throbber
Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`
`Signature
`Date
`Attachments
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA484589
`ESTTA Tracking number:
`07/20/2012
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92053616
`Defendant
`1-800-HEALTHY.COM, INC.
`THOMAS M GALGANO
`GALGANO & ASSOCIATES PLLC
`20 W PARK AVE, STE 204
`LONG BEACH, NY 11561
`UNITED STATES
`tmgalgano@rcn.com, jgbower@rcn.com
`Opposition/Response to Motion
`Jessica G. Bower
`jgbower@galganoiplaw.com, tmgalgano@galganoiplaw.com,
`office@galganoiplaw.com
`/Jessica G. Bower/
`07/20/2012
`response7202012.pdf ( 34 pages )(1285185 bytes )
`Declaration of Clay Schultz 2012_07_19.pdf ( 4 pages )(448590 bytes )
`bowerdecl7202012.pdf ( 5 pages )(140879 bytes )
`Exhibits A-F.pdf ( 71 pages )(9860050 bytes )
`Exhibits G-P.pdf ( 27 pages )(1205839 bytes )
`Exhibits Q-Z.pdf ( 25 pages )(715800 bytes )
`Exhibits AA-QQ.pdf ( 39 pages )(1209790 bytes )
`Exhibits RR-WW.pdf ( 50 pages )(2126466 bytes )
`Exhibits XX-AAA.pdf ( 25 pages )(973037 bytes )
`
`

`

`I hereby certify that this REGISTRANT'S RESPONSE IN OPPOSITION TO PETITIONER'S MOTION FOR PARTIAL SUMMARY
`JUDGMENT AND REGISTRANT'S CROSS-MOTION ' FOR SUMMARY JUDGMENT; MEMORANDUM OF POINTS AND
`AUTHORITIES; AND DECLARATIONS OF CLAY SCHULTZ AND JESSICA G. BOWER IN SUPPORT THEREOF is being transmitted
`via the United States Patent & Trademark Office Trademark Trial and Appeal Board’s Electronic System for Trademark Trial and
`Appeals
`TTA) on the date indicated below:
`
`Date: July 20, 2012
`
`
`
`Jessica G. Bower
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Cancellation No. 92053616
`
`Reg. Nos. 3,787,695; 3,866,133
`Mark: HEALTHY.COM
`
`_ _ _ _ _ . . . . _ . _ . . _ _ _ _ . . . _ - X
`
`I
`
`) I
`
`) I
`
`I
`I
`
`) I
`
`) I
`
`DAVID ROBERTSON,
`
`Petitioner,
`
`'v.
`
`1—800—HEALTHY.COM,
`
`|NC.,
`
`Registrant.
`
`. _ _ _ . _ _ _ _ . _ _ _ _ _ _ _ _ _ _ _ _ _x
`
`REGISTRANT'S RESPONSE IN OPPOSITION TO PETITIONER'S
`
`MOTION FOR PARTIAL SUMMARY JUDGMENT AND REGISTRANT'S CROSS-
`
`MOTION FOR SUMMARY JUDGMENT; MEMORANDUM OF POINTS AND
`
`AUTHORITIES; AND DECLARATIONS OF CLAY SCHULTZ AND JESSICA G.
`BOWER IN SUPPORT THEREOF
`
`Registrant, 1-800-HEALTHY.COM,
`
`INC., hereby responds to and opposes
`
`Petitioner David Robertson ’3 Motion for Summary Judgment of Invalidity Under 75
`
`US. C. §7052(2)(a) [sic] on the Basis that the Subject Marks are Deceptive and,
`
`

`

`hereby moves the Trademark Trial and Appeal Board for summary judgment
`
`in
`
`accordance with Fed. R. Civ. P. 56(b) and TBMP §528 with respect to all grounds of
`
`cancellation made by Petitioner, David Robertson, in this Cancellation proceeding for
`
`the reasons set forth in the following Memorandum of Points and Authorities in
`
`Support thereof.
`
`Page ii
`
`

`

`TABLE OF CONTENTS
`
`I.
`
`ll.
`
`INTRODUCTION ...................................................................................... ..1
`
`STATEMENT OF FACTS ........................................................................... ..3
`
`III.
`
`ARGUMENT .......................................................................................... ..10
`
`A.
`
`B.
`
`SUMMARY JUDGMENT STANDARD ............................................... ..10
`
`PETITIONER’S MOTION FOR PARTIAL SUMMARY
`
`JUDGMENT ON THE ISSUE OF DECEPTIVENESS
`
`UNDER §2(a) SHOULD BE DENIED AND SUMMARY
`JUDGMENT GRANTED IN FAVOR OF REGISTRANT ........................... ..11
`
`1.
`
`Petitioner Improperly Argues Grounds which
`were not Pled ...................................................................... ..11
`
`2.
`
`Petitioner has Failed to Submit Evidence
`
`in Support of its Motion ....................................................... ..12
`
`3.
`
`A Genuine Issue of Material Fact Exists as to
`
`Ownership of the Domain Name or Alternatively
`No Genuine Issue Exists because Petitioner does not
`
`Own the Domain Name ......................................................... ..14
`
`4.
`
`Registrant’s Marks Are Not Deceptive ..................................... ..15
`
`a.
`
`Petitioner’s Motion on the Grounds of
`
`Deceptiveness Should Be Denied ................................... ..15
`
`b.
`
`Summary Judgment on the issue of
`Deceptiveness in Favor of Registrant is Appropriate ........ ..17
`
`C.
`
`SUMMARY JUDGMENT SHOULD BE GRANTED
`
`IN FAVOR OF REGISTRANT REGARDING PRIORITY
`
`AND LIKELIHOOD OF CONFUSION UNDER §2(d) ................................. ..20
`
`1.
`
`2.
`
`Registrant has Priority of Use of its Marks ................................. ..20
`
`Petitioner has Admitted Likelihood of Confusion ...................... ..24
`
`D.
`
`REGISTRANT'S MARKS DO NOT CREATE A FALSE
`
`SUGGESTION OF A CONNECTION UNDER §2(a) ............................... ..25
`
`IV.
`
`CONCLUSION .......................................................................................... ..27
`
`Page iii
`
`
`
`

`

`TABLE OF AUTHORITIES
`
`Cases
`
`Page(s)
`
`Alpha Kitty/ Boss Pussycat Int’l v. Big Momma Holdings, LLC
`No. 91184311, 2011 TTAB LEXIS 74 (TTAB Mar.15, 2011) ................. ..22
`
`Celotex Corp. v. Catrett
`477 US. 317 (1986) ......................................................................... ..10
`
`Data Concepts Inc. v. Digital Consulting Inc.
`150 F.3d 620, 47 USPQZd 1672
`concurring opinion, Merritt (6th Cir. 1998) ............................................ ..22
`
`Evans Products Co. v. Boise Cascade Corp.
`218 USPQ 160 (TTAB 1983) ............................................................. ..18
`
`Herbko Int’l v. Kappa Books Inc.
`
`308 F.3d 1156, 64 USPQZd 1375 (Fed. Cir. 2002) .............................. ..20
`
`In re Budge Mfg. Co. Inc.
`857 F.2d 773, 8 USPOZd 1259 (Fed. Cir. 1988) ............................ ..16, 18
`
`In re Ei/berg
`
`49 USPQZd 1955 (TTAB 1998) ......................................................... ..22
`
`In re Mohawk Air Servs. Inc.
`
`196 USPQ 851 (TTAB 1977) ............................................................. ..26
`
`In re Nuclear Research Corp.
`
`16 USPQZd 1316 (TTAB 1990) .......................................................... ..25
`
`In re Shape/y, Inc.
`
`231 USPQ 72 (TTAB 1986) ............................................................... ..18
`
`In re Shniberg
`79 USPQZd 1309 (TTAB 2006) ......................................................... ..17
`
`In re Quady Winery Inc.
`
`221 USPQ 1213 (TTAB 1984) ............................................................ ..17
`
`Pageiv
`
`

`

`Lockheed Martin Corp. v. Network Solutions, Inc.
`985 F. Supp. 949, 44 USP02d1865 (CD. Cal. 1997) ........................... ..22
`
`Matsuhita Elec. Indus. Co. v. Zenith Radio Corp.
`475 U.S. 574 (1986) ......................................................................... ..10
`
`Opry/and USA, Inc. v. Great Am. Music Show, Inc.
`
`970 F.2d 847, 23 USPQZd 1471 (Fed. Cir. 1992) ................................ ..10
`
`Pelt v. Utah
`
`539 F.3d 1271 (10th Cir. 2008) .......................................................... ..10
`
`The Bd. of Trs. of the Univ. of Ala. v. BAMA—Werke Curt Baumann
`
`231 USPQ 408 (TTAB 1986) ............................................................. ..26
`
`U. S. v. Diebold, Inc.
`
`369 U.S. 654 (1962) ......................................................................... ..11
`
`Federal Statutes
`
`15 U.S.C. 1052(a) ................................................................................ ..15, 25
`
`15 U.S.C.1052(d) ...................................................................................... ..20
`
`Rules
`
`Fed. R. Civ. P. 56 ................................................................................. ..10,13
`
`Trademark Manual of Examining Procedure (TMEP) ................................... ..17, 25
`
`Trademark Trial and Appeal Board Manual of Procedure (TBMP) .................. ..1 1,13
`
`Page v
`
`

`

`I.
`
`INTRODUCTION
`
`Petitioner, David Robertson (hereinafter “Petitioner” or "Robertson"),
`
`filed
`
`Petitioner David Robertson ’3 Motion for Summary Judgment of Invalidity Under 75
`
`U. S. C. § 7052(2)(a) [sic] on the basis that the Subject Marks are Deceptive (hereinafter
`
`"Petitioner’s Partial Motion for Summary Judgment”) on June 15, 2012.
`
`Registrant, 1—800-HEALTHY.COM, INC. (hereinafter “Registrant” or ”18H”),
`
`hereby responds to and opposes Petitioner’s Partial Motion for Summary Judgment and
`
`also moves the Trademark Trial and Appeal Board (the "Board") for summary judgment
`
`in accordance with Fed. R. Civ. P. 56(b) and TBMP §528 with respect to all grounds
`
`of cancellation made by Petitioner, namely: (1) Deceptiveness under Trademark Act
`
`section 2(a), 15 U.S.C. 1052(a);
`
`(2) False Suggestion of a Connection under
`
`Trademark Act section 2(a), 15 U.S.C. 1052(a); and (3) Priority and Likelihood of
`
`Confusion under Trademark Act section 2(d), 15 U.S.C. 1052(d).
`
`Petitioner’s Partial Motion for Summary Judgment is premised on just two
`
`allegations of fact: (1) that he is the owner and operator of the Internet domain name
`
`and website healthy.com and;
`
`(2) that Registrant
`
`is the owner and subsequent
`
`trademark registrantof the mark HEALTHY.COM. As a result of these two allegations,
`
`Robertson seeks to have Registrant’s Marks cancelled on the grounds that they are
`
`deceptive.
`
`Page 1
`
`

`

`However, Robertson is wrong on both the facts and law applicable to this case.
`
`Furthermore, Robertson offers no evidence in support of his motion, aside from
`
`conclusory misstatements of fact. As will be demonstrated below:
`
`1. Robertson is not
`
`the current owner/operator of
`
`the domain name
`
`healthy.com.
`
`2. Robertson did not make service marks use of HEALTHY.COM prior to
`
`Registrant. As he himself admitted, healthy.com was just a domain name waiting "on
`
`the shelf.”
`
`3. Robertson has offered no evidence in support of his alleged facts.
`
`4. Robertson has failed to establish the essential criteria necessary to support
`
`a finding of deceptiveness under § 2(a).
`
`For these reasons, Petitioner’s Partial Motion for Summary Judgment should be
`
`denied. On the other hand, 18H submits herewith evidentiary support for the facts and
`
`contentions of points 1—4 sufficient for the TTAB to find in favor of 18H on its Cross—
`
`Motion for Summary Judgment regarding deceptiveness and false suggestion of a
`
`connection under section 2(a). Moreover, the facts below will establish that 18H has
`
`priority of use of the mark HEALTHY.COM and in light of Robertson‘s admission that
`
`the marks are confusingly similar, Registrant is entitled to summary judgment regarding
`
`priority and likelihood of confusion under section 2(d).
`
`Page 2
`
`

`

`l.
`
`STATEMENT OF FACTS
`
`1-800-HEALTHY.COM
`
`1-800—HEALTHY.COM,
`
`lNC. has been in business since at least as early as
`
`1999, offering health information and selling dietary and nutritional supplements
`
`through its alphanumeric telephone number 1-800-HEALTHY (1 -800-432—5849), mail
`
`order, and via the internet. Declaration of Clay Schultz (hereinafter "Schultz 060/. "l
`
`1i 2. More particularly, 18H provides telephone shop at home services and on-line
`
`ordering services featuring dietary supplements and nutritional products, namely,
`
`nutritional
`
`supplements,
`
`herbal
`
`supplements,
`
`vitamin
`
`supplements, mineral
`
`supplements, amino acid supplements, and nutraceutical supplements. Schultz Deal.
`
`1} 3.
`
`18H has advertised its products and services on the internet via its websites,
`
`including, www.1800healthy.com and www.healthy.com.co; via third party websites,
`
`including, CBN.com, LivingTheLife.com and SkyMall.com; via print advertisements,
`
`including the SkyMall catalog; national television; national radio; paid advertisements
`
`via Google, Yahool, Bing, and 7search.com; printed brochures; product labeling;
`
`emails; direct mail; customer correspondence; customer service call centers; YouTube;
`
`Facebook; Twitter; HealthyTV; The Healthy Herald and through sponsorship and
`
`exhibits at sporting events. Schultz Deal.
`
`1[ 4; Exh. A. Since 2000, 18H has spent
`
`approximately $3 million in advertising and promoting its goods and services and has
`
`generated gross revenues of approximately $12 million. Schultz Deal.
`
`1[ 5.
`
`Page 3
`
`

`

`18H operates a website at www.1800healthy.com and owns various other
`
`domain names which redirect
`
`to this website, namely, 1-800-healthy.com,
`
`800healthy.com, 800—healthy.com, 1-800healthy.com, 1800—healthy.com. Schultz
`
`Decl.
`
`1i 6; Exh. B. 18H also operates a website at www.healthy.com.co and
`
`www.healthy.tv. Schultz Decl.
`
`1i 7, Exh. C. 18H’s above-mentioned websites offer
`
`products as well as information about health and nutrition. Schultz Deal. 1[ 8, Exh. B-C.
`
`Registrant owns several trademark registrations for its products and services
`
`including U.S.
`
`Trademark Registration
`
`No.
`
`2,702,920
`
`for
`
`the mark
`
`1800HEALTHY.COM; Reg. No. 2,908,889 for the mark 1-800-HEALTHY.COM; and
`
`Reg. No. 3,920,303 for the mark HEALTHY TV.. Declaration of Jessica G. Bower
`
`(hereinafter "Bower Decl. ”) 1i 2; Exh. G.
`
`On October 5, 2005, 18H filed the first of its service mark applications on an
`
`intent-to—use basis under §1 (b) to register the service mark HEALTHY.COM, serial no.
`
`76/647,986,
`
`for use in connection with "online retail store services featuring
`
`nutritional supplements” in international Class 35, which registered as Reg. No.
`
`3,787,695 on May 11, 2010, asserting a date of first use of February 18, 2010. On
`
`March 25, 2010, 18H filed service mark application serial no. 77/968,104 for
`
`HEALTHY.COM based upon use under §1 (a) of February 18, 2010 in connection with
`
`“providing an online search engine for obtaining health information on the internet” in
`
`international Class 42, which registered as Reg. No. 3,866,133 on October 19, 2010
`
`(hereinafter collectively referred to as "Registrant's Marks”).
`
`Page 4
`
`

`

`18H began using the service mark HEALTHY.COM on
`
`its website
`
`www.1800healthy.com at least as early as February 18, 2010 in connection with its
`
`online retail store services featuring nutritional supplements and in connection with
`
`providing an online search engine for obtaining health information and excerpts are
`
`attached as Exhibit B. Schultz Decl. H 6, 9; Exh. B. HEALTHY.COM was later utilized
`
`on 18H’s website www.healthy.com.co and excerpts are attached as Exhibit C.
`
`Schultz Decl. 1W 7,
`
`.9; Exh. C.
`
`DAVID ROBERTSON
`
`On April 21, 2009, almost four (4) years after 18H filed its first service mark
`
`application for HEALTHY.COM on October 5, 2005, David Robertson filed application
`
`serial no. 77/718,996 for HEALTHY.COM,
`
`for "providing a web site featuring
`
`information on health and nutrition” in International Class 44 (hereinafter “Petitioner’s
`
`Mark”). Robertson’s application serial no. 77/718,996 claims a date of first use of the
`
`mark HEALTHY.COM of August 23, 1994. However, August 23, 1994 merely
`
`corresponds to the date of initial registration of the domain name healthycom. Bower
`
`Dec].
`
`1[ 3; Exh. H. Moreover, the specimen of use submitted with the application is
`
`simply a parking page.
`
`HISTORY OF OWNERSHIP AND USE OF HEALTHY.COM
`
`In particular, as seen in Exhibit H the domain record for healthy.com was initially
`
`created on August 23, 1994. Bower Deal. 1 3; Exh. H. However, a website utilizing
`
`HEALTHY.COM as a service mark did not exist until 2011, immediately, before the
`
`Page 5
`
`
`
`

`

`present Cancellation proceeding was filed. Bower Decl. 1l1l4-7; Exh. /-00, AAA. Prior
`
`thereto, healthy.com was only used by Robertson as a uniform resource locator
`
`("URL") pointing to an address on the internet, and not as a trademark or service mark.
`
`Bower Decl.
`
`1Hl4—7; Exh.
`
`l—QO, AAA.
`
`This is confirmed by Petitioner
`
`in his
`
`Supplemental Response to Interrogatory No. 3 where he states in regard to use of
`
`healthy.com only that "Healthy.com has directed users to websites hosted at
`
`Healthy.net or Healthworld.com.” Bower Decl.
`
`1i 8; Exh. RR. Moreover, even when
`
`Petitioner began use of a website at the domain name healthy.com, much of the
`
`website was Latin placeholder text, i.e., merely filler content, and not actual website
`
`content about health and nutrition. Bower Decl.
`
`{I 6; Exh. 00.
`
`Instead of utilizing HEALTHY.COM as a service mark, Robertson has been
`
`holding onto the domain name in hopes of selling it for a monetary windfall. Bower
`
`090/.
`
`ll 76; Exh. 22. In fact, Roberston has even admitted his lack of trademark use.
`
`Particularly, Robertson stated in an email referring to healthy.com and another domain
`
`that he has "kept these domain names on the shelf — so not to brand them to [sic]
`
`specific.” Bower Decl.
`
`1i .9; Exh. 88.
`
`There has been no use of HEALTHY.COM by Robertson, prior to the critical date
`
`of October 5, 2005, when 18H filed its intent-to-use application for HEALTHY.COM.
`
`In particular, according to a review of the Internet Archive Wayback Machine at
`
`http:[/archive.org/web[web.php, below is a time line of events pertinent to this motion
`
`Page 6
`
`

`

`in regard to the history of the domain name healthy.com. Bower Decl. 1W4-7; Exh. [—
`
`00, AAA.
`
`August 23, 1994 - Domain name healthy.com is initially registered. Bower Decl.
`1i 3; Exh. H.
`
`1994 -1997 - No evidence of a website at healthy.com. Bower Decl. M 4-5;
`Exh. /.
`
`1997-1999 - Website at healthy.com for Healthworld Oniine does not utilize
`HEALTHY.COM as a service mark. Bower Decl. M 4-5; Exhibits /—0.
`
`2000 - Heaithy.com redirects to the website Healthworld Online at healthy.net
`but does not utilize HEALTHY.COM as a service mark. Bower Decl. M 4—5, 7;
`
`Exh. I, P-U, AAA.
`
`2000—2002 - Heaithy.com redirects to healthy.net but an error message
`appears. Bower Decl. M 4—5, 7; Exh. /, V-CC, AAA.
`
`2003—2005 - No evidence of a website at healthy.com. Bower Decl. M 4—5;
`Exh. I.
`
`October 5, 2005 - 1-800-HEALTHY.COM,
`
`INC. files its lTU service mark
`
`application for HEALTHY.COM in International Class 35.
`
`2006 — No evidence of a website at healthy.com. Bower Decl. M 4—5; Exh. I.
`
`2007 — Network Solutions parking page at healthy.com. Bower Decl. 1H[4-5;
`Exh. /, DD-FF.
`
`2007 — 2008 — Error message at healthy.com. Bower Decl.
`
`11 4—5; Exh. I, GG-LL.
`
`2008 - 2009 - Parking page at healthy.com. Bower Decl. 1i 4—5; Exh. /, MM-PP.
`
`April 21, 2009 - David Robertson files his service mark application for
`HEALTHY.COM based on use since August 23, 1994 and providing a parking
`page as a specimen of use of the mark.
`
`June 29, 2010 - Dave Robertson transfers healthy.com domain name to
`healthy.com, INC. Bower Decl.
`1! 70; Exh. TT.
`
`Page 7
`
`

`

`0
`
`0
`
`February 7, 2011 - Evidence of website at HEALTHY.COM providing minimal
`
`information on health and nutrition, no sale of any products or services and
`including Latin placeholder filler content. Bower Decl.
`ll 6; Exh. 00.
`
`February 11, 2011 - Petition to Cancel filed by Robertson.
`
`it is evident from this time line that healthy.com was only used as a URL to
`
`point to an address on the internet from 1994-2010, and not as a service mark. Bower
`
`Decl.
`
`11114-7; Exh.
`
`/—OQ, AAA.
`
`It was only four
`
`(4) days before the present
`
`Cancellation proceeding was filed that Robertson strategically established a minimalist
`
`website at healthy.com using HEALTHY.COM solely proving information about health
`
`and nutrition but not involving the sale of any products or services. Bower Decl. H
`
`6, 75; Exh. 00, YY.
`
`ROBERTSON IS NOT THE OWNER OF THE DOMAIN NAME HEALTHY.COM
`
`Contrary to that alleged in his motion, Robertson was not the original owner of
`
`the domain name healthy.com in 1994; he is not the current owner of the domain
`
`name healthy.com; nor has he continuously been the owner of the domain name
`
`healthy.com.
`
`In particular, since June 29, 2010, the domain name healthy.com has
`
`been owned by healthy.com, INC, not Dave Robertson. Bower Deal.
`
`1[ 70; Exh.TT.
`
`Below is a time line of the domain name ownership of healthy.com showing that
`
`Robertson’s alleged statements are inaccurate:
`
`0
`
`August 23, 1994 - Record created for domain name healthy.com [no owner
`
`identified] Bower Dec]. 13; Exh. H.
`
`Page 8
`
`

`

`0
`
`0
`
`0
`
`0
`
`0
`
`0
`
`0
`
`0
`
`0
`
`March 12, 1996 - Domain name sold from Electronic Pen to Healthworld Online,
`
`lnc. Bower Dec]. 1 77; Exh. UU.
`
`January 10, 2002 - Domain name owned by Convergence Health.com. Schultz
`
`060/.
`
`1[ 70; Exh. D.
`
`June 17, 2002 — Domain name sold from Convergence Health.com lnc. to Dave
`
`Robertson. Bower 090/. 1 72; Exh. VV.
`
`November 10, 2002 - April 23, 2009 — Whois records show domain name
`
`owned by Dave Robertson. Schultz 090/. 1 7 7; Exh. E.
`
`April 21, 2009 - Robertson files his service mark application for HEALTHY.COIV|
`
`based on use since 1994.
`
`June 29, 2010 - Domain sold from Dave Robertson to Healthy.com. Bower
`
`060/.
`
`ll 70; Exh. TT.
`
`July 3, 2010 - Whois records confirm domain name owned by healthy.com, lnc.
`
`Schultz Dec].
`
`1[ 7 2; Exh. F.
`
`February 11, 2011 - Robertson files Cancellation Proceeding.
`
`April 22, 2011 - Whois records confirm domain name owned by healthy.com,
`
`lnc. Bower Decl.
`
`1i 74; Exh. XX.
`
`Thus, as can be seen in the time line above, contrary to that stated by
`
`Robertson, he was neither the original owner, the current owner, nor the continuous
`
`owner of the domain name healthy.com.
`
`Page 9
`
`

`

`|||.
`
`ARGUMENT
`
`A.
`
`Summary Judgment Standard
`
`Summary judgment is appropriate when there are no "genuine disputes as to
`
`any material fact" and the movant is, therefore, entitled to judgment as a matter of
`
`law. Fed. R. Civ. P. 56(a). The party seeking summary judgment bears the initial
`
`burden of proof. Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986).
`
`When the moving party does not have the ultimate burden of persuasion at trial,
`
`it may "carry its initial burden either by producing affirmative evidence negating an
`
`essential element of the non—moving party’s claim, or by showing that the non-moving
`
`party does not have enough evidence to carry its burden of persuasion at trial.” Pelt
`
`v. Utah, 539 F.3d 1271, 1280 (10th Cir. 2008). However, if the moving party has the
`
`burden of proof at trial, "a more stringent summary judgment standard applies.” Id.
`
`"[Tlhe moving party must establish, as a matter of law, all essential elements of the
`
`issue before the nonmoving party can be obligated to bring forward any specific facts
`
`alleged to rebut the movant’s case.” Id.
`
`Accordingly, for summary judgment to be appropriate, the evidence presented
`
`must be sufficient to show that no reasonable trier of fact could find other than for the
`
`moving party. Matsuhita EIec. Indus.Co. v. Zenith Radio Corp., 475 U.S. 574, 587
`
`(1986). A dispute about a material fact is “genuine” if the evidence would permit a
`
`reasonable jury to return a verdict for the non-moving party. Opryland USA, Inc. v.
`
`GreatAm. Music Show, Inc., 970 F.2d 847, 850, 23 USPQZd 1471 , 1472 (Fed. Cir.
`
`1992). In addition, inferences drawn from underlying facts must be viewed in the light
`
`Page 10
`
`

`

`most favorable to the non-moving party. US. v. Diebold, Inc., 369 U.S. 654 (1962).
`
`Thus, when a genuine issue of material fact exists, summary judgment should not be
`
`granted. Id.
`
`B.
`
`PETITIONER'S MOTION FOR PARTIAL SUMMARY JUDGMENT ON
`
`THE ISSUE OF DECEPTIVENESS UNDER §2(a) SHOULD BE DENIED
`
`AND SUMMARY JUDGMENT GRANTED IN FAVOR OF REGISTRANT
`
`Petitioner’s Partial Motion for Summary Judgment on the ground of
`
`deceptiveness should be denied on the basis that he: (1) improperly argues grounds
`
`which were not pled; (2) has failed to cite to or proffer any evidence in support of his
`
`motion; (3) is not the owner of the domain name; and (4) has failed to cite to sufficient
`
`evidence showing the absence of a genuine issue of material fact as to deceptiveness.
`
`Instead, summary judgment on the grounds of deceptiveness should be granted in
`
`favor of Registrant.
`
`1 .
`
`Petitioner Improperly Argues Grounds which were not
`Pled
`
`As an initial matter, while it is unclear exactly what bases Petitioner is arguing,
`
`he appears to argue in Section ||(C) of his motion, that Registrant’s Marks are
`
`deceptively misdescriptive and/or primarily geographically deceptively misdescriptive.
`
`However, these arguments should be stricken on the grounds that Petitioner failed to
`
`plead these bases as grounds for cancellation. "A party may not obtain summary
`
`judgment on an issue that has not been pleaded.” TBMP §528.07(a).
`
`Page 1 1
`
`

`

`Petitioner pled as grounds for cancellation of Registrant’s Marks that the marks
`
`are Deceptive under Trademark Act section 2(a); that there is a False Suggestion of
`
`a Connection under Trademark Act section 2(a); and that there is Priority and
`
`Likelihood of Confusion under Trademark Act section 2(d). However, Petitioner now
`
`appears to argue that Registrant’s Marks are deceptively misdescriptive under Section
`
`2(e)(1) and/or primarily geographically deceptively misdescriptive under section 2(e)(3),
`
`which is improper.
`
`Since Petitioner failed to plead these bases as grounds for
`
`cancellation, Petitioner is prohibited from relying on them in seeking summary
`
`judgment.
`
`2.
`
`Petitioner has Failed to Submit Evidence in Support of its
`Motion
`
`In addition, Petitioner has relied on mere conclusory assertions in support of his
`
`motion and has failed to refer to or submit any evidence in support thereof and,
`
`therefore, Petitioner’s Partial Motion for Summary Judgment should be denied.
`
`In
`
`support of his motion, Petitioner has asserted two alleged "uncontroverted facts”
`
`which he relies on:
`
`(1) that Petitioner is the registered owner and operator of the
`
`Internet domain name and website Healthy.com and (2) that Registrant is the owner
`
`and subsequent trademark registrant of the mark HEALTHY.COM. Registrant does not
`
`dispute that it is the owner and service mark registrant of the mark HEALTHY.COM.
`
`However, Petitioner has failed to submit any evidence that he is the registered owner
`
`and operator of the Internet domain name and website healthy.com and, in fact, he’s
`
`not. Schultz Deal.
`
`1i 72; Exh. F; Bower Decl. 1H} 70, 74; Exh. TT, XX.
`
`Page 12
`
`

`

`When seeking summary judgment, the moving party must demonstrate the
`
`absence of all genuine issues of material fact by citing to particular parts of evidence
`
`on record, "including depositions, documents, electronically stored information,
`
`affidavits or declarations, stipulations (including those made for purposes of the motion
`
`only), admissions, interrogatory answers, or other materials,” or by "showing that the
`
`materials cited do not establish the
`
`presence of a genuine dispute.” Fed. R. Civ. P.
`
`56(0). When a motion for summary judgment is filed, the only evidentiary materials
`
`likely to be already of record "are the pleadings,
`
`the file of any application or
`
`registration that is the subject matter of the proceeding, and any registration pleaded
`
`and made of record by the plaintiff with its complaint.” TBMP §528.05(a)(1). Any
`
`other evidence to be considered upon summary judgment, must be submitted along
`
`with the summary judgment motion. lo’.
`
`Here, Petitioner has merely asserted in his motion that he is the registered
`
`owner and operator of the lnternet domain name and website healthy.com, but has
`
`failed to point to evidence of record or submit supporting evidence as to his claim of
`
`ownership of the domain name.
`
`In fact, Petitioner cites to no evidence of record and
`
`has not proffered any evidence in support of his motion. Accordingly, Petitioner’s
`
`motion for summary judgment should be denied on the basis that he has failed to
`
`demonstrate the absence of all genuine issues of material fact by his failure to cite to
`
`any evidence in support thereof.
`
`Page 13
`
`
`
`

`

`3.
`
`A Genuine Issue of Material Fact Exists as to Ownership
`
`of the Domain Name or Alternatively No Genuine lssue
`Exists because Petitioner Does Not Own the Domain
`
`Name
`
`Moreover, notwithstanding the fact that Petitioner has failed to support his claim
`
`that he is the owner and operator of
`
`the internet domain name and website
`
`Healthy.com, the evidence of record proffered by Registrant in support of its Cross—
`
`Motion for Summary Judgment shows that Petitioner, David Robertson,
`
`is not the
`
`owner of the domain name, healthy.com.
`
`Instead, the domain name, healthy.com, is
`
`currently in the name of another entity, Healthy.com, INC. Schultz Decl.
`
`1f 72; Exh.
`
`F; Bower Decl. M 70, 74; Exh. TT, XX.
`
`In particular, Petitioner’s service mark application for HEALTHY.COM was filed
`
`with David Robertson, as an individual, listed as the Applicant. However, the evidence
`
`of record shows that since June 29, 2010, the domain name healthy.com has been
`
`owned by healthy.com, INC, not Dave Robertson. Schultz Decl.
`
`1i 72; Exh. F; Bower
`
`Decl. H 70, 74; Exh. TT, XX. Particularly, David Robertson sold the domain name
`
`to healthy.com, as evidenced by the Domain Name Purchase Agreement dated June
`
`29, 2010 by and between Dave Robertson and Healthy.com. Bower Decl.
`
`1f 70; Exh.
`
`TT.
`
`Printouts from the Whois database, confirm ownership of the domain name
`
`healthy.com in healthy.com, INC. Schultz Decl.
`
`1[ 72; Exh. F; Bower Decl.
`
`1[ 74; Exh.
`
`XX.
`
`Thus, at a minimum, a genuine issue of material fact exists as to Petitioner’s
`
`Motion relative to ownership of the domain name healthy.com. However, based upon
`
`Page 14
`
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`
`

`

`the evidence of record,
`
`it shows the absence of a genuine issue of material fact,
`
`namely, that Petitioner, David Robertson, is 391 the owner of the domain name but
`
`rather a separate entity, healthy.com, lNC, is the current owner. Schultz Deal.
`
`1[ 72;
`
`Exh. F; Bower Decl. {Hi 70, 74; Exh. TT, XX. Accordingly, Petitioner’s Partial Motion
`
`for Summary Judgment should fail as it relies on a fact as an essential element of his
`
`case, which is false.
`
`4.
`
`Registrant's Marks are Not Deceptive
`
`a.
`
`Petitioner's Motion on the Grounds of
`
`Deceptiveness Should Be Denied
`
`Petitioner has failed to demonstrate the absence of a genuine issue of material
`
`fact as to the deceptiveness of Registrant's Marks, since Petitioner has failed to submit
`
`any evidence regarding the three-prong test used to determine deceptiveness. Instead,
`
`summary judgment should be granted in favor of Registrant with regard to
`
`deceptiveness under §2(a) as there clearly is no genuine issue of material fact as to
`
`the third prong of the test for deceptiveness requiring materiality, since the alleged
`
`misdescription in Registrant’s Marks is not likely to affect the decision to purchase the
`
`associated good/services.
`
`Section 2(a) of
`
`the Trademark Act, 15 U.S.C.
`
`§ 1502(a) prohibits the
`
`registration of "immoral, deceptive, or scandalous matter; or matter which may
`
`disparage or falsely suggest a connection with persons, living or dead, institutions,
`
`beliefs, or national symbols, or bring them into contempt, or disrepute ....” The United
`
`States Court of Appeals for the Federal Circuit articulated the following test, which
`
`Page 15
`
`

`

`must be satisfied in order to find a mark to consist of, or comprise deceptive matter:
`
`(1) Is the term misdescriptive of the character, quality, function, composition, or
`
`use of the goods?
`(2)
`If so, are prospective purchasers likely to believe that the misdescription
`
`actually describes the goods?
`(3) If so, is the misdescription likely to affect the decision to purchase?
`
`In re Budge Mfg. Co. /nc., 857 F.2d 773, 775, 8 USPOZd 1259, 1260 (Fed. Cir.
`
`1988).
`
`initially, Petitioner cites to no case law or authority for his position that failure
`
`to own a domain name renders a service mark deceptive.
`
`In fact, if this is Petitioner’s
`
`reasoning, he too, would not be entitled to the service mark because he is not the
`
`owner of the domain name. Schultz Decl.
`
`1i 72; Exh. F; Bower Decl. M 70, 74; Exh.
`
`TT, XX.
`
`Moreover, Petitioner has failed to present or refer to any evidence in support of
`
`the three mandatory criteria which need to be established to meet the three—prong test
`
`required to prove deceptiveness.
`
`Petitioner argues
`
`that HEALTHY.COM is
`
`misdescriptive because it falsely suggests that the goods originate from the website at
`
`the healthy.com domain. However, "healthy.com" is part of several domains owned
`
`by Registrant as well as a part of Registrant’s company name. Schultz Decl. H 2, 4,
`
`6, 7. There is no evidence that consumers would believe that the goods or services
`
`originate gm from URL www.healthy.com or that HEALTHY.COM as a service mark
`
`points uniquely to Petitioner’s URL www.healthy.com. Secondly, Petitioner merely
`
`alleges without any supporting evidence such as, testimony or consumer surveys, that
`
`prospective purchasers
`
`are
`
`likely to believe the goods/services originate at
`
`Page 16
`
`

`

`www.healthy.com. Lastly, Petitioner alleges that a

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