Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA216149
`ESTTA Tracking number:
`06/06/2008
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91183945
`Defendant
`ALACER CORPORATION
`DANIEL M. CISLO
`CISLO & THOMAS, LLP
`233 WILSHIRE BLVD , SUITE 900
`SANTA MONICA, CA 90401-1211
`UNITED STATES
`Motion to Suspend for Civil Action
`Sean D. O'Brien, Esq.
`dancislo@cislo.com, sobrien@cislo.com, salijani@cislo.com
`/Sean D. O#Brien, Esq./
`06/06/2008
`Executed Applicant's Motion to Suspend Proceedings Pending Outcome of
`Related Civil Action.PDF ( 70 pages )(3816785 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`

`
`Attorney Docket No. 08-21226
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE "
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`IN THE MATTER OF TRADEMARK SERIAL NO. 76/679,882
`PUBLISHED ON JANUARY 8, 2008
`
`
`
`COTT BEVERAGES INC., a Georgia
`corporation,
`
`Opposer,
`
`v.
`
`%/%/%/\J\_/\J\/\J\J€\/
`
`Opposition No.: 91183945
`
`ALACER CORR, a California corporation,
`
`Applicant.
`
`MOTION TO SUSPEND PROCEEDING PENDING OUTCOME OF RELATED CIVIL ACTION
`
`TG COTT BEVERAGES INC. AND ITS ATTORNEYS OF RECORD:
`
`PLEASE TAKE NOTICE THAT ALACER CORP. moves this Board for an order under
`
`37 C.F.R. § 2.117(a) to suspend this Opposition proceeding until tennination of related civil
`
`action Case No. SACVO7-1433 DOC (ANX), presently pending in the United States District
`
`Court for the Central District of California. This motion is made on the following grounds:
`
`(1)
`
`The pending civil action may have a bearing on this opposition proceeding since
`
`the issues of this opposition proceeding overlap with those of the existing civil
`
`action since both proceedings involve the same parties, trademarks, and goods;
`
`and
`
`

`
`(P;
`
`In 1311:: pt‘.1‘1di1‘1.g civil actionfi the parties hwe. zmezldy sxchanged writt&11 disc0v£:ry,
`
`comdinated depositioma of flu: mhctxr part}-', and agreed to meet f214ce~£o—I":;m.c tn
`
`discuss sett.km.'.1en’t p{3SSibiIiti€S.
`
`’1"hc:1'efbre,
`
`the pending civil action may hfl\’6 at be:ari.ng cm this Upposition procss:eding_.,
`
`this prmteeding 311012151 be susjpendeci until termination of thr: p:m=‘iously filed civil actioxl. This
`
`motion is based upon this Notic.e o'£.‘1\»i0ti011 and Pviotimn, ihc: accoxnpanying M<:;n0r2mdLun in
`
`Supp{}1‘t()fflEiS Metion, and O’33r1er1 I)-:c.£aratiQn,
`
`well as :11} pieadings an_ci papers on £113 in
`
`this actimz.
`
`Da“tc:d: June 6, 2008
`
`Respecmlkly sub.m.itted,
`
`C‘.}SLO 82; 'I‘HU1’vIAS LU’
`
`
`
`
`_______‘_“
`\. _
`,,‘,‘f‘,“g
`}g§a_;:«a‘3e: M. (rim. Esq.
`§Séeu1 I}. {}”B1'ien, Esq.
`CISLO :5’:
`'I‘I~lOMAS LLP
`
`‘*
`
`3333 2nd Sfmet, Suite 500
`Santa Monica, Califbrxfia 904014} 10
`Tail: (310) 45140647
`Fax: (310) 39-$4477
`
`mlumesys for Appliczint
`AI,A{3.§%ZR. (TURF,
`
`T:\(hS’-‘2‘J 226‘-.x\P}’l.ICA§~JT'S MO'i'§ON TC) .E‘«USl’END PRC}(.‘i3EDI.:\‘GS FENIJTNG OUT‘C(')I‘\»'1E DP RELAHEIE CIVIL ACTIONDUC
`
`
`
` w33333333333¥ %\\\\\\\Nx\\\\w3§>33x‘%3>>>33>33>)533)35>:x\\\\\\\\\\.\.\.\.\.\.\.\.\\\\\.\.\.\\\\\\\\\\.\.\\\\\.\\\\\\\\xxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxsux«sxux\\\\\\\\\\\\\\\\\\\\\\\\\\““\“\““““
`
`IN)
`
`

`
`MEMORANDUM IN SUPPORT or MOTION TO SUSPEND PROCEEDING
`
`PENDING OUTCOME OF RELATED CIVIL ACTION
`
`I.
`
`INTRODUCTION AND STATEMENT OF FACTS
`
`Applicant ALACER CORP.
`
`is a California corporation that provides nutritionally
`
`enhanced products, including vitamins and minerals, vitamin and mineral supplements, flavored
`
`vitamin drink mixes,
`
`flavored vitamin lozenges, and vitamin and nutritionally fortified
`
`beverages. Alacer is the owner of several variations of its EMERGEN-C trademark for these
`
`goods. (Ex. 2, Compl. for Case No. SACV07-1433.)‘
`
`Opposer COTT BEVERAGES, INC. is believed to be a Georgia corporation that sells
`
`non-alcoholic beverages, including some under its EMERGE mark.
`
`(See Ex. 1, Notice of
`
`Opposition.)
`
`Prior to Cott filing the Notice of Opposition for the present proceeding, Alacer filed an
`
`action in the United States District Court for the Central District of California. The pending civil
`
`action involves Alacer Corp. and Cott Beverages, Inc., the same parties as in the present
`
`Opposition proceeding. Moreover, both proceedings involve a detennination of Alacer’s rights
`
`in the EMERGEN-C trademark for its goods vis-a-vis Cott’s rights in the EMERGE trademark
`
`for its goods. Copies of the pleadings for Case No. SACV07-1433 DOC (ANX) are attached as
`
`Exhibit 2 (Alacer’s complaint) and Exhibit
`
`3
`
`(Cott’s answer
`
`to the complaint, with
`
`counterclaims).
`
`* 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 Motion to Suspend Proceedings
`Pending Outcome of Related Civil Action (hereinafter O’Brien Decl.) submitted herewith.
`
`

`
`In the pending civil action, Alacer asserted priority in its EMERGEN-C trademarks for
`
`nutritionally enhanced products,
`
`including vitamins and minerals, vitamin and mineral
`
`supplements, flavored vitamin drink mixes, flavored vitamin lozenges, and nutritionally fortified
`
`beverages.
`
`(Ex. 2, Compl. for Case No. SACV07-1433.) Alacer also asserted its U.S.
`
`Trademark Registration No. 2,616,360 for EMER’GEN-C (stylized) for vitamins and minerals;
`
`Registration No. 3,181,945 for EMERGEN-C (stylized) for vitamin and mineral supplements;
`
`Registration No. 3,181,944 for EMERGEN-C FOR LIFE! (stylized) for vitamin and mineral
`
`supplements; Registration No. 3,306,845 for EMERGEN-C IMMUNE DEFENSE (stylized) for
`
`flavored vitamin drink mixes and flavored vitamin lozenges; Serial No. 76/679,882 for
`
`EMERGEN-C (stylized) for nutritionally fortified beverages; and Serial No. 77/018,588 for
`
`EMERGEN-C FEEL THE GOOD for mineral nutritional supplements, vitamin and mineral
`
`supplements, and vitamins. (Id.)
`
`Alacer further alleged that Cott’s use of EMERGE as a trademark in connection with
`
`nutrient infused water is likely to cause confusion among consumers, thereby infringing Alacer’s
`
`federal trademark rights and constituting unfair competition under state law. (Id.)
`
`In response to Alacer’s allegations in the civil action, Cott alleged that it has used its
`
`EMERGE trademarks on beverages continuously since 2003 or earlier and that in 2007 it began
`
`selling nutrient infused water under the EMERGE mark. (Ex. 3, Answer to Compl. for Case No.
`
`SACV07-1433.) Cott also alleged that if it were found that consumer confusion would result
`
`from concurrent use of Cott’s EMERGE marks and Alacer’s EMERGEN-C trademarks, Cott
`
`claims priority over Alacer for nutrient infiised water.
`
`(Id.) As such, Cott counterclaimed for
`
`declaratory judgment that it does not infiringe Alacer’s rights and that Cott has priority in its
`
`EMERGE mark for the contested goods. (Id.)
`
`

`
`In the present Opposition proceeding, Cott asserts priority and a likelihood of confusion
`
`between its use of its EMERGE mark and Alacer’s use of its EMERGEN-C trademark.
`
`(Ex. 1,
`
`Notice of Opposition.) Cott also claims false suggestion of a connection. (Id.)
`
`II.
`
`THE BOARD HAS THE AUTHORITY TO SUSPEND THIS PROCEEDING
`UNTIL THE RELATED CIVIL CASE IS TERMINATED
`
`Where the parties to a pending case are engaged in a civil action that may have a bearing on a
`
`Trademark Trial and Appeal Board proceeding, the Board proceeding may be suspended until
`
`termination of the civil action. 37 C.F.R. § 2.1 l7(a). Moreover, the Board has the power to stay
`
`proceedings based on its inherent power to schedule disposition of the cases on its docket. T.B.M.P.
`
`§ 510.01, citing 37 C.F.R. § 2.117. “Ordinarily, the Board will suspend proceedings in the case
`
`before it if the final determination of the other proceeding will have a bearing on the issues before the
`
`Board.” Id. at § 5l0.02(a).
`
`As such, the Board has the authority to suspend the present Opposition proceeding pending
`
`the outcome of Case No. SACVO7-1433, previously pending in the Central District of California.
`
`III.
`
`THE PENDING CIVIL ACTION MAY HAVE A BEARING ON THIS
`
`OPPOSITION PROCEEDING SINCE THE ISSUES OF THIS OPPOSITION
`
`PROCEEDING OVERLAP WITH THOSE OF THE EXISTING CIVIL ACTION
`AS BOTH PROCEEDINGS INVOLVE THE SAME PARTIES, TRADEMARKS,
`AND GOODS
`
`The pending civil action Case No. SACV07-1433 involves Alacer Corp. and Cott
`
`Beverages, Inc., the same parties as in the present Opposition proceeding. Moreover, both
`
`proceedings involve a determination of Alacer’s rights in the EMERGEN-C trademark for its
`
`goods vis-a-vis Cott’s rights in the EMERGE trademark for its goods.
`
`(See Ex. 1, Notice of
`
`Opposition; Ex. 2, Compl. for Case No. SACV07-1433; Ex. 3, Answer to Compl. for Case No.
`
`SACV07-1433.)
`
`

`
`In the existing civil action, Alacer asserted priority in its EMERGEN-C trademarks for
`
`nutritionally enhanced products,
`
`including vitamins and minerals, vitamin and mineral
`
`supplements, flavored vitamin drink mixes, flavored vitamin lozenges, and nutritionally fortified
`
`beverages.
`
`(Ex. 2, Compl. for Case No. SACV07-1433.) Alacer also asserted its U.S.
`
`Trademark Registration No. 2,616,360 for EMER’GEN-C (stylized) for vitamins and minerals;
`
`Registration No. 3,181,945 for EMERGEN-C (stylized) for vitamin and mineral supplements;
`
`Registration No. 3,181,944 for EMERGEN-C FOR LIFE! (stylized) for vitamin and mineral
`
`supplements; Registration No. 3,306,845 for EMERGEN-C IMMUNE DEFENSE (stylized) for
`
`flavored vitamin drink mixes and flavored Vitamin lozenges; Serial No. 76/679,882 for
`
`EMERGEN-C (stylized) for nutritionally fortified beverages; and Serial No. 77/018,588 for
`
`EMERGEN-C FEEL THE GOOD for mineral nutritional supplements, vitamin and mineral
`
`supplements, and vitamins. (Id.)
`
`Alacer fiirther alleged that Cott’s use of EMERGE as a trademark for nutrient infused
`
`water is likely to cause confusion among consumers,
`
`thereby infringing Alacer’s federal
`
`trademark rights and constituting unfair competition under state law. (Id.)
`
`In response to Alacer’s allegations in the civil action, Cott alleged that it has used its
`
`EMERGE trademarks on beverages continuously since 2003 or earlier and that in 2007 it began
`
`selling nutrient infused water under the EMERGE mark. (Ex. 3, Answer to Compl. for Case No.
`
`SACV07-1433.) Cott also counterclaimed for declaratory judgment that it does not infringe
`
`Alacer’s rights and that Cott has priority in its EMERGE mark for the contested goods. (Id.)
`
`As such, the issues of this Opposition proceeding overlap with those of the existing civil
`
`action since both proceedings involve the same parties, trademarks, and goods. Therefore, since
`
`

`
`the pending civil action may have a bearing on this Opposition proceeding, this proceeding
`
`should be suspended until termination of the previously filed civil action.
`
`IV.
`
`IN THE PENDING CIVIL ACTION, THE PARTIES HAVE ALREADY
`EXCHANGED WRITTEN DISCOVERY, SCHEDULED DEPOSITIONS OF THE
`OTHER PARTY, AND AGREED TO A FACE-TO-FACE MEETING BETWEEN
`THE PARTIES’ PRINCIPALS
`
`In the pending federal court action, both parties have already propounded written
`
`discovery on the other party, communicated with the other party to coordinate a Rule 30(b)(6)
`
`deposition of each party, and agreed that the principals should meet face-to—face to discuss a
`
`possible resolution. As such, the parties are well into the discovery phase of the federal court
`
`action, making it reasonable to suspend the Board proceeding in favor of the pending civil
`
`action.
`
`///
`
`

`
`‘E1
`
`{I(}NfCL?U$§GN
`
`As su::h_. the issues of {hi5 Opposiiiaita pm<:rs:eding overlap with those: of the existing azivii
`
`action Sim-5: both pmL:eed,ings if’1V0~1\-'6 the 52mm’: paimzs,
`
`t.ra.0k:n1ark;9, and goods.
`
`Ti1c1*E:fm‘€:_,
`
`ALACZEZR CORE’. requests that ‘this Motion be grszmiad by the Board and that this C}p}‘mSi{'iG11
`
`p1‘oc:3r2=.ding be suspended pending the f}Lli{Z‘-C1-ITIG of Class No. SACV{)7—1r-133 DOC (ANX) in tin:
`
`Uni1:ed.St'ate.s District Cmxrtfn1‘thc Cenmd District o_.i"(.“.;;tEif0r11i.a..
`
`Ilfiated: June 6, 2088
`
`1‘{:3spectf‘u1Iy suh[x'nitiL:c.1,
`
`\
`‘...\‘.\,...~'''
`\.
`
`_____,_:—»-
`7 M. Cisioa Esq.
`Sgigiza 1:2. c3°:Bri.en., Esq.
`{EESILQ
`'1‘HQ’I\ri.»'~\S my
`
`1333 211% Street, Suite 500
`Sa.I1t.21 Monica, Caiifmxlia 904{]1—4I 10
`Tel: (3 10) 45 H)64’7
`Fax: (31 U) 39¢-447T?
`
`Att0r11e3Is fin‘ A13_131ica::1t
`Aii..x«\{ZIE3E?; CZORP.
`
`~.~.'n\\\\\\\\\\\\.\\\\\\\\\\\.\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\ us
`
`

`
`C§*1RTi”.§?‘.EA€&T_E Q? SERVEQE
`
`E hereby certify that a copy of rim. imegoing MO‘f§"Ii(3N[ TO S[;’SP}}lNI) PR.0CEE,DU‘*«Ii3
`
`PENi['}INIG ()U'{'COME OF R.}§ZL.=-"C!‘iEEi1] CI‘V{L ACTEON was rscrxvczd upon tha a.E*Lorn€y
`
`for
`
`CCWI‘ BEVER1-XGES
`
`ifNIZ1., by electroxxic nmil
`
`to <MaryPa.t. W'e3r13ack@db:'.c0m> and
`
`<And;‘ea.Enge}@d1br.c0m>, with 3 copy by fi'rs=.t class mail, postage prepaid,
`
`to fviaxfi-_»r Fat A‘
`
`Weyback, Drinkm i3idd.i<~: £5 Rx-:a;th ]L..E§.P,. 3500 K Street, TN.W., Ste, 1 100, Was;h.ingt0n DC 20005«
`-I
`
`1209, on the date given beluw.
`
`.D’£I‘[6d: I11ne 6, 2008
`
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`
`M. Cisio, Vi:“;sq_.
`»~*‘Sea111iE). C}’F:3rien, Esq.
`
`CFERTEVEFECATE G33‘ EL§I33(3T§§€}.N§.C FELENG
`
`I hereby cwtify ‘that. this pfiipéil‘ (alcng with any paper referred to as being aimched or
`
`enclosed) is being ‘flied with the United. States Fatent and ‘ii‘ra.clen1a1'k Offxce via. the Electronic.
`
`Svysiaxn fo1*Trade1:nar1<_ Trials and Appeals {ESTTM on the date shown below.
`
`.5:
`
`_.~'':
`
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`
`.~
`‘
`I.
`
`'
`
`"M
`M, CiS1fi,V‘E-Si].
`I). ()3IE§1‘iexL, Esq.
`
`Dated: June 6, 2008
`
`CISIJI}
`
`“H-IOMAS LLP
`
`1333 End Street, Suite 500
`Smztfa Monica, Califomia 9040'! -41 Ii}
`"R4: (310) <¥-51-06617
`Fax: (310) 394447‘?
`www.cis10.com
`
`T \f!S-Y! I§£‘E.~'5‘.*.FPLIC!‘xN'!‘S X'~'lO'ITC}'!~E T0 £'}l"$a¥'t-END PRUC!‘IiiI‘."lN(iS l’l3N1)({'»'l’3 (]!.|‘:'C'.<_“.'\\r1‘JE OF Rfi‘E.A.'.]‘f£D Cl\’!i. ML‘"l‘iL}N DOC.
`
`
`
`

`
`Attorney Docket No. 08-21226
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`IN THE MATTER OF TRADEMARK SERIAL NO. 76/679,882
`PUBLISHED ON JANUARY 8, 2008
`
`
`
`COTT BEVERAGES INC., a Georgia
`corporation,
`
`Opposer,
`
`v.
`
`\/g/\J\&%\/\J\.-’\J\J\J
`
`Opposition No.: 91183945
`
`ALACER CORP., a California corporation,
`
`Applicant.
`
`DECLARATION OF SEAN D. O’BRIEN IN SUPPORT or MOTION To SUSPEND PROCEEDING
`
`PENDING OUTCOME or RELATED CIVIL ACTION
`
`1, 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 Alacer Corp. in this action.
`
`I make this
`
`declaration of my own personal knowledge or on information and belief where so stated.
`
`If
`
`called as a witness, I could and would competently testify to the truth of the matters asserted
`
`herein.
`
`2.
`
`A true and correct copy of the Notice of Opposition for this proceeding, as it was
`
`retrieved from the website of the United States Patent and Trademark Office (USPTO) on June 6,
`
`2008, is attached as Exhibit 1.
`
`

`
`'1
`.3.
`
`A true and cement copy of the cmxzpmint for Case No. SACV07-1433, currentfy
`
`penciing in the United States D.ist.ri.ct Cour: Em: 1'h:;: Ccntml .I3isi‘1'ic[ nf Califurnia, is attac.h.cd as
`
`'E§i>chibi'i.
`
`4.
`
`A true and. C.C!l‘l‘{tCt copy of the answer to the crampiiaini fur Case: No. SA(L‘.V(IIT’«
`
`1433 is atta—c1'1¢2c1 as Exhibit 3.
`
`I dczszlare under penalty of pcsrj ury that the fc;.1'egm'.n.g,,is him: and correct. E-i5{§3~CLHi(?-d at Santa
`
`Mmiica, (7.:::E.ii"o1'n.i21, on Friciay, June 6, 2008.
`
`
`
`
`
`Sean D. CH; 1:;ie.n
`
`C.‘.ISL(1) €23:
`
`’!"H()Mx—\S mm
`
`1333 Zrzd S’t;rc:e.1, Suite 500
`Santa Monica, Caiifcvmia. 904{'J 1 «AH '10
`
`Tel: (310) c'¥S1~06i§»?
`Fax: (310) 3944477
`
`T:‘.(lS-2Z2.2<3\Dl§C.l.ARATIDN U1" O‘BRT|':1N TN SUPPORT Cl!’ MCYI'i(‘.l?~J "EU 5lIS¥‘F.!‘H)\l‘J()C
`
`
`
`
`
`"2.
`
`

`
`COTT BEVERAGES INC., a Georgia
`corporation,
`
`Opposer,
`
`v.
`
`ALACER CORP., a California corporation,
`
`Applicant.
`
`\J\/\/\J\JL/\y\/\_/\J\J
`
`Opposition No.: 91183945
`
`APPLICANT’S EXHIBIT 1
`
`IN SUPPORT OF
`
`APPLICANT’S MOTION TO SUSPEND PROCEEDING PENDING
`OUTCOME OF RELATED CIVIL ACTION
`
`

`
`Trademark Trial and Appeal Board Electronic Filing System. fitrm/estta.gsg:ro.ggv
`ESTTA Tracking number:
`ESTTA209696
`Filing date:
`05/07/2008
`
`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
`
`Cott Beverages Inc.
`05/07/2008
`
`Granted to Date
`of previous
`extension
`
`Address
`
`5519 W. ldlewild Avenue
`Tampa. FL 33634~8016
`UNITED STATES
`
`
`
`
`
`Mary Pat Weyback
`Drinker Biddle & Reath LLP
`1500 K St. NW Suite 1100
`Washington. DC 20005
`UNITED STATES
`
`Attorney
`information
`
`
`
`
`MaryPat.Weyback@dbr.com, Andrea.Enge|@dbr.com Phone:202-842-8800
`
`
`
`
`
`
`Applicant Information
`
`
`
`
`
`Publication date
`
`01/08/2008
`
`Opposition
`Period Ends
`
`05/07/2008
`
`Application No
`
`76679882
`
`05/0'//2008
`
`ALACER CORPORATION
`80 Icon
`Foothill Ranch, CA 92610
`UNITED STATES
`
`Opposition Filing
`Date
`
`Applicant
`
`
`
`
`
`Goods/Services Affected by Opposition
`
`Class 005.
`
`All goods and services in the class are opposed. namely: nutritionally fortified beverages
`
`Grounds for Opposition
`
`False suggestion of a connection
`
`Priority and likelihood of confusion
`
`Trademark Act section 2(a)
`
`Trademark Act section 2(d)
`
`Mark Cited by Opposer as Basis for Opposition
`
`Registration No.TT
`
`
`
`
`
`
`
`
`
`
`

`
`Related
`Proceedings
`
`District of California
`
`Civil Action No. CV07-1433 DOC (ANx) in the U.S. District Court for the Central
`
`Attachments
`
`Aiacer Opposition.pdf ( 4 pages )(122450 bytes )
`
`Certificate of Service
`
`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`record by First Class Mail on this date.
`
`
`
`
`
`
`
`/Maw Patwevbac-«I
`is Marwatwevback
`oszowzooe
`
`
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`V In re Ser. No. 76/679,882 - EMERGEN-C (Stylized & Design)
`A Published January 8, 2008
`
`COTT BEVERAGES INC.,
`
`v.
`
`ALACER CORPORATION,
`
`Opposer,
`
`Applicant.
`
`:
`
`:
`
`Opposition No. 91-
`
`NOTICE OF OPPOSITION
`
`Cott Beverages Inc., a Georgia corporation, 5519 W. Idlewild Avenue, Tampa,
`
`Florida 33634 (“Opposer”), believes that it will be damaged by the registration of Ser.
`
`No. 76/679,882 EMERGEN-C (Stylized) for “nutritionally fortified beverages” filed by
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`Alacer Corporation, a Califomia corporaton having a principal place of business at 80
`
`-
`
`Icon, Foothill Ranch, California 92610 (“Applicant”), and hereby opposes the same
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`pursuant to Section 13 of the Trademark Act of 1946 (I5 U.S.C. § 1063).
`
`As grounds for its opposition, Opposer states:
`
`1.
`
`On December 11, 2007 Applicant instituted Civil Action No. CV07-
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`I433 DOC (ANX) against Opposer in the U.S. District Court for the Central District of
`
`California, alleging trademark infringement of App1ioant’s EMERGEN-C mark for
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`“nutritionally enhanced products” by 0pposer’s use and registration of the EMERGE
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`mark for “nutrient infused water.”
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`2.
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`Opposer, in its Answer and Counterclaim filed January 14, 2008, denied
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`the likelihood of confusion and sought a declaration that
`
`its use of its EMERGE
`
`

`
`trademarks did not infringe any statutory or common law rights of Applicant, and further
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`sought a declaration that in the event the court finds that consumer confusion would
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`result from concurrent use of Opposer’s EMERGE marks and Applicant’s EMERGEN-C
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`stylized mark and design, Opposer enjoys priority over Applicant with regard to the
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`beverage goods in question.
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`3.
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`Opposer Cott Beverages Inc.
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`is a wholly owned subsidiary of Cott
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`Corporation, one of the world’s largest non-alcoholic beverage companies. For more than
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`50 years — long before Applicant’s existence — Cott has manufactured and sold a wide
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`variety of non—alcoholic beverages throughout the United States.
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`4.
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`In early 2001, Opposer commenced use of its EMERGE trademark on a
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`line of non-alcoholic beverages including energy drinks which were manufactured and
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`sold nationwide.
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`5.
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`On information and belief, at the time that Opposer commenced use of
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`EMERGE on its aforementioned line of beverages in early 2001, Applicant had not
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`entered the retail beverage market, and had not commenced use of EMERGEN—C as a
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`trademark, styled or otherwise, for retail beverages.
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`6.
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`In 2007, Opposer expanded its EMERGE beverage line to include nutrient
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`infused water. Opposer’s first use of EMERGE on nutrient infused water was in or about
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`November 2007. This new EMERGE product was and is within the natural zone of
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`expansion of 0pposer’s prior established use of EMERGE.
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`7.
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`On information and belief, as of November 2007, Applicant had not used
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`any of its EMER’GEN—C or EMERGEN-C stylized marks and designs on beverages.
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`DC\637404\l
`
`2
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`

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`8.
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`Opposer’s use of its EMERGE trademarks does not infiinge the rights of
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`Applicant in any way.
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`9.
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`If, however, consumer confiision is likely to result from concurrent use of
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`Opposer’s EMERGE trademarks and Applicant’s EMERGEN-C stylized marks, then
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`Opposer has priority of use as to the specific beverages at issue, such that it is Applicant
`
`that is infiinging Opposer’s long-established rights in EMERGE as alleged herein.
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`In
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`such an event, Applicant
`
`is not entitled to registration Ser. No. 76/679,882 —
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`EMERGEN-C (Stylized & Design).
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`For the reasons set forth above, Opposer believes and believing asserts that it will
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`be damaged by the registration of Ser. No. 76/679,882 — EMERGEN-C (Stylized &
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`Design). Accordingly, Opposer prays that
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`this opposition be sustained, and that
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`Applicant be refused registration of the EMERGEN-C mark for the goods set forth in
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`application Ser. No. 76/679,882.
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`The $300.00 filing fee is submitted herewith electronically. Should additional
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`fees be required, please charge them the deposit account of Opposer’s counsel, No. 50-
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`O5 73 .
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`Respectfillly submitted,
`
`COTT BEVERAGES INC.
`
`By: Norm D.
`
`t. Landau
`
`Mary Pat Weyback
`Drinker Biddle & Reath LLP
`
`1500 K Street, N.W., Suite 1100
`Washington, D.C. 20005
`Tel: (202) 842-8800
`Fax: (202) 842-8465
`Attarneysfor Opposer
`
`DC\637404\l
`
`3
`
`

`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a copy ofthe foregoing NOTICE OF OPPOSITION
`was served on Applicant this
`day ofMay, 2008, via first-class mail to:
`
`DANIEL M. CISLO
`CISLO & THOMAS, LLP
`233 WILSHIRE BLVD STE 900
`SANTA MONICA, CA 90401-1211
`
`@4124
`
`DC\637404\1
`
`4
`
`

`
`COTT BEVERAGES INC., a Georgia
`corporation,
`
`Opposer,
`
`v.
`
`ALACER CORP., a California corporation,
`
`Applicant.
`
`%/%/%/\-/\-/‘~_/\-/%/\—/\-/\—/
`
`Opposition No.: 91183945
`
`APPLICANT’S EXHIBIT 2
`
`IN SUPPORT OF
`
`APPLICANT’S MOTION TO SUSPEND PROCEEDING PENDING
`OUTCOME OF RELATED CIVIL ACTION
`
`

`
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`Case 8:07-cv-O1433—DOC-AN Documént1
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`" FILED
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`1 Daniel M. Cis1o,Esq.,No. 125,378
`dcmcislo@czslo.c0m
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`2 Sean _O’Bnen Esq.,No. 238,418
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`Attome s for Plaintiff,
`ALAC RCORP.
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`11 ALACER CORR, a California
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`UNITED STATES DISTRICT COURT
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`CENTRAL DISTRICT OF CALIFORNIA
`icvm-itiaa aaclilx)
`Case No.
`COMPLAINT FOR:
`(1) INFRINGEMENT OF A
`FEDERALLY REGISTERED
`TRADEMARK;
`
`15 COTT BEVERAGES INC., a Georgia
`16
`corporation,
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`Defendant.
`
`
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`(2) FALSE DESIGNATION OF
`ORIGIN;
`(3) COMMON LAW
`TRADEMARK
`INFRINGEMENT; AND
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`(4) UNFAIR COIVIPETITION
`UNDER STATE LAW
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`DEMAND FOR JURY TRIAL
`
`22 '
`23
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`24
`25
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`For its Complaint, Plaintiff alleges as follows:
`
`_
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`PARTIES
`_
`
`is a California
`(“Plaintiff” or “Alacer”)
`1 Plaintiff Alacer Corp.
`1.
`35 .
`27 corporation having its principal place of business at 80 Icon, Foothill Ranch,
`28 California 92610. Alacer provides nutritionally enhanced products,
`including
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`Case 8:07-cv—01433-DOC-AN
`
`Document 1
`
`Filed 12/11/2007
`
`Page 2 of 36
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`vitamins and minerals, vitamin and mineral supplements, flavored vitamin drink
`
`mixes, flavored vitamin lozenges, and nutritionally fortified beverages. Alacer is
`
`seeking injunctive relief with respect to its claims presented herein. Presently,
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`. Alacer isnot seeking monetary damages on its infringement claims.
`
`2.
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`Defendant Cott Beverages Inc. (“Defendant” or “Cott”) is a Georgia
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`corporation, having its principal place of business at 4211 W. Boy Scout
`
`Boulevard, Suite 290, Tampa, Florida 33607. Among other locations, Defendant
`
`operates a production facility in San Bernardino, California.
`
`JURISDICTION AND VENUE
`
`3.
`
`This Court has subject matter jurisdiction over this action pursuant to
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`28 U.S.C. §§ 1331 and l338(a) as it arises under Acts of Congress related to
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`trademarks. Additionally, the Court has subject matter jurisdiction over Alacer’s
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`federal trademark infringement claim pursuant to 15 U.S.C. § 1121. The Court has
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`subject matter jurisdiction over Alacer’s common law trademark infringement
`
`claim and its state law unfair competition claim pursuant to 28 _U.S.C.'§ 1367, as
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`the facts giving rise to A1acer’s claims arise from, the same common nucleus of
`
`operative facts.
`
`This Court has personal jurisdiction over the Defendant as it is doing
`% 4.
`business in this judicial district through its website, www.emergewater.com, which
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`advertises, displays, and offers for sale “Emerge nutrient infixsed water.” It is also
`
`believed that Defendant has sold and is selling its products to customers in this
`
`judicial district by way of Defendant"s website and through Defendant’s production
`
`facility in San Bemardino, California.
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`5.
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`Venue is proper in this judicial district pursuant to 28 U.S.C. § 1391(b)
`
`as Defendant has committed acts of infringement in this judicial district.
`
`i
`
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`SUITE900233VWLSHIREEOULEVARD
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`90-40I‘l2IITELEPHONE:(3lO)45I-0647FAGSIMILEZ(310:394‘4477
`
`

`
`Case 8:07-cv-01433-DOC-AN Document1
`
`Filed 12/11/2007
`
`Page 3 of 36
`
`FACTUAL ALLEGATIONS
`
`6.
`
`Plaintiff Alacer is a California corporation located in Orange County,
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`California and provides nutritionally enhanced products that support an energetic,
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`healthy lifestyle.
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`7.
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`EMERGEN-C has been A1acer’s trademark for
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`its vitamins and
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`minerals products since at least April 1979, a period of nearly thirty years. Over
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`that time period, Alacer expanded the number and type of products advertised and
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`sold under its EMERGEN-C family of trademarks to include vitamins and minerals,
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`vitamin and mineral supplements, flavored vitamin drink mixes, flavored vitamin
`
`lozenges, and nutritionally fortified beverages.
`
`8.
`
`Alacer’s U.S. Federal Trademark Registration No. 2,616,360 for
`
`EMER’GEN-C (stylized) for vitamins and minerals in International Class 005
`
`issued on September 10, 2002. See attached Exhibit 1.
`
`9.
`
`/&lacer’s U.S. Federal Trademark Registration No. 3,181,945 for
`
`EMERGEN-C (stylized) for vitamin and mineral supplements in International Class
`
`005 issued on December 5, 2006. See attached Exhibit 2.
`
`10. Alacer’s U.S. Federal Trademark Registration No. 3,181,944 for
`
`EMERGEN-C FOR LIFE!
`
`(stylized) for vitamin and mineral supplements in
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`International Class 005 issued on December 5, 2006. See attached Exhibit 3.
`
`11. Alacer’s U.S. Federal Trademark Registration No. 3,306,845 for
`
`EMERGEN-C.IMl\/f.Ul\lE 1)EFENSEi(stylized) for flavored vitamin ‘drink mixes
`
`and flavored vitamin lozenges in International Class 005 issued on October 9, 2007.
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`WWW.clSl.0.COM
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`27
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`See attached Exhibit 4.
`
`28
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`
`
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`SANTAMONICA.CALIFORNIA
`
`
`
`

`
`ase 8:07-cv-01433-DOC-AN Document1
`
`Filed 12/11/2007
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`Page 4 of 36
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`12. Alacer’s U.S. Federal Trademark Application Serial No. 76/679,882
`
`for EMERGEN-C (stylized) for nutritionally fortified beverages in International
`
`Class 005 was filed on July 25, 2007 as an intent-to—use application. See attached
`
`. Exhibit 5.
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`Alacer has used its EMERGEN-C trademark in commerce for
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`nutritionally fortified beverages, and Alacer is in the process of preparing a
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`statement of use for Serial No. 76/679,882, to attest to that use. Alacer will seek to
`
`amend this complaint once a trademark registration is obtained from this
`
`application.
`
`13. Alacer’s U.S. Federal Trademark Application Serial No. 77/018,588
`
`for EMERGEN-C FEEL THE GOOD for mineral nutritional supplements; vitamin
`
`and mineral supplements; vitamins in International Class 005 was filed on October
`
`11, 2006. Alacer has a bona fide intent to use this trademark in commerce for the
`
`listed goods. See attached Exhibit 6. Alacer will seek to amend this complaint
`
`once such trademark registration is obtained.
`
`14. Alacer has performed substantial marketing and pro_motion of its
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`EMERGEN-C nutritionally enhanced products over the past nearly thirty years,
`
`leading to a substantial sales volume of the EMERGEN-C product, critical acclaim,
`
`as well as widespread public recognition.
`
`15.
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`As a result, Alacer’s EMERGEN-C family of trademarks are well
`
`known throughout the United States, and Alacer has developed substantial goodwill
`
`and recognition among its customers and the public at large in its EMERGEN-C
`
`family of trademarks and products.
`
`A 16.
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`Defendant
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`is a beverage manufacturer and operates a production
`
`facility in San Bernardino, California, among other locations.
`
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`Case 8:07-cv-01433-DOC-AN Document 1 ‘
`
`Filed 12/11/2007
`
`Page 5 of 36
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`\DOO'~JO\U'I-I3»-UJI\)r—-L
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`17.
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`Defendant operates an Internet website (www.emergewater.corn),
`
`which advertises, displays, and offers for sale “nutrient infused water” under the
`
`EMERGE mark.
`
`18.. Defendant’s website states that the EMERGE product’s purpose is to
`
`provide vitamins and minerals, which is supported by the nutritional information
`
`supplied on the site. The website also describes five varieties of the EMERGE
`
`product, each of which has a zero calorie and a fifty calorie formula. The
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`“mandarin orange” variety is described on Defendant’s website as promoting
`
`general health and wellbeing.
`
`CLAIM I — INFRINGEMENT OF A FEDERALLY
`
`REGISTERED TRADEMARK
`
`(15 U.S.C. § 1114(1))
`
`19.
`
`Plaintiff hereby repeats and incorporates herein the allegations set
`
`forth in paragraphs 1 through 18 above.
`
`20. Alacer owns United States Trademark Registration No. 2,6l6,3 60 for
`
`“EMER’GEN-C” in International Class 005. See attached Exhibit 1.
`
`21. Alacer owns United States Trademark Registration No. 3,181,945 for
`
`EMERGEN—C in International Class 005. See attachediExhibit 2.
`
`22.
`
`Alacer owns United States Trademark Registration No. 3,181,944 for
`
`EMESRGENA-C FOR LIFE! in International Class 005. See attached Exhibit '3.
`
`23. Alacer owns United States Trademark Registration No. 3,306,845 for
`
`EMERGEN-C IMMUNE DEFENSE in International Class 005.
`
`See attached
`
`Exhibit 4.
`
`
`
`
`
`FAcatMu..E:(3101394-4477
`
`WWW.GISLO.COM
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`
`
`
`
`

`
`ase 8:07-cv-01433-DOC-AN Document 1
`
`Filed 12/11/2007
`
`Page 6 of 36
`
`24.
`
`Alacer alleges that Defendant has used in commerce the term
`
`El\/IERGE as a trademark in connection with the advertising of, sale of, or offer to
`sell nutrient infused water. Defendant’s use,
`in relation to Alacer’s use of its
`EMERGEN-C family of trademarks, will likely cause confusion or mistake, or will
`
`likely deceive the public as to Defendant’s products being associated or identified
`
`with or being the same as those of Alacer.
`
`25. Alacer did not consent
`
`to or authorize Defendant’s adoption or
`
`commercial use of the term EMERGE for Defendant’s nutrient infused water.
`
`26. Defendant therefore has infringed Alacer’s EMERGEN-C trademark
`
`in violation of Alacer’s federal trademark rights under the Lanham Act, 15 U.S.C.
`
`§§ 1051 et seq.
`
`27. Alacer’s EMERGEN-C family of trademarks