Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA445406
`ESTTA Tracking number:
`12/08/2011
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91193427
`Plaintiff
`Edom Laboratories, Inc.
`ALEC J MCGINN
`KUNZLER NEEDHAM MASSEY THORPE
`1801 BROADWAY SUITE 1100
`DENVER, CO 80202
`UNITED STATES
`alecmcginn@kunzlerip.com;t.goodreid@comcast.net
`Brief on Merits for Plaintiff
`Alec J. McGinn
`alecmcginn@kunzlerip.com
`/s/ Alec J. McGinn
`12/08/2011
`Opening ACR Brief (redacted version).pdf ( 47 pages )(494834 bytes )
`Declaration of Arthur Pollack (signed).pdf ( 10 pages )(432282 bytes )
`Declaration of Allison Pollack (signed).pdf ( 2 pages )(81345 bytes )
`Dec of Martina Washington.pdf ( 2 pages )(64357 bytes )
`Dec of Harold Mitchell.pdf ( 2 pages )(68123 bytes )
`Declaration of Joseph Reardon.pdf ( 2 pages )(54729 bytes )
`Declaration of Alec McGinn.pdf ( 29 pages )(674422 bytes )
`Ex A - Authentic CHIRO-KLENZ.pdf ( 4 pages )(530636 bytes )
`Ex. B - CHIRO-KLENZ registration (status and title).pdf ( 7 pages )(968287
`bytes )
`Ex. C - '128 registration documents.pdf ( 4 pages )(659851 bytes )
`Ex. D - '970 registration documents.pdf ( 3 pages )(468186 bytes )
`Ex. E - Petition for Cancelation.pdf ( 5 pages )(109261 bytes )
`Ex. F - Sales documents.pdf ( 6 pages )(441009 bytes )
`Ex. G - Advertising for SUPER CHIRO TEA.pdf ( 8 pages )(1138134 bytes )
`Ex. H - www.chiroteaforless.com.pdf ( 2 pages )(235759 bytes )
`Ex. J - Opinion and Order Granting P. Injunction.pdf ( 6 pages )(147260 bytes )
`Ex. K - New SUPER CHIRO TEA packaging.pdf ( 5 pages )(1005447 bytes )
`Ex. L - www.superchirotea.com printouts.pdf ( 5 pages )(325654 bytes )
`Ex. M - Reviews.pdf ( 9 pages )(537460 bytes )
`Ex. N - Invoice.pdf ( 1 page )(29144 bytes )
`
`

`
`VIA ELECTROҭIC SYSTEM FOR TRADEMARK TRIALS AҭD APPEALS (“ESTTA”)
`DATE OF FILIҭG: December 8, 2011
`
`
`
`Iҭ THE PATEҭT AҭD TRADEMARK OFFICE BEFORE
`THE TRADEMARK TRIAL AҭD APPEAL BOARD
`
`
`
`
`
`EDOM LABORATORIES, IҭC.’S
`OPEҭIҭG ACR BRIEF
`
`
`
`
`In the matter of application serial no. 77/803,465
`Published for Opposition on January 12, 2010
`
`------------------------------------------------------
`EDOM LABORATORIES, INC.,
`
`
`Opposer,
`
`
`
`
`vs.
`
`
`GLENN LICHTER,
`
`
`Applicant.
`
`
`Opposition No.: 91193427
`-----------------------------------------------------
`
`Petitioner Edom hereby files its opening accelerated case resolution (“ACR”) brief,
`
`
`
`requesting that the Trademark Trial and Appeal Board deny registration of application serial no.
`
`77/803,465 for SUPER CHIRO TEA.
`
`
`
`
`
`
`
`1
`
`

`
`TABLE OF COҭTEҭTS
`
`
`I.
`
`INDEX OF CASES................................................................................................................. 3
`
`II. DESCRIPTION OF THE RECORD ...................................................................................... 4
`
`III.
`
`IV.
`
`STATEMENT OF ISSUES ................................................................................................ 8
`
`INTRODUCTION .............................................................................................................. 8
`
`V. RECITATION OF THE FACTS .......................................................................................... 11
`
`VI.
`
`ARGUMENT .................................................................................................................... 25
`
`a. Edom Has Rights to the CHIRO-KLE̱Z Mark ................................................................ 25
`
`b. Edom’s CHIRO-KLE̱Z Mark Has Priority Over SUPER CHIRO TEA ......................... 26
`
`c. Glenn Lichter’s SUPER CHIRO TEA Mark is Confusingly Similar to Edom’s CHIRO-
`KLE̱Z Mark ............................................................................................................................. 27
`
`i. Similarity of the Marks .................................................................................................. 27
`
`1.
`
`2.
`
`ii.
`
`iii.
`
`iv.
`
`v.
`
`Similarity in Meaning ............................................................................................ 28
`
`Similarity in Commercial Impression ................................................................... 30
`
`Similarity of the Goods............................................................................................... 32
`
`Similarity of Trade Channels ...................................................................................... 33
`
`Conditions Under Which and to Whom Sales are Made ............................................ 33
`
`Fame and Strength of the Mark .................................................................................. 34
`
`vi. Actual Confusion ........................................................................................................ 35
`
`vii. Market Interface ......................................................................................................... 38
`
`viii.
`
`Intent and Good Faith ................................................................................................. 40
`
`1. Mr. Lichter Fraudulently Cancelled Edom’s CHIRO-KLE̱Z Registration ...... 40
`
`2. Mr. Lichter Sold Counterfeit CHIRO-KLE̱Z ..................................................... 41
`
`3. Mr. Lichter Used Edom’s Trade Dress Even After a Preliminary Injunction
`Order Stating that Edom was Likely to Succeed on its Trade Dress Claim .................. 42
`
`4. Mr. Lichter Has Used Edom’s CHIRO-KLE̱Z Mark to Cause Confusion ....... 43
`
`5. Mr. Lichter Has Attempted to Hide Relevant Information During Discovery .... 43
`
`6.
`
`Summary................................................................................................................. 45
`
`VII. CONCLUSION ................................................................................................................. 45
`
`
`
`
`
`
`
`2
`
`

`
`I.
`
`INDEX OF CASES
`
`
`
`Cases
`Blue Cross & Blue Shield Mut. v. Blue Cross & Blue Shield Ass’n, 110 F.3d 318
`(6th Cir. 1997) ........................................................................................................................... 37
`China Healthways Inst., Inc. v. Wang, 491 F.3d 1337, 83 USPQ2d 1123 (Fed. Cir. 2007) ........ 27
`Church of Scientology Int’l v. Elimira Mission of the Church of Scientology, 794 F.2d 38
`(2d Cir. 1986) ............................................................................................................................ 37
`Consolidated Cigar Corp. v. M. Landaw, Ltd., 474 F.2d 1402, 177 USPQ 328
`(CCPA 1973) ............................................................................................................................ 26
`Dad’s Root Beer Co. v. Atkin, 90 F.Supp. 477 (E.D. Pa. 1950) ................................................... 37
`Dan Robbins & Associates, Inc. v. Questor Corp., 599 F.2d 1009, 202 USPQ 100
`(CCPA 1979) ............................................................................................................................ 38
`Finance Co. of America v. BankAmerica Corp., 205 USPQ 1016 (TTAB 1980) ........................ 33
`Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001
`(Fed. Cir. 2002) ................................................................................................................... 31, 38
`Holiday Inns, Inc. v. Alberding, 203 USPQ 273 (N.D. Tex. 1978) .............................................. 37
`Holiday Inns, Inc. v. Alberding, 683 F.2d 931 (5th Cir. 1982) ..................................................... 37
`In re Dixie Rests., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997)......................................... 31
`In re E.I. du Pont de ̱emours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973) ........... 26, 37
`In re Majestic Drilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003) ................. 26
`In re ̱ationwide Industries, Inc., 6 USPQ2d 1882 (TTAB 1988) ............................................... 30
`Kampgrounds of America, Inc. v. ̱orth Delaware A-OK Campground, Inc.,
`415 F.Supp. 1288 (D. Del. 1976) .............................................................................................. 37
`Kenner Parker Toys, Inc. v. Rose Art Indus., 963 F.2d 350, 22 USPQ2d 1453
`(Fed. Cir. 1992) ............................................................................................................................. 29
`Kimberly-Clark Corp. v. H. Douglas Enters., Ltd., 774 F.2d 1144 (Fed. Cir. 1985) ................... 32
`King Candy Co. v. Eunice King’s Kitchen, Inc., 182 USPQ 108 (CCPA 1974) .......................... 25
`Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772,
`396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005) .................................................................. 26
`Paula Payne Products Co. v. Johnson Pub. Co., 473 F.2d 901, 177 USPQ 76 (CCPA 1973) .... 26
`Specialty Brands, Inc. v. Coffee Bean Distribs., Inc., 748 F.2d 669, 223 USPQ 1281
`(Fed. Cir. 1984) ......................................................................................................................... 32
`T.W. Samuels Distillery, Inc. v. Schenely Distillers, Inc., 458 F.2d 1403, 173 USPQ 690
`(CCPA 1972) ............................................................................................................................ 29
`
`
`
`Other Authorities
`Trademark Trial and Appeal Board Manual of Procedure, Third Edition, §314 (May 2011) .... 24
`
`
`
`
`
`3
`
`

`
`II.
`
`DESCRIPTION OF THE RECORD
`
`Pursuant to the parties’ agreement, the Board entered an ACR order on October 3, 2011.
`
`In lieu of trial, the parties filed a stipulation of facts, entered on November 11, 2011. In addition,
`
`the parties agreed that they could submit additional evidence with their ACR briefs and that the
`
`Board would resolve any disputed facts based on the record presented in the ACR briefs. The
`
`record in this case consists of the following:
`
`• The stipulated facts, as filed on November 11, 2011, including exhibits thereto;
`
`• The declaration of Arthur Pollack;
`
`• The declaration of Allison Pollack;
`
`• The declaration of Martina Washington;
`
`• The declaration of Harold Mitchell;
`
`• The declaration of Joseph Reardon;
`
`• The declaration of Alec J. McGinn;
`
`• Exhibit A - The CHIRO-KLENZ packaging, with foundation provided at
`
`paragraph 3 of the Declaration of Arthur Pollack;
`
`• Exhibit B - Registration information (including status and title) for Reg. No.
`
`4,033,118 for CHIRO-KLENZ, printed from the TARR website, and introduced
`
`into evidence as per the October 3, 2011 ACR Order in this case allowing entry of
`
`soft copies of USPTO records into evidence;
`
`• Exhibit C - Registration information (including status and title) for Reg. No.
`
`1,760,128 for CHIRO-KLENZ, printed from the TARR website, and introduced
`
`into evidence as per the October 3, 2011 ACR Order in this case allowing entry of
`
`soft copies of USPTO records into evidence;
`
`
`
`4
`
`

`
`• Exhibit D - Registration information (including status and title) for Reg. No.
`
`2,459,470 for CHIRO-KLENZ, printed from the TARR website, and introduced
`
`into evidence as per the October 3, 2011 ACR Order in this case allowing entry of
`
`soft copies of USPTO records into evidence;
`
`• Exhibit E – Petition for Cancellation filed in Opposition no. 92/045,380, printed
`
`from the USPTO database, and introduced into evidence as per the October 3,
`
`2011 ACR Order in this case allowing entry of soft copies of USPTO records into
`
`evidence;
`
`• Exhibit F – Sales documents showing the dates of the first and last sales of
`
`CHIRO-KLENZ and first sale of SUPER CHIRO TEA by Mr. Lichter. These
`
`documents were produced in response to discovery requests and are introduced
`
`into evidence as per the October 3, 2011 ACR Order in this case allowing entry of
`
`documents provided in response to discovery requests.
`
`• Exhibit G – Advertising for SUPER CHIRO TEA on www.google.com, with
`
`foundation provided at paragraph 28 of the Declaration of Arthur Pollack;
`
`• Exhibit H – Printouts from the www.chiroteaforless.com website are included at
`
`Exhibit H and, since such documents would be admissible under a notice of
`
`reliance, are properly introduced into evidence as per the October 3, 2011 ACR
`
`Order in this case. Copies of this website were also provided in response to
`
`Edom’s discovery requests, and are provided with proper foundation at paragraph
`
`31 of Arthur Pollack’s declaration.
`
`• CONFIDENTIAL INFORMATION –REDACTED Exhibit I – Documents
`
`showing the results of Mr. Lichter’s Google.com keyword advertising campaign.
`
`
`
`5
`
`

`
`These documents were produced in response to discovery requests (and were
`
`marked confidential) and are introduced into evidence as per the October 3, 2011
`
`ACR Order in this case allowing entry of documents provided in response to
`
`discovery requests.
`
`• Exhibit J – A true and accurate copy of an Order of the Federal Court for the Eastern
`
`District of New York in case no. cv-09-5185(SJF)(ETB) as retrieved from the
`
`PACER website. This document is introduced into evidence pursuant to the Board’s
`
`October 3, 2011 Order stating that soft copies of federal courts in cases involving
`
`Edom and Mr. Lichter can be introduced into evidence in this proceeding;
`
`• Exhibit K – documents showing the new packaging for SUPER CHIRO TEA
`
`used by Mr. Lichter. These documents were produced in response to discovery
`
`requests and are introduced into evidence as per the October 3, 2011 ACR Order
`
`in this case allowing entry of documents provided in response to discovery
`
`requests;
`
`• Exhibit L – documents, produced by Mr. Lichter in response to discovery
`
`requests, showing the www.superchirotea.com website. These documents are
`
`introduced into evidence as per the October 3, 2011 ACR Order in this case
`
`allowing entry of documents provided in response to discovery requests.
`
`• Exhibit M – Printouts from the Internet showing reviews of CHIRO-KLENZ.
`
`Since these documents would be admissible under a notice of reliance, they are
`
`properly introduced into evidence as per the October 3, 2011 ACR Order in this
`
`case;
`
`
`
`6
`
`

`
`• Exhibit N – A copy of an invoice received by Edom from Herb Naturals at
`
`Edom’s address after Edom had moved. Foundation for this document is
`
`provided at paragraph 17 of the declaration of Arthur Pollack.
`
`
`
`
`
`
`
`
`
`7
`
`

`
`III.
`
`STATEMENT OF ISSUES
`
`Whether, in light of Mr. Lichter’s previous association with the CHIRO-KLENZ brand
`
`and his attempts to associate his SUPER CHIRO TEA product with CHIRO-KLENZ brand tea,
`
`the mark SUPER CHIRO TEA for herbal teas so resembles Edom’s registered CHIRO-KLENZ
`
`mark for herbal teas that registration of SUPER CHIRO TEA should be denied under
`
`Section 2(d).
`
`
`
`IV.
`
`INTRODUCTION
`
`This action is the most current front in a longstanding battle between Edom and Mr.
`
`Lichter. Mr. Lichter is a former supplier of CHIRO-KLENZ tea who was once responsible for
`
`procuring and packaging CHIRO-KLENZ tea for Edom. The discord between the parties began
`
`in 2004 when Edom terminated Mr. Lichter’s supply agreement due to problems with the quality
`
`of the tea that he was providing. After Edom terminated the agreement, Mr. Lichter sued Edom
`
`in New York state court for breach of the supply contract. Mr. Lichter also fraudulently
`
`procured a default judgment in the TTAB cancelling Edom’s registration of CHIRO-KLENZ,
`
`registered the CHIRO-KLENZ name for himself, and began selling counterfeit CHIRO-KLENZ
`
`in identical packaging. Mr. Lichter sold the counterfeit CHIRO-KLENZ after the state court
`
`found that Edom justifiably terminated the supply contract. Mr. Lichter only stopped selling
`
`counterfeit CHIRO-KLENZ in 2009, after Edom successfully cancelled Mr. Lichter’s
`
`registration of CHIRO-KLENZ.
`
`Rather than simply move on, Mr. Lichter decided to continue causing trouble for Edom.
`
`A short time after dropping his counterfeit CHIRO-KLENZ tea business, Mr. Lichter introduced
`
`a new product – SUPER CHIRO TEA. Mr. Lichter continued to use packaging matching that
`
`used by Edom to sell CHIRO-KLENZ, as seen in the images below.
`
`
`
`8
`
`

`
`
`
`After Edom sued Mr. Lichter and others in federal court, and a federal judge issued a
`
`preliminary injunction order stating that Edom was likely to succeed in its case for trade dress
`
`infringement, Mr. Lichter eventually and begrudgingly made changes to the packaging – altering
`
`only the color scheme of his SUPER CHIRO TEA packaging for the regular flavor product to
`
`
`
`that shown below.
`
`
`
`Mr. Lichter has also used Edom’s CHIRO-KLENZ mark to promote his SUPER CHIRO
`
`TEA product. He has used CHIRO-KLENZ testimonials to promote SUPER CHIRO TEA, has
`
`taken orders for CHIRO-KLENZ tea but instead shipped SUPER CHIRO TEA, and has
`
`generally given the impression that his product is affiliated with Edom’s CHIRO-KLENZ
`
`product. Naturally, many instances of consumer confusion have occurred as a result of Mr.
`
`Lichter’s actions.
`
`
`
`9
`
`

`
`Given the similarity of the marks and products, the instances of actual confusion, and
`
`other considerations set forth below, Edom respectfully requests that registration of the SUPER
`
`CHIRO TEA mark be refused under Section 2(d) as likely to be confused with Edom’s CHIRO-
`
`KLENZ mark.
`
`
`
`
`
`
`
`10
`
`

`
`V.
`
`RECITATION OF THE FACTS
`
`The Parties
`
`1. The Opposer, Edom Labs, is a New York corporation in the business of marketing and
`
`distributing health products and nutritional supplements. One of the products sold by
`
`Edom Labs is an herbal tea for medicinal purposes, which is sold under the trademark
`
`CHIRO-KLENZ. Declaration of Arthur Pollack, ¶¶ 2-3; Exhibit B.
`
`2. Mr. Lichter manages two small entities, Herb Naturals, Inc., and Special Tea Plus, Inc.
`
`Stipulated Facts, filed ̱ovember 18, 2011 (document no. 25), ¶ 3. Mr. Lichter is a privy
`
`of Herb Naturals and Special Tea. Stipulated Facts, ¶ 3.
`
`3. Mr. Lichter, through his privies, is a former licensee of the CHIRO-KLENZ mark.
`
`Stipulated Facts, ¶¶ 10-11. Mr. Lichter is currently selling an herbal tea under the name
`
`SUPER CHIRO TEA. Stipulated Facts, ¶ 26. Mr. Lichter also filed, on August 12,
`
`2009, this application to register the mark SUPER CHIRO TEA for “herbal teas for
`
`medicinal purposes.”
`
`The CHIRO-KLEҭZ Mark
`
`4. Edom is the owner of U.S Reg. no. 4,033,118 for CHIRO-KLENZ for “Herbal teas for
`
`medicinal purposes; Nutritional supplement for eliminating toxins from the body.”
`
`Copies of status and title documents printed from the USPTO website are included at
`
`Exhibit B, and are part of the record as per the parties agreement on introducing
`
`evidence. Edom pled ownership of the application which matured into this registration in
`
`its Notice of Opposition.
`
`5. The applicant, Glenn Lichter, filed an opposition (opposition no. 91194813, which was
`
`consolidated with this opposition proceeding) to Edom’s application to register CHIRO-
`
`
`
`11
`
`

`
`KLENZ that matured into Reg. no. 4,033,118. This opposition proceeding was
`
`consolidated with the present opposition proceeding on July 19, 2011. July 19 2011
`
`Order in Opposition no. 91193427 (document no. 16). Mr. Lichter withdrew his
`
`opposition, with prejudice, in August of 2011. August 25 2011 Order in Opposition no.
`
`91193427 (document no. 22).
`
`History Between the Parties
`
`6. Edom introduced CHIRO-KLENZ brand tea in 1992, and has been selling it ever since.
`
`Declaration of Arthur Pollack, ¶ 2. Edom sells CHIRO-KLENZ tea to chiropractic
`
`offices, naturopaths, and other healthcare providers (referred to herein as distributors).
`
`Declaration of Arthur Pollack, ¶ 4. These distributors then sell the CHIRO-KLENZ tea
`
`directly to their customers at their offices. Some distributors also sell CHIRO-KLENZ
`
`tea online. Declaration of Arthur Pollack, ¶ 4.
`
`7. CHIRO-KLENZ brand tea is offered in two flavors: Original, and Lemon. Declaration
`
`of Arthur Pollack, ¶ 3. The packaging for regular CHIRO-KLENZ is blue with dark pink
`
`accents, while the packaging for lemon CHIRO-KLENZ is yellow with black accents.
`
`Accurate copies of Edom’s packaging are provided at Exhibit A, and the fronts of the
`
`packaging are reproduced here for convenience. Declaration of Arthur Pollack, ¶ 3.
`
`
`
`12
`
`

`
`
`
`
`
`8. Mr. Lichter’s privy, Special Tea, was Edom’s private labeler for CHIRO-KLENZ tea. In
`
`that role, Special Tea would procure tea and packaging and assemble them into a finished
`
`product, which Special Tea then provided to Edom to sell under the CHIRO-KLENZ
`
`name. Edom then sold the CHIRO-KLENZ brand tea to its distributors. Declaration of
`
`Arthur Pollack, ¶ 7.
`
`9. Without Edom’s approval, Gary R. Harlem of Special Tea filed a trademark application
`
`for the mark CHIRO-KLENZ, even though Edom was the owner of the mark.
`
`Declaration of Arthur Pollack, ¶ 8. The CHIRO-KLENZ mark was registered in March
`
`
`
`13
`
`

`
`of 1993 (U.S. Reg. No. 1,760,128). Mr. Harlem later assigned the registration to Special
`
`Tea. Exhibit C.
`
`10. In September of 1997, Edom and Special Tea entered into a contract (hereinafter the
`
`“Agreement”), a copy of which is found at Exhibit A of the Stipulated Facts. Stipulated
`
`Facts, ¶ 7. In an attempt to amicably resolve a dispute in what had been a productive
`
`relationship, Edom purchased the CHIRO-KLENZ mark and associated goodwill, along
`
`with rights to the tea formula, from Special Tea for $75,000. Edom also agreed to
`
`continue using Special Tea as its exclusive source of CHIRO-KLENZ brand tea for a ten-
`
`year period, subject to conditions specified in the Agreement. Declaration of Arthur
`
`Pollack, ¶ 9; Exhibit A to Stipulated Facts. Mr. Lichter’s company named Herb Naturals
`
`later assumed the Agreement and began to supply Edom with the CHIRO-KLENZ tea.
`
`Stipulated Facts, ¶ 11.
`
`11. Edom paid Special Tea $75,000, and Special Tea assigned the original trademark
`
`registration for CHIRO-KLENZ, and all associated rights, to Edom. Stipulated Facts,
`
`¶¶ 8-9.
`
`12. The original registration of CHIRO-KLENZ (Reg. No. 1,760,128) was abandoned when
`
`Edom neglected to file certain affidavits with the USPTO. Edom took the opportunity to
`
`file a new application for the CHIRO-KLENZ mark with the correct ownership
`
`information (Reg. No. 2,459,970) which was registered on June 12, 2001. Declaration of
`
`Arthur Pollack, ¶ 10; Exhibit D.
`
`13. Due to Edom’s efforts in advertising and promoting CHIRO-KLENZ brand tea, CHIRO-
`
`KLENZ tea became Edom’s top-selling product. Declaration of Arthur Pollack, ¶¶ 2, 11.
`
`
`
`14
`
`

`
`14. In October of 2004, customers began to contact Edom, complaining about a drop in the
`
`quality of CHIRO-KLENZ tea. Edom contacted Mr. Lichter, told him about the
`
`complaints, and insisted that he resolve the quality problems. Declaration of Arthur
`
`Pollack, ¶ 13.
`
`15. Special Tea failed to resolve the quality problems. In December of 2004, after providing
`
`Special Tea with proper notice, and in accordance with the terms of the Agreement,
`
`Edom terminated Special Tea’s contract to provide Edom with CHIRO-KLENZ brand
`
`tea. Edom found a new party to supply it with tea, according to Edom’s quality
`
`requirements, to be sold under the CHIRO-KLENZ mark. Declaration of Arthur Pollack,
`
`¶ 13.
`
`16. In January 2005, Special Tea filed a civil action in New York state court against Edom,
`
`alleging breach of contract. Stipulated Facts, ¶ 14. In January of 2008, the Court ruled
`
`in Edom’s favor, finding that Edom was justified in terminating the supply relationship
`
`due to Special Tea’s poor performance. Stipulated Facts, ¶ 20; Exhibit C to Stipulated
`
`Facts. A copy of the decision of the state court is attached as Exhibit C to the Stipulated
`
`Facts.
`
`17. On January 2006, while the state court civil action was going on, Special Tea filed a
`
`petition with the USPTO to cancel Edom’s CHIRO-KLENZ mark, which was assigned
`
`cancelation no. 92/045,380 for registration no. 2,459,470. Stipulated Facts, ¶ 15. Special
`
`Tea again asserted that Edom had breached the contract, and that, as a result, the rights in
`
`the CHIRO-KLENZ mark had reverted to Special Tea. Exhibit E, Petition for
`
`Cancellation in Cancellation ̱o. 92045380, ¶¶ 9-15, 24.
`
`
`
`15
`
`

`
`18. Because Edom had moved from the address listed in the USPTO records, Edom never
`
`received notification of the cancellation proceeding. Declaration of Arthur Pollack, ¶ 17.
`
`19. Mr. Lichter, in his petition to cancel, stated that “[t]o the best of petitioner’s knowledge,
`
`the name and address of the current owner of the above-listed trademark registration is
`
`Edom Labs, Inc., maintaining offices at 860 Grand Boulevard, Deer Park, New York
`
`11729.” Exhibit E, ¶ 2.
`
`20. Contrary to this sworn assertion, however, Mr. Lichter in fact knew that Edom had
`
`moved to a new address, as he had made deliveries to Edom at the new address before the
`
`contract dispute. Declaration of Arthur Pollack, ¶ 17. Mr. Lichter was also still involved
`
`in the state court litigation, and his attorney was in contact with Edom’s attorney in
`
`connection with that litigation. Declaration of Arthur Pollack, ¶ 17. Despite the fact that
`
`Mr. Lichter knew how to contact Edom, he never informed Edom of the cancellation
`
`proceeding. Declaration of Arthur Pollack, ¶ 17.
`
`21. In April, 2006, the TTAB entered judgment by default and canceled Edom’s registration
`
`of CHIRO-KLENZ. Stipulated Facts, ¶ 16.
`
`22. Mr. Lichter, via Special Tea, then filed his own application for the CHIRO-KLENZ mark
`
`(Reg. No. 3,327,764), which was registered on October 30, 2007. Stipulated Facts, ¶ 17.
`
`23. Special Tea assigned the newly acquired CHIRO-KLENZ mark to Glenn Lichter.
`
`Stipulated Facts, ¶ 18. Mr. Lichter started selling CHIRO-KLENZ brand tea in
`
`approximately June 2008, and continued selling through August 2009. Exhibit F, Sales
`
`Documents. The CHIRO-KLENZ brand tea sold by Mr. Lichter was sold in packaging
`
`that was almost identical to that used by Edom. The only apparent difference was that
`
`Mr. Lichter had Herb Natural’s contact information, rather than Edom’s contact
`
`
`
`16
`
`

`
`information, printed on the box. Declaration of Arthur Pollack, ¶ 19. A copy of Mr.
`
`Lichter’s packaging for CHIRO-KLENZ is shown at Exhibit B to the Stipulated Facts.
`
`24. Once Edom discovered that Mr. Lichter had canceled Edom’s CHIRO-KLENZ
`
`registration and had re-registered CHIRO-KLENZ for himself, Edom initiated
`
`cancellation proceeding no. 92049824 on August 1, 2008 to cancel Mr. Lichter’s
`
`registration of CHIRO-KLENZ. Declaration of Arthur Pollack, ¶ 21; Stipulated Facts,
`
`¶ 21.
`
`25. Edom filed a motion for summary judgment in the cancellation proceeding, and in June
`
`2009, the TTAB granted that motion. Stipulated Facts, ¶¶ 21-22. The TTAB determined
`
`that Special Tea, in the Agreement, had assigned all rights to the CHIRO-KLENZ mark
`
`to Edom and that, therefore, Special Tea was not the owner of the CHIRO-KLENZ mark
`
`when it filed the application. As a result, the USPTO canceled Mr. Lichter’s registration
`
`of CHIRO-KLENZ. Stipulated Facts, ¶ 22. A copy of the TTAB decision is at Exhibit
`
`D of the Stipulated Facts.
`
`26. Following cancellation of Mr. Lichter’s registration, Edom filed again for registration of
`
`the CHIRO-KLENZ mark, which matured into the registration identified in this
`
`opposition (Reg. No. 4,033,118). Declaration of Arthur Pollack, ¶ 23; Exhibit B.
`
`27. In August of 2009, Mr. Lichter stopped selling CHIRO-KLENZ brand tea. Exhibit F,
`
`Sales Documents. In October 2009, Mr. Lichter began selling SUPER CHIRO TEA
`
`brand tea. Exhibit F, Sales Documents. Mr. Lichter also filed the present intent-to-use
`
`application to register the SUPER CHIRO TEA mark.
`
`28. The packaging for SUPER CHIRO TEA was almost identical to that used by Edom for
`
`CHIRO-KLENZ tea. The packaging used the same coloring, the same wording, the same
`
`
`
`17
`
`

`
`fonts, the same slogans, and the same chiropractic figure – but with the addition of a
`
`cape. Declaration of Arthur Pollack, ¶ 26. The packaging also prominently states “From
`
`the ORIGINAL makers of CHIRO-KLENZTM” A copy of the original SUPER CHIRO
`
`TEA packaging is included at Exhibit E to the Stipulated Facts, and can be compared to
`
`the CHIRO-KLENZ packaging shown in Exhibit A.
`
`29. SUPER CHIRO TEA is
`
`
`
`Promotion of the SUPER CHIRO TEA product
`
`30. The SUPER CHIRO TEA was sold online, via a website at the domain name
`
`www.superchirotea.com. Stipulated Facts, ¶ 27. Screen shots showing the contents of
`
`Mr. Lichter’s site are found at Exhibit F to the Stipulated Facts. Additional screen shots
`
`showing the contents of www.superchirotea.com, belatedly produced by Mr. Lichter
`
`during discovery, are found in Exhibit L to this brief.
`
`31. Mr. Lichter also owns the domain name www.chiroklenzforless.com, and configured that
`
`domain name to redirect visitors to www.superchirotea.com. Stipulated Facts, ¶ 29.
`
`32. Mr. Lichter used testimonials for CHIRO-KLENZ to promote SUPER CHIRO TEA on
`
`his www.superchirotea.com website. This can be seen in Exhibit F to the Stipulated
`
`Facts.
`
`33. Mr. Lichter, in promoting SUPER CHIRO TEA online, had search results that read “Why
`
`Chiro-Klenz – CHIRO-KLENZ TEA” that linked to the www.superchirotea.com website,
`
`where SUPER CHIRO TEA was offered for sale. Exhibit G, Internet advertising
`
`documents, pg. 1, second entry; Declaration of Arthur Pollack, ¶ 28.
`
`
`
`18
`
`

`
`34. Mr. Lichter also took out sponsored links at www.google.com. One such sponsored link
`
`identifies the product as “All NEW Super CHIRO Tea” and prominently includes the
`
`statement “From ORIGINAL Makers of Chiro-Klenz…” Exhibit G, pg. 3.
`
`35. In April of 2010, Mr. Lichter was advertising “CHIRO KLENZ TEA LEMON” with a
`
`link to the www.chiroklenzforless.com website. Exhibit G, pg. 5. At that point, the
`
`www.chiroklenzforless.com website was redirecting to the superchirotea.com website.
`
`Declaration of Arthur Pollack, ¶29. Furthermore, by April 2010, Mr. Lichter was not
`
`actually selling CHIRO KLENZ tea; only SUPER CHIRO TEA was being sold on the
`
`website referenced in the advertising. Stipulated Facts, ¶¶ 22- 23; Exhibit F, sales
`
`documents.
`
`36. Another website selling SUPER CHIRO TEA was www.superchirostore.com. The
`
`search result stated “Super Chiro Store Email a Friend Chiro-Klenz Tea – An Aid to
`
`Detoxifying and Trimming the System for Men and Women.” Exhibit G, pg. 7, second
`
`entry.
`
`37. In November 2009, a private investigator named Joe Reardon ordered CHIRO-KLENZ
`
`tea from Mr. Lichter’s www.superchirotea.com website. Instead of CHIRO-KLENZ tea,
`
`Mr. Reardon received SUPER CHIRO TEA. Declaration of Joseph Reardon.
`
`38. Mr. Lichter also ran a website at www.chiroteaforless.com. Declaration of Alec J.
`
`McGinn, ¶ 7, Amended Responses to Requests for Production. Copies of the website
`
`appear at Exhibit H. The www.chiroteaforless.com website has the words “BUY SUPER
`
`CHIRO NOW” in the upper right hand corner. Clicking on these words leads a person to the
`
`website www.superchirotea.com, from which SUPER CHIRO TEA can be purchased.
`
`Declaration of Arthur Pollack, ¶ 31.
`
`
`
`19
`
`

`
`39. CONFIDENTIAL INFORMATION –REDACTED Mr. Lichter ran a keyword
`
`advertising campaign through Google.com promoting the website
`
`www.chiroteaforless.com. Exhibit I, keyword results. As seen in Exhibit I, Mr. Lichter
`
`used approximately 82 keywords to trigger advertisements for the website
`
`www.chiroteaforless.com. Approximately 32 of these used variations on the name
`
`CHIRO-KLENZ, such as “chiro klenz,” “chiro klenz tea,” chiro cleanse,” and others.
`
`Mr. Lichter also used the name “Edom Labs” and variations thereon as keywords.
`
`Searches for the keyword “weight loss tea” caused Mr. Lichter’s ad to be shown 102,718
`
`times. However, the ad shown in response to this keyword was only clicked by the user
`
`257 times. The click-through-rate (the number of clicks divided by the number of times
`
`the ad is shown) was only 0.25%. In contrast, persons searching for “chiro klenz” clicked
`
`the ad 12.31% of the time. Persons searching for “chiro klenz tea” clicked the ad 26.32%
`
`of the time. Persons searching for “chiroklenz” clicked the ad 28.75% of the time.