throbber
Trademark Trial and Appeal Board Electronic Filing System. ntt,Q.'//”esn‘a.us,Qto.gov
`ESTTA Tracking number:
`ESTTA592476
`
`FIIIHQ datei
`
`03/14/2014
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Party
`
`Defendant
`South Hill Herbs Inc.
`
`Correspondence
`Address
`
`MARK A KOCH
`MARK A KOCH PROFESSIONAL CORPORATION
`583 MAIN STREET EAST,
`HAMILTON ONTARIO, L8M 1J4
`CANADA
`koch@Iawkoch.com
`
`Attachments
`
`Motion.pdt(1858864 bytes )
`Exhibit A.pdf(28195 bytes)
`Exhibit B — GENERAL FiIing.pdf(2663192 bytes)
`Exhibit C.pdt(44942O bytes )
`Exhibit D.pdf(13102 bytes)
`Exhibit E.pdf(92790 bytes)
`Exhibit F.pdt(257733 bytes )
`Exhibit G — Part 1.pdf(4322286 bytes )
`Exhibit G — Part 2.pdf(4488519 bytes)
`Exhibit G — Part 3.pdf(3971948 bytes)
`Exhibit H.pdt(1762453 bytes)
`Exhibit I.pdf(905095 bytes)
`Exhibit J.pdt(127934 bytes)
`Exhibit K.pdt(263811 bytes)
`
`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
`ESTTA592476
`ESTTA Tracking number:
`03/14/2014
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92056508
`Defendant
`South Hill Herbs Inc.
`MARK A KOCH
`MARK A KOCH PROFESSIONAL CORPORATION
`583 MAIN STREET EAST,
`HAMILTON ONTARIO, L8M 1J4
`CANADA
`koch@lawkoch.com
`Motion for Sanctions
`Mark A. Koch
`koch@lawkoch.com
`/makoch/
`03/14/2014
`Motion.pdf(1858864 bytes )
`Exhibit A.pdf(28195 bytes )
`Exhibit B - GENERAL Filing.pdf(2663192 bytes )
`Exhibit C.pdf(449420 bytes )
`Exhibit D.pdf(13102 bytes )
`Exhibit E.pdf(92790 bytes )
`Exhibit F.pdf(257733 bytes )
`Exhibit G - Part 1.pdf(4322286 bytes )
`Exhibit G - Part 2.pdf(4488519 bytes )
`Exhibit G - Part 3.pdf(3971948 bytes )
`Exhibit H.pdf(1762453 bytes )
`Exhibit I.pdf(905095 bytes )
`Exhibit J.pdf(127934 bytes )
`Exhibit K.pdf(263811 bytes )
`
`

`
`SOUTH HILL HERBS INC.
`
`
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`
`
`Registrant
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`v.
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`
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`JARRETT INC.
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`
`
`Petitioner
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`
`
`_________________________
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`)
`)
`)
`)
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`)
`)
`)
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`)
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`IN THE UNITED STATES PATENT
`AND TRADEMARK OFFICE
`
`TRADEMARK TRIAL AND APPEAL
`BOARD
`
`CANCELLATION NO. 92056508
`
`REGISTRATION NO. 4227018
`
`TRADEMARK: NUTRABEE
`
`
`
`REGISTRANT'S COMBINED MOTION FOR SANCTIONS AND MOTION FOR
`SUMMARY JUDGMENT
`
`Registrant South Hill Herbs Inc., by undersigned counsel, hereby brings this combined Motion
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`for Sanctions and Motion for Summary Judgment against Petitioner Jarrett, Inc. in response to
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`Petitioner's inability and/or refusal to produce responsive documents as directed by the Board in
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`its order dated January 3, 2014.
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`SUMMARY OF PROCEEDINGS HISTORY
`
`On November 29, 2012 Petitioner filed its Petition for Cancellation of the Registrant's mark.
`
`On December 24, 2012 Petitioner filed a Motion to Strike Pleadings which was primarily denied.
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`On March 6, 2013 Registrant served on Petitioner its initial disclosures and discovery requests.
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`On April 2, 2013 Petitioner requested an additional month to complete its responses. Registrant
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`granted Petitioner’s request, extending the deadline to May 11, 2013.
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`On May 13, 2013 Petitioner served its initial responses to Registrant's discovery requests.
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`On May 30, 2013 Registrant sent Petitioner a letter requesting the production of documents as
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`outlined in Petitioner's response of May 13, 2013 and requested said production on or before
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`June 10, 2013.
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`On June 2, 2013 Petitioner requested an additional 10 days to produce the documents due to
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`Petitioner's counsel having had recent surgery. Registrant granted the extension.
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`- 1 -
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`

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`On June 24, 2013 when Petitioner had not complied with Registrant's discovery requests,
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`Registrant sent Petitioner a letter offering an additional 20 days extension of time in return for
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`consent to an extension of time of 60 days to the discovery period. Registrant requested an
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`answer to its offer no later than June 26, 2013.
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`On June 26, 2013 Petitioner filed initial disclosures along with a Motion for Summary Judgment
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`which was entirely denied.
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`On October 25, 2013 Registrant brought a Motion to Compel Production of Documents.
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`Petitioner countered with a "Motion to Compel Suitable Protective Order and Complete
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`Responses to all Interrogatories and Production of Documents".
`
`On January 3, 2014 the Board granted Registrant's Motion and ordered Petitioner to produce its
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`responsive documents. Petitioner's Motions were both denied.
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`On February 3, 2014 Petitioner provided its documents which are mainly irrelevant and in our
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`opinion the invoices we received are apparent mock-ups.
`
`On February 25, 2014 Registrant requested Petitioner to provide further, relevant document
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`production and clarification regarding documents produced.
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`Petitioner responded on March 4, 2014 by indicating that there would be no further production of
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`documents, that the mocked up invoices submitted were provided in an appropriate format and
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`that it felt that the large volume of seemingly irrelevant documents were justified. (see details
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`below)
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`MOTION - SANCTIONS
`
`Upon request and in accordance with Rule 34 of the Federal Rules of Civil Procedure, parties
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`must produce documents that are proper and relevant to the issue at hand. See Luehrmann v.
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`Kwik Kopy Corp., 2 USPQ2d 1303, 1305 (TTAB 1987). A party failing to provide documents is
`therefore “subject to a motion to compel, and ultimately, a motion for discovery sanctions.”
`
`See Trademark Trial and Appeal Board Manual of Procedure (“TBMP”) § 401.02 (3rd ed. 2011).
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`- 2 -
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`

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`Registrant has made repeated good faith efforts throughout these proceedings but has been
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`continually balked by Petitioner's strong showing of willful evasion which eventually resulted in
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`Registrant filing its Motion to Compel Production of Documents on October 25, 2013, which
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`was granted by the Board on January 3, 2014.
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`On February 3, 2014 Petitioner forwarded its documents via email; and as agreed upon,
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`Registrant forwarded its documents to Petitioner via email.
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`Petitioner was made fully aware by the Board decision in this matter dated January 3, 2014
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`(footnote 2), that its numerous responses of "will produce relevant non privileged documents (if
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`any)" and "will produce relevant non privileged documents, to the extent that any can be located
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`after a reasonably diligent search" are improper because they indicate that Petitioner did not
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`conduct a search of its records prior to preparing and serving those responses [See No Fear Inc.
`
`v. Rule, 54 USPQ2d 1551, 1555 (TTAB 2000)]. Petitioner was also reminded that it had a duty
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`to correct and supplement its discovery responses in a timely manner in accordance with Fed. R.
`Civ. P. 37(c)(1). A copy of the Board's decision is attached hereto as Exhibit "A".
`
`Petitioner has not corrected or supplemented its discovery responses to date, despite having had
`
`an ample period of time (50 days) within which to do so.
`
`Petitioner forwarded a total of 825 numbered documents, the majority of which are irrelevant to
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`Registrant's document requests. See Declaration of Gina Cluett ("Cluett Decl."), attached hereto
`as Exhibit "B".
`
`Of the 825 forwarded documents, 504 pages were printouts of trademark registry pages taken
`
`from the USPTO Trademark Register website. (Cluett Decl. ¶8).
`
`TBMP § 408.02 states:
`
`In addition, the responding party has a duty “to select and produce the items requested
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`[and to avoid] simply dumping large quantities of unrequested materials onto the
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`discovering party along with the items actually sought under [Fed. R. Civ. P. 34].
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`Registrant submits that the 504 documents containing copies of USPTO trademark register pages
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`are irrelevant and not responsive to any of its requests for document production, and as such it
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`- 3 -
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`

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`can only be assumed that they were included for the sole purpose of being burdensome and
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`evasive.
`
`Petitioner further submitted 215 numbered pages containing what appear to be mock and
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`redacted invoices (Cluett Decl., ¶10-¶17). Registrant believes that the invoices produced by the
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`Petitioner are simply mock ups as the majority lack the most basic information required by
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`generally accepted accounting procedures such as:
`
`a) invoice number;
`b) customer address, telephone number, fax number - contact information;
`c) shipping information - address, telephone number, contact person;
`d) shipping terms such as method and cost of delivery, shipping date/shipped date;
`e) payment terms.
`
`Registrant also notes that each of the documents purporting to be invoices has been identified as
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`CONFIDENTIAL & TRADE SECRET COMMERCIALLY SENSITIVE, despite the fact that
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`they appear to be mostly redacted and contain, in our opinion, not even 'Confidential'
`
`information, let alone 'Trade Secrets'. Registrant believes that these documents have been
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`improperly designated based on the definition of a "Trade Secret" as defined by the Uniform
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`Trade Secrets Act:
`
`(d) "Trade secret" means information, including a formula, pattern, compilation, program,
`device, method, technique, or process, that:
`1) Derives independent economic value, actual or potential, from not being generally
`known to the public or to other persons who can obtain economic value from its
`disclosure or use; and
`2) Is the subject of efforts that are reasonable under the circumstances to maintain its
`secrecy.
`
`
`
`Blackhorse v. Pro-Football Inc., 98 USPQ2d 1633, 1635 (TTAB 2011), stands for the
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`proposition that parties must refrain from improperly designating evidence or a show of cause
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`order may issue.
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`Furthermore, according to the electronic document properties, these documents were generated
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`by way of a Microsoft Excel software application (Cluett Decl. ¶15).
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`- 4 -
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`

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`FRCP Rule 34(b)(2)(E) states:
`(i)
`
`A party must produce documents as they are kept in the usual course of business or
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`must organize and label them to correspond to the categories in the request;
`
`(ii)
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`If a request does not specify a form for producing electronically stored information, a
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`party must produce it in a form or forms in which it is ordinarily maintained or in a
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`reasonably usable form or forms;
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`Registrant submits that 215 pages of mocked up documents apparently extracted from an
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`electronic database is not in compliance with the requirement that documents be produced as
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`they are kept in usual course of business or ordinarily maintained, nor are they in a reasonably
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`usable form. Registrant submits that a copy of the electronic database may have been a proper
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`submission if said database is Petitioners sole form of record keeping with respect to sales.
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`Registrant has no way of ascertaining the veracity and/or relevance of the information as
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`provided in its current form.
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`UNRESPONSIVE DOCUMENT DISCLOSURE
`
`Petitioner has not provided any documents or information with respect to its sales or advertising
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`figures as requested in Registrant's Document Requests Nos. 1, 2, 8, 9, 10, 27 and 29 (Cluett
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`Decl. Exhibit 3). This is properly discoverable subject matter in accordance with the TBMP §414
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`(18) and supported by the decision in American Optical Corp. v. Exomet Inc., 181 USPQ 120,
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`123 (TTAB 1974).
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`Petitioner has not provided any documents or information with respect to its actual, intended or
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`right to the use of the mark as requested in Registrant's Document Requests Nos. 1, 2, 4, 5, 6, 7,
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`11, 16, 19, 20, 25, and 27 (Cluett Decl. Exhibit 3). Evidence as to past, present and planned
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`future use of the mark is proper subject matter for discovery as set out in TBMP §414 (3), (4),
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`(5), (6), (8) and (9).
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`Petitioner has also not provided any documents or information responsive to Registrant's
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`Interrogatories Nos. 4, 8, 9, 10, 11, 15, 16, 17 and 20 (Cluett Decl. Exhibit 2), all of which
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`concern the development and actual use of Petitioner's NUTRA-BEE trademark.
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`- 5 -
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`Through the use of the various disclosures (i.e., initial and expert) and discovery devices (i.e.,
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`discovery depositions, interrogatories, requests for production of documents and things, and
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`requests for admission) available to litigants in inter partes proceedings before the Board, a party
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`may ascertain the facts underlying its adversary's case. Discovery of these facts may lead to a
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`settlement of the case, may simplify the issues, or may reveal a basis for a motion for summary
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`judgment, an additional claim (in the case of a plaintiff), or an additional defense or counterclaim
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`(in the case of a defendant). At the very least, taking discovery enables the propounding party to
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`propose to the responding party stipulations of fact, stipulations as to procedures for introducing
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`into the record evidence produced in response to discovery requests, and to otherwise prepare for
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`trial. [TBMP § 401].
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`Petitioner has not provided the information, properly requested by the Registrant in its discovery
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`requests, which is necessary for Registrant to assess Petitioner's claims that a) it has priority of
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`use, or b) that Registrant's mark is confusing with Petitioner's mark, and to prepare for trial on
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`the basis of those claims.
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`In keeping with the duty to make good faith efforts, on February 24, 2014, Registrant sent a letter
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`to Petitioner making known that a) the documents sent contained very little responsive material,
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`b) inquiring as to whether any further documents would be forthcoming, c) seeking clarification
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`as to the relevance of documents received and d) in light of the upcoming April 1, 2014 close of
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`the discovery period, requesting that Petitioner provide a response no later than March 4, 2014.
`A copy of the letter is attached as Exhibit "C".
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`Petitioner responded to Registrant's letter via email on March 4, 2014 by indicating that,
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`"Petitioner is only required to submit documents to the extent that they exist, and/or are
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`discoverable after a reasonable and diligent search. Petitioner is not required by the FRCP or
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`otherwise, to create or invent documents responsive to your requests." Registrant must infer from
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`this response that Petitioner has no further documents to provide in response to Registrant's
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`document requests. Petitioner also responded that the 215 pages of documents designated as
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`'Trade Secret', redacted and purporting to be invoices were in fact extracted from an electronic
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`database and that the conversion to electronic form was in compliance with Rule 34 as Petitioner
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`felt that the converted format was a 'reasonably usable form'. Finally, Petitioner responded to our
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`inquiry regarding the relevance of the 504 pages of Trademark Register printouts by stating that,
`"they are relevant in that they are a sampling (emphasis added) of registrants who cover both
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`goods for animal and human consumption, demonstrating the natural expansion for a supplier of
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`animal feed to food for human consumption. As such, they are relevant to this proceeding".
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`Registrant submits that while Petitioner may believe that these documents are relevant to these
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`proceedings, they are neither relevant nor responsive to Registrant's document requests. A copy
`of Petitioner's email of March 4, 2014 is attached hereto as Exhibit "D".
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`Petitioner's failure to comply with the Board's order is unacceptable and in keeping with its
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`established pattern of willful evasion. In view thereof, Registrant requests that its Motion for
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`Sanctions be granted and that the Board enter sanctions as it deems appropriate and as defined
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`under TBMP Rule 527.01(a):
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`If a party fails to comply with an order of the Board relating to discovery, including a
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`protective order or an order compelling discover, the Board may enter appropriate
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`sanctions, as defined in 37 CFR § 2.120(g)(1)…
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`The sanctions which may be entered by the board include, inter alia, striking all or
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`part of the pleadings of the disobedient party; refusing to allow the disobedient
`party to support or oppose designated claims or defenses; prohibiting the
`disobedient party from introducing designated matters in evidence; and entering
`judgment against the disobedient party. (Emphasis added).
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`Registrant submits that Petitioner's actions show a grave lack of respect for the proceedings
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`which it has initiated and further requests that the Board consider entering judgment in favour of
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`Registrant in order to bring these proceedings to a conclusion in the interest of justice.
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`MOTION - SUMMARY JUDGMENT
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`Summary judgment is appropriate where the movant shows that there is no genuine dispute as to
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`any material fact and that it is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(a). A
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`party asserting that a fact cannot be or is genuinely disputed must support its assertion by either
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`1) citing to particular parts of materials in the record, or 2) showing that the materials cited do
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`not establish the absence or presence of a genuine dispute, or that an adverse party cannot
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`produce admissible evidence to support the fact. Fed. R. Civ. P. 56(c).
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`Undisputed Material Facts
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`Registrant will demonstrate that the following material facts are undisputed and provide the basis
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`for this motion:
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`1. Registrant has established priority of use of its NUTRABEE trademark.
`2. Petitioner has not established any actual use of its NUTRA-BEE trademark.
`3. There is no likelihood of confusion between the marks.
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`1. PRIORITY
`
`
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`Petitioner pled in its Petition to Cancel, attached hereto as Exhibit "E", at ¶1 that its date of first
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`use of the NUTRA-BEE mark is as early as August 10, 2009. In its Response to Registrant's
`Interrogatories Petitioner stated, “Jarrett further responds that its first sale was July 20,
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`2009” (Cluett Decl. Exhibit 4, ¶10-11).
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`In reply to Registrant's document requests, Petitioner submitted copies of what appear to be
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`mocked up and redacted invoices extracted from an electronic database, with earliest dates of
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`January 21, 2009, February 22, 2009, July 20, 2009, August 25, 2009 and October of 2009,
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`somewhat consistent with Petitioners pleadings and Interrogatory responses (Cluett Decl., ¶16).
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`However, the very last document submitted by Petitioner, no. 825, sent on its own and in a
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`separate email, was a document purporting to be an invoice dated December 1, 2007 with no
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`customer address, no shipping address and no invoice number (Cluett Decl. ¶17).
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`Not only does the date on this invoice contradict all of the previous dates provided by Petitioner
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`in its Pleadings, Interrogatory responses and the Declaration of Keith Jarrett, attached hereto as
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`Exhibit "K", submitted in support of Petitioner's Motion for Summary Judgment filed on June
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`26, 2013 (¶2, ¶6, ¶9, ¶10, ¶11), there is no way of determining the destination of the goods or
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`how the goods purportedly sold on December 1, 2007 were marked. Registrant submits that
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`Petitioner has compromised Registrant's ability to determine the veracity of these documents. In
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`fact, as discussed below, we have no evidence of use whatsoever provided by Petitioner.
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`By introducing these unexplained documents, it would appear that Petitioner is alleging an
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`earlier date of first use than that which has been pled, namely August 10, 2009, or even stated,
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`namely July 20, 2009. If indeed this is the case, Petitioner clearly should have amended its
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`pleadings accordingly. In addition to amending it pleadings, Petitioner had a duty to amend its
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`discovery responses. Petitioner has had both the opportunity and an adequate amount of time to
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`do both, but has failed to do so.
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`Further, according to Petitioner's letter of March 4, 2014 (Exhibit D), "…these invoices are kept
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`by Petitioner in electronic form…". Clearly the information has been available from the outset of
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`these proceedings in electronic form and not filed away on a piece of paper in an inaccessible
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`storage box and/or facility. Petitioner has failed in its duty to be diligent as it did not conduct a
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`search of its records prior to preparing and serving its responses [See No Fear Inc. v. Rule, 54
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`USPQ2d 1551, 1555 (TTAB 2000)].
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`Registrant submits that if its supposition regarding the possible alleging of a new and different
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`date of first use is accurate, since Petitioner has not fulfilled its duty to amend despite having
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`ample opportunity to do so, it should now be precluded from doing so.
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`From the outset of these proceedings, Registrant has consistently asserted and provided evidence
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`to the effect that the actual date of first use of its NUTRABEE mark in United States commerce
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`is April 29, 2008. See Registrant's Answer to Petition for Cancellation ("Registrant's Answer")
`¶4, attached hereto as Exhibit "F". Exhibit A to Registrant's Answer is a copy of the invoice
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`evidencing its first United States sale to a customer located in St. Louis, Missouri. See also
`Declaration of Emina Basic ("Basic Decl.", ¶17) attached hereto as Exhibit "G". The product
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`label used at that time is also shown in the accompanying Exhibit E to the Basic Decl. Further,
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`additional samples of Registrant's invoices for sales made to United States customers in the year
`2008 are attached hereto as Exhibit "H".
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`Registrant has established that its ongoing use in commerce in the United States commenced on
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`April 29, 2008, at least one year and three months prior to the Petitioner's earliest heretofore
`stated date of first use, namely July 20, 2009.
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`Therefore Registrant has established priority of use of its NUTRABEE trademark.
`
`
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`2. ACTUAL USE
`
`Petitioner had a duty to correct and supplement its responses to Registrant's discovery requests,
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`as it was reminded in the Board's decision of January 3, 2014 (Exhibit A, page 2, footnote 2), but
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`it did not. Rather, Petitioner has failed to provide any responsive information and it has not
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`provided a single piece of documentary evidence that shows any actual use of the NUTRA-BEE
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`trademark.
`
`Petitioner did not provide any labels, photographs of the goods and/or their packaging showing
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`the mark, any advertising or promotional materials, nor did it provide at the very least a copy of
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`an original invoice(s) or receipt which may clearly establish the date of the first sale of its goods
`
`in association with the mark as related to Registrant's First Set of Interrogatories (Cluett Decl.
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`Exhibit 2, ¶4, ¶9, ¶10, ¶11, ¶15 and ¶16) and Registrant's First Set of Requests for Production of
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`Documents and Things (Cluett Decl. Exhibit 3, ¶1, ¶2, ¶7, ¶8, ¶9, ¶10, ¶11, ¶15, ¶16, ¶19, ¶20,
`
`¶24, ¶26 and ¶29). All of these Interrogatories and Document Requests are directed at obtaining
`
`evidence of use. The only production of anything that could possibly be used as or considered to
`
`be a label is an image provided in document #000094, titled "Patty Feed Logo" shown below and
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`attached hereto as Exhibit "I".
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`- 10 -
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`
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`It is of import to note that the image shown above was obtained by the use of rather indirect
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`'screen shot' methods. Unfortunately, Registrant found that upon selecting and copying the image
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`directly from the original .pdf document provided by Petitioner the resulting image altered to the
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`image shown below. In our opinion the words “NUTRA-BEE” were electronically pasted on top
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`of “UTAH BEEHIVE STATE L.L.C.”.
`
`
`Additionally it is not possible to determine any associated product or conclude that the image
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`provided is in fact a product label.
`
`The only information concerning the Petitioner's goods that Registrant was able to locate and
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`which provided a visual representation of the goods were Petitioner’s two online 'how to'
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`YouTube videos which show a bee feeding supplement product in large plastic tubs. However,
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`there are no product labels visible on the goods, nor is there any visible display whatsoever of the
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`trademark in association with the goods in either of these videos (Exhibit G, ¶20(a)).
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`- 11 -
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`

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`Further, based on Petitioner's response to Registrant's letter of February 25, 2014 (Exhibit D),
`
`Petitioner does not have any further documentary evidence to substantiate its alleged use of the
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`mark. Registrant submits that Petitioner has the burden to prove its case and has not produced
`
`any credible evidence of the use of its trademark in response to Registrant’s 6 Interrogatories and
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`14 Document Requests directed toward trademark use.
`
`Registrant submits that if there is no actual demonstrated use of Petitioner's mark in association
`
`with the goods, then it follows that there can be no confusion between Petitioner's mark and
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`Registrant's mark (which is clearly in use; Exhibit G)
`
`Petitioner has not established any actual use of its NUTRA-BEE trademark.
`
`
`
`3. CONFUSION
`
`In determining whether a likelihood of confusion exists sufficient to prevent registration, the
`
`Board considers the relevant factors set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d
`
`1357, 1361 (C.C.P.A. 1973), specifically:
`
` (1)
`
`(2)
`
`(3)
`(4)
`
`(5)
`(6)
`(7)
`(8)
`
`(9)
`
`The similarity or dissimilarity of the marks in their entireties as to appearance,
`sound, connotation and commercial impression.
`The similarity or dissimilarity and nature of the goods or services as described in an
`application or registration or in connection with which a prior mark is in use.
`The similarity or dissimilarity of established, likely-to-continue trade channels.
`The conditions under which and buyers to whom sales are made, i.e. “impulse” vs.
`careful, sophisticated purchasing.
`The fame of the prior mark (sales, advertising, length of use).
`The number and nature of similar marks in use on similar goods.
`The nature and extent of any actual confusion.
`The length of time during and conditions under which there has been concurrent use
`without evidence of actual confusion.
`The variety of goods on which a mark is or is not used (house mark, “family” mark,
`product mark).
`The market interface between applicant and the owner of a prior mark […].
`The extent to which applicant has a right to exclude others from use of its mark on
`its goods.
`The extent of potential confusion, i.e., whether de minimis or substantial.
`(12)
`(13) Any other established fact probative of the effect of use.
`
`(10)
`(11)
`
`- 12 -
`
`

`
`Id. at 1361. While no precise formula for determining confusion exists, courts have held that
`
`even a single factor may tip the scales in favor of finding no likelihood of confusion. See
`
`Champagne Louis Roederer, S.A. v. Delicato Vineyards, 148 F.3d 1373, 1375 (Fed. Cir. 1998).
`
`1. Respective Commercial Impressions Created by the Marks
`
`Petitioner's mark is NUTRA-BEE and is registered for use in association with a protein feed
`
`supplement for honey bees. When viewed in association with the goods, the mark conveys the
`
`commercial impression of a product that provides nutrients and therefore supports the life of a
`
`honey bee.
`
`In contrast, Registrant's mark is NUTRABEE and is registered for use in association with honey
`
`and honey infused with herbs and/or bee pollen. When viewed in association with the goods, the
`
`mark conveys the impression of nutrient rich product which has been derived from a honey bee
`
`for human consumption.
`
`The respective commercial impressions are distinct and different - one clearly denotes a product
`
`that feeds a bee, an obvious aspect of animal husbandry; the other product is a food for humans.
`
`2. Goods Are Not the Same, Nor Are They Sufficiently Related
`
`Petitioner's mark for NUTRA-BEE is a class 005 mark for use in association with a "protein feed
`
`supplement for honeybees".
`
`Registrant's mark for NUTRABEE is a class 030 mark for use in association with "honey;
`
`processed herbs, namely, honey comprised of honey and herbs and honey comprised of honey
`
`and bee pollen".
`
`The only similarity between Petitioner's protein feed supplement for honeybees and Registrant's
`
`honey is that they are associated with bees.
`
`Petitioner has admitted that its protein feed supplement for honeybees is a fatty acid supplement
`
`in the form of pre-mixed, ready to use paste; is for beehive use; is not intended for human
`
`- 13 -
`
`

`
`consumption; and is intended for the nourishment of and consumption by honeybees. (Cluett
`
`Decl. Exhibit 4, ¶2, ¶3, ¶4, and ¶6).
`
`In contrast Registrant's goods are simply honey as a food product which is intended for human
`
`consumption.
`
`Therefore the goods at issue are neither similar nor related in regard to leading consumers to
`
`mistake that they originate from the same source. This is also supported by the fact that the
`
`marks are registered in two different classes, Petitioner's in class 005 and Registrant's in class
`
`030.
`
`3. The Marks Have Different Channels of Distribution
`
`Petitioner's goods and Registrant's goods do not share the same channels of distribution.
`
`Only beekeepers would be interested in buying Petitioner's goods. Beekeepers would neither
`
`look for nor expect to find a protein feed supplement for honeybees in a retail store, grocery store
`
`or health food store which sells honey.
`
`Petitioner does not maintain an internet presence nor does it offer its goods for sale through an
`
`internet-based website. In contrast, Registrant has been operating a website for the sale of its
`
`goods since at least 2005.
`
`Petitioner states: Jarrett’s distribution channels may be through word of mouth, Beehive State
`
`LLC, Thomas Hopkins and may include other channels in Fresno-California, Willows-
`
`California, and Turtle Lake-North Dakota .(Cluett Decl. Exhibit 4, ¶12).
`
`Petitioner states in a blog found at www.beesource.com dated Dec, 12, 2011 the following (See
`
`the attached Exhibit "J", page 2, 06:32pm):
`
`“Well, to this date we have never taken out ads let alone full page ads to sell our product. We
`
`feel that the product will sell itself. The beekeeping world is a small world, word of mouth has
`
`been very good to us.”
`
`
`
`- 14 -
`
`

`
`The differences in the channels of trade are clear:
`
`• Petitioner sells to beekeepers through selective and specialized word of mouth
`channels.
`
`• Petitioner does not sell protein feed supplement for honeybees for human
`consumption.
`
`• Petitioner does not maintain a web site for the sale of its product.
`
`• Petitioner has “never taken out ads” and relies mainly on word of mouth for sales.
`
`• Petitioner has stated that “the beekeeping world is a small world”. This would
`indicate that Petitioner sells to a very small and highly specialized and sophisticated
`
`group of potential purchasers.
`
`Whereas,
`
`• Registrant sells to retail outlets selling food for human consumption.
`
`• Registrant has maintained a website for the promotion and sale of its products directly
`to the consumer for human consumption since at least 2005. (Exhibit G, ¶6-9).
`
`Concluding that the channels of trade are the same would be the same as concluding that cattle
`
`feed is sold through the same channels as the milk produced by cattle. The channels of trade are
`
`completely different because the end consumer is completely different.
`
`4. Purchasers Sophistication and Potential Impulse Purchase
`
`This factor “recognizes that the likelihood of confusion between the products at issue depends in
`
`part on the sophistication of the relevant purchasers.” Arrow Fastener Co., Inc. v. Stanley Works,
`
`59 F.3d 384, 399 (2d Cir. 1995). Due to the nature of the parties’ goods, the end users of the
`
`goods, and the sophistication of the purchasers of the goods, Registrant submits that consumers
`
`are unlikely to be confused as to the source of the respective goods.
`
`- 15 -
`
`

`
`Firstly, purchasers of honey make “impulse” purchases. Registrant's honey products sell for
`
`anywhere from $5 to $30 dollars (Exhibit G, ¶16). This is a price range in which impulse buying
`
`is prevalent.
`
`Beekeepers, which are purchasers of Petitioner's protein feed supplement for honeybees would
`
`be very careful with this kind of purchase due to the specialized nature of a protein feed
`
`supplement and the potential effect on their livelihood. A beekeeper would likely be very careful
`
`in his or her purchase.
`
`Consumers of expensive goods are presumed to make more careful, sophisticated purchase
`
`decisions than consumers of inexpensive “impulse” goods. See In re General Motors
`
`Corporation, 23 U.S.P.Q.2D (BNA) 1465 *9 (“in view of the substantial cost of a new
`
`automobile, the consumer typically makes a purchasing decision based on style, performa

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