Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA661429
`ESTTA Tracking number:
`03/16/2015
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91215024
`Defendant
`Olympic Seafood AS
`WENDY E MILLER
`COOPER & DUNHAM LLP
`30 ROCKEFELLER PLAZA
`NEW YORK, NY 10112
`UNITED STATES
`wmiller@cooperdunham.com, tm@cooperdunham.com, rsquicciar-
`ini@cooperdunham.com, rmondon@cooperdunham.com,
`lsung@cooperdunham.com
`Motion for Summary Judgment
`Wendy E. Miller
`wmiller@cooperdunham.com
`/Wendy E. Miller/
`03/16/2015
`Opposition Brief and Cross-Motion w Decl.pdf(4812553 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
`Signature
`Date
`Attachments
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`U.S. App. No. :
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`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`79/125,884
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`Filed
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`Trademark
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`September 17, 2012
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`THE DIFFERENCE IS CLEAR (and design)
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`Opposition No. 91215024
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`_____________________________________
`X
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`NEW CHAPTER, INC.,
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` Opposer,
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` v.
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`OLYMPIC SEAFOOD AS,
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` Applicant.
`_____________________________________X
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`
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`CROSS-MOTION BY APPLICANT FOR SUMMARY JUDGMENT
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`Applicant, Olympic Seafood AS, hereby cross-moves for summary judgment pursuant to
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`Rule 56, F.R.Civ.P., and 37 C.F.R. § 2.116(a), dismissing this opposition on the ground that
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`there is no genuine issue of material fact which would permit the conclusion that Opposer has
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`priority in this case. Applicant has priority as a matter of law, summary judgment should be
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`granted in favor of Applicant, and the opposition should be dismissed.
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`1
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`In support of this motion, Applicant relies on the accompanying Memorandum and
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`Declaration of Wendy E. Miller.
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`Dated: March 16, 2015
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`Respectfully submitted,
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`
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`By: __/Wendy E. Miller/
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`Wendy E. Miller
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`COOPER & DUNHAM LLP
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`30 Rockefeller Plaza
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`New York, New York 10112
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`Tel: (212) 278-0400
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`wmiller@cooperdunham.com
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`Attorneys for Applicant
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`2
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
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`
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`U.S. App. No. :
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`79/125,884
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`
`
`
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`Filed
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`Trademark
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`:
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`:
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`September 17, 2012
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`THE DIFFERENCE IS CLEAR (and design)
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`
`
`Opposition No. 91215024
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`
`
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`_____________________________________
`X
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`NEW CHAPTER, INC.,
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` Opposer,
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` v.
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`OLYMPIC SEAFOOD AS,
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` Applicant.
`_____________________________________X
`
`MEMORANDUM OF APPLICANT IN OPPOSITION TO
`OPPOSER’S MOTION FOR SUMMARY JUDGMENT AND IN SUPPORT OF
`APPLICANT’S CROSS-MOTION FOR SUMMARY JUDGMENT
`
`
`Wendy E. Miller
`COOPER & DUNHAM LLP
`30 Rockefeller Plaza
`New York, New York 10112
`Tel: (212) 278-0400
`wmiller@cooperdunham.com
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`Attorneys for Applicant
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`TABLE OF CONTENTS
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`MATERIAL FACTS THAT ARE NOT IN DISPUTE ...................................................... 3
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`ARGUMENT ...................................................................................................................... 5
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`A. There Is No Evidentiary Dispute Concerning The Material Facts In This
`Opposition. .................................................................................................................... 5
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`B. The Indisputable Facts Require The Conclusion That Opposer Has Failed To
`Establish Trademark Use Or Priority Relative To Applicant. .................................... 6
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`C. The Indisputable Facts Demonstrate That The Term “The Difference Is Clear” Is
`Merely Descriptive Of Opposer’s Goods And Cannot Form The Basis For This
`Opposition. .................................................................................................................. 10
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`D. Likelihood Of Confusion Is Not Material In This Case Because Opposer Does
`Have A Valid Trademark Or Priority Relative To Applicant. .................................... 12
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`E. Opposer Cannot Meet Its Burden Of Proof Based On Applicant’s Unresolved
`Objections To Opposer’s Discovery. .......................................................................... 15
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`CONCLUSION. ................................................................................................................ 18
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`i
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`I.
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`II.
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`III.
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`TABLE OF AUTHORITIES
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`Cases
`
`American Cyanamid Co. v S.C. Johnson & Son Inc.,
`129 F. Supp. 1018, 13 U.S.P.Q.2d 1032 (D.N.J. 1989) ................................................................ 14
`
`Aries Systems Corp. v. World Book Inc.,
`23 U.S.P.Q.2d 1742 (T.T.A.B. 1992) ............................................................................................. 6
`
`In re Bayer Aktiengesellschaft,
`488 F.3d 960, 82 U.S.P.Q.2d 1828 (Fed. Cir. 2007) .................................................................... 10
`
`In re Bed & Breakfast Registry,
`791 F.2d 157, 229 U.S.P.Q. 818 (Fed. Cir. 1986) ........................................................................ 10
`
`British Seagull Ltd. v. Brunswick Corp.,
`28 U.S.P.Q.2d 1197 (T.T.A.B. 1993) ........................................................................................... 15
`
`Carefirst of Maryland Inc. v. FirstHealth of the Carolinas Inc.,
`77 U.S.P.Q.2d 1492 (T.T.A.B. 2005) ..................................................................................... 13, 15
`
`In re Chamber of Commerce of the U.S.,
`675 F.3d 1297, 102 U.S.P.Q.2d 1217 (Fed. Cir. 2012) ................................................................ 10
`
`Clorox Co. v. Salazar,
`108 U.S.P.Q.2d 1083 (T.T.A.B. 2013) ........................................................................................... 8
`
`In re Gyulay,
`820 F.2d 1216, 3 U.S.P.Q.2d 1009 (Fed. Cir. 1987) .................................................................... 10
`
`H.D. Lee Co. v. Maidenform Inc.,
`87 U.S.P.Q.2d 1715 (T.T.A.B. 2008) ..................................................................................... 10, 15
`
`Life Zone Inc. v. Middleman Group Inc.
`87 U.S.P.Q.2d 1953 (T.T.A.B. 2008) ................................................................................... 7, 9, 12
`
`Linville v. Rivard,
`41 U.S.P.Q.2d 1731 (T.T.A.B. 1997) ....................................................................................... 8, 16
`
`Midwestern Pet Foods, Inc. v. Societe des Produits Nestle, S.A.,
`685 F.3d 1046, 103 U.S.P.Q.2d 1435 (Fed. Cir.) ................................................................... 16, 17
`
`
`
`
`ii
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`
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`Oxford Industries Inc. v. JBJ Fabrics Inc.,
`6 U.S.P.Q.2d 1756 (S.D.N.Y. 1988) ............................................................................................. 14
`
`PaperCutter Inc. v. Fay’s Drug Co. Inc.,
`900 F.2d 558, 14 U.S.P.Q. 2d 145 (2d Cir. 1990) ........................................................................ 14
`
`Pure Gold, Inc. v. Syntex (U.S.A.), Inc.,
`739 F.2d 624, 222 U.S.P.Q. 741 (Fed. Cir. 1984) .......................................................................... 6
`
`Seligman & Latz, Inc. v. Merit Mercantile Corporation,
`222 U.S.P.Q. 720 (T.T.A.B. 1984) ............................................................................................... 16
`
`In re Shipp,
`4 U.S.P.Q.2d 1174 (T.T.A.B. 1987) ............................................................................................. 14
`
`Syngenta Crop Protection Inc. v. Bio-Chek LLC,
`90 U.S.P.Q.2d 1112 (T.T.A.B. 2009) ................................................................................... 6, 7, 12
`
`Time Warner Entertainment Co. v. Jones,
`65 U.S.P.Q. 2d 1650 (T.T.A.B. 2002) .......................................................................................... 16
`
`
`Statutes
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`15 U.S.C. § 7(c) .............................................................................................................................. 6
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`15 U.S.C. § 1127 ............................................................................................................................. 8
`
`
`Rules
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`Rule 56, F.R.Civ.P. ..................................................................................................................... 1, 6
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`37 C.F.R. § 2.116(a)........................................................................................................................ 1
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`37 C.F.R. § 2.122(b)(2) ................................................................................................................... 9
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`
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`Other Authorities
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`TBMP § 523.04 ........................................................................................................................ 15-18
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`TBMP § 704.08(a) .......................................................................................................................... 8
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`
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`iii
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`U.S. App. No. :
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`79/125,884
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Filed
`
`
`
`Trademark
`
`:
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`:
`
`September 17, 2012
`
`THE DIFFERENCE IS CLEAR (and design)
`
`
`
`Opposition No. 91215024
`
`
`
`_____________________________________
`X
`
`: :
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`: :
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`: :
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`: :
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`NEW CHAPTER, INC.,
`
`
`
` Opposer,
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` v.
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`OLYMPIC SEAFOOD AS,
`
`:
` Applicant.
`_____________________________________X
`
`
`MEMORANDUM OF APPLICANT IN OPPOSITION TO
`OPPOSER’S MOTION FOR SUMMARY JUDGMENT AND IN SUPPORT OF
`APPLICANT’S CROSS-MOTION FOR SUMMARY JUDGMENT
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`Applicant, Olympic Seafood AS (“Olympic Seafood”), opposes the motion for summary
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`judgment filed by Opposer, New Chapter, Inc. (“New Chapter”), and cross-moves for summary
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`judgment in Applicant’s favor pursuant to Rule 56, F.R.Civ.P., and 37 C.F.R. § 2.116(a). The
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`opposition should be dismissed because there is no genuine issue of material fact for trial.
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`Opposer has failed to demonstrate priority, and Opposer’s asserted mark is merely descriptive.1
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`1 Applicant filed a motion for summary judgment on January 25, 2015 (Opp. 8). At the
`time, Applicant did not know that Opposer had filed a summary judgment motion on January 23,
`2015 (Opp. 7). Opposer apparently tried to serve its motion on Applicant’s attorney as a 20
`megabyte e-mail attachment. Applicant’s counsel did not receive the e-mail because the
`attachment was too large. Pursuant to the briefing schedule established by the Board (Opp. 9),
`Applicant presents its summary judgment motion as a cross-motion.
`1
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`Applicant’s effective filing date is April 12, 2012. Opposer’s filing date is November 20,
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`2012. Opposer does not have priority because there is no evidence that Opposer used the
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`asserted mark THE DIFFERENCE IS CLEAR in commerce continuously since before
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`Applicant’s filing date.
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`Opposer’s declarant, Mr. Lierle, vaguely asserts that some quantities of goods bearing the
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`asserted mark have been sold in various countries including in the United States. Conspicuously
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`absent is a statement that sales were made continuously in the United States since before
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`Applicant’s filing date. Also absent are any documents to corroborate Mr. Lierle’s conclusory
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`testimony. Based on its evidence, all of Opposer’s U.S. sales could have occurred after
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`Applicant’s filing date.
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`Opposer also cannot establish priority because its asserted mark is merely descriptive of
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`its goods, which are “dietary and nutritional supplements; vitamins,” and specifically fish oil
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`supplements. Opposer and numerous third parties use the term “the difference is clear” in a
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`descriptive manner to inform consumers that the fish oil used in their supplements is “clear” in
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`color, in comparison to supplements which contain dull-hued fish oil. These third party uses also
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`confirm that Opposer’s alleged use is not substantially exclusive. Opposer has no evidence to
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`the contrary, and cannot misappropriate a common, descriptive term for its own exclusive use.
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`Since Opposer has no probative evidence demonstrating use in commerce before
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`Applicant’s filing date, no probative evidence demonstrating substantial exclusivity, and no
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`probative evidence demonstrating that that Opposer’s asserted mark is distinctive, there is no
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`issue of fact for trial on the question of Applicant’s priority, and summary judgment should be
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`granted in favor of Applicant.
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`
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`2
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`I.
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`MATERIAL FACTS THAT ARE NOT IN DISPUTE
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`Applicant is the owner of U.S. Application No. 79/125,884, filed on September 17, 2012,
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`based on Section 66(a) and claiming priority on International Registration No. 1149364, filed
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`April 12, 2012, for a composite mark including a distinctive design feature and the words THE
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`DIFFERENCE IS CLEAR, for the following goods (“Olympic Seafood Application”):
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`Class 5: Pharmaceutical preparations, namely, processed and unprocessed krill, dried
`krill, krill meal, krill powder, krill extracts and krill oil sold as a component ingredient of
`pharmaceuticals in the nature of antioxidants, dietary supplements and nutraceuticals in
`the nature of dietary supplements; pharmaceutical preparations, namely, processed and
`unprocessed krill, dried krill, krill meal, krill powder and krill oil sold as a component
`ingredient of pharmaceuticals in the nature of antioxidants for pharmaceutical and
`nutraceutical purposes
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`Class 29: Meat, fish, namely, processed krill and dried krill, poultry and game; edible oils
`and fats, namely, krill meal, krill powder and krill oil
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`Opposer is the owner of U.S. Application No. 85/784,097, for the designation THE
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`DIFFERENCE IS CLEAR, filed November 20, 2012, based on Section 1(a) and alleging first
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`use on August 31, 2009, for “dietary and nutritional supplements; vitamins” in Class 5 (“New
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`Chapter Application”). The New Chapter Application has been refused registration based on the
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`Olympic Seafood Application.
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`Discovery closed on November 27, 2014. Opposer produced no records to show that any
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`goods bearing the asserted mark have been sold or distributed to anyone, at any time, let alone in
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`the United States before Applicant’s filing date. Opposer produced no purchaser orders, no
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`invoices, no shipping records and no sales records.
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`In its Pretrial Disclosures served on January 9, 2015, Opposer identified a witness to give
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`testimony in support of its opposition, Mr. Lierle (Miller Decl. Exhibit A). Mr. Lierle does not
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`3
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`propose to give any testimony concerning the distribution, sale, or shipment of any goods
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`bearing the asserted mark.
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`As understood, Opposer deals in fish oil supplements which are marketed in connection
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`with the trademark WHOLEMEGA. According to Opposer, the clarity or transparency of the
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`fish oil contained in a fish oil supplement is an important feature of the product. Clear,
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`transparent fish oil indicates purity and quality, as distinguished from fish oil that is cloudy or
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`dull. Opposer states:
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`The dull, yellow hue and watery texture of conventional fish oil capsules is symbolic of
`“purified” products. This heavy distillation (which can be necessary to remove
`contaminants) can fractionate, isolate, and destroy beneficial compounds that give fish oil
`its naturally vibrant color and clarity.
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`Wholemega, however, delivers an oil that is striking in color and transparency. The
`brilliant hue in Wholemega comes from Astaxanthin – an extremely powerful antioxidant
`that is naturally found in wild salmon and abundant in this extra virgin fish oil. The
`gentle process used to extract Wholemega preserves this antioxidant as well as numerous
`other beneficial compounds – including vitamin D3. In fact, this whole oil is delivered
`from a government inspected FOOD GRADE facility.
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`(Miller Decl. Ex. B-3; see Lierle Decl. Exs. A-T).
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`Opposer uses the designation “the difference is clear” to indicate that its WHOLEMEGA
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`supplements contain clear, transparent fish oil. For that reason, Opposer contends that its goods
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`are superior in quality relative to others. Opposer compares its WHOLEMEGA supplements to
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`those of others by using visual aids which bear the caption “Wholemega vs. Conventional Fish
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`Oil” or “Wholemega vs. Purified Fish Oil” (Miller Decl. Ex. B-1-3, B-5-7).
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`Opposer also uses variants of its asserted trademark to convey the fact that there is a
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`“clear difference” between the clear fish oil in Opposer’s supplements as compared to dull-hued
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`fish oil in others. Opposer states (emphasis added in Exhibits):
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`4
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`“See the Difference” (Miller Decl. Ex. B-3, B-6-7);
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`“A Difference That’s Clear” (Miller Decl. Ex. B-5, B-7);
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`“A Whole New Fish Oil with a Clear Difference” (Miller Decl. Ex. B-6-7)
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`Numerous third party competitors also use the designation “the difference is clear” to
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`indicate that their fish oil supplements are of superior quality based on the clear fish oil
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`contained in the supplement (emphasis added below and in the exhibits):
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`
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`II.
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`The difference is clear: Omega Factor fish oils are the best-formulated professional fish
`oil supplements available. (Miller Decl. Ex. C-1-3 at 1);
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`The difference is clear: Orthomega fish oils are the best-formulated professional fish oil
`supplements available. (Miller Decl. Ex. C-4-9 at 5; Ex. C-10-11 at 10);
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`“Put a pill of your store bought brand of omega-3 in the freezer overnight. Then put
`Omax3® in the freezer overnight. The difference is clear. The store bought brand will be
`cloudy, even a solid white. This is the bad fats and toxins solidifying. Your body doesn't
`need them. Omax3® will remain clear," says Dr. Maroon. (Miller Decl. Ex. C-12-14 at
`13; Ex. C-15-18 at 17; Ex. C-24)
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`The difference is clear: burp-free guaranteed. Omega-3 Clear Enteric Softgels. (Miller
`Decl., Ex. C-19, Webber Naturals);
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`Cardiostat contains a highly concentrated potency of EPA Omega -3 fatty acid in order to
`improve heart health in just 2 softcaps per day. Compare the EPA content of Cardiostat to
`your current fish oil product. The difference is clear. Cardiostat sources fish oil from deep
`ocean waters not farm raised fish. The fish oil is molecularly distilled to remove mercury,
`PCBs and toxins. Cardiostat is guaranteed for purity, potency and freshness. Cardiostat
`does not contain artificial dyes, colors, preservatives, flavors, gluten, starch or lactose.
`(Miller Decl. Ex. C-20-23 at 21).
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`ARGUMENT
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`A.
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`There Is No Evidentiary Dispute Concerning The Material Facts In This
`Opposition.
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`To demonstrate that it is entitled to summary judgment, a movant must show that there
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`are no genuine issues of material fact to be resolved at trial on the issues raised by its motion.
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`5
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`Rule 56, F.R.Civ.P. To oppose summary judgment, a nonmovant must point to specific facts
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`which create an evidentiary dispute for trial. The nonmovant cannot rely on conclusory
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`allegations or inconclusive evidence. Aries Systems Corp. v. World Book Inc., 23 U.S.P.Q.2d
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`1742, 1744 (T.T.A.B. 1992); Pure Gold, Inc. v. Syntex (U.S.A.), Inc., 739 F.2d 624, 222
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`U.S.P.Q. 741, 743 (Fed. Cir. 1984).
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`Opposer has failed to meet its burden of proof. There is no evidence on which Board
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`could find that Opposer used the asserted mark in commerce, continuously and substantially
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`exclusively, and without abandonment, since before Applicant’s filing date. Therefore, Opposer
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`lacks priority as a matter of law. Opposer also has failed to carry its burden of proving
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`ownership of a distinctive trademark. Opposer’s own evidence, which is indisputable,
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`establishes that Opposer’s asserted mark is merely descriptive.
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`There is no evidentiary conflict which would merit a trial to confirm Applicant’s right to
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`register its mark. The record requires only one conclusion, that Applicant has priority, and the
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`opposition should be dismissed.
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`B.
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`The Indisputable Facts Require The Conclusion That Opposer Has Failed To
`Establish Trademark Use Or Priority Relative To Applicant.
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`Applicant’s effective filing date is April 12, 2012. Applicant may rely on its filing date
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`as constructive use for purposes of priority, with no further proof. 15 U.S.C. § 7(c); Syngenta
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`Crop Protection Inc. v. Bio-Chek LLC, 90 U.S.P.Q.2d 1112, 1119 (T.T.A.B. 2009). Opposer’s
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`filing date is November 20, 2012, which makes Opposer the junior party having the burden of
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`proving priority. Opposer has failed to present any specific facts or concrete evidence to support
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`its summary judgment motion or to defeat Applicant’s cross-motion.
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`6
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`Opposer has no evidence that it used the asserted mark in commerce since before
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`Applicant’s effective filing date. Opposer’s declarant, Mr. Lierle, alleges that Opposer sold
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`some quantities of goods bearing the asserted mark in countries around the world including in
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`the United States (Lierle Decl. ¶¶ 3-5). Conspicuously, Mr. Lierle does not state how many
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`units, if any, were sold in the United States. He also does not state how many units, if any, were
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`sold in the United States before Applicant’s filing date. Mr. Lierle also asserts that Opposer
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`spent several million dollars on advertising and marketing in the United States since 2009 (Lierle
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`Dec. ¶ 8). However, he does not state when those sums were spent, or how much, if any, was
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`spent in 2009 or before Applicant’s filing date.
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`Based on Mr. Lierle’s vague assertions, Opposer could have made all of its U.S. sales
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`after Applicant’s filing date. Or, Opposer could have sold a token number of units in 2009,
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`abandoned the asserted mark, and resumed use after Applicant’s filing date. Similarly, Opposer
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`could have incurred all of its advertising expenditures after Applicant’s filing date. Or, Opposer
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`could have spent a token amount in 2009, abandoned the asserted mark, and resumed advertising
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`after Applicant’s filing date. Because there is no specific evidence on these points, the Board
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`cannot presume that Opposer’s use predates Applicant’s filing date, “or indeed whether it even
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`predates the filing of this opposition proceeding.” Life Zone Inc. v. Middleman Group Inc. 87
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`U.S.P.Q.2d 1953, 1960 (T.T.A.B. 2008); Syngenta, 90 U.S.P.Q.2d at 1118-19 (dismissing
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`opposition because opposer’s evidence was too vague).
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`Also conspicuously absent are any documents to support Mr. Lierle’s assertions. There
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`are no purchaser orders, invoices, or shipping records reflecting the sale of any goods. Mr.
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`Lierle also does not state where he obtained the unit and dollar amounts recited in his
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`
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`7
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`Declaration. He does not state which of Opposer’s records contain that information, or what
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`records he reviewed to obtain those numbers. It is possible, and likely, that Mr. Lierle recites a
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`sales figure for all of Opposer’s sales worldwide, which is not a material fact and cannot support
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`or defeat summary judgment. Linville v. Rivard, 41 U.S.P.Q.2d 1731, 1736-37 (T.T.A.B. 1997)
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`(“It is well settled that activity outside the United States does not create rights in a mark within
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`the United States.”). Similarly, there is no media schedule or related documents to show
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`whether, when, or how any advertisements were run or distributed. Mr. Lierle’s declaration is
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`merely conclusory and fails to identify any genuine, material issue of fact for trial.
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`Opposer tries to demonstrate use in commerce with copies of advertising and marketing
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`collateral. However, those documents are not material because they do not constitute evidence
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`of use in commerce for goods. A trademark is used in commerce in connection with goods only
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`when the goods display the mark and are “sold or transported in commerce.” 15 U.S.C. § 1127;
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`Clorox Co. v. Salazar, 108 U.S.P.Q.2d 1083, 1086 (T.T.A.B. 2013). Displaying a mark on an
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`advertisement or promotion is not use in commerce absent evidence that the goods were actually
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`sold or transported in commerce. Id. at 1086. Because Opposer has no evidence that any goods
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`bearing the asserted mark were sold or transported in commerce, Opposer has failed to
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`demonstrate trademark use as of any date.
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`Moreover, there is no evidence that any of these advertisements or promotions were
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`distributed before Applicant’s filing date. The documents are not self-authenticating. TBMP §
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`704.08(a). Mr. Lierle does not provide this information, and there is no evidence of circulation
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`or distribution. Lierle Exhibits J and Q-T are undated. Although an unidentified person wrote
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`random dates on adhesive flags and copies of the documents, handwritten notes alone are not
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`evidence of actual use. Lierle Exhibits K-M are marked FPO (“For Positioning Only”) which
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`means that they are merely proofs or drafts. There is no evidence whether or when these pieces
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`were actually run. Exhibits N and O display dates in 2011 and 2012, although there is no
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`evidence whether, when, or how these items were actually run.
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`Further, none of the collateral, except arguably Exhibit T, shows Opposer’s designation
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`being used as an actual trademark. In each instance, the phrase is buried deep within the copy
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`and is used descriptively to explain an informational chart.
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`Finally, Opposer tries to demonstrate priority by relying on an allegation of use and
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`specimen contained in the New Chapter Application (Lierle Decl. ¶ 12, Ex. T; Gaunt Decl. Ex.
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`A). However, allegations contained in an opposer’s trademark application do not constitute
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`evidence of use in commerce. Actual use must be proven:
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`The allegation in an application for registration … of a date of use is not evidence on
`behalf of the applicant…; a date of use of a mark must be established by competent
`evidence. Specimens in the file of an application … are not evidence on behalf of the
`applicant … unless identified and introduced in evidence….
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`Life Zone, 87 U.S.P.Q.2d at 1959-60; Trademark Rule 2.122(b)(2) (opposer cannot rely on
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`allegation of use contained in its pending application, dismissing opposition). Neither Mr. Lierle
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`nor the Declarant in Opposer’s application (Opposer’s counsel) asserts that that the specimen
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`was actually used in 2009, nor is there evidence that either individual has personal knowledge of
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`any use at that time.
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`If Opposer had made actual and continuous use of the asserted mark in the United States
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`since before Applicant’s filing date, it surely would have presented specific facts and concrete
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`documentary evidence to demonstrate that use. Tellingly, it did not. Mr. Lierle’s assertions are
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`vague, conclusory and uncorroborated. Therefore, his testimony is not sufficiently probative to
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`establish priority, or to survive a motion for summary judgment in favor of Applicant. H.D. Lee
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`Co. v. Maidenform Inc., 87 U.S.P.Q.2d 1715, 1722-23 (T.T.A.B. 2008). The Lierle Declaration
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`should be stricken and not considered on this motion.
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`C.
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`The Indisputable Facts Demonstrate That The Term “The Difference Is Clear” Is
`Merely Descriptive Of Opposer’s Goods And Cannot Form The Basis For This
`Opposition.
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`Even if Opposer could establish priority (although it did not), it cannot prevail in this
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`opposition because Opposer’s asserted mark is merely descriptive. A trademark is not distinctive
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`and is merely descriptive if it describes an ingredient, quality, characteristic, function, feature,
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`purpose, or use of the specified goods or services. In re Gyulay, 820 F.2d 1216, 3 U.S.P.Q.2d
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`1009 (Fed. Cir. 1987) (APPLE PIE merely descriptive of potpourri); In re Bed & Breakfast
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`Registry, 791 F.2d 157, 229 U.S.P.Q. 818 (Fed. Cir. 1986) (BED & BREAKFAST REGISTRY
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`merely descriptive of lodging reservations services). A mark also is merely descriptive if it
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`immediately conveys information to relevant consumers about a quality, feature, function, or
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`characteristic of the associated goods. In re Chamber of Commerce of the U.S., 675 F.3d 1297,
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`1300, 102 U.S.P.Q.2d 1217, 1219 (Fed. Cir. 2012); In re Bayer Aktiengesellschaft, 488 F.3d
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`960, 963-64, 82 U.S.P.Q.2d 1828, 1831 (Fed. Cir. 2007).
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`Since it does not have a prior registration, Opposer carries the burden of proving that it
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`owns a distinctive trademark. Opposer has not proven, and does not even allege in its motion,
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`that the asserted mark is distinctive. The Board cannot presume distinctiveness on Opposer’s
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`behalf. For this reason alone, the opposition should be dismissed.
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`10
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`Moreover, the indisputable evidence demonstrates that Opposer’s asserted mark is not
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`distinctive because it is merely descriptive of Opposer’s goods. Opposer’s goods are “dietary
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`and nutritional supplements; vitamins,” and specifically fish oil supplements. Opposer’s own
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`evidence states that the clarity or transparency of the fish oil contained in its supplements is an
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`important feature of its goods. Opposer expressly states that the clarity of the fish oil indicates
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`that “beneficial compounds” in the oil have not been destroyed. It also expressly states that its
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`goods contain fish oil that is transparent, which indicates that beneficial compounds in the oil
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`have been preserved (supra at p. 4; Miller Decl. Ex. B-3).
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`Opposer uses the designation “the difference is clear” to demonstrate the “difference”
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`between the “clear” fish oil contained in its supplements and the dull-hued fish oil contained in
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`inferior supplements (supra at p. 4; Miller Decl. Ex. B). Therefore, Opposer’s asserted mark
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`THE DIFFERENCE IS CLEAR is merely descriptive because it immediately conveys
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`information about the ingredients, the quality, and the characteristics and features of Opposer’s
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`goods.
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`Opposer also uses several variants of the asserted mark such as “See the Difference,” “A
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`Difference That’s Clear” and “A Whole New Fish Oil with a Clear Difference,” in a descriptive
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`manner to convey the same informational message it seeks to convey by the alleged trademark
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`(supra at pp. 4-5; Miller Decl. Ex. B). These descriptive variants, which contain the dominant
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`elements of the alleged trademark, “difference” and “clear,” confirm that the alleged trademark
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`is not distinctive and is merely descriptive of Opposer’s goods as a matter of law. Opposer
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`cannot raise a genuine evidentiary dispute on this issue because the evidence is contained in
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`11
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`Opposer’s own documents. Opposer is not entitled to a trial to resolve an issue of fact intrinsic
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`in its own evidence.
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`As set forth above, numerous third parties also use the designation “the difference is
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`clear” in the same descriptive way that Opposer uses the designation. For example:
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`“Put a pill of your store bought brand of omega-3 in the freezer overnight. Then put
`Omax3® in the freezer overnight. The difference is clear. The store bought brand will be
`cloudy, even a solid white. This is the bad fats and toxins solidifying. Your body doesn't
`need them. Omax3® will remain clear," says Dr. Maroon.
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`(Miller Decl. Ex. C-12-14 at 13; Ex. C-15-18 at 17; Ex. C-24) (emphasis added). These third
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`party uses confirm that Opposer’s alleged trademark is merely descriptive. They also confirm
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`that Opposer’s alleged use is not substantially exclusive, and that Opposer is improperly seeking
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`to use this proceeding to misappropriate a common descriptive term for its own exclusive use.
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`The indisputable evidence confirms that Opposer’s mark is merely descriptive as a matter
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`of law. Opposer cannot rely on its asserted mark to support this opposition, and the opposition
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`should be dismissed.
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`D.
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`Likelihood Of Confusion Is Not Material In This Case Because Opposer Does
`Have A Valid Trademark Or Priority Relative To Applicant.
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`Since Opposer has failed to establish priority as a matter of law, likelihood of confusion
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`is not a material issue in this case and the Board need not reach it. Life Zone, 87 U.S.P.Q.2d at
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`1959-60 (dismissing opposition based on alleged likelihood of confusion because opposer failed
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`to establish priority); Syngenta, 90 U.S.P.Q.2d at 1118-19. Even if Opposer could demonstrate
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`priority as a matter of law (al