Standard Homeopathic Co.v.MinTech, Inc.

Trademark Trial and Appeal Board

May 4, 2015

No. 91209168 (T.T.A.B. May. 4, 2015)

BUO
Mailed: May 4, 2015

Opposition No. 91209168
Standard Homeopathic Co.
v.
MinTech, Inc.

Before Quinn, Ritchie and Masiello, Administrative Trademark Judges.

By the Board:

Background

MinTech, Inc. (“Applicant”) seeks to register the mark CALM, in standard
character format, for “neutraceuticals, namely, vitamin and mineral supplement
enhanced drinks; nutritional beverages, namely, vitamin and mineral supplement
enhanced drinks; dietary supplemental drinks in the nature of vitamin and mineral
beverages,” in International Class 5.1
On May 23, 2014, Standard Homeopathic Co. (“Opposer”) filed its amended
notice of opposition2 pleading ownership of three registrations for the marks: 1)

1 Application Serial No. 85377740 (“the ’740 application”), filed July 21, 2011, based on
Applicant’s bona fide intent to use the mark in commerce under Trademark Act Section
1(b), 15 U.S.C. § 1051(b).
2 Opposer’s motion for leave to amend the original notice was granted by the Board’s
September 19, 2014 order. 27 TTABVUE 3. The amended notice of opposition, filed after
the close of discovery and prior to the opening of Opposer’s testimony period, was amended
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 OPINION IS NOT A
PRECEDENT OF THE
TTAB
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CALMS, in standard characters, for “medication for the temporary symptomatic
treatment and relief of simple nervous tension and insomnia,” in International
Class 5;3 2) CALMS FORTÉ for “medication for the temporary symptomatic
treatment and relief of simple nervous tension and insomnia,” in International
Class 5;4 and 3) CALMS FORTÉ 4 KIDS for “[h]omeopathic medication for
symptomatic relief of restlessness, sleeplessness, night terrors, growing pains,
causeless crying, and sleeplessness from travel,” in International Class 5.5,6 17

based upon Applicant’s responses to certain discovery requests from Opposer, to add a
claim that Applicant lacked a bona fide intent to use the mark in commerce at the time the
subject application was filed, in addition to its originally filed likelihood of confusion claim.
3 Registration No. 2090807, issued August 26, 1997, from an application filed April 29,
1996.
4 Registration No. 2098928, issued September 23, 1997, from an application filed April 29,
1996.
5 Registration No. 3508180, issued September 30, 2008, from an application filed February
26, 2008.
6 Opposer attached “soft” copies of the certificates of its pleaded registrations as exhibits to
its notice of opposition (and also as Exhibit B to its motion for summary judgment).
Inasmuch as Applicant has admitted Opposer’s ownership of its pleaded registrations, as
discussed further infra, there is no dispute regarding the title of the pleaded registrations.
However, these certificates, showing the registrations as of the date of the issuance of the
certificates, are not sufficient to establish the current status of the registrations. Hewlett-
Packard Co. v. Olympus Corp., 931 F.2d 1551, 18 USPQ2d 1710, 1713 (Fed. Cir. 1991)
(photocopy of registration without status and title information insufficient). The issue date
of a registration certificate filed with a complaint must be reasonably contemporaneous
with the filing date of the complaint in order to evidence status and title. See Hard Rock
Café Int’l (USA) Inc. v. Elsea, 56 USPQ2d 1504, 1511 (TTAB 2000) (status and title copies
prepared three years prior to opposition not reasonably contemporaneous).
In order for Opposer to rely on its pleaded registrations, Opposer must establish the
registrations’ current status, which can be done by filing a notice of reliance during its
testimony period, attaching thereto current printouts of information from the electronic
database records of the Office. See Trademark Rule 2.122(d); Research In Motion Ltd. v.
NBOR Corp., 92 USPQ2d 1926, 1928 (TTAB 2009). See also TBMP § 704.03(b)(1)(A) (2014)
and authorities cited therein.
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TTABVUE 30, ¶ 3.7 As grounds for its opposition, Opposer alleges likelihood of
confusion under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), and Applicant’s
lack of a bona fide intent to use its mark under Section 1(b), 15 U.S.C. § 1051(b).
Opposer alleges, inter alia, that Applicant’s applied-for mark “so resembles
Opposer’s previously used and registered CALMS marks as to be likely, when used
for the recited goods, to cause confusion, or to cause mistake or to deceive,” and “[o]n
information and belief, Applicant did not have a bona fide intent to use Applicant’s
Mark in commerce when it filed the Application on July 21, 2011.” Id. at 31 and 32,
¶¶ 8 and 13.
Applicant, in its amended answer filed October 23, 2014, denied the salient
allegations of the notice of opposition, except that Applicant admitted Opposer’s
allegations of ownership of pleaded Registration Nos. 2090807, 2098928, and
3508180 as asserted in paragraph 3 of the amended notice of opposition. 28
TTABVUE 3, ¶ 3. Additionally, Applicant admitted that it had not made use of
“Applicant’s Mark” in commerce prior to the filing date of the subject application,
nor has it made use of the mark since that date. Id. at 3-4, ¶¶ 10 and 11.
Applicant also asserted two “affirmative defenses.” Id. at 4, ¶¶ 16 and 17.
However, these statements are not actually affirmative defenses, but are merely

7 Citations to the record are to TTABVUE, the docket history system for the Trademark
Trial and Appeal Board. Because the Board primarily uses TTABVUE in reviewing
evidence, the Board prefers that citations to material or testimony in the record that has
not been designated confidential include the TTABVUE docket entry number and the
TTABVUE page number. For material or testimony that has been designated confidential
and which cannot be viewed on TTABVUE, the TTABVUE docket entry number where such
material or testimony is located should be included in any citation. See Turdin v. Trilobite,
Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014).
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amplifications of Applicant’s denials and provide fuller notice of how Applicant
intends to defend this opposition. See Ohio State Univ. v. Ohio Univ., 51 USPQ2d
1289, 1292 (TTAB 1999). Since these are not appropriate affirmative defenses, the
Board does not find it necessary to address this language any further at this time.
Summary Judgment
Now before the Board is Opposer’s motion for summary judgment, filed
December 19, 2014, on both its likelihood of confusion claim and its claim that
Applicant lacked a bona fide intent to use its applied-for mark as of the filing date
of the subject application. By its motion, Opposer alleges that “despite Applicant’s
opportunity to provide documentary evidence to Opposer during the discovery phase
of this opposition proceeding, Applicant has produced absolutely no objective
evidence supporting its alleged bona fide intent to use the ‘CALM’ [mark] in
commerce as of the filing of the Application,” and indeed “Applicant made several
statements and admissions which evidence a lack of bona fide intent to use ‘CALM’
during Applicant’s 30(b)(6) deposition … and at [Applicant’s president’s] deposition”
in his individual capacity. 31 TTABVUE 10 and 13. Moreover, Opposer asserts that
“there is no genuine dispute of material fact that Opposer has priority of use for its
pleaded registrations,” and “every relevant likelihood of confusion factor in DuPont8
supports the conclusion that registration and use of the ‘CALM’ [mark] would create
a likelihood of confusion with Opposer’s CALMS marks as a matter of law.” Id. at 3
and 14.

8 In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
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Regarding the claim of likelihood of confusion, Applicant argues that its goods
and those of Opposer are “non-competitive and non-related,” and that “the common
word ‘calm’ has been diluted in class 05.” Id. at 9 and 16. Regarding the claim of
lack of bona fide intent to use, Applicant contends that “the factual question of
intent is particularly unsuited to disposition on summary judgment.” 33 TTABVUE
4 (quoting Copelands’ Enters. Inc. v. CNV Inc., 945 F.2d 1563, 20 USPQ2d 1295
(Fed. Cir. 1991)). In any event, Applicant asserts that “Mr. Lederman has a long
history in producing and developing neutraceutical products since at least the
1970s.” Id. at 5.
Summary judgment is an appropriate method of disposing of cases in which
there are no genuine disputes as to material facts, thus leaving the case to be
resolved as a matter of law. See Fed. R. Civ. P. 56(a). In deciding motions for
summary judgment, the Board must follow the well-established principles that all
evidence must be viewed in a light favorable to the non-movant, and all justifiable
inferences are to be drawn in the non-movant’s favor. The Board may not resolve
disputes of material fact; it may only ascertain whether such disputes are present.
See Lloyd’s Food Prods. Inc. v. Eli’s Inc., 987 F.2d 766, 25 USPQ2d 2027 (Fed. Cir.
1993); Opryland USA Inc. v. Great Am. Music Show Inc., 970 F.2d 847, 23 USPQ2d
1471 (Fed. Cir. 1992); Olde Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22
USPQ2d 1542 (Fed. Cir. 1992).
The burden is on the party moving for summary judgment to demonstrate the
absence of any genuine dispute of material fact, and that it is entitled to summary
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judgment as a matter of law. Fed. R. Civ. P. 56(c). The burden on the non-movant to
respond arises only if the summary judgment motion is properly supported. Adickes
v. S.H. Kress & Co., 398 U.S. 144, 160-161 (1970). If the evidence produced in
support of the summary judgment motion does not meet the moving party’s burden,
“summary judgment must be denied even if no opposing evidentiary matter is
presented.” Id. (quoting Fed. R. Civ. P. 56 advisory committee notes to the 1963
amendments).
In addition to (i) the deposition transcripts of Steven Lederman (Applicant’s
president) in his individual capacity and as Applicant’s 30(b)(6) witness (Exs. C and
F), (ii) Applicant’s responses to Opposer’s document requests and first set of
interrogatories (Exs. D and E), (iii) a listing of 25 third-party registrations
purportedly showing a single mark used to identify the source of goods of the type
offered by Applicant together with those offered by Opposer (Opposer also attached
Trademark Electronic Search System (“TESS”) printouts of the registration records)
(Ex. G), and (iv) printouts from the website Amazon.com showing Opposer’s
products for sale on the site,9 (Ex. H),10 in support of its motion Opposer also

9 Opposer indicates in its brief on the motion that it “recently changed the name of the
CALMS FORTÉ 4 KIDS product to “Hyland’s 4 Kids Calm ’n Restful.” 31 TTABVUE 5. This
change is evident in the display from Amazon.com. However, it is unclear from this
statement whether Opposer has ceased using the mark CALMS FORTÉ 4 KIDS. In any
regard, the registration remains active and there is no pending counterclaim to cancel it.
10 The preceding exhibits were not filed in connection with a declaration or affidavit.
However, evidence, such as that submitted by Opposer here, consisting of discovery
responses and printed publications in the form of Internet printouts submitted in support of
a motion for summary judgment, need not be submitted under a notice of reliance or in
connection with the affidavit or declaration of a witness, and may simply be submitted as
attachments or exhibits to a party’s supporting brief. See Fed. R. Civ. P. 56(c); Trademark
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submitted the declarations of Thao Le, Opposer’s Vice President of Marketing, and
Katie Solberg, a senior paralegal for Opposer’s counsel, which included as exhibits:
• a printout from the “product locator” page of Opposer’s website
showing where Opposer’s products may be purchased in the
United States;

• invoices of purchases by retailers of Opposer’s CALMS products;

• examples of the various formats used to promote and advertise
Opposer’s CALMS products, including magazines, YouTube
channels, social media, and pages from Opposer’s own website;

• materials concerning Opposer’s powder-form mineral
replacement product “Hyland’s Bioplasma Sport;”

• printouts of media coverage relating to Opposer’s CALMS
products;

• printouts from the website located at http://calmlegs.com/; and

• pictures taken at a Walmart, The Wedge Co-Op, and a Lund’s,
all in Minneapolis, Minnesota, showing the CALMS FORTÉ or
CALMS products near vitamin and mineral supplements.

31 TTABVUE 196-495, Le Exhibits A-K; and 32 TTABVUE 2-80, Solber Exhibits A-
F.

A. Standing

By its claim of ownership of its pleaded registrations, which Applicant has
conceded, Opposer has established its standing to bring this opposition against the
ʼ740 application. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842, 1844 (Fed. Cir. 2000); Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d
1024, 213 USPQ 185, 189 (CCPA 1982).

Rules 2.122(e) and 2.127(e)(2); Raccioppi v. Apogee Inc., 47 USPQ2d 1368, 1369-70 (TTAB
1998). See also Trademark Rule 2.120(j)(8); TBMP §§ 528.05(a)(1)-(e) (June 2014).
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B. Likelihood of Confusion

In a likelihood of confusion analysis, two key factors are the degree of similarity
of the parties’ marks and the degree to which their respective goods or services are
related. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir.
2012); In re E. I. du Pont de Nemours & Co., 177 USPQ at 567. However, the U.S.
Court of Customs and Patent Appeals, in du Pont, discussed thirteen factors
relevant to a determination of likelihood of confusion. Id. Not all of these factors are
relevant in every proceeding, and only those relevant factors for which there is
evidence in the record must be considered. Id. at 567-68; see also In re Mighty Leaf
Tea, 601 F.3d 1342, 1346, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010) (“Not all of the
DuPont factors are relevant to every case, and only factors of significance to the
particular mark need be considered.”); Cunningham, 55 USPQ2d at 1845.
Notwithstanding Opposer’s conclusory assertions that “Applicant’s identified
vitamin and mineral supplement enhanced drinks are extremely similar, in both
their nature and purposes, to Opposer’s CALMS Products … used by the general
public to promote better health,” 31 TTABVUE 19, the record at present does not
support such a finding. Particularly, the third-party registrations cited by Opposer
are not persuasive; this evidence is insufficient to demonstrate as a matter of law
that consumers are accustomed to encountering such marks in the marketplace or
that they are familiar with such marks for use with these goods. See Nike Inc. v.
WNBA Enters. LLC, 85 USPQ2d 1187, 1200 (TTAB 2007). In particular, Opposer
has shown that its own products are offered on Amazon.com and that other
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“vitamin and mineral supplement enhanced drinks” similar to Applicant’s goods are
also available on Amazon.com. However, this evidence is insufficient to establish
that those goods are related to, or are otherwise encountered by the same
consumers as the goods sold by Opposer. Large retailers such as Amazon.com offer a
very wide array of goods, many of which are wholly unrelated. See Inter IKEA Sys.
B.V. v. Akea, LLC, 110 USPQ2d 1734, 1743 (TTAB 2014); Parfums de Couer Ltd. v.
Lazarus, 83 USPQ2d 1012, 1021 (TTAB 2007) (“the mere fact that goods and
services may both be advertised and offered through the Internet is not a sufficient
basis to find that they are sold through the same channels of trade.”); Nestle Co. v.
Nash-Finch Co., 4 USPQ2d 1085, 1090 (TTAB 1987) (“the same availability of
different food products in the same stores carrying a wide variety of food items in
[sic] insufficient, in and of itself, to warrant a finding of likelihood of confusion.”).11
We have carefully considered all of the parties’ arguments and evidence in the
record, even if not specifically discussed herein. Drawing all justifiable inferences in
favor of Applicant as the non-moving party, we find that Opposer has failed to
discharge its burden of showing that there are no genuine disputes of material fact,
and that it is entitled to judgment as a matter of law on its likelihood of confusion
claim.12 In particular, we find that a genuine dispute of material fact exists at least

11 In fact, when reviewed closely, these pages show that the goods are sold in separate
“Departments” of the Amazon.com website – “Grocery & Gourmet Food” vis-à-vis “Health &
Personal Care.”
12 The parties should note that the evidence submitted in connection with the motion for
summary judgment is of record only for consideration of that motion. To be considered at
final hearing, any such evidence must be properly introduced in evidence during the
appropriate trial period. See Levi Strauss & Co. v. R. Josephs Sportswear Inc., 28 USPQ2d
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as to the relatedness between Opposer’s and Applicant’s respective goods.
Additionally, inasmuch as Opposer has not properly made its pleaded registrations
of record in this proceeding, priority remains at issue.13
Therefore, Opposer’s motion for summary judgment is DENIED with respect to
its likelihood of confusion claim.
C. Lack of Bona Fide Intent
Section 1(b) of the Trademark Act, states that:
A person who has a bona fide intention, under circumstances
showing the good faith of such person, to use a trademark in
commerce may request registration of its trademark on the
principal register hereby established by paying the prescribed
fee and filing in the Patent and Trademark Office an application
and a verified statement, in such form as may be prescribed by
the Director.

15 U.S.C. § 1051(b). “A determination of whether an applicant has a bona fide
intention to use a mark in commerce is an objective determination based on all the
circumstances.” Boston Red Sox v. Sherman, 88 USPQ2d 1581, 1586 (TTAB 2008)
(citing Lane Ltd. v. Jackson Intl. Trading Co., 33 USPQ2d 1351, 1355 (TTAB 1994)).
If an opposer establishes a prima facie case, the burden shifts to applicant to rebut
that prima facie case by producing evidence which would establish that it had the
requisite bona fide intent to use the mark when it filed its application. Commodore
Elecs. Ltd. v. CBM Kabushiki Kaisha Opp., 26 USPQ2d 1503, 1507 (TTAB 1993).

1464 (TTAB 1993); Pet Inc. v. Bassetti, 219 USPQ 911 (TTAB 1983); Am. Meat Inst. v.
Horace W. Longacre, Inc., 211 USPQ 712 (TTAB 1981).
13 The fact that we have identified only certain genuine disputes as to material facts should
not be construed as a finding that these are necessarily the only disputes which remain for
trial.

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When considered on a motion for summary judgment the moving party need not
produce evidence showing the absence of a genuine issue of material fact; instead,
the moving party may meet its burden by demonstrating that there is an absence of
evidence to support the non-moving party’s case. See Copelands’ Enters., 20
USPQ2d at1298; Honda Motor Co. v. Winkelmann, 90 USPQ2d 1660, 1662 (TTAB
2009). To rebut such an assertion a non-movant must do more than merely raise
some doubt; rather, the non-movant must provide evidence which would be
sufficient to raise a genuine dispute over the fact. Id. Nonetheless, the evidence
submitted must be viewed in a light favorable to the non-movant and all reasonable
inferences must be drawn in its favor. See Lloyd’s Food Prods., 25 USPQ2d 2027.
Although, Opposer has provided evidence by way of Applicant’s deposition
testimony and discovery responses showing an absence of preparation or ability on
Applicant’s part with regard to bringing its goods covered by the CALM mark to
market, Applicant has made sufficient rebuttal to raise a genuine dispute. Of
particular note is Applicant’s reference to portions of the deposition transcript of
Steven Lederman (Applicant’s president and 30(b)(6) witness), as relied upon by
Opposer, stating that he had previously produced and distributed such a product,
and indeed, used the term “calm” to refer to that product. 33 TTABVUE 5 and 19-
22, Ex. A. An applicant’s ability, capacity, resources, and knowledge with respect to
producing or providing the goods and services claimed in its application is an
important consideration in a determination of an applicant’s bona fide intent to use
a mark. See Swatch AG (Swatch SA) (Swatch Ltd.) v. M. Z. Berger & Co., 108
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USPQ2d 1463, 1477 (TTAB 2013); cf. Lincoln Nat'l Corp. v. Anderson, 110 USPQ2d
1271 (TTAB 2014) (applicant found not to have the ability, resources, or knowledge
to provide his broadly identified services and thus lacked bona fide intent to use).
An applicant’s previous capacity to market and/or manufacture the identified goods
is evidence that weighs against a finding that an applicant lacked bona fide intent
to use. Swatch, 108 USPQ2d at 1477.
Notwithstanding Opposer’s declaration that it “has … established, by a
preponderance of the evidence,14 that Applicant lacked the requisite bona fide
intent to use,” the current record does not support a finding for Opposer under the
standards for summary judgment as previously discussed. As Applicant cites in its
response brief, “the factual question of intent is particularly unsuited to disposition
on summary judgment.” Copelands’ Enters., 20 USPQ2d at 1299 (citing
KangaROOS U.S.A., Inc. v. Caldor, Inc., 778 F.2d 1571, 1575, 228 USPQ 32, 34-35
(Fed. Cir. 1985)); Honda Motor, 90 USPQ2d at 1662.
Again, we have carefully considered all of the parties’ arguments and evidence in
the record with respect to this claim, even if not specifically discussed; and drawing
all justifiable inferences in favor of Applicant as the non-moving party, based on the
evidence presented, we find that Opposer has failed to establish that there are no
genuine disputes of material fact, and that it is entitled to judgment as a matter of

14 Opposer cites the burden of proof necessary for trial. See Dan Robbins & Assoc., Inc. v.
Questor Corp., 599 F.2d 1009, 202 USPQ 100, 105 (CCPA 1979) (standard of proof in Board
inter partes proceeding is a preponderance of the evidence). In fact, Opposer’s burden as
movant on a motion for summary judgment is the more stringent and conclusive burden of
establishing an absence of any genuine dispute of material fact, such that it is entitled to
judgment as a matter of law. See Fed. R. Civ. P. 56(a); Stephen Slesinger Inc. v. Disney
Enters. Inc., 98 USPQ2d 1890, 1894 (TTAB 2011).
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law on its claim that Applicant lacked a bona fide intent to use the applied-for mark
on the date the subject application was filed.
In particular, we find that Applicant’s actions taken prior to the filing of the
present application and its ability to manufacture and distribute the goods claimed
in the application raise a genuine dispute of material fact with respect to
Applicant’s bona fide intent to use the mark.15
Therefore, Opposer’s motion for summary judgment is DENIED with respect to
its claim under Trademark Act Section 1(b).
Schedule
Proceedings are resumed upon the following schedule:
Plaintiff’s 30-day Trial Period Ends 6/19/2015
Defendant’s Pretrial Disclosures 7/4/2015
Defendant’s 30-day Trial Period Ends 8/18/2015
Plaintiff’s Rebuttal Disclosures 9/2/2015
Plaintiff’s 15-day Rebuttal Period Ends 10/2/2015

In each instance, a copy of the transcript of any testimony, together with copies
of documentary exhibits, must be served on the adverse party within thirty days
after completion of the taking of that testimony. Trademark Rule 2.125.
Briefs shall be filed in accordance with Trademark Rule 2.128(a) and (b). An oral
hearing will be set only upon request filed as provided by Trademark Rule 2.129.

15 As previously noted, the fact that we have identified only certain genuine disputes as to
material facts should not be construed as a finding that these are necessarily the only
disputes which remain for trial.