Spartan Brands, Inc.v.Lang Naturals, Inc.

Trademark Trial and Appeal Board

Mar 8, 2017

No. 92058212 (T.T.A.B. Mar. 8, 2017)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: March 8, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Lang Naturals, Inc.
v.
Spartan Brands, Inc.
________

Opposition No. 91217902
________

Spartan Brands, Inc.
v.
Lang Natural, Inc.
_________

Cancellation No. 92058212
_______

CONSOLIDATED PROCEEDINGS1

Ryan M. Kaiser of Amin Talati & Upadhye LLC for Lang Naturals, Inc.
Philip Y. Braginsky of Tarter Krinsky & Drogin LLP for Spartan Brands, Inc.
_______
Before Lykos, Shaw, and Pologeorgis, Administrative Trademark Judges.
Opinion by Shaw, Administrative Trademark Judge:

1 The proceedings were consolidated by order of the Board on November 18, 2014. In this
decision, citations refer to the record in Opposition No. 91217902, unless otherwise noted.
Opposition No. 91217902 and Cancellation No. 92058212
2
Spartan Brands, Inc. (“Applicant”) seeks registration of the mark ENERJUICE,
in standard characters, on the Principal Register for “vitamins and nutritional
supplements,” in International Class 5:2 Lang Naturals, Inc. (“Opposer”) opposes
registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), asserting
a likelihood of confusion with its previously used and registered mark ENERJUICE,
in typed form, registered on the Principal Register for “non-alcoholic beverage made
from fruits, vegetables and/or extracts,” in International Class 32,3 and also on the
ground that Applicant lacked a bona fide intent to use the ENERJUICE mark in
commerce at the time it filed its application. Applicant seeks cancellation of Opposer’s
pleaded ENERJUICE registration on the ground of abandonment. Both parties have
denied the salient allegations of the respective notice of opposition and petition for
cancellation.
I. The Record
The record includes the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), the file of the involved application and registration. Opposer
submitted the following evidence:
1. Opposer’s Notice of Reliance (Exhibit 1) on Opposer’s Trademark
Registration No. 1933359 as reflected in the status printout retrieved from the

2 Application Serial No. 86975396, filed on November 7, 2013, under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), based on a bona fide intent to use the mark in commerce.
3 Registration No. 1933359, issued November 7, 1995, renewed. Before November 2, 2003,
standard character marks were known as typed drawings. A typed mark is the legal
equivalent of a standard character mark. Trademark Manual of Examining Procedure
§ 807.03(i) (Jan. 2017).
Opposition No. 91217902 and Cancellation No. 92058212
3
USPTO Trademark Status Document and Retrieval (“TSDR”) database;4
2. Opposer’s Notice of Reliance (Exhibits 2-31) on third party registrations
purporting to show the relatedness of the goods at issue;5
3. Opposer’s Notice of Reliance (Exhibit 32) on Applicant’s application
Serial No. 86113127, the parent application to the application at issue;6
4. Opposer’s Notice of Reliance (Exhibit 33) on Applicant’s Initial
Disclosures;7
5. Opposer’s Notice of Reliance (Exhibit 34) on Applicant’s responses to
Opposer’s written Interrogatories;8
6. Opposer’s Notice of Reliance (Exhibits 35-224) on intent-to-use
applications filed by Applicant;9
7. Opposer’s Notice of Reliance (Exhibit 225) on Opposer’s Trademark
application Serial No 86370795;10 and
8. Opposer’s Notice of Reliance (Exhibit 226) on a TESS printout showing
the current status of the intent-to-use applications filed by Applicant.11

4 15 TTABVUE.
5 16 TTABVUE.
6 17 TTABVUE 7-98.
7 Id. at 99-102.
8 Id. at 103-114.
9 18 TTABVUE.
10 19 TTABVUE.
11 20 TTABVUE.
Opposition No. 91217902 and Cancellation No. 92058212
4
Applicant submitted the following evidence:
1. Applicant’s Notice of Reliance (Exhibit 1) on Opposer’s Initial Disclosures;12
and
2. Testimony deposition of David Lang, Opposer’s Founder and Chairman, with
exhibits, including Opposer’s responses to Applicant’s request for production of
documents and things.13
II. Cancellation of Registration No. 1933359
We begin with the cancellation proceeding inasmuch as Opposer’s rights in its
mark must be determined before we consider the merits of the opposition.
A. Applicant’s standing
Standing is a threshold issue that must be proven by the plaintiff in every inter
partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111
USPQ2d 1058, 1062 (Fed. Cir. 2014), cert. denied, 135 S. Ct. 1401 (2015). Our primary
reviewing court, the U.S. Court of Appeals for the Federal Circuit, has enunciated a
liberal threshold for determining standing, namely that a plaintiff must demonstrate
that it possesses a “real interest” in a proceeding beyond that of a mere intermeddler,
and “a reasonable basis for his belief of damage.” Empresa Cubana Del Tabaco 111
USPQ2d at 1062 (citing Ritchie v. Simpson, 170 F.3d 1902, 50 USPQ2d 1023, 1025-
26 (Fed. Cir. 1999)). A “real interest” is a “direct and personal stake” in the outcome
of the proceeding. Ritchie v. Simpson, 50 USPQ2d at 1026. Moreover, allegations in
support of standing which may be sufficient for pleading purposes must later be

12 25 TTABVUE.
13 30 TTABVUE.
Opposition No. 91217902 and Cancellation No. 92058212
5
affirmatively proved by the plaintiff at trial. Lipton Indus., Inc. v. Ralston Purina
Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982).
Applicant is the owner of Application Serial Nos. 86113127 and 86975396 for the
mark ENERJUICE for “dietary and nutritional supplemental drinks in the nature of
vitamin and mineral beverages” and “vitamins and nutritional supplements,”
respectively. Serial No. 86113127 has been refused registration based upon Opposer’s
Registration No. 1933359. Accordingly, Applicant has a real interest in the outcome
of this proceeding and has established its standing to seek cancellation of the
Registration. Lipton Indus., 213 USPQ at 189 (a cancellation petitioner may establish
its standing by proving that its pending application for registration has been refused
on the basis of the involved registration).
B. Abandonment
Section 14 of the Trademark Act, 15 U.S.C. § 1064, provides for the cancellation
of a registration if the registered mark has been abandoned. Under Section 45 of the
Trademark Act of 1946, 15 U.S.C. 1127, a mark shall be deemed abandoned:
(a) 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 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 the mark.
If a plaintiff can show three consecutive years of nonuse, it has established a
prima facie showing of abandonment, creating a rebuttable presumption that the
registrant has abandoned the mark without intent to resume use. The burden of
production then shifts to the respondent to produce evidence that it has either used
Opposition No. 91217902 and Cancellation No. 92058212
6
the mark or that its non-use “excusable.” The burden of persuasion remains with the
plaintiff to prove abandonment by a preponderance of the evidence. See Imperial
Tobacco Ltd. v. Philip Morris Inc., 899 F.2d 1575, 14 USPQ2d 1390, 1393 (Fed. Cir.
1990).
The record of the case before us is not extensive. To show Opposer’s non-use of the
mark, Applicant has made of record three pieces of evidence: Opposer’s initial
disclosures; the testimony deposition of David Lang, Opposer’s Founder and
Chairman; and Opposer’s responses to Applicant’s request for documents and things.
For the reasons we discuss below, we find that Applicant has failed to demonstrate
abandonment of Opposer’s mark by a preponderance of the evidence.
In its initial disclosures, Opposer identified, inter alia, seven employees
possessing knowledge concerning Opposer’s “use [of] and intent to use” the
ENERJUICE mark.14 Some employees, such as Lang, were identified as possessing
knowledge concerning only the “use [of] and intent to use” Opposer’s mark. Other
employees were identified as possessing the foregoing knowledge, as well as
possessing more specialized knowledge regarding “marketing and promotion,”
“formulation, development and production,” or “R&D.”15 Applicant only took the
testimony of David Lang, who admitted that his role was “mostly an oversight role”
and, although he was familiar with Opposer’s products, was “no longer in the deep
dive like I was.”16

14 25 TTABVUE.
15 Id.
16 Lang test., p. 6, 30 TTABVUE 6.
Opposition No. 91217902 and Cancellation No. 92058212
7
Testimony alone of a single, credible witness may be enough to establish use of a
mark. See Powermatics, Inc. v. Glebe Roofing Prods. Co., 341 F.2d 127, 144 USPQ
430, 432 (CCPA 1965) (oral testimony, even of a single witness, if “sufficiently
probative,” may be sufficient to prove priority); GAF Corp. v. Amatol Analytical
Servs., Inc., 192 USPQ 576, 577 (TTAB 1976) (“It is established that . . . use of a mark
may be established by the oral testimony of a single witness where such testimony is
clear, consistent, convincing, circumstantial and uncontradicted.”). We find Lang’s
testimony, which covers Opposer’s use of the ENERJUICE during the period from
2005 to 2016, to be credible. Lang’s testimony does not establish that Opposer stopped
using the ENERJUICE mark before 2013, however, the testimony does establish that
Opposer did not use the mark from 2013 to 2016:17
Q. Now, let me go back in time to around 2005. . . . Was Lang Naturals selling a
non-alcoholic beverage called Enerjuice at that time?
A. Yes.
* * *
Q. Let’s come forward a bit to 2013. Could you name for me the products on which
the Enerjuice trademark was used by Lang Naturals in 2013?
A. By 2013 we were not selling Enerjuice anymore in the year 2013.
* * *
Q. In 2012 was Lang Naturals selling a product under the Enerjuice mark?
A. I’m going to say that we may have for every other year than [up to] 2013.
* * *
Q. So let’s go forward now. In 2014 name the products that Lang Naturals used
the Enerjuice trademark on, if any.

17 Lang test., pp. 11-16, 30 TTABVUE 11-16.
Opposition No. 91217902 and Cancellation No. 92058212
8
A. Well, in 2013 you guys took this action so we were advised to not move forward
with our plans. So in 2014 there were no sales.
* * *
Q. So now we are 2015. Were there any products being marketed and sold . . .
under the Enerjuice trademark?
A. I don’t know if we started selling the current product in 2015 or 2016, the
product we have now, but I don’t believe so.
Q. And from that answer that you just gave, I assume that you have started
selling [an Enerjuice] product in 2016 --
A. Yes.
Based on Lang’s testimony, Applicant argues “Lang admits that it was not using
the ENERJUICE mark in connection with any products or services for a period of
more than three years prior to Spartan Brands filing its Petition to Cancel.”18 We find
no such admission in the testimony, i.e., that Opposer stopped using its mark as early
as September 2011, which is three years before the September 2014 filing date of
Applicant’s cancellation petition. At most, Lang’s testimony establishes that Opposer
discontinued use of the ENERJUICE mark for three years from 2013 through 2015.
This, prima facie, establishes a showing that Opposer abandoned use of the mark for
three consecutive years.
Opposer, however, argues it did not intend to abandon its mark and its non-use
from 2013 to 2016 is excusable: “Lang’s decision to put its ENERJUICE re-launch on
hold from November of 2013 through early 2016, when it eventually did relaunch the
ENERJUICE brand, was due to the uncertainty created by Applicant’s challenge to

18 Applicant’s Br., p. 10, 32 TTABVUE 11.
Opposition No. 91217902 and Cancellation No. 92058212
9
Opposer’s right to use and register that mark.”19 Lang testified Opposer was seeking
to reformulate its ENERJUICE product after ceasing production in 2013 but the
cancellation proceeding delayed the re-launch of the reformulated product:
Q. Why was the [ENERJUICE] product discontinued?
A. Fundamentally we were putting attention on a lot of other things. . . . We
decided we were not going to make that form of Enerjuice anymore. . . .
* * *
Q. And from that answer that you just gave, I assume that you have started
selling a product [under the Enerjuice trademark] in 2016 --
A. Yes. . . . We intended to sell that in 2014, but your action prevented us from
doing so.
Q. So the period from the time of the institution of the action, the cancellation
action you discontinued further efforts to sale; is that correct?
A. We were actively bringing the product to market at that time. We already had
the formula finished and everything, and we stopped at that time by the advice
of our attorney.20
We find Lang’s testimony establishes that Opposer did not intend to abandon use
of its ENERJUICE mark and rebuts Applicant’s prima facie showing of
abandonment. “[N]onuse of a mark pending the outcome of litigation to determine
the right to such use or pending the outcome of a party’s protest to such use
constitutes excusable nonuse sufficient to overcome any inference of abandonment.”
Penthouse Int’l, Ltd. v. Dyn Elecs., Inc., 196 USPQ 251, 257 (TTAB 1977). Moreover,
Opposer actively defended its right to its registration by litigating the cancellation
proceeding; began using the mark on a new ENERJUICE formulation in 2016, and,

19 Opposer’s Reply Br., p. 10, 33 TTABVUE 11.
20 Lang test., pp. 13-17, 30 TTABVUE 13-17.
Opposition No. 91217902 and Cancellation No. 92058212
10
in 2014, filed a trademark application in international Class 5 for its revised
formulation.21 These actions by Opposer further rebut Applicant’s prima facie
showing of abandonment.
Regarding the existence of documents supporting Opposer’s use of the
ENERJUICE mark, Opposer, in its response to Applicant’s request for production of
documents, objected to Applicant’s requests as irrelevant, overly broad, and unduly
burdensome. Opposer states it nevertheless provided Applicant with 141 documents
in response to the various requests.22 Applicant has not made of record any of
Opposer’s 141 documents.
Notwithstanding the fact that Applicant did not make of record any of Opposer’s
documents regarding use, Applicant also argues Opposer did not provide any
documentation of its sales of ENERJUICE products prior to 2013: “No documents
showing sales of an Enerjuice product from 2010 through 2013 were produced, and
the reason was as explained by Lang’s CEO, that they didn’t identify any sales of
Enerjuice.” But Applicant mischaracterizes Lang’s testimony and improperly seeks
to shift the burden of proof to Opposer. When asked about the existence of documents
regarding sales prior to 2013 not produced by Opposer, Lang stated only that such
documents might not identify ENERJUICE product sales by name, not, as Applicant
argues, that they “didn’t identify any sales of Enerjuice.” Lang testified:
Q. And let me make this assumption then. If you have not produced a record
showing sales in 2012, you don’t have any.

21 Serial No. 86370795, filed August 19, 2014. 19 TTABVUE.
22 30 TTABVUE 32-40.
Opposition No. 91217902 and Cancellation No. 92058212
11
A. No. But we may have had them, because they might have been just captured
under mail order. So we may have had sales but -- so we may have records that
represent Enerjuice sales, but they don’t have the name Enerjuice on them.23
We find Applicant has not submitted any evidence establishing that Opposer
ceased use of its mark prior to 2013. If Applicant wanted additional documents from
Opposer, it could have filed a motion to compel under Trademark Rule 2.120, 37
C.F.R. § 2.120. But Applicant did not do so. “If a party that served a request for
discovery receives a response thereto which it believes to be inadequate, but fails to
file a motion to challenge the sufficiency of the response, it may not thereafter be
heard to complain about the sufficiency thereof.” Trademark Trial and Appeal Board
Manual of Procedure § 523.04 (Jan. 2017). Having failed to seek any additional
documents showing no use by Opposer prior to 2013, Applicant may not now shift the
burden of production to Opposer.
We find Applicant has not carried its burden of demonstrating that Opposer
ceased use of its mark with the intent not to resume use thereof. In view thereof,
Applicant’s claim of abandonment is dismissed.
III. Opposition of Serial No. 86975396
We turn next to the opposition proceeding. Opposer alleges likelihood of confusion
and a lack of a bona fide intent by Applicant to use the mark.
A. Opposer’s standing and priority
Because Opposer’s pleaded Registration No. 1933359 is of record, valid and
subsisting, Opposer’s standing to oppose registration of Applicant’s mark is

23 Lang test., pp. 10-11, 30 TTABVUE 10-11.
Opposition No. 91217902 and Cancellation No. 92058212
12
established and its priority is not in issue as to the goods listed in the registration.24
Empresa Cubana Del Tabaco, 111 USPQ2d at 1058. Applicant argues Opposer lacks
standing because it abandoned its ENERJUICE mark but this argument fails in light
of the finding, supra, establishing that Opposer did not abandon its mark.
Accordingly, Opposer has standing to bring this opposition.
B. Likelihood of Confusion
Our determination of the issue of likelihood of confusion is based on an analysis
of all the probative facts in evidence relevant to the factors set forth in In re E. I. du
Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any
likelihood of confusion analysis, two key considerations are the similarities between
the goods and the similarities between the marks. See Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental
inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.”).
Applicant concedes the marks are confusingly similar:
Spartan Brands does not contest that the marks in
question, ENERJUICE and ENERJUICE are identical,
and that the goods are related, thus meeting the two
primary factors in the du Pont test to determine a
likelihood of confusion between the marks. In re E.I. du
Pont DeNemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563
(C.C.P.A. 1973).25

24 15 TTABVUE.
25 Applicant’s Br., p. 12, 32 TTABVUE 13.
Opposition No. 91217902 and Cancellation No. 92058212
13
In view of this concession, and in the absence of any evidence regarding the other du
Pont factors, we find there is a likelihood of confusion between Opposer’s and
Applicant’s ENERJUICE marks when used on the identified goods.
In view of the foregoing, we need not address Opposer’s claim that Applicant did
not have a bona fide intent to use the mark in commerce. See Venture Out Props. LLC.
v. Wynn Resorts Holdings LLC, 81 USPQ2d 1887, 1894 (TTAB 2007) (“In view of our
decision finding a likelihood of confusion, we need not reach the issue of dilution.”);
Interglo AG v. Abrams/Gentile Entm’t Inc., 63 USPQ2d 1862, 1864 (TTAB 2002)
(“Having found that there exists a likelihood of confusion, we elect to sustain the
opposition on this basis alone.”).
Decision: The petition to cancel is dismissed with prejudice. The Opposition is
sustained and registration of the mark is refused.