Plant Food Systems, Inc.v.EarthRenew, Inc.

Trademark Trial and Appeal Board

Jan 6, 2012

No. 92051934 (T.T.A.B. Jan. 6, 2012)

Baxley Mailed: January 6, 2012 Opposition No. 91194313 Cancellation No. 92051934 Cancellation No. 92052821 Plant Food Systems, Inc. v. EarthRenew, Inc. Before Mermelstein, Lykos, and Kuczma, Administrative Trademark Judges. By the Board: EarthRenew, Inc. ("defendant") filed an intent-to-use application to register the mark LAWNRENEW in standard character form for "[f]ertilizer and soil amendments for agricultural, domestic and reclamation use" in International Class 1.1 Defendant also owns the following registrations: (1) a registration for the mark RENEW in standard character form for "[s]oil amendments [and f]ertilizers" in International Class 12 and a registration for the mark 1 Application Serial No. 77793902, filed July 30, 2009. This application is the subject of Opposition No. 91194313. 2 Registration No. 3548840, issued December 23, 2008, and alleging November 16, 2007, as the date of first use anywhere and the date of first use in commerce. This registration is the subject of Cancellation No. 92051934. The registration was cancelled as a result of default judgment that was entered in that proceeding on March 31, 2010. Although the default judgment was vacated in a June 24, 2010, order, Registration No. 3548840 has not been reinstated. UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board P.O. Box 1451 Alexandria, VA 22313-1451 This decision is not a precedent of the Trademark Trial and Appeal Board. Opposition No. 91194313; Cancellation Nos. 92051934 and 92052821 2 EARTHRENEW in standard character form for "[f]ertilizer and soil amendments for agricultural, domestic and reclamation use" in International Class 1.3 In the amended notice of opposition in Opposition No. 91194313, Plant Food Systems, Inc. ("plaintiff") opposes registration of defendant's LAWNRENEW mark on the ground of likelihood of confusion with plaintiff’s previously used mark RENEW for "fertilizer" and "fertilizer products." In the amended petition to cancel in Cancellation No. 92051934 and the petition to cancel in Cancellation No. 92052821, plaintiff seeks cancellation of defendant's registrations for the RENEW and EARTHRENEW marks on grounds of fraud, "token use," abandonment, and likelihood of confusion with plaintiff’s previously used mark RENEW for "fertilizers." On July 28, 2010, plaintiff filed a motion for summary judgment on its pleaded priority/likelihood of confusion claim in Opposition No. 91194313. On September 7, 2010, plaintiff filed a motion for summary judgment in Cancellation No. 92051934 on its pleaded claim that, because any use of the RENEW mark was token at best, Registration No. 3548840 is void ab initio and therefore should be cancelled. 3 Registration No. 3411052, issued April 8, 2008, and alleging May 9, 2007, as the date of first use anywhere and November 16, 2007, as the date of first use in commerce. This registration is the subject of Cancellation No. 92052821. Opposition No. 91194313; Cancellation Nos. 92051934 and 92052821 3 On August 26, 2010, prior to the due date for defendant's brief in response to the motion for summary judgment in Opposition No. 91194313 and prior to the filing of the motion for summary judgment in Cancellation No. 92051934, defendant filed a motion to suspend Opposition No. 91194313 pending final disposition of Cancellation No. 92051934. In a September 20, 2010, order, the Board denied defendant's motion to suspend, consolidated the above- captioned proceedings, and reset time for remaining briefing on plaintiff's motions for summary judgment. On October 19, 2010, defendant filed a motion to extend its time in which to respond to the motions for summary judgment, which the Board granted in an October 27, 2010, order. On October 29, 2010, defendant filed a notice of bankruptcy for its parent company in Canada, which resulted in the Board's suspension of the above-captioned proceedings pending final determination of the Canadian Receivership Proceeding in which defendant's parent company is involved. Following disposition of the Canadian Receivership Proceeding, in which defendant's assets were alleged to have been assigned to 0890241 B.C. Ltd. ("0890241"), the Board, in a June 9, 2011, order, joined 0890241 as a party defendant and reset time for remaining briefing on the motions for summary judgment. The motion for summary Opposition No. 91194313; Cancellation Nos. 92051934 and 92052821 4 judgment in Cancellation No. 92051934 has been fully briefed. As an initial matter, defendant, on September 29, 2011, filed a copy of a notice of assets which were excluded from the assignment to 0890241. Because the excluded assets include defendant's intellectual property assets, we conclude that defendant remains the owner of the involved application and registrations, and 0890241 is hereby dropped as a party defendant in these consolidated proceedings. See Fed. R. Civ. P. 21; Patent and Trademark Rule 3.73(b); TBMP Section 512.01 (3d ed. 2011). Pursuant to the June 9, 2011, order, defendant was allowed sixty days, i.e., until August 8, 2011, to file a brief in response to plaintiff's motions for summary judgment. As such, the brief in response that defendant filed on August 9, 2011, was untimely. However, we find that such untimely filing was the result of excusable neglect since there is no prejudice to plaintiff; the impact of the one-day delay upon these proceedings is negligible; and there is no indication that the late filing was made in bad faith. See Pioneer Investment Services Co. v. Brunswick Associates L.P., 507 U.S. 380 (1993); Pumpkin, Ltd. v. The Seed Corps, 43 USPQ2d 1582 (TTAB 1997); Fed. R. Civ. P. 6(b)(1)(B); TBMP Section Opposition No. 91194313; Cancellation Nos. 92051934 and 92052821 5 509.01(b) (3d ed. 2011). Accordingly, we have considered defendant's brief in response. In that brief in response, defendant indicates that it opposes the motion for summary judgment in Cancellation No. 92051934 only. Accordingly, the motion for summary judgment in Opposition No. 91194313 is granted as conceded. See Trademark Rule 2.127(a). Judgment is hereby entered against defendant in Opposition No. 91194313, that opposition is sustained, and registration to defendant of the LAWNRENEW mark in involved application Serial No. 77793902 is refused. With regard to the motion for summary judgment in Cancellation No. 92051934, plaintiff contends that any use of the RENEW mark by defendant or its predecessor-in- interest is token in nature, and cannot satisfy the requirements of the Trademark Law Revision Act of 1988 for use in commerce. In particular, plaintiff contends that, on November 26, 2007, defendant's predecessor-in-interest, "Earthrenew Organicts [sic] Ltd.," filed an amendment to allege use in support of the application for Registration No. 3548840, alleging that it first used the mark in commerce on November 16, 2007, and included a specimen showing the marks EARTHRENEW ORGANIC MATTER PLUS NURTRIENTS and RENEW on a ten-pound container of "[f]ertilizer [p]roduct" with a label indicating that such container was addressed for shipment to L.A. Drew Environmental in Opposition No. 91194313; Cancellation Nos. 92051934 and 92052821 6 Rathdrum, Idaho;4 that the laws of the State of Idaho require registration of any fertilizer product before that product can be distributed within the State of Idaho; that documents plaintiff received through a public records request from the State of Idaho Department of Agriculture indicated defendant did not file an application to register its product until September 26, 2009, nine months after involved trademark Registration No. 3548840 was issued; and that such application was denied. Plaintiff further contends that, as a result of defendant's failure to timely respond to plaintiff's requests for admission, defendant has admitted that neither defendant nor its predecessor have "commercially sold" any product under the involved mark after the alleged date of first use in commerce, November 16, 2007, and that defendant does not possess any state license or permit necessary for the manufacture or distribution of fertilizer product. Based on the foregoing, plaintiff asks the Board enter summary judgment in its favor in Cancellation No. 92051934. 4 On December 4, 2007, the application was assigned from "Earthrenew Organics Ltd." to defendant. On January 31, 2008, prior to the December 23, 2008, issuance of the involved registration, a document reflecting that assignment was recorded with the USPTO's Assignment Branch at Reel 3708, Frame 0357. Because "Earthrenew Organicts Ltd." and "Earthrenew Organics Ltd." have the same address, the Board presumes that references to "Earthrenew Organicts Ltd." in the application and amendment to allege use are typographical errors. Opposition No. 91194313; Cancellation Nos. 92051934 and 92052821 7 Plaintiff's evidence in support of its motion for summary judgment includes: (1) a declaration of plaintiff's attorney which introduces, among other things: (a) a copy of the requests for admission that it served by e-mail on July 26, 2010; (b) a copy of Idaho statute 22-605 requiring registration of "fertilizer product;" (c) documents obtained from the State of Idaho Department of Agriculture pertaining to "fertilizer product" offered for sale, and any attempted registration or attempted licensing pertaining to defendant, Earthrenew Organic Matter, and Earthrenew Organic Matter Fertilizer, which indicate that defendant's September 26, 2009, application to register EARTHRENEW ORGANIC MATTER FERTILIZER for distribution in Idaho was denied on October 14, 2009; (d) a copy of plaintiff's application Serial No. 77814890 from the USPTO's Trademark Electronic Search System (TESS); and (e) a copy of an Office action in which plaintiff's application was refused registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), based on defendant's involved Registration No. 3548840; and (2) a declaration of plaintiff's president Carl Fabry, which introduces: (a) advertisements for plaintiff's fertilizers sold under the RENEW mark; (b) a product label for containers of plaintiff’s RENEW fertilizer; and (c) two invoices showing sales of plaintiff’s RENEW fertilizer in 2007 and 2010. Opposition No. 91194313; Cancellation Nos. 92051934 and 92052821 8 In response, defendant contends that its initial (and only) interstate shipment was to a distributor for evaluation for marketing purposes, which the Board has held "to be legitimate;" that defendant's goods can be characterized as a soil amendment for which registration is not required under the Idaho statute upon which plaintiff relies; and that its lack of current use of the mark constitutes excusable nonuse under Trademark Rule 2.161(f)(2). Defendant did not submit any evidence in opposition to the motion for summary judgment. In reply, plaintiff contends that, as a result of defendant's failure to respond to requests for admission, defendant has admitted there were no shipments following the November 16, 2007, date of first use in commerce set forth in the amendment to allege use; that defendant's assertion that its goods are soil amendments which do not require registration under Idaho law is not credible; and that defendant has submitted no evidence to support its assertion that its admitted nonuse of the mark since November 16, 2007, is excusable. Summary judgment is an appropriate method of disposing of a case in which there are no genuine disputes as to any material fact, thus leaving the case to be resolved as a matter of law. See Fed. R. Civ. P. 56(c). Opposition No. 91194313; Cancellation Nos. 92051934 and 92052821 9 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 Inc. v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542, 1544 (Fed. Cir. 1992). In deciding a motion for summary judgment, the Board must view the evidence in the light most favorable to the nonmovant, and must draw all reasonable inferences from underlying facts in favor of the nonmovant. Id. A party moving for summary judgment has the burden of demonstrating the absence of any genuine dispute of material fact, and that it is entitled to summary judgment as a matter of law. See Celotex Corp. v. Catrett, 477 U.S. 317 (1986); Sweats Fashions Inc. v. Pannill Knitting Co. Inc., 833 F.2d 1560, 4 USPQ2d 1793 (Fed. Cir. 1987). 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 and arguments in response to the motion, but must designate specific portions of the record or produce additional evidence showing the existence of a genuine dispute of Opposition No. 91194313; Cancellation Nos. 92051934 and 92052821 10 material fact for trial. 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 Systems Inc. v. Houston Computers Services 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). For the Board to grant summary judgment, plaintiff must establish that there is no genuine dispute as to its standing and as to the ground on which it seeks entry of summary judgment. See Fed. R. Civ. P. 56(a); Cunningham v. Laser Golf Corp., 222 F.3d 943, 945, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000). There is no genuine dispute that plaintiff has standing to maintain this proceeding. Plaintiff’s standing is established by its submission, as an exhibit to its brief in support of the motion for summary judgment, of a copy of the application file of plaintiff's pleaded application Serial No. 77174429 for the mark RENEW in standard character form for "fertilizers for citrus and fruit trees" in International Class 1. The Office action in that file shows that such application was refused registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), based on defendant's involved Opposition No. 91194313; Cancellation Nos. 92051934 and 92052821 11 registration.5 See Weatherford/Lamb Inc. v. C&J Energy Services Inc., 96 USPQ2d 1834 (TTAB 2010). Though not worded as such, plaintiff's "token use" claim is essentially a claim of nonuse based on the allegation that defendant's predecessor did not have bona fide use in commerce when it filed its amendment to allege use. Trademark Act Section 45, 15 U.S.C. Section 1127, states in relevant part as follows: The term 'use in commerce' means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark. ... [A] mark shall be deemed to be in use in commerce ... on goods when ... 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. (emphasis added). Use in commerce contemplates "commercial use of the type common to the particular industry in question." Paramount Pictures Corp. v. White, 31 USPQ2d 1768, 1774 (TTAB 1994). Additionally, the legislative history of the Trademark Law Revision Act of 1988, Public Law 100-667, states that 5 The text of the Office action states that the Section 2(d) refusal was based on Registration No. 3261770. However, the analysis in that Office action is based on the mark and the goods identified in involved Registration No. 3548840, and the Office Action includes a copy of Registration No. 3548840 and not Registration No. 3261770. Thus, the Section 2(d) refusal is clearly based on Registration No. 3548840. Opposition No. 91194313; Cancellation Nos. 92051934 and 92052821 12 'the definition [of 'use in commerce'] should be interpreted with flexibility so as to encompass various genuine, but less traditional, trademark uses, such as those made in test markets, infrequent sales of large or expensive items, or ongoing shipments of a new drug to clinical investigators by a company awaiting FDA approval, and to preserve ownership rights in a mark if, absent an intent to abandon, use of a mark is interrupted due to special circumstances.' Automedx Inc. v. Artivent Corp., 95 USPQ2d 1976, 1981 (TTAB 2010) (quoting S. Rep. No. 100-515, p. 44-45 (September 15, 1988)). However, the practice of token use, i.e., reserving a mark through making a single shipment, was eliminated as a basis for registration by the Trademark Law Revision Act of 1988: The legislative history of The Trademark Law Revision Act reveals that the purpose of the amendment [to the definition of “use in commerce”] was to eliminate “token use” as a basis for registration, and that the new, stricter standard contemplates instead commercial use of the type common to the particular industry in question. Paramount Pictures Corp. v. White, supra at 1774. Plaintiff has met its initial burden of establishing that there is no genuine dispute that defendant has not used the mark except for a single shipment more than four years ago. Defendant did not respond to plaintiff's requests for admission and has therefore admitted that defendant "has not commercially sold any product using the RENEW mark since" November 17, 2007, (request for admissions nos. 2-4); that defendant "lacks the production facilities to commercially Opposition No. 91194313; Cancellation Nos. 92051934 and 92052821 13 manufacture a fertilizer product for sale under the RENEW mark" (request for admission no. 6); and that defendant "has no contracts for third party manufacture of a fertilizer product for sale under the RENEW mark" (request for admission no. 7).6 See Fed. R. Civ. P. 36(a)(3); TBMP Section 407.03(a) (3d ed. 2011). Defendant's arguments in its brief in response do not rebut plaintiff's initial showing. Rather, there is no dispute that defendant’s RENEW-branded goods are not now, nor have they ever been, available in the market, or that defendant’s claim that it has made bona fide use of its mark on the identified goods is based on a single shipment in late 2007 of one ten-pound container of the goods to a distributor for marketing evaluation. No sale or transportation of the goods in commerce is alleged before or since. As noted, the legislative history of the Trademark Law Revision Act cautions that we must consider the bona fides of the alleged use in the context of what is common in the relevant industry. In that regard, we note that there has been no allegation (and it does not appear to us) that, for instance, defendant’s goods are of rare or unusual use or expense, such that they might be sold only infrequently, or 6 Defendant did not file a motion to withdraw or amend its admissions. See Fed. R. Civ. P. 36(b); TBMP Section 525 (3d ed. 2011). Opposition No. 91194313; Cancellation Nos. 92051934 and 92052821 14 that they require or have been involved in prolonged testing. Indeed, defendant does not allege any fact or circumstance that would tend to establish that the non- commercial shipment of a single ten-pound container in four years is common in the soil amendment or fertilizer industries. In short, defendant’s response raises no factual dispute for trial on this issue. Based on the undisputed facts of record, we find that defendant's single shipment in commerce was clearly a token use of its mark. As such, there is no genuine dispute that such shipment was insufficient to constitute bona fide use of the RENEW mark in the ordinary course of trade at the time defendant filed its amendment to allege use (or at any time after). Automedx Inc. v. Artivent Corp., supra, cited by defendant in passing, is inapposite. In that case, Automedx had made actual arms-length sales to the military on two occasions of multiple prototype units of its medical ventilator, albeit for non-human use and prior to FDA approval of the device. After extensive testing by the military, these initial sales were followed by FDA approval and further commercial activity. Unlike Automedx, in the case at bar, defendant alleges only one non-commercial shipment of a small quantity of product to a distributor for evaluation, followed by four years of commercial inactivity. While test marketing can Opposition No. 91194313; Cancellation Nos. 92051934 and 92052821 15 under some circumstances satisfy the requirement for bona fide use in commerce, simply asserting after the fact that a shipment was “for marketing purposes” does not suffice. Defendant here has provided no further facts regarding this shipment, including whether it was ever evaluated, tested, or marketed, nor does defendant allege that any actual marketing took place in the succeeding years. While the precise boundaries of "use in commerce" following the Trademark Law Revision Act may not always be crystal clear, there is no doubt that the amendment to the Trademark Act was intended to eliminate the practice of token use, which often involved the shipment of small quantities of goods in commercially insignificant transactions, as a means of securing trademark rights. Based on the undisputed facts of record, we can see no other characterization for defendant’s use in this case. In defendant's answer in Cancellation No. 92051934 and its brief in response to the motion for summary judgment, defendant relies upon Trademark Rule 2.161(f)(2) as a basis for asserting that its lack of current use constitutes excusable nonuse.7 Answer, paragraphs 9, 21, 22, 31, and 45; brief in response at pp. 2-3. Such reliance is misplaced. Rule 2.161(f)(2) refers to a showing of 7 Any references in the parties' briefs to Trademark Rule 2.16(f)(2) are typographical errors. Opposition No. 91194313; Cancellation Nos. 92051934 and 92052821 16 excusable nonuse in an affidavit or declaration under Trademark Act Section 8, 15 U.S.C. Section 1058. That rule does not provide a means of obtaining a registration based on use in commerce without making bona fide use of the mark in the ordinary course of trade.8 See Trademark Act Section 45. Based on the foregoing, there is no genuine dispute that defendant did not have bona fide use of the RENEW mark in the ordinary course of trade and therefore did not have use of the mark in commerce when it filed its amendment to allege use. Accordingly, plaintiff's motion for summary judgment on the claim that defendant did not have bona fide use in commerce when it filed the amendment to allege use is granted. Decision Summary judgment in Opposition No. 91194313 is granted as conceded. Judgment is entered accordingly, and registration to defendant of application Serial No. 77793902 for the LAWNRENEW mark is refused. 8 Moreover, a party asserting excusable nonuse under Rule 2.161(f)(2) in a Section 8 affidavit or declaration must "set forth the date when use of the mark in commerce stopped and the approximate date when use is expected to resume; and recite facts to show that nonuse as to those goods or services is due to special circumstances that excuse the nonuse." Defendant has recited no facts and provided no evidence upon which to base an assertion of excusable nonuse. Opposition No. 91194313; Cancellation Nos. 92051934 and 92052821 17 Summary judgment is granted on the nonuse claim in Cancellation No. 92051934.9 Judgment is entered on the nonuse claim, and Registration No. 3548840 for the RENEW mark will remain cancelled.10 Proceedings in Cancellation No. 92052821 are resumed. Dates in that proceeding are reset as follows. Deadline for Discovery Conference 2/5/12 Discovery Opens 2/5/12 Initial Disclosures Due 3/6/12 Expert Disclosures Due 7/4/12 Discovery Closes 8/3/12 Plaintiff's Pretrial Disclosures 9/17/12 Plaintiff's 30-day Trial Period Ends 11/1/12 Defendant's Pretrial Disclosures 11/16/12 Defendant's 30-day Trial Period Ends 12/31/12 Plaintiff's Rebuttal Disclosures 1/15/13 Plaintiff's 15-day Rebuttal Period Ends 2/14/13 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.l25. 9 Accordingly, we need not decide the remaining claims in Cancellation No. 92051934. 10 The decisions in Opposition No. 91194313 and Cancellation No. 92051934 are final, and may be appealed to the Court of Appeals for the Federal Circuit or to a United States District Court with appropriate jurisdiction. See Trademark Act Section 21(a)(1), 21(b)(1); Trademark Rule 2.145; TBMP Section 901.01 (3d ed. 2011). Likewise, this consolidated proceeding is severed, and any further papers filed with respect to any of the proceedings should be filed in that proceeding only, and should be individually captioned. Opposition No. 91194313; Cancellation Nos. 92051934 and 92052821 18 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.l29. If either of the parties or their attorneys should have a change of address, the Board should be so informed promptly.