Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA855061
`
`Filing date:
`
`10/27/2017
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`92065406
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Plaintiff
`Plaza Izalco, Inc.
`
`ROBERT POWERS
`MCCLANAHAN POWERS PLLC
`8133 LEESBURG PIKE SUITE 130
`VIENNA, VA 22182
`UNITED STATES
`Email: rpowers@mcplegal.com, tpusch@mcplegal.com, admin@mcplegal.com
`
`Opposition/Response to Motion
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`Robert Powers, Esq.
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`rpowers@mcplegal.com, admin@mcplegal.com
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`/Robert Powers/
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`10/27/2017
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`Plaza Response to SJ 10272017.pdf(630695 bytes )
`Ex A -Business Entity Details Tienda Izalco.pdf(110913 bytes )
`Ex B COFAL Original Trademark 74351843.pdf(59345 bytes )
`Ex C Business Entity Details - Tienda Izalco CR.pdf(111244 bytes )
`Ex D Business Entity Details Tienda Izalco 2.pdf(188559 bytes )
`Ex E Business Entity Details Damas.pdf(187250 bytes )
`Ex F Business Entity Details Plaza.pdf(180097 bytes )
`Ex G Business Entity Details LPD.pdf(936512 bytes )
`Ex H Business Entity Details CAD.pdf(418678 bytes )
`Ex I Division of Corporations Pharmadel.pdf(417447 bytes )
`Ex J Assignment.pdf(119844 bytes )
`Plaza Affidavit 10272017.pdf(351176 bytes )
`Plaza Initial Disclosures 872017.pdf(411658 bytes )
`KOFAL Prosecution History w Specimens.pdf(3499994 bytes )
`KOFAL T Prosecution History w Specimens.pdf(1980642 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In the Matter of:
`
`4,581,604
`Registration No.:
`August 4, 2014
`Registered:
`
`KOFAL
`Trademark:
`
`_________________________________
`
`
`
`
`
`
`Plaza Izalco, Inc.,
`
`
`
`
`
`
`
`
`Petitioner,
`
`
`
`
`
`
`
`
`
`)
`)
`)
`)
`)
`)
`)
`
`
`
`Pharmadel, LLC,
`
` )
`
`Registrant.
`
`
`
`)
`_________________________________ )
`
`v.
`
`Cancellation No. 92065406
`
`
`
`
`
`
`
`
`PETITIONER’S RESPONSE IN OPPOSITION TO
`TO RESPONDENT’S MOTION FOR SUMMARY JUDGMENT
`
`Petitioner, Plaza Izalco, Inc. (“Petitioner”), by and through its undersigned counsel and
`
`pursuant to Rule 56 of the Federal Rules of Civil Procedure and TBMP § 528, respectfully
`
`submits this Response in Opposition (“Opposition”) to Registrant Pharmadel, LLC’s
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`(“Registrant”), Renewed Motion for Summary Judgment (the “Motion”) (Document 24).
`
`INTRODUCTION AND BACKGROUND INFORMATION
`
`
`
`On or around March 27, 1990, Petitioner’s president, Mr. Juan Ventura (“Mr. Ventura”),
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`along with his siblings, including, inter alia, Mr. Miguel Ventura, incorporated an entity in and
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`under the laws of the District of Columbia under the legal name Tienda Izalco, Inc. (“Tienda 1”).
`
`See Exhibit A, attached hereto and incorporated herein by such reference. Tienda 1 provided
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`convenience store related services and products at a retail store located in the District of
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`Columbia. Products offered at the convenience store location, included, inter alia, healthcare
`
`related products and specifically an analgesic balm under the trademark “COFAL” (“COFAL
`
`
`
`1
`
`

`

`Mark”), which was then manufactured, marketed, and distributed by Laboratorios Cofala, S.A.,
`
`an entity located and incorporated under the laws of the Country of Costa Rica (“LC”).
`
`
`
`LC had offered its analgesic balm under the COFAL Mark since as early as May 15,
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`1972 in Costa Rica and owned Costa Rica Trademark Registration No. 44385 for the COFAL
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`Mark reflecting such first usage. On November 1, 1994, LC was granted U.S. Trademark
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`Registration Ser. No. 1,860,634 for the COFAL Mark in International Class 005 for
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`pharmaceutical preparations; namely, lotion for joint and muscle aches by the United States
`
`Patent and Trademark Office, which was later canceled on November 11, 2001. See Exhibit B,
`
`attached hereto and incorporated herein by such reference.
`
`
`
`On or around May 3, 1994, Mr. Ventura, along with his siblings, including, inter alia,
`
`Mr. Miguel Ventura, incorporated an entity in and under the laws of the District of Columbia
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`under the legal name Tienda Izalco Columbia Road, Inc. (“Tienda CR”). See Exhibit C, attached
`
`hereto and incorporated herein by such reference. Tienda CR was a business expansion of the
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`Tienda 1 business model into a secondary location and equally provided convenience store
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`related services and products at a retail store located in the District of Columbia. Similar to
`
`Tienda 1, Tienda CR offered LC’s analgesic balm under the COFAL Mark.
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`
`
`In or around 1994, Mr. Ventura, along with his siblings, including, inter alia, Mr. Miguel
`
`Ventura, incorporated an entity in and under the laws of the Commonwealth of Virginia under
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`the legal name Tienda Izalco 2, Inc. (“Tienda 2”). See Exhibit D, attached hereto and
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`incorporated herein by such reference. Similar to Tienda CR, Tienda 2 was a business expansion
`
`of the Tienda 1 business model into the Commonwealth of Virginia and provided convenience
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`store related services and products at a retail store located in the Commonwealth of Virginia.
`
`
`
`2
`
`

`

`Similar to Tienda 1 and Tienda CR, Tienda 2 offered LC’s analgesic balm under the COFAL
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`Mark.
`
`In or around 1995, Mr. Ventura, along with a close friend, incorporated an entity in and
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`under the laws of the Commonwealth of Virginia under the legal name Damas Bodega, Inc.
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`(“Damas”). See Exhibit E, attached hereto and incorporated herein by such reference. Similar to
`
`Tienda 2, Damas was a business expansion of the Tienda 1 business model into the
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`Commonwealth of Virginia and provided convenience store related services and products at a
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`retail store located in the Commonwealth of Virginia. Similar to Tienda 1, Tienda 2, and Tienda
`
`CR, Damas offered LC’s analgesic balm under the COFAL Mark.
`
`On or around September 9, 1999, Mr. Ventura independently incorporated Petitioner in
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`and under the laws of the Commonwealth of Virginia. See attached Exhibit F, attached hereto
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`and incorporated herein by such reference. Similar to Tienda 2 and Damas, Petitioner was a
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`business expansion of the Tienda 1 business model into the Commonwealth of Virginia and
`
`provided convenience store related services and products at a retail store located in the
`
`Commonwealth of Virginia. Similar to Tienda 1, Tienda 2, Tienda CR, and Damas, Petitioner
`
`offered LC’s analgesic balm under the COFAL Mark. From at least as early as 1990 through
`
`2005, Tienda 1, Tienda 2, Tienda CR, Damas and/or Petitioner offered LC’s analgesic balm
`
`under the COFAL Mark to the general public in the United States.
`
`
`
`In or around 2004, in an effort to increase the distribution potential of healthcare products
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`imported and distributed by Petitioner, specifically, an analgesic balm under the COFAL Mark,
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`Petitioner entered into a joint venture with Mr. Horacio Carballo (“Mr. Carballo”), an individual
`
`
`
`3
`
`

`

`with ties to the Hispanic community1. In or around 2004, Mr. Carballo allegedly created a legal
`
`entity under some variation of “Products”. In or around May 20, 2005, Mr. Carballo replaced the
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`previous entity by incorporating an entity in and under the laws of State of Maryland under the
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`legal name Latin Products Distributor, Inc. (“LPD”). See attached Exhibit G, attached hereto
`
`and incorporated herein by such reference.
`
`Up until 2004, Mr. Carballo employed the assistance of several parties through a variety
`
`of business ventures, including, inter alia, president of Registrant, Mr. Evelio Velasquez (“Mr.
`
`Velasquez”). In or around August 26, 2004, Mr. Velasquez, in furtherance of his partnership
`
`with Mr. Carballo, organized an entity in and under the laws of State of Delaware under the legal
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`name Central America Distributors, LLC (“CAD”). See attached Exhibit H, attached hereto and
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`incorporated herein by such reference. Shortly thereafter,
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`In or around late 2005, Mr. Carballo and Mr. Ventura, had a falling out with respect to
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`their joint venture and any business relationship between the parties ceased. Immediately
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`thereafter, specifically still in or around 2005, Petitioner approached LC in an effort to purchase
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`or license the COFAL Mark. LC informed Petitioner that it was free to operate under its COFAL
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`Mark, including for distribution purposes in the United States, and LC’s presence in the United
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`States ultimately ceased.
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`In early 2006, Petitioner began manufacturing its own healthcare products for
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`distribution, including, inter alia, a new analgesic balm under the COFAL Mark. In a retaliatory
`
`effort, on September 23, 2006, Mr. Carballo filed an application for the trademark “COFAL
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`Pharmaceutical Preparation Cream Analgesic For Muscles [sic] Pain” in International Class 005
`
`
`
`1 Additional information as to Mr. Carballo and the parties herein is set forth in Petitioner’s Rule
`26(a) Disclosures served upon Registrant, attached hereto and incorporated herein for the sole
`purposes of Registrant’s Motion. See TBMP § 528.05(c).
`
`
`
`4
`
`

`

`for analgesic balm; analgesic preparations; multipurpose medicated antibiotic cream, analgesic
`
`balm and mentholated salve; and topical analgesics on the basis of Lanham Act § 1(b),
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`Trademark Application Serial No. 77/006,059 (“App. ‘059”), which was later abandoned on June
`
`7, 2008.
`
`In an equally retaliatory effort, on April 11, 2007, while Mr. Carballo’s App. ‘059 was
`
`pending, Mr. Velasquez, under the guise of CAD, filed an application for the trademark
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`“KOFAL-T” in International Class 005 for analgesic balm on the basis of Lanham Act § 1(b).
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`(“KOFAL-T Mark”), Trademark Application Serial No. 77/1546,088 (“App. ‘088). On October
`
`14, 2008, CAD filed its Statement of Use through then counsel, with specimens purporting to be
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`a digitally photographed image of the mark allegedly as used in commerce (emphasis added) 2.
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`On December 2, 2008, CAD3 was granted Registration Serial No. 3,540,972 for the KOFAL-T
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`Mark in connection with its App. ‘088.
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`On or around November 18, 2010, Mr. Velasquez organized Registrant in and under the
`
`laws of State of Delaware. See attached Exhibit I, attached hereto and incorporated herein by
`
`such reference. On or around January 13, 2012, CAD allegedly transferred several trademark
`
`registrations to Registrant, including, inter alia, Registration Serial No. 3,540,972 for the
`
`
`2 For the reasons discussed supra, which Petitioner hopes to fully ascertain during discovery in
`order to meet the proper pleading standards, Petitioner may move to amend its petition in the
`instant action to amplify its existing claims or add to its claims as well as to petition to cancel
`Registrant’s KOFAL-T Mark pursuant to Lanham Act § 14(3), 15 U.S.C. § 1064(3), specifically
`claiming that Registrant’s registration of the Registrant’s original KOFAL-T Mark was obtained
`fraudulently and used by the Registrant so as to misrepresent the source of the goods in
`connection with its mark. See, e.g., TBMP 507.02 and cases cited therein (June 2007); see also
`Fed. R. Civ. P. 15.
`
` 3
`
` Petitioners disputes that Registrant was granted registration of the KOFAL-T Mark, as set forth
`under paragraph 3 of its Statement of Undisputed Facts, as CAD was the party of record who
`allegedly was granted registration. See App. ‘205.
`
`
`
`
`
`5
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`

`

`KOFAL-T Mark. See attached Exhibit J, attached hereto and incorporated herein by such
`
`reference.
`
`On July 10, 2013, Registrant filed an application for the trademark “KOFAL” in
`
`International Class 005 on the basis of Lanham Act § 1(a) (“KOFAL Mark”), Trademark
`
`Application Serial No. 86/006,205 (“App. ‘205”). The associated goods for Registrant’s KOFAL
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`Mark were described4 as adhesive bandages; adhesive bands for medical purposes; analgesic
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`and muscle relaxant pharmaceutical preparations; analgesic balm; anti-inflammatory gels; anti-
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`inflammatory salves; anti-inflammatory sprays; balms for medical purposes; Balms for
`
`pharmaceutical purposes; curare for use as a muscle relaxant; herbal topical creams, gels,
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`salves, sprays, powder, balms, liniment and ointments for the relief of aches and pain;
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`medicaments for promoting recovery from tendon and muscle injuries and disorders and sports
`
`related injuries; multipurpose medicated antibiotic cream, analgesic balm and mentholated
`
`salve; muscle relaxants; sports cream for relief of pain; therapeutic spray to sooth and relax the
`
`muscles; drug delivery patches sold without medication; and elastic bandages.
`
` On August 6, 2013, Petitioner filed Application Serial No. 86/029,611 for the COFAL
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`Mark in International Class 005 on the basis of Lanham Act § 1(a) (“Application”). The
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`associated goods for the COFAL Mark include analgesic and muscle relaxant pharmaceutical
`
`preparations; analgesic balm; analgesic preparations; curare for use as a muscle relaxant;
`
`medicaments for promoting recovery from tendon and muscle injuries and disorders and sports
`
`
`4 Petitioners disputes that Registrant provides all goods listed under its KOFAL Mark, as set
`forth under paragraph 3 of its Statement of Undisputed Facts of its Motion, given the lack of
`specimens filed in connection with the prosecution history of its KOFAL Mark. In addition,
`Registrant intentionally left off its list under the aforementioned paragraph 3, drug delivery
`patches sold without medication; and elastic bandages. See App. ‘205.
`
`
`
`6
`
`

`

`related injuries; multipurpose medicated antibiotic cream, analgesic balm and mentholated
`
`salve; and muscle relaxants.
`
`On November 25, 2013, the Examining Attorney issued an initial Office Action refusing
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`registration based on an alleged likelihood of confusion and providing information regarding two
`
`pending applications: Trademark Application Serial No. 85/821,526 [sic] (“App. ‘526”) for
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`“COFAL” in connection with “Analgesic and muscle relaxant pharmaceutical preparations;
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`Analgesic balm; Analgesic preparations; Curare for use as a muscle relaxant; Medicaments for
`
`promoting recovery from tendon and muscle injuries and disorders and sports related injuries;
`
`Multipurpose medicated antibiotic cream, analgesic balm and mentholated salve; Muscle
`
`relaxants,” and App. ‘205 for the KOFAL Mark.
`
`On March 21, 2014, Petitioner responded to the initial Office Action5 by stating it had
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`initiated an opposition proceeding against App. ‘526 for the COFAL Mark (Opposition No.
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`91214315) and requesting that its Application for the COFAL Mark be suspended pending
`
`resolution of the referenced proceeding. On April 10, 2014, the Examining Attorney suspended
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`action on the Application. On June 29, 2015, the Examining Attorney issued a second Office
`
`Action and withdrew its citation to the “App. ‘526 for the COFAL Mark, because the application
`
`was abandoned. The Examining Attorney then noted the previously cited application for the
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`KOFAL Mark matured to registration on August 4, 2014. In summation, the Examining Attorney
`
`refused registration based on an alleged likelihood of confusion with the KOFAL-T Mark and
`
`now the KOFAL Mark.
`
`
`5 While this may be an immaterial defect that the Board may sua sponte overlook, it is worth
`noting that in its Statement of Undisputed Facts in its Motion, and throughout its Motion,
`Registrant continuously uses the capitalized term “Applicant” to describe a party not otherwise
`defined anywhere in Registrant’s Motion.
`
`
`
`7
`
`

`

`On December 29, 2015, Petitioner responded to the second Office Action. On January 30,
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`2016, the Examining Attorney issued a final Office Action that maintained the refusal to register
`
`the mark. On August 5, 2016, Petitioner submitted a Request for Reconsideration and Notice of
`
`Appeal, which instituted the appeal, but suspended the appeal until the Examining Attorney
`
`considered the Request for Reconsideration. On September 9, 2016, the Examining Attorney
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`denied the Request for Reconsideration. On September 12, 2016, the appeal was resumed. On
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`December 17, 2016, and February 9, 2017, Petitioner and Examining Attorney, respectfully, filed
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`their appeal briefs. On February 9, 2017, Petitioner filed the instant Petition to Cancel
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`Registrant’s KOFAL Mark and moved for suspension of the appeal, which was subsequently
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`granted on February 15, 2017.
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`On March 24, 2017, Registrant filed its Answer, setting forth, inter alia, seven (7)
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`affirmative defenses. On April 14, 2017, Petitioner moved to strike Registrant’s affirmative
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`defenses, with Registrant filing its response in opposition on May 3, 2017, and Petitioner its
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`reply in support thereof on May 23, 2017. On June 14, 2017, the Board issued an Order striking
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`Registrant’s First Affirmative Defense for failure to state a claim by Petitioner upon which relief
`
`may be granted and its Second Affirmative Defense for lack of standing by Petitioner.
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`On September 27, 2017, Registrant filed its instant Motion for summary judgment as to
`
`its Second Affirmative Defense, vis-à-vis, standing, and its Fourth Affirmative Defense, vis-à-
`
`vis, a Morehouse defense. See Morehouse Mfg. Corp. v. J. Strickland & Co., 407 F. 2d 881
`
`(C.C.P.A. 1969). For the reasons stated infra, summary judgment clearly is not appropriate in
`
`this matter in favor of Registrant and should be denied in favor of Petitioner.
`
`
`
`
`
`
`
`8
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`

`

`STANDARD OF REVIEW
`
`Summary judgment should only be granted “if the pleadings, the discovery and
`
`
`
`disclosure materials on file, and any affidavits show that there is no genuine dispute as to any
`
`material fact and that the movant is entitled to judgment as a matter of law (emphasis added).
`
`Fed. R. Civ. P. 56(c). Nat’l Cable TV Ass’n, Inc. v. Am. Cinema Editors, Inc., 937 F.2d 1572,
`
`1576, 19 U.S.P.Q.2d 1424 (Fed. Cir. 1991) (The Federal Rules of Civil Procedure govern
`
`summary judgment proceedings before the Board). A genuine dispute with respect to a material
`
`fact exists if a reasonable fact finder could decide the question in favor of the non-moving party.
`
`See Opryland USA Inc. v. Great Am. Music Show, Inc., 970 F.2d 847 (Fed. Cir. 1992)).
`
`A party asserting that a fact cannot be or is genuinely disputed must support its assertion
`
`by either (1) citing to particular parts of materials in the record, or (2) showing that the materials
`
`cited do not establish the absence or presence of a genuine dispute, or that an adverse party
`
`cannot produce admissible evidence to support the fact. Fed. R. Civ. P. 56(c). A movant for
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`summary judgment carries the burden of proof in regard to its motion. See Celotex Corp. v.
`
`Catrett, 477 U.S. 317, 323-24 (1986). In deciding the motion, the function of the Board is not to
`
`try issues of fact, but to determine if there are any genuine disputes of material fact to be tried.
`
`See TBMP § 529.01 and cases cited therein (June 2017). When the moving party has supported
`
`its motion with sufficient evidence that, if unopposed, indicates there is no genuine dispute of
`
`material fact and that the moving party is entitled to judgment as a matter of law, the burden then
`
`shifts to the non-moving party to demonstrate the existence of a genuine dispute of material fact
`
`to be resolved at trial. Enbridge, Inc. v. Excelerate Energy LP, 92 USPQ2d 1537, 1540 (TTAB
`
`2009).
`
`
`
`9
`
`

`

`
`
`The nonmoving party must be given the benefit of all reasonable doubt as to whether
`
`genuine disputes of material fact exist, and the evidentiary record on summary judgment, and all
`
`reasonable inferences to be drawn from the undisputed facts, must be viewed in the light most
`
`favorable to the nonmoving party. See Opryland USA, Inc. v. Great Am. Music Show, Inc., 970
`
`F.2d 847, 23 USPQ2d 1471, 1472 (Fed. Cir. 1992).
`
`ARGUMENTS
`
`I.
`
`Petitioner has Standing to Bring its Petition to Cancel Registrant’s KOFAL
`Mark and This Exact Issue was Previously Addressed (Emphasis Added).
`
`As an initial matter, the Board should give no consideration to Registrant’s lack of
`
`standing defense as to Petitioner, which was pled in its Answer as its Second Affirmative
`
`Defense. Registrant’s Second Affirmative Defense was stricken from its Answer by this Board
`
`on Petitioner’s Motion to Strike Registrant’s Affirmative Defenses. As of the date of this
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`Opposition to Registrant’s Motion, Registrant has not filed or otherwise moved to amend its
`
`Answer to reassert a defense of lack of standing. Petitioner expressly rejects to its inclusion
`
`herein or any consideration thereof. See Fed. R. Civ. P. 56(a); Omega SA (Omega AG) (Omega
`
`Ltd.) v. Alpha Phi Omega, 118 USPQ2d 1289, 1291 n.2, 1292 (TTAB 2016) (applicant may not
`
`obtain summary judgment on unpleaded defense); see also Bausch & Lomb Inc. v. Karl Storz
`
`GmbH & Co. KG, 87 USPQ2d 1526, 1528 n.3 (TTAB 2008); see also TBMP § 528.07(a),
`
`TBMP § 311.02(a) and cited cases (June 2017).
`
`Even if Registrant moved to amend its Answer to somehow replead the same affirmative
`
`defense that was already stricken from its Answer by this Board, for the reasons stated supra,
`
`Petitioner clearly has standing to bring the instant action. See TBMP § 528.07(a);
`
`Cf. Greenhouse Systems Inc. v. Carson, 37 USPQ2d 1748, 1750 n.5 (TTAB 1995) ([summary
`
`judgment] not permitted where nonmoving party objected to inclusion of unpleaded grounds
`
`
`
`10
`
`

`

`even though party responded to motion on unpleaded grounds on merits). Standing is a threshold
`
`issue that must be proven by a plaintiff in every inter partes case. See Empresa Cubana Del
`
`Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014), cert.
`
`denied, 135 S. Ct. 1401 (2015) and Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025-
`
`26 (Fed. Cir. 1999). The Board’s primary reviewing court has enunciated a liberal threshold for
`
`determining standing, namely, that a plaintiff must demonstrate that it possesses a “real interest”
`
`in a proceeding beyond that of a mere intermeddler, and “a reasonable basis for his belief of
`
`damage.” Empresa Cubana Del Tabaco, 111 USPQ2d at 1062. A “real interest” is a “direct and
`
`personal stake” in the outcome of the proceeding. Ritchie v. Simpson, 50 USPQ2d at 1025. This
`
`threshold determination is made prior to consideration of the pleaded grounds and defenses
`
`(emphasis added).
`
`
`
`Here, there is no genuine dispute as to the fact that Petitioner is the owner of Application
`
`Serial No. 86/029,611 for the COFAL Mark, which has been preliminarily refused registration
`
`based on a potential likelihood of confusion with the KOFAL Mark at issue in this proceeding.
`
`Both Registrant and Petitioner made the Office Action preliminarily refusing Petitioner’s
`
`Application of record for this Motion. As this Board properly notes in its June 14, 2017 Order,
`
`Petitioner alleged common law rights in and use of the COFAL Mark for similar goods long
`
`prior to Registrant’s filing date and claimed date of first use in commerce, as well as ownership
`
`of an application that has been refused registration based on Registrant’s registration, and alleges
`
`a likelihood of confusion at paragraph seven of the petition to cancel.
`
`It is clear that ownership of an application that has been refused registration based on a
`
`defendant’s prior registration or application is sufficient to confer standing. See Empresa
`
`Cubana Del Tabaco, 111 USPQ2d at 1062; Saddlesprings Inc. v. Mad Croc Brands Inc., 104
`
`
`
`11
`
`

`

`USPQ2d 1948, 1950 (TTAB 2012); ShutEmDown Sports Inc. v. Lacy, 102 USPQ2d 1036, 1041
`
`(TTAB 2012); Weatherford/Lamb Inc. v. C&J Energy Services Inc., 96 USPQ2d 1834, 1837
`
`(TTAB 2010) (“Inasmuch as Petitioner has made of record the USPTO Office action suspending
`
`its pleaded application pending the possible refusal to registration under Section 2(d) of the
`
`Lanham Act based on an alleged likelihood of confusion with Registrant’s registration, there is
`
`no question that Petitioner has standing to bring this petition to cancel.”); Fiat Group
`
`Automobiles S.p.A. v. ISM, Inc., 94 USPQ2d 1111, 1112 (TTAB 2010); Great Seats, Ltd. v.
`
`Great Seats, Inc., 84 USPQ2d 1235, 1237 (TTAB 2007); Cerveceria Modelo S.A. de C.V. v. R.B.
`
`Marco & Sons, Inc., 55 USPQ2d 1298, 1299-1300 (TTAB 2000).
`
`II.
`
`Registrant is Not Entitled to Summary Judgment Based on the Prior
`Registration Defense (Morehouse Defense).
`
`Registrant principally seeks summary judgment based on its prior registration, or the
`
`
`
`Morehouse defense. The Morehouse defense is a narrow, equitable defense premised on the idea
`
`that a plaintiff cannot be further injured because there already exists an injurious registration, and
`
`the plaintiff cannot object to an additional registration that does not add to the injury. See
`
`Morehouse Mfg. Corp. v. J. Strickland & Co., 407 F.2d 881, 160 U.S.P.Q. 715 (CCAP 1969);
`
`OM Bread, Inc. v. United States Olympic Committee, 65 F.3d 933, 36 U.S.P.Q.2d 1041 (Fed.
`
`Cir. 1995); Gulf States Paper Corp. v. E-Z Por Corp., 171 U.S.P.Q. 566 (TTAB 1971)
`
`(nonprecedential). The mark and the goods and/or services in the prior registration must be the
`
`same or substantially the same as the mark and goods and/or services in the challenged
`
`application. Id.; see also Jackes-Evans Manufacturing Co. v. Jaybee Manufacturing Corp., 481
`
`F.2d 1342, 179 USPQ 81 (CCPA 1973). The Morehouse standard is not the same as that used
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`when comparing marks for purposes of a likelihood of confusion analysis (emphasis added).
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`While the latter test requires balancing of a variety of factors, see In re E.I. du Pont de Nemours
`
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`& Co., 476 F.2d 1357, 177 USPQ 563, 567 (Fed. Cir. 1973), it is clear that a likelihood of
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`confusion may be found even when the marks at issue are not “essentially the same.”
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`a. The Board is Not Bound by an Examiner.
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`As an initial matter, given Registrant’s emphasis on the Examiner in its Motion, it bears
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`mentioning that the long-standing, well-settled precedent governing Board proceedings holds
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`that the Board is not bound by prior decisions of Trademark Examining Attorneys, and that each
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`case must be decided on its own merits and on the basis of its own record, in accordance with
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`relevant statutory, regulatory and decisional authority (emphasis added). In Re Thomas H.
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`Wilson, 57 U.S.P.Q.2d 1863 (T.T.A.B. Jan. 19, 2001); See also, e.g., In re International Flavors
`
`& Fragrances Inc., 183 F.3d 1361, 51 USPQ2d 1513 (Fed. Cir. 1999); In re Cooper, 117 USPQ
`
`396 (CCPA 1958) (“…the decision of this case in accordance with sound law is not governed by
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`possibly erroneous past decisions by the Patent Office); In re Perez, 21 USPQ2d 1075 (TTAB
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`1991) (§2(d) refusal based on prior conflicting registration affirmed, despite fact that the
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`conflicting registration had not been cited as bar to applicant's previous registration (now
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`expired) of same mark for same goods; Board not bound by decisions of prior Examining
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`Attorneys); In re BankAmerica Corporation, 231 USPQ 873, 876 (TTAB 1986) (“Section 20 of
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`the Trademark Act, 15 USC §1070, gives the Board the authority and duty to decide an appeal
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`from an adverse final decision of the Examining Attorney. This duty may not and should not be
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`delegated by the adoption of conclusions reached by Examining Attorneys on different records”);
`
`and In re National Retail Hardware Association, 219 USPQ 851, 854 (TTAB 1983) (“As in
`
`Cooper, we do not here have sufficient facts before us on which to evaluate whether the previous
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`action of the Examiner which resulted in issuance of the previous registration was or was not
`
`erroneous. Nevertheless, as Cooper held, it is sufficient that the facts now before us and the
`
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`application to them of sound law persuade us that the mark does not meet the requirements for
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`registration set forth in Sections 2(d) and 2(e)(1) of the statute”).
`
`b. The KOFAL-T Mark and KOFAL Mark are Neither the Same Nor are they Legal
`Equivalents.
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`This Board has stated that the Morehouse standard requires “the marks in their entireties
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`[be] essentially the same (emphasis added).” Id. (citing O-M Bread, 36 U.S.P.Q.2d at 1045)
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`(holding that OLYMPIC and OLYMPIC KIDS are neither the same mark nor are they legal
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`equivalents, id. (emphasis added)); see also Cf. Place for Vision, Inc. v. Pearle Vision Center,
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`Inc., 218 USPQ 1022 (Tr. Trial & App.Bd. 1983) (discussing the requirement for identity of
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`marks). The question of whether two marks are “legal equivalents” with the “same, continuing
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`commercial impression” is a fact-intensive inquiry that is not generally suitable for summary
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`judgment. See Hana Financial, Inc. v. Hana Bank, 135 S. Ct. 907, 909 (2015) (emphasis added).
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`There is clearly a genuine dispute of material fact as to the legal equivalency of the KOFAL-T
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`Mark to the KOFAL Mark. This alone should be sufficient to deny Registrant’s Motion for
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`Summary Judgment.
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`Registrant’s KOFAL Mark and prior registered KOFAL-T Mark are standard character
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`marks, which are unambiguously not identical or the same in that the registration that is the
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`subject of this action is completely devoid of nearly thirty-percent (30%) of the characters of the
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`KOFAL-T Mark, specifically, the KOFAL Mark is missing a dash/hyphen (“-“) and separate
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`character onto itself, a capital tee (“T”) (emphasis added). Moreover, standard character marks
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`are distinguishable from stylized marks in that they make no claim to any particular font, style,
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`color or size of display and, thus, are not limited to any particular presentation. See In re Viterra
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`Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012) (a standard character mark is not
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`limited to any particular font, size, style, or color); Citigroup Inc. v. Capital City Bank Group
`
`
`
`14
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`Inc., 94 USPQ2d 1645, 1652 (TTAB 2010) (aff’d. 637 F.3d 1344, 98 USPQ2d 1253 (Fed. Cir.
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`2011) (finding that the mark CAPITAL CITY BANK, in standard character form, could create a
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`different commercial impression than the mark in Applicant’s prior registrations, therefore, the
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`marks displayed in Applicant’s registrations do not form the same and continuing commercial
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`impression and, consequently, are not essentially the same marks for purposes of the prior
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`registration defense).
`
`
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`As clearly illustrated in the specimens used in the prosecution history of both the KOFAL
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`Mark and prior registered KOFAL-T Mark, Registrant uses each mark to create a much different
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`commercial impression. In particular, the font, size, style, and colors, the latter to some degree,
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`are different as to each specimen used, including the shape of the “K” (see, e.g., the lower right
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`portion of the letter kay), most notably between the different product categories (see, e.g.,
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`specimen for bandages under the KOFAL Mark versus specimen for analgesic cream under
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`either the KOFAL Mark or KOFAL-Mark).
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`Moreover, each of Registrant’s analgesic balms under its respective marks are used in
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`conjunction with different, prominent words (i.e., FUERTA for the KOFAL Mark, translating to
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`“Strong” in Spanish, and “ORIGINAL” under the KOFAL-T-Mark); and understandably so, as
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`each of its analgesic balms are marketed under a different National Drug Code (“NDC”)6;
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`allegedly, as indicated in its specimens, NDC 53325-294-04 under its KOFAL Mark and NDC
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`53325-293-04 under its KOFAL-T Mark.
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`c. Registrant’s Additional Scope of Goods in its KOFAL Mark Precludes it from
`Asserting a Morehouse Defense.
`
`
`
`6 The NDC, or National Drug Code, is a unique 10-digit, 3-segment number. It is a universal
`product identifier for human drugs in the United States. The code is present on all
`nonprescription (OTC) and prescription medication packages and inserts in the US.
`
`
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`15
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`The registration that is the subject of this cancellation proceeding has multiple different
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`goods in two separate classes, whereas the prior registration Registrant seeks to rely upon
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`contains just one product, analgesic balm. Contrary to Registrant’s position, the goods in both
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`classes are at issue in this proceeding. Moreover, the International Class 005 goods in the
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`registration sought to be canceled go well beyond the one product that is identified in the prior
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`registration. See Haggar Co. v. Hugger Corp., 172 U.S.P.Q. 253, 254