Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA461420
`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
`EXHIBIT PET-005 Label.pdf ( 1 page )(1324 bytes )
`EXHIBIT PET-005.pdf ( 11 pages )(300417 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`
`ESTTA461420
`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
`EXHIBIT PET-005 Label.pdf ( 1 page )(1324 bytes )
`EXHIBIT PET-005.pdf ( 11 pages )(300417 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`
`
`EXHIBIT PET-005
`
`EXHIBIT PET—OO5EXHIBIT PET—OO5
`
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Petitioner,
`
`Cancellation No. 92053495
`
`
` Isotonic OPC Antioxidants, Inc.
`
`Horphag Research Management S. A.
`
`Registrant/Respondent.
`
`vs.
`
`Registration No. 1769633
`
`REGISTRANT’S RESPONSES AND OBJECTIONS TO PETITIONER’S FIRST
`
`REQUEST FOR ADMISSIONS TO REGISTRANT
`
`1. Admit that there is at least one Federal law in the United States of America that
`prohibits commercial companies from using science in promoting commercial
`brand names of dietary supplement products.
`
`Response to Request N0. 1:
`
`Denied. Horphag objects to this request as vague because it does not identify the
`
`specific law for which an admissionis requested. Horphag also objects to this request as
`
`it calls for a legal conclusion which is not a proper subject matter for requests for
`
`admission and is irrelevant.
`
`2. 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 scientificlgeneric names.
`
`Response to Reguest 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
`
`1
`
`
`
`science and how scientific discoveries 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.
`
`3. Admit that Registrant has a current annual budget of US$1 .5M in promoting the
`use of Pycnogenol®, PYCNOGENOL® or Pycnogenol in the description of
`scientific studies in the scientific literature.
`
`Response to Reguest No. 3:
`
`Denied except Horphag admits that it has an approximate annual budget in 2012
`
`of about $1.5 million for sponsoring research and clinical trials worldwide into the health
`
`benefits of Horphag’s proprietary Pycnogenol® pine bark extract, which in turn results in
`
`publication of the results of such research in appropriate publications. Horphag denies
`any implication that it improperly “promot[es] the use ofPycnogenol®,
`
`PYCNOGENOL® or Pycnogenol in the description of scientific studies in the scientific
`
`literature.”
`
`4. Admit that, in more than 220 scientific publications for about 3 decades,
`Pycnogeno1®, Pycnogenol or PYC has been used as a noun in ‘referring a
`material, prepared from pine bark, for the purpose of the scientific description of
`the biological and physiological properties of the material preparation.
`
`Response to Reguest N0. 4:
`
`Horphag objects to this request as vague because it does not identify which ones
`
`of the many publications related to the health benefits of I-Iorphag’s proprietary
`
`Pycnogenol® pine bark extract are included in the request. Therefore, Horphag carmot
`
`admit or deny it. To the extent the request can be understood to refer to the publications
`
`profiled in the Pycnogenol® Bibliography, it is denied.
`
`
`
`5. Admit that more than 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.
`
`Response to Reguest No. 5:
`
`Horphag objects to this request as Vague because it does not identify which ones
`
`of the many publications related to the health benefits of Horphagsproprietary
`
`Pycnogenol® pine bark extract are included in the request. Therefore, Horphag cannot
`
`admit or deny it. Horphag also objects to this request as calling for a legal conclusion
`
`which is not a proper subj ect matter for requests for admission and is irrelevant. To the
`
`extent the request can be understood to refer to the publications profiled in the
`
`Pycnogenol® Bibliography, it is denied.
`
`6. Admit that more than 220 Pycnogenol®-related scientific publications 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.
`
`Response to Reguest No. 6:
`
`Horphag objects to this request as vague because it does not identify which ones
`
`of the many publications related to the health benefits of Horphag’s proprietary
`
`PycI1ogenol® pine bark extract are included in the request. Therefore, Horphag cannot
`
`admit or deny it. I-Iorphag also objects to this request as calling for a legal conclusion
`
`which is not a proper subj ect matter for requests for admission and is irrelevant. To the
`
`extent the request can be understood to refer to the publications profiled in the
`
`Pycnogenol® Bibliography, it is denied.
`
`7. Admit that the US FDA requires that therapeutic and drug properties, pursuant to
`the Federal Food, Drug, and Cosmetic Act, be described in science using
`scientific/generic names of the underlying chemicals.
`
`
`
`Response to Reguest No. 7:
`
`Denied. Horphag objects to this request as vague because it does not identify the
`
`specific law and regulation for which an admission is requested. Horphag also objects to
`
`this request as it calls for a legal conclusion which is not a proper subject matter for
`
`requests for admission and is irrelevant.
`
`8. Admit that DIETARY SUPPLEMENT and PHAMARCEUTICAL
`
`PREPARATION FOR DISEASE TREATMENT AND PREVENTION are two
`
`distinct subclasses in the classification of the trademark law.
`
`Response to Request No. 8:
`
`Horphag objects to this request as vague because no particular class from the
`
`International Classification ofGoods and Servicesfor the Purposes ofthe Registration of
`
`Marks is identified to which the two alleged subclasses belong. Horphag objects to this
`
`request as vague because the term “distinct” is undefined. Horphag also objects to this
`
`request as it calls for a legal conclusion which is not a proper subject matter for requests
`
`for admission and is irrelevant. To the extent the request is understood. to refer to Class 5
`
`of the International Classification of Goods and Servicesfor the Purposes ofthe
`
`Registration ofMarks, the request is denied as Class 5 does not include the two alleged
`
`subclasses and the trademark subclasses for classification of goods and services are not
`
`necessarily mutually exclusive and do not necessarily identify the specific goods and
`
`services in a trademark application.
`
`9. Admit that Pycnogenol is not a lawfully registered trademark in the subclass of
`PHAMARCEUTICAL PREPARATIONS FOR DISEASE TREATMENT AND
`PREVENTION
`
`Response to Reguest No. 9:
`
`Horphag objects to this request as Vague because no particular class from the
`
`International Classification of Goods and Services for the Purposes ofthe Registration of
`
`4
`
`
`
`Marks is identified to which the alleged subclass belong. Horphag also objects to this
`
`request as it calls for a legal conclusion which is not a proper subject matter for requests
`
`for admission and is irrelevant. Horphag admits that the trademark registration at issue
`
`here identifies its goods as dietary and nutritional supplements in the International Class
`
`5 (US Class 18).
`
`10. Admit that Registrant has been using a dietary supplement trademark
`Pycnogenol® or Pycnogenol as a noun in the scientific descriptions of
`drug/therapeutic properties of the underlying chemical preparation in more than
`220 scientific publications for about two decades.
`
`Response to Reguest No. 10:
`
`Horphag objects to this request as vague because it does not identify which ones
`
`of the many publications related to the health benefits of Horphag’s proprietary
`
`Pycnogenol® pine bark extract are included in the request. Therefore, Horphag cannot
`
`admit or deny it. To the extent the request can be understood to refer to the publications
`
`profiled in the Pycnogenol® Bibliography, it is denied.
`
`11. Admit that Pycnogenol®, as a trademark of dietary supplement product, is stated
`as drugs in more than 220 scientific publications.
`
`Response to Reguest No. 11:
`
`Denied. Horphag objects to this request as vague and unintelligible as it refers to
`
`“a trademark
`
`[being] stated as drugs.”
`
`12. Admit that there is a Federal law that prohibits a manufacturer of dietary
`supplement products from confusing consumers between its supplement products
`and a drug using any misleading and false statements of any kind.
`
`Response to Reguest No. 12:
`
`Denied. Horphag objects to this request as vague because it does not identify the
`
`specific law for which an admission is requested. Horphag also objects to this request as
`
`
`
`it calls for a legal conclusion which is not a proper subject matter for requests for
`
`admission and is irrelevant.
`
`13. Admit that one of Registrant’s purposes to use the mark Pycnogenol ® massively
`in scientific publications on drug properties is to make hugely higher profits by
`confusing consumers on its dietary supplement product with drugs.
`
`Resgonse to Reguest No. 13:
`
`Denied.
`
`l4. Admit that one of the other purposes for Registrant’s use of the trademark
`Pycnogenol® massively in scientific publications is to prevent its commercial
`competitors from using (referencing) them.
`
`Response to Reguest No. 14:
`
`Denied.
`
`15. Admit that Exhibit 101 in the attachment is a true and accurate reproduction of a
`genuine original of SCIENTIFIC AND CLINICAL MONOGRAPH FOR
`PYCNOGENOL®.
`
`Response to Request No. 15:
`
`Admitted that Exhibit 101 appears to be a copy of American Botanical Council
`
`Proprietary Botanical Ingredient SCIENTIFIC AND CLINICAL MONOGRAPH FOR
`
`PYCNOGENOL® (French Maritime Pine Bark Extract) Pinus pinasrer Aiton subsp.
`
`atlantica [Fam. Pinaceae], although a word-for-Word comparison has not been conducted.
`
`16. Admit that Exhibit 102 is a true and accurate reproduction of a genuine original
`publication:
`"
`
`Gabriele D’Andrea “A BLEND OF PROCYANIDINS WITH MULTIFACETED
`
`THERAPEUTIC APPLICATIONS?” Fitoterapia 81 (2010) 724-736.
`
`
`
`Response to Reguest No. 16:
`
`Admitted that Exhibit 102 appears to be a copy of D’Andrea, Pycnogenol: A
`
`Blend Of Procyanidins With Multifaceted Therapeutic Applications‘? Fitorerapia 81
`
`(2010) 724-736, although a word-for-word comparison has not been conducted.
`
`17. Admit that Exhibit 103 is a true and accurate reproduction of a genuine original
`paper:
`
`You Jung Kim, Ki Sung Kang, Takako Yokozawa. “THE ANTI-
`
`MELANOGENIC EFFECT OF PYCNOGENOL BY ITS ANTI-OXIIDATIVE
`
`ACTIONS” Food and Chemical Toxicology 46 (2008) 2466e2471.
`
`Response to Reguest No. 17:
`
`I Admitted that Exhibit 103 appears to be a copy of Kim et al., The Anti-
`
`Melanogenic Effect Of Pycnogenol By Its Anti-Oxidative Actions, ood and Chemical
`
`Toxicology 46 (2008) 2466-2471, although a word-for-word comparison has not been
`
`conducted.
`
`18. Admit that Exhibit 104 is a true and accurate reproduction of a genuine original
`paper:
`
`TANJA GRIMM, eta1“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.
`
`Response to Request No. 18:
`
`Admitted that Exhibit 104 appears to be a copy of Grimm, et aI., 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, although a word-for-
`
`word comparison has not been conducted.
`
`19. Admit that Exhibit 105 is a true and accurate reproduction of a genuine original
`paper titled “SINGLE AND MULTIPLE DOSE PHARMACOKINETICS OF
`MARITIME PINE BARK EXTRACT (PYCNOGENOL) AFTER ORAL
`ADMINISTRATION TO HEALTHY VOLUNTEERS” BMC Clinical
`Pharmacology 2006, 6:4 (http://www.bi0medcentral.com/1472-6904/6/4 )
`
`Response to Reguest No. 19:
`
`Admitted that Exhibit 105 appears to be a copy of Grimm et al., Single and
`
`multiple dose pharmacokinetics of maritime pine bark extract (Pycnogenol) after oral
`
`administration to healthy volunteers, BMC Clinical Pharmacology 2006, 6:-4,.although a
`
`word-for-word comparison has not been conducted.
`
`20. Admit that Exhibit 106 is a true and accurate reproduction of a genuine original
`paper by J. C. Maroon, J. W. Best, and A Maroon, titled “NATURAL ANTI-
`INFLAMMATORY AGENTS FOR PAIN RELIEF” Surg Neural Int 2010, 1:80.
`http://wWw.ncbi.nlm.nih.gov/pubmed/21206541
`
`Response to Reguest No. 20:
`
`Denied.
`
`21. Admit that the word “Pycnogenol” was coined in 1979 by French scientist
`Masquelier as a scientific/generic name for the purpose of scientific description of
`chemical complexes extracted from plants such as pine bark.
`
`Response to Reguest No. 21:
`
`Horphag carmot admit or deny this request as it is not privy to the mental
`
`deliberations of Mr. Masquelier.
`
`22. Admit that the word “Pycnogenol” has been widely used as a scientific/generic
`term in scientific literature for the last 3 decades for a polyphenolic complex
`extracted from plants such as pine bark, as exemplified by Exhibit 102 -106. For
`example, in Exhibit 106, it says at one point:
`
`“Pycnogenol (maritime pine bark)
`
`
`
`Pycnogenol, like white willow bark, is a nutraceutical material that has
`been used since ancient times. Pycnogenol is derived from the bark of the
`maritime pine tree [Pinus maritima) and has been used for more than 2000
`3/cg. It has been considered helpful for wound healing, treating scurvy,
`healing of ulcers, and reducing vascular inflammation. It contains a potent
`blend of active polyphenols, which includes catechin, taxifolin,
`procyanidins, and phenolic acids. It is one of the most potent antioxidant
`compounds currently known. [1 7,1 18]”
`
`Response to Reguest No. 22:
`
`Denied since the Pycnogenol® trademark has not been widely-used as a
`
`scientific/generic term in scientific literature for the last 3 decades. Horphag further avers
`
`that it has been and is vigorously policing the marketplace to prevent any improper usage
`
`of the Pycnogenol® trademark.
`
`23. Admit that the actual number of scientific publications mentioning Pycnogenol is
`much higher than 220, because Pycnogenol is not the main topic or subject in a
`vast number of publications, but as minor part of the articles for purposes such as
`comparison of scientific data, or arguments to support a non-Pycnogenol related
`major subject. An example is shown by Exhibit 106.
`
`Response to Reguest No. 23:
`
`Denied. Horphag obj ects to this request as Vague because Petitioner has not
`
`defined what constitutes the main topic/subject and minor part of a publication. Horphag
`
`also objects to this request as vague because it does not identify which ones of the many
`
`publications related to the health benefits of Horphag’s proprietary Pycnogenol® pine
`
`bark extract are included in the request.
`
`24. Admit that those publications with minor mentions of Pycnogenol (as Pycnogenol
`is not the main subject) is countless.
`
`Response to Reguest N0. 24:
`
`Denied. Horphag objects to this request as vague because Petitioner has not
`
`defined what constitutes the main subject of and minor mentions in a publication.
`
`
`
`Horphag also objects to this request because it did not present the objects it purports to
`
`request Horphag to count.
`
`25. Admit that, as a trademark owner, Registrant has the obligations to police its
`trademark and to have the first-hand knowledge of the uses of its mark.
`
`Response to Request No. 25:
`
`Denied except Horphag admits that as the Registrant of the trademark at issue it
`
`has certain obligations, including policing, which it has fully fulfilled.
`
`26. Admit that Registrant must therefore have all the authenticated scientific
`publications related to the uses of Pycnogenol®, and must bear the full obligation
`to authenticate all the articles in dispute for this legal proceeding, unless
`Registrant wants to abandon its mark.
`
`Response to Reguest No. 26:
`
`Denied. Horphag has no obligation, and is not in a position, to authenticate
`
`documents authored by third parties. Horphag has not and will not abandon its famous
`
`mark as already recognized by the United States Court of Appeals for Ninth Circuit in
`
`Horphag Research Ltd. v. Garcia, 475 F.3d 1029, 1038 (9th Cir. 2007).
`
`Dated: February 27, 2012
`
`HORPHAG RESEARCH MANAGEMENT
`S.A.,
`By its attorneys
`
`77%ém.
`
`Marvin S. Gittes
`
`Timur E. Slonim
`
`Joseph M. DiCiocci0
`MINTZ LEVIN COHN FERRIS.
`
`GLOVSKY and POPEO, P.C.
`
`Chrysler Center
`666 Third Avenue
`
`New York, NY 10017
`
`(212) 935-3000
`
`
`
`Cancellation No. 92053495
`
`Mark: PYCNOGENOL
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that I caused a true and correct copy of REGISTRANTS
`RESPONSES AND OBJECTIONS T0 PETITIONER’S FIRST REQUEST FOR
`ADMISSIONS TO REGISTRANT, to be served on Petitioner by US First Class Mail,
`postage prepaid, this 27th day of February, 2012, in an envelope addressed as follows:
`
`Sengen Sun, Ph.D.
`Isotonic OPC Antioxidant, Inc.
`8838 La Camesa St.
`
`San Diego, CA 92129
`
`By:
`
`v“¢é¢crI«
`
`Timur E. Slonim
`
`ll
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