Blackhorse Plaintiffs Move to Dismiss Washington Football Team’s Suit

Here is the motion to dismiss in Pro-Football Inc. v. Blackhorse (E.D. Va.):

19 Motion to Dismiss

An excerpt:

In June 2014, the Trademark Trial and Appeal Board (“TTAB”), a component of the United States Patent and Trademark Office (“USPTO”), decided that the USPTO acted contrary to federal trademark law when it issued six trademark registrations to Plaintiff Pro-Football, Inc. (“PFI”), the owner of the Washington NFL team. The TTAB concluded that the marks were not eligible for registration under 15 U.S.C. § 1502(a) because they contain matter that “may disparage” Native Americans.1 Accordingly, the TTAB scheduled the registrations for cancellation by the Director of the USPTO. The TTAB acted after five Native American individuals, the defendants in this action (“Blackhorse Defendants”), petitioned it to cancel the registrations.

PFI could have appealed to the Federal Circuit, where the USPTO could have defended the TTAB decision, but PFI declined to do so. See 15 U.S.C. § 1071(a). Instead, PFI filed this civil action against the Blackhorse Defendants, under 15 U.S.C. § 1071(b)(4).

PFI’s dispute, however, is with the USPTO, not with the Blackhorse Defendants. PFI alleges that the TTAB — not the Blackhorse Defendants — acted unlawfully by scheduling its registrations for cancellation. Likewise, PFI seeks relief only against the USPTO — a declaratory judgment to prevent the Director of the USPTO from carrying out the cancellations. PFI alleges no conduct on the part of the Blackhorse Defendants other than filing a petition with the TTAB. It does not allege that they acted unlawfully or tortiously. Nor does PFI allege that the Blackhorse Defendants claim any interest in PFI’s trademarks or in similar trademarks. This lawsuit will not affect the legal rights or obligations of the Blackhorse Defendants in any way. As a result, the Complaint should be dismissed for the following two reasons:

• The Blackhorse Defendants are not “parties in interest” who may be sued under 15 U.S.C. § 1071(b)(4); and

• This Court lacks subject matter jurisdiction because there is no “Case or Controversy” under Article III of the Constitution as between PFI and the Blackhorse Defendants.

The complaint is here.