Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
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`ESTTA874114
`
`Filing date:
`
`01/30/2018
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91226951
`
`Party
`
`Correspondence
`Address
`
`Plaintiff
`The Wonderful Company LLC
`
`Christopher G. Ranson
`ROLL LAW GROUP PC
`11444 WEST OLYMPIC BLVD, 7TH FLOOR
`LOS ANGELES, CA 90064-1557
`UNITED STATES
`Email: ipdocketing@roll.com, susan.bryant@roll.com, victoria.rose@roll.com,
`christopher.ranson@roll.com
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Opposition/Response to Motion
`
`Christopher G. Ranson
`
`christopher.ranson@roll.com, ipdocketing@roll.com
`
`/ Christopher G. Ranson /
`
`01/30/2018
`
`Opposition_001.pdf(619515 bytes )
`Ranson Decl_001.pdf(1705376 bytes )
`Krause Decl_001.pdf(343337 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`The Wonderful Company LLC,
`
`Opposition No.: 91226951
`
`Opposer,
`
`V.
`
`Mastronardi Produce Limited,
`
`Applicant.
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`Mark: WONDERS OF WINTER
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`Application Ser. No.: 86494181
`
`Published in the Official Gazette on
`September 22, 2015
`
`vvvvvvvvvvvvv
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`OPPOSER’S OPPOSITION TO APPLICANT’S MOTION FOR SUMMARY
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`JUDGMENT ON THE ISSUE OF ABANDONMENT
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`Pursuant to Federal Rules of Civil Procedure, Rule 56, 37 C.F.R. 2.11(a), 37 C.F.R.
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`2.127(4), and Trademark Trial and Appeal Board Manual of Procedures ("TBMP") § 528, et
`
`seg., Opposer The Wonderful Company LLC (“TWC”) respectfully submits this Opposition to
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`Applicant Mastronardi Produce Limited’s (“Applicant” or “Mastronardi”) Motion for Summary
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`Judgment on the Issue of Abandonment (“Applicant’s Motion”) filed on December 15, 2017.
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`This motion is timely based on the parties stipulated motion, filed on December 18, 2017
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`(Docket No. 29), in which the parties agreed that TWC had until January 30, 2018 to oppose
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`Applicant’s Motion. The stipulated Motion was granted by the Board on January 22, 2018.
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`(Docket No. 30).
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`I.
`
`INTRODUCTION
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`Applicant’s Motion boils down to two allegations:
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`{27928041}
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`1
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`

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`c Applicant alleges Registration No. 2,839,828, for the WONDER FRUIT word mark, in
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`International Class 31, for “fresh fruits and vegetables” (“WONDER FRUIT Mark”) was
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`not used between 2014 and 2017, and therefore Applicant is entitled to a presumption of
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`abandonment.
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`«- Applicant alleges that TWC offered no evidence of an intent to use the WONDER
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`FRUIT Mark.
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`Both of Applicant’s allegations are without merit. First, there was never three
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`consecutive years during which the WONDER FRUIT Mark was not used — therefore Applicant
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`is not entitled to a presumption of abandonment. Second, TWC had a continuous and bona fide
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`intent to: (1) first acquire; and (2) then use the WONDER FRUIT Mark in commerce as outlined
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`below.
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`For those reasons, Applicant’s motion for summary judgment based on its claim of
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`abandonment should be denied.
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`II.
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`STATEMENT OF FACTS
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`Registration No. 2,839,828, for the WONDER FRUIT Mark, in International Class 31,
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`for “fresh fruits and vegetables” was issued by the USPTO on May 11, 2004 to applicant W.
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`Deemer Class & Son. (USPTO TSDR database records for Registration No. 2,839,828 attached
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`as Exhibit F, page 10, to the Declaration of Karen K. Gaunt in support of Applicant’s Motion
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`(“Gaunt Decl.”)). Thereafter, on January 2, 2014, the WONDER FRUIT Mark was assigned to
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`W. Deemer Class & Son, LLC (“Deemer”). (Id. at pg. 26)
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`A.
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`Use of The Mark Before TWC Acquired It
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`On March 6, 2014, Deemer filed a Section 8 Declaration of Use for the WONDER
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`FRUIT Mark, which was accepted by the USPTO on March 26, 2014. (Gaunt Decl., Ex. F at
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`pages 14-15, 25). TWC became aware of the WONDER FRUIT Mark in 2015. (July 6, 2017,
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`{2792804.1}
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`2
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`

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`Deposition of David Krause attached as Exhibit D to the Gaunt Decl. (“Krause Depo”) at 16:15-
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`18). In August 2015, TWC approached Deemer to see if Deemer would be interested in selling
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`the WONDER FRUIT mark to TWC. (Declaration of Christopher Ranson in support of TWC’s
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`Opposition to Applicant’s Motion (“Ranson Decl.”), Ex. 1, Supp. Resp. No. 6). From August
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`2015 through February 2016, TWC and Deemer engaged in negotiations to acquire the
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`WONDER FRUIT mark. (Id.)
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`B.
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`Use of The Mark During The Negotiation Stage
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`During that negotiation period Bob Class, from Deemer, contacted Wonderful Citrus on
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`October 27, 2015. (Ranson Decl., Ex. 2). Mr. Class wanted to know the status of the WONDER
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`FRUIT Mark acquisition because Deemer was about to manufacture an additional million
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`containers using the WONDER FRUIT Mark for an in school promotion. (M) Mr. Class stated
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`that if the WONDER FRUIT Mark was going to be acquired then Deemer would change its label
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`before manufacturing those additional containers. (Id.). Therefore, while TWC had no actual
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`knowledge of the Mark’s use in 2015, it relied on representations made to it which suggested that
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`in the October 2015 time period — just several months before TWC acquired the mark — it was in
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`use.
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`C.
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`Intent to Use and Use of The Mark After TWC Acquired It
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`On February 22, 2016, the deal was completed at which time Deemer assigned the
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`WONDER FRUIT Mark to TWC. (Ranson Decl., Ex. 1, Supp. Resp. No. 6; Gaunt Decl., Ex. 6.,
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`page 10).
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`TWC is the parent company of Wonderful Citrus LLC (“Wonderful Citrus”). (Krause
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`Depo at 9:8—17). Wonderful Citrus grows, packs, ships, and sells a variety of citrus products
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`including, but not limited to, mandarins, clementines, lemons, limes, oranges, and grapefruits.
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`{2792804.1}
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`3
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`(Krause Depo at 11:15-12:1). Wonderful Citrus’ products are sold both in the United States and
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`internationally. (Id.)
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`Applicant deposed, David Krause, the President of Wonderful Citrus on July 6, 2017.
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`(Krause Depo at l; 9: 10-1 1). During his deposition Mr. Krause testified that TWC acquired the
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`WONDER FRUIT Mark with the specific intent that the mark would be used by Wonderful
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`Citrus. (Krause Depo at 11:6-8). Mr. Krause explained that Wonderful Citrus intended to use
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`the WONDER FRUIT Mark on citrus fruit that would be sold by one of the company’s newly
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`planned import businesses. That business would sell fruit in North America that was grown in
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`counter seasonal countries.1 (Krause Depo at 28: 19-25).
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`Shortly after acquiring the WONDER FRUIT Mark in February of 2016, Wonderful
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`Citrus began negotiations to purchase a Florida based citrus import business by the name of
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`DNE. (Krause Depo at 29:9-22). During the pendency of that acquisition the use of the
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`WONDER FRUIT Mark was temporary deferred. (Id.; 32:10-20). Nevertheless, during this
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`deferral period, Mr. Krause continued to develop a plan for Wonderful Citrus’ intended use of
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`the WONDER FRUIT Mark. For example, on October 28, 2016, Mr. Krause sent an email to
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`Adam Cooper, the head of the marketing group for Wonderful Citrus, requesting that Mr. Cooper
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`begin working on creative concepts for the use of the WONDER FRUIT Mark as a trade brand
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`in conjunction with the planned DNE acquisition. (Krause Depo at 30:8-31:11; Gaunt Decl., Ex.
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`D, pages 76-77).
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`Wonderful Citrus ultimately acquired DNE in February of 2017. (Krause Depo at 29:19-
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`22). Mr. Krause testified that between October 2016 and July 2017 he had additional
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`1 Counter seasonal fruit is fruit that is imported from a country in which that fruit is in
`season, to a country where that fruit is not in season. In this case, citrus would be imported to
`the US. in the winter months and sold here when it is not in season.
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`{2792804.1}
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`4
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`conversations with Mr. Cooper, as a follow—up to his October 28, 2016 email, regarding the
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`development of creative material for the WONDER FRUIT Mark. (Krause Depo at 31:12-17;
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`32:24-33:21). At the time of his deposition, on July 5, 2017, Mr. Krause stated he believed that
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`Wonderful Citrus would be using the WONDER FRUIT Mark within six months. (Krause Depo
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`at 31 :21-24). True to his word, as of December 2017, the WONDER FRUIT Mark was being
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`used on packaging of lemons sold by Wonderful Citrus under the WONDER FRUIT brand.
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`(Declaration of David Krause in support of in support of 'l‘WC’s Opposition to Applicant’s
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`Motion (“Krause Decl.”) at 11 2, Ex. A).
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`III.
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`ARGUMENT
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`A.
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`Summary Judgment Standard
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`Summary judgment is appropriate only where there are no genuine disputes as to any
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`material facts, thus allowing the case to be resolved as a matter of law. Fed. R. Civ. P. 56(a). The
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`party seeking summary judgment bears the burden of demonstrating the absence of any genuine
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`dispute of material fact, and that he is entitled to a judgment under the applicable law. See
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`Celotex Corp. v. Catrett, 477 US. 317, 323 (1986); Sweats Fashions, Inc. v. Pannill Knitting,
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`833 F.2d 1560, 4 USPQ2d 1793, 1796 (Fed. Cir. 1987). A factual dispute is genuine if, on the
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`evidence of record, a reasonable fact finder could resolve the matter in favor of the non-moving
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`party. See Opryland USA Inc. v. GreatAm. Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471,
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`1472 (Fed. Cir. 1992); Olde Tyme Foods, Inc. v. Roundy's, Inc., 961 F.2d 200, 22 USPQ2d 1542,
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`1544 (Fed. Cir. 1992). Evidence on summary judgment must be viewed in a light most favorable
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`to the non-movant, and all justifiable inferences are to be drawn in the non-movant's favor.
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`Lloyd’s Food Prods, Inc. v. Eli ’s, Inc., 987 F.2d 766, 25 USPQ2d 2027, 2029 (Fed. Cir. 1993);
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`Opryland USA, 23 USPQ2d at 1472. The Board may not resolve genuine disputes as to material
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`{2792804.1}
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`5
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`facts; it may only ascertain whether genuine disputes as to material facts exist. See' Lloyd's Food
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`Prods., 25 USPQ2d at 2029; Olde Tyme Foods, 22 USPQ2d at 1544.
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`B.
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`Abandonment Standard
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`Abandonment of a U.S. registration will only be found where the mark is not used for
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`three consecutive years and during such period of nonuse, the registrant lacked an intent to use
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`the mark. See On-Line Careline, Inc. v. America Online, Inc., 229 F.3d 1080, 1087 (Fed. Cir.
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`2000); 15 U.S.C. § 1127. Nonuse of a trademark for three consecutive creates a rebuttable
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`presumption that the trademark owner has abandoned the mark without intent to resume use.
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`(Id.). “The burden then shifts to the trademark owner to produce evidence that he either used the
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`mark during the statutory period or intended to resume use.” (Id.) Nevertheless, the “burden of
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`persuasion, however, always remains with the [challenger] to prove abandonment by a
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`preponderance of the evidence.” (Id.)
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`1.
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`There Is No Evidence That The WONDER FRUIT Mark Was Not
`Used For Three Consecutive Years
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`Applicant alleges that there is no evidence that the WONDER FRUIT Mark was used
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`between 2014 and 2017, which if true, would be prima facie evidence of abandonment. See 15
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`U.S.C. § 1127. However, there is evidence of use in 2014, 2015, and 2017 and, therefore,
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`Applicant is not entitled to a presumption of abandonment.
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`(a)
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`Deemer used the WONDER FRUIT Mark in 2014
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`While TWC admitted that it had no direct evidence of the Mark’s use in 2014,
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`nevertheless, it’s due diligence showed that on March 6, 2014, Deemer filed a Section 8
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`Declaration of Use for the WONDER FRUIT Mark with the USPTO. (Gaunt Decl., Ex. F at
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`pages 14—15, 25). TWC relied on this filing as some evidence of use at that time. At a
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`minimum, there is a factual dispute as to whether the Mark was in use in 2014. Applicant has
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`{27928041}
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`6
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`

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`not provided any evidence to contradict Deemer’s declaration. Applicant certainly has had an
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`opportunity to question the veracity of Deemer’s declaration and claims of use. It sought a
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`subpoena from the District Court in Maryland back in June 2017, to allow it to question Deemer
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`about its use of the Mark prior to TWC owning it. (Ranson Decl. Ex. 3)
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`(b)
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`Deemer used the WONDER FRUIT Mark in 2015
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`On October 27, 2015, during the time period TWC was negotiating the acquisition of the
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`WONDER FRUIT Mark, Bob Class a principal of Deemer, contacted Wonderful Citrus about
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`the status of the acquisition because Deemer was about to print one million cartons with the
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`WONDER FRUIT Mark for a school promotion and he wanted to know if the acquisition was
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`going forward and if Deemer needed to change the mark (Ranson Decl., Ex. 2). Unquestionably
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`Deemer would not have been printing new packaging using the WONDER FRUIT Mark in 2015
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`if it was not in fact using the mark at that time.
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`(c)
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`TWC Began Using the WONDER FRUIT Mark in 2017
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`In December 2017, Wonderful Citrus began using the WONDER FRUIT Mark on boxes
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`of lemons. (Krause Decl. at fl 2).
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`There is evidence that the WONDER FRUIT Mark was being used in 2014, 2015, and
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`2017 - three out of the four years, from 2014-2017, of nonuse alleged by Applicant. As such,
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`reviewing the evidence in the light most favorable to TWC the Board must find that genuine
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`issues of material fact exist in regard to Applicant’s abandonment claim regarding the WONDER
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`FRUIT Mark. Therefore, Applicant’s Motion must be denied.
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`{2792804.1}
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`7
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`2.
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`Applicant Cannot Prove TWC Lacked An Intent to Use The
`WONDER FRUIT Mark
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`Even assuming Applicant could appropriately demonstrate 3 years of nonuse, such
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`nonuse by itself would not be determinative if there is evidence of intent to use. Here, TWC has
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`demonstrated its intent to use the mark for the majority of the disputed time period.
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`Abandonment of a mark occurs “[w]hen use has been discontinued with intent not to
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`resume use.” 15 U.S.C. § 1127 (emphasis added). Applicant’s burden to prove abandonment is
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`heavy. Lipton Indus, Inc. v. Ralston Purina C0., 670 F.2d 1024, 1031,213 U.S.P.Q.2d 185
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`(C.C.P.A. 1982) (“We agree with appellant that a petitioner bears a heavy burden to establish the
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`facts underlying its claim that the mark has been abandoned”); Cumulus Media, Inc. v. Clear
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`Channel C0mms., Inc., 304 F.3d 1167, 1175-76, 64 U.S.P.Q.2d 1353 (11th. Cir. 2002) (“federal
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`courts uniformly agree that defendants asserting an abandonment defense face a ‘stringent,’
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`‘heavy,’ or ‘strict burden of proof,” including ultimate burden of persuasion of abandonment
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`despite presumption based upon non-use”). “Because abandonment constitutes a forfeiture of a
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`property interest, both non-use and intent not to resume use must be strictly proved.”
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`Seidelmann Yachts, Inc. v. Pace Yacht Corp., 14 U.S.P.Q.2d 1497, 1501 (D. Md. 1989) aff’d 13
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`U.S.P.Q.2d 2025 (4th Cir. 1990). This burden is particularly heavy in connection with a request
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`for summary judgment because, “[a]s a general rule, the factual question of intent is particularly
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`unsuited to disposition on summary judgment.” Copelands Enters. Inc. v. CNV Inc., 945 F.2d
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`1563, 1567, 20 U.S.P.Q.2d 1295,1298-99 (Fed. Cir. 1991); see also Honda Mir. Co. v. Friedrich
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`Winkelmann, 2009 WL 962810, at *2, 90 U.S.P.Q.2d 1660 (TTAB Apr. 8, 2009).
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`(a)
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`The Evidence Presented by TWC Shows It Had the Requisite
`Intent to Use the WONDER FRUIT Mark
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`First, since December 2017, the WONDER FRUIT Mark has been used by Wonderful
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`Citrus, a company owned by TWC, on boxes of lemons that they package and sell under the
`
`{2792804.}}
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`8
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`WONDER FRUIT brand. (Krause Decl. at 1] 2). The fact that the WONDER FRUIT Mark is
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`currently being utilized in commerce clearly reflects the ultimate culmination of TWC’s intent to
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`use.
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`Second, the Board has found that even if there are extensive periods of nonuse, evidence
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`of intent to resume use will overcome a presumption of abandonment. For example, in the Crash
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`Dummy case, the Board and the Federal Circuit found that Mattel had not abandoned its CRASH
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`DUMMIES mark despite 8 years of nonuse. Movie, LLC v. Mattel, Inc., 601 F.3d 1387, 94
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`U.S.P.Q.2d 1315 (Fed. Cir. 2010). In Crash Dummy, Tyco Industries, Inc. (“Tyco”) obtained
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`the trademark CRASH DUMMIES in 1993 and sold toys using the CRASH DUMMIES mark
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`from 1991 to 1994. Id. at 1390. In 1997 Tyco was acquired by Mattel, Inc. (“Mattel”) and
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`assigned its rights to CRASH DUMMIES to Mattel. Id. In 1998, KB Toys approached Mattel
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`hoping to become the exclusive retailer of toys sold under the CRASH DUMMIES mark Id.
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`Mattel declined the offer because the Tyco Crash Dummies toys needed to be retooled to meet
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`Mattel’s safety standards. Id. From 2000-2003 Mattel worked on developing a new line of
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`CRASH DUMMIES toys and began selling them in 2003. Id. On March 31, 2003 Crash
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`Dummy Movie filed an application for CRUSH DUMMIES for games and playthings. Id.
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`Mattel opposed that application base on its common law right (its CRASH DUMMIES mark
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`federal registration having being cancelled in 2000 for failure to file a declaration of use). Id.
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`The Board found “a prima facie abandonment of the CRASH DUMMIES marks based on
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`three years of nonuse, beginning at the earliest on December 31, 1995, and ending at Mattel's
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`actual shipment of CRASH DUMMIES toys in December 2003.” Id . However, the Board
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`concluded “that Mattel rebutted the presumption of abandonment of its common law trademark
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`rights by showing ‘reasonable grounds for the suspension and plans to resume use in the
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`{2792804.1}
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`9
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`reasonably foreseeable future when the conditions requiring suspension abate.’”. Id. The
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`Federal Circuit affirmed this decision finding “substantial evidence supports the Board's finding
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`that Mattel intended to resume use of the CRASH DUMMIES marks during the period of non-
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`use. .
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`. .”) Id. at 1392.
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`Likewise here, TWC has provided substantial evidence of its intent to use the WONDER
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`FRUIT Mark. Specifically, prior to using the WONDER FRUIT Mark in 2017 TWC had active
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`plans, as early as 2015, to use the mark. David Krause, the President of Wonder Citrus, testified
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`that TWC first became aware of the WONDER FRUIT Mark in 2015. (Krause Depo at 16:15-
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`18). Mr. Krause further testified that he intended to use the WONDER FRUIT Mark in
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`connection with imported, off-season, fruit.
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`(Id. at 28:20-25). Thereafter, TWC began
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`negotiations, in August of 2015, with Deemer (the prior owner) to acquire the WONDER FRUIT
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`Mark. (Ranson Decl., Ex. 1). That deal was finalized on February 22, 2016. (Id.). Shortly after
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`acquiring the WONDER FRUIT Mark Wonderful Citrus began negotiations to acquire DNE, a
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`Florida based fruit import business, as part Wonderful Citrus’ plan to develop an off-season fruit
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`import business under the WONDER FRUIT brand. (Kraus Depo at 29:9-16). Beginning in
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`October of 2016 Mr. Krause had multiple communications with Adam Cooper, the head of
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`marketing for Wonderful Citrus, about developing the WONDER FRUIT brand. (Id. at 3019-31-
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`17). Wonderful Citrus acquired DNE in February of 2017. (Id. at 29: 1-22).
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`On June 9, 2016, TWC’s intellectual property counsel sent a cease and desist letter to a
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`company who had applied to register the mark “Wonder Fields” because of its likely confusion
`with the WONDER FRUIT Mark. (Ranson Decl., Ex. 4) Again, on February 15, 2017, TWC’s
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`intellectual property counsel sent another cease and desist letter to another company who had
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`applied to register the mark “Natural Wonder” because of its likely confusion with the
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`{2792804.1}
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`10
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`WONDER FRUIT Mark. (Ranson Decl. Ex 5). Finally, the WONDER FRUIT Mark was put to
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`use on lemon boxes, packaged and sold by Wonderful Citrus, in December 20, 2017. (Krause
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`Decl. at 11 2).
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`All of the foregoing evidence clearly shows that TWC intended to use of the WONDER
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`FRUIT Mark from at least 2015 to 2017 — which covers all but one of the alleged four years of
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`consecutive nonuse (2014-2017) claimed by Applicant. Based on TWC’s clear evidence of
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`intent to use, Applicant’s Motion must be denied.
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`(b)
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`Applicant Has No Evidence That TWC Lacked An Intent To
`Use The WONDER FRUIT Mark
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`Moreover, Applicant has not pointed to a single piece of credible evidence in support of
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`its claim that TWC did not intend to use the WONDER FRUIT Mark. Applicant cites to
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`Nabisco, Inc. v. Wm. Wrigley Jr. C0., 1995 WL 901930, 40 U.S.P.Q.2d 1251 (T.T.A.B. Nov. 1,
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`1995) to bolster its “lack of intent” argument. However, the facts of Nabisco are inapposite to
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`the present matter. There, Nabisco filed a cancellation action against two of Wrigley's
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`registrations for the mark “WINTERMINTS.” Id. at *1. Wrigley defended the action on the
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`basis that from 1981 to 1989 it used the mark by maintaining a limited distribution program
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`consisting of limited quantity shipments to nine states four times per year. Id. at *7-8. However,
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`Wrigley admitted that the shipments were made for the “sole purpose of trademark
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`maintenance and/or protection” and that it had taken “no definitive steps to convert the
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`limited distribution into legitimate commercial trade.” Id. at *9 (emphasis added). Wrigley
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`also claimed that it intended to resume use, as evidenced by the fact that the WINTERMINTS
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`mark was considered for a product in 1983; that Wrigley monitored U.S. trademark applications
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`for conflicting marks; and that Wrigley engaged in foreign licensing and registration programs
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`involving the WINTERMINTS mark. Id. at 3 and 10. Finally, Wrigley contended that it had
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`{2792804.1}
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`1 1
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`considered using the WINTERMINTS mark in connection with a new confectionery product
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`under development since 1990. Id. at 10.
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`The Board granted Nabisco's motion for summary judgment on the basis of
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`abandonment. The Board found the Wrigley shipped its WINTERMINTS chewing gum as
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`“token shipments made solely for trademark maintenance and/0r protection are insufficient to
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`maintain trademark rights” and “indefinite and vague consideration of WINTERMINTS for a
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`future, unidentified confectionery product fails to establish an intent to resume.” Id. at *8 and
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`1 0.
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`Unlike Wrigley, TWC is not using the WONDER FRUIT Mark on lemons solely for
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`trademark protection. Nor were TWC plans to us the WONDER FRUIT Mark indefinite or
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`vague. To the contrary TWC spent significant time both planning and implementing a
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`commercial business featuring the WONDER FRUIT brand. Indeed, I) TWC spent months
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`negotiating the acquisition of the WONDER FRUIT Mark; 2) paid a substantial sum of money to
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`acquire it; 3) TWC spent an additional year acquiring the DNE import business for which it
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`intended to use the WONDER FRUIT Mark; 4) TWC spent further time to develop creatives for
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`use with the WONDER FRUIT Mark; and even 5) undertook ongoing and continued efforts to
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`enforce its rights in the WONDER FRUIT Mark.
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`(See Supra Sec. II, subsections B and C).
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`If
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`TWC had no intent in using the WONDER FRUIT Mark, undertaking these steps would make
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`no sense.
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`(c)
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`Because TWC Has Produced Evidence Of Its Intent To Use
`The WONDER FRUIT Mark and Inferences Must Be Drawn
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`in Its Favor, Applicant’s Motion Must Fail.
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`TWC has provided extensive evidence to support its assertion that it had the intent to use
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`the WONDER FRUIT Mark from 2015 to 2017. “The evidence submitted by the non-movant, in
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`opposition to a motion for summary judgment, ‘is to be believed, and all justifiable inferences
`
`{2792304.1}
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`12
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`

`

`are to be drawn in [its] favor.m Opryland, 970 F.2d at 850. Based upon this showing, it is
`
`reasonable to infer that TWC had the requisite intent to use its registered WONDER FRUIT
`
`Mark. TWC has demonstrated its intent and Applicant has not carried its burden.
`
`IV.
`
`CONCLUSION
`
`For the foregoing reason TWC respectfully request that Applicant’s Motion be denied.
`
`DATED: January 30, 2018
`
`THE WONDERFUL COMPANY LLC
`
`By:
`
`/s/ Christopher Ranson
`CHRISTOPHER G. RANSON
`
`DANIELLE M. CRIONA
`
`ROLL LAW GROUP PC
`
`11444 West Olympic Boulevard
`Los Angeles, California 90064-1557
`Telephone:
`(310) 966-8400
`Facsimile:
`(310) 966-8810
`michael.Vasseghi@roll.com
`ipdocketing@roll.com
`Attorneys for Opposer
`
`{27928041}
`
`13
`
`

`

`CERTIFICATE OF SERVICE
`
`1, Susan Bryant, hereby certify that a copy of this OPPOSER’S OPPOSITION TO
`
`APPLICANT’S MOTION FOR SUMMARY JUDGMENT ON THE ISSUE OF
`
`ABANDONMENT has been served upon attorney for Applicant:
`
`KAREN KREIDER GAUNT
`
`DINSMORE & SHOHL LLP
`
`255 EAST FIFTH STREET, SUITE 1900
`
`CINCINNATI, OH 45202
`karen.gaunt@dinsmore.com; r0bin.bissantz@dinsmore.com;
`mark.schneider@dinsmore'.com; tammy.imhoff@dinsmore.com
`Phone: 513-977-8503
`
`by e-mail on this 30 day of January, 2018.
`
`
`
`USAN BRYANT
`
`ROLL LAW GROUP PC
`
`11444 West Olympic Boulevard
`Los Angeles, California 90064-1557
`Telephone:
`(310) 966-8400
`Facsimile:
`(310) 966-8810
`
`{2792804.1}
`
`14
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No.: 91226951
`
`Mark: WONDERS OF WINTER
`
`Application Ser. No.: 86494181
`
`Published in the Official Gazette on
`September 22, 2015
`
`) ) ) ) 3 )
`
`) )
`
`) ) ) )
`
`The Wonderful Company LLC,
`
`Opposer,
`
`V.
`
`Mastronardi Produce Limited,
`
`Applicant.
`
`
`
`DECLARATION OF CHRISTOPHER RANSON IN SUPPORT OF OPPOSER’S
`OPPOSITION TO APPLICANT’S MOTION FOR SUMMARY JUDGMENT ON THE
`ISSUE OF ABANDONMENT
`
`1, Christopher Ranson, declare as follows:
`
`1.
`
`I am Senior Counsel at Roll Law Group PC and counsel for Opposer The
`
`Wonderful Company LLC (“TWC”). I have personal knowledge of the facts set forth herein
`
`and, if called upon to testify, could and would competently testify thereto.
`
`I submit this
`
`declaration in support of Opposer’s Opposition to Applicant’s Motion for Summary Judgment on
`
`the issue of Abandonment.
`
`2.
`
`On November 1, 2017, TWC served Applicant Mastronardi Produce Limited
`
`(“Applicant”) with Opposer’s Supplemental Response to Applicants’ First Set of Interrogatories
`
`a true and correct copy of which is attached hereto as Exhibit 1.
`
`3.
`
`On October 27, 2015, Bob Class, sent an email to Shawn Jackson, at JJ & Son
`
`Marketing, Inc., stating that he needed to know the status of “Wonderfial” potentially purchasing
`
`the Wonder Fruit trademark because he was about to print up a million containers using the
`
`{27928121}
`
`1
`
`

`

`Wonder Fruit trademark and wanted to know if the trademark needed to be changed. Mr. Class
`
`further requested that Mr. Jackson forward the email to Amanda Horney at Wonder Citrus LLC —
`
`which Mr. Jackson did on that same date. On November 2, 2015, Danielle Criona, Intellectual
`
`Property Counsel for TWC, sent Mr. Class an email attaching Mr. Class’s October 27, 2015 and
`
`letting Mr. Class know she would follow up with him. On November 12, 2015 Mr. Class and
`
`Ms. Criona exchanged emails regarding a time to speak about the trademark acquisition. The
`
`foregoing emails appeared in an email string kept in the regular course of business. A true and
`
`correct copy of which is attached hereto as Exhibit 2.
`
`4.
`
`On June 7, 2017, Applicant filed a motion, in the United States District Court of
`
`the District of Maryland, for the issuance of a subpoena duces tecum to W. Deemer Class & Son,
`
`LLC, ("Deemer") pursuant to 35 USC §24 and Federal Rules of Civil Procedure 34. A true and
`
`correct copy of the that motion is attached hereto as Exhibit 3.
`
`5.
`
`On June 9, 2016, Darya Laufer, Intellectual Property Counsel for TWC, sent a
`
`cease and desist letter to Ms. Irma Daniela Payan Corona regarding her client’s, Agrileg de
`
`Tehuacan, application for the “Wonder Fields” trademark, in International Class 31 for use in
`
`connection with fresh vegetables, because of its likely confusion with the TWC’s registered
`
`WONDER FRUIT trademark. A true and correct copy of that letter is attached hereto as Exhibit
`
`4.
`
`6.
`
`On February 15, 2017, Darya Laufer, Intellectual Property Counsel for TWC, sent
`
`a cease and desist letter to Kimberley I. Shimomura, Esq. client’s, United Apple Sales, LLC,
`
`application for the “Natural Wonder” trademark, in International Class 31 for us in connection
`
`with fresh fruit excluding tomatoes, because of its likely confusion with the TWC’s registered
`
`WONDER FRUIT trademark. A true and correct copy of that letter is attached hereto as Exhibit
`
`5.
`
`{27928121}
`
`2
`
`

`

`I declare under penalty of perjury under the laws of the State of California that the
`
`foregoing is true and correct and that this declaration was executed in Los Angeles, California on
`
`January 29, 2018.
`
`
`
`Christop er Ranson
`
`{2792812.1}
`
`3
`
`

`

`CERTIFICATE OF SERVICE
`
`1, Susan Bryant, hereby certify that a copy of this DECLARATION OF CHRISTOPHER
`
`RANSON IN SUPPORT OF OPPOSER’S OPPOSITION TO APPLICANT’S MOTION FOR
`
`SUMMARY JUDGMENT ON THE ISSUE OF ABANDONMENT has been served upon
`
`attorney for Applicant:
`
`KAREN KREIDER GAUNT
`
`DINSMORE & SHOHL LLP
`
`255 EAST FIFTH STREET, SUITE 1900
`
`CINCINNATI, OH 45202
`karen.gaunt@dinsmore.com; robin.bissantz@dinsmore.com;
`mark. schneider@dinsmore.com; tammy.imhoff@dinsmore.com
`Phone: 513-977-8503
`
`by e-mail on this 30th day of January, 2018.
`
`
`
`SUSAN BRY / -
`ROLL LAW GR“ UP PC
`
`11444 West Olympic Boulevard
`Los Angeles, California 90064-1557
`Telephone:
`(310) 966-8400
`Facsimile:
`(310) 966-8810
`
`{27928121}
`
`4
`
`

`

`Exhibit 1
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`The Wonderful Company LLC,
`
`) Opposition No.: 91226951
`
`Mark: WONDERS OF WINTER
`
`Application Ser. No.: 86494181
`
`) )
`
`) )
`
`) )
`
`Published in the Official Gazette on
`) September 22, 2015
`
`Opposer,
`
`V-
`
`Mastronardi Produce Limited,
`
`VVVVV
`
`Applicant.
`
`OPPOSER’S SUPPLEMENTAL RESPONSE TO APPLICANT’S FIRST SET OF
`
`INTERROG ATO RI ES
`
`PROPOUNDING PARTY:
`
`THE WONDERFUL COMPANY LLC
`
`RESPONDING PARTY:
`
`APPLICANT MASTRONARDI PRODUCE LIMITED
`
`SET NO.:
`
`ONE
`
`Pursuant to Rule 33 of the Federal Rules of Civil Procedure and Rule 2.120 of the
`
`Trademark Rules of Practice, Opposer, The Wonderful Company LLC (“Opposer” or
`
`“Wonderful”) provides the following supplemental responses and objections to Applicant
`
`Mastronardi Produce Limited’s (“Applicant” or “Mastronardi”) First Set of Interrogatories to
`
`Opposer (the “Interrogatories”) as set forth below. The following supplemental responses are
`
`made without waiving, or intending to waive, any objection as to relevancy, privilege, or
`
`admissibility of any information provided in a response to these interrogatories, and any
`
`subsequent proceeding or at the trial of this opposition or any other action. A partial answer to
`
`{2767300.1}
`
`

`

`any interrogatory which has been objected to, in whole or in part, is not intended to be a waiver
`
`of the objection.
`
`Opposer has made reasonable inquiries and investigations concerning information
`
`currently available to it and its responses are based on that information. Because Opposer’s
`
`investigations are continuing, Opposer provides these responses without prejudice to its right
`
`to amend or supplement responses based upon facts discovered during the course of this
`
`opposition proceeding.
`
`PRELIMINARY STATEMENT AND GENERAL OBJECTIONS
`
`Wonderful asserts the following general objections to the First Set of Interrogatories (the
`
`“General Objections”), each of which is incorporated by reference into the response to the
`
`individual interrogatories below. From time to time, and for purpose of emphasis, Wonderful
`
`may restate one or more of the General Objections as specific objections to individual
`
`interrogatories. Such restatement, or the failure to restate, should not waive any General
`
`Objection not restated.
`
`1.
`
`Opposer objects to Applicant’s First Set of Interrogatories to the extent that it
`
`seeks to impose obligations on Opposer beyond, or inconsistent with, those set forth in the
`
`Federal Rules of Civil Procedure or the Trademark Rules of Practice.
`
`2.
`
`Opposer objects and responds to the interrogatories on the basis of facts and
`
`circumstances as they are presently known to Opposer. This action is in the early stages.
`
`Opposer has not completed its preparation for this case. Accordingly, all of the following
`
`objections and responses are provided without prejudice to Opposer’s right to introduce at trial
`
`any evidence that it subsequently discovers or is made aware of. Opposer reserves the right to
`
`(27673001 }
`
`

`

`supplement its objections and responses to the interrogatories based upon newly-discovered
`
`evidence or information of which Opposer is not aware as of the present date.
`
`3.
`
`Opposer objects to the interrogatories insofar as they seek information or
`
`documents that are privileged by and/or protected from disclosure by the attorney-client
`
`privilege, the work-product doctrine, the privacy or trade secret privileges, or any other privilege
`
`or immunity, and refuses to provide any such information. Opposer does not intend by these
`
`responses or objections to waive any claim of privilege or immunity. Opposer’s objections
`
`and responses are conditioned specifically on the understanding that the production of
`
`information or documents for which any claim of privilege is applicable shall be deemed
`
`inadvertent and not a waiver of the claim of privilege.
`
`4.
`
`Opposer objects to the interrogatories to the extent that they cal