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UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
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`Mailed: April 26, 2012
`
`Cancellation No. 92054976
`
`Sandwich Isles Trading Co.,
`Inc.
`
`
`
`
`
`v.
`
`VDF FutureCeuticals, Inc.
`
`
`
`
`
`
`
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`
`
`
`
`Cheryl S. Goodman, Interlocutory Attorney:
`
`This case comes up on the following motions:
`
`1) Petitioner Sandwich Isles Trading Co.’s (“SITC”)
`motion, filed February 6, 2012, to suspend for
`civil action; and
`
`
`2) Respondent VDF FutureCeuticals, Inc.’s (“VDF”)
`motion, filed February 7, 2012, for more definite
`statement.
`
`The Board turns first to the motion to suspend.
`
`
`
`
`
`
`
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`SITC seeks suspension of this proceeding pending a civil
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`action between the parties in the United States District
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`Court for the District of Hawaii, VDF FutureCeuticals, Inc.
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`v. Sandwich Isles Trading Co. Inc., CV 11-00288 ACK/RLP
`
`which commenced on April 29, 2011. With regard to the civil
`
`action, SITC advises that VDF’s complaint asserts claims for
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`patent infringement and SITC’s first amended counterclaim
`
`seeks cancellation of the registrations at issue in this
`
`proceeding. On December 27, 2011, the court granted SITC’s
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`

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`Cancellation No. 92054976
`
`motion to stay pending re-examination of the patents at
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`issue in the civil action and “prohibited any further action
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`in the litigation until the [patent] re-examinations are
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`resolved.” SITC argues that suspension is appropriate
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`because the civil litigation will have a bearing on this
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`proceeding.
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`
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`In response, VDF argues that the civil action is
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`“administratively closed and stayed” pending patent re-
`
`examination and that the motion to suspend is premature and
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`should be denied. VDF submits that the district court
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`dismissed without prejudice VDF’s counterclaim on December
`
`27, 2011, although allowing re-filing by petitioner of an
`
`amended counterclaim and VDF’s response. VDF submits that
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`the current amended counterclaim is subject to dismissal, as
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`VDF has filed a motion to dismiss the trademark claims but
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`that the court will not render any decision on SITC’s
`
`amended counterclaim until the stay is lifted. VDF argues
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`that it will be severely prejudiced by the delay if
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`suspension is granted and contends that “suspension is
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`inappropriate” because “the District Court has not confirmed
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`that it has jurisdiction to hear SITC’s trademark claims,”
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`and presently will not rule on the validity of the claims
`
`due to the administrative suspension. Lastly VDF argues
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`that the determination of the validity of its registrations
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`2
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`

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`Cancellation No. 92054976
`
`should be made by the Board as “relief of cancellation
`
`belong squarely with the TTAB.”
`
`
`
`In reply, SITC argues that VDF’s “claim of prejudice
`
`rings hollow” as VDF “still could not file a valid
`
`incontestability declaration” because the Hawaii Civil
`
`action would still be pending. SITC points out that “the
`
`Board cannot decide the Motion to Suspend based on how the
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`Hawaii Court in the future may rule with regard to the
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`counterclaim” and contends that suspension of the Board
`
`proceeding “conserves scarce Board resources by allowing the
`
`same issues . . . to be determined by the Hawaii court.”
`
`SITC further argues that judicial economy is better served
`
`by suspension in the Board proceeding as discovery in the
`
`proceedings will overlap. As to the registrability
`
`question, SITC argues that it was compelled to assert the
`
`compulsory trademark counterclaims in the civil action and
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`the USPTO “does not have exclusive jurisdiction over claims
`
`for cancellation of trademark registrations.”
`
`
`
`If the final determination in a civil action will have
`
`a bearing on the issues before the Board, the Board
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`generally will suspend proceedings in the case pending
`
`before it. See General Motors Corp. v. Cadillac Club
`
`Fashions, Inc., 22 USPQ2d 1933 (TTAB 1992); and Trademark
`
`Rule 2.117(a). This is so because, to the extent that a
`
`civil action in federal district court involves issues in
`
`3
`
`

`
`Cancellation No. 92054976
`
`common with those in proceedings before the Board, the
`
`decision of the federal court is binding upon the Board
`
`while the decision of the Board is not binding on the court.
`
`See, for example, Goya Foods, Inc. v. Tropicana Products,
`
`Inc., 846 F.2d 848, 6 USPQ2d 1950 (2nd Cir. 1988).
`
`VDF's complains of prejudice due to the current status
`
`of the federal litigation, and argues that the Board could
`
`render a decision more expeditiously as it has the ability
`
`to grant relief on the registrability question. However, a
`
`decision by the United States District Court would be
`
`binding on the Board whereas a determination by the Board as
`
`to VDF's right to retain its registrations would not be
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`binding or res judicata in respect to the proceeding pending
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`before the federal district court. See Whopper-Burger, Inc.
`
`v. Burger King Corporation, 171 USPQ 805 (TTAB 1971) citing
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`Tuvache, Inc. v. Emilio Pucci Perfumes International, Inc.,
`
`et al., 152 USPQ 547 (DC NY, 1967). VDF also argues that
`
`SITC’s trademark claims stand to be dismissed. However, the
`
`fact that there is a pending motion to dismiss does not
`
`negate the existence of the trademark claims asserted in
`
`opposer’s amended counterclaim as the motion to dismiss has
`
`not been granted on the amended counterclaim. Tokaido v.
`
`Honda Associates Inc., 179 USPQ 861 (TTAB 1973) (finding
`
`suspension appropriate and noting that a civil suit is
`
`pending until a motion to dismiss has been filed and
`
`4
`
`

`
`Cancellation No. 92054976
`
`granted, or until an adjudication has otherwise served to
`
`nullify the suit and therefore the Board may consider
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`suspension of the Board proceeding for the civil action).
`
`The parties do not dispute that the claims in the Board
`
`proceeding and the civil action overlap. The copy of the
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`amended counterclaim filed in the United States District
`
`Court which SITC furnished to the Board along with its
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`motion to suspend reveals that SITC is seeking a declaratory
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`judgment of the invalidity of VDF’s registrations as “not
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`valid or protectable” and seeks cancellation on the basis of
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`genericness or descriptivness (not having acquired
`
`distinctiveness), which are the same claims asserted in this
`
`Board proceeding. The Board finds that a decision by the
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`district court on SITC’s trademark claims in the civil
`
`action will have a direct bearing on the question of the
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`rights of the parties herein and may in fact completely
`
`resolve all the issues. Such a decision will be binding on
`
`the Board. Accordingly, the Board finds suspension is
`
`appropriate.
`
`In view thereof, SITC’s motion to suspend is granted.
`
`For judicial efficiency, the Board shall consider VDF’s
`
`motion for more definite statement.
`
`VDF seeks a more definite statement with regard to
`
`paragraphs 20-23 of the petition to cancel, “specifically,
`
`Petitioner’s claim that Respondent’s COFFEEBERRY mark “is
`
`5
`
`

`
`Cancellation No. 92054976
`
`the generic name for some or all of the products identified
`
`in the registrations” or “at most merely descriptive of some
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`or all of the goods offered by Respondent or Respondent’s
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`licensees.” (emphasis added). VDF argues that these
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`allegations are “vague and ambiguous” which “frustrates
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`Respondent’s ability to prepare a response and to formulate
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`affirmative defenses.” VDF complains that respondent owns
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`nine registrations showing four different marks covering a
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`variety of goods but SITC “erroneously treats these marks as
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`one and the same by reference to only the ‘COFFEEBERRY
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`mark’” and that it requires clarification as to which
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`particular goods in VDF’s registrations SITC believes are
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`descriptive or generic. Respondent seeks “a more definite
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`statement clarifying which specific goods and which
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`registrations apply to which alleged grounds of
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`cancellation.”
`
`In response, SITC argues that VDF has not shown that
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`the petition is so vague and ambiguous that respondent
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`cannot frame a responsive pleading. SITC contends that the
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`petition is clear and “there is no ambiguity” and that
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`respondent can “simply deny that ‘COFFEEBERRY’ is generic or
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`descriptive and therefore it is unnecessary for petitioner
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`to specifically identify the goods. SITC also argues
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`alternatively, that VDF “can easily respond as to whether or
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`not ‘COFFEEBERRY’ is generic or descriptive as to each item
`
`6
`
`

`
`Cancellation No. 92054976
`
`in its registrations, on an item-by-item basis.” SITC
`
`submits that the motion for more definite statement is an
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`attempt by VDF to avoid filing an answer.
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`In reply, VDF reasserts its contention that the
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`pleading is vague and ambiguous as “Petitioner simply has
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`not identified which of Respondent’s registered goods it
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`claims to be descriptive or generic.”
`
`
`
`A motion for definite statement may be made when a
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`pleading is so vague or ambiguous that a party cannot be
`
`reasonably required to frame a responsive pleading. TBMP
`
`Section 505.01 (3d ed. 2011). A motion for a more definite
`
`statement is appropriate only in those cases where the
`
`pleading states a claim upon which relief can be granted,
`
`but is so vague or ambiguous that the movant cannot make a
`
`responsive pleading in good faith or without prejudice to
`
`itself. Id. A motion for a more definite statement may not
`
`be used to obtain discovery as the only information that a
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`movant may obtain by this motion is that which it needs to
`
`make its responsive pleading. Id.
`
`
`
`Under Fed. R. Civ. P. 8, opposer is required to include
`
`a “short and plain statement of the claim showing that [it]
`
`is entitled to relief” so as to provide applicant with “fair
`
`notice of what the ... claim is and the grounds upon which
`
`it rests.” Bell Atlantic Corp. v. Twombly, 550 U.S. 544,
`
`555 (2007) (quoting Conley v. Gibson, 355 U.S. 41,
`
`7
`
`

`
`Cancellation No. 92054976
`
`47(1957)). A motion for more definite statement is designed
`
`to strike at unintelligibility rather than at a simple lack
`
`of detail. See Towers Tenant Ass'n v. Towers Ltd.
`
`Partnership, 563 F.Supp. 566, 569 (D.D.C. 1983).
`
`
`
`Upon review of paragraphs 20-23 of the complaint, the
`
`Board finds the allegations contained therein regarding
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`descriptiveness and genericness are not so vague, ambiguous,
`
`or unintelligible that respondent cannot respond. See e.g.,
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`Queen's Harbour Yacht & Country Club Ass'n, Inc. v. Lee,
`
`Civil Action, 309-cv-1256-J-34MCR, 2010 WL 1030740, (M.D.
`
`Fla., March 18, 2010) (denying motion for more definite
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`statement with regard to infringement claim involving seven
`
`of plaintiff’s registered marks). The details VDF seeks can
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`be obtained in discovery.
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`
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`In view thereof, the motion for more definite statement
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`is denied. If proceedings resume, VDF’s time for answer and
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`all other dates will be reset.
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`Proceedings herein are suspended.
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`Within twenty days after the final determination of the
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`civil action, the interested party should notify the Board
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`so that this case may be called up for appropriate action.
`
`During the suspension period the Board should be
`
`notified of any address changes for the parties or their
`
`attorneys.
`
`8

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