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INFORMIX SOFTWARE, INC. v. ORACLE CORP.

May 28, 1996

INFORMIX SOFTWARE, INC., a Delaware corporation, Plaintiff,
v.
ORACLE CORPORATION, a California corporation, and MELITA INTERNATIONAL CORPORATION, a Georgia corporation, Defendants.



The opinion of the court was delivered by: ORRICK

 In this trademark action, plaintiff Informix Software, Inc. ("Informix") sues defendants Oracle Corporation ("Oracle") and Melita International Corporation ("Melita") for declaratory relief, cancellation of trademark, unfair competition, and trade libel. Oracle now moves the Court under Rule 12(b)(6) of the Federal Rules of Civil Procedure for an order dismissing the second, third, and fourth claims for failure to state a claim upon which relief can be granted. For the reasons hereinafter set forth, the Court GRANTS Oracle's motion to dismiss with prejudice Informix's second claim for trademark cancellation, and grants with leave to amend Oracle's motion to dismiss Informix's third and fourth claims for unfair competition and trade libel.

  I.

 The following facts are taken from the complaint, filed with this Court on March 20, 1996. Informix is a manufacturer of database software and servers. Melita owns a federal registration, Reg. No. 1,893,541, for the trademark UNIVERSAL SERVER for a "memory device for the storage and retrieval of video, audio, image and data information, in Class 9," issued on May 9, 1995. Oracle has an exclusive license to use this trademark. Informix alleges that the term "universal server" is a highly descriptive or purely generic term that, in the context of computer products, describes both hardware and software components that offer adaptability and versatility in the storage and manipulation of different forms of computerized information. Thus, Informix alleges, the trademark is invalid.

 Informix's first claim, against Melita and Oracle, is for a declaratory judgment on the validity of the trademark. The second claim, against Melita and Oracle, is for cancellation of the trademark on the grounds that it is merely generic or descriptive, and should have been denied registration. The third claim, against Oracle only, alleges a claim for unfair competition. The fourth claim, against Oracle only, alleges a claim for trade libel and trade disparagement. Oracle, but not Melita, now moves to dismiss the second, third, and fourth claims.

 II.

 A.

 A motion to dismiss under Rule 12(b)(6) cannot be granted unless "it appears beyond doubt that the plaintiff can prove no set of facts in support of his claim which would entitle him to relief." Conley v. Gibson, 355 U.S. 41, 45-46, 2 L. Ed. 2d 80, 78 S. Ct. 99 (1957). Dismissal can be based on the lack of a cognizable legal theory or the absence of sufficient facts alleged under a cognizable legal theory. Balistreri v. Pacifica Police Dept., 901 F.2d 696, 699 (9th Cir. 1990). In analyzing whether to grant a Rule 12(b)(6) motion, the court should keep in mind that dismissal is disfavored and should be granted only in "extraordinary" cases. United States v. Redwood City, 640 F.2d 963, 966 (9th Cir. 1981). Generally, a district court may not consider any material beyond the pleadings in ruling on a Rule 12(b)(6) motion. Hal Roach Studios, Inc. v. Richard Feiner & Co., 896 F.2d 1542, 1555 n.19 (9th Cir. 1990). Material that is properly submitted as part of the complaint, however, may be considered in ruling on a motion to dismiss. Id. In addition, documents whose contents are alleged in a complaint, and whose authenticity no party questions, but which are not physically attached to the pleading, may be considered in ruling on a Rule 12(b)(6) motion to dismiss. Branch v. Tunnell, 14 F.3d 449, 454 (9th Cir. 1994).

 In analyzing a motion to dismiss, the Court must accept as true all material allegations in the complaint, and construe them in the light most favorable to the nonmoving party. NL Indus., Inc. v. Kaplan, 792 F.2d 896, 898 (9th Cir. 1986). Factual allegations can be disregarded, however, if contradicted by the facts established by reference to documents attached as exhibits to the complaint. Durning v. First Boston Corp., 815 F.2d 1265, 1267 (9th Cir. 1987). Conclusory allegations, unsupported by the facts alleged, need not be accepted as true. Holden v. Hagopian, 978 F.2d 1115, 1121 (9th Cir. 1992).

 B.

 Oracle moves to dismiss Informix's second claim for trademark cancellation on the grounds that only Melita, not Oracle, is a proper defendant. The issue of who can be sued for trademark cancellation in federal court appears to be an issue of first impression. *fn1"

 15 U.S.C. § 1119 provides for concurrent jurisdiction in this Court and the Trademark Trial and Appeal Board over the cancellation of trademarks. W & G Tenn. Imports, Inc. v. Esselte Pendaflex Corp., 769 F. Supp. 264, 266 (M.D. Tenn. 1991).

 15 U.S.C. § 1119. Section 1064 provides that a petition to cancel a registered trademark may be filed by any person who believes that he or she is or will be damaged by the registration of the mark. Id. § 1064. The petition may be filed "at any time if the registered mark becomes the generic name for the goods or ...


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