Nature’s Path Foods Inc.v.Mary’s Gone Crackers, Inc.Download PDFTrademark Trial and Appeal BoardDec 29, 2015No. 92059388 (T.T.A.B. Dec. 29, 2015) Copy Citation Mailed: December 29, 2015 Cancellation No. 92059388 Nature’s Path Foods Inc. v. Mary’s Gone Crackers, Inc. Before Quinn, Lykos and Hightower, Administrative Trademark Judges. Opinion by Hightower, Administrative Trademark Judge: Nature’s Path Foods Inc. (“Petitioner”) has petitioned to cancel two registrations owned by Mary’s Gone Crackers, Inc. (“Registrant”) for the marks PEACE, LOVE & CRUNCH (in standard characters)1 and .2 Both registrations are for “crackers” in International Class 30. 1 Registration No. 3542995, issued December 9, 2008; Section 8 affidavit accepted. 2 Registration No. 3546281, issued December 16, 2008; Section 8 affidavit accepted. The registration includes the following description: “The mark consists of the overlined and underlined wording ‘PEACE, LOVE & CRUNCH’ all in the color burgundy above a broken cracker in the shape of a peace symbol in various shades of brown. The white in the drawing represents background and is not claimed as a feature of the mark.” 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 Cancellation No. 92059388 2 Now before us are Petitioner’s motion for leave to file an amended petition for cancellation, filed July 9, 2015; Registrant’s motion for summary judgment, filed November 17, 2014 on the two claims in Petitioner’s petition for cancellation, i.e., that Registrant’s marks have been abandoned and that its registrations are void ab initio due to non-use before the applications were filed; and Petitioner’s cross- motion to strike, filed as part of its response to Registrant’s motion for summary judgment on July 9, 2015. The motions are fully briefed. Petitioner’s Motion to Amend We first address Petitioner’s motion for leave to amend its petition. By the proposed amendment to the petition for cancellation, Petitioner seeks to add a claim that Registrant committed fraud in obtaining and maintaining the subject registrations. Pursuant to Trademark Rule 2.127(d), 37 C.F.R. § 2.127(d), when any party has filed a potentially dispositive motion, including a motion for summary judgment, “the case will be suspended by the Trademark Trial and Appeal Board with respect to all matters not germane to the motion and no party should file any paper which is not germane to the motion except as otherwise specified in the Board’s suspension order.” Proceedings in this matter have been suspended since November 23, 2014, after Registrant filed its motion for summary judgment midway through the discovery period. Petitioner’s motion to amend is not germane to the summary judgment motion and should not have been filed while the case was suspended pending disposition of Cancellation No. 92059388 3 the summary judgment motion. Petitioner’s motion to amend therefore will be given no consideration. Registrant’s Motion for Summary Judgment In support of its motion for summary judgment, Registrant submitted the Declaration of Dale Rodrigues, then Registrant’s CEO and president, with exhibits. Petitioner moved for, and on March 26, 2015, was granted, a discovery deposition of Mr. Rodrigues pursuant to Fed. R. Civ. P. 56(d). However, because Mr. Rodrigues had resigned his position,3 Registrant withdrew his declaration and exhibits. Registrant attempted to resubmit the Rodrigues Declaration with its reply brief.4 Pursuant to ¶ 5 of the Board’s Order of April 6, 2015,5 however, the declaration “will be given no consideration by the Board when determining the outstanding motion for summary judgment.” We therefore have given the Rodrigues Declaration and exhibits no consideration. In place of the Rodrigues declaration, Registrant submitted the substitute declaration of Mary Waldner, Registrant’s chairman and founder, with exhibits.6 Registrant also made the following evidence of record in support of its motion: • A declaration of Registrant’s counsel Anna E. Raimer in support of Registrant’s motion for summary judgment, except for the sentence 3 Raimer Decl. at 1 ¶ 4, 24 TTABVUE 13. His last day with the company was March 31, 2015. Waldner Tr. at 11:23-24, 17 TTABVUE 38. 4 Exhibit 3 to Raimer Decl., 24 TTABVUE 89-93. 5 12 TTABVUE 2. 6 13-14 TTABVUE. Exhibits B, D, and F to the declaration have been designated as confidential and filed under seal at 14 TTABVUE. Cancellation No. 92059388 4 stricken from that declaration by the Board’s order of March 26, 2015,7 with Exhibits A-K;8 and • Ms. Raimer’s declaration in support of Registrant’s reply brief, with exhibits 1-2, 4, and 6-7.9 Petitioner submitted the following evidence: • The transcript of the Rule 56(d) deposition of Mary Waldner;10 and • A declaration of Petitioner’s counsel Jessica G. Bower, with exhibits 1-2 and 7-14.11 Both parties are reminded that the files of the subject registrations are automatically of record in this proceeding and need not be resubmitted. Trademark Rule 2.122(b)(1), 37 C.F.R. § 2.122(b)(1); see also Cold War Museum Inc. v. Cold War Air Museum Inc., 586 F.3d 1352, 92 USPQ2d 1626, 1628 (Fed. Cir. 2009).12 Petitioner moves to strike the Waldner Declaration on the basis that it is improperly signed, that many of the facts it contains are not based on Ms. Waldner’s personal knowledge, and that “[t]he alleged evidence set forth in her declaration was often contradicted by her deposition testimony.”13 7 See 11 TTABVUE 1-3. 8 5 TTABVUE 11-128. 9 24 TTABVUE 13-88, 94-126, and 134-50. 10 17 TTABVUE 26-127 and 18 TTABVUE. The portions of Ms. Waldner’s deposition transcript at 18 TTABVUE are designated confidential and filed under seal. 11 17 TTABVUE 128-44 and 169-85. 12 The parties also are encouraged to review Trademark Rule 2.120(j)(7), 37 C.F.R. § 2.120(j)(7), and avoid the submission of duplicative evidence at trial. Also, evidence and argument relating to use of Registrant’s marks on goods outside the United States is irrelevant to the claims in this proceeding. See, e.g., Rivard v. Linville, 41 USPQ2d 1731, 1736 (TTAB 1996), aff’d, 133 F.3d 1446, 45 USPQ2d 1374 (Fed. Cir. 1998). 13 Petitioner’s Response in Opposition to Registrant’s Motion for Summary Judgment and Motion to Strike the Declaration of Mary Waldner at 2, 17 TTABVUE 2. Petitioner improperly embedded the motion to strike within its response to Registrant’s motion for summary judgment. See Melwani v. Allegiance Corp., 97 USPQ2d 1537, 1541 (TTAB 2010); TBMP 502.02(b). Cancellation No. 92059388 5 We decline to strike the Waldner Declaration on the basis that it was electronically signed by Registrant’s counsel, with the authorization of Ms. Waldner, who was traveling and could not provide her own physical signature by the deadline for submission of the substitute declaration.14 The declaration was made under penalty of perjury and affirmed by Ms. Waldner at deposition.15 The remainder of Petitioner’s arguments go to the weight due to the declaration, not its admissibility. The motion to strike therefore is DENIED. We turn now to the merits of Petitioner’s motion. Summary judgment is appropriate where there is no genuine dispute as to any material fact, thus allowing the case to be resolved as a matter of law. Fed. R. Civ. P. 56(a). The party seeking summary judgment bears the burden of demonstrating the absence of any genuine dispute of material fact, and that it is entitled to a judgment as a matter of law. Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986); Sweats Fashions Inc. v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793, 1796 (Fed. Cir. 1987). A factual dispute is genuine if, on the evidence of record, a reasonable fact finder could resolve the matter in favor of the non-moving party. Opryland USA Inc. v. Great Am. Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471, 1472 (Fed. Cir. 1992); Olde Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542, 1544 (Fed. Cir. 1992). Evidence on summary judgment must be viewed in a light most favorable to the non-movant, and all justifiable inferences 14 Declaration of Anna E. Raimer in Support of Registrant’s Opposition to Petitioner’s Motion to Strike the Declaration of Mary Waldner at 2 ¶ 6, 22 TTABVUE 15. 15 See Waldner Tr. at 8:15-10:3, 17 TTABVUE 35-37. Cancellation No. 92059388 6 are to be drawn in the non-movant’s favor. Lloyd’s Food Prods. Inc. v. Eli’s Inc., 987 F.2d 766, 25 USPQ2d 2027, 2029 (Fed. Cir. 1993); Opryland USA, 23 USPQ2d at 1472. The Board may not resolve genuine disputes as to material facts; it may only ascertain whether genuine disputes as to material facts exist. Lloyd’s Food Prods., 25 USPQ2d at 2029. We consider Registrant’s motion as to the abandonment and non-use claims in turn. Count I – Abandonment Paragraph 6 of the Petition for Cancellation alleges that: Upon information and belief, Registrant has discontinued all use of its marks PEACE, LOVE & CRUNCH and PEACE, LOVE & CRUNCH (& design) in conjunction with Registrant’s goods, as set forth in Registrant’s Registrations, for at least the last three years, with an intent not to resume such use. As a result, Registrant has abandoned these marks and Registrant’s Registrations should be cancelled. Section 45 of the Trademark Act states, in pertinent part, that 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. Even where a three-year statutory period of nonuse of a mark is established, the Board may consider evidence and testimony regarding a defendant’s practices that occurred before or after the three-year statutory period to infer the defendant’s intent to resume use during the nonuse period. Crash Dummy Movie LLC v. Mattel Inc., 601 F.3d 1387, 94 USPQ2d 1315, 1317 (Fed. Cir. 2010). Cancellation No. 92059388 7 On December 9, 2014, Registrant submitted with its combined declaration of use and incontestability for Registration No. 3542995 (the standard character mark) an image of a box of Registrant’s crackers in a grocery store displaying the trademark PEACE, LOVE & CRUNCH on the top panel, as shown below:16 The date shown on the box is June 1, 2015. Consistent with this specimen of use, in ¶ 8 of her declaration executed April 21, 2015, Mary Waldner stated: “Additionally, Mary’s Gone Crackers now uses the PEACE, LOVE & CRUNCH trademark on boxes of its crackers and cookies. A copy of packaging for Mary’s Gone Crackers’ Original crackers, which is currently on 16 See also 19 TTABVUE 62, 146. The Section 15 incontestability affidavit was rescinded in a post-registration Office action issued July 15, 2015, stating that the affidavit had been acknowledged in error because this proceeding is pending. Cancellation No. 92059388 8 store shelves, is attached as Exhibit J.”17 The exhibit shows the wording PEACE, LOVE & CRUNCH on the top panel of the package. During her discovery deposition, Ms. Waldner testified that Exhibit J to her declaration was “a photograph of our original cracker box,” and that Registrant’s “actual packaging for the crackers appear[ed] in the same manner.”18 Ms. Waldner testified that she was uncertain when Registrant first used the word mark on its packaging, but indicated that it likely was in 2013 or 2014.19 Based on the record evidence, we find there is no genuine dispute that Registrant has used the PEACE, LOVE & CRUNCH word mark in conjunction with its crackers on its packaging within the past three years. Even if Petitioner could establish a period of nonuse of the word mark in conjunction with Registrant’s goods, it cannot establish the required element of intent not to resume such use because Registrant in fact resumed use within the past three years. Registrant therefore is entitled to judgment as a matter of law on Petitioner’s abandonment claim regarding its standard character mark. With respect to Registration No. 3542995, Registrant’s motion for summary judgment is GRANTED as to Petitioner’s abandonment claim, which is dismissed with prejudice. 17 13 TTABVUE 6. Ms. Waldner also stated at ¶ 8 of her declaration that Registrant “has never intended to abandon” its marks, testifying that is so “[b]ecause we love this trademark and we use it frequently and never wanted to give it up.” Id.; Waldner Tr. at 88:24-89:7, 17 TTABVUE 115-16. The intent that is relevant to an abandonment claim, however, is not the intent to abandon a mark, but the intent vel non to resume its use. See Imperial Tobacco Ltd. v. Philip Morris Inc., 899 F.2d 1575, 14 USPQ2d 1390, 1394 (Fed. Cir. 1990) (“In every contested abandonment case, the respondent denies an intention to abandon its mark; otherwise there would be no contest.”). 18 Waldner Tr. at 89:16-90:9, 17 TTABVUE 116-17. 19 See id. at 37:8-17, 90:10-13, 17 TTABVUE 64, 117. Cancellation No. 92059388 9 We reach a different conclusion with respect to Registration No. 3546281, Registrant’s composite mark. The specimen of use submitted December 9, 2014 does not show the URLs of the web pages. Registrant also submitted printouts from the “Internet Archive Wayback Machine” (available at archive.org) displaying pages from Registrant’s website marysgonecrackers.com from the years 2012 through 2014. All of these pages were submitted in black-and-white, but Registrant’s composite mark is lined for color. Cf. Trademark Manual of Examining Procedure (TMEP) § 904.02(c)(ii) (October 2015) (requiring that specimens of use must show use of the color(s) claimed as a feature of a mark). Moreover, on some printouts the mark is too small to be legible. Finally, Ms. Waldner was unable to testify as to specifically when the composite mark was in use on the website. Viewing the evidence in a light most favorable to Petitioner, we find that Registrant has not carried its burden to demonstrate the absence of any genuine dispute of material fact as to when and how it has used its registered mark in association with its goods within the past three years. Registrant’s motion for summary judgment is therefore DENIED with respect to Petitioner’s abandonment claim for Registration No. 3546281. Cancellation No. 92059388 10 Count II – Non-Use Petitioner alleges that the subject registrations are void ab initio because Registrant had not made actual use of its marks as trademarks prior to March 24, 2008, the filing date of its applications. The record evidence pertaining to use of the marks before the application dates concerns Registrant’s presence at a 2008 trade show.20 In ¶ 3 of her declaration, Ms. Waldner states: Mary’s Gone Crackers attended the Expo West Natural Products Show on March 14, 2008. As part of the trade show booth, a banner prominently displayed the Registered Marks. A true and correct copy of a photograph from this trade show, which shows the banner, is attached as Exhibit A. Mary’s Gone Crackers sold many cases of its crackers at this trade show. True and correct copies of some of the order forms evidencing these sales are attached as Exhibit B. Exhibit A appears as follows: 20 Ms. Waldner testified that Registrant first used the subject marks “in March of 2008,” but she did not remember whether they were used before the trade show. Waldner Tr. at 13:20-21, 28:1-12, 17 TTABVUE 40, 55. Cancellation No. 92059388 11 Similarly, in identical July 30, 2008 responses to Office actions during examination of its two applications, Registrant made the following argument: The specimen of use provided by Applicant consists of a banner, which is being used by Applicant as point-of-sale material for Applicant’s crackers. The banner was first used by Applicant at the Expo West Natural Products Show in March 2008, where it was displayed alongside the goods in question. The specimen submitted appears below: It is apparent that the banner submitted as a specimen is not the same banner displayed in Exhibit A to the Waldner Declaration. In the banner in Exhibit A, the broken cracker in the composite mark is tilted slightly to the left, rays descend to touch the overline, and the box below sits parallel to the top of the banner. In the specimen, the broken cracker is tilted slightly to the right, there are no rays immediately above the overline, and the box sits at an angle. Moreover, Ms. Waldner testified that she did not know for certain whether Exhibit A is from the same trade show at which Registrant apparently first used the marks.21 21 Waldner Tr. at 24:8-10, 17 TTABVUE 51. Cancellation No. 92059388 12 The issue before us is whether Registrant has established the absence of any genuine dispute as to its use of the subject marks before March 24, 2008. We find that the conflict between the file histories and summary judgment evidence in Registrant’s depiction of the banner bearing its marks at the March 2008 trade show raises a dispute of material fact as to first use of the marks that precludes summary judgment in Registrant’s favor.22 There is another piece of evidence concerning Registrant’s first use of its marks that Petitioner did not address in its brief. Ms. Waldner testified that Registrant distributed “sell sheets” displaying the subject marks at the March 2008 trade show. Although they were not order forms, the sell sheets appear to contain sufficient information to serve as displays associated with Registrant’s crackers, including a toll-free telephone number for Registrant and specifications of its goods such as shelf life, shipping weight, and pallet layout. The sell sheet, incorporating a third rendering of Registrant’s mark (with the breaks in the cracker presented straight up-and-down, rays extending completely through the wording, and a smaller box of crackers moved to the side) appeared as follows: 22 Registrant argues, concerning its specimen of use, that “Applicant did not claim that the identical banner was first used at the Expo West Natural Products Show.” Reply Brief at 4, 24 TTABVUE 5. In view of the file history, this argument is unpersuasive. Cancellation No. 92059388 13 Because the composite mark displayed in the sell sheet is different from the registered mark , this evidence also does not establish that there are no genuine disputes of material fact concerning the timing of Registrant’s first use of the composite mark. Turning to Registrant’s standard character mark, that the sell sheet omits the comma from the registered mark PEACE, LOVE & CRUNCH is immaterial to the mark’s commercial impression. See In re Promo Ink, 78 USPQ2d 1301, 1305 (TTAB 2006); TMEP § 807.14(c) (“Punctuation, such as quotation marks, hyphens, periods, commas, and exclamation marks, generally does not significantly alter the commercial impression of the mark.”). There is nonetheless another problem with respect to this evidence. This use of the sell sheets (as opposed to their use as catalog inserts beginning at an unspecified time in 2008 after the trade show) is not Cancellation No. 92059388 14 mentioned in Ms. Waldner’s declaration, but she testified that they were displayed on Registrant’s table at the March 2008 trade show.23 However, she was unable to confirm the dates when the trade show was held.24 Although Registrant submitted Internet printouts stating on their face that the trade show was held March 13-16, 2008,25 such evidence constitutes hearsay and does not establish the truth of the matter printed. Safer Inc. v. OMS Investments Inc., 94 USPQ2d 1031, 1040 (TTAB 2010). In order to defeat Petitioner’s non-use claim on summary judgment, Registrant must establish that there is no genuine dispute of material fact that it used its marks before its March 24, 2008 application filing date, its constructive use date. On careful consideration of all of the parties’ evidence and arguments, even if not specifically discussed in this decision, and drawing all inferences with respect to the motion in favor of Petitioner as the non-moving party, we find that Registrant has not established that there is no dispute of material fact concerning its use before the filing date. Therefore, its motion for summary judgment on this claim is DENIED as to both registrations. 23 Waldner Tr. at 35:17-37:4, 58:15-59:2, 17 TTABVUE 62-64, 85-86. See also Waldner Decl. ¶ 4 & Exhibit C, 13 TTABVUE 5, 13-14. 24 See id. at 29:10-14, 17 TTABVUE 56: Q. So the Expo West Trade Show, is it correct that one of the dates it was held on was March 14th, 2008? A. I would assume so. Q. Do you know for certain? A. No. 25 See Exhibit 4 to Defendant’s Reply in Support of Motion for Summary Judgment, 24 TTABVUE 94-126. Cancellation No. 92059388 15 Dates Reset Proceedings are resumed. Discovery is open. Trial and other dates are reset as follows:26 Expert Disclosures Due 3/11/2016 Discovery Closes 4/10/2016 Plaintiff’s Pretrial Disclosures 5/25/2016 Plaintiff’s 30-day Trial Period Ends 7/9/2016 Defendant’s Pretrial Disclosures 7/24/2016 Defendant’s 30-day Trial Period Ends 9/7/2016 Plaintiff’s Rebuttal Disclosures 9/22/2016 Plaintiff’s 15-day Rebuttal Period Ends 10/22/2016 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. Trademark Rule 2.125. Briefs shall be filed in accordance with Trademark Rule 2.128. An oral hearing will be set only on request as provided by Trademark Rule 2.129. * * * 26 The fact that we have identified genuine disputes of material fact as a sufficient basis for denying Registrant’s motion for summary judgment in part should not be construed as a finding that these are necessarily the only issues which remain for trial. In addition, the parties should note that all evidence submitted in support of and opposition to the motion for summary judgment is of record only for consideration of that motion. Any evidence to be considered at final hearing must be properly introduced into evidence during the appropriate trial periods. See Levi Strauss & Co. v. Josephs Sportswear Inc., 28 USPQ2d 1464, 1465 n.2 (TTAB 1993). Copy with citationCopy as parenthetical citation