Benko Dental Supply Co.v.Colur World, LLC

Trademark Trial and Appeal Board

Jun 8, 2018

No. 92065633 (T.T.A.B. Jun. 8, 2018)

Mailed: June 8, 2018

Cancellation No. 92065633
Benko Dental Supply Co.
v.
Colur World, LLC

Before Lykos, Greenbaum and Lynch,
Administrative Trademark Judges.

Opinion by Lynch, Administrative Trademark Judge:

I. Background

Benko Dental Supply Co. (“Petitioner”) seeks to cancel a registration on the
Supplemental Register owned by Colur World, LLC (“Respondent”) for the mark
shown below for “gloves for medical and dental use, made of nitrile” in International
Class 10.1

1 Registration No. 3172669 issued November 14, 2006, and has a filing date of May 4, 2005;
renewed.

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 ORDER IS NOT A
PRECEDENT OF THE TTAB
Cancellation No. 92065633

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The description of the mark is as follows: “The mark consists of the color pink as
applied to the entire surface of the goods, namely, gloves for medical and dental use,
made of nitrile. The dotted outline of the goods is intended to show the position of the
mark and is not a part of the mark.”
The Petition for Cancellation includes two counts. Count I, Petitioner’s fraud
claim, alleges that Respondent knowingly made two false statements, discussed more
fully below, with the intent to deceive the USPTO. Petitioner’s Count II of the
petition, identified as a functionality claim on the ESTTA coversheet but titled
“Failure to Function as a Trademark” in the complaint, includes the following
allegations:2
22. The [challenged] Registration is incapable of distinguishing
Registrant’s goods from the goods of others and therefore cannot
function as a trademark or indicator of source.

23. The color pink is widely used as an ornamental feature of medical
and dental clothing, jackets, scrubs, shoes and gloves.

24. The color pink is a common color that coordinates well with
clothing often worn by doctors, dentists, nurses and medical and
dental assistants and is therefore ornamental and aesthetically
functional.

25. The color pink is a common color enjoyed by many doctors,
dentists, nurses and medical and dental assistants as a personal
preference and therefore fails to indicate the source or origin of a
product or service.

26. The two specimens filed in connection with [the underlying
application] show[] the Color Pink used solely in a decorative and
ornamental fashion – applied uniformly to the entire surface of a
nitrile medical or dental glove. These examples do not show the Color
Pink functioning as a source-distinguishing trademark.

2 1 TTABVUE 5-6 (Petition for Cancellation).
Cancellation No. 92065633

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Respondent moves for summary judgment on both claims. Respondent includes
no evidence with its motion for summary judgment, instead asserting that Petitioner
cannot support the allegations in its petition for cancellation. Petitioner contests the
motion, and submits the following evidence:
• The declaration and supplemental declaration of its Senior Retail Product
Manager, Mandy Hull, with exhibits.

• The affidavit of Daniel E. Kattman, Petitioner’s attorney, with exhibits.3

Summary judgment may be used to dispose of cases in which there are no genuine
disputes as to material facts, thus leaving the case to be resolved as a matter of law.
See Fed. R. Civ. P. 56(c); Odom’s Tenn. Pride Sausage, Inc. v. FF Acquisition, L.L.C.,
600 F.3d 1343, 93 USPQ2d 2030, 2031 (Fed. Cir. 2010); Lincoln Logs Ltd. v. Lincoln
Pre-Cut Log Homes, Inc., 971 F.2d 732, 23 USPQ2d 1701, 1703 (Fed. Cir. 1992). A
party moving for summary judgment bears the burden of demonstrating the absence
of any genuine dispute of material fact, and that it is entitled to summary judgment
as a matter of law. See Celotex Corp. v. Catrett, 477 U.S. 317 (1986). The Board may
not resolve disputes as to material facts on summary judgment, and instead may only
ascertain whether genuine disputes exist. The evidence must be viewed in the light
most favorable to the non-movant, and we draw all justifiable inferences in the non-

3 10 TTABVUE 21-163. The parties are reminded that “[e]vidence submitted in connection
with a motion for summary judgment is ordinarily of record only for purposes of that motion.
If the case goes to trial, the summary judgment evidence may not form part of the evidentiary
record to be considered at final hearing unless it is properly introduced in evidence during
the appropriate testimony period.” Trademark Trial and Appeal Board Manual of Procedure
(“TBMP”) § 528.05(a) (June 2017). The parties, however, are free to stipulate to entry of some
or all of the evidence proffered as evidence to be considered at trial. Id.
Cancellation No. 92065633

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movant’s favor. Lloyd’s Food Products Inc. v. Eli’s Inc., 987 F.2d 766, 25 USPQ2d
2027, 2029 (Fed. Cir. 1993).
When a moving party supports its motion for summary judgment with sufficient
evidence to show that no genuine dispute exists as to any material fact and the
moving party is entitled to judgment, the burden shifts to the nonmoving party to
show a genuine dispute as to some material fact that necessitates resolution at trial.
The nonmoving party, in turn, may not rest on the mere allegations of its pleadings,
but must point to evidence showing the existence of a genuine dispute as to a material
fact for trial. Embarcadero Tech., Inc. v. Delphix Corp., 117 USPQ2d 1518, 1521
(TTAB 2016) (citing Barmag Barmer Maschinenfabrik AG v. Murata Machinery, Ltd.,
731 F.3d 831, 221 USPQ 561, 564 (Fed. Cir. 1984) (“The party opposing the motion
must point to an evidentiary conflict created on the record at least by a counter
statement of a fact or facts set forth in detail in an affidavit by a knowledgeable
affiant.”)). Where, as here, Petitioner as the nonmoving party will bear the burden of
proof at trial on the claims, Respondent, as the moving party, may discharge its
burden on summary judgment by showing a lack of evidence to support Petitioner’s
case. Celotex Corp., 477 U.S. at 324-25; Copelands’ Enters. Inc. v. CNV Inc., 945 F.2d
1563, 20 USPQ2d 1295, 1298 (Fed. Cir. 1991).
II. Fraud

Respondent moves for summary judgment on Petitioner’s fraud claim on the
ground that this claim fails as a matter of law. Fraud in procuring a trademark
registration occurs when an applicant, with the intent to deceive the USPTO,
Cancellation No. 92065633

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knowingly makes false material representations of fact in connection with its
application. In re Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938, 1941 (Fed. Cir. 2009).
The standard for finding intent to deceive is stricter than the standard for negligence
or gross negligence, and evidence of deceptive intent must be clear and convincing.
Id.
The petition alleges that Respondent knowingly made two false statements with
the intent to deceive the USPTO. First, the petition alleges that Respondent
knowingly falsely stated that “[t]he mark has become distinctive of the goods/services
through the applicant’s substantially exclusive and continuous use in commerce that
the U.S. Congress may lawfully regulate for at least the five years immediately before
the date of this statement.”4 Second, according to the petition, Respondent knowingly
falsely declared in support of its application (filed May 4, 2005):
The undersigned [b]elieves applicant to be entitled to use such
mark in commerce; to the best of his/her knowledge and belief no
other person, firm, corporation, or association has the right to use
the mark in commerce, either in the identical form thereof or in
such near resemblance thereto as to be likely, when used on or in
connection with the goods/services of such other person, to cause
confusion, or to cause mistake, or to deceive; and that all
statements made of his/her own knowledge are true and that all
statements made on information and belief are believed to be
true.5
Turning to the first allegation, Respondent correctly points out that it simply did
not make the statement alleged by Petitioner. Respondent’s claim of acquired
distinctiveness was not based on five years of use, and the statement does not appear

4 1 TTABVUE 4 (Petition for Cancellation).
5 Id.
Cancellation No. 92065633

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elsewhere in the prosecution history of the challenged registration. Respondent made
a claim of acquired distinctiveness in its June 8, 2006 Response to Office Action based
on a variety of evidence. However, it did not allege five years of use as part of its claim
of acquired distinctiveness, as Respondent’s claimed date of first use anywhere and
in commerce was April 26, 2005. Thus, we agree that because the alleged statement
is not found in the prosecution history, it cannot form the basis of a fraud claim.6
As to the second allegation regarding the statements from the application
declaration, Respondent asserts that there is no support for the alleged inaccuracy of
the statements. The Board previously has held that “. . . the allegations of ownership
and exclusive use contained in the declaration or verification accompanying an
application are made upon ‘belief’ and/or ‘information and belief’ and, as such, are
couched in such a manner as to preclude a definitive statement by the affiant that
could be ordinarily used to support a charge of fraud.” Kemin Ind., Inc. v. Watkins
Prod., Inc., 192 USPQ 327, 329 (TTAB 1976). Furthermore, even assuming for
purposes of summary judgment that the declaration statements were false,
Respondent contends that they were not material representations, and Petitioner has
no support for the alleged requisite intent to deceive the USPTO. Thus, according to
Respondent, even accepting as true Petitioner’s allegation that others provided pink
gloves at the time of the declaration, there is no evidence such an inaccuracy in the
declaration was material, or that it resulted from an intent to deceive the USPTO.

6 In opposing the summary judgment motion, Petitioner did not rely on this statement to
argue its fraud claim.
Cancellation No. 92065633

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Apart from the file history of the challenged registration,7 the fraud-related
evidence in Petitioner’s opposition to the motion comes from the declaration of its
Senior Retail Product Manager, Mandy Hull.8 She states that “[a] number of
manufacturers sell pink disposable gloves,” and then names two manufacturers who
she claims have sold pink disposable gloves for two years, and one who has done so
for eight years.9 Ms. Hull further states:
• Petitioner “has sold pink disposable gloves for about twelve years, and
began selling pink gloves at least as early as January, 2006”; and

• “[M]ultiple companies have offered pink disposable gloves since at least as
early as 2009”.10

Notably, Petitioner offers no evidence that, at the time of the 2005 filing date of
Respondent’s underlying application when it made the declaration statements,
Petitioner or any third-party was offering pink disposable gloves. Respondent has
shown “that there is an absence of evidence to support the nonmoving party’s case.”
Embarcadero Tech., 117 USPQ2d at 1521. With no evidence suggesting that the
declaration statements were false at the time they were made, there is no genuine
dispute of material fact for trial. See Intellimedia Sports, 43 USPQ2d 1203, 1206-07
(TTAB 1997) (necessary showing for fraudulent application declaration includes that
there was another use of the same or a confusingly similar mark at the time the oath
was signed). Thus, nothing in the record raises a genuine dispute of material fact as

7 See Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b) (evidentiary record includes the file of
the challenged registration).
8 10 TTABVUE.
9 10 TTABVUE 22.
10 Id.
Cancellation No. 92065633

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to the accuracy of the declaration statements about rights in the mark, on which
Petitioner relies as a basis for its fraud claim.
In briefing the summary judgment motion, perhaps recognizing that its evidence
regarding other uses of pink gloves post-date the application declaration, Petitioner
attempts to rely on two other unpleaded statements Respondent made later in a June
8, 2006 Response to Office Action.11 In its reply brief, Respondent objected to the
reliance on unpleaded arguments.12 It is well settled that summary judgment cannot
be granted on an unpleaded ground or allegation Fed. R. Civ. P. 56(a); Asian and
Western Classics B.V. v. Lynne Selkow, 92 USPQ2d 1478, 1480 (TTAB 2009)
(petitioner cannot obtain summary judgment on an insufficiently pleaded fraud
claim); Perma Ceram Ent. Inc. v. Preco Ind. Ltd., 23 USPQ2d 1134, 1135 n.2 (TTAB
1992) (no consideration of unpleaded grounds asserted by opposer in response to
applicant’s motion for summary judgment). See also TBMP § 528.07(a). A party
cannot, on summary judgment, significantly change the underlying factual
allegations of a fraud claim, which require pleading with particularity. See Media
Online Inc. v. El Clasificado Inc., 88 USPQ2d 1285, 1286 (TTAB 2008) (false
statements that purportedly induced the USPTO to allow registration must be
pleaded with particularity). We therefore decline to consider these unpleaded fraud
grounds.13

11 10 TTABVUE 4-5 (Petitioner’s Brief).
12 11 TTABVUE 4-5 (Respondent’s Reply Brief).
13 Although the Board often is liberal in allowing repleading, we see no reason to invite an
amended fraud pleading here. The new allegations involve statements in the prosecution
history that were fully available to Petitioner at the time it filed the petition to cancel. See
Media Online, 88 USPQ2d at 1286 (denying motion to amend where petitioner unduly
Cancellation No. 92065633

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In addition to the absence of evidence of the falsity of the pleaded declaration
statements, there is a similar lack of evidence to raise a genuine dispute as to intent
by Respondent to deceive the USPTO. An applicant’s failure to disclose to the USPTO
the asserted rights of another entity is not fraudulent unless the applicant or
registrant knew the other entity possessed a superior or clearly established right to
use substantially the same mark for substantially identical goods. See Intellimedia
Sports, 43 USPQ2d at 1206. Petitioner offered no evidence that Respondent even was
aware of any third-party uses of pink medical or dental gloves at the time of the
declaration. Even if there were such uses, their mere existence would not suffice. In
Bose, 91 USPQ2d at 1942, the Court held that “[t]here is no fraud if a false
misrepresentation is occasioned by an honest misunderstanding or inadvertence
without a willful intent to deceive.” Therefore, while the Board must view
Respondent’s motion for summary judgment on Petitioner’s pleaded claim of fraud in
a light most favorable to Petitioner as the non-moving party, Petitioner must
nonetheless set forth specific facts supported by declarations or other evidence,
justifying an inference of Respondent’s fraudulent intent, to show that there are
genuine disputed facts remaining for trial. See Fed. R. Civ. P. 56(e). See also
Copelands’ Enters. Inc., 20 USPQ2d at 1298, and Octocom Sys. Inc. v. Houston
Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1786 (Fed. Cir. 1990).
“[A]bsent the requisite intent to mislead the PTO, even a material misrepresentation
would not qualify as fraud under the Lanham Act warranting cancellation.” Bose, 91

delayed in adding claims based on facts within petitioner’s knowledge at the time the petition
to cancel was filed).
Cancellation No. 92065633

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USPQ2d at 1940. Petitioner came forward with no specific facts or evidence to raise
a genuine dispute of material fact regarding Respondent’s intent to deceive the
USPTO when it submitted the application declaration. See M.C.I. Foods Inc. v. Bunte,
96 USPQ2d 1544, 1549 (TTAB 2010) (“we will not draw an inference that MCI acted
with the intent to deceive the Trademark Office without some factual basis for
drawing such an inference”); see also Omega SA v. Alpha Phi Omega, 118 USPQ2d
1289, 1299 (TTAB 2016) (“Opposer was afforded the opportunity to conduct discovery
relating to Applicant’s subject motion, yet it proffers no evidence whatsoever in
response to Applicant’s motion for summary judgment that raises any genuine
dispute of material fact as to the issue of intent.”). Thus, nothing in the record raises
a genuine dispute of material fact as to an intent by Respondent to deceive the
USPTO.
No genuine disputes of fact exist as to the falsity of the pleaded statements by
Respondent, or as to any intent by Respondent to deceive the USPTO when making
such statements. Absent supporting evidence for these necessary elements of
Petitioner’s fraud claim, the fraud claim fails as a matter of law.

Cancellation No. 92065633

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III. Functionality14

Respondent also moves for summary judgment on Petitioner’s functionality claim,
contending that it fails as a matter of law. “[I]n general terms,… a product feature is
functional, ‘and cannot serve as a trademark, if it is essential to the use or purpose of
the article or if it affects the cost or quality of the article.’” Qualitex Co. v. Jacobsen
Products Co., 514 U.S. 159, 34 USPQ2d 1161, 1164 (1995) (quoting Inwood Labs., Inc.
v. Ives Labs., Inc., 456 U.S. 844, 850, n. 10 (1982). Functionality may be found where
the “exclusive use of [the proposed mark] would put competitors at a significant non-
reputation-related disadvantage.” Qualitex, 34 USPQ2d at 1164. Qualitex involved a
trademark for the color green-gold for dry cleaning press pads, and the Supreme
Court stated that “[t]he functionality doctrine thus protects competitors against a
disadvantage (unrelated to recognition or reputation) that trademark protection
might otherwise impose, namely their inability reasonably to replicate important
non-reputation-related product features.” Id. at 1165.

14 Petitioner’s petition to cancel and the briefing by both parties on summary judgment mixes
the discussion of functionality with “failure to function.” The petition refers to aesthetic
functionality, and most of both parties’ briefing regarding Count II relates to functionality.
However, there remains some ambiguity as to whether Petitioner intends to pursue a failure
to function claim for cancellation separate from the functionality claim. See 10 TTABVUE
15-18 (Petitioner’s Brief, stating “Registrant’s claim that the Color Pink is capable of
funcitoning [sic] as a trademark is no stronger than the day the Color Pink Registraiton [sic]
issued…. Registrant is now just one of many companies offering pink colored disposable
gloves.”); see also 11 TTABVUE 9 (Respondent’s Reply Brief, stating “…the color pink is
capable of being distinctive and serving as a source indictor….”). To the extent Respondent’s
summary judgment motion encompasses such a claim against this Supplemental Register
registration, based on the record including the third-party use evidence discussed herein,
genuine disputes of material fact would preclude summary judgment as to the capability of
the mark to function as a source indicator. We add that, as noted in footnote 13 above,
amended pleadings may not be permitted when new allegations are based on information
available at the time the petition was filed. See Media Online, 88 USPQ2d at 1286. See also
Fed. R. Civ. P. 15(a).
Cancellation No. 92065633

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In connection with its functionality claim, Petitioner argues and provides
supporting evidence that the medical and dental industries use color-coding in gloves
to designate them for different purposes such as medical examinations versus
chemotherapy,15 to avoid cross-contamination in laboratory work,16 to differentiate
among glove sizes,17 and to distinguish between gloves made with and without
latex,18 to which some patients may be allergic. Petitioner also offers evidence of a
practice in the health care industry of “double-gloving” in contrasting glove colors to
help spot rips or tears in the gloves.19 In addition, Petitioner points to the Board’s
precedent in In re Ferris Corp., 59 USPQ2d 1587 (TTAB 2000) and argues that pink
may be functional for medical supplies because it matches certain skin tones.
Petitioner therefore contends, without supporting evidence, that this color in gloves
provides “a more ‘natural’ look to ease nervous patients.”20
Petitioner also submits evidence showing that pink gloves are promoted and used
in the industry to raise awareness about breast cancer and show support for research
to combat it. The evidence includes numerous medical and dental glove providers
promoting pink gloves for this purpose.21 Petitioner notes that one of Respondent’s

15 10 TTABVUE 38-40 (glovenation.com), 43 (pidegreegroup.com).
16 10 TTABVUE 47(hourglass-intl.com).
17 10 TTABVUE 52-53 (esafetysupplies.com).
18 10 TTABVUE 46-49 (hourglass-intl.com).
19 10 TTABVUE 48 (hourglass-intl.com).
20 10 TTABVUE 11-12 (Petitioner’s Brief).
21 E.g., 10 TTABVUE 89-90 (medline.com, including the statement ”Support breast cancer
awareness – wear pink exam gloves”), 110 (medline.com, including the statement “Your
overwhelming response to our signature pink gloves helps make our commitment to breast
cancer awareness possible”), 112 (mdsassociates.com, including the statement “Pink Color is
Fun, Colorful & Perfect for Cancer Awareness”); 115 (buyemp.com, promoting pink nitrile
medical exam gloves and noting that a portion of the proceeds from glove purchases would go
to promote breast cancer research and awareness”); 117 (dashmedical.com, promoting pink
Cancellation No. 92065633

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licensees of the mark promotes its pink gloves with a breast cancer awareness
ribbon.22 In addition, Petitioner points to evidence that the color pink, in general, is
associated with “sensitivity, sweetness, childhood, and softness,” such that a
healthcare provider may want to wear pink gloves “to convey sensitivity and reassure
nervous patients.”23
After a careful review of the parties’ arguments and submissions, we find that
genuine disputes of material fact precluding entry of summary judgment in
Respondent’s favor on Petitioner’s functionality claim. The evidence submitted by
Petitioner raises genuine disputes of material fact relating to whether the mark is
functional. For example, given the evidence regarding the use and purposes of colored
gloves in the industry, disputes of material fact exist as to whether the mark consists
of a feature that is essential to the use or purpose of the goods. Additionally, given
the evidence regarding third-party use and promotion of pink gloves for purposes
such as breast cancer awareness, a genuine dispute of material fact exists as to the
need of competitors to use the color pink for their medical and dental gloves and
whether the challenged mark imposes on competitors a significant non-reputation-
related disadvantage. These issues should be resolved only after affording the parties
an opportunity to submit their proofs through trial. See L.D. Kichler Co. v. Davoil,

nitrile exam gloves that include a pink breast cancer ribbon on the packaging and the
statement that a donation to the American Cancer Society would be made for each case sold);
22 10 TTABVUE 123-24 (exmed.net, offering Ansell Micro-Touch pink nitrile exam gloves
with a portion of sale proceeds going to the Susan G. Komen for the Cure organization to
further breast cancer research and awareness).
23 10 TTABVUE 13 (Petitioner’s Brief); 10 TTABVUE 56-77 (Wikipedia.org).

Cancellation No. 92065633

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Inc., 192 F.3d 1349, 52 USPQ2d 1307, 1310 (Fed. Cir. 1999) (reversing a district
court’s summary judgment on functionality because a genuine issue of material fact
as to whether there was a competitive need for others to use the feature at issue).
Conclusion
In conclusion, we find that no genuine disputes of material fact exist as to the
fraud claim, and Respondent is entitled to summary judgment dismissing that claim.
However, Respondent has not established its entitlement to summary judgment on
the functionality claim. Accordingly, Respondent’s motion for summary judgment is
granted as to Count I of the petition and denied as to Count II of the petition. The
fact that we have identified only a few genuine disputes of material fact as sufficient
bases for denying in part the motion for summary judgment should not be construed
as a finding that these are necessarily the only issues that remain for trial.
Proceedings now resume, and dates are reset as follows:
Discovery Closes 7/9/2018
Plaintiff's Pretrial Disclosures Due 8/23/2018
Plaintiff's 30-day Trial Period Ends 10/7/2018
Defendant's Pretrial Disclosures Due 10/22/2018
Defendant's 30-day Trial Period Ends 12/6/2018
Plaintiff's Rebuttal Disclosures Due 12/21/2018
Plaintiff's 15-day Rebuttal Period Ends 1/20/2019
Plaintiff's Opening Brief Due 3/21/2019
Defendant's Brief Due 4/20/2019
Plaintiff's Reply Brief Due 5/5/2019
Request for Oral Hearing (optional) Due 5/15/2019

Cancellation No. 92065633

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Generally, the Federal Rules of Evidence apply to Board trials. Trial testimony is
taken and introduced out of the presence of the Board during the assigned testimony
periods. The parties may stipulate to a wide variety of matters, and many
requirements relevant to the trial phase of Board proceedings are set forth in
Trademark Rules 2.121 through 2.125, 37 C.F.R. §§ 2.121-2.125. These include
pretrial disclosures, the manner and timing of taking testimony, matters in evidence,
and the procedures for submitting and serving testimony and other evidence,
including affidavits, declarations, deposition transcripts and stipulated evidence.
Trial briefs shall be submitted in accordance with Trademark Rules 2.128(a) and (b),
37 C.F.R. §§ 2.128(a) & (b). Oral argument at final hearing will be scheduled only
upon the timely submission of a separate notice as allowed by Trademark Rule
2.129(a), 37 C.F.R. § 2.129(a).