Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA214983
`ESTTA Tracking number:
`06/02/2008
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91179242
`Plaintiff
`Guthy-Renker Corporation
`Daniel M. Cislo
`Cislo & Thomas LLP
`1333 2nd Street, Suite 500
`Santa Monica, CA 90401
`UNITED STATES
`dancislo@cislo.com, sduncan@cislo.com, emacdonald@cislo.com
`Opposition/Response to Motion
`Sean D. O'Brien, Esq.
`dancislo@cislo.com, sobrien@cislo.com, salijani@cislo.com
`/Sean D. O#Brien, Esq./
`06/02/2008
`Executed Opposer's Response to Applicant's Motion to Extend Discovery.PDF (
`24 pages )(1609652 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`

`
`Attorney Docket No. 07-19894
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`IN THE MATTER OF TRADEMARK SERIAL NO. 77/013,634
`PUBLISHED ON MAY 1, 2007
`
`
`GUTHY-RENKER CORPORATION,
`
`Opposer,
`
`V.
`
`OLD TOLEDO BRANDS, INC.,
`
`Applicant.
`
`%’%/\-/\c/\/\/\/\/\J\/\J
`
`Opposition No.: 91,179,242
`
`0PPOSER’S RESPONSE TO APPLICANT’S MOTION TO EXTEND THE DISCOVERY PERIOD
`
`Opposer GUTHY—RENKER CORPORATION hereby responds to Applicant OLD
`
`TOLEDO BRANDS, INC.’s Motion to Extend the Discovery Period. Applicant’s motion should
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`be denied since it does not set forth with particularity the facts that Applicant alleges constitute
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`good cause and since,
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`in any event, discovery deficiencies are not good cause to extend
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`discovery.
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`1.
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`INTRODUCTION AND STATEMENT OF FACTS
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`Guthy-Renker Corporation provides, among many other goods and services, acne
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`treatment preparations and related cosmetic products under
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`its famous PROACTIV and
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`

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`PROACTIV SOLUTION trademarks.
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`(See Ex. A, Notice of Opposition.)* By way of its intent-
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`to-use application, Applicant Old Toledo Brands, Inc. seeks to register the mark PROACTIVE
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`for more than 150 different goods in five international classes.
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`(Ex. B, TARR Status of U.S.
`
`Trademark Serial No. 77/013,634.) Guthy-Renker opposes Old Toledo’s application by way of
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`the present proceeding.
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`During the discovery phase of this matter, each party propounded written discovery
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`requests on the other.
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`(O’Brien Decl. 1] 4.)
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`In response, each party has also provided its
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`objections to the requests.
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`(Id.) Opposer Guthy-Renker provided substantive responses to many
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`of Applicant’s requests along with its objections. (Id.)
`
`Around May 12, 2008, Applicant filed its Motion to Extend the Discovery Period based
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`on an asserted discovery dispute between the parties over the sufficiency of Guthy-Renl<er’s
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`responses.
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`(Applicant’s Mot. to Extend Discovery.)
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`In particular, Applicant demands that it
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`“must be permitted to preserve the opportunity to take depositions or serve additional discovery
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`requests based upon the complete responses it anticipates receiving from Opposer.” (Id. at 1.)
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`II.
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`AN EXTENSION OF THE DISCOVERY PERIOD CAN ONLY BE OBTAINED
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`WHERE THE MOVING PARTY SHOWS GOOD CAUSE FOR THE
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`RE§ QUESTED EXTENSION
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`Under Fed. R. Civ. P. 6(a), an extension of the discovery period can only be obtained
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`where the moving party shows good cause for the requested extension. As a result, the Board
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`carefully scrutinizes motions to extend time to determine whether good cause was shown.
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`Trademark Trial & Appeal Board Manual of Procedure § 509.0l(a) (hereinafter T.B.M.P.).
`
`I Unless otherwise indicated, all references to exhibits in this Memorandum refer to the exhibits
`attached to the Declaration of Sean D. O’Brien in Support of Opposer’s Response to Applicant’s
`Motion to Extend the Discovery Period (hereinafter O’Brien Decl.) submitted herewith.
`
`

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`Even where good cause is shown, however, the Board has the discretion to deny such a request.
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`Fed. R. Civ. P. 6(a). Moreover, the moving party has the burden to persuade the Board that it
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`diligently met its discovery responsibilities and, as a result, should be granted additional time for
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`discovery. Nat’! Football League v. DNH Mgmt, LLC, 85 U.S.P.Q.2d (BNA) 1852, 2008 TTAB
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`LEXIS 3, *4 (T.T.A.B. 2008).
`
`Here, the Board should use its discretion to deny Applicant’s request since good cause
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`has not been shown for extending the discovery period.
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`III.
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`GOOD CAUSE IS NOT SHOWN BY APPLICANT SINCE APPLICANT’S
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`SPARSE MOTION DOES NOT SET FORTH WITH PARTICULARITY THE
`FACTS THAT IT ALLEGES CONSTITUTE GOOD CAUSE
`
`“A motion to extend must set forth with particularity the facts said to constitute good
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`cause for the requested extension; mere conclusory allegations lacking in factual detail are not
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`sufficient.” T.B.M.P. § 509.01(a), citing Johnston Pump/Gen. Valve Inc. v. Chromalloy Am.
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`Corp., 13 U.S.P.Q.2d (BNA) 1719, 1720 n.3 (T.T.A.B. 1989) (“The presentation of one’s
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`arguments and authority should be presented thoroughly in the motion or the opposition brief
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`thereto”).
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`As noted above, “[t]he Board will ‘scrutinize carefully’ any motion to extend time, to
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`determine whether the requisite good cause has been shown.” T.B.M.P. § 509.0l(a). Although
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`the Board is liberal with granting such motions, the moving party has the burden to persuade the
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`Board that it diligently met its discovery responsibilities, entitling it to additional time for
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`discovery. Nat ’l Football League, 2008 TTAB LEXIS at *4.
`
`Applicant’s motion consists of just ten typewritten lines of substantive motion and
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`allegations, and it
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`includes only two sentences that are arguably factual assertions.
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`(See
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`

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`Applicant’s Mot. to Extend Discovery at 1.) The remaining sentences are conclusory statements
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`that lack factual detail.
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`if (See id.)
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`In addition, Applicant’s motion contains no supporting
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`declaration to set forth specific facts, no exhibits to support its allegations, no citations to the
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`record to substantiate its allegations, and no citations to case law, statute, or rule to support its
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`position.
`
`(See id.) Applicant’s very short motion also does not provide any facts to show
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`whether Applicant has been diligent in its own discovery duties. (See id.)
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`As such, Applicant has not set forth with particularity the facts that it alleges constitute
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`good cause, and Applicant did not meet the burden to show diligence in meeting its discovery
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`responsibilities. As a result, Applicant has not shown good cause why the discovery period
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`should be extended.
`
`IV.
`
`GOOD CAUSE IS NOT SHOWN BY APPLICANT SINCE THE ALLEGED
`DEFICIENCIES IN GUTHY-RENKER’S DISCOVERY RESPONSES ARE NOT
`
`GOOD CAUSE TO EXTEND DISCOVERY
`
`Even if the Board determines that Applicant has set forth facts with the requisite
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`particularity, alleged deficiencies in discovery responses are not good cause to extend discovery
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`where a motion to compel was not filed.
`
`See, e.g., Societa Per Azioni Chianti Rufiino
`
`Esportazione Vinicola Toscana v. Colli Spolentini Spoletoducale SCRL, 59 U.S.P.Q.2d (BNA)
`
`1383, 1383, 2001 TTAB LEXIS 360 (T.T.A.B. 2001) (“The Board rejects opposer’s contention
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`that opposer’s desire to ‘formally deal’ with certain purported deficiencies in applicant’s
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`discovery responses constitutes good cause for an extension of opposer’s testimony period.”).
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`As such, a motion to extend the discovery period is not a substitute for a motion to compel
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`discovery. Id. (holding that, in the absence of a motion to compel, “any purported deficiencies in
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`applicant’s discovery responses do not constitute good cause for an extension of opposer’s
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`testimony period”).
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`

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`In its motion, Applicant asserts that there is a discovery dispute between the parties over
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`the sufficiency of Guthy-Renker’s responses.
`
`(App1icant’s Mot. to Extend Discovery at 1.)
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`Applicant further complains that the alleged deficiencies are the basis of its motion to extend
`
`discovery. (Id.) As such, Applicant seeks to extend discovery based on Guthy-Renker’s alleged
`
`deficient discovery responses. Such an extension, however, is not permitted by the Board. See
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`Societa Per Azioni Chianti Ruffino Esportazione Vinicola Toscana, 59 U.S.P.Q.2d (BNA) at
`
`1383.
`
`As a result, Applicant has not shown good cause why the discovery period should be
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`extended.
`
`///
`
`///
`
`///
`
`

`
`V.
`
`CQNCLUSIDN
`
`Since App‘!ic2mt’s sparse. .1n.oti0n dam; ncnt. sei fnrtla with puarticularity the ‘facts that ii
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`IE3t'J1‘1:‘>‘fi.T.¥.11'ii‘- good cause and, cm-zn so, since discovcxry rjeficiencies are not good cause: to
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`GXTEYEEE discovery, A_pp‘1ic.a1'1t has 11:31‘ shown gcyod cause why the discm«‘¢:tfy period should. be
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`»s:xtenr;§<:d for this _procr:&di11g.
`
`'I'here'fc_n:e,
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`(}pp0::§21‘ Guthy~Ra.~3T:ii<e1* Cio1‘13»:1{atio:1 1‘ec;1.1ests
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`that
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`A1::p1ic:.ar:t’s nmtion. be df.’,‘»1‘1i§fd by the B(}£u'{}_. that dis<:.m-'ery rcnlain closed in this nmttex‘, and mat
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`thetrial.d::1ies~1‘<2n1ain as pI‘E:\-’i(‘)L1S1}-' set by the Board.
`
`Dated: ;hu1c:
`
`2003
`
`RespE:cifu},l3g' S1.lbI’1'}i.1i1'{3d,,
`
`{.‘.ISI...() Ex’-: T}-{OIVIAS LLP5
`
`W
`I3z:.t"i1i_.;°5‘j 7i‘v‘i. Cislo, Esq.
`geéafi D, O’]3rie11, Esq.
`Cf1SEL,(Z}
`'ITI:1{} MAS LLP
`
`1333 2nd Sweet, Smte S0()
`Sarita Monica, CaIifomi.a 9U4()1~4'1 10
`Tel: (310) 451-{){'.i47
`I9‘ (310) 394~4-47?
`
`."§&ttOI'£3(i'~}"S‘ for (I}pp0s::':r
`GiJ'I'£{{‘Y—RENliiiER C ORPORAT1 ON
`
`

`
`CEYRT§.'F.E'CA"E7E {EFF SL1.R‘WCE
`
`I hensby c3rt.i.i’y
`
`that
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`a
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`curry of ‘the
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`‘f7<32'egoi11g OF]E’0SER‘S R132-SP()N23‘F.‘ TO
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`A}’¥’1.I(Ix\AN"l"S MOTION TO .I3§<i‘T}E1N.lL3 H1131 iI)Z[S{I.‘UVERY PERIOD was servcbd upon the
`
`a.1*E{m‘1e§.’
`
`1301‘ Old Toledo Brzinds,
`
`Inc., by xslecimniszs mail
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`to <3.bake1‘@br~1;mlavwzom> and
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`<'im.selinI~:.a@b1i~'t1‘11law.c0m>, with £1 cwpjy‘ by fimt. C-lass £1151“, postage pre1:)aid_. to Stephen B21l<er,
`
`Esq. anti E\/i0‘i.1‘a Sei_in1=:a, 3§~lsq., 13ai»:.c':r and fR_2'mm=:11s, P,A,_. 575 iR.£:«‘L3'tc: 28, Sllim 102, Rariian, New
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`.¥er::c~.)-" 08869 cm the date givc.11 below.
`
`§\_
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`1Z)aic::d: June 2, 2008
`
` \
`
`
`
`
`)an.ie] M. C‘.i3I(:s‘,~ Esq.
`Sean D. O’}3rie'r1, Esq.
`
`CER"§‘EFECAT.§I GE?" 'E%1.E;;§.{1iL"'.‘§."RQNEC FEELING
`
`I. hereby ce1';iify that this paper {aIc»11g, with 3115;‘ paper refer1‘ed to
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`being attachenl or
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`<21'1c.l0s::d) is bei1i1§34 filéd with the United Staicas Patch”: and Trad«3ma1"E< (Il‘J;’fis:e via. the iiiecixroniat
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`
`1333 ;2r1d.S1rec:t, Suite 500
`Santa. Monica, Ca1ifm:11iAa. 904-3 1 1 £9
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`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Attorney Docket No. 07-19894
`
`IN THE MATTER OF TRADEMARK SERIAL NO. 77/013,634
`PUBLISHED ON MAY 1, 2007
`
`
`GUTHY-RENKER CORPORATION,
`
`Opposer,
`
`v.
`
`OLD TOLEDO BRANDS, INC.,
`
`Applicant.
`
`\./\2\./\&\—é\f\i\J\i\i\J
`
`Opposition No.: 91,179,242
`
`DECLARATION or SEAN D. O'BRIEN IN SUPPORT OF OPPosER’s RESPONSE TO
`
`APPLICANT’S MOTION TO EXTEND THE DISCOVERY PERIOD
`
`I, Sean D. O’Brien, declare as follows:
`
`1.
`
`I am an attorney admitted to practice in the State of California.
`
`I am a member of
`
`the law firm of Cislo & Thomas LLP representing Guthy-Renker Corporation in this action.
`
`I
`
`make this declaration of my own personal knowledge or on information and belief where so
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`stated.
`
`If called as a witness, I could and would competently testify to the truth of the matters
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`asserted herein.
`
`2.
`
`A true and correct copy of the Notice of Opposition for this proceeding, as it was
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`retrieved from the website of the United States Patent and Trademark Office (USPTO) on June 1,
`
`2008, is attached as Exhibit A.
`
`

`
`A mm: and corrcect copy of the TARR Status of US.
`
`“I‘1'ade1na1*k Serial No.
`
`w 3
`
`.
`
`’7’?10l3,634-, as it was ';‘etriev'ed from the website: of "the: Uni'[z=:<‘l State-s Patent and 'I‘rademm-k.
`
`Officfz {USPTO) an June 1, 2008, is at.ta:u:1'm=:d as i§ix.E'1ihit B.
`
`4-.
`
`During ‘fht:
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`diSC()VCi’_’y' phase {)f
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`this matter, each party pmpnundesd writtrm.
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`discm-my 1‘equesii.<; on the other by way of ii1’ij€1‘T.’()gfi’f.0['if.°.S, clocument. requests, and req11esI_3 Fm‘
`
`admisA3ic:»:11sM.
`
`In mspmzse, eaclz. pzmy has 315:‘: prmridszd its c)bjet:ti~0m to me I'f3ql1§3SiS. Oppuscré
`
`C-u£11y~Renker provided substarxtive resptnlscs to many nf AppIiC'<1.r1t'5 rcqutzsts along with its
`
`objectimis .
`
`I Cltfflléiféi’u1‘id€:3i"pt31'lE11t§’Of}3£5IjU.1‘y
`
`that the 1‘z'11'eg<Ji1‘1gg is true and c.o1‘rt:C.t. Em->cL1t&d at Sama
`
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`Fax: {"310} 394—4<1-7?
`
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`

`
`GUTHY-RENKER CORPORATION,
`
`Opposer,
`
`V.
`
`OLD TOLEDO BRANDS, INC.,
`
`Applicant.
`
`\:/\¢/\/\/%/\J\_/\-/\)\./A
`
`Opposition No.: 91,179,242
`
`OPPOSER’S EXHIBIT A
`
`IN SUPPORT OF
`
`OPPOSER’S RESPONSE TO APPLICANT’S MOTION
`
`TO EXTEND THE DISCOVERY PERIOD
`
`

`
`Trademark Trial and Appeal Board Electronic Filing System. mmggw
`ESTTA Tracking number:
`ESTTA159790
`
`Filing date:
`
`08/291200?
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated application.
`
`Opposer Information
`
`Granted to Date
`
`of previous
`extension
`
`Guthy-Renker Corporation
`08/29/2007
`
`
`
`Address
`
`41-550 Eclectic Street, Suite 200
`Palm Desert. CA 92260
`
`UNITED STATES
`
`
`
`
`
`
`
`UNITED STATES
`
`Attorney
`information
`
`Daniel M. Cislo
`Cislo & Thomas LLP
`233 Wilshire Boulevard, Suite 900
`Santa Monica, CA 90401
`UNITED STATES
`
`sduncan@cis|o.com Phone:310-451-0647
`
`Applicant Information
`
`Application No
`
`77013634
`
`Publication date
`
`05/01/2007
`
`Opposition Filing
`Date
`
`O8/29/2007
`
`Opposition
`Period Ends
`
`08/29/2007
`
`Applicant
`
`Old Toledo Brands, Inc.
`Suite 12W 260 West 39th Street
`New York, NY 10018
`
`Goods/Services Affected by Opposition
`
`Class 005.
`
`All goods and services in the class are opposed, namely: Adhesive bandages; Analgesic
`preparations; Antacids; Anti-inflammatories; Anti-insect spray; Anti-itch ointment; Antiseptics; Aspirin;
`Astringents for medicinal purposes; Athletes‘ foot preparations; Bandages for dressings; Bandages
`for skin wounds; Breath-freshening chewing gum for medicinal purposes; Bunion pads; Burn
`dressings; Burn relief medication; Calamine lotion; Cold sore treatment preparations; Cough drops;
`Decongestants; Dietary and nutritional supplements; Ear drops; Epsom salts; Eye washes; First aid
`kits; Food supplements; Gauze; General purpose germicide; Herbal supplements; Ibuprofen for use
`as an oral analgesic; Insect repellents; Laxatives; Meal replacement bars; Meal replacement drinks;
`Medical adhesive tape; Medical plasters; Medicated lip balm; Multivitamin preparations; Muscle
`soaks; Nutritional supplements; Nutritionally fortified beverages; Nutritionally fortified water; Oral
`analgesics; Pharmaceutical preparations for wounds; Pharmaceutical products for ophthalmological
`use; Powdered nutritional supplement drink mix; Pre-moistened medicated tissues; Preparation for
`the relief of pain; Preparations for treating colds; Rubbing alcohol; Rubbing compound for medical
`andlor therapeutic use; Sanitizing wipes; Self adhesive dressings; Vitamin and mineral supplements;
`Vitamin fortified beverages; Witch hazel; Wound dressings
`Class 010.
`
`
`
`All goods and services in the class are opposed, namely: Bandages for anatomical joints; Chemically
`
`

`
`
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`activated hot and/or cold compresses; Compression bandages; Crutches; Elastic bandages; Elastic
`stockings; Elbow guard for epicondylitis; Exercise machines for therapeutic purposes; Eye droppers;
`
`Gloves for massage; Heat lamps for medical use; Heating cushions for medical purposes; Magnets
`
`for medical purposes; Massage apparatus; Massaging apparatus for personal use; Medical
`compression stockings and tights; Medical hosiery. namely, panty hose. elastic hose supporters,
`knee high hose, thigh high hose; Nasal asplrators; Non-medicated compresses; Orthopedic footwear;
`
`Orthopedic support bandages; Orthopedic supports; Tongue scrapers
`Class 014.
`
`
`
`
`
`
`
`
`
`
`
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`All goods and services in the class are opposed. namely: Clocks; Jewelry; Watches
`Class 018.
`
`
`
`All goods and services in the class are opposed. namely: All-purpose athletic bags; Athletic bags;
`Backpacks; Briefbags; Business card cases; Carry-on bags; Cosmetic bags sold empty; Credit card
`cases; Duffel bags; Fanny packs; Garment bags for travel; Golf umbrellas; Gym bags; Handbags;
`Hiking poles; Key cases; Knapsacks; Luggage; Overnight bags; Purses; Shaving bags sold empty;
`Sports bags; Straps for luggage; Suitcases; Travel bags; Umbrellas; Valises; Waist packs; Wallets;
`Wine bags with handles for carrying or holding wine
`Class 028.
`-
`
`
`
`
`
`
`All goods and services in the class are opposed, namely: Action figures; Ankle and wrist weights for
`exercise; Athletic equipment, namely, mouth guards; Athletic sporting goods, namely, athletic wrist
`
`
`and joint supports; Athletic supporters; Athletic tape; Bar—be|ls; Barbells; Beach balls; Bean bags;
`
`
`Covers for golf clubs; Dumbbells; Elbow pads for athletic use; Exercise benches; Exercise machines;
`
`
`Exercise treadmills; Exercise weights; Exercising equipment, namely, rowing machines; Exercising
`
`
`equipment, namely, weightlifting machines; Golf club bags; Golf club covers; Golf clubs; Golf gloves;
`
`
`Gymnastic apparatus; Head covers for golf clubs; In-line skates; Inflatable toys; Jock straps; Leg
`
`
`guards for athletic use; Leg weights for exercising; Non-motorized golf carts; Remote control toys;
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`
`Sport balls; Toy action figures; Work-out gloves; Wrist and ankle weights for exercise; Yo-yos
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act section 2(d)
`Trademark Act Section 43(0)
`
`Mark Cited by Opposer as Basis for Opposition
`
`
`
`Application Date
`
`
`
`
`
`U.S. Application/
`Registration No.
`Registration Date
`Word Mark
`PROACTIV, PROACTIV SOLUTION
`
`
`
`Goods/Services
`
`
`
`
`A variety of goods and services including, but not limited to. acne
`treatment preparations and related cosmetic products
`
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`Attachments
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`Executed Notice of Opposition.PDF ( 7 pages )(406099 bytes )
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`/Daniel M. Cislol
`
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`Daniel M. Cislo
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`we os/29/zoo?
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`IN THE MATTER OF APPLICATION SERIAL NO. 77/013,634
`PUBLISHED IN THE OFFICIAL GAZETTE ON MAY 1, 2007
`
`
`) OPPOSITION NO.
`
`) )
`
`GUTHY-RENKER CORPORATION, a
`Delaware corporation,
`
`OPPOSER,
`
`vs.
`
`)
`) NOTICE OF OPPOSITION
`)
`OLD TOLEDO BRANDS, INC.. a New York)
`corporation
`
`) )
`
`) )
`
`APPLICANT.
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`Opposer, GUTHY—RENKER CORPORATION, a Delaware corporation, having offices
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`at 41-550 Eclectic Street, Suite 200, Palm Desert, California 92260 (“Guthy-Renker”),
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`believes that it will be damaged by registration of the mark shown in Application Serial No.
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`771013.634 filed by Old Toledo Brands, Inc., a New York corporation. having a listed
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`business address of 260 West 39“ Street. Suite 12W, New York, New York 10018, and hereby
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`opposes the same and requests that the registration to the Application be refused.
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`The grounds for opposition are as follows:
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`1.
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`Applicant seeks to register a mark which consists of the term PRO ACTIVE
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`for use in connection with Adhesive bandages; Analgesic preparations; Antacids; Anti-
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`inflammatories; Anti-insect spray; Anti-itch ointment; Antiseptics; Aspirin; Astringents for
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`

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`medicinal purposes; Athletes‘ foot preparations; Bandages for dressings; Bandages for skin
`
`wounds; Breath-freshening chewing gum for medicinal purposes; Bunion pads; Burn dressings;
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`Burn relief medication; Calarnine lotion; Cold sore treatment‘ preparations; Cough drops;
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`Decongestants: Dietary and nutritional supplements; Ear drops; Epsom salts; Eye washes; First
`aid kits; Food supplements; Gauze; General purpose germicide; Herbal supplements; Ibuprofen
`
`for use as an oral analgesic; Insect repellents; Laxatives; Meal replacement bars; Meal
`
`replacement drinks; Medical
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`adhesive
`
`tape; Medical plasters; Medicated lip balm;
`
`Multivitamin preparations; Muscle soaks; Nutritional supplements; Nutritionally fortified
`
`beverages; Nutritionally fortified water; Oral analgesics; Pharmaceutical preparations for
`
`wounds; Pharmaceutical products for ophthalmological use; Powdered nutritional supplement
`
`drink mix; Pre-moistened medicated tissues; Preparation for the relief of pain; Preparations for
`
`treating colds; Rubbing alcohol; Rubbing compound for medical andlor therapeutic use;
`
`Sanitizing wipes; Self adhesive dressings; Vitamin and mineral supplements; Vitamin fortified
`
`beverages; Witch hazel; Wound dressings in Class 005; Bandages for anatomical joints;
`
`Chemically activated hot andlor cold compresses; Compression bandages; Crutches; Elastic
`
`bandages; Elastic stockings; Elbow guard for epicondylitis; Exercise machines for therapeutic
`
`purposes; Eye droppers; Gloves for massage; Heat lamps for medical use; Heating cushions
`
`for medical purposes; Magnets for medical purposes; Massage apparatus; Massaging apparatus
`
`for personal use; Medical compression stockings and tights; Medical hosiery, namely, panty
`
`hose. elastic hose supporters, knee high hose,
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`thigh high hose; Nasal aspirators; Non-
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`medicated compresses; Orthopedic footwear; Orthopedic support bandages; Orthopedic
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`supports; Tongue scrapers in Class 010; Clocks; Jewelry; Watches in Class 014; All-purpose
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`

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`athletic bags; Athletic bags; Backpacks; Briefbags; Business card cases; Carry-on bags;
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`Cosmetic bags sold empty; Credit card cases; Duffel bags; Fanny packs; Garment bags for
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`travel; Golf umbrellas; Gym bags; Handbags; Hiking poles; Key cases; Knapsacks; Luggage;
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`Overnight bags; Purses; Shaving bags sold empty; Sports bags; Straps for luggage; Suitcases;
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`Travel bags; Umbrellas; Valises; Waist packs; Wallets; Wine bags with handles for canying or
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`holding wine in Class 018; Action figures; Ankle and wrist weights for exercise; Athletic
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`equipment, namely, mouth guards; Athletic sporting goods, namely, athletic wrist and joint
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`supports; Athletic supporters; Athletic tape; Bar-bells; Barbells; Beach balls; Bean bags;
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`Covers for golf clubs; Dumbbells; Elbow pads for athletic use; Exercise benches; Exercise
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`machines; Exercise treadmills; Exercise weights; Exercising equipment, namely,
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`rowing
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`machines; Exercising equipment, namely. weight lifting machines; Golf club bags; Golf club
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`covers; Golf clubs; Golf gloves; Gymnastic apparatus; Head covers for golf clubs; In-line
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`skates; Inflatable toys; Jock straps; Leg guards for athletic use; Leg weights for exercising;
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`Non-motorized golf carts; Remote control toys; Sport balls; Toy action figures; Worlceout
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`gloves; Wrist and ankle weights for exercise; Yo-yos in Class 028 (hereinafter “Applicant's
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`Mark”). The application is an intent-to-use based application under 15 U.S.C.§l051(1)(b).
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`2.
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`Opposer has obtained the necessary extension of time in which to file this Notice
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`of Opposition.
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`3.
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`Since as early as 1991, Opposer, its predecessors. or its related companies have
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`continuously used the terms “PROACTIV” and “PROACTIV SOLUTION” (“Opposer’s
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`Marks") in interstate commerce as trademarks for a variety of goods and services, including,
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`but not limited to. acne treatment preparations and related cosmetic products (“0pposer’s
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`

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`Goods”). Opposer’s Marks have also continuously appeared in substantial advertising and
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`promotion of Opposer’s skin care and cosmetic products, such that the marks are closely
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`identified with Opposer’s Goods and have gained very valuable public recognition. Opposer
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`has established an outstanding reputation as to the quality of its products sold under the
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`“PROACTIV” and “PROACTIV SOLUTION” marks.
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`4.
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`Guthy-Renker has continuously used Opposer’s Marks in interstate commerce
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`since long prior to any date upon which Applicant can rely. By virtue of its sales of high-
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`quality products bearing the mark in interstate commerce,
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`its expenditures of considerable
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`sums for promotional activities and the excellence of its products, Opposer has developed
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`significant goodwill in its Marks and a valuable reputation.
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`5.
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`Opposer’s trademark rights for the PROACTIV and PROACTIV SOLUTION
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`marks have priority over Applicant’s Mark, inasmuch’ as Opposer has continuously used its
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`Marks since it commenced use of its Marks, and Applicant's Application lists a filing date of
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`October 22, 2004 and is listed as an intent-to-use application.
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`6.
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`Applicant's Mark so resembles Opposer’s Marks that have been and are
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`currently used. as to be likely to cause confusion, or cause mistake, or to deceive, in violation
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`of Section 2(d) of The Trademark Act, 15 U.S.C. §1052(d), when used on or in connection
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`with Applicant’s Goods.
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`'7.
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`Under the circumstances,
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`registration of the mark that
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`is
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`the subject of
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`Application Serial No. 77/013,634 will injure Opposer by causing the trade and/or purchasing
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`public to be confused, and/or deceived into believing that Applicant's Goods are those of
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`

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`Opposer, or are sponsored by Opposer, to Opposer’s damage and will place a cloud over
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`Opposer’s title to its PROACTIV and PROACTIV SOLUTION marks, in violation of Section
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`2(d) of the Trademark Act, 15 U.S.C. Section l052(d).
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`8.
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`Opposer’s PROACTIV and PROACTIV SOLUTION marks were well
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`established and famous long before the filing date of Applicant’s subject application, and at the
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`time that Applicant filed the subject application. Registration by Applicant would diminish and
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`dilute the distinctive quality of Opposer’s rights in its famous PROACTIV and PROACTIV
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`SOLUTION marks in violation of 15 U.S.C.§l125(c). Moreover, registration by Applicant
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`would diminish the advertising value of Opposer’s Mark, and such registration would, in the
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`event of any quality problems involving the goods offered by Applicant,
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`tarnish the
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`_ distinctiveness of Opposer’s Marks.
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`9.
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`Opposer’s Marks are distinctive and famous such that the public would associate
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`0pposer‘s Marks with Opposer when encountering Opposer’s Marks apart from Opposer’s
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`Goods.
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`10.
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`Applicant's Mark is the same as, or substantially the same as Opposer’s Marks,
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`including in visual appearance and in pronunciation.
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`11.
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`Applicant's Mark is likely to and/or has diluted and lessened the capacity of
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`Opposer’s Marks to identify and distinguish Opposer’s Goods.
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`12.
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`Applicants mark so resembles Opposer’s continuously used, famous and well-
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`known Marks as to be likely, when used in connection with the goods as set forth in
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`.=.*+.pp1i(:ztn:"s.a;1p1ica£'i<m, 113 lessen}. the. cap'acit.y’o.f ()p;:c3ss:r‘s Marks to _i_c1enti.fy and distinguish
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`-Ogpaser-‘s Stands;
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`13.
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`The subject A.pp*I.i*c;a_1io.n slmuld he I’(i‘-’l'itSt‘:d because Oppo.ser’s'
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`rights of
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`ccritinuing its "prese:.1t' use: of its Marks in czmmnze-_1‘ce arc.
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`ear’ wants} his,
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`threatentrd by
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`:*:;)p}_ii;:£nt‘s registratim;
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`tfif Ilia PRO AC"I’WEi mar}: fur Ap:pii'can:"’s Gnocis, and tfxacause
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`(}‘pp£:ser’s business weuid
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`otherwise damaged by .+%.ppE—icau*r‘s
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`.1fegisLrz1ti011 Gf rlac PEIKOT
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`A{f2'.l7,W_E mark: for‘ A,_ppEice_1_:1£’$ Sands.
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`WH.ERELFC1Ri£, ti3e»Opp<$scr prays“ that Appiicatioxxé Seriai No. 77-f{}i3.63-i» he rejecteti,
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`mid $113: the xmxrk wugizt for‘ the goods ‘the.tei.n ta be s;1e:cii’i§:d» in Internarkanai £12135 003» be
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`denim! and refizseci.
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`The required fee fur five‘ ckisses of gnods; and any addi«ti<m:a} .ifees, may be c}1::rg¢d.w
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`Opposer‘-9 re;a;re:semative’»s= cicpnsit account Nu. 03~2£)E>'0.
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`Respc:c.£1'1_2l£3.= stxbnaitteéf,
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`Dated:_Augu'st
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`200?
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`.LI..P Er
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`(II-5H..O :9: TH.C_>I\4.A;
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`»
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`
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`rgmiel M. ci.i$1o,A1tas;;.
`~
`N0. 3.12373
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`

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`CE§__TIFIC._ATE:0F ELECTRONIC MAl’L1N'G
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`I hereby cenfiify that this paper (along \.vit‘f1»any paper rteferx-er: to as bang
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`aitacixed orenciosced) is bai:1g f":it:chvi&1a111e Uniteti States Patent I-anti Tradernark Office
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`via the -Electronic Systen1 far 'i“radeyna.r.k '.Fria.ls ‘and Appeais (I3S'1"I‘A‘) an the date.
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`Asfinwn iwlnw
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`Dated: Angus;
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`::«~
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`2387 nic:1I‘M, Ciséfo, Esq,
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`Na. 32,973
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`.CI‘S§LG‘,& TEIOMAS ;I,.1.I’
`A233: Wiishire Eiczulejrvard, Suite‘ €300
`Sana: Mrmitza, :::a2i’fm.~nia 90401. 12:11
`*1‘¢1: (am) 45 1.«-(15:11
`E33,!» [(310) 35325-M7’?
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`mxr» lGF§S11\.?\‘-¢;.'>a:¢ z¥."()m>i’:~.'c1~‘t{I~i-K,‘
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`-11
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`

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`GUTHY-RENKER CORPORATION,
`
`Opposer,
`
`V.
`
`OLD TOLEDO BRANDS, INC.,
`
`Applicant.
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`\J%/\_/N-/Q/\J\J%/\J\J%
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`Opposition No.: 91,179,242
`
`OPPOSER’S EXHIBIT B
`
`IN SUPPORT OF
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`OPPOSER’S RESPONSE TO APPLICANT’S MOTION
`TO EXTEND THE DISCOVERY PERIOD
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`

`
`Latest Status Info
`
`http://tarr.uspto.gov/servlet/tarr'?regser=serial&entry=77013634
`
`Thank you for your request. Here are the latest results from the TARR web server.
`
`This page was generated by the TARR system on 2008-06-01 22:18:54 ET
`
`Serial Number: 77013634 Assignment Information
`
`Trademark Document Retrieval
`
`Registration Number: (NOT AVAILABLE)
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`Mark
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`PRO ACTIVE
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`(words only): PRO ACTIVE
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`Standard Character claim: Yes
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`Current Status: An opposition is now pending at the Trademark Trial and Appeal Board.
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`Date of Status: 2007-08-29
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`Filing Date: 2006- 10-04
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`Filed as TEAS Plus Application: Yes
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`Currently TEAS Plus Application: Yes
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`Transformed into a National Application: No
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`Registration Date: (DATE NOT AVAILABLE)
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`Register: Principal
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`Law Office Assigned: LAW OFFICE 111
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`Attorney Assigned:
`GRAY CAROLYN C
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`Current Location: 650 -Publication And Issue Section
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`Date In Location: 2007-03-28
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`lof4
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`6/1/2008 7:18 PM
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`

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`Latest Status Info
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`http://tarr.uspto.gov/servlet/tarr‘?regser=serial&entry=770l 3634
`
`LAST APPLICANT(S)/OWNER(S) OF RECORD
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`1. Old Toledo Brands, Inc.
`
`Address:
`
`Old Toledo Brands, Inc.
`Suite 12W 260 West 39th Street
`
`New York, NY 10018
`United States
`
`Legal Entity Type: Corporation
`State or Country of Incorporation: New York
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`GOODS AND/OR SERVICES
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`International Class: 005
`
`Class Status: Active
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`Adhesive bandages; Analgesic preparations; Antacids; Anti-inflammatories; Anti-insect spray; Anti-itch
`ointment; Antiseptics; Aspirin; Astringents for medicinal purposes; Athletes’ foot preparations;
`Bandages for dressings; Bandages for skin wounds; Breath-freshening chewing gum for medicinal
`purposes; Bunion pads; Burn dressings; Burn relief medication; Calamine lotion; Cold sore treatment
`preparations; Cough drops; Decongestants; Dietary and nutritional supplements; Ear drops; Epsom salts;
`Eye washes; First aid kits; Food supplements; Gauze; General purpose germicide; Herbal supplements;
`Ibuprofen for use as an oral analgesic; Insect repellents; Laxatives; Meal replacement bars; Meal
`replacement drinks; Medical adhesive tape; Medical plasters; Medicated lip balm; Multivitamin
`preparations; Muscle soaks; Nutritional supplements; Nutritionally fortified beverages; Nutritionally
`fortified water; Oral analgesics; Pharmaceutical preparations for wounds; Pharmaceutical products for
`ophthalmological use; Powdered. nutritional supplement drink mix; Pre-moistened medicated tissues;
`Preparation for the relief of pain; Preparations for treating colds; Rubbing alcohol; Rubbing compound
`for medical and/or therapeutic use; Sanitizing wipes; Self adhesive dressings; Vitamin and mineral
`supplements; Vitamin fortified beverages; Witch hazel; Wound dressings
`Basis: l(b)
`First Use Date: (DATE NOT AVAILABLE)
`
`First Use in Commerce Date: (DATE NOT AVAILABLE)
`
`International Class: 010
`
`Class Status: Active
`
`Bandages for anatomical joints; Chemically activated hot and/or cold compresses; Compression
`bandages; Crutches; Elastic bandages; Elastic stockings; Elbow guard for epicondylitis; Exercise
`machines for therapeutic purposes; Eye droppers; Gloves for massage; Heat lamps for medical use;
`Heating cushions for medical purposes; Magnets for medical purposes; Massage apparatus; Massaging
`apparatus for personal use; Medical compression stockings and tights; Medical hosiery, namely, panty
`hose, elastic hose supporters, knee high hose, thigh high hose;