`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`TTAB
`
`CHURCH & DWIGHT CO., ]NC., and
`
`CHURCH & DWIGHT VIRGINIA CO.,
`
`INC.,
`
`Vs.
`
`Petitioners,
`
`:
`
`Cancellation No.: 92 043 694
`
`SCOTT D. FUSCO,
`
`Respondent.
`
`EEONERS’ MOTION FOR LEAVE TO AMEND THE PETITION FOR
`CANCELLATION
`
`Petitioners, Church & Dwight Co.,
`
`Inc. and Church & Dwight Virginia Co.,
`
`Inc.
`
`(hereinafter collectively referred to as “Church & Dwight”), hereby move for leave to amend the
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`Petition for Cancellation to set forth additional grounds for Cancellation, namely, Count Four, as
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`it appears in the attached proposed First Amended Petition for Cancellation.
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`Legal Argument
`
`Pursuant to 37 C.F.R. §2.l l5, pleadings in a Cancellation proceeding may be amended
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`in the same manner and in the same extent as a civil action in a United States District Court.
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`Under the Federal Rules of Civil Procedure, amendments to the pleadings are governed by Rule
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`15. Amendments in general are governed by F.R.C.P. l5(a) which reads as follows:
`
`...a party may amend the party’s pleading only by leave of court or by
`written consent of the adverse party; and leave shall be freely given
`when justice so requires.
`
`01-17-2006
`U.S. Patent & TMOfc/TM Mail RG91 Dt. #26
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`
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`A party may amend its pleading by leave of the Board, which must be freely given when
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`justice so requires.
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`(F.R.C.P. l5(a) and T.B.M.P. §507.02).
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`In fact, the Board liberally grants
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`leave to amend pleadings at any stage of a proceeding when justice so requires, unless the entry
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`of the proposed amendment would violate settled law or be prejudicial to the rights of the
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`adverse party. T.B.M.P. §507.02.
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`It is important to recognize that a proposed amendment need not of itself set forth a claim
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`or defense, rather the proposed amendment may serve simply to amplify allegations already
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`included in the moving party’s pleading. This is the case at hand with regard to Church &
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`Dwight’s First Amended Petition for Cancellation.
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`In the original Petition for Cancellation, Church & Dwight alleged that the Respondent
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`obtained its registration fraudulently, and in violation of §l4(3) of the Lanham Act (Count One);
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`that any sales by Respondent of its product bearing the registered trademark amounts to token
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`use (Count Two); and Respondent’s mark will cause a likelihood of confusion with Church &
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`Dwight’s registered and pending trademarks (Count Three). Afier finally having the opportunity
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`to depose Respondent, Church & Dwight received information compelling it to amplify the
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`allegations in its first two Counts, both originally focused on Registrant’s use alleged in his
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`Statement of Use and asserting that Respondent’s use did not support registration and he
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`obtained his registration fraudulently.
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`It is recognized that the timing of the Motion for Leave to Amend under F.R.C.P. l5(a)
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`plays a large roll in the Board’s determination of whether the adverse party would be prejudiced
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`by the allowance of a proposed amendment.
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`(T.B.M.P. §507.02(a)).
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`In this case, Church &
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`
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`Dwight has moved within less than 30 days receipt of the Deposition Transcript of Mr. Fusco.
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`Therefore, there is little prejudice to Mr. Fusco.‘
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`Church & Dwight seeks to amend its Petition to Cancel so as to comply with the
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`information just received from Mr. Fusco about use of his mark, on his Class 3 goods, which is
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`information that has always been in the possession of Mr. Fusco. Specifically, Petitioner seeks
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`to amend the Petition to Cancel to add Count Four and assert the allegation that at the time of
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`filing his Statement of Use, Mr. Fusco’s use of his mark TROJAN SUNSCREEN in connection
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`with his Class 3 products was unlawful and/or illegal use in commerce. Count Four also asserts
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`that Mr. Fusco’s use of his TROJAN SUNSCREEN mark on his Class 3 goods was not bona fide
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`valid, genuine use in commerce under the Lanham Act.
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`It also asserts that sales of Mr. Fusco’s
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`sunscreen product bearing the TROJAN SUNSCREEN mark amounted to illegal use and/or
`
`illegal sales under state and federal regulatory laws and therefore, in total, the claimed use in his
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`Statement of Use did not support issuance of a Certificate of Registration. Finally, Count Four
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`asserts Mr. Fusco’s creation and submission of his specimens of use amounted to fiaud upon the
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`U.S. Trademark Office.
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`At the time of filing the Petition to Cancel, Church & Dwight believed that Mr. Fusco’s
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`submission of specimens of use to the Trademark Office amounted to token use or fabricated use
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`supporting its original claims of fraud against the Trademark Office. While Petitioner still
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`believes these claims to be valid, evidence derived from Mr. Fusco’s Deposition has indicated
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`that the Board may find Mr. Fusco’s activities with regard to submission of specimens of use
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`with his Statement of Use amounted to either illegal use in commerce, or use which is considered
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`illegal or inappropriate under the Lanham Act (§43(a)). Accordingly, Church & Dwight has
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`‘ Respondent, Mr. Fusco, was deposed on December 7, 2005 and Church & Dwight’s counsel received the
`transcript of proceedings on December 22, 2005.
`
`
`
`sought to amplify its Petition for Cancellation with regard to the claimed use and specimens of
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`use which are the focus of the first two Counts of the current Petition for Cancellation, and has
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`been the focus of discovery in this matter.
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`Given that the information with regard to the allegations in Count Four have always been,
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`and continues to be, in the possession of Mr. Fusco, there is no prejudice to Mr. Fusco with
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`regard to adding this Count. In fact, through discovery inquiries and Counts One and Two of the
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`Petition to Cancel, Mr. Fusco has been on notice of Church & Dwight’s claims being based upon
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`his Statement of Use and specimens of use. No additional discovery is required by Mr. Fusco in
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`defense of these claims, because all the information possessed by Church & Dwight on this
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`subject has come from Mr. Fusco, including during his December 7, 2005 Deposition. As a
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`result, there can be no claimed prejudice to Mr. Fusco.
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`CONCLUSION
`
`Because the Board must liberally grant leave to amend pleadings at any stage of the
`
`proceedings when justice so requires, Church & Dwight respectfully requests that the Board
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`grant its request to file a First Amended Petition for Cancellation, which includes adding Count
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`Four to amplify the allegations in the original Petition for Cancellation. Recognizing that Count
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`Four arises ou.t of information provided by the Respondent during his discovery deposition, has
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`been the focus of discovery since the inception of this case and that Petitioner should be able to
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`argue the merits of its case based upon the facts as now provided by the Respondent, justice
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`
`
`compels this Board to enter the First Amended Petition for Cancellation attached hereto.
`
`Dated:_/[[3100
`
`‘
`
`Respectfully Submitted:
`
`CHURCH & DWIGHT CO., INC. and
`
`CHURCH & DWIGHT VIRGINIA CO.,
`
`INC.,
`
`BY: / ggflfi Q 1/étlrtfllt/\..___
`
`I
`
`rooks R. Bruneau, Esq.
`Attorney for Petitioners
`Mathews, Shepherd, McKay & Bruneau, P.A.
`100 Thanet Circle, Suite 306
`
`Princeton, NJ 08540
`(609) 924-8555
`
`CERTIFICATE OF MAILING
`
`I hereby centify that this correspondence is being deposited with the United States Postal Service as first class mail
`in an envelope addressed to: Commissioner For Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451
`Attn: BOX TTAB NO FEE
`
`
`
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`
`
`
`CER TIFICA TE 0F SER VICE
`
`I hereby certify that a true and complete copy of Petitioner’s Motion for Leave to Amend
`
`the Petition for Cancellation was served upon Respondent this id/ay of January, 2006, via First
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`Class Mail, postage prepaid, addressed as follows:
`
`Scott D. Fusco
`
`477 35th Street
`
`Manhattan Beach, California 90266
`
`Date: _4g/1 % '0 to
`
`BY:
`
`fig
`
`gm.
`
`rooks R. Bruneau, Esq.
`Attorney for Petitioner
`Mathews, Shepherd, McKay & Bruneau, P.A.
`100 Thanet Circle, Suite 306
`Princeton, New Jersey 08540
`Tel: (609) 924-8555
`Fax: (609) 924-3036
`
`
`
`El THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`CHURCH & DWIGHT CO., INC., and
`CHURCH & DWIGHT VIRGINIA CO.,
`INC .,
`
`Petitioners,
`
`:
`
`Cancellation No.1 92 043 694
`
`Vs.
`
`SCOTT D. FUSCO,
`
`Respondent
`
`FIRST AMENDED PETITION FOR CANCELLATION
`
`In the matter of United States Trademark Registration No. 2,882,051 for the mark
`
`“TROJAN SUNSCREEN,” registered in connection with sunscreens, and owned by Scott D.
`
`Fusco, with a date of registration of September 7, 2004.
`
`1.
`
`Petitioners, Church & Dwight Co., Inc. and Church & Dwight Virginia Co., Inc.,
`
`(hereinafter collectively “Church & Dwight”), a corporation of the State of Delaware, located
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`and doing business at 469 North Harrison Street, Princeton, New Jersey 08543, believes that it is
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`damaged by the continued registration of Trademark Registration No. 2,882,051 for “TROJAN
`
`SUNSCREEN,” Accordingly, Church & Dwight hereby petitions to cancel said registration on
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`the following grounds:
`
`
`
`2.
`
`Church & Dwight
`
`is the owner of the following United States Trademark
`
`Applications (hereinafter “Trojan Applications”):
`
`NUMBER
`
`76/362,110
`
`TROJAN (Stylized
`Letters
`
`TROJAN MAN
`
`MARK
`
`
`
`
`TROJAN
`
`TROJAN SUPRA &
`DESIGN
`
`78/292,339
`
`
`
`TROJAN SUPRA &
`DESIGN
`
`78/292,373
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Deodorants and
`Antiersirants Class 3
`
`Antiersirants Class 3
`
`Antiersirants Class 3
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Antiperspirants and
`deodorants for personal use;
`perfiime, cologne, essential
`oils, massage oil; facial
`soaps, cleansers, toners,
`exfoliates, moisturizer and
`masks; shaving creams,
`lotions and gels, aftershave
`creams, lotions and gels,
`non-medicated skin creams,
`lotions and gels for
`relieving razor burns; non-
`medicated lip balms; hand
`and body soaps, deodorant
`soaps, bath and shower gels,
`body scrubs, hand and body
`creams and lotions, body
`powders, hair care waxes;
`dentifrices, mouthwash,
`non-medicated breath
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`fresheners Class 3
`
`Personal lubricants,
`spermacides, contraceptive
`gels, foams and sponges;
`topical analgesic antibiotic,
`antihistamine and anti-
`
`
`
`
`
`
`
`
`
`
`
`inflammatory preparations;
`anti-fungal preparations for
`the relief of athlete’s foot,
`jock itch, ringworm and nail
`fungus; antiseptic
`preparations; preparations
`for the relief of itching, skin
`irritations, rashes and
`
`
`
`hemorrhoids; medicated
`pre-moistened towelettes
`and wipes; medicated lip
`balms; preparations for the
`relief of cold sores, fever
`blisters and canker sores;
`medicated hair care
`
`preparations; medicated
`dermatological ointments;
`medicated body and foot
`powders, medicated skin
`cleansers, acne treatment
`preparations; medicated
`mouthwashes and mouth
`
`rinses; adhesive bandages,
`sports adhesive tape (Class
`5).
`
`3.
`
`Church & Dwight is the owner of the following United States Trademark
`
`Registrations (hereinafter referred to as “Trojan Registrations”):
`
`UNITED STATES
`REGISTRATION NO.
`
`GOODS
`
`Prophylactic Membranous
`articles for the preventions
`of contagious diseases
`
`
`
`544,931
`
`600,080
`
`638,126
`
`847,092
`
`
`
`TROJAN (Stylized letters)
`
`MARK
`
`
`
`TROJEN-ENZ (Stylized
`letters)
`
`TROJANS (Stylized
`letters)
`
`TROJAN & DESIGN
`
`
`
`
`
`Prophylactic rubber goods
`for the prevention of disease
`Class 10
`
`Prophylactic rubber articles
`for the prevention of
`contagious diseases (Class
`10
`
`
`
`
`
`
`
`Prophylactic rubber articles
`for the prevention for the
`contagious diseases (Class
`
`
`
`
`
`TROJANS PLUS &
`
`DESIGN
`
`TROJAN PLUS 2
`
`TROJAN PLUS
`
`
`
` TROJAN MAN
`
`
` TROJAN ULTRA
`
`992,828
`
`Prophylactic rubber articles
`for the prevention of
`contagious diseases (Class
`
`
`
`
`
`condoms (Class 10)
`
`Spermicidally lubricated
`Condoms (Class 10)
`Condoms (Class 10)
`Condoms (Class 10)
`
`
`
`
`2,203,169
`
`Condoms (Class 10)
`
`2,344,102
`
`Condoms (Class 10)
`
`
`
`
`
`PLEASUQ
`TRIPLE TESTED
`
`TROJAN QUALITY &
`DESIGN
`
`TROJAN SUPRA
`
`TROJAN SUPRA &
`
`DESIGN
`
`TROJAN PLEASURE
`
`MESH
`
`
`
`
`
`
`
`Condoms (Class 10)
`
`Condoms (Class 10)
`
`2,350,916
`
`1,533,749
`
`
`
`4.
`
`All of Church & Dwight’s Trojan Applications and Trojan Registrations are valid
`
`(hereinafter collectively referred to as “Trojan Marks”).
`
`5.
`
`Respondent’s “TROJAN SUNSCREEN” trademark has been cited as a bar to
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`registration of Church & Dwight’s Trojan Applications Serial Nos. 76/362,110; 76/362,113, and
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`76/362,114.
`
`COUNT ONE
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`6.
`
`Upon information and belief, Respondent has not had bona fide use of its mark on
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`the goods as declared on its filed Statement of Use.
`
`
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`7.
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`Accordingly, Respondent obtained its registration fraudulently, and in Violation of
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`Section 14(3) of the Lanham Act (15 U.S.C. 1064(3)), and said registration should be cancelled.
`
`COUNT TWO
`
`8.
`
`Upon information and belief, any sales made by Respondent of sunscreen with the
`
`“TROJAN SUNSCREEN” trademark amounted to token use and therefore was insufficient to
`
`support registration of the “TROJAN SUNSCREEN” trademark application, pursuant to 15
`
`U.S.C. 105 l(d)(l), and said registration should be cancelled.
`
`COUNT THREE
`
`9.
`
`Church & Dwight first registered its “TROJAN” mark at least as early as July 10,
`
`1951 with dates of first use of November 5, 1946.
`
`10.
`
`Church & Dwight’s use of its Trojan Registrations has been in used in connection
`
`with prophylactzlcs and condoms in Class 10.
`
`ll.
`
`R'.espondent’s “TROJAN SUNSCREEN” U.S. Trademark Application was filed
`
`June 16, 2000, and the resulting registration claims an earliest date of first use of September 18,
`
`2001.
`
`
`
`12..
`
`lDuring prosecution of Church & Dwight’s Trojan Applications, the United States
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`Trademark Examining Attorney has made of record a conclusion that sunscreens and deodorants
`
`and antiperspirants are frequently marketed together to the same consumers in the same channels
`
`of trade, and therefore, there is a likelihood of consumer confusion. Moreover, sunscreens and
`
`condoms are frequently sold to the same consumers in the same retail stores so that there is a
`
`likelihood of consumer confusion.
`
`13.
`
`Respondent’s registration of “TROJAN SUNSCREEN” so resembles Church &
`
`Dwight’s Trojan Marks as it is likely to cause confusion or to cause mistake or to deceive as to
`
`the source of origin or sponsorship of Respondent’s goods.
`
`14.
`
`The use and registration by Respondent of its “TROJAN SUNSCREEN” mark
`
`enables Respondent to utilize and trade on the goodwill established by Church & Dwight in its
`
`Trojan Marks, and the continued registration of Respondent’s mark injures Church & Dwight in
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`the use of its “TROJAN” Marks and said registration of its Trojan Applications.
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`15.
`
`Continued registration of Respondent’s mark on the Principal Register of the
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`United States Patent and Trademark Office will cause damage to Church & Dwight because,
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`inter alia,
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`it will interfere with Church & Dwight’s ability to obtain federal registration of its
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`Trojan Applications, and interfere with Church & Dwight’s legitimate present and future
`
`activities in cormection with its Trojan Marks, by placing Respondent in a position to raise
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`doubts as to the right of Petitioner to use its Trojan Marks in connection with all of its goods. As
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`a result, Church & Dwight’s Trojan Marks will eventually be deprived of all distinctiveness,
`
`
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`since Respondent’s use will blur Church & Dwight’s Trojan Marks and the goodwill to which
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`they have come to convey.
`
`COUNT FOUR
`
`16.
`
`Church & Dwight hereby re-alleges the allegations set forth in paragraphs 1-15 as
`
`if fully set forth at length herein.
`
`17..
`
`Respondent’s claimed use of his mark at the time of filing his Statement of Use
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`was unlawful and/or illegal use in commerce.
`
`18
`
`Respondent’s registration was based upon illegal use and/or illegal sales of his
`
`sunscreen product under State and/or Federal regulatory laws, (including FDA regulations) and
`
`therefore the claimed use in his Statement of Use did not support issuance of registration,
`
`compelling it to be cancelled.
`
`19.
`
`’.espondent’s registration was not based upon bona fide, valid, genuine or legal
`
`use in commerce under Section 43(a) of the Lanham Act, and/or valid, genuine or legal use as
`
`required by the Lanham Act, and therefore should be cancelled.
`
`20.
`
`Prior to and after the filing of his Statement of Use, Respondent purchased
`
`sunscreen products from third party retailers, including RBI, and then without permission from
`
`those retailers re-labeled the products with his mark, and submitted such specimens to the United
`
`States Trademark Office with his Statement of Use. Such conduct, with regard to the fabrication
`
`
`
`of specimens of use and/or fabrication of sunscreen products for re-sale and claimed as use in his
`
`Statement of Use amounted to fraud upon the U.S. Trademark Office.
`
`WHEREFORE, Church & Dwight request that Registration No. 2,882,051 granted on
`
`September 7, 2004 to Scott D. Fusco, be cancelled and stricken from the Principal Register of the
`
`United States Patent and Trademark Office.
`
`Dated:_L,['/3 Q6»
`
`Respectfiilly Submitted:
`
`CHURCH & DWIGHT CO., INC. and
`CHURCH & DWIGHT VIRGINIA CO.,
`INC.,
`
`BY:
`
`
`
`
`,6
`7££’(M./g...
`
`Brooks R. Brunea , Esq.
`Mathews, Collins, Shepherd & McKay
`100 Thanet Circle, Suite 306
`Princeton, NJ 08540
`(609) 924-8555
`
` CERTIFICATE OF MAILING
`
`
`
`
`
`I hereby certify that this correspondence is being deposited with the United States Postal Service as first class mail
`in an envelope addressed to: Assistant Commissioner For Trademarks, 2900 Crystal Drive, Arlington, VA 22202-
`3513
`
`Attn: BOX_T77il Q5
`
`/ [ / 3 [ 0 6
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