UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
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`BUTLER
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`Mailed: March 24, 2011
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`Opposition No. 91197240
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`FGN USA, INC.
`
`
`v.
`
`
`TRANS RESEARCH INTERNATIONAL TRUST
`LIMITED
`
`
`
`
`Before Bucher, Kuhlke and Taylor, Administrative Trademark
`Judges.
`
`By the Board:
`
`
`
`Applicant seeks to register the mark TPR 20 for "topical
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`pain relief medication; topical pain relief cream; anti-
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`inflammatory cream."1
`
`
`
`On November 2, 2010, opposer filed a notice of opposition
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`using the ESTTA filing system. As reflected in the ESTTA cover
`
`pages, opposer relies on its registered mark APR15 for "pain
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`relief medication."2 Opposer lists, in the ESTTA cover pages,
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`its grounds for opposition as: immoral or scandalous;
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`deceptiveness; false suggestion of a connection; priority and
`
`
`1 Application Serial No. 85027022, filed on April 30, 2010, and
`claiming a date of first use anywhere of January 1, 2009 and a date of
`first use in commerce of May 1, 2009.
`
` 2
`
` Registration No. 9819519, issued on July 13, 2010, and claiming a
`date of first use anywhere and a date of first use in commerce of
`January 1, 2010.
`
`
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
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`
`
`
`
`BUTLER
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`
`
`
`
`
`
`
`
`
`
`Mailed: March 24, 2011
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`
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`
`
`Opposition No. 91197240
`
`FGN USA, INC.
`
`
`v.
`
`
`TRANS RESEARCH INTERNATIONAL TRUST
`LIMITED
`
`
`
`
`Before Bucher, Kuhlke and Taylor, Administrative Trademark
`Judges.
`
`By the Board:
`
`
`
`Applicant seeks to register the mark TPR 20 for "topical
`
`pain relief medication; topical pain relief cream; anti-
`
`inflammatory cream."1
`
`
`
`On November 2, 2010, opposer filed a notice of opposition
`
`using the ESTTA filing system. As reflected in the ESTTA cover
`
`pages, opposer relies on its registered mark APR15 for "pain
`
`relief medication."2 Opposer lists, in the ESTTA cover pages,
`
`its grounds for opposition as: immoral or scandalous;
`
`deceptiveness; false suggestion of a connection; priority and
`
`
`1 Application Serial No. 85027022, filed on April 30, 2010, and
`claiming a date of first use anywhere of January 1, 2009 and a date of
`first use in commerce of May 1, 2009.
`
` 2
`
` Registration No. 9819519, issued on July 13, 2010, and claiming a
`date of first use anywhere and a date of first use in commerce of
`January 1, 2010.
`
`
`
`Opposition No. 91197240
`
`likelihood of confusion; that the mark is merely descriptive; and
`
`fraud.3 Opposer also asserts as follows:4
`
`TPR20 Group - Trans Research International Trust Ltd.,
`their Board of Directors and in particular Director
`Michael Van Der Horn, fraudulently appropriated
`proprietary APR15 formula, promotional material,
`existing customers and business partner lists, website
`structure and functionality, copyright material for
`personal gain.
`
`This case now comes up on applicant's motion, filed on
`
`
`
`December 8, 2010 in lieu of an answer, to dismiss the notice of
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`opposition for failure to state a claim upon which relief may be
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`granted. On the same day, opposer filed an amended notice of
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`opposition. Opposer's filing is not accompanied by proof of
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`service on applicant as required by Trademark Rule 2.119. (This
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`requirement is discussed in more detail later in this order.)
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`Applicant apparently was not served with the amended notice of
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`opposition because applicant filed a reply to its motion to
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`dismiss on January 3, 2011 asking that its motion be granted as
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`conceded because no response had been filed.5 In order to get
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`this case back on track, the Board will review the amended
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`
`3 The ESTTA cover pages are considered part of the ESTTA-filed notice
`of opposition. PPG Industries, Inc. v. Guardian Industries Corp., 73
`USPQ2d 1926, 1928 (TTAB 2004).
`
` 4
`
` The summary of the contents of the ESTTA cover pages and the
`additional paragraph reflect opposer's complete pleading.
`
` 5
`
` Applicant is referred to
`http://ttabvue.uspto.gov/ttabvue/v?pno=91197240&pty=OPP&eno=8 for a
`copy of the amended notice of opposition.
`
`
`
`
`2
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`
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`Opposition No. 91197240
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`pleading to ascertain if its states a claim upon which relief may
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`be granted.6
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`In order to withstand a motion to dismiss for failure to
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`state a claim upon which relief can be granted, a pleading need
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`only allege such facts as would, if proved, establish that the
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`plaintiff is entitled to the relief sought; that is, that (1) the
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`plaintiff has standing to maintain the proceeding, and (2) a
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`valid ground exists for preventing or cancelling a registration.
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`See Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024,
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`213 USPQ 185 (CCPA 1982). Specifically, “a complaint must
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`contain sufficient factual matter, accepted as true, to state a
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`claim to relief that is plausible on its face.” Ashcroft v.
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`Iqbal, ___ U.S. ___, 129 S.Ct. 1937, 1949-50 (2009), quoting Bell
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`Atlantic Corp. v. Twombly, 550 U.S. 544, 570 (2007). For
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`purposes of determining a motion to dismiss for failure to state
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`a claim upon which relief can be granted, all of the plaintiff's
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`well-pleaded allegations must be accepted as true, and the
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`complaint must be construed in the light most favorable to the
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`plaintiff. See Advanced Cardiovascular Systems Inc. v. SciMed
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`Life Systems Inc., 988 F.2d 1157, 26 USPQ2d 1038 (Fed. Cir.
`
`1993); Fed. R. Civ. P. 12(b)(6); and TBMP § 503.02 (2d. ed. rev.
`
`2004).
`
`
`6 Indeed, plaintiffs in a proceeding before the Board ordinarily can,
`and often do, respond to a motion to dismiss by filing an amended
`complaint. If the amended complaint corrects the defects noted by the
`defendant, the motion to dismiss normally will be moot. See TBMP §
`503.03 (2d ed. rev. 2004).
`
`
`
`3
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`
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`Opposition No. 91197240
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`
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`As a preliminary matter, the Board notes that the original
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`notice of opposition is woefully inadequate. Opposer did not
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`state its belief that it will be damaged by registration of
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`applicant's mark; opposer did not assert facts directed to any of
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`the listed claims; and many of the listed claims, as argued by
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`applicant in its motion to dismiss, require the pleading of
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`particular elements.
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`
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`We turn now to the amended pleading. In the preamble to the
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`complaint, opposer alleges its belief that it will be damaged by
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`registration of applicant's mark. Opposer has also asserted
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`sufficient claims of fraud and likelihood of confusion.
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`1. Opposer's standing
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`
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`In its motion, applicant did not dispute opposer's standing.
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`We observe that opposer has alleged such facts, which if proven,
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`would establish its standing. Opposer has asserted, essentially,
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`that it is a competitor, offering the same goods under a
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`confusingly similar mark. See for example Lipton Industries, 213
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`USPQ at 187, and M-5 Steel Manufacturing v. O’Hagin’s Inc., 61
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`USPQ2d 1086, 1094 (TTAB 2001).
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`2. Opposer's fraud claim
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`
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`Opposer asserts that applicant, through its directors,
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`including the signatory to the application, knowingly made false
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`statements with the intent to deceive the USPTO to procure a
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`registration. Para. Nos. 1, 2 and 3 of the amended notice of
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`opposition ("amd'd opp."). In particular, opposer asserts that
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`4
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`Opposition No. 91197240
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`applicant's statement that no other entity was entitled to use
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`the mark in commerce was false because applicant had knowledge of
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`opposer's use of its mark as a result of the former employment
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`with opposer (from 2002-2007) of at least one of the individuals
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`associated with applicant (and identified as the signatory to the
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`application). Para. Nos. 3, 5 and 6 of the amd'd opp. See In re
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`Bose Corporation, 476 F.3d 1331, 91 USPQ2d 1938, 1941 (Fed. Cir.
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`2009); DaimlerChrysler Corp. v. American Motors Corp., 94 USPQ2d
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`1086 (TTAB 2010); and King Automotive, Inc. v. Speedy Muffler
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`King, Inc., 667 F.2d 1008, 212 USPQ 801 (CCPA 1981).
`
`
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`Accordingly, applicant's motion to dismiss is denied with
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`respect to opposer's fraud claim.
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`3. Opposer's likelihood of confusion claim
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`
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`Opposer asserts that "[p]laintiff's mark (sic -
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`"defendant's") so resembles the APR 15 Mark as to be likely to
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`cause confusion, to cause mistake or to deceive within the
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`meaning of S.2(d) of the Federal Trademark Act." Para. No. 10
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`amd'd opp. See In re E. I. du Pont de Nemours & Co., 476 F.2d
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`1357, 177 USPQ 563 (CCPA 1973).
`
`
`
`Accordingly, applicant's motion to dismiss is denied with
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`respect to opposer's likelihood of confusion claim.
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`4. Opposer has not adequately asserted any other claims
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`
`
`At paragraph No. 10 of the amended opposition, opposer also
`
`alleges that applicant's mark will dilute opposer's mark,
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`suggests a false connection with APR15, and that applicant is not
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`
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`5
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`Opposition No. 91197240
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`entitled to registration because of its "deceptive and fraudulent
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`practices." Opposer has not pled a sufficient claim of dilution
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`because opposer has not alleged the fame of its mark, that its
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`mark became famous before applicant's first use of its mark, and
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`that applicant’s use of its mark would lessen the distinctive
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`quality of opposer’s mark. See Trek Bicycle Corp. v. StyleTrek
`
`Ltd., 64 USPQ2d 1540 (TTAB 2001); The Toro Company v. Torohead,
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`Inc., 61 USPQ2d 1164 (TTAB 2001); and Polaris Industries, Inc. v.
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`DC Comics, 59 USPQ2d 1978 (TTAB 2000). Fame for the purpose of
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`dilution and fame for the purpose of likelihood of confusion are
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`different concepts. See Palm Bay Imports, Inc. v. Veuve Clicquot
`
`Ponsardin Maison Fondee En, 396 F.3d 1369, 73 USPQ2d 1689, 1694
`
`(Fed. Cir. 2005).
`
`
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`To plead such a claim under Trademark Act § 2(a) that
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`defendant's mark creates a false suggestion of connection with
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`plaintiff, an opposer must assert (and eventually prove) that the
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`applicant's mark points “uniquely and unmistakably to the
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`identity or persona of the ‘person’ or ‘institution’ asserting
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`the claim.” See Internet, Inc. v. Corporation for Nat'l Research
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`Initiatives, 38 USPQ2d 1435 (TTAB 1996). Opposer has not done so
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`here. See also Buffett v. Chi-Chi's, Inc., 226 USPQ2d 428 (TTAB
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`1985) where the question was whether the term MARGARITAVILLE
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`falsely suggested a connection with the plaintiff Jimmy Buffet.
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`
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`To the extent opposer is trying to assert applicant's mark
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`is deceptive, opposer has failed to do so. Under Trademark Act §
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`
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`6
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`Opposition No. 91197240
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`2(a), a mark is “deceptive” where it will bestow upon the product
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`an appearance of greater quality or salability than it has in
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`fact. J. Thomas McCarthy, 2 McCarthy on Trademarks and Unfair
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`Competition § 11:55 (4th ed. 2010). The test under § 2(a) is:
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`(1) Is the term misdescriptive of the character, quality,
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`function, composition or use of the goods? (2) If so, are
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`prospective purchasers likely to believe that the misdescription
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`actually describes the goods? (3) If so, is the misdescription
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`likely to affect the decision to purchase? See In re Budge Mfg.
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`Co., 857 F.2d 773, 8 USPQ2d 1259, 1260 (Fed. Cir. 1988).
`
`Opposer's allegations concerning applicant's purportedly
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`"deceptive and fraudulent practices" are construed to refer to
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`opposer's factual allegations that may or may not be relevant to
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`opposer's claims of fraud and likelihood of confusion.
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`
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`Accordingly, no further consideration is given to opposer's
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`imperfect claims of dilution, suggestion of a false connection,
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`and that applicant's mark is deceptive. Opposer did not include
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`any allegations that applicant's mark was immoral or scandalous
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`or merely descriptive. Accordingly, no further consideration is
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`given to those references in ESTTA cover pages to the original
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`notice of opposition.
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`The Board's jurisdiction
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`
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`The Board is empowered to determine only the right to
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`register a trademark. See TBMP § 102.01 (2d ed. rev. 2004).
`
`Opposer's allegations concerning applicant's purported
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`
`
`7
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`Opposition No. 91197240
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`duplication of opposer's "confidential proprietary formulation,"
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`imitation of opposer's "packaging" (i.e., trade dress
`
`infringement) and taking and duplication of opposer's "existing
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`customer lists, business partner lists, website structure and
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`functionality, and other protected material" are not within the
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`Board's jurisdiction for determination and adjudication. If
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`opposer has any cause of action on these matters, it should seek
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`redress in court. The facts will be considered, if developed and
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`introduced, only in the context of their relevance to opposer's
`
`claim that applicant committed fraud on the USPTO in seeking to
`
`register its trademark and on opposer's claim that the parties'
`
`marks are confusingly similar.
`
`The reset schedule
`
`
`
`Proceedings are resumed and dates are reset as follows:
`
` Time to Answer
`Deadline for Discovery
`Conference
`Discovery Opens
`Initial Disclosures Due
`Expert Disclosures Due
`Discovery Closes
`Plaintiff's Pretrial
`Disclosures
`Plaintiff's 30-day Trial Period
`Ends
`Defendant's Pretrial
`Disclosures
`Defendant's 30-day Trial Period
`Ends
`Plaintiff's Rebuttal
`Disclosures
`Plaintiff's 15-day Rebuttal
`Period Ends
`
`
`
`
`8
`
`4/17/2011
`
`5/17/2011
`5/17/2011
`6/16/2011
`10/14/2011
`11/13/2011
`
`12/28/2011
`
`2/11/2012
`
`2/26/2012
`
`4/11/2012
`
`4/26/2012
`
`5/26/2012
`
`
`
`Opposition No. 91197240
`
`
`
`In each instance, a copy of the transcript of testimony,
`
`together with copies of documentary exhibits, must be served on
`
`the adverse party within thirty days after completion of the
`
`taking of testimony. Trademark Rule 2.l25.
`
`
`
`Briefs shall be filed in accordance with Trademark Rules
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`2.l28(a) and (b). An oral hearing will be set only upon request
`
`filed as provided by Trademark Rule 2.l29.
`
`NATURE OF BOARD PROCEEDINGS
`
`
`
`Opposer is advised that an inter partes proceeding before
`
`the Board is similar to a civil action in a Federal district
`
`court. There are pleadings, a wide range of possible motions;
`
`discovery (a party’s use of discovery depositions,
`
`interrogatories, requests for production of documents and things,
`
`and requests for admission to ascertain the facts underlying its
`
`adversary's case), a trial, and briefs, followed by a decision on
`
`the case. The Board does not preside at the taking of testimony.
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`Rather, all testimony is taken out of the presence of the Board
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`during the assigned testimony, or trial, periods, and the written
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`transcripts thereof, together with any exhibits thereto, are then
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`filed with the Board. No paper, document, or exhibit will be
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`considered as evidence in the case unless it has been introduced
`
`in evidence in accordance with the applicable rules.
`
`REQUIREMENT FOR SERVICE OF PAPERS
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`
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`The service requirements are set forth in Trademark Rule
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`2.119. Trademark Rules 2.119(a) and (b) and require that every
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`
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`9
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`Opposition No. 91197240
`
`paper filed in the Patent and Trademark Office in a proceeding
`
`before the Board must be served upon the attorney for the other
`
`party, or on the party if there is no attorney, and proof of such
`
`service must be made before the paper will be considered by the
`
`Board.
`
`
`
`Consequently, copies of all papers which either party may
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`subsequently file in this proceeding must be accompanied by a
`
`signed statement indicating the date and manner in which such
`
`service was made. Strict compliance with Trademark Rule 2.119 is
`
`required in all further papers filed with the Board.
`
`
`
`The Board will accept, as prima facie proof that a party
`
`filing a paper in a Board inter partes proceeding has served a
`
`copy of the paper upon every other party to the proceeding, a
`
`statement signed by the filing party, or by its attorney or other
`
`authorized representative, clearly stating the date and manner in
`
`which service was made. This written statement should take the
`
`form of a “certificate of service” which should read as follows:
`
`The undersigned hereby certifies that a true and correct copy of
`the foregoing [insert title of document] was served upon opposer
`by forwarding said copy, via first class mail, postage prepaid
`to: [insert name and address].
`
`
`The certificate of service must be signed and dated. See also
`
`TBMP §113 (2d ed. rev. 2004).
`
`OPTION OF E-MAIL SERVICE
`
`
`
`The parties may agree to the email service option now
`
`available under Trademark Rule 2.119(b)(6) (“Electronic
`
`
`
`10
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`Opposition No. 91197240
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`transmission when mutually agreed upon by the parties.”). Should
`
`the parties decide to continue using traditional service options,
`
`the parties may consider agreeing at least to courtesy email
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`notification when any paper is served.7
`
`THE BOARD’S STANDARDIZED PROTECTIVE ORDER IS IN PLACE
`
`
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`The Board’s standard protective order is in place in this
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`case governing the exchange of confidential and proprietary
`
`information and materials. The parties may substitute a
`
`stipulated protective agreement (signed by both parties).
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`However, the Board will not become involved in a dispute over any
`
`substitution in view of the existence of the Board’s standardized
`
`protective order.
`
`REPRESENTATION
`
`
`
`The Board notes opposer is representing itself. Opposer may
`
`do so. However, it should also be noted that while Patent and
`
`Trademark Rule 11.14 permits any person to represent itself, it
`
`is generally advisable for a person who is not acquainted with
`
`the technicalities of the procedural and substantive law involved
`
`in an opposition proceeding to secure the services of an attorney
`
`who is familiar with such matters. The Patent and Trademark
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`Office cannot aid in the selection of an attorney. In addition,
`
`as the impartial decision maker, the Board may not provide legal
`
`advice, though may provide information as to procedure.
`
`
`7 The additional five days available under Trademark Rule 2.119(c) for
`traditional service modes (e.g., First Class Mail) is not available
`for email service.
`
`
`
`11
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`Opposition No. 91197240
`
`ELECTRONIC RESOURCES
`
`
`
`All parties may refer to the Trademark Trial and Appeal
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`Board Manual of Procedure (TBMP) and the Trademark Rules of
`
`Practice, both available on the USPTO website, www.uspto.gov.
`
`The TTAB homepage provides electronic access to the Board’s
`
`standardized protective order, a chart of the 2007 rules changes
`
`and the text of the 2007 rules (effective August 31, 2007 and
`
`November 1, 2007), and answers to frequently asked questions.
`
`Other useful databases include the ESTTA filing system8 for Board
`
`filings and TTABVUE for status and prosecution history.
`
`
`8 Use of electronic filing with ESTTA, available through the USPTO
`website, is strongly encouraged. This electronic file system operates
`in real time. The filing party is also provided with a confirmation
`number that the filing has been received.
`
`
`
` A party may also use first class mail. Correspondence required to
`be filed in the Office within a set period of time will be considered
`as being timely filed on the date of deposit in the mail if
`accompanied by a certificate of mailing.
`
`Certificate of Mailing
`
`
`I hereby certify that this correspondence is being deposited
`with the United States Postal Service with sufficient
`postage as first-class mail in an envelope addressed to:
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`
`The certificate of mailing must be signed and dated. The actual date
`of receipt by the Office will be used for all other purposes,
`including electronically filed documents.
`
`The certificate of mailing must be signed and dated.
`
`
`
`
`12
`
`
`
`Opposition No. 91197240
`
`The Board’s records are public records. Thus, opposer may use
`
`the TTABVUE database to view other cases to get an idea of the
`
`course of Board proceedings.
`
`
`
`Strict compliance with the Trademark Rules of Practice, and
`
`where applicable the Federal Rules of Civil Procedure, is
`
`expected of all parties before the Board, whether or not they are
`
`represented by counsel.
`
`***
`
`
`
`13
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