`
`This is not a precedent
`of the TTAB.
`
`
`
`
`
`al
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`General Contact Number: 571-272-8500
`
`
`
`
`
`
`
`
`
`
`
`Mailed: February 1, 2018
`
`Cancellation No. 92065406
`
`Plaza Izalco, Inc.
`
`
`v.
`
`Pharmadel LLC
`
`
`Before Kuhlke, Bergsman, and Goodman,
`Administrative Trademark Judges.
`
`By the Board:
`
`
`Petitioner seeks to cancel Respondent’s registration1 for the mark KOFAL for
`
`the following goods:
`
`Adhesive bandages; Adhesive bands for medical purposes;
`Analgesic and muscle relaxant pharmaceutical preparations;
`Analgesic balm; Anti-inflammatory gels; Anti-inflammatory
`salves; Anti-inflammatory sprays; Balms for medical purposes;
`Balms for pharmaceutical purposes; Curare for use as a muscle
`relaxant; Herbal topical creams, gels, salves, sprays, powder,
`balms, liniment and ointments for the relief of aches and pain;
`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 in
`International Class 5; and
`
`
`
`1 Registration No. 4581604, issued August 5, 2014, claiming June 21, 2013 as the date of
`first use and first use in commerce
`
`
`
`
`
`Cancellation No. 92065406
`
`
`Drug delivery patches sold without medication; Elastic
`bandages in International Class 10.
`
`As grounds for cancellation, Petitioner alleges that the mark KOFAL
`
`
`
`
`is primarily merely a surname under Section 2(e)(4) of the Trademark Act
`
`and alleges likelihood of confusion under Section 2(d) of the Trademark Act.
`
`Petitioner pleads ownership of prior common law rights in the mark COFAL
`
`for “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 related injuries; Multipurpose medicated antibiotic
`
`cream, analgesic balm and mentholated salve; Muscle relaxants.” Petitioner
`
`further asserts that it is the owner of application Serial No. 86029611 for
`
`the COFAL2 mark for these same goods and that this pending application
`
`was refused registration under Section 2(d) on the basis of Respondent’s
`
`subject registration.
`
`Respondent, in its answer, asserts numerous defenses, including the prior
`
`registration doctrine or “Morehouse”3 defense, namely, that because Respondent
`
`already owns an unchallenged registration, for the mark KOFAL-T4, for “the same
`
`or similar mark …on the same or similar goods” of the involved registration,
`
`
`2 Filed August 6, 2013, based on an allegation of use under Trademark Act Section 1(a), 15
`U.S.C. 1051(a), alleging February 2006 as the date of first use and first use in commerce.
`3 Morehouse Mfg. Corp. v. J. Strickland & Co., 407 F.2d 881, 56 C.C.P.A. 946, 160
`USPQ 715 (CCPA 1969).
`4 U.S. Reg. No. 3540972, issued December 2, 2008, in connection with “analgesic balm.”
`Sections 8 & 15 affidavit accepted and acknowledged on January 6, 2018.
`
` 2
`
`
`
`Cancellation No. 92065406
`
`Petitioner will not be further damaged by the subject registration (Answer, Aff. Def.
`
`No. 4).
`
`This case now comes up for consideration of Respondent’s motion (filed
`
`September 27, 2017) for summary judgment on its asserted Morehouse defense. A
`
`copy of Respondent’s prior registration certificate and a recent printout from the
`
`USPTO TSDR database regarding its status is attached to Respondent’s motion as
`
`an exhibit. The motion is fully briefed.
`
`Summary judgment is appropriate only when there is no genuine dispute as
`
`to any material fact and the moving party is entitled to judgment as a matter of
`
`law. Fed. R. Civ. P. 56(a). The Board may not resolve issues of material fact; it may
`
`only ascertain whether a genuine dispute regarding a material fact exists. See
`
`Lloyd’s Food Products, Inc. v. Eli’s, Inc., 987 F.2d 766, 25 USPQ2d 2027, 2029 (Fed.
`
`Cir. 1993); Olde Tyme Foods, Inc. v. Roundy’s, Inc., 961 F.2d 200, 22 USPQ2d 1542
`
`(Fed. Cir. 1992). A factual dispute is genuine if, on the evidence of record, a
`
`reasonable fact finder could resolve the matter in favor of the non-moving party.
`
`Opryland USA Inc. v. Great Am. Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471,
`
`1472 (Fed. Cir. 1992); Olde Tyme Foods, Inc., 22 USPQ2d at 1544. The non-moving
`
`party may not rest on the mere allegations of its pleadings and assertions of
`
`counsel, but must designate specific portions of the record or produce additional
`
`evidence showing the existence of a genuine dispute of material fact for trial. In
`
`general, to establish the existence of disputed facts requiring trial, the non-moving
`
`party “must point to an evidentiary conflict created on the record at least by a
`
` 3
`
`
`
`Cancellation No. 92065406
`
`counterstatement of facts set forth in detail in an affidavit by a knowledgeable
`
`affiant.” Octocom Systems Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16
`
`USPQ2d 1783, 1786 (Fed. Cir. 1990) (citing Barmag Barmer Maschinenfabrik AG v.
`
`Murata Machinery, Ltd., 731 F.2d 831, 221 USPQ 561, 564 (Fed. Cir. 1984)).
`
`To prevail on its motion for summary judgment on the Morehouse defense,
`
`Respondent must show that Petitioner cannot be further damaged by the
`
`registration of the mark in the involved registration because there already exists a
`
`registration for essentially the same mark for essentially the same goods that are
`
`the subject of the involved application. See Morehouse Mfg. Corp., 160 USPQ at 717;
`
`O-M Bread Inc. v. United States Olympic Comm., 65 F.3d 933, 36 USPQ2d 1041,
`
`1045 (Fed. Cir. 1995); and Green Spot (Thailand) Ltd. v. Vitasoy Int'l Holding Ltd.,
`
`86 USPQ2d 1283, 1285 (TTAB 2008). Here, there is no dispute that Respondent
`
`owns U.S. Reg. No. 3540972 for the mark KOFAL-T for “analgesic balm.” Whether the
`
`Morehouse defense is available, however, depends upon whether the mark in the
`
`registration at issue is substantially the same as the previously registered mark
`
`and whether the goods in both are substantially the same. Id.
`
`Respondent contends that the pre-existing registration for KOFAL-T renders
`
`the instant case futile; that Petitioner cannot be harmed as a matter of law because
`
`of its pre-existing registration; that the marks KOFAL and KOFAL-T are
`
`substantially identical because they share the same commercial impression and the
`
`differences between them are insignificant; and the goods listed in the subject
`
`registration for KOFAL are substantially identical and related to those listed in the
`
` 4
`
`
`
`Cancellation No. 92065406
`
`prior registration for KOFAL-T so as to prevent Petitioner’s mark for COFAL to
`
`register.
`
`Petitioner responds contending that the KOFAL-T and KOFAL marks are not
`
`the same and are not the legal equivalents; that the subject registration for KOFAL
`
`is devoid of nearly thirty-percent of the characters of the KOFAL-T mark because of
`
`the missing dash and the capital letter “T” and the commercial impression is
`
`different; and that the additional scope of goods in the subject registration, KOFAL,
`
`precludes Respondent from asserting the Morehouse defense because it has multiple
`
`different goods in two separate classes, whereas Respondent’s prior registration for
`
`KOFAL-T contains just one product, namely, “analgesic balm.”
`
`Respondent filed a reply, which we have considered, in which it argues that
`
`Petitioner has cited no authority that undermines or prevents entry of summary
`
`judgment in this action.
`
`In comparing Respondent’s KOFAL-T mark with the mark in the subject
`
`registration for KOFAL, we find that there is a genuine dispute as to whether the
`
`marks are “substantially identical” and if the marks evoke the same, continuing
`
`commercial impression. The question is whether the marks in their entireties are
`
`substantially identical. See O-M Bread, 36 USPQ2d at 1045.5 Even though the
`
`addition of a hyphen and a letter “T” may seem insignificant when added to the
`
`
`5 Note that the Morehouse standard is not the same as that used when comparing marks
`for purposes of a likelihood of confusion analysis. While the latter test requires balancing of
`a variety of factors, see In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563,
`567 (Fed. Cir. 1973), it is clear that a likelihood of confusion may be found even when the
`marks at issue are not “essentially the same.”
`
`
` 5
`
`
`
`Cancellation No. 92065406
`
`shared term KOFAL, there is a genuine dispute as to whether these additional
`
`literal elements when added to the term KOFAL create a different commercial
`
`impression with a slightly different sound and appearance.
`
`In addition, a genuine dispute of material fact exists as to whether the goods
`
`identified in Respondent’s KOFAL-T registration are identical to or substantially
`
`the same as the goods identified in its subject registration for KOFAL. See, for
`
`example, TBC Corp. v. Grand Prix, 12 USPQ2d 1311 (TTAB 1989) (“. . . goods in the
`
`five registrations opposer relies upon for its prior registration defense are related to
`
`and within the natural scope of expansion of a producer of the goods listed in the
`
`three registrations applicant seeks to cancel. Nevertheless, the goods in the
`
`registrations are different. Therefore, opposer’s ownership of the five other
`
`registrations cannot serve to preclude applicant from contesting opposer’s right to
`
`maintain the three registrations applicant seeks to cancel.”); La Fara Importing Co.
`
`v. F. Lle de Cecco di Filippo Fara S. Martino S.p.A., 8 USPQ2d 1143 (TTAB 1988),
`
`(goods in the prior registration relied upon by applicant, “alimentary pastes,” were
`
`found not to be identical to or substantially the same as the goods sought to be
`
`registered by applicant, which were “not only for alimentary pastes, but also
`
`includes a wide variety of additional items such as coffee, sugar, rice, cakes and
`
`sauces, excluding cranberry sauce and applesauce”); and Missouri Silver Pages
`
`Directory Publishing Corp., Inc. v. Southwestern Bell Media, Inc., 6 USPQ2d 1028
`
`(TTAB 1988), (goods in the prior existing registration asserted by applicant, “a
`
`telephone and discount directory addressed to senior citizens,” were not found to be
`
` 6
`
`
`
`Cancellation No. 92065406
`
`substantially the same as the services sought to be registered, “compiling a
`
`telephone directory; promoting the goods and services of others through placing
`
`advertisements and
`
`listings
`
`in directories; and publication of telephone
`
`directories.”).
`
`For the above reasons, Respondent’s motion for summary judgment is denied
`
`on its affirmative defense under Morehouse.6
`
`Proceedings herein are resumed. Dates are reset as follows:
`
`Expert Disclosures Due
`Discovery Closes
`Plaintiff's Pretrial Disclosures Due
`Plaintiff's 30-day Trial Period Ends
`Defendant's Pretrial Disclosures Due
`Defendant's 30-day Trial Period Ends
`Plaintiff's Rebuttal Disclosures Due
`Plaintiff's 15-day Rebuttal Period Ends
`
`
`
`3/31/2018
`4/30/2018
`6/14/2018
`7/29/2018
`8/13/2018
`9/27/2018
`10/12/2018
`11/11/2018
`
`In each instance, a copy of the transcript of testimony, together with copies of
`
`documentary exhibits, must be served on the adverse party within thirty days after
`
`completion of the taking of testimony. Trademark Rule 2.125.
`
`Briefs shall be filed in accordance with Trademark Rules 2.128(a) and (b). An oral
`
`hearing will be set only upon request filed as provided by Trademark Rule 2.129.
`
`
`6 The parties should note that the evidence submitted in connection with the motion for summary
`judgment is of record only for consideration of the motion. To be considered at final hearing, any
`such evidence must be properly introduced in evidence during the appropriate trial period. See Levi
`Strauss & Co. v. R. Josephs Sportswear Inc., 28 USPQ2d 1464 (TTAB 1993). In addition, the fact
`that we have identified and discussed only a few genuine disputes of material fact as a sufficient
`basis for denying the motion for summary judgment should not be construed as a finding that these
`are necessarily the only disputes which remain for trial.
`
` 7
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
