`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA467636
`ESTTA Tracking number:
`04/17/2012
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92053495
`Defendant
`Horphag Research Management SA
`MARVIN S GITTES
`MINTZ LEVIN COHN FERRIS GLOVSKY ET AL
`CHRYSLER CENTER, 666 THIRD AVENUE
`NEW YORK, NY 10017
`UNITED STATES
`Opposition/Response to Motion
`Timur E. Slonim
`TESlonim@mintz.com
`/Timur E. Slonim/
`04/17/2012
`Registrant's Opposition to Petitioner's Motion for Summary Judgment File 1 of
`5.pdf ( 27 pages )(1708436 bytes )
`Registrant's Opposition to Petitioner's Motion for Summary Judgment File 2 of
`5.pdf ( 27 pages )(1479263 bytes )
`Registrant's Opposition to Petitioner's Motion for Summary Judgment File 3 of
`5.pdf ( 27 pages )(2392023 bytes )
`Registrant's Opposition to Petitioner's Motion for Summary Judgment File 4 of
`5.pdf ( 27 pages )(13825107 bytes )
`Registrant's Opposition to Petitioner's Motion for Summary Judgment File 5 of
`5.pdf ( 24 pages )(5417396 bytes )
`
`
`
`Attorney Docket: 27990-804
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE
`
`TRADEMARK TRIAL AND APPEAL BOARD
`
`Isotonic OPC Antioxidants, Inc.
`
`Petitioner,
`
`V_
`
`Horphag Research Management S.A.
`
`Registrant.
`
`E
`.
`
`Cancellation No. 92053495
`
`Registration No. 1769633
`
`REGISTRANT’S BRIEF IN SUPPORT OF ITS OPPOSITION TO PETITIONER’S
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`MOTION FOR SUMMARY JUDGMENT
`
`
`
`TABLE OF CONTENTS
`
`I. The Non-Movant Horphag “Cannot Present Facts Essential To Justify Its Opposition”
`Under Fed. R. Civ. P. 56(D) At This Time ........................................................................ ..l
`
`II. Petitioner’s Admissions Preclude Summary Judgment ............................................................ ..2
`
`III. The Board Already Denied Previous Summary Judgment Motion Finding Scientific
`Articles Created A Genuine Issue of Material Fact Requiring A Trial ............................. ..3
`
`A.
`
`Petitioner Has Not Defined The Relevant Audience ............................................. ..4
`
`IV. Proper Usage of the Pycnogenol® Trademark in the Pycnogenol® Bibliography (Fact
`No. 1) Supports Non-Genericness and Denial of Summary Judgment ............................. ..5
`
`A.
`
`B.
`
`C.
`
`D.
`
`FDA Regulations Are Inapplicable ..................................... .. ................................. ..7'
`
`Petitioner’s Unpleaded Claims of Functionality and Misdescriptiveness of
`the Incontestable Trademark Are Not Proper Bases for Cancellation, Are
`Not In The Case and Should Be Rejected .............................................................. ..8
`
`Petitioner’s Linguistic Arguments Are Inadmissible and Cannot Be
`Considered for Summary Judgment Purposes ....................................................... ..9
`
`Petitioner’s Self-Pronounced Requirement For Scientific Names Is Not
`Evidence of Genericness ...................................................................................... ..l0
`
`V. The Three Publications In Fact No. 2 Support Non-Genericness ........................................... ..l1
`
`VI. Four Articles Selected By Petitioner In Fact No. 3 Support Non-Genericness .................... ..l2
`
`VII. An Excerpt of Horphag’s Website Selected By Petitioner In Fact No. 4 Supports
`Non-Genericness And Denial Of Summary Judgment .................................................... ..l4
`
`VIII. The ‘956 Patent (Fact No. 5) Is Irrelevant, But If Considered, Supports Non-
`Genericness ...................................................................................................................... . . l 6
`
`IX. FDA Letter (Fact No. 6) Is Irrelevant But If Considered, Supports Non-Genericness
`And Denial Of Summary Judgment ................................................................................. ..l7
`
`X. MONOGRAPH for PYCNOGENOL® (French Maritime Pine Bark Extract) (Fact No.
`7) Supports Non-Genericness .......................................................................................... ..l7
`
`XI. Petitioner’s Alteration of Horphag’s Response to RFA No. 2 (Petitioner’s Fact No. 8)
`Is Improper But Supports Non-Genericness .................................................................... ..l9
`
`XII. Petitioner’s Fact No. 9 Supports Non-Genericness .............................................................. ..20
`
`XIII. Petitioner’s Fact No. 10 Supports Non-Genericness And Denial Of Summary
`Judgment .......................................................................................................................... ..20
`
`XIV. Horphag’s Labeling Policy Supports Non-Genericness ..................................................... ..23
`
`XV. Petitioner’s Improper Reply To Horphag’s Answer Should Be Stricken ............................ ..24
`
`CONCLUSION ............................................................................................................................ ..24
`
`
`
`Horphag Research Management S.A. (“Registrant” or “Horphag”) hereby opposes
`
`Petitioner’s Motion for Summary Judgment.
`
`I. The Non-Movant Hor ha “Cannot Present Facts Essential To Justi
`
`Its
`
`Opposition” Under Fed. R. Civ. P. 561D) At This Time
`
`Petitioner’s summary judgment motion should be denied under Fed. R. Civ. P. 56(d),
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`formerly 56(f),1 because Petitioner made it in the middle of the discovery period (now set to
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`close on May 30, 2012) while refusing to provide any discovery to Horphag. Thus Horphag
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`“cannot present facts essential to justify its opposition.” Fed. R. Civ. P. 56(d). Petitioner’s refusal
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`necessitated Horphag’s filing of a motion to compel on March 26, 2012 which is fully briefed
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`and awaiting resolution. Without knowing the full extent of Petitioner’s documents and evidence,
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`which it refuses to produce, Horphag cannot conduct necessary discovery, such as a deposition
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`of Petitioner, nor can it fully determine which experts it will need to engage or have its engaged
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`experts complete their reports. (Slonim Decl. fi[ 4)
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`For example, in order to oppose this summary judgment motion, Horphag needs to
`
`receive Petitioner’s documents showing Petitioner’s own usage, its customers’ and suppliers’
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`usage, and the general public’s usage of “Pycnogenol” regardless of capitalization or use of the
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`“®” symbol, documents comparing various brands of pine bark extract including Pycnogenol®
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`pine bark extract, and documents regarding any research allegedly performed by Petitioner
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`related to Pycnogenol® pine bark extract. Horpahg also needs to receive Petitioner’s production
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`of documents showing proper usage of true scientific and generic terms such as oligomeric
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`proanthocyanidins (“OPCS”), flavonoids, pine bark extract, etc. in connection with Petitioner’s
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`competing pine bark extract products and Petitioner’s other antioxidant products. These
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`documents will demonstrate that Petitioner and others understood the difference between the use
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`“Subdivision (d) carries forward without substantial change the provisions of former
`1
`subdivision (f).” Adv. Comm. Notes, 2010 Amendments.
`
`1
`
`
`
`of generic terms such as oligomeric proanthocyanidins (“OPCS”), “pine bark extract” or
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`“antioxidants” and the trademark at issue, “Pycnogenol.” (Slonim Decl. 111} 5, 6)
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`Petitioner’s use of its own misconduct as a sword in refusing to provide relevant
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`discovery and then boast that at this time”[‘_t]here is an absence of evidence to support the
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`nonmoving party’s case in this cancellation proceeding” (SJ Mot. at 21), should not be rewarded
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`by the Board. This is not a situation Horphag created. It dutifully sought relevant discovery and
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`when Petitioner refused, filed a motion to compel. Therefore, “facts [essential to justify its
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`opposition] are unavailable to the nonmovant,” Horphag, and Petitioner’s summary judgment
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`motion should be denied. Fed. R. Civ. P. 56(d).
`
`II. Petitioner’s Admissions Preclude Summa1_'y Judgment
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`Petitioner’s admissions in its summary judgment motion, which agree with Horphag’s
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`position, preclude summary judgment and mandate a judgment of non-genericness. Horphag has
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`long said that the relevant generic terms here are pine bark extract and OPC. (Dkt. 4 at 13)
`
`Petitioner now agrees:
`
`existing generic names such as pine bark extract and OPC (Oligomeric
`ProanthoCyanidins, - the name of the major chemical components in pine bark
`extract).... (SJ Mot. at 17)
`
`Horphag also strenuously urges that Pycnogenol® is a trademark and is used and perceived as
`
`such. Petitioner now agrees:
`
`PYCNOGENOL, as a trademark of dietary supplement, is extensively stated
`in more than 220 scientific publications. (SJ Mot. at 6)2
`
`These 220 article entries in the Bibliography as 220 pieces of evidence firmly
`establish that PYCNOGENOL, as a mark of dietary supplement...(SJ Mot. at 6)
`
`Petitioner’s claim that trademark PYCNOGENOL has been extensively used
`as a name in communicating the results of the 220 scientific studies for the last 3
`
`2 All emphasis has been added and all citations and quotations omitted in this brief except where
`otherwise noted.
`
`
`
`decades. (SJ Mot. at 15-16)
`
`Petitioner is no interloper and has the commercial interest in using public
`scientific information, some of which is flooded by a trademark
`PYCNOGENOL. (SJ Mot. at 3)
`
`If the printed publications were “flooded by a trademark PYCNOGENOL,” as Petitioner
`
`admitted, then it cannot be generic as it has been extensively used and understood as a
`
`trademark. Petitioner’s summary judgment motion should be denied.
`
`III. The Board Already Denied Previous Summarv Jud mom Motion Findin v
`
`
`
`Scientific Articles Created A Genuine Issue of Material Fact Reguiring A Trial
`
`This is Petitioner’s second attempt at summary judgment. In response to Horphag’s
`
`motion for judgment on the pleadings, which the Board treated as a motion for summary
`
`judgment, Petitioner filed his own cross-motion for summary judgment. He captioned it a
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`Motion for ACR but included a request for summary judgment in the text (Dkt. 10, at 15
`
`(“Information and Documents for Summary Judgment”)). Quoting from Gabriele D’Andrea’s
`
`article, the Board denied the summary judgment motion because it found that “[a]t a minimum,
`
`and as the above excerpt demonstrates, there exists a genuine dispute that precludes the grant of
`
`summary judgment” of non-genericness. (Dkt. 16, Order at 3-4)
`
`Petitioner has now proffered the same Gabriele D’Andrea’s article as evidence
`
`supporting his second round of summary judgment of genericness. But the Board has already
`
`held that, as exemplified by the Gabriele D’Andrea’s article, it and other articles created genuine
`
`issues of material fact not amenable to summary judgment. Therefore, Petitioner’s summary
`
`judgment motion should be denied.
`
`In addition, a review of the scientific literature demonstrates an overwhelming amount of
`
`proper usage and references to and correspondingly proper perception of Pycnogenol® as a
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`
`
`trademark or brand name of Horphag for its proprietary pine bark extract.3
`
`A.
`
`Petitioner Has Not Defined The Relevant Audience
`
`Petitioner has not explicitly defined who is the relevant public for the Pycnogenol®
`
`Trademark to test its allegations of genericness. Petitioner simply focuses on his own
`
`understanding and perception and presumably that of other scientists based solely on reading a
`
`few selected articles, some of which are listed in the Pycnogenol® Bibliography. The relevant
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`public cannot consist of a single member, Petitioner, as he is an interested party who self-
`
`servingly, intentionally tried to genericize the Pycnogenol® Trademark by removing registration
`
`symbols and changing Pycnogenol® to lower case. (Dkt. 4 at 2-5) Even assuming that some
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`other scientists are the proper audience, Petitioner has not submitted any evidence from such
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`scientists demonstrating their understanding of the Pycno geno1® Trademark--upon studying the
`
`articles listed in the Pycnogenol® Bibliography. Given that this is the first time Petitioner
`
`attempted to essentially define the relevant audience, as himself or other scientists, Horphag has
`
`not yet had a chance to identify relevant scientists and procure their expert reports. (Slonim Decl.
`
`117)
`
`Petitioner failed to support its motion with any admissible evidence regarding anyone’s
`
`usage, understanding, and perception of the Pycnogenol® Trademark. The proper audience in
`
`this case is the ultimate consumers interested in or taking nutritional and dietary supplements.
`
`Petitioner is the party with the burden of proof in this Cancellation. Therefore, its summary
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`judgment motion should be denied.
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`If the articles themselves are considered to demonstrate the perception of their authors
`
`3 Given that Petitioner did not assert any need to use the trademark “Pycnogenol®” to refer to its
`pine bark extract because it uses the generic terms —pine bark extract——to identify its ingredient,
`Oligopin ® French maritime pine bark extract OPC, Petitioner lacks standing based on any
`cognizable commercial interest to petition for cancellation of the Pycnogenol® Trademark. (See
`Dkt. 14 at 2-3)
`
`
`
`and of the other scientists who read these and other articles, it is clear that the overwhelming
`
`majority of them properly convey the trademark status of Pycnogenol®. At the very least, such
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`proper usage and perception of the trademark status of Pycnogenol® creates a genuine issue of
`
`material fact for trial and precludes summary judgment.
`
`IV. Proper Usage of the Pvcn0gen0l® Trademark in the Pvcn0genol® Bibliographv (Fact
`N0. 1) Supports Non-Genericness and Denial of Summa1_'y Judgment
`
`Petitioner’s arguments about the Pycnogenol® Bibliography are misplaced. First, the
`
`Pycnogenol® Bibliography is only available on the part of Horphag’s website for non-US,
`
`% audiences4 and Petitioner presented no evidence that US consumers ever read it or are
`
`influenced by it. Second, Pycnogenol® related papers, and the Pycnogenol® Bibliography, are
`
`not available at or provided to retail consumers at retail stores. They are not included on the
`
`labels of finished product containing Pycnogenol® pine bark extract and are not marketing
`
`literature.
`
`Third, because the Pycnogenol® Bibliography is only accessible on the website, it is
`
`important to understand how a person would get to the website. The very first encounter with the
`
`www.pycnogenol.com website typically occurs by virtue of search engine results. They inform
`
`the visitor upfront that Pycnogenol® is a trademark for Horphag’s proprietary extract:
`
`Pycnogenol.com
`Informational web site on Pycnogenol®, French maritime pine bark extract
`included in dietary supplements, cosmetics and functional food/beverages for
`heart...
`
`www.pycnogenol.com/ (Ex. B)
`
`Fourth, in eve1_'y instance where the Pycnogenol® Trademark is used in the
`
`Pycnogenol® Bibliography, it is initially capitalized E accompanied by a registration symbol.
`
`4 Horphag maintains a separate website, www.pycnogenol.us, for US audiences, which is also
`accessible through www.pycnogenol.com, which also has separate content for non-US
`audiences. (Ex. A)
`
`
`
`Moreover, on almost every page, the Pycnogenol® Trademark is mentioned in connection with
`
`the type of goods it is applied to, French maritime pine bark extract. Indeed, this includes page 6,
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`the page for which Petitioner complains, where such an entry is present even though Petitioner
`
`omitted its mention from its summary judgment papers (SJ Mot. at 5):
`
`Ref. 233 Pycnogenol® lowers platelet hyperactivity more effectively than aspirin in a
`type I diabetes pharmacologic model suggesting a protective effect from
`thrombosis in diabetes.
`
`Nocun M, Ulicna O, Muchova J, Durackova Z, Watala C
`French maritime pine bark extract (Pycnogenol®) reduces thromboxane
`generation in blood from diabetic male rats.
`Biomed Pharmacother 62: 168-172, 2007 (Ex. C, Bibliography, page 6)
`
`Other such entries on other pages of the Pycnogenol® Bibliography abound:
`
`Ref. 160 Monograph on Pycnogenol® covering pharmacological activities and clinical
`benefits.
`
`Rohdewald P
`
`Pycnogenol®, French Maritime Pine Bark Extract.
`Encyclopedia of Dietary Supplements; Ed. Marcel Dekker, digital pub., 545-
`553, 2005
`
`Ref. 169 Monograph on Safety and efficacy aspects of Pycnogenol®.
`Blumenthal M
`
`Pycnogenol® (French Maritime Pine Bark Extract) Pinus Pinaster Aiton
`subsp. atlantica.
`The American Botanical Council guide to Herbs, 369-373, 2003 (Ex. C,
`Bibliography, page 4)
`
`Ref. 230 CLINICAL STUDY: Pycnogenol® consumption increases vasodilatation by
`42% in young healthy men, which warrants sufficient blood and oxygen
`supply to performing muscle.
`Nishioka K, Hidaka T, Nakamura S, Umemura T, Jitsuiki D, Soga J, Goto C,
`Chayama K, Yoshizumi M, Higashi Y
`Pycnogenol®, French Maritime Pine Bark Extract, augments
`endothelium-dependent vasodilation in humans.
`Hypertens Res 30: 775-780, 2007 (Ex. C, Bibliography, page 27)
`
`Thus, anyone reading this Bibliography is immediately informed that Pycnogenol® is a
`
`trademark for Horphag’s proprietary pine bark extract, not a generic name. Without exception,
`
`every time “PYCNOGENOL” is used in the Pycnogenol® Bibliography it is used both with
`
`
`
`initial capitalization or full capitalization _zg1_d_ is accompanied by the registration symbol. This is
`
`strong indicia of Respondent’s intent for the Pycnogenol® Trademark to function as a trademark.
`
`In re International Spike, Inc., 196 U.S.P.Q. 447, 449-50 (TTAB 1977) (registrant’s intent for a
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`mark to function as a trademark demonstrated by the use of capitalization and registration ®
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`symbol with the mark and “actual and prospective purchasers would regard [the mark] as the
`
`indicia of origin of applicant’s goods, as, indeed, they would be induced to do by the manner of
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`use. . ..”); In re CNS, Inc., 2005 TTAB LEXIS 494, at *1 1-12 (TTAB Nov. 18, 2005) (same).
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`Thus, Petitioner incorrectly argues that “[t]he trademark registration symbol® or a
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`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.” (SJ Mot. at 20)
`
`Respondent has made every effort to distinguish “Pycnogenol” as an indicator of source and to
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`maintain it in that role. Therefore, the usage in the Pycnogenol® Bibliography and its perception
`
`at the very least raises a genuine question of material fact, precluding summary judgment.
`
`A.
`
`FDA Regulations Are Inapplicable
`
`The argument that “the 220 Pycnogenol®-related scientific publications” regarding
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`benefits of Pycnogenol® pine bark extract are not about Pycnogenol® pine bark extract as a
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`dietary and nutritional supplement but about “an unproven drug,” deceptively marketed without
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`an FDA -approval, is meritless. (SJ Mot. 6-7, 8, 9, 10-11, 13, 14, 21) Petitioner’s biased, self-
`
`serving perception is irrelevant as it is a figment of his imagination. Pycnogenol® related papers,
`
`and the Pycnogenol® Bibliography, are not available at or provided to retail consumers at retail
`
`stores. They are not included on the labels of finished product containing Pycnogenol® pine bark
`
`extract and are not marketing literature. (These papers are available to research and clinical
`
`professionals as indicators of initially studied attributes for further research and consideration.)
`
`Manufacturers of finished product containing Pycnogenol® pine bark extract mark their
`
`7
`
`
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`supplement packaging with an FDA-mandated disclaimer that:
`
`This information has not been evaluated by the FDA. This product is not intended to
`diagnose, treat, cure, or prevent any disease.
`
`
`
`This is sufficient to market Pycnogenol® pine bark extract as a dietary and nutritional
`
`supplement. 21 CFR § 101.93. The fact that Pycnogenol® related research studies highlight its
`
`initially studied attributes, given the disclaimer that Pycnogenol® pine bark extract is “not
`
`intended to diagnose, treat, cure, or prevent any disease,” does not transform it into an
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`unapproved drug. Therefore, the Pycnogenol® Trademark, as registered for dietary and
`
`nutritional supplements, is properly used for Pycnogenol® pine bark extracts
`
`B.
`
`Petitioner’s Unpleaded Claims of Functionality and Misdescriptiveness of the
`Incontestable Trademark Are Not Proper Bases for Cancellation, Are Not In The
`Case and Should Be Rejected
`
`For the first time on summary judgment, Petitioner raised new claims that
`
`“PYCNOGENOL, as a mark of dietary supplement is both ‘merely descriptive’ and ‘deceptively
`
`misdescriptive’ [15 U.S.C.§ 1052(e)(1)]” and ‘“is functional’ [15 U.S.C. § 1052 (e)(5)]” with
`
`respect to Petitioner’s Facts Nos. 1-5. (SJ Mot. 6-7, 8, 9, 10-11, 13, 21, 1) These new claims
`
`should be dismissed. Syngenta Crop Protection, Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1115
`
`n.3 (TTAB 2009) (unpleaded claim not considered). Petitioner never pleaded any part of section
`
`1052 in its Cancellation Petition. Horphag had no notice that Petitioner is making any such
`
`claims and has not conducted or attempted to conduct any discovery with respect to these newly-
`
`raised claims. Moreover, Registration no. 1769633 for the Pycnogenol® Trademark issued in
`
`1993 and has been incontestable at least since 2007. (Ex. D) 15 U.S.C. § 1065. Moreover,
`
`5 Despite claiming unproven drug status of Pycnogenol® pine bark extract, Petitioner admitted
`that Horphag is “a giant in the dietary supplement industry” (Dkt. 10, fi[19) and has “its dietary
`supplement product” (Dkt. 10, 1114) This is a clear admission that even Petitioner recognizes
`Pycnogenol® pine bark extract as a trademarked dietary supplement.
`
`8
`
`
`
`Petitioner’s “allegation of functionality is completely irrelevant because the subject matter in this
`
`case is a word mark shown in standard character form.” Stoller v. Sutech USA, Inc., 2005 TTAB
`
`LEXIS 464, at *7 (TTAB 2005). These new claims should be dismissed.
`
`C.
`
`Petitioner’s Linguistic Arguments Are Inadmissible and Cannot Be Considered for
`Summary Judgment Purposes
`
`Petitioner makes extensive linguistic, grammatical and other “language arts” arguments
`
`and conclusions in the Summary Judgment Motion. For example,
`
`If we follow our normal language rules, this underlined phrase
`PYCNOGENOL® (French Maritime Pine Bark Extrg) means that the first part
`French Maritime Pine Bark Extract is merely a name equivalent to
`PYCNOGENOL®. Fremsli Maritime Pine Bark 1-{xtract 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. (SJ Mot. at 14)
`
`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. (SJ Mot. at 10)
`
`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. (SJ Mot. at 6)
`
`None of these arguments are supported by testimony of a qualified linguistic expert. It is
`
`not even supported by testimony from Sengen Sun, Petitioner’s President. Nor could it be as
`
`Sengen Sun did not claim to have any education, training, or experience in the linguistic arts.
`
`Thus, Petitioner’s unsupported linguistic arguments are not evidence, are inadmissible, and
`
`should not be considered here. Fed. R. Civ. P. 56.
`
`
`
`D.
`
`Petitioner’s Self-Pronounced Requirement For Scientific Names Is Not Evidence of
`Genericness
`
`Petitioner’s entire summary judgment motion and the Cancellation Petition appear to be
`
`based on a notion that has nothing to do with the relevant public’s perception of a trademark. 15
`
`U.S.C. § 1064. Petitioner’s motion is based solely on the unsubstantiated notion that “a generic
`
`name is a must for public uses in many occasions such as in science and for govermnent uses.
`
`Consequently, this mark PYCNOGENOL has been used to play the roles of a generic name.” (SJ
`
`Mot. at 20) Petitioner cited no authority that a “generic name” is required for science, public and
`
`government uses. Indeed, there is no such requirement.6
`
`The U.S. Government expressly disagreed with Petitioner’s requirement and does not use
`
`Pycnogenol® as a generic name. For example, the National Institute of Health, a US government
`
`entity, on its “Pycnogenol: MedlinePlus Supplements” information webpage states that
`
`“Pycnogenol is the US registered trademark name for a product derived from the pine
`
`bark...” and uses it in that sense.
`
`(Ex. E at 1). When one searches the U.S. National Library of
`
`Medicine (Medline) database of the National Institute of Health, as evidenced by the searches
`
`Petitioner previously proffered to the Board (Dkt. 10, 1116, Attach. 5), six out of seven search
`
`results with “Pycnogenol” in the article’s title use Pycnogenol® with a registration symbol.
`
`(Ex. F) The summary of a clinical trial on the National Institute of Health website
`
`clinicaltrials. gov states that “Pycnogenol® is a proprietary bark extract...” and refers five
`
`more times to Pycnogenol® with initial capitalization and the registration symbol. (Ex. G at l, 2-
`
`Such a requirement is illogical. In fact, as the scientific articles from peer reviewed journals
`6
`make clear, if the subject matter of a study is a proprietary composition marketed under a
`trademark, it is not only appropriate but also crucial to refer to it by its trademarked name as a
`reader who would want to reproduce the results of the reported study would not be able to do so
`if she selects a different product (not the one studied).
`
`10
`
`
`
`3)?
`
`Petitioner’s argument is not that the public perceives Pycnogenol as a generic term for a
`
`pine bark extract. Indeed, Petitioner presented no evidence of that. Petitioner’s argument is that
`
`because he mandates that only generic names could be used in scientific articles (and some other
`
`undefined uses, which he calls public or governmental), Pycnogenol $o_uld be perceived in a
`
`generic way because it is used in scientific articles to report research findings regarding c.ertain
`
`health benefits of Horphag’s proprietary Pycnogenol® pine bark extract. There is no such
`
`requirement and Pycnogenol® is not and cannot be perceived as generic.
`
`V. The Three Publications In Fact No. 2 Support Non-Genericness
`
`Petitioner’s arguments that the three publications, which Horphag produced, support
`
`genericness are misplaced.8 In these three publications the trademark Pycnogenol® is always
`
`used with initial capitalization, usually with the registration symbol. All three quotes Petitioner
`
`selected to show genericness used “Pycnogenol” with initial capitalization and two of them with
`
`the registration symbol. (SJ Mot. at 7-8) Indeed, “Pycnogenol®” is used in the titles of all three
`
`articles, but Petitioner :-lgain deceptively 1'e1nover.'i_l'_heregistration symbol from all three titles
`
`when he mis-quoted them on page 7 of the summary judgment motion.
`
`In their text, these articles also clearly identify Pycnogenol® as a trademark of Horphag,
`
`state the type of goods for which it was adopted, and identify active ingredients by their chemical
`
`names, not as Pycnogenol®. For example:
`
`“Pycnogenol® (Horphag Research Ltd), a standardized extract from the
`bark of the French maritime pine, represents a concentrate of procyanidins
`and other phenolic compounds (Rohdewald, 2005).” (SJ Ex. Pet.-001,
`
`The popular website WebMD, as part of its vitamins and supplements information, also
`7
`advises its visitors that “Pycnogenol is the US registered trademark name for a product
`derived from the pine bark of a tree known as Pinus pinaster.” (Ex. H at 1)
`8 Horphag produced these three publications as the ones it “fly rely on” in this proceeding
`(since the time to definitively identify every exhibit for trial has not yet expired).
`
`ll
`
`
`
`Rohdewald et al. at 685)
`
`“The study tested whether a specific pine bark extract (Pycnogenol®) is
`effective in inhibiting the growth and adherence of H. pylori in vitro.” Id.
`
`“French maritime pine bark extract Pycnogenol® (Horphag Research UK)
`has shown remarkable activity for improving endothelial function and anti-
`inflammatory potency.” (SJ Ex. Pet.-001, Belcaro et al. at 228)
`
`“The aim of this study was to explore in a pilot trial whether supplementation
`with French maritime pine bark extract Pycnogenol® could alleviate side
`effects and improve patient’s quality of life.” (Id. at 227)
`
`“Pycnogenol® (PYC) is a patented standardised extract from the bark of the
`French maritime pine, Pinus pinaster (Horphag Research, Ltd, Geneva,
`Switzerland) mainly composed of procyanidins and flavonoid monomers and
`phenolic or cinnamic acids and their glycosides as minor constituents.” (SJ
`Ex. Pet.-001, Canali et al. at 1145)
`
`Indeed, the Rohdewald article refers to Pycnogenol® 49 times, the Belcaro article refers
`
`to Pycnogenol® 78 times, and the Canali article refers to Pycnogenol® 63 times. (The copies of
`
`the articles where such proper trademark use has been highlighted for the Board’s convenience
`
`are attached as Exhibit I.)9 Therefore, these three articles evidence proper trademark usage and
`
`perception of Pycnogenol® as a trademark and at the very least raise a genuine issue of material
`
`fact. Petitioner presented no admissible evidence of anyone’s contrary perception.
`
`VI. Four Articles Selected By Petitioner In Fact No. 3 Support Non-
`Genericness
`
`Petitioner is mistaken that the four selected articles show generic usage of the
`
`Pycnogenol® Trademark. The author of the first article, Gabriele D’Andrea from the University
`
`of L’Aquila in Italy, unmistakably understood and instructed the readers that
`
`only be used to refer to the specific
`The term Pycnogenol® should
`proprietary pine bark extract. (SJ Ex. 102 at 726)
`
`9 Given the myriad of uses of Pycnogenol with initial capitalization and with the registration
`symbol and with the type of goods this trademark is used for, the occasional use of initial-caps
`Pycnogenol without a registration symbol in these articles is understood as a shorthand form of
`reference to the Pycnogenol® Trademark. Such use has been used and affirmed by the courts.
`
`12
`
`
`
`now [the term “Pycn0genol®”] refers essentially to a specific blend of
`procyanidins extracted from the bark of the pine. . ., which is patented under the
`trade name of Pycnogenol (PYC) (Horphag Research, Ltd. UK, Geneva,
`Switzerland). (SJ Ex. 102 at 725)
`
`The author uses the abbreviation “PYC” as a defined abbreviation for “the trade name
`
`Pycnogenol. .. [oi] Horphag Research, Ltd. UK, Geneva, Switzerland” throughout the article 120
`
`times. Thus, PYC is typically an author selected abbreviation for the Pycnogenol® Trademark:
`
`Pycnogenol® (PYC) is a patented standardised extract from the bark of the
`French maritime pine, Pinus pirzaster (Horphag Research, Ltd, Geneva,
`Switzerland) mainly composed of procyanidins and flavonoid monomers and
`phenolic or cinnamic acids and their glycosides as minor constituents.
`
`SJ Ex. Pet.-001, Canali et. al. at 1145. The courts use similarly defined abbreviations. Horphag
`
`Research Ltd. v. Garcia, 475 F.3d 1029, 1033, 1033n.2 (9th Cir. 2007) (‘‘In 1993, Horphag was
`
`granted the United States trademark for the mark Pycnogenol. . . .All further references to
`
`Pycnogenol refer to Horphag’s trademarked product unless otherwise noted.”).
`
`The authors of the second article, You Jung Kim, Ki Sung Kang, and Takako
`
`Yokozawa—the native Korean and Japanese speakers, residing in South Korea and Japan——also
`
`properly used the Pycnogenol® Trademark as a trademark of Horphag:
`
`One milliliter of a solution of Pycnogenol® obtained from the Horphag Research
`Ltd. (Guernsey, UK).... (SJ Ex. 103 at 2467)
`
`The authors of the third article, Tanja Grimm, Angelika Schafer, and Petra Hogger—the
`
`native speakers of German, residing in Germany——used Pycn
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