UNITED STATES DISTRICT COURT

DISTRICT OF NEW HAMPSHIRE

Julia O. Faigel DMD, P.C., Plaintiff

v. Case No. 18-cv-797-SM Opinion No.

IADMD Holdings, LLC, Defendant

O R D E R

Julia 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 the conflict.

According 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.

Pending 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.

Standard of Review

A 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.,

(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.,

(1st Cir. 2018); SEC v. Tambone,

(1st Cir.

2010). To survive defendant’s motion, the complaint must allege

2 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,

(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.,

(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,

(1st Cir. 2011)

(citations and internal punctuation omitted).

Such is 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.

Faigel’s Claims

In her 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

3 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.

According 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

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

4 inconsistent branding,” and display a different phone number

from the other specimens.

at para. 32. 1

Based 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.”

at para. 33. See also

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

at paras. 47-50.

1 Parenthetically, the court notes that IADMD says it is wholly owned and operated by Dr. Ryan, along with his wife Rosemary DiMaria Ryan, and it was formed to hold intellectual property for their benefit. Dr. Ryan is a dentist who practices in southern New Hampshire and apparently uses (or, at a minimum, used) the mark “Dr Dental” in connection with his practice.

5 IADMD 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.

Discussion

District 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,

, at *3 (S.D.N.Y. Nov. 18,

2016); PlayNation Play Sys., Inc. v. Velex Corp.,

(11th Cir. 2019). See also

(“In any

action involving a registered mark the court may determine the

right to registration, order the cancelation of registrations,

in whole or in part, restore canceled registrations, and

otherwise rectify the register with respect to the registrations

of any party to the action.”).

6 Here, Faigel claims IADMD’s registrations were improperly

granted and so are invalid. As noted above, she rests her

invalidity claims on the allegedly insufficient specimens

provided to the USPTO in support of IADMD’s (and its

predecessors’) various trademark applications.

In response, IADMD asserts that the insufficiency of

specimens, standing alone, is not typically a basis for

cancelling a registration. See, e.g., Bon Vivant Catering, Inc.

v. Duke Univ.,

, n.14 at *11 (M.D.N.C. June 3,

2016) (“However, the insufficiency of a specimen does not

generally render a mark void.”) (collecting cases). On the

other hand,

While the Board is not bound by the decision of the Examining Attorney, in that the mere acceptance of specimens by the Examining Attorney does not mandate a finding by us that [trade] mark usage was made, it is not the adequacy of the specimens, but the underlying question of [trade] mark usage which would constitute a proper ground for opposition.

The reason why unacceptable specimens, per se, should not be a ground for opposition becomes apparent when one considers the purpose of specimens. The specimens are to show the mark as it is actually used, so that it can be determined whether the matter for which registration is sought is being used as a trademark . . . . Objections to the specimens made by the Examining Attorney during examination are not actually to the acceptability of the specimens themselves, but are that the specimens do not show trademark use of the matter for which registration is sought.

7 Teal Bay Alls., LLC v. Southbound One, Inc.,

, at

*10 (D. Md. Jan. 26, 2015) (quoting Century 21 Real Estate

Corp.,

(T.T.A.B. Jan. 17, 1989)) (emphasis in

original). In other words, while deficient specimens may not

form the exclusive basis of an invalidity argument, it is

possible that they may constitute some evidence that a

registration was improperly granted to a mark that was not used

in commerce. Moreover, as the district court noted in Teal Bay:

The TTAB [Trademark Trial and Appeals Board] has found a registration void ab initio because specimens did not demonstrate use in commerce. See CPC Int’l Inc. v. Skippy, Inc.,

(T.T.A.B. May 28, 1987); In Re Goldencare Corp.,

, at *6 (T.T.A.B. June 30, 1998). Also, at least one district court has found that an invalid specimen constituted sufficient ground for cancellation of the mark. Horizon Healthcare Servs. v. Allied Nat., Inc., No. CIV.A. 03–4098(JAG),

, at *6–7 (D.N.J. Feb. 14, 2006) (finding that registration would have been refused if the examiner had known that the specimen was not in actual use in commerce).

Teal Bay,

, at *10. See also Bon Vivant Catering,

, at *11 n.14 (“An insufficient specimen will

form the basis for cancellation only where an applicant’s

specimen prevented the PTO from considering the mark as it is

actually used in commerce.”).

8 While the specimens upon which Faigel relies for her

cancellation argument may not be sufficient, standing alone, to

warrant cancellation, they are (at least potentially) evidence

supportive of her cancellation claims.

At this juncture, it is simply premature, and the record is

insufficiently developed, for the court to rule that Faigel’s

claims fail as a matter of law. To be sure, those claims are

not particularly compelling. Indeed, they appear to be quite

weak (especially if the facts alleged in defendant’s memorandum

prove to be true). In light of that, summary judgment would

seem to be a more appropriate context in which to fully address

Faigel’s claims. And, of course, should Dr. Faigel’s claims

prove to be meritless and/or her pursuit of those claims

unreasonable, an award of attorney’s fees may be warranted. See

(a) (authorizing an award of attorney’s fees in

“exceptional cases”). See generally Octane Fitness, LLC v. ICON

Health & Fitness, Inc.,

(2014) (defining an

“exceptional case” as “simply one that stands out from others

with respect to the substantive strength of a party’s litigating

position (considering both the governing law and the facts of

the case) or the unreasonable manner in which the case was

litigated.”).

9 Conclusion

For the foregoing reasons, defendant’s motion for judgment

on the pleadings (document no. 17) is necessarily denied.

SO ORDERED.

____________________________ Steven J. McAuliffe United States District Judge

August 6, 2019

cc: Laura B. Najemy, Esq. R. David Hosp, Esq. Robert M. O’Connell, Jr., Esq. Brian M. Gaff, Esq. Christopher R. McElwain, Esq. Kyle McDonald, Esq.

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