Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA899670
`
`Filing date:
`
`05/30/2018
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`92057832
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Plaintiff
`Hackensack University Medical Center
`
`IRA HAMMER
`SCHENCK PRICE SMITH & KING LLP
`220 PARK AVE, PO BOX 991
`FLORHAM PARK, NJ 07932
`UNITED STATES
`Email: IJH@spsk.com
`
`Response to Board Order/Inquiry
`
`Ira Hammer
`
`IJH@spsk.com
`
`/Ira Hammer/
`
`05/30/2018
`
`Attachments
`
`Letter and attachments for TTAB.pdf(2325645 bytes )
`
`
`
`ESTTA Tracking number:
`
`ESTTA899670
`
`Filing date:
`
`05/30/2018
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`92057832
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Plaintiff
`Hackensack University Medical Center
`
`IRA HAMMER
`SCHENCK PRICE SMITH & KING LLP
`220 PARK AVE, PO BOX 991
`FLORHAM PARK, NJ 07932
`UNITED STATES
`Email: IJH@spsk.com
`
`Response to Board Order/Inquiry
`
`Ira Hammer
`
`IJH@spsk.com
`
`/Ira Hammer/
`
`05/30/2018
`
`Attachments
`
`Letter and attachments for TTAB.pdf(2325645 bytes )
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`HACKENSACK UNIVERSITY MEDICAL
`
`
`
`CENTER
`
`Petitioner
`
`In the Matter of Registration No. 3,766,773
`Date of Issue: March 30, 2010
`Mark: Beyond Organic
`
`Cancellation No. 92057832
`
`
`
`
`
`
`BEYOND ORGANIC SPA, INC.
`
` Registrant
`
`
`RESPONSE TO TTAB ORDER TO SHOW CAUSE
`
`By order dated May 4, 2018, the TTAB has advised Petitioner that it has failed to
`
`file its main brief and has asked whether it was Petitioner's intention to abandon the
`
`case. The failure to file a brief was not intentional and occurred because dates were not
`
`properly put on the calender, which was not the client's mistake. Having said that, we
`
`believe the combination of the Trial Court and Appellate Division opinions in the New
`
`Jersey State Court action are dispositive of the underlying issues in this cancellation
`
`proceeding, and request leave to file the attached motion. There is no need to reset the
`
`calendar to allow for discovery orthe filing of a main brief.
`
`It is not Petitioner’s intention
`
`to retry this matter.
`
`[01940771:1,IIJH I
`
`
`
`Thank you for your consideration of our request.
`
`llra Hammer]
`
`Ira J. Hammer
`
`Schenck Price, Smith & King, LLP
`220 Park Avenue, PO Box 991
`Florham Park, New Jersey 07932
`973-539-1000
`
`Counsel for Petitioner
`
`Hackensack University Medical Center
`
`{01940771;1JUH )
`
`
`
`CERTIFICATE OF SERVICE
`
`i hereby certify that a true and correct copy of the foregoing Response to TTAB
`
`Order to Show Cause was served on Beyond Organic Spa, Inc. (808!) on May 30,
`
`2018 via first class mail to:
`
`Mr. Kamel Terki
`
`Beyond Organic Spa, Inc.
`260 Old River Road
`
`Edgewater, New Jersey 07020
`
`lira Hammer}
`
`Ira J. Hammer
`
`Counsel for Petitioner
`
`Hackensack University Medical Center
`
`CERTIFICATE OF TRANSMISSION
`
`I hereby certify that a true copy of the foregoing Response to 'ITAB Order to
`
`Show Cause is being filed electronically with the TTAB via ESSTA on this day, May 30,
`
`2018.
`
`llra Hammer!
`
`Ira J. Hammer
`
`Counsel for Petitioner
`
`Hackensack University Medical Center
`
`(01940771;1}|JH}
`
`
`
`\lN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Registration No. 3,766,773
`Date of Issue: March 30, 2010
`Mark: Beyond Organic
`
`Cancellation No. 92057832
`
`HACKENSACK UNIVERSITY MEDICAL
`CENTER
`
`
`
`
`
`
`Petitioner
`
`
`
`
`BEYOND ORGANIC SPA, INC.
`
`Registrant
`
`PETITIONER’S' MOTION FOR
`
`SUMMARY JUDGMENT
`
`Petitioner Hackensack University Medical Center ("HackensackUMC") hereby
`
`moves for summaryjudgment cancelling U.S. Registration 3,766,773 owned by Beyond
`
`Organic Spa, Inc. (“Registrant" or "BOSI”)) based on the decision of the New Jersey
`
`Superior Court enjoining the use of the word Beyond for spa services by Registrant. As
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`the issues in this cancellation proceeding regarding the parties’ respective rights to use
`
`Beyond for spa services were fully litigated before the New Jersey Superior Court,
`
`Registrant is barred by the doctrines of res judicata and issue preclusion from re-
`
`litigating them here.
`
`(o1941sas;1/|JH 11
`
`
`
`Background
`
`I.
`
`Procedural Histoyy
`
`This is a cancellation proceeding brought by Hackensack University Medical
`
`Center with respect to registration number 3,766,773 (the “Registration"). The
`proceeding arises out of the registration by Registrant of the mark Beyond Organic (and
`
`design) for spa services in 2008, eight years after HackensackUMC had adopted
`
`Beyond for its spa services and registered its "Beyond" mark with the State of New
`
`Jersey, where both Hackensack and Registrant are located.
`
`Prior to the filing of this cancellation action, HackensackUMC sued BOSI for
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`trademark infringement in the Superior Court of the State of New Jersey (Hackensack
`
`University Medical Center v. Beyond Organic Spa, Inc, Trial Court Docket BER-L—4381-
`
`11.) Shortly after this cancellation proceeding was filed, a bench trial was conducted in
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`October, 2013 and the trial court (Honorable Robert C. Wilson) issued findings of fact
`
`and a decision in which it found that HackensackUMC had a valid and protectable
`
`r
`
`trademark in Beyond which was infringed by BOSI. The trial court enjoined BOSI from
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`using “Beyond” in connection with its spa services. A copy of the trial court’s opinion
`
`including its findings of fact and decision are attached to the Declaration of Ira Hammer
`
`as Exhibit 1 ("Tr. Ct. 09.), and a copy of the injunction order enjoining BOSI from using
`
`Beyond for spa services is attached as Exhibit 2.
`
`808! appealed the trial court’s decision to the Appellate Division (Hackensack
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`University Medical Center v. Beyond Organic Spa, inc, New Jersey Superior Court
`
`App. Div. A—001978-13T3). The Appellate Division unanimously ruled against BOSI and
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`upheld the trial court’s injunction in an opinion dated September 4, 2015. A copy of the
`
`(0194133551 IIJH )2
`
`
`
`Appellate Division's opinion is attached to the Declaration of Ira Hammer as Exhibit 3
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`(“App Div. Op.”). Registrant then sought reconsideration by the Appellate Division
`
`which was returned by the Clerk of the Superior Court under cover of a letter dated
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`September 15, 2015, because it was not filed in accordance with the court rules. (See
`
`Declaration of Ira Hammer, Exhibit 4).
`
`Registrant then filed a Petition for Certification seeking review of the Appellate
`
`Division decision by the New Jersey Supreme Court. By order filed on January 29,
`
`2016, the New Jersey Supreme Court denied the Petition for Certification. (See
`Declaration of Ira Hammer, Exhibit 5). That decision is now final and there is no further
`
`right of appeal.
`
`ll.
`
`Factual Record
`
`The trial court found that HackensackUMC had owned and operated a spa in
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`Hackesack named BEYOND since 2000 and that it had registered its mark with the
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`State of New Jersey in August, 2000. BEYOND provided a full range of spa services
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`including facials, massages, body treatments, manicures, pedicures and related goods.
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`BEYOND also offered medical spa services by cross-marketing with other departments
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`withinin HackensackUMC-such as the Center for Cosmetic Surgery. App Div. Op. at 2;
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`Tr. Ct Op. at 1-2. Hackensack spent approximately $1.4 million dollars between 2001
`
`and 2010 to develop the BEYOND mark and aggressively marketed BEYOND in the tri-
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`state area. App Div. Op. at 3;p Tr. Ct. Op. at 1-2. HackensackUMC advertised its
`
`services in nationwide magazines such as Vogue, Lucky, Allure, New Jersey Bride and
`
`the New York Times.
`
`It also marketed through local newspapers. App. Div. Op. at 3.
`
`(o1941345;1/I1Hl3
`
`
`
`BOSI was formed by Kamel Terki and his wife and operated a day spa under the
`
`name Beyond Organic. BOSI provided services that were substantially similar to those
`
`provided by BEYOND. App. Div Op.; at 3; Tr. Ct. Op. at 2. Mr. Terki claimed that he
`
`searched the availability of the name Beyond Organic and that no conflicts were found.
`
`App Div. 0p. at 4; Tr. Ct. Op. at 2. BOSI registered its mark in the United States Patent
`
`and Trademark Office. Between 2008 and 2011, BOSI advertised on the internet and
`
`through facebook. Beginning in 2011, it started a Groupon advertising campaign. See
`
`App. Div. Op. at 4; Tr. Ct. Op. at 2—3. Starting shortly after the beginning ofthat
`
`Groupon campaign, HackensackUMC had BEYOND customers coming to the spa and
`
`presenting BOSI’s Groupon coupon in the mistaken belief that the coupon had been
`
`offered by BEYOND. The confusion was continuous and snowballed. See App. Div.
`
`Op. at 5-6; Tr. Ct. Op. at 3-4.
`
`Hackensack sent cease and desist letters to BOSI which were ignored, and then
`
`filed a verified complaint against BOSI in New Jersey Superior Court in May, 2011.
`
`Add. Div. Op. at 6; Tr. Ct. Op. at 4. At trial, Mr. Terki testified that he was unaware of
`
`HackensackUMC’s Beyond spa until he received the cease and desist letters. The Trial
`
`Court found that testimony to not be credible and further found that Mr. Terki intended to
`
`trade off the good will and reputation that HackensackUMC had in its Beyond mark. Tr.
`
`Ct. Op. at 4. See also App. Div. Op. at 7.
`
`The Trial Court found that HackensackUMC's mark was valid and legally
`
`protectable, that HackensackUMC’s use of the word BEYOND fell within the class of
`
`arbitrary or fanciful trademarks and that even without registration, HackensackUMC was
`
`entitled to protection as the senior user of the mark because HackensackUMC had
`
`(01941345,;1 [UH )4
`
`
`
`penetrated the marketplace first. App Div. Op. 7-8; Trial Court at 6. The trial court
`
`found that there was a high likelihood of confusion as evidenced by the incidents of
`
`actual confusion and that BOSI had attempted to hijack HackensackUMC's BEYOND
`
`mark. App. Div. Op. at 8; Tr. Ct. Op. at 9-11, 4. .
`
`BOSI challenged those determinations before the Appellate Division and its
`
`appeals were unanimously rejected. The Appellate Division found that there was
`
`substantial evidence in the record to support the finding that:
`
`HackensackUMC’s use of the mark BEYOND was arbitrary and that its use of
`
`BEYOND was inherently distinctive. See App Div. Op. at 14.
`
`Hackensack UMC owned the BEYOND mark. App. Div Op. at 22-24.
`
`BOSl's use of Beyond was likely to create confusion and that there was
`
`substantial evidence in the record to support the trial court‘s finding of a likelihood of
`
`confusion. App Div Op. at 25—28.
`
`At the conclusion of the trial, a permanent injunction was issued enjoining BOSI
`
`from using Beyond for spa services. On appeal, the Appellate Division held that a
`
`permanent injunction was an appropriate remedy to for BOSl’s infringement. App Div.
`
`Op. at 30.
`
`Ill.
`
`Argument
`
`The United States Supreme Court has long recognized that:
`
`"the determination of a question directly involved in one
`action is conclusive as to that question in a second suit."
`Cromwell v. County of Sac, 94 U. S. 351, 354, 24 L. Ed. 195
`(1877). The idea is
`straightforward: Once a court has
`decided an issue,
`it
`is "forever settled as between the
`
`Iowa State Traveling Men's
`parties," [***16] Baldwin v.
`Assn. 283 U. S. 522, 525, 51 S. Ct. 517, 75 L. Ed. 1244
`
`(019413453 [IJH )5
`
`
`
`thereby "protect[ing]" against "the expense and
`(1931),
`vexation attending multiple lawsuits, conserv[ing] judicial
`resources, and foster[ing]
`reliance on judicial action by
`minimizing the possibility of inconsistent verdicts,"
`[*1303]
`Montana v. United States, 440 U. S. 147, 153-154, 99 S. Ct.
`970, 59 L. Ed. 2d 210 (1979).
`in short, "a losing litigant
`deserves no rematch after a defeat fairly suffered." Astoria
`Fed. Sav. & Loan Assn. v. Soiimino, 501 U. S. 104, 107, 111
`S. Ct. 2166, 115 L. Ed. 2d 96 (1991).
`
`8&3 Hardware, Inc. v. Hargis Industries, Inc, dba Sealtite Building Fasteners, dba East
`
`Texas Fasteners,
`
`' U.S.
`
`, 135 S. Ct. 1293, 1302-1303 (2015). The general
`
`rule is that:
`
`Id. at 1303.
`
`[w]hen an issue of fact or law is actually litigated and
`determined by a valid
`and final
`judgment,
`and the
`determination is essential to the judgment, the determination
`is conclusive in a subsequent action between the parties,
`whether on the same or a different claim.’ Restatement
`
`(Second) of Judgments §27, p. 250 (1980)”
`
`This is true regardless of whether the first matter is adjudicated in court or in an
`
`administrative body such as the Trademark Trial and Appeals Board. fl (Cancellation
`
`proceeding first before the Trademark Trial and Appeal Board and subsequent
`
`infringement suit in United States District Court); Mother‘s Restaurant inc. v. Mama’s
`
`
`Pizza inc, 723 F.2d 1566, 1569 (Fed. Cir. 1983)(Texas state court proceeding first
`
`followed by Trademark Trial and Appeal Board cancellation proceeding); Flavor Corp.
`
`_ Of America v. Kemin industries inc, 493 F.2d 275, 281 (8th Cir. 1974).
`
`In both infringement cases and cancellation proceedings, one of the critical
`
`issues is whether or not there is a likelihood of confusion.
`
`In 5&8 Hardware, there was
`
`a long running dispute between the parties which both manufactured fasteners,
`
`{01941345;1IIJH )6
`
`
`
`although 3&8 used SEALTIGHT for fasteners made for the aerospace industry and
`
`Hargis used SEALTITE for fasteners made for the construction industry. B&B filed in
`
`the USPTO first, registering its mark in 1993.
`
`In 1996, Hargis sought to register
`
`SEALTETE.
`
`In 2002, when the SEALTITE mark was published for opposition, B &B filed
`
`an opposition and argued that there was confusion because certain distributors handled
`
`both companies’ products and 8&8 received phone calls and users called B&B when
`
`they were looking for Hargis. _ US. at _; 135 S.Ct at 1301—1302. After reviewing
`
`the factors set forth in In re E. I. Dugont de Nemours & Co., 476 F.2d 1357 at 1361, the
`
`Trademark Trial and Appeals Board concluded that the Hargis mark should not be
`
`registered. Hargis did not seek review of the TTAB's decision either by the Federal
`
`Circuit or by a United States District Court, as it Was entitled to do under 15 USC 1071.
`
`Simultaneously, B&B had sued Hargis for infringement, but the TTAB announced
`
`its decision before the District Court ruled on the the issue of likelihood of confusion.
`
`B&B then argued to the District Court that Hargis was precluded from contesting
`
`likelihood of confusion because of collateral estoppel. The District Court disagreed, the
`
`jury found no likelihood of confusion and the Eighth Circuit Court of Appeals affirmed,
`
`finding that collateral estoppel did not apply to the TTAB decision.
`
`Id. at 1302. The
`
`Supreme Court rejected the arguments that there could never be collateral estoppel
`
`based on a TTAB decision and concluded that the issue of whether or not there was a
`
`likelihood of confusion was the same whether the TTAB was reviewing a denial of
`
`registration (as in the case of Hargis) or in an infringement setting (as in the district
`
`court proceeding between Hargis and 8&8). 135 S.Ct. at 1306-1307.
`
`In that case, the
`
`Supreme Court remanded for the Eighth Circuit to apply the following rule:
`
`(01941345;1/un )7
`
`
`
`So long as the other ordinary elements of issue preclusion
`are met, when the usages adjudicated by the TTAB are.
`materially the same as those before the district court, issue
`
`preclusion should apply.
`
`Id. at 1310.
`
`Where the first body to decide the issues is a court. the issue is even clearer.
`
`In
`
`Mother’s Restaurant, the Federal Circuit was faced with issues that had been decided in
`
`a Texas state court proceeding between the parties. Mother’s Restaurants of Texas
`
`had registered the mark Mother’s Pizza Parlour in 1976.
`
`In 1979, Mama’s Pizza filed a
`
`petition asking that the registration be cancelled based on a likelihood of confusion with
`
`the registration for Mama’s Pizza. The cancellation proceedings were suspended,
`
`however, because there was related litigation in Texas.
`
`In the Texas courts, Mama's Pizza sought to enjoin Mother's Restaurants of
`
`Texas from using the name Mother‘s Pizza Parlour.
`
`In its counterclaim, Mother’s
`
`Restaurants sought a declaratory judgment that it had not infringed any of the rights of
`
`Mama's Pizza and that if the court found that there was a likelihood of confusion, that
`
`Mama's Pizza be enjoined from using its mark. After trial, the court found that neither
`
`party had proven that there was a likelihood of infringement or that any injunction should
`
`issue. Neither party appealed, but the suspension was lifted and the cancellation
`
`proceeding continued. Mama’s Pizza then sought summary judgment in the
`
`cancellation proceeding based on the state court action in Texas. The Trademark Trial
`
`and Appeals Board concluded that the Texas state court’s conclusions on confusing
`
`similarity should be given collateral estoppel effect in the cancellation proceeding and
`
`canceled the registration for Mother’s Pizza Parlour. 723 F.2d at 1567-69.
`
`(01541345;1 IIJH )8
`
`
`
`On appeal to the Federal Circuit, the Federal Circuit concluded that the
`
`Trademark Trial and Appeals Board and properly concluded that the elements required
`
`for issue preclusion had been met:
`
`All the essential requirements for the application of issue
`preclusion have been met: (1) the issues to be concluded
`are identical to those involved in the prior action; (2) in that
`action the issues were raised and "actually litigated"; (3) the
`determination of
`those issues in the prior action was
`necessary and essential to the resulting judgment; and (4)
`the party precluded (MRI) was fully represented in the prior
`action.
`4 See generally, 18 J. Moore, supra, at para.
`0.443[1]; Restatement (Second) of Judgments §§ 27, 39
`(1980).
`[723 F.2d at 1569] '
`
`*‘k‘k
`
`the
`in
`issues
`dispositive
`the
`identified
`[T]he Board
`cancellation proceeding as confusing similarity between the
`marks MAMA'S PIZZA and MOTHER‘S PIZZA PARLOUR,
`
`and priority of use.
`
`[id. at 1570]
`*‘k'k
`
`the parties
`their pleadings before the Texas court,
`In
`distinctly raised the issues of confusion between their marks
`
`and of prior use. The record of the four—day trial in the Texas
`court reflects that the court heard extensive testimony on
`both issues. Witnesses testified as to the public's alleged
`confusion regarding the ownership of the MRT restaurant
`under construction, they gave detailed descriptions of the
`decor, menu, and service styles of both Mama's and MRI
`
`restaurants, and they outlined the business history of both
`companies.
`in the circumstances,
`the Board properly
`concluded that a trial
`in connection with the cancellation
`
`petition would only be
`proceedings.
`[Id at 1570]
`
`a
`
`replay of
`
`the
`
`state court
`
`*tk'k
`
`in light of the parties' pleadings and the trial record we must
`conclude that the confusion between both MRI marks and
`
`the Mama's mark was actually litigated.
`
`[Id. at 1571]
`
`{015413481}le )9
`
`
`
`***
`
`We hold that
`
`the determination of confusion be-tween
`
`MOTHER‘S PIZZA PARLOUR and MAMA'S PIZZA was
`
`necessary to the state court's final judgment with respect to
`the counterclaim. This is not a case where the court reached
`
`out to make determinations as to issues which were not
`
`before it.
`
`The issue of
`
`the confusion between the
`
`MOTHER‘S PIZZA PARLOUR and MAMA'S PIZZA marks
`
`was the focus of the parties' pleadings and was fully litigated
`in the state court.
`[Id. at 1571]
`*‘k*
`
`For these reasons, we hold that the TTAB properly gave
`preclusive effect to the Texas court's findings of fact; and
`because the Texas court made findings on the issues that
`are dispositive of the petition for cancellation, we also hold
`that the TTAB correctly granted Mama's motion for summary
`judgment on that petition [Id. at 1573]
`
`723 F.2d at 1569-73 (bracketed citations added).
`
`In this case, we have a case history that is almost identical to that in Mother’s
`
`Restaurant. All the essential requirements for the application of issue preclusion have
`
`been met: (1) the issues to be concluded are identical to those involved in New Jersey
`
`Superior Court action; (2) in the New Jersey Superior Court, the issues were raised and
`
`"actually litigated"; (3) the determination of those issues by the New Jersey Superior
`
`Court was necessary and essential to the resulting judgment; and (4) B08! was fully
`represented in the New Jersey Superior Court action as well as both the appeal and the
`
`petition to the New Jersey Supreme Court. See Mother‘s Restaurant, 723 F .2d at 1569.
`
`First, the New Jersey Superior Court conducted a four day bench trial in which
`
`there was extensive testimony on the issue of the likelihood of confusion. See. Tr. Ct.
`
`Op. at 1-5; App Div. Op. at 2-8. That is the precise issue that would need to be litigated
`
`in this cancellation proceeding. The issue has been litigated and appealed.
`
`(o1941345:1run)10
`
`
`
`Second, there was actual litigation.
`
`It is recited in those same pages of the Trial
`
`Court and Appellate Division Opinions cited above, and the full transcript and record
`
`can be provided if the Trademark Trial and Appeals Board has any questions about the
`
`actuality of the litigation. Full litigation of the issues is the second requirement for- issue
`
`preclusion.
`
`Third, the issue at trial was trademark infringement. The likelihood of confusion,
`
`as demonstrated by the Trial Court and Appellate Division opinions was the central
`
`issue at trial. There is no question that a decision on those issues was necessary
`
`Fourth, BOSI was fully represented by counsel at trial and on appeal.
`
`All of the criteria for issue preclusion are present in the Trial Court and Appellate
`
`Court opinions. Accordingly, the Trademark Trial and Appeal Board should enter
`
`summary judgment in favor of Petitioner and against Registrant and should cancel
`
`Registrant’s trademark registration.
`
`IV.
`
`Conclusion.
`
`For the reasons stated above, it is respectfully submitted thatjudgment should be
`
`entered in favor of Petitioner and that Registrant‘s Trademark Registration should be
`
`cancelled.
`
`Dated: May 30. 2018
`
`mm,
`lra J. Hammer
`
`Schenck Price, Smith 8. King, LLP
`220 Park Avenue, PO Box 991
`Florham Park, New Jersey 07932
`973—539-1000
`
`Counsel for Petitioner
`
`Hackensack University Medical Center
`
`{01941345:1IIJH )1 1
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and correct copy of the foregoing Petioner’s Motion
`
`For Summary Judgement , Brief in Support Thereof and Declaration in Support thereof
`
`were served on Beyond Organic Spa, Inc. (BOSI) on May30, 2018, via first class mail
`
`to:
`
`Mr. Kamel Terki
`
`Beyond Organic Spa, Inc.
`260 Old River Road
`Edgewater, New Jersey 07020
`
`llra Hammerl
`
`Ira J. Hammer
`
`Counsel for Petitioner
`
`Hackensack University Medical Center
`
`CERTIFICATE OF TRANSMISSION
`
`I hereby certify that a true copy of the foregoing Petioner's Motion For Summary
`
`Judgement including the Declaration of Ira Hammer in support thereof are being filed
`
`electronically with the TTAB via ESSTA on this 30 day of May, 2018.
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`mm
`Ira J. Hammer
`
`Counsel for Petitioner
`Hackensack University Medical Center
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`[019413453 [L1H )I 2
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`
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Registration No. 3,766,773
`Date of Issue: March 30, 2010
`Mark: Beyond Organic
`
`Cancellation No. 92057832
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`HACKENSACK UNIVERSITY MEDICAL
`
`CENTER
`
`Petitioner
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`BEYOND ORGANIC SPA, INC.
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`Registrant
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`
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`DECLARATION OF IRA HAMMER IN
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`SUPPORT OF MOTION TO SUSPEND
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`l, Ira Hammer, make the following declaration:
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`1.
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`I am an attorney at the law firm of Schenck, Price, Smith & King, LLP,
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`which represents Petitioner Hackensack University Medical Center in the above
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`captioned matter.
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`I am over the age of twenty one and competent to make this
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`Declaration. The facts set forth in this Declaration are based on my personal
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`knowledge and upon documents maintained by this firm in the ordinary course of
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`business and under my control and supervision.
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`2.
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`Attached hereto as Exhibit 1 is a true copy of the Opinion issued by the
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`Honorable Robert C. Wilson, Judge of the Superior Court, after the conclusion of the tria
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`in the New Jersey Superior Court litigation between Hackensack University Medical
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`Center (“Petitioner") and Beyond Organic Spa, lnc. ("Registrant”).
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`{91941345:1 luH )
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`
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`3.
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`Attached hereto as Exhibit 2 is a true copy of the injunction order enjoining
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`Beyond Organic Spa, Inc. (“BOSI”) from using Beyond for spa services issued by Judge
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`Robert C. Wilson, Judge of the Superior Court, at the conclusion of the trial.
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`4.
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`Attached hereto as Exhibit 3 is a true copy of the opinion of the Appellate
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`Division of the New Jersey Superior Court affirming Judge Wilson's decision and
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`injunction order.
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`5.
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`Attached hereto as Exhibit 4 is the letter of the clerk of the Appellate
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`Division of the New Jersey Superior Court rejecting BOSl’s request for reconsideration
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`for failure to follow New Jersey Court Rules.
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`6.
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`Attached hereto as Exhibit 5 is a true copy of the order of the New Jersey
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`Supreme Court denying BOSl’s petition for certification to the New Jersey Supreme
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`Court which exhausted BOSI’s appellate rights.
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`7.
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`I declare under penalty of perjury under the laws of the United States that
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`the foregoing is true and correct, and that l have executed this on May, 2018.
`
`llra Hammer/
`
`Ira J. Hammer
`
`Counsel for Petitioner
`
`Hackensack University Medical Center
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`{01541345;1IIJH }
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`
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`EXHIBIT 1
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`(0154134531IIJH }
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`
`
`_.
`__
`PREPARED BY THE COURT
`
`_
`
`wee v.3. Ha .:.=.».-: =‘
`=.-“-3.c
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`582533! 1 £1 Efl’éfi
`
`HACKENSACK UNIVERISTY
`
`
`MEDICAL CENTER,
`
`Plaintiff,
`
`
`
`BEYOND ORGANIC'SPA, INC,
`
`vs.‘
`
`Defendant.
`
`
`
`SUPERIOREOURT OP NEWJERSEY
`LAWDIVISION: BERGEN COUNTY _
`DOCKET NO.: BER-14438141
`
`Civil Action
`
`OPINION
`
`THIS MATTER comes: before the Court pursuant ‘to a Complaint brought on behalf of
`Plaintiff, Hackensack University Medical Center-(hereafier “I-IUMC”), seekingjudgmelit against
`Defendant, Beyond Organic 813a, Inc. (hereafter “BOSI”).
`
`FACTUAL BACKGROUND
`——-_—~"_-—"_‘——_—-—__..
`
`background between the letters “Y” and “0’1 Since the inception ofthe Beyond Spa, HUMC has
`devoted substéntial. money and rescurees into develOping and maintaining the Beyond mark.
`
`
`
`the New York City Meu'Opolitan. For more. than a decade, HUMC' has acquired a Solid
`reputation and good will associated with the Beyond Spa name, logo and operation.
`
`In the summer of 2008, B031, opened acornpeting spa in Edgewater, New Jersey, using
`the name Beyond Organic. BOSI intended to. apply an organic approach to their Spa treatments.
`BOSI’S spa is a smaller operation, however, the services provided are marketed as substantially
`similar. On March 30, 2010 BOSI received a trademark registration no. 3,766,773 from" the U.S.
`
`Patent and Trademark Office for its mark (Ex. D-l). The operator Kennel Terki with-his wife,
`Jung Lee, opened the Beyond Organic Spa and went on the intemet‘ to- secure his Federal
`
`trademark. While he claimed to have extensive experience in using the internet he feigned ”any
`lorowledge of the Beyond" Spa operated by HUMC. Mr. Todd testified that he hired an
`
`accountant and an attorney to assist in searching for the availability of the manic, Beyond Organic
`Spa. Neither the accountant nor the attorney testified to corroborate Mr. Terki’s, testimony.
`BOSI’s trademark was described on. its registration as the words “Beyond Organic with the letter
`
`O stylized in the form of a rosehip” (Ex. D-l). Besides the word “Beyond” being used in
`
`expense of the mailers in discovery or at trial.
`
`)3er BOSl’s 2008 inception until April of.201 1, HUMC was unaware of any trademark
`infringement concerning the Beyoud Spa.
`It was not until April of 2011 when 3081 started a
`GIOUPOh advertising campaign that HUMC was made aware of the" competing spa’s infringing
`
`
`
`Group‘on she received via email (Ex. P—I9). The Groupon, entered into evidence-at 111211, offered
`a fifty percent (50%) discount on select services at BOSI’s spa (Bx. P-19 & P~19A). The
`
`EL Ms., Distel tried to remediate the situation in an
`
`LI)
`
`
`
`concern. She also testified that business has dropped since the Gronpon campaign but could not
`quantify the level of loss.
`
`Fmther evidence of the confusion to the public, initiated by the Groupon advertising
`campaign was presented during the testimony of Lynn Distel, Diane Canaff, and Marijane
`Hubbetl, all employees ofHUMC‘s Beyond Spa. The HUMC employee witnesses testified that
`many clients called Beyond spa inquiring about the Groupon deal and there was 311 instance
`
`were confused by the Groupon advertisement.
`
`Shortly after HUMC was made aware of BOSI.’s mark through the Groupon campaign,
`Stephen Nolan, Esq. ofHUMC’S legal depaltm'ent sent a cease and desist letter to BOSI (Bx; P'—
`18). The letter, dated April 13, 2011, explained that HUMC was the owner of the “Beyond”
`mark since 2000 and that BOSI’s mark was infringing on' HUMC’S statutory and 00111111011 law
`
`but chose not to reply. During Mr. Terki.’s testimony he stated thathe was unaware ofHUMC’S
`Beyond spa until the cease and desist letters. The Court did not find Mr. Ierki’s testimony to be
`credible and that his actions were intentional to tradeoff on the goodwill and reputation that
`HUMC had previously built on the Beyond trademark.
`
`
`
`On or about August '14, 2013 BOSI filed a federal lawsuit against HUMC in'fl‘lé United
`States District Court for the District ofNew Jersey. During cross—examination in the p’resenttri‘ai
`
`”confusion between HUMC’S trademark and trade name and 3081’s own trademark and trade
`name exists. Mr. Terki’s acknowledgment of customer confusion. between the two competing
`marks discredits his previous testimony denying the same.
`
`DECISION
`
`Tradenames §92.
`
`
`
`in New Jersey, the test for statutory and common law trademark infringement and unfair
`competition is identical to test for federal infiingement and unfair competition. Pha‘rmacia. Com.
`v. Alcon Laboratories Inc.
`,
`,201 F. Supp. 2d 335 (13.100; 2002); N.V.E. Inc. v..Da.
`2526744, 2 (D.N.J. 2009) (“
`
`[b]y virtue of these Lanham Act violations, NVE has also
`established its common law and state law claims for ‘unfair competition
`[and] state law Claim
`of trafficking in counterfeit marks”);
`Platygus Wear. Inc. v. Bad’Boy Club, Inc. 2009 WI.
`2147843 (DNJ. 2009) (noting that the plaintiff‘s state law cause ofaction for unfair Competition
`
`2009 WI,
`
`Under N.J.S.A 56:4_1 cv
`
`-
`
`
`
`elements identical to those arising underthe Lanham Act”
`
`Prefect, Inc. v. MSD ConSunIer Care;
`
`'h_1c_._, 2012 WL 1231984, 5 (D.N.J. 2012) (unpub) (citing
`SK. 6‘2:- F Cox. v. Prel'no PhamaaceuticalM
`
`Laboratories Inc. 625 F.2d 1055, 1066, 206 U.S.P.Q_. 964, 1980
`
`~2 Trade Cas; (CCH) 11 63361
`(3d Cir. 1980') (“eXCept for the. interstate commerce requirements, the elements of the unfair
`
`it owns the mark; (3) and the Defendant’suse of the mark to identity goods or sewicesrc-auses a
`likelihood ofconfllsion.” A 6'6 H Sportswear, Inc. v. Victoria’s Secret Stores, hm, 237 F.3d 198,
`210 (3rd Cir. Pa. 2000). “A mark’s eligibility for trademark status and the degree ofprotection
`
`Nabisco Brands, Inc., 625 F.Supp. 571, 580 (DNJ. 1985) (citing 1:
`Com. 1:. Economy 06., 562 F.2d 26, 23 (tom Cir. 1977)).
`
`.I-iUMC’s Use- of the
`HUMC’s “Beyond” mark is a valid and legally protectahle mark.
`werd “Beyond” is' arbitrary because'it neither suggests nor describes Spa series. It does not
`describe or suggest the services offered under the mark. ChiChi’s Inc. v. Chi-Mex 1110., 568
`
`
`
`mark without federal registration is entitled to profeofion where it is the senior user and has
`
`presence- Thrifty Rent~A-Car System. Inc. v. Thrift Cars, Inc, 831 F.2d 1177, 1180—81 (l£in Cir.
`1987); Burner King of Florida, Inc. v. Hoots. 403 F.2d 904-, 907 (-7“ Cir. 1968). Prior common
`
`effort it had made in the tri-state and northern New Jersey area from its inception in 2000.
`
`
`
`Finally; to be successful on a ciaiit'r of trademark infringement. HUMC had the burden of
`proof to demonstrate likelihood of confusion. Likelihood of confusion depends on “whether
`
`In New
`Makers, Inc. v. R.G. Barrv Cot-9., 580 F.2d '44, 47 (2“ Cir. 1980); 15 U.S.C. §1125 (a).
`Jersey, “[t]o prove likelihood of corlfhsion, plaintiffs must Show that consumers Viewing the
`mark would probably assume the product or service it represents is associated with the scurce' of
`a different product or service identified by a similar mark.’
`’ Interpace Corp; v. Lapp, Inc, 721
`F.2d 460 (3rd Cir. 1983). The factors set out by the Court in Lapp are:
`
`(1.) The degree ofsimilarity between the owner’s mark and the alleged infringing mark;
`(2) The strength of the owner’s mark;
`
`(3) The price ofthe goods and other factors indicative of the care and attention expected
`of consumers when making a purchase;
`
`confusion arising;
`
`(5) The intent of-the defendant in adopting the mark;
`
`(6) The evidence of actual confiision;
`
`(7) Whether the goods, though not competing, are marketed through the» same chaimeis of '
`trade and advertised through the same media;
`
`(8) The extent to which the targets of-the'parties’ sales efforts are the same;
`
`that market
`
`
`
`id. at .463. “[Tjhe Lapp test is a qualitative inquiry...not all the factors"will be relevant in; all
`cases, fiu‘th'er, the different factors may properly be accor
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