NaturMed, Inc.v.Botanica Bioscience Corporation, and Plantiva, LLC

Trademark Trial and Appeal Board

Feb 23, 2017

No. 92060182 (T.T.A.B. Feb. 23, 2017)

coggins

Mailed: February 23, 2017

Cancellation No. 92060182
NaturMed, Inc.
v.
Botanica Bioscience Corporation, and
Plantiva, LLC

Before Cataldo, Goodman, and Coggins,
Administrative Trademark Judges.

By the Board:

Now before the Board are Respondents’ motion for summary judgment on the
grounds of abandonment and fraud, and Petitioner’s cross-motion for summary
judgment solely on the ground of abandonment. The motions are fully briefed.
Procedural Issues
Petitioner’s reply brief in support of its motion is fifteen pages. Pursuant to
Trademark Rule 2.127(a), a reply brief on a motion may not exceed ten pages. In view
thereof, the reply brief will be given no consideration. See Mattel Inc. v. Brainy Baby
Co., 101 USPQ2d 1140, 1141 (TTAB 2011) (reply brief not considered because it
exceeded the page limit).
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. 92060182

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For purposes of this order, we presume the parties’ familiarity with the amended
pleadings, the history of the proceeding, and the arguments and evidence submitted
with respect to the cross-motions for summary judgment. Therefore, for the sake of
efficiency, the Board addresses the record on summary judgment only to the extent
necessary to set forth its analysis and findings. The Board does not repeat or address
all of the parties’ arguments and evidence. See Guess? IP Holder LP v. Knowluxe LLC,
116 USPQ2d 2018, 2019 (TTAB 2015).
Motions for Summary Judgment
Summary judgment is appropriate where the movant demonstrates that there is
no genuine dispute as to any material fact, and that it is entitled to judgment as a
matter of law. Fed. R. Civ. P. 56(a). A party asserting that a fact cannot be true or is
genuinely disputed must support its assertion by either: 1) citing to materials in the
record; or 2) showing that the materials cited do not establish the absence or presence
of a genuine dispute, or that an adverse party cannot produce admissible evidence to
support the fact. Fed. R. Civ. P. 56(c). 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). The party seeking judgment in its favor carries
the burden of proof. Celotex Corp. v. Catrett, 477 U.S. 317, 323-24 (1986).
Evidence on summary judgment must be viewed in a light most favorable to the
non-movant, and all justifiable inferences are to be drawn in the non-movant’s favor.
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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. When cross-motions for summary
judgment are presented, the Board evaluates each motion on its own merits and
resolves all doubts and inferences against the party whose motion is being considered.
Mingus Constructors, Inc. v. United States, 812 F.2d 1387, 1390-91 (Fed. Cir. 1987);
and Drive Trademark Holdings LP v. Inofin, 83 USPQ2d 1433, 1437 (TTAB 2007).
The mere fact that cross-motions for summary judgment are presented does not
necessarily mean that there are no genuine disputes of material fact, or that a trial
is unnecessary. See Amazon Technologies Inc. v. Wax, 95 USPQ2d 1865, 1871 (TTAB
2010). 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; Olde Tyme Foods, 22 USPQ2d at 1544. TBMP § 528.01 (Jan. 2017),
and cases cited therein.
Abandonment
We turn first to the parties’ cross-motions on the ground of abandonment.
Trademark Act § 45, 15 U.S.C. § 1127 defines “abandonment” of a mark as follows:
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.

To prevail in summary judgment, Petitioner must demonstrate that it has
standing, and must demonstrate by a preponderance of the evidence that there is no
genuine dispute with respect to elements of its abandonment claim, namely,
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Respondents’ nonuse and their intent not to resume use, or nonuse for three
consecutive years such as would establish a prima facie case and rebuttable
presumption that Respondents have abandoned the mark without intent to resume
use. See Crash Dummy Movie LLC v. Mattel, Inc., 601 F.3d 1387, 94 USPQ2d 1315,
1316 (Fed. Cir. 2010); On-line Careline Inc. v. America Online Inc., 229 F.3d 1080, 56
USPQ2d 1471, 1476 (Fed. Cir. 2000); Cerveceria Centroamericana S.A. v. Cerveceria
India, Inc., 892 F.2d 1021, 13 USPQ2d 1307, 1309 (Fed. Cir. 1989). In such a case,
the burden of production shifts to Respondents to demonstrate that they either used
the mark during the statutory period or intended to resume use thereof. Id.
Conversely, Respondents, as the parties moving for summary judgment in
seeking to dismiss the claim of abandonment, must establish continuous use of their
mark for the goods named in the registration, or that they have not ceased use
without an intent to resume use. In order to establish an intent to resume use,
Respondents must put forth evidence of either specific activities undertaken during
the period of nonuse, or special circumstances which excuse nonuse. See Cerveceria
India Inc. v. Cerveceria Centroamerica, S.A., 10 USPQ2d 1064 (TTAB 1989), aff’d,
892 F.2d 1021, 13 USPQ2d 1307 (Fed. Cir. 1989); see also, On-Line Careline, Inc., 56
USPQ2d at 1476.
Respondents’ motion assumes, solely for the purpose of their motion for summary
judgment, that Petitioner could carry its initial burden of proof of showing nonuse for
three consecutive years to establish a prima facie case and rebuttable presumption
that Respondents have abandoned the mark without intent to resume use. Therefore,
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the only issue before the Board is whether Respondents have evidenced the requisite
intent to resume use of their 2ND WIND mark sufficiently to rebut the presumption
of abandonment.
Petitioner objects to almost all of the evidence Respondents submitted with their
motion for summary judgment. It is not necessary to address each argument and
exhibit; it is enough that we address the declaration of Stephen Morrissey, who is the
managing member of Respondent Planitiva, LLC’s parent organization (Eclipta
LLC), and the former CEO of Respondent Botanica Bioscience Corporation. Petitioner
objects to this declaration on the grounds of heresay, relevance, and that it is self-
serving. The hearsay objection is are not well taken. The declaration is made on Dr.
Morrissey’s personal knowledge, and the emails referenced therein are alleged to be
from the email folders and archives he keeps in the ordinary course of his business.
See Ava Ruha Corp. v. Mother’s Nutritional Cntr, Inc., 113 USPQ2d 1575, 1578
(TTAB 2015) (Fed. R. Civ. P. 56(c)(4) allows testimony from personal knowledge based
on review of files and records or position with company and may be based on
discussions concerning the subject matter with other knowledgeable officers,
employees, or contractors) (citing In re DBC, 545 F.3d 1373, 89 USPQ2d 1123, 1131
(Fed. Cir. 2008)). The relevence objection principally relates to the probative value to
be accorded the testimony in question. Additionally, the Board has long recognized
that declarations submitted on summary judgment may be self-serving, but as long
as the declaration is not wholly conclusory and unaccompanied by credible factual
support, the Board may consider it. See Paris Glove of Canada, Ltd. v. SBC/Sporto
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Corp., 84 USPQ2d 1856, 1864 n.8 (TTAB 2007); TBMP § 528.05(b) (2017) and cases
cited therein. The Board will not presume missing facts, and non-specific facts in
declarations are not sufficient to support or undermine a claim. Lujan v. Nat’l Wildlife
Fed’n, 497 U.S. 871, 888-89 (1990). If the declaration raises a genuine dispute of
material fact, the Board must deny the motion for summary judgment. Olde Tyme
Foods, 22 USPQ2d at 1547.
Here, we find the Stephen Morrissey declaration testimony accompanying
Respondents’ motion raises genuine disputes of material fact as to Respondents’ use
of the mark and intent to resume use of the mark during the years 2010-2016. As set
forth in that declaration, Dr. Morrissey is associated with both
Respondents as well as the parent company of one respondent, and has guided these
companies in their study and exploitation of the subject mark and goods. Dr.
Morrissey further explains the existence and purpose of another wholly owned
subsidiary (Cortex Schientific Botanicals LLC), and its relationship to Respondents;
as well as activies that these entities undertook during 2010-2016 with respect to
supply chain, forumulation, testing, and regulatory activities, as well as providing
free samples of the 2ND WIND dietary supplement goods to various consumers.
Upon careful consideration of the evidence and arguments presented by the
parties, and drawing all inferences in favor of each non-movant, we find that for
purposes of Respondents’ motion for summary judgment, Respondents have not met
thier initial burden of establishing that there are no genuine disputes as to their
intent to resume use of the 2ND WIND mark; and, we find that for purposes of
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Petitioner’s cross-motion, that Respondents have sufficiently demonstrated the
existence of a genuine dispute regarding at least one material fact which requires
resolution at trial (i.e., their intent to resume use). In view thereof, Respondents’
motion for summary judgment is denied, in part, as to abandonment, and
Petitioner’s cross-motion for summary judment on abandonment is also denied.
Fraud
Fraud in maintaining a trademark registration occurs when a registrant in a
declaration of use or a renewal application knowingly makes specific false, material
representations of fact in connection with a post-registration filing with the intent of
maintaining a registration to which it is otherwise not entitled. See In re Bose Corp.,
580 F.3d 1240, 91 USPQ2d 1938, 1939-40 (Fed. Cir. 2009). The alleged fraud at issue
in Respondents’ motion for summary judgment is Petitioner’s claim of fraud during
the renewal of subject Registration No. 2200619. Specifically, Petitioner bases its
fraud claim on Respondents’ alleged non-use use of the mark 2ND WIND in commerce
on September 4, 2008, when Glenn Morrissey, as vice president of Botanica
BioScience Corporation, signed and filed a Combined Declaration of Use in Commerce
& Application for Renewal of Registration of a Mark under Sections 8 & 9 (“Combined
Declaration”). See Amended Petition, paras. 11-13 (18 TTABVUE 4-5).
To prevail on summary judgment, Respondents must establish that there is no
genuine dispute of material fact that 1) they did not knowingly make a false material
representation on September 4, 2008, in their “Combined Declaration of Use in
Commerce & Application for Renewal of Registration of a Mark under Sections 8 &
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9” (“Combined Declaration”) with respect to use of the mark 2ND WIND on or in
connection with “dietary supplements made with herbs in a powder form and
capsulated,” or 2) if such false representation was made, it was not made with the
intent to deceive the USPTO. In re Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938 (Fed.
Cir. 2009).
In support of their motion, Respondents argue that “even under Petitioner’s own
view of the facts, the purported period of nonuse does not start until 2010,” and that
“Petitioner’s allegation of fraud occurring in 2008 is utterly without factual support
(in the pleadings, in the discovery record, and in the evidence Petitioner proposes to
present at trial).” Motion, p. 7 (20 TTABVUE 8). Specifically, Respondents point to
Petitioner’s pretrial disclosures (Exhibit 13 to the motion (20 TTABVUE 88-91))
which disclose as “Witnesses” only a single witness as follows:
Petitioner may take the testimony of Patrick Heffernan, Director of
Operations of NaturMed, Inc. who has knowledge of Petitioner’s use of
trademarks on goods for sale in interstate commerce, information about
the selection of the product name SECOND WIND by Petitioner,
Application Serial No. 86/302,452, and the Abandonment of the mark
2ND WIND;

and which disclose as “Evidence” only the following:
Petitioner will rely on documents and things produced by Respondent
during discovery including sales figures, marketing materials,
advertisements, web site pages, and current published documents.
Petitioner will also rely on documents and things produced by Petitioner
during discovery and documents that are publicly available.

Respondents state that “in view of Petitioner’s ... pretrial disclosures (Exhibit 13)
offering only documentary evidence that it previously presented in its [earlier motion
Cancellation No. 92060182

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for summary judgment1] and the testimony of Petitioner’s Director of Operations
(who has no knowledge of Respondents’ activities or ability to testify thereto),
Respondents submit this renewed Motion for Summary Judgment. There is no
dispute about any relevant, material fact and no offer of proof from Petitioner, so this
matter may properly and efficiently be disposed of on summary judgment.” Motion,
p. 5 (20 TTABVUE 6). By this statement, it appears that Respondents rely on the
second part of Fed. R. Civ. P. 56(c)(1)(B) which provides in relevant part that “[a]
party asserting that a fact cannot be ... genuinely disputed must support the assertion
by ... showing that ... an adverse party cannot produce admissible evidence to support
the fact.” Indeed, a party who does not have the trial burden of production on the
ground of fraud – here, Respondents – may rely on a showing that a party who does
have the trial burden – here, Petitioner – cannot produce admissible evidence to
carry its burden as to the fact. See Fed. R. Civ. P. 56 Committee Notes on Rules - 2010
Amendment.
The only sentences Petitioner gave in opposition to Respondent’s motion for
summary judment on the issue of fraud are: “A finding of fraud requires a finding of

1 Respondents refer to Petitioner’s earlier cross-motion for summary judgment on the ground
of abandonment which was denied without prejudice as moot after the Board struck the
ground of abandonment from the original petition for cancellation as improperly pleaded and
insufficient to state a claim. See 17 TTABVUE 4. Evidence submitted in support of the
original cross-motion for summary judgment was of record only for consideration of that
motion. See, e.g., Levi Strauss & Co. v. R. Joseph Sportswear Inc., 28 USPQ2d 1464 (TTAB
1993). With the current second cross-motion for summary judgment, Petitioner has
resubmitted all but one exhibit (an email between the parties’ counsel) from the original
cross-motion plus two additional exhibits (printout from a URL, and an assignment) that
were not included with the original cross-motion.

Cancellation No. 92060182

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intent and is a question of fact unsuited for disposition on summary judgment.
Petitioner’s pleading raises a question of fact.” 22 TTABVUE 2. Petitioner has done
nothing more than perfunctorily respond to the Respondents’ arguments that
Respondents are entitled to summary judgment on the ground of fraud.
When the moving party’s motion is supported by evidence sufficient to indicate
that there is no genuine dispute of material fact, and that the moving party is entitled
to judgment, the burden shifts to the nonmoving party to demonstrate the existence
of specific genuinely-disputed facts that must be resolved at trial. The nonmoving
party may not rest on the mere allegations of its pleadings, but must designate
specific portions of the record or produce additional evidence showing the existence
of a genuine dispute of material fact for trial. See Anderson v. Liberty Lobby, Inc., 477
U. S. 242, 247–248 (1986) (“[T]he mere existence of some alleged factual dispute
between the parties will not defeat an otherwise properly supported motion for
summary judgment; the requirement is that there be no genuine issue of material
fact.”) In general, to establish the existence of disputed facts requiring trial, the
nonmoving party “must point to an evidentiary conflict created on the record at least
by a counterstatement of facts set forth in detail in an affidavit by a knowledgeable
affiant.” Octocom Sys., Inc. v. Houston Computers Servs. Inc., 918 F.2d 937, 16
USPQ2d 1783, 1786 (Fed. Cir. 1990), citing Barmag Barmer Maschinenfabrik AG v.
Murata Machinery, Ltd., 731 F.2d 831, 221 USPQ 561, 564 (Fed. Cir. 1984). A dispute
as to a material fact is genuine only if a reasonable fact finder viewing the entire
record could resolve the dispute in favor of the nonmoving party. See Olde Tyme Foods
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Inc. v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542, 1544 (Fed. Cir. 1992). However,
Petitioner did not offer any evidence on the issue of fraud.
As noted above, Respondents rely on Petitioner’s pretrial disclosures which reveal
that Petitioner does not plan to use testimony from Respondents and will rely on,
inter alia, documents and things produced by Respondent during discovery including
sales figures. In response to Respondents’ motion, Petitioner has not pointed to an
evidentiary conflict in the record and did not set forth any facts about Respondents’
use of the mark in 2008 or the filing of the Combined Declaration. Resondents argue
that “even under Petitioner’s own view of the facts, the purported period of nonuse
does not start until 2010.” Motion, p. 7 (20 TTABVUE 8). Indeed, evidence attached
to and relied upon by Petitioner in support of its cross-motion for summary judgment
on the ground of abandonment supports Respondents’ position. Petitioner attached
as Exhibit C to its cross-motion what Petitioner identifies as an exhibit that “was
produced by Respondents in response to Interrogatory No. 5 and Request for
Production No. 1.”2 Cross Motion, p. 12-13, and Exhibit C thereto (22 TTABVUE 13-
14, 32-39). This exhibit reveals that Respondents summarized their sales of dietary
supplements as “53” sales volume units and “$0” sales dollars in 2007, “12” sales

2 Interrogatory No. 5 asked Respondents “[f]or each year in which Respondent made sales of
goods bearing the mark 2ND WIND, identify the total amount of sales in dollars and sales
volume in units”; and Request for Production No. 1 asked Respondents to “[p]roduce business
record documents sufficient to show the total sales of 2ND WIND by Respondent on an
annual basis for each year from 1997 through 2015 including invoices, sales summaries, sales
tax reporting, income tax returns, or other documents sufficient to show the extent of annual
sales revenue.” See 22 TTABVUE 66 and 74.
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volume units and “$149.70” sales dollars in 2008, and “5” sales volume units and
“$32.90” sales dollars in 2009. 22 TTABVUE 39.
Petitioner is the party with the burden of production at trial on the fraud ground.
Respondents have shown that Petitioner cannot produce admissible evidence to
support the required elements of fraud, and that they are entitled to judgment as a
matter of law on that ground. The burden then shifted to Petitioner, as the non-
moving party, to demonstrate the existence of specific genuinely-disputed facts that
must be resolved at trial. However, Petitioner replied with a merely perfunctory
response and did not designate specific portions of the record or produce additional
evidence showing the existence of a genuine dispute of material fact for trial. In view
thereof, on the record before us, a reasonable fact finder could not resolve the dispute
as to Respondents’ alleged fraud in favor of Petitioner. Even viewing the evidence in
a light most favorable to Petitioner, and drawing all reasonable inferences in favor of
Petitioner, the record shows no genuine dispute concerning Respondents’ material
representation that it was using the mark on the goods in connection with the subject
registration as of the filing date of the Combined Declaration. Accordingly,
Respondents’ motion for summary judgment is granted, in part, as to fraud, and the
amended petition for cancellation is dismissed with prejudice as to this ground.
Summary
Respondents’ motion for summary judgment is denied, in part, as to
abandonment, and is granted, in part, as to fraud. The amended petition for
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cancellation is dismissed with prejudice as the ground of fraud. Petitioner’s cross-
motion for summary judment on abandonment is denied.
The parties are reminded that the evidence submitted in support of the cross-
motions for summary judgment is of record only for consideration of those motions.
Any such evidence to be considered at final hearing must be properly introduced
during the appropriate trial period. See, e.g., Levi Strauss & Co. v. R. Joseph
Sportswear Inc., 28 USPQ2d 1464 (TTAB 1993).
Schedule
Proceedings are resumed. This case will proceed to trial under the sole remaining
ground of abandonment. Dates are reset on the following schedule:
Plaintiff’s 30-day Trial Period Ends 4/27/2017
Defendants’ Pretrial Disclosures 5/12/2017
Defendants’ 30-day Trial Period Ends 6/26/2017
Plaintiff’s Rebuttal Disclosures 7/11/2017
Plaintiff’s 15-day Rebuttal Period Ends 8/10/2017

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 Rules 2.128(a) and (b). An oral hearing will be set only
upon request filed as provided by Trademark Rule 2.129.
Rules Change
CHANGES TO THE TRADEMARK TRIAL AND APPEAL BOARD (“BOARD”) RULES OF
PRACTICE WERE EFFECTIVE JANUARY 14, 2017.

The USPTO published a Notice of Final Rulemaking in the Federal Register on October 7,
2016, at 81 Fed. Reg. 69950. It sets forth several amendments to the rules that govern inter
Cancellation No. 92060182

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partes (oppositions, cancellations, concurrent use) and ex parte appeal proceedings. A
correction to the final rule was published on December 12, 2016, at 81 Fed. Reg. 89382.
For complete information, the parties are referred to:
• The Board’s home page on the uspto.gov website:
http://www.uspto.gov/trademarks-application-process/trademark-trial-and-appeal-
board-ttab
• The final rule:
http://www.uspto.gov/sites/default/files/documents/81%20FR%2069950.pdf
• The correction to the final rule:
http://www.uspto.gov/sites/default/files/documents/81%20FR%2089382.pdf
• A chart summarizing the affected rules and changes:
http://www.uspto.gov/sites/default/files/documents/Chart%20Summarizing%20Rule%2
0Changes%2012-9-16.pdf

For all proceedings, including those already in progress on January 14, 2017, some of the
changes are:
• All pleadings and submissions must be filed through ESTTA. Trademark Rules
2.101, 2.102, 2.106, 2.111, 2.114, 2.121, 2.123, 2.126, 2.190, and 2.191.
• Service of all papers must be made by email, unless otherwise stipulated.
Trademark Rule 2.119.
• Response periods are no longer extended by five days for service by first-class
mail, Priority Mail Express®, or overnight courier. Trademark Rule 2.119.
• Deadlines for submissions to the Board that are initiated by a date of service
are 20 days. Trademark Rule 2.119. Responses to motions for summary
judgment remain 30 days. Similarly, deadlines for responses to discovery
requests remain 30 days.
• All discovery requests must be served early enough to allow for responses prior
to the close of discovery. Trademark Rule 2.120. Duty to supplement discovery
responses will continue after the close of discovery.
• Motions to compel initial disclosures must be filed within 30 days after the
deadline for serving initial disclosures. Trademark Rule 2.120.
• Motions to compel discovery, motions to test the sufficiency of responses or
objections, and motions for summary judgment must be filed prior to the first
pretrial disclosure deadline. Trademark Rules 2.120 and 2.127.
• Requests for production and requests for admission, as well as interrogatories,
are each limited to 75. Trademark Rule 2.120.
• Testimony may be submitted in the form of an affidavit or declaration.
Trademark Rules 2.121, 2.123, and 2.125.
• New requirements for the submission of trial evidence and deposition
transcripts. Trademark Rules 2.122, 2.123, and 2.125.
For proceedings filed on or after January 14, 2017, in addition to the changes set forth above,
the Board’s notice of institution constitutes service of complaints. Trademark Rules 2.105(a)
and 2.113(a).

This is only a summary of the significant content of the Final Rule. All parties involved in or
contemplating filing a Board proceeding, regardless of the date of commencement of the
proceeding, should read the entire Final Rule.