Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA529771
`ESTTA Tracking number:
`04/01/2013
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`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91173963
`Defendant
`Reckitt Benckiser LLC
`DEBRA D FAULK
`GARY ROBINSON PA
`401 E. Jackson Street, Suite 2700Post Office Box 3324 (33601-3324)
`TAMPA, FL 33602
`UNITED STATES
`ptotpa@gray-robinson.com
`Opposition/Response to Motion
`Debra Deardourff Faulk
`ptotpa@gray-robinson.com
`/debra deardourff faulk/
`04/01/2013
`MMResponse to Compel.pdf ( 11 pages )(35773 bytes )
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`Proceeding
`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`MINI MELTS, INC.
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`Opposer,
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`v.
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`RECKITT BENCKISER LLC
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`Reckitt.
`____________________________________/
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`Opposition No.: 91173963.
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`Application Serial No. 78/814,088
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`Application Serial No. 78/814,106
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`RECKITT’S RESPONSE IN OPPOSITION
`TO OPPOSER’S MOTION TO COMPEL
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`Applicant, Reckitt Benckiser, LLC (“Rekcitt”), by and through its undersigned counsel,
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`hereby files its Response in Opposition to Opposer’s Motion to Compel.
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`BACKGROUND
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`On November 15, 2006, Opposer initiated an Opposition Proceeding in the United States
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`Patent and Trademark Office against both of Reckitt’s pending trademark applications for the
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`mark MINI MELTS and MINI-MELTS (Serial Nos. 78/814,088 and 78/814,106). On May 31,
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`2007, Opposer sued Reckitt in federal court for trademark infringement and trademark dilution
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`under Texas state law concerning Reckitt’s use of the subject mark “Mini Melts.” Mini Melts,
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`Inc. v. Adams Respiratory Operations, Inc. d/b/a Adams Respiratory Therapeutics, et al., Civil
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`Action No. 4:07cv271. A stay to this Opposition Proceeding was granted pending the outcome of
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`the federal litigation. A jury trial on the trademark infringement issue was held from June 19,
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`2009, through June 25, 2009, in the Eastern District of Texas. Simultaneously, the district court
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`conducted a bench trial on the equitable issue of trademark dilution by tarnishment. The jury
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`instructions on trademark infringement clearly asked the jury whether Reckitt used Opposer’s
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`trademark without consent and in a manner likely to cause confusion, mistake or deceit. The
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`jury found that Opposer had not proven that Reckitt had used the Mini Melts trademark in a
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`manner likely to cause confusion, mistake, or deceit within the meaning of Section 2(d) of the
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`Lanham Act. Further, the district court ruled in Reckitt’s favor finding no dilution by
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`tarnishment.
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`On January 10, 2010, Opposer filed a Notice of Appeal in the Fifth Circuit Court of
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`Appeals. Oral Argument was held on March 1, 2011. The Appellate Court entered final
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`judgment in favor of Reckitt on March 11, 2011. Opposer’s Petition for Rehearing En Banc was
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`denied and a Mandate issued April 19, 2011. On July 8, 2011, Opposer filed a Petition for Writ
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`of Certiorari in the U.S. Supreme Court. On October 3, 2011, it was denied.
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`After five years of litigation, there has been a final determination of Civil Action No.
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`4:07cv271—a jury in the Eastern District of Texas, the Fifth Circuit Court of Appeals, and the
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`United States Supreme Court have held there is no likelihood of confusion between Opposer’s
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`trademark MINI MELTS and Reckitt’s use of the trademark MINI MELTS. Despite this
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`overwhelming determination, Opposer now seeks to resume its attempt to oppose Reckitt’s
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`pending trademark applications.
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`Currently before the Board is Opposer’s Motion to Compel Answer to Interrogatories and
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`Production of Documents, which requests seek information related to hypothetical harmful
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`results of Mucinex Mini Melts cough and cold medicine. Notably, throughout the years of
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`litigation in federal court and now during this opposition proceeding, Opposer has continued to
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`attempt to distract and prejudice the judiciary by its focus on a hypothetical, public danger
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`argument. Not surprisingly, Opposer again attempts to argue that these hypothetical, public
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`dangers are relevant to likelihood of confusion. However, this argument is without merit, and
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`this precise information was excluded from the trial in Civil Action No. 4:07cv271. Because all
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`the requested discovery is completely irrelevant to the issues in this case, any discovery related
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`to the safety of Mini Melts cough and cold medicine is objectionable and the Board should deny
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`Opposer’s Motion to Compel.
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`MEMORANDUM OF LAW
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`As set forth in its own Motion, Opposer Mini Melts, Inc., manufacturers a food product
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`that is sold at various locations, including, for example: leisure areas, parks, family entertainment
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`centers, and fairs. Reckitt’s Mini Melts, on the other hand, is a pharmaceutical product sold in a
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`controlled environment—not in leisure areas—and can only be purchased by adults. Opposer
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`and Reckitt advertise their products in different venues. Opposer’s Mini Melts ice cream can be
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`purchased directly by children, while Reckitt’s Mini Melts cough and cold medicine are only
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`administered under adult supervision with extensive warnings and controls. Despite these vast
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`differences, Opposer is attempting to obtain information regarding consumer complaints and
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`incident reports that allegedly demonstrate that Reckitt’s product creates a danger or presents a
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`safety issue to the public. However, any such information is irrelevant to Opposer’s claims, is
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`inappropriate, and is highly prejudicial.
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`1. Information regarding any potential or hypothetical harm of Mucinex Mini Melts is
`completely irrelevant to the opposition proceedings.
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`The safety of Reckitt’s Mini Melts cough and cold medicine is irrelevant to the the
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`elements of a trademark infringement in an opposition proceeding. In the extensive trademark
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`infringement litigation involving the exact same trademarks at issue in this opposition
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`proceeding, this precise argument was argued by Opposer, heard, and rejected. The federal
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`courts found the information irrelevant and highly prejudicial.
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`Additionally, the cases cited by Opposer in support of this proposition are all
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`distinguishable and therefore inapplicable. All of the cases cited by Opposer are set in a context
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`where both of the at-issue products were pharmaceuticals dispensed by a pharmacist, which is
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`entirely inapposite to the case at hand. Although, Mini Melts cough and cold medicine is a
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`pharmaceutical preparation, it is sold, marketed, and administered in completely different
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`contexts than Opposer’s ice cream. Therefore, the cases are not relevant to the current
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`proceeding.
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`Mini Melts cough and cold medicine is an exceptionally safe product. Specifically, Mini
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`Melts cough and cold preparation can only be purchased from the medicine aisle of a drug store
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`by adults. (Ex. D-1238). It is intended to be administered by the adult to the child. Its
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`packaging includes specific warnings to keep out of the reach of children. (Tr 5:89 – 90). Mini
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`Melts cough and cold medicine includes specific warnings to keep out of the reach of children
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`and are very clearly intended to be administered by an adult. Furthermore, even if the adult
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`carelessly allowed the child to have access to Mini Melts cough and cold medicine, the
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`individual packets are very difficult for a child to open (without a pair of scissors, which the
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`child shouldn’t have access to either). (Tr 5:93). Opposer’s Mini Melts ice cream contains no
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`similar warnings and is sold directly to children from freezers, carts, and vending machines at
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`amusement parks, leisure areas, fairs, and other entertainment venues. Nonetheless, Opposer
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`impermissibly seeks to transform a case about branding into a case about the safety of Reckitt’s
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`Mini Melts product.
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`The active ingredient, guaifenesin, has been monographed by the Food and Drug
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`Administration (“FDA”) to be generally recognized as safe and effective such that its sale
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`according to published standards is automatically authorized by the FDA as well as the
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`Consumer Products Safety Commission. (Tr 5:86, Tr 5:91). Excessive dosing of guaifenesin
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`may result in vomiting or diarrhea.
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`Opposer argues that Mini Melts cough and cold medication is unsafe. (Tr 2:171) (Tr
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`3:128). Its bizarre argument is that a child may mistake awful-tasting guaifenesin as ice cream,
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`may then overdose on guaifenesin, may then vomit, may then aspirate the vomit, and may then
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`die due to asphyxiation. (Tr 2:171). However, at trial Opposer presented no evidence to support
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`its bizarre hypotheticals. Indeed, no one has ever challenged Reckitt’s Mini Melts cough and
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`cold medicine in a products liability lawsuit. (Tr 5:98 – 99).
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`During the pre-trial conference on June 8, 2009 (Dkt. # 199), the district court granted
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`Reckitt’s Motions in Limine pertaining to the safety of Mini Melts cough and cold medicine:
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`Motion in Limine to Exclude Evidence or Argument Concerning the Safety of Mini Melts (Dkt.
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`# 164); Motion in Limine to Exclude Argument Concerning the Safety of the Packaging for
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`Children’s Mini Melts (Dkt. # 165); and Motion in Limine to Exclude Any Evidence Concerning
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`the Safety of Mini Melts Cough and Cold Medicine to Support a Claim for Willful Infringement
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`and Punitive Damages (Dkt. # 167).
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`Here, parents/adults purchasing medicinal products exercise a high degree of care when
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`selecting the appropriate medication for a child. (Ex. D-1238). Parents scrutinize ingredients,
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`dosage, potential side effects, warnings, the purpose of the medication and many other factors
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`before purchasing and giving a child medication. Only adults, not their children, are the
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`purchasers of Reckitt’s products. (Tr 4:20).
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`Opposer is impermissibly seeking to transform a case about trademark branding into a
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`case about the safety of the Mini Melts cough and cold medicine. This is not a products liability
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`case, and even if it were, the evidence of a handful of consumer complaints in MedWatch reports
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`concerning Mini Melts cough and cold medicine would not even come close to meeting the
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`threshold necessary to sustain a products liability suit against Reckitt.
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`The safety of FDA-approved Mini Melts cough and cold medicine is not relevant to
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`Opposer’s claims for trademark infringement. Nor does Opposer have any standing to challenge
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`“public policy” issues related to the safety of Mini Melts cough and cold medicine. Reckitt is in
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`full compliance with all FDA regulations with respect to product labeling, ingredients and
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`packaging.
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`Despite the fact that Reckitt has sold an estimated 779.3 million doses of medicine under
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`the Mucinex brand name, Opposer cannot cite to one incident that supports its artificial “danger
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`to the public” hypotheticals. (Ex. D-1238) (Ex. D-1949). As stated above, Mini Melts cough and
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`cold medicine is an extremely safe monographed drug that is automatically approved by the
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`Food and Drug Administration (and by the Consumer Products Safety Commission). No one has
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`ever challenged Mini Melts cough and cold medicine in a products liability lawsuit. (Tr 5:86 –
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`88).
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`Opposer’s argument that Mini Melts cough and cold medicne is potentially unsafe
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`inevitably requires that this Board accept as true numerous intervening premises which are
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`required to occur for Opposer’s argument to be relevant. See United States v. James, 555 F. 2d
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`992, 1000 n.47 (D.C. Cir. 1977) (danger of prejudice rendered evidence inadmissible where
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`inference necessary for relevance attenuated by need for intervening premises). For example,
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`Opposer’s argument presupposes that the parent does not store Mini Melts cough and cold
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`medicine properly, the parent does not read the warnings on the box, the parent does not
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`adequately supervise the child, the child manages to gain access to the medicine, the child has
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`access to scissors and cuts open numerous individual packets of medicine, the child ingests
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`numerous individual packets of medicine without anyone noticing, the child vomits as a result,
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`the child then aspirates on his vomit and dies, this information somehow is publicized to
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`consumers of Mini Melts ice cream, and consumers of Opposer now will not purchase the ice
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`cream because they now associate the ice cream with the ever-so-dangerous Mini Melts cough
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`and cold medicine. This is simply too farfetched to be logical or relevant.
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`Each of the cases in the chart below involved trademark infringement issues concerning
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`products which could be considered to be of a dangerous nature. None of these cases (indeed,
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`Opposer cannot identify a single case adopting its unorthodox view of trademark law) inject
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`product safety considerations into the analysis of the standard likelihood of confusion factors.
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`The test for likelihood of confusion is the same for all products across all industries – trademark
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`law is not an avenue to short-circuit product safety law.
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`Case
`AM General Corp. v. DaimlerChrysler Corp.
`311 F.3d 796, 825 (3d Cir. 2002)
`Arrow Fastener Co. v. The Stanley Works
`59 F.3d 384, 391 (2d Cir. 1995)
`North American Medical Corp. v. Axiom Worldwide
`522 F.3d 1211, 1220-21 (11th Cir. 2008)
`Everett Laboratories, Inc. v. Vertical
`Pharmaceuticals, Inc.
`227 Fed. Appx. 124, 128 (3d Cir. 2007)
`Kos Pharmaceuticals, Inc. v. Andrx Corp.
`369 F.3d 700, 709 (3d Cir. 2004)
`Nuclear of Omaha Ins. Co. v. Novak
`775 F.2d 247, 248 (8th Cir. 1985)
`Total Petroleum Puerto Rico Corp. v. Colon-Colon
`577 F.Supp.2d 537, (D.P.R. 2008)
`Pfizer Inc. v. Sachs
`625 F.Supp.2d 512, 521 (S.D.N.Y. 2009)
`Exxon Corp. v. Humble Exploration Co.
`524 F.Supp. 450, (N.D. Tex. 1981) rev’d in part on
`other grounds, 695 F.2d 96 (1983)
`Top Tobacco, L.P. v. N. Atlantic Operating Co.,
`2007 WL 118527 at *3 (N.D. Ill. Jan. 4, 2007)
`Galaxy Chemical Co. v. BASF Corp.,
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`Goods/services
`Automobiles
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`Hand-operated staple gun vs. pneumatic
`staplers
`Spinal traction devices
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`Prescription vitamin
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`Prescription drug
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`“Mutant of Omaha” to protest nuclear
`arms
`Gasoline
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`“Viagra” mark used on a missile
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`General exploration activities or the sale
`of crude oil and natural gas
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`Tobacco products
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`Weed killer
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`1989 WL 31043 at *3 (N.D. Ill. Mar. 24, 1989)
`Anheuser-Busch, Inc. v. Balducci Publications,
`28 F.3d 769, 774 (8th Cir. 1994)
`Planet Hollywood (Region IV), Inc. v. Hollywood
`Casino Corp.,
`80 F.Supp.2d 815, 879-80 (N.D. Ill. 1999)
`Eveready Battery Co. v. Adolph Coors Co.,
`765 F.Supp. 440, 449-50 (N.D. Ill. 1991)
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`Michelob beer vs. fictitious “Michelob
`Oily” product
`Restaurant vs. casino
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`Battery vs. brewer
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`Opposer is desperate to argue before the Board that Mini Melts cough and cold medicine
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`is a dangerous product for children. Plaintiff is not seeking to introduce evidence that the
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`packaging for Mini-Melts cough and cold medicine is unsafe. For this evidence simply does not
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`exist. Rather, Opposer seeks to introduce “evidence” suggesting or implying that the packaging
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`for Mini-Melts cough and cold medicine is unsafe. All the evidence Opposer cites to would
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`require the fact finder to make inferences regarding product safety. Further, Opposer goes to
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`great pains to create bogus hypotheticals and “what if’ scenarios in an effort to create the
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`appearance that the consuming public might suffer some type of injury from Reckitt’s products
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`sometime in perpetuity. However, there no evidence supporting such a claim, and additionally,
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`any such evidence is irrelevant to Opposer’s claims in this case.
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`This is a trademark opposition proceeding, not a products liability action. Additionally,
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`Opposer has not suffered any injury with respect to the safety of Mini Melts cold and cough
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`medicine, and there is certainly no causal connection between the speculative, hypothetical
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`injury pled by Opposer and Reckitt’s Mini Melts cough and cold medicine. Without any proof
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`of injury to the Opposer, coupled with the danger of the product with a causal connection to an
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`injury, Opposer has no basis for any sort of products liability argument against Reckitt. See
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`Firestone Steel Prods. Co v. Barajas, 927 S.W. 2d 608, 613 (Tex 1996); See Nebgen v.
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`Minnesota Min. & Mfg. Co., 898 S.W. 2d 363 (Tex. App. San Antonio 1995), writ denied, (Oct.
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`19, 1995) (The two essential elements to establish a causes of action for products liability are
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`duty and causation.)
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`Opposer creates an artificial “danger to the public” hypothetical that has not once
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`occurred despite the fact that Reckitt has sold an estimated 779.3 million doses of products under
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`the Mucinex brand name. More importantly, Mini Melts cough and cold medicine is regulated
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`and approved by the Food and Drug Administration and by the Consumer Products Safety
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`Commission and no one has ever challenged Mini Melts cough and cold medicine in a products
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`liability lawsuit.
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`2. Even if relevant, the information requested is highly prejudicial to Reckitt.
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`Because the information requested is highly prejudicial, this Board should deny
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`Opposer’s Motion to Compel and preclude Opposer from discovery of any such information.
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`Fed. R. of Evid. 403 provides that evidence that is relevant may be excluded where its probative
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`value is substantially outweighed by the danger of unfair prejudice. Unfair prejudice has been
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`defined as “an undue tendency to suggest decision on an improper basis, as for example, an
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`emotional basis.” United States v. Black, 588 F.2d 1283, 1285 (9th Cir. 1979) (internal quotation
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`omitted); see also United States v. Ham, 998 F.2d 1247, 1252 (4th Cir. 1993) (“We have defined
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`undue prejudice as a genuine risk that the emotions of the jury will be excited to irrational
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`behavior, and that this risk is disproportionate to the probative value of the evidence.”) (internal
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`quotation omitted).
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`Accusations that Mini Melts cough and cold medicine may be harmful is precisely the
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`type of evidence that is intended to appeal to the emotions and could likely excite irrational
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`behavior. Even though there is no claim for personal injury in this case, the Board could assume
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`that the question of whether or not Mini Melts cough and cold medicine is harmful is relevant to
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`Opposer's trademark opposition. Such an assumption, based on an emotional reaction, would be
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`entirely improper and unfounded, as it is dependent on numerous intervening premises. United
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`States v. James, 555 F. 2d 992, 1000 n.47 (D.C. Cir. 1977) (danger of prejudice rendered
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`evidence inadmissible where inference necessary for relevance attenuated by need for
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`intervening premises); Harper v. Illinois Cent. Gulf R.R., 808 F. 2d 1139, 1140-41 (5th Cir. 1987)
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`(evidence of potential hypothetical injury inadmissible in personal injury claim because too
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`prejudicial and intended to inflame emotions of jury).
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`During the federal litigation, the inferential nature of Opposer’s purported evidence
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`drastically reduces it probative value. See Alverio v. Sam’s Warehouse Club, Inc., 253 F.3d 933,
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`942 (7th Cir.)(“The length of the chain of inferences necessary to connect the evidence with the
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`ultimate fact to be proved necessarily lessens the probative value of the evidence and may
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`therefore render it more susceptible to exclusion as unduly confusing…”)(internal citations
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`omitted). And while the probative value of Opposer’s indirect evidence was quite low, the
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`potential for prejudice was enormous. In fact, it is difficult to imagine anything more prejudicial
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`and emotional than the specter of a product being harmful to small children. Not only is the
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`information sought by Opposer unproven, any such information is highly prejudicial, and is
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`clearly intended to inflame emotions. Consequently, any such information is unfairly
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`prejudicial, and not subject to discovery.
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`Accordingly, because the evidence sought by Opposer is of such minimal relevance and
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`is so unduly prejudicial to Reckitt’s case, the district court properly excluded from the jury trial,
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`any evidence or argument suggesting that Mini Melts cough and cold medicine is unsafe. Most
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`importantly, we know that Opposer’s purported evidence regarding the safety of Mini Melts
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`cough and cold medicine that was excluded during the jury trial, was indeed not probative of
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`safety, because it was all vetted in the bench trial and yet the district court judge still found no
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`dilution.
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`CONCLUSION
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`Because the information Opposer seeks is of such minimal relevance and is so unduly
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`prejudicial to Reckitt, this Board should deny Opposer’s Motion to Compel and preclude
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`Opposer from discovery of any information regarding potential harm from Mini Melts cough and
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`cold medicine.
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`CERTIFICATE OF SERVICE
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`I HEREBY CERTIFY that on April 1, 2013 the foregoing was served upon Opposer via
`email to Robert G. Oake, Esquire at: rgo@oake.com.
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`/s/Debra D. Faulk
`Debra D. Faulk
`Stefan V. Stein
`GrayRobinson, PA
`Post Office Box 3324
`Tampa, FL 33601-3324
`(813) 273-5000
`(813) 273-5145 (fax)
`debra.faulk@gray-robinson.com
`stefan.stein@gray-robinson.com
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