`(exceeds 300 pages)
`
`Proceeding] Serial No: 920402878
`
`Filed: 07-3 1-2006
`
`Title: Petitioner’s Motion for Summary
`
`Judgment.
`
`Part 1 of 1
`
`
`
`§ *2
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`TTAB
`
`NIRVANA, INC.
`
`Petitioner,
`
`v.
`
`NIRVANA FOR HEALTH INC.
`
`Registrant.
`
`\/\./\/sixes/‘-’\J§
`
`Cancellation No.: 92042878
`
`Attorney Ref.: 2779-6
`
`PET|T|ONER’S MOTION FOR SUMMARY JUDGMENT
`
`
`07-31-2006
`
`U.S. Patent & TMOfc/TM Mail Rcpt Dt. #22
`
`
`
`TABLE OF CONTENTS
`
`I. MATERIAL FACTS THAT ARE NOT IN DISPUTE ................................ ..
`
`II. STANDARD FOR SUMMARY JUDGMENT ......................................... ..
`
`III. NHI HAS ABANDONED REGISTRATION NO. 2,731,312 THROUGH
`NONUSE ............................................................................................... ..
`
`A. The Standard for Abandonment ................................................. ..
`
`B. There is Prima Facie Evidence that NHI Abandoned the NIRVANA
`
`Mark ......................................................................................... ..
`
`IV. NHI HAS FRAUDULENTLY OBTAINED REGISTRATION NO.
`
`2,731,312 ........................................................................................... ..
`
`A. The Standard for Fraudulent Procurement of Registration ........ ..
`
`B. There is Undisputed Evidence that NHI Fraudulently Obtained
`Registration No. 2,731 ,312 ....................................................... ..
`
`V. CONCLUSION ..................................................................................... ..
`
`10
`
`11
`
`11
`
`12
`
`13
`
`13
`
`14
`
`18
`
`1065085
`
`
`
`TABLE OF AUTHORITIES
`
`CASES
`
`PAGE
`
`Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (1986) ............................... ..
`
`Auburn Farms Inc. v. McKee Foods Corp., 51 USPQ2d 1439 (TTAB 1999)..
`
`Bakaen‘ Steel Wire Corp. v. S.p.A. Officine Maccaferri Gia' Raffaele
`Maccaferri & Fagli, 196 USPQ 558 (TTAB 1977) ...................................... ..
`
`Ce/otex Corp. v. Catrett, 477 U.S. 317, 106 S. Ct. 2548 (1986) ................ ..
`
`Cerveceria Centroamericana, S.A. v. Cerveceria India, Inc., 892 F.2d 1021
`(Fed. Cir. 1989) .......................................................................................... ..
`
`First lnt’l Serv. Corp. v. Chuckles Inc., 5 USPQ2d 1628 (TTAB 1988). ........ ..
`
`General Car and Truck Leasing Systems, Inc. v. General Rent-A-Car Inc.,
`17 USPQ2d 1398 (S.D. Fla. 1990) ................................................................ ..
`
`General Rent-A-Car Inc. v. General Leaseways, Inc., Canc. No. 14,870
`('|‘|'AB May 2, 1998) ...................................................................................... ..
`
`Imperial Tobacco Ltd. v. Philip Morris, Inc., 899 F.2d 1575 (Fed. Cir. 1990) ..
`
`Martahus v. Video Duplication Serv., Inc., 3 F.3d 417 (Fed. Cir. 1993) ..... ..
`
`10
`
`16
`
`14
`
`10
`
`11
`
`13
`
`13
`
`13
`
`11
`
`11
`
`Medinol Ltd. v. Neuro Vasx Inc., 67 USPQ2d 1205, 1208 (TTAB 2003) ....... ..
`
`13, 14
`
`Mister Leonard Inc. v. Jacques Leonard Couture Inc., 23 USPQ2d (‘HA8
`1 992) ......................................................................................................... ..
`
`Money Store v. Harriscorp Finance, Inc., 689 F.2d 666, 216 USPQ 11
`(7th Cir. 1989); .............................................................................................. ..
`
`On-line Care/ine Inc. v. America On/ine Inc., 229 F.3d 1080 (Fed. Cir. 2000).
`
`Parfums Nautee Ltd. v. American International Industries, 22 USPQ2d
`1306 (TTAB 1992) ...................................................................................... ..
`
`Rivard v. Linville, 133 F.3d 1446 (Fed. Cir. 1998) ......................................... ..
`
`Torres v. Cantine Torresella S.r./., 808 F.2d 46 (Fed. Cir. 1986) .................. ..
`
`1 3
`
`16
`
`11
`
`16
`
`11
`
`13
`
`iii
`
`1065085
`
`
`
`Woodstock's Enterprises Inc. (California) v. Woodstock's Enterprises Inc.
`(Oregon), 43 USPQ2d 1440 (TTAB 1997). ................................................ ..
`
`STATUTES AND ACTS
`
`Fed.R.Civ.P. 56 (c) ......................................................................... ..
`
`15 U.S.C. § 1064(3) (2000) ........................................................................ ..
`
`14
`
`10
`
`11
`
`15 U.S.C. §1127 (2000) ............................................................................. ..
`
`11,12
`
`TMEP §901.05 ........................................................................................... ..
`
`TMEP §1201.03 ......................................................................................... ..
`
`15
`
`15
`
`iv
`
`1065085
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`NIRVANA, INC.
`
`Petitioner,
`
`v.
`
`NIRVANA FOR HEALTH INC.
`
`Registrant.
`
`\y§/\/\/\./\./"\./\/
`
`Cancellation No.: 92042878
`
`Attorney Ref.: 2779-6
`
`PET|TIONER’S MOTION FOR SUMMARY JUDGMENT
`
`Pursuant to Rule 56, Fed.R.Civ.P., petitioner Nirvana, Inc. ("Nirvana") hereby
`
`moves for summary judgment that Nirvana for Health Inc. ("NH|") has abandoned its rights
`
`in the mark of Registration No. 2,731,312, or alternatively, has fraudulently obtained
`
`trademark Registration No. 2,731,312. As a consequence, this motion seeks the
`
`cancellation of the NIRVANA registration.
`
`As demonstrated below, NHI has not used the mark NIRVANA for “bottled natural
`
`spring mineral water” in well over three years and has provided no evidence that it intends
`
`to resume use of the mark. Thus, it should be deemed to have abandoned the mark for
`
`“bottled natural spring mineral water.” In addition, there is no material fact in dispute that
`
`at the time NHI filed an application for the mark NIRVANA for “bottled natural spring
`
`mineral water,” NHI knew that it was not the owner of the NIRVANA trademark for such
`
`goods and yet persuaded the USPTO to issue the ‘312 Registration for such goods.
`
`1068232
`
`
`
`I.
`
`MATERIAL FACTS THAT ARE NOT IN DISPUTE
`
`The following material facts are not in dispute:
`
`1. Nirvana Restaurant Inc. of 30 Central Park South New York, New York 10019
`
`filed Application Serial No. 75/565,188 for the mark NIRVANA for “bottled water’ on
`
`October 5, 1998. This application claimed a first date of use of October 30, 1996 and a
`
`first date of use in commerce of October 30, 1996. This application was abandoned on
`
`August 17, 1999 because of the Applicant's failure to completely respond to an Office
`
`Action. See Exhibit 1, De Luca Dec|., Tab A.
`
`2. Nirvana for Health Inc. of 40 Central Park South, 2A New York, New York
`
`100191633, filed Application Serial No. 76/319,172 for the mark NIRVANA for “bottled
`
`natural spring mineral water’ on October 1, 2001. This application issued as Registration
`
`No. 2,731,312. See Exhibit 2.
`
`3. Registration No. 2,731,312 claims a first date of use anywhere of August 14,
`
`1970 and a first date of use in commerce of August 14, 1990. See Exhibit 2.
`
`4.
`
`in Application Serial No. 76/319,172, NHI listed its mailing address as “Nirvana
`
`for Health |nc., 40 Central Park South, 2A, New York, New York 10019-1633, Nirva [sic]
`
`founded in 1970 by Shamsher Wadud.” (emphasis added). See Exhibit 3.
`
`5. The cover letter to Application Serial No. 76/319,172 was signed by Shamsher
`
`Wadud, as “Chairman & President — Nirvana for Health lnc.” and “President — Nirvana
`
`Restaurant lnc.” See Exhibit 4, cover letter to application from file history of the ‘172
`
`Application.
`
`6. One attachment submitted with the application in Application Serial No.
`
`76/319,172 is a certificate that indicates that “Nirvana Himalayas Water Corporation" was
`
`
`
`1068232
`
`
`
`a member of the Water Quality Association. The certificate is dated 1990. See Exhibit 5,
`
`from the file history of the ‘172 Application.
`
`7. Another attachment submitted with the application in Application Serial No.
`
`76/319,172 indicates that Nirvana restaurant included “Nirvana Spring Water’ on its menu.
`
`The menu indicates that the restaurant was founded “in 1970 by Shamsher Wadud.” The
`
`menu is not dated and does not include the restaurant's location. See Exhibit 6, from the
`
`file history of the ‘172 Application.
`
`8. A specimen of use submitted in Application Serial No. 76/319,172 shows water
`
`bottles with a label including the term NIRVANA that according to the label were being
`
`offered by “Nirvana Penthouse, 30 Central Park South, New York, NY 10019.” The label
`
`indicates that the restaurant was “celebrating its 25"‘ Anniversary.” See Exhibit 7, from
`
`the file history of the ‘172 Application.
`
`9.
`
`If Nirvana Penthouse is the restaurant owned by Nirvana Restaurant Inc., which
`
`was alleged to have been in business since 1970, then the restaurant's 25th anniversary
`
`date was in 1995. Thus, the specimens of use submitted with the application in
`
`September 2001 were not specimens of current use as of 2001.
`
`10. No specimens of use submitted in Application Serial No. 76/319,172 indicate
`
`use by Registrant, Nirvana for Health Inc.
`
`11. NHI is the record owner of United States Trademark Registration No.
`
`2,731,312. See Exhibit 8, a copy of the ‘312 Registration and its record from TESS.
`
`12. Petitioner, Nirvana is the owner of the trade name and trademark NIRVANA in
`
`connection with spring water, having incorporated in New York as Nirvana, Inc. on June 1,
`
`1995 (See Exhibit 9, Rafizadeh Decl., Tab A) and thereafter continuously used and is
`
`1068232
`
`
`
`using the trade name and trademark NIRVANA in commerce in connection with the
`
`marketing and sale of spring water. See Exhibit 9, Rafizadeh Dec|., Para. 2 and Tab B.
`
`13. The mark shown in Registration No. 2,731,312 and Petitioner's name and mark
`
`NIRVANA are identical.
`
`14. Petitioner's spring water and NH|’s bottled natural spring mineral water
`
`identified in Registration No. 2,731,312 are virtually identical products which are or are
`
`likely to be offered through the same or overlapping channels of trade to the same or
`
`overlapping classes of purchasers.
`
`15. There is no evidence of record showing that the entity NHI made bona fide use
`
`of the mark NIRVANA as a trademark for the goods covered by Registration No.
`
`2,731,312.
`
`16. There is no evidence that NHI was the owner of the mark NIRVANA when the
`
`application for registration was filed on October 1, 2001.
`
`17. At the time that the application for registration was executed by Shamsher
`
`Wadud, President of NHI (hereafter "Wadud") on September 24, 2001, Wadud knew that
`
`the mark NIRVANA had not been used by NHI and that NHI was not the owner of the
`
`mark NIRVANA.
`
`18.
`
`In Application Serial No. 76/319,172 for registration filed by NHI under notice of
`
`18 U.S.C. § 1001, Wadud falsely stated that "he/she believes the applicant to be the
`
`owner of the trademark/service mark sought to be registered. . .." See Exhibit 3, from the
`
`file history of the ‘172 Application.
`
`1068232
`
`
`
`19. At the time he signed the application oath in Application Serial No. 76/319,172
`
`on September 24, 2001, Wadud knew that NHI did not own the mark NIRVANA for bottled
`
`water and that the allegation of ownership made in the oath was false.
`
`20.
`
`In Application Serial No. 76/319,172 for registration filed by NHI under notice of
`
`18 U.S.C. § 1001, Wadud falsely stated that:
`
`to the best of his/her knowledge and belief no other person,
`firm, corporation or association has the right to use the above
`identified mark 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, or to cause mistake, or to
`deceive.... See Exhibit 3, from the file history of the ‘172
`Application.
`
`21. Petitioner at no time assigned to NHI any rights in the trade name or trademark
`
`NIRVANA.
`
`22. NHl's false statements were made with the intent to induce authorized agents
`
`of the United States Patent and Trademark Office to grant Registration No. 2,731,312 and,
`
`reasonably relying upon the truth of said false statements, the U.S. Patent and Trademark
`
`Office did, in fact, grant said registration to NHI.
`
`23. NHI claims that its predecessors insofar as NHl’s use of rights in the mark
`
`NIRVANA are concerned are Nirvana Bengal Cabaret, Inc. and Nirvana Himalayas Water
`
`Corporation. See Exhibit 10, NHl’s Response to lnterrogatory No. 4.
`
`24. NHI claims that its first commercial use of the mark NIRVANA on bottled
`
`natural spring mineral water was on August 14, 1970, when Mr. Wadud made labels that
`
`he placed on bottles which he sold from his restaurant, then located at 1193 Lexington
`
`Ave., New York, New York 10028. See Exhibit 11, NHl’s Response to lnterrogatory No.
`
`6.
`
`1068232
`
`
`
`25. NHI claims that its bottles of water under the NIRVANA mark are “sold from a
`
`restaurant and distributed to other restaurants in boxes of 12 or 24, in either plastic or
`
`glass, and that the type of customers that ultimately purchase the bottled water are mainly
`
`sophisticated customers who learn of the bottled water when the [sic] frequent the
`
`restaurant(s). See Exhibit 12, NHl’s Response to lnterrogatory No. 13.
`
`26. NHI claims that the public becomes aware of NHl’s bottled natural spring
`
`mineral water and the mark NIRVANA by hearing it primarily by word of mouth, or when
`
`displayed for sale in restaurants, or when mentioned in news feature articles. See Exhibit
`
`13, NHl’s Response to lnterrogatory No. 19.
`
`27. NHl’s cover letter for its Application Serial No. 76/319,172 stated that “[a]t this
`
`time .
`
`.
`
`. NHI is now planning to engage in a mass marketing campaign of ‘Nirvanam’
`
`water and increase global sales. .
`
`See Exhibit 4.
`
`28. NHI has not placed advertisements with newspapers or on the internet for
`
`bottled water under the mark NIRVANA. See Exhibit 13, NHl’s Response to lnterrogatory
`
`No. 20.
`
`29. NHI was not listed as a member of the International Bottled Water Association
`
`in the 2003 Membership Roster. See Exhibit 9, Rafizadeh Dec|., Tab C.
`
`30. NHI is not a current member of the international Bottled Water Association.
`
`See Exhibit 14, NHl’s Response to lnterrogatory No. 23.
`
`31. The Nirvana Himalayas Water Corporation was issued a license by the
`
`Nepalese government to establish a spring water bottling plant in the Remechap district of
`
`Nepal on May 8, 1991. See Exhibit 9, Rafizadeh Dec|., Tab D. A condition of the license
`
`is that “the license will be cancelled and the deposit will be confiscated if the industry is not
`
`1068232
`
`
`
`established according to the work plan and not operated within 12 months.
`
`If the industry
`
`could not be established according to the schedule, approval from the department for the
`
`extension of the license is required." See Exhibit 9, Rafizadeh Decl., Tab D at p. 2.
`
`32. A business plan for Nirvana Himalayas Water Corporation of 40 Central Park
`
`South, New York, New York 10019 of September 19, 1990, indicates that as of September
`
`1990, the company was only a start up and sales were still only projected versus actual.
`
`See Exhibit 9, Rafizadeh Decl., Tab E.
`
`33. A New York Post article of June 28, 1991 reports that Shamsher Wadud
`
`“intends [his bottled water] Q a Perrier, Asian-sty|e." See Exhibit 9, Rafizadeh Decl.,
`
`Tab F.
`
`34. A New York Newsday article from June 21, 1991 indicates that Nirvana bottled
`
`spring water “fl_b_e priced, and w come in vase-like bottles.” See Exhibit 9, Rafizadeh
`
`Decl., Tab G.
`
`35. On or about July 23, 2002, a wall of the restaurant Nirvana located at 30
`
`Central Park South collapsed. See Exhibit 1, De Luca Decl., Tab B, paras. 4-5, excerpt
`
`from document in In re Nirvana Restaurant, Inc., Bankruptcy Case. As a result of the
`
`damage, a vacate order was issued by the city of New York. The restaurant immediately
`
`ceased operations. Articles from the intemet indicate that the restaurant never reopened.
`
`See Exhibit 1, De Luca Decl., Tab C.
`
`36. Certain of the Nirvana restaurant assets were abandoned. (Exhibit 1, De Luca
`
`Decl., Tab D). The restaurant property was sold in the Bankruptcy Court.
`
`In particular, an
`
`auction of the restaurant property was conducted at the Courthouse on February 9, 2004
`
`(Exhibit 1, De Luca Decl., Tab E) and a hearing to approve the auction was held on
`
`1068232
`
`
`
`February 10, 2004 (Exhibit 1, De Luca Decl., Tab F). Wadud did not bid at the auction
`
`and the Court entered an Order on February 11, 2004 authorizing and approving the terms
`
`and conditions of the sale by the Trustee to Dr. Dipak Nandi, the highest bidder. See
`
`Exhibit 1, De Luca Decl., Tabs F and G, paras. 11, 12.
`
`37. Nirvana for Health Inc. was incorporated in New York on June 14, 2001. See
`
`Nirvana for Health Inc. was not incorporated at the time of the alleged date of
`
`first use anywhere (August 14, 1970) and the date of first use in commerce in Application
`
`Serial No. 76/319,172 (August 14, 1990). Thus, the only way that Nirvana for Health Inc.
`
`could have used the mark as early as the first use dates claimed in the ‘172 application
`
`was through its predecessor companies.
`
`38. The company Nirvana Restaurant Inc. of 40 Central Park South, New York, NY
`
`10019 was incorporated in New York on May 3, 1995, well after the alleged first date of
`
`use and first date of use in commerce of the mark of the ‘172 application. The Nirvana
`
`Restaurant Inc. filed for Chapter Eleven bankruptcy on November 6, 2001, about a month
`
`after the '1 72 application was filed. See Exhibit 1, De Luca Decl., Tab H. The Chapter 11
`
`Bankruptcy (reorganization) was converted to a Chapter 7 Bankruptcy (liquidation) on July
`
`17, 2003. See Exhibit 1, De Luca Decl., Tab I.
`
`39. The Bengal Cabaret lnc., a New York corporation of 1193 Lexington Avenue,
`
`New York, NY 11028, filed an application on December 9, 1970 for the mark NIRVANA for
`
`“restaurant services," which issued as Registration No. 947,368. See Exhibit 16, copy of
`
`the ‘368 Registration and its record from TESS. The ‘368 Registration expired under
`
`Section 9 on August 23, 1993. See Exhibit 1, De Luca Decl., Tab J, record from TESS.
`
`Registration 947,368 claims a first date of use of August 14, 1970. The Bengal Cabaret
`
`1068232
`
`
`
`Inc. allegedly assigned the entire interest and the goodwill of the ‘368 registration, effective
`
`Jan. 15, 1980 to Moti-Mahal Inc. Moti-Mahal lnc. allegedly assigned the entire interest and
`
`the goodwill, effective August 29, 1983 to Bhuyan, Farida Kamal. Bhuyan, Farida Kamal
`
`allegedly assigned the entire interest and the good will effective May 15, 1986 to Global
`
`Dynamics, Inc. Global Dynamics, Inc. allegedly assigned the entire interest and the good
`
`will as of March 25, 1988 to Nirvana Global Corporation. Nirvana Global Corporation
`
`allegedly assigned the entire interest to Rooftop Restaurant Inc. (executed August 14,
`
`1995). Rooftop Restaurant Inc. allegedly assigned an undivided part of assignors interest
`
`(executed December 15, 1997) to Nirvana Restaurant Inc. See Exhibit 1, De Luca Dec.,
`
`Tab K, printouts from the USPTO trademark assignment database.
`
`40. The Bengal Cabaret Inc. has been inactive since 1987. See Exhibit 1, De
`
`Luca Decl., Tab L, Dun & Bradstreet company report of Bengal Cabaret Inc. Any
`
`assignments from the Bengal Cabaret Inc. of the mark NIRVANA after that date for bottled
`
`water from the Bengal Cabaret Inc. are invalid, since the goodwill of the business
`
`associated with the mark could not possibly have been assigned.
`
`41. Since Registration No. 947,368 expired on August 23, $3, the recorded
`
`assignments of Registration No. 947,368 to Rooftop Restaurant in 1_99§) and
`
`subsequently to Nirvana Restaurant Inc. in $1 were also invalid since the goodwill of the
`
`business associated with the mark could not possibly have been assigned.
`
`42. The NYS Department of State Division of Corporations records indicate that
`
`Nirvana Himalayas Water Corporation was incorporated on April 9, 1990. See Exhibit 17.
`
`The NYS Department of State records indicate that the Nirvana Himalayas Water
`
`Corporation was dissolved by proclamation on September 28, 1994. See Exhibit 1, De
`
`1068232
`
`
`
`Luca Decl. Para. 14. There is no evidence that the Nirvana Himalayas Water Corporation
`
`assigned the mark NIRVANA for bottled water and its goodwill to NHI before it dissolved.
`
`43. Nirvana Restaurant Inc. of 30 Central Park South New York NEW YORK
`
`10019 was the record owner of Registration No. 2,205,868 for the mark Nirvana for
`
`restaurant and nightclub services. See Exhibit 18, copy of ‘868 Registration and its
`
`record from TESS. Registration No. 2,205,868 was cancelled under section 8 on August
`
`27, 2005. See Exhibit 1, De Luca Decl., Tab M, TESS record.
`
`ll.
`
`STANDARD FOR SUMMARY JUDGMENT
`
`Under Rule 56(c), summary judgment is proper "if the pleadings, depositions,
`
`answers to interrogatories, and admissions on file, together with the affidavits, if any,
`
`show that there is no genuine issue as to any material fact and that the moving party is
`
`entitled to a judgment as a matter of law." Fed.R.Civ.P. 56(c); Anderson v. Liberty
`
`Lobby, lnc., 477 U.S. 242, 255, 106 S. Ct. 2505, 2513 (1996).
`
`Once the movant establishes prima facie evidence that it is entitled to judgment
`
`as a matter of law, the non-movant may not rest on its pleadings, but must affirmatively
`
`demonstrate, by specific, verified facts, that there is a genuine issue of material fact that
`
`requires trial. Celotex Corp. v. Catrett, 477 U.S. 317, 324 106 S. Ct. 2548, 2553 (1986).
`
`There is no issue for trial "unless there is sufficient evidence favoring the nonmoving
`
`party for a [court] to return a verdict for that party." Anderson, 477 U.S. at 249, 106
`
`S.Ct. at 2511.
`
`-10-
`
`1068232
`
`
`
`|"-
`
`A. The Standard for Abandonment
`
`Under the Lanham Act, “[a] registered trademark may be canceled if it has been
`
`abandoned. See 15 U.S.C. § 1064(3) (2000). A registered trademark is considered
`
`abandoned if its “use has been discontinued with intent not to resume such use." 15
`
`U.S.C. § 1127 (2000). Since trademark registrations are presumed valid, the party
`
`seeking cancellation of such registration must rebut this presumption by a preponderance
`
`of the evidence. See Martahus v. Video Duplication Serv., /nc., 3 F.3d 417, 421 (Fed. Cir.
`
`1993); On-line Careline Inc. v. America Online Inc., 229 F.3d 1080, 1087 (Fed. Cir. 2000);
`
`Cerveceria Centroamericana, S.A. v. Cerveceria India, Inc., 892 F.2d 1021, 1023 (Fed.
`
`Cir. 1989). “The party seeking cancellation establishes a prima facie case of
`
`abandonment by showing proof of nonuse for three consecutive years. See 15 U.S.C. §
`
`1127. Establishing a prima facie case ‘eliminates the cha||enger's burden to establish the
`
`intent element of abandonment as an initial part of [his] case,’ creating a rebuttable
`
`presumption that the trademark owner has abandoned the mark without intent to resume
`
`use. The burden then shifts to the trademark owner to produce evidence that he either
`
`used the mark during the statutory period or intended to resume use.” America Online
`
`lnc., 229 F.3d at 1087 (citations omitted). Abandonment is a question of fact.
`
`Id.
`
`“A registrant's proclamations of his intent to resume or commence use in United
`
`States commerce during the period of nonuse are awarded little, if any, weight. Rivard v.
`
`Linvi/le, 133 F.3d 1446, 1449 (Fed. Cir. 1998) citing Imperial Tobacco Ltd. v. Philip Morris,
`
`lnc., 899 F.2d 1575, 1581 (Fed. Cir. 1990) (''In every contested abandonment case, the
`
`-11-
`
`1068232
`
`
`
`respondent denies an intention to abandon its mark; othewvise there would be no
`
`contest.")."
`
`The pertinent portion of 15 U.S.C. §1127, provides:
`
`A mark shall be deemed to be “abandoned” when
`
`its use has
`
`been discontinued with intent not to resume such use. Intent not to
`
`resume may be inferred from circumstances. Nonuse for three
`consecutive years shall be prima facie evidence of abandonment.
`“Use” of a mark means the bona fide use of that mark made in the
`
`ordinary course of trade, and not made merely to reserve a right in a
`mark.
`
`B. There is Prima Facie Evidence that NHI Abandoned the NIRVANA Mark
`
`lnthis case, NHI was incorporated in June 14, 2001. Fact 37. Respondent
`
`indicates that it has sold water through its restaurant. Fact 25. The restaurant implicated
`
`is the Nirvana Restaurant referred to in NH|’s cover letterto the USPTO in its Application
`
`Serial No. 76/319,172. Fact 5. See also Fact 7. However, as of July 2002, the Nirvana
`
`restaurant was closed because of the collapse of a wall. Fact 35. The Nirvana
`
`Restaurant, Inc. is now in Chapter 7 Bankruptcy. Fact 38.
`
`In 2004, the restaurant
`
`property was sold to a third party. Fact 36. The restaurant has not reopened. Fact 35.
`
`The Nirvana Restaurant's registration for restaurant services was not maintained. Fact 43.
`
`NHI was not a member of the lntemational Bottled Water Association in 2003 and is not a
`
`current member. Facts 29 and 30. There is no evidence that NHI has sold bottled natural
`
`spring mineral water from any other restaurant entity.
`
`Assuming arguendo that the Nirvana Restaurant |nc.'s use of the mark NIRVANA
`
`bottled natural spring mineral water can be attributable to NHI‘, NHI has not used the mark
`
`“Nirvana" in connection with bottled natural spring mineral water in the U.S. for more than
`
`1 There is no evidence to show that NHI ever controlled the use of the mark NIRVANA for bottled
`water by the Nirvana Restaurant.
`
`-12-
`
`1068232
`
`
`
`three years,” referring to the time period beginning July 2002 through the present date.
`
`This nonuse of the mark during this period establishes a prima facie showing of
`
`abandonment pursuant to 15 U.S.C. §1127. There is no genuine issue that NHI did not
`
`use the mark in commerce between those dates, and this three-plus-year period of nonuse
`
`constitutes prima facie evidence of abandonment.
`
`IV.
`
`NHI HAS FRAUDULENTLY OBTAINED REGISTRATION NO. 2,731,312
`
`A. The Standard for Fraudulent Procurement of Registration
`
`“lf fraud can be shown in the procurement of a registration, the entire resulting
`
`registration is void.” Medinol Ltd. v. Neuro Vasx lnc., 67 USPQ2d 1205, 1208 ('lTAB
`
`2003). “A trademark applicant commits fraud in procuring a registration when it makes
`
`material representations of fact in its declaration which it knows or should know to be false
`
`or misleading." Id. at 1209 (citing Torres v. Cantine Torrese/Ia S.r.I., 808 F.2d 46 (Fed. Cir.
`
`1986)). See also Mister Leonard Inc. v. Jacques Leonard Couture Inc., 23 USPQ2d 1064,
`
`1065 ('l‘|'AB 1992) ("[A]ccording to Torres, to constitute fraud on the PTO, the statement
`
`must be (1) false, (2) a material representation and (3) made knowingly.").
`
`The correct inquiry into fraud is not into the registrant’s subjective intent, but instead
`
`into the objective manifestations of that intent. Medinol Ltd., 67 USPQ2d at 1209. The
`
`Board has recognized that it is difficult, if not impossible, to prove what occurs in a
`
`person’s mind, and thus, it has found that intent must often be inferred from the
`
`circumstances and any related statements made by that person. See First lnt’I Serv.
`
`Corp. v. Chuckles lnc., 5 USPQ2d 1628, 1636 (T|'AB 1988). See also General Car and
`
`Truck Leasing Systems, Inc. v. General Rent-A-Car Inc., 17 USPQ2d 1398, 1400 (S.D.
`
`Fla. 1990), aff’g General Rent—A-Carlnc. v. General Leaseways, Inc., Canc. No. 14,870
`
`-
`
`-
`
`1068232
`
`
`
`(TTAB May 2, 1998) (“proof of specific intent to commit fraud is not required, rather, fraud
`
`occurs when an applicant or registrant makes a false material representation that the
`
`applicant or registrant knew or should have known was false”); Medinol Ltd., 67 USPQ2d
`
`at 1209 (“Respondent’s knowledge that its mark was not in use on stents — or its reckless
`
`disregard for the truth — is all that is required to establish intent to commit fraud in the
`
`procurement of a registration.").
`
`“Fraud implies some intentional deceitful practice or act designed to obtain
`
`something to which the person practicing such deceit would not otherwise be entitled.
`
`Specifically, it involves a willful withholding from the Patent and Trademark Office by an
`
`applicant or registrant of material information which, if disclosed to the Office, would have
`
`resulted in disallowance of the registration sought or to be maintained.” Woodstock’s
`
`Enterprises Inc. (California) v. Woodstock’s Enterprises Inc. (Oregon), 43 USPQ2d 1440
`
`(TTAB 1997).
`
`“To prove fraud opposer would have to show that applicant intentionally
`
`misrepresented a material fact with the intention of inducing the Office to grant a
`
`registration to which applicant knew he was not entitled.” Bakaert Steel Wire Corp. v.
`
`S.p.A. Officine Maccaferri Gia' Raffae/e Maccaferri & Fagli, 196 USPQ 558 (TTAB 1977).
`
`B.
`
`There is Undisputed Evidence that NHI Fraudulently Obtained
`Registration No. 2,731,312
`
`Based on the undisputed facts and the case law, Nirvana is entitled to summary
`
`judgment that NHI has fraudulently obtained the NIRVANA trademark. As a consequence,
`
`the NIRVANA trademark registration should be cancelled.
`
`The specimens of use Respondent submitted in Application Serial No. 76/319,172
`
`do not show use by NHI. There is no statement in the application that NHI claimed use
`
`- 14 -
`
`1068232
`
`—
`
`
`
`through a related company. The labels enclosed as specimens indicate use by Nirvana
`
`Penthouse, celebrating it's 25"‘ anniversary, which was 6 years before the application for
`
`the ‘312 Registration was filed. Facts 8 and 9. The application does not claim that the
`
`mark is being used by one or more related companies as required under TMEP Section
`
`901.05, which indicates that:
`
`If the applicant is not itself using the mark in commerce but the mark
`is being used by one or more related companies whose use inures to the
`applicant's benefit (15 U.S.C. §§1055 and 1127), this must be stated in the
`application or allegation of use. 37 C.F.R. §2.38(b); TMEP §1201.03(a).
`
`Further, TMEP Section 1201 .03(a) provides that:
`
`If the mark is not being used by the applicant but is being used by
`one or more related companies whose use inures to the benefit of the
`applicant under §5 of the Act, then these facts must be disclosed in the
`application. 37 C.F.R. §2.38(b). See Pease Woodwork Co., Inc. v. Ready
`Hung Door Co., |nc., 103 USPQ 240 (Comm'r Pats. 1954); Industrial
`Abrasives, Inc. v. Strong, 101 USPQ 420 (Comm'r Pats. 1954).
`.
`.
`.
`.
`In an application under §1(a) of the Trademark Act, the applicant
`should -state in the body of the application that the applicant has adopted
`and is using the mark through its related company (or equivalent explanatory
`wording). .
`.
`
`Application Serial No. 76/319,172 claimed that NHI was the entity using the mark.
`
`In its application, NHI made no claim in the application that use was being made through a
`
`related company. At best, the coversheet to its application indicated that use was being
`
`made by an alleged “sister corporation,” Nirvana Restaurant, |nc." However, there is no
`
`evidence that NHI owned the Nirvana Restaurant or controlled the nature and quality of
`
`the Nirvana Restaurant, |nc.’s alleged use of the mark NIRVANA for bottled water. There
`
`is evidence that the Nirvana Restaurant Inc. itself claimed ownership of the trademark
`
`NIRVANA for “bottled water’ in 1998. Fact 1.
`
`-15-
`
`1068232
`
`
`
`Respondent’s alleged predecessor company, the Bengal Cafe at 1193 Lexington
`
`Avenue (Facts 23 and 24) was inactive as of 1987. Fact 40. Any assignment of the mark
`
`NIRVANA for bottled water after that date was ineffective. See Auburn Farms Inc. v.
`
`McKee Foods Corp., 51 USPQ2d 1439 (TTAB 1999) (“Campbe|l's abandonment of the
`
`mark JAMMERS a number of years prior to the assignment resulted in an invalid
`
`assignment (that is, an assignment in gross) since "[a]n abandoned trademark is not
`
`capable of assignment." Money Store v. Harriscorp Finance, lnc., 689 F.2d 666, 216
`
`USPQ 11, 19 (7th Cir. 1989); and Parfums Nautee Ltd. v. American International
`
`Industries, 22 USPQ2d 1306, 1309 (TTAB 1992).”). There is no evidence of any
`
`assignment of the mark NIRVANA and its goodwill for bottled water from the Bengal Café
`
`prior to that date.
`
`Respondent’s subsequent predecessor company, the Nirvana Himalayas Water
`
`Corporation (Fact 23) was incorporated on April 9, 1990, (Fact 42), which is years after the
`
`Bengal Café because inactive. A business plan dated September 19, 1990 indicates that
`
`the corporation had not yet started operating as of that date. Fact 32. Newspaper reports
`
`on a Nirvana entity reports that in 1991 Nirvana's bottled water operations were still not a
`
`reality. Facts 33 and 34. The records of the New York State Department of State Division
`
`of Corporations show that by September 28, 1994 the Nirvana Himalayas Water
`
`Corporation was dissolved. Fact 42. The Nirvana Himalayas Water Corporation's
`
`Nepalese license to bottle water in Nepal appears to be compromised by the corporation's
`
`i