ACRO Biosystemsv.Acrobiosystems USA LLC dba ACROBiosystems and Xuelian Zhao

Trademark Trial and Appeal Board

Mar 20, 2015

No. 91212675 (T.T.A.B. Mar. 20, 2015)

WINTER
Mailed: March 20, 2015

Opposition No. 91212675
ACRO Biosystems
v.
Acrobiosystems USA LLC dba
ACROBiosystems and
Xuelian Zhao

Before Richey, Deputy Chief Trademark Judge,
Seeherman and Ritchie, Administrative Trademark Judges.

By the Board:

ACROBIOSYSTEMS USA LLC (hereafter “Acro USA”) and Xuelain Zhao
(hereafter “Zhao”), together “Applicants,” seek registration of the mark
“ACROBiosystems” in standard characters for “Biochemical reagents
commonly known as probes, for detecting and analyzing molecules in protein
or nucleotide arrays; Biochemical reagents used for non-medical purposes.”1
ACRO Biosystems (hereafter Opposer or “Acro Beijing”) opposes registration

1 Application Serial No. 85755104 filed October 16, 2012, under Section 1(a) of the
Trademark Act, claiming May 23, 2011, as their dates of first use anywhere and in
commerce.

United States Patent And Trademark Office
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
General Contact Number: 571-272-8500
THIS OPINION IS NOT A
PRECEDENT OF THE
TTAB
Opposition No. 91212675

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on the grounds of likelihood of confusion2 and fraud,3 alleging, inter alia, that
it is a corporation existing under the laws of the People’s Republic of China
and has been in operation since April, 2010; that although it has offices
located in foreign countries, including the United States, all of its marketing
and sales activities are directed by the Beijing office; that Opposer has sold
its products and services to customers in the United States since March,
2011; that to the extent Applicants have used the mark ACROBiosystems,
they used it as an agent or distributor of Opposer for selling its products; that
the reliance of the USPTO on Applicants’ misrepresentations would deprive
Opposer of the mark which it owns; that the goods recited in the opposed
application are identical and/or closely related to the goods and services that
Opposer provides in interstate commerce; and that Opposer will be damaged
by the registration of the applied-for mark because the mark is virtually
identical to Opposer’s mark. In their answer, Applicants have denied the
salient allegations in the notice of opposition.

2 Opposer asserts the claim of likelihood of confusion in the alternative and
hypothetically (notice of opp., ¶37).

3 Opposer also asserts the claims of deceptiveness and false suggestion of a
connection under Trademark Act Section 2(a) in the ESTTA cover sheet of the notice
of opposition; however, there are no allegations in the notice of opposition which
support the Section 2(a) claims and, indeed, these two grounds are not listed as
counts in the pleading. In view thereof, said claims are hereby stricken as
insufficiently pleaded and have been given no consideration. See Fed. R. Civ. P.
12(f).
Opposition No. 91212675

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This case now comes up for consideration of Opposer’s combined, fully
briefed motion (filed October 9, 2014) for summary judgment and for
discovery sanctions.
Preliminary Matter
Opposer identifies Count II of the notice of opposition as “Contractual
Promise Not to Use,” alleging that a contract between the parties “indicates
that all trademarks related to [Acro USA] in fact belong to Opposer,” ¶35,
and that “Applicants may not lawfully use the mark ACROBiosystems
because of a contractual promise … contained in the contract….” ¶34.
Additionally, Opposer alleges ownership of the ACROBiosystems mark, ¶32,
also incorporated by reference in paragraph 33. In view thereof, we construe
Count II of the notice of opposition to include a claim of lack of ownership of
the applied-for mark under Section 1(a) of the Trademark Act, 15 U.S.C.
§ 1051(a).
Motion for Summary Judgment
• Priority/Ownership
Opposer argues initially that summary judgment should be granted in its
favor because it has priority of use4 of the ACROBIOSYSTEMS mark and
because Applicants committed fraud upon the Patent and Trademark Office
in their application for registration. However, upon review of Opposer’s
arguments and evidence and Applicants’ response thereto, it is clear that the

4 This issue relates to the ground of likelihood of confusion.
Opposition No. 91212675

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real claim underlying Opposer’s motion is its ownership of the
ACROBIOSYSTEMS mark, as alleged in the notice of opposition, and that
Applicants have defended against this claim in opposing the motion (12
TTABVUE 4, 10). See Nahshin v. Product Source International LLC, 107
USPQ2d 1257, 1261 (TTAB 2013). Specifically, Opposer asserts, inter alia,
that Applicants’ business was a branch office of Opposer, which was created
on behalf of Opposer to receive payments from customers in the United
States (8 TTABVUE 5-6). In support of its motion, Opposer has submitted the
declarations of Yiding “Mike” Chen, Opposer’s Chief Executive Officer, and of
J. James Li, PhD., Opposer’s counsel, as well as exhibits attached to each
declaration.5
Summary judgment is an appropriate method of disposing of cases in
which there is no genuine dispute with respect to any material fact, thus
leaving the case to be resolved as a matter of law. See Fed. R. Civ. P. 56(c)(1).
A party moving for summary judgment has the burden of demonstrating the
absence of any genuine dispute as to a material fact, and that it is entitled to
judgment as a matter of law. See Celotex Corp. v. Catrett, 477 U.S. 317, 323
(1986); Sweats Fashions, Inc. v. Pannill Knitting Co. Inc., 833 F.2d 1560, 4
USPQ2d 1793, 1796 (Fed. Cir. 1987). A factual dispute is genuine if, on the
evidence of record, a reasonable fact finder could resolve the matter in favor

5 Opposer also submitted the declaration of Cheryl Chen, PhD., regarding the
accuracy of the translations.

Opposition No. 91212675

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of the non-moving party. See Opryland USA Inc. v. Great American Music
Show Inc., 970 F.2d 847, 23 USPQ2d 1471, 1472 (Fed. Cir. 1992); Olde Tyme
Foods, Inc. v. Roundy’s, Inc., 961 F.2d 200, 22 USPQ2d 1542, 1544 (Fed. Cir.
1992). Additionally, the evidence of record and all justifiable inferences that
may be drawn from the undisputed facts must be viewed in the light most
favorable to the non-moving party. See Lloyd’s Food Products Inc. v. Eli’s
Inc., 987 F.2d 766, 25 USPQ2d 2027 (Fed. Cir. 1993); Opryland USA, 23
USPQ2d at 1472.
Further, when a moving party’s motion for summary judgment is
supported by evidence sufficient to show that there is no genuine dispute as
to any material fact and the moving party is entitled to judgment, the burden
shifts to the nonmoving party to demonstrate the existence of a genuine
dispute regarding at least one material fact which requires resolution at trial.
The nonmoving party, however, may not rest on the mere allegations of its
pleadings and assertions, but must designate specific portions of the record or
produce additional evidence showing the existence of a genuine dispute as to
a material fact for trial. Consequently, factual assertions, without evidentiary
support, are insufficient to defend against a motion for summary judgment.
See Hornblower & Weeks Inc. v. Hornblower & Weeks Inc., 60 USPQ2d 1733,
1739 (TTAB 2001) (“applicant has produced no evidence, or raised any
expectation that at trial it could produce evidence.”); and S & L Acquisition
Co. v. Helene Arpels Inc., 9 USPQ2d 1221, 1225 n.9 (TTAB 1987).
Opposition No. 91212675

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• Standing
We must first consider the question of whether Opposer has
demonstrated its standing to bring the opposition, since standing is a
threshold issue that must be proven by a plaintiff in every inter partes case.
Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025-26 (Fed. Cir.
1999); Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185, 188 (CCPA 1982). The purpose of the standing requirement,
which is directed solely to the interest of the plaintiff, is to prevent litigation
when there is no real controversy between the parties. 213 USPQ at 189.
In the notice of opposition, Opposer alleges that it advertises and
promotes its products and services under the “ACRO Biosystems” “name”
throughout the United States and has sold its products and services to
customers in the United States since March 2011 (¶14). In support of that
allegation, Mr. Chen testifies, inter alia, that Acro Beijing “produc[es] the
products with the trademark ACROBiosystems, [and] … tak[es] orders from
customers worldwide including U.S. customers” (Chen dec. ¶2, 8 TTABVUE
18). Chen’s testimony and related exhibits are sufficient to show that
Opposer has a real interest in whether a registration issues to Applicants for
the ACROBIOSYSTEMS mark. See Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000). Further, Applicants have not
disputed Opposer’s standing, stating that “[t]here are no questions as to
standing … in this case” (response, 12 TTABVUE 11). Accordingly, we find
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that there is no genuine dispute that Opposer has standing to bring the
opposition.
• Ownership
As noted, Opposer submitted the declaration of Yiding “Mike” Chen (8
TTABVUE 17-25), along with various exhibits to demonstrate that there is no
genuine dispute that Opposer is the owner of the ACROBIOSYSTEMS mark;
that Applicant Acro USA is merely a division or “branch” of Opposer; and
that Applicant Zhao is an agent of Opposer. In particular, Chen has testified:
(i) Opposer was formed in July 2010, and took over all of the business
and intellectual property, including the ACROBIOSYSTEMS
trademark, of Ningbo ACROBiosystems Co. Ltd. (hereafter “Acro
Ningbo”), another company started by Mike Chen (¶¶4-5 and Exh.
A-1) (8 TTABVUE 27-28);
(ii) Acro USA is a branch office or division of Opposer. “We created Acro
USA as the U.S. presence of [Opposer] and as the distributor of
[Opposer’s] products in the U.S. Before the dispute erupted,
[Opposer] was in charge of Acro USA’s accounting, and was
responsible for all the product logistics[,] including producing the
products with the trademark ACROBiosystems … and shipping the
products” [and] “ACRO US was to receive payments from most but
not all U.S. customers and then forward the payments to ACRO
Beijing” (¶¶2, 11) (8 TTABVUE 18, 20).
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(iii) Opposer entered into its first service contract with a company based
in New York on April 22, 2011, for the production of “0.5mg purified
proteins expressed in HEK293” and for providing reports related
thereto (¶6 and Exh. B) (8 TTABVUE 31-42);
(iv) In April, 2011, after the execution of the above-referenced sales
contract, Chen contacted an individual named Kaifan Dai
(hereafter “Dai”)6 to promote Opposer’s sales in the United States
by establishing a U.S. division (¶7) (8 TTABVUE 19);
(v) Dai agreed to help Opposer incorporate and run the U.S. division
(¶8) (8 TTABVUE 19);
(vi) Chen was supposed to be the incorporator for the U.S. subsidiary
and, for that reason, Chen had sent Dai a photocopy of Chen’s
passport. However, Dai advised Chen that the U.S. subsidiary must
be registered under the name of a U.S. citizen, permanent resident,
or someone who has a U.S. work permit, and Dai suggested that his
wife, Xuelian Zhao (Applicant Zhao), who had a work permit,
register the company, but that it would still be a “fully owned”
subsidiary of Opposer (¶9) (8 TTABVUE 20);
(vii) On June 3, 2011, Opposer reimbursed Dai for his expenses for
registering the U.S. company through payment to Zhao via her
bank account in China (¶10, and Exh. C) (8 TTABVUE 44-47);

6 In Opposer’s materials, Kaifan Dai is also referred to as “Kevin.”
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(viii) In a shareholder’s cooperation agreement for Opposer signed by
Zhao on February 8, 2012, Zhao was designated as party or
shareholder “F” with responsibility “for operation of the U.S. branch
office (ACROBIOSTEMS [sic] USA LLC)” and Zhao agreed to
“complete all the legal formalities to ensure the full ownership by
the Company of the U.S. branch office” (¶¶12-13 and Exh. G-1
¶2.1.4 ) (8 TTABVUE 69);
(ix) In an email to Chen dated February 2, 2012, Dai stated that “the
U.S. branch will be the wholly owned subsidiary of the headquarter
[sic] office [and] … [t]he ‘Acrobiosystems’ trademark registered by
the U.S Branch office is the company’s strategic assets” (¶13 and
Exh. F-1) (8 TTABVUE 57);
(x) Dai sent an email to Mike Chen on October 29, 2012, stating that
“[a]ll of the U.S. branch company’s assets belong to the Beijing
company” ( ¶16 at Exh. H-1) (8 TTABVUE 92-93);
(xi) Opposer handles all of the research, development, manufacture,
sales and shipping regarding Opposer’s recombinant human DKK1
protein. Mr. Chen further testifies that “ACRO USA was to be a
conduit for payments from our U.S. customers,” that is, “[a]fter it
received the payments [from Acro Beijing’s] U.S. customers, Acro
USA then transferred the money back to ACRO Beijing, retaining
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about 10% of the money as its own operating costs” (¶17) (8
TTABVUE 22-23)];
(xii) In an email dated September 19, 2012,7 from Zhao to Mike Chen
and others, Zhao referred to Acro USA as “the branch” of Opposer
(¶22 and Exh. P-1) (8 TTABVUE 157-159);
(xiii) Dai sent an email to Mike Chen dated February 4, 2013, entitled
“US Branch Company report for discussion in the shareholder
meeting” containing information regarding “the US Branch
Company,” such as total revenue and the amount of revenue
transferred to Opposer (¶18 and Exh. J-1) (8 TTABVUE 101-104);
and
(xiv) Dai stated in an email dated April 14, 2013, to Opposer’s
shareholders that the “U.S. Branch Company’s accounting …
including the costs, has always been consolidated with and under
the unified controlled [sic] of the Beijing Company” ¶19 and Exh.
K-1) (8 TTABVUE 109-110).
In addition, an advertising invoice from a third party, which was submitted
by Applicants (Exh. D2) (11 TTABVUE 62), is addressed to “Acro Biosystems
Attn: Mike Chen,” the CEO of Opposer, at the Bethesda, Maryland address of
Applicants.

7 The English translation of the email incorrectly lists the year as “2014.” The
original email, although written in Chinese, clearly shows the date of the email to be
September 19, 2012.
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The foregoing evidence demonstrates that Applicant Acro USA was
created by Kaifan Dai and Xuelian Zhao to act as a mere representative on
behalf of Opposer Acro Biosystems, that Zhao’s function was to operate the
U.S. entity on behalf of Opposer, and that Acro USA and Xuelian Zhao were
Opposer’s representatives. The evidence further shows that all involved
persons (i.e., Chen, Dai, and Zhao) treated Acro USA as a mere
representative for Opposer, rather than treating Applicants as the owners of
the mark in the United States. See Nahshin, 107 USPQ2d at 1261. In view
thereof, Opposer has demonstrated that there is no genuine dispute that it is
the owner of the trademark ACROBIOSYSTEMS mark in the United States,
and that Applicants acted as Opposer’s distributor. Cf. Global Maschinen
GmbH v. Global Banking Systems, Inc., 227 USPQ 862, 866 (TTAB 1985) (“It
is settled law that between a foreign manufacturer and its exclusive United
States distributor, the foreign manufacturer is presumed to be the owner of
the mark unless an agreement between them provides otherwise.”) (internal
citations omitted).
We acknowledge Applicants’ assertions that several genuine disputes
exist as to material facts, but their response is unclear as to what material
facts are in dispute. Rather, Applicants intermingle arguments that they own
the ACROBIOSYSTEMS mark and that Acro USA, not Opposer, is the
headquarters for the biological protein products and services, that certain
Opposition No. 91212675

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conduct of or documents involving Opposer were invalid under Chinese law,
and that Applicants have priority of use in the ACROBIOSYSTEMS mark.
With respect to ownership, in response to Dai and Zhao’s emails
submitted by Opposer regarding the relationship between Opposer and
Applicants, Applicants assert that the statements that they made in their
emails “regarding the business relationship of subsidiary and parent
companies … [were] opinions … [and] a discussion or personal viewpoint” (12
TTABVUE 16). Additionally, Applicants claim that the cooperation
agreement between Opposer’s shareholders, which set forth the duties of
Applicant Zhao in connection with the “U.S. branch office,” (8 TTABVUE 69)
was invalid under Chinese law. In support of these assertions, Applicants
submitted various documents, including the following (some of which are in
Chinese), along with Zhao’s declaration (12 TTABVUE 19):8
• a document in Chinese, which contains translations by Zhao, stating
that Opposer’s name in Chinese changed from “Beijing Bai-Pu-Sai-Si
Biotechnology Consulting Co., Ltd” to “Beijing Bai-Pu-Sai-Si Biological
Technology Co., Ltd.” and that Applicant Zhao became a shareholder of
Opposer on February 10, 2012 (12 TTABVUE 27);
• printouts with a hand-notated URL, “www.acrobiosystems.com,” one of
which shows a copyright claim by Acro USA for the website page and

8 Zhao’s declaration states that “under penalty of perjury under the laws of the
United States that the translations of those documents in related exhibits are true
and correct to the best of my knowledge” (12 TTABVUE 19).
Opposition No. 91212675

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the other which states that the “US Headquarter [sic] Office for
American and Global Business” is located in Bethesda, Maryland (11
TTABVUE 72-73), and
• advertising brochures (product catalogs) listing the Bethesda,
Maryland office of Acro USA as the “business headquarter,” that
ACROBiosystems is located in China, that ACROBiosystems USA is
located in Bethesda, Maryland, and that ACROBiosystems UK is
located in London, United Kingdom (11 TTABVUE 78-81).
Based on our review of the parties’ evidence and resolving all doubts as to
whether any particular factual issues are genuinely in dispute in the light
most favorable to Applicants, the non-moving parties, we conclude that
Applicants have not demonstrated that there is a genuine dispute as to
Opposer’s ownership of the ACROBIOSYSTEMS mark.9 Specifically, none of
the documents provided by Applicants contradicts Opposer’s evidence which
clearly shows that all individuals involved considered Acro USA to be
Opposer’s representative. Applicants’ own statements in various emails

9 We note that Applicants assert various arguments regarding priority, including,
inter alia, that under Chinese law, Opposer was not legally able to conduct export
trade-related business in or from China until April 25, 2012. Applicants also
submitted various documents, including bank statements and advertisement
invoices, to demonstrate that Applicants did business in the United States before
Opposer. However, the issue before us is not whether Opposer established rights in
the mark in the United States prior to when Applicants began using the mark.
Rather, the issue is, in view of the relationship between the parties, whether
Opposer is the owner of the mark and Applicants are the distributor, as a result of
which Applicants’ activities would inure to the benefit of Opposer.

Opposition No. 91212675

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corroborate Chen’s testimony and clearly demonstrate (i) that Dai and Zhao
acted on behalf of Opposer in creating Acro USA and carrying out the
business, and (ii) that the ACROBIOSYSTEMS mark belongs to Opposer.
Applicants’ attempt to retract the previous statements of Dai and Zhao by
stating that they were “opinion” does not raise a genuine dispute as to
whether Applicants acted on behalf of Opposer. Moreover, Applicants’ mere
assertions regarding the propriety of the agreement between Acro Ningbo
and Acro Beijing and Opposer’s corporate structure, without evidentiary
support, are insufficient to defend against a motion for summary judgment.
See Hornblower, 60 USPQ2d at 1739. Further, Applicants’ allegations
concerning Opposer’s right to sell its goods outside of China are not relevant
to the issue of ownership of the mark in the United States. Cf. WMA Group
Inc. v. Western Int’l Media Corp., 29 USPQ2d 1478, 1479 (TTAB 1993);
Western Worldwide Enterprises Group Inc. v. Qinqdao Brewery, 17 USPQ2d
1137, 1141 (TTAB 1990); Satinine Societa v. P.A.B. Produits, 209 USPQ 958
(TTAB 1981).
In view of the foregoing, we find that there is no genuine dispute that
Opposer, and not Applicants, owned the mark ACROBIOSYSTEMS at the
time the application was filed, and that Applicants were acting merely as
Opposer’s representatives in the United States. Accordingly, we find that
Opposer is entitled to judgment as a matter of law on the ground that
Opposition No. 91212675

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Applicants are not the owners of the applied-for mark.10 Opposer’s motion for
summary judgment on this ground is granted, and judgment is hereby
entered against Applicants.11
☼☼☼

10 In view thereof, Opposer’s claims of fraud and likelihood of confusion are moot.
Likewise, Opposer’s motion for discovery sanctions is moot.

11 Inasmuch as the subject trademark application is void ab initio, it cannot be
transferred to Opposer, as suggested in its motion. See Huang v. Tzu Wei Chen Food,
849 F.2d 1458, 7 USPQ2d 1335, 1336 (Fed. Cir. 1988) (application filed in the name
of an individual affiliated with a corporation and not in the name of the corporation,
which was at the time the application was filed the owner of the mark, is void).