throbber
(gm;/;)/‘ITME’
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`NUTRINOVA, INC.,
`
`Petitioner,
`
`f ‘
`
`(J
`
`yr
`
`v.
`
`V
`
`E
`
`Cancellation No. 29,639
`
`RIT-CHEM CO., INC.,
`
`Respondent
`
`Attorney Reference: C-18055
`
`‘
`
`llllllllllllllllllllllllllllllllllllllllllllllllll
`
`07-27-2001
`
`u.s. Patent a. TMOfcITM Mall Rcpt Dt. m
`
`PETITIONER’S MOTION FOR LEAVE TO AMEND PETITION
`
`Petitioner herein, NUTRINOVA, INC., through its counsel, respectfully moves this
`
`Board pursuant to Rule 2.115 of the Trademark Rules of Practice and Rule 15(a) of the
`
`Federal Rules of Civil Procedure for leave to amend the current Amended Petition for
`
`Cancellation to specifically include a claim of fraud in procurement of the registration at
`
`issue in this case by reason of Respondent having submitted an Allegation of Use for
`
`Intent- to-Use Application with Declaration based upon a token sale of goods bearing the
`
`trademark to qualify it for registration, contrary to the requirements of Lanham Act §45,
`
`15 U. S. C. §1127. This Motion is supported by the accompanying Memorandum.
`
`Dated: Middletown, New York,
`
`July 24, 2001
`
` .2"
`
`’
`Peter M. Ferrell III
`
`Attorney for Petitioner
`
`

`
`Ki’
`
`N‘
`
`Peter M. Ferrell III, Esq.
`c/o Eileen T. Brown Associates LLC
`
`90 Crystal Run Road, Suite 401
`Middletown, New York 10941
`Telephone: (914) 695-1661
`Facsimile: (914) 695-1558
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that true copies of the within PETITIONER’S MOTION FOR LEAVE
`
`TO AMEND PETITION and accompanying MEMORANDUM IN SUPPORT OF
`
`PETITIONER’S MOTION TO AMEND PETITION were served upon counsel for
`
`Respondent on this 24th day of July, 2001, by depositing same with the U. S. Postal
`
`Service as first-class mail, postage prepaid, in an envelope addressed to:
`
`Theodore W. Atkinson, Esq.
`VENABLE
`
`P.O. Box 34385
`
`Washington. D.C. 20043-9
`
`Peter M. Ferrell III
`
`CERTIFICATE OF MAILING
`
`. @7//
`
`I hereby certify that the foregoing PETITIONER’S MOTION FOR LEAVE TO AMEND
`PETITION with accompanying MEMORANDUM IN SUPPORT OF PETITIONER’S
`MOTION TO AMEND PETITION in Cancellation No. 29,630, is being deposited with
`the United States Postal Service with sufficient postage as First Class mail in an envelope
`addressed to:
`
`Hon. Commissioner for Trademarks
`
`ATT: Trademark Trial and Appeal Board
`South Tower Building, 9”‘ Floor
`2900 Crystal Drive
`Arlington, VA 22202
`
`on July 24, 2001.
`
`Peter M. Ferrell III
`
`,4?’
`
`

`
`Q.
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`NUTRINOVA, INC.,
`
`Petitioner,
`
`V.
`
`RIT-CHEM CO., INC.,
`
`Respondent
`
`Cancellation No. 29,630
`
`SECOND AMENDED PETITION FOR CANC ELLATIQN
`
`Petitioner, NUTRINOVA, lNC., a corporation duly organized and existing under
`
`the laws of the State of Delaware, having its principal office at 285 Davidson Avenue,
`
`Somerset, New Jersey 08873, believes that it is or will be damaged by Registration No.
`
`2,196,690, and hereby petitions to cancel same through this Second Amended Petition for
`
`Cancellation amended to add a claim of fraud which has become known from the
`
`evidence developed through discovery of records and personnel of Respondent in this
`
`proceeding under the first Amended Petition for Cancellation.
`
`Description of Respondent’s Registration: Filed on June 6, 1997, for the mark
`
`K ACE-K SWEETENER and Design, registered on October 13, 1998 on the Principal
`
`Register, in class 1 for artificial sweetener; claiming first use on February 9, 1998; no
`
`claim is made to the exclusive right to use “SWEETENER” apart from the mark as
`
`shown.
`
`

`
`3
`
`.
`
`A?
`
`As grounds for this Petition, it is alleged that:
`
`1.
`
`Petitioner is a leading manufacturer, seller and distributor of acesulfame
`
`potassium, known in the trade as ACE-K and used as an artificial
`
`sweetener as stated in Respondent’s description of goods in its trademark
`
`application.
`
`Petitioner, for many years prior to Respondent’s filing date and alleged
`
`date of first use, has used ACE-K in its generic sense, i.e., a customary
`
`and convenient abbreviation for acesulfame potassium. Furthermore,
`
`others in the trade have so used this term and Petitioner has successfully
`
`alleged in this proceeding that Respondent has no reasonable basis to
`
`allege sole, exclusive use of it for trademark purposes.
`
`Petitioner is likely to be damaged by registration of the said generic term
`
`whether or not the exclusive right to its use is ultimately disclaimed of
`
`record, in that the commercial effect of said registration tends to impair
`
`Petitioner’s right to legal use of ACE-K in the manufacture, sale and
`distribution of acesulfame potassium which is identical or closely related
`
`to Respondent’s goods and to which Petitioner has a valid and legal right
`
`to refer by its common descriptive name.
`
`Respondent’s registration was obtained fraudulently in that in the formal
`
`application papers filed by Respondent under notice of 18 U.S.C. §l0O1 it
`
`was stated that Respondent believed that to the best of its knowledge no
`
`other person, firm, corporation or association had the right to use the mark
`
`-2-
`
`

`
`9
`
`,-
`
`containing the undisclaimed generic term in commerce, either in the
`
`identical form thereof or in such near resemblance thereto as to be likely ,
`
`when used on or in connection with the goods/services of such other
`
`person, to cause confusion, to cause mistake or to deceive. Said statement
`
`was made by an authorized agent of Respondent with the knowledge and
`
`belief that said statement was false. Said false statement was made with
`
`the intent to induce authorized agents of the U. S. Patent and Trademark
`
`Office to grant said registration and, reasonably relying upon the truth of
`
`said false statements, the U. S. Patent and Trademark Office did, in fact,
`
`grant such registration to Respondent. Petitioner is damaged by said false
`
`statements and the registration issued in reliance thereon in that long prior
`
`to the filing date of the application for registration of Respondent’s
`
`trademark containing undisclaimed generic matter and the alleged date of
`
`first use, Petitioner has continuously used the term ACE—K on or in
`
`connection with its acesulfame potassium goods and Petitioner’s
`
`continued and legal use of the generic term is and will be impaired by the
`
`continued registration of said mark of Respondent.
`
`Upon information and belief, Respondent’s registration was obtained
`
`fraudulently in that in its Allegation of Use for Intent-to-Use Application,
`
`with Declaration dated May 26, 1998 Respondent states that the date of
`
`first use of its trademark in international commerce was February 9, 1998,
`
`whereas the sale of goods allegedly bearing the trademark on that date was
`
`-3-
`
`

`
`(9.
`
`not use in commerce sufficient to qualify the K ACE-K SWEETENER
`
`and Design trademark for registration under Lanham Act §45, 15 U. S. C.
`
`§l 127, but at best appears to be a token shipment made merely to reserve
`
`a right in the mark. Said statement was made by an authorized agent of
`
`Respondent with the knowledge and belief that said statement was false.
`
`Said false statement was made with the intent to induce authorized agents
`
`of the
`
`U. S. Patent and Trademark Office to grant said registration and,
`
`reasonably relying upon the truth of said false statements, the U. S. Patent
`
`and Trademark Office did, in fact, grant such registration to Respondent.
`
`Petitioner is damaged by said false statements and the registration issued
`
`in reliance thereon in that long prior to the filing date of the application for
`
`registration of Respondent’s trademark containing undisclaimed generic
`
`matter and the alleged date of first use, Petitioner has continuously used
`
`the term ACE-K on or in connection with its acesulfame potassium goods
`
`and Petitioner’s continued and legal use of the generic term is and will be
`
`impaired by the continued registration of said mark of Respondent.
`
`6 .
`
`Upon information and belief, Respondent’s address is:
`
`Rit-Chem Co., Inc.
`109 Wheeler Avenue
`
`Plcasantville, New York 10570
`
`WHEREFORE, Petitioner respectfully prays that Registration No. 2,196,690 for
`
`the mark K ACE-K SWEETENER and Design be cancelled and that its Petition for
`
`-4-
`
`

`
`
`,4-
`5.’
`
`Cancellation be sustained in favor of the Petitioner. Alternatively, if the Trademark Trial
`
`and Appeal Board does not sustain the Petition for Cancellation of the Registration in its
`
`entirety, Petitioner respectfully prays that Respondent be required to disclaim any
`
`exclusive right to use of the generic term ACE—K other than in the mark as shown in the
`
`said Registration in accordance with the Order of this Board mailed November 28, 2000.
`
`Dated: Middletown, New York
`
`July 24, 2001.
`
`NUTRINOVA, INC.
`
`By:
`
`
`
` Peter M. Ferrell I
`
`Attorney for Petitioner
`c/o Eileen T. Brown Associates LLC
`
`90 Crystal Run Road, Suite 401
`Middletown, New York 10941
`Telephone: (845) 703-1661
`
`

`
`
`
`5-‘
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`NUTRINOVA, INC.,
`
`Petitioner,
`
`v.
`
`E
`
`Cancellation No. 29,630
`
`RIT-CHEM co., 1NC.,
`
`Respondent
`
`Attorney Reference: C-18055
`
`MEMORANDUM IN SUPPORT OF PETITIONER’S
`MOTION FOR LEAVE TO AMEND PETITION.
`
`Petitioner herein, NUTRINOVA, INC., respectfully submits this Memorandum in
`
`support of its Motion for Leave to Amend the Amended Petition for Cancellation of
`
`Registration No. 2,196,690 on grounds of evidence located during the discovery phase of
`
`this proceeding indicating that the use of the K ACE-K SWEETENER and Design
`
`trademark in commerce relied upon by Respondent to qualify it for registration was
`
`insufficient for the purpose under Lanham Act §45, 15 U. S. C. §1127.
`
`I. INTRODUCTION AND SUMMARY.
`
`By its Order mailed November 28, 2000, the Trademark Trial and Appeal Board
`
`determined that Respondent would be allowed to amend its Trademark Registration No.
`
`2,196,690 to add a disclaimer to any exclusive right to use of the term ACE-K, rendering
`
`moot the first claim of Petitioner in the Amended Petition to cancel the registration on
`
`grounds of generic content. This case thus proceeds solely on Petitioner’s claim of fraud
`
`in procurement of the registration.
`
`

`
`E
`
`II. STATEMENT OF FACTS.
`
`Petitioner had filed the first Amended Petition in response to the July 10, 2000
`
`Order of the Board allowing it to do so, and clearly stated a claim for fraud premised on
`
`the allegation that Respondent knew at the time of filing its Trademark Application with
`
`Declaration that others had the right to use the undisclaimed generic term in commerce
`
`(Amended Petition, Section 4). During the discovery phase of this proceeding, Petitioner
`
`has obtained evidence that Respondent has compounded the fraud upon the United States
`
`Patent and Trademark Office of stating it had the exclusive right to registration and use of
`
`the trademark containing an undisclosed generic term by fraudulently claiming qualifying
`
`use of the mark in commerce.
`
`The Trademark Application file for Registration No. 2,196,690 of the trademark
`
`K ACE—K SWEETENER and Design contains the Allegation of Use for Intent-To-Use
`
`Application, with Declaration (Amendment to Allege Use/Statement Use) executed by
`
`Respondent on May 26, 1998 alleging first use of the trademark in commerce regulated
`
`by the United States Congress on February 9, 1998. During depositions of certain
`
`executives of Respondent on April 24, 2001, the President of the company was asked
`
`about the alleged date of first use and provided a redacted copy invoice purporting to
`
`show sale and shipment of a 25 kg. drum of acesulfame potassium allegedly bearing the
`
`trademark to an undisclosed customer in Canada on the date claimed (Petitioners
`
`Deposition Exhibit 30 for ID, copy attached as Exhibit A).
`
`-2-
`
`

`
`
`
`The Petitioner in this case markets acesulfame potassium made under a process
`
`patent owned by its corporate parent, Nutrinova Nutrition Specialties & Food Ingredients
`
`GmbH. When it was reported that Respondent was selling product produced abroad in
`
`United States commerce, possibly in violation of the patent rights, Petitioner and its
`
`parent company engaged patent counsel to contact the Respondent. On information and
`
`belief, the two organizations have discussed settlement of the patent claim without
`
`resorting to litigation, and copies of certain correspondence have been made available to
`
`the undersigned counsel for Petitioner for use in this proceeding. The two letters
`
`Respondent sent to patent counsel for Petitioner and attached to this memorandum as
`
`Exhibits B and C (including for clarity the form Affidavit ANNEX 1 referred to in the
`
`Rit—Chem letter) therein will be offered into evidence and qualified as business records of
`
`Petitioner during its testimony period in this case. They are also subj ects of a Request for
`
`Admission(s) served simultaneously with this Motion.
`
`On information and belief, the negotiations of the claim of patent infringement
`
`include or included the request for Respondent to disclose its sales volumes of
`
`acesulfame potassium for purposes of discussing financial damages to Petitioner. The list
`
`of sales with redacted invoices produced under the March 7, 2001 letter from Respondent
`
`attached as Exhibit B clearly shows the first sale of product as having an invoice date of
`
`June 7, 1999. The reference to that list contained in Exhibit C, the letter of June 14,
`
`2001, affirms the accuracy of the information in the last paragraph of its first page and in
`
`the comments to ANNEX 1 on the second. And yet the May 26, 1998 Allegation of Use
`
`for Intent-To-Use Application with Declaration in the USPTO Trademark Application
`
`-3-
`
`

`
`
`
`UV
`
`File recites that the date of first use by Respondent of the K ACE-K SWEETENER and
`
`Design trademark as applied to the Respondent’s acesulfame potassium product in
`
`commerce lawfully regulated by the United States Congress was February 9, 1998.
`
`While it is possible Respondent may have had another supplier of acesulfame potassium
`
`at the time of the alleged sale of product in February 1998, at this point there has been no
`
`record or testimony from Respondent identifying either the customer or supplier of that
`
`product despite appropriate discovery requests by Petitioner. The nearly one and one-
`
`half year interval between the sale dates shown in the Allegation of Use and the first date
`
`on the list in Exhibit B has prompted this Motion to broaden the scope of the fraud claim.
`
`III. ARGUMENT
`
`Through review of responses to discovery requests and during discussions of this
`
`case with opposing counsel, both in connection with discovery requests and at the
`
`discovery depositions of executives of Respondent, the undersigned counsel for
`
`Petitioner has been informed that a number of outstanding discovery requests are viewed
`
`by Respondent as not being relevant to the issue of cancellation of the subject trademark
`
`registration for fraud on grounds of knowledge of a generic component at the time of
`
`application. Immediately prior to the depositions of executives of Respondent in April,
`
`2001, a form of Protective Order was provided to counsel for the Respondent but it has
`
`not been executed nor will Respondent provide further information withheld from
`
`production in response to discovery requests on grounds of relevance and confidentiality
`
`without a contested Motion to Compel.
`
`

`
`
`
`.2
`
`The same sort of reasoning is being used by Respondent to avoid providing
`
`additional data as to the particulars of sale of product under the trademark at issue in this
`
`proceeding, the objection being that such data does not relate to the fraud claim based on
`
`genericness stated in the Amended Petition, which certainly alludes to the date of first use
`
`by Respondent only as “alleged.” Petitioner submits it is appropriate for the Trademark
`
`Trial and Appeal Board to grant leave to amend the Petition in this cancellation action to
`
`include a claim of fraud based upon an apparent. single, token shipment of product
`
`allegedly bearing the trademark by Respondent in 1998 made merely to reserve a right in
`
`its mark contrary to the provisions of Lanham Act §45, 15 U. S. C. §1127. The Act
`
`provides inter alia that, “The term ‘use in commerce’ means the bona fide use of a mark
`
`in the ordinary course of trade, and not made merely to reserve a right in the mark.”
`
`In spite of the difficulties encountered in its discovery efforts, Petitioner has
`
`included documentation with this Motion which demonstrates a significant possibility of
`
`fraud on the part of Respondent in the trademark application process. If admissible
`
`evidence ultimately proves that claim unfounded, it will have had the benefit of scrutiny
`
`and determination by the Trademark Trial and Appeal Board.
`
`IV. CONCLUSION.
`
`Petitioner fully intends to file the necessary Motion to Compel at the appropriate
`
`interval in this case, at which time it may be seen whether the Respondent has or can be
`
`expected to meaningfully reply to the Request for Admission(s) seeking direct
`
`confirmation of the of the source of Exhibits B and C to this Memorandum. If history is
`
`any guide, it is suggested that allowing the amendment of the Petition to the form
`
`-5-
`
`

`
`3
`
`included with this Motion reflecting developments to date will serve to better focus the
`
`outstanding requests for evidence relevant to trademark law issues expected to be briefed
`
`in proceedings on the Motion to Compel, rather than encourage argument that the fraud
`
`claim in the Petition does not extend to the apparent token sale upon which Respondent
`
`qualified its trademark for registration. If leave to amend the Petition were not granted,
`
`Petitioner could continue to be frustrated in its efforts to complete permissible discovery
`
`to establish elements of fraud.
`
`Dated: Middletown, New York,
`
`July 24, 2001
`
`
`
`Peter M. Ferrell III
`
`Attorney for Petitioner
`c/o Eileen T. Brown Associates LLC
`
`90 Crystal Run Road, Suite 401
`Middletown, New York 10941
`Telephone: (914) 695-1661
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that true copies of the within PETITIONER’S MOTION FOR LEAVE
`
`TO AMEND PETITION and accompanying MEMORANDUM IN SUPPORT OF
`
`PETITIONER’S MOTION FOR LEAVE TO AMEND PETITION were served upon
`
`counsel for Respondent on this 24th day of July, 2001, by depositing same with the U. S.
`
`Postal Service as first-class mail, postage prepaid, in an envelope addressed to:
`
`-5-
`
`

`
`
`
`Theodore W. Atkinson, Esq.
`VENABLE
`
`P.O. Box 34385
`Washington. D.C. 20043-999
`
` Peter M. F
`
`ell III
`
`CERTIFICATE OF MAILING
`
`I hereby certify that the foregoing PETITIONER’S MOTION FOR LEAVE TO AMEND
`PETITION with accompanying MEMORANDUM IN SUPPORT OF PETITIONER’S
`MOTION FOR LEAVE TO AMEND PETITION in Cancellation No. 29,630, is being
`deposited with the United States Postal Service with sufficient postage as First Class Mail
`in an envelope addressed to:
`
`Hon. Commissioner for Trademarks
`
`on July 24, 2001.
`
`ATT: Trademark Trial and Appeal Board
`South Tower Building, 9”‘ Floor
`2900 Crystal Drive
`Arlington, VA 22202
`
`
`
`Peter M. Ferrell III

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