`ESTTA460721
`ESTTA Tracking number:
`03/08/2012
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92054976
`Defendant
`VDF FutureCeuticals, Inc.
`
`VDF FUTURECEUTICALS INC
`819 NORTH DIXIE HIGHWAY
`MOMENCE, IL 60954
`UNITED STATES
`Reply in Support of Motion
`Bradley J. Walz
`sbaird@winthrop.com, sarmstrong@winthrop.com, jrezac@winthrop.com,
`trademark@winthrop.com, bwalz@winthrop.com
`/Bradley J. Walz/
`03/08/2012
`Reply.pdf ( 6 pages )(295737 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`
`Signature
`Date
`Attachments
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Sandwich Isles Trading Co., Inc.
`
`v.
`
`Petitioner,
`
`VDF FutureCeuticals, Inc.
`
`Respondent
`—
`
`€%%\J%%\/\/
`
`Cancellation No. 92054976
`
`RESPONDENT’S REPLY IN SUPPORT OF ITS
`
`MOTION FOR A MORE DEFINITE STATEMENT
`
`I. Introduction
`
`VDF FutureCeuticals,
`
`Inc.
`
`(“Respondent”)
`
`submits
`
`this Reply in Support of
`
`Respondent’s Motion for a More Definite Statement.
`
`Sandwich Isles Trading Co.’s
`
`(“Petitioner”) Response to Respondent’s Motion for a More Definite Statement mischaracterizes
`
`the standards of standing and the requirements of an initial pleading in an effort to reframe
`
`Respondent’s motion as a bad faith attempt to delay answering SITC’s Petition to Cancel.
`
`However, a close reading of SITC’s Petition and clarification of the relevant standards makes
`
`clear that SITC’s Petition is so vague and ambiguous that Respondent cannot form a responsive
`
`pleading without prejudicing itself.
`
`II. Argument
`
`Petitioner argues that the disposition of this motion should be suspended pending the
`
`disposition of a patent infringement case in the United States District Court for the District of
`
`Hawaii, captioned VDF Futureceuticals, Inc. V. Sandwich Isles Trading C0,, Inc., CV11-00288
`
`ACK/RLP (USDC, District of Hawaii), commenced on April 29, 2011 (the “Hawaii Patent
`
`Action”), per Petitioner’s Motion to Suspend filed on February 6, 2012. Respondent recently
`
`
`
`filed its Response to Petitioner’s Motion to Suspend with the Trademark Trial and Appeal Board
`
`(“Board”) on February 27, 2012, which makes clear that because Petitioner lacks the required
`
`“case or controversy” to maintain its declaratory judgment claim for trademark invalidity in
`
`district court and because the Hawaii Patent Action has been stayed and administratively closed
`
`for what is likely to be a number of years, this Cancellation action should proceed.
`
`As outlined in Respondent’s Response to Motion to Suspend, in the present action,
`
`suspension is neither necessary nor appropriate. Petitioner’s Motion to Suspend was filed solely
`
`to cause delay of these proceedings and to postpone resolution of Respondent’s rights in its nine
`
`(9) registrations incorporating the COFFEEBERRY® mark. First, Petitioner filed its Motion to
`
`Suspend with fi1ll knowledge that the Hawaii Patent Action will likely not be reopened or
`
`resolved for years.
`
`The case has been stayed and administratively closed to allow for
`
`reexamination of the patents at issue in the suit. On average, patent reexamination at the USPTO
`
`alone takes over two years. Biomet Biologics, LLC v. Bio Rich Medical, Inc., Case No. SACV
`
`l0-1582 DOC (PJWx), *5 (C.D. Cal., Sept. 26, 2011). As the Hawaii Patent Action is
`
`administratively closed — save for Petitioner’s
`
`filing of its Amended Complaint and
`
`Respondent’s responsive pleading thereto — the Court will likely not make any decision about
`
`whether it will even consider the validity of Respondent’s marks for at least two years. Second,
`
`suspension is inappropriate where the District Court has not determined that it has jurisdiction to
`
`even hear Petitioner’s recently amended trademark claims. Respondent filed its Partial Motion
`
`to Dismiss the Amended Counterclaim on February 27, 2012 on grounds that (1) Petitioner has
`
`not alleged facts sufficient to confer declaratory judgment jurisdiction on the District Court and
`
`(2) the determination of the validity of Respondent’s marks should be made by the Board.
`
`Respondent expects to prevail on this motion, but the Court will not rule on this motion until the
`
`
`
`case is administratively reopened.
`
`In light of these facts, Petitioner’s Motion to Suspend is
`
`premature, and it should not prevent the Board from ruling on the present motion.
`
`Petitioner also attempts to distract the Board from the main issue at hand by calling into
`
`question Respondent’s motives for bringing its Motion for a More Definite Statement. Petitioner
`
`has alleged that Respondent’s “real motive” in filing its Motion for a More Definite Statement is
`
`that “filing an Answer in this proceeding would have evidenced an ‘actual case or controversy’
`
`between the parties with regard to VDF’s trademark registrations,” and implies that doing so
`
`would jeopardize Respondent’s good faith in arguing that there is no case or controversy to
`
`support jurisdiction in the Hawaii Patent Action. However, the adjudication of an administrative
`
`proceeding in fiont of the Board alone is insufficient to create a case or controversy sufficient to
`
`confer jurisdiction on an Article III court, particularly when no claim of trademark infringement
`
`has been raised, as is the situation here. See I/Wzam-0, Inc. v. Manley Toys, Ltd., 2009 WL
`
`6361387, 92 USPQ2d l750 (C.D. Cal. Aug. 13, 2009); see also Surefoot LC v. Sure Foot Corp,
`
`531 F.3d 1236 (10th Cir. 2008). Respondent moved for a more definite statement for the reasons
`
`articulated in its original motion, and the inability of the Court to hear Petitioner’s claim to
`
`invalidate Respondent’s COFFEEBERRY registrations is neither helped nor hindered by
`
`Petitioner’s Motion for a More Definite Statement before the Board.
`
`Petitioner’s argument that in the District Court action VDF filed a Motion to Dismiss
`
`claims for invalidity and cancellation for lack of standing, without seeking a more definite
`
`statement, misses the mark. Petitioner conflates the threshold for standing in Article III courts
`
`for a declaratory judgment claim and in front of the Board for a petition to cancel. Simply put,
`
`the threshold for standing in front of the Board is far lower than that of an Article III court.
`
`There is no “case or controversy” requirement for administrative proceedings in front of the
`
`
`
`Board, as there is in an Article III court. See Ritchie v. Simpson, 170 F.3d 1092, 1094 (Fed. Cir.
`
`1999). The threshold for filing a petition to cancel a mark on the grounds of genericness or
`
`descriptiveness with the TTAB is low; “any person who believes it is or will be damaged by
`
`registration of a mark has standing to file a complaint’’ and the petitioner need not show a
`
`personal interest in the proceeding different or beyond that of the general public. TBMP §
`
`303.03(b). Not so with an Article III court, as demonstrated by the District Court’s dismissal of
`
`Petitioner’s initial
`
`trademark invalidity and cancellation claims,
`
`for lack of jurisdiction.
`
`Petitioner’s speculation into Respondent’s motives in bringing its Motion for a More Definite
`
`Statement is simply not relevant.
`
`Finally, the petition is vague and ambiguous because it does not identify the goods and
`
`services as to which the marks are allegedly generic or merely descriptive. Respondent is Well-
`
`aware of the goods listed in its nine (9) registrations.
`
`It is Petitioner’s pleading that is “vague
`
`and ambiguous.” Petitioner alleges 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 some or all of the goods offered by Respondent or Respondent’s licensees.” (Pet.
`
`to Cancel, 1111 20, 21, 23) (emphasis added). However, the inquiry into whether a mark is
`
`descriptive or generic necessarily involves identification of the associated goods or services. In
`
`re IP Carrier Consulting Group, 84 USPQ2d 1028, 1031 (TTAB 2007); see also In re
`
`Greenliant Systems, Ltd., 97 USPQ2d 1078, 1082 (TTAB 2010). Petitioner simply has not
`
`identified which of Respondent’s registered goods it claims to be descriptive and/or generic.
`
`Notice pleading requires that
`
`the petitioner provide the respondent with sufficient
`
`information that enables the respondent
`
`to frame a response. Fair Indigo LLC v. Style
`
`Conscience, 85 USPQ2d 1536, 1538 (TTAB 2007) (citing Harsco Corp. v. Electrical Sciences
`
`
`
`Inc., 9 USPQ2d 1570, 1571 (since the function of pleadings is to give fair notice of a claim, a
`
`party is allowed reasonable latitude in its statement of its claims)); see also TBMP §309.03(a)(2).
`
`Petitioner’s failure to identify the goods its believes to be descriptive and/or generic does not
`
`meet this standard and puts Respondent in the unfair position of having to consider and/or
`
`address the standards for both descriptiveness and genericness in connection with all of its
`
`registered goods in formulating its answer and affirmative defenses.
`
`III.
`
`Conclusion
`
`For the reasons outlined above, Respondent respectfully requests that the Board issue an
`
`order requiring Petitioner to provide a more definite statement of these grounds for cancellation,
`
`specifically identifying those goods that Petitioner alleges to be descriptive and/or generic for
`
`each of Respondent’s marks.
`
`Respectfully submitted,
`
`WINTHROP & WEINSTINE, P.A_.
`
` Stephen . Baird
`
`
`
`Sharon D. Armstrong
`225 South Sixth Street, Suite 3500
`Minneapolis, MN 55402
`
`Attorneys for Respondent
`VDF FutureCeuticals, Inc.
`
`671 0804v2
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Registration Nos.: 3,165,945 issued October 31, 2006;
`3,155,232 issued October 10, 2006;
`3,420,510 issued April 29, 2008;
`3,643,304 issued June 23, 2009;
`3,646,701 issued June 30, 2009;
`
`3,163,412 issued October 24, 2006;
`3,155,230 issued October 10, 2006;
`3,155,231 issued October 10, 2006; and
`3,160,267 issued October 17, 2006
`For the marks: COFFEEBERRY; COFFEEBERRY & Design, and COFFEEBERRY FORTE
`
`Cancellation No. 92054976
`
`)
`
`5
`5
`;
`
`3 )
`
`Sandwich Isles Trading C0,, Inc.,
`
`Petitioner,
`
`V.
`VDF FutureCeuticals, Inc.,
`Registrant.
`
`CERTIFICATE OF SERVICE BY FIRST CLASS MAIL
`
`Jennifer E. Rezac declares that on the 8th day of March, 2012, she mailed by United States mail,
`
`first class postage thereon prepaid, a true and correct copy of:
`
`1.
`
`Respondent’s Reply in Support of Its Motion for a More Definite Statement
`
`in the above-captioned action to the following address identified in the TTABVUE database to-
`
`wit:
`
`Martin E Hsia
`
`CADES SCHUTTE LLP
`
`1000 Bishop Street, 12th Floor
`Honolulu, Hi 96813
`
`67358l6vl