The opinion of the court was delivered by: ROYCE LAMBERTH, District Judge
This matter comes before the Court on the defendants' Motion
 for judgment on the pleadings or alternatively for summary
judgment. Upon consideration of the defendants' motion, the
opposition thereto, the applicable law, and the entire record
herein, the Court concludes that the defendants' motion will be
granted. The Court agrees with the defendant's contention that
the issues in the complaint were never plead administratively nor
addressed by plaintiff and are not mentioned in the decision of
the Board; and thus that these arguments are new, requiring that
they be dismissed under Rule 12(c) in accordance with the
governing legal standard. The Court's reasoning is set forth
This is a suit to set aside defendant's opposition by the
Trademark Trial and Appeal Board ("TTAB") of plaintiff's
application for registration of a trademark. Plaintiff, Mitchell
Cosmetics SARL, sought registration of a skin and body care
product called "Regge Lemon." The defendant, Pramil S.R.L.
(Esapharma), an Italian corporation, opposed Mitchell's application, alleging that Pramil had continuously used the mark
"Regge Lemon" for many different cosmetic products
internationally and in the United States.
The TTAB found that defendant had began its use of "Regge
Lemon" in April 1997 which was prior to plaintiff's constructive
use date of September 20, 1999. The TTAB concluded what the TTAB
found to be the subsequent sales at retail show the bona fide use
of a mark in the ordinary course of trade. See
15 U.S.C. § 1127. Consequently, the TTAB found that the defendant in this
case had shown by a preponderance of the evidence that it had a
priority of use in the United States.
On September 9, 2004, plaintiff filed its complaint with this
Court, seeking de novo review of the TTAB's administrative
decision pursuant to 15 U.S.C. § 1071(b). Section 1071(b)(4)
states that the United States District Court for the District of
Columbia has jurisdiction where the defendants "reside in a
plurality of districts not embraced within the same State. . . ."
15 U.S.C. § 1071(b)(4). Thus, this Court's jurisdiction is
In its complaint, plaintiff presents three issues supporting
its request that the Court overturn the TTAB's decision. It
argues first that the importation and distribution of the
defendant's product bearing the mark in the United States is
prohibited as the defendant's product contains an unapproved new
drug and thus cannot be legally sold under U.S. Food and Drug
Administration rules and regulations. See Compl. p. 2. In the
second cause of action, plaintiff argues that defendant has
abandoned its use of the mark "Regge Lemon." See id. Finally,
plaintiff argues that defendant's exclusive agents in the United
States agreed with plaintiff and others in principle for joint
ownership of the mark "Regge Lemon" and that defendant wrongfully
withheld its cooperation in executing the parties' agreements.
See id. The defendant moved for judgment on the pleadings under the
Federal Rile of Civil Procedure 12(c) or alternatively for
summary judgment. Plaintiff responded by challenging the TTAB
finding of a likelihood of confusion based on priority of use.
Upon review of the pleadings, record and applicable law, the
Court shall grant defendant's motion for judgment on the
Pramil S.R.L. bring its motion pursuant to 12(c) and Rule 56 of
the Federal Rules of Civil Procedure. Because the Court herein
grants the defendant's Rule 12(c) request for judgment on the
pleadings, there is no need to address Rule 56. The appropriate
standard for reviewing a motion for judgment on the pleadings is
"virtually identical" to that applied to a motion to dismiss.
See Haynesworth v. Miller, 820 F.2d 1245, 1254 (D.C. Cir.
1987). Thus, as with a motion to dismiss, "the plaintiff enjoys
the benefit of all inferences that plausibly can be drawn from
well-pleaded allegations of the complaint." Id. Furthermore,
the moving party must show "that no material issue of fact
remains to be solved, and that he or she is clearly entitled to
judgment as a matter of law." Id. at 1249, n. 11 (citing
Since this matter entails the review of a matter already
addressed by the TTAB, the Court is also wary of the degree of
deference it must extend to that administrative board's
decisions. In this case, plaintiff challenges a TTAB decision in
federal district court, and therefore the court's standard of
review is a hybrid of deferential treatment and de novo
scrutiny. See Material Supply Int'l, Inc. v. Sunmatch Indus.
Co., 146 F.3d 983, 989-90 (D.C. Cir. 1998). "In deference to the
TTAB's expertise "with trademark disputes," findings of fact made
by the [TTAB] are given great weight and not upset unless new
evidence is introduced which carries thorough conviction." 146 F.3d at 990 (quoting 3 J. THOMAS McCARTHY,
McCARTHY ON TRADEMARKS & UNFAIR COMPETITION § 21:21, at 21-26
(4th ed. 1997)). Because "the district court is just as able as
the TTAB to determine an issue of law," review of legal questions
is de novo. Id.
In its motion for judgment on the pleadings, defendant argues
that a party cannot raise an issue in the District Court that was
not raised in the Patent Office proceedings, relying on Jones
Company v. The Gilbert & Bennett Manufacturing Company,
332 F.2d 216 (2d Cir. 1964). Def.'s Mot., at 3. This case correctly
represents the governing law in this Court on this issue. Gold
Seal Co. v. Weeks, 129 F. Supp. 928 (D.D.C. 1955). In Gold
Seal, the Court stated, "[w]e are satisfied that Congress did
not intend, by setting up review in this court, to transfer the
functions of the Patent Office to the District Court. . . . We
will not pass upon those claims which have not first been
considered on the merits by the Patent Office."
129 F. Supp 937(citing Lucke v. Coe, 69 F.2d 379 (D.C. Cir. 1934); Burrell
Corp. v. Coe, 143 F.2d 372 (D.C. Cir. 1944)). The Court agrees
with defendant's argument.
The record of the proceedings before the TTAB shows that the
issues of prohibited distribution, abandonment and wrongful
withholding of cooperation in executing a joint ownership
agreement were never plead nor addressed by the parties in their
briefs and they are not mentioned in the TTAB's decision. Thus
all plaintiff's claims here are new issues that are outside the
scope of this Court's review. The governing law does not allow
the Court to hear the entire trial testimony of the plaintiff for
the first time when no testimony was presented before the TTAB
concerning these issues. To have a complete trial where all the
evidence was being presented for the first time would also be
improper since it is beyond the scope of review of the TTAB
rulings that Congress established for this Court. A separate order shall issue this date, granting defendant's
motion and dismissing this case.
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