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
`ESTTA312312
`ESTTA Tracking number:
`10/19/2009
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92047741
`Plaintiff
`Bayer Consumer Care AG
`Raymond I. Geraldson, Jr.
`Pattishall McAuliffe Newbury Hilliard & Geraldson
`311 South Wacker Drive, Ste 5000
`Chicago, IL 60606
`UNITED STATES
`rig@pattishall.com,pb@pattishall.com
`Opposition/Response to Motion
`Scott T. Lonardo
`stl@pattishall.com, rig@pattishall.com, pb@pattishall.com
`/stl/
`10/19/2009
`FLANAX - Response to Summary Judgment (PUBLIC).pdf ( 23 pages
`)(7154144 bytes )
`FLANAX- OB Dec1 (Public).pdf ( 15 pages )(280093 bytes )
`FLANAX - OB Dec2 (Public).pdf ( 20 pages )(371200 bytes )
`FLANAX- OB Dec3 (Public).pdf ( 15 pages )(310608 bytes )
`FLANAX- OB Dec 4(Public).pdf ( 28 pages )(761931 bytes )
`Barengolts Decl - PUBLIC2.pdf ( 13 pages )(201172 bytes )
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRLAL AND APPEAL BOARD
`
`BAYER CONSUMER CARE AG,
`
`v.
`BELMORA LLC,
`
`Petitioner,
`
`Registrant.
`
`)
`
`3
`i
`3
`3
`
`Cancellation No. 9204774]
`
`PETITIONER'S RULE 56(1) MOTION AND
`OPPOSITION TO REGISTRANT'S MOTION FOR SUMMARY JUDGMENT
`
`Registrant Belmora LLC ("Belmora") has filed its motion for summary judgment to
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`prevent Petitioner Bayer Consumer Care AG ("Bayer") from uncovering the extent of Belmora's
`
`misrepresentation of its products to U.S. consumers as being those of Bayer or authorized by
`
`Bayer. Belmora's motion also has thwarted Bayer‘s efforts to obtain third—party discovery that
`
`would confirm Belmora's deceptive conduct in this proceeding.
`
`Belmora asserts two bases for its motion: 1) that Bayer's misrepresentation claim fails as
`
`a matter of law; and 2) that Bayer lacks standing to bring its claim. The first is untimely; the
`
`second lacks merit.
`
`Bayer cannot fully respond to Belmora's motion for summary judgment on the merits of
`
`Bayer‘s misrepresentation of source claim because Belmora has avoided and sought to prevent
`
`discovery. Bayer's sought-after discovery, suspended by Belmora's motion, is necessary to
`
`respond to Bayer's untimely motion for summary judgment. As discussed in detail below, to the
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`extent Belmora has responded to Bayer's discovery, the responses have been incomplete or
`
`disingenuous, forcing Bayer to seek critical information from third parties when the information
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`325-404v] I
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`

`
`should have been supplied by Belmora. What discovery Bayer has been able to obtain from third
`
`parties so far only confirms that Belmora's primary strategy in this proceeding is obstruction.
`
`Bayer already has established its standing to bring a misrepresentation claim.
`
`It is not a
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`mere intermeddler. The damage to Bayer and its reputation will continue if Belmora's
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`misrepresentation does not stop. Belmora has copied Bayer's trademark, copied Bayer's
`
`packaging, and used marketing materials to create a false association with Bayer's FLANAX
`
`product.
`
`Bayer therefore requests that the Board: (1) pursuant to Fed. R. Civ. P. S6(f), deny as
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`untimely Belmora's motion as it relates to the merits of Bayer's misrepresentation claim or grant
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`Bayer a continuance to allow Bayer to respond to that portion of the motion; and (2) deny
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`Belmora's motion for summary judgment that Bayer lacks standing because Belmora is not
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`entitled to judgment as a matter of law on that issue.
`
`I.
`
`BACKGROUND
`
`Bayer seeks to cancel Belmora's registration for FLANAX because Belmora has
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`intentionally misrepresented the source of its products in violation of Section 14(3) of the
`
`Lanham Act. Specifically, Belmora has copied Bayer's FLANAX trademark, including its
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`presentation, and the packaging for Bayer's PLAN AX pain reliever products, which Bayer sells
`
`in Mexico and other Latin American nations. Belmora also appears to have marketing materials
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`targeting the American Latino community that clearly imply that Belmora is the U.S. distributor
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`of Bayer's FLANAX product familiar to this community for generations.
`
`The Board already has held that Bayer properly stated a claim for misrepresentation of
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`source, based on allegations that Belmora copied Bayer's FLANAX mark and packaging for an
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`identical pain reliever product, including using "an identical blue color," "an identical font," and
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`

`
`"making the FLA portion of the mark bolder than the NAX," as shown below (Bayer's product
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`on left):
`
`
`
`(Board's April 6, 2009 Order, pp. 13-15; Third Amended Petition for Cancellation, 1111 6-7;
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`Declaration of Colin O’Brien (“O’Brie'n Decl.”), attached hereto as Exhibit A, Exs. 1 and 2).
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`That Order further held that Bayer adequately alleged standing to assert its claim. (Order, p. 15).
`
`Since discovery opened (upon Bayer‘s filing of the Third Amended Petition for
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`Cancellation), Bayer has diligently pursued discovery, as outlined below:
`
`
`June 29 2007: Bayer filed its Petition for Cancellation.
`
`2007: Belmora‘s principal, Jamie Belcastro,
`
`'
`
`°
`
`(O’BIien
`_
`7
`V
`Decl., Ex 3: Deposition of Jamie Belcastro (“Belcastro Dep.”), 7625-9; 112:18~21).1
`
`° May 6, 2009: Bayer filed its Third Amended Petition for Cancellation.
`
`1 Along with many other examples of “testifier’s remorse,” discussed below, Mr. Belcastro subsequently attempted
`to change his testimony through an Errata Sheet
`
`This "Errata Sheet" is actually an attempt
`to rewrite Mr. Belcastro's deposition testimony. It contains fifty-five separate corrections, the majority of which
`directly contradict substantive answers Mr. Belcastro provided under oath (e.g., many of the changes are: " ‘No’
`should be 'Yes"').
`
`REDACTED
`
`

`
`' May 28, 2009: Bayer served interrogatories and requests for production of documents.
`Bayer permitted Belmora an extension until July 13, 2009, to respond. (Declaration of
`Phillip Barengolts (“Barengolts Decl.”), attached hereto as Exhibit B, ‘till 2, 3).
`
`'
`
`'
`
`
`June 5 2009: Belmora filed its Answer to the Third Amended Bayer for Cancellation.
`
`July 13, 2009: Belmora provided deficient responses to Bayer's discovery requests,
`including only one document relevant to the selection and adoption of Belmora's
`FLANAX mark and no documents relevant to the design or creation of Belmora's original
`FLANAX packaging. (Barengolts Decl., 11 4).
`
`° August 4, 2009: Bayer sent a nine page letter to Belmora outlining the deficiencies in
`Belmora's written discovery responses and document production. Belmora responded
`with a one-page letter indicating that the completeness of its document production must
`be addressed at Mr. Belcastro's deposition. (Barengolts Decl., 11 6, EX. 2).
`
`° August 18, 2009: Bayer deposed Mr. Belcastro. During his deposition, Mr. Belcastro
`provided disingenuous and unbelievable testimony, as detailed below.
`
`°
`
`Aug1_1st 20, 2009 — September 9, 2009: Bayer served six subpoenas on third parties for
`the production of documents, with deadlines ranging from September 10, 2009, to
`September 21, 2009. (Barengolts Decl., 11 7).
`
`° Augpst 21, 2009: Bayer served Belmora with a notice to inspect Belmora's computer
`located at Mr. Belcastro's home on September 21, 2009. Belmora has objected to the
`inspection and will not permit Bayer to proceed with it during the pendency of this
`motion for summary judgment. (Barengolts Decl., ‘H 8).
`
`'
`
`'
`
`September 4, 2009: Bayer served five subpoenas on third parties for depositions,
`scheduling dates ranging from September 22, 2009, through October 7, 2009.
`(Barengolts Decl., ‘ll 9).
`
`September 14, 2009: Belmora filed its motion for summary judgment before any third
`parties provided substantive responses to Bayer's subpoenas, and over three weeks from
`the close of discovery in this proceeding, a period during which significant discovery had
`been scheduled. (Barengolts Decl., ‘ll 10).
`
`A.
`
`Belmora Has Deliberately Thwarted Bayer's Discovery Efforts
`
`1.
`
`Bayer has been diligent in attempting to obtain discovery.
`
`As shown above, Bayer has actively and persistently sought relevant discovery.
`
`In
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`response, Belmora has tried to frustrate Bayer's discovery efforts at every step, withholding
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`critical information and documents, refusing to cooperate and providing incomplete responses.
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`

`
`Its principal, Mr. Belcastro, at a minimum, has been less than forthcoming about his and his
`
`company's acts. Thus, in addition to pursuing full discovery from Belmora, Bayer has had to
`
`seek discovery from third parties and served a request to inspect Belmora's files and computer.
`
`Belmora continues its efforts to avoid the merits of this dispute, a pattern evident both in its
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`attempts to frustrate discovery and in its filing of its present motion.
`
`2.
`
`Belmora has flouted the discovery process.
`
`Belmora's discovery responses so far lack credibility. For example, Belmora took the
`
`incredible position that .
`
`(O'Brien Decl., Ex. 3: Belcastro Dep., at
`
`28:22 — 30:4; O’Brien Decl., EX. 5; Barengolts Decl., Ex. 1, Response to lnterrogatory No. 1).
`
`Belmora also produced only one document ("Exhibit 4") related to its selection and adoption of
`
`its FLANAX trademark and packaging, which is one of the central issues in this proceeding.
`
`(See 0’Brien Decl., Ex. 5).
`
`When asked about Exhibit 4, which purports to show the evolution from "Further Lasting
`
`Analgesia [sic] Naproxen" to "FLANAX," Mr. Belcastro testified under oath that
`
`(O’Brien Decl., Ex. 3: Belcastro Dep., 69:20 — 72:3).
`
`(O’Brien Decl., Ex. 3: Belcastro Dep., 70:5—12; 73:17-22).
`
`Contrary to Mr. Belcastro’s sworn testimony, however,
`
`available on the Internet, from Mr. Belcastro to his packaging design firm, dated June 17, 2009
`
`Bayer independently discovered an email, publicly-
`
`-5-
`
`REDACTED
`
`

`
`(after Bayer served its discovery requests upon Belmora), in which Mr. Belcastro requested
`
`5). Mr. Belcastro also writes in the email that
`
`(O’Brien Decl., Ex.
`
`ad.)
`
`Another example of Mr. Be1castro‘s willingness to provide disingenuous testimony is his
`
`repeated denials that
`
`the packaging for Be1mora's FLANAX product bears prominent
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`Spanish language text and Belmora's web site, <elmedicoflanax.com>, is in Spanish. (O’Brien
`
`Decl., Ex. 3: Belcastro Dep., 21 :16 — 22:4). Mr. Belcastro instead claims that
`
`(O’Brien Decl., Ex. 3: Belcastro Dep., 68:18 — 69:8). Again,
`
`Bayer independently discovered an email (not produced by Belmora), dated February 9, 2009,
`
`from Mr. Belcastro
`
`(O’Brie11 Decl., Ex. 6)?
`
`Despite Mr. Belcastro‘s denials that
`
`. Bayer also
`
`independently discovered two marketing documents for BelInora's FLANAX products (again,
`
`not produced by Belmora), containing statements
`
`REDACTED
`
`

`
`(translated into Spanish also),
`
`and
`
`(O’Brien
`
`Decl., Exs. 7 and 8). Belmora only began selling FLANAX brand products in 2003. (Barengolts
`
`Decl., EX. 1, Response to Interrogatory No. 1). Not only do these statements directly contradict
`
`Mr. Belcastro‘s sworn testimony, they are obvious misrepresentations that Belmora's products
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`originate with, or are authorized by, the same source of the FLANAX products sold in Mexico
`
`and other Latin American nations
`
`Bayer has served subpoenas on MexGrocer.com and the design firm Bayer believes was
`
`responsible for designing the marketing documents quoted above. When Belmora filed its
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`motion for summary judgment and prior to the Board's suspension order, Belm0ra's counsel
`
`informed the subpoena recipients that the case would be suspended. (Barengolts Decl., ‘H 11, Ex.
`
`3). Bayer has not received any discovery from these third parties. (Barengolts Decl., WI 10).
`
`3.
`
`Belmora has not produced relevant communications prior to 2006.
`
`Although Belmora claims to have started marketing FLANAX products in April 2003,
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`the earliest communication it produced was from July 2006, and the majority of communications
`
`in its document production occurred in 2009. (Barengolts Decl., ‘ll 4). Mr. Belcastro also
`
`admitted that
`
`(O’Brien Decl., Ex. 3: Belcastro Dep., 156:16—23). Bayer also learned for the first time at Mr.
`
`Belcastro‘s deposition on August 18, 2009, that
`
`REDACTED
`
`

`
`action.3 (O’Brien Decl., Ex. 3: Belcastro Dep., 112218-21). Belmora's failure to produce
`
`communications prior to 2006 and Mr. Belcastro’s
`
`have frustrated Bayer’s
`
`ability to obtain necessary discovery.
`
`B.
`
`Bayer's Third-Party Discovery
`
`Belmora's misconduct has required Bayer to seek discovery from third parties. To that
`
`end, Bayer has served document subpoenas on three distributors of Belmora's product, two
`
`packaging design firms, and one marketing firm. (Barengolts Decl., 1T 7). Bayer also has served
`
`subpoenas for a total of five third-party depositions, originally scheduled to occur from
`
`September 22, 2009, to October 7, 2009. (Barengolts Decl., ‘ll 9).
`
`Among the third—party subpoena recipients is MexGrocer.com, a distributor that sells
`
`Belmora's FLANAX product on its web site and includes the following promotional statement
`
`above Belmora's FLANAX products: "Para mayor informacion, visite Flanax: una empresa del
`
`grupo BAYER Health Care." (O’Brien Decl., EX. 0). This roughly translates to: "For more
`
`information, visit Flanax, a business of BAYER Health Care group." "Flanax" is a hyperlink to
`
`Bayer's FLANAX web site located at www.flanax.com.mx. (O’Brien Decl., ll 10). This is
`
`evidence of both the effectiveness of Belmora's misrepresentation and the damaging association
`
`with Bayer. Bayer also sought discovery from Disc Graphics, Inc., the packaging design firm
`
`that
`
`and from
`
`HealthSource Marketing, LLC, a marketing firm, which touts a "Sales Success[]" that Belmora's
`
`FLANAX products "are targeted towards the Hispanic community," a statement that further
`
`contradicts Mr. Belcastro’s testimony. (Barengolts Decl., 11 13; O’Brien Decl., Ex. 10). Neither
`
`has provided any information because of Belmora's motion for summary judgment.
`
`3 In keeping with his many other Errata Sheet “corrections” that contradict his deposition testimony,
`
`REDACTED
`
`

`
`C.
`
`Outstanding Party Discovery
`
`Bayer also has outstanding discovery requests to Belmora. Bayer served a request to
`
`inspect Belm0ra's files and computers located at Mr. Belcastro’s house. (Barengolts Decl., il 8).
`
`Bayer also has served and intends to take a Rule 30(b)(6) deposition of Belmora after it obtains
`
`the third—party discovery it has requested. (Barengolts Dec1., {Hi 2, 13). In addition, Bayer likely
`
`will need to re-depose Mr. Belcastro, based on the discovery Bayer obtains from third parties, to
`
`question him about his incorrect and incomplete responses, and his failure to provide relevant
`
`information and documents. (Barengolts Decl., il 13).
`
`II.
`
`BELMORA'S MOTION FOR SUMMARY
`
`JUDGMENT ON THE MERITS IS PREMATURE
`
`Belmora seeks summary judgment on the merits of Bayer's misrepresentation of source
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`claim.
`
`In particular, Belmora argues that its placement of an inconspicuous statement that its
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`FLANAX product is "Distributed by Belmora LLC" on the side flap of its package, which is not
`
`visible to consumers on a store shelf, defeats the misrepresentation by Belmora that its products
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`emanate from or are authorized by the same source as Bayer's products. Belmora's request
`
`obviously is premature and a transparent ploy to thwart ongoing discovery three weeks before
`
`the discovery deadline. As discussed below, Bayer requests additional discovery under Rule
`
`56(f) to respond to this portion of Belmora's motion.
`
`A.
`
`Rule 56(f) motions are treated and granted liberally
`
`"[S]ummary judgment is inappropriate unless a tribunal permits the parties adequate time
`
`for discovery." DLmkin'D0nLtts 0fAmerica, Inc. V. Metallurgical Exoproducrs Corp., 840 F.2d
`
`917, 919 (Fed. Cir. 1988). Federal Rule of Civil Procedure 56(f) provides that "[s]hould it
`
`appear from the affidavits of a party opposing the motion that the party cannot for reasons stated
`
`present by affidavit facts essential to justify the party's opposition, the court may refuse the
`
`

`
`application for judgment or may order a continuance to permit affidavits to be obtained or
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`depositions to be taken or discovery to be had or may make such other order as is just."
`
`As a general rule, the Board and the Federal Circuit treat motions under Rule 56(f)
`
`liberally. "If a party has demonstrated a need for discovery which is reasonably directed to facts
`
`essential to its opposition to the motion for summary judgment, discovery will be permitted."
`
`McCormick Delaware, Inc. v. Williams Foods, Inc, 2001 WL 253633, "*7 (T.T.A.B. Feb. 14,
`
`2001) citing Opryldnd USA Inc. v. The Great American Music Show, Inc., 970 F.2d 847, 852-53
`
`(Fed. Cir. 1992) (reversing Board's denial of Rule 56(f) motion); see also Doe v. Abington
`
`Friends School, 480 F.3d 252, 257 (3d Cir. 2007) ("District courts usually grant properly filed
`
`Rule 56(f) motions as a matter of course."). Courts are particularly disposed to granting Rule
`
`56(i) motions where, as here, outstanding discovery requests remain pending. Barovich
`
`Associates, Inc. v. Aura Sys., Inc, 1998 WL 10747, *1 (9th Cir. Jan. 9, 1998) ("Summary
`
`judgment is especially inappropriate where the material sought is also the subject of outstanding
`
`discovery requests.") (citation omitted); see also Abingron Friends School, 480 F.3d at 257.
`
`B.
`
`Argument
`
`1.
`
`Belmora offers no legal basis for summary judment on the merits.
`
`Belmora argues that, as a matter of law, the Board should overlook the evidence that:
`
`' Belmora has copied Bayer's packaging;
`
`' Belmora has used a trademark — FLANAX — identical to Bayer's;
`
`'' Belmora has used a font identical to Bayer's for Belmora's FLANAX mark;
`
`° Belmora has used Bayer's FLANAX mark for identical goods — naproxen
`
`sodium;
`
`-10-
`
`

`
`0 Belmora apparently has prepared deliberately deceptive marketing materials to
`
`capitalize on the association with Bayer; and
`
`0 Evidence so far indicates that distributors have been deceived by Belmora's
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`misrepresentations into believing there is an association with Bayer.
`
`Despite this evidence of misrepresentation, Belmora asks the Board to grant judgment in
`
`Belmora's favor simply because it indicates on the packaging of its FLANAX products that they
`
`are "Distributed by Belmora LLC."4 According to Belmora, any company can copy the
`
`packaging of any famous product, copy the trademark and its presentation in every detail, down
`
`to the font, and sell the product without regard to consumer deception, simply by indicating in
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`Small font on a side panel that it is "distributed by" another source. This is not and Cannot be the
`
`law. "Distributed by" is ambiguous when coupled with Belmora's other copying and could imply
`
`that Belmora's product is distributed with the authorization of the same company that distributes
`
`FLANAX abroad. Board precedent also indicates that simply including a company name on a
`
`product does not defeat a claim for misrepresentation of source. See E.E. Dickinson Co. v. T.N.
`
`Dickinson Co., 221 U.S.P.Q_ 713, 715-16 (T.T.A.B. 1984) (finding that petitioner stated a claim
`
`for misrepresentation of source where the defendant's mark, T.N DICKlNSON'S, was also its
`
`company name and appeared on the label of its witch hazel product).5
`
`4 For this sweeping proposition, Belmora relies on dicta from a single, twenty-four~year—old Board decision, a case
`lacking the biatant misrepresentations and copying present in this case. See Global Mascfiinen Gr-nbH v. Giobri!
`Banking Sy.r., Inc, 227 U.S.P.Q_ 862, 863 (T.T.A.B. 1985) (cancelling registrant's marks based on fraud where
`registrant was a former U.S. distributor of a foreign manufacturer, and registrant continued to use the mark after the
`distributorship agreement terminated; petitioner abandoned its claim for misrepresentation of source by failing to
`brief it).
`5 Belmora asserts, without submitting competent evidence, that it has changed its packaging since 2008 to add the
`color yellow and emphasize its company name. Even if Belmora ultimately can prove this assertion, it is
`immaterial. The new packaging still constitutes a misrepresentation of source because it still uses the FLANAX
`mark in the identical font as Bayer's packaging, with the "FLA" portion in bolder text than the "NAX" portion. In
`addition, while this change shows that Belmora has sought to make its misrepresentation less blatant, it does not
`excuse the fact that Belmora has misused its registration as a vehicle for misrepresentation.
`
`-11-
`
`

`
`Belmora also argues that it is entitled to summary judgment on the related ground that it
`
`complies with United States Food and Drug Administration ("FDA") regulations identifying
`
`Belmora as the distributor. Belmora, however, does not cite a single case for this proposition.
`
`Of course, Belmora's utter absence of authority is not surprising, as the FDA's safety and health
`
`regulations serve a fundamentally different purpose than the Lanham Act. Cf Sandoz
`
`Pharmaceuticals Corp. V. Richardson-Vicks, Inc, 902 F.2d 222, 230 (3d Cir. 1990) (noting the
`
`that the Lanham Act and the Food, Drug, and Cosmetic Act have different purposes).
`
`2.
`
`Discovery to date establishes genuine issues of material fact.
`
`Aside from Belmora's baseless legal argument, even the incomplete discovery Bayer has
`
`taken to date demonstrates the existence of genuine issues of material fact. Indeed, the
`
`packaging for the parties’ respective FLANAX products alone supports Bayer's claim and, at a
`
`minimum, creates an issue of fact regarding Belmora's misrepresentation. See Cuban Cigar
`
`Brands N.V. v. Upmann Inf], Inc., 457 F. Supp. 1090, 1101 (S.D.N.Y. 1978) (cancelling
`
`registration after finding misrepresentation of source, in part, because defendant used a font and
`
`format of the trademark on its packaging similar to plaintiff's); Liquid Glass Enterprises Inc. v.
`
`Liquid Glass Indus. of Canada Ltd., 14 U.S.P.Q.2d 1976, 1980 (E.D. Mich.1989) (cancelling
`
`registration for misrepresentation of source where the defendant used a nearly identical "print
`
`style and label" as plaintiff and used the same colored gold can as plaintiff).
`
`As described above, documents also show that Belmora is misrepresenting its products as
`
`This is the kind of evidence that
`
`shows misrepresentation of source. See, e.g., Cuban Cigar, 457 F. Supp. at 1099 (finding
`
`misrepresentation where defendant's brochures contained a false history of the company
`
`designed to suggest to those familiar with plaintiff's products that defendant's products were an
`
`-12-
`
`REDACTED
`
`

`
`"authorized substitute"); Olay Co., Inc. v. Cococare Prods, Inc, 218 U.S.P.Q. 1028, 1037, 1046
`
`(S.D.N.Y. 1983) (cancelling registration for misrepresentation of source where defendant used
`
`shelf—talkers with the words "As seen on TV" in areas where only commercials for plaintiff's
`
`product had aired). Similarly, MexGrocer.com‘s web page directing consumers to Bayer's
`
`FLANAX web site shows that Belmora's use of its mark has had the effect of deceiving third
`
`parties and misrepresenting that Bayer is the source of Be1mora’s products. See E.E_ Dickinson
`
`Co. v. T.N. Dickinson Co., 221 U.S.P.Q. 713, 716 (T.T.A.B. 1984) (explaining that such
`
`evidence supports a claim for misrepresentation of source).
`
`3.
`
`Further discovery is necessary to oppose Belrnora's motion.
`
`Although Bayer already has uncovered strong evidence supporting its misrepresentation
`
`claim, it requires additional discovery to respond fully to Belmora’s motion. Bayer expects to
`
`obtain information from its outstanding third-party subpoenas, both through documents and
`
`deposition testimony, further demonstrating that Be1rnora's misrepresentations are deliberate and
`
`successful, thereby damaging Bayer.
`
`Courts are especially disposed to granting Rule 56(f) requests where, as here, the material
`
`sought is the subject of outstanding discovery requests. In Barovich Associates, Inc. v. Aura
`
`Sys., Inc., 1998 WL 10747, *1 (9th Cir. Jan. 9, 1998), the court reversed the district court's
`
`decision denying further discovery under Rule 56(f) where two of three third—party subpoena
`
`recipients had not yet responded to the subpoenas, and where the plaintiffs had served discovery
`
`requests on the defendants that remained outstanding. In this case, there is significantly more
`
`outstanding discovery than in Barovich that is necessary for Bayer to respond to this motion.
`
`C.
`
`Discovery Necessary to Respond to Belmora‘s Motion
`
`To respond fully to Be1mora's motion, Bayer requires discovery concerning the design
`
`and development of Belmora‘s packaging, the creation and circulation of marketing and
`
`-13-
`
`

`
`accompanying materials used to misrepresent the source of Belmora's goods, and the extent of
`
`confusion and deception in the marketplace resulting from Belmora's misrepresentations. These
`
`issues raise numerous factual matters that are essential to Bayer's opposition to the motion.
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`In
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`particular, as explained more fully in the Declaration of Phillip Barengolts, attached hereto as
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`Exhibit B, Bayer needs the following discovery:
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`1.
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`Inspection of Mr. Belcastro's files
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`Bayer served Belmora with a notice to inspect Belmora's computer located at Mr.
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`Belcastro's home. The inspection originally was noticed to occur September 21, 2009. During
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`this inspection, Bayer intends to have an expert make a forensic copy of Mr. Belcastro's hard
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`drive, among other things. This discovery is necessary because Belrnora has withheld responsive
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`documents that Bayer has independently discovered, and because Mr. Belcastro has admitted
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`This inspection may reveal documents such as emails from Mr. Beicastro
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`misrepresenting, either expressly or implicitly, that Bayer is the source of Belmora's FLANAX
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`products or has authorized Belmora to sell its products in the U.S.6 (Barengolts Decl., ‘ll 13a).
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`2.
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`Rule 30 b 6 de osition of Belmora and
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`possible continued deposition of Mr. Belcastro
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`Bayer already served a notice of a Rule 30(b)(6) deposition on Belmora, but the
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`deposition was postponed pending other discovery. Bayer intends to take this deposition after
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`obtaining discovery from third parties, in order to explore new documents and information that
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`surface relating to the extent of Belmora's misrepresentations. Depending on the discovery
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`Bayer obtains from third parties or the inspection of Belmora's computer, Bayer likely will also
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`5 Belmora served objections to this request on September 18, 2009. Bayer is prepared to work with Belmora to
`address its objections and try to proceed with the inspection in a mutual1y—agreeable manner.
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`-14-
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`REDACTED
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`

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`need to continue the deposition of Mr. Belcastro regarding any documents that should have been
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`produced prior to Mr. Belcastro's deposition. (Barengolts Decl., ll 13b).
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`3.
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`Discovery from Disc Graphics, Inc., Paul Currao and Jamie Fedor
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`Bayer served subpoenas for documents and deposition testimony on Disc Graphics, Inc.
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`("Disc Graphics"), the design firm that
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`Bayer
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`also served a subpoena for deposition testimony on Paul Currao, a current employee at Disc
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`Graphics who
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`Bayer has attempted to serve a
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`subpoena for deposition testimony on Jamie Fedor, a former Disc Graphics employee whom Mr.
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`Belcastro identified as
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`(Belcastro Dep., 322-16). This discovery is necessary to explore the creation of the
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`original packaging for Belmora's FLANAX products, the later redesigns of the packaging, and
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`the instructions Belmora gave for the creation of such packaging, which so closely simulate
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`Bayer's packaging. (Barengolts Decl., ‘ll 13c).
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`4.
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`Discovery from Design Department, Inc.
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`Bayer also served subpoenas on Design Department, Inc, a design firm
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`both for documents and
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`deposition testimony. Bayer also believes that Design Department created the marketing
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`documents described above that
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`This discovery is necessary to
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`explore the instructions Belmora gave regarding the design of its FLANAX packaging and the
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`content of marketing materials for FLANAX products, the circulation of those marketing
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`materials, and the existence of similar documents. (Barengolts Decl., ll 13d).
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`-15-
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`REDACTED
`
`

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`5.
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`Discovery from distributors
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`Bayer served subpoenas on MexGrocer.Com (an online retailer that sells Belmora's
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`FLANAX products and invited consumers to visit Bayer’s web site for more information about
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`Belmora's products) for documents and deposition testimony; to Pronaturamex, Inc. (a retailer
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`that Bayer believes was one of the first distributors of Belmora's products) for documents and
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`deposition testimony; and to America's Latin Products — Atlanta LLC (a distributor that operates
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`the web site OTC Latino.com) for documents. Bayer seeks discovery relating to
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`communications between Belmora and these distributors, the familiarity of these distributors
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`with Bayer’s FLANAX products, and whether these distributors, among others, believed that
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`Belmora was associated with Bayer. This discovery is critical to shed light on the extent of the
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`damage caused to Bayer and the extent and success of Belmora's misrepresentations.
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`(Barengolts Decl., ‘ll 13e).
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`6.
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`Discovery from HealthSource Marketing, LLC
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`Bayer also served subpoenas on HealthSource Marketing, LLC, a firm that Bayer
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`independently discovered had worked with Belmora to market Belmora's FLANAX products, for
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`both documents and deposition testimony. This discovery is critical to reveal the extent of the
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`damage caused to Bayer and the extent and success of Belmora's misrepresentations.
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`(Barengolts Decl., ‘ll 13f).
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`D.
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`Timing for Discovery
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`Bayer asks the Board to deny Belrnora’s motion as untimely. If the Board grants a
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`continuance instead, Bayer believes it will need at least sixty (60) days due to the extensive
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`outstanding discovery, including the rescheduling of depositions.
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`-15-
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`

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`III.
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`BAYER HAS STANDING TO BRING ITS MISREPRESENTATION CLAIM
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`I Belrnora seeks summary judgment on the ground that Bayer does not meet the liberal
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`standing threshold required to assert its claim. As shown below, Bayer has standing because
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`Belmora deceives consumers into believing that its products are associated with Bayer, a
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`company with a significant presence in the U.S. healthcare market. Be1mora's motion simply
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`recycles the same arguments that the Board previously rejected in Be1mora's motion to dismiss.
`
`A.
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`Summary Judgment Standard
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`Summary judgment is inappropriate where, as here, the movant is not entitled to
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`judgment as a matter of law. Fed. R. Civ. P. 56(c). The evidence presented, and the factual
`
`inferences it creates, must be viewed in a light most favorable to the non—moving party. See
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`Opryland USA, 970 F.2d at 850. In trademark cases, where subjective issues such as intent and
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`consumer perception are at issue, summary judgment is particularly inappropriate. Am. Int’!
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`Group, Inc. v. London Am. Inf’! Corp, 664 F.2d 348, 353 (2d Cir. 1981) ("Subjective issues such
`
`as good faith are singularly inappropriate for determination on summary judgment").
`
`B.
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`Argument
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`1.
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`Standing is a low threshold.
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`"The Federal Circuit has set forth a liberal threshold for determining standing .
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`. ." Nextei
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`Communications Inc. 12. Motorola Inc, 91 U.S.P.Q.2d 1393, 1399-1400 (T.T.A.B. 2007) (citing
`
`Ritchie, supra). To demonstrate its standing, Bayer must only show a reasonable belief that it is
`
`likely to be damaged by Beimora's registration. See Cunningham v. Laser Golf Corp., 55
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`U.S.P.Q.2d 1842, 1844 (Fed. Cir. 2000) ("Standing .
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`.
`
`. requires only that the party seeking
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`cancellation believe that it is likely to be damaged by the registration").
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`In other words, Bayer
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`need only be more than a "mere intermeddler." See Ritchie v. Simpson, 170 F.3d 1092, 1095
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`(Fed. Cir. 1999).
`
`-17-
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`

`
`Indeed, the cases Belmora cites demonstrate that the low standing threshold does not
`
`require the plaintiff to be using the mark in commerce. See Young v. AGB Corp., 152 F.3d 1377,
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`1380 (Fed. Cir. 1998) (creator of animal statues that was not in the restaurant business had
`
`standing to oppose application by steakhouse that purchased one of its statues and applied to
`
`register it as a service mark in connection with restaurant services); Boswell v. Mavety Media
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`Group Ltd., 52 U.S.P.Q.2d 1600, 1604 (T.T.A.B. 1999) (plaintiff not using a mark has standing
`
`to challenge application of the mark as disparaging based on her status as a member of a
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`particular group).
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`2.
`
`Bayer is damaged by Belmora's misrepresentation that Belmora‘s
`products emanate from or are authorized by the same source as Bayer's.
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`Belmora has obviously and unmistakably damaged Bayer by misrepresenting to U.S.
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`consumers that the source of its FLANAX products is the same as the source of Bayer’s
`
`FLANAX products or that this source has authorized Belmora to sell FLANAX produ