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
`ESTTA646138
`ESTTA Tracking number:
`12/19/2014
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91209168
`Plaintiff
`Standard Homeopathic Company
`PATRICK J GALLAGHER
`FULBRIGHT & JAWORSKI LLP
`2100 IDS CENTER, 80 SOUTH EIGHTH STREET
`MINNEAPOLIS, MN 55402 2112
`UNITED STATES
`patrick.gallagher@nortonrosefulbright.com, mar-
`tin.rosenfeld@nortonrosefulbright.com, aoipdocket@nortonrosefulbright.com
`Motion for Summary Judgment
`Patrick J. Gallagher
`patrick.gallagher@nortonrosefulbright.com,
`shelby.bruce@nortonrosefulbright.com, jen.rezac@nortonrosefulbright.com,
`aoipdocket@nortonrosefulbright.com
`/patrick j. gallagher/
`12/19/2014
`MOTION.pdf(1638305 bytes )
`MSJ Exhibit A.pdf(183364 bytes )
`MSJ Exhibit B.pdf(90497 bytes )
`MSJ Exhibit C.pdf(102109 bytes )
`MSJ Exhibit D.pdf(2893588 bytes )
`MSJ Exhibit E.pdf(387060 bytes )
`MSJ Exhibit F.pdf(85229 bytes )
`MSJ Exhibit G.pdf(3310266 bytes )
`MSJ Exhibit H.pdf(1634891 bytes )
`MSJ Exhibit I.pdf(2016774 bytes )
`Thao Le Decl.pdf(671921 bytes )
`Le Decl Exhibits A-B.pdf(1746179 bytes )
`Le Decl Exhibit C.pdf(4279697 bytes )
`Le Decl Exhibit C1.pdf(4475264 bytes )
`Le Decl Exhibit C2.pdf(4103342 bytes )
`Le Decl Exhibit D.pdf(1513527 bytes )
`Le Decl Exhibit E.pdf(4667545 bytes )
`Le Decl Exhibit E1.pdf(4585455 bytes )
`Le Decl Exhibits F-I.pdf(1975556 bytes )
`Le Decl Exhibits J.pdf(4697994 bytes )
`Le Decl Exhibits J1.pdf(4643753 bytes )
`Le Decl Exhibit K.pdf(2326971 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`STANDARD HOMEOPATHIC
`COMPANY,INC.,
`
`Opposer,
`
`v.
`
`MINTECH,INC.,
`
`Applicant.
`
`Opposition No. 91209168
`Application Serial No. 85/377,740
`Mark: CALM
`
`OPPOSER’S MOTION FOR SUMMARY JUDGMENT
`
`Pursuant to Federal Rule of Civil Procedure 56 and TBMP § 528, Standard Homeopathic
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`Company,Inc. (hereinafter “Opposer’) files this Motion for Summary Judgment,as follows:
`
`I.
`
`SUMMARY OF MOTION
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`Applicant, MinTech,
`
`Inc.
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`(hereinafter “Applicant”) seeks to register “CALM” as a
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`standard character mark for: “neutraceuticals, namely, vitamin and mineral supplement enhanced
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`drinks; nutritional beverages, namely, vitamin and mineral supplement enhanced drinks; dietary
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`supplemental drinks in the nature of vitamin and mineral beverages,” in International Class 5.
`
`Since Opposer launched products in 1960 under the names CALMS and CALMS FORTE,
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`Opposer has spent a significant amountof time, energy and resources over the course of several
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`decades to obtain and maintain its well-known and valuable CALMS and CALMS FORTE
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`marks and the products sold under those marks.
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`Applicant allegedly intends to sell neutraceuticals and vitamin and mineral supplement
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`enhanced drinks - under the confusingly similar designation “CALM.” However, Applicant is
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`unable to provide one single piece of objective evidence to show that it possessed the requisite
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`bona fide intent to use “CALM”at the time it filed Application Serial No. 85/377,740 (the
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`“Application”) on July 21, 2011. Additionally, the tactic that Applicant attempts in order to
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`purportedly distinguish its “CALM”designation from Opposer’s CALMS marks—i.e., removal
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`the letter “S” from Opposer’s CALMS marks—hasbeen consistently rejected by the Trademark
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`Trial and Appeal Board (the “Trademark Board”) and federal courts in numerousoccasions.
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`Furthermore, every relevant
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`likelihood of confusion factor in DuPont supports the
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`conclusion that registration and use of “CALM” would create a likelihood of confusion with
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`Opposer’s CALMS marks as a matter of law. As explained in further detail herein,
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`the
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`Trademark Board should grant summary judgment in Opposer’s favor on the groundsthat:
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`1)
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`Applicant did not have the requisite bona fide intent to use “CALM”in commerceat the time the
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`Application wasfiled, and 2) registration of Applicant’s alleged “CALM” markis likely to cause
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`consumer confusion with Opposer’s CALMS marks.
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`II.
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`SUMMARY JUDGMENT EVIDENCE
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`In support of its Motion for Summary Judgment, Opposer offers the following summary
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`judgmentevidence, along with the pleadings and other records onfile at the time of the hearing:
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`e Declaration of Thao Le and Exhibits thereto;
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`Declaration of Katie Solberg and Exhibits thereto;
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`e Copy of TESSprintout for U.S. Application Serial No. 85/377,740 for CALM in Class 5,
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`attached hereto as Exhibit A;
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`e Copies of Certificates of Registration Nos. 2,090,807, 2,098,928, and 3,508,180, attached
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`hereto as Exhibit B;
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`e Excerpts from Transcript of Deposition of Steven Nelson Lederman taken on March 18,
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`2014 and March 19, 2014, attached hereto as Exhibit C;
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`e Applicant’s Response to Opposer’s First Set of Requests for Production of Documents,
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`attached hereto as Exhibit D;
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`e Applicant’s Response to Opposer’s First Set of Interrogatories, attached as Exhibit E;
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`e Excerpts from Transcript of Stephen Lederman of MinTech, Inc. pursuant
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`to Rule
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`30(b)(6) taken on March 19, 2014, attached hereto as Exhibit F;
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`e A list of several third-party U.S. registrations, which cover both Applicant's alleged
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`goods and goods covered by Opposer’s U.S. registrations for its CALMS marks, along
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`with true and correct copies of printouts from the USPTO’s TESS database for each
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`third-party registration, attached hereto as Exhibit G;
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`e True and correct copies of printouts from Amazon.com showingonline offerings for sale
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`of CALMSProducts, attached hereto as Exhibit H.
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`e True and correct copies of printouts from Amazon.com showingonline offerings for sale
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`of vitamin and mineral supplement enhance drinks on the market that appear to be similar
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`to Applicant’s “CALM”product, attached hereto as ExhibitI.
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`MEMORANDUMIN SUPPORT OF MOTION
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`Il.
`
`FACTS
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`MinTech,Inc. (“Applicant”) filed U.S. Trademark Application Serial No. 85/377,740 on
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`July 21, 2011 under section 1(b) of the Lanham Act(the “Application”),
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`(See Mem. Ex. A.)
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`Applicant seeks to register “CALM”in connection with “neutraceuticals, namely, vitamin and
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`mineral supplement enhanced drinks; nutritional beverages, namely, vitamin and mineral
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`supplement enhanced drinks; dietary supplemental drinks in the nature of vitamin and mineral
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`beverages” in Class 5.
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`(Jd) The Application was published for opposition on November 20,
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`2012. Opposer timely filed the subject opposition based on its belief that it would be damaged
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`by registration of the Application.
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`A.
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`History of Opposer’s CALMS Marks and CALMSProducts
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`Opposer has adopted and continuously used the name and mark CALMSin connection
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`with medication for the temporary symptomatic treatment and relief of simple nervous tension
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`and occasional sleeplessness since at least as early as 1960.
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`((Declaration of Thao Le { 3.) (“Le
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`Decl.”)). Additionally, Opposer has adopted and continuously used the name and mark CALMS
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`FORTEin connection with medication for the temporary symptomatic treatment andrelief of
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`simple nervous tension and occasional sleeplessness since at least as early as 1960.
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`(Le Decl. {
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`4.) Finally, Opposer adopted the name and mark CALMS FORTE 4 KIDSin 2005 and has used
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`that name
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`and mark homeopathic medication for
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`symptomatic relief of
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`restlessness,
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`sleeplessness, causeless crying, and sleeplessness from travel.
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`(Le Decl. § 5.)
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`(The names and
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`marks CALMS, CALMS FORTE and CALMS FORTE 4 KIDSarecollectively referred to
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`hereinafter as the “CALMS Marks”and the products offered and sold under the CALMS Marks
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`are collectively referred to hereinafter as the “CALMS Products”) (Opposer recently changed the
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`name of the CALMS FORTE4 KIDS productto “Hyland’s 4 Kids Calm ’n Restful.” (/d.))
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`Opposer’s CALMSProducts are available nationwide in a wide range of retail stores,
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`including but not limited to:
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`i) large national discountretail stores (such as Target and Walmart);
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`ii) national, regional and local health, vitamin, and supplement stores (such as The Vitamin
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`Shoppe and General Nutritional Center stores); iii) national, regional and local grocery store
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`chains (such as Whole Foods and Sprouts); iv) regional and local food co-operatives and health
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`food stores; v) national drug retailing chains and regional and local pharmacies (such as
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`Walgreens, CVS and Rite Aid; and vi) health and wellness clinics. (Le Decl.
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`6 & Le Decl. Ex.
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`A.)
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`In addition, Opposer’s CALMSProducts are sold online at a wide variety ofretailers,
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`including but not limited to: Amazon.com, 1-800homeopathy.com, Drugstore.com, Puritan's
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`Pride, Natural Healthy Concepts, Healthy Planet Shopping, iHerb.com, 4AllVitamins.com, My
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`Health
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`Store,
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`Family OTC, DrugSupplyStore.com, Vitacost.com, NutriSaver.com,
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`SupplementWarehouse.com, Swanson Health Products, VitaminLife and VitaSprings.com.
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`(id.
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`17.)
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`Over the lifetime of the of CALMS Marks and the CALMS Products, Opposer has
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`advertised the CALMS Products through a wide variety of means,
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`including through the
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`following means: a) print advertisements such as newspaper advertisements, including, but not
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`limited to, inserts in Sunday newspapers; magazine advertisements,including, but not limited to
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`advertisements in the following magazines: Allure, Elle, InStyle, Remedies for Life, Taste for
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`Life, Changes, Family Circle, Ladies’ Home Journal, Reader's Digest, Redbook, Weight
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`Watchers, and Woman’s Day; b) promotional coupons; c) Internet websites, including, but not
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`limited to, www.hylands.com and www.calmsforte.com; d) social media platforms, including,
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`but not limited to Facebook, Twitter, Pinterest, Instagram, and YouTube; e) promotional offers
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`and giveaways; and f) product sampling programs (such as Another Mother Runner house
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`parties). (/d. Ff] 9-15 & Exs. C-H.)
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`Concerning Opposer’s marketing and promotion of CALMS Products via YouTube,
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`Opposer
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`has
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`its
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`own
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`channel
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`on YouTube,
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`at:
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`http://www.youtube.com/user/
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`HylandsHomeopathic).
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`(/d. J 14.) On that channel, Opposer currently has posted at least six
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`videos that contain customer testimonials, product details and promotional information regarding
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`the CALMSProducts.
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`(/d.) Accordingly to information posted on YouTube, several of these
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`videos have been viewed over 100,000 times, with one of the videos having been viewed over
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`200,000 times. (/d.)
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`Further, over the lifetime of the CALMS Marks and the CALMS Products, Opposer has
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`promoted and advertised the CALMSProducts at numerous trade showsacross the United States
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`including annually at:
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`Natural Products Expos, ECRM (Efficient Collaborative Retail
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`Marketing) meetings, and the NACDS(National Association of Chain Drug Stores) Total Store
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`Expo.
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`(/d. § 16.)
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`Over each of the past six fiscal years (including FY2014 year-to-date), Opposer has
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`generated more than $3 million in annual sales revenue in connection with its sale of CALMS
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`Products in the United States. (id J 17.) Over each of the past six fiscal years (including
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`FY2014 year-to-date), Opposer has sold more than 900,000 units annually of CALMSProducts
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`in the United States.
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`(Jd. 4 18.) Overthe pastthe past six fiscal years (including FY2014 year-
`
`to-date), Opposer has spent over $600,000 in marketing, advertising and promoting the CALMS
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`Marks and the CALMSProductsin the U.S. (/d. 719.)
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`In addition to its CALMS Products and a variety of other products, Opposer also offers
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`and sells a product named “Hyland’s Bioplasma Sport,” which is in a powder-form with the
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`intended use of restoring a natural mineral loss through activity. (/d | 22.) This powder product
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`may be poured onto the tongue or it may be dissolved into an 8 oz. glass or bottle of water and
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`thus consumedas a drink. (/d.)
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`Opposer has continuously maintained its registrations for the CALMS Marks. All of
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`Opposer’s registrations for the CALMS Marks have been plead in the Notice of Opposition (true
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`and correct copies of the Certificates of Registration Nos. 2,090,807, 2,098,928, and 3,508,180
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`are attached hereto as Exhibit B) (“Mem. Ex. B”). Opposer’s actual and constructive priority
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`dates for each pleaded registration precede Applicant’s filing date, and priority is not an issue.
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`The CALMS Marks and the CALM Products have become well known and highly
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`regarded through Opposer’s tremendous investment of time, energy and money of extensive
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`advertising and promotion of the CALMS Marks and the CALMSProducts.
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`B.
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`Applicant and the Application for the “CALM”Designation
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`Applicant and its “CALM”designation stand in stark contrast. Applicant is a Nevada
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`corporation, with one shareholder, Mr. Steven Lederman.
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`(Deposition of Steven Lederman of
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`MinTech,Inc. pursuant to Rule 30(b)(6) at 8; a true and correct copy of excerpts of the transcript
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`of Deposition of Steven Lederman of MinTech, Inc. pursuant to Rule 30(b)(6) taken on March
`19, 2014, attached hereto as Exhibit F) (“Mem. Ex. F”). Applicant has not yet used “CALM”as
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`a trademark nor produced any goods in connection with “CALM.”
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`(id. at 8-9.) Rather,
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`Applicant merely claims that it only has “good ideas and high prospects of anticipated success.”
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`(id. at 9.) Applicant claims to have no knowledge regarding its own intended trade channels,
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`advertising plans, anticipated costs and income, or a plan or strategy for the alleged CALM
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`product in the United States.
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`(/d. at 11-13.) Applicant claims that it first became aware of
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`Opposer’s CALMS Marks when the Opposition was filed.
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`(Deposition of Steven Nelson
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`Lederman taken on March 18, 2014 and March 19, 2014; a true and correct copy of excerpts of
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`the transcript of Deposition of Steven Nelson Lederman taken on March 18, 2014 and March 19,
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`2014, attached hereto as Exhibit C) (“Mem.Ex. C’”).
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`IV.
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`GROUNDS FOR SUMMARY JUDGMENT
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`Opposerasserts that registration of the Application should be denied as a matter of law
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`on grounds that Applicant did not possess the requisite bona fide intent to use “CALM”in
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`commerce at the time the Application was filed and ofa likelihood of confusion of the CALMS
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`Marks. These bases are addressed in turn below.
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`A.
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`Opposer Has Standing to Oppose Applicant’s Application for “CALM”
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`Opposer’s evidence of ownership and use of its CALMS Marks and CALMSProducts
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`show that Opposer is not “a mere intermeddler” but instead establish that Opposer has proper
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`standing. 7-Eleven, Inc. v. Wechsler, 83 U.S.P.Q.2d 1715, 1719 (T.T.A.B. 2007).
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`B.
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`Applicant’s Lack of Required Bona Fide Intent to Use “CALM”at the Timeit Filed
`the Application
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`This opposition should be sustained because Applicant lacked the requisite bona fide
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`intent to use “CALM” under Section 1(b) of the Lanham Act, 15 U.S.C. 1051(b) at the timeit
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`filed the Application. Determination of whether an applicant has the required bona fide intent to
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`use a mark in commerce must be based upon objective evidence. Commodore Elec. Ltd. v. CBM
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`Kabushiki Kaisha, 26 U.S.P.Q.2d 1503, 1507 (T.T.A.B. 1993). The Trademark Board has stated
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`that the requirement that an applicant must have a bonafide intent to use the mark in commerce
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`must be “read in conjunction with the revised definition of ‘use in commerce’ in Section 45 of
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`the Trademark Act, which the Trademark Law Revision Act of 1988 amended to require that
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`such use be ‘in the ordinary course of trade, and not made merely to reserve a right in the
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`mark.””Id.
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`Because the determination of whether Applicant had the required bonafide intent to use
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`the mark at the time the Application wasfiled is to be based on objective evidence of suchintent,
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`“(A]pplicant’s mere statement of subjective intention, without more, would be insufficient to
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`establish applicant’s bona fide intention to use the mark in commerce.” Lane Lid. v. Jackson
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`Int'l Trading Co., 33 U.S.P.Q.2d 1351, 1355 (T.T.A.B. 1994); see also L.C. Licensing Inc. v.
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`Berman, 86 U.S.P.Q.2d 1883 (T.T.A.B. 2008).
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`In the present case, Opposer has metits burden
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`to show that Applicant lacked the required bona fide intent to use “CALM”at the time the
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`Application wasfiled.
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`The present case lacks the requisite objective evidence to show that Applicant possessed
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`the required bonafide intention to use “CALM”in commerceat the timeit filed the Application
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`in July 2011. The Board hasstated:
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`[A]bsent other facts which adequately explain or outweigh the failure of an applicant to
`have any documents supportive of or bearing upon its claimed intent to use its mark in
`commerce, the absence of documentary evidence on the part of an applicant regarding
`such intentis sufficient to prove that the applicant lacks a bona fide intent to use the mark
`in commerce.
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`Commodore, 26 U.S.P.Q.2d at 1507. See also Honda Motor Co. v. Winkelman, 90 U.S.P.Q.2d
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`1660 (T.T.A.B. 2009) (granting summary judgment based on lack of bona fide intent to use
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`where no documentary evidence supporting such intent was produced in discovery); Research in
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`Motion Ltd. v. NBOR Corp., 92 U.S.P.Q.2d 1926 (T.T.A.B. 2009) (opposition sustained where
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`applicant had no documentation or plans regarding its bona fide intent to use its mark in
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`commerce); Boston Red Sox Baseball Club LP v. Sherman, 88 U.S.P.Q.2d 1581 (T.T.A.B. 2008)
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`(opposition sustained where applicant failed to provide documentary evidence ofintent to use
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`and had not submitted evidence to refute claim it
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`lacked bona fide intent to use mark in
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`commerce).
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`Here, despite Applicant’s opportunity to provide documentary evidence to Opposer
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`during the discovery phase of this opposition proceeding, Applicant has produced absolutely no
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`objective evidence supporting its alleged bona fide intent to use the “CALM”in commerce as of
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`the filing of the Application on July 21, 2011.
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`In September 2013, Opposer served Applicant
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`with document requests relating to Applicant’s intended uses of “CALM”.
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`In response,
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`Applicantfailed to even produce one documentregardingorrelating to:
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`e Applicant’sselection and adoption of “CALM”;
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`Application Serial No. 85/377,740 or any other application or registration owned
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`by Applicant for any mark that includes “CALM”;
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`Trademark search reports, studies, or investigations relating or referring to
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`“CALM”;
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`Samples of actual or intended uses of “CALM”created prior to the filing date of
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`the Application;
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`Documents relating to or constituting any agreement, assignment, consent,
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`authorization, permission or license made between Applicant and any otherentity,
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`or made on Applicant’s behalf to use “CALM”,
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`Samples of each of Applicant’s goods sold, offered for sale or intended to be
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`offered for sale in connection with “CALM”;
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`Surveys conducted by or on Applicant’s behalf relating to use of “CALM”
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`Surveys, studies, and/or research relating to “CALM”;
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`Business or marketing plans relating to “CALM”and/or the goods or services
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`Applicantsells or plansto sell using “CALM”;
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`All classes of persons to whom Applicant offers, has offered, or intends to offer
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`its goods or services using “CALM”;
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`Applicant’s actual and anticipated advertising and promotional expenditures for
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`goodsorservices offered using “CALM”,
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`Copiesof television, radio, electronic, or printed advertisements run by Applicant
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`for “CALM”,
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`Applicant’s actual and anticipated sales of goods or services in the United States
`
`or elsewhere using “CALM”;
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`The geographic area in which Applicant uses or plans to use “CALM”and the
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`length of time during which each good orservice offered or plannedto be offered
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`using “CALM”hasbeen or will be marketed in eachterritory;
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`The date(s) of which Applicant’s first use and date(s) Applicant’s first use in
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`commerce of “CALM”orthe intended date offirst use and first use in commerce;
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`Anyandall changes made to “CALM”and to show how Applicant has used those
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`marks, or intends to use those marks,since their first actual or anticipated uses on
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`or in connection with Applicant’s goods or services,
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`including when those
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`changes occurred and the reasonsfor the changes;
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`Documents
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`that disclose the identity of representatives, agents, or other
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`distribution mechanisms through which goods or services using “CALM”are
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`sold, have been offered or sold, or are intended to be offered or sold to
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`consumers;
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`Any investigation conducted by Applicant, or on Applicant’s behalf, relating to
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`recognition of, or reaction to, any likelihood of confusion between Opposer’s
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`Marks and “CALM”;or
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`Applicant’s decision to seek federal
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`registration of “CALM”,
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`including
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`Applicant’s reasons for seeking federal registration of “CALM”, the process that
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`Applicant followed in reaching its decision, and the identity of the person(s) who
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`madethe decision.
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`(See Applicant’s Responses to Opposer’s First Set of Requests for Production of Documents,
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`Request Nos. 1-3, 5-17, 19, 25-26, 34; a true and correct copy of Applicant’s Responses to
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`Opposer’s First Set of Requests for Production of Documents, Request Nos. 1-3, 5-17, 19, 25-26,
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`34 is attached hereto as Exhibit D) (“Mem. Ex. D”).
`
`In addition to Applicant’s failure to produce a single document or other evidence
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`regarding Applicant’s intent to use “CALM”at the time of the filing date of the Application,
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`Applicant made several statements and admissions which evidence a lack of bona fide intentto
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`use “CALM”during Applicant’s 30(b)(6) deposition held on March 19, 2014 and at Steven
`
`Lederman’s deposition in his personal capacity on March 18, 2014 and March 19, 2014.
`
`In
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`Applicant’s 30(b)(6) deposition, Applicant admitted that it has no knowledge regarding its own
`
`intended trade channels, advertising plans, or anticipated costs and income in connection with
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`“CALM.” (Mem.Ex. F at 11-13.) Furthermore, Applicant admitted that it had not yet sold any
`
`product offered in connection with “CALM”and had not ever sat down and mapped out a plan
`
`and strategies specifically for the “CALM”product.
`
`(Mem.Ex. F at 13 & 26.)
`
`Opposer took the deposition of Steven Nelson Lederman in his personal capacity and in
`
`his capacity as President of Applicant on March 18-19, 2014. Additionally, Applicant’s
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`president and sole proprietor, Steven Lederman,testified in his deposition that he has no
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`documents that demonstrate that Applicant had a bona fide intent to use Applicant’s Mark in
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`commerce in connection with the goods set forth in the Application as ofthe filing date, when
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`Mr. Lederman signed under the penalty of perjury that Applicant did have such a bonafide
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`intent.
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`(Mem. Ex. C at 62-63.) Further, Mr. Lederman made a numberofother admissions
`
`which demonstrate that Applicant did not have the legally-required bona fide intention to use
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`Applicant’s Mark in commerce when Mr. Lederman signed the Application. For example, Mr.
`
`Lederman testified that to him, “Intent to Use” merely meant that once he “gets the mark
`
`registered” he’s going to “start selling it.” (/d. at 63.) Moreover, Mr. Lederman testified that he
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`had just come across the mark on the Internet, and when he “realized it was, in theory, available,
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`[he] jumped onit.” (/d. at 70.) And that his “best guess” regarding whyhefiled the Application
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`on July 21, 2011 was because he realized that there was no way he was going to be able to buy
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`the trademark “Calm” from Big Brands.
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`(/d. at 72.) Additionally, Mr. Lederman admitted that
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`he had done no analysis (of any kind) regarding the actual and anticipated costs and income
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`associated with using “CALM.” ( /d. at 213.) Lastly, Mr. Lederman confirmed that Applicant
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`had no documents responsive to the document requests listed above in this Section.
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`(Jd. at 229-
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`230.)
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`Furthermore, in its responses to Opposer’s Interrogatories, Applicant itself indicated that
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`it merely “sought to acquire rights in ‘CALM’prior to investing in the production of the applied
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`for goods.” (Mem. Ex. E at Interrog. Resp. No. 2 (emphasis added).)
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`In addition, Applicant
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`indicated that it had “not yet performed the in-depth analysis and market research required” to
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`answer the question of what its anticipated costs and income associated with use of “CALM”
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`would be. (/d. at Interrog. Resp. No.8.)
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`As reflected in Applicant’s responses to Opposer’s discovery requests and Applicant’s
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`testimony at its depositions, Applicant did not have the requisite bona fide intention to use
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`“CALM”in commerceat the time of the filing date of its Application. Opposer has therefore
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`established, by a preponderance of the evidence, that Applicant lacked the requisite bonafide
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`intent to use “CALM” in commerceontheidentified goods. Accordingly, Opposeris entitled to
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`summary judgment on the ground that Applicant did not have the requisite bona fide intention
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`and the Application therefore should be refused as a matter of law.
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`Cc,
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`Likelihood of Confusion
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`A party moving for summary judgment on likelihood of confusion “must establish that
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`there is no genuine dispute that (1) it has standing to maintain this proceeding; (2) that it is the
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`§3592300.4
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`prior user of its pleaded mark; and (3) that contemporaneoususe ofthe parties’ respective marks
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`on their respective goods would belikely to cause confusion, mistake or to deceive consumers.”
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`Fram Trak Industries, Inc. v. WireTracks LLC, 77 U.S.P.Q.2d 2000, 2004 (T.T.A.B. 2006)
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`(citing Hornblower & Weeks, Inc. v. Hornblower & Weeks, Inc., 60 U.S.P.Q.2d 1733, 1735
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`(T.T.A.B. 2001)).
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`1.
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`Priority
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`The Application wasfiled as an intent to use application on July 21, 2011. The first use
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`date, filing date, and registration date of each of Opposer’s pleaded registrations all precede
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`Applicant’s filing date.
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`(See Mem. Exs. A & B.) Therefore, there is no genuine dispute of
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`material fact that Opposerhaspriority of use for its pleaded registrations. See King Candy Co. v.
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`Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 U.S.P.Q. 108, 110 (C.C.P.A. 1974).
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`2.
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`Likelihood of Confusion
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`In determining whetherthereis a likelihood of confusion between two marks, the Board
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`considers the factors identified in Jn re E. 1 DuPont DeNemours & Co., 476 F.2d 1357, 113
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`U.S.P.Q. 563 (C.C.P.A. 1973). The DuPont factors are as follows:
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`(1) The similarity or dissimilarity of the marks in their entireties as to appearance,
`sound, connotation, and commercial impression.
`(2) The similarity or dissimilarity and nature of the goods or services as described
`in an application or registration or in connection with whicha prior markis in use.
`(3) The similarity or dissimilarity of established,
`likely-to-continue trade
`channels.
`(4) The conditions under which and buyers to whom sales are made, Le.
`"impulse" vs. careful, sophisticated purchasing.
`(5) The fameofthe prior mark(sales, advertising, length of use).
`(6) The numberandnatureof similar marksin use on similar goods.
`(7) The nature and extent of any actual confusion.
`(8) The length of time during and the conditions under which there has been
`concurrent use without evidence of actual confusion.
`(9) The variety of goods on which a markis or is not used (house mark,“family”
`mark, product mark).
`(10) The market interface between the applicant and the owner ofa prior mark.
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`53592300.4
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`(11) The extent to which applicant has a right to exclude others from use ofits
`mark on its goods.
`(12) The extent of potential confusion,i.e., whether de minimis or substantial.
`(13) Any other established fact probative ofthe effect of use.
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`Id. at 1361. Notall of the DuPont factors may be relevant or of equal weight in a given case, and
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`“any one of the factors may control a particular case.” Jn re Dixie Rests., Inc., 105 F.3d 1405,
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`1406-07, 41 U.S.P.Q.2d 1531, 1533 (Fed. Cir. 1997). As demonstrated by the analysis below,
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`every relevant du Pont factor favors Opposer and supports a finding that a likelihood of
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`confusion exists in this case.
`
`a.
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`The marks are identical or nearly identical and Applicant’s removal
`of the “S” from CALMSin its “CALM”designation does not make
`Applicant’s designation sufficiently distinct as to avoid a likelihood of
`confusion.
`
`Applicant’s “CALM”designation incorporates the entirety of Opposer’s CALMS mark.
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`Thus, the marks create similar commercial impressions and confusion is likely.
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`In addition,
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`“CALM”is virtually identical in sound, appearance, meaning and commercial impression to
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`Opposer’s CALMS mark.
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`In fact, “CALM”is simply the singular form of the word CALMS.
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`The Board recently stated that “i]t is well established that trademarks and/or service marks
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`consisting of the singular and plural forms of the same term are essentially the same mark.
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`Weider Publications, LLC v. D & D Beauty Care Company, LLC, 109 U.S.P.Q.2d 1347
`
`(T.T.A.B. 2014) (emphasis added); Wilson v. Delaunay, 245 F.2d 877, 878, 114 U.S.P.Q. 339,
`
`341 (C.C.P.A. 1957) (finding no material difference between the singular and plural forms of
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`ZOMBIE such that the marks were considered the same mark); Jn re Pix of Am. Inc., 225
`
`U.S.P.Q. 691, 692 (T.T.A.B. 1985) (noting that the pluralization of NEWPORTis “almosttotally
`
`insignificant” in terms oflikelihood of confusion amongpurchasers).
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`53592300.4
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`In fact, Applicant itself, admitted in its 30(b)(6) deposition, that it would object to an
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`entity that sold the same product and addedtheletter “S” and that the two marks were potentially
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`confusing.
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`(See Mem. Ex. F at 28-30.)
`
`In view of the foregoing, when compared in their
`
`entireties, Applicant’s “CALM” designation and Opposer’s CALMS mark are sufficiently
`
`similar in appearance, sound, connotation and commercial impression that, if used in connection
`
`with related goods, confusion would belikely to occur.
`
`Similarly, the designation “CALM”is confusingly similar to Opposer’s CALMS FORTE
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`mark. As discussed above, the mere removal of the “S” from the term “CALMS” in Opposer’s
`
`CALMSFORTEmarkis not enoughto distinguish the two marks.
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`Furthermore, the designation “CALM”is confusingly similar to the CALMS FORTE
`
`mark because the entire “CALM”designation is nearly identical to the first word of Opposer’s
`
`CALMS FORTE mark and thus has a similar commercial impression. The term “CALMS”is
`
`significant and the dominant element of Opposer’s CALMS FORTE mark becauseit is thefirst
`
`term in the mark and it is thus the word most likely to be remembered by consumers. See
`
`Century 21 Real Estate Corp. v. Century Life ofAm., 970 F.2d 874, 23 U.S.P.Q.2d 1698, 1700
`
`(Fed. Cir. 1992) (upon encountering the marks, consumers mustfirst notice the identical lead
`
`word); Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin, 396 F.3d 1369, 73 U.S.P.Q.2d 1689,
`
`1692 (Fed. Cir. 2005) (holding that “Veuve” is the most prominent part of the mark VEUVE
`
`CLICQUOTbecause “veuve”is the first word in the mark and the first word to appear on the
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`label).
`
`Although it is not proper to dissect a mark, if one feature of a mark is more significant
`
`than another feature, greater weight may be given to the dominant feature for purposes of
`
`determining likelihood of confusion. See Giant Food, Inc. v. Nation's Foodservice, Inc., 710
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`$3592300.4
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`-16-
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`F.2d 1565, 218 U.S.P.Q. 390 (Fed. Cir. 1983). Accordingly, when comparedin their entireties,
`
`more weight should be given to the “CALMS”elements of Opposer’s CALMS Marks when
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`compared to “CALM.” Jn re National Data Corp., 753 F.2d 1056, 224 U.S.P.Q. 749, 751 (Fed.
`
`Cir. 1985) (“It
`
`is a well-established principle that,
`
`in articulating reasons for reaching a
`
`conclusion on the issue of likelihood of confusion, there is nothing improperin stating that, for
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`rational reasons, more or less weight has been given to a particular feature of a mark, provided
`
`the ultimate conclusion rests on a consideration of the marksin their entireties.”)
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`Moreover,
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`the standard character claim in the application for “CALM” and the
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`registrations for Opposer’s CALMS Marks meansthat the applications and registrations are not
`
`limited to any particular depiction, and thus provides no meansfor distinguishing the marks. See
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`TMEP § 1207.01(c)(iii); In re Hester Indus., Inc., 231 U.S.P.Q. 881, 883, n.6 (T.T.A.B. 1986).
`
`When compared in their entireties, Applicant’s “CALM” designation and Opposer’s
`
`CALMS Marksare sufficiently similar in appearance, sound, connotation and commercial
`
`impression that, if used in connection with related goods, confusion would be likely to occur.
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`Accordingly, this du Pontfactor strongly favors a finding oflikelihood of confusion.
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`b.
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`The goodsareidentical or at least highly related.
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`Applicant allegedly intends to use “CALM” in connect