Jeffrey L. Kaplanv.Cytosport, Inc.

Trademark Trial and Appeal Board

Apr 27, 2010

No. 92050950 (T.T.A.B. Apr. 27, 2010)

WINTER

Mailed: April 27, 2010

Cancellation No. 92050950 (parent)
Cancellation No. 92051274
Jeffrey L. Kaplan
v.
Cytosport, Inc.

Before Seeherman, Hairston, and Ritchie,
Administrative Trademark Judges.

By the Board:

Jeffrey L. Kaplan (“petitioner”) seeks to cancel the
registrations of Cytosport, Inc. (“respondent”) for the mark
MUSCLE MILK for “nutritional supplements”1 and for “powdered
nutritional supplement containing milk derived ingredients
for adding to food or drink.”2 As his first ground for
cancellation in both proceedings, petitioner asserts in his
amended pleadings that respondent’s mark is deceptive under
Section 2(a) of the Trademark Act, 15 U.S.C. § 1052(a).

1 U.S. Reg. No. 2809666, registered March 2, 2004; and Sections 8
& 15 affidavit accepted and acknowledged on April 14, 2009. The
wording “muscle” is disclaimed.

2 U.S. Reg. No. 2714802, registered May 13, 2003; and Sections 8 &
15 affidavit accepted and acknowledged on December 17, 2008.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
Cancellation Nos. 92050950 and 92051274
2
Petitioner’s second ground for cancellation is fraud.
Specifically, in Cancellation No. 92050950, petitioner
asserts that respondent committed fraud on the USPTO when
respondent filed its Sections 8 & 15 affidavit3 (¶¶ 16-19);
and, in Cancellation No. 92051274, petitioner asserts that
respondent committed fraud by virtue of its acquisition of
the underlying application which matured into its
registration and when it filed its Sections 8 & 15 affidavit
(¶¶ 16-35).
In its answers to the amended petitions to cancel,
respondent has denied the salient allegations of the amended
pleadings. However, respondent, in response to petitioner’s
allegation that respondent’s goods do not contain milk,
admits that its MUSCLE MILK products “do not contain milk
from a cow as that term is defined in 21 CFR § 131.110”
(answers, ¶7).
These consolidated proceedings now come up for
consideration of respondent’s fully-briefed motion (filed
January 12, 2010) for partial summary judgment on
petitioner’s claims of fraud.

3 A registrant may file a document attesting to its use of a
mark in commerce either by affidavit or declaration. This
document is generally referred to as a “Section 8 affidavit”
regardless of the form in which attestation to the truth of the
statements therein has been made. Therefore, although respondent
used the “declaration” form, we use the term “Section 8
affidavit” in this order.
Cancellation Nos. 92050950 and 92051274
3
Petitioner’s Fraud Claims in Cancellation No. 92051274
As a preliminary matter, before considering the merits
of respondent’s motion for summary judgment, we must first
address one of the two fraud claims set forth in petitioner’s
amended pleading. We note that although the Board previously
dismissed petitioner’s fraud claim that was based on factual
assertions related to respondent’s acquisition of the
underlying application (see Board order mailed October 22,
2009, pp. 8-9),4 the amended petition to cancel in this
proceeding contains essentially the same allegations. In
view thereof, the Board’s November 30, 2009 order, which
essentially accepted petitioner’s amended petition to cancel,
is hereby modified to the extent that all allegations related
to petitioner’s fraud claim regarding respondent’s
acquisition of application Serial No. 75620289 (which matured
into U.S. Reg. No. 2714802) are hereby stricken. See Fed. R.
Civ. P. 12(f); and Trademark Rule 2.116(a). Accordingly, as
regards Cancellation No. 92051274, the only fraud claim that
we will consider is the claim that is based on allegations
related to respondent’s filing of its Sections 8 & 15
affidavit. Respondent’s motion for summary judgment with
respect to the fraud claim in connection with respondent’s
acquisition of the underlying application is deemed moot.

4 Specifically, the Board dismissed petitioner’s fraud claim
regarding respondent’s obtaining the application that matured
into the registration involved in Canc. No. 92051274, finding no
Cancellation Nos. 92050950 and 92051274
4
Motion for Summary Judgment
Summary judgment is an appropriate method of disposing
of cases in which there are no genuine issues of material
fact in dispute, thus leaving the case to be resolved as a
matter of law. See Fed. R. Civ. P. 56(c). A party moving
for summary judgment has the burden of demonstrating the
absence of any genuine issue of material fact, and that it
is entitled to judgment as a matter of law. See Celotex
Corp. v. Catrett, 477 U.S. 317 (1986). Additionally, the
evidence must be viewed in a light favorable to the non-
movant, and all justifiable inferences are to be drawn in
the non-movant’s favor. See Opryland USA, Inc. v. Great
American Music Show, Inc., 970 F.2d 847, 23 USPQ2d 1471
(Fed. Cir. 1993).
When a moving party’s motion for summary judgment is
supported by evidence sufficient to indicate that there is
no genuine issue of material fact and the moving party is
entitled to judgment, the burden shifts to the nonmoving
party to demonstrate the existence of at least one genuine
issue of material fact that requires resolution at trial.
See Opryland USA, 970 F.2d at 850, 23 USPQ2d at 1473. See
also Hornblower & Weeks Inc. v. Hornblower & Weeks Inc., 60
USPQ2d 1733, 1739 (TTAB 2001) (“to avoid entry of an adverse

authority to support petitioner’s contention that acquisition of
an application to obviate a potential refusal under Section 2(d)
of the Trademark Act constitutes fraud on the USPTO.
Cancellation Nos. 92050950 and 92051274
5
judgment, [nonmovant] must present sufficient evidence to
show an evidentiary conflict as to one or more material
facts in issue”).
Cancellation No. 92050950
We turn first to Cancellation No. 92050950 wherein
petitioner’s fraud claim is based on allegations related to
respondent’s filing of its Sections 8 & 15 affidavit in
connection with U.S. Reg. No. 2809666. Petitioner
essentially alleges that respondent knowingly made a false,
material representation in the signing and filing of its
Sections 8 & 15 affidavit because it knew, as assertedly
shown in the submitted specimen of use, that the nutritional
supplements sold under the MUSCLE MILK trademark do not
contain milk-derived ingredients.
Respondent’s motion for summary judgment primarily
discusses asserted misstatements in the amended petition to
cancel. Specifically, respondent points out that paragraph
17 of the amended petition to cancel refers to a declaration
that was not submitted as part of respondent’s Sections 8 &
15 affidavit for U.S. Reg. No. 2809666 but which, we note,
was actually submitted to the Board in support of
respondent’s motion to dismiss filed in this proceeding on
July 21, 2009 (see Exhibit F thereto). Additionally,
respondent contends that said July 17, 2009 declaration is
correct and does not contain any false statements.
Cancellation Nos. 92050950 and 92051274
6
Notwithstanding the asserted deficiencies in petitioner’s
amended pleading, respondent argues that the evidence
submitted with its motion supports a finding that its
products contain ingredients derived from milk.
In opposing respondent’s motion, petitioner appears to
attempt to correct part of the amended petition to cancel by
referring to the Sections 8 & 15 affidavit that was signed on
March 21, 2009. In addition, petitioner contends that issues
of fact are in dispute, namely, what are the “A-B caseins”
mentioned on respondent’s MUSCLE MILK product label that was
submitted as a specimen with the Section 8 and 15 affidavit,
and whether the casein ingredients in respondent’s goods are
manufactured from cow’s milk, goat’s milk, human milk or by
artificial means; and that such “major questions” need to be
answered and investigated through discovery.5
Fraud in maintaining a trademark registration occurs
when a registrant, in an affidavit of use, renewal
application or another a post-registration filing, knowingly
makes a specific false, material representation of fact with
the intent of maintaining a registration to which it is
otherwise not entitled. See In re Bose Corporation, 476
F.3d 1331, 91 USPQ2d 1938, 1939-1940 (Fed. Cir. 2009);

5 We do not regard petitioner’s statement here or in the
conclusion of his responsive brief regarding discovery as being
requests for additional discovery under Federal Rule 56(f);
further, even if petitioner did intend to request Rule 56(f)
discovery, he did not properly support such a request.
Cancellation Nos. 92050950 and 92051274
7
Torres v. Cantine Torresella S.r.L., 808 F.2d 46, 1 USPQ2d
1483, 1484 (Fed. Cir. 1986). In view thereof, to prevail on
his claim of fraud, petitioner must show that a particular
statement was false; that the statement was made with
knowledge that it was false; and that the statement was
material to the examiner’s decision to accept the Sections 8
and 15 affidavit. See Volkswagenwerk Aktiengesellschaft v.
Advance Welding and Mfg. Corp., 193 USPQ 673, 677 (TTAB
1976) (“[fraud] … signifies a willful withholding from the
Office by a registrant … of material information which, if
transmitted and disclosed to the Examiner, would have
resulted in the … cancellation of a registration for failure
to comply with Section 8…. ”).
In reviewing the Sections 8 and 15 affidavit submitted
by respondent, we note that it refers only to the goods
described in the involved registration, namely, “nutritional
supplements,” and that there is no reference in the
affidavit to milk or to milk-derived ingredients.
Specifically, the declarant (Bobbie White, respondent’s VP
Administrator) stated that the MUSCLE MILK “mark shown
herein has been in continuous use in interstate commerce for
five (5) years from Issue date, to the present, on the
following goods recited in the registration: nutritional
supplements; … .” Notably, petitioner does not dispute
respondent’s statement that there has been five years of
Cancellation Nos. 92050950 and 92051274
8
continuous use of the MUSCLE MILK mark for nutritional
supplements or that the mark is still in use in interstate
commerce. We also note that petitioner does not assert in
his amended pleading that respondent made any other false
statements in its declaration supporting the Sections 8 & 15
affidavit for U.S. Reg. No. 2809666.6
In view of the foregoing, we find that there is no
genuine issue that respondent did not make a false statement
in the Sections 8 & 15 affidavit, which is the first
required element for a fraud claim. See Torres v. Cantine
Torresella, supra. Therefore, respondent is entitled to
judgment in its favor as a matter of law. Accordingly,
partial summary judgment is hereby granted in favor of
respondent, and petitioner’s fraud claim in Cancellation No.
92050950 is hereby dismissed with prejudice.
Cancellation No. 92051274
Petitioner also asserts that respondent committed fraud
in the filing of its Sections 8 & 15 affidavit for
Registration No. 2714802. Unlike the Sections 8 & 15

6 Petitioner appears to assert in his responsive brief other
bases for fraud in connection with respondent’s filing of its
Sections 8 & 15 affidavits for both registrations involved in
these proceedings. Such allegations were not pleaded in the
amended petitions to cancel and, in any event, fail to state a
claim for which relief could be granted. For example, because
the Section 8 & 15 affidavits assert continuous use of the mark
from the issue date of the registrations, petitioner’s arguments
about the lack of continuous use of the marks relating to a time
prior to the issuance of the registrations cannot be a basis for
a claim of fraud because this does not constitute an assertion of
false statements in the affidavits.
Cancellation Nos. 92050950 and 92051274
9
affidavit filed in connection with U.S. Reg. No. 2809666
(discussed supra), respondent states in the Sections 8 & 15
affidavit for U.S. Registration No. 2714802 that the MUSCLE
MILK “mark shown [in said registration] has been in
continuous use in interstate commerce for five (5) years
from Issue date, to the present, on the following goods
recited in the registration: Powdered Nutritional Supplement
Containing Milk Derived Ingredients for Adding To Food or
Drink; … .” Petitioner alleges that this statement is false
and forms the basis for petitioner’s claim of fraud.
As discussed supra in connection with petitioner’s
arguments related to Cancellation No. 92050950, petitioner
contends that issues of fact are in dispute, namely, what
are the “A-B caseins” mentioned on respondent’s MUSCLE MILK
product label, and whether the casein ingredients in
respondent’s goods are manufactured from cow’s milk, goat’s
milk, human milk or by artificial means. However,
petitioner has not submitted any evidence to show that
“casein” may have an alternative meaning or may not be
derived from milk.
In addition, petitioner has submitted a copy of the
application that matured into the registration that is the
subject of this proceeding, U.S. Reg. No. 2714802 (Exhibit
“I”), and, pointing to the specimen of use submitted with
the application, argues that because the product label
Cancellation Nos. 92050950 and 92051274
10
submitted with the application assertedly “shows [that] the
product contains no milk or ingredients derived from milk,”
then respondent’s statement in the Section 8 & 15 affidavit
in regards to milk or milk derived ingredients is refuted.
Respondent essentially argues that there is no dispute
that its statement regarding the nature of its goods in the
Sections 8 & 15 affidavit is not false because “its MUSCLE
MILK® products have always had and continue to contain
ingredients derived from milk.” In support of this
assertion, respondent has submitted, inter alia, the
declaration of Roberta White (respondent’s Vice President of
Legal/Regulatory Affairs; (Exhibit C)), and a copy of a
dictionary definition of “casein” (Exhibit F). In her
declaration, Ms. White states, in relevant part, the
following:
“… 6. The MUSCLE MILK® products contained ingredients
derived from milk when CytoSport started producing,
marketing and selling MUSCLE MILK® products in 1998.
7. The MUSCLE MILK® products, including powdered and
pre-mixed, liquid products, still contain ingredients
derived from milk and always have since the launch of
each product. …”
Additionally, the definition of “casein” from the Shorter
Oxford English Dictionary (5th ed. 2002) defines “casein” as
Cancellation Nos. 92050950 and 92051274
11
“the chief protein of milk.”7
In view of the evidence of record, we find that
respondent, as the movant herein, has demonstrated that there
is no genuine issue of material fact that its “powdered
nutritional supplement containing milk derived ingredients
for adding to food or drink” do, in fact, contain milk-
derived ingredients. Additionally, petitioner has failed to
show that there is a genuine issue as to whether the powdered
nutritional supplement does not contain milk-derived
ingredients. Specifically, petitioner’s mere assertions that
respondent’s goods do not contain milk-derived ingredients
are without evidentiary support, and therefore they do not
raise a genuine issue. As for petitioner’s suggestion that
the A-B caseins listed on the specimen label submitted with
the Sections 8 & 15 affidavit might be manufactured by
artificial means, petitioner has submitted no evidence to
support such a claim. When a motion for summary judgment is
made and supported as is the case here, petitioner may not
rest upon mere allegations or denials, but must, by affidavit
or as otherwise provided in Fed. R. Civ. P. 56, set forth

7 Petitioner is incorrect in arguing that respondent needed to
submit the dictionary definition with a notice of reliance.
Notices of reliance are used to make evidence of record during
testimony periods, not for submissions in support of or in
opposition to a motion for summary judgment. In any event, the
Board may take judicial notice of dictionary definitions. See
University 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).

Cancellation Nos. 92050950 and 92051274
12
specific facts showing that there is a genuine issue for
trial.
In view of the foregoing, in considering the evidence of
record and arguments of the parties in a light favorable to
the non-movant and in drawing all justifiable inferences in
the non-movant’s favor, we find that respondent has
demonstrated that there is no genuine issue that it has used
milk-derived ingredients in its powdered nutritional
supplements since the time its products were first
introduced, and that the statements made in its Sections 8 &
15 affidavit were not false. Accordingly, petitioner cannot
establish the first element of a claim of fraud and,
therefore, respondent is entitled as a matter of law to
summary judgment on the ground of fraud. See In re Bose
Corporation, 476 F.3d 1331, 91 USPQ2d 1938, 1939-1941 (Fed.
Cir. 2009); DaimlerChrysler Corp. v. American Motors Corp.,
94 USPQ2d 1086, 1089 (TTAB 2010); and Enbridge Inc. v.
Excelerate Energy LP, 92 USPQ2d 1537, 1540 (TTAB 2009).
Accordingly, partial summary judgment is hereby granted
in favor of respondent, and petitioner’s fraud claim in
Cancellation No. 92051274 is hereby dismissed with
prejudice.
Cancellation Nos. 92050950 and 92051274
13
Summary; Proceedings Resumed; Trial Dates Reset
Partial summary judgment is granted in respondent’s
favor and petitioner’s claims of fraud in Cancellation Nos.
92050950 and 92051274 are dismissed with prejudice.8
These consolidated proceedings are resumed in
connection with petitioner’s claims of deceptiveness under
Section 2(a) of the Trademark Act, 15 U.S.C. § 1052(a).
Disclosure dates, discovery and trial dates are reset
as follows:
Initial Disclosures Due from
Petitioner 5/12/2010
Expert Disclosures Due 9/4/2010
Discovery Closes 10/4/2010
Plaintiff's Pretrial Disclosures 11/18/2010
Plaintiff's 30-day Trial Period Ends 1/2/2011
Defendant's Pretrial Disclosures 1/17/2011
Defendant's 30-day Trial Period Ends 3/3/2011
Plaintiff's Rebuttal Disclosures 3/18/2011
Plaintiff's 15-day Rebuttal Period
Ends 4/17/2011

IN EACH INSTANCE, a copy of the transcript of
testimony, together with copies of documentary exhibits,
must be served on the adverse party WITHIN THIRTY DAYS after
completion of the taking of testimony. See Trademark Rule
2.l25, 37 C.F.R. § 2.125.

8 The parties are reminded that our decision granting partial
summary judgment is interlocutory in nature and may not be
appealed until a final decision is rendered in these proceedings.
See Copeland’s Enterprises Inc. v. CNV Inc., 887 F.2d 1065, 12
USPQ2d 1562 (Fed. Cir. 1989).

Cancellation Nos. 92050950 and 92051274
14
Briefs shall be filed in accordance with Trademark
Rules 2.l28(a) and (b), 37 C.F.R. §§ 2.128(a) and (b). An
oral hearing will be set only upon request filed as provided
by Trademark Rule 2.l29, 37 C.F.R. § 2.129.
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