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
`ESTTA462339
`ESTTA Tracking number:
`03/16/2012
`
`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
`Reply in Support of Motion
`Martin E. Hsia, Reg. No. 32,471
`mhsia@cades.com, cmiwa@cades.com, bhairston@cades.com
`/Martin E. Hsia/
`03/16/2012
`Petitioner's Reply Memo.pdf ( 6 pages )(26205 bytes )
`Declaration of Counsel.pdf ( 2 pages )(14481 bytes )
`Exhibit A.pdf ( 3 pages )(66132 bytes )
`Exhibit B.pdf ( 13 pages )(406132 bytes )
`Exhibit C.pdf ( 9 pages )(246903 bytes )
`Certificate of Service.pdf ( 1 page )(13623 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 REPLY MEMORANDUM IN
`SUPPORT OF ITS MOTION TO SUSPEND FILED 2/6/12
`
`I.
`
`INTRODUCTION.
`
`Petitioner SANDWICH ISLES TRADING CO., INC. (“Petitioner” or “SITC”)
`
`submits this memorandum in reply to the “Response to Sandwich Isles Trading Co.’s Motion to
`
`Suspend,” filed by Respondent VDF FUTURECEUTICALS, INC. (“Respondent” or “VDF”)
`
`on February 27, 2012 (the “Opposition Memo.”), and in support of Petitioner’s Motion To
`
`Suspend, filed on February 6, 2012 (the “Motion to Suspend”). By this filing, Petitioner
`
`respectfully requests that the Board consider the following for its reply memorandum, pursuant
`
`to 37 CFR § 2.127(a).
`
`II.
`
`ARGUMENT.
`
`Respondent argues that Petitioner’s Motion to Suspend “should be denied because
`
`Applicant [sic] will be severely prejudiced by the continued delay of resolution of its rights in the
`
`COFFEEBERRY® registrations.” Opposition Memo. at 4. Respondent contends that it will be
`
`unduly prejudiced by the delay in view of the fact that “seven (7) [of its registrations] have or
`
`will be eligible for filing Section 8 and 15 declarations of continuing use and incontestability”
`
`

`
`
`
`
`
`Cancellation No. 92054976
`
`and that deferring the resolution will “irreparably harm VDF in its ability to protect and police its
`
`mark.” Id. at 51. In other words, Respondent contends that its ability to police infringement will
`
`be harmed because it will not be able to make its registrations incontestable and thus would face
`
`a descriptiveness challenge whenever it asserts its registrations.
`
`Respondent’s claim of undue prejudice rings hollow. Respondent’s argument
`
`assumes that the suspension of this cancellation proceeding will delay its submission of
`
`incontestability declarations longer than if this proceeding is not suspended. However, even if
`
`this cancellation proceeding is not suspended, Respondent still could not file a valid
`
`incontestability declaration under 15 U.S.C. § 1065. “The § 15 affidavit . . . must also state that
`
`there is no proceeding involving [the owner’s right to register the mark] pending in the USPTO
`
`or in a court and not finally disposed of.” TMEP § 1605.04. Because the Hawaii Civil Action,
`
`including the trademark counterclaims, would still be pending, Respondent could not file the
`
`§ 15 declarations for incontestability even assuming this proceeding is quickly resolved in
`
`VDF’s favor – an assumption that is hardly likely given that VDF has not even answered the
`
`Petition as of this date. The only certainty is that the Board’s denial of Petitioner’s Motion will
`
`mean that there are two pending matters in which VDF’s right to register a descriptive mark,
`
`“COFFEEBERRY,” is involved2. But a denial of the Motion will not measurably shorten the
`
`
`1
`Respondent’s ability to file the § 8 Declaration of Continuing Use is not affected by this
`cancellation proceeding or the Hawaii Civil Action.
`
`2
`VDF questions whether the Hawaii Civil Action will continue with regard to the
`trademark counterclaims, because the Court only has declaratory judgment jurisdiction over
`infringement disputes and infringement is not alleged. Opposition Memo at 7. However, VDF
`has asserted infringement in its letter to SITC’s counsel (see Exhibit “C” attached hereto, subject
`line: “RE: Infringement of COFFEEBERRY® Trademark. . .”) and, in any event, the Board
`cannot decide the Motion to Suspend based on how the Hawaii Court in the future might or
`might not rule on VDF’s second motion to dismiss.
`
`
`
`2
`
`

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`
`
`
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`Cancellation No. 92054976
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`alleged delay to VDF’s ability to file for incontestability; therefore, granting the Motion will not
`
`unduly prejudice VDF.
`
`Similarly, Respondent contends that “suspension is inappropriate where the
`
`[Hawaii] District Court has not confirmed that it has jurisdiction to hear SITC’s trademark
`
`claims” and may not do so for two years, citing Boyds Collection, Ltd. v. Herrington &
`
`Company, 65 USPQ2d 2017, 2003 WL 152427 (TTAB 2003). Opposition Memo. at 5-6. A
`
`closer review of the Board’s decision in Boyds Collection reveals, however, that it does not
`
`support Respondent’s contention that the court must first “confirm” its jurisdiction if it is
`
`challenged, and that the Motion is therefore premature. In Boyds Collection, the Board denied
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`the petitioner’s motion to suspend the cancellation proceeding pending a civil action, because the
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`petitioner’s testimony period had already ended (on April 22, 2002), months before the civil
`
`action was filed by the petitioner (on December 5, 2002). The Board denied the motion to
`
`suspend, reasoning that “Petitioner should not be allowed to delay the outcome of this
`
`proceeding when there would be little or nothing to resume [in the proceeding] upon conclusion
`
`of petitioner’s civil suit.” Id. at *2 and *4 (“inasmuch as there is nothing left to try or argue in
`
`this proceeding, petitioner’s motion to suspend is DENIED.”).
`
`Here, unlike in Boyds Collection cited by Respondent, the entire cancellation
`
`proceeding remains. In fact, Respondent has not even filed its Answer to the Petition, opting
`
`instead to file a Motion for a More Definite Statement. Unlike the situation in Boyds Collection,
`
`where a suspension would have been meaningless because the proceeding was essentially
`
`concluded, a suspension of this proceeding clearly conserves scarce Board resources by allowing
`
`the same issues relating to the descriptiveness of the “COFFEEBERRY” mark to be determined
`
`
`
`3
`
`

`
`
`
`
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`Cancellation No. 92054976
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`by the Hawaii Court, in a civil action that was filed several months prior to the TTAB
`
`proceeding.
`
`Moreover, the ends of judicial economy are better served by a suspension of this
`
`proceeding than by allowing discovery in two proceedings to move ahead. In the pending
`
`Hawaii Civil Action, discovery relating to the trademark cancellation counterclaims will likely
`
`involve the issues of both the mark’s descriptiveness as well as the extent to which Respondent’s
`
`use of the mark supports a finding of acquired distinctiveness. Depositions may need to be
`
`taken of Respondent’s representatives, as well as documentary discovery. These same VDF
`
`witnesses are likely to be deposed with regard to, among other things, the related state law
`
`counterclaims for tortious interference, unfair methods of competition, and unfair and deceptive
`
`trade practices, as these witnesses were likely involved with both the improper assertion of
`
`invalid patent rights as well as the assertion of Respondent’s trademark claims. See e.g. letters to
`
`Petitioner’s former customer, XOWii, LLC, dated 11/3/09, asserting respectively provisional
`
`patent rights and infringement of the “COFFEEBERRY” trademark registrations, copies of
`
`which are attached hereto as Exhibits “A” and “B” (and as Exhibits “3” and “13” to SITC’s
`
`Amended Counterclaim in the Hawaii Civil Action). It would be a waste of resources, however,
`
`were the Board to deny the Motion to Suspend, because the witnesses would then likely be
`
`deposed twice in connection with the same or closely related issues3 – once in the trademark
`
`proceeding and again, in the Hawaii Civil Action.
`
`Respondent VDF further complains that the cancellation and validity of its
`
`“COFFEEBERRY” mark must be determined by the Board and not the Hawaii Court, as
`
`3
`Respondent infers that the trademark counterclaims in the Hawaii Civil Action will be
`dismissed. To be clear, however, the trademark counterclaims are currently part of that action.
`Respondent has filed another motion to dismiss, but the Hawaii Court will not rule upon the
`motion until the Hawaii Civil Action resumes.
`
`
`
`4
`
`

`
`
`
`
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`Cancellation No. 92054976
`
`“Congress has confided the registration of trade-marks to the Patent Office … .” Opposition
`
`Memo. at 6-7. That argument, however, misleadingly focuses on the USPTO’s authority to issue
`
`registrations, whereas the issue is whether courts have jurisdiction to order a cancellation of
`
`registrations, once issued. Clearly, the Lanham Act expressly grants courts concurrent
`
`jurisdiction (with the USPTO) over claims to cancel trademark registrations, whether or not the
`
`litigant seeks a declaration of non-infringement. 15 U.S.C. § 1119. The USPTO (including
`
`TTAB) does not have exclusive jurisdiction over claims for cancellation of trademark
`
`registrations.
`
`Respondent’s argument also assumes incorrectly that Petitioner could have
`
`chosen not to challenge the registrations in the Hawaii Court. Respondent fails to acknowledge
`
`that it was Respondent, not Petitioner, who chose to institute the litigation in the Hawaii Court.
`
`Although Respondent’s second motion to dismiss argues that the Hawaii Court lacks jurisdiction
`
`over the trademark counterclaims, it is apparent that Petitioner was compelled to assert the
`
`trademark counterclaims in the Hawaii Civil Action because they constitute compulsory
`
`counterclaims, and to date, the Hawaii Court has not ruled on the pending motion to dismiss.
`
`The notion that a challenger to trademark registrations should not “short-cut the administrative
`
`process by raising that challenge in the federal courts” (see Opposition memo. at 7) clearly does
`
`not apply in circumstances such as those presented here, where: (a) Respondent asserted its
`
`registrations against Petitioner, and its use of and then-pending application to register, an
`
`allegedly confusingly similar mark (“HAWAII COFFEE CHERRY”), by means of a cease-and-
`
`desist demand letter (see letter dated 5/27/09 to Petitioner’s counsel, a copy of which is attached
`
`hereto as Exhibit “C” (and as Exhibit “11” to the Amended Counterclaim)); and (b) Respondent
`
`has already commenced a civil action against Petitioner for patent infringement, involving the
`
`
`
`5
`
`

`
`
`
`
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`Cancellation No. 92054976
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`same set of transactions or occurrences that give rise to Petitioner’s trademark challenge. See
`
`Fed. R. Civ. P. Rule 13(a).
`
`Finally, Respondent contends that Petitioner filed the Motion to Suspend “solely
`
`to cause delay of these proceedings . . . .” Opposition Memo. at 4. Respondent’s claim is
`
`speculative, however. And as shown above, whether or not the resolution of the trademark
`
`cancellation issues is delayed, Respondent would not be unduly prejudiced by a suspension of
`
`this proceeding, because it cannot file § 15 incontestability declarations in any event.
`
`III. CONCLUSION.
`
`Respondent will not be unduly prejudiced by a suspension of this proceeding.
`
`Even if the Board does not suspend this proceeding, Respondent cannot file to make its
`
`registrations incontestable in view of the still-pending trademark counterclaims in the Hawaii
`
`Civil Action. Moreover, judicial economy requires that discovery relating to the facts and
`
`occurrences underlying the trademark issues be taken only once, in the Hawaii Civil Action,
`
`because related discovery must proceed in the Hawaii Court Action regardless of the disposition
`
`of this proceeding.
`
`For all of the foregoing reasons, Petitioner respectfully submits that the Motion to
`
`Suspend should be granted.
`
`DATED: Honolulu, Hawaii, March 16, 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.
`
`
`
`6
`
`

`
`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
`)
`)
`)
`
`DECLARATION OF COUNSEL
`
`I, MARTIN E. HSIA, hereby declare as follows:
`
`1.
`
`I am a partner of Cades Schutte A Limited Liability Law Partnership LLP,
`
`counsel of record for Petitioner SANDWICH ISLES TRADING CO., INC. (“Petitioner” or
`
`“SITC”), and am duly authorized to make this declaration in support of Petitioner’s Reply
`
`Memorandum in Support of Its Motion to Suspend, which is based upon my personal knowledge
`
`and information unless indicated otherwise.
`
`2.
`
`Based on information and belief, attached hereto as Exhibit “A” is a true
`
`and correct copy of a letter to XOWii, LLC from Fish & Associates, dated November 3, 2009.
`
`3.
`
`Based on information and belief, attached hereto as Exhibit “B” is a true
`
`and correct copy of a letter to XOWii, LLC from Fish & Associates, dated March 3, 2010.
`
`4.
`
`Based on information and belief, attached hereto as Exhibit “C” is a true
`
`and correct copy of a letter to James D. Hornbuckle, Esq. from Stephen R. Baird, Esq., dated
`
`May 27, 2009.
`
`

`
`
`
`
`
`Cancellation No. 92054976
`
`The undersigned being warned that willful false statements and the like are
`
`punishable by fine or imprisonment, or both, under 18 U.S.C. 1001, and that such willful false
`
`statements and the like may jeopardize the validity of the application or document or any
`
`registration resulting therefrom, declares that all statements made of his own knowledge are true;
`
`and all statements made on information and belief are believed to be true.
`
`DATED: Honolulu, Hawaii, March 16, 2012.
`
`
`/s/ Martin E. Hsia
`MARTIN E. HSIA
`
`
`
`32,471
`
`2
`
`
`
`
`
`
`
`
`
`

`
`“A99
`
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`Visit (St .’\ssori.at<-s. I’(‘,
`2Gll':i Main Stu-ct"
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`.\‘l2lHI 949 ‘J43 3500
`
`["‘a_'x'. 969 94.5 8533
`inh7:gi>fisliipln\v.ct>ixi
`
`Novembeif 3. 2009
`
`Robert 1). Fish.
`Phone: (949) 943—S302
`i-5~—mail: rflsh@fishiplaw.com
`
`PRIVILEGED AND CONFIDENTIAL
`
`VIA FEDERAL EXPRESS
`
`XOW'ii, LLC.
`Richard Kelly
`4440 Von Karman Ave. #350
`
`Newport Beach, CA 92660
`
`RE:
`
`U.S. Pat. No. 6,572,915, and
`Notice under 35 USC l54(d)
`VDF FutureCeuticals, Inc.
`Our Ref: 1007000000, 1007000024, and 1007000025
`
`Dear Mr. Kelly:
`
`Our lirm represents VDF Futureceuticals, Inc. in patent prosecution and patent litigation
`matters. Mr. John Hunter, General Manager of VDF 'i'*'uturcCeuticals, asked us to contact you
`with respect to your public offer for sale of the "XOWii F.<‘,nergy" beverage, which apparently
`includes a coffee cherry product (see http://www.xowii.corn/xowii-energyphp).
`
`VDF FuturcCc-zuticals is the owner o'fU.S. Pat. No. 6,572,915 and several U .S. and foreign
`patent applications, including Brazil, Canada, China, Europe, India, Japan, Korea, Morocco,
`Mexico, the Philippines, and South Africa that directly relate to various nutritional compositions
`comprising whole coffee fruit, whole coffee fruit extracts, and methods for production thereof.
`For further details, please see WO 2004/098303, WO 2004/098320, W0 2005/102373, all of
`which have entered the corresponding national phases, some of which have already issued‘.
`
`In connection with the above, please carefully review the enclosed US patent and patent.
`publications of VDF FutureCeutical.s and provide us with your comments as to how the claims of
`the '91 5 patent relate to your products and their manufacture. With respect to the above noted
`patent applications, our client is aware that no rights can be enforcecl. until a. US patent issues.
`
`' China: ZL038266407: Japan allowed (2007607300); Morocco: MA28568; South Al’rica;Z.A2006/08698
`
`EXHIBIT A
`
`

`
`XOWii, LLC.
`Page 2
`
`However, we want to draw your attention to 35 USC l54(d) that provides, inter alia, provisional
`rights commencing as of the publication date. Moreover, reasonable royalties may be recovered
`from the date of publication of the applications. Lastly, VDF FutureCeuticals will shortly enter
`the accelerated examination program for the above applications and expects issuance of
`corresponding US patents in the relatively near future.
`
`If you have fl.1l’ti1C1' questions, comments, or concerns, please do not hesitate to contact
`this office at any time.
`
`Sincerely,
`
`1j",ISH?ASSOCIATES PC "'\\
`CI.
`
`R bert D. Fish
`
`

`
`EXHIBIT “B”
`
`

`
`WI NTI-IROP
`
`VVEINSTINE
`
`.‘~.1:r>i\.~::-.rs A.-an Cnu.~.'s1.1.ot;.«‘ .\'r
`
`l..,-\.\\‘
`
`St:-.phcn R. Baird
`Direct Dial: (612) ((04--($535
`DlA'ct:t Fax: (612) 60'I~6SSS
`slutirdfliiwinthrop.mm
`
`March 37 2010
`
`VIA FEDERAL EXPRESS
`
`Richard Kelly
`CEO
`
`Xowii, LLC
`4440 Von Karman A.ve. #350
`
`Newport Beach, CA 92660
`
`Re:
`
`Use of C'OFFEE_BERRY® Trademark (VDF FutureCeutieals, Inc.)
`Our File No.: 114 17.225
`
`Dear Mr. Kelly:
`
`(“FutureCeuti.cals”), a leading
`Inc.
`for VDF FutureCeuticals,
`We are trademark counsel
`biotechnology company specializing in the manufacture and development of scientifically
`innovative nutraceuticals, functional foods and cosmetic: ingredients.
`It has recently come to our
`attention that XO'Wii, LLC (“XOWii”) is ‘using “coffee berry” and “Coffee Cherry” to identify
`and adveitise its XOWli energy diink (the “XOW'ii Drink”). Our client has asked us to Contact
`you regarding your advertising and to alert you that your use of “coffee berry” and “Coffee
`Cherry” constitutes trademark.infri.ngeme.nt and false advertising under state and federal law.
`
`In addition to owning patent applications pending here and abroad, our client is the exclusive
`owner of several
`federal
`trademark registrations for the tracleinairk. COF.FEEBBRR'Y® for
`antioxidants, dietary supplements and other products.
`I<‘utureCeutical.s has licensed the use of its
`valuable trademarlc to third parties in connection with a variety of products containing
`FutureCeuti'ca1s’ proprietary whole coffee fruit products.
`.XOWii is not an authorized ‘licensee of
`the COFFEEBERRY® trademark, yet XOWii. is engaged in direct and unfair competition with
`our client and its licensees. Your 1Jl1autl1OI‘l'Z.CCl use of the virtually identical terms “coffee berry”
`and “Coffee Ch.e.r.ry“’ violates our client’s exclusive rights in its COFFEEBERRYQ?» t1'adem,arl<'s
`and, depending on the actual. i.ngredi.enls of the XOWii ,Dri.nl<., either violates our client’s pending
`patent rights or constitutes false or misleading advertising. Therefore, XOWii’s use of the
`COFFEEBERRY name, mark, and designation, as well as the similar variation “Coffee Cherry,”
`mu-st cease immediately.
`
`F'uturcCeuticals is the exclusive owner of tradema1‘k. registrations for COFI-*"EEBERRY® for
`“nutriceuticals foruse as {-1 dietary supplement and as a dietary supplement ingreclient_,” “food
`and beverage ingredients, namely, whole processed coffee fruit,” “cosmetics and cosmetic
`ingredients” and “food s‘up’plem.ents, namely, ant.ioxidan.ts” (Reg. 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 3,64(i,70l.) (collectively,
`the “COFFEEBERRY® Marks”). Copies of these r.egistrat‘.io.ns are enclosed for your reference.
`
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`
`B
`
`

`
`XOWii, Inc.
`March 3, 2010
`Page 2
`
`Our client and its licensees, who utilize CO.FFEEBERRY® brand whole coi:l’ee fruit as an
`ingredient in a variety of foods, dietary supplements and. skin care products, spend considerable
`time,
`effort,
`an.d expense promoting our client‘s COl?FEEBERR‘S.’® brand and mark.
`Consequently, the consuming public knows Fn.ti1reCenticals as the source of goods, including
`whole coffee fruit in a variety of fonns, bearing the COFFEEBERRY® tiracleniark.
`
`the COFFEEBERRY® mark refers to Futuireceuticals’
`Consumers likewise recognize that
`revolutionary powders and liquid extractions of the highly perishable pulp and flesh of whole
`coffee fruit ~ not simply extractions of the seed. or bean of the coffee plant. You should also
`know that FutureCe.uticals’ pending patent applications concern processes and compositions
`containing whole coffee fruit. The scope of FutureCeuticals’ pending patent applications
`encompass the methods for extracting and processing whole coffee fruit such that the resulting
`product is safe for human. consumption and use.
`
`Due to FutureCeuticals and its licensees’ efforts, consumers familiar with FutureCeuticals’ well—
`known and famous COFFEBBE‘RRY® branded products are not only likely, but certain,
`to
`believe that
`the XOWii Drink contains our client’s proprietary COFFBEBERRY® brand
`ingredients. This unlawful association causes our client and its licensees great damage. The
`XOWii Drink, which makes use of our client’s federally registered, well~known., and famous
`COFFEBBBRRY® trademark, is likely to dilute thedistinctive quality of the mark and cause
`confusion, mistake, mislead or deceive consumers.
`In light of FutureCeutica1s’
`federal
`trademark registrations for COF.FF.EB‘ERRY® for use in connection with extractions of whole
`coffee fmit, consumers are likely to believe that XOWii and the XOWii Drink are connected to
`or sponsored, endorsed, or approved by FutureCeuticals.
`
`Further, it is simply ‘unavoidable that consumers viewing the XOWii Drink packaging and your
`distributors’
`£:ldV6l'll.Sl.11g will mistakenly
`believe
`that
`the XOWii Drink
`contains
`COFIFEEBERR‘/® brand whole coffee fruit when, in fact, it does not. The whole coffee fruit
`ingredient" that Future'Ceutica-ls markets and sells under the COFFEEBERRY® mark is derived,
`though F'utureCeuticals‘ patcnt—pending processes, from the iipe, red, whole i"r.uitt of the coffee
`plant, including the bean. as well as the pulp, flesh and skin surrounding the bean.
`in contrast, it
`XO'Wii advertises the _use of “KonaRed Coffee Cl-teny,” a product not connected to
`FutureCeutical.s’ COFFEE.BERRY® brand -extracts. As such, your use of “coffee berry” to
`identify and advertise the purported. “KonaRed Coffee Cheny” product is false a.nd 'l.11lSlCflCll.fl g.
`This false and misleading statement is material because, as ‘I am sure you are aware, the ORAC
`antioxidant scoring for our clicnt’s prop1*ictary COFFEEBERR.Y® product is far superior to the
`ORAC scoring associated "with. the product XOWi.i characterizes as “KonaRed Coffee Cherry.”
`
`Finally, we note that Sandwich lsles‘ "trading Company, the developer of the Konalked product,
`uses the mark “KonaRed Coffee Fiuit” to identify its product, not “KonaRed Coffee Cherry,”
`which is highly similar to the COFF'E'EBERRY® Marks both ,phoneticall'y and visually and
`presents a highly similar co.mmercial
`impression to the COFFEEBERRYQD Marks. As the
`COFtFE~EBERRY® Marlcs and the “Coffee Cherry” mark. are associated with what XO‘Wii and
`Sandwich Isles purport
`to be a product closely related to the products offerecl under the
`COFFEEBERRY® Marks, the likelihood that consumers will mistak.cnly believe that XOWii’s
`
`

`
`XOWii., inc.
`March 3, 2010
`Page 3
`
`product is produced by, al’fil.iate(l with, endorsed by, or otherwise connected with our client is
`even greater.
`'l."h.e m.in.imal differences in the COFFBEB'ER’RY'G_0 Marks and the “Coffee Cherry”
`mark are not. sufficient: to prevent the likelihood of consumer coniiision.
`
`in short, as XOWii is not an authorized licensee of Fut'ureCe'uti.cals or of the COFFBEl3l3RRY®
`trademark and neither the XOWii Drink, nor any of XOWii’s other products, contain genuine
`COFFEEB'ERR.Y® brand whole coffee fruit in any form, XOWii’s use of “coffee berry” and
`“Coffee Cherry” in. connection with marketing and selling its products constitutes trademarlc
`infringem.ent and false and misleading advertising. Therefore, XOWii and its distributors’ use of
`“coffee berry” and “Coffee Cherry” in its labeling, marketing, distributing, and sale of the
`XOWii Drink must cease in its entirety immediately.
`
`We trust, unless proven otherwise, that XOWi,i was not aware of Futureceuticals‘ rights when it
`began using “coffee berry” and “Coffee Cherry,” but. now that your company has actual
`knowledge ofFutureCeut'icals’ exclusive rights, we fiirther trust it will immediately cease its use
`of “coffee berry” and “Coffee Cheri-fy.”
`
`Our client is reasonable and prefers to resolve this matter amicably and quickly to avoid the
`expense of pursuing formal legal action, if possible. We presume your company shares this
`sentiment. Therefore, please CO11fi1‘l’l1 in writing by no later than March 16, 2010 that XOWii
`has ceased using FutureCeuticals’ COFFEEB.ERRY® mark or the “Coffee Cherry” mark, that
`XOWii has destroyed all packaging bearing the CO'FFEEB'ERRY® mark and the “Coffee
`Cheny” mark, and that XOWii has informed its distributors in. writing to refrain from using the
`COF-FEEBERRY® ‘mark or any similar variation, including “coffee berry” and “Coffee Cherry,”
`in connection with their ad'veztis.ing and marketing of the XO'Wii Drink.
`
`If we do not receive your written confirination that XOWii will comply with the above requests
`by the aforementioned date, w.e will be forced to take all steps necessary to protect
`FutureCeutica1s’ rights in its CO.FFEE.B;ERRY® brand and trademark.
`
`This letter is without prejudice to any rights of, or remedies to, FutureCeuticals, all of which are
`expressly reserved. If you have any questions regarding this matter, please call me at (612) 604-
`6585,
`01.‘ e-mail me at Sbaird.@win.th,rop.com. Otherwise, we look forward to your prompt
`confinnation that XO'Wii will comply with FutureCeuticals’ reasonable requests.
`
`Very truly yours,
`
`"WI". T.lf~lROl? & WEINSTINE,
`u.,.
`:_/:§¢¢of_‘
`
`
`Baird.
`
`'Stephe1 R.
`
`Enclosures
`
`SRB/sda
`5072602vl
`
`

`
`Int. CL: 5
`
`Prior U.S. C1s.: 6, 18,44, 46, 51, and 52
`
`Reg. No. 3,160,267
`United States Patent and Trademark Office Registered Oct. 17, 2006
`
`
`
`TRADEIVIARK
`PRINCIPAL REGISTER
`
`VDF FUTURECEUTICALS, INC. (ILLINOIS COR-
`PORATION)
`300 WEST SIXTH STREET
`MOMBNCE, IL 50954
`
`FOR: NUTRICEUTICALS FOR USE AS A DIET-
`ARY SUPPLEMENT AND AS A DIETARY SUPPLE~
`MENT INGREDIENT, IN CLASS 5 (US. CLS. 6, 18, 44,
`46, 51 AND 52).
`
`THE MARK CONSISTS OF STANDARD CHAR.
`ACTERS WITHOUT CLAIM TO ANY PARTICULAR
`pom, STYLE, SIZE, ox COLOR.
`
`SN 78~510,77l, FILED 11-3-2004.
`
`FIRST 11513 10-19-2005; IN COMMERCE 1o~19.2oo5.
`
`ARETHA SOMERVILLE: EXAMINING -ATTORNEY
`
`

`
`fut. CL: 5
`
`Prior U.S. CIs.: 6, 18, 44, 46, 51, and 52
`
`Reg. No. 3,163,412
`United States Patent and Trademark Office
`Re.gis-tered Oct. ?/1, 2006
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`
`
`VDF FUTURECEUHGA-LS, mc. (ILLINOIS con»
`PORATIQN)
`A
`319 NORTH mxna -I_:{IGHj\VAY
`MOM'8NCB,_ IL 60954
`
`THE MARK. CONS1'STS OF THE STYLIZED
`WORD COFFEEBEIQRX’ IN THE COLOR RED AND
`THE DESIGN OF FRUIT IN THE COLORS RED
`ANDGRBBN.
`
`FOR: NUTRICEUFICALS FOR USE. AS A DIET-
`ARY SUPPLEMENT AND AS A DIETARY .SUPI’-LH-
`MENT INGREDIENT, IN CLASS 5 (US. CL-S. 6, 18, 44,
`46,- 51 AND 52).
`
`FIRST USE 84--2005§v.IN CQMMBRCEV8-1-2005.
`
`SN 78-3433',-'/181. FILED 1 1-26-2003.
`
`THE COL.OR(S) RED AND GREEN IS/ARE
`CLAIMED‘-AS A FEATURE OF THE MARK.
`
`MELVIN AXILBUN1), EXAMINING ATTORNEY
`
`

`
`Int. CL: 5
`
`Prior U.S. Cls.: 6, 18, 44, 46, 51, and 52
`
`Reg. No. 3,165,945
`Re.g1'st.ered Oct. 31, 2006
`United States Patent and Txradenmrk Office
`
`TRADEEVIARK
`PRINCIPAL REGISTER
`
`COFFEEBERRY
`
`VDF FUTURECEUTICALS, INC. (ILLINOIS COR—
`PO RATION)
`819 NORTH DIXIE HICEHVVAY
`MOMENCE, IL 60954
`
`FOR: NUTRICBUTICALS FOR USE AS A DIET~
`ARY SUPPLEMENT AND AS A DIETARY SUPPLE-
`MENT INGREDIENT, IN CLASS 5 (US. CLS. 6, 18, 44,
`46, 51 AND 52).
`
`FIRST USE 8-1-2005; IN COIVXMERCE 84-2005.
`
`SN 78~320,78S, FILED 10-30-2003.
`
`STEVEN R. FINE, EXAMINING ATTORNEY
`
`

`
`Int. CL: 5
`
`Prior U.S. Cls.: 6, 18, 44, 46, S1, and 52
`
`Reg. No. 3,155,230
`Reg1'stere.d Oct. 10, 2006
`United States Patent and Trademark Office
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`
`
`tcaberry
`
`VDF FUTURECEUTICALS, INC. (ILLINOIS COR-
`P-ORA-TION)
`300 WEST SIXTH STREET
`MOMENCE, IL 60954
`
`FOR: NUTRICEUTICALS FOR use AS A DIET-
`ARY SUPPLEMENT AND AS A DIETARY SUPPLI-'£~
`MBNT INGREDIENT, IN CLASS 5 (us CLS. 5, 12, 44,
`46, 5: AND 52).
`
`FIRST USE 8-1-2005; IN COMMERCE 8«1~2005.
`
`THE MARK CONSISTS OF THE COFFEIEBERRX’
`MARK POSITIONBD NEXT TO A DESIGN LOGO.
`
`SN 78-648.403, FILED 6-10-2005.
`
`ANNE FARRELL, EXAMINLNG ATTORNEY
`
`

`
`Int. Cl.: 29
`
`Prior U.S. C1.: 46'
`
`Reg. No. 3,155,231
`Registered Oct. 10, 2006
`United States Patent and Trademark Office
`
`TRADEIVIARK
`PRINCIPAL REGISTER
`
`
`
`
` 22bz=:’°ry
`
`VDF FUTURECEUTICALS, INC. (ILLINOIS COR-
`PORATION)
`300 V‘/EST SIXTH STREET
`MOMENCE, IL 60954
`
`FOR: FOOD AND BEVERAGE INGREDIENTS,
`NAMELY, WHOLE PROCESSED COFFEE FRUIT,
`IN CLASS 29 (US. CL. 46).
`
`THE MARK CONSISTS OF THE COFFEEBERRY
`MARK POSITIONED NEXT TO A DESIGN LOGO.
`
`SN 78-648,405, FILED 6-10~2005. ’
`
`FIRST USE 84-2005; IN COMMERCE 8-1"-2005.
`
`ANNE FARRELL, EXAMINING ATTORNEY
`
`

`
`Int. Cl.: 29
`
`Prior U.S. CL: 46
`
`Reg. No. 3,155,232
`Registered Oct. 10, 2006
`United States Patent and Trademark Office
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`VDF FUTURBCBUTICALS, INC. (ILLINOIS COR-
`PORATION)
`300 WEST SIXTH STREET
`MOMENCE, IL 60954
`
`FOR: FOOD AND BEVERAGE INGREDIENTS,
`NAMELY, WHOLE PROCESSED COFFEE FRUIT,
`IN CLASS 29 (US. CL. 46).
`
`FIRST USE 8-‘1-2.005; IN COMMERCE 8-1-2005.
`
`THE MARK CONSISTS OF STANDARD CHAR-
`ACTERS VVITHOUT CLAINI TO ANY PARTICULAR
`FONT, STYLE, SIZE, OR COLOR.
`
`SN 78-648,415, FILED 6-10-2005.
`
`ANNE FARRELL, EXAMINING ATTORNEY
`
`

`
`Int. CL: 3
`
`Prior U.S. C‘1s.: 1, 4, 6, 50, 51, and 52
`
`United States Patent and Trademark Office
`
`Reg. No. 3,420,510
`Registererl Apr. 29, 2008
`
`TRADEIVIARK
`PRINCIPAL REGISTER
`
`COFF
`
`VDF FUTURECEUTICALS, INC. (ILLINOIS com
`PORATION)
`300 WEST SIXTH STREET
`MOMENCE, IL 50954
`
`FOR: COSMETICS; BODY AND BEAUTY CARE
`COSMETICS; Al\TD VVHOLF. COFFEE FRUIT AND
`BXTRACTS OF WHOLE COFFEE FRUIT SOLD AS
`COMPONENT INGREDIENTS OF COSMETICS
`AND NON-MEDICATED BEAUTY AND SKIN
`CARE PREPARATIONS, IN CLASS 3 (U5. CLS. 1, 4,
`6, 50, 51 AND 52).
`
`FIRST USE 1-2-2007; IN COMMERCE L2-2007.
`
`THE MARK CONSISTS OF STANDARD CHAR-
`ACTERS WITHOUT CLAIM TO ANY PARTICULAR
`FONT, STYLE, SIZE, OR COLOR.
`
`SN 78-874,268, FILED 5-2-2006.
`
`ELISSA GAREER KON, EXAMINING ATTORNEY
`
`

`
`Int‘. C1.: 5
`
`Prior U.S.‘ C152: 6, 18, 44, 46, 51 and 52
`
`Reg. No. 3,643,304
`United States Patent and Trademark Office Registered June 23, 2009
`
`
`
`TRADENIARK
`PRINCIPAL REGISTER
`
`VDF PUTURECEUTICALS, INC. (ILLINOIS COR-
`PORATION)
`300 WEST SIXTH STREET
`MOMENCE, IL 60954
`
`FOR: FOOD SUPPLEMENTS, NAMELY, ANTI-
`OXIDANTS, IN CLASS 5 (US. CLS. -6, 18, 44, 46, 51
`AND 52)_
`
`“ma MARK CONSISTS 01? STANDARD CHAR~
`ACTERS WITHOUT CLAIM TO ANY PARTICULAR
`FONT STYLE: SIZE» OR COLOR-
`_
`OWNER OF us. REG. NOS. 3,020,510, 3,160,267
`AND OTHERS.
`
`sun. NO. 77—623,780, FILED 1.2-1~2oos.
`
`FIRST USE 8-1 -2005; IN COMMERCE 8-1-2005.
`
`JEAN 1M, E-‘<AM1NTNG ATTORNEY
`
`

`
`Int. Cls.: 1 and 3
`
`Prior U.S. ClS.: 1, 4, 5, 6, 10, 26, 46, 50, 51 and 52
`
`United States Patent and Trad.en1ark Office
`
`Reg. No. 3,646,701
`Registered June 30, 2009
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`VDF FUTURECEUTICALS, INC. (ILLINOIS COR—
`PORATION)
`300 WEST SIXTH STREET‘
`MOMENCE, IL 60954
`
`FOR: ANTIOXIDANTS USED IN THE MANU~
`FAC1”URE OF COSMETICS, BEVERAGES, FOOD
`PRODUCTS AND FOOD SUPPLEMENTS, IN CLASS
`1 (US. CLS. 1, 5, 6, 10, 26 AND 46).
`
`FIRST USE 8~1-2005; IN COMJVIERCE 8-1-2005.
`
`FOR: ANTIOXIDANTS THAT ARE AN INTE-
`GRAL INGREDI-ENT IN COSMETICS, IN CLASS 3
`(US. CLS. I, 4, 6, 50, 51 AN