## Facts

- Aktieselskabet AF 21. November 2001 (Bestseller), a Danish clothing company, marketed apparel internationally under the “Jack & Jones” brand and held many foreign registrations and related domain names.
- In 2003, Bestseller decided to expand into North America and sought trademark protection for “Jack & Jones” in Canada (filed August 2004) and the United States (filed December 6, 2004).
- Fame Jeans, Inc. filed a U.S. trademark application for “Jack & Jones” on January 9, 2004.
- At the times of filing, neither party had used “Jack & Jones” in U.S. commerce.
- Bestseller opposed Fame’s application before the Trademark Trial and Appeal Board (TTAB) on likelihood-of-confusion grounds.
- The TTAB granted summary judgment to Fame, concluding Bestseller lacked priority because it had not used the mark in U.S. commerce and had a later-filed U.S. application.
- Bestseller then filed a civil action in the U.S. District Court for the District of Columbia under 15 U.S.C. § 1071(b), adding new grounds for opposition beyond those raised before the TTAB.
- The district court dismissed, holding the new grounds were waived and that the complaint failed under a perceived heightened pleading standard derived from Twombly.

## Issues

1. In a civil action under 15 U.S.C. § 1071(b) challenging a TTAB decision, may a plaintiff assert new grounds for opposition not raised before the TTAB, or are they waived?
2. Did Twombly impose a broadly heightened pleading standard that justified dismissal of the complaint?
3. Even if new grounds may be asserted and the pleading standard was misapplied, were some of the asserted trademark theories legally insufficient as a matter of law?

## Decision

- The D.C. Circuit held that a § 1071(b) civil action permits assertion of new grounds for opposition not presented to the TTAB, subject to ordinary procedural rules.
- The court held the district court misread Twombly and improperly treated it as imposing a generally heightened pleading requirement.
- The court affirmed dismissal of some claims as legally defective, reversed dismissal of others, and remanded for further proceedings.

## Legal Principles

- A § 1071(b) civil action is not confined to the TTAB record and is more than record-based appellate review; it allows additional evidence and a de novo-type determination, which supports allowing new grounds for opposition in district court.
- Waiver is not automatic for theories omitted before the TTAB in a § 1071(b) action; absent a statutory bar, new claims may be litigated under standard procedural constraints.
- Twombly did not replace Rule 8(a)’s notice pleading with a universal heightened standard; complaints must allege enough factual matter to be plausible rather than purely conclusory.
- In trademark priority disputes, foreign use and overseas reputation, without use in U.S. commerce, generally do not establish priority against another U.S. applicant, making certain priority-based theories legally untenable.

## Conclusion

The D.C. Circuit ruled that § 1071(b) permits litigants to raise new opposition grounds in district court and that Twombly does not impose a generally heightened pleading standard, while still permitting dismissal of particular trademark theories that fail as a matter of law.


Aktieselskabet AF 21. November 2001 v. Fame Jeans, Inc., 525 F.3d 8 (D.C. Cir. 2008)