TTAB
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`Mailed: April 26, 2012
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`Cancellation No. 92054976
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`Sandwich Isles Trading Co., Inc.
`
`V.
`
`VDF FutureCeuticals, Inc.
`
`Cheryl S. Goodman, Interlocutory Attorney:
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`This case comes up on the following motions:
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`1) Petitioner Sandwich Isles Trading Co.'s ("SITC") motion, filed February 6,
`action; and
`2012, to suspend for civil (cid:9)
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`2) Respondent VDF FutureCeuticals, Inc.'s ("VDF") motion, filed February 7,
`2012, for more definite statement.
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`The Board turns first to the motion to suspend.
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`SITC seeks suspension of this proceeding pending a civil action between the parties in
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`the United States District Court for the District of Hawaii, VDF FutureCeuticals, inc. v.
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`Sandwich Isles Trading Co. Inc., CV 11-00288 ACK/RLP which commenced on April
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`29, 2011. With regard to the civil action, SITC advises that VDF's complaint asserts
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`claims for patent infringement and SITC's first amended counterclaim seeks cancellation
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`of the registrations at issue in this proceeding. On December 27, 2011, the court granted
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`SITC's motion to stay pending re-examination of the patents at issue in the civil action
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`and "prohibited any further action in the litigation until the [patent] re-examinations are
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`I II 1111 11111 11111 11111 Ell 11111 11111 11111 111111 11
`05-16-2012
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`U.S. Patent (cid:9)
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`PlOrc/711Sa (cid:9)
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`Pop Of *75
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`Mailed: April 26, 2012
`
`Cancellation No. 92054976
`
`Sandwich Isles Trading Co., Inc.
`
`V.
`
`VDF FutureCeuticals, Inc.
`
`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,
`action; and
`2012, to suspend for civil (cid:9)
`
`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.
`
`SITC seeks suspension of this proceeding pending a civil action between the parties in
`
`the United States District Court for the District of Hawaii, VDF FutureCeuticals, inc. 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 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 motion to stay pending re-examination of the patents at issue in the civil action
`
`and "prohibited any further action in the litigation until the [patent] re-examinations are
`
`I II 1111 11111 11111 11111 Ell 11111 11111 11111 111111 11
`05-16-2012
`
`U.S. Patent (cid:9)
`
`PlOrc/711Sa (cid:9)
`
`Pop Of *75
`
`
`
`Cancellation No. 92054976
`
`resolved." SITC argues that suspension is appropriate because the civil litigation will
`
`have a bearing on this proceeding.
`
`In response, VDF argues that the civil action is "administratively closed and
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`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 dismissed without prejudice VDF's
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`counterclaim on December 27, 2011, although allowing re-filing by petitioner of an
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`amended counterclaim and VDF's response. VDF submits that the current amended
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`counterclaim is subject to dismissal, as VDF has filed a motion to dismiss the trademark
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`claims but that the court will not render any decision on SITC's amended counterclaim
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`until the stay is lifted. VDF argues that it will be severely prejudiced by the delay if
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`suspension is granted and contends that "suspension is inappropriate" because "the
`
`District Court has not confirmed 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
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`suspension. Lastly VDF argues that the determination of the validity of its registrations
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`should be made by the Board as "relief of cancellation belong squarely with the TTAB."
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`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
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`based on how the Hawaii Court in the future may rule with regard to the counterclaim"
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`and contends that suspension of the Board proceeding "conserves scarce Board resources
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`by allowing the same issues. . . to be determined by the Hawaii court." SITC further
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`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
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`2
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`Cancellation No. 92054976
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`that it was compelled to assert the compulsory trademark counterclaims in the civil action
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`and the USPTO "does not have exclusive jurisdiction over claims for cancellation of
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`trademark registrations."
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`If the final determination in a civil action will have a bearing on the issues before
`
`the Board, the Board generally will suspend proceedings in the case pending before it.
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`See General Motors Corp. v. Cadillac Club Fashions, Inc., 22 USPQ2d 1933 (TTAB
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`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 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
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`Products, Inc., 846 F.2d 848, 6 USPQ2d 1950 (2 nd Cir. 1988).
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`VDF's complains of prejudice due to the current status
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`of the federal litigation, and argues that the Board could
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`render a decision more expeditiously as it has the ability
`
`to grant relief on the registrability question. However, a
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`decision by the United States District Court would be
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`binding on the Board whereas a determination by the Board
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`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 before the federal district court.
`,
`
`See Whopper-
`
`Burger, Inc. v. Burger King Corporation, 171 USPQ 805 (TTAB
`
`1971) citing 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
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`3
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`Cancellation No. 92054976
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`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.,
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`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 granted, or until an
`
`adjudication has otherwise served to nullify the suit and
`
`therefore the Board may consider 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 amended counterclaim filed in the United States
`
`District Court which SITC furnished to the Board along with
`
`its motion to suspend reveals that SITC is seeking a
`
`declaratory judgment of the invalidity of VDF's
`
`registrations as "not valid or protectable" and seeks
`
`cancellation on the basis of 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 district court on SITC's trademark
`
`claims in the civil action will have a direct bearing on
`
`the question of the rights of the parties herein and may in
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`4
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`Cancellation No. 92054976
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`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
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`VDF's motion for more definite statement.
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`VDF seeks a more definite statement with regard to
`
`paragraphs 20-23 of the petition to cancel, "specifically,
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`Petitioner's claim that Respondent's COFFEEBERRY mark "is
`
`the generic name for some or all of the products identified
`
`in the registrations" or "at most merely descriptive of
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`some or all of the goods offered by Respondent or
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`Respondent's licensees." (emphasis added). VDF argues that
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`these allegations are "vague and ambiguous" which
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`"frustrates Respondent's ability to prepare a response and
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`to formulate affirmative defenses." VDF complains that
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`respondent owns nine registrations showing four different
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`marks covering a variety of goods but SITC "erroneously
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`treats these marks as one and the same by reference to only
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`the 'COFFEEBERRY mark'" and that it requires clarification
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`as to which particular goods in VDF's registrations SITC
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`believes are descriptive or generic. Respondent seeks "a
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`more definite statement clarifying which specific goods and
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`which registrations apply to which alleged grounds of
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`5
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`Cancellation No. 92054976
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`cancellation."
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`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
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`or descriptive and therefore it is unnecessary for
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`petitioner to specifically identify the goods. SITC also
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`argues alternatively, that VDF "can easily respond as to
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`whether or not 'COFFEEBERRY' is generic or descriptive as
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`to each item in its registrations, on an item-by-item
`
`basis." SITC submits that the motion for more definite
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`statement is an 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
`
`claims to be descriptive or generic."
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`A motion for definite statement may be made when a pleading is so vague or
`
`ambiguous that a party cannot be reasonably required to frame a responsive pleading.
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`TBMP Section 505.01 (3d ed. 2011). A motion for a more definite statement is
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`appropriate only in those cases where the pleading states a claim upon which relief can be
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`granted, but is so vague or ambiguous that the movant cannot make a responsive pleading
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`in good faith or without prejudice to itself. Id. A motion for a more definite statement
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`6
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`Cancellation No. 92054976
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`may not be used to obtain discovery as the only information that a movant may obtain by
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`this motion is that which it needs to make its responsive pleading. Id.
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`Under Fed. R. Civ. P. 8, opposer is required to include a "short and plain
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`statement of the claim showing that [it] is entitled to relief' so as to provide applicant
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`with "fair notice of what the ... claim is and the grounds upon which it rests." Bell
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`Atlantic Corp. v. Tvvombly, 550 U.S. 544, 555 (2007) (quoting Conley v. Gibson, 355
`
`U.S. 41, 47(1957)). A motion for more definite statement is designed to strike at
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`unintelligibility rather than at a simple lack of detail. See Towers Tenant Ass'n v. Towers
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`Ltd. Partnership, 563 F.Supp. 566, 569 (D.D.C. 1983).
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`Upon review of paragraphs 20-23 of the complaint, the Board finds the
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`allegations contained therein regarding descriptiveness and genericness are not so vague,
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`ambiguous, or unintelligible that respondent cannot respond. See e.g., Queen's Harbour
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`Yacht & Country Club Ass'n, Inc. v. Lee, Civil Action, 309-cv-1256-J-34MCR, 2010 WL
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`1030740, (M.D. Fla., March 18, 2010) (denying motion for more definite statement with
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`regard to infringement claim involving seven of plaintiff's registered marks). The details
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`VDF seeks can be obtained in discovery.
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`In view thereof, the motion for more definite statement is denied. If proceedings
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`resume, VDF's time for answer and 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 civil action, the interested
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`party should notify the Board so that this case may be called up for appropriate action.
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`During the suspension period the Board should be
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`notified of any address changes for the parties or their
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`7
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`Cancellation No. 92054976
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`attorneys.
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