Motion to Dismiss for Failure to State a Claim

One of the most common motions filed in the beginning of a proceeding is a Motion to Dismiss. The purpose of this motions is to dismiss some or all of the Plaintiff’s legal claims so that the claims do not need to be litigated at all. First, it must be understood that a Motion to Dismiss is not meant to be a substitute for trial or a motion for summary judgment. A Motion to Dismiss is not meant to challenge the truth of the Plaintiff’s factual allegations or argue the persuasiveness of their legal conclusions. A Motion to Dismiss is generally used when a Complaint lacks the necessary factual allegations and legal conclusions to support a legal right to relief.

When Is a Motion To Dismiss Filed?

After a Notice of Opposition or Petition to Cancel (which can also referred to as the Complaint) has been filed by a plaintiff at the Trademark Trial and Appeal Board (the “Board”), the defendant must, in most circumstances, file a response within forty (40) days. The deadline to respond is displayed on the website ttabvue.uspto.gov, where all entries for the proceeding are held and are publicly viewable for free.

In most cases, the defendant should file an Answer to respond, if the Complaint is prepared correctly. However, if there are grounds such as a mistake or a deficiency, a defendant may, instead of filing an Answer, file a Motion to Dismiss for failure to state a claim. This doesn’t mean that any mistake is grounds for a Motion to Dismiss (such as a simple typo), but some mistakes and deficiencies are. While the Board considers the Motion to Dismiss, the deadline to file the Answer is suspended. A Motion to Dismiss generally should be filed before the Answer.

What is a Complaint?

To understand what a Motion to Dismiss for failure to state a claim is, you must understand what the legal significance of a Complaint is, and what it isn’t. The Complaint not only starts the proceeding, but also plays a crucial role in defining the metes and bounds of the entire proceeding. A Complaint is not the trial itself, but it puts the defendant, and the Board, on notice of what the trial will be about, and what scope of discovery will be allowed.

The Trademark Trial and Appeal Board’s authority is limited to specific types of legal claims that have to do with the registrability of a trademark. The Board is not authorized to determine the right to use a trademark, nor may it decide broader questions of infringement or unfair competition. TBMP § 102.01. The list of the standard types of claims that can be decided by the Board are provided in their manual here: https://tbmp.uspto.gov/RDMS/TBMP/current#/current/sec-bdacef53-7b72-4ca5-8ceb-215e4afda588.html.

The most frequently encountered claim in Board proceedings is priority and likelihood of confusion, which occurs when a third party owns a similar trademark that they’ve used before the trademark applicant or registrant. For example, their complaint would likely include allegations such as:

We, the Opposer, are the owner of the federally registered trademark T-REX LAW, which has been used for legal services since at least as early as December 31, 2019 and has been registered on the federal trademark registry since February 9, 2021.
On January 10, 2025, Applicant filed the U.S. trademark application T-BEX LAW in connection with legal services. The Application was filed on an Intent-to-Use Basis, giving it constructive priority from only its filing date of January 10, 2025. The Applicant did not use their trademark in commerce prior to this date.
We, the Opposer, have priority from December 31, 2019, through the use of T-REX LAW in commerce.
The trademarks are likely to be confused as T-BEX LAW is only one letter off from T-REX LAW and it is intended to be used for identical services.

A real Complaint should have more than the above, but this is the type of claim that the Board is authorized to hear. The Complaint will define what discovery will be allowed and what the trial will be about, and essentially defines:

What facts were alleged that need to be proven to be true at trial?
What legal issues need to be argued at trial?

In the above example, certain facts will need to be proved through evidence at trial, such as:

Did the Opposer actually provide legal services under the trademark T-REX LAW since December 31, 2019? This could be proven through invoices for legal services that have the T-REX LAW trademark placed on the invoices.
Did the Applicant not use their trademark prior to the Opposer? The Applicant may actually have evidence that they used their T-BEX LAW trademark in 2010, and they should provide such evidence at trial if they wanted to dispute priority.

And in the above example, certain legal issues will need to be argued at trial, such as:

Are T-REX LAW and T-BEX LAW confusingly similar?

These questions will define the scope of what both sides will need to prepare for to succeed at trial. The Opposer will want to gather evidence of their earliest use of the trademark T-REX LAW, and the Applicant will want to gather evidence of their earliest use of the trademark T-BEX LAW, in order for the Board to determine who has priority.

The defendant generally does not need to worry about issues of fact and law that are not relevant to the claims of the Complaint. For example, if only priority and likelihood of confusion are raised in the complaint, but the plaintiff, later at trial, tries to argue that T-BEX LAW should also be denied registration for descriptiveness (another type of legal claim), the Board generally will not even consider it because it was not raised in the complaint and the defendant had not had the opportunity to prepare to defend against that legal claim.

A plaintiff can amend their complaint after the initial Complaint to add new claims, but only under certain circumstances. If the amended Complaint is permitted, then the defendant does need to respond to the new claims.

What is a Motion to Dismiss?

Again, a Motion to Dismiss for failure to state a claim can be used by defendants to avoid having to litigate one or all legal claims brought in a Complaint. The grounds for each Motion to Dismiss differ in every case, and you should retain or consult an attorney to evaluate those grounds. The most common grounds for a Motion to Dismiss for failure to state a claim is that the Complaint does not specifically identify the proper legal or factual grounds to justify the refusal or cancellation of a trademark.

Going off the previous example, let’s say that it’s missing the fourth allegation and doesn’t include anything else.

We, the Opposer, are the owner of the federally registered trademark T-REX LAW, which has been used for legal services since at least as early as December 31, 2019 and has been registered on the federal trademark registry since February 9, 2021.
On January 10, 2025, Applicant filed the U.S. trademark application T-BEX LAW in connection with legal services. The Application was filed on an Intent-to-Use Basis, giving it constructive priority from only its filing date of January 10, 2025. The Applicant did not use their trademark in commerce prior to this date.
We, the Opposer, have priority from December 31, 2019, through the use of T-REX LAW in commerce.
The trademarks are likely to be confused as T-BEX LAW is only one letter off from T-REX LAW and it is intended to be used for identical services.

Here, though it may be obvious to everyone involved that T-REX LAW and T-BEX LAW may be confusingly similar, the Complaint didn’t explicitly state that factual allegation. Because of that, the Defendant is not on direct notice of what legal arguments the Defendant has to defend against and this claim of likelihood of confusion could be dismissed if the Defendant files a Motion to Dismiss for failure to state a claim.

If the Complaint has multiple legal claims, the Defendant can choose which claims to move to dismiss, and can choose to only move to dismiss certain claims and not move to dismiss other claims. If the Defendant does not move to dismiss all claims, then even if they are successful on dismissing those that they moved to dismiss, the proceeding would continue on the remaining claims.

For example, if the Complaint included claims of both (1) priority and likelihood of confusion, and (2) abandonment, if just one of the claims was improperly pleaded, such as abandonment, the defendant could move to dismiss that claim and not argue against the other. If successful in dismissing abandonment, the proceeding would continue on (1) priority and likelihood of confusion. If unsuccessful in dismissing abandonment, the proceeding would continue on both (1) priority and likelihood of confusion, and (2) abandonment.

A Motion to Dismiss can also attack a Plaintiff’s standing (called entitlement to a statutory cause of action at the TTAB), meaning Plaintiff’s rights to bring a cause of action at all.

Procedure of Motions to Dismiss at the Trademark Trial and Appeal Board

A Motion to Dismiss for failure to state a claim must be filed before, or concurrently with, the movant’s answer. TBMP 503.01. The filing of a Motion to Dismiss tolls the time for filing of an answer. If the motion is filed before the movant’s answer, and is denied, the Board will reset the time for filing of an answer.

After a Motion to Dismiss is filed and served, the non-movant (the party who the motion was filed against) is generally given twenty (20) days to file a brief in response to the Motion. The brief in response is the non-movant’s opportunity to argue why the Motion to Dismiss should not be granted. A response to the Motion to Dismiss is not to be used to add allegations or fix mistakes of the original complaint, that must be done through an amended complaint. If the non-movant does not file a brief in response to a Motion to Dismiss or an amended complaint, then the motion is usually considered conceded. If that happens, the Board generally will dismiss the claims that were moved to be dismissed.

After a brief in response to a Motion to Dismiss is filed and served, the movant then has the optional opportunity to file a reply brief within twenty (20) days from service of the opposition brief. This is similarly used by the movant to argue against any points and arguments raised by the non-movant in their opposition brief.

Or, within twenty one (21) days after a motion to dismiss is filed, instead of arguing against the motion, the plaintiff may file an amended complaint without writing a brief in response to a Motion to Dismiss. If a timely amended complaint is submitted, the motion to dismiss will normally be moot. The movant may file another Motion to Dismiss against the amended complaint if they so choose.

Amending the Complaint

Fortunately for Plaintiffs and unfortunately for Defendants, even if a Motion to Dismiss is granted, the Board will generally grant the Plaintiff an opportunity to amend their Complaint to fix the deficient claims. The main reason for allowing amendment being that the Board and most courts prefer that cases be decided on their merits, not on mere oversights. Though, there are many times where a Plaintiff will opt to not amend their claims. Certain legal claims require particular factual allegations in order to survive a motion to dismiss. Litigants and attorneys should only make allegations in a proceeding in good faith, which generally means to not knowingly lie.

For example, one claim that can be brought at the Trademark Trial and Appeal Board is “dilution of a famous trademark”, which requires, among other things, proving at trial that the Plaintiff’s trademark is famous. Let’s say that the initial Complaint contained the allegation:

Claim 2: Dilution of Famous Trademark

The Opposer’s Trademark DAVELIFE has been placed on goods that were sold in Idaho to ten people and is therefore famous.
The Applicant’s Trademark DAVELIFE is likely to cause dilution by blurring of Opposer’s DAVELIFE trademark.

Generally, for a trademark to be famous, a trademark has to be known by more than ten people. Think NIKE or MCDONALDS. The Defendant could file a Motion to Dismiss on the dilution claim, arguing that selling to just ten people is not enough to support a claim of dilution. The Board might agree, and tell the Plaintiff that they need more factual allegations regarding the use of their trademark to support a claim of dilution.

Now, if the Opposer actually had sold DAVELIFE trademarked goods to millions of people, but had just omitted putting that allegation into the Complaint, they could add that to the Complaint in good faith and the Board may find that enough to not dismiss the claim. However, if the Opposer had not had any other sales besides those ten, then the Opposer may forego the claim of dilution because there are no other facts they could add to support the claim. To put in the Complaint an allegation that they had millions of sales, if they did not, would be untruthful and should not be brought into a court of law.

Amending the Complaint does not shield the Complaint from a motion to dismiss. A defendant can move to dismiss an amended complaint in the same way that they would move to dismiss an original complaint – concurrently or before the time required to file an Answer to the Amended Complaint.

Should You File a Motion To Dismiss?

Whether to file Motion to Dismiss can be a complex decision for which you should consult an attorney. Filing a Motion to Dismiss has several legal advantages, as the motion can result in the termination of a proceeding, can reduce the amount of claims the Defendant has to defend against, the Plaintiff generally needs to respond to it, the Plaintiff may have to re-write their Complaint, and the motion can stay the time before discovery begins. However, there are circumstances where even if a motion to dismiss could be filed, the Plaintiff’s Complaint may easily be amended and the Defendant simply wants to move the proceeding forward. A Motion to Dismiss can delay the entire proceeding by a few months. These are just some of the concerns that should be considered in filing a Motion to Dismiss, and every case will have its own unique circumstances that will affect this decision. If you need any assistance in filing a Motion to Dismiss, please request a free consultation on our home page at https://t-rexlaw.com/. You can also reach us at (858) 220-2345.

Please be sure to mention that you read this blog post so that the drafting attorney, David Stewart, can better assist you!

Contributors: David Stewart, Partner/Patent Attorney at T-Rex Law, P.C.