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
`ESTTA261291
`ESTTA Tracking number:
`01/19/2009
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92048097
`Defendant
`BSP PHARMA, INC.
`Rakesh M. Amin
`Amin Hallihan, LLC
`444 N. Orleans Street, Suite 400
`Chicago, IL 60610
`UNITED STATES
`ryan@aminhallihan.com, rakesh@aminhallihan.com
`Motion for Summary Judgment
`Rakesh M. Amin
`ryan@aminhallihan.com, rakesh@aminhallihan.com
`/Rakesh M. Amin/
`01/19/2009
`Registrant's MSJ (Motion, Brief, Declaration).pdf ( 31 pages )(5883530 bytes )
`Registrant's MSJ (Exhibits 1-16).pdf ( 41 pages )(4582301 bytes )
`Registrant's MSJ (Exhibits 17-28).pdf ( 36 pages )(3815578 bytes )
`Registrant's MSJ (Exhibits 29-39).pdf ( 30 pages )(3254829 bytes )
`Registrant's MSJ (Exhibits 40-52).pdf ( 28 pages )(2465368 bytes )
`Registrant's MSJ (Exhibits 53-56).pdf ( 9 pages )(752896 bytes )
`Registrant's MSJ (Exhibits 57-65).pdf ( 20 pages )(2377905 bytes )
`Registrant's MSJ (Exhibits 66-72).pdf ( 22 pages )(3366810 bytes )
`Registrant's MSJ (Exhibit 73).pdf ( 2 pages )(279705 bytes )
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Cancellation No. 92048097
`
`)
`)
`
`) )
`
`)
`
`NBTY, INC.,
`
`Petitioner,
`
`v.
`
`)
`)
`BSP PHARMA, 1'NC.,
`)
`Registrant,
` )
`
`REGISTRANT’S MOTION FOR SUMMARY JUDGMENT
`
`Registrant, BSP PHARMA, INC. (“Registrant”), by and through its attorneys,
`
`AMIN I-IALLIHAN, LLC, hereby moves for summazyjuclgment pursuant to Rule 56,
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`Fed. R. Civ. P., and Trademark Rule 2.l27(e), and dismissal of the Petition to Cancel
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`U.S. Trademark Registration No. 3,277,368, which was filed on September 1 1, 2007 by
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`Petitioner, NBTY, Inc. (“Petitioner”).
`
`As set forth in the attached brief, declarations and exhibits, this Motion is made
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`on the grounds that the first DuPont factor (dissimilarity of the marks) is dispositive in
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`this case and confusion between the FLEX-A-MIN and FLEX NOW marks is unlikely.
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`Accordingly, Registrant respectfully submits that Petitioner’s Petition to Cancel
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`Registration No. 3,277,368 must be dismissed with prejudice pursuant to this Motion, as
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`there are no genuine issues of material fact remaining, and a trial on the matter would
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`entail unnecessary fees and waste of the Board’s scarce resources.
`
`Dated: January 19, 2009
`
`
`
`

`
`Rakesh M. Amin
`
`Ryan M. Kaiser
`444 N. Orleans St., Suite 400
`
`Chicago, IL 60654
`rak'esh@aminhall'ihan.c'om
`ryan@a_minha11ihan_.com
`"'3 1 2-32'?’-3'3 28 (phone)
`312-223-1515 (fax)
`Attorneys for Registrant.
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Cancellation No. 92048097
`
`)
`)
`
`) )
`
`)
`)
`
`NBTY, INC.,
`
`Petitioner,
`
`v.
`
`)
`BSP PHARMA, INC.,
`)
`Registrant,
` )
`
`REGISTRANT’S MOTION FOR SUMMARY JUDGMENT
`
`BRIEF IN SUPPORT OF
`
`Registrant, BSP PHARMA, INC. (“Registrant”), by and through its attorneys,
`
`AMIN I-IALLIHAN, LLC, respectfully submits this Brief in Support of Registrant’s
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`Motion for Summary Judgment.
`
`I.
`
`INTRODUCTION
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`The present case is ripe for decision on summary judgment because the first
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`DuPont factor, dissimilarity of the marks, is dispositive of likelihood of confusion.
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`Where the only shared element of two marks is a descriptive word, likelihood of
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`confusion analysis requires similarity in the remaining non-descriptive portions of the
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`marks.
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`In the present case, those remaining non-descriptive portions of the marks share
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`nothing. FLEX-A-MIN and FLEX NOW are entirely distinct in sight, sound and
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`meaning. The only attribute they share is the word “FLEX”, which Petitioner admits and
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`the record confirms is descriptive of the relevant goods (1'.e. joint supplements for
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`improved flexibility).
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`It is well-settled that descriptive terms are weak as trademarks.
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`

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`Petitioner now contends that its FLEX-A-MIN mark bestows the exclusive rights
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`to use the descriptive term “FLEX” for joint supplements. On that basis, Petitioner
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`complains that Registrant’s FLEX NOW registration must be cancelled. While Petitioner
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`attempts to flex its trademark muscles by claiming monopolistic rights over the
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`descriptive term “FLEX” for joint supplements, the FLEX—A-MIN mark (specifically, the
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`term “FLEX”) is actually quite weak.
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`There are no genuine issues of material fact in dispute, and this case avails itself
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`to resolution as a matter of law in Registrant’s favor. Thus, pursuant to Rule 56, Fed. R.
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`Civ. P. and Trademark Rule 2.127(e), Registrant seeks summary judgment that there is
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`no likelihood of confusion, and an Order dismissing the Petition to Cancel with prejudice.
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`II.
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`UNDISPUTED FACTS
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`For purposes of this Motion, Registrant concedes the truth of the factual
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`allegations of paragraphs l-6 of the Petition for Cancellation. Registrant does not admit
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`the legal conclusions set forth in paragraphs 7-8.1 Even on such a record, there is no
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`likelihood of confusion, due to the complete dissimilarity of the marks.
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`The pertinent paragraphs of the Petition to Cancel recite the following facts, which
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`are admitted for the purposes of this Motion:
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`Registrant BSP Pharrna, Inc. is a corporation organized and existing
`1.
`under the laws of the State of New Jersey, with a place of business at 500
`Scarborough Road, Suite 202, Egg Harbor Township, New Jersey 08234.
`
`Registrant is the owner of Registration No. 3,277,368 for the mark
`2.
`FLEX NOW in Class 5 for “dietary supplements.” The registration issued on
`August 7, 2007, based on alleged first use of the mark in commerce on May
`17, 2006.
`
`' Paragraph 7 states the legal conclusion that Registrant’s mark is likeiy to deceive and mislead consumers.
`Paragraph 8 (the final paragraph in the Petition to Cancel) flows from Paragraph 7, and concludes that
`Petitioner will be damaged by Registrant’s registration.
`
`

`
`the filing date of the
`Since long prior to September 15, 2005,
`3.
`application for registration sought to be cancelled herein, Petitioner has been
`engaged in the business of developing and selling a wide variety of vitamin,
`mineral and nutritional supplements.
`
`Since long prior to September 15, 2005, and at least as early as
`4.
`January 1996, Petitioner and its predecessor-in-interest have continuously
`used the mark FLEX-A-MIN in connection with vitamin and mineral
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`supplements for strengthening and maintaining joint health.
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`Petitioner is the owner of Registration No. 2,055,378 for the FLEX-
`5.
`A-MIN mark, which was issued on the Principal Register on April 22, 1997,
`for use in connection with “dietary supplements to aid joint health” in
`International Class 5.
`
`Petitioner has spent millions of dollars on an annual basis to
`6.
`advertise and publicize its FLEX-A-MIN mark for products widely sold
`throughout the United States. As a result of its extensive, multimillion
`dollars sales, advertising and promotion for products sold under the FLEX-A-
`MIN mark, Petitioner has developed substantial goodwill and widespread
`recognition as the source of products sold under the FLEX-A-MIN mark,
`since long prior to the filing date of the application for registration sought to
`be cancelled herein.
`
`The FLEX~A-MIN mark, as set forth in Petitioner’s registration, consists of the
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`typed drawing of the word “FL-EX-A-MIN”. Petitioner’s earliest priority date in the U.S.
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`is January 1, 1996. The FLEX NOW mark, as set forth in Registrant’s registration, is a
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`word mark consisting of the words “FLEX NOW” in standard characters.
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`III.
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`ARGUMENT
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`A.
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`Applicable Legal Standard for Summagy Judgment
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`Summary judgment is appropriate where there are no genuine issues of material
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`fact in dispute, thus leaving the case to be resolved as a matter of law. See, Fed. R. Civ.
`
`P. 56(0). A party moving for summary judgment has the burden of demonstrating the
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`absence of any genuine issue of material fact. See, Celotex Corp. v. Carrerr, 477 U.S.
`
`317 (1986), and Sweats Fashions, Inc. v. Parmill Knitting Co., Inc., 4 USPQ2d 1793
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`

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`(Fed. Cir. 1987). When a moving party’s motion is supported by evidence sufficient to
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`indicate that there are no genuine issues of material fact, the burden then shifts to the
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`nonmoving party to demonstrate the existence of specific genuinely disputed facts that
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`must be resolved at trial. Fed. R. Civ. P 56. The nonmoving party may not rest on mere
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`denials or conclusory assertions, but rather must proffer countering evidence, by affidavit
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`or as otherwise provided in FED. R. CIV. P. 56 showing that there is a genuine issue of
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`material fact for trial. See TBMP § 528.01 (2d Ed. Rev. Mar. 12, 2004).
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`In the present proceedings, there are no genuine issues of material fact left for
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`trial. For purposes of this Motion, Registrant admits the truth of Petitioner’s factual
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`allegations. Registrant has conceded standing and priority, as well as relatedness of the
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`Parties’ goods. Thus the only remaining issue, which Registrant contends is controlling,
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`is the dissimilarity of the marks.
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`B.
`
`(i)
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`Confusion Between FLEX~A-MIN and FLEX NOW is Unlikely
`
`The Present Case Can and Should Be Decided on
`the First DuPont Factor — The Dissimilarities of the Marks
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`Dismissal of this action is proper based solely on the first DuPont factor (tie.
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`dissimilarity of the marks). Courts have routinely found the first DuPont factor to be
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`dispositivc of the likelihood of confusion analysis. See, eg, Champagne Louis Roederer
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`S.A. v. Delicato Vineyards, 143 F.3d 373, 47 USPQ2d 1459 (Fed. Cir. 1998)
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`(dissimilarity of the marks under the first DuPont factor held dispositive where goods
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`highly related); Keebler Co. 12. Murray Bakery Products, 866 F.2d 1386, 9 USPQ2d U36
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`(Fed. Cir. 1989) (on identical goods, dissimilarity of the marks dispositive); Sears
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`Mortgage Corp. v. Northeast Savings F./1., 24 USPQ2d 1227 (TTAB 1992) (dissimilarity
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`between the marks dispositive on highly related services); and Ketiogg Co. v. Pack Em
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`

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`Enterprises Inc, 14 USPQ2d 1545 (TTAB 1990), aff‘d, 951 F.2d 330, 21 USPQ2d 1142
`
`(Fed. Cir. 1991) (dissimilarity of the marks dispositive on highly related goods).
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`Rigid application of the thirteen factors set forth in DuPont is not the norm.
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`Rather, Courts exercise flexibility in analyzing the facts of each case, and often give more
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`(or less) weight to a particular DuPont factor. The differences between the marks at issue
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`in the present case are sufficient to compel a finding of no likelihood of confusion based
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`solely on the first DuPont factor.
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`(ii)
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`FLEX-A-MIN is Entirely Dissimilar From FLEX NOW
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`FLEX-A-MIN and FLEX NOW are entirely dissimilar in appearance, sound,
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`meaning and overall commercial impression. The marks share no common elements
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`except for the term “FLEX”, which is so highly descriptive of the parties’ goods (LG.
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`dietary supplements used to aid flexibility and joint health) that it cannot serve as the
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`dominant portion of Petitioner’s mark?
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`The differences in appearance are clear. FLEX-A-MIN forms a single
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`hyphenated word, whereas FLEX NOW appears as to separate and distinct words. The
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`distinct pair of hyphens in FLEX-A-MIN serves two distinguish the marks. The marks
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`also differ visually in that they contain a different number of characters (ten vs. seven).3
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`Taken as a whole, the marks share nothing other than the descriptive term “FLEX”.
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`The marks also sound nothing alike. Petitioner’s mark has three syllables, where
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`Registrant’s has only two. Moreover, when spoken, FLEX-A-MIN sounds as though it is
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`2 In a likelihood of confusion analysis, similarity of marks cannot be predicated on a common element that
`is descriptive or suggestive, and thereby weak. See, Keebier Co., v. Murray Bakery Prods, 866 F.2d 1336;
`Szoufiler Corp. v. Health Vafley Natural Foods, Inc, 1987 TTAB LEXIS 89,
`1 USPQ 2d (BNA) 1900
`(TTAB 1983’).
`3 Including the hyphens, which are claimed as part of Petitioner's mark.
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`

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`one word with an ending similar to VITAMIN, whereas FLEX NOW is two distinct
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`words and sounds nothing like VITAMIN.
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`Likewise, there are no similarities in the meaning or connotation of the marks.
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`While there is no readily apparent meaning for the word FLEX—A-MIN, the mark invokes
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`the idea that FLEX-A-MIN is a type of VIT-A-MIN product. In contrast, Registrant’s
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`mark conveys, with some degree of imagination, the immediacy of the product’s effects.
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`While it is true that both marks begin with the descriptive term “FLEX”, this
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`alone is not controlling as to their respective commercial impressions. Where the only
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`similarity is a descriptive term, courts look to the remaining portions of the marks to
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`determine connotation and commercial impression. See, Keebier Co., v. Murray Bakery
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`Prods, 866 F.2d 1386 (based solely on the first DuPont factor, PECAN SANDIES and
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`PECAN SHORTIES not confusingly similar where “PECAN” is descriptive); Stoufier
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`Corp. v. Health Valley Natural Foods, Inc, 1987 TTAB LEXIS 89, 1 USPQ 2d (BNA)
`
`1900 (LEAN CUISINE and LEAN LIVING not confusingly similar where “LEAN” is
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`descriptive, even though senior mark was famous). The term “FLEX” as applied to
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`dietary supplements for joint health cannot, as a matter of law, be deemed the dominant
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`portion of Petitioner’s mark for the purposes of determining likelihood of confusion.
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`Thus, even when used in connection with similar goods, the marks are so different that
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`confusion is unlikely.
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`(iii)
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`“FLEX” is Descriptive ofJoint Supplements and Cannot Serve as the
`Basis ofSimilarity in a Likelihood of Confusion Analysis
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`Petitioner admits + indeed asserts — that “FLEX” is the dominant portion of its
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`mark. However, “FLEX” is indisputably descriptive of Petitior1er’s product.
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`

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`A term is descriptive where it describes “an ingredient, quality, characteristic,
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`function, feature, purpose or use of the specified goods or services." TMEP §l209, et
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`seq. (and the cases cited therein). A descriptive term immediately tells the consumer
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`something about the relevant goods.
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`Ia‘. Similarly, suggestive terms are those that, when
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`applied to the goods or services at issue, require some degree of imagination, thought or
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`perception to reach a conclusion as to the nature of those goods or services. Id.
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`Where a common element is deemed “weak”, likelihood of confusion is reduced.
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`Nestle 1: Milk Proclucls. Inc. v. baker Importing C0., 182 F.2d 193, 86 USPQ 80 (CCPA
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`1950) (HYCAFE and NESCAFE not confusingly similar where “CAFE” deemed weak
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`element); Smith 12. Tobacco By-Products & Chemical Corp, 243 F. 2d 138
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`(GREENLEAF and BLACK LEAF not confusingly similar for plant sprays where
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`“LEAF” deemed weak element). A portion of a mark is “Weak” in the sense that it is
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`descriptive, highly suggestive, or is in common use by many other sellers in the market.
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`See Colgate--Palmolive Co. v. Carter-Wallace, Inc., 432 F.2d 1400, 167 USPQ 529
`
`(CCPA 1970). The mere presence of a common descriptive or even suggestive element
`
`in two marks is not enough support upon which to base a finding that confusion is likely.
`
`See, Tekzronix, Inc. v. Daktrorncs, Inc, 534 F. 2d 916, 139 USPQ 693 (CCPA 1976),
`
`afi”g 187 USPQ 588 (TTAB 1975). Thus, where marks share a common descriptive or
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`suggestive element, Courts look to the remaining portions of the mark to determine
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`whether the marks are confusingly similar.
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`In the present case, the term “FLEX” is properly classified as descriptive. The
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`relevant goods are “dietary supplements to aid joint health”. Petiti0ner’s Petition For
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`Ccmcellation, at 1] 5. Joints, by definition, flex. In fact, one definition of the term
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`

`
`“FLEX” is “to move muscles so as to cause tlexion of (a joint)?’ See Kaiser Declaration,
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`at 1I 74; Exhibit 73, Merriam-Webster’s Online Dictionary. Thus, when used in
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`connection with Petitioner’s goods, the word “FLEX” immediately tells the consumer
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`something about the product (ie. that FLEX—A-MIN can be used to increase flexibility).
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`Indeed, FLEX-A-MIN is marketed to consumers for the purpose of improving
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`flexibility and joint health. Petitioner’s advertising admits the descriptiveness of “FLEX”
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`in relation to its product. See Kaiser at 1} 75; Exhibit 1, Petitioner’s Web Site,
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`available at Www.flexamin.com (repeatedly urging consumers to “Get Flexible. Get
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`Flex-a-min.”) (emphasis added). Petitioner’s play on words showcases the descriptive
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`meaning “FLEX" has to the relevant consumers (i. e. people looking for a supplement to
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`help them “get flexible”). Additionally, advertisements for FLEX-A-MIN show actor
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`James Brolin urging consumers “[i]f sore, stiffjoints are slowing you down, do what I do.
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`Take maximum strength Flex-a-min .
`
`.
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`. now I have theflexibility to move easily and
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`freely.” See Kaiser at $1 76; Exhibit‘ 2, Arthritis Today, at p. 61 Flex-a-min
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`Advertisement (July-August 2001 Ed.) (emphasis added). Petitioner takes full
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`advantage of the word “FLEX” to describe the primary function of its product: flexibility.
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`Pet.itioner’s use of “FLEX” to describe characteristics ofjoint supplements is
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`hardly unique. Third party registrations are persuasive evidence of descriptiveness by
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`showing the meaning of a mark or word in the same way that dictionaries are used.
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`Tektronix, 189 USPQ at 694-95. In the United States alone, there are hundreds of “live”
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`use-based registrations for marks containing the word “FLEX” in connection with dietary
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`supplements (most of them joint supplements like Petitioner’ s).“ See Kaiser at 1H[ 2-S7;
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`4 Third-Party registrations are “competent evidence that a portion common to the marks involved in a
`proceeding has a normally understood and well-known meaning; that this have been recognized by the
`
`10
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`

`
`Exhibit 3 (FLEX); Exhibit 4 (FLEXSOLUTION S); Exhibit 5 (FLEX-RENEW); Exhibit
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`6 (FLEX-CID); Exhibit 7 (FLEX ABLE); Exhibit 8 (FLEX 4LIFE); Exhibit 9 (FLEX
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`DEFENSE); Exhibit 1 0 (FLEX DRIVE); Exhibit 11 (FLEX FORCE); Exhibit 12 (FLEX
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`FREE); Exhibit 13 (FLEX*SURE); Exhibit 14 (FLEXACTIVE); Exhibit 15
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`(FLEXAJOINT); Exhibit 16 (FLEX-EASE); Exhibit 1' 7 (i-FLEX .
`
`.
`
`.i can flex freely);
`
`Exhibit 18 (TotalFLEX); Exhibit 1 9 (SYN-FLEX); Exhibit 20 (SUPER FLEX); Exhibit
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`21 (SO FLEX); Exhibit 22 (PUREFLEX); Exhibit 23 (PHARMAFLEX); Exhibit 24
`
`(NUTRA FLEX 4); Exhibit 25 (NU-FLEX); Exhibit 26 (MICRO-FLEX);Exhibit 2 7
`
`(MEGAFLEX); Exhibit 28 (LUBRIFLEX3); Exhibit 29 (GLYCO-FLEX); Exhibit 30
`
`(GLUCO-FLEX FORTE); Exhibit 31 (GINGERFLEX); Exhibit 32 (FAST FLEX);
`
`Exhibit 33 (EZ FLEX); Exhibit 34 (CABLEFLEX); Exhibit 35 (BONE FLEX); Exhibit
`
`36 (ARTI-FLEX); Exhibit 3 7 (i—FLEX); Exhibit 38 (SYN~FLEX — repetitive of Exhibit
`
`19 by clerical error); Exhibit 39 (RAPID FLEX); Exhibit 40 (PERFORMA FLEX);
`
`Exhibit 41 (LIQUID FLEX); Exhibit 42 (CANIFLEX); Exhibit 43 (ARTHOFLEX);
`
`Exhibit 44 (ARTI-IOFLEX MAX); Exhibit 45 (TRUFLEX); Exhibit 46 (SPORTFLEX);
`
`Exhibit 4 7 (OxyFLEX); Exhibit 48 (OPTIMA FLEX); Exhibit 49 (OPTAFLEX);
`
`Exhibit 50 (COGNI-FLEX); Exhibit 51 (ANIMAL FLEX); Exhibit 52 (AMERI-
`
`FLEX).5
`
`Patent and Trademark Office by registering marks containing such a common feature for the same or
`closely related goods where the remaining portions of the marks are sufficient to distinguish the marks as a
`whole; and that therefore the inclusion of [the common element] in each mark may be an insufficient basis
`on which to predicate a holding ofconfusing similarity.” Knight Textile Corp. v. Jones Investment Ca,
`Inc, 2005 TTAB LEXIS 250, 75 USPQ 2d (BNA) 1313 (TTAB 2005) (citing Red Carpet Corp. v.
`Johnstown American Enterprises. ]m:., 7 USPQ 2d 1404, 1406 (TTAB 1938). Specimen packages and
`labels (which are attached for many of the registrations) may be referred to for the purpose of aiding the
`Board in understanding the relevant goods. Faik Corp. v. Tore Mfg. Co., 493 F.2d l3?2.
`5 Nearly every one of the above-cited marks has a unique owner.
`
`11
`
`

`
`Not surprisingly, many of those “FLEX” marks predate Petitioner, confirming
`
`that nobody, let alone Petitioner, owns the exclusive rights to use “FLEX” in connection
`
`with dietary supplements. See Kaiser at 1H] 54-57; Exhibit 53 (FLEX-ALL with priority
`
`date of June 1987); Exhibit 54 (SALFLEX with priority date of October 1987); Exhibit
`
`55 (HERBAFLEX with priority date of November 1982); Exhibit 56 (ALOE FLEX with
`
`priority date of January 1980).
`
`Numerous third party sellers in the market promote identical products using the
`
`term “FLEX”. See Kaiser at {H 58-73; Exhibit 5 7 (FLEXAJOINT for joint supplement
`
`claiming improved “flexibility"); Exhibit 58 (FLEX-FORCE for joint supplement);
`
`Exhibit 59 (FLEX-EZE 1000 forjoint supplement); Exhibit 60 (FLEX PROTEX for
`
`joint supplement claiming to enhance “flexibility”); Exhibit 6} (FLEX DEFENSE for
`
`joint supplement); Exhibit 62 (TRIFLEX for joint supplement); Exhibit 63 (FLEXALL
`
`454 for joint supplement); Exhibit 64 (GLYCO-FLEX for joint supplement); Exhibit 65
`
`(OPTAFLEX); Exhibit 66 (OPTIMA FLEX for joint supplement); Exhibit 67
`
`(OxyFLEX for joint supplement); Exhibit 68 (SUPER FLEX for joint supplement);
`
`Exhibit‘ 69 (SYN-FLEX for joint supplement); Exhibit 70 (SUPER JOINT FLEX AID
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`for joint supplement); Exhibit 71 (FLEXIBILITY FORMULA for joint supplement);
`
`Exhibit 72 (FLEXIBILITY for joint supplement).
`
`It is beyond dispute that the term “FLEX” is immediately descriptive, or at the
`
`very least, highly suggestive of dietary supplements for joint health. As the primary
`
`benefit of a joint supplement, Petitioner cannot claim the exclusive right to the term
`
`“FLEX”. Competitors must have the ability to use the word “FLEX” in order to
`
`accurately describe the primary benefit of their produCt(s): Flexibility.
`
`12
`
`

`
`IV.
`
`CONCLUSION
`
`“The purpose of summary judgment is judicial economy, that is, to save the time
`
`and expense of a needless trial where no genuine issue of material fact remains and more
`
`evidence than is already available in connection with the summary judgment motion
`
`could not reasonably be expected to change the result.” Kelfogg C0. 12. Pack Em
`
`Enterprises Inc, 14 USPQ2d 1545 (citing Societe Des Produirs Marnier Laposroiie v.
`
`Disriflerie Moccia S.R.L., 10 USPQ 2d 1241, 1244 (TTAB 1989)).
`
`For this motion, Registrant has admitted that Petitioner has standing and priority,
`
`and that the parties’ goods are related. Registrant contends simply that the marks in this
`
`case are so dissimilar that the first DuPont factor should be determinative of the Board’s
`
`decision.
`
`Petitioner’s only plausible argument to the contrary lacks merit and authority.
`
`It
`
`is well-settled that similarity of two marks cannot be predicated on a shared term if that
`
`term is merely descriptive or suggestive. Thus, because the marks at issue lack any
`
`similarities aside from a descriptive term used freely for decades by hundreds if not
`
`thousands of other sellers in connection with identical goods, and because there are no
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`genuine issues of material fact left in dispute, Registrant respectfully requests that its
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`Motion for Summary Judgment by GRANTED, and the present proceedings be dismissed
`
`with prejudice.
`
`Dated: January 19, 2009
`
`
`
`13
`
`

`
`444 N. Orleans St., Suite 400
`Chicago, IL 60654
`rakesh@aminhallihan.com
`ryan@a.minhaIlihan.com
`312-327-3328 (phone)
`3 '12.-223-1 515' (fax)
`Attorneys for Registrant.
`
`14
`
`

`
`PROOF OF SERVICE
`
`I am over the age of 18 and not a party to the within action; my business address
`is Amin Hallihan, LLC, 444 North Orleans Street, Suite 400, Chicago, IL 60654. On
`January 19, 2009, a copy of the attached MOTION FOR SUMMARY JUDGMENT
`AND FOR SUSPENSION OF THE PROCEEDINGS AND BRIEF IN SUPPORT
`
`THEROF was served on all interested parties in this action via email (by agreement) and
`US. Mail, FedEx or the equivalent, postage prepaid, at the addresses as follows:
`
`To:
`
`Sandra Edelman
`
`Dorsey & Whitney LLP
`250 Park Avenue, 15th Floor
`New York, NY 10177
`
`I declare under penalty of
`Executed on January 19, 2009, at Chicago, Illinois.
`perjury that the above is true and correct.
`I declare that I am employed in the office of
`Amin Hallihan, LLC at whose direction service was made.
`
`Est’ Ryan M. Kaiser
`Ryan M. Kaiser
`
`CERTIFICATE OF TRANSMISSION
`
`I hereby certify that this correspondence is being transmitted to the United States
`Patent and Trademark Office using the ESTTA system on January 19, 2009.
`
`/5! Ryan M. Kaiser
`
`Ryan M. Kaiser
`
`I5
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`-../\-u_/\u_/N-.-/\-u_/\u_/\-/N-u_J
`
`Cancellation No. 92048097
`
`)\
`
`NBTY, INC,
`
`v.
`
`Petitioner,
`
`BSP PI-IARMA, INC.,
`Registrant,
`
`
`DECLARATION OF RYAN M. KAISER IN SUPPORT OF
`
`REGISTRANT’S MOTION FOR SUMMARY JUDGMENT
`
`I, Ryan M. Kaiser, hereby declare as follows:
`
`1.
`
`I am an Associate at Amin Hallihan, LLC, counsel of record in this proceeding for
`
`Registrant, BSP Pharma, Inc, and am duly authorized to make this Declaration, which is
`
`based on my personal knowledge and information unless otherwise stated.
`
`2.
`
`On January 8, 2009, I performed a search of the United States Patent and trademark
`
`Office’s Trademark Electronic Search System (“TESS”) for “live” registrations of marks
`
`containing the term “FLEX” and used in connection with dietary supplements. As the
`
`results of my Search were too numerous to submit to the Board, I compiled a
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`representative sample of registrations contained in those results.
`
`3.
`
`Where practicable, I included with the registration a copy of the specimen filed by that
`
`third-party registrant with the Patent and Trademark Office as evidence that the product
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`upon which the mark is used in commerce is a joint health orjoint support product having
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`an identical functional purpose to that of Petitioner, NBTY, Inc. (5. e. “to aid joint
`
`health").
`
`

`
`Attached to Registrant’s Motion for Summary Judgment as “Exhibit 3” is a true and
`
`correct copy of Trademark Registration No. 3,060,297 for “FLEX” with the specimen of
`
`use that was filed therewith.
`
`Attached to Registrant’s Motion for Summary Judgment as “Exhibit 4” is a true and
`
`correct copy of Trademark Registration No. 3,482,740 for “FLEXSOLUTIONS” with the
`
`specimen of use that was filed therewith.
`
`Attached to Registr"ant’s Motion for Summary Judgment as “Exhibit 5” is a true and
`
`correct copy of Trademark Registration No. 2,944,340 for “FLEX-RENEW” with the
`
`specimen of use that was filed therewith.
`
`Attached to Registrant’s Motion for Summary Judgment as “Exhibit 6” is a true and
`
`correct copy of Trademark Registration No. 3,264,195 for “FLEX-CID” with the
`
`specimen of use that was filed therewith.
`
`Attached to Registrant's Motion for Summary Judgment as “Exhibit 7” is a true and
`
`correct copy of Trademark Registration No. 2,625,765 for “FLEX ABLE” with the
`
`specimen of use that was filed therewith.
`
`Attached to Registrant’s Motion for Summary Judgment as “Exhibit 8” is a true and
`
`correct copy of Trademark Registration No. 2,730,306 for “FLEX 4LlFE".
`
`10.
`
`Attached to Registrant’s Motion for Summary Judgment as “Exhibit 9” is a true and
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`correct copy of Trademark Registration No. 3,183,907 for “FLEX DEFENSE” with the
`
`specimen of use that was filed therewith.
`
`

`
`11.
`
`Attached to Registrant’s Motion for Summary Judgment as “Exhibit 10” is a true and
`
`correct copy of Trademark Registration No. 3,238,414 for “FLEX DRIVE”.
`
`Attached to Registrant’s Motion for Summary Judgment as “Exhibit 11” is a true and
`
`correct copy of Trademark Registration No. 3,265,045 for “FLEX-FORCE” with the
`
`specimen of use that was filed therewith.
`
`13.
`
`Attached to Registrant's Motion for Summary Judgment as “Exhibit 12” is a true and
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`correct copy of Trademark Registration No. 3,295,442 for “FLEX FREE".
`
`14.
`
`Attached to Registrant’s Motion for Summary Judgment as “Exhibit 13” is a true and
`
`correct copy of Trademark Registration No. 2,610,766 for “FLEX*SURE”.
`
`15.
`
`Attached to Registrant’s Motion for Summary Judgment as “Exhibit 14” is a true and
`
`correct copy of Trademark Registration No. 3,184,706 for “FLEXACTIVE” with the
`
`specimen of use that was filed therewith.
`
`Attached to Registrant’s Motion for Summary Judgment as “Exhibit 15” is a true and
`
`correct copy of Trademark Registration No. 3,132,567 for “FLEXAJOINT”.
`
`17.
`
`Attached to Registrant’s Motion for Summary Judgment as “Exhibit 16” is a true and
`
`correct copy of Trademark Registration No. 2,3 93,997 for “FLEX-EASE”.
`
`18.
`
`Attached to Registrant’s Motion for Summary Judgment as “Exhibit 17” is a true and
`
`correct copy of Trademark Registration No. 3,445,050 for “i-flex” with the specimen of
`
`use that was filed therewith.
`
`

`
`19.
`
`Attached -to Registrant.’:s Motion for Summary Judgment as “Exhibit. 18.” is a true and
`
`correct copy of Trademark Registration No. 2,780,3 94 for “Tota1FLEX”' with the
`
`specimen of use that was filed therewith.
`
`20.
`
`Attached to Registrantis Motion for Summary Judgment as “Exhibit 19” is a true and
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`correct copy of Trademark Registration No, 2,699,705 for “S'ynflex’-’ with the specimen
`
`of use that was filed therewith.
`
`21.
`
`Attached to Reg_i'st'rant.’s Motion for Summary Judgment as “Exhibit 20” is a true. and
`
`correct copy of Trademark Registration No. 2,203,323 for “SUPER. FLEX” with the
`
`specimen of use that was filed therewith.
`
`22.
`
`Attached to Registrant.’s Motion for Summary Judgment as “Exhibit 21” is a true and
`
`correct copy of Trademark Registration No. 2,65 9,325 for “SO FLEX” with the Specimen
`
`of use that was filed thereiwith.
`
`23.
`
`Attached to‘ Reg__istrant’s Motion for Summary Judgment as-“Exhibit 22" is a true and
`
`correct copy of Trademark Registration No. 2,691,428 for “PUREFLEX-”.
`
`24.
`
`Attached to Registranfs Motion for Sumniary Judgment as “Exhibit 23” is a true and
`
`correct copy‘ of Trademark Registration No. '2,'744,73 5 for “'PHAR'MA_FLEX”.
`
`25.
`
`Attached to Registranfs Motion for Summary Judgment as “Exhibit 24” is a true and
`
`correct copy of Trademark Registration No. 3,355,958 for “NUTRAFLEX” with the
`
`specimen of use that was filed therewith.
`
`

`
`26.
`
`Attached to Registra-nt’.s "Motion for Summaay Judgment as “Exhibit 25-" is a true and
`
`correct copy of Trademark Registration No. 2,838,272 for “Nu-Flex” with the specimen
`
`of use that was filed therewith.
`
`.27.
`
`Attached to RegiSt1‘an_t"s Motion for Summary Judgment as “Exhibit 26” is a true and
`
`correct copy of Trademark Registration No. 2,76'4,'?28 for “MICRO-FLEX” with the
`
`specimen of use that was filed therewith.
`
`2'8.
`
`Attached to Reg_istrant’s Motion for Summary Judgment as “Exhibit. 27” is a true and
`
`correct copy of Trademark Registration No. 3,075,052 for “MEGAFLEX” with the
`
`specimen of use that was filed therewith.
`
`29.
`
`Attached to Registrant"s Motion for Summary Judgment as “Exhibit 28” is a true and
`
`correct copy-of Tradem'arl<- Registration No. 3,209,491 for'“Lubriflex3-” with the specimen
`
`o.f use that was filed therewith.
`
`30.
`
`Attached to Regist1'ant’s Motion for S'umn1ary Judgment as “Exhibit 29” is a true and
`
`correct copy of Trademark Registration No. 2,686,316. for “GLYCO-FLEX.” with the
`
`specimen of use that was filed therewith.
`
`31.
`
`Attached to Re_gistrant’s Motion for Sumrnary Judgment as “Exhibit 30” is a true and
`
`correct copy of Trademark Registration No; 2,818,675 "for “GLUCO-FLEX FORTE”
`
`with the specimen of use that was filed therewith.
`
`3-2.
`
`Attached to Registrant-’s Motion for Summary Judgment as “Exhibit 31" is a true and
`
`correct copy of Trademark Registration No. 3,441,757 for “GINGER_FLEX” with the
`
`‘specimen of use that was filed therewith.
`
`

`
`33.
`
`34.
`
`Attached to Registrant’s Motion for Summary Judgment as “Exhibit 32” is a true and
`
`correct copy of Trademark Registration No. 2,952,755 for “FAST FLEX”.
`
`Attached to Registranfs Motion for Summary Judgment as “Exhibit 33” is a true and
`
`correct copy of Trademark Registration No. 3,051,249 for “E2 FLEX” with the specimen
`
`of use that was filed therewith.
`
`35.
`
`Attached to Registrant’s Motion for Summary Judgment as “Exhibit 34” is a true and
`
`correct copy of Trademark Registration No. 2,789,459 for “CABLI-IFLEX" with the
`
`specimen of use that was filed therewith.
`
`36.
`
`Attached to Registrant’s Motion for Summary Judgment as “Exhibit 35” is a true and
`
`correct copy of Trademark Registration No. 3,462,778 for “BONE FLEX” with the
`
`specimen of use that was filed therewith.
`
`37.
`
`Attached to Registrant’s Motion for Summary Judgment as “Exhibit 36” is a true and
`
`correct copy of Trademark Registration No. 2,695,291 for “ARTI-FLEX” with the
`
`specimen of use that was filed therewith.
`
`38.
`
`Attached to Registrant’s Motion for Summary Judgment as “Exhibit 37” is a true and
`
`correct copy of Trademark Registration No. 3,468,122 for “i-flex”.
`
`39.
`
`Attached to Registrant’s Motion for Summary Judgment as “Exhibit 38” is a true and
`
`co