ESTTA Tracking number:
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`ESTTA1401469
`
`Filing date:
`
`12/12/2024
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding no.
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`91291966
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`Party
`
`Correspondence
`address
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`Submission
`
`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
`
`Defendant
`Honeybiz Australia Pty Ltd
`
`CLIFFORD D. HYRA
`FRESH IP PLC
`11710 PLAZA AMERICA DRIVE SUITE 2000
`RESTON, VA 20190
`UNITED STATES
`Primary email: cliff@freship.com
`Secondary email(s): docketing@freship.com
`866-913-3499
`
`Motion to Dismiss - Rule 12(b)
`
`Micah Gunn
`
`micah@freship.com, cliff@freship.com, docketing@freship.com,
`christine@freship.com
`
`/Micah Gunn/
`
`12/12/2024
`
`20241211 Failure to State a Claim 91291966 Manuka Power.pdf(341435 bytes )
`Exhibit A.pdf(3051125 bytes )
`Exhibit B.pdf(425897 bytes )
`Exhibit C.pdf(622431 bytes )
`Exhibit D.pdf(333561 bytes )
`Exhibit E.pdf(757141 bytes )
`Exhibit F.pdf(747026 bytes )
`Exhibit G.pdf(376494 bytes )
`Exhibit H.pdf(391581 bytes )
`Exhibit I.pdf(249147 bytes )
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
` :
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` Parent Case
`: Opposition No. 91291966
`: Applications No. 86872793
`: Mark: MANUKA POWER
`:
`: Child Case
`: Opposition No. 91291967
`: Applications No. 86872757
`: Mark:
`:
`:
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`--------------------------------------------------------x
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`MANUKA CHARITABLE TRUST,
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` Opposer,
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`v.
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`HONEYBIZ AUSTRALIA PTY LTD,
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` Applicant.
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`--------------------------------------------------------x
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`MOTION TO DISMISS OPPOSITIONS FOR FAILURE TO STATE A CLAIM
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`Applicant, HONEYBIZ AUSTRALIA PTY LTD (hereinafter “Applicant”), through its
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`
`
`
`
`
`
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`undersigned counsel, hereby moves pursuant to Fed.R.Civ.P. 12(b)(6) and §503 to dismiss
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`Oppositions No. 91291966 and 91291967 filed by Opposer, MANUKA CHARITABLE TRUST
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`(hereinafter “Opposer”), in opposition of Applicant’s US Trademark App Nos. 86872793 and
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`86872757 (hereinafter “Applications”). As established hereinafter, Opposer has failed to comply
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`with the Board’s Order dated October 11, 2024. Its First Amended Notices of Opposition (the
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`“Complaints”) continue to fail to state a claim upon which relief may be granted under Rule
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`12(b)(6) FRCP, and its newly pleaded allegations under Sections 2(a) and 2(e)(3) are even more
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`spurious than those previously alleged.
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`The facts as pleaded by Opposer in its claims for relief, even if true, do not entitle
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`Opposer to a statutory cause of action and, therefore, must be dismissed with prejudice to avoid
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`real prejudice being inflicted upon Applicant through further proceedings.
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`1
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`PROCEDURAL BACKGROUND
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`Applicant owns Application Serial No. 86872793 for the standard character mark
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`MANUKA POWER (“MANUKA” disclaimed)1, and Application Serial No. 86872757 for the
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`stylized mark (“MANUKA HONEY” disclaimed).2 Opposer filed Opposition No. 91291966
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`against Application Serial No. 86872793 and Opposition No. 91291967 against Application
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`Serial No. 86872757. The notices of opposition both alleged false suggestion of a connection
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`under Trademark Act Section 2(a), 15 U.S.C. § 1052(a). Applicant filed substantively identical
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`motions to dismiss the two notices of opposition. See 4 TTABVUE. The Board consolidated the
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`Oppositions into the parent case of Opposition No. 91291966, granted Applicant’s motions to
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`dismiss for failure to state a claim, and provided leave for Opposer to amend its Complaints. 9
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`TTABVUE. Opposer amended its Complaints to re-allege false suggestion of a connection under
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`Trademark Act Section 2(a), 15 U.S.C. § 1052(a) and allege two new grounds for Opposition,
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`namely, that Applicant’s marks are deceptive under Section 2(a), and that Applicant’s marks are
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`primarily geographically deceptively misdescriptive under Section 2(e)(3). 10 TTABVUE.
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`Applicant hereby moves to dismiss the Complaints for failure to state a claim upon which relief
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`may be granted under 12(b)(6).
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`
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`Rule 12(b)(6) provides that a motion to dismiss a complaint may be filed for “failure to
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`LEGAL STANDARD
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`1 Filed January 12, 2016, pursuant to Trademark Act Section 44(e), 15 U.S.C. § 1126(e), for inter alia,
`pharmaceutical preparations and beauty and skin care products in International Classes 3, 5, 8, and 21.
`2 Filed January 12, 2016, pursuant to Section 44(e) for, inter alia, pharmaceutical preparations and beauty and skin
`care products in International Classes 3, 5, 8, and 21; and pursuant to Section 1(b), 15 U.S.C. § 1051(b) for “Manuka
`honey” in International Class 30.
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`2
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`

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`state a claim upon which relief can be granted.” Fed.R.Civ.P. 12(b)(6). “The purpose of the rule
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`
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`is to allow the court to eliminate actions that are fatally flawed in their legal premise and
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`destined to fail, and thus spare the litigants the burdens of unnecessary pretrial and trial activity.”
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`Advanced Cardiovascular Sys., Inc. v. SciMed Life Sys., 988 F.2d 1157, 1160 (Fed. Cir. 1993).
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`
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`To survive a Rule 12(b) motion to dismiss, “a complaint must contain sufficient factual
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`matter, accepted as true, to ‘state a claim to relief that is plausible on its face.’” Ashcroft v. Iqbal,
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`556 U.S. 662, 129 S. Ct. 1937, 1949 (2009), quoting Bell Atlantic Corp. v. Twombly, 550 U.S.
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`544, 570 (2007). In particular, a plaintiff need allege “enough factual matter ... to suggest that [a
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`claim is plausible]” and “raise a right to relief above the speculative level.” Totes-Isotoner Corp.
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`v. U.S., 594 F.3d 1346, 1354 (Fed. Cir. 2010). Specifically, a notice of opposition must allege
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`sufficient facts that would, if proved, establish that (1) complainant has standing, and (2) a valid
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`ground exists for opposing the subject Applications. Lipton Industries, Inc. v. Ralston Purina
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`Co., 670 F.2d 1024, 213 SPQ 185, 187 (CCPA 1982).
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`
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`Opposer’s Complaints fail to establish entitlement to a statutory cause of action.
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`Even if all of Opposer’s allegations are accepted as true, the Complaints fail to establish
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`that Opposer: (i) has an interest within the zone of interests protected by the statute; and (ii) has a
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`reasonable belief of damage proximately caused by registration of the mark.
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`Entitlement to the statutory cause of action invoked (e.g., opposition or cancellation) is a
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`requirement in every inter partes case. Australian Therapeutic Supplies Pty. Ltd. v. Naked TM,
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`LLC, 965 F.3d 1370, 2020 USPQ2d 10837, at *3 (Fed. Cir. 2020), cert. denied, 142 S.Ct. 82
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`(2021) (citing Lexmark Int’l, Inc. v. Static Control Components, Inc., 572 U.S. 118, 125-26, 109
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`3
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`USPQ2d 2061 (2014)). To sufficiently plead entitlement to a statutory cause of action, an
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`
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`opposer must allege that (i) it has an interest within the zone of interests protected by the statute,
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`and (ii) it has a reasonable belief of damage proximately caused by registration of the mark.
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`Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 1305-06 (Fed. Cir. 2020), cert. denied, 141 S. Ct.
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`2671 (2021). See also DC Comics v. Cellular Nerd LLC, Opp. No. 91246950, 2022 TTAB
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`LEXIS 453, *22 (TTAB 2022).
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`“Identifying the interests protected by” the Trademark Act “requires no guesswork,”
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`Lexmark, 109 USPQ2d at 2068, because the Act itself identifies those interests in Section 45,
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`which states the Act’s purpose:
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`The intent of this chapter is to regulate commerce within the control of
`Congress by making actionable the deceptive and misleading use of marks in such
`commerce; to protect registered marks used in such commerce from
`interference by State, or territorial legislation; to protect persons engaged in
`such commerce against unfair competition; to prevent fraud and deception in
`such commerce by the use of reproductions, copies, counterfeits, or colorable
`imitations of registered marks; and to provide rights and remedies stipulated by
`treaties and conventions respecting trademarks, trade names, and unfair
`competition entered into between the United States and foreign nations.
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`15 U.S.C. § 1127 (emphasis added). See also Rebecca Curtin v. United Trademark
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`Holdings, Inc., 2023 USPQ2d 535 (TTAB 2023) [precedential]. Specifically, the Lanham Act
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`authorizes suit only for commercial injuries. Lexmark Int’l, Inc. v. Static Control Components,
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`Inc., 572 U.S. 118, 125-26, 109 USPQ2d 2061 (2014) (citing Harold H. Huggins Realty, Inc. v.
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`FNC, Inc., 634 F. 3d 787, 800–801 (CA5 2011). Thus, the Trademark Act regulates commerce
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`and protects plaintiffs with commercial interests which U.S. congress may regulate.
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`Here, Opposer has failed to prove it is entitled to the invoked statutory causes of action
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`4
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`because it continuously fails to establish that it is a commercial entity or that it is engaged in any
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`
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`specific U.S. commercial activity which congress might regulate. Thus, it is impossible to infer
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`that opposer is within the zone of interests protected by the statute, or that it has a reasonable
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`belief of damage proximately caused by registration of the mark.
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`
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`(1) Opposer is not within the zone of interest protected by the statute
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`Opposer’s Complaints fail to plead sufficient facts to reasonably infer that it is within the
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`zones of interest protected by Sections 2(a) and 2(e)(3) of the Trademark Act.
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`Opposer has put forth no new allegations in its pleadings to reasonably infer that it is
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`within the statutory zone of interest or to cure the defects of its initial pleadings, identified by the
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`Board as follows:
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`Among other ambiguities, Opposer does not allege who recognizes it as a
`‘representative’ of the ‘[]guardians[] of particular elements of cultural heritage of
`the Māori;’ what its legal role is vis-à-vis the group or people on whose behalf it
`purports to oppose the marks; and what activities it engages in as part of its
`‘mission’ to protect the terms ‘Mānuka’ and ‘Mānuka honey.’
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`
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`9 TTABVUE 7. Opposer’s new allegations, 5 – 13, inter alia, fail to rectify these defects.
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`Opposer now additionally alleges:
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`5. Opposer is a charitable trust incorporated in New Zealand.
`6. Although the number of New Zealand producers of authentic Mānuka honey is
`vast and they each have their own competitive interests, they still desire to maintain the
`authentic character of Mānuka honey and its cultural significance to the Māori people.
`7. To that end, trade participants have created charitable or industry body
`organizations.
`8. Opposer is one such charitable organization, tasked with protection of mātauranga
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`5
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`Māori.
`9. Opposer’s trustees include members of the trade and the Māori people.
`10. For example, Victor Heath George Goldsmith is chair of the Opposer. He is of the
`Ngāti Porou (tribe) located in the East Cape of the North Island, New Zealand.
`11. He is also the Chairman of the Marangairoa D47 Trust, a Māori Freehold Land block
`in New Zealand that has significant Mānuka resources and its own hives and produces
`authentic Mānuka honey.
`12. Opposer has been authorized by authentic Mānuka trade organizations based out of
`New Zealand, comprised of various members of the Māori people, to enforce their
`cultural rights in and to Mānuka.
`13. To that end, Opposer is authorized by relevant stakeholders representing the Māori
`people to protect the terms “Mānuka” and “Mānuka honey” so that the term is
`maintained and protected as part of mātauranga Māori.
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`10 TTABVUE 3 – 4. Opposer’s Complaints fail to demonstrate a cognizable interest
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`within the zone of interest protected by the Lanham Act. Opposer is merely a charitable trust
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`organized in New Zealand with no cognizable commercial activity in the U.S. It is not even
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`contextually clear what “trade participants” means in allegation 7. Who are the participants?
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`What is their role in the trade? Allegations 9 and 10 add no clarity. They merely state that
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`Opposer’s trustees are members of this ambiguous “trade”. There is no allegation of commercial
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`activity in the U.S. Indeed, allegations 7 and 8 only heighten the ambiguity by asserting that
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`Opposer is associated with nebulous “trade participants” which are merely engaged in the
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`protection of cultural heritage, not US commercial activity. Allegations 12 and 13 do not dispel
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`this ambiguity. They only allege that Opposer is authorized by “authentic Manuka trade
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`organizations based out of New Zealand…to enforce their cultural rights in and to Mānuka” and
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`“relevant stake holders representing the Māori people to protect the terms ‘Mānuka’ and
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`‘Mānuka honey’ so that the term is maintained and protected as part of mātauranga Māori.” Not
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`6
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`only are these “trade organizations” and “relevant stake holders” left vaguely defined, but their
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`entire purpose is alleged to be strictly protecting elements of Māori culture, not U.S. commercial
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`activity.
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`Opposer's primary concern is the misappropriation of Māori cultural heritage and the
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`protection of the term "Mānuka" for the benefit of New Zealand-based entities. These interests
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`appear to be strictly cultural and national in nature, rather than commercial. Even if cultural
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`injury to these vague trade participants were presumed, such injury is not within the zone of
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`interest of Section 2 of the Lanham Act.
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`The Opposer's failure to allege any commercial activity, competitive injury, or concrete
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`harm to its own business or mark further underscores its lack of standing within the zone of
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`interest. The Lanham Act is not intended to protect abstract cultural or national interests, but
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`rather to safeguard commercial interests and prevent consumer deception. As the Opposer's
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`allegations do not demonstrate a clear commercial nexus or injury, it is not within the zone of
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`interest protected by the statute, and its oppositions should be dismissed for lack of standing.
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`
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`(ii) Opposer does not have a reasonable belief of damage proximately caused by
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`registration of Applicant’s marks.
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`The proximate-cause requirement generally bars suits for alleged harm that is “too
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`remote” from the defendant’s conduct. Lexmark Int’l, Inc. v. Static Control Components, Inc.,
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`572 U.S. 118 (2014).
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`It is not enough for Opposer to merely allege belief that it will be damaged. Opposer
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`“must show economic or reputational injury flowing directly from” Applicant’s registration.
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`7
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`Lexmark, 109 USPQ2d at 2069. However, “[t]hat showing is generally not made when” a
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`defendant’s conduct “produces injuries to a fellow commercial actor that in turn affect the
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`plaintiff. For example, while a competitor who is forced out of business by a defendant’s false
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`advertising generally will be able to sue for its losses, the same is not true of the competitor’s
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`landlord, its electric company, and other commercial parties ….” Id. at 2069-70.
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`Here, Opposer’s threadbare allegations show that the damage it believes it will suffer is
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`too remote from registration of Applicant’s marks and is utterly speculative, if not entirely left
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`unsaid. Opposer is merely a New Zealand charitable trust formed by unidentified “trade
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`participants", none of which, according to Opposer’s Complaints, appear to have any U.S.
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`commercial activity that inure to the benefit or detriment of Opposer.
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`Furthermore, Opposer has not provided a “reasonable basis” for its belief that it would
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`suffer some kind of damage if the mark is registered. Opposer has alleged as damage only that
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`“an Australian-based entity obtaining a presumption of rights…is contrary to Opposer’s
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`mission…” 10 TTABVUE 7. However, this type of non-commercial alleged damage is exactly
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`the kind that is outside the Trademark Act’s purview. For example, the Board has held that the
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`interest of a consumer in maintaining competition in the market by keeping the register clear of
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`descriptive and generic marks is not sufficient to support standing, because the Trademark Act
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`identifies its interest as regulating commerce and protecting plaintiffs with commercial interests.
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`Curtin v. United Trademark Holdings, Inc., 2023 USPQ2d 535, at *3 (TTAB 2023). “[A] mere
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`consumer that buys goods or services is not under the Trademark Act’s aegis.” Id. The Board
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`further held that allegations of harm to competition or higher prices to consumers were “too
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`remote”, i.e. not direct. Id.
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`8
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`The allegation that allowing the registration would be “contrary to Opposer’s mission”
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`amounts to a pleading that Opposer would not like it if the mark were to register. If such a claim
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`of damages were found sufficient to support standing, the standing requirement would be
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`vitiated. Any person could bring action against any trademark application on the basis that
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`registration would be contrary to their self-defined mission, or an entity with a convenient
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`“mission” could be created for that purpose. Opposer has not alleged that it faces any
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`commercial damage from registration of Applicant’s mark.
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`There are no allegations in the notice of opposition, even when read in conjunction with
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`any other allegations in the Complaints or other of Opposer’s filings, to demonstrate that
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`Opposer is within the zone of interest of the statute or that or that it would be commercially
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`damaged by registration of Applicant’s mark. Thus, even if all of Opposer’s allegations were
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`proved, the Complaints have still failed to plead facts sufficient to support that Opposer has
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`standing or is entitled to a statutory cause of action.
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`
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`Opposer lacks reasonable grounds for opposition under Trademark Act Section 2(a) for a
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`False Suggestion of a Connection
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`Trademark Act Section 2(a) provides a claim of action against a mark for having a
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`“[f]alse suggestion of a connection with persons, living or dead, institutions, beliefs, or national
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`symbols”. To support a claim under Section 2(a), a complaint must allege facts sufficient to
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`establish:
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`(1) The mark is the same as, or a close approximation of, the name or identity previously
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`used by another person;
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`9
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`(2) the mark would be recognized as pointing uniquely and unmistakably to that person;
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`(3) the person named by the mark or using the mark is not connected with the activities
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`performed by the applicant under the mark; and
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`(4) the prior user's name or identity is of sufficient fame or reputation that a connection
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`with the person would be presumed when the applicant's mark is used to identify the applicant's
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`goods. Piano Factory Grp. v. Schiedmayer Celesta GMBH, 11 F.4th 1363 (Fed. Cir. 2021). In re
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`Jackson, 103 U.S.P.Q.2d 1417, 1419 (TTAB 2012); see In re Wielinski, 49 U.S.P.Q.2d 1754,
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`1757 (TTAB 1998); 3 McCarthy on Trademarks, § 19:76, at 19-276; see generally Notre Dame,
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`703 F.2d at 1376–1377.
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`(1) The mark is the same as, or a close approximation of, the name or identity previously used by
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`another person;
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`Opposer does not allege that the term MANUKA is the name or identity used by a
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`specific entity, such as the Māori people. Instead, Opposer alleges that MANUKA is a term that
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`forms part of the “Mātauranga Māori” (identity) of the Māori people and is a term used to
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`identify a type of tree. 10 TTABVUE 2 – 3. Indeed, the fact that Opposer does not use the term
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`MANUKA to refer to the “Mātauranga Māori” (identity) or the “Māori people” specifically
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`demonstrates that MANUKA is not a synonym or substitute for the terms “Mātauranga Māori” or
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`“Māori people” but is instead a term used by said entities to refer to something else, namely, the
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`Mānuka tree. 10 TTABVUE 2. Opposer’s second allegation confirms this fact, which states,
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`“Specifically, the Māori name for the tree, identified by British explorers and known
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`taxinomically as Leptospermum scoparium, is ‘Mānuka.’” Id. As such, MANUKA, even as used
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`10
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`in Opposer’s own Complaints, is not a name or identity used by a specific entity.
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`
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`Again, Opposer appears to be attempting to mislead the Board with vague and
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`contradictory allegations. For example, allegation 26 states, “Applicant incorporates as a literal
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`element into its mark the exact phrase that is the identity of mātauranga Māori of which Opposer
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`is the kaitiaki: MANUKA.” 10 TTABVUE 6 (emphasis added). In other words, Opposer asserts
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`that MANUKA is the “identity” of the mātauranga Māori. However, if, as Opposer alleges in
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`Allegation 3, “’Mātauranga Māori’ refers to the national identity and knowledge of the Māori
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`people…”, 10 TTABVUE 2 – 3, then Allegation 26 would be interpreted as “Applicant
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`incorporates as a literal element into its mark the exact phrase that is the identity of [the
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`identity] of which Opposer is the kaitiaki: MANUKA”, which makes such little sense that the
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`only conclusion is that this throw away allegation was meant to deceive the Board into believing
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`that Opposer’s complaints meet the requirements of section 2(a). Based on Opposer’s own
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`allegations that MANUKA is the Māori name for a type of tree, it is clear that this term is not
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`and never was a term that constitutes the name or identity of another entity. It is simply the name
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`of a tree.
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`Indeed, Allegations 26, 27, and 29, as interpreted in conjunction with allegation 2,
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`reaffirm that MANUKA is not a synonym or substitute for “Mātauranga Māori” or “Māori
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`people” but is instead a term used to refer to the Mānuka tree. Allegation 2 states, “…the Māori
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`name for the tree…Leptospermum scoparium, is ‘Mānuka.’” 10 TTABVUE 2. Allegation 27
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`states, “A significant portion of U.S. consumers recognize that term [MANUKA] as Māori
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`term”, not that the term identifies the Māori people. 10 TTABVUE 6. Allegation 29 states, “A
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`significant portion of U.S. consumers recognize the term as pointing unmistakably to itself [a
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`11
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`tree] as a part of mātauranga Māori”, not that the term identifies the mātauranga Māori. Id.
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`
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`(emphasis added).
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`Opposer simply cannot overcome the fact that MANUKA means a type of tree.
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`Therefore, Applicant’s mark is not the same as, or a close approximation of, any specific entity,
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`persons, living or dead, institution, beliefs, or national symbol.
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` (2) the mark would be recognized as pointing uniquely and unmistakably to that person;
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`Fundamental to a pleading of false suggestion of a connection under Trademark Act
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`Section 2(a) is that the identity being appropriated is unmistakably associated with the person or
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`institution identified. Springs Indus., Inc. v. Bumblebee Di Stefano Ottina & C.S.A.S., Can. No.
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`92013847, 1984 TTAB LEXIS 180, at *7 (TTAB 1984) (quoting Univ. of Notre Dame, 703 F.2d
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`at 1376-77). There is a distinction between a term being perceived as an entity’s trademark and
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`its persona. See, e.g., Embarcadero Techs., Inc. v. Delphix Corp., Opp. No. 91197762, 2016
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`TTAB LEXIS 11, at *14 (TTAB 2016) (Section 2(a) requires allegations that respondent’s mark
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`is petitioner’s identity or persona and allegations regarding similarities between the parties’
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`marks fall short of this standard; Section 2(a) is not a variation on a likelihood of confusion
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`claim); Notre Dame, 703 F.2d at 1376-77.
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`Here, Opposer is attempting to rely on extra-jurisdictional New Zealand-based trademark
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`use of the term MANUKA by “trade participants” to allege a false suggestion with some
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`nebulous entity. Opposer cannot and has not alleged that the mark would be recognized as
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`pointing uniquely and unmistakably to a specific entity. Instead, Opposer’s Complaints concede
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`that any such pointing is non-unique and applies to a multitude of “trade participants” without
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`12
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`specifying the participants or providing any basis for why the term would be so recognized. 10
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`TTABVUE 3.
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`Opposer has not and cannot in good faith make allegations that Applicant’s mark,
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`MANUKA POWER, nor even the terms “Manuka” or “Manuka Honey” point uniquely and
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`unmistakably to a specific entity, considering there are approximately 84 active trademark
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`applications and registrations including the term MANUKA (11 including MANUKA HONEY)
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`owned by a variety of different companies from different countries and that the terms are
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`considered descriptive by the USPTO and other intellectual property offices, including the
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`Intellectual Property Office of New Zealand where the mātauranga Māori derives.3
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`Opposer has not and cannot in good faith even allege that the term “Manuka Honey” has
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`any unique and unmistakable association with New Zealand entities. Mānuka honey is produced
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`by European honeybees foraging on the mānuka tree, which evidence suggests originated in
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`Australia before the onset of the Miocene aridity.4 It grows uncultivated throughout both
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`southeastern Australia and New Zealand. Id. The mānuka tree is considered indigenous to
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`southeastern Australia and New Zealand, but mānuka honey is today produced globally. Id. Thus,
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`manuka honey likely originated in Australia, and since it is produced globally, there can be no
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`unique and unmistakable association with New Zealand entities, as Opposer well knows.
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`The Intellectual Property Office of New Zealand itself held that “The word mark
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`MANUKA HONEY is … a common descriptive term…” p. 128, ¶397.5 The UK Intellectual
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`3 See the May 4, 2016, Office Action in the Application requiring disclaimer of the term “Manuka Honey” at pages 3
`– 4. See Exhibit B.
`4 See https://en.wikipedia.org/wiki/M%C4%81nuka_honey; last accessed: July 18, 2024. Exhibit C.
`5 For full 171 page opinion, see Manuka Honey Appellation Society Incorporated v. Australian Manuka Honey
`Association Limited [2023] NZIPOTM 19 (22 May 2023) for the mark MANUKA HONEY in class 30. For relevant
`excerpt, see Exhibit D.
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`Property Office held that “[b]ased upon the way the mark is presented to the consumer and the
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`understanding of the consumer of what the sign indicates, we have little hesitation in concluding
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`that the sign ‘MANUKA HONEY’ is not only descriptive but is a term that has become
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`customary in the current language of the trade and the bona fide and established practices of the
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`trade to indicate a type of honey”.6 While the Board is obviously not bound by extra
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`jurisdictional holdings, the Board may, sua sponte, hold that the terms “manuka” and “manuka
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`honey” are objectively descriptive. Compagnie Gervais Danone v. Precision Formulations LLC,
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`89 USPQ2d at 1256.
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`Dictionary evidence confirms the descriptive nature of this term, meaning “honey from
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`the nectar of the manuka tree, often used for medicinal purposes”.7 Medical websites indicate
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`that manuka honey is made in Australia and New Zealand and has been used since ancient times
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`to treat multiple conditions.8
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`Thus, it is clear that Applicant has not and cannot allege sufficient facts to support the
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`claim element that the mark would be recognized as pointing uniquely and unmistakably to a
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`person who used the mark previously as a name or identity.
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`(3) Opposer has not alleged that the person named by the mark or using the mark is not
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`connected with the activities performed by the applicant under the mark
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`Opposer has not alleged that there is any entity named by the mark or using the mark, nor
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`6 For full 39 page opinion, see UK Decision O/899/21 - Manuka Honey Appellation Society Incorporated v.
`Australian Manuka Honey Association Limited. For relevant excerpt, see Exhibit I.
`7 https://www.dictionary.com/browse/manuka-honey; last accessed: July 18, 2024. See Exhibit E.
`https://www.collinsdictionary.com/us/dictionary/english/manuka-honey; last accessed: July 18, 2024. See Exhibit F.
`https://www.webmd.com/a-to-z-guides/manuka-honey-medicinal-uses; last accessed: July 18, 2024. See Exhibit G.
`8 See Exhibit G.
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`that such entity is not connected with the activities performed by the applicant under the mark.
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`(4) the prior user's name or identity is of sufficient fame or reputation that a connection with the
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`person would be presumed when the applicant's mark is used to identify the applicant's goods.
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`Opposer’s Complaints do not allege a prior user’s name or identity being of sufficient
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`fame or reputation that a connection with the person would be presumed when the applicant’s
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`mark is used to identify the applicant’s goods. The Complaints do not allege that there is any
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`prior user, nor do they allege anything with regard to a connection being presumed when
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`applicant’s mark is used to identify applicant’s goods. Opposer alleges that “A significant portion
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`of U.S. consumers recognize that term as a Māori term…A significant portion of U.S. consumers
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`recognize that term as uniquely identifying Māori culture…A significant portion of U.S.
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`consumers recognize the term as pointing unmistakably to itself as a part of mātauranga Māori.”
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`10 TTABVUE 6. Thus, Opposer expressly admits that the term MANUKA points to itself, a type
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`of tree, as part of the mātauranga Māori, not that it points to any specific entity. Id. Allegation
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`15 further admits that other entities, such as Australian entities, also use the term to refer to
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`honey from the Manuka tree. 10 TTABVUE 4. Thus, the primary significance of the term is not
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`as a name or identity, but as a type of tree.
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`The Complaints further allege that Opposer, Manuka Charitable Trust, is made up of
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`“trade participants”, however, these entities apparently have such little fame and reputation that
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`the Opposer does not even care to mention who they are. 10 TTABVUE 3.
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`Opposer fails to allege with whom the Applicant’s mark is falsely suggesting an
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`association with, let alone that such entity is famous or has a strong reputation, or that a
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`connection would be presumed when applicant’s marks are used in connection with its cosmetic
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`and pharmaceutical goods.
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`Opposer makes only conclusory allegations as to a claim of false suggestion of a
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`connection, with no indication as to whom that supposed connection is with. Because the
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`Complaints contain no specific allegations of the individual elements necessary to this claim, the
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`Complaints fail to state a claim of false suggestion of a connection. Furthermore, it is apparent
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`that Opposer cannot in good faith make allegations that would be sufficient to state a claim.
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`Accordingly, Opposer’s Complaints should be dismissed without any further leave to amend.
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`
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`Opposer lacks reasonable grounds for opposition under Trademark Act Section 2(a) for
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`allegedly being Deceptive
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`The Board applies a three-part test for determining whether a mark is deceptive under
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`Section 2(a): (1) is the term misdescriptive of the character, quality, function, composition or use
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`of the goods? (2) If so, are prospective purchasers likely to believe that the misdescription
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`actually describes the goods? (3) If so, is the misdescription likely to affect a significant portion
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`of the relevant consumers' decision to purchase? In re White Jasmine LLC, 106 USPQ2d 1385
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`(TTAB 2013) [precedential], citing In re Budge Mfg. Co., 857 F.2d 773, 8 USPQ2d 1259, 1260
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`(Fed. Cir. 1988). Whether the mark is deceptive is determined with respect to any of the goods in
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`the application. See In re Juleigh Jeans Sportswear Inc., 24 USPQ2d 1694, 1695 (TTAB 1992).
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`For a term to misdescribe goods, the term must be merely descriptive of a significant aspect of
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`the goods which the goods could plausibly possess but in fact do not. In re Phillips-Van Heusen
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`Corp., 63 USPQ2d 1047, 1051 (TTAB 2002).
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`Here, Opposer does not allege that the term MANUKA is misdescriptive of the character,
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`quality, function, composition or use of Applicant’s goods. Opposer only alleges that the term
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`“Mānuka” is “associated” with “a particular quality of goods that is unique to New Zealand.”
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`However, Opposer does not explain what that quality is, nor does the Opposer allege that the
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`term “Mānuka” is misdescriptive of Applicant’s goods in any way. Opposer goes on to state that
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`“Specifically, ‘Mānuka’ honey produced in New Zealand and exported from New Zealand is set
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`to a stringent set of New Zealand-imposed standards.” However, Opposer does not explain what
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`these standards are or whether they are relevant to the character, quality, function, composition or
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`use of the goods, nor does Opposer assert that Applicant’s goods do not meet such standards.
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`Remarkably, Opposer's 2(a) deceptiveness pleadings fail to even allege that Applicant's products
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`do not, in fact, contain Manuka Honey sourced from New Zealand.
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`Applicant’s marks contain the term MANUKA, which suggests that the good