92066464 (T.T.A.B. Jul. 5, 2019)

Food Global Innovation GP LLCv.Nguyen

Trademark Trial and Appeal BoardJul 5, 2019

92066464 (T.T.A.B. Jul. 5, 2019)

This Opinion is not a Precedent of the TTAB Mailed: July 5, 2019 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ Food Global Innovation GP LLC v. Tuong Nguyen _____ Cancellation No. 92066464 _____ Casey Griffith and Michael Barbee of Griffith Barbee PLLC, for Food Global Innovation GP LLC Daniel Do-Khanh of Ng Do-Khanh PC For Tuong Nguyen _____ Before Ritchie, Heasley and Coggins, Administrative Trademark Judges. Opinion by Heasley, Administrative Trademark Judge: Petitioner, Food Global Innovation GP LLC, petitions to cancel Respondent Tuong Nguyen’s registration on the Principal Register of the word and design mark Cancellation No. 92066464 - 2 - (the VITASTRONG & Design mark) for “vitamins; mineral and herbal supplements; dietary and nutritional supplements,” in International Class 5,1 on the ground of abandonment. 15 U.S.C. §§ 1064(3), 1127. The Petition alleges that: Petitioner filed applications to register the marks VITAXTRONG, VX VITA XTRONG & Design, and VX VITA XTRONG, all for dietary and nutritional supplements in International Class 5, but received Office Actions initially refusing registration to all three marks based on likelihood of confusion with Respondent’s registered mark;2 because Respondent’s registration stands as a bar to registration of Petitioner’s marks, Petitioner has been damaged and will continue to be damaged if Respondent’s mark is permitted to remain on the Principal Register;3 Respondent has redirected his website VitaStrong.com to his other website, Gardavita.com, which does not market, sell or feature products bearing Respondent’s VITASTRONG & Design mark; Respondent is not using the registered VITASTRONG & Design mark, and has abandoned the mark with no intent to resume use.4 Petitioner accordingly seeks cancellation of Respondent’s registration on the ground of abandonment. 1 Registration No. 4799824. The application that matured to the subject Registration was filed on March 6, 2015, based on Respondent’s claim of actual use in commerce, 15 U.S.C. § 1051(a), and the registration issued in the Principal Register on August 25, 2015. Registrant describes the mark as “consist[ing] of the word ‘Vitastrong’ where the letter ‘V’ is depicted as two green leaves and the letters ‘I’, ‘t’, ‘a’, ‘s’, ‘t’, ‘r’, ‘o’, ‘n’, ‘g’ are written in a blue script font with a blue underline.” The colors green and blue and claimed as a feature of the mark. 2 Petition for Cancellation ¶¶ 1-2, 1 TTABVUE 2-3. Application Serial Nos. 87196059, 87196076, and 87203688. References to the briefs, motions and orders on appeal are to the Board’s TTABVUE docket system. 3 Petition for Cancellation ¶ 12, 1 TTABVUE 4. 4 Petition for Cancellation ¶¶ 6, 11, 1 TTABVUE 3-4. Cancellation No. 92066464 - 3 - In his answer, Respondent admits that he has at times redirected his website VitaStrong.com to his other website, Gardavita.com, which does not market, sell, or otherwise feature products bearing the subject registered VITASTRONG & Design mark, but he otherwise denies the salient allegations of the petition.5 I. The Record The record includes the pleadings and the file for the subject registration.6 Petitioner’s evidence of record includes the testimonial declaration of Petitioner’s Chief Executive Officer, Nicholas Aguilar, with exhibits, concerning Petitioner’s bona fide intent to use its applied-for marks;7 the testimonial declaration of Petitioner’s counsel, Casey Griffith, with exhibits, concerning the requests for production of documents Petitioner propounded to Respondent, and Respondent’s response thereto.8 Petitioner also submitted a notice of reliance listing the exhibits attached to its testimonial declarations,9 although this was unnecessary, given that the exhibits were authenticated in the declarations. Respondent’s evidence of record includes the testimonial declaration of his 5 Answer ¶¶ 6, 7, 10, 11, 4 TTABVUE 2-3. The Answer also raises putative “affirmative defenses,” which were not pursued at trial, and are therefore deemed waived. TiVo Brands LLC v. Tivoli, LLC, 129 USPQ2d 1097, 1100-01 (TTAB 2019). 4 TTABVUE 3. 6 Trademark Rule 2.122(b), 37 CFR § 2.122(b). See Cold War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352, 92 USPQ2d 1626, 1628 (Fed. Cir. 2009) (“The entire registration file -- including any evidence submitted by the applicant during prosecution -- is part of the record in a cancellation proceeding ‘without any action by the parties.”’) cited in Lens.com, Inc. v. 1-800 Contacts, Inc., 686 F.3d 1376, 103 USPQ2d 1672, 1677 (Fed. Cir. 2012). 7 8 TTABVUE 8. 8 8 TTABVUE 10-11. 9 9 TTABVUE. Cancellation No. 92066464 - 4 - counsel, Daniel Do-Khanh, with exhibits, authenticating counsel’s correspondence with Petitioner’s counsel about responding to Petitioner’s requests for production of documents,10 and attaching the documents Respondent produced in response to those requests.11 Respondent also submitted a notice of reliance listing the exhibits attached to his counsel’s testimonial declaration,12 although this was unnecessary, given that the exhibits were authenticated in the declaration. Petitioner has filed a trial brief,13 and Respondent has not. II. Standing “A petition to cancel a registration of a mark [may] be filed as follows by any person who believes that he is or will be damaged…(3) At any time if the registered mark … has been abandoned….”15 U.S.C. § 1064 cited in TV Azteca, S.A.B. de C.V. v. Martin, 128 USPQ2d 1786, 1789 (TTAB 2018). In order to meet the standing requirement under the statute, a plaintiff need only show that it has a real interest, i.e., a personal stake, in the outcome of the proceeding and a reasonable basis for its belief that it will be damaged. See Ritchie v. Simpson, 170 F.3d 1092, 1095, 50 USPQ2d 1023, 1025-28 (Fed. Cir. 1999). A belief in likely damage can be shown by establishing a direct commercial interest. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000). In this case, Petitioner has established that it has a commercial interest in using 10 11 TTABVUE 7-11. 11 11 TTABVUE 12-402. 12 10 TTABVUE. 13 14 TTABVUE. Cancellation No. 92066464 - 5 - VITAXTRONG to offer dietary and nutritional supplements in competition with Respondent. In his declaration, Petitioner’s Chief Executive Officer, Nicholas Aguilar, attests to Petitioner’s use and bona fide intent to use the mark VITAXTRONG as a brand of dietary and nutritional supplements in commerce in the United States.14 Attached as exhibit A to the Aguilar declaration is Petitioner’s declaration of bona fide intent to use VITAXTRONG, filed in Application Serial No. 87196059.15 “Statements made in an affidavit or declaration in the file of an application for registration, or in the file of a registration, are not testimony on behalf of the applicant or registrant,” Trademark Rule 2.122(b)(2), 37 C.F.R. § 2.122(b)(2). Nevertheless, since the Aguilar declaration authenticates exhibit A, we consider it for what it is worth, as documentary corroboration of Petitioner’s good faith efforts to register and use the mark. The obvious similarity of the parties’ marks (VITAXTRONG and VITASTRONG & Design) on in-part identical goods (dietary and nutritional supplements) is sufficient to indicate that the parties are competitors. Petitioner therefore has standing to seek cancellation of Respondent’s registration.16 See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1061-62 (Fed. Cir. 2014), 14 Aguilar decl. ¶¶ 4-9, 8 TTABVUE 5-6. 15 8 TTABVUE 8. 16 We note that the rest of Petitioner’s three application files are not made of record by operation of law, or by introduction into the record. Id.; WeaponXPerformance Prods. Ltd. v. Weapon X Motorsports, Inc., 126 USPQ2d 1034, 1039-40 (TTAB 2018) (plaintiff’s application file not automatically of record). As a consequence, there is no record evidence of the Office Actions refusing registration to those applications due to likelihood of confusion with Respondent’s registered mark. Thus, we do not rely on these in our determination that Petitioner has established standing in this proceeding. Cancellation No. 92066464 - 6 - cert. denied, 135 S. Ct. 1401 (2015) (Cuban cigar manufacturer had standing to seek cancellation of competitor’s trademark registrations); Miller v. Miller, 105 USPQ2d 1615, 1618 (TTAB 2013) (competing law firm had standing to oppose competitor’s application). III. Abandonment A. Applicable Law Under Section 45 of the Trademark Act, a mark shall be deemed to be abandoned: When its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment. “Use” of a mark means the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark. 15 U.S.C. § 1127. Since a registration is presumed valid, 15 U.S.C. § 1057(b), the party seeking its cancellation must rebut this presumption by a preponderance of the evidence. Cold War Museum v. Cold War Air Museum, 92 USPQ2d at 1628; W. Fla. Seafood Inc. v. Jet Rests., Inc., 31 F.3d 1122, 31 USPQ2d 1660, 1665-66 (Fed. Cir. 1994). “If plaintiff can show three consecutive years of nonuse, it has established a prima facie showing of abandonment, creating a rebuttable presumption that the registrant has abandoned the mark without intent to resume use. The burden of production (i.e., going forward) then shifts to the respondent to produce evidence that he has either used the mark or that he has intended to resume use (e.g., a convincing demonstration of ‘excusable non-use’ that would negate any intent not to resume use of the mark). The burden of persuasion remains with the plaintiff to prove abandonment by a preponderance of the evidence.” Noble House Home Furnishings, Cancellation No. 92066464 - 7 - LLC v. Floorco Enters., LLC, 118 USPQ2d 1413, 1417 (TTAB 2016) (citing Imperial Tobacco Ltd. v. Philip Morris Inc., 899 F.2d 1575, 14 USPQ2d 1390, 1393 (Fed. Cir. 1990)). B. The Parties’ Submissions In this case, Petitioner contends that it has established a prima facie showing of abandonment through Respondent’s responses and lack of production in response to its discovery requests. Specifically, Petitioner’s counsel avers in his declaration that he propounded a request for production of documents, requesting in particular that Respondent: 3. Produce documents sufficient to show all persons to whom goods bearing Registrant’s Mark have been sold or offered for sale. 5. Produce all documents that show or reflect the use of Registrant’s Mark anywhere in the United States, including the date of first use of Registrant’s Mark. 6. Produce all documents that show or reflect the use of Registrant’s Mark in commerce, including the date of first use of Registrant’s Mark in commerce. 11. Produce any and all documents reflecting revenue received from the sale of goods under Registrant’s Mark. 12. Produce documents sufficient to show the number of goods sold under Registrant’s Mark.17 After some colloquy between counsel, Respondent, without objection, produced 390 pages of documents to Petitioner.18 Respondent’s counsel confirms that he 17 Griffith decl. ¶ 3, ex A, 8 TTABVUE 10, 17. 18 Griffith decl. ¶¶ 4-7, 8 TTABVUE 11. Cancellation No. 92066464 - 8 - produced the documents on April 26, 2018.19 Attached to the declaration of Respondent’s counsel are the 390 pages of documents Respondent produced, representative samples of which are as follows: • Postcards: 19 Daniel Do–Khanh decl. ¶¶ 2-7, 11 TTABVUE 5-6. Cancellation No. 92066464 - 9 - 20 • Birthday post cards 20 11 TTABVUE 13-14. Cancellation No. 92066464 - 10 - 21 • Invoices from Apex Mailing Services, Inc. for mailing services related to the post cards 21 11 TTABVUE 163-64. Cancellation No. 92066464 - 11 - 22 Multiple invoices trace Apex Mailing Services’ provision of mailing services to VitaStrong, Inc. from 2013 through 2018.23 22 11 TTABVUE 15. 23 11 TTABVUE 13-162. Cancellation No. 92066464 - 12 - • Invoices from Moulton Logistics Management to VitaStrong, Inc. Cancellation No. 92066464 - 13 - . . . 24 Multiple invoices trace Moulton Logistics Management’s provision of services to VitaStrong, Inc. from 2013 through 2017.25 24 11 TTABVUE 360-61. 25 11 TTABVUE 362-79. Cancellation No. 92066464 - 14 - • Website pages Cancellation No. 92066464 - 15 - 26 • WHOIS information on the registrant of Vitastrong.com 27 26 11 TTABVUE 380-93. No URL or date was indicated. 27 11 TTABVUE 398-402. Cancellation No. 92066464 - 16 - Respondent submitted no testimony or evidence beyond this. In its brief, Petitioner argues: During discovery, Petitioner requested [Respondent] Nguyen produce documents that show use of the Vitastrong Mark in commerce. Nguyen produced none. And incredibly, Nguyen submitted no testimony in this proceeding. No testimony that he is using the Vitastrong Mark. No testimony that he ever used the Vitastrong Mark. And no testimony that he has ever had an intent to resume use of the Vitastrong Mark. Nguyen also submitted no admissible documentary evidence that he is using, has ever used, or has ever had an intent to resume use of the Vitastrong Mark. * * * Petitioner diligently sought evidence of Nguyen’s use of the Vitastrong Mark in commerce during discovery—for if such evidence existed, Nguyen would be in possession. He failed to produce any. Thus, Petitioner has established a prima facie showing of abandonment, shifting the burden to Nguyen to produce evidence that he has either used the Vitastrong Mark or that he has intended to resume use. But because Nguyen did not testify and none of the documents his counsel cited are admissible, the absolute lack of evidence makes his burden an impossible task.28 As noted, Respondent did not file a brief. C. Analysis In our view, the issue, as framed here, is not whether Respondent has failed to prove use of his registered mark in commerce. The issue is whether Respondent’s failure to produce documentation of use in response to Petitioner’s document requests suffices to support a prima facie adverse inference of nonuse in commerce for over three years. To answer that question, we focus not only on the documents produced, but on the lack of documents produced in response to Petitioner’s requests. Adverse inferences may be drawn properly from insufficient responses to 28 Petitioner’s brief, 14 TTABVUE 7-8. Cancellation No. 92066464 - 17 - discovery requests. “A party is required to respond completely to discovery to the best of its ability and to supplement discovery responses as soon as it becomes aware of new information. Fed. R. Civ. P. 26(e).” Quality Candy Shoppes/Buddy Squirrel of Wisconsin, Inc. v. Grande Foods, 90 USPQ2d 1389, 1392 (TTAB 2007). As the Board has emphasized, “Each party and its attorney has a duty to make a good faith effort to satisfy the discovery needs of its adversary. [TBMP § 408] The parties are also reminded of their ongoing duty to supplement their discovery responses in a timely manner. Fed. R. Civ. P. 26(e)(1)(A).” Hewlett Packard Enter. Dev. Lp v. Arroware Indus., Inc., 2019 USPQ2d 158663 *12, (TTAB 2019). When a party fails to do so, on a critical issue, central to the case, an adverse inference may properly be drawn. “[W]hen it is within a party’s power to produce a certain kind of persuasive testimony or documentary evidence on an urged factual finding, and it fails to do so, a tribunal is at least permitted-perhaps even compelled-to draw the inference that that fact is unsupported and/or untrue.” In re US Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790, 1794 (TTAB 2017) quoted in Stawski v. Lawson, 129 USPQ2d 1036, 1046 (TTAB 2018). See also Tao Licensing v. Bender Consulting, 125 USPQ2d 1043, 1053 (TTAB 2017) (“The presence of business records would strengthen the case that these transactions occurred in the ordinary course of trade, and the absence of such records does the opposite.”). Adverse inferences of this sort can be drawn in abandonment cases. “Especially when a party must prove a negative, as in proving abandonment through nonuse, without resort to proper inferences the burdened party could be faced with an insurmountable task. The protection due the registrant is provided by requiring that Cancellation No. 92066464 - 18 - the inference have an adequate foundation in proven fact.” Cerveceria Centroamericana S.A. v. Cerveceria India Inc., 892 F.2d 1021, 13 USPQ2d 1307, 1310 (Fed. Cir. 1989). In one such abandonment proceeding, Cerveceria Modelo S.A. de C.V. v. R.B. Marco & Sons Inc., 55 USPQ2d 1298, 1303 (TTAB 2000), the Board observed: Although [Petitioner] Modelo repeatedly asked for financial records as part of document requests, interrogatories, notices of depositions, etc., and in spite of all the discovery disputes, motions practice, and intense litigation in this case over the past seven years, the boxes of papers generated during this proceeding contain no financial records for the [Respondent] Marco & Sons enterprise as a whole, much less any overall accounting of the volume of sales of CORONA socks, or the profitability of this particular line. In spite or promises by respondent’s counsel that such records would be produced during Marco & Sons’ testimony period for all relevant time periods, they do not appear to be part of the instant record. . . . Throughout the seven years of this cancellation proceeding, Marco & Sons was put on notice that it was faced with a serious allegation of abandonment, and was provided an adequate opportunity to address this issue. Accordingly, where the record contains suspicious documents, and where answers given under oath seem disingenuous and are intentionally vague or unclear, we must necessarily draw inferences adverse to respondent. Id. at 1303. The Board accordingly found that the petitioner had produced sufficient evidence to make a prima facie case of abandonment, and the respondent had not rebutted that prima facie case. Id. In another such abandonment proceeding, ShutEmDown Sports, Inc. v. Lacy, 102 USPQ2d 1036 (TTAB 2012), the Board found: The evidence submitted by petitioner shows that no one has purchased goods from respondent in the five years preceding respondent’s service of responses to petitioner’s discovery requests; respondent has no sales receipts or other sales documents, no invoices and/or bills of service for goods showing use of the mark for the more than three years between the filing date of his application and the service of responses to petitioner’s Cancellation No. 92066464 - 19 - discovery requests; no promotional materials; and no documents relating to his first use of the SHUT IT DOWN mark. The foregoing establishes petitioner’s prima facie case of abandonment based on nonuse of the mark for the four ‘goods allegedly in use’ for the more than three year period between respondent’s filing date and date of his responses to petitioner’s discovery requests. Accordingly, the burden of going forward and rebutting petitioner’s prima facie showing shifted to respondent. Based on the record before us, respondent did not meet his burden. Id. at 1043. Here, as in those cases, Respondent’s document production is most noteworthy for what it omits. Request no. 6 required Respondent to “Produce all documents that show or reflect the use of Registrant’s Mark in commerce, including the date of first use of Registrant’s Mark in commerce.”29 A mark is deemed to be in use in commerce on goods when “(A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and (B) the goods are sold or transported in commerce.” 15 U.S.C. § 1127, quoted in In re Kohr Bros., Inc., 121 USPQ2d 1793, 1794 (TTAB 2017). Yet Respondent’s document production shows neither sales nor transport under the registered mark. Other document requests were more specific. Request no. 12 required Respondent to “Produce documents sufficient to show the number of goods sold under Registrant’s Mark.” None were produced. Request no. 11 required Respondent to “Produce any and all documents reflecting revenue received from the sale of goods under Registrant’s Mark.” None were produced. Request no. 3 required 29 8 TTABVUE 17. Cancellation No. 92066464 - 20 - Respondent to “Produce documents sufficient to show all persons to whom goods bearing Registrant’s Mark have been sold or offered for sale.” None were produced. The documents Respondent did produce do not compensate for his omissions. The postcards he produced are mere advertising. “It long has been held that mere advertising is not sufficient to show trademark use.” In re Kohr Bros., Inc., 121 USPQ2d at 1794; accord In re DePorter, 129 USPQ2d 1298, 1304 n. 18 (TTAB 2019) (“Advertisement alone is, of course, insufficient to establish trademark use for goods.”).30 Similarly, Respondent’s registration of a domain name and maintenance of a website that merely provides information about goods, without providing a means of ordering them, is also viewed as promotional or advertising material, not use in commerce. See Brookfield Commc’ns., Inc. v. W. Coast Entm’t. Corp., 174 F.3d 1036, 50 USPQ2d 1545, 1555 (9th Cir. 1999) (mere registration of domain name does not constitute use of trademark in commerce); In re Quantum Foods, Inc., 94 USPQ2d 1375, 1378-79 (TTAB 2010) (“However, an Internet web page that merely provides information about the goods, but does not provide a means of ordering them, is viewed as promotional material, which is not acceptable to show trademark use on goods. … It long has been held that mere advertising is not sufficient to show trademark use.”) cited in Stawski v. Lawson, 129 USPQ2d at 1045. If Respondent’s advertising yielded 30 “Material that would otherwise be considered mere advertising may be acceptable as a specimen of use for goods if it includes a photograph of the applied-for mark appearing on . . . packaging for the goods.” TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) § 904.04(b) (Oct. 2018). Respondent’s postcards include photographs of packaging for the goods. It is difficult to discern whether this packaging bears the registered mark; however, even if we could determine with certainty that the mark appears on the packaging depicted on the postcards, Respondent introduced no evidence that the goods have been “sold or transported in commerce.” 15 U.S.C. § 1127. Cancellation No. 92066464 - 21 - sales, or even free distribution of his goods under the VITASTRONG & Design mark, it was incumbent on Respondent to produce this documentation. Neither the Apex Mailing Services nor the Moulton Logistics Management invoices establish sales or transport of goods under the VITASTRONG & Design mark. And Respondent did not submit any evidence or testimony that would rebut Petitioner’s prima facie showing of abandonment. D. Conclusion “Trademark rights are acquired and maintained in this country through use in commerce, that is, bona fide use of the mark made in the ordinary course of trade. Section 45 of the Trademark Act, 15 U.S.C. § 1127.” Saddlesprings, Inc. v. Mad Croc Brands, Inc., 104 USPQ2d 1948, 1952 (TTAB 2012). Respondent, faced with a serious allegation of abandonment, was afforded more than adequate opportunities to respond to Petitioner’s discovery requests, to supplement his responses, and to adduce additional testimony or documentary evidence during his testimony period supporting his position that he used his mark in commerce. He failed to avail himself of those opportunities. We accordingly find, based on the preponderance of the evidence, that Petitioner established its prima facie case of abandonment based on three consecutive years of nonuse,31 and that Respondent has not met his burden of rebutting that prima facie case. 15 U.S.C. § 1127. We conclude that respondent has 31 The period of nonuse is measured from March 6, 2015, the date Respondent filed the use- based application that matured into the subject registration. See Dragon Bleu (SARL) v. Venm, LLC, 112 USPQ2d 1925, 1930 (TTAB 2014) (citing ShutEmDown Sports v. Lacy, 102 USPQ2d at 1042 (for registration issued from Section 1(a)-based application, three-year period of nonuse measured from respondent's filing date)). Cancellation No. 92066464 - 22 - abandoned the mark in the subject registration. Decision: The petition to cancel Respondent’s Registration No. 4799824 for the mark is granted, and the registration will be cancelled in due course.

Food Global Innovation GP LLC v. Nguyen