Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`
`Signature
`Date
`Attachments
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA294511
`ESTTA Tracking number:
`07/09/2009
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92045172
`Plaintiff
`Herbaceuticals, Inc.
`Karin Segall
`Darby & Darby P.C.
`7 World Trade Center, 250 Greenwich Street
`New York, NY 10007
`UNITED STATES
`arubinstein@darbylaw.com, tmdocket@darbylaw.com, ksegall@darbylaw.com
`Opposition/Response to Motion
`Abigail Rubinstein
`tmdocket@darbylaw.com, arubinstein@darbylaw.com,
`aantoniou@darbylaw.com, amcguire@darbylaw.com
`/Abigail Rubinstein/
`07/09/2009
`Opposition to motion for SJ as filed.PDF ( 18 pages )(67867 bytes )
`Pldg- Murphy Decl Opp SJ Mot 08Jul09.PDF ( 3 pages )(251164 bytes )
`Exhibit 1 to Murphy 09July09 Declaration.PDF ( 3 pages )(76502 bytes )
`Exhibit 2 to Murphy 09July09 Declaration.PDF ( 5 pages )(126734 bytes )
`Pldg- Grose Decl ISO Opp to SJ 09July09.PDF ( 4 pages )(168672 bytes )
`Exhibit 3 to Grose 09July09 Declaration.PDF ( 3 pages )(58015 bytes )
`Dec of Ar in Support of Opp. to SJ Motion.PDF ( 2 pages )(16269 bytes )
`Exhibit 4 to Rubinstein 09July09 Declaration.PDF ( 7 pages )(35406 bytes )
`Exhibit 5 to Rubinstein 09July09 Declaration.PDF ( 18 pages )(1565121 bytes )
`Exhibit 6 to Rubinstein 09July09 Declaration -Dictionary.PDF ( 4 pages )(37391
`bytes )
`Exhibit 7 to Rubinstein 09July09 Declartion - Wikiepdia pgs.PDF ( 2 pages
`)(26534 bytes )
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`Cancellation No. 92045172
`
`
`
`
`
`
`HERBACEUTICALS, INC.
`
`Petitioner,
`
`v.
`
`------------------------------------------------------------- x
`:
`:
`:
`:
`:
`:
`:
`:
`:
`Registrant.
`------------------------------------------------------------- x
`
`XEL HERBACEUTICALS, INC.,
`
` :
`
`XEL HERBACEUTICALS, INC.
`
`Counter-Petitioner,
`
`v.
`
`HERBACEUTICALS, INC.,
`
`
`:
`:
`:
`:
`:
`:
`:
`Counter -Registrant.
`------------------------------------------------------------- x
`
`
`PETITIONER/COUNTER-REGISTRANT’S MEMORANDUM OF LAW IN
`OPPOSITION TO XEL’S MOTION FOR SUMMARY JUDGMENT
`
`Herbaceuticals, Inc., Petitioner/Counter-Registrant (“Petitioner” or “Herbaceuticals”), by
`
`its undersigned attorneys, hereby opposes the Motion for Summary Judgment filed by Registrant.
`
`Counter-Petitioner, XEL Herbaceuticals, Inc. (“XEL” or “Registrant”).
`
`
`
`
`
`4377285.1 7001359-000
`
`

`
`
`
`
`
`I.
`
`II.
`
`TABLE OF CONTENTS
`
`Page
`
`INTRODUCTION ...............................................................................................................1
`
`FACTS .................................................................................................................................1
`
`A.
`
`B.
`
`C.
`
`PETITIONER’S NAME AND MARK HERBACEUTICALS...............................1
`
`PETITIONER’S POLICING EFFORTS .................................................................4
`
`HISTORY OF THE SUBJECT PROCEEDING .....................................................4
`
`III.
`
`ARGUMENT.......................................................................................................................6
`
`A.
`
`B.
`
`THE STANDARD ...................................................................................................6
`
`THE TEST FOR GENERICNESS ..........................................................................7
`
`1.
`
`2.
`
`XEL Fails To Identify The Genus of Goods At Issue .................................7
`
`XEL Fails To Establish That Consumers Understand
`HERBACEUTICALS To Refer to A Specific Genus Of Product...............8
`
`C.
`
`HERBACEUTICALS HAS STANDING..............................................................12
`
`IV.
`
`CONCLUSION..................................................................................................................13
`
`
`
`i
`
`4377285.1 7001359-000
`
`

`
`
`
`TABLE OF AUTHORITIES
`
`FEDERAL CASES
`
`Page
`
`Anderson v. Liberty Lobby, Inc.,
`477 U.S. 242 (1986).............................................................................................................6
`
`Baxter International, Inc. v. COBE Laboratories, Inc.,
`39 U.S.P.Q. 2d 1437 (Fed. Cir. 1996)..................................................................................6
`
`Blue & White Food Products Corp. v. Shamir Food Industries, Ltd.,
`76 U.S.P.Q. 2d 1940 (S.D. N.Y. 2004)................................................................................8
`
`Burger King Corp. v. Pilgrim's Pride Corp.,
`12 U.S.P.Q. 2d 1526 (S.D.Fla. 1988) ................................................................................11
`
`Celotex Corp. v. Catrett,
`477 U.S. 317 (1986).............................................................................................................6
`
`Creative Gifts, Inc. v. UFO,
`57 U.S.P.Q. 2d 1321 n5 (10th Cir. 2000) ..........................................................................10
`
`Cullman Ventures, Inc. v. Columbian Art Works, Inc.,
`13 U.S.P.Q. 2d 1257 (S.D.N.Y. 1989).................................................................................9
`
`Cunningham v. Laser Golf Corp.,
`55 U.S.P.Q. 2d 1842 (Fed. Cir. 2000)................................................................................12
`
`Elizabeth Taylor Cosmetics Co. v. Annick Goutal, S.A.R.L.,
`5 U.S.P.Q. 2d 1305 (S.D.N.Y. 1987)...................................................................................9
`
`Enders Razor Co. v. Christy Co.,
`85 F.2d 195 (6th Cir. 1936) .................................................................................................8
`
`H. Marvin Ginn Corp. v. International Association of Fire Chiefs, Inc.,
`228 U.S.P.Q. 528 (Fed. Cir. 1986)...................................................................................7, 8
`
`In re American Fertility Society,
`51 U.S.P.Q. 2d 1832 (Fed. Cir. 1999)..................................................................................7
`
`In re Automatic Radio Manufacturing Co.,
`160 U.S.P.Q. 233 (C.C.P.A. 1969) ......................................................................................8
`
`In re Dial-A-Mattress Operating Corp.,
`57 U.S.P.Q. 2d 1807 (Fed. Cir. 2001)..............................................................................7, 9
`
`Lipton Industries, Inc. v. Ralston Purina Co.,
`670 F.2d 1024 (C.C.P.A. 1982) .........................................................................................12
`
`ii
`
`4377285.1 7001359-000
`
`

`
`TABLE OF AUTHORITIES
`(Continued)
`
`Page
`
`
`Raccioppi v. Apogee, Inc.,
`47 U.S.P.Q. 2d 1368 (T.T.A.B. 1998) .................................................................................8
`
`Soweco, Inc. v. Shell Oil Co.,
`207 U.S.P.Q. 278 (5th Cir. 1980) ........................................................................................8
`
`Tea Board of India v. The Republic of Tea,
`80 U.S.P.Q. 2d at 1881 (T.T.A.B. 2006) .............................................................................9
`
`NON-PRECEDENTIAL DECISIONS
`
`Doyna, Ltd.v. Doyna Michigan Co., Cancellation Number 92033012,
`2005 WL 2295196 (T.T.A.B. September 6, 2005) ............................................................12
`
`Great Earth Companies, Inc. v. Intimate Beauty Corp.,
`2005 WL 2543641, Opposition No. 91160752 (T.T.A.B. Sept. 26, 2005) .........................9
`
`Immunotec Research Ltd. v. Rath, Matthias,
`2006 WL 1488837, Opposition No. 91162850 (T.T.A.B. May 25, 2006) ........................10
`
`Mattel, Inc. v. Patricia Briden,
`2008 WL 885894, Opposition No. 91160087 (T.T.A.B. Jan. 30, 2008) ...........................10
`
`In re Sharadha Terry Products Ltd.,
`Ser. Nos. 78/027,603..........................................................................................................10
`
`FEDERAL STATUTES
`
`Fed. R. Civ. P. 56(c) ........................................................................................................................6
`
`Fed. R. Civ. P. 56(e) ....................................................................................................................6, 8
`
`
`
`iii
`
`4377285.1 7001359-000
`
`

`
`
`
`I.
`
`INTRODUCTION
`
`XEL’s Motion For Summary Judgment that HERBACEUTICALS is generic is the latest
`
`delay tactic in a series of filings, including a Request for Reconsideration and a Petition to the
`
`Director, to avoid the taking of its deposition and of its attorney who signed the Statements of
`
`Use previously noticed by Herbaceuticals. This motion is merely a red herring to draw the
`
`Board’s attention away from XEL’s clear acts of fraud.
`
`Herbaceuticals invests significant amounts of time, money and energy enforcing and
`
`policing its name and mark HERBACEUTICALS. Despite this, uncontrolled and improper uses
`
`exist. But this in itself is legally irrelevant. The real issue is whether, in the minds of the
`
`relevant public, HERBACEUTICALS is primarily understood to refer to a specific genus of
`
`goods. The record contains no evidence that this has occurred. There is no evidence of
`
`consumer perception, nor is there any evidence from any objective source (such as dictionaries)
`
`that HERBACEUTICALS refers to a specific genus of goods. Accordingly, there are serious
`
`issues of fact that remain and XEL’s motion should be denied.
`
`II.
`
`FACTS
`
`A.
`
`PETITIONER’S NAME AND MARK HERBACEUTICALS
`
`In or about 1987, Tricia Grose, President of Herbaceuticals, Inc., had a dream to start a
`
`company that focused on homeopathic and herbal preparations, cosmetics, dietary supplements
`
`and wellness products.1 Ms. Grose coined the term HERBACEUTICALS to convey to the
`
`public that her products were environmentally friendly, holistic and handmade.2 Working with a
`
`
`1 See Declaration of Tricia Grose submitted herewith as Appendix A (hereinafter “Grose Dec. ¶2”).
`2 Grose Dec. ¶2.
`
`1
`
`4377285.1 7001359-000
`
`

`
`
`
`graphic designer, she designed the HERBACEUTICALS logo and in 1988 opened her first store
`
`location at 478 Post Street, San Francisco, California. 3 With sales of $30,000 in 1989,
`
`Herbaceuticals has grown through grass root level advertising, personal contact with customers,
`
`in-store promotions, radio interviews, attendance at numerous trade shows and other activities, to
`
`sales of over $2 Million Dollars in 2008.4
`
`Since at least as early as 1988 Petitioner has used the mark HERBACEUTICALS in
`
`commerce in connection with its cosmetic, dietary, herbal and wellness products.5 Petitioner
`
`distributes its products sold under the HERBACEUTICALS name and marks through mail order,
`
`telephone order, facsimile orders, and direct sales at retailers/resellers. 6 Petitioner sells its
`
`products to retailers, wholesalers and individual consumers. 7 Some of Herbaceuticals’
`
`distributors include Sears Distributors, Christmas Natural Foods, Ray Nuels, and Tara
`
`International.8 Petitioner’s HERBACEUTICALS products are available at retail stores including
`
`but not limited to Whole Foods, Family Nutrition Center, Natures Pantry, Wild Oats, Lazy Acres
`
`Markets, New Seasons Markets, and Marlene’s Markets.9
`
`In the past, Petitioner has also operated its own retail stores in various locations in
`
`California, including San Francisco, Triburon, Napa, Glen Ellen, Petaluma, Novato and Bel
`
`Marin Keys. Petitioner also distributes and sells its products globally, in Canada, China,
`
`
`3 Grose Dec. ¶¶3, 8.
`4 Grose Dec.¶¶5, 6.
`5 Grose Dec. ¶4.
`6 Grose Dec. ¶5.
`7 Id.
`8 Id.
`9 Id..
`
`2
`
`4377285.1 7001359-000
`
`

`
`
`
`Australia, the United Kingdom, Egypt, Japan, Brazil, Kuwait, Fran, Belgium, Germany, and
`
`India.10
`
`As a result of Petitioner’s long, extensive, and widespread use of HERBACEUTICALS
`
`in connection with its products, consumers associate HERBACEUTICALS exclusively with
`
`Petitioner.
`
`Petitioner is the owner of two active federal trademark registrations incorporating the
`
`HERBACEUTICALS and three canceled registrations11 including the following12:
`
`MARK
`
`REG.NO./SER.NO.
`
`GOODS
`
`2,822,094
`
`retail and wholesale distributorship
`services in the field of homeopathic
`preparations, cosmetics, dietary
`supplements and wellness products
`
`
`
`
`
`
`
`Ser. No. 77/725,380
`
`cosmetics, namely body and facial
`skin lotions, creams and powders,
`body and facial skin cleansers, bath
`oils and beads, shampoos and
`conditioners.
`
`
`10 Grose Dec. ¶6-7.
`11 Reg. No. 2,585,974 alleged in the Notice of Opposition was inadvertently allowed to lapse. See Petitioner’s
`Response to the Order to Show Cause filed on April 6, 2009 and Board’s June 4, 2009 Order. T.T.A.B. Docket Nos.
`41 and 46.
`12 Printouts of the TARR Status Reports for Reg. No. 2,822,094 and Ser. No. 77/725,380 are attached as Exhibit 4 to
`the Declaration of Abigail Rubinstein
`
`3
`
`4377285.1 7001359-000
`
`

`
`
`
`B.
`
`PETITIONER’S POLICING EFFORTS
`
`Since it began using the name and mark HERBACEUTICALS, Petitioner has spent
`
`significant amounts of
`
`time, money and energy enforcing proper use of
`
`the
`
`HERBACEUTICALS name and mark.13 Petitioner monitors the marketplace and engages a
`
`watch service of marks published in the United States Patent and Trademark Office Official
`
`Gazette since at least 2004.14
`
`Petitioner’s enforcement efforts are multifaceted. In addition to monitoring filings with
`
`the United States Patent and Trademark Office, Petitioner reviews trade journals and advertising
`
`materials and sends cease and desist letters to those making unauthorized use of the
`
`HERBACEUTICALS mark. Specifically, letters were sent to Biosynergy on May 29, 1998;15
`
`Shawnee Moon Herbaceuticals on June 18, 2002;16 XEL Herbaceuticals on December 18, 2000
`
`and January 26, 2001 and Swaast Herbaceuticals on April 28, 2005, May 13, 2005, September 21,
`
`2005, and December 5, 2005.17 Petitioner continues to monitor the use of HERBACEUTICALS
`
`in the marketplace and take action where appropriate.
`
`C.
`
`HISTORY OF THE SUBJECT PROCEEDING
`
`On November 8, 2005, Herbaceuticals filed a Notice of Cancellation seeking to cancel
`
`the Reg. Nos. 2,970,979; 2,970,981; 2,945,860; 2,960,543; 2,948,354; and 2,948,359 (the “XEL
`
`registrations”) on the basis that they were fraudulently procured.18 XEL filed a counterclaim
`
`
`13 Grose Dec. ¶10; Declaration of Emalee G. Murphy ¶¶2-3 (hereinafter “Murphy Dec.”)
`14 Grose Dec. ¶10; Murphy Dec. ¶¶2-3.
`15 Grose Dec. ¶11, Ex. 3.
`16 Murphy Dec. ¶2, Ex. 1.
`17 Declaration of Abigail Rubinstein Ex. 5.
`18 See Petition to Cancel filed on November 8, 2005 T.T.A.B. Docket No. 1.
`
`4
`
`4377285.1 7001359-000
`
`

`
`
`
`petitioning to cancel Herbaceuticals’ Reg. No. 2,585,974 for a design mark alleging that the term
`
`HERBACEUTICALS is generic.19
`
`On December 5, 2006, Herbaceuticals filed its Motion for Summary Judgment requesting
`
`that the XEL registrations be cancelled because the Statements of Use, executed for XEL by Mr.
`
`de Jonge, were admitted by XEL to be false: they state untruthfully that the mark was in use on
`
`all of the goods originally identified in the corresponding applications.20
`
`On March 7, 2008, the Trademark Trial and Appeal Board (“the Board”) issued an order
`
`deciding the motion. 21 The Board cancelled four of the registrations (Reg. Nos. 2,945,860;
`
`2,960,543; 2,948,354; and 2,948,359) procured by XEL. Under the governing law and precedent,
`
`the Board held that those registrations were fraudulently procured. With regard to Reg. Nos.
`
`2,970,979 and 2,970,981, the Board found that there was a question of fact for trial.22 The Board
`
`doubted, but sought additional evidence, on whether the green tea beverages identified with the
`
`contested marks could be considered “pharmaceuticals” as claimed in the registrations.23
`
`XEL sought reconsideration of the Order on April 4, 2008 and the Board suspended the
`
`proceedings. 24 On May 7, 2008 XEL also filed a Petition to the Director seeking to reverse the
`
`Board’s Order.25 Both the request for reconsideration and the Petition were denied.26 The Board
`
`
`19 See Answer and Counterclaim filed on March 20, 2006 T.T.A.B. Docket No. 9.
`20 See T.T.A.B. Docket No. 22.
`21 See T.T.A.B. Docket No. 28.
`22 Id.
`23 Id.
`24 See T.T.A.B. Docket No. 31.
`25 See T.T.A.B. Docket No. 36.
`26 See T.T.A.B. Docket No. 37 and 38.
`
`5
`
`4377285.1 7001359-000
`
`

`
`
`
`resumed proceedings on January 15, 2009.27 On March 12, 2009, XEL filed its Motion for
`
`Summary Judgment.28 However, Herbaceuticals’ Reg. No. 2,585,974 inadvertently lapsed and
`
`the Board issued an Order to Show Cause.29 On June 4, 2009, the Board set aside the Order to
`
`Show Cause and set the briefing schedule for XEL’s Summary Judgment motion.30
`
`III. ARGUMENT
`
`A.
`
`THE STANDARD
`
`Summary judgment is appropriate only where there is no genuine issue as to any material
`
`fact and the moving party is entitled to a judgment as a matter of law.31 In determining whether
`
`a genuine issue of material fact exists, a court views the evidence in the light most favorable to
`
`the party opposing the motion.32 If the moving party meets its initial burden of showing that
`
`there are no issues of material fact, then the burden shifts to the nonmoving party to “set forth
`
`specific facts showing that there is a genuine issue for trial.”33 Summary judgment is proper
`
`only when no “reasonable jury could return a verdict for the nonmoving party.”34 In other words,
`
`to obtain a Summary Judgment, the moving party has the burden of proving “that there is an
`
`absence of evidence to support the non-moving party’s case.”35
`
`
`27 See T.T.A.B. Docket No. 38.
`28 See T.T.A.B. Docket No. 41.
`29 See T.T.A.B. Docket No. 42.
`30 See T.T.A.B. Docket No. 46.
`31 Fed. R. Civ. P. 56(c); Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986).
`32 See, e.g., Baxter Int’l, Inc. v. COBE Labs., Inc., 39 U.S.P.Q.2d 1437, 1439 (Fed. Cir. 1996).
`33 Fed. R. Civ. P. 56(e).
`34 Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986).
`35 Celotex, 477 U.S. at 325.
`
`6
`
`4377285.1 7001359-000
`
`

`
`
`
`Whether or not a term is generic is a question of fact.36 Viewing the allegations made in
`
`XEL’s Motion for Summary Judgment in the light most favorable to Herbaceuticals, issues of
`
`material fact remain in regards to whether the term HERBACEUTICALS has become generic.
`
`Accordingly, XEL is not entitled to Summary Judgment and its motion should be denied.
`
`B.
`
`THE TEST FOR GENERICNESS
`
`The test for genericness “involves a two-step inquiry: First, what is the genus of goods or
`
`services at issue? Second, is the term sought to be registered understood by the relevant public
`
`primarily to refer to that genus of goods or services?”37 The test “requires evidence of ‘the genus
`
`of goods or services at issue’ and the understanding by the general public that the mark refers
`
`primarily to ‘that genus of goods or services.”38 In other words, do the members of the relevant
`
`public understand or use the term sought to be protected to refer to the genus of the goods and/or
`
`services in question?
`
`1.
`
`XEL Fails To Identify The Genus of Goods At Issue
`
`XEL argues that “Herbaceuticals has become the generic name for numerous products
`
`that utilize herbs, including cosmetics and nutritional supplements.”39 However, the description
`
`“products that utilize herbs” is not a “genus.” Rather it is a description that encompasses several
`
`different “genuses” of products ranging from cosmetics to teas to foods to hair products to
`
`fragrances and deodorizers to vitamins and nutritional supplements. Indeed, “products that
`
`utilize herbs” may also include clothing woven out of herbs or paper products made from herbs,
`
`such as scented stationary made from herbs.
`
`36 See e.g., In re Dial-A-Mattress Operating Corp., 57 U.S.P.Q.2d 1807, 1810 (Fed. Cir. 2001).
`37 H. Marvin Ginn Corp. v. Int'l Association of Fire Chiefs, Inc., 228 U.S.P.Q. 528, 530 (Fed. Cir. 1986).
`38 In re American Fertility Society, 51 U.S.P.Q.2d 1832, 1836 (Fed. Cir. 1999).
`39 XEL’s Motion for summary Judgment at 4 T.T.A.B. Docket No. 41.
`
`7
`
`4377285.1 7001359-000
`
`

`
`
`
`If the term at issue has been used on many different types of products, such term cannot
`
`be considered generic as it has been used on more than one “genus of product.”40 For example,
`
`the Fifth Circuit has held that LARVACIDE was not a generic name for a product used to kill
`
`many forms of animal life beyond larvae, noting that a more proper generic name might be
`
`“varmintcide” or “pesticide.”41
`
`Accordingly, at the very least there is a question of fact as to the genus of products at
`
`issue and therefore Summary Judgment should be denied.
`
`2.
`
`XEL Fails To Establish That Consumers Understand
`HERBACEUTICALS To Refer to A Specific Genus Of Product
`
`The critical issue in determining genericness is whether members of the relevant public
`
`primarily use or understand the designation sought to be registered or that is already registered to
`
`refer to the genus or category of goods in question.42 As discussed above, the genus of goods in
`
`question is disputed. Even if the genus of goods was clearly defined, there is insufficient
`
`evidence in the record to establish the relevant public primarily use or understand
`
`HERBACEUTICALS to refer to products that utilize herbs.43
`
`
`40 See e.g., Blue & White Food Products Corp. v. Shamir Food Industries, Ltd., 76 U.S.P.Q.2d 1940 (S.D. N.Y.
`2004) (SHAMIR SALADS held not to be a generic name even though the Hebrew “shamir” means “dill” in English.
`SHAMIR SALADS was used as a mark on a wide variety of Kosher food products, some containing dill, some not
`and none were “dill salads.” P.I. granted against defendant's use of SHAMIR on its Kosher vegetable salads.). In re
`Automatic Radio Mfg. Co., 160 U.S.P.Q. 233 (C.C.P.A. 1969) (AUTOMATIC RADIO used on air conditioners,
`ignition systems, and antennas as well as on radios); Enders Razor Co. v. Christy Co., 85 F.2d 195 (6th Cir. 1936)
`(“The fact that the name Keen Kutter was used on other totally different products long before these patents were
`issued, and that an extensive good will was built up around its use, irrespective of the patents and before the razors
`were sold, seems to us conclusively to show that this term is not generic.”).
`41 Soweco, Inc. v. Shell Oil Co., 207 U.S.P.Q. 278 (5th Cir. 1980) (finding since the product does kill larvae, it is at
`least descriptive).
`42 H. Marvin Ginn Corp., 228 U.S.P.Q. at 530.
`43 As further discussed in the Petitioner’s Motion to Strike submitted herewith, all of the exhibits attached to XEL’s
`motion are not supported by an affidavit or declaration authenticating them. Therefore, they cannot be considered
`and should be stricken from the record. See Raccioppi v. Apogee, Inc., 47 U.S.P.Q.2d 1368 (T.T.A.B. 1998) and
`Fed. R. Civ. P. 56(e).
`
`8
`
`4377285.1 7001359-000
`
`

`
`
`
`Evidence of the relevant public’s understanding includes “purchaser testimony, consumer
`
`surveys, dictionary definitions, trade journals, newspapers and other publications.”44. XEL has
`
`not undertaken any surveys. There is no dictionary definition for HERBACEUTICALS nor is
`
`there a Wikipedia entry for Herbaceuticals.45
`
`In support of its Motion, all of the evidence submitted by XEL is unauthenticated Internet
`
`evidence. Even if properly authenticated, such evidence constitutes hearsay. In such cases, the
`
`Board regards the Internet evidence for what it shows on its face and not as evidence of the truth
`
`of the statements therein.46
`
`XEL argues that HERBACEUTICALS is used by competitors and submits Internet
`
`printouts in support of such use.47 Such evidence is being proffered for the truth of the matters
`
`therein and should be given any probative value. Moreover, Herbaceuticals monitors the
`
`marketplace and engages in enforcement and policing efforts. It is not necessary for a trademark
`
`owner to object to all unauthorized uses in the marketplace.48 A trademark owner is not required
`
`to act against every infringing use.49 Indeed, where there is evidence of efforts to police the use
`
`of a mark, the Board has found that there is a question of fact as to the issue of genericness and
`
`
`44 Tea Bd. of India v. The Republic of Tea, 80 U.S.P.Q. 2d at 1881 (T.T.A.B. 2006) (quoting Dial-A-Mattress, 240
`F.3d at 1344).
`45 See Exhibit 6 and 7 to the Declaration of Abigail Rubinstein.
`46 See e.g., Great Earth Companies, Inc. v. Intimate Beauty Corp., 2005 WL 2543641, Opposition No. 91160752
`(T.T.A.B. Sept. 26, 2005) (“The Board regards the Internet evidence for what it shows on its face… the reliability of
`the information becomes a matter of weight or probative value” to be given to the proffered evidence by the
`Board.”).
`47 Such printouts have not been authenticated and Herbaceuticals has moved to strike them from the record.
`48 Cullman Ventures, Inc. v. Columbian Art Works, Inc., 13 U.S.P.Q.2d 1257 (S.D.N.Y. 1989) (to maintain the
`strength of a mark, it is not necessary that the trademark owner act against every infringing use).
`49 Elizabeth Taylor Cosmetics Co. v. Annick Goutal, S.A.R.L., 5 U.S.P.Q.2d 1305 (S.D.N.Y. 1987).
`
`9
`
`4377285.1 7001359-000
`
`

`
`
`
`denied Summary Judgment.50 Here, there is no way to tell if the Internet printouts submitted are
`
`foreign sources or from the United States. Thus, the probative value of the Internet evidence is
`
`quite limited.51
`
`XEL also argues that newspapers and other publications use HERBACEUTICALS as a
`
`generic term. In support of this argument XEL submits mainly unauthenticated printouts from
`
`websites. XEL does not submit a single article from an actual newspaper or printed publication.
`
`XEL only submits eleven (11) excerpts which appear to be in the format of Lexis/Nexis search
`
`results, although there is nothing of the documents to indicate that this is the case. Even so,
`
`eleven articles is di minis and not sufficient to meet the high burden of proof required to establish
`
`a mark is generic.52 Moreover, some of the excerpts are from foreign publication. One excerpt
`
`produced is from a Canadian publication, and another is from a British publication, making their
`
`probative value questionable.53 Indeed, the Board has held such materials have no probative
`
`value because there is no evidence that such foreign publications had any circulation in the
`
`United States, nor is there any evidence that such articles reflect the view of how consumers in
`
`the United States would understand the term HERBACEUTICALS.54
`
`
`50 See e.g., Immunotec Research Ltd. v. Rath, Matthias, 2006 WL 1488837, Opposition No. 91162850 (T.T.A.B.
`May 25, 2006) (denying summary judgment).
`51 In re Sharadha Terry Prods. Ltd., Ser. Nos. 78/027,603 and 78/027,605 (T.T.A.B. Sept. 1, 2005) (finding the
`probative value of the Internet evidence cited by the PTO "is quite limited.").
`52 See, e.g., Creative Gifts, Inc. v. UFO, 57 U.S.P.Q. 2d 1321, 1326, n5 (10th Cir. 2000) (challenger failed to prove
`that mark had become generic because it submitted no consumer surveys and no listings in dictionaries, trade
`journals or newspapers).
`53 Id.
`54 Mattel, Inc. v. Patricia Briden, 2008 WL 885894, Opposition No. 91160087 (T.T.A.B. Jan. 30, 2008).
`
`10
`
`4377285.1 7001359-000
`
`

`
`
`
`Additionally, XEL points to scientific research as evidence that consumers understand
`
`Herbaceuticals to refer to a specific genus of goods.55 In support of this claim, XEL submits two
`
`articles which are unauthenticated printouts from the Internet. There is no evidence in the record
`
`that such articles qualify as scientific research. Moreover, scientists and researchers are not the
`
`consuming public at issue. For ordinary consumer products, such as in the present case, it is a
`
`term’s meaning to the consumers, not professionals in the trade that is measured in the test for
`
`genericness. For example, the Southern District of Florida found that the general consuming
`
`public did not understand CHICKEN TENDERS to be a generic name for chicken parts, even
`
`though within the chicken industry it may be regarded as one.56
`
`Lastly, XEL points to “communication on websites” to establish consumer understanding
`
`of HERBACEUTICALS. In addition to being unauthenticated, such Internet evidence is clearly
`
`hearsay being used to establish the truth of such statements and should be stricken from the
`
`record.57
`
`XEL has not come close to showing by a clear preponderance of the evidence that the
`
`term HERBACEUTICALS has lost its significance as an indication of source. It has submitted
`
`no surveys, no copies of printed newspapers or other publications or dictionary definitions. In
`
`contrast, Herbaceuticals has submitted evidence that it monitors the marketplace and engages in
`
`enforcement and policing efforts and that its HERBACEUTICALS mark is well known and
`
`exclusively associated with Petitioner. At a minimum, there are genuine material issues of fact
`
`
`55 XEL Herbaceuticals’ Motion for Summary Judgment at 6 T.T.A.B. Docket at 41.
`56 Burger King Corp. v. Pilgrim’s Pride Corp., 12 U.S.PQ.2d 1526 (S.D.Fla. 1988) (holding CHICKEN TENDERS
`to be a valid trademark).
`57 See Petitioner’s Motion to Strike submitted herewith.
`
`11
`
`4377285.1 7001359-000
`
`

`
`
`
`regarding consumers understanding of the term HERBACEUTICALS, which precludes
`
`summary judgment.
`
`C.
`
`HERBACEUTICALS HAS STANDING
`
`Regardless of the outcome of this Motion, Herbaceuticals still has standing to petition to
`
`cancel XEL’s remaining registrations at issue on the basis of fraud. Whether or not the term
`
`HERBACEUTICALS is generic does not change the fact that XEL’s registrations were obtained
`
`fraudulently.
`
`The criteria for standing in a cancellation proceeding is very liberal. 58 Indeed, the
`
`Federal Circuit has held that the class of persons with standing should be interpreted very
`
`broadly because there is “no ex parte vehicle for removing ‘dead’ registrations from the
`
`register . . . except for the provisions of section 8. Thus, we believe the public interest is served
`
`in broadly interpreting the class of persons Congress intended to be allowed to institute
`
`cancellation proceedings.”59
`
`“Standing requires only that a party seeking cancellation of a registration have a good
`
`faith belief that it is likely to be damaged by the registration. The belief in damage can be shown
`
`by establishing a direct commercial interest.” 60 Herbaceuticals has such an interest.
`
`Herbaceuticals has used the name and mark HERBACEUTICALS as well as its design logo
`
`since at least 198961 and has pled common law rights in such marks.62 XEL does not dispute
`
`
`58 See Cunningham v. Laser Golf Corp., 55 U.S.P.Q.2d 1842, 1844 (Fed. Cir. 2000).
`59 Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 1030 (C.C.P.A. 1982).
`60 Doyna, Ltd.v. Doyna Michigan Co., Cancellation No. 92033012, 2005 WL 2295196 at * 4 (T.T.A.B. September 6,
`2005) (citing Cunningham, 55 U.S.P.Q.2d at 1848).
`61 Grose Dec. ¶3.
`62 Petition to Cancel ¶¶ 2-4, 41.
`
`12
`
`4377285.1 7001359-000
`
`

`
`
`
`that Herbaceuticals has used its name and mark HERBACEUTICALS and its design logo in U.S.
`
`commerce. Such use clearly establishes a commercial interest and as a result standing to bring a
`
`cancellation proceeding against XEL’s registrations on the basis of fraud.63
`
`Accordingly, regardless of the outcome of this Motion, the Board should reset the close
`
`of discovery for sixty (60) days after the issuance of its Order on the Motion and the cancellation
`
`proceeding should continue.
`
`IV. CONCLUSION
`
`For the foregoing reasons, the Board should find that there a genuine material issues of
`
`fact which precludes summary judgment and XEL’s motion should be denied. Further,
`
`Herbaceuticals respectfully requests that regardless of the outcome of this motion that the
`
`proceedings be resumed and discovery scheduled to close sixty (60) days after the Board’s
`
`issuance of an Order on this motion.
`
`
`
`Dated: