Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA461393
`ESTTA Tracking number:
`03/13/2012
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92053495
`Plaintiff
`Isotonic OPC Antioxidants, Inc.
`SENGEN SUN PHD
`ISOTONIC OPC ANTIOXIDANT INC
`8838 LA CAMESA STREET
`SAN DIEGO, CA 92129
`UNITED STATES
`info@amerinutra.net
`Motion for Summary Judgment
`Sengen Sun, PhD
`info@amerinutra.net
`/Sengen Sun/
`03/13/2012
`Motion for Summary Judgment.pdf ( 23 pages )(205667 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`
`ESTTA461393
`ESTTA Tracking number:
`03/13/2012
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92053495
`Plaintiff
`Isotonic OPC Antioxidants, Inc.
`SENGEN SUN PHD
`ISOTONIC OPC ANTIOXIDANT INC
`8838 LA CAMESA STREET
`SAN DIEGO, CA 92129
`UNITED STATES
`info@amerinutra.net
`Motion for Summary Judgment
`Sengen Sun, PhD
`info@amerinutra.net
`/Sengen Sun/
`03/13/2012
`Motion for Summary Judgment.pdf ( 23 pages )(205667 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
`
`
`
`
`
`Isotonic OPC Antioxidants, Inc.
`
`Petitioner,
`
`Cancellation No. 92053495
`
`vs.
`
`
`
`Horphag Research Management S. A.
`
`Registration No. 1769633
`
`Registrant/Respondent
`
`
`
`
`
`
`
`PETITIONER’S MOTION FOR SUMMARY JUDGMENT
`
`
`
`Petitioner, Isotonic OPC Antioxidants, Inc., respectfully makes this request for
`
`summary judgment as a matter of law that the trademark PYCNOGENOL should be
`
`cancelled in favor of Petitioner, pursuant to Federal Rule of Civil Procedure 56.
`
`Petitioner hereby presents admissible evidential facts, establishing that PYCNOGENOL
`
`is the name of a single material, which has been scientifically defined for its chemical
`
`compositions and drug properties for 3 decades. PYCNOGENOL is no longer a valid
`
`indicator of manufacturer source for 2 or more products of varying chemical
`
`compositions. PYCNOGENOL has been defined as matter and “comprises matter that, as
`
`a whole, is functional” [15 U.S.C. § 1052 (e)(5)]. The mark PYCNOGENOL is both
`
`“merely descriptive” and “deceptively misdescriptive” [15 U.S.C.§ 1052(e)(1)].
`
`
`
`
`
`1
`
`
`
`I. FACTS
`
`Fact No. 1: The PYCNOGENOL® Bibliography shown by Attachment 1
`
`attached to the Petition filed by Petitioner on 01/09/2011.
`
`Fact No. 2: The 3 specimens of the 220 full publications produced by
`
`Respondent, attached to this current motion as EXHIBIT PET-001. The 3 specimens are
`
`stamped by Respondent as H001 to H019.
`
`Fact No. 3: Petitioner’s 4 specimens of the 220 full articles, embodied in
`
`EXHIBIT PET-004 (PETITIONER’S FIRST REQUEST FOR ADMISSIONS TO
`
`REGISTRANT). The 4 relevant articles are identified as Exhibit 102, Exhibit 103,
`
`Exhibit 104, and Exhibit 105 in EXHIBIT PET-004.
`
`Fact No. 4: Respondent-owned websites: A specimen of Respondent’s web pages
`
`was pleaded by Respondent as EXHBIT 1 attached to ANSWER filed on 02/18/2011.
`
`Fact No. 5: The US Patent-5,720,956. The full text for the U.S. Patent 5,720,956
`
`is given in the current motion as EXHIBIT PET-002.
`
`Fact No. 6: FDA Warning Letters: An example of FDA Warning letters to
`
`PYCNOGENOL product sellers is attached as EXHIBIT PET-003.
`
`Fact No. 7: SCIENTIFIC AND CLINICAL MONOGRAPH FOR
`
`PYCNOGENOL®: Exhibit 101 in EXHIBIT PET-004.
`
`Fact No. 8: EXHIBIT PET-004 (PETITIONER’S FIRST REQUEST FOR
`
`ADMISSIONS TO REGISTRANT) and EXHIBIT PET-005 (RESPONDENT’S
`
`RESPONSES AND OBJECTIONS TO PETITIONER’S FIRST REQUEST FOR
`
`ADMISSIONS TO REGISTRANT).
`
`Fact No. 9: PETITION TO CANCEL, filed by Petitioner on 01/09/2011.
`
`
`
`2
`
`
`
`Fact No. 10: ANSWER AND AFFIRMATIVE DEFENSE, filed by Respondent
`
`on 02/18/2011 and all exhibits therein, including the Cease and Desist letter, mail/e-mail
`
`communications between the two parties.
`
`
`
`II. STANDING
`
`Petitioner has the legal right in using public scientific information for the purpose
`
`of consumer education without making any false/misleading statements about Petitioner’s
`
`dietary supplement products under its brand name FrenchGlory®, in compliance with the
`
`US FDA regulations. Respondent interfered with Petitioner’s legal practices of business
`
`using public scientific information, and asserted that Petitioner infringed the trademark
`
`PYCNOGENOL in Petitioner’s websites.
`
`The details of the background leading to this Petition was fairly well described by
`
`Respondent in its ANSWER filed with TTAB on 02/18/2011. And all the evidential
`
`facts/Exhibits pleaded by Respondent in its ANSWER are acceptable by Petitioner and
`
`admissible for a judgment.
`
`Petitioner has a web store open 24 hours a day and 7 days a week with two
`
`website domains http://www.opc-1-2-3.com and http://stores.antioxidant.name. These
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`two websites were admitted by Respondent in its ANSWER (Page 12 therein), and can be
`
`accessed by any one and any time. Petitioner and Respondent are competitors, selling
`
`pine bark extract related products. Petitioner is no interloper and has the commercial
`
`interest in using public scientific information, some of which is flooded by a trademark
`
`PYCNOGENOL.
`
`
`
`
`
`3
`
`
`
`III. FACT-RELATED ARGUMENTS
`
`Fact No. 1: The PYCNOGENOL® Bibliography
`
`
`
`The PYCNOGENOL® Bibliography shown by Attachment 1 attached to the
`
`Petition filed on 01/09/2011, was admitted by Respondent in its ANSWER (filed with
`
`TTAB on 02/18/2011, Page 6: under “ANSWER TO PARAGRAPH NO. 9”).
`
`The PYCNOGENOL® Bibliography was again admitted in RESPONDENT’S
`
`MOTION FOR JUDGMENT ON THE PLEADINGS ( filed with TTAB on 04/26/2011,
`
`Pages 2 and 6). A quote on Page 2 says:
`
`“Horphag sponsors research, clinical trials, and studies to demonstrate,
`and continue to research, the immense health benefits and safety of Pycnogenol®
`pine bark extract, spending approximately $1.5 million annually. There are more
`than 220 scientific peer-reviewed articles reporting the results of these trials and
`research into the health benefits of Horphag’s proprietary Pycnogenol® pine bark
`extract. Horphag organized and summarized them into the Pycnogenol®
`Bibliography, which is attached as Attachment 1 to the Petition.”
`
`The actual number of scientific publications mentioning Pycnogenol, is not
`
`limited to that in the Bibliography, and should be even much higher than 220, even
`
`though Petitioner mentions only this rough number of 220 (as admitted by Respondent)
`
`in this cancellation proceeding for convenience.
`
`Each entry for the 220 articles in the PYCNOGENOL® Bibliography has a
`
`deceptive description statement (in bold) starting from the first line, using Pycnogenol®
`
`as the name of the material to communicate the key scientific information related to drug
`
`properties. The descriptive statement is followed by author name(s), and then the actual
`
`article title. With few exceptions, each article entry is a piece of evidence of the generic
`
`use of the mark PYCNOGENOL for a single material extracted from pine bark.
`
`Pycnogenol® is used as a name of the material to define the material and directly to
`
`
`
`4
`
`
`
`convey all the drug properties of the material. Here are 3 random examples of the
`
`descriptive statements on its Page 6 under the section 2 . Cardiovascular System as
`
`shown in the screen shot image below:
`
`“Ref. 283 CLINICAL STUDY: Pycnogenol® taken as an adjunct to
`hypertensive medication improves kidney flow and function and further improves
`blood pressure.”
`“Ref. 281 Pycnogenol® protects the kidneys from damage caused by
`oxidative stress and ischemia in an animal model.”
`“Ref. 274 Pycnogenol® improves heart function in experimentally
`induced heart damage in diabetic rats.”
`
`
`The majority of the 220 article titles use Pycnogenol® as the name of the material
`
`studied for its drug properties. For example, 5 out of 6 articles (under “1. Review
`
`
`
`
`
`5
`
`
`
`Articles”) on Page 3 use Pycnogenol® as the name of the material. The article title for the
`
`last entry (Ref. 168) on Page 3 is:
`
`“The Nutraceutical Pycnogenol®: Its role in cardiovascular health and
`blood glucose control.”
`
`If our human civilization in language arts make any sense, Pycnogenol® is used
`
`here simply as a generic name of matter (a single material). PYCNOGENOL is the name
`
`for this “distinctive” material for the purpose of its scientific descriptions, as shown by
`
`the 220 article entries. No other generic/scientific name than PYCNOGENOL is
`
`significantly used for the scientific descriptions of the “distinct” material, in the entire
`
`Bibliography and in the texts of the 220 full papers.
`
`Further, the 220 Pycnogenol®-related scientific publications are NOT about
`
`dietary and nutritional supplement, as defined by Dietary Supplement Health and
`
`Education Act of 1994 of the United States of America. With very few exceptions, they
`
`are about therapeutic or drug properties of underlying chemical substances for disease
`
`treatment and prevention, as defined in Section 201 (g) of the Federal Food, Drug, and
`
`Cosmetic Act.
`
`PYCNOGENOL, as a trademark of dietary supplement, is extensively stated as a
`
`drug across the entire drug development field in more than 220 scientific publications. It
`
`is evidently deceptive business practice using mis-decriptive statements to sell a dietary
`
`supplement product as unproven drugs, which is prohibited by FDA regulations
`
`mentioned in the paragraph above.
`
`These 220 article entries in the Bibliography as 220 pieces of evidence firmly
`
`establish that PYCNOGENOL, as a mark of dietary supplement is both “merely
`
`
`
`6
`
`
`
`descriptive” and “deceptively misdescriptive” [15 U.S.C.§ 1052(e)(1)]. PYCNOGENOL
`
`is matter and “comprises matter that, as a whole, is functional” [15 U.S.C. § 1052 (e)(5)]
`
`
`
`Fact No. 2: The 3 specimens of the publications produced by Respondent
`
`
`
`It is impractical to file all the 220 full articles listed in the Pycnogenol®
`
`Bibliography with TTAB. A few examples of them can illustrate the general style how
`
`the mark Pycnogenol® is used as essentially the only name of a distinctive material for
`
`scientific descriptions.
`
`Respondent produced 3 specimens of the PYCNOGENOL-related publications in
`
`response
`
`to PETITIONER’S FIRST REQUEST FOR PRODUCTION OF
`
`DOCUMENTS. The 3 specimens are attached as a single file in EXHIBIT PET-001 in
`
`this motion, and have the pages stamped by Respondent with H001-H019. These 3
`
`publications are self-authenticating [37 CFR § 2.122(e)].
`
`Here are the identifications of the 3 full articles by their author name(s), titles,
`
`journal names, year/month/volume/page numbers, and a typical quote from the first page
`
`of each paper:
`
`(1) Rohdewald P, Beil W. IN VITRO INHIBITION OF HELICOBACTER PYLORI
`GROWTH AND ADHERENCE TO GASTRIC MUCOSAL CELLS BY
`PYCNOGENOL. Phytother Res. 2008 May;22(5):685-688. Quote: “As the
`extract contains catechin as well as procyanidins, it could be expected that
`Pycnogenol® inhibits H. pylori and its adherence in analogy to results obtained
`with other herbal extracts….”
`(2) Belcaro G, et al. PYCNOGENOL MAY ALLEVIATE ADVERSE EFFECTS IN
`ONCOLOGIC TREATMENT. Panminerva Med. 2008 Sep;50(3):227-234.
`Quote: “From their previous clinical experience the authors suggest that
`alleviation of side effects described in this study results from Pycnogenol®
`activities related to endothelial protection, and anti-inflammatory anti-edema
`activities.”
`(3) Canali R, et al. THE ANTI-INFLAMMATORY PHARMACOLOGY OF
`PYCNOGENOL IN HUMANS INVOLVES COX-2 AND 5-LOX MRNA
`
`
`
`7
`
`
`
`EXPRESSION IN LEUKOCYTES. Int Immunopharmacol. 2009 Sep;9(10):1145-
`1149. Quote: “Pycnogenol metabolites contained in plasma of human volunteers
`after ingestion have been shown to inhibit COX-1 and COX-2 enzyme activity, in
`vitro.
`
`
`Respondent wants to use these 3 full articles to support its defense that the mark
`
`Pycnogenol® is used properly and not generic. In contrast, Petitioner has the full
`
`confidence that these 3 articles establish that the dietary supplement trademark
`
`PYCNOGENOL, used as a name of matter studied for its drug properties, is both “merely
`
`descriptive” and “deceptively misdescriptive” [15 U.S.C.§ 1052(e)(1)]. PYCNOGENOL
`
`is matter and “comprises matter that, as a whole, is functional” [15 U.S.C. § 1052 (e)(5)].
`
`
`
`Fact No. 3: Petitioner’s 4 specimens of the 220 real articles
`
`Petitioner wishes to submit 4 specimens identified as Exhibit 102 – Exhibit 105 in
`
`the EXHIBIT PET-004 (PETITIONER’S FIRST REQUEST FOR ADMISSIONS TO
`
`REGISTRANT). Here are the identifications of the 4 full articles by their author name(s),
`
`titles, journal names, volume/year/page numbers:
`
`(1) Exhibit 102: Gabriele D’Andrea “PYCNOGENOL: A BLEND OF
`PROCYANIDINS
`WITH
`MULTIFACETED
`THERAPEUTIC
`APPLICATIONS?” Fitoterapia 81 (2010) 724-736.
`
`
`(2) Exhibit 103: You Jung Kim, Ki Sung Kang, Takako Yokozawa. “THE ANTI-
`MELANOGENIC EFFECT OF PYCNOGENOL BY ITS ANTI-OXIDATIVE
`ACTIONS” Food and Chemical Toxicology 46 (2008) 2466–2471.
`
`(3) Exhibit 104: TANJA GRIMM, et al “ANTIOXIDANT ACTIVITY AND
`INHIBITION OF MATRIX METALLOPROTEINASES BY METABOLITES
`OF MARITIME PINE BARK EXTRACT (PYCNOGENOL)”. Free Radical
`Biology & Medicine, Vol. 36, No. 6, pp. 811 – 822, 2004.
`
`
`(4) Exhibit 105: “SINGLE AND MULTIPLE DOSE PHARMACOKINETICS
`OF MARITIME PINE BARK EXTRACT (PYCNOGENOL) AFTER ORAL
`
`8
`
`
`
`
`
`
`
`ADMINISTRATION TO HEALTHY VOLUNTEERS” BMC Clinical
`Pharmacology 2006, 6:4 (http://www.biomedcentral.com/1472-6904/6/4 )
`
`These 4 specimens of the full articles about Pycnogenol are self-authenticating,
`
`
`
`pursuant to 37 CFR § 2.122(e). PYCNOGENOL, as a mark of dietary supplement, is
`
`used as a name of material investigated for its drug properties in the text of more than
`
`220 scientific publications, as exemplified in these 4 specimens. It is both “merely
`
`descriptive” and “deceptively misdescriptive” [15 U.S.C.§ 1052(e)(1)]. PYCNOGENOL
`
`is matter and “comprises matter that, as a whole, is functional” [15 U.S.C. § 1052 (e)(5)].
`
`
`
`Fact No. 4: Respondent-owned websites: A specimen of Respondent’s web pages was
`
`pleaded by Respondent as EXHBIT 1 attached to ANSWER filed with TTAB on
`
`02/18/2011.
`
`EXHIBIT 1 attached to the ANSWER, represents the formal definition of
`
`Pycnogenol® by Respondent, because this page has a title of “About Pycnogenol®”. The
`
`two-word phrase “About Pycnogenol®” has the largest font size on this web page. The
`
`mark “Pycnogenol®” appears in a total of about 15 times, while “pine bark extract”
`
`appears only once at the top of this page. It is clear that this page is “About
`
`Pycnogenol®” more than “ about pine bark extract” for all the product information. Here
`
`is an image for a small part of this web page specimen:
`
`
`
`9
`
`
`
`
`
`If “Pycnogenol® is a water extract from the bark of the French maritime pine as
`
`a mono-species forest,….”, as defined in this web page specimen, “Pycnogenol” is
`
`functional matter because “a water extract” is functional matter. Pycngenol® is a generic
`
`name of this specific water extract as defined by the linguistic expression. A trademark is
`
`not an abstract thinking, and must not be the marked goods itself in the plain language. If
`
`the human civilization in the language art still makes any sense, we should not waste our
`
`tax payers’ money on-and-on with this Respondent who does not have basic language
`
`skills for elementary school students.
`
`In this web page specimen, “Pycnogenol” is used as the sole name of this specific
`
`“water extract”, directly to convey all the key information related to the “water extract”,
`
`including the therapeutic effects for disease treatment and prevention. “Pycnogenol®” is
`
`used as a name of an unproven drug (e.g. “asthma and allergy relief”, “natural anti-
`
`inflammatory”, “selectively binds to collagen and elastin”, “it aids in the production of
`
`endothelial nitric oxide”). Look at 3 more quotes from this web page:
`
`
`
`10
`
`
`
`“Pycnognol® has a well established botanical monograph on macroscopic
`and microscopic findings defining its characteristics, an essential feature of
`quality confirmation.”
`findings have demonstrated Pycnogenol’s
`“Additional published
`beneficial effects in cardiovascular health, skincare, cognitive function, diabetes
`health, inflammation, sports nutrition, asthma and allergy relief and menstrual
`disorders, among others.”
`“Pycnogenol® is certified Kosher and Halal and has earned Generally
`Regarded as Safe (GRAS) status in the USA for its applications in foods and
`beverages. Additionally, Pycnogenol® is a proprietary extract and is protected by
`several U.S. and international patents.”
`
`This web page specimen is a piece of firm evidence, establishing that
`
`PYCNOGENOL, as a mark of dietary supplement, is both “merely descriptive” and
`
`“deceptively misdescriptive” [15 U.S.C.§ 1052(e)(1)]. This representative page of
`
`Respondent’s giant website (probably about 1000 pages) establishes that Pycnogenol is
`
`matter and “comprises matter that, as a whole, is functional” [15 U.S.C. § 1052 (e)(5)].
`
`
`
`Fact No. 5: The US Patent-5,720,956
`
`The full text for the U.S. Patent 5,720,956 is given in this current motion as
`
`EXHIBIT PET-002. It is self-authenticating as it is in the public records in the USPTO
`
`office.
`
`This US Patent 5,720,956 is NOT about dietary and nutritional supplement, as
`
`defined by Dietary Supplement Health and Education Act of 1994 of the United States of
`
`America. It is about therapeutic and drug properties of underlying chemical substances
`
`for disease treatment and prevention, as defined in Section 201 (g) of the Federal Food,
`
`Drug, and Cosmetic Act.
`
`Here are two quotes from the text of U.S. Patent 5,720,956 on the last page of
`
`EXHIBIT PET-002:
`
`
`
`11
`
`
`
`“Hence it follows that a single dose of 100 mg Pycnogenol™ is able to
`normalize smoking-induced platelet aggregation to the same extent as 500 mg
`ASA;…..”
`“The following experiments was carried out to determine whether
`Pycnogenol™ can be used in suitable concentrations to inhibit adrenaline-induced
`platelet aggregation”.
`
`
`“Pycnogenol™”, as the name of the patented material, is used in the patent text.
`
`In this way, Respondent wants to protect the U.S. Patent #5,720,956 for its own use
`
`ETERNALLY and to prevent any public uses FOREVER.
`
`“Pycnogenol®” is often said to be a “patented trade name” by Pycnogenol®
`
`sellers, distributors and some related researchers. This is probably because that trademark
`
`Pycnogenol™ is used as the name of the patented material in the US Patent 5,720,956.
`
`Petitioner is not aware that, in this world, there is such a thing as “patented trade name”,
`
`which is probably a term of commercial scams, as a trade name or trademark is not
`
`patentable. Any one can have fun to search the internet about PYCNOGENOL “patented
`
`trade name” with the double quote on the last 3 words. An example is given here on page
`
`726 of Exhibit 102 under EXHIBIT PET-004 in such a quote:
`
`“In 1979 Masquelier coined the word Pycnogenol to create a little order in
`this highly complex chemistry. However, there has been some confusion in the
`U.S. market regarding OPC products containing Pycnogenol® or grape seed
`extract (GSE) because one of the generic terms for chemical constituents
`(“pycnogenols”) is the same as the patented trade name (Pycnogenol®).”
`
`
`
`(Gabriele D’Andrea “PYCNOGENOL: A BLEND OF PROCYANIDINS WITH
`
`MULTIFACETED THERAPEUTIC APPLICATIONS?” Fitoterapia 81 (2010) 724-
`
`736).
`
`Pycnogenol® , as a dietary supplement product, is currently NOT protected by
`
`any patents to Petitioner’s best knowledge. PYCNOGENOL sellers and distributors
`
`
`
`12
`
`
`
`spread massive lies all over the world, by saying that Pycnogenol® dietary supplement is
`
`protected by the US patents that are about drugs. An example of the claims for the US
`
`patent protections is shown on the second page of EXHIBIT 1 attached to ANSWER
`
`filed by Respondent on 02/18/2011.
`
`As Respondent does not demonstrate any expertise in drug development in this
`
`proceeding, it is likely that that Respondent does not have a drug development program.
`
`It is also likely that the sole purpose for Respondent to file all the related patents is to sell
`
`its dietary supplement products as unproven drugs using the US drug patents as the
`
`marketing materials.
`
`It is deceptive business practice for higher profits to claim that PYCNOGENOL
`
`dietary supplement product is protected by US drug Patents. This claim violates Dietary
`
`Supplement Health and Education Act of 1994 of the United States of America, and the
`
`Federal Food, Drug, and Cosmetic Act.
`
`This patent establishes that PYCNOGENOL, as a mark of dietary supplement is
`
`both “merely descriptive” and “deceptively misdescriptive” [15 U.S.C.§ 1052(e)(1)]. In
`
`this patent, PYCNOGENOL is matter and “comprises matter that, as a whole, is
`
`functional” [15 U.S.C. § 1052 (e)(5)]
`
`
`
`Fact No. 6: FDA Warning Letter to a seller of Pycnogenol®-containing products
`
`
`An example of FDA Warning letters to Pycnogenol product sellers is attached as
`
`EXHIBIT PET-003. This letter is in the public record of the US government and self-
`
`authenticating [37 CFR § 2.122(e)]. It is located in the US FDA website:
`
`
`
`13
`
`
`
`http://www.fda.gov/downloads/ICECI/EnforcementActions/WarningLetters/1998/
`
`UCM066215.pdf
`
`“Pycnogenol” is used as a generic name of an unproven drug in EXHIBIT PET-
`
`003. This exhibit supports that it is illegal for Pycnogenol® - a dietary supplement
`
`product to be stated as a drug for disease treatment and prevention.
`
`
`
`Fact No. 7: SCIENTIFIC AND CLINICAL MONOGRAPH FOR PYCNOGENOL®
`
`(French Maritime Pine Bark Extract), Exhibit 101 under EXHIBIT PET-004
`
`This Exhibit 101 is admissible, as Respondent did not deny that Exhibit 101 is a
`
`true and accurate reproduction of its genuine original, in RESPONDENT’S RESPONSES
`
`AND OBJECTIONS TO PETITIONER’S FIRST REQUEST FOR ADMISSIONS TO
`
`REGISTRANT (EXHIBIT PET-005).
`
`If we follow our normal language rules, this underlined phrase PYCNOGENOL®
`
`(French Maritime Pine Bark Extract) means that the first part French Maritime Pine Bark
`
`Extract is merely a name equivalent to PYCNOGENOL®. French Maritime Pine Bark
`
`Extract is the “description line” following PYCNOGENOL®. The two terms describe
`
`each other, and do not modify each other in a grammatical adjective-noun relationship.
`
`PYCNOGENOL® is just a descriptive name, a substitute for French Maritime Pine Bark
`
`Extract, not a trademark as it is labeled. This MONOGRAPH and its entire text support
`
`that PYCNOGENOL is a generic name. A trademark cannot have a scientific and
`
`clinical monograph, but matter in its name.
`
`
`
`
`
`14
`
`
`
`Fact No. 8: EXHIBIT PET-004
`
`(PETITIONER’S FIRST REQUEST FOR
`
`ADMISSIONS TO REGISTRANT) and EXHIBIT PET-005 (RESPONDENT’S
`
`RESPONSES AND OBJECTIONS TO PETITIONER’S FIRST REQUEST FOR
`
`ADMISSIONS TO REGISTRANT).
`
`EXHIBIT PET-004 includes 6 exhibits (Exhibit 101 to Exhibit 106). Exhibit 101
`
`
`
`– Exhibit 105 have been mentioned earlier in this motion, while Exhibit 106 is not
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`discussed in the current motion..
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`Respondent made a key statement in answering the Admission Request No. 2:
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`“Admit that natural and biological sciences are NOT about commercial
`products, but are public knowledge on physical, chemical, and biological
`substances in terms of their scientific/generic names.”
`
`
`Respondent’s Response to Request No. 2:
`
`
`“Horphag objects to this request as vague and irrelevant because it
`requests an admission concerning some philosophical issues relating
`generally to the purpose of science and how scientific discovery ought to
`be transcribed and therefore Horphag cannot admit or deny it. Horphag
`further avers that it stands for accurate description of research and clinical
`trials conducted on commercially available products using their proper
`commercial brand names.”
`
`
`
`
`
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`The second sentence in the response above contains four key terms underlined by
`
`Petitioner. If added together, they read: description of products using brand names. This
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`second sentence indirectly denies the truth of this admission request. This is a key and
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`binding admission that the brand names including PYCNOGENOL are used for
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`description and communication of the commercial products, and are descriptive.
`
`This admission of “description of products using brand name” by Respondent as
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`its general business practice policy is consistent to Petitioner’s claim that trademark
`
`
`
`15
`
`
`
`PYCNOGENOL has been extensively used as a name in communicating the results of the
`
`220 scientific studies for the last 3 decades. There is no genuine dispute. The generic uses
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`are supported by this second statement, and are supported by more than 220 publications
`
`in 7 specimens.
`
`
`
`Fact No. 9: (The arguments are limited to those for Fact No. 1 in this motion)
`
`
`
`Fact No. 10: The ANSWER filed by Respondent on 02/18/2011 and all the related
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`exhibits therein indicates the Respondent’s general motive to protect a published “miracle
`
`product” ETERNALLY using a trademark as the name of the “miracle”.
`
`The cease and desist letter from Respondent, the e-mail exchanges between the
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`two parties filed with the ANSWER, and all the arguments by Respondent in this
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`proceeding, clearly indicate that Respondent wants to use its trademark in blocking its
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`commercial competitors from citing related public scientific information. Here is a quote
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`from its ANSWER (Page 13):
`
`“Registrant avers that the Horphag-sponsored PYNOGENOL ® Studies are not
`applicable to products not containing PYNOGENOL® French maritime pine
`bark extract, including Patitioner’s Oligopin® ingredient and FrenchGlory®
`Isotonic OPC products.”
`
`
`This claim is simply shocking in light of its “sponsor” of science with
`
`$1.5M/year! Respondent wants to publish its “miracle” in science, and in the meanwhile,
`
`wants protect the “miracle” for itself and forever, using a US-registered trademark as the
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`name of the “miracle”.
`
`
`
`16
`
`
`
`As Respondent claims, this special “water extract” is so “distinct” that existing
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`generic names such as pine bark extract and OPC (Oligomeric ProanthoCyanidins, - the
`
`name of the major chemical components in pine bark extract) are not appropriate for its
`
`scientific descriptions. This “miracle” product has no name for its scientific studies. Its
`
`trademark PYCNOGENOL has been actually used to play that role in more than 220
`
`publications for 3 decades.
`
`Petitioner wishes to be answered for 3 questions: 1. What are these 220 articles
`
`about? 2. Are they EVER useful for the public as publications? 3. How many more pieces
`
`of garbage is Respondent going to generate in the next 100 years, 1000 years or even 1 M
`
`years if this mark is not cancelled?
`
`
`
`Other facts that the Board may consider: Federal Rule of Civil Procedure 56 (c)
`
`(3): “Materials Not Cited. The court need consider only the cited materials, but it may
`
`consider other materials in the record.” All the facts by exhibits in this proceeding, in
`
`addition to those cited in Part I. Facts, support this cancellation, once admitted.
`
`For example, the EXHIBIT 1 attached to RESPONDENT’S REPLY IN
`
`SUPPORT OF ITS MOTION……, filed by Respondent with TTAB on 05/19/2011, is
`
`another specimen of Respondent’s web pages. This web page specimen demonstrates that
`
`Respondent has had general policies to use trademark PYCNOGENOL in generic ways
`
`as the name of product and the name of a nutrient. For example, Respondent instructs the
`
`sellers of Pycnogenol®-containing products to “refer to the Pycnogenol® trademark on
`
`their list of ingredients” on the product labels, as shown in the following screen shot:
`
`
`
`17
`
`
`
`A “Sample Label Design” is on the 2nd page of this EXHIBIT 1. Here is a better down-
`
`loaded label from its real site: http://www.pycnogenol.us/industry/industry_patents.php
`
`
`
`At the left bottom corner of the product label, there is a deceptive mis-descriptive
`
`
`
`statement):
`
`“Pycnogenol® is a registered trademark of Horphag Research Ltd. and its
`application is protected by U.S. patents #5,720,956 /6,372,266 and other international
`patents”.
`
`
`
`18
`
`
`
`In the table of Supplement Facts at the right, the names of nutrients must be
`
`generic/scientific names. Because one of the purposes of the Supplement Facts panel is to
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`let consumers compare the chemical compositions of products that may be produced by
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`different manufacturers. The labels of Pycnogenol® products say something like:
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`“ Pycnogenol® 50 mg”.
`
`The Pycnogenol product label can only tell a consumer that “Pycnogenol®
`
`contains Pycnogenol®” for a question “[W]hat chemical substances does Pycnonegol®
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`contains?”. Respondent has absolutely no idea what it has been doing and knows nothing
`
`about the differences between a generic name and a trademark. It is clear that Respondent
`
`has been genericizing its own mark due to shocking luck of appropriate expertise in
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`intellectual property laws.
`
`
`
`IV. RESPONDENT OFFERED NO VALID DEFENSE IN ITS ANSWER
`
`Respondent never denies the fact of the “massive uses” of the mark as a noun in
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`scientific literature, but argues that the “uses” are proper and not generic uses. This
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`PETITION is no longer about facts, but a matter of law. For example, CPC Int'l, Inc. v.
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`Balzola Foods Corp., 224 U.S.P.Q. 85 (S.D. Fla. 1984), a case cited by Respondent in its
`
`filing TTAB on 04/26/2011, is about trademark use in advertising or promotional
`
`literature. Respondent used this case, regardless its applicable boundaries, to justify that a
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`trademark can be used as a noun. Without a limit, Respondent uses the mark
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`Pycnogenol® to replace all the necessary generic names in every possible spot in its
`
`business practices and to communicate directly all the information about the product
`
`itself.
`
`
`
`19
`
`
`
`Here is another quote from the ANSWER (Page 7), indicating that the issues here
`
`are about law, not the facts:
`
`“Registrant also specifically denies Petitioner’s allegation that “[a]s a mark of
`manufacturer source cannot have biological activities, PYCNOGENOL is not used as a
`trademark,” which is unintelligible as proffered.”
`
`Respondent offered the key defense that the trademark registration symbol® is
`
`always correctly used, so that its mark is not generic. Petitioner wishes to offer a counter
`
`argument using an analogy: a proper injection of a powerful anticancer drug into the body
`
`of a cancer patient cannot be used to deny a reality that the cancer patient is already dead
`
`for whatever reasons. The trademark registration symbol® or a declaration statement for
`
`a registered mark is no more than a warning sign to others as preventive options, and
`
`helps nothing if the mark owner genericizes the mark by itself.
`
`Respondent is simply not aware that a generic name is a must for public uses in
`
`many occasions such as in science and for government uses. Consequently, this mark
`
`PYCNOGENOL has been used to play the roles of a generic name. This mark directly
`
`describes the product itself, and is far more than being suggestive via its manufacturer.
`
`This mark has crossed the line to be generic, and can no longer function as an indicator of
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`manufacturer source for 2 or more products of varying chemical compositions and
`
`properties. Therefore, this mark must be cancelled.
`
`
`
`V. CONCLUSIONS
`
`The key fact supporting this PETITION is the 220 scientific studies published for
`
`“a water extract” that has been referred as to Pycnogenol® for 3 decades. Three
`
`specimens (EXHIBIT PET-001) of the publications have been offered by Respondent to
`
`
`
`20
`
`
`
`support Respondent’s contention that PYCNOGENOL is not generic. Four specimens are
`
`offered by Petitioners (Exhibit 102 – Exhibit 105 in EXHIBIT PET-004). The article
`
`titles of the 220 publications in the PYCNOGENOL Bibliography are also very
`
`representative for the real publications, establishing the genericness of the mark
`
`PYCNOGENOL. The US Patent # 5,720,956 and a web page specimen of Respondent’s
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`web pages pleaded by Respondent with its ANSWER are also the major evidentiary facts.
`
`These pieces of evidence sufficiently established that PYCNOGENOL is the name of a
`
`single material, which has been studied in more than 220 publications for the purposes of
`
`disease treatment and prevention for the last 3 decades. The 220 scientific publications
`
`and the patent as the key evidential facts are self-authenticating, and do not need the
`
`complicated discovery and trials.
`
`Petitioner believes in full confidence that all the evidentiary and admissible facts,
`
`presented by both Petitioner and Respondent, fully support that Pycnogenol is generic
`
`and should be cancelled as a matter of law. The mark PYCNOGENOL is both “merely
`
`descriptive” and “deceptively misdescriptive” [15 U.S.C.§ 1052(e)(1)]. PYCNOGENOL
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`“comprises matter that, as a whole, is functional” [15 U.S.C. § 1052 (e)(5)].
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