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
`ESTTA583782
`ESTTA Tracking number:
`01/24/2014
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91202162
`Plaintiff
`Biotivia, LLC
`AARON SHECHET
`CHANDLER SHECHET LLP
`1844 BAGLEY AVENUE
`LOS ANGELES, CA 90035
`UNITED STATES
`Counsel@SolutionsLLP.com
`Motion for Summary Judgment
`Aaron Shechet
`Counsel@SolutionsLLP.com
`/Aaron Shechet/
`01/24/2014
`Next gen MSJ final.pdf(95668 bytes )
`Next gen Motion to Suspend final.pdf(42104 bytes )
`Request for Judicial Notice with exhibits final.pdf(2864222 bytes )
`James Betz declaration final.pdf(70807 bytes )
`Aaron declaration and exhibits pages 1-60.pdf(5676676 bytes )
`Aaron declaration and exhibits pages 61-120.pdf(4164248 bytes )
`Aaron declaration and exhibits pages 121-180.pdf(3285292 bytes )
`Aaron declaration and exhibits pages 181-240.pdf(5578111 bytes )
`Aaron declaration and exhibits pages 241-280.pdf(4731486 bytes )
`Aaron declaration and exhibits pages 281-309.pdf(1302323 bytes )
`
`

`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In the matter of trademark application Serial No. 85193003
`For the mark: THE NEXT GENERATION RESVERATROL
`Published in the Official Gazette on August 23, 2011
`
`------------------------------------x
`BIOTIVIA, LLC
`
`
`
`Opposer
`
`v.
`
`CHROMADEX, INC.
`
`Applicant
`------------------------------------x
`
`
`
`
`Opposition No.: 91202162
`
`
`
`
`
`OPPOSER BIOTIVIA, LLC’S
`
`MOTION FOR SUMMARY JUDGMENT, OR IN THE ALTERNATIVE,
`
`PARTIAL SUMMARY JUDGMENT
`
`
`
`1
`
`

`
`TABLE OF CONTENTS
`
`1. Introduction and Summary of Argument ........................................... 4
`
`2. Standing .................................................................................................. 6
`
`3. Summary of Undisputed Facts ............................................................. 6
`
`4. Legal Standard for Summary Judgment............................................. 8
`
`5. Legal Standard for Descriptiveness ..................................................... 9
`
`6. The Undisputed Facts show that The Mark is descriptive of
`Pterostilbene ................................................................................................ 10
`
`a.The phrase “Next Generation” means “the stage of development
`which occurs immediately after the present stage in terms of time,
`rank, or space.” .................................................................................... 10
`b.Pterostilbene is the “next generation” of resveratrol.................... 12
`c.Chromadex acknowledges that pterostilbene is the next generation
`of resveratrol. ....................................................................................... 13
`d.Others in the industry describe pterostilbene as the next
`generation of resveratrol. .................................................................... 13
`
`
`
`
`
`7. The Mark is laudatory and informational, and thus is descriptive
`under Trademark Act section (e)(1); 15 U.S.C. § 1052(e)(1).................. 15
`
`8. Conclusion............................................................................................. 15
`
`2
`
`
`
`
`
`

`
`TABLE OF AUTHORITIES
`
`Cases
`Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (1986)................................... 9
`Giant Food, Inc. v. Standard TerryMills, Inc., 229 USPQ 955, 961 (TTAB
`1986)............................................................................................................ 9
`In re Abcor Dev. Corp., 588 F.2d 811, 813, 200 USPQ 215, 217 (C.C.P.A.
`1978)............................................................................................................ 4
`In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18
`(CCPA 1978) ............................................................................................... 9
`In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985)................... 11
`In re Boston Beer Co. L.P. 198 F3d 1370 (1999)......................................... 15
`In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987).............. 9, 11
`In re H.U.D.D.L.E.,......................................................................................... 9
`In re MBAssociates, 180 USPQ 338 (TTAB 1973) ....................................... 9
`In Re Nett Designs Inc., 236 F.3d 1339, 2001.............................................. 15
`In re Styleclick.com Inc., 58 USPQ2d 1523, 1527 (TTAB 2001) .................. 5
`In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102
`USPQ2d 1217, 1219 (Fed. Cir. 2012)....................................................... 11
`In re Tower Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002)............... 10
`Matsushita Electric Industrial Co. Ltd. v. Zenith Radio Corp., 475 U.S. 574,
`587 (1987) ................................................................................................... 9
`Phoenix Closures, Inc. v. Yen Shaing Corp., 9 USPQ2d 1891, 1892 (TTAB
`1988)............................................................................................................ 8
`Pure Gold, Inc. v. Syntex (U.S.A.) Inc., 222 USPQ 741, 744 n.2 (Fed. Cir.
`1984)............................................................................................................ 9
`Ritchie v. Simpson, 170 F.3d 1092 (Fed. Cir. 1999)....................................... 6
`see, e.g., In re Polo Int’l Inc. , 51 USPQ2d 1061, 1062-63 (TTAB 1999) .. 11
`Sweats Fashion, Inc. v. Pannill Knitting Co., 833 F.2d 1560 (Fed. Cir. 1987)
`..................................................................................................................... 9
`
`Statutes
`15 U.S.C. § 1052(e)(1).............................................................................. 5, 15
`15 U.S.C. § 1063............................................................................................. 6
`
`Rules
`TMEP §1209................................................................................................... 4
`TMEP §1209.01(b) ....................................................................................... 11
`
`
`
`
`3
`
`

`
`
`
`1.
`
`
`Introduction and Summary of Argument
`
`This Opposition arises out of a dispute between competitors with respect to the
`
`description of an ingredient used in products made by both. Specifically, the question is
`
`whether Chromadex, Inc. (“Chromadex” or “Applicant”), a company that manufactures
`
`and sells dietary supplements, may prevent other dietary supplement companies,
`
`including Biotivia, LLC (“Biotivia” or “Opposer”), from using the phrase “The Next
`
`Generation Resveratrol,” and similar phrases, to describe the compound pterostilbene.
`
`As supported in more detail below, and by the attached exhibits, Pterostilbene is
`
`commonly described as an advancement or improvement on resveratrol. This description
`
`is based on certain physical characteristics of the two substances. Pterostilbene is a
`
`compound that is chemically related to resveratrol but has certain advantages over
`
`resveratrol, including higher bioavailability. Pterostilbene, as compared to resveratrol, is
`
`a newer product that is commonly marketed as a related compound with certain
`
`advantages over resveratrol, which is often cast as its predecessor. Pterostilbene is the
`
`“next generation” or “next level” of resveratrol, and a trademark preventing all other
`
`sellers of pterostilbene from stating this fact is descriptive and not appropriate for
`
`registration.
`
`The two major reasons for not protecting descriptive marks are (1) to prevent the
`
`owner of a descriptive mark from inhibiting competition in the marketplace and (2) to
`
`avoid the possibility of costly infringement suits brought by the trademark or service
`
`mark owner. (In re Abcor Dev. Corp., 588 F.2d 811, 813, 200 USPQ 215, 217 (C.C.P.A.
`
`1978); TMEP §1209.) Businesses and competitors should be free to use descriptive
`
`
`
`4
`
`

`
`language when describing their own goods and/or services to the public in advertising
`
`and marketing materials. (See In re Styleclick.com Inc., 58 USPQ2d 1523, 1527 (TTAB
`
`2001).) In this case, Chromadex seeks to prevent competition in the marketplace by
`
`preventing Biotivia from describing pterostilbene as “the next generation of resveratrol,”
`
`“the next level of resveratrol,” or other similarly descriptive phrases, and Chromadex has
`
`already initiated one costly infringement suit against Biotivia based, in part, on this
`
`description.
`
`This Opposition centers on a legal determination of whether the phrase “The Next
`
`Generation Resveratrol” (the “Mark”) is descriptive under 15 U.S.C. § 1052(e)(1).
`
`Unlike an Opposition based on likelihood of confusion, which is heavily dependent on
`
`factual issues, this Opposition raises few issues of fact – the chemical properties of
`
`pterostilbene are undisputed, the relationship between pterostilbene and resveratrol is
`
`undisputed, and the use of the phrase by companies other than Applicant is undisputed.
`
`Also, unlike many other marks containing the phrase “Next Generation,” the Mark is a
`
`literal description of the substance sold by Applicant and not simply a marketing slogan.
`
`Chromadex and Biotivia were, until recently, engaged in settlement negotiations
`
`related to the case Chromadex, Inc. v. Biotivia, LLC, case number 8:11-cv-01273-CJC-
`
`MLG. At issue in that lawsuit was Biotivia’s use of phrases such as “the next generation
`
`of resveratrol” and “the next level of resveratrol” to describe pterostilbene (Exhibit 27,1
`
`Chromadex response to RFA (2)(t); Declaration of Aaron Shechet, paragraph 2.) As
`
`
`1 All references to numbered exhibits are to those exhibits attached to the Declaration of
`Aaron Shechet filed concurrently herewith; all references to lettered exhibits are to those
`exhibits attached to the Request for Judicial Notice filed concurrently herewith.
`
`
`
`5
`
`

`
`noted in previous filings in this matter, the Parties hoped to resolve Biotivia’s Opposition
`
`of the Mark. (Docket # 11.) However, the Parties were unable to do so.
`
`Accordingly, based upon the facts and argument set forth below, Opposer
`
`respectfully requests that the Board grant this motion and refuse Chromadex’s
`
`application.
`
`2.
`
`
`Standing
`
`Any person who believes that he would be damaged by the registration of a mark
`
`upon the principal register has standing to oppose. (15 U.S.C. § 1063; see also Ritchie v.
`
`Simpson, 170 F.3d 1092 (Fed. Cir. 1999).) Biotivia is a manufacturer and seller of
`
`dietary supplements and related materials, including those that contain resveratrol and
`
`pterostilbene, and it believes it will be harmed by the registration of the descriptive
`
`phrase “The Next Generation Resveratrol” by Chromadex, a competitor of Biotivia in the
`
`supplement and raw material market.
`
`As further evidence of standing, Chromadex has objected, through the filing of a
`
`lawsuit, to Biotivia’s use of phrases such as “the next level of resveratrol.” (Exhibit 27,
`
`Chromadex response to RFA (2)(t); Declaration of Aaron Shechet, paragraph 2).
`
`Chromadex seeks, through its registration of “The Next Generation Resveratrol,” to
`
`prevent competitors, like Biotivia, from accurately describing the ingredient
`
`pterostilbene.
`
`
`
`
`
`
`
`3.
`
`Summary of Undisputed Facts
`
`The following facts are not in dispute:
`
`
`
`6
`
`

`
`1. On or about December 8, 2010, Applicant filed an intent-to-use application for the
`
`registration of the mark “The Next Generation Resveratrol,” with Serial No.
`
`85193003, (the “Mark”) in International Class 001 for “Phytochemicals for use in
`
`the manufacturing of dietary supplements, nutritional supplements, nutritional
`
`beverages, pharmaceuticals and cosmetics.” (Exhibit A ¶ 1.)
`
`2. The Mark was published for opposition on or about August 23rd, 2011. (Exhibit
`
`A ¶ 2.)
`
`3. Biotivia sells one or more finished products that contain the ingredient
`
`Pterostilbene. (Declaration of James Betz ¶ 2.)
`
`4. Biotivia also competes with Chromadex in the raw material market. (Exhibit A ¶
`
`6; Declaration of James Betz ¶ 2; Exhibits 2, 16, 22, and 23; Exhibit B ¶ 61.)
`
`5. Chromadex sells one or more finished products that contain the ingredient
`
`Pterostilbene. (Exhibit 27 – Chromadex Response to Request for Admission
`
`(2)(f); Exhibit B – Chromadex First Amended Complaint ¶ 11.)
`
`6. Chromadex is a direct competitor of Biotivia. (Exhibit B – Chromadex First
`
`Amended Complaint ¶ 27.)
`
`7. Pterostilbene is a compound that is chemically related to resveratrol but has
`
`certain advantages over resveratrol. (Exhibits 1, 2, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13,
`
`14, 15, 16, 17, 20, 21, 22, 23, 25; Declaration of James Betz, ¶¶ 5, 6, and 7.)
`
`8. Pterostilbene is commonly described as the next generation of resveratrol; as an
`
`improvement upon resveratrol; as a molecule that is similar to, but better than,
`
`resveratrol; and the like. (Exhibits 1, 2, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16,
`
`17, 20, 21, 22, 23, 25; Declaration of James Betz, ¶¶ 5, 6, and 7.)
`
`
`
`7
`
`

`
`9. The phrase “Next Generation” is defined as “pertaining to the next generation in a
`
`family; also, pertaining to the next stage of development or version of a product,
`
`service, or technology;” and the USPTO uses that phrase in a similar fashion.
`
`(Exhibit 3; Exhibit 28; Exhibits 29, 30; Exhibits C, D, E; Request for Judicial
`
`Notice.)
`
`10. Pterostilbene is described, in scientific and advertising literature, and by
`
`Chromadex, as a compound that is chemically related to resveratrol but has
`
`certain advantages over resveratrol. (Exhibits 1, 2, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13,
`
`14, 15, 16, 17, 20, 21 22, 23, 25; Declaration of James Betz ¶ 6.)
`
`11. Chromadex applies “The Next Generation Resveratrol” to one or more product(s)
`
`containing pterostilbene. (Exhibits 2, 16, 18, 20, 22, 23, 24; Exhibit 27 –
`
`Chromadex Response to Request for Admission (2)(h).)
`
`12. Chromadex has objected, through the filing of a lawsuit, to Biotivia’s use of
`
`phrases such as “the next generation of resveratrol” and “the next level of
`
`resveratrol” to describe pterostilbene (Exhibit B – Chromadex First Amended
`
`Complaint ¶ 33; Exhibit 27 -- Chromadex Response to Request for Admission
`
`(2)(t); Declaration of Aaron Shechet ¶ 2.)
`
`
`
`
`
`4.
`
`Legal Standard for Summary Judgment
`
`Summary judgment is encouraged in inter partes trademark proceedings before
`
`the Board,2 because the issues are limited to registrability and are therefore “particularly
`
`suitable” for disposition by summary judgment. (Pure Gold, Inc. v. Syntex (U.S.A.) Inc.,
`
`
`2 Phoenix Closures, Inc. v. Yen Shaing Corp., 9 USPQ2d 1891, 1892 (TTAB 1988).
`
`
`
`8
`
`

`
`222 USPQ 741, 744 n.2 (Fed. Cir. 1984).) Summary judgment is appropriate where there
`
`is no genuine issue of material fact and the moving party is entitled to judgment as a
`
`matter of law. (Giant Food, Inc. v. Standard TerryMills, Inc., 229 USPQ 955, 961 (TTAB
`
`1986). )
`
`No genuine issue for trial exists where the record taken as a whole could not lead
`
`a rational trier of fact to find for the non-moving party. (Matsushita Electric Industrial
`
`Co. Ltd. v. Zenith Radio Corp., 475 U.S. 574, 587 (1987).) A dispute is genuine only if,
`
`on the entirety of the record, a reasonable trier of fact could resolve a factual matter in
`
`favor of the non-moving party. (Sweats Fashion, Inc. v. Pannill Knitting Co., 833 F.2d
`
`1560 (Fed. Cir. 1987), citing Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (1986).)
`
`Disputes over facts that will not affect the outcome under the governing law are
`
`immaterial and do not preclude summary judgment.
`
`
`
`
`
`5.
`
`Legal Standard for Descriptiveness
`
`A term is merely descriptive of goods, and therefore unregistrable under
`
`Trademark Act Section 2(e)(1), if it conveys an immediate idea of an ingredient, quality,
`
`characteristic, feature, function, purpose or use of the goods. (See, e.g., In re Gyulay, 820
`
`F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); and In re Abcor Development Corp., 588
`
`F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978).) A term need not immediately convey
`
`an idea of each and every specific feature of the applicant’s or registrant’s goods in order
`
`to be considered merely descriptive; it is enough that the term describes one significant
`
`attribute, function or property of the goods or services. (See In re H.U.D.D.L.E.,
`
`216 USPQ 358 (TTAB 1982); and In re MBAssociates, 180 USPQ 338 (TTAB 1973).)
`
`
`
`9
`
`

`
`Whether a particular term is merely descriptive is determined not in the abstract,
`
`but in relation to the goods for which registration is sought, the context in which it is
`
`being used or is intended to be used on or in connection with those goods, and the
`
`possible significance that the term would have to the average purchaser of the goods
`
`because of the manner of its use or intended use. (In re Tower Tech Inc., 64 USPQ2d
`
`1314, 1316-17 (TTAB 2002) (“The question is not whether someone presented with only
`
`the mark could guess what the goods or services are. Rather, the question is whether
`
`someone who knows what the goods and services are will understand the mark to convey
`
`information about them.”)
`
`
`
`6.
`
`
`
`The Undisputed Facts show that The Mark is descriptive of
`Pterostilbene
`
`Pterostilbene is a resveratrol analog and exhibits certain advantages over
`
`resveratrol. The phrase “Next Generation” describes an advancement over a predecessor.
`
`The USPTO uses the phrase “next generation” to describe its new-style Official Gazette.
`
`The supplement industry uses the phrase “next generation resveratrol” to describe
`
`pterostilbene, and Chromadex uses the phrase “next generation resveratrol” to describe
`
`pterostilbene. Accordingly, the Mark is descriptive.
`
`a. The phrase “Next Generation” means “the stage of development
`which occurs immediately after the present stage in terms of time,
`rank, or space.”
`
`
`
`“The Next Generation Resveratrol,” as applied to Chromadex’s pterostilbene
`
`supplement “pTeroPure,” or referring generally to pterostilbene, is descriptive. A mark is
`
`descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose,
`
`
`
`10
`
`

`
`or use of the specified goods or services. (See In re Gyalay, 820 F.2d 1216 (1987).) The
`
`determination of whether a mark is merely descriptive is made in relation to an
`
`applicant’s goods and/or services, not in the abstract. (In re The Chamber of Commerce
`
`of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); TMEP
`
`§1209.01(b); see, e.g., In re Polo Int’l Inc. , 51 USPQ2d 1061, 1062-63 (TTAB 1999).
`
`“Whether consumers could guess what the product [or service] is from consideration of
`
`the mark alone is not the test.” In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB
`
`1985).)
`
`In this case, “The Next Generation Resveratrol” is applied to products that contain
`
`pterostilbene, including Chromadex’s “pteropure” product. (Exhibit 27 – Chromadex
`
`Response to Request for Admission (2)(h), (2)(i).) The Mark describes a significant
`
`quality, characteristic, function, attribute, or property of pTeroPure’s main ingredient,
`
`pterostilbene.
`
`The phrase “Next Generation” is defined as “pertaining to the next generation in a
`
`family; also, pertaining to the next stage of development or version of a product, service,
`
`or technology.” (Exhibit 3.) In the Oxford English Dictionary, “Next” is defined as
`
`“coming immediately after the present one in order, rank, or space.” (Exhibit 29; Exhibit
`
`D.) In the same dictionary, “Generation” is defined as “a single stage in the development
`
`of a type of product,” and the phrase “a new generation of rear-engined sports cars” is
`
`offered by way of illustration. (Exhibit 30; Exhibit E.) The dictionary definitions of
`
`“Next Generation,” “Next,” and “Generation” are consistent, agreeing that “Next
`
`Generation” means “the stage of development which occurs immediately after the present
`
`stage in terms of time, rank, or space.” (Request for Judicial Notice.)
`
`
`
`11
`
`

`
`The phrase “Next Generation” is commonly used to describe the next stage of a
`
`product. For example, the USPTO itself describes the new-style Trademark Official
`
`Gazette as “the Next Generation TMOG (eOG).” (Exhibit 28.) It appears that the
`
`USPTO uses the language “the Next Generation TMOG (eOG)” in trademark publication
`
`confirmations to indicate that the new-style Official Gazette is the next stage of
`
`development or version of its product, service, or technology.
`
`
`
`
`
`b. Pterostilbene is the “next generation” of resveratrol.
`
`Pterostilbene, as compared to resveratrol, is a newer product that is commonly
`
`marketed as the next stage of resveratrol. (Exhibits 1, 2, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13,
`
`14, 15, 16, 17, 20, 21, 22, 23, 25; Declaration of James Betz, ¶¶ 5, 6, and 7.)
`
`Pterostilbene is a compound that is chemically related to resveratrol but has certain
`
`advantages over resveratrol, 3 including higher bioavailability. (Exhibits 4, 9, 13;
`
`Declaration of James Betz, ¶¶ 5, 6, 7). Pterostilbene’s anti-cancer effects are similar to,
`
`but more potent than, resveratrol’s. (Declaration of James Betz, ¶ 7). It is relatively new
`
`as a dietary supplement due to advances in packaging, stability, and affordability, and
`
`resveratrol is often cast as its predecessor. (Declaration of James Betz, ¶¶ 6, 7).
`
`Pterostilbene is accurately described as the next stage of development of
`
`resveratrol. (Declaration of James Betz, ¶¶ 5, 6, and 7). Words like “next generation of
`
`resveratrol” and “next level of resveratrol” are used to describe pterostilbene in general,
`
`and not any particular brand of pterostilbene, even when referring to pTeroPure.
`
`
`3 Specifically, Pterostilbene is a double-methylated version of resveratrol exhibiting a
`higher bio-availability as it is more easily transported into cells and more resistant to
`degradation and elimination.
`
`
`
`12
`
`

`
`(Exhibits 1, 16, 20, 22, and 23). At least one article dating back to 2009, well before
`
`Chromadex’s use of the Mark, touts pterostilbene as an advancement on resveratrol.
`
`(Exhibit 8).
`
`
`
`c. Chromadex acknowledges that pterostilbene is the next generation
`of resveratrol.
`
`Chromadex itself has used “The Next Generation Resveratrol” and similar phrases
`
`for their proper, descriptive purpose, describing the compound pterostilbene, and not any
`
`particular product, as the next generation of resveratrol, as superior to resveratrol, and as
`
`an improvement on resveratrol. These descriptions appear in Chromadex press releases,
`
`news articles, presentations, and brochures. (Exhibits 1, 16, 20, 22, and 23). In one of its
`
`brochures, Chromadex states that “pterostilbene is the next generation resveratrol.”
`
`(Exhibit 24).
`
`Chromadex describes pterostilbene’s relationship with resveratrol in detail on its
`
`website, stressing that pterostilbene is similar to, but has several key advantages over,
`
`resveratrol, and that “pterostilbene is the next generation of resveratrol, as it [is] a
`
`methylated resveratrol analog…”. (Exhibit 2.)
`
`
`
`
`
`d. Others in the industry describe pterostilbene as the next
`generation of resveratrol.
`
`Douglas Labs describes the ingredient pterostilbene as “the star” of a new
`
`supplement, and says pterostilbene “has been called a superior form of resveratrol” and
`
`that “pterostilbene, a methylated form of resveratrol, is considered the next generation of
`
`resveratrol.” (Exhibits 5 and 21.)
`
`
`
`13
`
`

`
`Many other sources describe the relationship between resveratrol and
`
`pterostilbene, confirming that the two compounds are related but that pterostilbene has
`
`advantages over resveratrol. (Exhibits 4, 9, and 13, Declaration of James Betz, ¶¶ 5, 6,
`
`and 7.) One source says, about pterostilbene, “…which some have started calling the
`
`next generation resveratrol.” (Exhibit 13.) In another article describing the advantages of
`
`pterostilbene over resveratrol, pterostilbene was called “the other resveratrol,” an “anti-
`
`oxidant powerhouse” which might be “even better than its famous cousin,” resveratrol.
`
`(Exhibit 14.) It has been described as “the next generation brain booster” as compared to
`
`resveratrol. (Exhibit 14.)
`
`Other supplement marketers and manufacturers have also used “The Next
`
`Generation Resveratrol” and similar to describe pterostilbene, and not to describe any
`
`particular product. (Exhibits 6, 7, and 10.) Some supplement marketers have actually
`
`used the words “next generation of resveratrol” to describe pterostilbene. (Exhibits 11,
`
`12, 15, 17, and 25.) One advertisement states, “Pterostilbene, a structural analog of
`
`resveratrol, has been called the next generation of resveratrol.” (Exhibit 15.) Another
`
`describes its pterostilbene product as “the next generation resveratrol.” (Exhibits 17 and
`
`25.) While some of these supplements may contain the ingredient Pteropure, the exhibits
`
`referenced in these paragraphs demonstrate the use of the Mark and similar phrases to
`
`describe pterostilbene, not to describe Pteropure.
`
`To identify Chromadex’s pTeroPure product as “The Next Generation
`
`Resveratrol” is to describe the pTeroPure product as pterostilbene; to identify
`
`pterostilbene as “The Next Generation Resveratrol” is to merely describe the molecule.
`
`(Declaration of James Betz, ¶¶ 5, 6, and 7).
`
`
`
`14
`
`

`
`
`
`7.
`
`
`
`The Mark is laudatory and informational, and thus is descriptive
`under Trademark Act section (e)(1); 15 U.S.C. § 1052(e)(1)
`
`Additionally, laudatory terms, which “attribute quality or excellence to goods or
`
`services, are merely descriptive.” (See In Re Nett Designs Inc., 236 F.3d 1339, 2001.)
`
`Terms that “are considered to be merely informational in nature, or to be common
`
`laudatory phrases or statements that would ordinarily be used in business or in the
`
`particular trade or industry, are not recognizable.” (In re Boston Beer Co. L.P. 198 F3d
`
`1370 (1999).) “The Next Generation Resveratrol,” by indicating that pTeroPure, or
`
`pterostilbene in general, is an improvement over existing resveratrol supplements, which
`
`is both laudatory and informational, is descriptive.
`
`
`
`8.
`
`
`Conclusion
`
`Pterostilbene is a resveratrol analog and it exhibits certain advantages over
`
`resveratrol. As a result, describing pterostilbene as “the next generation resveratrol,” has
`
`become common in the industry, and is an accurate description of the molecule. Thus,
`
`this motion should be granted and Chromadex’s application refused.
`
`Dated January 22, 2014
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`
`
`
`
`
`
`
`
`_
`
`
`
`
`
`
`
`
`
`
`
`
`
`CHANDLER & SHECHET, LLP
`Aaron Shechet
`Counsel for Opposer,
`BIOTIVIA, LLC
`1844 Bagley Ave.,
`Los Angeles, CA 90035
`(310) 339-1354
`
`15
`
`

`
`CERTIFICATE OF TRANSMITTAL
`
`
`This is to certify that a true copy of the foregoing OPPOSER BIOTIVIA, LLC’S
`
`MOTION FOR SUMMARY JUDGMENT, OR IN THE ALTERNATIVE, PARTIAL
`SUMMARY JUDGMENT, is being filed electronically with the T.T.A.B. via ESTTA on
`this day, January 24, 2014.
`
`
`
`_
`
`
`CHANDLER & SHECHET, LLP
`Aaron Shechet
`Counsel for Opposer,
`BIOTIVIA, LLC
`
`1844 Bagley Ave.,
`Los Angeles, CA 90035
`(310) 339-1354
`
`
`
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE (37 C.F.R. §§ 2.101, 2.119)
`
`
`I, AARON SHECHET, Attorney of Record for Opposer, Biotivia, LLC, hereby certify
`that a true and correct copy of the foregoing OPPOSER BIOTIVIA, LLC’S
`MOTION FOR SUMMARY JUDGMENT, OR IN THE ALTERNATIVE, PARTIAL
`SUMMARY JUDGMENT, was served by:
`1. transmission by Certified first class mail service of the United States Postal
`Service,
`on the attorney of record for the opposed application, at the correspondence address of
`record in the USPTO for said person as of the date of service, as set forth below:
`
`
`JOSEPH T. NABOR
`FITCH EVEN TABIN & FLANNERY
`120 S LASALLE ST STE 1600
`CHICAGO, IL 60603-3590
`
`
`
`Date of Mailing: January 24, 2014
`
`
`_
`
`
`Aaron Shechet
`
`
`
`
`
`16
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In the matter of trademark application Serial No. 85193003
`For the mark: THE NEXT GENERATION RESVERATROL
`Published in the Official Gazette on August 23, 2011
`
`------------------------------------x
`BIOTIVIA, LLC
`
`
`
`Opposer
`
`v.
`
`CHROMADEX, INC.
`
`Applicant
`------------------------------------x
`
`
`
`
`Opposition No.: 91202162
`
`
`
`
`
`OPPOSER BIOTIVIA, LLC’S MOTION TO SUSPEND PENDING DECISION ON
`
`MOTION FOR SUMMARY JUDGMENT
`
`
`
`Opposer Biotivia, LLC hereby moves that this opposition proceeding be
`
`suspended with respect to all matters not germane to Opposer’s motion for summary
`
`judgment, filed concurrently herewith, pending the Board’s ruling on that motion.
`
`
`
`37 C.F.R. § 2.127(d) provides, in part, that “When any party files a motion to
`
`dismiss, or a motion for judgment on the pleadings, or a motion for summary judgment,
`
`or any other motion which is potentially dispositive of a proceeding, the case will be
`
`suspended by the Trademark Trial and Appeal Board with respect to all matters not
`
`germane to the motion and no party should file any paper which is not germane to the
`
`motion except as otherwise specified in the Board's suspension order….”
`
`///
`
`///
`
`///
`
`
`
`1
`
`

`
`
`
`Accordingly, suspension is appropriate in that Opposer’s motion for summary
`
`judgment is potentially dispositive of this proceeding.
`
`Respectfully submitted,
`
`
`
`
`
`
`
`
`
`
`CHANDLER & SHECHET, LLP
`Aaron Shechet
`Counsel for Opposer,
`BIOTIVIA, LLC
`
`1844 Bagley Ave.,
`Los Angeles, CA 90035
`(310) 339-1354
`
`
`
`_
`
`
`
`
`
`
`
`
`
`2
`
`
`
`Dated January 22, 2014
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`
`
`
`CERTIFICATE OF TRANSMITTAL
`
`This is to certify that a true copy of the foregoing OPPOSER BIOTIVIA, LLC’S
`
`MOTION TO SUSPEND PENDING DECISION ON MOTION FOR SUMMARY
`JUDGMENT, is being filed electronically with the T.T.A.B. via ESTTA on this day,
`January 24, 2014.
`
`
`
`_
`
`
`CHANDLER & SHECHET, LLP
`Aaron Shechet
`Counsel for Opposer,
`BIOTIVIA, LLC
`
`1844 Bagley Ave.,
`Los Angeles, CA 90035
`(310) 339-1354
`
`
`
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE (37 C.F.R. §§ 2.101, 2.119)
`
`
`I, AARON SHECHET, Attorney of Record for Opposer, Biotivia, LLC, hereby certify
`that a true and correct copy of the foregoing OPPOSER BIOTIVIA, LLC’S MOTION
`TO SUSPEND PENDING DECISION ON MOTION FOR SUMMARY
`JUDGMENT, was served by:
`1. transmission by Certified first class mail service of the United States Postal
`Service,
`on the attorney of record for the opposed application, at the correspondence address of
`record in the USPTO for said person as of the date of service, as set forth below:
`
`
`JOSEPH T. NABOR
`FITCH EVEN TABIN & FLANNERY
`120 S LASALLE ST STE 1600
`CHICAGO, IL 60603-3590
`
`_
`
`
`Aaron Shechet
`
`
`
`Date of Mailing: January 24, 2014
`
`
`
`
`
`
`3
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In the matter of trademark application Serial No. 85193003
`For the mark: THE NEXT GENERATION RESVERATROL
`Published in the Official Gazette on August 23, 2011
`
`------------------------------------x
`BIOTIVIA, LLC
`
`
`
`Opposer
`
`v.
`
`CHROMADEX, INC.
`
`Applicant
`------------------------------------x
`
`
`
`
`Opposition No.: 91202162
`
`
`
`
`
`REQUEST FOR JUDICIAL NOTICE IN SUPPORT OF OPPOSER’S MOTION
`
`FOR SUMMARY JUDGMENT
`
`Opposer Biotivia, LLC (“Biotivia”) hereby requests that the Board take judicial
`
`
`
`notice of the following documents attached as Exhibits A through E. This request is
`
`made pursuant to Rule 201 of the Federal Rules of Evidence. This request is made in
`
`connection with Biotivia’s Motion for Summary Judgment, filed concurrently herewith.
`
`Exhibit
`
`Description
`
`A
`
`B
`
`C
`
`Applicant’s Answer to Notice of Opposition filed in this proceeding.
`
`(Dkt. 4.)
`
`Applicant’s First Amended Complaint in Chromadex v. Biotivia 8:11-
`
`CV11-01273 CJC (MLGx) (C.D. Cal. filed Aug. 30, 2011).
`
`USPTO “Trademark Official Gazette Publication Confirmation” for the
`
`trademark “POTENSHAA.”
`
`

`
`Oxford dictionary website definition of “Next.”
`
`Oxford dictionary website definition of “Generation.”
`
`A court may take judicial notice of matters of public recor