11
Dec/09

Seemingly Impossible Motion to Dismiss Re Genericness Allegation Against Registered Mark


Plaintiff owns registrations for, among other marks, FRAGRANCENET and FRAGRANCENET.COM. Defendant moves to dismiss based on genericness. The only record here is the pleadings. A registered trademark is entitled to a (rebuttable) presumption that it functions as a trademark. This seems to me to be an impossible 12(b)(6) grounds for dismissal, unless the motion to dismiss is combined with something else that builds a record, such as a motion for a preliminary injunction. The Court notes:

In fact, at oral argument, both sides state that, based upon their research (which is consistent with the Court’s independent research), they were aware of no case ever in this Circuit where a court has, at the motion to dismiss stage, lacking an evidentiary record, dismissed a trademark claim on the grounds that a registered product or service name . . .was generic as a matter of law.”

Well, the motion still delayed the case 6 months.
Decision Fragrance Net Generic MTD

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