Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA507038
`ESTTA Tracking number:
`11/21/2012
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92055519
`Defendant
`Baloru S.A.
`PANAGIOTA BETTY TUFARIELLO
`LAW OFFICES OF P.B. TUFARIELLO, P.C.
`25 LITTLE HARBOR ROAD
`MOUNT SINAI, NY 11766
`UNITED STATES
`twilentz@tmwlaw.com, betty@intellectulaw.com
`Motion to Suspend for Civil Action
`Panagiota Betty Tufariello
`betty@intellectulaw.com
`/PANAGIOTABETTYTUFARIELLO/
`11/21/2012
`RESPONDENT BALORU S.A.'S MOTION TO SUSPEND PROCEEDINGS- AS
`SERVED AND FILED ON NOVEMBER 21, 2012-1.pdf ( 50 pages )(2041628
`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
`
`X
`
`ECUABEVERAGE CORPORATION,
`
`Petitioner/Plaintiff,
`.
`
`_
`
`v.
`
`BALORU, S.A.,
`
`Respondent/Defendant.
`
`
`
`Cancellation No. 92055519 (PARENT)
`In re U.S. Trademark Registration No. 3,949,746
`for the Mark TROPICAL (and design)
`'
`’
`Cancellation No. 92055569
`In re U. S. Trademark Registration No.4,120,917
`for the Mark TROPICAL (and design)
`
`_
`Cancellation No. 92056294
`In re U.S. Trademark Registration No. 4,120,854
`for the Mark ORO TROPICAL
`
`RESPONDENT BALORU S.A.’S MOTION FOR A SUSPENSION
`OF PROCEEDINGS PENDING THE OUTCOME OF A RELATED
`CIVIL ACTION PURSUANT TO 37 C.F.R. §2.117§a[
`
`Pursuant to 37 C.F.R. §2.117(a), Respondent BALORU S.A.(hereinafter “Resp.onden ”
`
`or “Ba1oru”) by and through its attorneys of record, INTELLECTULAW, THE LAW OFFICES
`
`OF PR TUFARIELLO, P.C., hereby moves forthe suspension ofthe above mentioned
`
`consolidated proceedings pending the final outcome ofthe civil action Brooklm Bottling of
`
`Milton, New York, Inc. v. Ecuabeverage Corporation, on appeal to the United States Court of
`
`Appeals for the Second Circuit, Docket No. 12-1140, from the United States District Court for
`
`the Southern District ofNew York, Case No. 07-cv-84183 (AKH)(hereinafier “The Action”),
`
`which presents common issues and common parties with the present consolidated proceedings.
`
`Page 1 RESPONDENT BALORU S.A.’S MOTION FOR A SUSPENSION OF PROCEEDINGS PENDING’ TI-IE
`OUTC MB or A RELATED CIVIL AC'I‘ION PURSUANT TO 37 can §2.ll7(a); CANCELLATION NO.:
`92055
`9(PARENT)
`
`

`
`Relevant Procedural History
`
`On October 1, 2007, Brooklyn Bottling of Milton, New York, Inc. (hereinafter
`
`“Brooklyn Bottling”) commenced the Action against Ecuabeverage Corporation (hereinafter
`
`“Ecuabeverage”) by filing a Complaint in the United States District Court for the Southern
`
`District ofNew York asserting inter alia the following causes of action: Infringement ofthe
`
`trademark TROPICAL PURO SABOR NACIONAL, U.S. Trademark Registration No.
`
`1,474,395 (hereinafter "the Tmdemark") under 15 U.S.C. 1114;-Unfair Competition under 15
`USC 1 125(a); and Unfair competition under Common Law. The Action was assigned to the
`Hon. Judge Alvin K. Hellerstein.
`I
`
`On November 5, 2007, Ecuabeverage filed_its Answer, in which, inter alz_'a, it denied all
`
`allegations, and raised a number of affirmative defenses.
`
`On January 18, 2008, at a conference before the Honorable Judge Hellerstein, Brooklyn
`
`Bottling was instructed to amend its Complaint if it was the assignee ofthe Trademark.
`
`On February 15, 2008, Royal Signature, Inc., owner ofthe Trademark, assigned all rights V
`
`title and interest to Brooklyn Bottling. Thus, on February 26, 2008, Brooklyn Bottling brought a
`
`Motion to Amend its Complaint to assert that it was in fact the assignee ofthe Trademark.
`On March 14, 2008, Ecuabeverage filed a) its Consent to the Entry ofBrooklyn
`Bottling’s Amended Complaint, b).its Motion for Partial Summary Judgement on Coxmts I, l1
`and VI ofBrooklyn Bott1ing’s Amended Complaint. At the time ofsuch filings, Brooklyn
`Bottling had yet to officially file its Amended Complaint. Nor had the parties engaged in any
`
`discovery whatsoever.
`
`Page 2 RESPONDENT BALORU S.A.’S MOTION FOR A SUSPENSION OF PROCEEDINGS PENDING TI-IE
`OUTC MB or A RELATED crvn. ACTION PURSUANT TO 37 cm §2.1I7(a); CANCELLATION NO.:
`92055. 9(PARENT)
`-
`-
`
`

`
`On March 25, 2008, Brooklyn Bottling filed an Amended Complaint against
`Ecuabeverage, comprising among other things, the following claims: Infringement ofthe
`
`Trademark under 15 USC 11 14; Unfair Competition under 15 USC 1125(a); trade dress
`infringement under §43(a) ofthe Lanham Act, .15 USC 1 125(a); unfair competition under
`
`common law; and a claim for Prohibited Importation Pursuant to Sec. 526 of the 1930 Tariff
`
`Act, 19 U.S.C. Sec., 1526.
`
`On April 3, 2008, Ecuabeverage filed its Amended Answer and Counterclaims, denying
`
`all allegations, raising affirmative defenses, and averring the following Counterclaims against
`
`Brooklyn Bottling: Cancellation ofUS Trademark Registration No 1,474,395 (the Trademark)
`
`pursuant to 15 USC ll15(b)(9) on the ground that said registration is unenforceable due to
`
`laches; Cancellation ofU.S. Trademark Registration No. 1,474,395 pursuant to 15 U.S.C.
`
`ll15(b)(9), under the equitable doctrine of "unclean hands"; False Advertising under 15 USC
`
`1125(a) and Deceptive Acts and Practices under NY Gen Bus Law §349.
`
`On September 3, 2008, at the hearing Judge Hellerstein conducted in connection with
`
`Ecuabeverage’s Motion for Partial Summary Judgement of Counts I, ll and VI , transcript of
`
`which is attached hereto as Exhibit 1, as part ofthe Special Appendix submitted inthe Action,
`
`he denied said motion, stating as follows:
`
`I can't decide that [whether Brooklyn Bottling has conceded that it has no
`rights to the word “tropical”, and it has in fact used tropical in a
`'
`descriptive sense and has acknowledged that tropical is a descriptive term
`by disclaimers] on a motion for summary judgment before there is
`discovery. There is .a lot offactors that go into this, including, among
`other things, how your client developed its product and its trademark and
`its branding and its coloration and its products and I need to know all of
`that, and I will not cut short the proceedings because a motion is made
`
`Page 3 RESPONDENT BALORU S.A.’S MOTION FOR A SUSPENSION OF PROCEEDINGS PENDING TI-IE
`OUTC ME OF A RELATED CIVIL. ACTION PURSUANT TO 37 C.F.R §2.l17(a); CANCELLATION NO.:
`92055
`9(PARBNT)
`'
`'
`'
`\
`
`

`
`. [With respect to the disclaimer] they are
`.
`before there is discovery. .
`not admitting that '.'tropical" is necessarily descriptive. They are just
`taking the path of least resistance to obtain a certain benefit that comes
`with the registration. That's what I see now. That is my holding at this
`particular point. I'm not in a position rigt now to define exactly what
`area of protection comes in a Clamn trademark reg1_s'tration and
`what doesn't. The trademark is for the phrase "Tropical Puro Sabor
`Naciona " I see how it is used and I see how the defendant has used
`it and we need discovery. (emphasis added). Exhibit 1, pages SPA7-10 '1
`
`On September 4, 2008, an Order from Judge Hellersteinmemorializingthe
`
`foregoing followed. Exhibit 1, page SPA10.
`
`On July 3, 2009, Royal Signature, Inc., predecessor in title ofthe Trademark,
`
`filed a Petition for Cancellation in the Trademark Trial and Appeal Board (hereinafter
`
`“the Board”) ofEcuabeverage’s U.S. Trademark Reg. No. 2,892, 511. Such proceeding
`was assigned No. 92051197.
`2
`
`On July 20, 2009, Ecuabeverage filed a Petition for Cancellation against both
`
`Royal Signature, Inc. and Brooklyn Bottling ofMilton, New York, Inc for the
`
`cancellation ofthe Trademark. Such proceeding was assigned No. 92051242.
`
`On July 22, 2009, Ecuabeverage Corporation filed a Petition for Cancellation .
`
`It
`
`against Brooklyn Bottling for the cancellation ofthe U.S. Trademark Registration No.
`
`2,844,369 for the mark TROPICAL FANTASY. Such proceeding was assigned No.
`92051263.
`2
`
`On January 20, 2011, pursuant to the Board’s Order, Cancellations Nos.
`
`92051197 and 92051242 were consolidated and suspended pending the outcome ofthe
`Action.
`
`

`
`On December 7, 2011, Cancellation No. 92051263 was consolidated with the
`
`Cancellations Nos. 92051197 and 92051242, and all three were further suspended
`
`pending the outcome of the Action.
`
`On May 27, 2011, Brooklyn Bottling assigned all rights, title and interest in the
`
`Trademark to Baloru.
`
`On March 6, 2012 the Action was dismissed without prejudice and Judgment
`was entered.(Exhibit 1, page SPA31).
`I
`A
`
`'
`
`On March 22, 2012, Ecuabeverage filed a Notice ofAppeal in the Action,
`
`including inter alia a request for review ofthe District Court’s decision ofdenying
`
`Ecuabeverage’s Motion for for Partial Summary Judgement of Counts I, II and VI on
`
`September 4, 2008. A copy of said Notice of Appeal is attached hereto as Exhibit 2.
`
`On April 16, 2012, Ecuabeverage filed a Petition for Cancellation against Baloru
`
`for the cancellation ofthe Trademark No. 3,949,746 for the mark TROPICAL (and
`
`design). Such cancellation was assigned No. 92055519.
`
`On April 23, 2012, Ecuabeverage filed a a Petition for Cancellation against
`
`Baloru for the cancellation ofthe Trademark No. 4,120,917 for the mark TROPICAL
`(and design). Such cancellation was assigned No. 92055569.
`A
`
`On May 1, 2012, by Order ofthe Board, Balorulwas substituted as a party in the
`
`consolidated and suspended Cancellations Nos. 92051197 and 92051242, instead of
`
`Royal Signature, Inc. and Brooklyn Bottling.
`
`On August 9, 2012, Ecuabeverage, as Appellant, filed its Briefin the Action.
`
`

`
`On October 8, 2012, Ecuabeverage filed a petition for cancellation against Baloru
`
`for the cancellation ofthe Trademark No. 4,120,854 for the mark ORO TROPICAL.
`
`Such cancellation was assigned No. 92056294.
`
`On October 29, 2012, by Order ofthe Board, Cancellations Nos. 92055519,
`
`92055569 and 92056294 were consolidated. While the Board did consider consolidating
`
`these three cancellations with the previously consolidated and suspended cancellations
`
`92051197, 92051242 and 92051263, it did not do so due to their “different procedural
`
`.
`
`posture.”(Doc. No. 10, page 10).
`
`I
`
`On November 8, 2012, Brooklyn Bottling, as Appellee, filed its Brief in the
`
`Action.
`
`On November 19, 2012, Respondent filed its Answer in the Cancellation No.
`
`92056294.
`
`On November 20, 2012, Ecuabeverage filed its Reply Brief in the Action. There
`
`is no date scheduled for oral argument yet in the same Action.
`
`;Argu_nn;e_nt
`
`Based on the foregoing, it is clear that there are common parties between the
`cancellations in the present matteriand the Action. Specifically, Ecuabeverage, the 5
`
`Defendant and now Appellant in the Action, is the Respondent inCancellation.No.
`
`92051197, and the Petitioner in Cancellations Nos. 92051242, 92051263, 92055519, _
`
`92055569 and 92056294. A fact also established by the Board’s Order of October 29,
`
`2012, in the present proceedings, which found that the parties in Cancellation ’
`
`

`
`Proceedings Nos. 92055519, 92055569 and 92056294 are also involved in the
`
`Cancellations Nos. 92051197 and 92051242. (Doc. No. 10, page 10).
`
`Further, based on the foregoing, and as also found by the Board, fliere are
`
`common underlying facts and issues between the present cancellations and the Action.
`
`For example, the issue of descriptiveness ofthe term TROPICAL alleged by
`
`Ecuabeverage in each ofthe petitions againstRespondent is an issue on appeal in the
`
`Action, as part of the appellate review ofthe denial of Ecuabeverage’s Motion for
`
`Partial Summary Judgement on Counts I, II and VI of Brooklyn Bottling’s Amended
`
`Complaint on September 4, 2008. (see Exhibits 1 and 2); (see also the Board’s January
`20, 2011, Order in the consolidated Cancellations No. 92051197 (Parent) stating that “
`
`the claims in the civil litigation [the Action] include a claim oftrademark infringement
`
`by which certain findings and conclusions made by the court may have a bearing on the
`
`claims in this proceeding.”(Cancellation No. 92051197 (Parent), Doc. No. 22, Page 9)).
`
`Respondent submits that it inquired, through its counsel, Panagiota Betty
`
`Tufariello, whether Ecuabeverage would be amenable to consenting to a suspension of
`
`the present consolidated proceedings. Ecuabeverage’s counse1’s response speaks for
`
`itself and it is attached hereto as Exhibit 3 for the Board’sereference.
`
`Conclusion
`
`For the foregoing reasons, Respondent respectfully requests that the Board A
`
`suspend the present consolidated proceedings pending the final outcome ofthe civil
`
`action Brookl Bottlin of Milton New York Inc. v. Ecuabevera e Co oration, on
`
`RESPONDENT BALORU S.A.’S MOTION FOR A SUSPENSION OF PROCEEDINGS PENDING THE
`Page
`OUTC ME OF A RELATED CIVIL ACTION PURSUANT TO 37 C.F.R §2.ll7(a); CANCELLATION NO.:
`92055
`9(PARENT)
`«
`
`

`
`appeal to the United States Court ofAppeals for the Second Circuit, Docket No. 12-
`
`1140, fiom the United States District Court for the Southern District ofNew York, Case
`
`No. O7-cv-8483 (AKH).
`
`Dated: November 21, 2012
`
`Respectfiilly submitted,
`
`INTELLECTULAW
`THE LAW omens OF P.B. TUFARIELLO, P.C.
`
`By:
`
`25 Little Harbor Road
`Mt. Sinai, NY 11766
`Tel.:
`(631) 476-8734
`Fax:
`(631) 476-8737
`Email: bet_ty@int§llectulaw.com
`Attorneys for the Respondent BALORU S.A.
`
`Page 8 RESPONDENT BALORU S.A.’S MOTION FOR A.SUSPENSION OF PROCEEDINGS PENDING THE
`OUTC ME OF A RELATED CIVIL ACTION PURSUANT TO 37 C.F.R §2.l17(a); CANCELLATION NO.:
`92055
`9(PARENT)
`~
`‘
`-
`.
`
`

`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on this date; a copy of RESPONDENT BALORU S.A.’S
`MOTION FOR A SUSPENSION OF PROCEEDINGS PENDING THE
`OUTCOME OF A RELATED CIVIL ACTION PURSUANT TO 37 C.F.R.
`§2.117(a) has been filed with the TTAB via ESTTA, and a true copy of same has been
`forwarded for service upon the following counsel via E-mail and First Class Mail:
`
`Edwin D. Schindler, Esq.
`4 High Oaks Court
`P.O. Box 4259
`
`Huntington, NY 1 1743-0077
`Attorney for Petitioner
`ECUABEVERAGE CORPORATION
`
`Dated: November 21, 2012
`
`A
`
`/
`
`/
`
`el
`
`, Esq.
`
`By:
`etty Tuf
`Panagio
`INTELLECTULAW
`The Law Offices of P.B. Tufariello, P.C.
`25 Little Harbor Road
`_
`Mt. Sinai, NY 11766
`(631) 476-8734 (phone)
`(631) 476-8737 (fax)
`- Bfl§L@inte11ectulaw.com
`
`RESPONDENT BALORU S.A.’S MOTION FOR A SUSPENSION OF PROCEEDINGS_PEND]NG THE
`Page
`OUTC ME OF A RELATED CIVIL ACTION PURSUANT TO 37 C.F.R §2.117(a); CANCE1.LA'I'IQN NO.:
`92055
`9(PARENT)
`-_
`-
`
`

`
`EXHIBIT 1
`
`

`
`Case: 12-1140 Document: 52
`
`Pagerl
`
`98/09/2012
`
`687568
`
`33
`
`12-1140-CV
`
`
`
`IN THE
`
`flliniteh éatates flnurtuf Qppeals
`
`FOR THE SECOND CIRCUIT
`
`
`BROOKLYN BOTTLING OF MILTON, NEW YORK, INC.,
`
`v.
`
`Plaintifl-Appellee,
`
`ECUABEVERAGE CORP.,
`
`I Defendant-Appellant.
`
`
`On Appealfrom the United States District Court
`for the Southern District ofNew York
`
`
`SPECIAL APPENDIX
`
`
`
`EDWIN D. SCHINDLER
`Attorneyfor Defendant-Appellant
`Ecuabeverage Corp.
`4iHigh Oaks Court
`P.O. Box 4259
`Huntington, New York 11743
`(631)474-5373
`
`PANAGIOTA BETTY TUFARIELLO
`Law Offices of P. B. Tufariello, P.C.
`Attorneyfor Plaintifl-Appellee
`Brooklyn Bottling of.Milton, NY, Inc.
`8 Fountain Avenue
`Selden, New York 11784
`(631)716-0091
`
`

`
`Case: 124.140 Document:52
`
`Page:2
`
`O8/09;’2012
`
`687568
`
`33
`
`TABLE OF CONTENTS
`
`Transcript of Hearing Conducted September 3, 2008
`
`Summary Order Denying Ecuabeverage’s Motion for Partial
`Summary Judgment on Counts I, II and VI of the
`Amended Complaint, Entered September 4, 2008
`
`Orders Denying Motions for Summary Judgment,
`Entered August 17, 2010
`
`Transcript of Hearing Conducted March 5, 2012
`
`Order Granting Motion to Dismiss and Denying Other Motions,
`Entered March 6, 2012
`
`Judgment, Entered March 6, 2012
`
`Page
`
`SPA-1
`
`SPA-10
`
`SPA-1 1
`
`SPA-13
`
`SPA-30
`
`SPA-31
`
`

`
`file:///C|/Documents%20and%20Settings/user/My%20Documents/Patents/...udgment%20(3-14-2008)/SDNY%20Hearing%20Transcript%20(9-3-2008).txt
`Case: 12-1140 D0cumen¥:52
`Page:3
`O8/0932012
`687568
`33
`
`1
`
`893dbrom
`
`MOTION
`
`UNITED STATES DISTRICT COURT
`
`SOUTHERN DISTRICT OF NEW YORK
`______________________________X
`
`BROOKLYN BOTTLING OF MILTON,
`NEW YORK, INC.,
`
`Plaintiff,
`
`New York, N.Y.
`
`V.
`
`07 Civ. 8483 (AKH)
`
`ECUABEVERAGE, CORP.,
`
`Defendant.
`
`______________________________x
`
`September 3, 2008
`
`4:33 p.m.
`
`Before:
`
`HON. ALVIN K. HELLERSTEIN,
`
`District Judge
`
`APPEARANCES
`
`JACOBSON & COLFIN, P.C.
`Attorneys for Plaintiff
`BY: JEFFREY E. JACOB SON
`
`EDWIN D. SCHINDLER
`
`Attorney for Defendant
`
`SB<“:’$'6‘oSZi3SGGEE$$SEZ33:SS*°‘°°°°°\‘\'°‘°“""‘4‘4>‘*"*”""’""‘
`
`file:///CI/Documents%20and%20Settings/user/My%20Doc...-2008)/SDNY%20Hearing%20Transcript%20(9-3-2008).txt (1 of 10)9/24/2008 11:23:32 AM
`
`SPA-1
`
`

`
`file:///C|/Documents%20and%20Settings/user/My%20Documents/Patents/...udgment%20(3-14-2008)/SDNY%20Hearing%20Transcript%20(9-3-2008).txt
`Case: 12-1140 Document: 52
`Page:4
`O8I09!20:1.2
`687568
`33
`
`23
`
`24
`
`25
`
`SOUTHERN DISTRICT REPORTERS, P.C.
`(212) 805-0300
`
`893dbrom
`
`MOTION
`
`2
`
`1 2
`
`THE CLERK: In the matter of Brooklyn Bottling v.
`_
`3 Ecuabeverage, Incorporated.
`4
`Parties, please state your name for the record.
`5
`MR. JACOBSON: If it please the Court, my name is
`6
`Jeffrey Jacobson. I am a member of Jacobson & Colfin, P.C.,
`7 Attorneys for plaintiff, Brooklyn Bottling of Milton New York,
`8
`Incorporated.
`9
`MR. SCHINDLER: Good afternoon, your Honor. My name 5
`10
`is Edwin Schindler, attorney for the defendant, Ecuabeverage
`1 1 Corp.
`THE COURT: Be seated, gentlemen.
`12
`I apologize for having to go off the bench to respond
`13
`to a phone call.
`14
`Who is the principal of Brooklyn Bottling,
`15
`16 Mr. Jacobson?
`
`MR. JACOBSON: Mr. Eric Miller.
`17
`THE COURT: I've once had some dealings with
`18
`19 Mr. Miller. I had a client about 12/15 years ago whose name is
`20 David Tye, T-Y-E, and Mr. Tye and Mr. Miller had some
`21
`relationship of one sort or another and I met Mr. Miller in
`22
`that way.
`23
`I make this disclosure not because I think it affects
`24 my ability to be fair and impartial or otherwise constitutes a
`25
`ground for recusal but I wanted both counsel to know that.
`SOUTHERN DISTRICT REPORTERS, P.C.
`(212) 805-0300
`
`893dbrom
`
`3
`
`.
`
`1
`2
`
`3
`
`that.
`
`MOTION
`
`MR. JACOBSON: Thank you, your Honor. We appreciate
`
`MR. SCHINDLER: Thank you.
`
`SPA-2
`
`file:///C|/Documents%20and%20Settings/user/My%20Doc...-2008)/SDNY%20Hearing%20Transcript%20(9-3-2008).txt (2 of l0)9/24/2008 11:23:32 AM
`
`

`
`file2///C|/Documents%20and%2OSettings/user/My%20Documents/Patents/...udgment%2O(3-14-2008)/SDNY%20Hearing%20Transcript%20(9-3-2008).txt
`Case: 12-1140 Document: 52
`Page:5
`08/09/2012
`687568
`33
`THE COURT: All right. Let's proceed.
`MR. SCHINDLER: Good afternoon, your Honor. This is
`EcuabeVerage's motion for partial summary judgment of Counts
`One, Two and Six of Brooklyn Bott1ing's first amended
`complaint. We had hoped to get rid of this case by settlement
`but we were unsuccessful.
`
`BE>’$$33§$5§$5:S*°°°\‘°‘U'4>
`
`22
`23
`
`24
`
`25
`
`,_":g\ooo\1oxuu4>uaN»-~
`
`1-—tr-dr-an-—ALII-I>UJl\)
`
`We found out that —- or we found out that the Patent
`Office file records of both the application that led to the
`registration for which my client has been sued for federal
`trademark infringement as well as other applications that led .
`to registrations that are owned by Brooklyn Bottling that
`Brooklyn Bottling claimed no rights to the word "tropical," at
`least not in this country. Perhaps in Ecuador but not here.
`My client has been sued under Counts One, Two and Six
`of the amended complaint. Counts One and Two, we cite federal
`trademark infringement under 15 U.S.C. 1114 for alleged
`infringement of trademark registration number 1474395.
`My client is also being sued on Count Six --
`THE COURT: Let's stay with this.
`MR. SCHINDLER: OK.
`
`THE COURT: The trademark is not for the word
`
`"tropical" --
`SOUTHERN DISTRICT REPORTERS, P.C.
`(212) 805-0300
`
`893dbrom
`
`MOTION
`
`MR. SCHINDLER: No. The trademark --
`
`THE COURT: -- but for "Tropical Puro Sabor Nacional."
`V MR. SCHINDLER: That is correct. It is a word mark,
`it is not a design mark in any way, and it is not something for
`the word tropical, or tropical.
`THE COURT: So what is the problem?
`MR. SCHINDLER: My client does not use the composite
`term "Tropical Puro Sabor Nacional."
`I
`THE COURT: Yes, but it uses all those words in close
`conjunction with one another.
`.
`
`MR. SCHINDLER: My client does not use "Nacional" at
`
`all.
`
`THE COURT: It uses at least some of those words in
`close relationship with one another.
`MR. SCHINDLER: It uses tropical. It uses puro sabor.
`
`SPA-3
`
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`

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`file:///CI/Docun1ents%20and%2OSettings/user/My%20Documents/Patents/...udgment%20(3-14-2008)/SDNY%20Hearing%20Transcript%20(9-3-2008).txt
`Case: 12-3.140 Document: 52
`Page: 6
`08/09/2012
`687568
`33
`"Puro sabor" has been disclaimed as meaning "pure flavor" in
`16
`the claims in the registration. The plaintiff has conceded
`17
`that it has no rights to the word "tropical," and it has in
`18
`fact used tropical in a descriptive sense and has acknowledged
`19
`that tropical is a descriptive term by disclaimers in at least
`20
`two other applications.
`21
`THE COURT: Mr. Schindler, why isn't it a question of
`22
`fact how the overall impact of the words on your soda cans were
`23
`24 used in relationship to what the trademark protection is for
`25
`the plaintiff?
`’
`SOUTHERN DISTRICT REPORTERS, P.C.
`(212) 805-0300
`
`{7.’5‘=.’$B-“38x’B’65i:‘3GE$S’»L‘S*°°°\'°*"'4>“""*“
`
`893dbrom
`
`MOTION
`
`MR. SCHINDLER: Because the only words that my client
`uses that are in common are "Tropical Puro Sabor," and these
`are descriptive words. The words "Tropical Puro Sabor" are
`descriptive terms, descriptive elements.
`THE COURT: Tropical is descriptive of what?
`MR. SCHINDLER: It is descriptive of tropical flavor
`beverages.
`THE COURT: Why is it descriptive and not suggestive?
`MR. SCHINDLER: Well, the Patent Office --
`THE COURT: Tropical is descriptive of heat, something
`in the equator.
`MR. SCHINDLER: Well, the plaintiff in two
`trademark --
`
`THE COURT: Most of the equator.
`MR. SCHINDLER: Excuse me?
`
`THE COURT: Tropical is descriptive of an area, the
`tropics.
`MR. SCHINDLER: It could also be descriptive of more
`than one thing. It could be descriptive of a beverage flavor.
`THE COURT: Tropical?
`MR. SCHINDLER: Yes.
`
`THE COURT: What flavor is tropical? Ginger?
`MR. SCHINDLER: Ginger, some of the --
`THE COURT: Onion? Raspberry?
`MR. SCHINDLER: Not raspberry, probably.
`SOUTHERN DISTRICT REPORTERS, P.C.
`(212) 805-0300
`
`SP7-\-4
`
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`

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`file:///C1/Documents%20and%20Settings/user/My%20Documents/Patents/...udgment%20(3-14-2008)/SDNY%20Hearing%20Transcript%20(9-3-2008).txt
`Case: 12-1140 Document: 52
`Page:?
`G8/09i20:L2
`687568
`33
`
`o\Un4>.UJl\J>—
`
`7
`8
`9
`
`[\)[\.)[\)[\.)[\)[\.)r—a>--at-axr—r—-t>—r-tr-ar—t>—-A(II-l>L»Jl\J>—‘©\OOO\]O\Ul-l>!.»J[~)*-‘G
`
`893dbrom
`
`MOTION
`
`6
`
`THE COURT: Why not?
`MR. SCHINDLER: I guess it isn't.
`THE COURT: Cherry?
`MR. SCHINDLER:
`I don't think cherry is.
`THE COURT: Banana?
`
`9
`
`MR. SCHINDLER: I don't think there is an issue of
`fact here because I think the plaintiff has acknowledged that
`the Patent Office, in at least two other trademark
`applications, there was a trademark application that matured as
`registration 1899104, "Tropical Fantasy," and in that one
`Brooklyn Bottling entered a disclaimer, as required by the
`Trademark Trial and Appeal Board. And more recently, in 2007
`Brooklyn Bottling obtained a registration for the term
`"Tropical Fantasy TF Extreme Energy Drink."
`THE COURT: These are matters that you are going to
`inject into the record. You made a motion to dismiss, or you
`made a motion for summary judgment.
`MR. SCHINDLER: Summary judgment on the record.
`THE COURT: Before there has been discovery.
`MR. SCHINDLER: I put this in the record. This has
`been part of the Rule 56.1 statement, and none of the
`allegations have been challenged -- none of the alleged
`material facts have been challenged by Brooklyn Bottling.
`Brooklyn Bottling has indicated, for the same type of
`goods that the Patent Office would have required a disclaimer
`SOUTHERN DISTRICT REPORTERS, P.C.
`(212) 805-0300
`
`893 dbrom
`
`MOTION
`
`0O\]O\UI-bU)l\-)>-‘
`
`for the word "tropical" in connection with the word
`"beverages," Brooklyn Bottling on at least two occasions
`consented to putting into the disclaimer.
`In fact in one case, the Tropical Fantasy application,
`they rejected the requirement for disclaimer, and they lost
`before the Trademark Trial and Appeal Board when they were
`taking it up on appeal. Last year --
`THE COURT: What does that got to do with me?
`
`SPA-5
`
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`

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`file:///C1/Documents%20and%20Settings/user/My%20Documents/Patents/...udgment%20(3-14-2008)/SDNY%20Hearing%20Transcript%20(9-3-2008).txt
`Case: 12-1140
`aocument: 52
`Page: 8
`0810912012
`687568
`33
`MR. SCHINDLER: A disclaimer is required by the Patent
`9
`and Trademark Office when a term is either generic or
`10
`descriptive.
`11
`THE COURT: So what is descriptive? Tropical?
`12
`MR. SCHINDLER: Yes.
`13
`THE COURT: Is "tropical" descriptive of strawberry
`14
`flavored soda?
`15
`'
`MR. SCHINDLER: It is descriptive of various flavors.
`16
`In fact, the --
`17
`THE COURT: What is tropical about strawberries?
`18
`MR. SCHINDLER: Let melook in the record. In the
`19
`statement of Ecuabeverage's material fact, Exhibit 18 -- this
`20
`21 was issued 2007 -- the Patent Office required a disclaimer for
`22
`the word "tropical" in connection with "Tropical Fantasy TF
`23 Extreme Energy Drink." The disclaimer was required because
`24
`"tropical" is commonly used to describe beverage flavor. See
`25
`attachment materials from the Internet.
`
`SOUTHERN DISTRICT REPORTERS, P.C.
`(212) 805-0300
`
`893dbrom
`
`MOTION
`
`\DOO\lO'\UI-l>UJl\)I-d
`
`OK, those materials, which are part of the record,
`_
`they are -- Exhibit 18 of Ecuabeverage's statement of material
`facts, not in dispute, shows various tropical flavors such as
`mango, taro, orange cream side --
`THE COURT: Mr. Schindler, first of all, Vincent can't
`get your words and I can't hear your words.
`MR. SCHINDLER: I'm sorry. I'll try and speak more
`slowly.
`The record, Exhibit 18, of Ecuabeverage's statement of
`10 material facts that are not in dispute, includes an attachment
`11
`by the Patent Office that was issued --
`12
`THE COURT: By what office?
`13
`MR. SCHINDLER: The Patent and Trademark Office, that
`14 was issued to Brooklyn Bottling on February 23, 2007. In
`15
`there, the Patent Office had said that "tropical" is
`16
`descriptive of various kinds of beverages. Then an attachment
`17 was included which indicated that such flavors as mango, taro
`18 T-A-R-O, orange cream side, coconut, strawberries with cream,
`19 which I guess strawberries is, peaches with cream, and
`20 watermelon are examples of tropical flavors.
`
`SPA-6
`
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`Case: 12-1140 Document: 52
`Page: 9
`08109/2012
`687568
`33
`THE COURT: Idon't agree.
`21
`MR. SCHINDLER: Well, Brooklyn Bottling entered the
`22
`disclaimer that was required. So Brooklyn Bottling, as a
`23
`24 matter of record in the Patent Office, concurred with the
`25
`requirement for disclaimer that the term ‘was descriptive and
`SOUTHERN DISTRICT REPORTERS, P.C.
`(212) 805-0300
`
`893dbrom
`
`'
`
`MOTION
`
`:g\ooo\1oxu:.:>.L»t~2»—
`[\_)[\)[\)[\.)[\)>—r—-:-t>—»:-ar--\r—tr--a-l>UJl\)>--*O\OOO\lO\UI-l>UJl\J
`
`25
`
`therefore not protectable.
`THE COURT: What preclusive effect, if any, arises
`from such a statement by the Patent Office?
`MR. SCHINDLER: The Patent Office -- there is no
`preclusive effect deriving from the Patent Office, there is a
`conclusion arising from the fact that Brooklyn Bottling
`consented to it and they agreed that the word "tropical" --
`THE COURT: In order to get a trademark.
`MR. SCHINDLER: In order to get trademark
`registrations.
`THE COURT: They didn't agree, they just reformulated
`
`it.
`
`MR. SCHINDLER: They could have argued it. I am not
`even talking about the tropical --
`THE COURT: I can't decide that on a motion for
`summary judgment before there is discovery. There is a lot of
`factors that go into this, including, among other things, how
`your client developed its product and its trademark and its
`branding and its coloration and its products and I need to know
`all of that, and I will not cut short the proceedings because a
`motion is made before there is discovery.
`MR. SCHINDLER: I believe that that patent -- the
`admission or the consent to the disclaimer which Brooklyn
`Bottling could have objected to or fought --
`THE COURT: But they are not obligated.
`SOUTHERN DISTRICT REPORTERS, P.C.
`(212) 805-0300
`
`893dbrom
`
`MOTION
`
`1
`
`MR. SCHINDLER: Excuse me?
`
`10
`
`SPA-7
`
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`Case: 12-1140 Document: 52_
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`_O8iO9l2012
`687568
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`THE COURT: They are not obligated to fight it. They
`~
`can take the easy path, amend and get it through that way.
`MR. SCHINDLER:
`I am not talking about the original
`registration.
`I am talking about a registration more recent,
`one that was issued last year.
`THE COURT: Where do you see an admission?
`MR. SCHINDLER: I see it in Exhibit 19 of the
`
`statement of material facts that are not in dispute that were
`entered by Ecuabeverage.
`THE COURT: What does it say?
`MR. SCHINDLER: OK. There is disclaimer that says:
`"No claim is made for the exclusive right to use tropical and
`energy drink" --
`V
`THE COURT: That is not an admission. That is just a
`way of getting it through the Patent Office.
`MR. SCHINDLER: They could say anything and it doesn't
`matter.
`
`THE COURT: It is not an admission. They are not
`admitting that "tropical" is necessarily descriptive. They are
`just taking the path of least resistance to obtain a certain
`benefit that comes with the registration. That's what I see
`now. That is my holding at this particular point.
`MR. SCHINDLER: Even if that is true, you can't base a
`claim on a word that you disclaim.
`SOUTHERN DISTRICT REPORTERS, P.C.
`(212) 805-0300
`
`BB'c‘:’$$S3GE$S:S‘°°°\‘°‘”'4>‘*"°
`
`23
`24
`25
`
`893dbrom
`
`MOTION
`
`1 1
`
`THE COURT: I'm not in a position right now to define
`1
`exactly what area of protection comes in a Clayton trademark
`2
`registration and what doesn't. The trademark is for the phrase
`3
`"Tropical Puro Sabor Nacional." I see how it is used and I see
`4
`how the defendant has used it and we need discovery.
`5
`MR. SCHINDLER: My client doesn't use it.
`6
`THE COURT: All right. I don't want to get arguments,
`7
`8 Mr. Schindler. That is where I am.
`
`Anything further?
`9
`MR. SCHINDLER: No. Thank you, your Honor.
`10
`THE COURT: The motion is denied at least as to Claim
`11
`12 One, as to Count Two for derivative marks, and Count Three is
`13
`unfair competition -- I'm sorry, Count Three is not in suit.
`
`SPA-8
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`

`
`V
`
`yet?
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`Case: 12-1140 Document: 52
`Page: 3.1
`08lO9./203.2
`687568
`33
`14 Count Six is a third-party motion.
`15
`The motion is denied as to Counts One, Two and Six.
`16
`Have you had an initial case management conference
`17
`MR. JACOBSON: Yes, we had, your Honor. We had a
`18
`civil case management plan which is pretty moot at this point.
`19
`THE COURT: Which is what?
`20
`MR. JACOBSON: Pretty obsolete.
`21
`THE COURT: All right. So you want another one?
`22
`MR. JACOBSON: Yes, your Honor.
`23
`THE COURT: All right. Why don't you and
`24
`25 Mr. Schindler agree on a revised case management plan, and
`SOUTHERN DISTRICT REPORTERS, P.C.
`(212) 805-0300
`
`893dbrom
`
`MOTION
`
`12
`
`provide in it for a next status conference with me that would
`1
`be 30 days after close of discovery on a Friday at 9:30.
`2
`MR. JACOBSON: Thank you, your Honor.
`3
`THE COURT: Provide for a meeting between counsel two
`4
`5 weeks after the close of discovery. I will specify that it is
`6
`at plaintiffs office either in the morning or the afternoon
`7
`and must be for two hours face-to-face.
`
`MR. JACOBSON: Our meeting?
`THE COURT: Yes.
`
`All right. Anything else?
`MR. SCHINDLER: No. Thank you, your Honor.
`MR. JACOBSON: No, your Honor.
`THE COURT: Thank you.
`
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