Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA473122
`ESTTA Tracking number:
`05/17/2012
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`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92052897
`Plaintiff
`Thomas Sköld
`ARTHUR E JACKSON
`MOSER IP LAW GROUP
`1030 BROAD STREET, SUITE 203
`SHREWSBURY, NJ 07702
`UNITED STATES
`docketing@mtiplaw.com
`Motion for Summary Judgment
`Arthur E Jackson
`ajackson@mtiplaw.com, docketing@mtiplaw.com
`/Arthur E Jackson/
`05/17/2012
`PetitionersBriefPublic.pdf ( 16 pages )(422489 bytes )
`DeclarationArthurEJackson.pdf ( 3 pages )(333222 bytes )
`ExhibitsToAEJDeclarationPUBLIC.pdf ( 100 pages )(4929316 bytes )
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`Proceeding
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`PUBLIC
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`In the Matter of Registration Nos. 2985751; and 3394514
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`Dated: August 16, 2005 & March 11, 2008, Respectively
`______________________________________
`Thomas Sköld,
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`Petitioner,
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`v.
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`) Cancellation No. 92052897
`Galderma Laboratories, Inc.,
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`Registrant
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`______________________________________ )
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`BRIEF IN OPPOSITION TO REGISTRANT'S MOTION
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`FOR PARTIAL SUMMARY JUDGMENT
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`Petitioner files herewith a Brief in Opposition to Registrant's Motion for Partial Summary
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`Judgment, filed April 27, 2012, and served by mail.
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`Registrant's Motion and the Facts There Asserted Do Not Establish
`Registrant's Use of the Class 5 Registration, No. 2985751
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`Registrant's papers have well established that Cetaphil Restoraderm Skin Restoring
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`Moisturizer is a good…, well, moisturizer. We have a bit of sponsored research in a minor
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`medical journal that asserts that it can be used for long-term management of atopic dermatitis, a
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`form of eczema.1 We have a marketing executive that asserts the moisturizer and a Cetaphil
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`Restoraderm Skin Restoring Body Wash "were specifically designed to work together as a daily
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`1 See, Declaration of Arthur E. Jackson ("Jackson Decl.") at ¶5, Exh. A, showing that the
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`National Eczema Association denotes atopic dermatitis as a form of eczema.
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`regimen to provide continuous relief for those struggling with atopic dermatitis and/or eczema-
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`prone skin." The evidence provided in Registrant's filing shows that its Restoraderm articles are
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`much the same for moisturizing as other available moisturizers. The evidence does not show use
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`in Class 5 of Therapeutic Skin Care Preparations and Treatment of Skin Disorders.
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`TMEP §1402.03 states that "a skin lotion that is medicated should be classified in Class
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`5, and the identification should indicate that the product is medicated in order to justify its
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`classification in Class 5 rather than in the more commonly understood and assigned Class 3"
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`(emphasis added). So, if a skin lotion is a drug, it can be classified in Class 5, if merely a skin
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`lotion, it is Class 3. What is medicated is established by the United States Food and Drug
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`Administration ("FDA"). Registration of a non-medicated lotion in Class 5 is even more
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`inappropriate here, where the registration in question is for Therapeutic Skin Care Preparations
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`and Treatment of Skin Disorders. If the products are not sold as therapeutic (in Class 5) and as a
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`treatment for skin disorders, the registration is no longer being used.
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`According to Webster's New World Dictionary, Third College Edition, 1988, the
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`meaning of "lotion" is "a liquid preparation used, as on the skin, for cleansing, soothing, healing,
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`etc." Jackson Decl. at ¶6, Exh. B. Petitioner does not think that this definition, taken non-
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`selectively from the first and only source examined, should be in dispute. The definition even
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`comports with TMEP §1402.03 in acknowledging that some lotions may be medicated. A review
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`of Exhibit A of the Registrant's Kee Declaration establishes that Cetaphil Restoraderm Skin
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`Restoring Moisturizer and Cetaphil Restoraderm Skin Restoring Body Wash are such liquid
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`formulations for cleansing and soothing. They are lotions, more specifically, skin lotions.
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`As will be clearly elucidated below, the Food, Drug and Cosmetic Act ("FD&C Act")
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`establishes that if an article treats a disease it is a drug (i.e., medicated). If an article is promoted
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`as treating a disease, it is a new drug. If a new drug, it must be approved by the FDA, or it is
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`illegal. The FDA "estimates that in the United States today perhaps as many as several thousand
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`drug products are marketed illegally without required FDA approval." See, CPG Sec. 440.100, a
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`publication of the FDA. Jackson Decl. ¶7, Exh. C. It may be that Cetaphil Restoraderm
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`moisturizer is marketed illegally. However, in its circumspect labeling and presentations made to
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`consumers, Registrant clearly seeks to avoid making the assertion of treating disease. i.e., of
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`providing a therapeutic. It is its public representations that should determine whether Registrant
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`is using the Class 5 registration.
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`Petitioner submits that it is the public marketing of the lotion as a drug that justifies its
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`inclusion in Class 5 for Therapeutic Skin Care Preparations and Treatment of Skin Disorders. A
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`trademark identifies the goods. If a lotion is not sold as a drug, then classification of Therapeutic
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`Skin Care Preparations and Treatment of Skin Disorders in Class 5 mis-identifies the goods. If
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`the lotion is publicly sold as not-a-drug, and privately sold as, wink, wink, a drug, then it is
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`against the public interest for a Lanham Act registration to be used to perpetuate such an
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`illegality. Such public teachings that an article is not-a-drug, accompanied by private teachings
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`that it is a drug, are also deceptive or scandalous in violation of Section 2(a) of the Lanham Act
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`(15 U.S.C § 1052(a)). Petitioner submits that a lotion must be publicly marketed as a drug to
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`merit its registration in Class 5, especially as Therapeutic Skin Care Preparations and Treatment
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`of Skin Disorders. If the goods asserted to be sold under the 2985751 registration are not so
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`marketed, the mark in Class 5 is abandoned.
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`According to FD&C Act §201(g)(1) (21 U.S.C. §321(g)(1)), the term "drug" means,
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`among other things, "(B) articles intended for use in… treatment, or prevention of disease in
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`According to FD&C Act §201(p) (21 U.S.C. §321(p)), a "new drug" is "[a]ny drug… the
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`composition of which is such that such drug is not generally recognized, among experts qualified
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`by scientific training and experience to evaluate the safety and effectiveness of drugs, as safe and
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`effective for use under the conditions prescribed, recommended, or suggested in the labeling
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`thereof…" The statute goes on to exempt certain drugs on the market in 1938, a provision not
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`relevant to the current case. New drugs must be approved under Section 505 of the FD&C Act
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`(21 U.S.C. §355).
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`As we will see, the "generally recognized" as safe and effective exception to being a new
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`drug is so narrow as to be effectively nonexistent. Assuming the narrowness of the exception for
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`the moment, then if an article treats a disease, and is "prescribed, recommended, or suggested" as
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`such in its labeling or other marketing, it is a new drug requiring regulatory approval for that use.
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`In United States v. 50 Boxes More or Less, the Court of Appeals for the First Circuit
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`quotes the Supreme Court on the narrowness of the "generally recognized" exception:
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`the hurdle of "general recognition" of effectiveness requires at least
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`"substantial evidence" of effectiveness for approval of an NDA [i.e., "new
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`drug" application]. In the absence of any evidence of adequate and well-
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`controlled investigation supporting the efficacy of [a drug], a fortiori, [the
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`drug] ... would be a "new drug" subject to the [new drug] provisions of the Act.
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`909 F.2d 24, 27-28 (1st Cir. 1990), quoting, Weinberger v. Hynson, Westcott & Dunning, Inc.,
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`412 U.S. 609 (1973). In other words, its not some stray funded publication in a minor journal, or
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`the opinion of a marketing executive, it is only science sufficient to support a new drug
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`application at the Food and Drug Administration that would support that an article is generally
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`recognized as safe and effective so as to not be a regulated new drug. Nothing in Registrant's
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`filing supports an assertion that these kinds of extensive studies have been conducted.
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`The Registrant's filing emphasizes the marketing of skin barrier restoration and hydration
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`properties. This is a fancy way to say the article is a moisturizer. In other words, it is a skin
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`lotion. The evidence provided with Registrant's filing shows that the article works about the
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`same as other moisturizers. Fancy words do not transform the skin lotion to a medicine.
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`Promoting, to the public, a skin lotion as a therapeutic makes it a medicine. Promoting in this
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`way without a regulatory approval makes the skin lotion an illegal medicine. Fortunately, for
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`preserving legality, Registrant's public marketing pronouncements do not sell a medicine.
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`Unfortunately, for Registrant, the total lack of any indication of selling or distributing as a
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`medicine indicates abandonment.
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`The Registrant's filing argues on dictionary definitions. At one time, panels of the Court
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`of Appeals for the Federal Circuit would use "objective" dictionary meanings to construe terms
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`broadly or narrowly, without sufficient regard to context. This practice was strongly proscribed
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`in Phillips v. AWH Corporation, 415 F.3d 1303 (Fed. Cir. 2005)(en banc). In the narrowing
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`direction, under the old practice, one case yielded the ludicrously convoluted reasoning
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`summarized to a bar association group as follows:
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`Jackson Decl. ¶8, Exh. D. Smart jurists were in this case led astray by the game of dictionary.
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`One can play this game until a dog is a cat, or a plain skin lotion is a medicine. The game of
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`dictionary is a meaningless exercise without a strong tie to context, and a very cautious and
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`skeptical review.
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`While Phillips is a patent case, its lessons on the limitations of parsing dictionaries are
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`universal. As stated in Phillips:
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`Dictionaries, by their nature, provide an expansive array of definitions.
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`General dictionaries, in particular, strive to collect all uses of particular
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`words, from the common to the obscure. By design, general dictionaries
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`collect the definitions of a term as used not only in a particular art field,
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`but in many different settings.
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`Phillips at 1321. As such, "[i]ndiscriminate reliance on definitions found in dictionaries can often
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`produce absurd results. . . . One need not arbitrarily pick and choose from the various accepted
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`definitions of a word to decide which meaning was intended…" See, Phillips at 1322, quoting
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`Liebscher v. Boothroyd, 258 F.2d 948, 951 (CCPA 1958). Use of a dictionary needs careful
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`consideration of the context.
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`In the guiding context that is relevant here, TMEP §1402.03 makes clear that a
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`"therapeutic" lotion in Class 5 is medicated, i.e., it is a drug. Registrant's Class 3 (for
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`Non-Medicated Skin Care Preparations) registration is what covers its lotion product.
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`Registrant's Class 5 registration was abandoned years ago when Registrant stopped trying to
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`make a medicated (i.e., therapeutic) product.
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`Two can play the game of dictionary. According to Webster's New World Dictionary, the
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`lead meaning of "therapeutic" is "serving to cure or heal." Another meaning is "of therapeutics."
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`"Therapeutics," in turn, is "the branch of medicine that deals with the treatment and cure of
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`diseases." Jackson Decl. ¶6, Exh. B. So, under this execution of the game of dictionary, you use
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`a "basic and widely available dictionary" and get the right meaning: a drug. It is a meaning that is
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`arrived at without needing an "in-depth knowledge of the relevant field," medicine. The further
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`guiding context of Class 5, a context of Class 5 that speaks to "pharmaceutical preparations,"
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`should lead one to discard softer meanings of "therapeutic."2 In the relevant context,
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`"therapeutic" does not refer to a spa treatment. The guiding context of the United States Patent &
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`Trademark's established practices memorialized at TMEP §1402.03, further helps refine the
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`relevant meaning, i.e., a drug.
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`Additional guiding context is provided by the Eczema Quick Fact Sheet from the
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`National Eczema Association, as found at Exhibit A of the Jackson Decl. Under the heading
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`"Management of Eczema," the National Eczema Association makes clear that there is a
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`difference between eczema management with a moisturizer, and treatment with a drug. Petitioner
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`submits that recitation by the Association reflects the meaning of "treatment" (and therapeutic)
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`that is understood by the consumer of an eczema management tool.
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`Consider the Registrant's cagey recitations and links at cetaphilrestoraderm.com: "it helps
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`as part of a dermatologist-recommended daily skin care routine for the management of eczema."
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`See Exhibit 13 to Amended Petition to Cancel. Exhibit 13, which is a somewhat older version of
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`2 The only other definitional element of Class 5 in which the Restoraderm products could fall is
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`"sanitary preparations for medical purposes." But if sanitary preparations, the goods would not
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`be Therapeutic Skin Care Preparations and Treatment Of Skin Disorders.
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`Registrant's webpage for Cetaphil Restoraderm, references the National Eczema Association's
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`Seal of Acceptance for "products created or intended for use by personas with Eczema or severe
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`sensitive skin conditions." Even this third party quote does not say that Cetaphil Restoraderm
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`treats eczema. On a side panel of the current website (where a tab has to be clicked to reveal the
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`panel), the website comes the closest to saying treating by saying its "Moisturizer and Body
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`Wash work together to form a gentle daily skin care routine that helps soothe itch, and reduce the
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`redness, dryness and irritation of eczema-prone skin." Jackson Decl. ¶9, Exh. E. But note, this
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`text basically says that the article moisturizes skin that happens to have eczema. The website
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`does not say that the moisturizer (or the Cetaphil Restoraderm body wash) treats eczema.
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`A careful reading of cited Exhibits A and B to Registrant's Kee Declaration finds no
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`public promotional material that supports a recitation to consumers that the "products were
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`specifically designed to work together as a daily regimen to provide continuous relief for those
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`struggling with atopic dermatitis and/or eczema-prone skin." Thus, this statement in ¶8 of the
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`Kee Declaration is a private opinion, not a part of Registrant's public selling regime. Exhibit B of
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`the Kee Declaration (at p. 7), in fact, shows that a topical steroid treats atopic dermatitis, with
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`Cetaphil Restoraderm materials being a useful adjunct to treatment, just as moisturizers have
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`long been know to be such adjuncts.3 If Cetaphil Restoraderm were being promoted to treat it
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`would need an approval as a new drug, or its promotion would be illegal.
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`The allegedly ultra-confidential Exhibits do not provide any evidence that the buying
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`public (as either consumers or dermatologists – those not sitting on Registrant's advisory boards)
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`is presented Cetaphil Restoraderm as a treatment for eczema or atopic dermatitis. There is not a
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`3 Per the National Eczema Association: "Basic skin care can enhance the effect of prescription
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`drugs, and it can prevent or minimize the severity of eczema relapse." Jackson Decl. ¶10, Exh. F.
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`hint of an allegation or averment that any effort has been made to obtain a regulatory approval in
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`the United States for selling a medicated article that could therapeutically treat a disease.
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`Exhibit A to the Jackson Declaration, Eczema Quick Fact Sheet from the National Eczema
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`Association, states that there are only two non-steroidal treatments for eczema, and neither is
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`Cetaphil Restoraderm (they are tacrolimus and pimecrolimus).
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`The declaration by Cindy Kee mentions "
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`." But, except ambiguously for
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`four studies described in Exhibit L, we never learn detail on the nature of these studies. They are
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`not asserted to establish that Cetaphil Restoraderm is effective to treat a disease, or that the lotion
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`is "generally recognized, among experts," as set forth in the FD&C Act to be safe and effective
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`in such treatment. Moreover, these studies were not even on Cetaphil Restoraderm, since they
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`were done before there was a formulation for Cetaphil Restoraderm. Kee Declaration at ¶14.
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`Consider the four of the studies were the basis for the publication on Cetaphil
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`Restoraderm that is Exhibit L to the Kee Declaration.4 It is safe to assume that the four studies
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`presented in some detail in Exhibit L are Registrant's best evidence that Cetaphil Restoraderm is
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`effective to treat a disease, or that it is "generally recognized, among experts," as set forth in the
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`FD&C Act to be safe and effective in such treatment. It certainly comes up short. It is only
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`studies at least near to as rigorous as those supporting a new drug application that establishes
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`such general recognition. See 50 Boxes, 909 F.2d at 27-28. The paper of Exhibit L is also an
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`assertion of a third party and an employee of Registrant acting as a research scientist, not the
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`4 It is unclear how to interpret ¶14 of the Kee Declaration, stating that the studies were done
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`before there was a formulation for Cetaphil Restoraderm, in light of ¶19 asserting that four of
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`these studies were the basis for the Exhibit L publication on Cetaphil Restoraderm.
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`assertion made to the public by Registrant. There is no suggestion in the Registrant's filing that
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`this study or anything else will be the basis for filing a new drug application, in support of which
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`experimental use Class 5 might have been appropriate.
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`Consider the sponsored research of Exhibit L to the Kee Declaration in more detail. The
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`Exhibit L article never says that Cetaphil Restoraderm Moisturizer treats atopic dermatitis. It
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`says that it is suitable for "long-term management" of atopic dermatitis. Exhibit L at pp. 744
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`(Abstract) and 748 (last paragraph). The reference to "short-term treatment" in the last paragraph
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`at p. 748 is clearly a reference to the study on using Cetaphil Restoraderm Moisturizer with a
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`treatment steroid during flares.
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`The Exhibit L paper makes moisturizing comparisons to other moisturizers, namely
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`Physiogel AI cream (Steifel Laboratories) and Eucerin Calming Cream (Beiersdorf). Neither of
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`these two comparative products has the National Eczema Association's Seal of acceptance. See
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`Jackson Decl., Ex. G. The evidence on hydration (Fig. 1) shows that Cetaphil Restoraderm
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`Moisturizer and Eucerin Calming Cream are virtually identical in this non-rigorous test. Just two
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`of four timepoints are said to yield a modest difference that is asserted to be of statistical
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`significance. When one picks and chooses points of significance, there is no significance. When
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`n = 30 in a physiological experiment, and when the observed differences are small, statistical
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`significance needs to be very high, and reproduced in replicated studies, for the result to have
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`hopes of being modestly compelling.5 A visual inspection of Fig. 1 will assure one's common
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`sense that there is no difference between the top trace (Cetaphil Restoraderm Moisturizer) and
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`5 The evidentiary weakness of the recitation of a p-value, especially when the observed
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`differences are small is well known, as attested to by the two scientific abstracts found at Exhibit
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`K to the Jackson Decl.
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`the trace slightly below it (Eucerin Calming Cream). For the more important study of skin barrier
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`function (Fig. 2), no statistical difference is asserted between the moisturizers. Thus, Registrant's
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`evidence shows that Cetaphil Restoraderm Moisturizer is a moisturizer much like other
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`moisturizers.
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`Of the statements provably ascribable to Registrant, certain statements of the Kee
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`Declaration come closest to asserting a treatment of a disease. Yet even these non-public
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`statements do not quite get there. These statements are:
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`8. The RESTORADERM products were specifically designed to work together as a daily
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`regimen to provide continuous relief for those struggling with atopic dermatitis and/or eczema-
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`prone skin. See Exhibits A, B.
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`This statement quite clearly does not assert a treatment for atopic dermatitis or eczema.
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`10. Registrant's RESTORADERM Skin Restoring Body Wash is a foaming wash specially
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`formulated to help skin retain moisture and maintain the skin barrier function. See Exhibits A, B.
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`This statement quite clearly does not assert a treatment for atopic dermatitis or eczema.
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`11. Registrant's RESTORADERM Skin Restoring Moisturizer is specially formulated to restore
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`moisture to atopic and/or eczema-prone skin and to help replenish, repair, and protect the skin's
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`natural moisture barrier. See Exhibits A. B.
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`This statement quite clearly does not assert a treatment for atopic dermatitis or eczema.
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`Paragraph 9 of the Kee Declaration asserts that Cetaphil Restoraderm has marvelous moisturizer
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`ingredients. Yet note that by Registrant's Exhibit L to its Kee Declaration, Cetaphil Restoraderm
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`is not particularly superior to other moisturizers, which presumably lack these ingredients. Most
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`importantly, nothing in ¶9 asserts a treatment for atopic dermatitis or eczema. Nothing in ¶9 tells
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`us how these ingredients are "clinically proven." Are they clinically proven not to kill the user?
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`Are they clinically proven to reduce wrinkles? Who knows. Paragraph 9 is a red herring.
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`The closest Registrant's papers come to asserting relevant activity in a time frame that
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`might help it avoid a presumption of abandonment is in its writings at pp. 9 – 11 of its Motion.
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`But this activity relates to a moisturizing lotion.
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`, or is the above-reviewed testing of Exhibit L (Kee Decl.), and hence has been shown
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`or can be presumed not to relate to testing the skin lotion as a therapeutic. The recitations about
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`an asserted bona fide intent to use what is framed as a fairly explicitly pharmaceutical Class 5
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`registration (p. 9 of Registrant's Motion), does not speak to its activity in the period since say
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`May 1, 2009.
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`Having filed this motion for Summary Judgment, and presented only this evidence,
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`Petitioner submits that Registrant has near to conceded that it has no evidence that it markets
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`Cetaphil Restoraderm as a medicated article. By the same reasoning, Registrant has near to
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`conceded that it has no evidence that it has acted to seek a medicated article in the last three
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`years. Petitioner submits that Registrant has not sought a medicated "Restoraderm" article since
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`2007. As such, Petitioner submits that Registrant has near to conceded that it has abandoned its
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`Class 5 registration.
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`A focus of this dispute is whether for moisturizing skin lotions there exists a distinction
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`between Class 3 and Class 5. TMEP §1402.03 suggests that such a distinction does exist. If
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`TMEP §1402.03 is meaningful, the only way to identify a "medicated" lotion that is properly and
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`legally marketed in the United States as such is via the FD&C Act. Registrant appears not to
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`have found binding authority to the effect that in this context Class 5 is not meaningfully distinct
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`from Class 3 with respect to moisturizing skin lotions.
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`Assuming for the sake of argument that in some contexts a lotion can be Class 5 and
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`Class 3, still this does not allow a Class 5 registration for Therapeutic Skin Care Preparations
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`and Treatment Of Skin Disorders where there is no marketing of a therapeutic or a treatment.
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`Such an overlapping Class 5 registration might for example be for goods analogous to "sanitary
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`preparations for medical purposes," where an overlapping Class 3 registration might be for, as
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`here, Non-Medicated Skin Care Preparations. But Registrant, when it intended to sell a
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`therapeutic, and to distribute to appropriate clinical trials, opted to register for Therapeutic Skin
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`Care Preparations and Treatment Of Skin Disorders. Having abandoned selling therapeutic
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`lotions, it abandoned this registration.
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`Petitioner submits that Registrant's motion should be denied, as Petitioner's filing has not
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`established that Registrant is using the Class 5 registration.
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`Needed Discovery Relating to Registrant's Motion
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`If the Board does not accept Petitioner's contention that Registrant has not supported an
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`assertion of use of the Class 5 registration, then whether Registrant has abandoned selling
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`therapeutic lotions is still in factual dispute, as evidenced by Exhibits H, I and J of the
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`Declaration of Arthur Jackson.
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`Exhibit H is a copy of Registrant's asserted response to Petitioner Sköld's First Set Of
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`Interrogatories and Requests For Production. Registrant was non-responsive to each and every
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`one of these requests, even those that clearly relate to the priority contest. Interrogatories 10
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`through 22 seek information about development under the mark Restoraderm of a medicated
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`material. Interrogatories 24 and 25 seek to identify which products are sold under Reg. No.
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`2985751, and which are sold under Reg. No. 3394514, thereby seeking to confirm that the same
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`products are asserted to be sold under these registrations, even though the descriptions of goods
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`for the one exclude the goods for the other (Therapeutic Skin Care Preparations and Treatment
`
`Of Skin Disorders vs. Non-Medicated Skin Care Preparations). This information is needed
`
`before the Registrant's Motion could be decided in Registrant's favor. Petitioner expects a more
`
`forthright response to these interrogatories after this motion is decided.
`
`Exhibit I is a copy of Registrant's asserted response to Petitioner Sköld's First Request for
`
`Admissions. Registrant denied each and every request, even those that are believed to be
`
`objectively virtually undeniable. (See for example Request for Admission No. 27.)
`
`Exhibit J is a copy of Petitioner Sköld's Second Set Of Interrogatories and Requests For
`
`Production, which in Interrogatories 42 – 46 seeks facts surrounding some of Registrant's denials
`
`set forth in Exhibit I, and related to development under the mark Restoraderm of a medicated
`
`material. This information is needed before the Registrant's Motion could be decided in
`
`Registrant's favor.
`
`Petitioner respectfully submits that Registrant's motion should be denied, as there are still
`
`material facts in contention.
`
`
`
`
`
`
`14
`
`

`
`PUBLIC
`
`Conclusion
`
`In light of the foregoing, Petitioner submits that the Motion should be denied.
`
`Respectfully submitted,
`
`Date: May 17, 2012
`
`New Jersey Bar No. 00288— 1995
`ajackson@moseriplaw.con1
`MOSER IP LAW GROUP
`
`1030 Broad Street, Suite 203
`Shrewsbury, NJ 07702
`(732) 935-7100
`(732) 935-7122
`Attorney for Petitioner
`
`

`
`PUBLIC
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Thomas Skold,
`Petitioner,
`
`v.
`
`Galdenna Laboratories, Inc.,
`Registrant
`
`\J\./s/\a\/\../~./\y
`
`Cancellation No, 92052897
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a copy of the foregoing Petitioner's Brief in Opposition to Motion for Partial
`Summary Judgment (PUBLIC version) was sent by email on this 17"‘ of May, 2012 to:
`
`Jeff.Becker@haynesboone.com
`
`I hereby certify that a copy of the foregoing Petitioner's Brief in Opposition to Motion for Partial
`Summary Judgment (TRADE SECRET/COMMERCIALLY SENSITIVE version) was sent first
`class mail, postage pre-paid on this 17th of May, 2012 to:
`
`Attn: JEFFREY M. BECKER
`
`HAYES AND BOONE, LLP
`2323 VICTORY AVENUE, SUITE 700
`DALLAS, TX 75219
`UNITED STATES
`
`

`
`PUBLIC
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Registration Nos. 2985751; and 3394514
`
`Dated: August 16, 2005 & March 11, 2008, Respectively
`______________________________________
`Thomas Sköld,
`)
`
`Petitioner,
`)
`
`
`)
`
`v.
`)
`
`
`) Cancellation No. 92052897
`Galderma Laboratories, Inc.,
`)
`Registrant
`)
`______________________________________ )
`
`
`
`
`DECLARATION OF ARTHUR E. JACKSON
`
`
`
`
`
`
`I, Arthur E. Jackson, declare as follows:
`
`1. I am Counsel at the law firm of Moser Taboada and counsel for Petitioner Thomas Sköld in
`this Cancellation.
`
`2. I am over the age of eighteen (18) and am competent to make this declaration.
`
`
`3. I have personal knowledge of the matters which are the subject of this declaration.
`
`4. This declaration is made to authenticate certain documents in support of Petitioner’s response
`to Registrant’s Motion for Partial Summary Judgment and confirm certain facts in connection
`with this Cancellation.
`
`the website
`shot of
`screen
`true and correct copy of a
`is a
`5. Exhibit A
`http://www.nationaleczema.org/living-with-eczema/eczema-quick-fact-sheet as accessed 11
`May 2012.
`
`6. Exhibit B is true and correct copy of pp. 800, 1387 of Webster's New World Dictionary,
`Third College Edition, Simon a& Shuster, Inc., 1988. The definition of "lotion" found at p.
`800 has only one listed meaning, and the definition is the first and only definition examined
`in connection with the drafting of the concurrently filed Brief in Opposition to Registrant's
`Motion for Partial Summary Judgment. This "lotion" definition was consulted by the
`undersigned without guidance or advice from any other person.
`
`7. Exhibit C is a true and correct copy of CPG Sec. 440.100, Marketed New Drugs Without
`Approved NDAs
`and ANDAs =,
`as
`downloaded
`11 May
`2012
`from
`http://www.fda.gov/ICECI/ComplianceManuals/CompliancePolicyGuidanceManual/ucm074
`382.htm.
`
`
` 1
`
`
`
`
`
`

`
`Exhibit D is a true and correct copy of a six slides published in the program of the Twenty-
`First Annual Joint Patent Practice Seminar, April 21, 2005, in connection with a presentation
`by S. Peter Ludwig.
`
`PUBLIC
`
`Exhibit E is a true and correct copy of a screen shot of the website http://www.cetaphil.com/
`products/restorademi-moisturizer,
`as
`accessed
`8 May 2012, with the
`"SPECIAL
`INSTRUCTIONS" tab activated.
`
`the website
`of
`shot
`screen
`a
`of
`copy
`correct
`and
`true
`a
`is
`F
`Exhibit
`http://wwwnationaleczema.org/living-with-eczema/bathing-moisturizing as accessed 11 May
`2012.
`
`the website
`shot of
`screen
`a
`of
`copy
`correct
`and
`true
`a
`Exhibit G is
`http://www.nationaleczema.org/seal-acceptance/product—directory-personal-care as accessed
`11 May 2012.
`
`Exhibit H is a true and correct copy of Registrant's Response to Petitioner Skold's First Set of
`Interrogatories and Requests for Production of Documents and Things.
`
`Exhibit 1 is a true and correct copy of Registrant's Response to Petitioner Skold's First
`Request for Admissions.
`
`Exhibit J is a true and correct copy of Petitioner Sko1d's Second Set of Interrogatories and
`Requests for Production of Documents and Things.
`
`Exhibits 8, 9, 12 and 13 of the Petitioner's Amended Petition are true and correct copies of
`the items identified in the Amended Petition.
`
`10.
`
`I1.
`
`12.
`
`13.
`
`14.
`
`15.
`
`I declare, under penalty of perjury under the laws of the United States of America and 28
`U.S.C. § 1746, that the foregoing is true and correct, and that this declaration was executed
`this 17 day of May 2012 in Shrewsbury, New Jersey.
`
`Respectfull
`
`submitted,
`
`
`
`ajackson@moseriplaw.com
`MOSER TABOADA
`
`"1030 Broad Street, Suite 203
`Shrewsbury, NJ 07702
`(732) 935-7100
`(732) 935-7122
`Attorney for Petitioner
`
`

`
`PUBLIC
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Thomas Skold,
`Petitioner,
`
`V.
`
`Galderma Laboratories, Inc.,
`Registrant
`
`\/\./\J\J\./\/\2%/
`
`Cancellation No. 92052897
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a copy of the foregoing Declaration of Arthur E. Jackson was sent by email
`on this 17"‘ of May, 2012 to:
`
`Jeff.BeckeI@haynesboo