estta tracking number: estta746343 filing date: 05/13 ......filing its trademark applications,...
TRANSCRIPT
Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
ESTTA Tracking number: ESTTA746343
Filing date: 05/13/2016
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
Proceeding 92056654
Party PlaintiffUnilever PLC
CorrespondenceAddress
WILLIAM M MERONEKENYON & KENYON LLP1500 K STREET NW, SUITE 700WASHINGTON, DC 20005UNITED [email protected], [email protected], [email protected]
Submission Brief on Merits for Plaintiff
Filer's Name William M. Merone
Filer's e-mail [email protected], [email protected]
Signature /William M. Merone/
Date 05/13/2016
Attachments Petitioners Opening Trial Brief.pdf(219826 bytes )
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
UNILEVER PLC
Petitioner,
v. TECHNOPHARMA LIMITED
Registrant.
Cancellation No. 92056654 Registration No.: 3071686
PETITIONER’S OPENING BRIEF ON THE CASE
Jonathan D. Reichman KENYON & KENYON LLP One Broadway New York, NY 10004
Tel.: (212) 425 – 7200 Fax: (212) 425 – 5288
William M. Merone KENYON & KENYON LLP 1500 K Street, N.W.; Suite 700 Washington, DC 20005
Tel.: (202) 220 – 4200 Fax: (202) 220 – 4201
Counsel for Petitioner,
Unilever Plc
i
TABLE OF CONTENTS
Page INDEX OF AUTHORITIES......................................................................................ii I. INTRODUCTION .........................................................................................1 II. DESCRIPTION OF THE EVIDENCE OF RECORD ..................................2
A. Petitioner’s Evidence ........................................................................2 B. Registrant’s Evidence ........................................................................3
III. ISSUES PRESENTED...................................................................................3 IV. RECITATION OF FACTS ............................................................................4
A. The Parties .........................................................................................4 B. The Registration at Issue ....................................................................5 C. The December 2005 Statement of Use ..............................................6 D. The May 2011 Declaration of Continued Use ...................................9 E. Registrant’s Failure to Use the Subject Mark in Commerce .............15
V. ARGUMENT ................................................................................................16
A. Petition Has Standing to Pursue This Action .....................................16 B. Registrant Failed to File a Proper Declaration of Continued Use .....17 C. Registrant Was Not Making Use of the Mark in Commerce .............20
VI. CONCLUSION ..............................................................................................24
ii
INDEX OF AUTHORITIES
Cases
Beech Aircraft Corp. v. Lightning Aircraft Company Inc.,
1 USPQ2d 1290 (TTAB 1986)
In re Bose Corp.,
580 F.3d 1240 (Fed. Cir. 2009)
Checkers Drive-In Restaurants, Inc. v. Commissioner of Patents and Trademarks,
51 F.3d 1078 (D.C. Cir. 1995) The Clorox Company v. Armour-Dial, Inc., 214 USPQ 850 (TTAB 1982)
CreAgri, Inc. v. USANA Health Sciences, Inc.,
474 F.3d 626 (9th Cir. 2007)
Hartwell Co. v. Shane,
17 USPQ2d 1569 (TTAB 1990)
Infanseat Company v. Hanover Manufacturing Co.,
143 USPQ 260 (TTAB 1964)
Land O' Lakes, Inc. v. Hugunin,
88 USPQ2d 1957, 1959 (TTAB 2008)
In re Metrotech,
33 USPQ2d 1049 (Com'r Pat. & Trademarks 1993)
Morehouse Mfg. Corp. v. J. Strickland & Co.,
407 F.2d 881 (CCPA 1969)
In re Mother Tucker's Food Experience (Canada), Inc.,
925 F.2d 1402 (Fed. Cir. 1991)
No Nonsense Fashions, Inc. v. Consolidated Foods Corp.,
226 USPQ 502 (TTAB 1985)
In re Pepcom Industries, Inc.,
1976 WL 21138 (TTAB 1976)
In re Precious Diamonds, Inc.,
208 USPQ 410 (CCPA 1980)
iii
Ritchie v. Simpson,
50 USPQ2d 1023 (Fed. Cir. 1999) In re Shell Oil Co., 26 USPQ2d 1687 (Fed. Cir. 1993).
Thompson Medical Company, Inc. v. Alberto-Culver Co.,
156 USPQ 133 (TTAB 1967)
Torres v. Cantine Torresella S.r.l.,
808 F.2d 46 (Fed. Cir. 1986)
United Phosphorus, Ltd. v. Midland Fumigant, Inc.,
205 F.3d 1219 (10th Cir. 2000)
Statutes
15 USC § 1058 21 USC § 321 21 USC § 331 21 USC § 362 Regulations
21 CFR § 701.12 21 CFR § 740.01 21 CFR § 740.10 37 CFR § 2.69 37 CFR § 2.160 37 CFR § 2.161 Other Authorities
Trademark Manual of Examining Procedure (“TMEP”) (April 2016), § 907
1
I. INTRODUCTION
In May 2011, Registrant, Technopharma Limited, submitted a Declaration of
Continued Use in support of U.S. Reg. No. 3071686. On the surface, the Declaration
appeared to satisfy the requirements of Section 8 of the Trademark Act—it contained an
averment that the mark was in use in commerce, set forth the goods with which the mark
was being used, and included images of specimens allegedly showing current use of the
mark. Cf. 15 USC § 1058(b)(1). The problem, though, is that none of that was true.
The crucible of this cancellation has revealed that the scanned images Registrant
submitted with the Declaration had been created more than five years earlier and thus did
not show current use. In fact, the “specimens” shown in those old scans were not even
real products—they were just empty, pre-production boxes. Furthermore, those empty
boxes did not even match the boxes that Registrant says it was supposedly using in May
2011, and they were for goods Registrant was not even selling at the time. And even if
all of those defects could be ignored, the manner in which Registrant says it was using
the subject mark on its packaging back then violated federal law and thus was not a
lawful use in commerce, as is required to support a claim of continued trademark use.
As a result, Registrant cannot be said to have filed a declaration that “meet[s] the
requirements of [15 USC § 1058(b)]” before the six-year anniversary of the registration
date.1 Therefore, the registration at issue here has already expired as a matter of law.
1 Moreover, there is no evidence that Registrant could have submitted a proper declaration during the relevant time. That, however, is not the appropriate test. See, e.g.,
15 USC § 1058(a) (“the registration of any mark shall be canceled by the Director unless the owner of the registration files ... affidavits that meet the requirements of [15 USC
§ 1058(b)]” within the time periods set forth in the statute)) (emphasis added).
2
See 15 USC § 1058(a); see also Land O' Lakes, Inc. v. Hugunin, 88 USPQ2d 1957, 1959
(TTAB 2008) (explaining that the date a registration is considered to have expired “is not
dependent on the date the Office [undertakes] the ministerial function of entering the
cancellation into the USPTO database”) (the registration “expired by operation of law on
[the six-year anniversary date]”). Through this proceeding, the Board should thus
acknowledge administratively that which has already occurred automatically and enter
the expiration of the subject registration into the Office’s official records.
II. DESCRIPTION OF THE EVIDENCE OF RECORD
A. Petitioner’s Evidence
Petitioner, Unilever Plc, has submitted evidence establishing its own standing and
demonstrating not only that Registrant did not submit a proper Declaration of Continued
Use, but that Registrant was not making lawful use of the subject mark in commerce
when it made its maintenance filing. Petitioner’s evidence is summarized below:
Form of Evidence Description of Evidence
Deposition of Stephen Beale
(“Beale Dep.”)
Mr. Beale is Trademark Counsel for Petitioner, Unilever Plc. He testified about the history and use of Petitioner’s FAIR & LOVELY brand.
First Deposition of Bernard Pound
(“First Pound Dep.”)
Mr. Pound is a paralegal at Kenyon & Kenyon LLP, counsel for Petitioner. Through his testimony, Mr. Pound demonstrated that the images Registrant submitted in May 2011 to show “current use” were really just reproductions of the images Registrant previously submitted in December 2005. Mr. Pound also authenticated numerous documents relevant to this matter.
3
Second Deposition of Bernard
Pound (“Second Pound Dep.”)
On rebuttal, Mr. Pound demonstrated that the packaging “specimens” Registrant submitted in its May 2011 Declaration (which, as noted, were actually images from December 2005) did not match the actual packaging that Registrant’s witness, Michel Farah, claimed was in use at or around the time of the maintenance filing.
B. Registrant’s Evidence
Registrant, Technopharma Limited, has submitted only the testimony of Michel
Farah, Registrant’s principal and chief executive. See Deposition of Michel Farah
(“Farah Dep.”). Petitioner does not object to the testimony of Mr. Farah on the grounds
of either timeliness or admissibility. Petitioner, however, reserves the right to object to
Mr. Farah’s testimony on the grounds of relevance or hearsay depending on the purpose
for which the testimony is cited by Registrant in its trial papers.
III. ISSUES PRESENTED
The primary issue for the Board is whether Registrant filed a proper Declaration
of Continued Use in May 2011 in support of U.S. Reg. No. 3071686 for the mark NEW
YORK FAIR AND LOVELY. A secondary (but no less important) issue is whether
Registrant was lawfully using the mark in commerce at or around the time of the
maintenance filing. If the Board concludes either that the May 2011 Declaration did not
meet the requirements of Section 8, or that Registrant was not lawfully using the NEW
YORK FAIR AND LOVELY at that time for the goods listed in the registration, then it
should acknowledge administratively that the registration has already expired as a matter
of law because of Registrant’s failure to make a proper maintenance filing.
4
IV. RECITATION OF FACTS
A. The Parties
1. Petitioner
Petitioner, Unilever Plc, is an international consumer products company and one
of the world’s largest companies overall. Among the products Unilever sells is FAIR &
LOVELY skin creams and lotions, a brand that was started in India in the mid- to late-
1970s and today is the world’s best-selling branded skin lightening preparation,
generating worldwide sales of roughly $300 million a year. Unilever is headquartered in
the United Kingdom. See Beale Dep., 9:3-13:14, 36:21-37:7, Reg. Ex. 1 (¶¶ 1-3).
In January 2013, Petitioner filed two applications (Serial Nos. 85818836 and
85818821) to protect its FAIR & LOVELY mark for an assortment of goods in Class 3.
See First Pound Dep., 26:19-27:24, Pet. Exs. 18, 19. When it filed its applications,
Petitioner thought it likely that Registrant, which challenged Petitioner’s registration of
the FAIR & LOVELY marks overseas, see Beale Dep., 15:5-16:3, would oppose here as
well, notwithstanding its questionable claim of trademark rights. Thus, concurrent with
filing its trademark applications, Petitioner also filed this cancellation proceeding.
In June 2014, Petitioner’s concerns were validated when Registrant initiated
Opposition No. 91216999 in an effort to block registration of Petitioner’s FAIR &
LOVELY marks. See First Pound Dep., 27:25-29:25, Pet. Exs. 20, 21. In that action,
Registrant is relying on its ownership of the NEW YORK FAIR AND LOVELY
registration as a basis for opposing registration of Petitioner’s FAIR & LOVELY marks.
See id., Pet. Ex. 21 (¶ 1). The Board suspended proceedings in Opposition No. 91216999
in September 2014 pending the resolution of this matter. See id., Pet. Ex. 20 (D.I. 5).
5
2. Registrant
Registrant, Technopharma Limited (f/k/a Peter Nailsworth (Pharmaceutical
Products) Limited) is based in the United Kingdom and owns and licenses certain
trademarks for use by third parties, including the mark NEW YORK FAIR AND
LOVELY. Registrant claims to have used that mark on products sold in the United States
through distributors beginning in November 2005. See Farah Dep., 5:8-6:9, 18:3-23.
Registrant’s first distributor was a third-party named Afra, which held the
exclusive right to distribute NEW YORK FAIR AND LOVELY products in the United
States until early 2009. See id., 11:14-12:24, 17:8-12. During the period of Afra’s
distributorship, product was manufactured by a Lebanese entity called Sopex and then
shipped to Afra and invoiced through a factoring company called Choice of Nature. See
id., 12:25-16:14, 17:8-12, Exs. C, D. After Registrant’s relationship with Afra ended, a
company called the Mitchell Group took over as exclusive distributor and allegedly
continued to receive product from Sopex through Choice of Nature. See id., 4:17-57,
20:8-24, 27:7-28:14, 55:20-56:1; see also First Pound Dep., Pet. Ex. 2, pp. 1-2 (Resp.
No. 1). Registrant, Choice of Nature, and the Mitchell Group are all related companies,
with Michel Farah, Registrant’s sole witness, acting as an officer, manager, or director of
each company. See Farah Dep., 4:15-16, 5:8-17, 15:13-16, 48:15-50:1.
B. The Registration at Issue
At issue in this case is U.S. Registration No. 3071686 for the mark NEW YORK
FAIR AND LOVELY. Registrant (then known as Peter Nailsworth (Pharmaceutical
Products) Limited) filed the underlying application on November 22, 2002, claiming a
6
bona fide intent to use the mark in commerce. The application was assigned Serial No.
78188257, and the Office allowed it on June 29, 2004. See File History.
As allowed, the application covered “skin soaps, skin cleansers, cosmetics,
perfume and cologne, hair lotions and dentifrices” (Class 3) and “medicated skin creams,
medicated skin lotions and medicated shampoos” (Class 5). See id. Subsequent to the
issuance of the Notice of Allowance, Registrant obtained two extensions of time to file its
Statement of Use, pushing its deadline for showing use to December 29, 2005.2
C. The December 2005 Statement of Use
On December 28, 2005, the last day before its filing deadline, Registrant
submitted a Statement of Use through which it claimed that it was using the NEW YORK
FAIR AND LOVELY mark for all of the goods listed in the Notice of Allowance, and
that it supposedly had been doing so since November 30, 2005. See Farah Dep., Reg.
Ex. E. Mr. Farah was directly involved in the preparation and filing of the December
2005 Statement of Use, as was Registrant’s counsel. See id., 19:5-16, Reg. Ex. E.
As Mr. Farah now admits, however, Registrant’s representation that it was using
the mark with all of the allowed goods was flatly untrue. As it turns out, Registrant was
not using (and has never used) the mark with fully half of the goods listed in the Notice
of Allowance. See id., 91:4-94:23, 96:13-98:25 (no use with perfume, cologne, hair
lotions, dentifrices, or medicated shampoos). Nonetheless, Registrant (who by that time
was involved in disputes with Petitioner worldwide and thus presumably wanted to obtain
leverage in this country; see Beale Dep., 15:5-16:3) claimed “use” anyway.
2 Although the Notice of Allowance is listed as having been entered on TSDR on June (continued)
7
The specimens Registrant submitted as proof of its use of the mark were also not
what Registrant said they were. Registrant said it was submitting scanned images of the
boxes used to package three of its products—specifically, an 80 gram bar of soap, a
“gel,” and a 50 gram tube of “litening cream.” See id., Reg. Ex. E. In reality, however,
those boxes did not match the physical packaging that Registrant’s supplier (Sopex) was
using in production. What Registrant actually filed with the Office were empty, pre-
production packaging mock-ups, not boxes for goods as sold in commerce. See Farah
Dep., 79:20-80:6 (admitting that the boxes Registrant received from Sopex to use as
specimens were not actual products but rather were meant to be “a fair representation of
what the product was going to ... look like”) (emphasis added); see also id., 80:7-81:14.
For example, the box Registrant claimed was a specimen of its “skin soap” was
for an 80 gram bar. See id., Reg. Ex. E (pp. 9, 13). However, the only type of soap that
Registrant (through Sopex and Choice of Nature) supplied to Afra in late 2005 was a
“peeling soap,” which was a 200 gram bar. See id., Reg. Exs. B (T-109) (Afra was only
licensed to sell 200 gram bars of soap), C (only 200 gram bars were shipped); see also
id., 13:3-14:22, 18:3-23, 58:22-59:22 (Mr. Farah testified that the Statement of Use was
intended to reflect the products that Sopex sent to Afra as evidenced by the Choice of
Nature “factoring” invoice reflected in Reg. Ex. C). Thus, the scanned image of the “80
gram” box that Registrant submitted to the Office could not possibly have shown actual
use of the NEW YORK FAIR AND LOVELY mark in commerce because the product
depicted in the image was not being sold in U.S. commerce at that time.
18, 2004, that appears to be an error. The Notice carries a creation date of June 29, 2004.
8
The “gel” box Registrant used as a specimen similarly did not match any of the
products Sopex was manufacturing for sale. Although Afra allegedly sold a “gel”
beginning in December 2005, see Farah Dep., Reg. Ex. C, the box was different than the
one Registrant submitted as a specimen. For example, on the specimen (below top), the
word “GEL” appears in the lower right corner of the front panels. However, that element
was not on any of the “gel” products that Sopex actually manufactured:
“Gel” Specimen (Submitted December 2005)
Actual “Gel” Product (Manufactured May 2005)
Compare Farah Dep., Reg. Ex. E (pp. 6-7, 10-11) with id., Reg. Ex. I-4 (product made in
May 2005); see also Second Pound Dep., 67:12-68:23; cf. Farah Dep., Reg. Exs. I-2, I-3,
I-8 (none of the other boxes for “gel” made by Sopex match the specimen either).3
3 Because Registrant did not produce an example or photograph of the “litening cream” as allegedly sold by Afra during the period 2005 to 2009, it is not possible to compare the December 2005 “litening cream” specimen against the boxes allegedly used at that time.
9
The conclusion that Registrant did not submit images of the boxes that Afra was
using in commerce in or around December 2005 is thus inescapable. Notwithstanding all
of the above, however, the registration issued on March 21, 2006 for all of the goods.
D. The May 2011 Declaration of Continued Use
In May 2011, Registrant filed a Declaration of Continued Use and Incontestability
to maintain the NEW YORK FAIR AND LOVELY registration. In that filing, Registrant
deleted the goods it now admits were never sold. See Farah Dep., 41:2-22, 91:4-94:23.
Registrant, however, still claimed that the mark was being used in commerce for all of
the remaining goods, namely “skin soaps, skin cleansers, cosmetics” (Class 3) and
“medicated skin creams, medicated skin lotions” (Class 5). As support, Registrant
submitted what it represented were “[d]igital images of product packaging” that
supposedly showed current use of the NEW YORK FAIR AND LOVELY mark in
commerce. See id., Reg. Ex. K; cf. 15 USC § 1058(b)(1)(C). Once again, though, most
of Registrant’s statements were untrue, and its “specimens” were not real.
1. The Specimens Were More Than Five Years Old
To begin with, the “digital images” Registrant submitted in May 2011 were the
same images that Registrant had used in December 2005. And by “same images,”
Petitioner does not just mean that they were both images of the same types of products.
Rather, Registrant literally took the same electronic images it created more than five
years earlier (and which, as discussed, did not even show the boxes and products used at
that time) and resubmitted them to show “current use” as of May 2011. See Farah
Dep., 44:3-15; First Pound Dep., 18:11-26:17, Exs. 15-17; cf. 15 USC § 1058(b)(1)(C).
10
Because the scanned images submitted to the Office in May 2011 were created at
least five years earlier from some empty pre-production boxes, see supra, they did not
show “current use of the mark in commerce” as of the filing of the Declaration. Cf. 15
USC § 1058(b)(1)(C). However, that was hardly the only flaw in Registrant’s filing.
2. The Specimens Do Not Reflect Any of the Products
Registrant Was Allegedly Selling in May 2011
As discussed, see Section IV.C., supra, the scanned images that Registrant created
in December 2005 (and which it then resubmitted in May 2011) were of the boxes
Registrant claimed to have been using as packaging for a “gel,” a 50 gram tube of
“litening cream,” and an 80 gram bar of soap. Cf. also Farah Dep., Reg. Ex. K. As
before, however, those images could not have shown actual use of the mark in commerce
because the products depicted in the images were not being sold at that time.
The only documents Registrant offered at trial to show use of the NEW YORK
FAIR AND LOVELY mark since the registration issued were a series of invoices
reflecting that the Mitchell Group allegedly made sales of the following two products:
Product Size Sales Dates
Soap 80 gram bar March 2009 to March 2010
“Litening Cream” 100 ml jar April 2010 to August 2012
See Farah Dep., 114:19-116:11, Reg. Exs. F-H. However, those computer-generated
records are highly suspect. Registrant did not produce or offer any corroborating
evidence from any third-party source (e.g., financial transactions, advertisements,
customer testimony), and Registrant also could not corroborate the above invoices with
any internal records from the companies Mr. Farah controls, despite supposedly having
11
made an “exhaustive” search for documents relating to use and even traveling to Lebanon
(home of Sopex) to look for evidence for this case. See id., 48:15-52:12.4
Regardless, even if Registrant’s invoices are credited, they merely prove
Petitioner’s point. According to the documents Registrant submitted, the only branded
product sold in or around May 2011 was a 100 ml jar of “litening cream.” See id., Reg.
Exs. G, H. There were no recorded sales of a NEW YORK FAIR AND LOVELY “gel”
or of the “litening cream” in a 50 gram tube. Accord id., 114:24-116:11. And although
the records suggest that the Mitchell Group may have distributed an 80 gram bar of soap
for a period of time, see id., Reg. Ex. F, not only did those sales evidently stop in March
2010 (more than a year before the filing of the May 2011 Declaration), there is no proof
that the sub-distributor (K&M Hair Revolution) to whom the Mitchell Group made those
sales ever distributed those products in interstate commerce. See id., Reg. Ex. F (both
companies are based in Florida); see also id. at 111:23-113:3 (Mr. Farah could not say
whether K&M made interstate sales), 114:19-23 (no other records of soap sales).
Thus, even if one ignores that the digital images Registrant submitted were more
than five years old, the boxes shown still did not reflect “current use” of the mark as of
May 2011. Registrant was not selling any of the products shown in the images, and it did
not offer a specimen of the only product it allegedly was selling at that time.
3. The Specimens Do Not Show the Boxes Used in Commerce
A final problem with the specimens Registrant submitted is that the boxes shown
in the digital images again do not match the boxes that Sopex would have supplied in or
4 The May 2011 Declaration itself obviously is not evidence of use, particularly given (continued)
12
around May 2011. On one level, of course, this is not surprising given that the
“specimens” were more than five years old and were products Registrant was not selling
in the United States at the time. See supra. However, even if one sets that all aside, the
reality is that the images Registrant submitted did not accurately depict any product that
Registrant ever sold in the United States at any time. They were not “specimens” at all.
To start, and as shown above, see p. 8, supra, the “gel” box that Registrant said
was a current specimen (even though it had been scanned in December 2005) contains a
prominent trade dress element (namely, use of “GEL” on the front) that is not found on
the boxes that Registrant says were always used in commerce.5 Compare Farah Dep.,
Reg. Ex. K (pp. 9-10, 13-14) with id., Reg. Exs. I-2, I-3, I-4, I-8; see also id., 77:18-
79:19; Second Pound Dep., 67:12-68:23. Thus, they clearly do not match. Beyond that,
though, the “litening cream” and soap specimens also do not match any actual boxes.
Take, for example, the “litening cream” box that Registrant scanned (in December
2005) for use as a specimen. If one compares that image to a scan of the box Registrant
claims was in use when it submitted its Declaration of Continued Use, you will see that
one of the large front panels is inverted. That is, if the “specimen” box were placed
upright on a shelf, the images of the Statute of Liberty on the two large facing panels
Registrant’s admission that the “specimens” had been scanned years earlier.
5 Of course, there is still no proof that any boxes of “gel” were sold in the United States in or around May 2011. Registrant simply produced finished products that Mr. Farah claims he found in Lebanon “in a basement of a home in the mountains outside Beirut.” See Farah Dep., 51:13-52:12, Pet. Ex. 2 (¶ 2). Those products, however, could have been sold anywhere, assuming they were sold at all. See id., 52:23-53:8 (listing other countries in which NEW YORK FAIR AND LOVELY products are sold); cf. Farah
Dep., 48:15-52:20, 114:19-115:14, Reg. Exs. F-H (no records of any “gel” sales).
13
would be pointing in opposite directions—a noticeable and obvious design defect not
found on the “litening cream” product that Sopex actually made (below right):
“Litening Cream” Specimen Actual “Litening Cream” Product
(Submitted May 2011) (Manufactured September 2010)
Compare Second Pound Dep., Pet. Exs. 23, 25 (three-dimensional model of “litening
cream” constructed from May 2011 specimen) with Farah Dep., Pet. Ex. I-6 (product
made in September 2010);6 cf. also First Pound Dep., Pet. Ex. 16 (pp. 3, 7) (specimen);
see also Second Pound Dep., 44:14-62:3, 69:13-76:6, Pet. Exs. 28-30, 32 (discussing
creation of the three-dimensional model [Pet. Ex. 25], and comparing both it and the
6 When the boxes are collapsed (as here), the front panels of the “specimen” are oriented in the same direction. When the box is assembled, however, the incorrect orientation becomes apparent. See Second Pound Dep., 55:13-64:14, Pet. Exs. 28-30.
14
original two-dimensional specimen [Pet. Ex. 16] to the “litening cream” packaging that
Registrant claims was in use); accord Farah Dep., 105:10-106:6, 108:12-109:20
(agreeing that the specimen does not match the packaging allegedly used); see also id.,
69:6-70:10, 75:17-79:19 (acknowledging that there is no other evidence of packaging).7
In addition, the box of “litening cream” that Registrant scanned and submitted as
a “specimen” also lacked certain legally-required information on its end flaps (such as the
batch number and product manufacture date) that the manufacturer (Sopex) stamps onto
the packaging as part of the production process. This further confirms that what
Registrant submitted was not the box of an actual product manufactured for sale. See
Farah Dep., 34:18-35:21 (information on end flaps is applied “at the time of
production”), 73:13-74:10 (products sold in the United States were required to show
expiration date); see also id., Reg. Ex. K (pp. 11, 15) (specimens lacked the required
information); cf. id., Reg. Exs. I-5, I-6, I-7 (products allegedly sold were stamped).
Similarly, the soap “specimen” that Registrant submitted in December 2005 does
not match the product that Sopex manufactured and which Registrant allegedly sold in
this country between March 2009 and March 2010 (through the Mitchell Group). Cf.
Farah Dep., 38:13-16, 112:17-114:23, Reg. Exs. I-9, F. Again, one of the front panels of
the specimen would be inverted when the box is reassembled. See id., 109:21-111:2
(admitting that the boxes are different). That is to say, the two Statues of Liberty would
7 Mr. Pound compared the three-dimensional model to all three “litening cream” boxes Registrant introduced as part of “Registrant’s Exhibit I” (including those manufactured as early as May 2006) and found that none of them matched. See Second Pound Dep., 55:13-61:14. Regardless, it should be noted that the “litening cream” has a shelf life of only three years. Accord Farah Dep., 36:13-37:6. As such, product manufactured before (continued)
15
point in different directions. This can be seen by comparing the collapsed form of the
“specimen” box (below left) to the actual product made by Sopex (below right):
Compare Second Pound Dep., Pet. Exs. 24, 26 with Farah Dep., Reg. Ex. I-10; see also
n.6, supra; Second Pound Dep., 62:5-66:5, 76:10-77:19, Pet. Exs. 31, 33; accord Farah
Dep., 110:18-111:2 (agreeing that the specimen submitted in May 2011 does not match
the product [Reg. Ex. I-10] that Registrant allegedly sold) (“It’s cut differently, yeah.”).
E. Registrant’s Failure to Use the Subject Mark in Commerce
Finally, even if all of the flaws associated with Registrant’s May 2011 filing could
be ignored (including Registrant’s failure to include “specimens ... showing current use
of the mark in commerce”; cf. 15 USC § 1058(b)(1)(C)), the only product for which
Registrant introduced any evidence of sales from in or around May 2011 was a 100 ml jar
of “litening cream.” See Section IV.D.2, supra.8 The packaging for that product,
May 2008 presumably would not have been available for sale five years later.
8 Although Mr. Farah claims that Registrant was selling all of the goods represented by the physical specimens it produced, see, e.g., Farah Dep., 33:11-25, 39:16-40:8, Reg. Exs. I-1 through I-10, his uncorroborated testimony cannot be credited. Not only does it lack the clarity and specificity necessary to convince a trier of fact of its probative value, (continued)
16
however, lacked basic labeling information, such as the name and place of business of
either Registrant or Sopex. See Farah Dep., 121:16-21, Pet. Ex. I-1; First Pound Dep.,
Pet. Ex. 8 (T-161). As such, and as will be discussed infra, sales of that product violated
the Federal Food, Drug, and Cosmetics Act (21 USC §§ 321 et seq.), and therefore any
sales that Registrant claims to have made (even if believed) cannot evidence “use in
commerce.” Cf., e.g., 21 USC §§ 321(i), 331(a), 362(b); 21 CFR § 701.12(a), (d).
V. ARGUMENT
A. Petitioner Has Standing to Pursue this Action
When challenging or seeking to restrict a registration, the petitioner bears the
burden of showing by a preponderance of evidence that it has standing to pursue its
claims. Accord, e.g., No Nonsense Fashions, Inc. v. Consolidated Foods Corp., 226
USPQ 502, 504 (TTAB 1985); Beech Aircraft Corp. v. Lightning Aircraft Company Inc.,
1 USPQ2d 1290, 1293 (TTAB 1986). To establish standing, a party need only show that
it has a direct and personal stake in the outcome of the action along with a reasonable
cf., e.g., Infanseat Company v. Hanover Manufacturing Co., 143 USPQ 260, 260-61 (TTAB 1964); Thompson Medical Company, Inc. v. Alberto-Culver Co., 156 USPQ 133, 134-35 (TTAB 1967), it was contradicted by the documents Registrant produced, which show that Registrant was only selling 100 ml jar of “litening cream” in or around May 2011. Cf. Farah Dep., Reg. Exs. G, H; see also id., 113:5-118:15 (Mr. Farah could not explain why there would be records of sales of the jars but yet no records of sales of gel or other products). As such, Mr. Farah’s testimony cannot be accepted as establishing use, even if the Board were to ignore that Mr. Farah has made false representations in the past regarding Registrant’s alleged “use.” See Sections IV.C., D, supra; cf. also
Infanseat, 143 USPQ at 260-61 (uncorroborated testimony of company’s president was insufficient to show “use,” particularly where the documents that existed did not support the claim); Thompson Medical, 156 USPQ at 135 (where records exist they are the “best evidence” of use, and if a party fails to offer such documentary material, it is reasonable (continued)
17
basis for believing that it will be damaged by the continued presence of the subject
registration. See, e.g., Ritchie v. Simpson, 50 USPQ2d 1023, 1025-26 (Fed. Cir. 1999).
Here, the evidence establishes that Petitioner and Registrant are competitors in the
field of personal care products and that they sell similar goods (namely, skin creams and
lotions) using marks that incorporate the same words “FAIR AND LOVELY.” See Beale
Dep., 9:3-10:23, 11:19-12:16; Farah Dep., 42:3-19, 45:1-46:3, Reg. Ex. J. Further,
Registrant is opposing Petitioner’s applications to register its FAIR & LOVELY mark
based on Registrant’s ownership of the NEW YORK FAIR AND LOVELY registration
at issue here, and has also claimed that Petitioner’s use of the FAIR & LOVELY mark in
commerce for goods in Class 3 is likely to cause consumer confusion. See, e.g., First
Pound Dep., Pet. Ex. 21 (¶¶ 1, 14); see also id., 26:19-29:25, Pet. Exs. 18-20.
As the Board has already held, such facts are sufficient to establish that Petitioner
“has a real interest in this proceeding and a reasonable basis for its belief in damage and
is not a mere intermeddler.” See D.I. 21, p. 6 (citing Hartwell Co. v. Shane, 17 USPQ2d
1569, 1570 (TTAB 1990)). Thus, Petitioner has standing to maintain this action.
B. Registrant Failed to File a Proper Declaration of Continued Use
Section 8 of the Lanham Act requires that a registrant file an affidavit (or
declaration) of continued use between the fifth and sixth years following the registration
date. 15 USC § 1058(a). To be proper, that filing must meet all of the requirements
Congress set forth in the statute, including that it be accompanied by “specimens or
facsimiles showing current use of the mark in commerce[.]” 15 USC § 1058(b)(1)(C). If
to conclude that such evidence “could not have established [the party’s] case”).
18
the trademark owner fails to file a proper affidavit or declaration within the prescribed
time, the Lanham Act specifies that the registration “shall be” cancelled. 15 USC §
1058(a). The courts have held that the Office has “no discretion” to waive any of these
statutory requirements. See, e.g., Checkers Drive-In Restaurants, Inc. v. Commissioner
of Patents and Trademarks, 51 F.3d 1078, 1085 (D.C. Cir. 1995); see also In re Mother
Tucker's Food Experience (Canada), Inc., 925 F.2d 1402, 1405 (Fed. Cir. 1991).
The Declaration of Continued Use that Registrant filed in May 2011 failed to
satisfy these minimum statutory requirements. As discussed, the images that Registrant
submitted were scans made more than five years earlier from some empty, pre-
production boxes. See Section IV.D.1; see also Farah Dep., 79:20-80:2. Furthermore,
those empty boxes did not reflect the packaging that Sopex was using for the products it
manufactured at that time. See Sections IV.C, D.3; see also Second Pound Dep., 44:14-
77:19, Pet. Exs. 25-33; Farah Dep., 105:10-106:6, 108:12-109:20, 110:18-111:2. And to
top it off, none of the boxes were for products that Registrant was even selling when it
filed the Declaration. See Section IV.D.2; see also Farah Dep., 114:19-116:11, Exs. F-
H. Registrant thus failed to submit a specimen showing “current use” of the mark as of
the filing of the Declaration, as Section 8 requires. Cf. 15 USC § 1058(b)(3).9
Registrant’s attempt to pass off five-year old images of empty, pre-production
boxes as “current specimens” also frustrated the very purpose of Section 8. As the
9 To be clear, this is not a situation where a registrant submitted a current specimen and a party is challenging whether the specimen showed trademark “use.” Here, Registrant did not submit a current specimen, such as an image of the product(s) it was supposedly selling at the time. As such, Registrant’s filing did not satisfy Section 8. There is no question that if the boxes Registrant scanned were actually current specimens, the (continued)
19
Office’s reviewing court has made clear, the reason why a registrant must submit a
current specimen with its Section 8 filing “is to support the allegations of continuing use
with some tangible evidence.” Morehouse Mfg. Corp. v. J. Strickland & Co., 407 F.2d
881, 887 (CCPA 1969) (emphasis added).10 This makes sense, and it is hardly a burden
for a registrant—who, after all, is asking the federal government to continue to recognize
and protect a valuable trademark—to take a new photograph every five or six years (and
later, every ten year) of the goods it is selling and provide the public with “tangible
evidence” that its mark is still in use. Indeed, one would think that if a registrant were
truly still using a mark in commerce, this would be an incredibly easy hurdle to clear.
manner in which the mark was displayed on them would qualify as a “trademark” use.
10 Although the Board in Morehouse held that the submission of a discontinued label as a specimen did not require the cancellation of the registration where the mistake was inadvertent and there was substantial evidence that the mark was in use, see 56 CCPA at 953-54, the Board’s decision rested in substantial part on the fact that at that time “[a]ll [Section 8] require[d] [was] an affidavit ‘showing that said mark is still in use,’ making no reference to submission of specimen labels.” See id. at 953; accord In re Precious
Diamonds, Inc., 208 USPQ 410, 411 (CCPA 1980) (distinguishing between a “minor technical defect” and “a statutory requirement”). In 1988, however, Congress amended Section 8 through the Trademark Law Revision Act and changed the wording so as to make the submission of “such number of specimens or facsimiles showing current use of the mark in commerce as may be required by the Director” a statutory requirement. See Public Law 100-667, § 110; see also In re Metrotech, 33 USPQ2d 1049, 1051 (Com'r Pat. & Trademarks 1993). Thus, the specimen requirement is now legally on par with the requirement that a registrant “set forth the goods and services recited in the registration.” Compare 15 USC § 1058(b)(1)(B) with § 1058(b)(1)(C); cf. also Precious Diamonds,
208 USPQ at 411 (suggesting that if the obligation to provide a “specimen” was “a statutory requirement,” then failure to comply with it would be treated the same as failing to make a timely filing); Torres v. Cantine Torresella S.r.l., 808 F.2d 46, 49 (Fed. Cir. 1986) (finding “failure to submit a specimen showing current use” to be “fatal” to an application for renewal because Section 9 (unlike Section 8 at that time) “require[d] the submission of a specimen showing current use of the mark”) (“The statutory requirements cannot be waived except on the grounds set forth in section 9 itself.”).
20
The fact that Registrant had to recycle images from December 2005 to show a
“specimen” as of May 2011 should thus set off alarm bells, particularly when considered
alongside Registrant’s lack of evidence of ongoing use. Indeed, Petitioner submits that if
Registrant had told the Office in May 2011 that the images Registrant was submitting
were more than five years old, the Office likely would have required Registrant to
provide further proof of use. See 37 CFR § 2.161. There is no way, however, that
Registrant could have satisfied such an Office inquiry. See Section V.C., infra.
The Board should therefore find that Registrant’s submission of five-year old
images of empty boxes that did not match the packaging or products that were allegedly
being sold at the time did not satisfy the statutory requirement that Registrant provide “a
specimen showing current use of the mark.” Cf. 15 USC § 1058(b)(1)(C). Consequently,
Registrant must be found to have failed to submit a proper declaration of continued use in
support of its NEW YORK FAIR AND LOVELY registration, with the result being that
the registration automatically expired on the sixth-year anniversary of its registration
date. See 15 USC § 1058(a); 37 CFR § 2.160; Land O' Lakes, 88 USPQ2d at 1959.
C. Registrant Was Not Making Use of the Mark in Commerce
The Board can decide this case on the issues briefed above. However, even if the
Board is willing to accept five-year old images of boxes that do not match a registrant’s
packaging or products as being proper specimens showing current use, but cf. 15 USC §
1058(b)(1)(C),11 there is still no proof that Registrant was actually using the NEW
YORK FAIR AND LOVELY mark in commerce as of the May 2011 filing date.
11 And if a registrant can recycle previously-filed specimens and satisfy the requirement (continued)
21
The phrase “use in commerce” as found in the Trademark Act means a “lawful
use in commerce.” TMEP, § 907 (emphasis added); 37 CFR § 2.69; see also, e.g.,
CreAgri, Inc. v. USANA Health Sciences, Inc., 474 F.3d 626, 630 (9th Cir. 2007); United
Phosphorus, Ltd. v. Midland Fumigant, Inc., 205 F.3d 1219, 1225-26 (10th Cir. 2000); In
re Pepcom Industries, Inc., 192 USPQ 400, 401 (TTAB 1976). As a result, the sale of
goods in packaging that violates federal law—such as federal labeling requirements for
cosmetic products—is not a “use in commerce” and therefore cannot give rise to or
support federal trademark rights. See CreAgri, 474 F.3d at 630-31 (selling products that
are “misbranded” in violation of the labeling requirements of 21 USC § 331(a) is not a
lawful “use” and cannot support a priority claim); In re Pepcom, 192 USPQ at 401
(same); see also The Clorox Company v. Armour-Dial, Inc., 214 USPQ 850, 851 (TTAB
1982) (“It has been the consistent position of this Board and the policy of the Patent and
Trademark Office that a ‘use in commerce’ means a ‘lawful use in commerce’, and the
shipment of goods in violation of federal statute, including the Food, Drug and Cosmetic
Act, may not be recognized as the basis for establishing trademark rights.”).
The Federal Food, Drug, and Cosmetic Act (21 USC §§ 321 et seq.) classifies the
goods listed in Registrant’s May 2011 Declaration of Continued Use (with the exception
of “soap”) as “cosmetics,” see 21 USC § 321(i) (a “cosmetic” includes any “article[]
intended to be … applied to the human body … for cleansing, beautifying, promoting
attractiveness, or altering the appearance”), and under U.S. law, a cosmetic is considered
to show “use,” the Office should make that clear as that would change prosecution practice. Petitioner submits, however, that such a change would be inconsistent with both the law and the purpose of the Section 8 (and Section 9) “specimen” requirement.
22
“misbranded” if its packaging lacks certain information. See 21 USC §§ 331(a), 362(b).
In particular, the packaging must (among other things) specify conspicuously the “name
and the place of business of the manufacturer, packer, or distributor,” including by
providing the company’s street address, city, and ZIP Code (or other postal code). See 21
USC § 362(b); see also, e.g., 21 CFR § 701.12(d) (April 2011).
As discussed, the only product that Registrant was arguably selling in May 2011
was a 100 ml jar of “litening” cream. See Section IV.D.2, supra. The packaging that
Registrant claims to have used for that product, however, did not even identify the
manufacturer (or packer or distributor), let alone provide details about the company’s
place of business. See Farah Dep., 37:7-21, 121:16-21, Reg. Ex. I(1). And none of the
other cosmetic products that Sopex made complied with federal law either: the boxes for
“gel” did not specify the name or place of business of the manufacturer (they simply
show a small “TechnoPharma” logo), and the boxes for the 50 gram tubes did not provide
the street address, city, or postal code for “Technopharma England.” Cf. id., Reg. Exs.
I(2)-I(8); see also Farah Dep., 121:16-21.12 Consequently, all of the products were
“misbranded,” meaning it would have been illegal for Registrant to sell or distribute
goods in any of those packages. See 21 USC §§ 331(a), 362(a); see also, e.g., CreAgri,
474 F.3d at 630-31; In re Pepcom, 192 USPQ at 401; Clorox, 214 USPQ 850 at 851.
12 In certain instances a company’s street address may be omitted. See 21 CFR § 701.12(d). However, the identity of the city from which a company operates may not. See id. In addition, cosmetics packaging must have other information, including, in many cases, a “Section 740.10 warning.” See 21 CFR §§ 740.01, 740.10 (requiring a warning on any product “whose safety is not adequately substantiated prior to marketing”). Registrant’s boxes lack these warnings as well. Cf. Farrah Dep., Reg. Ex. I(1)-I(8).
23
Because any use Registrant may have made of the NEW YORK FAIR AND
LOVELY mark for a cosmetic—including any “skin cleansers,” “cosmetics,” “medicated
skin creams,” or “medicated skin lotions”; see 21 USC § 321(i)—in or around May 2011
would have violated federal branding laws, see 21 USC §§ 331(a), 362(b); 21 CFR §
701.12(d), Registrant could not have lawfully been using the mark in commerce on or in
connection with such goods when it filed its Declaration of Continued Use. Accord, e.g.,
In re Pepcom, 192 USPQ at 401 (“the use of the mark ha[s] to be lawful, i.e., the sale or
shipment of the product under the mark ha[s] to comply with all applicable laws and
regulations”). Consequently, the Board should either acknowledge that the subject
registration has expired (for failure to file a proper Declaration of Continued Use; see
supra), or order that the registration be restricted to exclude those goods with which the
mark was not being lawfully used as of May 2011. Accord In re Bose Corp., 580 F.3d
1240, 1247 (Fed. Cir. 2009) (affirming a restriction as to goods with which the mark was
not in use at the time of the Section 8 filing); see also, e.g., CreAgri, 474 F.3d at 630-31
(“only lawful use in commerce can give rise to trademark priority”) (emphasis in
original); In re Pepcom, 1976 WL 21138 at *1 (use of a mark in a manner that violates
federal law “fails to create any rights that can be recognized by a Federal registration”).
Once again, though, Registrant has no evidence that it was using the subject mark
with any goods in or around May 2011 other than the misbranded “litening” cream jar.
Thus, the restriction imposed by the Board should apply to all covered goods as
Registrant has not offered any evidence at trial that it was lawfully using the subject mark
in commerce for any goods as of the time it filed its Declaration of Continued Use.
24
VI. CONCLUSION
An opposition or cancellation proceeding is meant to provide the reviewing
authority with an opportunity to “remedy oversight or error” that may have occurred
during ex parte proceedings. See In re Shell Oil Co., 26 USPQ2d 1687, 1691 (Fed. Cir.
1993). The Office, however, never had a real opportunity to consider whether
Registrant’s May 2011 Declaration of Continued Use met the requirements of Section 8
because Registrant did not tell the Office that the “specimens” it submitted were five-
year old images of empty boxes for products that were not even being sold in commerce.
On this first review, the Board should make it clear that Registrant’s filing did not satisfy
the statutory requirements of Section 8, and that, as a result, the subject registration
expired by operation of law on the sixth anniversary of its registration date.
Respectfully submitted, KENYON & KENYON LLP Date: May 13, 2016 /Jonathan D. Reichman/ Jonathan D. Reichman KENYON & KENYON LLP One Broadway New York, NY 10004
Tel.: (212) 425 – 7200 Fax: (212) 425 – 5288
William M. Merone KENYON & KENYON LLP 1500 K Street, N.W.; Suite 700 Washington, DC 20005
Tel.: (202) 220 – 4200 Fax: (202) 220 – 4201
Counsel for Petitioner,
Unilever Plc
CERTIFICATE OF SERVICE
I hereby certify that a copy of the foregoing Petitioner’s Opening Brief on the Case was
served on each of the listed parties or counsel on the date and as indicated below:
By First Class Mail (Postage Prepaid)
David M Rogero DAVID M ROGERO PA 2625 Ponce De Leon Blvd, Suite 280 Coral Gables, Florida 33134-6018 Counsel for Registrant
Date: May 13, 2016 /William M. Merone/ William M. Merone KENYON & KENYON LLP 1500 K Street, N.W.; Suite 700 Washington, DC 20005
Tel.: (202) 220 – 4200 Fax: (202) 220 – 4201
Counsel for Petitioner,
Unilever Plc