SmithKline Beecham Corporationv.Jarrow Formulas, Inc.

Trademark Trial and Appeal Board

Jul 16, 2007

No. 91156416 (T.T.A.B. Jul. 16, 2007)

Skoro Mailed: July 16, 2007

Opposition Nos. 91156416
91158025

SmithKline Beecham Corporation

v.

Jarrow Formulas, Inc.

Before Hohein, Holtzman, and Kuhlke,
Administrative Trademark Judges.

By the Board:

This case now comes up on opposer’s motion, filed
August 18, 2006,1 for partial summary judgment in its favor
on the counterclaim for cancellation of opposer’s pleaded
registrations.
By way of background, opposer, SmithKline Beecham
Corporation (hereinafter “SKB”) owns Reg. Nos. 1783808 and
1807004,2 issued on the Principal Register for the marks
CALCITUMS and CALCITUMS and Design for, in each instance, an
“antacid preparation” in Class 5.

1 The delay in addressing this motion was the result of the
granting of a motion for a 56(f) deposition by applicant.

2 Reg. No. 1783808 issued on July 27, 1993 and was renewed on
November 7, 2003. Reg. No. 1807004 issued on November 30, 1993
and was renewed on January 24, 2004.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS OPINION IS NOT
PRECEDENT OF THE
TTAB
Opposition Nos. 91156416 & 91158025
2
On March 8, 2004, applicant, Jarrow Formulas, Inc.
(hereinafter “Jarrow”), answered the notice of opposition
and filed a counterclaim3 to cancel SKB’s pleaded
registrations claiming SKB has abandoned the marks.
SKB in its answer denied all of the salient allegations
of the counterclaim.
In support of its motion for summary judgment on the
counterclaim, SKB has provided the declaration of Mark Prus,
Director of Marketing for Gastrointestinal, Calcium and
Dermatological Products for SKB, together with various
exhibits. The exhibits are representative examples of use
of the registered marks in various promotions,
advertisements, coupons, and in-store displays. Further,
Mr. Prus’ declaration states that use of each of the marks
has “never, since its introduction into the market in 1992,
been discontinued.”. (Decl. at ¶ 6).
Jarrow, in response, contends that SKB has “failed to
use CALCITUMS on its antacid preparations, on the bottles
containing its antacid preparations, on the tags or labels
affixed to the bottles, or on any associated point of
purchase displays for at least the past three years”. (Br.

3 Applicant originally filed two counterclaims against SKB. The
first was for claimed priority of use as to a likelihood of
confusion, and the second was the abandonment claim now before
us. On June 3, 2004, the priority/likelihood of confusion claim
was stricken as not a valid ground for cancellation under 15
U.S.C. § 1114, having been filed more than five years after
registration and the marks were incontestable.
Opposition Nos. 91156416 & 91158025
3
at 1). Jarrow further contends that “SKB does not intend to
use CALCITUMS as a trademark, but rather only intends to use
it sporadically to advertise that its TUMS products contain
calcium.” (Br. at 1). In support of these arguments,
Jarrow submitted Mr. Prus’ 30(b)(6) deposition and exhibits
thereto.
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. Fed. R. Civ. P. 56(c). The party moving for
summary judgment has the initial 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). The evidence of record and
any inferences, which may be drawn from the underlying
undisputed facts, must be viewed in the light most favorable
to the nonmoving party. See Olde Tyme Foods Inc. v.
Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir.
1992). In considering the propriety of summary judgment,
the Board may not resolve issues of material fact against
the non-moving party; it may only ascertain whether such
issues are present. See Opryland USA, Inc. v. Great
American Music Show, Inc., 970 F.2d 847, 23 USPQ2d 1471
(Fed. Cir. 1993); and Lloyd’s Food Products Inc. v. Eli’s
Inc., 987 F.2d 766, 25 USPQ2d 2027 (Fed. Cir. 1993).
Opposition Nos. 91156416 & 91158025
4
Section 45 of the Trademark Act, 15 U.S.C. § 1127,
defines abandonment of a mark as being when the use of a
mark “has been discontinued with intent not to resume such
use. Intent not to resume may be inferred from
circumstances. Nonuse for three consecutive years shall be
prima facie evidence of abandonment” 15 U.S.C. § 1127(1).
“Use” is defined as “use of a mark in the ordinary course of
trade” and a mark is deemed to be in use on the goods when
“it is placed in any manner on the goods or their containers
or the displays associated therewith …” 15 U.S.C. § 1127
(emphasis added).
In this case, SKB has moved for summary judgment on the
ground that it has not abandoned its marks and that it has
no intention to do so. In support of its motion, SKB
submitted the declaration of Mr. Prus, with exhibits; its
responses to Jarrow’s interrogatories; and the specimens in
support of its renewal applications, which were accepted by
the Office.4
In response, Jarrow also submitted the testimony of Mr.
Prus, together with exhibits, through its 30(b)(6)
deposition.5 Jarrow’s challenge is to SKB’s use of the

4 Reg. No. 1783808 was renewed on November 7, 2003, and Reg. No.
1807004 was renewed on January 24, 2004. The same specimen was
submitted for each renewal application.

5 Exhibits to Mr. Prus’ testimony include use of the marks on
packaging in the form of stickers (used in 1999 and 2000); on
displays associated with the goods (2004); coupons for the goods
Opposition Nos. 91156416 & 91158025
5
marks, contending it has not made technical trademark use in
connection with the goods6 (App.’s Br. 2); that the displays
do not bear the marks prominently or associate them with the
goods (id. at 2-3); and thus, according to Jarrow, “SKB has
failed for at least the past three years to use CALCITUMS on
its antacid preparations, on the bottles, on the tags or
labels affixed to the bottles, or on any associated point of
purchase displays” (id. at 3).7 Jarrow states, however,
that “SKB has for at least three years intentionally
deemphasized the use of CALCITUMS and Design and only
sporadically used it to advertise that its TUMS products
contain calcium”8 (emphasis added) (id.).
Jarrow’s attack on the subject registrations is
premised on abandonment in that the marks as used by SKB are

(2003-2005); pamphlets distributed with samples (2003-2005); and
use of the marks on its website (2000-present).

6 SKB provided copies of stickers that were applied to the caps
of the antacid preparations from 1999-2000. The parties agree
that this was good, technical trademark use. (Ex. A to Prus
dec., Bates No. OPP-00093).

7 To the extent Jarrow may be alleging no valid trademark use as
a claim separate from abandonment, such a claim is not available
after five years. See 15 U.S.C. § 1064.

8 Jarrow also states at p. 6: “SKB has used CALCITUMS
sporadically and only in advertising material that is
unacceptable to support trademark use. Further, CALCITUMS has
been used only to advertise the fact that ‘TUMS contains
calcium’”. (Br. at 10). Thus, according to Jarrow, it has
established a prima facie case of abandonment and SKB is unable
to rebut the presumption because “SKB does not intend to use
CALCITUMS as a trademark, but rather intends to use it only
sporadically to advertise that TUMS contains calcium.” (id. at
12).

Opposition Nos. 91156416 & 91158025
6
not and have not been used as trademarks. However, a review
of the exhibits shows use of “off-shelf displays” associated
with the goods which demonstrates technical trademark use of
the marks under 15 U.S.C. § 1127.9 Further, because there
is no question as to perception of the marks as trademarks
by the public,10 there can be no inference of abandonment.
Jarrow admits that SKB uses the marks on displays associated
with the goods, but then contends such use is only sporadic.
(Br. at 6). SKB has established, however, that the marks
have been used continuously, and the display is an example
of use during the registration period. See also In re Dell
Inc., 71 USPQ2d 1725, 1727 (TTAB 2004) (a website page which
displays a product, and provides a means of ordering the
product, can constitute a “display associated with the
goods”).
As the moving party, the burden is on SKB to show the
absence of any genuine issue of material fact as to the
abandonment of its marks, which it has done. In response,
applicant has not raised a genuine issue of material fact to
overcome SKB’s evidence of continuous technical trademark

9 See also Mr. Prus’ 30(b)(6) testimony at p.18, lines 9-10:
“This off-shelf display would have been used in store to generate
sales of TUMS …”

10 Jarrow’s argument that the marks are secondary to SKB’s TUMS
mark and conveys information that the product contains calcium
does not establish abandonment. There is no restriction that an
owner of a mark can only use one trademark on or in connection
with a product.
Opposition Nos. 91156416 & 91158025
7
use and therefore SKB is entitled to summary judgment as a
matter of law. Fed. R. Civ. P. 56(c).
Accordingly, because the Board finds that there is no
genuine issue as to any fact that would be material to the
issue of abandonment, and because SKB is entitled to
judgment on this issue as a matter of law, SKB’s motion for
summary judgment on the counterclaims is granted. The
counterclaims as to abandonment are hereby dismissed with
prejudice.
Proceedings are hereby resumed, and trial dates are
reset as indicated below.

DISCOVERY PERIOD TO CLOSE: August 31, 2007

30-day testimony period for party November 29, 2007
in position of plaintiff to close:

30-day testimony period for party January 28, 2008
in position of defendant to close:

15-day rebuttal testimony period to close: March 13, 2008

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.
Opposition Nos. 91156416 & 91158025
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