SNC Industria de Cosmetics Ltdav.Jalmar Araujo

Trademark Trial and Appeal Board

Jan 29, 2021

92072680 (T.T.A.B. Jan. 29, 2021)

MW
January 29, 2021

Cancellation No. 92072680

SNC Industria de Cosmetics Ltda

v.
Jalmar Araujo

Before Cataldo, Shaw, and Dunn,
Administrative Trademark Judges.

By the Board:

SNC Industria de Cosmetics Ltda (“Petitioner”) seeks cancellation of the
registration for the standard character mark KANECHOM for “hair care creams” in
International Class 3.1 In the petition for cancellation, Petitioner asserts the
following grounds for cancellation: (1) likelihood of confusion based on prior common
law use of the mark KANECHOM; (2) lack of use in commerce; (3) fraud based on
nonownership of the mark; and (4) misrepresentation of source. 1 TTABVUE. In his
answer to the petition, Jalmar Araujo (“Respondent”) denies the salient allegations
in the petition and asserts affirmative defenses, including abandonment of
Petitioner’s pleaded mark. 4 TTABVUE.

1 Registration No. 5661571 issued on January 22, 2019. The underlying application for
registration was filed on July 12, 2018.
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
General Email: TTABInfo@uspto.gov
THIS OPINION IS NOT A
PRECEDENT OF THE
TTAB
Cancellation No. 92072680

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This proceeding now comes up on Petitioner’s motion, filed August 25, 2020, for
partial summary judgment on the likelihood of confusion claim. The motion is fully
briefed. The Board also notes Respondent’s request for reconsideration (filed October,
2020) of the Board’s October 6, 2020 order denying his contested motion for a 60 day
extension of the discovery period.2
I. The Parties’ Arguments and Evidence3
A. Petitioner’s Arguments and Evidence
In support of its motion for summary judgment, Petitioner has submitted, among
other items, the Declaration of Ayorton Ricardo Vargas, Director of Petitioner, and
exhibits attached thereto.4 Mr. Vargas attests that Petitioner, a company organized
in Brazil, has used the mark KANECHOM in United States commerce in connection
with hair care creams since at least as early as December 5, 2005.5 Mr. Vargas states
that the goods are sold to customers and distributors in the U.S. and online through
Amazon.com.6

2 In the October 6, 2020 order, the Board granted Respondent’s contested motion (filed June
12, 2020) to extend the discovery period to the extent the discovery deadline was extended by
30 days. 10 TTABVUE 3. The Board, however, denied Respondent’s motion for a 60 day
extension of the discovery period for failure to provide detailed facts showing good cause for
the requested extension. We do not construe Respondent’s request for reconsideration as a
motion for discovery under Fed. R. Civ. P. 56(d) because, among other reasons, the motion
was not filed within thirty days of the date of service of the summary judgment motion. See
Trademark Rule 2.127(e)(1), 37 C.F.R. § 2.127(e)(1).
3 The Board has considered the arguments and evidence submitted in connection with the
motion, but does not repeat or discuss all of the arguments and submissions, and does not
address irrelevant arguments. Guess? IP Holder L.P. v. Knowluxe LLC, 116 USPQ2d 2018,
2019 (TTAB 2015).
4 8 TTABVUE 20-93.
5 Vargas Declaration at ¶ 7, 8 TTABVUE 21.
6 Id. at ¶¶ 8, 10, 8 TTABVUE 21.
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The exhibits introduced by Mr. Vargas include: (i) sales invoices for products sold
to Petitioner’s U.S. customers and distributors between 2005 and 2007;7 (ii) bills of
lading with “Registry Export (RE) summary … documenting the export and sale of
KANECHOM products” to Panamerican Foods Corp. between 2013 and 2016;8 (iii)
copies of screenshots from Petitioner’s website advertising KANECHOM hair and
body care products;9 (iv) and Respondent’s responses to Petitioner’s first set of
interrogatories and requests for admission.10
Petitioner argues that there is no genuine dispute that the subject mark is
identical in sound, appearance, and commercial impression to Petitioner’s pleaded
mark, and that both parties use the marks on the same type of hair care products. Id.
at 13-14. Petitioner also argues that because both parties sell their products to U.S.
consumers through online retailers such as Amazon, the parties’ channels of trade
are similar. Id. at 14.

7 Exhibits S-1 and S-2 to Vargas Declaration, 8 TTABVUE 25-34. We note that the mark at
the top of the invoices is spelled “KANECHOMN.”
8 Vargas Declaration at ¶ 8 and attached Exhibit S-3, 8 TTABVUE 39-45.
9 Exhibit S-4, 8 TTABVUE 50-59. We also note that the web page screenshots are not self-
authenticating because they do not include the date the materials were accessed and their
source (URL). See Trademark Rule 2.122(e), 37 C.F.R. § 2.122(e). In addition, the materials
have not been authenticated by an affidavit or declaration of a person who can properly
identify the nature, source and date of the materials. See TRADEMARK TRIAL AND APPEAL
BOARD MANUAL OF PROCEDURE (TBMP) § 528.05(e) (2020). However, because Respondent
has not objected to the evidence on the basis that it cannot be admissible at trial, we have
considered the evidence for the limited probative value of what is shown on the face of the
materials. See Fed. R. Civ. P. 56(c)(2) (Advisory Committee notes) (2010 amendment)
(allowing a court to consider unauthenticated documents on summary judgment); see also
Akers v. Beal Bank, 845 F. Supp. 2d 238, 243 (D.D.C. 2012).
10 8 TTABVUE 131-49.
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With respect to priority, Petitioner argues that in view of its evidence of use and
Respondent’s admission that he did not use the subject mark prior to 2016,11 there is
no genuine dispute that Petitioner has priority of use of the mark KANECHOM. 8
TTABVUE 10-11.
In addition, Petitioner argues that Respondent cannot establish that he is the
prior user of the KANECHOM mark because he is “merely reselling products
manufactured and owned by Petitioner.” Id. at 11. According to Respondent’s
responses to Petitioner’s interrogatories, Respondent purchases its products through
Panamerican Foods, one of Petitioner’s distributors.12 As further support, Petitioner
submitted the declaration of Michelle Calheiros, managing member of Lunaria LLC,
Petitioner’s current North American distributor and retailer, who attests that she
purchased a KANECHOM branded product from Respondent’s Amazon account and
received a unit of Petitioner’s product that contained Petitioner’s name on one of its
old labels.13
B. Respondent’s Arguments
In response to the motion, Respondent argues that there is a material dispute of
fact as to the similarity or dissimilarity of the marks because Respondent has not
received any discovery responses from Petitioner and, thus, “it remains to be seen
how the Petitioner uses it marks in US commerce, if at all.” 9 TTABVUE 8. With

11 Respondent’s responses to Petitioner’s Requests for Admission Nos. 35, 37, 46, and 51, 8
TTABVUE 147-48.
12 See Respondent’s Responses to Petitioner’s First Set of Interrogatories Nos. 4, 5, 29 and 30.
8 TTABVUE 133, 37-38.
13 Calheiros Declaration at ¶¶ 1-13, 8 TTABVUE 95-97.
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respect to the similarity of the parties’ goods, Respondent argues that because he has
received no evidence from Petitioner showing that it uses its mark in commerce in
connection with hair care cream or any other hair care preparations, “it has not been
established what goods and services Petitioner provides.” Id. at 9.
Respondent proposes similar arguments regarding additional factors in the
likelihood of confusion analysis. In essence, Respondent contends that without
Petitioner’s responses to Respondent’s discovery requests, genuine disputes of
material fact remain regarding the similarity or dissimilarity of the channels of trade,
sophistication of the purchasers, the number and nature of similar marks in use on
similar goods, and “whether Petitioner has used its mark in commerce as early as
claimed, if at all.” Id. at 9-12.14
With respect to Petitioner’s claim that Respondent is merely a reseller of
Petitioner’s goods, Respondent argues that “[e]ven if it is assumed that the Registrant
does not manufacture the products itself, this does not mean that Registrant has not
used the marks within the meaning of the Lanham Act … Registrant still exercises
control over the nature and quality of the goods bearing Registrant’s Mark, thus
allowing Registrant to acquire a right of ownership to a trademark.” Id. at 13.15

14 Respondent also argues that the motion should be denied because disputes of material fact
exist regarding Respondent’s own use of the mark in commerce. 9 TTABVUE 13. Because
Petitioner does not seek summary judgment on the nonuse claim, these arguments are not
relevant to the instant motion.
15 Respondent has not submitted any evidence to support his statement that he exercises
control over the nature and quality of the goods. In fact, the only materials submitted with
Respondent’s brief in response to the motion are Respondent’s own responses to Petitioner’s
discovery requests, which were already submitted into the record by Petitioner, and
communications between the parties regarding discovery. 9 TTABVUE 16-63.
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II. Summary Judgment Standard
Summary judgment is an appropriate method of disposing of cases in which there
are no genuine disputes as to any material facts and the moving party is entitled to
judgment as a matter of law. Fed. R. Civ. P. 56(a). In reviewing a motion for summary
judgment, the evidentiary record must be viewed in the light most favorable to the
non-moving party and all justifiable inferences to be drawn from the undisputed facts
must be drawn in favor of the non-moving party. See Lloyd’s Food Prods. Inc. v. Eli’s
Inc., 987 F.2d 766, 25 USPQ2d 2027, 2029-30 (Fed. Cir. 1993); Olde Tyme Foods Inc.
v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542, 1546 (Fed. Cir. 1992). We may not
resolve disputes of material fact; we may only ascertain whether a genuine dispute
regarding a material fact exists. See Lloyd’s Food Prods., 25 USPQ2d at 2029; Olde
Tyme Foods, 22 USPQ2d at 1544.
The party moving for summary judgment has the burden of demonstrating that a
particular fact cannot be disputed by citing to particular parts of materials in the
record, including affidavits or declarations, admissions or interrogatory answers; or
showing that the cited materials do not establish the absence or presence of a genuine
dispute, or that the adverse party cannot produce admissible evidence to support the
fact. Fed. R. Civ. P. 56(c)(1). See generally Celotex Corp. v. Catrett, 477 U.S. 317, 323
(1986). This burden may be met by showing “that there is an absence of evidence to
support the nonmoving party’s case.” Id. at 323-24. If the moving party carries its
burden, the nonmoving party may not rest on mere allegations, but must designate
specific portions of the record or produce additional evidence showing the existence
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of a genuine dispute of material fact for trial. See Venture Out Props. LLC v. Wynn
Resort Holdings LLC, 81 USPQ2d 1887, 1890 (TTAB 2007); see also Fed. R. Civ. P.
56(c)(1).
III. Analysis
A. Petitioner’s Entitlement to a Statutory Cause of Action
Entitlement to a statutory cause of action is a threshold issue in every inter partes
proceeding. Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d
1370, 2020 USPQ2d 10837 at *3 (Fed. Cir. 2020) (citing Lexmark Int’l, Inc. v. Static
Control Components, Inc., 572 U.S. 118, 125-26 (2014)). To establish entitlement to a
statutory cause of action under Sections 13 and 14 of the Trademark Act, 15 U.S.C.
§§ 1063 and 1064, a plaintiff must demonstrate that cancellation of the registration
is within the zone of interests protected by the statute and that plaintiff has a
reasonable belief of damage proximately caused by continued registration of the
mark. Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 2020 USPQ2d 11277 at *6-7
(Fed. Cir. 2020); see also Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d
1270, 111 USPQ2d 1058 (Fed. Cir. 2014); Coach Servs., Inc. v. Triumph Learning
LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1727 (Fed. Cir. 2012).16
Petitioner has established the absence of a genuine dispute as to its entitlement
to a cause of action through the declaration, and related exhibits, of Mr. Vargas who

16 Board decisions have previously analyzed the requirements of Sections 13 and 14 of the
Trademark Act, 15 U.S.C. §§ 1063-64, under the rubric of “standing.” Despite the change in
nomenclature, our prior decisions and those of the Court of Appeals for the Federal Circuit
interpreting Sections 13 and 14 remain applicable. See Spanishtown Enters., Inc. v.
Transcend Res., Inc., 2020 USPQ2d 11388 at *2 (TTAB 2020)
Cancellation No. 92072680

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attests that Petitioner has sold and continues to sell hair care cream under the mark
KANECHOM in the United States and that Respondent’s registered mark is likely to
cause confusion. See First Niagara Ins. Brokers Inc. v. First Niagara Fin. Grp. Inc.,
476 F.3d 867, 81 USPQ2d 1375, 1378 (Fed. Cir. 2007) (intrastate use by foreign
opposer sufficient for standing); Double Coin Holdings Ltd. v. Tru Dev., 2019 USPQ2d
377409, at *4 (TTAB 2019) (standing established by testimony with exhibits of use of
confusingly similar mark). In addition, Mr. Vargas’ testimony that its U.S.
distributor’s account through Amazon was suspended “due to multiple claims and
complaints of infringement and counterfeiting filed by Registrant,” along with the
supporting exhibits,17 establish that Petitioner has a reasonable basis for its belief
that it is being damaged by the registration and that the belief in damage is
proximately caused by Respondent’s registration. Accordingly, there is no genuine
dispute that Petitioner has established its entitlement to a statutory cause of action,
i.e., to bring this cancellation.
B. Likelihood of Confusion
Petitioner is entitled to summary judgment if it shows “that there is no genuine
dispute as to any material fact” as to its claim of likelihood of confusion under
Trademark Act Section 2(d), 15 U.S.C. § 1052(d). Fed. R. Civ. P. 56(a). Consideration
of likelihood of confusion in the context of summary judgment is based on an analysis
of all of the undisputed facts in evidence that are relevant to the thirteen evidentiary
factors set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ

17 Vargas Declaration at ¶¶ 23, 24 and Exhibit S-8, 8 TTABVUE 70-79.
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563, 567 (CCPA 1973) (“DuPont”). Any of the DuPont factors “may from case to case
play a dominant role.” Id. Not all of the DuPont factors are relevant in every case and
only those factors for which there is evidence in the record must be considered. Cai v.
Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018).
Therefore, we look to whether there are genuine disputes with respect to any of the
DuPont factors which would be material to a decision on the merits.18
Here, the declaration testimony of Petitioner’s witnesses and corresponding
exhibits showing use of Petitioner’s mark on and in connection with the goods
demonstrate Petitioner’s common law use of the mark KANECHOM in connection
with hair care creams and other hair care products. Thus, we find that that Petitioner
has carried its burden to establish that there is no genuine dispute that its pleaded
mark is identical to the subject mark in sight, sound, and commercial impression and
that the marks are used on or in connection with the same type of goods, namely, hair
care creams.19
With respect to the channels of trade, because there is no limitation in the involved
registration to the channels of trade or class of purchasers, Respondent’s goods are
presumed to travel in all normal channels of trade and to all prospective purchasers

18 To the extent there are other relevant factors, in the absence of any evidence, we treat them
as neutral. Lebanon Seaboard Corp. v. R&R Turf Supply Inc., 101 USPQ2d 1826, 1831 (TTAB
2012) (treating certain DuPont factors as neutral when no evidence provided by the parties).
19 Because the subject mark is presented in standard characters, the mark is not limited to
any particular depiction of the mark. Cf. Cunningham v. Laser Golf Corp., 222 F.3d 943, 950,
55 USPQ2d 1842, 1847 (Fed. Cir. 2000) (“Registrations with typed drawings are not limited
to any particular rendition of the mark and, in particular, are not limited to the mark as it is
used in commerce.”).
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for the relevant goods. Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356,
101 USPQ2d 1713, 1722 (Fed. Cir. 2012); see also Packard Press, Inc. v. Hewlett-
Packard Co., 227 F.3d 1352, 1357 (Fed. Cir. 2000) (“When the registration does not
contain limitations describing a particular channel of trade or class of customer, the
goods or services are assumed to travel in all normal channels of trade.”). In addition,
Petitioner’s witnesses attest that both parties’ products are sold through online
retailer Amazon.com.20 In view of the foregoing, we find that there is no genuine
dispute that the parties’ goods travel in the same channels of trade and are sold to
the same class of purchaser.
Turning to the issue of priority, Petitioner must show that there is no genuine
dispute that it has established priority through prior common law use of its mark in
the United States as a trademark, or prior use analogous to trademark use. See
Giersch v. Scripps Networks Inc., 90 USPQ2d 1020, 1023 (TTAB 2009) (in absence of
a pleaded registration, petitioner must show prior common law use); see also T.A.B.
Sys. v. PacTel Teletrac, 77 F.3d 1372, 37 USPQ2d 1879, 1881 (Fed. Cir. 1996). Oral
testimony of a witness may be sufficient to prove first use of a party’s mark when it
is based on personal knowledge of the facts and the testimony is clear, convincing,
and has not been contradicted. See Kohler Co. v. Baldwin Hardware Corp., 82
USPQ2d 1100, 1108 (TTAB 2007) (oral testimony, if “sufficiently probative,” may be
sufficient to prove priority); Nat’l Blank Book Co. v. Leather Crafted Prods., Inc., 218

20 See Vargas Declaration at ¶ 23 and Exhibit S-8, 8 TTABVUE 70-79; Declaration of Michelle
Calheiros at ¶¶ 8-13, 8 TTABVUE 96-97.
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USPQ 827, 828 (TTAB 1983); Liqwacon Corp. v. Browning-Ferris Indus., Inc., 203
USPQ 305, 316 (TTAB 1979) (oral testimony may be sufficient to establish both prior
use and continuous use when the testimony is proffered by a witness with knowledge
of the facts and the testimony is clear, convincing, consistent, and sufficiently
circumstantial to convince the Board of its probative value).
In his declaration, Mr. Vargas identifies his duties as Director of Petitioner and
attests to his personal knowledge of the facts therein. He attests that Petitioner has
used the mark KANECHOM for hair care cream in U.S. commerce “since at least as
early as December 5, 2005”; he specifically identifies several of Petitioner’s customers
and distributors; and he describes and explains the materials submitted in connection
with the declaration.21 The declaration testimony of Mr. Vargas is clear, convincing,
and has not been contradicted by Respondent. Taken in combination with the
supporting materials, we find Petitioner’s testimony sufficient to establish use of its
mark in commerce prior to the filing date of the Respondent’s underlying application
for registration which, in the absence of actual evidence of use, is the earliest date
upon which Respondent may rely. See, e.g., Liqwacon Corp., 203 USPQ at 316 (Board
finding witness testimony clear and convincing and probity of documents dependent
on the testimony). See also Media Online Inc. v. El Clasificado Inc., 88 USPQ2d 1285,
1288 (TTAB 2008) (respondent may rely on filing date of registration at issue as
constructive date of first use).22

21 Vargas Declaration at ¶¶ 7-8.
22 We note that Petitioner’s documentary exhibits alone are insufficient to establish prior use
in commerce. Petitioner’s sales invoices display the mark KANECHOMN, as opposed to its
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In view of the foregoing and viewing all evidence in the light most favorable to
Respondent as the non-moving party, we find that Petitioner, as the party moving for
summary judgment, has carried its burden of demonstrating that there are no
genuine disputes of material fact regarding its priority of use and likelihood of
confusion.
Accordingly, the burden of production shifts to Respondent to demonstrate that a
genuine dispute exists for trial. See Celotex Corp. v. Catrett, 477 U.S. at 331 (Brennan,
J., dissenting). Respondent, as the non-moving party, must produce countering
evidence, as provided in Fed. R. Civ. P. 56(c)(1), showing that there is a factual
dispute for trial regarding any of the DuPont factors relevant to this case. See
Enbridge, Inc. v. Excelerate Energy L.P., 92 USPQ2d 1537, 1540 (TTAB 2009)
(nonmovant must proffer countering evidence to show existence of genuine factual
dispute for trial).
Despite Respondent’s statement that he “possesses evidence demonstrating that
the marks in question are not likely to cause confusion,” 9 TTABVUE 8, Respondent
has failed to produce any evidence in response to the motion for summary judgment
that would, at a minimum, challenge the sufficiency of the evidence submitted in
connection with Petitioner’s motion or raise a genuine dispute of material fact
regarding the likelihood of confusion claim. Respondent merely asserts that genuine

pleaded mark KANECHOM. In addition, while some of the Registry Export summaries show
Petitioner’s pleaded mark, the summaries have little probative value because they are in a
non-English language and Petitioner did not submit English translations of the documents.
See Swiss Watch Int’l, Inc. v. Fed’n of the Swiss Watch Indus., 101 USPQ2d 1731, 1734 n.8
(TTAB 2012); see also TBMP § 104 (If a translation of a non-English submission is not filed
with submission, the Board may not consider the submission).
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disputes of material fact remain because he has not received responses to his
discovery requests.
To the extent Respondent believed that he could not effectively oppose Petitioner’s
motion without first taking discovery, it was incumbent on Respondent to file a
motion for additional discovery under Fed. R. Civ. P. 56(d) in response to Petitioner’s
motion. In Adickes v. S. H. Kress & Co., the Supreme Court described the failure to
proffer any evidence countering a motion for summary judgment or file an affidavit
under Rule 56(d) as “perilous for the opposing party.” 398 U.S. 144, 161 (1970)
(quoting 6 J. MOORE, FEDERAL PRACTICE 56.22(2) pp. 2824-25 (2d ed. 1966)). A motion
for discovery must be supported by an affidavit or declaration showing that the
nonmoving party cannot, for reasons stated therein, present facts essential to justify
its opposition to the motion. See Fed. R. Civ. P. 56(d); TBMP § 528.06 (2020). The
affidavit or declaration must identify the specific facts that discovery would reveal,
and explain why those facts would preclude summary judgment. Keebler Co. v.
Murray Bakery Prods., 866 F.2d 1386, 9 USPQ2d 1736, 1739 (Fed. Cir. 1989) (“[T]he
Rule requires that each request for discovery be adequately supported by a showing
of need”).
Here, Respondent’s response to the motion is not supported by an affidavit or
declaration and Respondent has failed to identify any specific facts that discovery
would uncover that would preclude summary judgment. Thus, the Board cannot
construe the response as a motion for discovery under Rule 56(d). See Sweats
Fashions Inc. v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793, 1799 (Fed. Cir.
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1987) (mere assertion in brief that discovery is necessary is insufficient); see, e.g.,
Nature’s Way Prods. Inc. v. Nature’s Herbs Inc., 9 USPQ2d 2077, 2081 (TTAB 1989)
(Rule 56(f) motion, to the extent it could be construed as such, was not supported by
required affidavit); see also J.I. Case Co. v. F.L. Indus., Inc., 229 USPQ 697, 701
(TTAB 1986) (statement by applicant of need to take discovery on validity of
assignment was unsupported speculation); see also TBMP § 528.06 (a request for
discovery filed in combination with a response on the merits of the summary
judgment motion will ordinarily be deemed moot).
IV. Decision
In view of the foregoing, we find that, based on the record herein, no genuine
disputes of material fact remain for trial regarding Petitioner’s likelihood of confusion
claim. Accordingly, Petitioner’s motion for partial summary judgment on the claim of
likelihood of confusion is GRANTED. Summary judgment is entered on the claim
and Registration No. 5661571 will be cancelled in due course.
Respondent’s request for reconsideration of the Board’s October 10, 2020 order is,
therefore, moot.