Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA667204
`ESTTA Tracking number:
`04/16/2015
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91214457
`Defendant
`Dermpharma, Inc.
`MICHAEL J SULLIVAN
`LAW OFFICE
`111 N MARKET ST STE 300
`SAN JOSE, CA 95113
`UNITED STATES
`msullivan@mikesullivanlaw.com
`Opposition/Response to Motion
`Michael J. Sullivan
`msullivan@mikesullivanlaw.com
`/Michael J. Sullivan/
`04/16/2015
`Opposition to Mot Sum Judg - Retinex.pdf(2443352 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Application Serial No. 85949729
`Mark: RETINEX
`Published in the Official Gazette of Oct. 29, 2013
`
`
`
`
`
`
`
`
`
`Valeant International Bermuda,
`
`Opposer,
`
`v.
`
`Dermpharma, Inc.,
`
` Opposition No.: 91214457
`
`Applicant.
`
`
`
`APPLICANT’S OPPOSITION TO
`OPPOSER’S MOTION FOR SUMMARY JUDGMENT
`
`
`Applicant Dermpharma, Inc. (“Applicant”) hereby opposes Opposer Valeant
`
`
`
`
`
`
`
`
`
`
`
`
`
`International Bermuda’s (“Opposer”) Motion for Summary Judgment filed March 20, 2015 (the
`
`“Motion”).
`
`
`
`I.
`
`
`
`OPPOSER’S MOTION SHOULD BE DENIED AS UNTIMELY
`
`The current proceeding was filed on January 7, 2014, and on January 14, 2014 the Board
`
`issued a notice setting trial dates, including setting the opening of the first testimony period for
`
`November 5, 2014. On December 5, 2014, the Board suspended the proceeding pending
`
`disposition of a motion for leave to amend filed by Opposer on October 31, 2014. This motion
`
`was decided by the Board on February 6, 2015, and the opening of the first testimony period was
`
`rescheduled for March 21, 2015. Opposer then filed its present Motion on March 20, 2015. Seraj
`
`
`
`1
`
`

`
`Decl., ¶¶ 2–3, 6–7.
`
`
`
`The Board has established that the filing of a motion for leave to amend the notice of
`
`opposition does not automatically suspend the proceedings or toll the movant’s obligation to
`
`respect any deadlines set by the Board. Sdt Inc. v. Patterson Dental Co., 30 USPQ2d 1707
`
`(TTAB 1994); see also Super Bakery Inc. v. Benedict, 96 USPQ2d 1134, 1135 (TTAB 2010)
`
`(mere filing of motion for summary judgment does not automatically suspend proceedings; only
`
`an order of the Board formally suspending proceedings has such effect); Giant Food, Inc. v.
`
`Standard Terry Mills, Inc., 229 USPQ 955, 965 (TTAB 1986) (mere filing of a potentially
`
`dispositive motion does not automatically suspend proceedings; only an order of the Board
`
`formally suspending proceedings has such effect); Consultants & Designers, Inc. v. Control
`
`Data Corp., 221 USPQ 635, 637 n.8 (TTAB 1984) (filing of motion for entry of default
`
`judgment for failure to answer does not automatically suspend proceedings). Applicant therefore
`
`contends that Opposer’s motion filed on October 31, 2014 did not automatically suspend the
`
`proceedings and that proceedings were only suspended upon the order of the Board on December
`
`5, 2014, after the opening of the first testimony period on November 5, 2014.
`
`
`
`The Board has also established in TBMP § 528.02 that “Once the first testimony period
`
`commences, however, any summary judgment motion filed thereafter is untimely, even if filed
`
`prior to the opening of a rescheduled testimony period-in-chief for plaintiff, and even if no trial
`
`evidence has actually been introduced by the plaintiff in a previously open, but later reset trial
`
`period.” Although Opposer’s Motion was filed the day prior to the opening of the rescheduled
`
`testimony period-in-chief for Opposer, per TBMP § 528.02 Opposer’s Motion is untimely as i)
`
`the first-scheduled testimony period-in-chief for Opposer opened on November 5, 2014 while the
`
`proceedings were non-suspended and ii) Opposer’s Motion was not filed prior to November 5,
`
`
`
`2
`
`

`
`2014.
`
`
`
`Opposer may reply that it could not file a motion for summary judgment on the issue of
`
`lack of bona fide intent-to-use prior to receiving leave to amend its notice of opposition to
`
`include this grounds for opposing registration of Applicant’s mark. However, parties in
`
`opposition proceedings are permitted by the Board pursuant to TBMP § 528.07(a) to “seek[]
`
`summary judgment on an unpleaded issue [by] simultaneously mov[ing] to amend its pleading to
`
`assert the matter.” The Board has additionally stated that this simultaneous motion for summary
`
`judgment on a previously unpleaded ground and motion to amend the pleading to assert the new
`
`ground is preferred over the alternative of having the movant first receive permission to amend
`
`its pleading and then file a subsequent motion for summary judgment on the new ground. See
`
`Societe Des Produits Marnier Lapostolle v. Distillerie Moccia S.R.L., 10 USPQ2d 1241, 1242
`
`n.4 (TTAB 1989); see also American Express Mktg. & Dev. Corp v. Gilad Dev. Corp., 94
`
`USPQ2d 1294 (TTAB 2010). As the Board has permitted and encouraged the simultaneous filing
`
`of a motion for summary judgment and a motion for leave to amend the pleading to assert the
`
`new ground that is the basis of the motion for summary judgment, Opposer should not be
`
`allowed to assert that its failure to file the motion for summary judgment prior to the opening of
`
`the first testimony period should be excused because it had to wait for a decision on its motion
`
`for leave to amend the pleading.
`
`
`
`Opposer may further reply that it could not have filed an earlier motion for summary
`
`judgment as its currently pending Motion depends for support upon the citing of Applicant’s
`
`Answer to Opposer’s Amended Notice of Opposition (“Applicant’s Answer”). However,
`
`Applicant’s Answer is cited in the Motion exactly zero times to assert information that was not
`
`already available prior to Applicant’s Answer in Applicant’s responses to Opposer’s discovery
`
`
`
`3
`
`

`
`requests or in publicly available documents. All citations to Applicant’s Answer in Opposer’s
`
`Motion are therefore duplicative of the evidence previously available through other sources.
`
`Specifically:
`
`1. Applicant’s answer is cited on page 3 of the Motion in support of the facts concerning
`
`Applicant’s U.S. Trademark Application Ser. No. 85949729 (hereinafter, the
`
`“Application”), including its filing date, description of goods, International Class, and
`
`filing basis under Section 1(b), all of which are facts available from the Application itself
`
`and do not require Opposer to rely upon Applicant’s Answer;
`
`2. Applicant’s Answer is cited on pages 8 to 10 and 12 of the Motion in support of alleged
`
`facts that also include supporting citations to Applicant’s responses to Opposer’s
`
`discovery requests or to the public record;
`
`3. Applicant’s Answer is also cited in the Motion in support of alleged facts that do not also
`
`contain citations to other sources of support; however, each of the following such claims
`
`could just as easily be based on Applicant’s initial responses to Opposer’s discovery
`
`requests:
`
`a. The claim on page 8 of the Motion that “Applicant had never engaged in the
`
`business of producing retinol skin cream or any other cosmetic product prior to
`
`June 4, 2013” could just as easily be based on Applicant’s responses to Admission
`
`Request No. 1 (Seraj Decl., ¶ 5, Exhibit B, ¶ 1), to Document Requests Nos. 35
`
`and 37 (Seraj Decl., ¶ 5, Exhibit C, ¶¶ 35, 37), and to Interrogatories Nos. 9 to 11
`
`(Seraj Decl., ¶ 5, Exhibit D, ¶¶ 9–11);
`
`b. The claim on page 10 of the Motion that “Applicant’s lack of investment in and/or
`
`concrete steps toward using the RETINEX mark clearly demonstrates that it
`
`
`
`4
`
`

`
`lacked the requisite bona fide intent to use the mark in commerce before filing of
`
`application serial no. 85949729” cites only the Amended Notice of Opposition’s
`
`Paragraph 21 and Applicant’s answer in response; however that Paragraph 21
`
`alleges “On information and belief, Applicant had not engaged in any graphic
`
`design efforts, conducted any test marketing, corresponded with any prospective
`
`licensees or suppliers, prepared any marketing plans, created any labels,
`
`marketing or promotional materials, secured any financing or otherwise taken
`
`concrete steps toward using the RETINEX mark before the filing of application
`
`Ser. No. 85949729 on June 4, 2013.” Although Applicant admitted this allegation
`
`in Applicant’s Answer (Seraj Decl., ¶ 7, Exhibit F, ¶ 21), it had previously made
`
`statements in response to Opposer’s discovery requests sufficient for Opposer to
`
`introduce the contents of the Amended Notice of Opposition Paragraph 21 as
`
`alleged facts in a motion for summary judgment, including Applicant’s responses
`
`to Document Requests Nos. 4, 7, 17, 19, 23, and 35 (Seraj Decl., ¶ 5, Exhibit C,
`
`¶¶ 4, 7, 17, 19, 23, 35), to Admission Requests Nos. 2 and 22 to 23 (Seraj Decl., ¶
`
`5, Exhibit B, ¶¶ 2, 22–23), and to Interrogatories Nos. 2, 9, 15, and 17 (Seraj
`
`Decl., ¶ 5, Exhibit D, ¶¶ 2, 9, 15, 17);
`
`c. The claim on page 10 of the Motion that “Applicant simply has proffered no facts
`
`and produced no documents showing the efforts it had taken at the time the
`
`opposed application was filed--or even to date--to commence use of the applied-
`
`for mark, such as product design efforts, manufacturing plans, graphic design
`
`efforts, test marketing, correspondence with prospective licensees or suppliers,
`
`preparation of marketing plans or business plans, creation of labels, marketing or
`
`
`
`5
`
`

`
`promotional materials, steps to comply with regulatory requirements, securing of
`
`financing, and the like.” This claim is duplicative of the allegations contained in
`
`Amended Notice of Opposition Paragraph 21, the support for which being already
`
`contained in Applicant’s responses to Opposer’s discovery requests having
`
`already been discussed in subparagraph b. immediately above; and
`
`d. The claim on page 10 of the Motion that “the record clearly establishes that
`
`Applicant had never been in the business of producing a retinol skin cream or any
`
`other cosmetic product prior to June 4, 2013.” This is duplicative of the claim
`
`already discussed in subparagraph a. above.
`
`
`
`As Opposer’s Motion is not based in any part on information contained in Applicant’s
`
`Answer that was unavailable prior to the opening of the first testimony period, it would set a bad
`
`precedent to allow Opposer to get around the rule of TBMP § 528.02 stated above by claiming
`
`its Motion should be deemed timely because it needed to rely upon Applicant’s Answer to the
`
`Amended Notice of Opposition in making the Motion. Such a holding would encourage other
`
`parties to ignore TBMP § 528.02 and assert that a motion for summary judgment made after the
`
`first-scheduled testimony period has opened is still timely because the moving party needed to
`
`rely on trivial additional evidence contained in a later filing by the non-moving party.
`
`
`
`As Opposer’s Motion is untimely and cannot be excused based on a need to make a prior
`
`amendment to its pleading or to rely upon admissions contained in Applicant’s Answer,
`
`Applicant respectfully requests that Opposer’s Motion be denied.
`
`
`
`II.
`
`THERE IS A GENUINE DISPUTE AS TO A MATERIAL FACT
`
`
`
`
`
`Opposer has alleged that there is no genuine dispute as to Applicant’s alleged lack of
`
`6
`
`

`
`bona fide intent to use the Retinex mark. Applicant contends that there is a genuine dispute as to
`
`whether Applicant had the necessary bona fide intent to use the Retinex mark at the time
`
`Application Ser. No. 85949729 was filed on June 4, 2013 (hereinafter, the “filing date”), and
`
`Applicant counters Opposer’s proferred evidence and alleged facts as follows.
`
`
`
`Opposer first alleges that Applicant’s lack of documentary evidence as of the date of the
`
`application filing is sufficient to prove that Applicant lacks the bona fide intent to use the
`
`Retinex mark. Although this is an important factor in determining whether an applicant had bona
`
`fide intent-to-use, the Board has held that an applicant may present “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”. See Commodore Electronics Ltd. v. CBM
`
`Kabushiki Kaisha, 26 USPQ2d 1503, 1507 (TTAB 1993). Additionally, in the present case,
`
`Applicant has recently discovered additional documentary evidence to support a finding that it
`
`had bona fide intent-to-use the Retinex mark at the time of filing the Application. This
`
`documentary evidence has been disclosed to Opposer through supplemental responses to
`
`Opposer’s discovery requests. Seraj Decl., ¶ 8, Exhibits G–H.
`
`
`
`If Opposer objects in response to this brief to Applicant’s introduction of this newly
`
`discovered documentary evidence, Applicant’s response would be to assert that a) the Board has
`
`generally considered timely any supplemental discovery responses served prior to the opening of
`
`the serving party’s testimony period-in-chief and b) Applicant served its supplemental responses
`
`promptly upon discovering the new documentary evidence as required by Federal Rule of Civil
`
`Procedure 26(e) and TBMP § 408.03. If Opposer contends that the Board’s practice is to only
`
`allow supplementation “while the discovery period remains open,” Applicant’s response would
`
`be to assert that the initial discovery requests were served so closely to the close of the discovery
`
`
`
`7
`
`

`
`period that Applicant was able to timely serve its initial responses to those requests after the
`
`discovery period had already closed. Seraj Decl., ¶¶ 4–5, 8. Therefore, any supplemental
`
`discovery response submitted by Applicant would by necessity have been submitted following
`
`the close of the discovery period. Seraj Decl., ¶ 8.
`
`
`
`Specifically, Applicant has three sets of documentary evidence to support its claim that at
`
`the time of filing the Application it had a bona fide intent-to-use the Retinex mark. These consist
`
`of a) Applicant’s documented interest in purchasing the www.retinex.com domain name from its
`
`current owner, b) documentation associated with discussions with a consulting company
`
`regarding a chemical formulation known as RETINEX, and c) documentation of a chemical
`
`analysis performed of a sample known as RETINEX. Seraj Decl., ¶ 8, Exhibits G–H; Seraj Decl.,
`
`¶ 9, Exhibit I; Seraj Decl., ¶ 10, Exhibit J; Seraj Decl., ¶ 11, Exhibit K.
`
`
`
`First, from March 6, 2013 to March 8, 2013, almost three months before the filing date,
`
`Majid M. Seraj, Pharm.D. (“Dr. Seraj”) engaged in email correspondence with Richard Thomas,
`
`the owner of the www.retinex.com domain name, regarding Dr. Seraj’s intentions to use Retinex
`
`as a trademark and his desire to purchase the domain name. Seraj Decl., ¶ 9, Exhibit I.
`
`
`
`Second, on May 23, 2013, twelve days prior to the filing date, Dr. Seraj initiated
`
`discussions via email correspondence with the Technical Director of Microformulation Cosmetic
`
`Consulting, Mark E. Fuller (“Mr. Fuller”), regarding a formulation described as RETINEX. The
`
`email contained an attachment giving a description of the RETINEX formulation. Seraj Decl., ¶
`
`10, Exhibit J.
`
`
`
`Third, on May 29, 2013, six days prior to the filing date, Dr. Seraj created a sample of a
`
`chemical formulation that was labeled “RETINEX” (the “Sample”). The creation date is
`
`documented on the Sample label. Seraj Decl., ¶ 11, Exhibit K. The Sample was delivered to
`
`
`
`8
`
`

`
`Analytical Research Laboratories (“ARL”) on May 31, 2013. Seraj Decl., ¶ 11. The Sample was
`
`tested on June 1, 2013, with the date tested listed on a Certificate of Analysis prepared on June
`
`11, 2013 by ARL. The Certificate of Analysis was delivered via an email from ARL
`
`representative Megan Briley on June 11, 2013. Seraj Decl., ¶ 11, Exhibit K.
`
`
`
`Opposer may respond to Applicant’s documentary evidence to say that it is insufficient to
`
`demonstrate that Applicant has a bona fide intent-to-use the Retinex mark at the time of filing the
`
`Application. However, the facts that Applicant a) was clearly using the Retinex mark prior to the
`
`filing of the Application in its communications with at least three different third parties, b)
`
`sought to purchase the domain name www.retinex.com, and c) was labeling samples and
`
`information provided to third parties regarding a chemical formulation with the Retinex mark
`
`clearly establish that there is a triable and genuine dispute as to whether Applicant had the
`
`necessary bona fide intent to use the Retinex mark at the time the Application was filed.
`
`
`
`Further, the fact that relatively few documents are available prior to the filing date
`
`evidencing Applicant’s intention to use the Retinex mark is explained by the nature of
`
`Applicant’s business at the time of filing as a new one-person startup. Seraj Decl., ¶ 13. It is
`
`common and not unexpected for a new one-person business to not have the extensive paper trail
`
`to support the introduction of a new trademark that one might expect from a large
`
`pharmaceutical company such as Opposer.
`
`
`
`Further, beyond the documentary evidence discussed above, Applicant can affirm that it
`
`was willing and able to use the Retinex mark in commerce as of the filing date. Seraj Decl., ¶ 13.
`
`Applicant’s ability to use the Retinex mark as of the filing date is evidenced by its ability on the
`
`filing date to manufacture and sell goods bearing the Retinex mark, even if Applicant had not
`
`begun to do so by the filing date. Seraj Decl., ¶ 13. As evidence of Applicant’s ability to
`
`
`
`9
`
`

`
`manufacture the goods listed in the Application, Applicant had a facility on the filing date where
`
`such goods could be manufactured. Seraj Decl., ¶ 13. On the filing date, Applicant’s employee,
`
`Dr. Seraj, was capable of manufacturing the goods listed in the Application. Seraj Decl., ¶ 13.
`
`
`
`Applicant’s willingness to use the Retinex mark is further evidenced by the fact that
`
`Applicant has demonstrated a track record of filing intent-to-use applications in good faith and
`
`proceeding to use the filed marks. These previous intent-to-use applications where Applicant has
`
`demonstrated its willingness to use the filed marks through receiving registrations include:
`
`1) PREVOX; Ser. No. 77083243; Reg. No. 3472988;
`
`2) RETISOME; Ser. No. 77600097; Reg. No. 3706726;
`
`3) NEXDERM; Ser. No. 85791465; Reg. No. 4597908;
`
`4) LUXERA; Ser. No. 86079191; Reg. No. 4598826;
`
`5) HYDRANEX; Ser. No. 86079197; Reg. No. 4598827;
`
`6) ATRENOL; Ser. No. 86079199; Reg. No. 4598828;
`
`7) ROSAVEX; Ser. No. 85949726; Reg. No. 4602576;
`
`8) TRI-QUIN; Ser. No. 85949728; Reg. No. 4602577;
`
`9) ACNEVEX; Ser. No. 85949730; Reg. No. 4602578; and
`
`10) SKINVITS; Ser. No. 85949735; Reg. No. 4602579.
`
`Seraj Decl., ¶ 13, Exhibit L; Seraj Decl., ¶¶ 13–14. It should be noted that Dermpharma, Inc. was
`
`renamed NEXDERM, Inc., therefore all applications or registrations listed as owned by either
`
`entity have common ownership. Seraj Decl., ¶ 1, Exhibit A. Applicant has additionally filed 16
`
`intent-to-use applications, including the Retinex Application, that have not resulted to date in
`
`registrations. These applications and a description of why each has not resulted in a registration
`
`are:
`
`
`
`10
`
`

`
`1) RETINEX; Ser. No. 85949729; Applicant has chosen not to use the Retinex mark yet
`
`due to the likely threat of litigation if the mark was used; as use of the mark would
`
`likely result in at least a threat of litigation, and Applicant has limited resources for
`
`fighting a suit in federal court, Applicant has chosen to wait to use the Retinex mark
`
`until the present opposition proceeding is resolved;
`
`2) XERODERM; Ser. No. 85949731; A Section 2(d) refusal was made in this pending
`
`application in a non-final office action dated November 14, 2014;
`
`3) BRITEDERM; Ser. No. 85949732; A Notice of Allowance was issued on February 3,
`
`2015. Applicant is using this mark in commerce but has yet to file a Statement of
`
`Use;
`
`4) ATOPIDERM; Ser. No. 85949733; A notice of opposition was filed against this
`
`application, and Applicant chose to abandon this application in order to devote its
`
`limited resources available for prosecution of its trademark applications to other
`
`matters;
`
`5) PHARMD; Ser. No. 85949736; This application resulted in a Notice of Allowance,
`
`but Applicant chose to abandon the application after being unable to secure the
`
`domain name www.pharmd.com;
`
`6) SOLEESE; Ser. No. 85949737; A Section 2(d) refusal was made in this abandoned
`
`application in a non-final office action dated September 24, 2013. The application
`
`was abandoned due to Applicant’s belief that it could not overcome the Section 2(d)
`
`refusal through the filing of a response to the office action, and therefore Applicant
`
`chose to devote its limited resources available for prosecution of its trademark
`
`applications to other matters;
`
`
`
`11
`
`

`
`7) SKINPLEX; Ser. No. 86079195; This application resulted in a Notice of Allowance,
`
`but Applicant chose to abandon the application after discovering that the mark was
`
`already in use by a third party as an unregistered trademark;
`
`8) JUVENEX; Ser. No. 86079203; A Section 2(d) refusal was made in this abandoned
`
`application in a non-final office action dated January 26, 2014. The application was
`
`abandoned due to Applicant’s belief that it could not overcome the Section 2(d)
`
`refusal through the filing of a response to the office action, and therefore Applicant
`
`chose to devote its limited resources available for prosecution of its trademark
`
`applications to other matters;
`
`9) PROLITE; Ser. No. 86190761; A Notice of Allowance was issued on August 19,
`
`2014, and a first extension of time to file a Statement of Use has been granted;
`
`10) LUMERIS; Ser. No. 86190773; A Notice of Allowance was issued on April 14, 2015.
`
`The application had been opposed by a third party, and Applicant was waiting to
`
`begin use of the mark until the opposition proceeding ended. Applicant has not yet
`
`had time to begin using the mark or to file a Statement of Use;
`
`11) LUNEXA; Ser. No. 86190785; A Notice of Allowance was issued on August 19,
`
`2014, and a first extension of time to file a Statement of Use has been granted;
`
`12) NEXERA; Ser. No. 86190796; This mark is currently being used and a Statement of
`
`Use was filed on February 17, 2015;
`
`13) CONTOUR; Ser. No. 86190808; This application was suspended on May 27, 2014
`
`pending the outcome in another trademark application. Applicant is using this mark in
`
`commerce;
`
`14) PROMATRIX; Ser. No. 86190815; This pending application has been published in
`
`
`
`12
`
`

`
`the Official Gazette and Applicant is waiting to find out whether a potential opposer
`
`who has requested an extension of time to oppose has filed a notice of opposition.
`
`Applicant is using this mark in commerce;
`
`15) NU-CLENZ; Ser. No. 86249813; A Section 2(d) refusal was made in this abandoned
`
`application in a non-final office action dated May 20, 2014. The application was
`
`abandoned due to Applicant’s belief that it could not overcome the Section 2(d)
`
`refusal through the filing of a response to the office action, and therefore Applicant
`
`chose to devote its limited resources available for prosecution of its trademark
`
`applications to other matters; and
`
`16) PRO-CLENZ; Ser. No. 86249831; This mark is currently being used and a Statement
`
`of Use was filed on February 16, 2015.
`
`Seraj Decl., ¶ 13, Exhibit L; Seraj Decl., ¶¶ 13–18. Of the 26 above-cited intent-to-use
`
`applications, Applicant has a) made use of the filed-for mark in 15 applications, b) chosen to
`
`abandon four applications after a Section 2(d) refusal was made, c) either abandoned or waited to
`
`use the mark due to an actual or potential opposition proceeding in three applications, d) received
`
`a first extension of time to file a Statement of Use in two applications, and d) received a Notice
`
`of Allowance yet abandoned the application in only two applications, and even those two
`
`abandonments have good explanations. Seraj Decl., ¶ 13, Exhibit L; Seraj Decl., ¶¶ 13–18. By
`
`this collective use of the filed-for marks and explanation of non-use for the remaining
`
`applications, Applicant has established a strong track record that it has intended to use the marks
`
`filed for in its intent-to-use applications.
`
`
`
`Opposer alleges that the filing of ten Section 1(b) trademark applications on the same
`
`date is evidence of Applicant’s lack of bona fide intent to use. Although the filing of an
`
`
`
`13
`
`

`
`excessive number of applications can be evidence that an applicant did not possess the necessary
`
`intent to use the marks filed for, Applicant’s intention to use the marks filed for is evidenced by
`
`the above description of its subsequent actual use of five of those marks (SKINVITS;
`
`ACNEVEX; TRI-QUIN; ROSAVEX; and BRITEDERM. Seraj Decl., ¶ 13, Exhibit L; Seraj
`
`Decl., ¶¶ 13–14). Further, Applicant has good reasons for not subsequently using the marks filed
`
`for in the remaining five of the ten applications, as explained above. In the case of two of these
`
`remaining five applications, SOLEESE and XERODERM, Applicant chose to abandon the
`
`trademark after it was refused registration by the USPTO, as Applicant did not believe it would
`
`be able to adequately protect the mark in commerce from competitors without a US trademark
`
`registration. Seraj Decl., ¶ 13, Exhibit L; Seraj Decl., ¶¶ 13, 15. In one of these remaining five
`
`applications, PHARMD, Applicant chose to abandon the mark due to being unable to secure the
`
`domain name associated with it, and Applicant concluded it would be able to adequately protect
`
`the mark in commerce from competitors without ownership of the domain name. Seraj Decl., ¶
`
`13, Exhibit L; Seraj Decl., ¶¶ 13, 18. In one of these remaining five applications, ATOPIDERM,
`
`a notice of opposition was filed against the application, and Applicant chose to abandon this
`
`application in order to devote its limited resources available for prosecution of its trademark
`
`applications to other matters. Seraj Decl., ¶ 13, Exhibit L; Seraj Decl., ¶¶ 13, 16. In the case of
`
`the Application in the present opposition proceeding, Applicant has chosen not to use the mark
`
`yet due to the likely threat of litigation if the mark was used; as use of the mark would likely
`
`result in at least a threat of litigation, and Applicant has limited resources for fighting a suit in
`
`federal court, Applicant has chosen to wait to use the mark until the present opposition
`
`proceeding is ended. Seraj Decl., ¶ 13, Exhibit L; Seraj Decl., ¶¶ 13, 16.
`
`
`
`
`
`Opposer on page 12 of the Motion claims that “Applicant, despite confirming that it has
`
`14
`
`

`
`never sold any of the goods identified in the instant application (which again are the same goods
`
`in the applications noted above), has nevertheless managed to obtain registrations for four of the
`
`trademark applications above after claiming use of those marks starting on March 18, 2014, with
`
`another three of the applications being abandoned,” thereby implying that Applicant has
`
`perpetrated a fraud on the USPTO in registering four trademarks. In support of this statement,
`
`Opposer cites Applicant’s intent-to-use applications, Opposer’s Amended Notice of Opposition
`
`Paragraphs 7 and 8, and Applicant’s responses to those Paragraphs 7 and 8. Opposer’s
`
`Paragraphs in question read:
`
`7. On information and belief, Applicant did not use the mark RETINEX in
`
`connection with any of the goods designated in application Ser. No. 85949729 prior to
`June 4, 2013.
`
`8. On information and belief, Applicant has never used the mark RETINEX in
`connection with any of the goods specified in application Ser. No. 85949729.
`
`Seraj Decl., ¶ 6, Exhibit E, ¶¶ 7–8. In no way can any admission or denial of those statements be
`
`read as a confirmation that “Applicant has never sold any of the goods identified in the instant
`
`application” through other trademarks, nor can it imply that registrations for other marks used to
`
`sell the same goods were improperly obtained.
`
`
`
`Opposer has therefore essentially and dishonestly presented to the Board the statements
`
`that:
`
`a) Applicant’s confirmation that it did not use the Retinex mark to sell the goods listed in
`
`the Retinex application is a confirmation that it has never sold those goods using other
`
`marks; and
`
`b) Any other marks obtained in connection with such goods may have been improperly
`
`registered by Applicant.
`
`Opposer next alleges on page 12 of the Motion that Applicant’s statement of its intent to
`
`15
`
`
`
`
`
`

`
`use a product packaging design to sell the goods once the Retinex mark registers is evidence that
`
`it merely intended to reserve the Retinex name and did not actually have bona fide intent to use
`
`that mark. However, Applicant is the owner of a number of trademark registrations (See Seraj
`
`Decl., ¶ 13, Exhibit L; Seraj Decl., ¶¶ 13–14) and understands that actual use is a prerequisite to
`
`final registration of a mark. Applicant has demonstrated through its use of CONTOUR, despite
`
`that application being suspended, and its use of PROMATRIX, despite that application
`
`potentially being opposed, that it does not necessarily wait until a Notice of Allowance is issued
`
`to begin use in commerce. Seraj Decl., ¶¶ 14, 19. Therefore, a more innocent explanation for
`
`Applicant’s statement is that Applicant is waiting to use the Retinex mark until it wins this
`
`proceeding due to the likelihood of facing a federal lawsuit from a large pharmaceutical
`
`company if it begins using the Retinex mark prior to that time, and that after winning this
`
`proceeding Applicant either a) will use its currently developed product packaging to begin
`
`selling goods under the Retinex mark prior to filing a Statement of Use or b) will use other
`
`currently-undeveloped product packaging to begin selling its goods and will only use the product
`
`packaging disclosed to Opposer to sell its goods after the Retinex mark has registered. Seraj
`
`Decl., ¶ 19.
`
`
`
`III.
`
`CONCLUSION
`
`
`
`Applicant has established above that Opposer’s Motion is both untimely and that there
`
`remains a triable and genuine dispute as to material facts regarding Applicant’s bona fide intent
`
`to use the Retinex mark.
`
`
`
`THEREFORE, Applicant respectfully requests that Opposer’s Motion be denied as
`
`untimely and/or because a genuine dispute remains that must be decided by trial.
`
`
`
`16
`
`

`
`Respectfully submitted,
`
`By: /Michael J. Sullivan/
`Michael J. Sullivan
`Law Office of Michael J. Sullivan
`111 N. Market St., Suite 300
`San Jose, CA 95113
`msullivan@mikesullivanlaw.com
`Attorney for Applicant
`
`
`
`CERTIFICATE OF SERVICE
`
`Date: April 16, 2016
`
`I hereby certify that a true and complete copy of the foregoing Applicant’s Opposition to
`Opposer’s Motion for Summary Judgment has been duly served on Drew Smith and James
`Menker, counsel for Opposer, on April 16, 2015, via e-mail (through prior agreement of
`counsel) to:
`
`
`James Menker <jmenker@holleymenker.com>;
`Drew Smith <dsmith@holleymenker.com>; and
`eastdocket@holleymenker.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/Michael J. Sullivan/
`Michael J. Sullivan
`
`
`
`17
`
`
`
`
`
`
`
`
`
`
`
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Application Serial No. 85949729
`Mark: RETINEX
`Published in the Official Gazette of Oct. 29, 2013
`
`
`
`
`
`
`
`
`
`Valeant International Bermuda,
`
`Opposer,
`
`v.
`
`Dermpharma, Inc.,
`
` Opposition No.: 91214457
`
`Applicant.
`
`
`
`DECLARATION OF MAJID M. SERAJ, PHARM.D.
`IN SUPPORT OF APPLICANT’S OPPOSITION TO
`OPPOSER’S MOTION FOR SUMMARY JUDGMENT
`
`
`
`
`
`
`
`
`
`
`
`I, Majid M. Seraj, Pharm.D., declare pursuant to 28 U.S.C. § 1746 as follows:
`
`
`1.
`
`I am the CEO of NEXDERM, Inc., which did business as Dermpharma, Inc.
`
`(“Applicant”) until its name was changed pursuant to a Certificate of Amendment of the Articles
`
`of Incorporation processed by the California Secretary of State on February 5, 2015. An
`
`assignment reflecting the corporate name change in Application Serial No. 85949729 for Retinex
`
`(hereinafter, the “Application”) was filed on February 27, 2015. A copy of the assignment cover
`
`sheet and Certificate of Amendment are attached hereto as Exhibit A. I submit this declaration in
`
`support of Applicant’s Opposition to Opposer’s Motion for Sum