Unreported / Non-Citable
Background
Tensar International Corporation and Industrial Fabrics, Inc. compete in the market for geotechnical-engineering products. Tensar owns federal registrations for the marks “TX5” and “TX7,” covering plastic mesh materials used in construction or civil-engineering applications. Tensar sued IFI for allegedly selling geogrids using those marks.
IFI counterclaimed for cancellation of the registrations. It alleged that TX5 and TX7 were generic product names within Tensar’s TriAx geogrid line, that Tensar had never used them as trademarks identifying source, or, alternatively, that Tensar had abandoned any trademark use. Tensar moved to dismiss the counterclaim under Federal Rule of Civil Procedure 12(b)(6).
The Court’s Holding
The court granted Tensar’s motion, concluding that none of IFI’s three cancellation theories stated a plausible claim. The genericness theory failed because IFI alleged that TX5 and TX7 identify specific Tensar products, rather than the general class or type of goods. A designation for a particular product is not generic merely because it distinguishes that product within a broader product line.
The nonuse and abandonment theories also failed. Tensar’s omission of registration or trademark symbols and its failure to list TX5 and TX7 in certain intellectual-property disclosures did not plausibly establish a lack of bona fide use. IFI’s own allegations and exhibits showed that Tensar consistently used TX5 and TX7 as public-facing labels in advertising and packaging, not merely as internal codes or token uses intended to preserve rights.
The court dismissed the counterclaim without prejudice because 15 U.S.C. § 1119 independently permits a court to cancel a registration in resolving the underlying trademark dispute. It nevertheless denied IFI leave to amend because IFI identified no additional, noncontradictory facts that could cure the pleading defects.
Key Takeaways
- A term identifying a specific product within a company’s product line is not generic unless it names the broader genus or class of goods.
- Omitting “®” or “™” symbols or leaving a mark out of an intellectual-property disclosure does not, without more, plausibly show nonuse or abandonment.
- Dismissal without prejudice does not necessarily carry leave to amend, particularly when no additional facts could cure the claim without contradicting existing allegations.
Why It Matters
The decision underscores that trademark-cancellation claims require facts fitting the governing legal standard, not merely allegations that a mark functions as a model name or product designation. Public-facing, consistent use of a designation in advertising and packaging can perform the source-identifying function of a trademark even when the owner does not always use trademark symbols.
The ruling also preserves the court’s statutory authority to order cancellation later if the underlying trademark litigation warrants that remedy, despite dismissing IFI’s present counterclaim and denying amendment.