Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`ESTTA1281255
`04/27/2023
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`ESTTA Tracking number:
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`Filing date:
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`Proceeding no.
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`Party
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`Correspondence
`address
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`Submission
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`Filer's name
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`Filer's email
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`Signature
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`Date
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`Attachments
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91275644
`
`Defendant
`Central Coast Agriculture, Inc
`
`NATHANIEL L. FINTZ
`ZUBER LAWLER LLP
`260 MADISON AVENUE, SUITE 8021
`NEW YORK, NY 10016
`UNITED STATES
`Primary email: trademarkprosecution@zuberlawler.com
`Secondary email(s): tzuber@zuberlawler.com, nfintz@zuberlawler.com,
`lwan@zuberlawler.com, kkawai@zuberlawler.com
`No phone number provided
`Motion to Amend/Amended Answer or Counterclaim
`
`Nathaniel L. Fintz
`
`trademarkprosecution@zuberlawler.com, nfintz@zuberlawler.com,
`lwan@zuberlawler.com, kkawai@zuberlawler.com
`
`/Nathaniel Fintz/
`
`04/27/2023
`
`Doc 01 -- 2023_04_27 - Opp. No. 91275644 - AMENDED ANSWER & COUN-
`TERCL AIM.pdf(2141316 bytes )
`Doc 02 -- Exhibits 01-05.pdf(3349779 bytes )
`Doc 03 -- Exhibits 06-10.pdf(5076244 bytes )
`Doc 04 -- Exhibits 11-19.pdf(5613813 bytes )
`Doc 05 -- Exhibits 20-27.pdf(5595485 bytes )
`Doc 06 -- Exhibits 28-35.pdf(3145033 bytes )
`Doc 07 -- Exhibits 36-39.pdf(4274462 bytes )
`Doc 08 -- Exhibits 40-44.pdf(4837509 bytes )
`Doc 09 -- Exhibits 45-49.pdf(4728692 bytes )
`Doc 10 -- Exhibits 50-52.pdf(2512652 bytes )
`Doc 11 -- Exhibit 53 Part 1 of 17.pdf(5676909 bytes )
`Doc 12 -- Exhibit 53 Part 2 of 17.pdf(5074912 bytes )
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`88981186
`Ser. No.:
`RAW GARDEN REFINED LIVE RESIN & Design
`Mark:
`Filing Date: Jun. 25, 2019
`
`
`88978433
`Ser. No.:
`RAW GARDEN REFINED LIVE RESIN & Design
`Mark:
`Filing Date: Jun. 25, 2019
`
`
`
`
`ADAPTIVE ENERGY LLC
`
` Plaintiff,
`
` v.
`
`CENTRAL COAST AGRICULTURE,
`INC.
`
` Defendant.
`
`
`
`
`
`
`
`
` Opposition No.: 91275644
`
`
`
`
`
`
`
`DEFENDANT’S AMENDED ANSWER AND COUNTERCLAIM
`
`
`
`Defendant Central Coast Agriculture, Inc. (“Defendant”), by and through its counsel,
`
`hereby answers the Notice of Consolidated Opposition (the “Opposition”) filed by Adaptive
`
`Energy LLC (“Plaintiff”) in T.T.A.B. Opposition No. 91275644:
`
`1.
`
`Defendant lacks knowledge or information sufficient to form a belief as to the truth
`
`of the allegations contained in Paragraph 1 of the Opposition, and accordingly, denies them.
`
`2.
`
`Defendant admits that on December 1, 2013, Nodari Rizun filed U.S. Ser. No.
`
`86132192 for the purported mark LIVE RESIN, covering “Dietary food supplements; Dietary
`
`Page 1 of 120
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`

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`supplement for eliminating toxins from the intestinal tract; Dietary supplemental drinks; Dietary
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`supplements; Dietary supplements for human consumption; Health food supplements; Herbal
`
`supplements; Herbal supplements for sleeping problems; Mineral food supplements; Mineral
`
`supplements; Nutraceuticals for use as a dietary supplement; Nutritional supplements; Nutritional
`
`supplements in the form of semisolids and liquids” in International Class 005. Defendant admits
`
`that, on November 25, 2014, the USPTO issued a Registration Certificate for U.S. Ser. No.
`
`86132192 for the purported mark LIVE RESIN, covering “DIETARY FOOD SUPPLEMENTS;
`
`DIETARY SUPPLEMENT FOR ELIMINATING TOXINS FROM THE INTESTINAL TRACT;
`
`DIETARY SUPPLEMENTAL DRINKS; DIETARY SUPPLEMENTS; DIETARY
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`SUPPLEMENTS FOR HUMAN CONSUMPTION; HEALTH FOOD SUPPLEMENTS;
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`HERBAL SUPPLEMENTS; HERBAL SUPPLEMENTS FOR SLEEPING PROBLEMS;
`
`MINERAL FOOD SUPPLEMENTS; MINERAL SUPPLEMENTS; NUTRACEUTICALS FOR
`
`USE AS A DIETARY SUPPLEMENT; NUTRITIONAL SUPPLEMENTS; NUTRITIONAL
`
`SUPPLEMENTS IN THE FORM OF SEMISOLIDS AND LIQUIDS” in International Class 005.
`
`Defendant admits that, October 8, 2021, an assignment was recorded with the USPTO for U.S.
`
`Ser. No. 86132192, where the assignor was Nodari Rizun and the assignee was Adaptive Energy
`
`LLC. Defendant admits that U.S. Reg. No. 4643806 currently covers “Dietary food supplements;
`
`Dietary supplement for eliminating toxins from the intestinal tract; [ Dietary supplemental drinks;
`
`] Dietary supplements; Dietary supplements for human consumption; Health food supplements;
`
`Herbal supplements; Herbal supplements for sleeping problems; Mineral food supplements;
`
`Mineral supplements; Nutraceuticals for use as a dietary supplement; Nutritional supplements;
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`Nutritional supplements in the form of [ semisolids and ] liquids” in International Class 005.
`
`Otherwise, denied.
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`Page 2 of 120
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`3.
`
`With respect to Paragraph 3 of the Opposition, Defendant states as follows:
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`Defendant lacks knowledge or information sufficient to form a belief as to the truth of the
`
`allegation that Plaintiff has been using the term “LIVE RESIN” continuously in commerce since
`
`at least June 2012, and, therefore, Defendant denies the foregoing allegation. Defendant denies
`
`that Plaintiff's purported mark LIVE RESIN is a valid trademark. Defendant admits that Plaintiff
`
`made various representations to the USPTO in filings necessary to obtain incontestable status for
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`U.S. Reg. No. 4643806. Defendant admits that, in connection with U.S. Reg. No. 4643806, the
`
`USPTO issued a notice on May 21, 2020 which featured the following statement: “The declaration
`
`of incontestability filed for the above-identified registration meets the requirements of Section 15
`
`of the Trademark Act, 15 U.S.C. §1065. The Section 15 declaration is acknowledged.” (Emphasis
`
`omitted). Otherwise, denied.
`
`4.
`
`Defendant denies that Plaintiff's purported mark LIVE RESIN is a valid trademark.
`
`Defendant admits that the clause “advertise its LIVE RESIN product sales and services” (in
`
`Paragraph 4 of the Opposition) demonstrates the genericness of the term “LIVE RESIN” in
`
`connection with the goods and services provided by Plaintiff. Otherwise, regarding the remainder
`
`of the allegations contained in Paragraph 4 of the Opposition, Defendant lacks knowledge or
`
`information sufficient to form a belief as to the truth of those allegations, and accordingly, denies
`
`them.
`
`5.
`
`Defendant denies that Plaintiff’s purported mark LIVE RESIN is a valid trademark.
`
`Defendant admits that the clause “its LIVE RESIN products” (in Paragraph 5 of the Opposition)
`
`demonstrates the genericness of the term “LIVE RESIN” in connection with the goods and services
`
`provided by Plaintiff. Otherwise, regarding the remainder of the allegations contained in
`
`Paragraph 5 of the Opposition, Defendant lacks knowledge or information sufficient to form a
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`Page 3 of 120
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`belief as to the truth of those allegations, and accordingly, denies them.
`
`6.
`
`Defendant denies that Plaintiff’s purported mark LIVE RESIN is a valid trademark.
`
`Otherwise, regarding the remainder of the allegations contained in Paragraph 6 of the Opposition,
`
`Defendant lacks knowledge or information sufficient to form a belief as to the truth of those
`
`allegations, and accordingly, denies them.
`
`7.
`
`Defendant denies that Plaintiff’s purported mark LIVE RESIN is a valid trademark.
`
`Otherwise, regarding the remainder of the allegations contained in Paragraph 7 of the Opposition,
`
`Defendant lacks knowledge or information sufficient to form a belief as to the truth of those
`
`allegations, and accordingly, denies them.
`
`8.
`
`Defendant denies that Plaintiff’s purported mark LIVE RESIN is a valid trademark.
`
`Defendant admits that Plaintiff made various representations to the USPTO in filings necessary to
`
`obtain incontestable status for U.S. Reg. No. 4643806. Defendant admits that, in connection with
`
`U.S. Reg. No. 4643806, the USPTO issued a notice on May 21, 2020 which featured the following
`
`statement: “The declaration of incontestability filed for the above-identified registration meets the
`
`requirements of Section 15 of the Trademark Act, 15 U.S.C. §1065. The Section 15 declaration is
`
`acknowledged.” (Emphasis omitted). Otherwise, denied.
`
`9.
`
`Defendant admits the allegation contained in Paragraph 9 of the Opposition.
`
`10.
`
`Defendant admits that U.S. Ser. No. 88978433 is for the mark shown in the
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`enclosed Exhibit 1. Defendant admits that Defendant is the applicant of U.S. Ser. No. 88978433.
`
`Defendant admits that U.S. Ser. No. 88978433 has a filing date of June 25, 2019. Defendant
`
`admits that U.S. Ser. No. 88981186 is for the mark shown in the enclosed Exhibit 2. Defendant
`
`admits that Defendant is the applicant of U.S. Ser. No. 88981186. Defendant admits that U.S. Ser.
`
`No. 88981186 has a filing date of June 25, 2019. Otherwise, denied.
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`Page 4 of 120
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`

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`11.
`
`Defendant admits that the identification of goods and services for U.S. Ser. No.
`
`88978433 reads as follows: “Herbs for smoking, all of the foregoing containing CBD derived from
`
`cannabis with a delta-9 THC concentration of not more than 0.3% on a dry weight basis; Herbs for
`
`smoking, all of the foregoing containing cannabis or cannabis derivatives with a delta-9 THC
`
`concentration of not more than 0.3% on a dry weight basis” in International Class 034. Defendant
`
`admits that the identification of goods and services for U.S. Ser. No. 88981186 reads as follows:
`
`“Herbs for smoking” in International Class 034. Otherwise, denied.
`
`12.
`
`Defendant denies that Plaintiff’s purported mark LIVE RESIN is a valid trademark.
`
`Defendant admits that Plaintiff’s purported mark in U.S. Reg. No. 4643806 is comprised of the
`
`wording “LIVE RESIN.” Defendant admits that the mark in U.S. Ser. No. 88978433 contains the
`
`stylized wording “RAW GARDEN REFINED LIVE RESIN” accompanied by a prominent design.
`
`Defendant admits that the mark in U.S. Ser. No. 88981186 contains the stylized wording “RAW
`
`GARDEN REFINED LIVE RESIN” accompanied by a prominent design. Otherwise, denied.
`
`13.
`
`Defendant admits that U.S. Ser. No. 88978433 covers “Herbs for smoking, all of
`
`the foregoing containing CBD derived from cannabis with a delta-9 THC concentration of not
`
`more than 0.3% on a dry weight basis; Herbs for smoking, all of the foregoing containing cannabis
`
`or cannabis derivatives with a delta-9 THC concentration of not more than 0.3% on a dry weight
`
`basis” in International Class 034. Defendant admits that U.S. Ser. No. 88981186 covers “Herbs
`
`for smoking” in International Class 034. Regarding the remainder of the allegations in
`
`Paragraph 13 of the Opposition, no response is required, because those allegations contain legal
`
`arguments or legal conclusions. To the extent a response is required regarding the remainder of
`
`the allegations in Paragraph 13 of the Opposition, Defendant denies them.
`
`14.
`
`No response is required to Paragraph 14 of the Opposition. Defendant restates and
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`Page 5 of 120
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`

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`incorporates by reference Defendant’s responses to Paragraphs 1 to 13 above as if fully set forth
`
`herein.
`
`15.
`
`Defendant denies that Plaintiff’s purported mark LIVE RESIN is a valid trademark.
`
`Regarding the allegation in Paragraph 15 of the Opposition concerning the timing of Plaintiff’s
`
`use of the term “LIVE RESIN,” Defendant lacks knowledge or information sufficient to form a
`
`belief as to the truth of that allegation, and accordingly, denies it. Defendant admits that U.S. Reg.
`
`No. 4643806 received a Registration Certificate from the USPTO on November 25, 2014.
`
`Defendant admits that the filing date of Ser. No. 88978433 is June 25, 2019. Defendant admits
`
`that the filing date of Ser. No. 88981186 is June 25, 2019. Defendant admits that November 25,
`
`2014 is earlier than June 25, 2019. Otherwise, denied.
`
`16.
`
`Defendant denies that Plaintiff’s purported mark LIVE RESIN is a valid trademark.
`
`Otherwise, no response is necessary to the allegations of Paragraph 16 of the Opposition, as those
`
`allegations call for a response that invades the attorney-client privilege.
`
`17.
`
`Defendant denies that Plaintiff’s purported mark LIVE RESIN is a valid trademark.
`
`Regarding the remainder of the allegations in Paragraph 17 of the Opposition, no response is
`
`required, because those allegations contain legal arguments or legal conclusions. To the extent a
`
`response is required regarding the remainder of the allegations in Paragraph 17 of the Opposition,
`
`Defendant denies them.
`
`18.
`
`Defendant denies that Plaintiff’s purported mark LIVE RESIN is a valid trademark.
`
`Regarding the remainder of the allegations in Paragraph 18 of the Opposition, no response is
`
`required, because those allegations contain legal arguments or legal conclusions. To the extent a
`
`response is required regarding the remainder of the allegations in Paragraph 18 of the Opposition,
`
`Defendant denies them.
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`Page 6 of 120
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`19.
`
`Defendant denies that Plaintiff’s purported mark LIVE RESIN is a valid trademark.
`
`Regarding the remainder of the allegations in Paragraph 19 of the Opposition, no response is
`
`required, because those allegations contain legal arguments or legal conclusions. To the extent a
`
`response is required regarding the remainder of the allegations in Paragraph 19 of the Opposition,
`
`Defendant denies them.
`
`20.
`
`Defendant denies that Plaintiff’s purported mark LIVE RESIN is a valid trademark.
`
`Regarding the remainder of the allegations in Paragraph 20 of the Opposition, no response is
`
`required, because those allegations contain legal arguments or legal conclusions. To the extent a
`
`response is required regarding the remainder of the allegations in Paragraph 20 of the Opposition,
`
`Defendant denies them.
`
`
`
`REGARDING THE “CLAIM FOR RELIEF” SECTION OF THE OPPOSITION
`
`
`
`Defendant denies that Plaintiff’s purported mark LIVE RESIN is a valid trademark.
`
`Regarding the remainder of the allegations featured in the “Claim for Relief” section of the
`
`Opposition, no response is required, because those allegations contain legal arguments or legal
`
`conclusions. To the extent a response is required regarding the remainder of the allegations in the
`
`“Claim for Relief” section of the Opposition, Defendant denies them.
`
`
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`Page 7 of 120
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`DEFENDANT’S AFFIRMATIVE DEFENSES
`
`
`
`Defendant now hereby asserts the following Affirmative Defenses:
`
`
`
`FIRST AFFIRMATIVE DEFENSE
`
`1.
`
`All the foregoing paragraphs within Defendant’s Amended Answer and
`
`Counterclaim are hereby fully incorporated here as though fully restated.
`
`2.
`
`Plaintiff’s Opposition and claims are barred, precluded, or limited because Plaintiff
`
`does not hold any valid or enforceable trademark rights in Plaintiff’s purported mark LIVE RESIN,
`
`and Plaintiff does not hold any valid or enforceable trademark in the wording “LIVE RESIN.”
`
`SECOND AFFIRMATIVE DEFENSE
`
`3.
`
`All the foregoing paragraphs within Defendant’s Amended Answer and
`
`Counterclaim are hereby fully incorporated here as though fully restated.
`
`4.
`
`5.
`
`The purported mark in U.S. Reg. No. 4643806 is generic in its entirety.
`
`Plaintiff’s rights in Plaintiff’s purported mark LIVE RESIN and U.S. Reg. No.
`
`4643806 are all invalid and unenforceable because the wording “LIVE RESIN” is generic in
`
`connection with the goods and services covered by Plaintiff’s purported mark LIVE RESIN. As
`
`a result, Plaintiff’s Opposition and claims are barred, precluded, or limited.
`
`6.
`
`The wording “live resin” is being used by Plaintiff as a generic term to identify the
`
`goods and services that Plaintiff is offering under Plaintiff’s purported mark LIVE RESIN.
`
`7.
`
`Upon information and belief, when consumers encounter the wording “LIVE
`
`RESIN” in the context of Plaintiff’s goods, consumers primarily understand the wording “LIVE
`
`RESIN” to be the generic name or identifier of the genus of Plaintiff’s goods.
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`Page 8 of 120
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`8.
`
`Plaintiff’s own public statements on Plaintiff’s own website, in Plaintiff’s own
`
`patent filings, and in Plaintiff’s own social media materials, all evidence the genericness of the
`
`wording “live” in connection with the goods and services that Plaintiff is offering under Plaintiff’s
`
`purported mark LIVE RESIN.
`
`9.
`
`Plaintiff’s own public statements on Plaintiff’s own website, in Plaintiff’s own
`
`patent filings, and in Plaintiff’s own social media materials, all evidence the genericness of the
`
`wording “resin” in connection with the goods and services that Plaintiff is offering under Plaintiff’s
`
`purported mark LIVE RESIN.
`
`10.
`
`Plaintiff’s own public statements on Plaintiff’s own website, in Plaintiff’s own
`
`patent filings, and in Plaintiff’s own social media materials, all evidence the genericness of the
`
`wording “live resin” in connection with the goods and services that Plaintiff is offering under
`
`Plaintiff’s purported mark LIVE RESIN.
`
`THIRD AFFIRMATIVE DEFENSE
`
`11.
`
`All the foregoing paragraphs within Defendant’s Amended Answer and
`
`Counterclaim are hereby fully incorporated here as though fully restated.
`
`12.
`
`Plaintiff’s rights in Plaintiff’s purported mark LIVE RESIN are invalid because the
`
`wording “LIVE RESIN” is highly descriptive in connection with the goods and services covered
`
`by Plaintiff’s purported mark LIVE RESIN, and there is no secondary meaning arising from
`
`Plaintiff’s use of the wording “LIVE RESIN” as a generic term. As a result, Plaintiff’s Opposition
`
`and claims are barred, precluded, or limited.
`
`FOURTH AFFIRMATIVE DEFENSE
`
`13.
`
`All the foregoing paragraphs within Defendant’s Amended Answer and
`
`Counterclaim are hereby fully incorporated here as though fully restated.
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`Page 9 of 120
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`14.
`
`There is no likelihood of confusion between the purported mark in U.S. Reg. No.
`
`4643806 and the mark in U.S. Ser. No. 88978433. As a result, Plaintiff’s Opposition and claims
`
`are barred, precluded, or limited.
`
`15.
`
`There is no likelihood of confusion between the purported mark in U.S. Reg. No.
`
`4643806 and the mark in U.S. Ser. No. 88981186. As a result, Plaintiff’s Opposition and claims
`
`are barred, precluded, or limited.
`
`16.
`
`The non-shared sprout design appears at the very beginning of the mark in Ser.
`
`Nos. 88978433 and 88981186.
`
`17. Within the mark in U.S. Ser. Nos. 88978433 and 88981186, the non-shared sprout
`
`design is overwhelmingly larger in size than the wording “LIVE RESIN.”
`
`18. Within the mark in U.S. Ser. Nos. 88978433 and 88981186, the non-shared
`
`wording “RAW GARDEN” appears prior to the wording “LIVE RESIN.”
`
`19. Within the mark in U.S. Ser. Nos. 88978433 and 88981186, the non-shared
`
`wording “RAW GARDEN” is conspicuously larger and bolder than the wording “LIVE RESIN.”
`
`20. Within the mark in U.S. Ser. Nos. 88978433 and 88981186, the wording “LIVE
`
`RESIN” appears only at the tail end of the mark, in the smallest, most gossamer typeface of all.
`
`21. Within the mark in U.S. Ser. Nos. 88978433 and 88981186, the wording “LIVE
`
`RESIN” bears a level of insignificance akin to that of a mere afterthought.
`
`22. Within the mark in U.S. Ser. Nos. 88978433 and 88981186, the wording “LIVE
`
`RESIN” constitutes the element which is least likely to be impressed upon a consumer’s mind.
`
`23. Within the mark in U.S. Ser. Nos. 88978433 and 88981186, it is the multiple non-
`
`shared elements which are by far most likely to be impressed upon a consumer’s mind.
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`Page 10 of 120
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`24.
`
`Nothing in Plaintiff’s purported mark LIVE RESIN even approximates the sprout
`
`design within the mark in U.S. Ser. Nos. 88978433 and 88981186.
`
`25.
`
`Nothing in Plaintiff’s purported mark LIVE RESIN even approximates the wording
`
`“RAW” within the mark in U.S. Ser. Nos. 88978433 and 88981186.
`
`26.
`
`Nothing in Plaintiff’s purported mark LIVE RESIN even approximates the wording
`
`“GARDEN” within the mark in U.S. Ser. Nos. 88978433 and 88981186.
`
`27.
`
`Nothing in Plaintiff’s purported mark LIVE RESIN even approximates the wording
`
`“REFINED” within the mark in U.S. Ser. Nos. 88978433 and 88981186.
`
`28. Within the mark in U.S. Ser. Nos. 88978433 and 88981186, the literal element of
`
`Defendant’s mark contains eight syllables. However, Plaintiff’s purported mark LIVE RESIN
`
`contains only three syllables.
`
`29.
`
`The respective parties’ goods are unrelated. The Opposition did not even state why
`
`the respective parties’ goods are allegedly related from Plaintiff’s perspective; there was nothing
`
`beyond mere conclusory, boilerplate allegations, lacking explication.
`
`30. Moreover, Plaintiff’s purported mark LIVE RESIN is far too weak to function as
`
`the basis for a likelihood of confusion claim.
`
`31.
`
`Plaintiff’s purported mark LIVE RESIN is so severely weak that it isn’t even
`
`protectable as a mark in the first place—and even assuming for the sake of argument that it is
`
`protectable, it still would be too weak to function as the basis of a claim of likelihood of confusion.
`
`FIFTH AFFIRMATIVE DEFENSE
`
`32.
`
`All the foregoing paragraphs within Defendant’s Amended Answer and
`
`Counterclaim are hereby fully incorporated here as though fully restated.
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`Page 11 of 120
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`33.
`
`Upon information and belief, Plaintiff’s Opposition and claims are barred,
`
`precluded, or limited because Plaintiff has failed to use and/or continuously use the purported mark
`
`in U.S. Reg. No. 4643806 in United States commerce.
`
`SIXTH AFFIRMATIVE DEFENSE
`
`34.
`
`All the foregoing paragraphs within Defendant’s Amended Answer and
`
`Counterclaim are hereby fully incorporated here as though fully restated.
`
`35.
`
`Upon information and belief, Plaintiff has entirely and irrevocably abandoned any
`
`alleged rights that it may have had in Plaintiff’s purported mark LIVE RESIN, and, as a result,
`
`Plaintiff’s Notice of Opposition and claims are barred, precluded, or limited.
`
`36.
`
`Upon information and belief, Plaintiff has perpetrated, and is perpetrating, multiple
`
`and serious per se violations of multiple federal statutes regulating the sale or distribution of
`
`Plaintiff’s goods.
`
`37.
`
`Upon information and belief, Plaintiff’s use of the mark in U.S. Reg. No. 4643806
`
`constitutes federally-unlawful use.
`
`38.
`
`Upon information and belief, Plaintiff’s use of the mark in U.S. Reg. No. 4643806
`
`is in grave violation of U.S. law.
`
`39.
`
`Upon information and belief, Plaintiff’s use of the mark in U.S. Reg. No. 4643806
`
`is in violation of federal laws which are designed to protect the American people from harm.
`
`40.
`
`Upon information and belief, Plaintiff’s federally-unlawful use of U.S. Reg. No.
`
`4643806 resulted in Plaintiff’s abandonment of U.S. Reg. No. 4643806.
`
`41.
`
`Upon information and belief, Plaintiff has had at least three consecutive years of
`
`non-use, as a result of federally-unlawful use.
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`Page 12 of 120
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`42.
`
`In the alternative, upon information and belief, Plaintiff has had a period of non-
`
`use less than three years with an intent not to resume use, as a result of federally-unlawful use.
`
`43.
`
`Upon information and belief, Plaintiff has perpetrated, and is perpetrating, multiple
`
`and serious per se violations of multiple federal statutes regulating the sale or distribution of
`
`Plaintiff’s goods.
`
`44.
`
`Upon information and belief, regarding U.S. Reg. No. 4643806, the introduction,
`
`delivery for introduction, delivery, proffered delivery, offering for sale, sale, distribution, or
`
`manufacture of the identified goods is federally-unlawful under 21 U.S.C. § 343(r)(6), 21 U.S.C.
`
`§ 331(a), 21 U.S.C. § 331(c), and 21 U.S.C. § 331(g).
`
`45.
`
`Upon information and belief, regarding U.S. Reg. No. 4643806, the promoting,
`
`advertising, offering for sale, selling, or distributing of the identified goods is federally-unlawful
`
`under 15 U.S.C. § 52.
`
`46.
`
`Upon information and belief, Plaintiff’s LIVE RESIN branded product cannot be
`
`lawfully sold in commerce as a dietary supplement.
`
`47.
`
`Plaintiff’s LIVE RESIN branded product is being marketed to consumers as a
`
`dietary supplement.
`
`48.
`
`In the alternative, Defendant hereby states as follows: Plaintiff’s LIVE RESIN
`
`branded product is intended for use in the cure, mitigation, treatment, or prevention of disease.
`
`49.
`
`Upon information and belief, Plaintiff’s LIVE RESIN branded product is not
`
`generally recognized as safe and effective for the uses for which the product is being marketed by
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`Plaintiff. Thus, Plaintiff’s LIVE RESIN branded product constitutes a “new drug” within the
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`meaning of 21 U.S.C. § 321(p).
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`Page 13 of 120
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`50.
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`In the absence of prior approval from the U.S. Food and Drug Administration (as
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`referenced in 21 U.S.C. § 331(d) and 21 U.S.C. § 355(a)), a new drug cannot be legally introduced
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`or delivered for introduction into interstate commerce.
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`51.
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`Upon information and belief, Plaintiff has not obtained prior approval from the U.S.
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`Food and Drug Administration (as referenced in 21 U.S.C. § 331(d) and 21 U.S.C. § 355(a)) for
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`Plaintiff’s LIVE RESIN branded product.
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`52.
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`Upon information and belief, as a result of Plaintiff’s failure to obtain prior
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`approval from the U.S. Food and Drug Administration, Plaintiff’s LIVE RESIN branded product
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`is being illegally introduced or delivered for introduction into interstate commerce, in a significant
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`and per se violation of 21 U.S.C. § 331(d) and 21 U.S.C. § 355(a).
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`53.
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`Upon information and belief, Plaintiff’s LIVE RESIN branded product is
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`“misbranded” according to 21 U.S.C. § 352(f)(1), and, moreover, is an “adulterated” drug
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`according to 21 U.S.C. § 351(a)(2)(B) and 21 U.S.C. § 351(a)(1).
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`54.
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`Upon information and belief, by engaging in commercial activity for this
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`“misbranded” drug—i.e., by introducing or delivering it for introduction into interstate commerce,
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`and/or by delivering or proffering the delivery thereof, and/or by manufacturing it—Plaintiff is
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`perpetrating a significant and per se violation of 21 U.S.C. § 331(a), 21 U.S.C. § 331(c), and 21
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`U.S.C. § 331(g).
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`55.
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`Upon information and belief, by engaging in commercial activity for this
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`“adulterated” drug—i.e., by introducing or delivering it for introduction into interstate commerce,
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`and/or by delivering or proffering the delivery thereof, and/or by manufacturing it—Plaintiff is
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`perpetrating a significant and per se violation of 21 U.S.C. § 331(a), 21 U.S.C. § 331(c), and 21
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`U.S.C. § 331(g).
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`Page 14 of 120
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`56.
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`Upon information and belief, regarding U.S. Reg. No. 4643806, the provision of
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`the identified goods is federally-unlawful under 21 U.S.C. § 343(r)(6), 21 U.S.C. § 331(a), 21
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`U.S.C. § 331(c), 21 U.S.C. § 331(g), 15 U.S.C. § 52, 21 U.S.C. § 331(d), 21 U.S.C. § 355(a), 21
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`U.S.C. § 352(f)(1), 21 U.S.C. § 353(b)(1)(A), 21 U.S.C. § 351(a)(2)(B), and 21 U.S.C. § 351(a)(1).
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`57.
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`It is impermissible for federally-unlawful use of a mark to be covered by a federal
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`trademark registration.
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`58.
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`From the perspective of the USPTO, federally-unlawful use of a mark cannot
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`qualify as use in U.S. commerce.
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`59. When a federal trademark registration in fact encompasses federally-unlawful use,
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`the trademark registration is to be deemed abandoned.
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`60.
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`Upon information and belief, Plaintiff’s grave violation of multiple federal laws has
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`caused the abandonment of U.S. Reg. No. 4643806.
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`61.
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`Upon information and belief, Plaintiff’s endangerment of public health in violation
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`of multiple federal laws has caused the abandonment of U.S. Reg. No. 4643806.
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`62.
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`In connection with all its covered goods, the purported mark in U.S. Reg. No.
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`4643806 should be deemed abandoned, and, as a result, Plaintiff’s Notice of Opposition and claims
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`are barred, precluded, or limited.
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`SEVENTH AFFIRMATIVE DEFENSE
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`63.
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`All the foregoing paragraphs within Defendant’s Amended Answer and
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`Counterclaim are hereby fully incorporated here as though fully restated.
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`64.
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`Defendant’s and Plaintiff’s respective goods are unrelated. However, assuming for
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`the sake of argument that Defendant’s and Plaintiff’s respective goods are related, Defendant
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`Page 15 of 120
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`argues as follows in the alternative: Upon information and belief, Plaintiff’s Notice of Opposition
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`and claims are barred, precluded, or limited because of Plaintiff’s failure to police.
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`65.
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`There is overwhelmingly widespread use of the wording “LIVE RESIN.”
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`66.
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`Upon information and belief, Plaintiff has failed, on an overwhelming and
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`catastrophic scale, to police third party use of Plaintiff’s purported mark LIVE RESIN.
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`67.
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`Because of the overwhelmingly widespread use of the wording “LIVE RESIN,” the
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`public does not regard the wording “LIVE RESIN” as a mark.
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`68.
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`The wording “LIVE RESIN” is understood by consumers as a generic term in
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`connection with botanical products.
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`69.
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`Upon information and belief, Plaintiff’s purported mark LIVE RESIN has been
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`abandoned through generic usage as a result of Plaintiff’s failure to police third party usages.
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`70.
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`Upon information and belief, as a result of Plaintiff’s failure to police, Plaintiff’s
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`purported mark LIVE RESIN has been abandoned due to a course of conduct that has caused the
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`purported mark LIVE RESIN to lose significance as an indication of source, assuming it even had
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`any such significance in the first place.
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`EIGHTH AFFIRMATIVE DEFENSE
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`71.
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`All the foregoing paragraphs within Defendant’s Amended Answer and
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`Counterclaim are hereby fully incorporated here as though fully restated.
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`72.
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`Upon information and belief, Plaintiff has waived any alleged rights that it may
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`have had in Plaintiff’s purported mark LIVE RESIN, and, as a result, Plaintiff’s Opposition and
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`claims are barred, precluded, or limited.
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`Page 16 of 120
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`NINTH AFFIRMATIVE DEFENSE
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`73.
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`All the foregoing paragraphs within Defendant’s Amended Answer and
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`Counterclaim are hereby fully incorporated here as though fully restated.
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`74.
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`Upon information and belief, Plaintiff has committed fraud on the USPTO in
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`connection with U.S. Reg. No. 4643806, and, as a result, Plaintiff’s Opposition and claims are
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`barred, precluded, or limited.
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`TENTH AFFIRMATIVE DEFENSE
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`75.
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`All the foregoing paragraphs within Defendant’s Amended Answer and
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`Counterclaim are hereby fully incorporated here as though fully restated.
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`76.
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`Upon information and belief, Plaintiff’s Opposition and claims are barred,
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`precluded, or limited because, even assuming for the sake of argument that Plaintiff possesses any
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`trademark rights, Plaintiff has misused its purported mark LIVE RESIN by enforcing and/or
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`attempting to enforce that purported mark beyond its lawful scope.
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`ELEVENTH AFFIRMATIVE DEFENSE
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`77.
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`All the foregoing paragraphs within Defendant’s Amended Answer and
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`Counterclaim are hereby fully incorporated here as though fully restated.
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`78.
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`Upon information and belief, Plaintiff’s Opposition and claims are barred,
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`precluded, or limited under the equitable doctrine of laches.
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`79.
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`Upon information and belief, there was undue or unreasonable delay by Plaintiff in
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`asserting its rights, and there was prejudice to Defendant resulting from Plaintiff’s delay.
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`TWELFTH AFFIRMATIVE DEFENSE
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`80.
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`All the foregoing paragraphs within Defendant’s Amended Answer and
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`Counterclaim are hereby fully incorporated here as though fully restated.
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`Page 17 of 120
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`81.
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`Upon information and belief, Plaintiff’s Opposition and claims are barred,
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`precluded, or limited under the equitable doctrine of acquiescence.
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`82.
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`Upon information and belief, Plaintiff has by affirmative word or action conveyed
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`to Defendant the message that Defendant’s acts are not objectionable.
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`THIRTEENTH AFFIRMATIVE DEFENSE
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`83.
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`All the foregoing paragraphs within Defendant’s Amended Answer and
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`Counterclaim are hereby fully incorporated here as though fully restated.
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`84.
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`Upon information and belief, Plaintiff’s Opposition and claims are barred,
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`precluded, or limited under the equitable doctrine of estoppel.
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`85.
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`Upon information and belief, Plaintiff’s claims contradict, and are inconsistent
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`with, Plaintiff’s previous statements or actions.
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`
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`Defendant expressly reserves all rights to seek to amend the present Answer in order to
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`assert additional affirmative defenses as may become appropriate as discovery and factual and
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`legal research are conducted.
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`
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`Page 18 of 120
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`DEFENDANT’S COUNTERCLAIM
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`1.
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`All the foregoing paragraphs within Defendant’s Amended Answer and
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`Counterclaim are hereby fully incorporated here as tho