Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA666678
`ESTTA Tracking number:
`04/14/2015
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91216751
`Defendant
`Howard J. Nemovitz
`VINCENT CARL LOBUE
`PO BOX 707
`ST PETERSBURG, FL 33731
`UNITED STATES
`hnemovitz@gmail.com, lobuelaw@gmail.com
`Motion for Summary Judgment
`Vincent Carl LoBue
`lobuelaw@gmail.com
`/s/ Vincent Carl LoBue
`04/14/2015
`0501 MSJ CC, Response (final).pdf(5425773 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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`UNITED STATES PATENT AND TRADEMARK OFFICE
`IN
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Trademark Application Serial No. 86065832
`Published in the Oflical Gazette on April 8, 2014
`’
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`BIOMEDICAL RESEARCH
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`LABORATORIES, LLC,
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`Opposer,
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`VS.
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`HOWARD J. NEMOVITZ,
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`Applicant.
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`I
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`Opposition Number: 9121675 1
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`APPLICANT’S VERIFIED CROSS-MOTION FOR SUMMARY JUDGMENT
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`RESPONSE TO OPPOSER’S MOTION FOR SUMMARY JUDGMENT AND
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`INCORPORATED MEMORANDUM OF LAW
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`COMES NOW, Applicant HOWARD J. NEMOVITZ (“Applicant”), by and through
`undersigned counsel, pursuant to Federal Rule of Civil Procedure 56, 87 CPR. § 2.127 and
`TBMP § 528, hereby files
`combined Cross-l\/lotion For Summary Judgment, Response to.
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`Opposer’s Motion for Summary Judgment and Incorporated Memorandum of Law against
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`Opposer Biomedical Research Laboratories, LLC ("Opposer" or “BRL”). Applicant respectfully
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`requests this Honorable Board to: enter an order denying Opposer’s Motion for Summary
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`Judgment on Applicant’s Counter-Claim; and enter an order granting Applicant’s Verified
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`Cross-Motion for Summary Judgment cancelling the registration of Opposer’s “EPO-Equine”
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`(Federal Trademark Serial No. 85516604) on the Secondary Registry. In support Applicant
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`states as follows:
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`PROCEDURAL HISTORY AND UNDISPUTED FACTS
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`1. On May 7, 2014, Opposer filed its extension oftime to oppose Applicant’s mark.
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`2. On 9, 2014 Opposer initiated a Notice of Opposition opposing App1icant’s registration of
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`the above referenced mark. §_e_e: Docket #1.
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`3. On July 18, 2014, Applicant filed his Answer and Affirmative Defenses to Opposer’s Notice
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`of Opposition and initiated a Counter-Claim for cancelation of Opposer’s “EPO—Equine” mark.
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`%: Docket #4.
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`4. On August 29, 2014, Opposer filed its Answer and “Separate Defenses” to Applicant’s
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`Counter-Claim. E: Docket #6. The six defenses are as follows:
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`a) “1. Petitioner} has failed to plead a statutory ground or grounds for cancellation”;
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`b) “2. Petitionerhas failed to state a claim upon which relief can be granted”;
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`c) “3. Petitioner does not have any trademark rights to the EPO-EQUINE mark”;
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`d) “4. Petitioner is barred from bringing his counterclaim due to the doctrines of Laches.
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`Petitioner was a distributor2 of Opposer’s brand and profited from Opposer’s goodwill and
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`name and had unduly waited to bring his action”;
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`e) “5. Petitioner is barred from bringing his counterclaim due to estoppel by acquiescence.
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`Petitioner was a distributor of Opposer’s brand and was well aware of his goodwill and use of
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`the mark but unduly waited to bring his action”; and
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`1 The word “Petitioner” is not defined anywhere in Opposer’s Answer. As explained infra
`Opposer’s “Separate Defenses” fail as a matter of law, however the failure to even correctly
`define the Applicant illustrates the legally insufficiency of these Defenses.
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`20 Opposer’s claims that Applicant and Opposer had entered into a distribution agreement is
`plainly incorrect at best.
`_S_§_e: Docket #6 Separate Defenses at Paragraphs 4-6. Applicant acting
`solely in his corporate capacity entered into a distribution agreement on behalf of Black Magic
`Flex—Tite, Inc., a Florida Corporation. Applicant and Opposer, along with Blane Magic Flex-
`Tite, Inc., entered into a settlement agreement (the “SA”) as result of the dispute. A clear factual
`recitation of this dispute is found in the recital section of the SA. SQ: Exhibit “A” to Docket #4
`at Recital Paragraphs A-K.
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`

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`f)
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`“6. Petitioner is barred from bringing his counterclaim due to ‘Unclean Hands’. Petitioner
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`entered into a distribution agreement with Opposer under false pretenses to gain competitive
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`advantage and has ‘Unclean Hands .
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`‘5. On February 17, 2015, Opposer filed its Motion for Summary Judgment as to Applicant’s
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`Counter-Claim. %: Docket #8.
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`6.
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`It is undisputed that “EPO” is the recognized symbol3 forerythropoietin, a glycoprotein
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`hormone that controls erythropoiesis, or red blood cell production.
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`7.
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`It is undisputed that the parties entered into a settlement agreement annexed as Exhibit “A”
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`(the “SA”) to Applicant’s Counter-Claim. fiz Exhibit “A” to Docket #4. The SA was
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`knowingly and voluntarily entered into after Opposer sought an extension of time on May 7,
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`2014 to file its Notice of Opposition. The SA was executed by Opposer on June 13, 2014, and
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`by Applicant on June l6, 2014, while the effective date of the SA is May 26, 2014.
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`8. The SA includes the following express waiver provision:
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`In consideration of the above, BRL agrees to release and discharge Defendants , jointly
`and severely, from any and ‘all claims, actions, causes of actions, grievances, obligations,
`rights, losses or liabilities of whatever nature, whether known or unknown, disclosed or
`undisclosed, asserted or un-asserted, in law and equity, contract or tort, or otherwise,
`including without limitation, any claims arising under federal, state or local law, and any A
`claims arising out of the relationship of the Parties prior to executing this Agreement and
`Recital(s) F, G, and H inclusive that are known and occurred prior to the effective date of
`this Agreement. This release shall not affect the Parties’ claims and/or rights with respect
`to any conduct that occurs after the effective date ofthis Agreement, with the understanding
`that no such additional claim shall arise unless there is a breach of this Agreement. Further,
`the Parties intend that said release shall fully discharge the Defendants, jointly and
`severely, to the maximum extent permitted by law for past conduct. _S_eg: Exhibit “A” to
`Docket #4 at Paragraph 12.
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`3 “EPO” is the approved symbol designated for erythropoietin by the HUGO Gene
`Nomenclature Committee (HGNC). HGNC is responsible for approving unique symbols and
`names for human loci, including protein coding genes, ncRNA genes and pseudogenes, to allow-
`unambiguous scientific communication.
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`/
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`
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`

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`STANDARD or REVIEW
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`Summary judgment is appropriate where there are no genuine issues of material fact and the A
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`moving party is therefore entitled to judgment as a matter of law. Fed.
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`Civ. P. 56(c). This
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`Honorable Board’s rules of procedure encourage the useof summary judgment to narrow the
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`issues and fi.11'th€I'
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`the goal ofjudicial economy. TBMP § 528. The moving party carries the
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`burden of establishing the absence of genuine issues of material fact. Celotex Corp. v.
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`Caz‘rett,477 U.S. 317, 321-323 (1986). Only once the moving party has met this burden, the
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`non-moving party must present specific facts showing genuine issues for trial. Id. The non-
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`moving party must identify specific facts through admissible evidence to show a genuine issue
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`for trial. Id; Fed. R. Civ. P. 56(c).
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`LEGAL ARGUMENT AND INCORPORATED MEMORANDUM
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`LAW
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`1.
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`()pposer’s Motion for Summary Judgment must be Denied due to Contractual Waiver
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`As a threshold matter Opposer’s Motion for Summary Judgment must be summarily denied
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`as Opposer knowingly and voluntarily waived any potential opposition to Ap'plicant’s mark.
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`Specifically, Opposer voluntarily and expressly waived the following:
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`[a]ny and all claims, actions, causes of actions, grievances, obligations, rights, losses or
`liabilities of whatever nature, whether known or unknown, disclosed or undisclosed, asserted
`or un—asserted, in law and equity, contract or tort, or otherwise, including without limitation,
`any claims arising under federal, state or local
`law, and any claims arising out of the
`relationship of the Parties prior to executing this Agreement and Recital(s) F, G, and H
`inclusive that are known and occurred prior to the effective date ofthis Agreement. This release
`shall not affect the Parties’ claims and/or rights with respect to any conduct that occurs after
`the effective date of this Agreement, with the understanding that no such additional claim shall
`arise unless there is a breach of this Agreement. Further, the Parties intend that said release
`shall fully discharge the Defendants, jointly and severely, to the maximum extent permitted by
`law for past conduct. fig: Exhibit “A” to Docket #4 at Paragraph 12.
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`As stated by the Federal Circuit, ‘“[t]here is a compelling public interest and policy in upholding
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`and enforcing settlement agreements voluntarily entered into’ because enforcement of settlement
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`4
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`
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`to agreements encourages parties to enter into them —é thus fostering judicial economy”. Flex-Foot,
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`0 Inc. v. CRP, Inc., 283 F.3d 1362, 1369 (Fed. Cir. 2001) (emphasis added) (enforcing a contractual
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`Waiver provision in a patent infringement action between two parties who entered into a settlement
`agreement over prior disputes) (citing to Hemstreet v. Spiefel, Inc., 851 F.2d 348 (Fed. Cir. 1988);
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`Hemstreet v. Spiegel, Inc.,_851 F.2d 348 (Fed.Cir. 1988); Foster v. Hallco Mfg. Co. 947 F.2d 469
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`(Fed.Cir. 1 991); Studiengesellschafi‘ Kolzle M.B.H v. Shell Oil C0.,_112 F.3d 1561 (Fed.
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`Cir. 1 997)).
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`A simple reference to the calendar reveals that during the pendency of the extension of time to
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`file a Notice of Opposition, Opposer voluntarily entered into the SA including the express waiver
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`provision cited above. As a result of this contractual waiver, any and all opposition stated in
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`Opposer’s Motion. for Summary Judgment was Voluntarily waived as a matter of law. Id
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`II.
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`Applicant’s Motion for Summary Judgment should be Granted as 0pposer’s
`“Separate Defenses” are Insufficient as a Matter of Law
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`Opposer raised six affirmative defenses to Applicant’s Counter-Claim labeled as Separate
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`Defenses. As a threshold matter as to Separate Defenses 1-6 the defenses are insufficiently pled as
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`stated in footnote 1 supra — Opposer failed to identify or define any natural person or business
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`entity named Petitioner. The sloppy non-identification of this phantom Petitioner, fails to meet
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`the fair notice pleading requirements of the Federal Rules of Civil Procedure (the “fair notice
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`pleading requirements”). Federal Rules ofCivil Procedure 8 and 9, see Microsofi‘ Corp. v. Jesse ’s
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`Computers & Repair, Inc., 211 F .R.D. 681 (M.D. Fla. 2002).
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`As to Opposer’slSeparate Defense 1, Opposer failed to meet the pleading standard required by
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`the Federal Rules of Civil Procedure. Furthermore as to Separate Defense 1, Opposer fails to name
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`or identify in a short, plain and concise manner the statute that which Applicant allegedly failed to
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`comply with in bringing the Counter-Claim. Having failed to identify in a short, plain and concise
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`A manner the alleged statutory scheme, Opposer has failed to meet the fair notice pleading
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`requirements.
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`As to Opposer’s Separate Defense 2, Applicant has pled a prima—facie case containingall of
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`the elements necessary to plea a Counter-Claim for cancellation of Opposer’s mark. E: Docket
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`#4. Furthermore Opposer fails to identify in a short, plain and concise manner how Applicant’s
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`Counter—Claim fails to state a cause ofaction. Having failed to identify in a short, plain and concise
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`manner any actual deficiencies leading to a failure to state a cause of action, Opposer has failed to
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`meet the fair notice pleading requirements.
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`As to Opposer’s Separate Defense 3, at no time during the pendency of Applicant’s attempt to
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`register his mark has Applicant ever indicated in any way it has trademark rights to Opposer’s
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`mark. Opposer failed to identify in a short, plain and concise manner how in any conceivable
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`fashion that Applicant has sought trademark» rights to the EPO-EQUINE mark. Having failed to
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`identify in a short, plain and concise manner any conceivable way Applicant has sought trademark
`rights to Opposer’s mark, Opposer has failed to meet the fair notice pleading requirements.
`As to Opposer’s Separate Defense 4, Opposer asserts that Applicant and Opposer entered into
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`a distribution agreement. As stated in footnote 2 supra, this allegation is at best wholly incorrect.
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`As indicated by Opposer’s lack of attention to detail in naming an unidentified individual (or
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`maybe entity) named Petitioner, Opposer has most likely committed the same sin as to the capacity
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`in which the Applicant has acted. It is Applicant’s sincere belief that Opposer did not intentionally
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`conflate Opposer and Black Magic Flex-Tite, Inc. a Florida Corporation, in attempt to mislead this
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`Honorable Board. However, Opposer’s Separate Defense 4 as alleged makes a plain, short and
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`concise misstatement of fact that leads to the legal failure of Separate Defense 4. Additionally,
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`because Opposer inaccurately and carelessly pleas that Applicant and Opposer had a contractual
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`

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`relationship when non-existed, Opposer has failed to meet the fair notice pleading requirements.
`Lastly, as to the merit ofthe Laches defense raised by Separate Defense 4, Applicant timely filed
`its Counter-Claim only after Opposer put its mark at issue by initiating this Opposition. Because
`Applicant timely sought his Counter-Claim for cancellation within the time allotted, Opposer’s
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`Separate Defense 4 fails as a matter of law.
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`As to Opposer’s Separate Defense 5, Opposer again asserts that the allegation made by
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`Opposer that Applicant and Opposer had entered into a distribution agreement
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`is wholly
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`inaccurate. For the reason set forth supra Separate Defense 5, fails for similar reasons as Separate
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`Defense 4 because of this patent misstatement of fact. Similarly, Separate Defense 5 like Separate
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`Defense 4, fails to meet the fair notice pleading requirements. As to the merits of the inaccurately
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`plead Separate Defense 5 of Estoppel Due to Acquiescence for failure to timely act, as argued
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`supra in response to Separate Defense 4 Applicant
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`timely sought his Counter-Claim for
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`cancellation within the time allotted by the rule and therefore Opposer’s—Separate Defense 4 fails —
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`as a matter of law.
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`As to Opposer’s Separate Defense 6, it too contains the same inaccurate factual allegation that
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`is contained in Separate Defenses _4 and 5 and therefore fails for the same reasons. _Also like
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`Separate Defenses 4 and 5, the inaccurate factual allegation fails to meet the fair notice pleading
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`requirements. Lastly, and unlike Separate Defenses 4 and 5 (which essentially say you waited too
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`long) Separate Defense 6 relies squarely on the misstated factual allegation that Applicant and
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`Opposer entered into a distributionlcontract under false pretenses. Here the misstatement of fact
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`is logically damning as there was never a distribution contract between Applicant and Opposer
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`and therefore the defense fails on its face.
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`For the reasons set forth above Opposer’s Separate Defenses fail to raise any issue of lavvp to
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`prevent the entry of Summary Judgment as to Applicant’s Counter-Claim.
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`III.
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`Applicant’s Motion for Summary Judgment must be Granted and Opposer’s
`Motion for Summary Judgment must be Denied as a Matter of Law because
`Opposer’s Mark is Generic as Defined by the U.S. Trademark Act
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`In determining eligibility for registration and protection under the U.S. Trademark iAct,4 courts
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`recognize four general categories of trademarks: 1) generic; 2) descriptive; 3) suggestive; and K4)
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`arbitrary or fanciful. Filipino Yellow Pages, 198 F.3d at 1146 (citing Surgicenters of/1m., Inc. v.
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`Med. Dental Surgeries, Co., 601 F.2d 1011, 1014 (9th Cir.1979)). A generic term, also known as
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`a common descriptive term, refers to the type or species of the product at issue. Rudolph Intern,
`Inc. v. Realys, Ine., 482 F.3d 1195 (9th Cir., 2007). Generic terms cannot be protected trademarks
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`and are ineligible for registration on either the primary or supplemental registers. Id., 15 USC
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`§§ 1052 and 1091(a). Descriptive marks may be registered on the primary registry only where
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`they are demonstrated to have ”‘secondary meaning’ in the minds of consumers, i.e., [they] become
`distinctive of the trademark applicant's goods in commerce." Id. 5 Marks that are suggestive,
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`arbitrary or fanciful can be protected and registered on the primary registry without demonstrating
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`secondary meaning. See AMF, Inc. v. Sleekcrafi‘ Boats, 599 F.2d 341, 349 (9th Cir.1979).
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`For the reasons set forth herein, Applicant asserts that Opposer’s mark “EPO-EQUINE”
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`(Federal Trademark Serial No. 85516604) is indisputably generic, and its previous registration on
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`the supplemental register is in contravention of the requirements of 15 USC §§ 1052 and l091(a)
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`of the US. Trademark Act. It is important to note that, to the extent that Opposer’s application for
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`4 USC Title 15, Chapter 22 (the Act).
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`5 As in the original registration of Opposer’s “EPO-EQUINE” mark, a descriptive mark which
`is found not to have secondary meaning may nonetheless be registered on the supplemental registry
`subject to 15 USC § 1091.
`It
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`

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`its mark on the primary registry was rejected by the USPTO, it registration on the
`registration
`supplementalregistry provides no presumption ofValidity,
`Generic marks "give the general name ofthe product; theyembrace an entire class ofproducts"
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`and receive no trademark protection. Cg Roxane LLC v. Fiji Water Co. LLC, 569 F.Supp.2d 1019
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`(N.D. Cal., 2008)(citing, Kendall—Jacks0n Winery, Ltd
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`E. & J Gallo Winery, 150 F.3d 1042,
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`1047 (9th Cir. 1998); Colt Defense LLC v. Bushmaster Firearms, Inc., 486 F.3d 701 (1st Cir.,
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`2007) ("A generic term is one that does not distinguish the goods of one producer from the goods
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`of others. Instead, it is one that either by definition or through common use has come to be
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`understood as referring to the genus ofwhich the particular product is a species") (quoting Keebler
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`Co. v. Rovira Biscuit Corp, 624 F.2d 366, 373-74 (1st Cir. 1980) (internal quotations and citations
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`omitted)).
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`Allowing a producer to trademark a generic word or phrase would place an undue burden on
`competition contrary to the goals oftrademark law and is therefore prohibitedé. Cg Roxane LLC
`v. Fiji Water Co. LLC, 569 F.Supp.2d 1019 (N.D. Cal., 2008)(citing Intel Corp. v. Terabyte Int’l
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`Inc., 6 F.3d 614, 618 (9th Cir.l993).
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`_“To determine genericness, courts often refer to the ‘who—are-you/what-are-you’ test.” Id.
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`(citing Filipino Yellow Pages, 198 F.3d at 1147; and Official Airline Guides, Inc. v. (loss, 6 F.3d
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`1385, 1391 (9th Cir.1993)). “A valid trademark answers the former question while a generic mark
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`answers the latter question
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`[i]f the primary significance of the trademark is to describe the type
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`ofproduct rather than the producer, the trademark [is] a generic term and [cannot be] a Valid
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`6 Opposer’s mischaracterization of Applicant’s position as to this point in Section C of its
`Motion for Summary Judgment is nothing more than a cheap attempt to pigeon hole and ignore
`this crystal clear point of law — extending trademark protection to a generic mark sets the stage
`for anti—competitiVe conduct. Cg Roxane LLC v. Fzji Water Co. LLC, 569 F.Supp.2d 1019 (N.D.
`Cal., 2008)(citing Intel Corp. v. Terabyte Int’l Inc. , 6 F.3d 614, 618 (9th Cir.l993).
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`9
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`
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`trademarks" ilipino Yellow Pages, 98 F.3d at 1147 (quoting Anti-Monopoly, Inc. v.
`1
`Fun Group, 611 F.2d 296, 304 (9th Cir.l979)) (emphasis in original).
`i The relevant marketplace for determining the distinctiveness ofOpposer’s mark can generally
`be described as consistingiof horse owners and trainers seeking to enhance the stamina and
`endurance performance of equine athletes in horseracing.
`It is undisputed by Applicant that the
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`Mills
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`use ofproducts containing synthetic EPO are prohibited by governing authorities charged with the
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`regulation of horseracing in virtually every jurisdiction within that marketplace.
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`It is likewise
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`undisputed that both Applicant and Opposer are competitors in that marketplace, that neither of
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`their respective products contain synthetic EPO, and that both of their respective products are
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`marketed as supplements specifically formulated to enhance natural EPO production in equine
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`athletes.
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`Opposer’s mark on its face, is nothing more than the combination two generic terms: “EPO”
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`the internationally designated symbol for erythropoietin; and “EQUINE7” a generic term formed
`from the Latin root “equus or equi” meaning ‘i‘horse” and the Latin adjectival suffix “-ine” meaning
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`“of, relating to”. The combination two generic terms is not per-se generic, however there is
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`nothing in Opposer’s combination of generic terms “EPO—EQUlNE” which could reasonably be
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`conceived as descriptive of Opposer. Nor does this mark otherwise distinguish Opposer’s product,
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`either qualitatively, geographically, or in any other way, from the products of its competitors,
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`including Applicant.
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`7 See, definitions of “equine” and “-ine” at http2//dictionaryreference.com/browse/equine and
`http://dictionaryreference.com/browse/-ine. See also, Vision Centeriv. Opticks, Inc., 596 F.2d
`111, 202 U.S.P. Q. 333 (CA. 5 (La), 1979) ("The dictionary definition ofthe word is an appropriate
`“and relevant indication ‘ofthe ordinary significance and meaning of words’ to the public." [quoting
`American Heritage Life Ins. Co. v. Heritage Life Ins. Co., supra, 494 F.2d at 11]).
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`10
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`

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`Instead, Opposer’s mark is descriptive solely of the general class of products defining the
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`A marketplace in which both Opposer and Applicant are competitors —— namely, the marketplace of
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`supplements specifically formulated to enhance EPO production in equine athletes. As such,
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`“EPAO-Equine” is plainly and categorically generic within the meaning ofthe controlling decisional
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`law governing the register-ability ofmarks under the Act. Filipino Yellow Pages, 198 F.3d at 1 147
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`“If the primary significance of the trademark is to describe the type of product rather than the
`producer, thetrademark [is] a generic term and [cannot be] a valid trademark." [quoting Anti-
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`Monopoly, Inc. v. Gen. Mills Fun Group, 611 F.2d 296, 304 (9th Cir.l979)]).
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`The generic character of Opposer’s “EPO-Equine” mark is likewise demonstrated by
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`Opposer’s own use8 — particularly in comparison with its use of its equally generic “EPO-Canine”
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`mark registered for its similar EPO supplement formulated for sale to owners and trainers of canine
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`athletes (Federal Trademark Serial No. 85516604). Both products are supplements formulated to
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`enhance natural EPO production. ~ Both marks share the same generic prefix “EPO”, and are
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`otherwise distinguished only by the generic suffix of “Equine” or “Canine”, indicative of the
`general type ofanimal for which they are marketed. It is frankly difficult to imagine a more generic
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`formulation for a mark identifying supplements formulated to enhance natural EPO production in
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`horses and dogs9. Indeed, were the relevant governing authorities to extend the scope of permitted
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`3 Colt Defense LLC v. Bushmaster Firearms, Inc., 486 F.3d 701 (1st Cir., 2007)(“Generic use
`by the party seeking trademark protection is relevant because ‘ [a] kind of estoppel arises when the
`proponent of [a] trademark use is proven to have itself used the term before the public as a generic
`name. ;
`. .’ McCarthy§ 12:13.”)
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`9 To the extent that genericness is an absolute bar to registration and protection under the Act,
`all of the arguments presented demonstrating the generic character of Opposer’s “EPO-Equine”
`mark would apply with equal force to demonstrate the generic character of Opposer’s “EPO-
`Canine” mark. Additionally, the EPO~Equine mark is registered on the supplemental registry and
`does not enjoy any presumptions of validity; this is in comparison to the EPO-Canine mark which
`is registered on the primary registry and therefore the EPO-Canine mark benefits from a
`presumption of validity that the EPO-Equine mark lacks.
`‘
`
`11
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`

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`para-mutual racing to include icows, cats and pigs, one could readily imagine Opposer’s prompt
`applications for registration of‘i‘EPO-Bovine”, “LEPO-Feline” and “EPO-Porcine”i .
`lmportantly, because of its plainly generic character, Opposer’s “EPQ-Equine” mark fails to
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`satisfy the essential requirement for registration on the primary or secondary registry; the marks
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`ineligibility for registration and protection under the Act cannot be overcome by evidence of
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`“secondary meaning” developed as a result of Opposer’s use as the Act prohibits the registration
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`of generic terms as inherently anti-competitive.
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`As explained by Judge Friendly in his seminal trademark decision in Abercrombie & Fitch Co.
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`v. Hunting World, Inc.:
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`the Lanham Act makes an important exception with respect to those merely
`While
`descriptive terms which have acquired secondary meaning, see § 2(f), 15 U.S.C. § 1052(f),
`it offers no such exception for genericmarks. The Act provides for the cancellation of a
`registered mark if at any time it "becomes the common descriptive name of an article or
`substance," § l4(c). This means that even proof of secondary meaning, by virtue of which
`some "merely descriptive" marks may be registered, cannot transform a generic term into
`a subject for trademark. As explained in J. Kohnstam, Ltd. v. Louis Marx and Company,
`280 F.2d 437, 440, 47 CCPA 1080 (1960), no matter how much money and effort the
`user of a generic term has poured into promoting the sale of its merchandise and what
`success it has achievetiiin securing public identification, it cannot tieprive competing
`manufacturers of the product of the right to call an article by its name. See, accord,
`Application of Preformed Line Products Co., 323 F.2d 1007, 51 CCPA 775 (1963); Weiss
`Noodle Co. V. Golden Cracknel and Specialty Co., 290 F.2d 845, 48 CCPA 1004 (1961);
`Application of Searle & Co., 360 F.2d 650, 53 CCPA 1192 (1966). We have recently had
`occasion to apply this doctrine of the impossibility of achieving trademark protection for a
`generic term, CES Publishing Corp. v. St. Regis Publications, Inc, 531 F.2d 11 (1975).
`
`... As indicated in the cases cited in the discussion ofthe unregister—ability of generic terms,
`"common descriptive name," as used in §§ 14(c) and 15(4), refers to generic terms applied
`to products and not to terms that are "merely descriptive." In the former case any claim to
`an exclusive right must be denied since this in effect would confer amonopoly not only of
`the mark but of the product by rendering a competitor unable effectively to name what it
`was endgavoring to sell. 537 F.2d 4, 189 U.S.P.Q. 759 (C.A.2 (N.Y.), 1976) (emphasis
`added)"
`«
`
`1° Like Opposer’s “straw man” confusion arguments directed to trade dress not asserted as-
`part of Applicant’s application for primary registration of its “PurePower” mark, Opposer’s
`arguments regarding its substantial investments and market success are but a distraction intended
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`12
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`In the instant case, not only is Opposer’s “EPO-Equine” mark fatally generic, but Opposer’s
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`claims of confusion in opposing Applicant’s registration of its “PurePower” mark is a fatal
`admission by Opposer demonstrating its deliberate use ofthe legal rights it is afforded underthe
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`secondary registration as part of a calculated and anticompetitive” strategy to preclude use of the
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`generic term “EPO” by competitors in any marketplace where they offer competing supplements
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`formulated to enhance natural EPO production.
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`If this Honorable Board was to grant Opposer’s Motion for Summary Judgment, not only
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`would it be sustaining a registration plainly in violation ofthe Act, but in the context ofOpposer’s
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`demonstrated willingness to assert its legal rights from the secondary registration to gain an
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`anticompetitive advantage, such a ruling would encourage and empower precisely the kind of
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`‘trademark bullying’ that harms both competition and competitors, and is antithetical to the
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`fundamental purposes of the Act.
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`[THIS SPACE INTENTIONALLY LEFT BLANK CONTINUED ON NEXT PAGE]
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`to obscure Opposer’s failure to otherwise address the fatally generic nature of its “EPO-Equine”
`mark.
`It is also of note that Opposer’s smoke screen market success rhetoric is not supported by
`an affidavit and is nothing more than inadmissible puffery
`
`” As evidenced by the SA, Opposer’s willingness to utilize its generic mark to engage in
`trademark bullying is apparent and further evidences the danger in allowing Opposer to maintain
`secondary registration of a generic mark. Even further Opposer’s opposition to Applicant’s mark
`is 100% in conflict with the SA’s ratification of changes provision as to Applicant’s trade dress
`found in Paragraph 9 of the SA. &: Exhibit “A” to Docket #4 at Paragraph 9.
`
`13
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`APPLICANT’S VERIFICATION
`
`State of Florida
`V
`V
`L
`Pinellas County
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`)
`)
`)
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`My name is Howard J. Nemovitz, I am the Applicant.
`
`I am over the age of eighteen (18), I
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`have personal knowledge of the matters contained herein and I am competent to testify to the
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`same. Iswear that I have read the foregoing and the facts contained herein are true and correct to
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`the best of my knowledge.
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`I swear that I never individually entered into a distribution agreement
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`with Opposer.
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`I further swear that Exhibit “A” to Docket #4 is a true andxcorrect copy of the
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`Settlement Agreement entered into with Opposer and that the facts and recitals contained therein
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`are true and correct to the best of my knowledge.
`
`FURTHER AFFIANT SAYETH NAIIGHT.
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`Dated: April 2"
`
`2015
`
`
`
`BEFORE ME, the undersigned authority, personally appeared Howard J. Nemovitz, who
`,....
`roduced f‘
`
`I3
`
`"I
`5»
`
`Y
`
`‘\
`D1’:
`
`a
`.
`.
`.
`.
`‘are: ‘7 L1‘: 5,12 Identification executed the fore om document and who
`E’
`S
`g
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`acknowledged before me that he duly executed the forgoing instrument. WITNESS my hand
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`and seal at the State and County aforesaid, this day I H
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`of April 2015.
`
` ,
`NOTARY PUBLIC
`
`14
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`

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`WHEREFORE, Applicant HOWARD J. NEMOVITZ, respectfully request that this
`
`Honorable Board enter and order (or orders):
`
`I
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`a) DENYING Opp0ser’s Motion for Summary Judgment as to Applicant’s Counter-Claim
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`for cancellation;
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`b) GRANTING Applicant’s Verified Motion for Summary Judgment as to Applicant’s
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`Counter-Claim for cancellation;
`
`c)
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`that cancels the registration of Opposer’s EPO-Equine mark (Federal Trademark Serial
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`No. 85516604) on the supplemental registry; and
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`d) GRANTING any other relief deemed just and proper.
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`CERTIFICATE OF SERVICE
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`I HEREBY CERTIFY, that a true and correct copy of the foregoing was served on the
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`’ Opposer on this 14”“ day of April, 2015 Via email to: pamon@brlscience.com; and Via U.S. Mail
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`‘ to 700 West E Street, Suite 2303, San Diego, California 92101.
`
`/s/ Vincent Carl LoBue
`
`Vincent Carl LoBue, Esq.
`
`I CERTIFICATION OF ELECTRONIC FILING
`
`I HEREBY CERTIFY, that this submission is being filed with the United StatesiPatent and
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`Trademark Office Via the Electronic System for Trademark Trials and Appeals (ESTTA) on this
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`14”’ day of April, 2015.
`
`/s/ Vincent Carl LoBue
`
`Vincent Carl LoBue,-Esq.
`Florida Bar Number: 0064368
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`P.O. Box 707
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`St. Petersburg, Florida 33731
`Phone: 727-501-5455
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`Fax: 888-958-5453
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`lobuelaw@gmail.corn
`Attorney for Applicant
`
`15