Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA585385
`ESTTA Tracking number:
`02/03/2014
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91204124
`Plaintiff
`Threshold Enterprises, Ltd.
`JEREMY M MCLAUGHLIN
`ARNOLD & PORTER LLP
`THREE EMBARCADERO CENTER, 10TH FLOOR
`SAN FRANCISCO, CA 94111
`UNITED STATES
`jeremy.mclaughlin@aporter.com, trademarkdocketing@aporter.com,
`elisabeth.richards@aporter.com
`Opposition/Response to Motion
`Jeremy McLaughlin
`jeremy.mclaughlin@aporter.com, trademarkdocketing@aporter.com,
`monty.agarwal@aporter.com, bryan.gresham@aporter.com,
`marc.schiess@aporter.com
`/s/ Jeremy McLaughlin
`02/03/2014
`Opposer's Opposition to Applicant's Motion for Summary Judgment Public, part
`1.pdf(4759649 bytes )
`Opposer's Opposition to Applicant's Motion for Summary Judgment Public, part
`2.pdf(3497622 bytes )
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`Proceeding
`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
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`Signature
`Date
`Attachments
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`IN THE UNITED STATES PATENT AND .TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`In the Matter of U.S. Application Serial No. 85/396136
`For: PLANT HERBAL TREASURES
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`THRESHOLD ENTERPRISES LTD.,
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`Opposer,
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`v,
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`ROBERT CAMPBELL (individual),
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`Applicant.
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`\)L/L/\Z\ZL/Q/&ZL/L
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`Opposition No. 91204124
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`OPPOSER’S OPPOSITION TO APPLICANT’S MOTION FOR SUMMARY
`JUDGMENT
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`PUBLIC VERSION
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`INTRODUCTION
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`Applicant Robert Campbell (“Applicant”) has moved for summary judgment on the issue
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`of likelihood of confusion. In his Motion for Summary Judgment (“Motion”), he identifies only
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`four factors that he claims support summary adjudication in his favor. As a result, the remaining
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`likelihood of confusion factors automatically favor Opposer Threshold Enterprises, Ltd.
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`(“Threshold”). Each of the four factors Applicant identifies, however, either weigh in favor of
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`Threshold or are the subject of disputed factual issues. As a result, Applicant has fallen fall short
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`of carrying his necessary burden to warrant the entry of summary judgment. His motion,
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`therefore, must be denied.
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`BACKGROUND
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`The history between Threshold and Applicant long pre—dates the immediate opposition.
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`In 1995, while shopping at a health food store, Applicant became aware of some products
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`bearing Threshold’s PLANETARY, PLANETARY FORMULAS, and/or PLANETARY
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`HERBALS marks. (Exhibit A at 20, Exhibit B). Applicant again encountered products bearing
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`Threshold’s PLANETARY, PLANETARY FORIVIULAS, and/or PLANETARY HERBALS
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`marks in or around 1998.
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`(Id.)
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`Only three years later, in 2001, Applicant began using PLANETARY HERB
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`TREASURES as a mark on dietary herbal supplements, vitamins, and nutritional supplements.
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`(Exhibit C at 8-9, Exhibit D). After becoming aware of Applicant’s use of the PLANETARY
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`HERB TREASURES mark and the website www.planetaryherbtreasures.com, on July 23, 2011
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`and August 3, 2011, Threshold contacted Applicant asking that he cease use of the mark.
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`(Exhibit E at 5-6). On August 8, 2011, Applicant responded to Threshold’s inquiry, stating that
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`he did not believe there was any trademark infringement. (Exhibit E at 4). On August 10, 2011,
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`Threshold responded and reiterated its position that Applicant was infringing Threshold’s marks
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`and offered Applicant time to discontinue his use and re—label his products. (Exhibit E at 1-3).
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`On August 12, 2011, an attorney for Applicant responded to Threshold again indicating that
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`Applicant had no plans to discontinue his use of the PLANETARY HERB TREASURES mark.
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`(Exhibit D at 1-3) In fact, on that same day, Applicant filed numerous applications for other
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`marks, including PLANT HERBALS for “Dietary herbal supplements, vitamins, and nutritional
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`supplements” in International Class 5, and PLANT HERBAL TREASURES, the mark at issue in
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`this Opposition. In follow—up discussions between the parties, Applicant sought compensation
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`from Threshold to discontinue use of his marks, which Threshold refused to offer. (Exhibit E at
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`41) Applicant did so knowing that Threshold also used PLANETARY HERBALS as a
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`housemark. Indeed, Threshold has used the mark PLANETARY HERBALS since at least 2005.
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`(Declaration of Barry Sugarman In Support Of Opposer’s Opposition To Applicant’s Motion for
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`Summary Judgment (“Sugarman Decl.”), 112).
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`Because of this history, and Applicant’s gamesmanship, on March 1, 2012, Threshold
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`filed the immediate Notice of Opposition against Applicant’s PLANT HERBAL TREASURES
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`mark. On November 27, 2013, Applicant filed the Motion. On December 31, 2013, the Board
`granted Threshold’s request for an extension of time until Pebruary 3, 2014 to respond to the
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`Motion.
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`\
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`ARGUMENT
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`A.
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`Summafl Judgment Standard
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`Summary judgment is appropriate only where the movant “shows that there is no genuine
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`dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Fed.
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`' R. Civ. P. 5 6(a). The moving party has the burden of demonstrating the absence of any genuine
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`dispute of material fact, and that it is entitled to judgment as a matter of law. TBMP §5 28.01. If
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`the moving party meets its burden, the non-moving party must proffer countering evidence
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`showing that there is a genuine factual dispute for trial. Id. A factual dispute is genuine “if
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`sufficient evidence is presented such that a reasonable fact finder could decide the question in
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`favor of the non—moving party.” Id. The nonmoving party must be given the benefit of all
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`reasonable doubt as to whether genuine disputes of material fact exist, and the evidentiary record
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`and all inference to be drawn from the undisputed facts must be viewed in the light most
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`favorable to the non-moving party. Olde Tyme Foods, Inc. v. Roundy ’s Inc. , 961 F.2d 200 (Fed.
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`Cir. 1992).
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`B.
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`Likelihood of Confusion Analysis
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`Although Applicant claims he is moving for summary judgment “sole[ly]”on the
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`“significant dissimilarity of the marks themselves,” the Motion is, in fact, based on four of the
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`thirteen factors identified in In re E. I. du Pont de Nemours & C0,, 476 F.2d 1357, 1361 (CCPA
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`1973). Those four factors are: (1) “The similarity or dissimilarity of the marks in their entireties
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`as to appearance, sound, connotation and commercial impression” (Motion at 3-14); (2) “The
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`conditions under which and buyers to whom sales are made .
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`.
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`.” (Motion at 14-15); (3) “The
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`nature and extent of any actual confusion” (Motion at 15-16); and (4) “The number and nature of
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`similar marks in use of similar goods.” (Motion at 16-22). _ duP0nt, 476 F.2d at 1361. Here,
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`there are genuine disputes of material fact as to each of the four factors identified by Applicant.
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`Summary judgment, therefore, should be denied.
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`Moreover, Applicant has conceded the relatedness of his products to Threshold’s
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`products and that Threshold has priority in interstate commerce, and he makes no other
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`arguments about the remaining du Pont factors. Motion at 3. As a result, for purposes of this
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`motion, when weighing the du Pont factors, the Board assumes that the remaining factors, such
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`as fame, relatedness of goods, and trade channels, favor Threshold. The Hebrew University of
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`Jerusalem v. 9081-0516 Quebec Inc., 2003 WL 1018100, at *2 (TTAB 2003). Thus, even if
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`there are no genuine issues of fact regarding the four factors identified by Applicant (which there
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`are), and even if those factors favor Applicant (which they do not), they will still be weighed
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`against the remaining factors that all favor Threshold}
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`1.
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`Similarity or dissimilarity of the marks in their entireties.
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`Because Applicant has conceded the relatedness of his products to Threshold’s products,
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`the showing required to demonstrate similarity of the marks is less than in those cases involving
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`different goods. See, e.g., In re Mighty Tea Lea)’, 601 F.3d 1342, 1348 (Fed. Cir. 2010); In re
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`Microsoft Corp. , 68 U.S.P.Q.2d 1195 (TTAB 2003) (“[W]hen marks appear on or in connection
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`with virtually identical or closely related goods, the degree of similarity of the marks necessary
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`to support a conclusion of likely confusion is not as great as when the goods are different”); Top
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`Tobacco, L.P. v. North Atlantic Operating Co., Inc., 101 [l.S.P.Q.2d 1163, 1173 (TTAB 2011)
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`(when marks appear on identical goods, the degree of similarity needed for likely confusion
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`declines). Moreover, similarity in any one of the trilogy factors—— sight, sound, or meaning——“is
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`sufficient to support a determination of likelihood of confusion.” Eveready Battery Company,
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`Inc. v.) Green Planet, Inc., 91 U.S.P.Q.2d 1151 (TTAB 2009) (finding likelihood of confiision
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`based on appearance and sound, even though marks had different meanings).
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`Applicant’s mark is PLANT HERBAL TREASURES. Threshold has registrations for
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`the marks PLANETARY and PLANETARY FORMULAS, and uses PLANETARY HERBALS
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`as a housemark. (Sugarman Decl. 112). It is therefore appropriate to compare Applicant’s mark
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`with both Threshold registrations as well as its housemark. See McCarthy on Trademarks
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`1 Moreover, a party’s intent is a relevant factor in a likelihood of confusion analysis, such as
`whether an applicant adopted a mark with full knowledge of plaintiff’ s mark and/or the applicant
`tried to adopt a mark as close as possible to plaintiff. McCarthy on Trademarks §§23:115, 116
`(4th ed. 2013). Given the history of Applicant’s use of marks, there are substantial factual .
`questions about his intent in adopting his mark.
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`§23 :43 (4th ed. 2013) (“Conflicting marks must be compared in their entirety, including any
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`‘house mark’ which one party may append to its mark.”).
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`(a)
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`Appearance.
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`The overall appearance of the marks is one of similarity. The marks with the most
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`similar appearance are Applicant’s PLANT HERBAL TREASURES mark and Threshold’s
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`PLANETARY HERBALS mark. The first word in each of these marks begins with the same
`first four letters: PLAN. The second word of Applicant’s mark—_—Herbal—is the same second
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`word in Threshold’s mark, except the word is plural. In short, comparing PLANT HERBAL
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`with PLANETARY HERBALS shows significant similarity between the marks. Applicant’s
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`mark has TREASURES at the end of it. Although Threshold’s mark does not contain the word
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`TREASURES, products bearing Threshold’s PLANETARY HERBALS mark have the word
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`TREASURES in the title, such as Women’s Dong Quai Treasure. (Exhibit F at 8). As a result,
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`there is significant overlap when considering the marks, and use of the marks, as a whole.
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`Even beyond Threshold’s housemark, Applicant’s mark starts out with the letters PLAN,
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`and Threshold’s two registered marks begin with the same four letters. Moreover, although
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`PLANET, which is the first part of each of Threshold’s marks has the letter E, it is nonetheless
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`similar to the first full part of Applicant’s mark, PLANT.
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`\
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`(b)
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`Sound.
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`The overall sound of Applicant’s mark is similar to that of Threshold’s marks.
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`Applicant’s mark is pronounced phonetically as PLANT ER-BAL TREH—ZHURES.
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`Comparing just the first part — PLANT ER-BAL — to the phonetic pronunciation of the first part
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`of each of Threshold’s mark reveals significant similarities. Threshold’s mark is pronounced or
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`begins with the pronunciation PLAN—EH-TEAR-EE. Both of these pronunciations begin with
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`“PLAN” and are followed by a “T” sound either immediately or shortly thereafter. Both marks
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`have the primary accent on the first syllable. In addition, the second syllable of each mark is
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`acoustically similar——ER and EH——and receives the least accent of the entire mark.
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`Moreover, if one considers the second part of Threshold’s house mark—HERBALS——the
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`acoustic similarities increase. As discussed above, PLANT HERBALS and PLANETARY have
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`acoustic similarities standing alone. However, PLANT HERBAL and PLANETARY
`HERBALS are even more similar because the final two syllables are nearly identical, with only
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`an S separating them.
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`Although the final part of Applicant’s mark—~TREH—ZHURES——is not similar in sound
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`to FORMULAS or HERBALS, that does not necessarily defeat the acoustic similarities of the
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`overall marks when compared to each other. For example, in Eveready Battery Company, the
`Board found similar in sound the marks SCHICK and SLICK ULTRA PLUS, notwithstanding
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`the addition of ULTRA PLUS to the latter mark. 91 U.S.P.Q.2d 1511, 2009 WL 2176668, at *8.
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`Indeed, as relevant to both the Eveready Battery Company case and the instant case, where the
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`first part of a mark is similar, it is especially important “since it is often the first part of a mark
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`which is most likely to be impressed upon the mind of a purchaser and remembered.” Presto
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`Products, Inc. v. Nice-Pak Products, Inc., 9 U.S.P.Q.2d 1895, I897 (TTAB 1988).
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`In his Motion, when discussing the sounds of the involved marks, Applicant simply states
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`in conclusory fashion that the marks are not phonetically similar. This is not enough to carry his
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`burden on summary judgment,» which requires he demonstrate the absence of any genuine dispute
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`of material fact. TBMP §528.01. He can meet this burden by showing “that there is an absence
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`of evidence to support the nomnoving party’s case” (id.), but, as just explained, there is ample
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`evidence to demonstrate the similar sounds of the marks.
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`Moreover, Applicant cites National Distillers & Chemical Corporation v. William Grant
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`and Sons, Inc., 505 F.2d 719 (CCPA1974) for the proposition that “even where marks are
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`phonetically similar, no likelihood of confusion exists if other differentiating factors can be
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`established.” Motion at 9. In that case, the court noted as an “other differentiating factor” the
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`fact that the word “duet” was a familiar word, but the word “duvet” was not. But here, Applicant
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`fails to identify——let alone establish——any “other differentiating factors.”
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`Finally, after conceding that the same four consecutive letters begin both Applicant’s
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`mark and Threshold’s marks, Applicant cites to various registered marks that contain those same
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`four consecutive letters. Motion at 9. This is irrelevant for determining whether Applicant’s
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`mark and Threshold’s sound alike, and Applicant makes no argument to the contrary.
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`(c)
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`Meaning.
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`Determining the overall meaning of a mark can take into account a variety of factors.
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`Moreover, even where marks are dissimilar in sound and appearance, their meaning can be so
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`similar thatthey are likely to cause confusion. McCarthy §23:26. As discussed below,
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`numerous factors independently convey a similar meaning between Applicant’s mark and
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`Threshold’s marks. When these factors are combined, there is therefore strong evidence that the
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`marks at issue convey a similar meaning.
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`(i)
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`Definitions of the Ter_ms.
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`A relevant factor to determine a mark’s meaning is the dictionary definition. Id. All of
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`Threshold’s marks begin with the word PLANETARY. Merriam-Webster’s online dictionary
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`defines the following terms:
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`0 PLANETARY as, inter aliaz (l) of, relating to, being, or resembling a planet; (2) erratic,
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`wandering; (3) having a motion like that of a planet; (4) immense; (5) of, relating to, or
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`belonging to the earth. (Exhibit G).
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`0 FORMULA as, inter aliaz (1) a plan or method for doing, making, or achieving
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`something; (2) a list ‘of ingredients used for making something; (3) a symbolic expression
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`of the chemical composition or constitution of a substance. (Exhibit H).
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`0 HERBAL as, inter aliaz (1) made of or relating to herbs. (Exhibit 1).
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`0
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`PLANT as, inter alia: (1) to put in the ground to grow (verb); (2) a living thing that
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`grows in the ground, usually has leaves or flowers,‘and needs sun and water to survive
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`(noun). (Exhibit J).
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`0 TREASURE as, inter aliaz (1) something valuable that is hidden or kept in a safe place;
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`(2) something that is very special, important, or valuable; (3) a collection ofprecious
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`things. (Exhibit K).
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`The overall meaning must be gauged by what the “ordinary viewer or customer” would
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`conclude. McCarthy §23:26.
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`Here, PLANETARY is used on various types of supplements. In that context, the
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`definition most likely to be relevant for an ordinary customer would be of or belonging to the
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`Earth; it is unlikely consumers would believe the products came from “planets” in general.
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`Because FORMULAS is also used on various types of supplements (rather than in a scientific or
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`strategic context), consumers would most likely associate the term with a list of ingredients or an
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`expression of the constitution of a substance. Considering the meaning of these terms together,
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`the overall impression is: ingredients or substances from Earth. As for Threshold’s housemark,
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`PLANETARY HERBALS, which is used only on herbal supplements, the overall impression is:
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`made of herbs from Earth.
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`As for Applicant’s mark, the term PLANT, when used on herbal supplements, would
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`convey to a consumer a living thing that grows in the ground. Of course, most consumers would
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`affiliate “ground” with the ground on Earth, not some other planet. Moreover, because
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`HERBAL immediately follows the term PLANT, consumers likely would understand it to mean
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`herbs growing in the ground. Finally, because the products are supplements, which consumers
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`would not generally understand to be “hidden” or “valuable” in terms of money, the likely
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`definition of TREASURES would be something special. Considering these terms together, the
`overall impression is: special herbs from Earth’s ground.
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`In short, the overall impression of Threshold’s marks are: (a) belonging to Earth, (b)
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`ingredients from Earth, and (c) made of herbs from Earth. This is very similar to the overall
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`impression of Applicant’s mark: special herbs from Earth’s ground. Indeed, as Applicant
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`highlights, Threshold views the phrase PLANETARY FORMULAS to connote “its efforts to
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`source the best of the world’s herbal ingredients and remedies.” Motion at 12. Of course, “best”
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`is very similar to “special” and “the world’s herbal ingredients” refers to Earth’s herbal
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`ingredients. This, too, demonstrates the similarity of definitions to Applicant’s mark: special
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`herbs from Earth ’s ground.
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`Applicant claims that the overall impression conveyed by his mark is “wealth through
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`health.” Motion at 12. No evidence supports this assertion. None of the terms in Applicant’s
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`mark conveys the term “health.” And although TREASURE could connote “wealth” in some
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`circumstances, it is unlikely a consumer purchasing herbal supplements would conclude
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`TREASURE indicates the supplement will provide the consumer with wealth. Indeed,
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`Applicant’s own evidence undermines his argument that his mark means “wealth through
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`health.” The motto present on Applicant’s website is “Bringing Herbal Treasures From Around
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`The World.” (Exhibit E at 37.1 - 39) That motto is much more aligned with the meaning
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`‘special herbs from Earth’s ground’ than with ‘health through wealth.’
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`(ii)
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`Context ofmark.
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`As Applicant admits, in determining the meaning or connotation of the mark, it is
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`relevant to analyze the context in which the mark is used, such as material on labels,
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`advertisements, packaging, etc. Motion at 10 (citing In re Nationwidefilndustries, 6 U.S.P.Q.2d
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`1882 (TTAB 1988)); see also McCarthy §23:52. Applicant, however, wholly fails to address
`this consideration. When properly considered, these contextual indicators further demonstrate
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`the overall similarity of the marks at issue.
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`The trade dress of Applicant’s products and Threshold’s productsare very similar. As is
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`evidenced from each party’s website, most of each party’s products are sold in white bottles with
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`white caps. (Exhibit E at 40, Exhibit F at 1). In addition, the labels on each party’s bottle share
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`many, significant characteristics:
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`0
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`PLANT HERBAL TREASURES (Applicant) and PLANETARY HERBALS
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`(Threshold) are each written in a yellow/gold font.
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`0 Both marks are written in all uppercase letters.
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`0 Each label depicts green leaves, either below or next to the mark.
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`0 Each label prominently features a picture of Earth.
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`Id.
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`* * * * *
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`Applicant fails to provide undisputed evidence demonstrating that the marks at issue are
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`so dissimilar that they are not likely to cause confusion. In fact, each of the factors——
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`appearance, sound, and meaning——demonstrate a close similarity between the marks. Given that
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`(a) a lower showing is required for similarity of the marks because the goods are concededly
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`related, and (b) one factor alone can warrant a similarity finding, Applicant has come nowhere
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`close to demonstrating that he is entitled to summary judgment on this factor. At the very least,
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`however, there are genuine factual disputes preventing theentry of summary judgment because a
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`reasonable fact finder could decide the question in favor of Threshold.2
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`2.
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`Sophistication of the Consumer.
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`The degree of care exercised by a purchasing consumer is relevant in determining
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`whether a consumer will be misled by marks. See generally McCarthy §23:95. If a consumer is
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`likely to exercise a high degree of care and deliberation when purchasing a product, there is a
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`lessened change that theconsumer will be confused by similar marks. Id. Conversely, if a
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`consumer likely will exercise less care, such as with an impulse purchase, the consumer will
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`more likely be confused by similar marks. Id.
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`Without citing any authority or evidence, Applicant claims that consumers “will be
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`especially vigilant” when purchasing the party’s products. Motion at 15. Such a bald assertion,
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`however, is far from clear and far from what is required toshow the lack of any genuine issue of
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`material fact. To the contrary, there is evidence undermining Applicant’s position.
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`As an initial matter, goods that are inexpensive tend to have more impulse buyers when
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`compared to expensive goods. McCarthy §23:95. Here, the goods at issue are relatively
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`inexpensive (See, e.g., Exhibit E at 7-37 (retail prices ranging from $12.50-$49.95) & (Exhibit F
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`at 2-6 (retail prices ranging from $8.50 to $35.98)), which supports a conclusion that purchasers
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`will be less discerning. Indeed, rejecting an argument that consumers of dietary supplements are
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`sophisticated purchasers, the Seventh Circuit found that “there is just no evidence that consumers
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`as a whole are extraordinarily careful when it comes to dietary supplements.” Eli Lilly & Co. v.
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`Natural Answers, 1110., 233 F.3d 456, 464 (7th Cir. 2000). Moreover, the ability to purchase the
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`2 Throughout his argument about the supposed dissimilarities of his and Threshold’s marks,
`Applicant extols the virtues of the Anti-Dissection Rule, which provides that marks must be
`considered as a whole. Motion at 7, 12. As Threshold has demonstrated, considering the
`appearance, sound, and meaning of the marks as a whole, the marks are very similar.
`Accordingly, Applicant’s arguments comparing portions of the marks, such as TREASURES and
`PLANETARY are misplaced and unpersuasive. Motion at 13.
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`products on the Internet further adds to the potential for confusion, because consumers can
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`navigate “amongst web sites [with] practically no efforts whatsoever.” G0T0.c0m v. Walt Disney
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`Company, 202 F.3d 1199 (9th Cir. 2000).
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`On the other hand, a district court has found that purchasers of dietary supplements at
`health and natural food stores are likely to exercise a heightened degree of care. See Hero
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`Nutritionals LLC v. Nutraceutical Corp., 2013 WL 4480624, at *7 (C.D. Cal. Aug. 16, 2013). In
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`that case, the court relied on the fact that consumers purchasing dietary and nutritional
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`supplements are more focused on the quality and efficacy of goods. Id. However, a report by
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`the New York State Task Force on Life & the Law undermines this finding because it notes that
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`consumers purchase dietary supplements for a wide variety of reasons. (Exhibit L at 21-2 7).
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`The variety of reasons—such as improving health and wellness, improving athletic performance,
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`and avoiding pharmaceutical—indicates that a variety of different types of consumers purchase
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`supplements, and those different types of consumers will have a range of sophistication in their
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`shopping patterns. (Id.).
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`Applicant has provided no evidence that the average consumer of will be a sophisticated
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`consumer such that this factor should weigh in Applicant’s favor. In fact, there is evidence to the
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`contrary and thus disputed issues of fact as to this factor.
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`N
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`3.
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`Lack ofActual Confusion.
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`As Applicant states, Threshold is currently unaware of instances of actual confusion.
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`Motion at 16. Applicant is incorrect, however, when he concludes that this fact supports the
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`entry of summary judgment.
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`First, instances of actual confusion are not necessary to prove likelihood of confusion.
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`McCarthy §23:12. Moreover, in Threshold’s discovery response on which Applicant relies,
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`Threshold explained that “discovery is currently underway” and that instances of actual
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`13
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`34452251V2
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`confusion could be discovered from third-parties, such as retailers. See Motion, Exh. 6, at 3-4.
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`Threshold products are sold through a variety of retailers and through the Internet. (Exhibit F at
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`7). Accordingly, if a consumer had a complaint about a Threshold product or were to return a
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`product because of brand confusion, the retailer would likely have evidence of that. For this
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`reason, and contrary to Applicant’s assertion, the parties cannot yet conclude whether instances
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`of actual confusion have occurred.
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`4.
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`Number and Nature ofSimilar Marks in Use on Similar Goods.
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`For the final factor identified by Applicant, he cites to a variety of other marks registered
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`with the USPTO and argues that, for a variety of reasons, these marks support a finding of no
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`likelihood of confusion. Applicant, however, misunderstands relevant law and, in fact, makes
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`arguments that support Threshold.
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`First, he argues that “widespread use” of the consecutive letters PLAN and the words
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`PLANT, PLANET, and FORMULA in International Class 5 demonstrates Threshold’s “mark
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`should be considered a weak mark and Applicant’s mark should be considered a strong mark.”
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`Motion at 18. This argument is nonsensical. Applicant’s mark contains the consecutive letters
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`PLAN and the word PLANT, so is therefore difficult to understand why, if Threshold’s mark
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`should be considered weak, Applicant’s mark would not also be considered weak. Moreover,
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`Applicant is conspicuously silent about other features of Threshold’s marks, such as
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`PLANETARY and HERBALS.
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`Second, Applicant’s evidence of other registrations consist solely of the TSDR
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`registration records. See Motion, Exhs. 10-30. He submits no evidence that any of these
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`registrations are commercially in use; registrations are not evidence that the marks shown therein
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`are in use or that the public is familiar with them. In re Albert Trostel & Sons C0., 29
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`U.S.P.Q.2d 1783 (TTAB 1993). Accordingly, the 30 registrations submitted into evidence by
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`34452251v2
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`V
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`14
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`
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`Applicant cannot demonstrate that other marks have coexisted with Threshold’s or that the
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`market is saturated by these marks.
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`Finally, many of the marks cited by Applicant——unlil<e Applicant’s mark——are readily
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`distinguishable from Threshold’s mark. For example, a vast majority have the word PLANT but
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`none of them have the term HERB or HERBAL. Motion at 19-22. In addition, several of the
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`marks are distinguishable based on the fact that they’re composed of foreign Words, such as
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`PLAN 30 DIAS, PLANTE SYSTEM COMPLEXE VEGETAL P.E.S., and PLANTA MEDICA.
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`CONCLUSION
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`Applicant has moved for summary judgment relying on four du Pom‘ factors. Because
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`genuine issues of material fact exist with respect to each element, and because the remaining
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`factors Weigh in favor of Threshold, Applicant’s motion for summary judgment should be
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`denied.
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`February 3, 2014
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`Respectfully submitted,
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`THRESHOLD ENTERPRISES, LTD.
`
`By:
`
`/s/
`
`Jeremy M. McLaughlin
`ARNOLD & PORTER LLP
`
`Three Embarcadero Center, 10th Floor
`
`San Francisco, CA 94111
`415.471.3100 (phone)
`415.471.3400 (fax)
`
`Attorneys for Opposer
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`3445225 1V2
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`15
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true and complete copy of the foregoing OPPOSER’S
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`OPPOSITION TO APPLICANT’S MOTION FOR SUMMARY JUDGMENT [SEALED] and
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`DECLARATION OF BARRY SUGARMAN IN SUPPORT OF OPPOSER’S OPPOSITION TO
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`APPLICANTS MOTION FOR SUMMARY JUDGMENT has been served on Applicant Robert
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`Campbell, by OVERNIGHT DELIVERY by Federal Express in a sealed envelope with all fees
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`prepaid at the address noted below on February 3, 2014 to:
`
`Kuscha Hatami
`
`LegalForce RAPC Worldwide
`1580 W. El Camino Real Suite 13
`
`Mountain View, CA 94040
`
`Attorney for Applicant
`
`
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`3445225 lv2
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`
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`

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`AHBHXE
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`
`

`
`Exhibit A
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`Filed Under Seal
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`
`

`
`EXHIBIT B
`
`
`
`

`
`
`
`
`?’C€‘i
`
`
`RAF’<j: %f*«f<;;>jlciwl<::‘le
`
`1580 W. El Comino Real, Suite 13, Mountain View, CA. 94040
`
`Telephone: 650-390-6429 - Kuschc1@|e oI|force|c1w.com
`
`OCTOBER 22, 2013
`
`VIA E—MAIL
`
`Ieremy M. McLaughlin
`Arnold Porter LLP
`
`10*“ Floor
`
`Three Embarcadero Center
`
`San Francisco, CA. 84111-4024
`
`RE:
`
`Response to Opposer’s Meet and Confer dated August 2, 2013 — Plant Herbal
`Treasures trademark opposition
`
`Dear jeremy,
`
`This letter is in response to the above Meet and Confer.
`executed copy of the protective order submitted by you.
`
`I have also attached an
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`DOCUMENT REQUESTS
`
`Request No. 15 -- Need to submit his spread sheets
`
`Subject to and without waiving the General and Specific Objections in
`APPLICANT’S OBIECTIONS AND RESPONSES TO OPPOSER'S FIRST SET OF
`DOCUMENT REQUESTS TO APPLICANT NOS. 1 — 26 served on counsel for Threshold
`Enterprises, Ltd., on May 22, 2013, and to the extent this request can be reasonably
`interpreted, Applicant directs Opposer to applicant's website
`wvvvvplantherbaltreasures.com. Applicant further responds that it will, upon entry
`of a suitable protective order, produce relevant, non-privileged documents, to the
`extent any exist, in its possession, custody, or control that are responsive-to this
`request.
`
`Request No.24
`
`Subject to and without waiving the General and Specific Objections in APPLICANT’S
`OBIECTIONS AND RESPONSES TO OPPOSER'S FIRST SET OF DOCUMENT REQUESTS
`
`TO APPLICANT NOS. 1 - 26 served on counsel for Threshold Enterprises, Ltd., on
`
`Ex.B-1
`
`

`
`
`
`RAPC \./X./<::»s’i<:iwl»:.ie
`
`May 22, 2013, and the following specific objections, and to the extent this request
`can be reasonably interpreted, Applicant responds that he further objects because
`the documents requested are equally available to counsel and that it is unduly
`burdensome and harassing. All communications responsive to the request were
`either made between Opposer's Counsel and Applicant’s Counsel, Opposer's
`representative and Applicant, or between Applicant and Applicant’s Counsel. We
`have properly objected to this interrogatory. Furthermore, any documents and/or
`communication between Opposer or Opposer's Counsel and Applicant are in
`Opposer’s possession.
`
`Interrogatory N o. 1
`
`Subject to and without waiving the General and Specific Objections in APPLICANT’S
`OBIECTIONS AND RESPONSES TO OPPOSER’S FIRST SET OF INTERROGATORIES TO
`APPLICANT NOS. 1 — 21 served on counsel for Threshold Enterprises, Ltd., on May
`22, 2013, and to the extent this request can be reasonably interpreted, Applicant
`responds at least as early as August 11, 201 1. Applicant further directs Opposer to
`Applicant’s application available on TSDR.
`
`Interrogatory No. 2
`
`Subject to and without waiving the General and Specific Objections in APPLICANT’S
`OBIECTIONS AND RESPONSES TO OPPOSER’S FIRST SET OF INTERROGATORIES TO
`APPLICANT NOS. 1 - 21 served on counsel for Threshold Enterprises, Ltd., on May
`22, 2013, and to the extent this request can be reasonably interpreted, Applicant
`responds: Non other than what can be found on applicant's website at
`www.plantherbaltreasures.com and U.S. Application Serial No. 85/396,136.
`
`Interro ato No.3 c
`
`Subject to and without waiving the General and Specific Objections in APPLICANT’S
`OBIECTIONS AND RESPONSES TO OPPOSER’S FIRST SET OF INTERROGATORIES TO
`APPLICANT NOS. 1 — 21 served on counsel for Threshold Enterprises, Ltd., on May
`22, 2013, and to the extent this request can be reasonably interpreted, Applicant
`responds: Our customers are consumers with access to the internet and who are
`interested in our products. These consumers will visit Applicant’s website at
`www.plantherbaltreasures.com. Applicant further responds that Applicant is a
`Doctor of Oriental Medicine who also provides his products to patien