Trademark Trial and Appeal Board Electronic Filing System. httgj/estta.usQto.gov
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`92052541
`
`Plaintiff
`Direct Access Network, Inc.
`DANIEL R FRIJOUF
`FRIJOUF RUST & PYLE PA
`201 EAST DAVIS BLVD , DAVIS ISLANDS
`TAMPA, FL 33606-3787
`UNITED STATES
`
`dan@frijouf.com
`
`Opposition/Response to Motion
`
`
`
`Daniel R. Frijouf
`
`dan@frijouf.com
`/DRF/
`
`10/06/2011
`
`Petitioner's Opposition to Motion to Amend Answer.pdf ( 100 pages )(3002256
`bytes )
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA434192
`ESTTA Tracking number:
`10/06/2011
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92052541
`Plaintiff
`Direct Access Network, Inc.
`DANIEL R FRIJOUF
`FRIJOUF RUST & PYLE PA
`201 EAST DAVIS BLVD , DAVIS ISLANDS
`TAMPA, FL 33606-3787
`UNITED STATES
`dan@frijouf.com
`Opposition/Response to Motion
`Daniel R. Frijouf
`dan@frijouf.com
`/DRF/
`10/06/2011
`Petitioner's Opposition to Motion to Amend Answer.pdf ( 100 pages )(3002256
`bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of United States Registration No. 2967037, for the mark COLONAIDE
`registered on the Principal Register of the United States Trademark Office.
`
`Direct Access Network, Inc.
`
`Petitioner,
`
`v.
`
`Alaven Consumer Healthcare, Inc.
`
`Registrant.
`
`VVVWWVV
`
`Cancellation No.: 92052541
`
`PETITIONER’S OPPOSITION T0 REGISTRANT’S MOTION
`FOR LEAVE T0 AMEND ANSWER
`
`Petitioner, by and through its attorneys, hereby submits its opposition to
`
`Registrant’s Motion for Leave to Amend its Answer and in support thereof states:
`
`INTRODUCTION
`
`Registrant seeks to amend its Answer in two (2) respects. First, Registrant seeks
`
`leave to identify the real party in interest. Second, Registrant seeks to amend its Answer
`
`to reverse its position on a likelihood of confusion between the parties’ respective marks.
`
`Petitioner does not oppose Registrant’s proposed amendment regarding the real party in
`
`interest. However, Petitioner opposes Registrant rescinding or reversing its position on a
`
`

`
`likelihood of confusion and opposes Registrant’s proposed amendments to Paragraph
`
`Nos. 18, 19, 20, 21 and 30.
`
`PROCEDURAL BACKGROUND
`
`1.
`
`On March 12, 2010, Registrant forwarded a cease and desist letter to
`
`Petitioner demanding that Petitioner cease all use of Petitioner’s mark. Registrant based
`
`its demands on the assertion that Petitioner’s mark and Registrant’s mark are confiisingly
`
`similar. See Exhibit A.
`
`2.
`
`On June 4, 2010, Petitioner filed this Cancellation Proceeding against
`
`Registration No. 2,967,037 and because Petitioner’s Petition was filed prior to the five-
`
`year anniversary for U.S. Trademark Registration No. 2,967,037 (July 12, 2010),
`
`Registrant's registration did not become, and is not, incontestable. See Exhibit B.
`
`3.
`
`On July 17, 2010, Registrant filed a Complaint in the Northern District of
`
`Georgia, Atlanta Division, against Petitioner for trademark infringement and unfair
`
`competition (“Northem District Action”). Registrant based the Northern District Action
`
`on the assertion that Petitioner’s mark and Registrant’s mark are confusingly similar. See
`
`Exhibit C.
`
`4.
`
`On July 19, 2010, Registrant filed its Answer in this Proceeding.
`
`In its
`
`Answer, Registrant unequivocally admits a likelihood of confusion between Petitioner’s
`
`mark and Registrant's mark. See Exhibit D.
`
`5.
`
`On August 20, 2010,
`
`the parties to this Proceeding stipulated to the
`
`suspension of this Proceeding in view of the Northern District Action. See Exhibit E.
`
`6.
`
`On December 8, 2010, and before Petitioner had the opportunity to
`
`Answer, Registrant voluntarily dismissed the Northern District Action. See Exhibit F.
`
`

`
`7.
`
`On February 11, 2011, Petitioner's Motion to Resume this Proceeding,
`
`filed on December 23, 2010, was granted by the Board. See Exhibit G.
`
`8
`
`On September 19, 2011, Registrant filed its Motion for Leave to Amend
`
`its Answer.
`
`LEGAL ARGUMENT
`
`Refitsing leave to amend under FRCP I5(a) is justified upon a showing of undue
`
`delay, bad faith, dilatory motive, prejudice to the opposing party, or the futility of the
`
`proposed amendment.’
`
`1. Undue Delay and Prejudice
`
`Registrant unduly delayed in filing its Motion for Leave to Amend its Answer and
`
`Petitioner has suffered undue prejudice by the delay.
`
`The question of prejudice is largely dependent upon the timing of the motion to
`
`amend, and the burden to explain a delay is on the party that seeks leave to amend}
`
`Furthermore, the Board may deny a motion to amend when the movant knew or should
`
`have known of the facts upon which the amendment is based when the original pleading
`
`was filed, and the movant offers no excuse for the delay.’
`
`In the instant case,
`
`' Foman v. Davis, 371 US. 178, 182. (I962).
`2 TBMP § 507. 02(a) (2d ed. rev. 2004); Trek Bicycle Corporation v. StyIeTrek Limited,
`64 USPQ2d 1540, 1541 (TTAB 2001).
`3 Capital Speakers Inc. v. Capital Speakers Club of Washington D. C. Inc., 41 USPQ2d
`1030 (TTAB 1996); Media Online Inc. v. El Clasi/icado Inc.. 88 USPQ2d 1285, I286
`(TTAB 2008) (motion for leave to amend to add claims of descriptiveness and fraud
`denied; petitioner unduly delayed in adding claims which were based on facts within
`petitioner’s knowledge at time petition to cancel was filed); International Finance
`Corporation v. Bravo Co., 64 USPQ2d 1597, 1604 (TIAB 2002) (motion denied where
`
`

`
`Registrant’s proposed amendment is essentially a prayer to annul an admission and to
`
`insert a new defense into the Answer. Registrant’s requested amendment comes over
`
`fourteen (14) months after the filing of the Answer, and although the record clearly
`
`shows that Registrant had sufficient knowledge to allege such defense and/or through
`
`reasonable effort could have known of the defense, Opposer offers no sufficient
`
`justification as to why Registrant failed to raise this new defense at the time of filing its
`
`Answer.
`
`Registrant’s only justification for
`
`its delay in seeking amendment
`
`is that
`
`Registrant seeks to “clarify its position on the complex issues involved in this
`
`proceeding...particularly with respect to widespread and longstanding third party use of
`
`the marks identical to Petitioner’s alleged mark...." Petitioner submits that Registrant’s
`
`explanation does not justify Registrant’s undue delay for at least two (2) reasons. First,
`
`Registrant is not seeking to clarify its position but is seeking to retract, negate or annul its
`
`unqualified admission of a likelihood of confusion between the parties’ respective marks.
`
`Second, all of the alleged facts fonning the basis for the new defense were known to
`
`Registrant prior to the filing of Registrant’s Answer, and were known at least as early as
`
`July 16, 2010, when Registrant filed the Northern District Action.
`
`In Paragraph No. 26
`
`of Registrant’s Northern District Action Complaint, Registrant asserts the existence of “a
`
`myriad of prior third-party users of the identical or nearly identical trademarks (either
`
`COLON-AID or COLON AID) for directly competing colon cleansing goods, marketed
`I
`
`and sold to identical audiences.’
`
`Paragraph No. 27 of Registrant’s Complaint and
`
`although discovery still open, movant provided no explanation for two-year delay in
`seeking to add new claim).
`
`

`
`Paragraph Nos. 26 and 27 of Registrant’s Answer in this Proceeding also set forth
`
`identical or equivalent allegations.
`
`As evidenced by Registrant’s Northern District Action Complaint and its Answer
`
`in this Proceeding, Registrant clearly knew of the alleged “widespread and longstanding
`
`third party use.” Notwithstanding, Registrant unequivocally asserted, in its Complaint
`
`and Answer,
`
`that Registrant’s mark and Petitioner’s mark are confusingly similar.
`
`Registrant has offered no valid reason for its delay and Registrant’s undue delay has
`
`caused unfair prejudice to Petitioner. As a result, Registrant’s motion should be denied.
`
`2. Futility
`
`Registrant’s admissions against interest render its proposed Amendment futile.
`
`It
`
`is well established that statements in pleadings may have evidentiary value as admissions
`
`against interest by the party that made them.‘ Also, where the moving party seeks to add
`
`4 TBMP § 704.06(a); Saul Zaentz Co. v. Bumb, 95 USPQ2d 1723. I 725 n.7 (TTAB
`2010) (assertions in answer not evidence unless supported by evidence introduced at trial
`or except as admission against interest); Maremont Corp. v. Air Lift C0,, 463 F.2d 1114,
`I 74 USPQ 395, 396 n.4 (CCPA I972) (pleadings in prior proceeding available as
`evidence, although not conclusive evidence, against the pleader); Bakers Franchise Corp.
`v. Royal Crown Cola Co., 404 F.2d 985, 160 USPQ 192, 193 (CCPA 1969) (admission
`contained in pleading of one action may be evidence against pleader in another action);
`Kellogg Co. v. Pack'Em Enterprises Inc., 14 USPQ2d 1545, 1548 n.6 (TTAB I990)
`(pleadings have evidentiary value only to the extent they contain opponent’s admissions
`against interest), affd, 951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991); Litton Business
`Systems, Inc. v. J. G. Furniture Co., 196 USPQ 711, 714 (TTAB I 977) (admissions in
`answer regarding meaning of mark); Brown Co. v. American Stencil Manufacturing Co.,
`180 USPQ 344, 345 n.5 (TIAB I973) (applicant having admitted in its answer that it did
`not use mark prior to a certain date was estopped from later contending that it has an
`earlier date of use).
`
`

`
`a new claim or defense, and the proposed pleading thereof would serve no useful
`
`purpose, the Board normally will deny the motion for leave to amends
`
`In its Complaint in the Northern District Action, Registrant unequivocally asserts
`
`a likelihood of confusion between Petitioner’s mark and Registrant’s mark (Exhibit C 1|
`
`15, 16, 17, 18 & 19). Moreover, Registrant unequivocally admits factual determinations
`
`which fully establish a likelihood of C0l'lfl.lSi0n between the marks (Exhibit C 1] 15).
`
`In
`
`Paragraph 15 of the Complaint, Registrant admits that Petitioner’s COLON-AID mark is
`
`“effectively identical
`
`to Plaintiffs Colonaide® mark in appearance,
`
`sound and
`
`commercial impression.” Moreover, Registrant admits the parties’ respective “intestinal
`
`cleanser goods are directly competing and are marketed and sold to identical audiences."
`
`Registrant makes identical or equivalent admissions in its March 12, 2010 cease and
`
`desist letter (Exhibit A 1[ 4).
`
`Accordingly, in its pleadings, Registrant admits that the respective parties’ marks
`
`are effectively identical, the parties’ goods are the same, the parties’ goods directly
`
`compete with each other and the parties’ customers are the same. Theses factual
`
`admissions serve as admissions against interest and render Registrant’s Motion to Amend
`
`firtile. These admissions render the present motion futile because the admitted facts
`
`clearly and fully establish that confusion between the respective parties’ marks is
`
`inevitable.“ Other Federal Courts have also indicated that a different standard applies to
`
`5 Octocom Systems Inc. v. Houston Computer Services Inc., 918 F.2d 93 7, 16 USPQ2d
`I 783 (Fed. Cir. 1990) (motion to amend to restrict goods would serve no purpose).
`6 Reflange Inc. v. R-Con International, 1 7 USPQ2d 1125, I131 (TTAB I990) (confusion
`is inevitable in situations where identical marks are used in connection with the same or
`
`substantially similar goods); Turner v. Hops Grill & Bar, Inc., 52 USPQ2d 1310 (TTAB
`1999) (Even if proven, laches will not prevent cancellation where the marks and goods or
`services of the parties are substantially similar and it is determined that confusion is
`
`

`
`determine the likelihood of confiision between products which are directly competitive
`
`rather than closely related.7
`
`In short, Registrant has admitted all the material facts
`
`necessary to find a likelihood of confusion in this case, and Registrant’s motion is
`
`rendered futile in light thereof‘.
`
`CONCLUSION
`
`Registrant has so firmly taken the position that the respective parties’ marks are
`
`confusingly similar as to amount to an admission against interest. First, Registrant
`
`forwarded a cease and desist letter to Petitioner demanding that Petitioner cease all use of
`
`its confusingly similar mark.
`
`Second, Registrant commenced a Federal
`
`trademark
`
`infringement and unfair competition action against Petitioner seeking to enjoin
`
`inevitable); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, I 77 USPQ 563 (CCPA
`I973)(Chief among the likelihood of confusion factors are the similarity of the marks and
`the similarity of the goods or services); In re Opus One, Inc., 60 USPQ2d 1812, I815
`(TTAB 2001),' In re Opus One, Inc.. 60 USPQ2d 1812 (TTAB 2001) (the greater the
`degree of similarity between the marks, the lesser the degree of similarity between the
`goods which is required to support a finding of likelihood of confusion); In re Concordia
`International Forwarding Corp., 222 USPQ 355 (TTAB I983); Amcor, Inc. v. Amcor
`Industries, Inc., 210 USPQ 70 (TTAB 1981); Real Estate One, Inc. v. Real Estate 100
`Enterprises Corp., 212 USPQ 957 (TTAB 1981) (Where the goods of the parties are
`directly competitive, the degree of similarity in the respective marks necessary to find a
`likelihood of confusion is less than if the goods at issue were not as closely related); ECI
`Division ofE-Systems, Inc. v. Environmental Communications Inc., 207 USPQ 443.
`gTTAB I980).
`Official Airline Guides, Inc. v. Goss, 6 F.3d 1385, 1391 (9th Cir. 1993) (non-exclusive
`set of factors considered in making ultimate factual determination of likelihood of
`confusion when products are related; when products are directly competitive only
`similarity of marks is considered); Champions GolfClub, Inc. v. The Champions Golf
`Club, Inc., 78 F.3d 1111, 1118 (6th Cir. 1996) (confusion is likely if marks are
`sufficiently similar and products or services are in direct competition); Fisons
`Horticulture, Inc. v. Vigoro Industries, Inc., 30 F.3d 466, 472 (3d Cir. 1994) ("'Where the
`trademark owner and the alleged infringer deal in competing goods or services, the court
`need rarely look beyond the mark itself .
`.
`. the court focuses on the marks to determine
`whether they are confusingly similar"') (internal citations omitted); Maier Brewing Co. v.
`Fleischmann Distilling Corp., 390 F.2d 117 (9th Cir. 1968).
`
`

`
`Petitioner's confusingly similar mark. Third, Registrant’s Answer in this Proceeding
`
`unequivocally asserts that a likelihood of confusion exists between the parties’ respective
`
`marks.
`
`Now, after an undue delay, Registrant seeks to annul its admissions based on
`
`alleged facts which were known to Registrant prior to the filing of Registrant’s original
`
`Answer. Registrant’s unjustified and undue delay in reversing its position on the issue of
`
`a likelihood of confusion results in unfair surprise and prejudice to Petitioner and
`
`Registrant’s Motion for Leave should be denied. Lastly, Registrant’s factual admissions
`
`in these matters constitute admissions against interest and render Registrant’s proposed
`
`new defense futile. As a result, Registrant’s Motion for Leave to Amend its Answer
`
`should be denied as to Paragraph Nos. 18, 19, 20, 21 and 30.
`
`For the foregoing reasons, Petitioner respectfully requests that the Board deny
`
`Registrant's Motion for Leave to Amend Registrant’s Answer.
`
`10-6-2011
`
`Date
`
`Frijouf, Rust & Pyle, P.A.
`
`O9
`
`Daniel R. Frijouf
`Frijouf, Rust & Pyle, P.A.
`201 East Davis Blvd
`
`Tampa, Florida 33606
`Tel: 813.254.5100
`Fax: 813.254.5400
`
`frijouf@fi1'jouf.com
`dan@fi'ijouf.com
`Attorneys for Petitioner
`
`

`
`NOTICE OF ELECTRONIC MAILING
`
`I hereby certify that this correspondence is being electronically submitted with the
`United States Patent and Trademark Office, Trademark Trial and Appeal Board, Attn:
`TTAB, this 6th day of October 2011.
`
`Daniel R. Frijouf
`Frijouf, Rust & Pyle, P.A.
`201 East Davis Blvd
`
`Tampa, Florida 33606
`Tel: 813.254.5100
`Fax: 813.254.5400
`
`fi'ijouf@frijouf.com
`dan@fn'jouf.com
`Attomeys for Petitioner
`
`CERTIFICATE OF SERVICE
`
`It is hereby certified that this correspondence was fumished by Electronic Mail, with
`consent, upon Ashish D. Patel of Thompson Hine LLP at Ash.Pate1@thompsonhine.com,
`this 6th day of October 2011.
`
`Daniel R. Frijouf
`
`

`
`EXHIBIT A
`
`EXHIBIT A
`
`
`
`

`
`u—-1—
`NE
`BRUSSELS
`CLEVELAND
`DAYTON
`WASHINGTON4 D.C.
`—-2-2
`
`COLUMBUS
`
`NEVA’YORK
`
`ATLANTA
`
`ClNCiNNATI
`
`
`
`Via Federal Ex ress Standard Overni ht Delive .'
`
`March 12, 2010
`
`Direct Access Network, Inc.
`d/b/a Vaxa International
`
`Attention: Mr. William H. Harper
`600 North Westshore Boulevard
`Suite 800
`
`Tampa, Florida 33609
`
`Direct Access Network, Inc.
`c/o its Registered Agent, Mr. Victor W. 1-Iolcomb
`106 South Tampania Avenue
`Suite 200
`
`Tampa, Florida 33606
`
`Re:
`
`Notice of Trademark Infringement, Diversion of Trade, and Unfair Competition
`Demand to Cease and Desist
`
`Sirs:
`
`in
`Please be advised that we represent Alaven Consumer Healthcare, Inc. (“Alaven”),
`regard to legal matters, and, of particular relevance herein, as to all intellectual property matters
`of and relating to Alaven’s Colonaide® intestinal cleanser product.
`
`Alaven is the owner of the entire right, title and interest, together with all associated
`goodwill, in and to the Colonaide® trademark. Specifically, the Colonaide® trademark is the
`subject of United States Registration No. 2,967,037,
`in International Class 005 for herbal
`supplement intestinal cleansers, and which federal trademark registration was duly and legally
`issued, is valid, and subsists in full force and effect.
`
`Yet more, the Colonaide® trademark has been the subject of: (a) continuous, widespread
`and extensive use, ('0) national network television advertising spots '(e.g., during the television
`shows of "Live with Regis and Kelly", "Jeopardy!", "Wheel of Fortune", "Who Wants to Be a
`Millionaire", and "The Dr. Oz Show"), (c) commercial radio advertisements, and ((1) Internet
`advertising. As a result of the ubiquity and predominance of Alaven’s Colonaide® trademark
`within the marketplace,
`together with Alaven’s significant
`investment of its resources,
`the
`Colonaide® trademark, and the enormous goodwill associated therewith, are of inestimable
`value to Alaven.
`
`It has come to our attention that you are advertising for sale an intestinal cleanser product
`denominated under the "Colon-Aid" mark.
`In that regard, your offending "Colon-Aid" mark so
`resembles Alaven’s Colonaide® trademark, as to be likely to cause confusion, to cause mistake,
`or to deceive -- and, particularly so, given that your intestinal cleanser goods are directly
`
`
`THOMPSON H l N E 1L1"
`ATTORNEYS AT LAW
`
`One Atlantic Center, Suite 2200
`1201 West Peachtrcc Street
`Atlanta, Georgia 30309-3449
`
`www.ThornpsonHine.com
`Phone 404.541.2900
`Fax 404.541.2905
`
`

`
`THOMPSON
`
`In short, your
`competing to those of Alaven, and are marketed and sold to identical audiences.
`offending "Colon-Aid" mark is effectively identical
`to Alaven’s Colonaide® mark in
`appearance, sound and commercial impression. Accordingly, your use of the nearly identical,
`and thus confusingly similar, "Colon-Aid" mark constitutes federal trademark infringement, in
`violation of 15 U.S.C. § 1114(1) of the Lanham Act, and yet fiirther constitutes diversion of trade
`and unfair competition, in violation of 15 U.S.C. § 1125(a).
`
`Please be advised that your serial and continuing violations of the Lanham Act, as
`identified herein, are punishable, inter alia, by injunctive relief, the grant of monetary sanctions
`comprising profits and/or damages, increased damages for willful and/or malicious conduct (i.e.,
`for an “exceptional case”), and attorneys’ fees and costs.
`
`Of course, and in addition to the foregoing, Alaven would be entitled to fiirther remedies
`for your violation of a series of pendant state law counts, including, inter alia, deceptive trade
`practices and state unfair competition.
`
`However, and despite the ready legal recourse to which Alaven is entitled, Alaven would
`solicit your cooperation in the amicable resolution of this matter —- and particularly under a
`proposal that would function to preserve the judicial resource and, perhaps of importance to you,
`the resource of your company.
`
`As a matter of primacy, and as condition precedent to a full closure of this dispute,
`Alaven demands that you (and your affiliates, officers, employees, agents, and other persons or
`entities acting in concert with you or at your direction) immediately cease and desist from any
`and all further use of the offending "Colon-Aid" mark (whether on your product, website(s),
`marketing materials, etc.). To that end, and unless we receive,
`in hand, and no later than
`March 22, 2010, written confirmation and unambiguous evidence of your compliance with this
`foremost demand, we will have been forced to terminate any further amicable discussion of this
`matter, and to thus regrettably appeal to the very resource that this courtesy letter seeks to avoid.
`
`But, and as you can appreciate, a prompt, full and final resolution of this dispute would be
`in the best interest of all parties. Accordingly, and upon receipt of written confirmation and
`evidence of your timely compliance, Alaven would thereafter require an appropriate settlement
`agreement memorializing closure of these issues.
`
`Respectfully,
`Thompson Hine LLP
`
`Ash D. Patel
`
`

`
`EXHIBIT B
`
`EXHIBIT B
`
`
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK‘ TRIAL AND APPEAL BOARD
`
`In the matter of United States Registration No. 2967037, for the mark COLONAIDE
`registered on the Principal Register of the United States Trademark Office.
`
`Direct Access Network, Inc.
`
`Petitioner,
`
`v.
`
`Alaven Consumer Healthcare, Inc.
`
`Registrant.
`
`€%%&/\-/\-/Q/\J§
`
`Cancellation No.:
`
`PETITION FOR CANCELLATION
`
`Petitioner, Direct Access Network, Inc., a corporation of the State of Florida, with
`
`a business address of 600 N. Westshore Blvd Suite 800 Tampa, Florida 33609, believes
`
`that it is, and will continue to be, damaged by the registration of the mark of United
`
`States Registration No. 2967037, registered on the Principal Register on July 12, 2005,
`
`for herbal supplements in the nature of an intestinal cleanser in International Class 005,
`
`and hereby petitions to cancel said registration with respect to all of the listed goods.
`
`As grounds for this Petition, it is alleged:
`
`The Trademark Registration
`
`1.
`
`Upon infonnation and belief, Registrant, Alaven Consumer Healthcare,
`
`Inc. is a Delaware corporation having its principal place of business at 200
`
`North Cobb Parkway Suite 432 Marietta, Georgia 30062.
`
`

`
`On May 27, 2004, Registrant filed United States Application Serial No.
`
`78425866 for
`
`the mark COLONAIDE in connection with herbal
`
`supplements in the nature of an intestinal cleanser in International Class
`
`005.
`
`United States Application Serial No. 78425866 matured into United States
`
`Registration No. 2967037 on July 12, 2005.
`
`United States Registration No. 2967037 claims a date of first use of the
`
`mark in intrastate commerce as of February 7, 2004.
`
`United States Registration No. 2967037 claims a date of first use of the
`
`mark in interstate commerce as of May 20, 2004.
`
`Petitioner’s Prior and Continuous Use
`
`Petitioner does business as VAXA International and is a manufacturer and
`
`seller of high quality homeopathic medicinals, vitamins, supplements and
`
`other herbal and nutritional products which include, but are not limited to,
`
`homeopathic medicinal, herbal and nutritional supplements for colon
`
`cleansing._
`
`At
`
`least as early as December 31, 1996, Petitioner’s Predecessor in
`
`Interest, VAXA International, Inc. a Delaware corporation having a place
`
`of business at 6370 Nancy Ridge Road, Suite 101 San Diego, California
`
`92121 (hereinafter “Predecessor in Interest”), began using the COLON-
`
`AID mark, or legal equivalent, in interstate commerce in connection with
`
`

`
`homeopathic medicinal, herbal and nutritional supplements for colon
`
`cleansing (hereinafter Petitioner’s goods”).
`
`On or about June 25, 1999, Petitioner purchased VAXA International,
`
`Inc., including all goodwill and all marks associated therewith, including
`
`all right,
`
`title and interest in and to the COLON-AID mark and the
`
`goodwill symbolized by the COLON-AID mark.
`
`The interstate use of the mark COLON-AID by Petitioner, including its
`
`Predecessor in Interest, in connection with Petitioner’s goods, has been
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`continuous from at least as early as December 31, 1996 to the present date.
`
`"Petitioner, including its Predecessor in Interest, has continuously used the
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`mark COLON-AID in connection with Petitioner’s goods long prior to the
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`Application filing date of U.S. Registration No. 2967037 and long prior to
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`the alleged dates of first use of Registrant’s mark.
`
`Petitioner is, and has been for many years, engaged in the extensive
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`advertising and sale of Petitioner’s goods under the mark COLON-AID.
`
`’By reason of the long and continuous use and promotion of the mark
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`COLON-AID, on or in connection with Petitioner’s goods, long prior to
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`Registrant’s Application filing date and Registrant’s alleged dates of first use
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`of Registrant’s mark, Petitioner has become the owner of the COLON-AID
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`mark and has acquired strong common law trademark rights in and to the
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`COLON-AID mark.
`
`10.
`
`ll.
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`12.
`
`

`
`13.
`
`14.
`
`15.
`
`16.
`
`17.
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`Petitioner’s COLON-AID mark
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`is
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`distinctive
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`and
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`has
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`acquired
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`distinctiveness long prior to Registrant’s Application filing date and the
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`alleged dates of first use of Registrant’s mark.
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`Petitioner has consistently and continuously, over a long period of time,
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`invested significant resources into the development of high quality goods
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`sold under the COLON-AID mark. Petitioner’s goods are well-respected
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`in the health industry and by and among its customers for a variety of
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`tangible and intangible reasons, including Petitioner’s adherence to quality
`
`standards that ensure high quality goods. Petitioner’s solid and favorable
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`reputation, goodwill, and name recognition are and have been derived
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`from its consistent commitment to quality, as well as the consumer’s
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`satisfaction. The COLON-AID mark has been and is a valuable and
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`important component of Petitioner’s reputation and goodwill, and is
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`therefore an important asset of immeasurable value.
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`Petitioner is the owner of United States Trademark Application Serial No.
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`85050592 for
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`the mark COLON-AID filed with the United States
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`Trademark Office on May 28, 2010.
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`Likelihood of Confusion
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`Petitioner has continuously used the COLON-AID mark on goods which are
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`related or identical to the goods recited in Registrant’s registration.
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`Petitioner’ts goods and Registrant’s goods are likely to be purchased and
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`used by the same class of purchasers.
`
`

`
`I8.
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`The mark COLONAIDE allegedly used by Registrant in association with
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`herbal supplements in the nature of an intestinal cleanser, is confusingly
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`similar in appearance, sound, connotation and commercial impression to
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`Petitioner’s COLON-AID mark, used in association with Petitioner’s goods.
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`19.
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`The alleged use of the mark COLONAIDE by Registrant, in association
`
`20.
`
`21.
`
`22.
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`with herbal supplements in the nature of an intestinal cleanser, is likely to
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`cause confirsion and mistake on the part of consumers as to the source and
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`origin of such goods, and Petitioner is and will continue to be damaged by
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`said likelihood of confusion.
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`Registrant has conceded that the marks COLON-AID and COLONAIDE are
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`confusingly similar. Please see Exhibit A attached hereto.
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`United States Registration No. 2967037 furthers a likelihood of confusion
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`between the respective marks and deceives the public into believing that the
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`goods offered by Registrant are actually offered, developed and/or endorsed
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`by the Petitioner.
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`Maintenance of U.S. Registration No. 2967037 on the Principal Register of
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`the U.S. Trademark Office causes and will continue to cause confiision
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`and uncertainty in the industry and handicap and damage the legitimate
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`present and future activities of Petitioner, placing Registrant in a position
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`to raise doubts as to the right of the Petitioner to use its COLON—AID
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`mark in connection with Petitioner’s goods. As a result, petitioner will
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`eventually be deprived of all distinctiveness, since Registrant’s use will
`
`

`
`blur Petitioner’s mark and goods identified with said mark, such that the
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`association with which said mark has come to convey will be tarnished.
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`Descriptiveness
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`23.
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`As an alternative ground for cancellation, Registrant’s mark is merely
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`descriptive of Registrant’s goods and has not acquired distinctiveness.
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`Petitioner has standing to raise the descriptiveness issue because Petitioner
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`is engaged in the manufacture and sale of the same or related goods as
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`those listed in Registrant’s registration.
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`24.
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`For the above-stated reasons, Petitioner believes that it is and will continue
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`to be damaged by the Registration of Registrant’s mark, and therefore asks
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`that said registration be cancelled.
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`Wherefore, Petitioner respectfully requests that United States Registration No.
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`2967037 be cancelled in its entirety, and this Petition for Cancellation be sustained.
`
`Petitioner appoints Daniel R. Frijouf, Robert F. Frijouf and David A. Frijouf,
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`along with the law firm of Frijouf, Rust & Pyle, P.A. to transact all business on its behalf
`
`in connection with this cancellation proceeding.
`
`VERIFICATION OF PETITION FOR CANCELLATION
`
`I, William H. Harper, aflirm the following to be true under penalties of perjury and
`
`state as follows:
`
`1.
`
`2.
`
`3.
`
`I am the CEO of Direct Access Network, Inc. the Petitioner in this action;
`
`I have read the Petition for Cancellation and know the contents thereof;
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`As to the allegations stated to be true, I verily believe said allegations are
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`true; and
`
`

`
`4.
`
`As to the allegations stated on information and belief, I verily believe said
`
`allegations to be true.
`
`Date
`
`
`
`Direct Access Network, Inc.
`
`M“//
`
`William H. Harper, CEO
`
`Frijouf, Rust & Pyle, P.A.
`
`
`
`Robert F. Frij ouf
`Frijouf, Rust & Pyle, P.A.
`201 East Davis Blvd
`
`Tampa, Florida 33606
`Tel: 813.254.5100
`Fax: 813.254.5400
`
`frijouf@frijouf.com
`dan@frijouf.com
`Attorneys for Petitioner
`
`Deposit Account
`
`Please charge our account any deficiency in fees or credit any over payment arising
`out of this Petition to Deposit Account No. 06-2120.
`J
`/1
`
`
`
`

`
`NOTICE OF ELECTRONIC MAILING
`
`I hereby certify that this correspondence is being electronically submitted with the
`United States Patent and Trademark Office, Trademark Trial and Appeal Board, Attn:
`‘Sow-é
`,2o10.
`TTAB, this 4/ day of
`
`an’ 1
`
`Frijouf, Rust & Pyle, P.A.
`201 East Davis Blvd
`
`Tampa, Florida 33606
`Tel: 813.254.5100
`Fax: 813.254.5400
`
`fi'ijouf@frijouf.com
`dan@frijouf.com
`Attorneys for Petitioner
`
`CERTIFICATE OF SERVICE
`
`It is hereby certified that this correspondence was furnished by United States Mail
`postage prepaid upon Alavcn Consumer Healthcare, Inc. of 200 North Cobb Parkway
`Suite 432 Marietta Georgia 30062, this
`'7’ day of
`j.v\"¢
`2010.
`
`

`
`EXHIBIT A
`
`

`
`THOMPSON ........
`
`CINCINNATI
`
`COLUMBUS
`
`NEW YORK
`
`BRUSSELS
`
`CLEVELAND
`
`DAYTON
`
`WASHINGTON. D.C.
`
`
`
`Via Federal Ex ress Standard Ovemi ht Delive :
`
`March 12, 2010
`
`Direct Access Network, Inc.
`d/b/a Vaxa lntemational
`
`Attention: Mr. William H. Harper
`600 North Westshore Boulevard
`Suite 800
`
`Tampa, Florida 33609
`
`Direct Access Network, Inc.
`do its Registered Agent, Mr‘. Victor W. Holcomb
`106 South Tampania Avenue
`Suite 200
`
`Tampa, Florida 33606
`
`Re:
`
`Notice of Trademark Infiingement, Diversion of Trade, and Unfair Competition
`Demand to Cease and Desist
`
`Sirs:
`
`in
`Please be advised that we represent Alaven Consumer Healthcare, Inc. (“Alaven”),
`regard to legal matters, and, of particular relevance herein, as to all intellectual property matters
`of and relating to Alaven’s Colonaide® intestinal cleanser product.
`
`Alaven is the owner of the entire right, title and interest, together with all associated
`goodwill, in and to the Colonaide® trademark. Specifically, the Colonaide® trademark is the
`subject of United States Registration No. 2,967,037,
`in International Class 005 for herbal
`supplement intestinal cleansers, and which federal trademark registration was duly and legally
`issued, is valid, and subsists in full force and effect.
`
`Yet more, the Colonaide® trademark has been the subject of: (a) continuous, widespread
`and extensive use, (b) national network television advertising -spots ‘(e.g., during the television
`shows of "Live with Regis and Kelly", "leopardyl", "Wheel of Fortune", "Who Wants to Be a
`Millionair