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
`ESTTA478652
`ESTTA Tracking number:
`06/18/2012
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92054976
`Plaintiff
`Sandwich Isles Trading Co., Inc.
`MARTIN E HSIA
`CADES SCHUTTE LLP
`1000 BISHOP STREET, 12TH FLOOR
`HONOLULU, HI 96813
`UNITED STATES
`mhsia@cades.com, cmiwa@cades.com, bhairston@cades.com
`Opposition/Response to Motion
`Martin E. Hsia, Reg. No. 32,471
`mhsia@cades.com, cmiwa@cades.com, bhairston@cades.com
`/Martin E. Hsia/
`06/18/2012
`Petitioner's Response to Motion for Reconsideration.pdf ( 11 pages )(41937
`bytes )
`Declaration of Counsel.pdf ( 2 pages )(14926 bytes )
`Exhibit A.pdf ( 9 pages )(246543 bytes )
`Exhibit B.pdf ( 41 pages )(1737409 bytes )
`Exhibit C.pdf ( 33 pages )(1455581 bytes )
`Exhibit D.pdf ( 34 pages )(1477689 bytes )
`Certificate of Service.pdf ( 1 page )(13788 bytes )
`
`

`
`IN THE UNITED STATES PATENT & TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`SANDWICH ISLES TRADING CO., INC.,
`
`
`
`Petitioner,
`
`
`v.
`
`
`
`VDF FUTURECEUTICALS, INC.,
`
`
`
`Respondent.
`
`
`
`)
`)
`)
`) Cancellation No. 92054976
`) Registration Nos. 3,163,412, 3,165,945,
`) 3,155,230, 3,155,231, 3,155,232, 3,420,510,
`) 3,643,304, 3,646,701, 3,160,267
`)
`)
`)
`
`PETITIONER’S RESPONSE TO RESPONDENT’S MOTION FOR
`RECONSIDERATION OF DECISION ON MOTION TO SUSPEND
`
`I.
`
`INTRODUCTION.
`
`Petitioner SANDWICH ISLES TRADING CO., INC. (“Petitioner” or “SITC”)
`
`submits this memorandum in response to the “Motion for Reconsideration of Decision on
`
`Motion to Suspend” filed by Respondent VDF FUTURECEUTICALS, INC. (“Respondent” or
`
`“VDF”) on May 29, 2012 (the “Motion for Reconsideration”), by which VDF requests the
`
`Trademark Trial and Appeal Board (the “Board”) to reconsider its Order Granting Petitioner’s
`
`Motion to Suspend, issued on April 26, 2012 (the “Decision”). The Board’s Decision granted
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`Petitioner’s Motion to Suspend for Civil Action, filed on February 6, 2012 (the “Motion to
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`Suspend”), in light of a pending 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, commenced by VDF on April 29, 2011 (the “Hawaii Civil Action”).
`
`The Hawaii Civil Action is still pending. See Declaration of Counsel attached
`
`hereto. Accordingly, and for the reasons stated in this response, Petitioner respectfully submits
`
`that Respondent’s Motion for Reconsideration of the Board’s Decision should be denied.
`
`

`
`
`
`
`
`Cancellation No. 92054976
`
`II.
`
`ARGUMENT.
`
`A.
`
`Respondent VDF’s Reargument That the Board Cannot Suspend
`the Proceeding Unless the District Court Has Previously Denied
`VDF’s Pending Motion to Dismiss is Both Improper and Unfounded.
`
`The arguments presented by VDF in support of Respondent’s Motion for
`
`Reconsideration are repetitive of those already proffered and correctly rejected by the Board, and
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`therefore, reconsideration of the Decision is inappropriate. See TBMP § 518, 500-334 (3rd Ed.,
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`May 2011) (“[A motion for reconsideration] may not properly be used to introduce new
`
`evidence, nor should it be devoted simply to a reargument of the points presented in a brief on
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`the original motion.”). According to VDF, the Board erred in granting the Motion to Suspend
`
`“because the Board is not in a position to ascertain whether the Hawaii Civil Action will have
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`any bearing on the Cancellation proceeding . . . absent clear direction from the District Court that
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`it will actually take jurisdiction over SITC’s trademark invalidity claims.” Mot. For Recons. at
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`3-4 (emphasis added).
`
`However, this argument was previously asserted by Respondent in its Response to
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`Petitioner’s Motion to Suspend filed on February 27, 2012, at page 5 (“Second, suspension is
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`inappropriate where the District Court has not confirmed that it has jurisdiction to hear SITC’s
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`trademark claims”), and it thus constitutes improper reargument.
`
`Moreover, VDF’s argument lacks merit. “Ordinarily, the Board will suspend
`
`proceedings in the case before it if the final determination of the other proceeding may have a
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`bearing on the issues before the Board.” TBMP § 510.02(a) (emphasis added). See also 37 CFR
`
`§ 2.117(a) (“Whenever it shall come to the attention of the Trademark Trial and Appeal Board
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`that a party or parties to a pending case are engaged in a civil action or another Board proceeding
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`which may have a bearing on the case, proceedings before the Board may be suspended until
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`termination of the civil action or the other Board proceeding.”) (emphasis added). Furthermore,
`
`
`
`2
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`

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`
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`Cancellation No. 92054976
`
`Section 510.02(a) of the TBMP makes clear that the Board properly ascertained whether the
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`Hawaii Civil Action “may” have bearing on the issues before it by comparing the trademark
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`claims pled in SITC’s First Amended Counterclaim, a copy of which was attached as
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`Exhibit “A” to Petitioner’s Motion to Suspend (the “First Amended Counterclaim”), against
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`the issues in the trademark proceedings before it. It provides in relevant part:
`
`When a motion to suspend pending the outcome of a civil action is
`filed, the Board normally will require that a copy of the pleadings
`from the civil action be submitted, so that the Board can ascertain
`whether the final determination of the civil action may have a
`bearing on the issues before the Board. This requirement is ordinarily
`waived if all parties consent to the suspension. . . .
`
`TBMP § 501.02(a) (emphasis added). Respondent, therefore, misconstrues the applicable
`
`standard in asserting that suspension is only appropriate upon confirmation or “clear direction”
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`by the Hawaii District Court that it will deny the pending motion to dismiss, because the
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`standard provides that suspension is appropriate so long as there is a possibility that the civil
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`action “may” have a bearing on the cancellation proceeding. Respondent incorrectly presumes
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`that the Board must be in a position to determine that the Hawaii District Court will take
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`jurisdiction over SITC’s trademark invalidity counterclaims, and that the Hawaii District Court
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`must have ruled upon the pending Motion to Dismiss the First Amended Counterclaim filed by
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`SITC in the pending Hawaii Civil Action, before the Board may suspend the cancellation
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`proceeding.
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`The Board should not be misled by VDF’s citation to the TBMP § 510.02(a), for
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`the proposition that “ ‘where there is no stipulation to suspend and it is not possible for the Board
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`to ascertain, prior to the filing of an answer in one or both proceedings, whether the final
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`determination of the other proceeding may have a bearing on the issues before the Board,’
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`suspension is inappropriate[,]” Mot. for Recons. at 3. The language cited by VDF (in bold
`
`emphasis below) appears in Section 510.02(a) in the following context:
`
`
`
`3
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`

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`Cancellation No. 92054976
`
`The Board does not usually require that an issue be joined (that an
`answer be filed) in one or both proceedings before the Board will
`consider suspending a Board proceeding pending the outcome of another
`proceeding. Such a requirement is made only in those cases where
`there is no stipulation to suspend and it is not possible for the Board
`to ascertain, prior to the filing of an answer in one or both
`proceedings, whether the final determination of the other proceeding
`may have a bearing on the issues before the Board.
`
`Thus, the language cited by VDF does not support, as VDF urges the Board to believe, that
`
`suspension is inappropriate if the Board cannot determine with certainty that the District Court
`
`will exercise jurisdiction over the trademark claims. Rather, the rule merely advises the Board
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`that it may suspend a proceeding, whether or not an answer has been filed in the other or both
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`proceedings, unless “it is not possible for the Board to ascertain, prior to the filing of an answer
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`in one or both proceedings, whether the final determination of the other proceeding may have a
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`bearing on the issues before the Board” – in which case the Board may wish to defer suspension
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`until an answer is filed. Id.
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`Where, as in this case, a review of only the trademark complaint in the civil action
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`indicates that a final determination by the court may have a bearing on the issues before the
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`Board, the Board is entitled to suspend the proceeding even though an answer has not been filed
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`– for instance, because of a pending motion to dismiss the claims. See e.g. Tokaido v. Honda
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`Assoc. Inc., 179 USPQ 861, 862 (TTAB 1973) (“The fact that the complaint may not yet have
`
`been served upon the defendant does not in and of itself serve to negate the existence of the suit.
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`That is to say, until a motion to dismiss has been filed and granted and until an adjudication has
`
`otherwise served to nullify the suit, it cannot correctly be said that the suit is frivolous and has
`
`been filed only for purposes of delay. Accordingly, it is incumbent upon the Board to consider
`
`the pleadings in the civil suit so as to determine whether the outcome thereof may have a bearing
`
`upon the issues involved in the Patent Office proceeding.”) (emphasis added); see also General
`
`Motors Corp. v. Cadillac Club Fashions, Inc., 1992 WL 141992 *1, *4, 22 USPQ2d 1933,
`
`
`
`4
`
`

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`
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`Cancellation No. 92054976
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`(TTAB Mar. 26, 1992) (granting motion to suspend despite pending motion to dismiss complaint
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`because “review of the complaint in the civil action indicates that a decision by the district court
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`will be dispositive of the issues in this proceeding”).
`
`Even assuming for purposes of this Motion for Reconsideration that suspension is
`
`only appropriate if the Board is in a position to determine that the District Court Action “will”
`
`have a bearing on the cancellation proceeding, VDF’s contention that the Hawaii District Court
`
`will not exercise jurisdiction over SITC’s amended trademark counterclaims is unfounded. The
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`Hawaii District Court dismissed the original trademark counterclaims for declaratory judgment
`
`of invalidity on the grounds that SITC had not sufficiently pled a case or controversy sufficient
`
`to confer jurisdiction. In the Hawaii District Court’s Order Granting in Part and Denying in Part
`
`Plaintiff’s Motion to Dismiss In Part Defendant’s [original] Counterclaim (the “District Court
`
`Order”), however, the Hawaii District Court indicated that new allegations to the effect that
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`SITC intended to use the term “coffee berry” in marketing its products, but has refrained due to
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`threats of trademark infringement litigation made by VDF, would suffice to allege a case or
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`controversy with respect to SITC’s counterclaim for a declaratory judgment that VDF’s
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`“COFFEEBERRY” mark is generic, descriptive, and nondistinctive (the “DJA claim”). See Ex.
`
`“5” to VDF’s Response to Mot. to Suspend at 26-27.1 The District Court further reasoned that
`
`
`1 Specifically, the District Court held:
`
`If Sandwich Isles’s intent to use the term “coffee berry” in marketing its
`products has been thwarted by VDF’s trademarks, then Sandwich Isles should
`be able to affirmatively state allegations to that effect.
`
`As VDF’s counsel conceded at the hearing, such allegations might be sufficient
`to allege a case or controversy such that this Court would have jurisdiction
`under Article III. But the allegations in the complaint and the counterclaim, as
`they stand, do not, “under all circumstances, show that there is a substantial
`controversy, between parties having adverse legal interests, of sufficient
`immediacy and reality to warrant the issuance of a declaratory judgment.”
`MedImmune, 549 U.S. at 127.
`
`Id. at 26-27.
`
`
`
`5
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`

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`Cancellation No. 92054976
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`without the DJA claim, there was “no pending ‘action involving a registered mark,’ ” so as to
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`confer authority on the Court to cancel VDF’s trademarks pursuant to SITC’s cancellation
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`counterclaim (the “Cancellation claim”). Id. at 29. The Court granted SITC leave to file
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`amended counterclaims curing the deficiencies identified in the District Court Order. See id.
`
`at 31-32.
`
`In its Motion for Reconsideration, VDF contends that “[t]here are no new facts in
`
`SITC’s First Amended Counterclaim to support exercise of jurisdiction over the trademark
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`claims in the Hawaii Civil Action, see, e.g., Mot. for Recons. at 5 and 7, so that SITC’s First
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`Amended Counterclaim fails to address the issues identified in the District Court Order and,
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`therefore, the District Court “will” not exercise jurisdiction over the amended trademark
`
`counterclaims.
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`However, contrary to VDF’s contention, SITC’s First Amended Counterclaim
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`includes several additional allegations which support a finding of a case or controversy sufficient
`
`to confer jurisdiction over the DJA claim upon the Hawaii District Court. For example, relevant
`
`to the trademark claims and the case and controversy requirement, SITC added the allegation
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`that, on or about May 27, 2009, VDF through its attorneys mailed a letter to SITC’s then-
`
`trademark counsel asserting that SITC’s use and pending application to register the mark
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`“HAWAII COFFEE CHERRY” constituted a violation of the Lanham Act, and demanded that
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`SITC cease all use of the mark and abandon the pending application in view of VDF’s
`
`registrations for the mark, “COFFEEBERRY.”
`
`For your information, VDF is the owner of multiple federal trademark
`registrations for the marks COFFEEBERRY® and COFFEEBERRY &
`DESIGN® for “nutriceuticals for use as a dietary supplement and as a
`dietary supplement ingredient,” “food and beverage ingredients, namely,
`whole processed coffee fruit,” and “cosmetics and cosmetic ingredients”
`(Reg. Nos. 3,165,945, 3,163,412, 3,155,230, 3,155,232, 3,155,231,
`and 3,420,510) (collectively, the “COFFEEBERRY® Marks”). . . .
`
`
`
`6
`
`

`
`
`
`
`
`Cancellation No. 92054976
`
`As noted, it has come to our attention that Sandwich Isles has an
`apparent intent to use and has applied to federally register the
`confusingly similar mark HAWAII COFFEE CHERRY in connection
`with “nutraceuticals for use as a dietary supplement and as a dietary
`supplement ingredient; vitamin preparations for use as ingredients in the
`food and beverage industry.” Given our client’s substantial investment
`of time, money, and effort in promoting the COFFEEBERRY® Marks, it
`is genuinely concerned about your client’s application. . . .
`
`. . . Accordingly, Sandwich Isles’ unauthorized use and attempt to
`register the HAWAII COFFEE CHERRY mark would constitute a
`violation of the federal Lanham Act, as well as applicable state
`trademark and unfair competition statutes.
`
`We therefore must demand on behalf of our client, VDF, that your client
`agree to immediately cease all use and/or planned use of the HAWAII
`COFFEE CHERRY mark in connection with nutraceuticals, dietary
`supplements, or any other related products or services. We also must
`demand that your client agree to file a notice of express abandonment
`immediately with the United States Patent and Trademark Office for its
`pending application to register HAWAII COFFEE CHERRY. . . .
`
`See Exhibit “A” attached hereto (a copy of which was attached as Exhibit 11 to SITC’s First
`
`Amended Counterclaim). This allegation was not contained in the original counterclaim. See
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`Declaration of Counsel attached hereto. SITC’s First Amended Counterclaim further added the
`
`allegation that it intends to use the term “coffee cherry” in connection with its advertising,
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`marketing and sale of products containing its coffee fruit product, so that VDF’s May 2009 letter
`
`and other assertions create a reasonable apprehension on SITC’s part of potential liability for
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`trademark infringement, which would be sufficient to satisfy the case or controversy
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`jurisdictional requirement.2 See E&J Gallo v. Proximo Spirits, Inc., No. CV-F-10-411, 2010 WL
`
`
`2
`As Petitioner previously argued in connection with its Motion to Suspend, SITC’s First Amended
`Counterclaim alleges, among other things, the following allegations, most of which were added in
`response to the Hawaii District Court Order:
`
`In addition, VDF has demanded improperly that SITC and SITC’s
`8.
`distributors and other customers cease using the terms “COFFEEBERRY” and
`“COFFEE CHERRY” in their advertising, marketing, and sale of products
`containing SITC’s coffee fruit ingredient, based on VDF’s alleged exclusive
`rights
`to
`those
`terms under U.S. Trademark Registrations
`for
`“COFFEEBERRY” that it purports to own. Accordingly, in view of SITC’s
`
`
`
`7
`
`

`
`
`
`
`
`Cancellation No. 92054976
`
`
`intent to use the term “coffee cherry” in connection with its advertising,
`marketing and sale of products containing SITC’s coffee fruit products, this
`counterclaim seeks a declaratory judgment and an order cancelling VDF’s U.S.
`Trademark Registration Nos. 3,160,267; 3,163,412; 3,165,945; 3,155,230;
`3,155,231; 3,155,232; 3,420,510; 3,643,304; and 3,646,701, all for marks
`containing “COFFEEBERRY,” on the grounds that the marks are generic, or
`descriptive and lacking in distinctiveness.
`
`* * *
`
`On or about May 27, 2009, on information and belief, VDF through its
`71.
`attorneys mailed a letter to SITC’s trademark counsel, a copy of which is
`attached hereto as Exhibit “11” (the “May 2009 Letter”). Pursuant to the May
`2009 Letter, VDF contacted SITC with regard to “Sandwich Isles Trading Co.,
`Inc.’s . . . planned use of and its federal trademark application for the claimed
`mark HAWAII COFFEE CHERRY in connection with ‘neutraceuticals for use
`as a dietary supplement and as a dietary supplement ingredient; vitamin
`preparations for use as ingredients in the food and beverage industry’.”
`
`Pursuant to the May 2009 Letter, VDF further asserted that the
`72.
`“minimal differences in the COFFEEBERRY® Marks [registered by VDF] and
`the HAWAII COFFEE CHERRY mark are not sufficient to prevent the
`likelihood of consumer confusion. Accordingly, Sandwich Isles’ unauthorized
`use and attempt to register the HAWAII COFFEE CHERRY mark would
`constitute a violation of the federal Lanham Act, as well as applicable state
`trademark and unfair competition statutes.” VDF demanded that SITC “cease
`all use and/or planned use of the HAWAII COFFEE CHERRY mark,” and also
`stated that “VDF has patent applications pending . . . for inventions concerning
`processes and compositions containing whole coffee fruit that is safe for
`consumption.” See id.
`
`Although SITC’s U.S. Application Serial No. 77/603,076 to register
`73.
`HAWAII COFFEE CHERRY (the “Application”) subsequently lapsed, SITC
`did not file any notice of express abandonment of the mark. As stated in the
`Application, a copy of which is attached hereto as Exhibit “12,” SITC had a
`bona fide intention to use or license use through its related company or licensee
`the mark in connection with the identified goods, and it continues to have an
`intention to use the terms in the future.
`
`On or about March 3, 2010, on information and belief, VDF through its
`74.
`attorneys mailed another letter to XOWII, a copy of which is attached hereto as
`Exhibit “13” (the “March 2010 Letter”). Pursuant to the March 2010 Letter,
`VDF stated that XOWII’s use of “KonaRed Coffee Cherry,” to describe the
`ingredient in its XOWII energy drink and supplied to XOWII by SITC,
`infringed on various U.S. Trademark Registrations issued to VDF for marks
`containing “COFFEEBERRY” because “the COFFEEBERRY® Marks and the
`‘Coffee Cherry’ mark are associated with what XOWii and Sandwich Isles
`purport to be a product closely related to the products offered under the
`COFFEEBERRY® Marks,”
`thereby allegedly creating a
`likelihood of
`confusion. Id.
`
`
`
`8
`
`

`
`
`
`
`
`Cancellation No. 92054976
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`3386481 *1, *5 (E.D. Cal. 2010) (citing Chesebrough-Ponds, Inc. v. Faberge, Inc., 666 F.2d 393
`
`(9th Cir. 1982)). (“[T]he requirements of the Declaratory Judgment Act [are] satisfied if the
`
`plaintiff has a real and reasonable apprehension that he will be subject to liability.”).
`
`This is not a case where, as suggested by VDF, a trademark declaratory judgment
`
`action was filed for the sole purpose of creating a pretext for suspension of a Board proceeding.
`
`VDF has been asserting infringement of the subject trademark registrations by SITC, as
`
`evidenced by the May 2009 letter, and in light of VDF’s assertions and its filing of the baseless
`
`patent infringement action, SITC has a very “real and reasonable apprehension” of an action by
`
`VDF for trademark infringement as well. It is therefore apparent that VDF’s pending motion to
`
`dismiss SITC’s DJA claim will fail – especially given the fact that on a Rule 12(b)(6) motion to
`
`dismiss, SITC’s allegations must be taken as true and construed in the light most favorable to it
`
`as the non-moving party. As the Board has already correctly determined in its Decision at page
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`5, “[t]he 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 fact
`
`
`* * *
`
`The statements of VDF in the May 2009 Letter and the March 2010
`82.
`Letter regarding VDF’s “COFFEEBERRY” registrations and the similarity of
`“COFFEEBERRY” and “COFFEE CHERRY,” combined with the fact that
`SITC has not abandoned its intention to use the term “COFFEE CHERRY” in
`connection with its products and, in fact, intends to use the term in the future,
`creates a reasonable apprehension on the part of SITC of potential liability for
`trademark infringement, unless VDF’s trademark registrations are cancelled.
`
`* * *
`
`104. An actual controversy exists between SITC and VDF in view of the
`May 2009 Letter and SITC’s intention to use or license use of the term
`“COFFEE CHERRY” and, under 28 U.S.C. §§ 2201 and 2202 and 15 U.S.C. §
`1051 et seq., this Court may declare the rights and liabilities of the parties and
`grant such further relief as is necessary and proper, including, but not limited
`to, declaring that VDF’s alleged COFFEEBERRY mark is not a valid or
`protectable mark.
`
`Ex. “A” to Mot. to Suspend at 4, 24-26, 28, 35-36 (emphasis added).
`
`
`
`9
`
`

`
`
`
`
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`Cancellation No. 92054976
`
`completely resolve all the issues. Such a decision will be binding on the Board. Accordingly,
`
`the Board finds suspension is appropriate.”
`
`B.
`
`Respondent VDF’s Reargument That It Will Be
`Unduly Prejudiced Is Both Improper and Unsupported.
`
`VDF contends that “the Board has suspended the Cancellation and will forgo
`
`adjudication of SITC’s claims in favor of a district court action that is administratively closed for
`
`an indefinite number of years.” Mot. For Recons. at 4. VDF made an identical complaint in
`
`response to SITC’s Motion to Suspend, arguing that “because the District Court will not address
`
`SITC’s Amended Counterclaim and the Court’s jurisdiction to hear SITC’s trademark
`
`counterclaims in the near future due to the stay, . . . suspension of the Cancellation will severely
`
`prejudice VDF.” Resp. to Sandwich Isles Trading Co.’s Mot. To Suspend, filed Feb. 27, 2012,
`
`at 1. However, VDF’s contention constitutes improper reargument, which should be
`
`disregarded, see TBMP § 518, and is speculative.
`
`First, it is far from certain that the Hawaii Civil Action will be stayed for so long.
`
`The court action is stayed pending disposition of SITC’s request for ex parte reexamination of
`
`the three patents cited by VDF in its Complaint for patent infringement. “Decision on the
`
`request [for ex parte reexamination] must be made no later than 3 months from its filing, and the
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`remainder of proceedings must proceed with ‘special dispatch’ within the [Patent] Office.”
`
`MPEP § 2209. In fact, on May 3 and 7, 2012, the PTO issued Final Office Actions rejecting all
`
`of VDF’s claims and amended claims in the three patents subject to reexamination, pursuant to
`
`the requests filed on October 31, 2011. See Exhibits “B,” “C” and “D” attached hereto.
`
`Although VDF may attempt to appeal these Final Office Actions invalidating the patents relied
`
`upon by VDF in the Hawaii Civil Action, it is apparent that the PTO has and will continue to
`
`process the reexaminations with “special dispatch,” and that the district court stay may not
`
`remain in place for an “indefinite number of years,” as postulated by VDF.
`
`
`
`10
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`

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`
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`
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`Cancellation No. 92054976
`
`Moreover, and as the Board has already explained in its Decision at page 4, “a
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`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 binding or
`
`res judicata in respect to the proceeding pending before the federal district court.” Thus, if the
`
`Board were to proceed as urged by VDF and the Board were to render a decision in this
`
`proceeding before the stay in the district court action is lifted, the time and costs expended in
`
`pursuing resolution of the trademark issues in the cancellation proceeding would be duplicated
`
`unnecessarily and potentially wasted, once the district court case recommences. The ends of
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`judicial economy are better served by a suspension of the Board proceeding than by allowing
`
`discovery in two proceedings to move ahead.
`
`III. CONCLUSION.
`
`VDF offers no new authority or grounds to support its reargument that the stay
`
`issued in the Hawaii Civil Action warrants deviation from the general rule that suspension is
`
`appropriate where, as here, a final determination in a civil action may have bearing on the issues
`
`before the Board. For all of the foregoing reasons, Petitioner respectfully submits that
`
`Respondent’s Motion for Reconsideration should be denied.
`
`DATED: Honolulu, Hawaii, June 18, 2012.
`
`
`
`/s/ Martin E. Hsia
`Martin E. Hsia, Reg. No. 32,471
`CADES SCHUTTE
`A Limited Liability Law Partnership LLP
`1000 Bishop Street, Suite 1200
`Honolulu, HI 96813
`Tel: (808) 521-9200
`Attorneys for Petitioner
`SANDWICH ISLES TRADING CO., INC.
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`11
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`IN THE UNITED STATES PATENT & TRADEMARK OFFICE
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`SANDWICH ISLES TRADING CO., INC.,
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`
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`Petitioner,
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`v.
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`VDF FUTURECEUTICALS, INC.,
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`Respondent.
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`)
`)
`)
`) Cancellation No. 92054976
`) Registration Nos. 3,163,412, 3,165,945,
`) 3,155,230, 3,155,231, 3,155,232, 3,420,510,
`) 3,643,304, 3,646,701, 3,160,267
`)
`)
`)
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`DECLARATION OF COUNSEL
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`I, MARTIN E. HSIA, hereby declare as follows:
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`1.
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`I am a partner of Cades Schutte A Limited Liability Law Partnership LLP,
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`counsel of record for Petitioner SANDWICH ISLES TRADING CO., INC. (“Petitioner” or
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`“SITC”), and am duly authorized to make this declaration in support of Petitioner’s Response to
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`Respondent’s Motion For Reconsideration of Decision on Motion to Suspend, which is based
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`upon my personal knowledge and information unless indicated otherwise.
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`2.
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`The civil action between the parties in the United States District Court for
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`the District of Hawaii, VDF Futureceuticals, Inc. v. Sandwich Isles Trading Co., Inc., CV 11-
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`00288 ACK/RLP, which was commenced by VDF on April 29, 2011 (the “Hawaii Civil
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`Action”), is still pending.
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`3.
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`Contrary to VDF’s contention, SITC’s First Amended Counterclaim
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`includes several additional allegations which support a finding of a case or controversy sufficient
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`to confer jurisdiction over the DJA claim upon the Hawaii District Court. For example, relevant
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`to the trademark claims and the case and controversy requirement, SITC added the allegation
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`that, on or about May 27, 2009, VDF through its attorneys mailed a letter to SITC’s trademark
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`counsel asserting that SITC’s use and pending application to register the mark “HAWAII
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`

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`COFFEE CHERRY” constituted a violation of the Lanham Act, and demanded that SITC cease
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`all use of the mark and abandon the pending application in view of VDF’s registrations for the
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`mark, “COFFEEBERRY.” This allegation was not contained in the original counterclaim.
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`4.
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`Based on information and belief, attached hereto as Exhibit “A” is a true
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`and correct copy of a letter to James D. Hornbuckle, Esq. from Stephen R. Baird, Esq., dated
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`May 27, 2009.
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`5.
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`Based on information and belief, attached hereto as Exhibit “B” is a true
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`and correct copy of the United States Patent and Trademark Office (the “PTO”) Final Office
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`Action for Application No. 90/011,991, dated May 3, 2012.
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`6.
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`Based on information and belief, attached hereto as Exhibit “C” is a true
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`and correct copy of the PTO Final Office Action for Application No. 90/011,990, dated May 7,
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`2012.
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`7.
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`Based on information and belief, attached hereto as Exhibit “D” is a true
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`and correct copy of the PTO Final Office Action for Application No. 90/011,989, dated May 7,
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`2012.
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`The undersigned being warned that willful false statements and the like are
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`punishable by fine or imprisonment, or both, under 18 U.S.C. 1001, and that such willful false
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`statements and the like may jeopardize the validity of the application or document or any
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`registration resulting therefrom, declares that all statements made of his own knowledge are true;
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`and all statements made on information and belief are believed to be true.
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`DATED: Honolulu, Hawaii, June 18, 2012.
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`ImanageDB:2120535.1
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`/s/ Martin E. Hsia
`MARTIN E. HSIA
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`32,471
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`2
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`

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`EXHIBIT “A”
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`

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`WINTHROP WEINSTINE
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`May 27,
`
`James D. Hombuckle
`
`Dixon Law Corporation
`34145 Pacific Coast Highway, Suite 221
`Dana Point, CA 92629-2808
`
`Stephen R. Baird
`Direct Dial: ((-12) 604.658;
`Direct Fax: ((112) 60436985
`sbairdfa--winlhrupxom
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`VIA FACSIMILE: 194913409655
`ORIGINAL VIA FEDERAL EXPRESS
`
`RE:
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`Infringement of COFFEEBERRY® Trademark (VDF FutureCeuticals, Inc.)
`Our File No.: 11417-196
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`Dear Mr. Hombuckle:
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`We are trademark counsel for VDF FuturcCeuticals, Inc. (“VDF”) and we have been asked to
`contact you regarding your client Sandwich Isles Trading Co. Inc.’s (“Sandwich Isles") planned
`use of and its federal trademark application for the claimed mark HAWAII COFFEE CHERRY
`in connection with “nutraceuticals for use as a dietary supplement and as a dietary supplement
`ingredient; vitamin preparations for use as ingredients in the food and beverage industry.”
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`For your infonnation, VDF is the owner of multiple federal trademark registrations for the marks
`COFFEEBERRY® and COFFEEBERRY & Design® for “nutriceuticals for use as a dietary
`supplement and as a dietary supplement ingredient,” “food and beverage ingredients, namely,
`whole processed coffee fruit,” and “cosmetics and cosmetic ingredients” (Reg. Nos. 3,165,945,
`3,163,412,
`3,155,230,
`3,155,232,
`3,155,231,
`and
`3,420,510)
`(collectively,
`the
`“COFFEEBERRY°° Marks”). Copies of these registrations are enclosed for you and your
`client's reference. You also should know that VDF has patent applications pending here and
`abroad for inventions concerning processes and compositions containing whole coffee fruit that
`is safe for consumption.
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`As noted, it has come to our attention that Sandwich Isles has an apparent intent to use and has
`applied to federally register the confusingly similar mark HAWAII COFFEE CHERRY in
`connection with “nutraceuticals for use as a dietary supplement and as a dietary supplement
`ingredient; vitamin preparations for use as ingredients in the food and beverage industry.” Given
`our
`client's
`substantial
`investment of
`time, money,
`and
`effort
`in
`promoting
`the
`COFFEEBERRY°'° Marks, it is genuinely concerned about your client’s application. Potential
`
`Suite H00 ' 233 South Sixlli Slrri-l
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`EXHIBIT A
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`

`
`James D. Hombuckle, Esq.
`Sandwich Isles Trading Co.