`ESTTA394075
`ESTTA Tracking number:
`02/18/2011
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92053495
`Defendant
`Horphag Research Management SA
`HORPHAG RESEARCH MANAGEMENT S.A.
`71 AVENUE LOUIS CASAI, CP 80
`COINTRIN GENEVA, 1216
`SWITZERLAND
`Answer
`Marvin S. Gittes
`msgittes@mintz.com, teslonim@mintz.com, jmdicioccio@mintz.com
`/ Marvin S. Gittes/
`02/18/2011
`Cancellation 92053495 Answer and Exhibits 1-13.pdf ( 161 pages )(5592254
`bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`
`
`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.
`
`Cancellation No. 92053495
`-
`
`Registration No. 176963 3
`
`ANSWER AND AFFIRNIATIVE DEFENSES
`
`TO PETITION TO CANCEL
`
`Commission for Trademarks
`
`P.0. Box 1451
`
`Arlington, VA 22313-1451
`
`Sir/Madam:
`
`Registrant, Horphag Research Management S.A. (“Horphag” or “Registrant”), by and
`
`through its attorneys, Mintz Levin Cohn Ferris Glovsky and Popeo, P.C., answers the Petition for
`
`Cancellation (the “Petition”) filed by Isotonic OPC Antioxidants, Inc. (“Petitioner”) in the
`
`above-referenced matter as followszl
`
`ANSWER
`
`1.
`
`The above-identified petitioner believes that it/he/she will be damaged
`_ by the above—identified registration, and hereby petitions to cancel the
`same.
`
`ANSWER TO PARAGRAPH NO. 1
`
`Registrant admits that Petitioner seeks to cancel Registration No. 1769633 by
`
`1 To facilitate presentation, the representative paragraphs of the Petition are set forth below in numbered
`order followed by Registrant’s response thereto. Otherwise, the text of the original petition has not been
`altered in any way in the numbered paragraphs. No attempts to correct spelling, grammar, or punctuation
`in the Petition have been made.
`
`
`
`virtue of its Petition filed with the Trademark Trial and Appeal Board (the “TTAB”) on
`
`January 9, 2011, but denies that the petition has merit. Registrant specifically denies that
`
`Petitioner is or will be damaged by Registration No. 1769633 for the mark
`
`PYCNOGENOL® for dietary and nutritional supplements in International Class 005.
`
`Horphag further admits that its correct name and address is Horphag Research
`
`Management S.A., a corporation of Switzerland, 71 Avenue Louis CASAI, CP 80 1216
`
`Cointrin Geneva, Switzerland. Horphag denies each and every remaining allegation in
`
`Paragraph 1.
`
`GROUND FOR CANCELLATION- GENERICNESS
`
`The owner of this trademark and its legal representative have been promoting its
`use in generic ways for the last 2 decades. PYCNOGENOL has been used massively
`as a generic name in scientific publications, commercial magazines and almost every
`internet page containing the word PYCNOGENOL for the last 2 decades. It has
`genericized in such a way that it is no longer qualified as a protected trademark.
`
`ANSWER TO PARAGRAPH NO. 2
`
`Registrant denies all of the allegations contained in Paragraph 2. Registrant
`
`further avers that it is Petitioner who has made flagrant, improper use of Registrant’s
`
`registered trademark in ways that are plainly violative of 15 U.S.C {$1125 and calculated
`
`to cause others to perceive Registrant’s registered mark as a generic term for OPCs
`
`(Oligomeric Procyanthocyanidins) or a term which, as used by Petitioner, may describe
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`both Petitioner’s product and that of Registrant. This was done, inter alia, by reference
`
`to Registrant’s mark on Petitioner’s websites with respect to Petitioner’s product and also
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`by reference to scientific literature discussing Horphag’s PYCNOGENOL® French
`
`maritime pine bark extract product and altering the same to make them appear as though
`
`they were discussing Petitioner’s product. Such misuses of Registrant’s mark were then
`
`
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`bootstrapped to serve as grounds for this Petition. Registrant denies the petition has merit
`
`or that its trademark has become generic.
`
`“Evidences for GENERICNESS”
`
`Evidence # 1.
`
`Pycnogenol is NOT used (or extremely rarely used) in the Horphag company
`website as a trademark - an indicator of the manufacturer source of a particular
`product: http:l/wWW.pyc11ogenol.com
`
`ANSWER TO PARAGRAPH NO. 3
`
`Registrant denies each of the allegations contained in Paragraph 3.
`
`Here are 3 quotes from their official web page
`http://www.pycnogenol.com/consumer/consumer_about.php
`
`
`
`Quote 1: "Pycnogenol is a water extract from the bark of...."
`Quote 2: "Additional published findings have demonstrated Pycnogenol's beneficial
`effects in cardiovascular health,......"
`Quote 3: "Pycnogenol is produced by a validated manufacturing process.....
`
`H
`
`ANSWER TO PARAGRAPH N0. 4-Quote 1:
`
`Registrant denies that “Quote I” aliegedly from Registrant’s website located at
`
`Pycnogenol.corn/corrsurner/consu.mer_about.php (the “Web Page”) reads “Pycnogenol is
`
`a water extract from the bark of. . . .” The quote currently, and at the time the Petition was
`
`filed, reads “Pycnogeno1® is a water extract from the bark of. . ..” As done ad museum in
`
`this Petition and uniformly in its website, Petitioner has deceptively removed the
`
`registration symbol ® which appears in association with the mark PYCNOGENOL® on
`
`the Web Page. Further Petitioner has failed to include a copy of the Web Page which
`
`clearly shows use of the trademark Pycn0geno1® with the registration symbol ® to mask
`
`its attempt to deceive the TTAB. A true and correct copy of the Web Page is included as
`
`Exhibit 1.
`
`
`
`ANSWER TO PARAGRAPH NO. 4—Quote 2:
`
`Registrant admits that the Web Page contains the quote, “Additional published
`
`findings have demonstrated Pycnogenol’s beneficial effects in cardiovascular health. . ..”
`
`Here again Petitioner failed to include a copy of the Web Page which shows use of the
`
`trademark PYCNOGENOL® with the registration symbol ® earlier in the same paragraph
`
`where the quoted language appears and again uses the trademark with the registration
`
`symbol in the immediately subsequent paragraph. Since the possessive form
`
`(“Pycnogenol’s”) of the mark is not strictly the registered mark PYCNOGENOL® per se,
`
`bookending the use of the possessive form of the mark with registration designated uses
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`is typical and not improper. Registrant avers that Petitioner’s failure to include a copy of
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`the Web Page is again intended to deceive the TTAB. See Exhibit 1.
`
`ANSWER TO PARAGRAPH N0. 4-5 Quote 3:
`
`Registrant denies that the alleged “Quote 3” from Registrant’s website located on
`
`the Web Page reads “Pycnogenol is produced by a validated manufacturing process. . . ..”
`
`The quote currently, and at the time the Petition was filed, actually reads “Pycnogenol®
`
`is produced by a validated manufacturing process. . ..” Petitioner has again deliberately
`
`deleted the registration symbol ® as it appears on the Web Page to manipulate the
`
`purported “evidence” and failed to include a copy of the Web Page to mask the
`
`deception. See Exhibit 1.
`
`These and most other uses of PYCNOGENOL in the website of the trademark
`
`registrant automatically deny that PYCNOGENOL is a trade mark, but a
`generic name.
`
`ANSWER TO PARAGRAPH NO. 5
`
`Registrant denies each of the allegations contained in Paragraph 5.
`
`
`
`Quote 1 denies that Pycnogenol is a TRADEMARK of a water extract from the bark
`of.....
`
`ANSVVER TO PARAGRAPH N0. 6
`
`Registrant denies each of the allegations contained in Paragraph 6. As stated
`
`above (ANSWER TO PARAGRAPH NO. 4-Quote 1), the alleged “Quote 1” from the
`
`Web Page is misquoted, misstated and inaccurate. It does not read “Pycnogenol is a
`
`water extract from the bark of. . . .” Rather, the quote actually reads “Pycnogenol® is a
`
`water extract from the bark of. . ..” Registrant avers that Petitioner has deliberately
`
`altered the quote by deleting the registration symbol to manipulate the purported
`
`“evidence” and mask its bad faith attempt to portray Registrant’s use of the trademark as
`
`generic.
`
`In Quote 2, if PYCNOGENOL were used as a trademark as an indicator of
`manufacturer source, PYCNOGENOL would not have any health benefits because
`it is just an indicator of manufacturer source. If PYCNOGENOL has health
`benefits, it is not qualified as a trademark, but a generic name.
`
`ANSWER TO PARAGRAPH N0. 7
`
`Registrant denies each of the allegations contained in Paragraph 7. Registrant
`
`avers that as proffered, Paragraph 7 is not intelligible but any allegations contained
`
`therein are denied. Registrant’s response, as set forth above (ANSWER TO
`
`PARAGRAPH NO. 4-Quote 2), is also applicable here and is included by reference.
`
`In Quote 3, if PYCNOGENOL were used as a trademark as an indicator of
`manufacturer source, PYCNOGENOL would not have been produced by a
`validated manufacturing process.
`
`
`
`ANSWER TO PARAGRAPH N0. 8
`
`Registrant denies each of the allegations contained in Paragraph 8. Registrant
`
`avers that as proffered, Paragraph 8 is not intelligible but any allegations contained
`
`
`
`therein are denied. Registrant’s response, as set forth above (ANSWER TO
`
`PARAGRAPH NO. 4-Quote 3), is also applicable here and is included by reference.
`
`Evidence # 2
`
`Attachment 1 shows a list of about 240 scientific publications, and PYCNOGENOL
`is used as a general term in article titles of most of the articles.
`PYCNOGENOL is massively used as a generic term in scientific literature, and
`those authors describe that PYNOGENOL has a variety of biological activities.
`As a mark of manufacturer source cannot have biological activities,
`PYCNOGENOL is not used as a trademark.
`
`ANSWER TO PARAGRAPH NO. 9
`
`Registrant denies each of the allegations contained in Paragraph 9. Registrant
`
`avers that Attachment 1 appears to be a copy of the bibliography posted on Registrant’s
`
`website, located at wWw.pycnogenol.com, which is a listing of some of the many
`
`research articles published over the years describing research conducted using
`Pycnogenol® pine bark extract. Registrant further avers that this bibliography contains
`
`approximately 217 scientific publications and references and that each and every
`
`scientific article titie included in Attachment 1 uses Registrant’s PYCNOGENOL®
`
`trademark with the proper initial capitalization and registration symbol ® proclaiming to
`
`the world that it is a registerd trademark. Registrant avers that this use demonstrates
`
`proper trademark usage, including in articie titles such as, for example, “Pycnogenol®,
`
`French Maritrnie Pine Bark Extract, Augments Endothelium-Dependent Vasodilation in
`
`Humans (Ref. No. 230 on page 7 of Attachment 1); PycnogenoI® French Maritime Pine
`
`Bark Extract, Improves Endothelial Function of Hypertensive Patients (Ref. No. l 17 on
`
`
`
`
`
` . 3ir1iJ
`
`.
`
`i|
`l1
`
`(
`
`page 8 of Attachment 1); and Antidiabetic Effect of Pycnogenol® French Maritime Pine
`
`Bark Extract in Patients with Diabetes Type II (Ref. No. 142 on page 15 of Attachment
`
`1). Registrant specifically denies that “PYCNOGENOL is used as a “general term” in
`
`article titles of most of the articles or that “PYCNOGENOL is massively used as a
`
`generic term in scientific literature.” Registrant admits that the authors of certain
`
`scientific articles, including some of those listed in Attachment 1, articulate that
`
`Pycnogenol® pine bark extract has a wide variety of biological activity. 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.
`
`10.
`
`Evidence # 3
`
`The search results from Google search engine using 3 exact terms of
`"PYCNOGENOL benefits": About 1,210 results (0.20 seconds);
`"PYCNOGENOL health benefits": About 2,830 results (0.17 seconds);
`"PYCNOGENOL side effects": About 2,130 results (0.25 seconds).
`
`ANSWER TO PARAGRAPH N0. 10
`
`Registrant denies each of the allegations contained in Paragraph 10. Registrant
`
`avers that Paragraph 10 is irrelevant to any analysis of whether the Pycnogenol®
`
`trademark is generic. Registrant further avers that the purported Google searches are
`
`inaccurate and highly misleading. Petitioner has again failed to attach a copy of the
`
`purported search results in another attempt to deceive the TTAB and mask his deception.
`
`11.
`
`There are always instances in each Website of_the World-wide web that
`PYCNOGENOL is used in the similar generic Ways from the Google search results
`using pycnogenol? as a search term. We did not see a single exception among 200
`websites that We checked.
`
`
`
`ANSWER TO PARAGRAPH N0. 11
`
`Registrant denies each of the allegations contained in Paragraph 11.
`
`“Our [Petitioner’s] Opinions and Arguments”
`
`12.
`
`Based on the Lehman Act, the sole purpose of a trademark is to act as a source
`indicator of a product and service, serving as the information for consumers to
`know that “WHO makes WHAT" or "WHOSE WHAT". A trademark can only he
`used as the mark of WHO as a noun, or as the mark of WHOSE as an adjective.
`Lehman Act on trademark law has an inherent meaning that a trademark cannot
`be used for WHAT as a noun in any circumstance.
`
`ANSWER TO PARAGRAPH NO. 12
`
`Registrant denies each of the allegations contained in Paragraph 12. Registrant
`
`avers that a “trademark” includes:
`
`[A]ny word, name, symbol, or device or any combination thereof—
`(1) used by a person, or
`(2) which a person has a bona fide intention to use in commerce
`and applies to register on the principal register established by this
`Act [the Lanham Act],
`
`to identify and distinguish his or her goods, including a unique product,
`from those manufactured or sold by others and to indicate the source of
`the goods, even if that source is unknown.
`
`15 U.S.C. § 1127, TMEP § 1202 (7th Edition, October 2010).
`
`Thus, in addition to indicating the source of the goods, trademarks serve to identify and
`
`distinguish the goods manufactured or sold by one source from other sources. As held by
`
`the U.S. Supreme Court, “the [trademark] law helps assure a producer that it (and not an
`
`imitating competitor) will reap the financial, reputation-related rewards associated with a
`
`desirable product." _S_e§_ Qualitex Co. V. Jacobson Products Co, 514, US. 159 (1995),
`
`attached as Exhibit 2.
`
`
`
`13.
`
`There are a plenty of resources in the internet, providing legal advices how a
`trademark may be used in order to avoid genericness claims.
`
`ANSWER TO PARAGRAPH NO. 13
`
`Registrant is without knowledge or information sufficient to form a belief as to
`
`the truth of the allegations of Paragraph 13, and therefore denies each of the allegations
`
`contained in Paragraph 13.
`
`14.
`
`For example, a web page at the University of Pennsyvenia says:
`"NEVER use a trademark as a noun. Always use a trademark as an adjective
`modifying a noun". http://itre.cis.upenn.edu/~myl/languagelog/archivesl000943.html
`
`ANSWER TO PARAGRAPH NO. 14
`
`Registrant is without knowledge or information sufficient to form a belief as to
`
`the truth of the allegations of Paragraph 14 and as to whether the web blog page located
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`at the URL in Paragraph 14 is in fact “at the University of Pennsyvenia [sic]” or is in fact
`
`sponsored by or undertaken with the support of the University of Pennsylvania and
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`therefore denies all allegations contained in Paragraph 14. Registrant refers to a Web
`
`blog page, to which the URL in Paragraph 14 points, for its full import and context as it
`
`speaks for itself.
`
`15.
`
`Such a philosophy to police trademarks is adopted by many big corporations to
`avoid genericizing their trademarks. For example: McAfee, Inc. enforces its
`trademark guidelines in their webpage this way: "Your use or display of a
`McAfee trademark must always: (a) use the McAfee trademark as an adjective,
`including an appropriate noun after the trademark;....." (See:
`http://Www.mcafee.com/us/about/legal/trademark-policy—and-guidelines.aspx)
`
`ANSWER TO PARAGRAPH NO. 15
`
`Registrant is without knowledge or information sufficient to form a belief as to
`
`the truth and relevance of the allegations of Paragraph 15 and therefore denies all
`
`
`
`allegations contained in Paragraph 15. Registrant generally avers that some corporations
`
`have adopted trademark policies, guidelines and!or a philosophy to police trademarks in
`
`attempts to ensure proper trademark usage by licensees and the public generally.
`
`Registrant avers that the URL provided in Paragraph 15 points to a web page on which
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`the language quoted in Paragraph 15 is set forth and refers to its full text for its full
`
`import and context as it speaks for itself. Registrant avers that Paragraph 15 is irrelevant
`
`to any analysis of whether the Pycnogenol® trademark is generic. Registrant further
`
`avers that While not a “big corporation[],” Registrant and its related companies have a
`
`Patents, Trademarks, and Labeling Policy in place, and have had one in place for many
`
`years. Registrant further avers that this policy is clearly posted on
`
`pycnogenol.com/industry/industry_patents.php. Moreover Registrant avers that it has
`
`had a proper and effective trademark enforcement policy in place for many years to
`
`ensure that its trademark Pycnogeno1® is not misused. Furthermore, it was in fact
`
`through the administration of that enforcement policy that Registrant became aware of
`
`Petitioner’s deceptive alteration of scientific literature discussing Registrant’s
`
`PYCNOGENOL® French maritime pine bark extract product. Registrant denies all other
`
`allegations contained in Paragraph 15.
`
`16.
`
`How are we affected by this generic use of word PYCNOGENOL
`
`We are a startup company selling OPC antioxidant dietary supplement, which
`contains the same active ingredient from French maritime pine bark extract as
`Horpl1ag's pycnogenol. According to US FDA regulations, we are legal in
`referencing published scientific results and any expired patents, which are not
`protected by any intellectual property laws, in supporting our marketing efforts.
`
`I0
`
`
`
`ANSWER TO PARAGRAPH NO. 16
`
`Registrant is without knowledge or information sufficient to form a belief as to
`
`the truth of the allegations of Paragraph 16 and therefore denies each of the allegations
`
`contained in Paragraph 16. Registrant avers that Paragraph 16 is not relevant to any
`
`analysis of whether the Pycnogenol® trademark is generic. Registrant further avers that
`
`neither US. FDA regulations nor Petitioner’s understanding thereof change or modify the
`
`Lanham Act.
`
`17.
`
`The word PYCNOGENOL has become the real name of the underlying good. It is
`also a protected trademark for the same underlying good, While its generic use has
`flooded in the every corner in the world.
`
`ANSWER TO PARAGRAPH NO. 17
`
`Registrant denies that “the word PYCNOGENOL has become the real name of
`
`the underlying good,” and that “its generic use has flooded in the every corner of the
`
`world.” Registrant admits that “[i]t is also a protected trademark for” Registrant’s French
`
`maritime pine bark extract. Registrant denies all remaining allegations contained in
`
`Paragraph 17.
`
`18.
`
`Consequently, we have been experiencing extreme hardship in excising our legal
`right in referencing published scientific results related to the pine bark extracts.
`
`ANSWER TO PARAGRAPH NO. 18
`
`Registrant is Without information sufficient to form a belief as to the truth of the
`
`allegations in Paragraph 18 and therefore denies each of the allegations contained in
`
`Paragraph 18. Registrant avers that it contacted Petitioner to require it to accurately
`
`refer to and quote from scientific articles included on Petitioner’s Websites that related to
`
`Registrant’s products instead of altering the descriptions of those articles to make them
`
`11
`
`
`
`appear applicable to Petitioner’s product or OPC products in general. Registrant avers
`
`that being a “startup company” does not imbue Petitioner with the right to attempt to
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`purloin the cachet of another’s trademark to launch an intemet business. Evidence of
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`Petitioner’s bad faith and unclean hands in filing this Petition, is contained on websites
`
`operated by Petitioner, namely www.opc-1-2-3.corn, www.antioxidant.name, and
`
`www.stores.isotonic-opc.net (the “Sun-Operated Websites”), as such websites existed
`
`prior to Registrant's first contacting Petitioner.2
`
`Registrant avers that in those websites, Petitioner falsely and misleadingly
`
`represented that the results of scientific research conducted only with Horphag’s
`
`proprietary PYCNOGENOL® French maritime pine bark extract, support Petitioner’s
`
`efficacy claims for its O1igopin® ingredient and French Glory® isotonic OPC products.
`
`This was done even though Petitioner’s products do not contain Pycnogenol® pine bark
`
`extract. Registrant avers that the Sun-Operated Websites contained abstracts and
`
`references to twenty-six different scientific articles purporting to support Petitioner’s
`
`efficacy claims for their O1igopin® ingredient and French Glory® Isotonic OPC
`
`products. Registrant avers that Petitioner did not include a single scientific peer-
`
`reviewed article for its French Glory® Isotonic OPC products and only included a single
`
`article on their Oligopin® ingredient. Registrant further avers that since Petitioner was
`
`unable to support its claims with its own research, Petitioner misappropriated research
`
`and studies devoted to PYCNOGENOL® French maritime pine bark extract and
`
`removed all evidence of Registrant’s trademarks from the titles and abstracts of those
`
`articles. Moreover Registrant avers that of the twenty-six scientific articles included on
`
`2 Copies ofthe relevant excerpts from the Sun-Operated Websites as they existed when Registrant first contacted
`Petitioner are attached hereto as Exhibit 3.
`
`1 2
`
`
`
`
`
`Petitioner’s Websites, at least fifteen of those studies were devoted _S_0flV_‘l0 an investigation
`
`conducted on Horphag’s proprietary PYCNOGENOL® French maritime pine bark
`
`extract. These fifteen research articles, concerning the health benefits of
`
`PYCNOGENOL® French maritime pine bark extract, are the result of Horphag-
`
`sponsored research (collectively the “Horphag-Sponsored PYCNOGENOL®
`
`Studies”) Registrant avers that the I-Iorphag-Sponsored PYCNOGENOL® Studies are
`
`not applicable to products not containing PYCNOGENOL® French maritime pine bark
`
`extract, including Patitioner’s Oligopin ® ingredient and French Glory® Isotonic OPC
`
`products.
`
`Registrant further avers that in its effort to mislead the consuming public,
`
`Petitioner has deliberately misapplied, altered and Inisquoted Horphag-Sponsored
`
`PYCNOGENOL® Studies by, inter alia, replacing the trademark "Pycnogenol®" as
`
`originally used in the titles and abstracts of the articles with misleading and inaccurate
`
`generic terms such as "OPC" or "pine bark extract," and further, by not listing the
`
`names of the authors of the articles. Registrant avers that below are side-by-side
`
`comparisons of the actual titles of exemplary Horphag-Sponsored PYCNOGENOL®
`
`Studies versus Petitioner’s deceptive alterations of such titles.
`
`Altered Title on the Sun-Operated Websites
`
`Actual Published Title
`
`extract
`bark
`pine
`French maritime pine bark extract OPC reduces French maritime
`thromboxane generation in blood from diabetic
`[ycn0genol® reduces thromboxane generation
`male rats.
`in blood from diabetic male rats.
`
`Effect of pine bark extract OPC on symptoms
`of knee osteoarthritis.
`
`Effect of pine bark extract P cno enol on
`symptoms of knee osteoarthritis.
`
`
`
`
`
`
`
`
`
`of
`pharmacology
`anti-inflammatory
`The
`Pycnogenol® in humans involves COX-2 and
`5-LOX mRNA expression in leukocytes.
`
`
`
`The anti—inflammatory pharmacology of OPC
`pine bark extract in humans involves COX-2
`and 5-LOX mRNA expression in leukocytes.
`
`
`
`13
`
`
`
`
`
`Oligomeric procyanidjns of French maritime
`pine bark extract (Pycnogenol®) effectively
`inhibit alpha-glucosidase.
`
`
`
`
`
`Oligomeric procyanidins QOPCL of French
`maritime pine bark extract effectively inhibit
`alpha-glucosidase.
`
`19.
`
`20.
`
`Registrant avers that this also was done by the Petitioner with respect to the abstracts of
`
`Horphag-Sponsored PYCNOGENOL® Studies.
`
`PYCNOGENOL as the substitute of the real name of pine bark extract, (but not as a
`trademark as Horphag claims), has existed in every scientific publications using
`Horphag's pycnogenol for the last 2 decades, including those in the paper titles
`(Attachment 1).
`
`ANSWER TO PARAGRAPH N0. 19
`
`Registrant denies each of the allegations contained in Paragraph 19.
`
`In our company website at http://www.opc-1-2-3.com, we cite some published
`scientific results related to OPC pine bark extracts of a variety of sources and
`manufacturers, including several research papers using Horphag's pycnogenol pine
`bark extract.
`
`ANSWER TO PARAGRAPH NO. 20
`
`Registrant denies each of the allegations contained in Paragraph 20. Registrant
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`avers that all of the citations to the titles and abstracts of the scientific articles originally
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`contained on the Sun-Operated Websites were removed as of January 1 1, 2011. With
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`respect to the foregoing content prior to that date, Registrant refers to its answer to
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`Paragraph 18 which is incorporated herein by reference.
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`21.
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`For the last several 2-3 months, Horphag's legal representative has been
`threatening, harassing and intimating us by sending letters and e-mails, demanding
`our removal of cited publications from our website, in the names of pycnogenol
`trademark dilution and infringement. Attachments 2 & 3 show the letters and an
`email We received from Horphag's legal representative.
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`14
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`
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`ANSWER TO PARAGRAPH N0. 21
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`Registrant denies each of the allegations contained in Paragraph 21. Petitioner’s
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`Attachment 2, as detailed below, contains altered versions of actual email
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`communications which took place. Petitioner’s Attachment 3 was not filed or otherwise
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`provided by Petitioner.
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`Registrant avers that on November 19, 2010 its attorneys sent the cease and desist
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`letter attached as Exhibit 4. Registrant further avers that after almost one month, without
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`a response, it sent Petitioner a follow-up letter on December 15, 2010, attached as Exhibit
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`5. Registrant avers that rather than attempting to amicably resolve the matter, Petitioner,
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`through its “customer service manager,” Cana Sun, responded, on December 15, 2010,
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`with a nonresponsive, over-reactive email, attached as Exhibit 6. Registrant further avers
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`that the email of Exhibit 6 was promptly followed on December 17, 2010 by an email
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`(attached as Exhibit 7) from Petitioner’s President, Sengen Sun, PhD which belligerently
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`dismissed the issues raised. Registrant admits that on December 20, 2010 attorneys for
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`Registrant sent Petitioner the email attached as Exhibit 8. Registrant further avers that
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`Without further discussion Petitioner, on December 20, 2011, responded to Registrant’s
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`attorneys with the an email, attached as Exhibit 9, whose essence is I am not
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`convinced/Sue me.
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`In addition, Registrant avers that again on the same day, December 20, 2010,
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`Petitioner, to further exacerbate matters, advised in another email, attached as Exhibit 10,
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`that “Instead of deleting anything, we have added 3 more paragraphs of content [on the
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`Sun-Operated Websites] under our header ‘Reference Outlines On OPC Pine Bark
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`Extract’ . . ..I am really curious to see how you make a case of trademark
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`15
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`
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`‘misrepresentation’ in court.” This was followed, that same day, by yet another email
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`where Mr. Sun, PhD, declared, “I am the world’s recognized expert in my field...” and
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`included a link to what appears to be an unrelated scientific article (Exhibit 11).
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`Registrant avers that on January 1 1, 2011, two days after the instant Petition was
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`filed, but before Registrant had knowledge thereof, Petitioner again sent an email to
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`Registrant’s attorneys (attached as Exhibit 12) claiming that “[a]s of today, 01/ 1 1/201 1,
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`we have removed all the research articles on pine bark extract related to pycnogenol from
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`our website.” Registrant avers that on the following day, January 12, 2011, attorneys for
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`Registrant replied with, “Thank you for your below email. We shall treat this matter as
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`amicably concluded at this time,” attached as Exhibit 13.
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`Registrant denies that there was ever any Attachment 3 to the Petition either as the
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`Petition was filed with the TTAB or as mailed to Registrant’s attorneys. Petitioner also
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`denies that a complete Version of what appears to be Attachment 2 was filed with the
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`TTAB. Registrant avers that the version of Attachment 2 that was improperly mailed by
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`Petitioner via Express Mail to Registrant’s attorneys contains two additional pages which
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`are not present in the version of the Petition filed with the TTAB. Registrant avers that
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`Petitioner’s failure to fully enclose all of the correspondence between Petitioner and
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`Registrant is yet another bad faith attempt to mislead the TTAB. Further, Petitioner has
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`filed copies of emails where certain previous emails in the chain have been deleted.
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`Registrant also avers that Petitioner failed to properly serve the Petition on Registrant and
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`instead emailed these incorrect copies to the attorneys for Registrant and Registrant.
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`22.
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`Our business is seriously and negatively impacted by their threatening, harassing
`and intimating. And we plan to take a further legal action to seek compensation for
`our business loss caused by their legal ignorance on the trademark law.
`
`16
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`
`
`ANSWER TO PARAGRAPH NO. 22
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`Registrant denies that Petitioner’s “business is seriously and negatively impacted
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`by their threatening, harassing and intimating.” Registrant avers that any alleged harm
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`Petitioner is suffering or may have suffered is solely a result of Petitioner’s bad faith
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`actions, and unclean hands in its attempts to steal the cachet of Registrant’s
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`PYCNOGENOL® trademark by deceptively altering the titles and abstracts of published
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`scientific research performed on Registrant’s PYCNOGENOL® pine bark extract so as to
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`make them appear applicable to Petitioner’s products and then publishing the altered
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`materials on its website to market its products. Registrant is without knowledge or
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`information sufficient to form a belief as to the allegation “[a]nd we plan to take a further
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`legal action to seek compensation for our business loss caused by their legal ignorance on
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`the trademark law” contained in the second sentence of paragraph 22, and therefore
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`denies that allegation. Registrant further avers that this allegation is not relevant to any
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`analysis of whether the Pycnogenol® trademark is generic but clearly demonstrates
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`Petitioner’s bad faith in bringing this cancellation proceeding.
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`23.
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`Therefore, we petition that PYCNOGENOL be cancelled as a protected trademark
`because of its massive generic use, promoted by the registrant and its legal
`representative.
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`ANSWER TO PARAGRAPH NO. 23
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`Registrant admits that Petitioner seeks to cancel the Registration but specifically
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`denies each and every other allegation contained in Paragraph 23. Registrant further
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`denies that the Petition has merit.
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`17
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`
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`Registrant respectfully reserves the right to amend its Answer in the event that it
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`becomes clear, as discovery progresses, that Petitioner, as a result of the numerous
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`spelling, punctuation, formatting, and grammatical errors contained in the Petition, is
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`attempting to re-write, alter, or “clarify” the original language contained in the Petition to
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`embrace positions not now set forth therein. Further, because of the difficulties arising in
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`coordinating responses in this Answer with the un-numbered paragraphs in the Petition,
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`Registrant hereby denies all allegations that have not specifically been admitted.
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`Registrant requests that the Notice of Cancellation filed against its Registration be
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`denied in its entirety, that judgment be entered in favor of Registrant in this proceeding,
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`and that the Registration for the mark PYCNOGENOL® remain in full force and effect.
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`AFFIRMATIVE DEFENSES
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`1.
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`The Petition fails to state a claim upon which relief can be granted to Petitioner, in
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`part, because Petitioner lacks standing herein.
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`2.
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`The Petition should fail because, on information and belief, Petitioner has not
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`suffered and is not likely to suffer any injury or damage as a result of the Pycnogenol®
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`trademark registration. Further, even if it is assumed arguendo that a registration did not exist
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`for Regist;rant’s mark, Petitioner’s false and misleading alteration of scientific articles to make
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`them appear applicable to its products and the publication thereof on Petitioner’s website would
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`be actionable and terminable under the Lanham Act.
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`3.
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`The Petition should fail because, on information and belief, Petitioner claims, in
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`whole or in p