Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA552496
`ESTTA Tracking number:
`08/06/2013
`
`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
`tslonim@mintz.com
`/Timur E. Slonim/
`08/06/2013
`Opposition Brief.pdf(5288730 bytes )
`Opposition Brief EX 6 .pdf(3325491 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Isotonic OPC Antioxidants, Inc.
`
`Petitioner,
`
`v.
`
`Horphag Research Management S.A.
`
`Registrant/Respondent.
`
`Cancellation No. 92053495
`
`'
`
`Registration No. 1769633
`
`Respondent’s Brief In Opposition to Petitioner’s Motion to Examine and Confirm The
`Invalidity of Trademark Registration and Renewals For Pycnogenol
`And
`
`Respondent’s Motion For Sanctions And To Strike Petitioner’s Invalidig Motion And
`Motion For An Order To Show Cause
`
`

`
`TABLE OF CONTENTS
`
`I. AFTER UNEXPLAINED 2—YEAR DELAY, UNPLEAD CLAIMS INJECTED ON
`THE EVE OF DISCOVERY CUTOFF ............................................................................. ..1
`
`II. PETITIONER’S FRAUD ALLEGATIONS ARE FUTILE ..................................................... ..2
`
`A. Use By Others of the Pycnogenol® Trademark Is Controlled By and Inures
`To Horphag’s Benefit .................................................................................................. ..3
`
`B. Petitioner’s “Manufacturer Source” Of The Finished Product Theory Is An
`Anachronism ................................................................................................................ ..5
`
`C. The PTO Does Not Police The Garden Variety Labeling Issues ................................. ..7
`
`D. Petitioner Is Wrong That Two Trademarks Cannot Apply To The Same
`Article .......................................................................................................................... ..9
`
`III. INVALIDITY MOTION IS A PROHIBITED MOTION FOR SUMMARY
`
`JUDGMENT .................................................................................................................... ..lO
`
`IV. HORPHAG’S MOTION TO STRIKE PETITIONER’S FRIVOLOUS MOTION
`
`FOR AN ORDER TO SHOW CAUSE (DKT. 51) SHOULD BE GRANTED
`AND PETITIONER SANCTIONED .............................................................................. .. l 3
`
`CONCLUSION ............................................................................................................................ .. l 5
`
`

`
`TABLE OF AUTHORITIES
`
`CASES
`
`Page(s)
`
`Capital Speakers Inc. v. Capital Speakers Club of Washington D. C. Inc.,
`41 USPQ2d 1030 (T.T.A.B. 1996) .......................................................................................... ..2
`
`CreAgri, Inc. v. USANA Health Sciences, Inc.,
`474 F.3d 626 (9th Cir. 2007) ................................................................................................... ..8
`
`General Mills, Inc. v. Health Valley Foods,
`24 USPQ 1270 (T.T.A.B. 1992) .......................................................................................... ..7, 8
`
`Horphag Research Ltd. v. Garcia,
`475 F.3d 1029 (9th Cir. 2007) ................................................................................................. ..4
`
`In re Bose Corp.,
`580 F.3d 1240 (Fed. Cir. 2009) ................................................................................................ ..3
`
`In re Polar Music Int ’l AB,
`714 F.2d 1567 (Fed. Cir. 1983) ............................................................. ................................. ..10
`
`International Finance Corporation v. Bravo Co.,
`64 USPQ2d 1597 (T.T.A.B. 2002) .......................................................................................... ..2
`
`Media Online Inc. v. El Clasificado Inc.,
`88 USPQ2d 1285 (T.T.A.B. 2008) .......................................................................................... ..2
`
`Robi v. Five Platters, Inc.,
`918 F.2d 1439 (9th Cir. 1990) ................................................................................................. ..3
`
`San Juan Prods, Inc. v. San Juan Pools ofKansas, Inc.,
`849 F.2d 468 (10th Cir. 1988) ................................................................................................. ..3
`
`Siegel v. Chicken Delight, Inc.,
`448 F.2d 43 (9th Cir. 1971) ..................................................................................................... ..6
`
`Top Tobacco, L.P. v. North Atlantic Operating Co, Inc.,
`101 U.S.P.Q.2d 1163 (T.T.A.B. 2011) .................................................................................... ..9
`
`Trek Bicycle Corp. v. StyleTrek Ltd. ,
`64 USPQ2d 1540 (T.T.A.B. 2001) .......................................................................................... ..2
`
`Yard-Man, Inc. v. Getz Exterminators, Inc.,
`157 U.S.P.Q. 100 (T.T.A.B. 1968) ....................................................................................... ..10
`
`

`
`FEDERAL STATUTES, RULES, AND REGULATIONS
`
`15 U.S.C. §1055 ............................................................................................................................. ..4
`
`15 U.S.C. §1127 ............................................................................................................................. ..4
`
`37 CFR § 2.134(b) ....................................................................................................................... ..13
`
`Fed. R. Civ. P. 11 .........................................
`
`.......................................................................... ..5, 14
`
`OTHER AUTHORITIES
`
`1-1 GILSON ON TRADEMARKS §1.03(1) .......................................................................................... ..6
`
`MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 7:8 ................................................ .. 10
`
`MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION §18.40 ................................................ ..6
`
`MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION §19:124 .............................................. ..8
`
`iii
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`

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`Petitioner’s Invalidity Motion suffers from two fatal problems. First, despite “the Board’s
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`prior prohibition against any further summary judgment motions,” this is Petitioner’s second
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`prohibited summary motion. (Dkt. 34, 11/05/2012 Order at 2) The Board did not consider the
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`first one (id.) and should not consider this one either. Second, the Invalidity Motion is based on
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`baseless allegations of fraud on the PTO in the registration and renewal process. None of these
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`grounds were plead in the Cancellation Petition. (Dkt. 1)‘ Now, one month before the close of
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`discovery, Petitioner, without seeking leave of the Board or providing any notice to Horphag,
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`seeks to inject a plethora of new issues into the case. For more than two years, the parties have
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`been litigating the genericness issues alleged in the Petition. Now that Petitioner finally
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`understands their futility, since Horphag’s experts fully refuted them, Petitioner wants to switch
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`gears and try to gin up fraud allegations to avoid a sure defeat through a change in direction. The
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`Board should reject these bad faith litigation tactics.
`
`I. AFTER UNEXPLAINED 2-YEAR DELAY, UNPLEAD CLAIMS INJECTED ON THE
`EVE OF DISCOVERY CUTOFF
`
`Despite Petitioner’s exclusive reliance on publicly available PTO registration and
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`renewal information for the Pycnogenol® Trademark, all of which were accessible to it in 2011,
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`no explanation is provided as to why these newly proffered fraud allegation were not plead from
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`the start of this case in January 2011. An untimely shift to new issues would severely prejudice
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`Horphag. Petitioner filed its motion one month before the close of fact discovery and right after
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`Horphag disclosed its experts’ reports. Responding to these fraud and other new allegations
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`would require Horphag--in addition to responding to this motion, reviewing Petitioner’s recent
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`supplemental document production, and conducting depositions of Petitioner and follow up
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`discovery-—to go to the time and expense of finding additional experts to prepare additional
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`‘ Petitioner admits that “the current basis of cancellation filling [is] GENERICNESS, not
`FRAUD.” (Dkt. 46, Invalidity Motion at 17)
`
`

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`expert reports. There is no time left to do so before the August 16, 2013 close of fact discovery.
`
`See Media Online Inc. v. El Clasificado Inc., 88 USPQ2d 1285, 1286 (T.T.A.B. 2008) (motion
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`for leave to amend to add claims of descriptiveness and fraud denied; petitioner unduly delayed
`
`in adding futile fraud claims which were based on facts within petitioner’s knowledge at the time
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`petition to cancel was filed); Capital Speakers Inc. v. Capital Speakers Club of Washington D. C.
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`Inc., 41 USPQ2d 1030, 1033 (T.T.A.B. 1996) (motion to add a legally insufficient claim of fraud
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`denied where petitioner was fully aware of all the facts it needed to add such claim over three
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`years before filing motion to amend).2 Moreover, Petitioner continues to avoid already noticed
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`depositions and new issues now would simply exacerbate an already intolerable discovery
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`situation. (Ex. 1; Dkt. 52, Reply Re Cross-Motion For Sanctions at 9-10)
`
`This is not Petitioner’s first attempt to file motions based on allegations which have not
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`39 64
`been plead. Previously Petitioner tried “to raise claims of functionality, mere descriptiveness
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`and deceptive misdescriptiveness” of the Pycnogenol® Trademark which “have not been pleaded
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`by petitioner in its petition for cancellation.” (Dkt. 30, 9/19/12 Order at ln. 1) The Board did not
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`consider them since “a party may not obtain summary judgment on an issue that has not been
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`pleaded. ...” (Id.) The Board should similarly reject Petitioner’s fraud allegations which have not
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`been plead and its related summary judgment motion of invalidity.
`
`II. PETITIONER’S FRAUD ALLEGATIONS ARE FUTILE
`
`To prove a fraudulent trademark procurement claim, Petitioner must establish:
`
`(1) the false representation regarding a material fact;
`(2) the registrant’s knowledge or belief that the representation is false (scienter);
`
`2 See also International Finance Corporation v. Bravo Co., 64 USPQ2d 1597, 1604 (T.T.A.B.
`2002) (motion denied where movant provided no explanation for two-year delay in seeking to
`add new claim “long after the close of discovery”); Trek Bicycle Corp. v. StyleTrek Ltd., 64
`USPQ2d 1540, 154l(T.T.A.B. 2001) (motion to amend opposition denied where it was filed
`eight months after filing of notice of opposition, with no explanation for the delay, and appeared
`to be based on facts within opposer’s knowledge at the time opposition was filed).
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`

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`(3) the intention to induce action or refraining from action in reliance on the
`misrepresentation;
`(4) reasonable reliance on the misrepresentation; and
`(5) damages proximately caused from such reliance.
`
`San Juan Prods, Inc. v. San Juan Pools ofKansas, Inc., 849 F.2d 468, 473 (10th Cir. 1988).
`
`The “burden of proving that a party fraudulently procured a trademark registration is heavy....”
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`Robi v. Five Platters, Inc., 918 F.2d 1439, 1444 (9th Cir. 1990) . The fraudulent procurement
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`must “be proven ‘to the hilt’ with clear and convincing evidence. There is no room for
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`speculation, inference or surmise and, obviously, any doubt must be resolved against the
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`charging party.” In re Bose Corp., 580 F.3d 1240, 1243 (Fed. Cir. 2009).
`
`A.
`
`Use By Others of the Pycnogenol® Trademark Is Controlled By and Inures To
`Horphag’s Benefit
`
`The new allegations should not be considered here because they are futile. Petitioner
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`alleges that Horphag fraudulently submitted, and the PTO wrongfully accepted,3 specimens of
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`the Pycnogenol® Trademark usage from companies other than Horphag and “not associated with
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`Registrant’s own product”4 because Horphag sells bulk Pycnogenol® extract and specimen were
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`for finished tablets containing Pycnogenol® extract:
`
`Registrant via its US counsel also lied to USPTO for more than 2 decades about a
`tablet product that Registrant never offered for sale in US. One cannot imagine
`that you don’t know how to answer whether you offer a product for sale or not in
`US if you are a normal human being. Registrant knowingly lied in order to gain
`illegal trademark registration. (Dkt. 46, Invalidity Mot. at 17)
`
`For example, Petitioner assailed two specimens, one for Pycnogenol® extract marketed
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`by KAL Inc. and one marketed by GNC. (Id. at 4, 12) Given Petitioner’s self-professed extensive
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`knowledge of trademark law (and chastising Horphag for lack thereof, e.g., Dkts. 17& 31), it is
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`inconceivable that Petitioner does not know the basic statutory principle that trademark owners
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`3 For a selection of prohibited derogatory language used by Petitioner see Dkt. 52, Reply Re
`Cross-Motion For Sanctions at 1-3.
`4 (Dkt. 46, Invalidity Mot. at 4)
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`

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`can rely on the controlled use of their marks by related companies:
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`Where a registered mark or a mark sought to be registered is or may be used
`legitimately by related companies, such use shall inure to the benefit of the
`registrant or applicant for registration, and such use shall not affect the validity of
`such mark or of its registration, provided such mark is not used in such manner as
`to deceive the public. (Section 5 of the Trademark Act, 15 U.S.C. §l055)
`
`The term “related company” means any person whose use of a mark is controlled
`by the owner of the mark with respect to the nature and quality of the goods or
`services on or in connection with which the mark is used. (Section 45 of the
`Trademark Act, 15 U.S.C. §1127)
`
`Horphag’s control, and Petitioner’s knowledge of it, is undeniable. For example, the
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`Ninth Circuit has found that “Homhag has made extensive efforts to control the guality of
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`Pycnogenol and has invested heavily in research and marketing its product. Pycnogenol is now
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`one of the fifteen most sold herbal supplements in the United States.” Horphag Research Ltd. v.
`
`Garcia, 475 F.3d 1029, 1033 (9th Cir. 2O07).5 It also found that “Horphag’s Pycnogenol
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`trademark is famous
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`because of Horphag’s own investment in advertising, research, and
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`guality control.” Id. at 1038.6
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`Furthermore, Petitioner cannot establish that Horphag made a false representation to the
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`PTO and knew it to be false because Horphag was truthful in its declarations about its related
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`companies. In the original application file, Horphag truthfully stated to the PTO that the
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`“products sold by the Makers of KAL, Inc. are manufactured by a third party under the authority
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`of applicant [Horphag] and exported to the United States by applicant, and such use of the mark
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`[Pycnogenol] inures to the benefit of applicant.” (Ex. 2 at 2-3)7
`
`5 In this brief all emphasis has been added and all citations and quotations omitted unless
`otherwise noted.
`6 Horphag’s Labeling Guidelines and quality control program are well known in the industry and
`provide consumers of the finished product containing Pycnogenol® extract with uniform quality
`and benefits of Pycnogenol® extract which the public came to expect and associates with the
`products bearing the Pycnogenol® Trademark. (Ex. 3)
`7 In the same original application file, Horphag submitted a second specimen of the
`Pycnogenol® Trademark as used in commerce on products distributed in the U.S. by Allergy
`
`

`
`Horphag also truthfully told the PTO in the 2003 renewal declaration that the “owner is
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`using or is using through a related company the mark in commerce on or in connection with all
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`the goods/services listed in the existing registration.” (Dkt. 46 Ex. 2 Combined Decl. at l)
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`In the 2013 renewal declaration, Horphag never stated that Horphag markets the finished
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`tablet product. Horphag truthfully stated that “the mark is in use in commerce on or in
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`connection with... dietary and nutritional supplements; ...The owner is submitting one...
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`specimen. . .consisting of a printout of label of product offered for sale in US.” (Dkt. 48 Ex. 11
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`Combined Decl. at l) The GNC label, which Petitioner reproduced in the Invalidity Motion,
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`itself advises that “Pycnogenol® is a registered trademark of Horphag Research Ltd.”8 (Dkt. 46,
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`Invalidity Mot. at 12) Thus, Horphag truthfully disclosed related company uses which are
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`apparent from the specimens themselves. All the above controlled uses inure to. Horphag’s
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`benefit.
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`Thus, Petitioner’s arguments that “[i]t has to be all about “how you actually use the
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`mark” on “your goods”. It is not about how any others, your customers, your customers’
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`customers,
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`use the mark for their goods” are legally insufficient and downright frivolous. The
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`Board should sua sponte sanction Petitioner for bringing them. Fed. R. Civ. P. ll(c)(3).
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`B.
`
`Petitioner’s “Manufacturer Source” Of The Finished Product Theory Is An
`Anachronism
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`Petitioner strenuously argues that the Pycnogenol® Trademark cannot function as a
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`trademark when Horphag has authorized its use by multiple finished goods companies:
`
`Research Group, a company authorized by Horphag to use this mark in the United States.
`Horphag truthfully described this arrangement ———“The products sold by Allergy Research Group
`are manufactured by a third party under the authority of applicant [Horphag] and exported to the
`United States by applicant, and such use of the mark [Pycnogenol] inures to the benefit of
`applicant.” (Ex. 2 at 2)
`8 The same acknowledgement is also included on the labels “of OTHER companies/
`manufacturers [when they] use PYCNOGENOL as the names of other companies’ products
`under other companies’ brand names.” (Dkt. 46, Invalidity Mot. at 11)
`
`

`
`there is a trademark KAL (Serial# 74442749, Reg# 1844068), §
`manufacturer source of this good. ...Registrant does not produce or sell consumer
`products.
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`How can PYCNOGENOL indicate the manufacturer source of the whole tablet???
`
`(Dkt. 46, Invalidity Mot. at 3)
`
`[Pycnogenol® on the GNC product label] is a generic name of this product but
`nothing else, possessing NO meaning of a manufacturer source for these 30
`capsules. Registrant does not produce, pack, label or sell this good as capsules.
`(Dkt. 46, Invalidity Mot. at 9-10)
`
`Horphag contracts the uses of the mark for other manufacturers to use as a
`product name (or an ingredient) for other manufacturers’ products on other
`manufacturers’ product labels. (Dkt. 46, Invalidity Mot. at 15)
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`Petitioner’s theory that when multiple trademarks are used on the same product, each trademark
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`has to reflect “manufacturer source” of the finished product is based on outdated trademark law.
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`Although a trademark originally indicated the source of the related product, trademark law has
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`shifted to recognize various valid premises upon which a person or entity may own a trademark,
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`including the control of a product’s quality:
`
`The historical conception of trade-mark as a strict emblem or source of the
`product to which it attaches has largely been abandoned. The burgeoning business
`of franchising has made trade-mark licensing a widespread commercial practice
`and has resulted in the development of a new rationale for trade-marks as
`representations for product quality.
`
`Siege] v. Chicken Delight, Inc., 448 F.2d 43, 48-49 (9th Cir. 1971). Thus, a trademark is not
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`necessarily an indicator of source but may denote control of quality and good will, among other
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`things.9 See 1-1 GILSON ON TRADEMARKS §1.03(1). However, here Pycnogenol® pine bark
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`extract is sourced by Horphag and each maker of finished product must provide the requisite
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`amount of Horphag sourced Pycnogenol® pine bark extract in each tablet/capsule contained in a
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`product marked with the trademark Pycnogenol®. (Ex. 3)
`
`9 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION, §18.4O at 18-86 (4th ed. 2013) ("This
`new approach abandoned sole reliance on the source concept in favor of reliance on a theory that
`a trademark does not always necessarily indicate physical source, but also indicates quality.").
`
`

`
`C.
`
`The PTO Does Not Police The Garden Variety Labeling Issues
`
`Petitioner’s argument that Horphag’s use of the Pycnogenol® Trademark is unlawful
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`because of Petitioner’s perceived labeling improprieties is futile as well. The PTO’s position is
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`that “[g]enerally, the USPTO presumes that an applicant’s use of the mark in commerce is lawful
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`and does not inquire whether such use is lawful unless the record or other evidence shows a clear
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`violation of law, such as the sale or transportation of a controlled substance.” (TMEP 907) The
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`TMEP further explains that “the USPTO will not regard apparent technical violations, such as
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`labeling irregularities on specimens, as violations. For example, if a package fails to show all
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`required labeling information, the examining attorney should not take any action.” (TMEP 907)
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`Only in two circumstances would the PTO consider the use unlawful: 1) “when a court or
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`the responsible federal agency has issued a finding of noncompliance under the relevant statute,
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`or [2)] where there has been a per se violation of the relevant statute.” (TMEP 907) None of
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`these circumstances is present here. Petitioner presented no evidence, since there is none, that
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`any court or federal agency has ever found this alleged impropriety in the use of the
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`Pycnogenol® Trademark on Horphag’s, KAL’s, or GNC’s labels at issue. Nor has Petitioner
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`shown a clear per se violation of law.
`
`10
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`Petitioner asserts that the word “Pycnogenol” on the three labels at issue should be
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`10 In addition, Petitioner had “to demonstrate by clear and convincing evidence more than that
`the use in question was not in compliance with applicable [labeling] law.” General Mills, Inc. v.
`Health Valley Foods, 24 USPQ 1270, 1274 (T.T.A.B. 1992). Petitioner had to “prove also that
`the non-compliance was material, that is, was of such gravity and significance that the usage
`must be considered unlawful--so tainted that, as a matter of law, it could create no trademark
`rights...” Id.
`Petitioner’s reliance on the Cre/lgri case is misplaced. (Dkt. 46 at 7) In CreAgrz', Inc. v.
`USANA Health Sciences, Inc., 474 F.3d 626 (9lh Cir. 2007), the Ninth Circuit misapplied dicta
`from the old T.T.A.B. cases which was since superseded by the General Mills rule and new
`policy of TMEP 907 quoted above. This case is not binding on, and has never been followed or
`cited by, T.T.A.B. , and has been roundly criticized. See MCCARTHY ON TRADEMARKS §19: 124
`at 19-369 — 19-370 (4”' ed. 2013).
`
`

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`deemed the “statement of identity” of the goods under the FDA consumer food labeling laws.
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`Under the statute, “[t]he common or usual name of the food. . .or when the nature of the food is
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`obvious, a fanciful name commonly used by the public for such food” is used as a statement of
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`identity. 11 Petitioner, without any authority, equated this “common or usual name of the food”
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`with a generic chemical name.
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`Petitioner’s claim is contrived. Petitioner did not cite any authority that such a common,
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`usual, or fanciful name cannot be a trademarked name which is “commonly used by the public
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`for” this extract.
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`Moreover, Petitioner did not analyze the full text of the labels at issue. It solely focused
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`on one word “Pycnogenol.” The purpose of Petitioner’s biased approach is obvious-—to create an
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`illusion that the word “Pycnogenol” appears on these labels by itself and thus, as the only word,
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`it must be the common or usual name of the food. When the full text of the labels is considered,
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`it is manifest that other words such as “pine bark extract” and “dietary supplement” provide
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`sufficient identification:
`
`KAL
`
`PYCNOGENOLTM
`
`(PICK—NAHJ—ENOL)
`EXTRACT OF PINE (PINUS PINASTER) BARK 20MG. (Dkt. 46 Ex. 1)
`
`GNC Preventive Nutrition®
`Pycnogenol®
`50mg
`DIETARY SUPPLEMENT
`Pycnogenol® is a registered trademark of Horphag Research Ltd. (Dkt. 48 Att. 20028)
`
`PYCNOGENOL®
`
`100% PURE FRENCH MARITIME PINE BARK EXTRACT
`
`11 Petitioner did not prove that the consumer food labeling laws it selected applied to the product
`at issue here, Pycnogenol® extract. It is a dietary supplement with a distinct regulatory and
`labeling setup under the DSHEA of 1994. For example, Horphag’s label for @ shipment of
`Pycnogenol is exempt from consumer food labeling requirements.
`
`

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`Pycnogenol® is a registered trademark of Horphag Research Ltd. (Dkt. 46 Ex. 3)
`
`Thus, the usage of the Pycnogeno1® Trademark on the labels at issue is not a clear per se
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`violation of law. Petitioner’s labeling and fraud claims are futile.
`
`D.
`
`Petitioner Is Wrong That Two Trademarks Cannot Apply To The Same Article
`
`Petitioner’s perceived labeling violations are based on its own grammatical analysis of
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`the labels containing the Pycnogenol® Trademark. Petitioner’s Dr. Sengen Sun is not a linguistic
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`expert by any stretch of imagination. He has no training, knowledge, or experience in the English
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`language linguistics. Dr. Sengen Sun has also now revealed his limited ability to understand and
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`conduct legal proceedings in the English language, asking for an English-to-Chinese interpreter
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`for his deposition. (Ex. 4 at 1) Petitioner’s analysis is misguided as a matter of law and any
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`argument based on it is futile.
`
`The centerpiece of this misguided analysis of the “grammatical relationship of the textual
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`content
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`”12 of the product labels is Petitioner’s misunderstanding that two trademarks can apply to
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`the same product:
`
`A trademark of a trademark is a joke
`In the phrase “GNC Preventive Nutrition® PYCNOGENOL® 30 Capsules”, if
`PYCNOGENOL could be a trademark, “GNC Preventive Nutrition®” would be a
`trademark of a trademark, which can only be a joke in the human society. (Dkt.
`46, Invalidity Mot. at 13)
`
`It is no joke in the US trademark law. The Board has “long held that packaging for a product
`
`may contain multiple marks.” Top Tobacco, LP. v. North Atlantic Operating Co., Inc., 101
`
`U.S.P.Q.2d 1163 n.19 (T.T.A.B. 2011). Typically, a manufacturer who purchases a third party’s
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`trademarked ingredient or component of a product,
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`labels that product as made with or
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`containing that ingredient or component. As the McCarthy treatise explains, a product may “have
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`multiple marks owned by different firms
`
`Such multiple marking is entirely appropriate so long
`
`12 (Dkt. 46, Invalidity Mot. at 10)
`
`

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`as the separate identifying function of both marks is apparent to the customer, either explicitly or
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`implicitly.” MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 7:8 (4th ed. 2013); Yard-
`
`Man, Inc. vi Getz Exterminators, Inc., 157 U.S.P.Q. 100, 107 (T.T.A.B. 1968) (“there is nothing
`
`to preclude the application of two marks of two entities to a product if the marks, as here,
`
`perform two different functions, and the functions are readily apparent from the manner in which
`
`the marks areapplied and the circumstances and conditions under which the product is sold”).
`
`The Federal Circuit, of course, held so as well. “The marks of different entities may, of course,
`
`appear on a single product where they serve separate functions; for example,
`
`manufacturer/distributor, ingredient/product, licensor/licensee.” In re Polar Music In! 7 AB, 714
`
`F.2d 1567, 1572 n.3 (Fed. Cir. 1983).
`
`Therefore, the premise of Petitioner’s new unpleaded claims—that two trademarks
`
`cannot be on the same package——has no basis in the US trademark law. Petitioner’s conclusions
`
`based on this mistaken premise are invalid as well, rendering Petitioner’s claims futile.”
`
`III. INVALIDITY MOTION IS A PROHIBITED MOTION FOR SUMMARY
`
`JUDGMENT
`
`The Invalidity Motion is undeniably a prohibited summary judgment motion because it is
`
`seeking the ultimate relief of extinguishing the Pycnogenol® registration:
`
`The trademark registration for PYCNOGENOL at USPTO is invalid and does not
`have legal force because of violations of the Federal laws by the USPTO staff in
`the trademark examining process for registration and renewals.
`Further, the registration is invalid because Registrant via its counsel lied and
`made willfully false statements in its declaration of use.
`(Dkt. 46, Invalidity
`Mot. at 22-23)
`
`Offering non-existent fraud grounds, instead of the genericness pled in the Petition, does
`
`13 For example, Petitioner erroneously concluded that “‘GNC Preventive Nutrition®’ is the
`modifying adjective while PYCNOGENOL is the modified noun.” (Dkt. 46, Invalidity Mot. at
`13) Petitioner also mistakenly concluded that “there is clearly a grammatical relationship in KAL
`PYCNOGENOL, so that KAL is the modifying adjective and PYCNOGENOL is the modified
`noun.” (Dkt. 46, Invalidity Mot. at 5)
`
`10
`
`

`
`not change the outcome sought by Petitioner.
`
`While Petitioner added unpleaded fraud allegations to the Invalidity Motion, it also again
`
`resubmitted its prohibited genericness arguments under the guise of fraud-in-the-registration-
`
`process claim. The Board previously ruled that “[i]nasmuch as we have denied motions for
`
`summary judgment from both parties on the issue of genericness, the Board will not entertain
`
`any further summary judgment motions.” (9/ 19/ 2012 Order, Dkt. 30 at 2 n.3) The Board has
`
`already rejected Petitioner’s first violation of that order when Petitioner filed “a motion for
`
`summary judgment in the guise of a motion for sanctions” “on the ground that respondent refuses to
`
`admit the genericness of PYCNOGENOL.” (Dkt. 34, 1 1/05/2012 Order at 1-2)
`
`Now in the Invalidity Motion, Petitioner applied the same grammatical analysis but
`
`instead of directing it to Pycnogenol® Monograph as it did in its 2012 Summary Judgment
`
`Motion, it now disguised it as part of alleged fraud-in-the-registration process claim, assailing
`
`the 1990 product label from KAL. Identical analysis in both motions is bolded in the table
`
`below:
`
`
`
`2012 Summary Judgment Motion (Dkt. 17) 2013 Invalidity Motion (Dkt. 46)
`
`On the first page of EXHIBIT 1, there is
`Fact No. 7: SCIENTIFIC AND CLINICAL
`clearly a grammatical relationship in KAL
`MONOGRAPH FOR PYCNOGENOL®
`PYCNOGENOL, so that KAL is the modifying
`(French Maritime Pine Bark Extract)...
`adjective and PYCNOGENOL is the modified
`If we follow our normal language rules, this
`underlined phrase PYCNOGENOL® {French noun. PYCNOGENOL is “a product name”
`Maritime Pine Bark Extract) means that the
`and “EXTRACT OF PINE BARK 20 MG”
`first part French Maritime Pine Bark Extract is
`is just “the description line” of
`merely
`a
`name
`equivalent
`to PYCNOGENOL, as defined by Registrant in
`PYCNOGENOL®. French Maritime Pine
`its giant website (Doc 14, Exh 1, 5/19/2011).
`Bark Extract
`is
`the “description line”
`In the other words, “EXTRACT OF PINE
`following PYCNOGENOL®. The two terms BARK” is just a synonym of PYCNOGENOL
`describe each other, and do not modify each — they describe each other. (Dkt. 46,
`other
`in
`a
`grammatical
`adjective-noun Invalidity Mot. at 5-6)
`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
`
`11
`
`

`
`text support that PYCNOGENOL is a generic
`name. A trademark cannot have a scientific and
`
`
`
`clinical monograph, but matter in its name.
`(Dkt. 17 at 14)
`
`This “description line” genericness analysis has already been presented by Petitioner in
`
`its 2012 Summary Judgment motion.” Undeterred by the Board’s Orders not to submit it again,
`
`Petitioner did it again in the Invalidity Motion.
`
`Petitioner also boldly repeated some of its genericness arguments (previously presented
`
`to the Board in the 2012 Summary Judgment motion), without much of a disguise of the new
`
`fraud allegations. It again relied on the same type of documents for the same dispositive relief.
`
`For example, in a section entitled “WHY A POPULAR GENERIC NAME CAN PASS THE
`
`TRADEMARK REGISTRATION SO EASILY?” Petitioner deceptively ascribed significance
`
`to the documents in some form connected or submitted to the government agencies such as the
`
`FDA and FTC. (Dkt. 46 at 19-21) In the 2012 Summary Judgment motion, Petitioner also relied
`
`on the FDA documents to argue genericness. (Dkt. 17 at 13-14) Petitioners arguments based on
`
`both sets of documents were fully refuted by Dr. Heather Oliff in her expert report. (Ex. 6 at W
`
`74-75 &n.7, 1] 79 at 39, W85-87; see also Ex. 5, Butters report 1] 90) Petitioner also misleadingly
`
`reproduced only part of a Yahoo!Health website search which included a one-liner “pycnogenol
`
`(generic name)” But, as Dr. Oliff noted at p. 39, the text which Petitioner purposefully omitted
`
`from its brief expressly defined and used Pycnogenol® as a