, Johnson need not allege its standing to challenge
the pleaded registrations because its standing is inherent.
Carefirst of Maryland, Inc. v. FirstHealth of the Carolinas
Inc., 77 USPQ2d 1492 (TTAB 2005) (“Applicant, by virtue of
its position as defendant in the opposition, has standing to
seek cancellation of the pleaded registrations,” citing Ohio
State University v. Ohio University, 51 USPQ2d 1289, 1293
(TTAB 1999)); Bankamerica Corp. v. Invest America, 5 USPQ2d
1076, 1078 (TTAB 1987) (defendant seeking to cancel pleaded
registration on ground of descriptiveness or genericness in
an opposition based on likelihood of confusion need not
allege that it has an interest in using the term sought to
be cancelled); M. Aron Corporation v. Remington Products,
Inc., 222 USPQ 93, 95 (TTAB 1984) (counterclaimant clearly
has personal stake in the controversy); Marcal Paper Mills,
Inc. v. American Can Co., 212 USPQ 852, 856 (TTAB 1981)
(damage assumed, and with properly pleaded ground is
sufficient to place validity of registration in issue); and
General Mills, Inc. v. Natures Way Products, 202 USPQ 840,
841 (TTAB 1979); see also TBMP § 313.03 (2d ed. rev. 2004).
In view thereof, Finanz’s arguments regarding Johnson’s
lack of standing to bring the counterclaim are not well
taken. Accordingly, to the extent that Finanz seeks to
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Cancellation No. 92044444

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dismiss the counterclaim for lack of standing under Fed. R.
Civ. P. 12(b)(1), the motion to dismiss is denied.
We now turn to Finanz’s motion to strike one of the
grounds in the counterclaim on the basis that said ground is
time-barred. Specifically, in its motion, Finanz notes that
Registration Nos. 1199240 and 1746723 are over five years
old and argues that Count II of applicant’s counterclaim is
time-barred under Section 14 of the Lanham Act.
Count II of the counterclaim, captioned “[Finanz’s]
Registrations Improperly Issued Without Disclaimers of ‘Baby
Soft’,” contains the following paragraphs:
20. Johnson & Johnson repeats and realleges paragraph
13 as if fully set forth herein.2
21. The term "baby soft" is generic for Finanz's
Goods.
22. Finanz's Registrations issued improperly without
disclaimers of the term "baby soft."

Essentially, Johnson seeks to cancel the registrations based
on the absence of a disclaimer of an alleged generic term,
“Baby Soft.”
Thus, the issue presented by way of the motion is
whether a registration, more than five years old, may be
cancelled in the absence of a disclaimer of a purportedly

2 Paragraph 13 reads:
Finanz alleges ownership of Finanz's Registrations and
has asserted them against registration of Johnson &
Johnson's application for registration Ser. No.
78164712 for KISSABLY BABY SOFT for "hair shampoo, skin
lotions and body wash" ("Johnson & Johnson's Goods").
Opposition No. 91161028
Cancellation No. 92044444

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generic portion of the mark. This appears to be a case of
first impression for the Board on this issue.
Section 14 of the Trademark Act provides that after
five years from the date of the registration of a mark, a
petition (or counterclaim) to cancel said registration may
be filed only on grounds specified in subsections 14(3) and
14(5).3 Specifically, Section 14(3) provides that a
registration may be cancelled:
At any time if the registered mark becomes the generic
name for the goods or services, or a portion thereof,
for which it is registered, or is functional or has
been abandoned, or its registration was obtained
fraudulently or contrary to the provisions of section 4
or of subsection (a), (b), or (c) of section 2 for a
registration under this Act, or contrary to similar
prohibitory provisions of such prior Acts for a
registration under such Acts, or if the registered mark
is being used by, or with the permission of, the
registrant so as to misrepresent the source of the
goods or services on or in connection with which the
mark is used. If the registered mark becomes the
generic name for less than all of the goods or services
for which it is registered, a petition to cancel the
registration for only those goods or services may be
filed. A registered mark shall not be deemed to be the
generic name of goods or services solely because such
mark is also used as a name of or to identify a unique
product or service. The primary significance of the
registered mark to the relevant public rather than
purchaser motivation shall be the test for determining
whether the registered mark has become the generic name
of goods or services on or in connection with which it
has been used.4

[Emphasis added.]

3 Subsection 14(5) involves certification marks and thus is not
relevant herein.
4 The grounds for cancellation under Sections 2 and 4,
incorporated by reference in Section 14(3), do not involve
genericness and thus are not relevant herein.
Opposition No. 91161028
Cancellation No. 92044444

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Although Count II of the counterclaim sets forth a
claim based on an allegation that a portion of the mark is
generic, Section 14(3) only provides for a claim where the
allegation is that the mark, as a whole, is generic.
Because Count II of Johnson’s counterclaim is not one of the
enumerated possible grounds for cancellation for
registrations that are over five years old, it is time-
barred under Section 14 of the Act, 15 U.S.C. § 1064; see
also TBMP § 307 (2d ed. rev. 2004) and authorities cited
therein. Accordingly, Finanz’s motion to strike this claim
is granted and paragraphs 20-22 of the counterclaim are
hereby stricken.5
Finanz is allowed until THIRTY DAYS from the mailing date
of this order to file an answer to the remainder of the
counterclaim.
Notice of Default in Cancellation No. 92044444
On March 29, 2006, the Board allowed Finanz, as
respondent in the cancellation, time to file an answer to
the petition to cancel. Inasmuch as it appears that no
answer has been filed, nor has Finanz filed a motion to
extend its time to answer, notice of default is hereby
entered against Finanz under Fed. R. Civ. P. 55(a).

5 Our decision to strike the counterclaim does not affect
respondent's ability to argue that a portion of petitioner’s mark
is generic and that this portion should be accorded less weight
in the likelihood of confusion determination.
Opposition No. 91161028
Cancellation No. 92044444

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Finanz is allowed until THIRTY DAYS from the mailing
date of this order to show cause why judgment by default
should not be entered against it in the consolidated
cancellation proceeding in accordance with Fed. R. Civ. P.
55(b).
Proceedings Otherwise Remain Suspended
Except as permitted above, proceedings herein remain
suspended. Upon resolution of the default issue, the Board
will issue a resumption order and, as appropriate,
reschedule the discovery deadline and trial dates.
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