Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA484107
`ESTTA Tracking number:
`07/18/2012
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91201925
`Plaintiff
`Starbuzz Tobacco, Inc.
`NATU J PATEL
`TTHE PATEL LAW FIRM PC
`2532 DUPONT DRIVE
`IRVINE, CA 92612
`UNITED STATES
`NPatel@thePatelLawFirm.com
`Opposition/Response to Motion
`Natu J. Patel
`NPatel@thePatelLawFirm.com
`/natupatel/
`07/18/2012
`Starbuzz - Opposition to Motion to Compel RFP - 071812.pdf ( 12 pages
`)(768350 bytes )
`Decl of N. Patel RFP - 071812.pdf ( 16 pages )(968902 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`

`
`IN THE UNITED STATES PATENT AND TRADE MARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter ofApplication Serial No. 85/052,510
`Mark:
`MAI TAI
`
`Filed:
`
`June 2, 2010
`
`Published:
`
`June 14, 2011
`
`STARBUZZ TOBACCO, INC.,
`
`Opposer,
`
`FANTASIA DISTRIBUTION, INC.,
`
`Applicant.
`
`‘\/\/\J§/\J\v/\a“‘~—/\}&./\J\;§/\J\.../g/\/&J
`
`OPPOSITION NO: 91201925
`
`STARBUZZ TOBACCO, INC.’S
`OPPOSITION TO APPLICANT’S
`
`MOTION TO COMPEL RESPONSES TO
`
`REQUESTS FOR PRODUCTION
`
`Opposition Filed: October 5, 2011
`
`

`
`Opposition No. 91201925
`In the matter of Application Serial No. 85/052, 510
`Published On June 14, 2011
`
`TABLE
`
`CONTENTS
`
`INTRODUCTION ........................................................................................................................ .. l
`
`FACTUAL BACKGROUND ....................................................................................................... .. l
`
`ARGUMENT ................................................................................................................................ .. 3
`
`I.
`
`FANTASIA’S MOTION SHOULD BE DENIED SINCE IT IS IMPROPERLY
`
`COMBINED WITH TWO OTHER MOTIONS AND FAILS TO PROVIDE
`
`ANY EXPLANATION FOR SEEKING RESPONSES TO THE REQUESTS AT
`ISSUE. .................................................................................................................. .. 3
`
`II.
`
`ALL OF STARBUZZ’S OBJECTIONS TO FANTASIA’S REQUESTS ARE
`SOUND ................................................................................................................. .. 4
`
`A.
`
`B.
`
`The Requests at Issue are Irrelevant to the Present Opposition Proceeding.
`................................................................................................................... .. 4
`
`The Requests are Also Completely Overbroad and therefore Burdensorne.
`................................................................................................................... .. 6
`
`C.
`
`The Remaining Objections to Fantasia’s RFP are Also Justified. ............ .. 7
`
`CONCLUSION ............................................................................................................................. .. 8
`
`

`
`Opposition No. 91201925
`In the matter of Application Serial No. 85/052,510
`Published On June 14, 2011
`
`TABLE OF AUTHORITIES
`
`Cases
`
`Johnston Pump/General Valve Inc. v. Chromalloy American Corp, 10 U.S.P.Q. 1671, 1675
`(TTAB 1988) ............................................................................................................................ .. 8
`
`VolkswagewerkAktiengesellschafi v. Thermo-Chem Corp., 176 U.S.P.Q. 493, 493 (TTAB 1973)
`.................................................................................................................................................. .. 6
`
`Other Authorities
`
`TBMP § 402.02 ......................................................................................................................... .. 7, 8
`
`TBMP § 414(11) ........................................................................................................................... .. 6
`
`TBMP § 414(18) ........................................................................................................................... .. 5
`
`Rules
`
`Fed. R. Civ. P. 26(b)(1) ................................................................................................................. .. 6
`
`iii
`
`

`
`Opposition No. 91201925
`In the matter of Application Serial No. 85/052,510
`Published On June 14, 2011
`
`INTRODUCTION
`
`Applicant, Fantasia Distribution, lnc.’s (“Fantasia”) motion to compel responses to
`
`requests for production (the “Motion”) is clearly improper. Fantasia’s mere six page motion to
`
`compel three different sets of discovery requests is procedurally and substantively deficient. The
`
`Motion is designed to do nothing more than waste Opposer, Starbuzz Tobacco, lnc.’s
`
`(“Starbuzz”) resources in an effort to force the abandonment of this Opposition.
`
`Under the TTAB rules, Fantasia’s combination of three discovery motions into one
`
`memorandum is highly inappropriate.’ Furthermore, even assuming that the Motion was
`
`procedurally filed properly, it is still substantively deficient. The Motion fails to provide detailed
`
`explanations as to why Starbuzz’s responses or objections were insufficient. In fact, the disputed
`
`requests for production (RFP) seek information that are simply irrelevant and completely
`
`overbroad to the issues in the Opposition. Additionally, several of the requests are highly
`
`objectionable because they are compound, call for legal conclusions, and seek highly
`
`confidential and proprietary business information. Therefore, Starbuzz’s objections are
`
`completely warranted.
`
`Accordingly, Starbuzz respectfully requests the Honorable Board to deny Fantasia’s
`
`Motion in its entirety.
`
`FACTUAL BACKGROUND
`
`Background Facts. On June 2, 2010, Fantasia filed Application No. 85/052,510 for the
`
`protection of the mark “MAI TAI” in International Class 034 for use in various tobacco products
`
`(the “Application”). The Application was filed, pursuant to Section 1(a) of the Lanham Act,
`
`I Starbuzz notes that Fantasia’s combination of three motions in one memorandum and filing the same memorandum
`three times on the ESTTA system is completely improper. See TBMP § 502.02(b). To avoid any further confusion
`and in accordance with the TTAB rules, Starbuzz is concurrently filing separate oppositions to the three motions.
`Each motion addresses each set of discovery request.
`
`

`
`Opposition No. 91201925
`In the matter of Application Serial No. 85/052,510
`Published On June 14, 2011
`
`based on alleged use in commerce since November 24, 2009. Fantasia filed the Application even
`
`though Starbuzz has been using the “MAI TAI” mark for tobacco goods since at least as early as
`
`January 13, 2007. Therefore, on June 5, 2010 Starbuzz filed a trademark application for the
`
`mark “MAI TA1”. Starbuzz subsequently filed the present proceeding to oppose Fantasia’s
`
`Application (the “Opposition”) and to adjudicate its rights to the mark “MAI TAI”.
`
`Discovegy Dispute. On or about March 20, 2012, Fantasia served discovery requests
`
`including requests for admission, requests for production of documents (“RFP”) and
`
`interrogatories to Starbuzz, which were objectionable for several reasons, including relevance to
`
`the claims alleged. (See Declaration of David Oskin Re Applicant’s Motion to Compel (“Oskin
`
`Decl.) W 3-5, Exhibits A—C). On or about April 24, 2012, Starbuzz timely served its responses
`
`to all the discovery requests. (Oskin Decl. 1111 6-8, Exhibits D—F).
`
`Despite Starbuzz’s response, Fantasia still brought this frivolous Motion without
`
`providing a detailed explanation as to why each request is relevant, and why Starbuzz’s
`
`objections are inapplicable. Review of the Motion further reveals that Fantasia has not complied
`
`with the TTAB rules in bringing its motion.
`
`///
`
`///
`
`///
`
`///
`
`

`
`Opposition No. 91201925
`In the matter of Application Serial No. 85/052,510
`Published On June 14, 2011
`
`Particularly troubling is Fantasia’s improper assertion of completely irrelevant arguments
`
`and document regarding an unrelated mark. Fantasia baselessly asserts that Starbuzz “fabricated
`
`evidence,” regarding a completely unrelated “BLUE SURFER” mark, even after a Federal
`
`District Court already rejected Fantasia’s arguments. 2 Fantasia should be reprimanded for
`
`attempting to bring irrelevant issues into this Motion, especially when a Court has already
`
`determined its arguments to be both baseless and unprofessional. In view of Fantasia’s harassing
`
`litigation tactics and blatant violation of the TTAB rules, Starbuzz respectfully request the Board
`
`to strike Fantasia’s Motion in its entirety as a sanction.
`
`ARGUMENT
`
`I.
`
`FANTASIA’S MOTION SHOULD BE DENIED SINCE IT IS IMPROPERLY
`COMBINED WITH TWO OTHER MOTIONS AND FAILS TO PROVIDE ANY
`
`EXPLANATION FOR SEEKING RESPONSES TO THE REQUESTS AT ISSUE.
`
`As a preliminary matter, Fantasia’s Motion should be denied since the memorandum is
`
`combined with two other motions requesting the Board to compel responses to requests for
`
`admission and interrogatories. See TBMP § 502.0203). Fantasia’s improper combination of
`
`three motions into one document should be grounds for striking the Motion in its entirety.
`
`Even assuming that the Motion was proper, it should still be denied because Fantasia
`
`failed to provide any explanation whatsoever for seeking responses to each of the requests at
`
`2 Fantasia recently made the same arguments before the Federal District Court of Florida when the parties were
`litigating the date of first use of Starbuzz’s BLUE SURFER mark.
`In opposing summary judgment, Fantasia
`presented the “Investigative Report” attached to the Oskin Decl. as Exhibit G. The Court expressly rejected
`Far1tasia’s arguments, finding that: “Fantasia accuses Starbuzz of tampering with evidence, bad faith and other ills,
`and contends that a private investigator sent at Fantasia’s behest was unable to order Blue Surfer hookah tobacco at
`Starbuzz locations. (See id. 4—5). The Court has fully reviewed the evidence submitted by Fantasia and finds it
`does not support Fantasia’s assertions of bad faith and tampering. The evidence of how Starbuzz generates
`invoices does not create even an inference of fraud as to which products were covered by the Blue Surfer Mark, or
`as to any other issue for that matter. If anything, the deposition excerpts Fantasia provides are consistent with
`Starbuzz’s assertions, heretofore uncontested, that it has in fact sold Blue Surfer tobacco products. If indeed
`Fantasia has thrown around such weighty accusations without any basis, as the documents would appear to
`show, such conduct is unprofessional and unbecoming of a member of the Bar.” (emphasis added)
`See Declaration of Natu J. Patel 11 l, Exhibit A; see also Drew Estate 1:. Fantasia Distribution, Inc, Case No. l:ll-
`cv—2l 900-CMA at * 10-11 (so. Fla, July 2, 2012) [ECF No. 171].
`
`3
`
`

`
`Opposition No. 9 1201925
`In the matter of Application Serial No. 85/052, 510
`Published On June 14, 2011
`
`issue. Fantasia merely re-stated Starbuzz’s objections to two discovery requests even though it is
`
`requesting that the Board to compel responses to fifteen (15) requests. (Motion, pp. 3-5).
`
`Additionally, Fantasia has not fully identified the issues as to each of the requests and has not
`
`undertaken any kind of analysis for the Board. In View of Fantasia’s failure to provide any
`
`explanation whatsoever as to why responses should be compelled, the Board should deny the
`
`Motion in its entirety.
`
`II.
`
`ALL OF STARBUZZ’S OBJECTIONS TO FANTASIA’S REQUESTS ARE
`SOUND
`
`Contrary to Fantasia’s assertion, Starbuzz did not fail to respond to the requests at issue.
`
`In fact, Starbuzz responded with objections, which were specifically tailored to each of
`
`Fantasia’s inappropriate request. Therefore, Fantasia’s Motion is meritless.
`
`A.
`
`The Reguests at Issue are Irrelevant to the Present Opposition Proceeding.
`
`Starbuzz properly objected to the requests at issue since they are irrelevant to the present
`
`Opposition. In this Opposition, Starbuzz claimed priority based on an earlier date of first use,
`
`fraud in the procurement on the part of Fantasia, and likelihood of confusion between the parties’
`
`marks. However, Fantasia’s inquiry focuses on irrelevant business and financial documents.
`
`For example, Request Nos. 2, 4, l6, l7 and 21 seeks documents relating to Starbuzz’s
`
`business including contracts, product research, document retention/destruction policy,
`
`organizational charts and board minutes. These requests have no relevance whatsoever to the
`
`issues in this Opposition. The documents do not establish Starbuzz’s priority to the Mark, fraud
`
`on the part of Fantasia or to establish likelihood of confusion between the parties’ mark.
`
`Additionally, the documents requested do not relate to any of Fantasia’s affirmative defenses. In
`
`fact, Fantasia has not explained its reasoning or cited any authorities to support its requests for
`
`irrelevant business and other organizational documents.
`
`4
`
`

`
`Opposition No. 91201925
`In the matter of Application Serial No. 85/052, 510
`Published On June 14, 2011
`
`Request Nos. 8, 14 and 20 also seek irrelevant information. StarbuzZ’s knowledge of
`
`Fantasia’s marks and its intent for asserting its rights to the “MAI TAI” mark through institution
`
`of the present Opposition proceeding are again completely irrelevant to the issues. Fantasia
`
`failed to explain how these requests are likely to lead to admissible evidence. Furthermore, in
`
`Request No. 20, Fantasia makes an assumption that Starbuzz brought this Opposition for “other
`
`purpose,” thus implying bad faith on the part of Starbuzz Without any basis. Therefore,
`
`Fantasia’s requests are clearly improper.
`
`Most of the requests at issue also focused in obtaining financial information regarding a_ll
`
`of Starbuzz’s products, most of which are irrelevant to this Opposition. In fact, Request Nos. 26-
`
`30 are not limited to the Mark and products at issue, but seek financial documents with respect to
`
`gl_l of St"rbuzz’s products. As stctcd in the responses, Starbuzz’s financial statements are not
`
`limited to the Mark and products at issue. They also include information as to other products,
`
`which Starbuzz sells in the marketplace (i.e. candles and hookahs). Therefore, these overbroad
`
`requests seek information that is irrelevant to the issues in this proceeding.
`
`Furthermore, even the requests for financial documents relating to the Mark are
`
`objectionable. Fantasia demands documents in Request Nos. 22, 23 and 24, including detailed
`
`aged accounts receivable, actual or projected revenue, and costs for development, sales and
`
`marketing. Detailed financial information is not discoverable under the rules. Instead, discovery
`
`is limited to the general round figures concerning sales and advertising expenditures. See TBMP
`
`§ 4l4(l8). Thus, the requests for detailed financial documents related to the Mark are
`
`objectionable.
`
`//
`
`//
`
`

`
`Opposition No. 91201925
`In the matter of Application Serial No. 85/052, 510
`Published On June 14, 2011
`
`B.
`
`The Reguests are Also Completely Overbroad and therefore Burdensome.
`
`Request Nos. 26-30 are also objectionable because they are completely overbroad. The
`
`scope and limit of discovery are controlled by Fed. R. Civ. P. 26(b)(l), which states that parties
`
`may obtain discovery regarding any matter, not privileged, which is relevant to the subject matter
`
`involved in the pending action. In fact, a party need not provide discovery with respect to its
`
`marks and goods that are not involved in the proceeding, since they are irrelevant. See TBMP §
`
`4l4(l l); VolkswagewerkAktiengesellschqfi v. Thermo-Chem Corp, 176 U.S.P.Q. 493, 493
`
`(TTAB l973)(applicant need not provide information as to its other marks or its other products,
`
`or as to whether involved mark is used on other products).
`
`Starbuzz objected to Request Nos. 27-30 because they seek documents which are not
`
`limited to the Mark and products at issue. In last, these requests demand production of sensitive
`
`financial documents regarding _(_1Ll of Starbuzz’s marks and products (including services).3
`
`However, the Opposition only relates to Starbuzz’s tobacco products listed in its “MAI TAI”
`
`application. As stated in its objection, Starbuzz sells many different products including candles,
`
`lighters, clothing and hookahs, most of which are not at issue in this Opposition. Additionally,
`
`the documents requested (i.e. profit and loss statements, financial reports, balance sheets, income
`
`states, cash flow statements, and general ledgers and summaries) are not limited to the Mark and
`
`products at issue, but includes all of Starbuzz’s products and services. Therefore, these requests
`
`are so overbroad and inclusive as to be burdensome.
`
`Request No. 26 is also objectionable for being overbroad and burdensome in that it seeks
`
`all documents referring to Starbuzz’s customer base, including its customer list for hookah,
`
`shisha, molasses tobacco related products/services. As stated above, documents regarding marks
`
`3 Fantasia defines the term “products” as either “products or services.”
`
`6
`
`

`
`Opposition No. 91201925
`In the matter of Application Serial No. 85/052, 510
`Published On June 14, 2011
`
`and goods that are not at issue in the Opposition are not discoverable. Since not all of Starbuzz’s
`
`customers purchased the products bearing the Mark at issue, information regarding all of
`
`Starbuzz’s customers is not discoverable. Therefore, the request for documents as to Starbuzz’s
`
`customer list for all hookah, shisha, and molasses tobacco products, is clearly overbroad and
`
`irrelevant.
`
`C.
`
`_'_f_l_;§ Remaining Objections to Fantasia’s RFP are Also Justified.
`
`Starbuzz’s remaining objections are also well—supported under Federal law. Fantasia’s
`
`definition of the term “Opposer,” “You,” or “Your” in the requests is completely vague,
`
`ambiguous and unintelligible.4 Fantasia cannot reasonably expect Starbuzz to respond based on
`
`information from other entities, which Starbuzz has no control over. Moreover, as a result of the
`
`ill-defined term, the requests are also l) compound since they seek documents both in Starbuzz s
`
`control and Fantasia’s control; 2) vague and ambiguous as to what documents Fantasia has the
`
`right to obtain; 3) overly broad to the extent they attempt to impose an obligation on Starbuzz to
`
`obtain information from Fantasia’s sources to answer Fantasia’s requests; and 4) made solely for
`
`the purpose of harassment and annoyance in imposing such unreasonable burden.
`
`Moreover, Starbuzz properly objected that the requests in that they seek confidential
`
`information or proprietary business information most of which relates to Starbuzz’s products that
`
`are not at issue in this proceeding. The Board may refuse to permit discovery of confidential
`
`commercial information or may allow discovery thereof only under an appropriate agreement or
`
`order. See TBMP § 402.02. Additionally, Request No. 26 is specifically objectionable because
`
`customer names are considered by the Board to be confidential information, and generally not
`
`discoverable, even under a protective order. See TBMP § 414(3); Johnston Pump/General Valve
`
`you,” or “your” to refer to: “any company, corporation, entity, or
`4 Fantasia defined “Opposer,” “Starbuzz,
`individual from which or from whom Agglicant has a right to obtain information, documents, and/or things by
`contract or otherwise.”
`
`77 Cl
`
`

`
`Opposition No. 91201925
`In the matter of Application Serial No. 85/052, 510
`Published On June 14, 2011
`
`Inc. v. Chromalloy American Corp, 10 U.S.P.Q. 1671, 1675 (TTAB 1988)(need not reveal
`
`names of customers including dealers). Therefore, the confidentiality objections are justified.
`
`Furthermore, Request Nos. 8, 9, 14, 20, 23, 24, and 26 are objectionable because they
`
`seek communications and documents that are protected by the attorney-client privilege. Fantasia
`
`broadly and vaguely seeks production of gfl documents. These requests undoubtedly include
`
`documents that either evidence communications between Starbuzz and its counsel, or documents
`
`prepared by Starbuzz’s counsel in preparation for litigation. These documents are clearly not
`
`discoverable under the rules. See TBMP § 402.02. Additionally, there is no need to provide
`
`such documents, much less a privilege log, when Fantasia fails to establish that its requests are
`
`even relevant.
`
`Thereiore, Starbuzz properly objected to the requests at issue.
`
`CONCLUSION
`
`Based on the foregoing, Starbuzz respectfully requests the Board to deny the Motion in
`
`its entirety because Starbuzz’s objections are proper.
`
`Respectfully Submitted,
`THE PATEL LAW FIRM, P.C.
`
`63.4
`
`Carla A. F ederis
`Jason Chuan
`
`Attorneys for Opposer
`Starbuzz Tobacco, Inc.
`
`The Patel Law Firm, PC.
`
`2532 Dupont Drive
`Irvine, CA 92612
`Telephone:
`(949) 955-1077
`Facsimile:
`(949) 955-1877
`CFederis@thePatelLawFirm.com
`JChuan@thePatelLawFirm.com
`
`

`
`Opposition No. 91201925
`In the matter of Application Serial No. 85/052,510
`Published On June 14, 2011
`
`CERTIFICATE OF SERVICE
`
`I certify that a copy of STARBUZZ TOBACCO, INC.’S OPPOSITION TO
`
`APPLICANT’S MOTION TO COMPEL RESPONSES TO REQUESTS FOR
`
`PRODUCTION is being served via United States mail, postage prepaid, on the following, on
`
`this the 18th day of July, 2012 to:
`
`David Oskin
`
`Caliber IP, LLC
`150 N. Michigan Ave, Suite 2800
`Chicago, Illinois 60601
`
`%W /h//"
`
`Dana Nassiri
`
`

`
`IN THE UNITED STATES PATENT AND TRADE MARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter ofApplication Serial No. 85/052,510
`Mark:
`MAI TAI
`
`Filed:
`
`June 2, 2010
`
`Published:
`
`June 14, 2011
`
`DECLARATION OF NATU J. PATEL IN
`
`SUPPORT OF STARBUZZ TOBACCO,
`INC.’S OPPOSITION TO APPLICANT’S
`
`MOTION TO COMPEL RESPONSES TO
`
`L/§/Q\/\/\_/\_/§/\)'\/‘§/\./\/\./\'/\.'/\J\_/§/‘g/\/ OPPOSITION N0: 91201925
`
`STARBUZZ TOBACCO, INC.,
`
`Opposer,
`
`FANTASIA DISTRIBUTION, INC.,
`
`Applicant.
`
`REQUESTS FOR PRODUCTION
`
`Opposition Filed: October 5, 2011
`
`I, Natu J. Patel, declare that I am the attorney of record for Opposer, Starbuzz Tobacco,
`
`Inc. (“Starbuzz”), in the aboVe—captioned Opposition.
`
`I am making this declaration in support of
`
`Starbuzz’s Opposition to Applicant’s Motion to Compel Responses to Requests for Production.
`
`As such, I have personal knowledge of the following facts and if called upon, I could and would
`
`competently testify thereto:
`
`1.
`
`A true and correct copy of the Order from the Southern District Court of Florida
`
`granting Starbuzz Tobacco, Inc.’s Motion for Summary Judgment against Fantasia Distribution,
`
`

`
`Opposition No. 91201925
`In the matter of Application Serial No. 85/052, 510
`Published On June 14, 2011
`
`Inc.’s third—party claim for trademark cancellation of “BLUE SURFER” mark in Case No. 1:11-
`
`cv-21900-CMA, is attached hereto as Exhibit A.
`
`I declare under the penalty of perjury under the laws of the United States that the
`
`foregoing is true and correct.
`
`Executed this the 18th day of July, 2012 at Irvine, California.
`
`/\9Zfl ..
`
`Natu J. Patel
`
`

`
`Opposition No. 91201925
`In the matter of Application Serial No. 85/052, 510
`Published On June 14, 2011
`
`CERTIFICATE OF SERVICE
`
`I certify that a copy of the DECLARATION OF NATU J. PATEL IN SUPPORT OF
`
`STARBUZZ TOBACCO, INC.’S OPPOSITION TO APPLICANT’S MOTION TO
`
`COMPEL RESPONSES TO REQUESTS FOR PRODUCTION is being served via United
`
`States mail, postage prepaid, on the following, on this the 18th day of July, 2012:
`
`David Oskin
`
`Caliber IP, LLC
`150 N. Michigan AVe., Suite 2800
`Chicago, Illinois 60601
`
`A 4/o_C__lsi.
`
`Dana Nassiri
`
`

`
`Exhibit A
`
`

`
`Case 1:11-cv—21900-Cl\/IA Document 171 Entered on FLSD Docket 07/02/2012 Page 1 of 12
`
`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF FLORIDA
`MIAMI DIVISION
`
`CASE NO. 11-21900—CIV-ALTONAGA/Simonton
`
`DREW ESTATE HOLDING CO., LLC,
`
`Plaintiff,
`
`VS.
`
`7
`FANTASIA DISTRIBUTION. INC;
`
`' Defend ant/
`
`Third—Party Plaintiff,
`
`vs.
`
`STARBUZZ TOBACCO, INC.,
`
`Third~Party Defendant.
`
`/
`
`ORDER
`
`THIS CAUSE came before the Court upon Third-Party Defendant Starbuzz Tobacco,
`
`Inc.’s
`
`(“Starbuzz[’s]”) Motion for Summary Judgment on Third-Party Plaintiff Fantasia
`
`Distribution,
`
`lnc.’s (“Fantasia[’s]”) Claim for Trademark Cancellation (“Motion”) [ECF No.
`
`140], filed May 11, 2012. On May 25, 2011, Plaintiff, Drew Estate Holding Company LLC
`
`(“Drew”) filed a Complaint [ECF No. 1] alleging unfair competition in Violation of 15 U.S.C. §
`
`1125(A) against Defendant, Fantasia Distribution, Inc. (“Fantasia”). Fantasia filed an answer
`
`and counterclaims/third-party claims against Drew and Starbuzz on three separate occasions; on
`
`each occasion the Court granted motions to dismiss these claims at least in part.
`
`(See June 25,
`
`2012 Order [ECF No. 165]). Most recently, on March 13, 2012, the Court granted in part and
`
`denied in part Starbuzz’s motion to dismiss Fantasia’s second amended third-party complaint
`
`

`
`Case 1:11-cv—21900-CMA Document 171 Entered on FLSD Docket 07/02/2012 Page 2 of 12
`
`Case No. 1 1—21900—CIV-A LTONAGA/Simonton
`
`(“SATPC”) [ECF No. 99].
`
`(See Mar. 13, 2012 Order [ECF No. 109]).
`
`In the SATPC, Fantasia
`
`alleges two claims against Starbuzz —— Count
`
`I
`
`for unfair competition and trademark
`
`infringement as to the ACID mark, and Count
`
`II
`
`for cancellation of various trademark
`
`registrations.
`
`In the March 13 Order, the Court permitted only Fantasia’s claim for cancellation
`
`of Starbuzz’s U.S. Trademark Application No. 85/055,511 (now Registration No. 4,004,853) for
`
`the mark “Blue Surfer” (“Blue Surfer Mark”) to proceed, on the sole ground that Starbuzz made
`
`allegedly -alse state-.1ents that the Blue Surfer Mark was being used on a “Tobacco Substitute,
`
`Namely, Herbal Molasses.” (Id. 11-12). Starbuzz now seeks summary judgment in its favor on
`
`the remaining portion of Fantasia’s trademark cancellation claim. Fantasia filed a Reply in
`
`Opposition .
`
`.
`
`. (“Response”) [ECF No. 152] on May 29, 2012; and Starbuzz filed a Reply .
`
`.
`
`.
`
`(“Reply”) [ECF No. 162] on June 7, 2012. Fantasia also filed a Motion for Leave to File
`
`Surreply .
`
`.
`
`. (“Motion to File Surreply”) [ECF No. 166] with the Surreply [ECF No. 166-1]
`
`attached, on June 25, 2012. The Court has carefully reviewed the parties’ written submissions
`
`and applicable law.
`
`I.
`
`BACKGROUNDI
`
`On June 5, 2010, Starbuzz filed an application to register the Blue Surfer Mark with the
`
`United States Patent and Trademark Office (“USPTO”).
`
`(See Third Party Def. Starbuzz
`
`Tobacco, Inc’s Statement of Undisputed Facts .
`
`.
`
`. (“SMF”) [ECF No. 140-1] 1] 5). Starbuzz’s
`
`application for the Blue Surfer Mark (“Blue Surfer Application”) included the following list of
`
`goods: “Pipe Tobacco; Molasses Tobacco; Tobacco; Smoking Tobacco; Flavored Tobacco;
`
`Tobacco Substitute, Namely, Herbal Molasses.” (Id.
`
`$1 6). The Blue Surfer Application was
`
`accompanied by a declaration by Wael Salim Elhalwani (“Elhalwani”).
`
`(See id. ‘I; 7). Elhalwani
`
`‘ Unless otherwise noted, the facts are undisputed.
`
`

`
`Case 1:11-cv-21900-CMA Document 171 Entered on FLSD Docket 07/02/2012 Page 3 of 12
`
`Case No. 1 1-21900—CIV—ALTONAGA/Simonton
`
`declared that he “believes the applicant to be the owner of the trademark/service mark sought to
`
`be registered,
`
`.
`
`.
`
`. that all statements made of his/her own knowledge are true; and that all
`
`statements made on information and belief are believed to be true.” (Id. 1 8).
`
`Randy Bahbah (“Bahbah”) is F antasia’s executive director and president.
`
`(See id 11 17).
`
`Bahbah is also the sole owner, officer, and director of Herbal Technology,
`
`Inc. (“Herbal
`
`Technology”).
`
`(See id.
`
`$1 18). Herbal Technology sells herbal molasses products under the
`
`HYD-.O mark, which it purchased from the marl<_’s _ormer owners.
`
`(See id.
`
`1111 19-20). The
`
`HYDRO mark is registered in connection with “Tobacco products, namely, flavored tobacco,
`
`cigars, cigar wraps, and cigarettes.”
`
`(Id.
`
`11 21). When acquiring the HYDRO mark, Bahbah
`
`understood the mark could be used for herbal molasses.
`
`(See i'd 11 22; Def.’s Statement of
`
`Material Facts in Opposition .
`
`.
`
`. (“SMFO”) [ECF No. 152-1] 11 22).
`
`Fantasia’s earliest claimed date of first use of the marks SURFER ON ACID and
`
`SURFER is November 24, 2009.
`
`(See SMF 11 24). Fantasia continues to sell products in
`
`connection with the SURFER and SURFER ON AClD marks.
`
`(See id. 1 25). From January
`
`2010 to December 2010, Fantasia’s gross annual sales of SURFER ON ACID products were
`
`$65,000.
`
`(See id.
`
`T1 26). The same figure for the period January 2011 to December 2011 is
`
`$240,000.
`
`(See id. 11 27).
`
`II.
`
`LEGAL STANDARD
`
`Summary judgment shall be rendered “if the pleadings, depositions, answers to
`
`interrogatories, and admissions on tile, together with the affidavits, if any, show that there is no
`
`genuine issue as to any material fact and that the moving party is entitled to a judgment as a
`
`matter of law.” FED. R. CIV. P. 56(0).
`
`In making its assessment of summary judgment, the Court
`
`“must View all the evidence and all factual inferences reasonably drawn from the evidence in the
`
`

`
`Case 1:11-cv-21900—CMA Document 171 Entered on FLSD Docket 07/02/2012 Page 4 of 12
`
`Case No. 1 1-21900-CIV-ALTONAGA/Simonton
`
`light most favorable to the nonmoving party,” Stewart v. Happy Herman ’s Cheshire Bridge, Inc.,
`
`117 F.3d 1278, 1285 (11th Cir. 1997), and “must resolve all reasonable doubts about the facts in
`
`favor of the non—rr1ovant.” United of Omaha Life Ins. Co. v. Sun Life Ins. Co. ofAmerica, 894
`
`F.2d 1555, l558 (11th Cir. 1990).
`
`“By its very terms, this standard provides that the mere existence of some alleged factual
`
`dispute between the parties will not defeat an otherwise properly supported motion for summary
`
`JV! gment; the requirement is that there be no genuine issue of material fact.” Anderson v.
`
`Liberty Lobby, Inc., 477 U.S. 242, 247-48 (1986) (emphasis in original). “As to materiality, the
`
`substantive law will identify which facts are material. Only disputes over facts that might affect
`
`the outcome of the suit under the governing law will properly preclude the entry of summary
`
`judgment. Factual disputes that are irrelevant or unnecessary will not be counted.” Id. at 248.
`
`Likewise, a dispute about a material fact is a “genuine” issue “if the evidence is such that a
`
`reasonable jury could return a verdict for the nonmoving party.” Id.
`
`The moving party “always bears the initial responsibility of informing the district court of
`
`the basis for its motion, and identifying those portions of ‘the pleadings, depositions, answers to
`
`interrogatories, and admissions on tile, together with the affidavits, if any,’ which it believes
`
`demonstrate the absence of a genuine issue of material fact.” Celotex Corp. v. Catrett, 477 U.S.
`
`317, 323 (1986). Summary judgment is proper “against a party who fails to make a showing
`
`sufficient to establish the existence of an element essential to that party’s case, and on which that
`
`party will bear the burden of proof at trial.” Id. at 322.
`
`ln those cases, there is no genuine issue
`
`of material fact “since a complete failure of proof concerning an essential element of the
`
`nonmoving party’s case necessarily renders all other facts immaterial.” Id. at 323.
`
`

`
`Case 1:11—cv—21900-Cl\/IA Document 171 Entered on FLSD Docket 07/02/2012 Page 5 of 12
`
`Case No. 1 1-21900-ClV—ALTONAGA/Sirnonton
`
`III.
`
`ANALYSIS
`
`The sole remaining claim at issue is whether Starbuzz committed fraud upon the USPTO
`
`by stating that the Blue Surfer Mark was used for “Tobacco Substitute, Namely, Herbal
`
`Molasses.” (Mar. 13, 2012 Order l1—~l2). Starbuzz asserts it is entitled to summaryjudgment on
`
`Fantasia’s claim because it never had any intent
`
`to defraud the USPTO, Fantasia has not
`
`produced any evidence of intent by Starbuzz to commit fraud, and Fantasia has not been
`
`damaged in any event by the alleged fraud.
`
`(... ee Mem. of Points and Authorities (“Memq”) [ECF
`
`No. 140] l). The Court addresses Starbuzz’s arguments in turn.
`
`I.
`
`Evidence of Starbuzz’s Intent
`
`When a registration is fraudulently obtained, a party may petition to cancel it. See Angel
`
`Flight of Ga., Inc. v. Angel Flight Am, Inc, 522 F.3d 1200, 1209 (11th Cir. 2008) (citing 15
`
`U.S.C.
`
`§ 1064(3)).
`
`“Fraud occurs when an applicant knowingly makes false, material
`
`representations of fact in connection with an application for a registered mark.” Id. (citing Metro
`
`Traffic Control, Inc. v. Shadow Network, Inc., 104 F.3d 336, 340 (Fed. Cir. 1997). “The party
`
`seeking to cancel a mark bears the burden of proving the alleged fraud by clear and convincing
`
`evidence.” Id. (citing Citibank, NA.
`
`1?. Citibanc Group, Inc., 724 F.2d 1540, 1544 (llth Cir.
`
`1984)).
`
`Both parties agree that the relevant standard of fraud on the USPTO is set forth in In re
`
`Bose Corp, 5 80 F .3d 1240 (Fed. Cir. 2009). “[D]eception must be willful to constitute fraud” m
`
`a merely “false” representation “occasioned by a misunderstanding, an inadvertence, a mere
`
`negligent omission, or th