Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA515114
`ESTTA Tracking number:
`01/09/2013
`
`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
`Opposition/Response to Motion
`Sengen Sun, PhD
`info@amerinutra.net
`/Sengen Sun/
`01/09/2013
`Opposition to Motion to Compel.pdf ( 3 pages )(7767 bytes )
`EXHIBIT Label.pdf ( 1 page )(1292 bytes )
`EXHIBIT 1.pdf ( 7 pages )(56823 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`

`
`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 OPPOSITION TO REGISTRANT’S MOTION TO COMPEL
`
`DISCOVERY
`
`Registrant must be denied for its compel motion, as Petitioner has made all
`
`necessary responses to those of Registrant’s discovery requests that are RELEVENT to
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`the issue o this proceeding. Registrant requested too many things that are irrelevant.
`
`To clarify, Petitioner has so far produced a total of 64 documents to respond
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`Registrant’s discovery requests, including 15 documents that were just made available to
`
`Petitioner and sent to Registrant’s Counsel on January 6.
`
`Exhibit 1, as an example, shows the information of these 15 additional
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`documents.
`
`The 64 documents show how the terms PYCNOGENOL, PYCNOGENOLS and
`
`PYC are used
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`in
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`the relevant public,
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`including
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`the dictionary definition of
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`PYCNOGENOL that has a plural form - PYCNOGENOLS. There are a huge number of
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`
`
`1
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`

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`documents in the public. Petitioner has the limited ability to produce the whole world, but
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`a limited number of specimens, which can clearly paint a whole picture how the terms
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`PYCNOGENOL, PYCNOGENOLS and PYC have been continuously used for the last
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`decades, since they were first used by French scientist Masquelier in 1979.
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`The Petitioner will continue to release any important and RELEVENT documents
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`on a continued basis once they are made available to Petitioner.
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`This issue of this proceeding is about how the term PYCNOGENOL is used by
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`the relevant public. Any internal documents held by either of the parties have no role in
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`any possible conclusion of the genericness of the mark PYCNOGENOL. Those requests
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`must be denied.
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`Finally, Petitioner respectfully requests that Respondent's Motion to Compel be
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`dismissed as it does not have legal merit.
`
`
`
`Sincerely,
`
`Signature: /Sengen Sun/ Dated: 01/09/2013
`
`Printed Name: Sengen Sun, PhD
`Isotonic OPC Antioxidant, Inc.
`Mailing address: 8838 La Camesa Street, San Diego, CA 92129.
`
`
`
`2
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`

`
`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.
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and correct copy of the foregoing PETITIONER’S
`
`OPPOSITION TO REGISTRANT’S MOTION TO COMPEL DISCOVERY is
`
`being sent via USPS Priority Mail to Addressee, postage prepaid, this 9th day of January,
`
`2013, in an envelop addressed to Registrant’s legal counsel as follow:
`
`
`MARVIN S. GITTES
`MINTZ LEVIN COHN FERRIS.....
`666 3RD AVE, FL 24
`CHRYSLER CENTER
`NEW YORK, NEW YORK 10017
`
`
`
`Signature: /Sengen Sun/
`
`Signed By: Sengen Sun, PhD
`President
`Isotonic OPC Antioxidant, Inc., 8838 La Camesa Street, San Diego, CA 92129
`
`
`
`3
`
`

`
`EXHIBIT 1
`EXHIBIT 1
`
`
`
`

`
`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 4TH SUPPLEMENT OF RESPONSES TO REGISTRANT’S
`
`FIRST SET OF REQUESTS FOR PRODUCTION OF DOCUMENTS TO
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`PETITIONER For Request #1, 5 and 47
`
`Request #47: All documents that Petitioner may use as exhibits at a trial in this
`action or at any deposition or hearing in this action.
`
`
`Response: Request # 47 is similar to #1 and #5. All the documents released to Registrant
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`earlier or introduced to the record of this proceeding may be used at a trial or at any
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`deposition whenever necessary. Petitioner hereby provides another 15 easy specimens in
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`response to Respondent’s Requests # 47, #1 and #5, as today, 01/06/2013.
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`
`
`
`
`The 15 documents is being sent in the attached CD (Attachments 20011-20015),
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`showing that PYCNOGENOL and PYCNOGENOLS are general generic terms from
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`sources such as grape seed and pine bark. The total number of the documents produced
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`1
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`

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`by Petitioner to respond Registrant's discovery requests has been 64 (1 + 2 + 36 + 10 +
`
`15).
`
`Here are some quotes from the current 15 documents:
`
`1). “Pycnogenol (OPC’s) can also be found in grape seeds, lemon tree bark,
`peanuts, cranberries and citrus peels. Pycnogenol is also made from Grape Seed
`Extract. Studies have not yet concluded as to whether Pycnogenol made from
`Grape Seed Extract is as potent as Pycnogenol from Maritime Pine Bark Extract.”
`Attachment 20011
`(http://franklintnvet.com/pycnogenol-pet-treatments/)
`
`2). “Pycnogenol is also the name of a group of compounds that contain
`proanthocyanidins taken from a number of natural sources, such as grape seeds
`(see Grapes) and other plants.”
`Attachment 20012
`http://www.cancer.org/treatment/treatmentsandsideeffects/complementaryandalter
`nativemedicine/herbsvitaminsandminerals/pine-bark-extract
`American Cancer Society
`
`3). 9 Grape seeds and pine bark contain similar substances called OPCs
`(oligomeric proanthocyanidin complexes) or pycnogenols. Pycnogenol is also the
`name of one brand of pine bark extract.:
`Attachment 20013
`http://www.longwoodherbal.org/opcs/opcs.ph.pdf
`Author: Kathi J. Kemper, MD, MPH
`Dr. Kathi J. Kemper is the Caryl J Guth Chair for the Center for Integrative
`Medicine at Wake Forest School of Medicine and the Director of the Center for
`Integrative Medicine at Wake Forest Baptist Health.
`
`4). "Truth: Jacques Masquelier coined the word pycnogenol to describe an entire
`class of bioflavanoids that are composed of polyphenols, or Proanthocyanidin
`complexes, also referred to as Oligomeric Proanthocyanidin Complexes (OPCs).
`Masquelier patented a process to extract Proanthocyanidin from both pine bark in
`1951, and grape seeds in 1970. The name pycnogenol, was intended as a scientific
`name for this class of bioflavanoids, whether extracted from pine bark, lemon tree
`bark, grape seeds, grape skins, or cranberries, etc. To use it as a trade name for
`Proanthocyanidin extracted only from pine bark is like using the name
`Tocopherol, the scientific name for Vitamin E, as a trademark only for Vitamin E
`extracted from soybeans, and prohibiting its rightful scientific use in describing
`the Vitamin E extracted from wheat germ, or sunflower seed, etc."
`Attachment 20014
`http://yourhealth.tripod.com/main/grapefact.htm
`Author: Clark Hansen, N.M.D.
`
`
`
`
`2
`
`

`
`5). “Grape seeds are a potent source of proanthocyanidins, or pycnogenols
`containing naturally occurring proanthocyanidins, natural powerful Antioxidant”
`Attachment 20015
`http://tsangenterprise.com/grapeseed.htm
`6). “Pycnogenol® is a patented extract made from the bark of French maritime
`pine trees. It is used as an active ingredient in a variety of different dietary
`supplements. Do not confuse it with the term "pycnogenols," a general term used
`to describe some of the active components of Pycnogenol. Other sources, such as
`grape seed extract, contain pycnogenols, but they are not the same thing.”
`Attachment 20016
`http://asthma.emedtv.com/pycnogenol/pycnogenol.html
`
`7). “Grape seed extract contains pycnogenols, a generic chemical term for
`oligometric proanthocyanadins, found in tree bark, grapes and red wine, cocoa,
`apples and cranberries. Pycnogenols are a class of bioflavonoid, an important
`antioxidant.”
`Attachment 20017
`http://www.ehow.com/facts_6816647_pycnogenol-extracted-grape-seeds.html
`
`8). “Oligomeric proanthocyanidin complexes (OPCs) or pycnogenols are
`extracted commercially from either grape seeds or maritime pine bark and sold
`under trade names such as Pycnogenol®.”
`“The naming of these compounds is complex and is made more confusing by the
`fact that one of the generic terms, pycnogenols, is also patented as a trade name
`for one particular product, Pycnogenol®.
`Attachment 20018
`http://www.longwoodherbal.org/opcs/opcs.pdf
`Author: Kathi J. Kemper, MD, MPH
`Dr. Kathi J. Kemper is the Caryl J Guth Chair for the Center for Integrative
`Medicine at Wake Forest School of Medicine and the Director of the Center for
`Integrative Medicine at Wake Forest Baptist Health.
`
`9). “pycnogenols
`What are pycnogenols?
`Pycnogenols (pik-nod-je-nols) are a powerful combination of antioxidant
`molecules, reputed to be 50 times as powerful as vitamin E. Antioxidants help to
`halt the chemical degeneration in the body that initiates most diseases. The ‘super
`antioxidant’ pycnogenols are derived from natural plant sources and are
`sometimes known by other names such as procyanidins, proanthocyanidins, or
`oligomeric procyanidins - OPCs for short.
`The first pycnogenols were extracted in 1947 by French chemist Jack Masquelier
`from the red skin of peanuts, although there is evidence of their use among native
`Americans and other primitive peoples. Dr Masquelier also detected them in other
`plant sources, red wine and tea. Today, extracts mostly come from grape seeds
`and pine bark. The term Pycnogenol has also become a registered trademark for a
`
`
`
`3
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`

`
`leading brand of pycnogenols extracted solely from the bark of the French
`maritime pine tree ‘Pinus pinaste’ which grows in South West France.”
`Attachment 20019
`http://www.thinknatural.com/articles.php?id=11212
`
`
`
`10). “In his 1979 article, Masquelier proposes that this group of flavanols be
`designated as “pycnogenols.” He coined the word on the basis of the fact that
`flavanols have this natural and spontaneous tendency to “thicken,” to condense.
`The Greek “pycno” means “thick,” the “gen” parts stand for generate and the “ol”
`suffix comes from flavanol.
`
`While preparing behind his typewriter for his “set-the record straight”
`article, Masquelier didn’t have a clue that the name he was coining would become
`the subject of heated legal trademark battles. Being a scientist and not a trademark
`lawyer, Masquelier never realizes that his “pycnogenols” could rise from the
`generic way he used it at first, to a real trademark. Whatever the legal status of the
`word, it was Masquelier’s intention that the name be used to designate the totality
`of the extract, that is obtained from various vegetal sources by means of the use of
`his patented methods of extraction.
`
`The reason why the original word is pycnogenols (plural) is because
`Masquelier wanted to indicate that his extracts contain the monomers, the
`dimmers and the trimmers, each of them being a “pycnogenol.””
`Attachment 20020
`http://hbcprotocols.com/opc/how-masquelier-named-pycnogenols/
`
`11). "In the United States, there has been some confusion about pycnogenol.
`Some grape seed extract products and other unregulated nutraceuticals were
`labeled and marketed in the United States as containing "pycnogenols." While the
`brand name, patented product Pycnogenol and grapeseed extracts contain some
`similarity in chemical composition, the two products are not identical."
`Attachment 20021
`http://osteoarthritis.about.com/od/alternativetreatments/a/pycnogenol.htm
`
`12). "pycnogenol
`Definition from Wiktionary, the free dictionary
`Jump to: navigation, search Contents [show]
`1 English 1.1 Etymology1.2 Noun 1.2.1 Usage notes1.2.2 Synonyms1.2.3 See
`also ...."
`"Noun pycnogenol (plural pycnogenols)"
`"1. (organic chemistry) Any of a group of flavonoids extracted from the bark of
`pine trees, especially proanthocyanidins."
`"2.An antioxidant dietary supplement containing such an extract."
`"Usage notes
`The capitalised version of the word, Pycnogenol, is a registered trademark"
`"Synonyms
`OPC
`
`
`
`4
`
`

`
`proanthocyanidin"
`Attachment 20022
`http://en.wiktionary.org/wiki/pycnogenol
`
`13). "One of the more important health benefits stems from research which shows
`that pycnogenols bind to elastin and slow the degradation by elastases (Tixier et
`al., (1984)).
`Attachment 20023
`http://www.esainc.com/docs/spool/70-4852P_Proanthocyanidins.pdf
`
`14). "Pycnogenol is a compound and a natural substance from grape seed and is
`not destroyed in the body like vitamins."......
`"They either take from or add to the adjacent molecules, altering their basic
`chemistry. Pycnogenol – “It’s the only antioxidant that can cross the blood barrier
`of the brain, providing extra protection from free radical damage thoughtout the
`nervous system.” Quote from Dr. P. O. Rothschild, a 1986 Nobel Prize nominee.
`How Pyconogenols works: binds and repairs collagen, is an anti-inflammatory, is
`an anti-histamine, reviatlizes cells, strengthens: blood vessel walls, auto-immune
`system, connective tissue, and muscles, etc. etc. . . ."
`Attachment 20024
`http://supplementsforenergy.net/pycnogenols-fact-or-fiction/
`
`15). "In the midst of this developing research, however, rides an Irish company,
`Horphag Research, Ltd., providing financing, and obtaining a license to produce a
`pine bark extract they trademarked Pycnogenol®. This is tantamount to trying to
`trademark the words water or tocopherol. It has also lead to much legal scrapping,
`and confusion in the press and the public, as Pycnogenol® has tried to exert its
`superiority and exclusivity to the name of Pycnogenol®. While Pycnogenol® is
`undoubtedly a fine product, its claims to superiority are doubly doubtful as most
`of this research was done on grape seed extract and then extrapolated to pine
`bark."
`Attachment 20025
`http://www.prohealth.com/library/showarticle.cfm?libid=2552
`
`5
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`
`
`
`

`
`
`
`The file information for the current 15 documents:
`
`
`
`6
`
`
`
`Signature: /Sengen Sun/ Dated: January 06, 2013
`
`
`Printed Name: Sengen Sun, PhD
`
`Isotonic OPC Antioxidant, Inc.
`Mailing address: 8838 La Camesa Street, San Diego, CA 92129.
`
`
`
`
`
`
`

`
`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.
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
` I hereby certify that a true and correct copy of the foregoing PETITIONER’S 4TH
`
`SUPPLEMENT OF RESPONSES TO REGISTRANT’S FIRST SET OF REQUESTS
`
`FOR PRODUCTION OF DOCUMENTS TO PETITIONER for Requests #1, 5 and 47, is
`
`being sent via USPS Priority Mail to Addressee, postage prepaid, on 6th day of January,
`
`2013, in an envelop addressed to Registrant’s legal counsel as follow:
`
`
`MARVIN S. GITTES
`MINTZ LEVIN COHN FERRIS.....
`666 3RD AVE, FL 24
`CHRYSLER CENTER
`NEW YORK, NEW YORK 10017
`
`
`
`Signature: /Sengen Sun/
`
`
`By Sengen Sun, PhD
`President
`Isotonic OPC Antioxidant, Inc., 8838 La Camesa Street, San Diego, CA 92129
`
`
`
`7