Equibal, Inc.v.Clientele, Inc.

Trademark Trial and Appeal Board

Apr 6, 2018

No. 92064326 (T.T.A.B. Apr. 6, 2018)

BUO Mailed: April 6, 2018 Cancellation No. 92064326 Equibal, Inc. v. Clientele, Inc. Before Bergsman, Lykos, and Larkin, Administrative Trademark Judges. By the Board: Now before the Board is a motion for partial summary judgment filed by Equibal, Inc. (“Petitioner”) on its descriptiveness claim asserted against Registration No. 4715718 (“the ’718 registration”) owned by Clientele, Inc. (“Respondent”). 15 TTABVUE. Petitioner’s motion has been fully briefed. Subsequently, Respondent filed a motion to strike certain exhibits submitted in connection with Petitioner’s reply brief. 29 TTABVUE. Respondent’s motion to strike has also been fully briefed. I. Background Petitioner seeks to cancel Respondent’s registration of the mark BLEMISH FREE, in standard characters, for “[s]kin creams,” on the Principal Register in International 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. 92064326 - 2 - Class 3.1 On March 23, 2017, Petitioner filed an amended petition to cancel, adding to its existing claim of likelihood of confusion under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), a claim that the subject mark is merely descriptive of the identified goods, under Section 2(e)(1), 15 U.S.C. § 1052(e)(1).2 9 TTABVUE. By way of its amended petition, Petitioner alleges, inter alia, that “BLEMISH FREE is a merely descriptive mark immediately conveying that the good[’]s, i.e., skin creams, characteristic, function, feature, or purpose is to make your skin blemish free.” 9 TTABVUE 7, ¶ 21. Petitioner further alleges that it “is a competitor of [Respondent] with an equal right to use the term blemish free descriptively in its business.” Id. at 7, ¶ 23. 1 The registration issued April 7, 2015, from an application filed August 20, 2014. The registration includes a disclaimer of the word BLEMISH apart from the mark as shown. 2 Petitioner attached the file record of the ’718 registration to its pleading. However, the file of a registration that is the subject of a Board inter partes proceeding forms part of the record of the proceeding without any action by the parties, and reference may be made to the file by any party for any relevant and competent purpose. See Trademark Rule 2.122(b)(1); Productos Lacteos Tocumbo S.A. de C.V. v. Paleteria La Michoacana Inc., 98 USPQ2d 1921, 1923 (TTAB 2011) (record includes pleadings and registration file for respondent’s mark), aff’d, 188 F.Supp. 3d 222 (D.D.C. 2016). Consequently, the Board discourages filing a copy of the subject registration’s file history. See Hiraga v. Arena, 90 USPQ2d 1102, 1105 (TTAB 2009) (respondent’s registration file is automatically part of the record of the proceeding and need not be introduced under a notice of reliance). Petitioner attached additional evidence to its pleading; however, with two exceptions not applicable here, exhibits attached to a pleading are not evidence on behalf of the party to whose pleading the exhibits are attached unless identified and introduced in evidence as an exhibit during the period for the taking of testimony. Trademark Rule 2.122(c). However, inasmuch as the material submitted with the petition to cancel was also submitted in connection with the present motion, it has been considered for purposes of determining this motion only, as explained further below. Cancellation No. 92064326 - 3 - Respondent’s amended answer denies all of the salient allegations of the petition to cancel. 13 TTABVUE. Respondent also advanced eight “affirmative defenses.” Id. at 5-6, ¶¶ 29-36. II. Motion to Strike Respondent’s motion to strike is DENIED. Contrary to Respondent’s assertions, the arguments and corresponding exhibits attached to Petitioner’s reply brief are in response to arguments raised by Respondent in its brief in opposition to the motion for summary judgment, and do not raise entirely new arguments. III. Motion for Summary Judgment Summary judgment is an appropriate method of disposing of cases in which there are no genuine disputes as to material facts, thus allowing resolution as a matter of law. See Fed. R. Civ. P. 56(c). In deciding motions for summary judgment, the Board must follow the well-established principles that, in considering the propriety of summary judgment, all evidence must be viewed in the light most favorable to the non-movant, and all justifiable inferences are to be drawn in the non-movant’s favor. The Board may not resolve disputes of material fact; it may only ascertain whether such disputes exist. See Lloyd’s Food Prods. Inc. v. Eli’s Inc., 987 F.2d 766, 25 USPQ2d 2027 (Fed. Cir. 1993); Opryland USA Inc. v. Great Am. Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992); Olde Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir. 1992). The burden is on the party moving for summary judgment to demonstrate the absence of any genuine dispute of material fact, and that it is entitled to summary Cancellation No. 92064326 - 4 - judgment as a matter of law. Fed. R. Civ. P. 56(c). When a moving party’s motion for summary judgment is supported by evidence sufficient to indicate that there is no genuine dispute as to any material fact and that the moving party is entitled to judgment, the burden shifts to the non-moving party to demonstrate the existence of at least one genuine dispute as to a material fact that requires resolution at trial. The non-moving party 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….”). A. Standing Standing is a threshold issue that must be proven by every plaintiff. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014), cert. denied, 135 S. Ct. 1401 (2015). Our primary reviewing court, the U.S. Court of Appeals for the Federal Circuit, has enunciated a liberal threshold for determining standing, namely that a plaintiff must demonstrate that it possesses a “real interest” in a proceeding beyond that of a mere intermeddler, and “a reasonable basis for his belief of damage.” Empresa Cubana Del Tabaco, 111 USPQ2d at 1062 (citing Ritchie v. Simpson, 170 F.3d 1902, 50 USPQ2d 1023, 1025-26 (Fed. Cir. 1999)). Cancellation No. 92064326 - 5 - A “real interest” is a “direct and personal stake” in the outcome of the proceeding. Ritchie, 50 USPQ2d at 1026. Petitioner submitted as evidence a copy of the Office Action issued against its application Serial No. 86833148 for the mark BLEMFREE, citing a likelihood of confusion with the subject mark in the ’718 registration. 16 TTABVUE 3. In a Board inter partes proceeding, a plaintiff may establish standing by showing that it has been refused registration of its mark because of defendant’s registration. See Empresa Cubana del Tabaco, 111 USPQ2d at 1062 (plaintiff’s application refused based on defendant’s registrations); Giersch v. Scripps Networks, 90 USPQ2d 1020, 1022 (TTAB 2009) (pending application must be properly introduced, and the fact that it was refused pending outcome of proceeding must be documented, before Board will rely upon application in determining plaintiff’s standing). Accordingly, there is no genuine dispute of material fact that Petitioner has standing to bring this case. Because Petitioner has established its standing with respect to its likelihood of confusion claim, it has the right to assert any appropriate grounds for cancellation in this proceeding, including descriptiveness. See Enbridge, Inc. v. Excelerate Energy Ltd. P’ship, 92 USPQ2d 1537, 1543 n.10 (TTAB 2009) (citing Liberty Trouser Co. v. Liberty & Co., Ltd., 222 USPQ 357, 358 (TTAB 1983) (averments of priority, likelihood of confusion and resulting damage accepted to show petitioner’s standing with respect to pleaded grounds of fraud and abandonment)). Cancellation No. 92064326 - 6 - B. Descriptiveness We now turn to Petitioner’s argument that the mark is merely descriptive under Trademark Act Section 2(e)(1). In support thereof, Petitioner contends that the mark BLEMISH FREE “immediately conveys knowledge of a significant quality, function, feature or purpose of the skin cream, i.e., to provide or create a blemish free skin.” 15 TTABVUE 6. The Board has considered the evidence submitted by Petitioner in support of its motion, including website printouts showing third-party use of the term “blemish free,” copies of third-party registrations wherein the term BLEMISH has been disclaimed, and the record of Respondent’s prior registration for the mark BLEMISH FREE - Registration No. 2702370, and the underlying application record of the subject registration.3 Under Trademark Act Section 2(e)(1), No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it … (e) Consists of a mark which, (1) when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them…. A term is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services. See In re Dial-A- Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001) (“‘1- 888-M-A-T-R-E-S-S’ … immediately conveys the impression that a service relating to 3 Although the Board does not chronicle all of the evidence submitted by Petitioner, all properly submitted evidence was considered in the determination of this motion. Cancellation No. 92064326 - 7 - mattresses is available by calling the telephone number.”); In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987). It is not necessary that the term describe all of the properties or functions of the goods or services in order for it to be considered to be merely descriptive thereof; rather, it is sufficient if the term describes a significant attribute or idea about them. Moreover, whether a term is merely descriptive is determined not in the abstract but in relation to the goods or services for which registration is sought, the context in which it is being used or is intended to be used on or in connection with those goods or services and the possible significance that the term would have to the average purchaser of the goods or services because of the manner of such use. See In re Omaha Nat’l Corp., 819 F.2d 1117, 2 USPQ2d 1859, 1861 (Fed. Cir. 1987); In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). In other words, we evaluate whether someone who knows what the goods are will understand the mark to convey information about them. DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012); In re Tower Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002)). A mark registered on the Principal Register enjoys a rebuttable presumption that it is inherently distinctive. However, after careful consideration of the arguments and evidence presented by the parties under the summary judgment guidelines set forth above, and drawing all inferences in favor of the non-moving party, we find that Petitioner has met its burden in rebutting this presumption with respect to its claim of descriptiveness, by establishing that there are no genuine disputes of material fact that exist with respect to the descriptive nature of the term BLEMISH FREE as used Cancellation No. 92064326 - 8 - in connection with skin creams. Thus, Petitioner is entitled to judgment as a matter of law. Respondent, by way of the disclaimer statement in the subject registration, has conceded the descriptive nature of the term BLEMISH. Additionally, the term FREE is defined in the Random House Dictionary4 as “a combining form with the general sense ‘free of or from something specified,’ and typically meaning ‘not having, containing, subject to, or affected by something unwanted, burdensome, etc.’: error- free; gluten-free; tax-free; germ free.”5 Petitioner’s evidence regarding the functional significance of the mark to relevant consumers demonstrates that the mark immediately conveys the purpose of the goods - to help the user attain skin that is free of or not having blemishes, i.e. blemish-free skin. See, e.g., 15 TTABVUE 84 (“Get Clear Blemish Free Skin), 87 (“How to Get Perfect (Aka Blemish-Free, Plump and 4 The Board may exercise its discretion to take judicial notice of appropriate dictionary definitions that are germane to a summary judgment motion. See Univ. of Notre Dame du Lac v. J. C. Gourmet Food Imports Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983); Enbridge Inc. v. Excelerate Energy LP, 92 USPQ2d 1537, 1542 (TTAB 2009). The Board has used a source other than the one provided by Petitioner because the dictionary definitions submitted by Petitioner with its reply brief are illegible. 28 TTABVUE 30-39. “The filer is responsible for ensuring that all Board submissions - including attachments to ESTTA filings - are legible.” Trademark Trial and Appeal Board Manual of Procedure (“TBMP”) § 110.02(b) (June 2017). Because Board personnel, including judges and interlocutory attorneys, have the same view of documents in the TTABVUE database as does the public, parties can easily determine what Board employees will see when they review the record. If the TTABVUE image is not of acceptable quality, the user should not assume that the Board will be able to view and consider it appropriately. Alcatraz Media, Inc. v. Chesapeake Marine Tours Inc. dba Watermark Cruises, 107 USPQ2d 1750, 1758 n.16 (TTAB 2013) (“the onus is on the party making the submissions to ensure that, at a minimum, all materials are clearly readable by the adverse party and the Board”), aff’d, 565 F. App’x 900 (Fed. Cir. 2014) (mem.). 5 “Free” Dictionary.com Unabridged. Random House, Inc.: http://www.dictionary.com/browse/free (accessed: April 3, 2018). Cancellation No. 92064326 - 9 - Glow-y) Skin”), 92 (SSCPL Blemish Free Cream), 94 (“4 Ways to Get Perfect, Blemish-Free Skin”); and 18 TTABVUE 25 (“Although you may already have a skin blemish treatment plan that works most of the time, consider the following tips for a more comprehensive, long-lasting approach to blemish-free skin.”); 31 (“Acne Cream Homeopathic Blemish Free Clear Smooth Treatment Proactive Skin 1 oz.”); 32 (“JUARA - Rose & Willowbark Blemish-Free Mask”). In opposition to Petitioner’s motion, Respondent submitted: (1) the application record of the subject registration and that of its cancelled Registration No. 2702370 for the mark BLEMISH FREE, 26 TTABVUE 37-98, (2) Internet printouts showing information regarding foreign ownership of several of the third-party websites submitted by Petitioner in support of its motion for summary judgment, id. at 107- 166, (3) copies of third-party registrations for marks containing the terms BLEMISH or FREE on the Principal Register, id. at 168-221, and (4) copies of documents produced by Petitioner in this proceeding. Id. at 223-239. Respondent’s evidence does not refute the descriptiveness of the mark BLEMISH FREE as used in connection with skin creams. Indeed, Respondent’s own website describes the product as helpful to “keep skin clear and radiant.” 26 TTABVUE 32 (emphasis added). Respondent’s arguments are also unavailing. Respondent makes much of its argument, initially advanced in its affirmative defenses, that “[i]f [Petitioner] prevails on its mere descriptiveness claim, it will mean that [its applied- for mark] BLEMFREE is incapable of registration.” 26 TTABVUE 3. However, the two marks are not identical and in any event each case must be decided on its own Cancellation No. 92064326 - 10 - merits. Moreover, a party may assert whatever claims or defenses are available to it regardless of any inconsistencies that may exist. See Fed. R. Civ. P. 8(d)(3); Humana Inc. v. Humanomics Inc., 3 USPQ2d 1696, 1698 (TTAB 1987) (applicant could have pleaded likelihood of confusion hypothetically in a counterclaim notwithstanding the inconsistency of that pleading with its position in the opposition that the marks are not confusingly similar). Respondent argues further that “[s]kin creams have a variety of uses or forms that do not involve skin clearing, removing blemishes, or treating acne … [and] products that clear up skin are not limited to skin creams, meaning that a consumer seeking clear skin does not automatically and immediately think of skin creams.” 26 TTABVUE 8. However, as previously stated, it is not necessary for a mark to describe every attribute of a product in order for the mark to be considered merely descriptive under Section 2(e)(1). See In re Bright-Crest, Ltd., 204 USPQ at 593 (“It is not necessary that a term describe all of the purposes or functions or characteristics or features of a product in order that it may be considered to be merely descriptive thereof; it is enough if the term describes one significant function or attribute or property thereof.”). Additionally, the descriptiveness of a mark is not determined in a vacuum or in the abstract, but in relation to the goods upon which it is used; again the question is whether someone who already knows what the goods are will perceive the mark as descriptive. See In re Omaha Nat’l Corp., 2 USPQ2d at 1861. Where, as here, a mark immediately conveys information about the purpose of the goods, the mark is merely descriptive of those goods. See In re Bayer Cancellation No. 92064326 - 11 - Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007). Accordingly, based upon the present record, the mark BLEMISH FREE is merely descriptive of skin creams under Trademark Act Section 2(e)(1). C. Acquired Distinctiveness In light of the foregoing, Petitioner has established that there are no genuine disputes of material fact regarding its standing to bring this claim and that Respondent’s registered mark is merely descriptive of the identified goods. Therefore, the burden now shifts to Respondent to demonstrate the existence of at least one genuine dispute as to a material fact that requires resolution at trial. Respondent argues that Petitioner has “failed to meet its burden of showing that there is no acquired distinctiveness.” 26 TTABVUE 24 (citing Yamaha Int’l Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 1577 (Fed. Cir. 1988). However, this is not required to show descriptiveness in a cancellation proceeding. As we have previously stated, the rebuttable presumption of inherent distinctiveness that is carried by a registration has been sufficiently rebutted by Petitioner. Moreover, this issue was not raised as an affirmative defense in Respondent’s amended answer as an alternative basis on which to maintain the registration in the event of a finding of mere descriptiveness. In fact, the issue of acquired distinctiveness, as Petitioner points out in its brief in opposition to the motion to strike, was not pleaded by either party. 31 TTABVUE 2 (“Until it is raised by [Respondent], it is fruitless for [Petitioner] in its Initial Brief for Summary Judgment to joust with non-existent issues. Respondent raised the affirmative Cancellation No. 92064326 - 12 - defense of acquired distinctiveness for the first time in its Responsive Brief.”). Even if the Board were to construe Respondent’s contention in its brief in opposition to the motion for summary judgment as an attempt to assert such a defense, generally, a party may not defend against a motion for summary judgment by asserting a defense that has not been pleaded. See Fed. R. Civ. P. 56(a); Asian and Western Classics B.V. v. Selkow, 92 USPQ2d 1478, 1480 (TTAB 2009); Bausch & Lomb Inc. v. Karl Storz GmbH & Co. KG, 87 USPQ2d 1526, 1528 n.3 (TTAB 2008). However, if the parties, in briefing a summary judgment motion, have treated an unpleaded claim or defense on its merits, and neither has objected to the consideration of the unpleaded claim or defense, the Board may deem the pleadings to have been effectively amended, by agreement of the parties. See Paramount Pictures Corp. v. White, 31 USPQ2d 1768, 1772 (TTAB 1994) (pleading deemed amended where nonmoving party did not object to motion as seeking judgment on unpleaded claim), aff’d mem., 108 F.3d 1392 (Fed. Cir. 1997). Inasmuch as Petitioner has treated the claim of acquired distinctiveness on its merits without objection, it will be considered. For purposes of determining the summary judgment motion only, the Board will deem the answer to be further amended to advance a claim of acquired distinctiveness. In addition to the evidence discussed above, Petitioner filed, under seal, Respondent’s answers to Petitioner’s interrogatories. Respondent failed to add any evidence to the record of any distinctiveness its mark may have acquired with relevant consumers. Indeed, the scant evidence Cancellation No. 92064326 - 13 - relating to the issue of acquired distinctiveness presently in the record was submitted by Petitioner and falls well short of establishing any acquired distinctiveness of the mark BLEMISH FREE. Specifically, Respondent’s answers to interrogatories regarding the amounts of sales and advertising expenditures over the relevant time period show de minimis amounts. This evidence tends to indicate a low level of consumer exposure to the mark over the course of several years preceding this matter, thus belying any claim to acquired distinctiveness. Accordingly, the evidence currently of record is insufficient to establish a genuine dispute of material fact as to whether the mark BLEMISH FREE has acquired distinctiveness under Trademark Act Section 2(f), 15 U.S.C. § 1052(f). Respondent’s remaining contentions amount to mere attorney argument.6 As previously stated, factual assertions without evidentiary support are insufficient to defend against a motion for summary judgment. See Hornblower & Weeks Inc., 60 USPQ2d at 1739. Accordingly, Respondent has failed to show the existence of a genuine dispute as to a material fact for trial. IV. Decision For the foregoing reasons, Petitioner’s motion for partial summary judgment on its descriptiveness claim against Registration No. 4715718 is GRANTED, and 6 Respondent’s arguments are nonetheless unavailing. Misuse of the registration symbol is an unpleaded issue not properly raised in defense of this motion for summary judgment. Respondent’s remaining “affirmative defenses” relate to Petitioner’s claim of likelihood of confusion, which we need not consider given our disposition of this motion on the basis of the claim of mere descriptiveness. Cancellation No. 92064326 - 14 - judgment is entered against Respondent. The petition to cancel is GRANTED, and Registration No. 4715718 will be cancelled in due course.7 7 In light of our decision on descriptiveness, we do not reach Petitioner’s Section 2(d) claim.