Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA932306
`
`Filing date:
`
`11/01/2018
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Petition for Cancellation
`
`Notice is hereby given that the following party has filed a petition to cancel the registration indicated below.
`
`Citizenship
`
`SWEDEN
`
`Petitioner Information
`
`Name
`
`Entity
`
`Address
`
`Thomas Skold
`
`Individual
`
`Bjorno Gard, S
`761 41
`Norrtalje, 761 41
`SWEDEN
`
`Attorney informa-
`tion
`
`Arthur Jackson
`Moser Taboada
`1030 Broad Street - Suite 203
`Shrewsbury, NJ 07702
`UNITED STATES
`docketing@mtiplaw.com
`732-935-7100
`
`Registration Subject to Cancellation
`
`Registration No.
`
`4429015
`
`Registration date
`
`11/05/2013
`
`Registrant
`
`Galderma Laboratories, L.P.
`14501 North Freeway
`Forth Worth, TX 76177
`UNITED STATES
`
`Goods/Services Subject to Cancellation
`
`Class 003. First Use: 2007/06/21 First Use In Commerce: 2007/06/21
`All goods and services in the class are subject to cancellation, namely: Cosmetics and skin care pre-
`parations, namely, face, hand and body soaps, cleansers and moisturizers; hair shampoos and con-
`ditioners; sunblocks and sunscreens
`
`Class 005. First Use: 2005/05/27 First Use In Commerce: 2005/05/27
`All goods and services in the class are subject to cancellation, namely: Pharmaceutical and medical
`preparations, namely, oral and topical drugs for thetreatment of inflammatory disorders of the skin,
`namely, acne, dermatitis, psoriasis, eczema, rosacea, and related disorders
`
`Grounds for Cancellation
`
`Priority and likelihood of confusion
`
`Trademark Act Sections 14(1) and 2(d)
`
`Related Proceed-
`ings
`
`92052897
`
`

`

`Marks Cited by Petitioner as Basis for Cancellation
`
`U.S. Application
`No.
`
`85037342
`
`Application Date
`
`05/13/2010
`
`Registration Date
`
`NONE
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`BASED ON RESTORADERM LIPOGRID TECHNOLOGY
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 005. First use: First Use: 0 First Use In Commerce: 0
`A lipid structural matrix of solid lipid particles and vesicles comprised of fatty
`acids, cholesterol-type stabilizers,phospholipids and or ceramides with a carrier
`function, sold as a component of dermatological preparations used in the treat-
`ment of skin disorders
`
`U.S. Application
`No.
`
`85037362
`
`Application Date
`
`05/13/2010
`
`Registration Date
`
`NONE
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`RESTORADERM LIPIDGRID
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 001. First use: First Use: 0 First Use In Commerce: 0
`A lipid structural matrix of solid lipid particles and vesicles comprised of fatty
`acids, cholesterol-type stabilizers,phospholipids and or ceramides with a carrier
`function, sold as a component of a pharmaceutical preparation
`
`Attachments
`
`85037342#TMSN.png( bytes )
`85037362#TMSN.png( bytes )
`SKD013 - Letter Accompanying Petition.pdf(89114 bytes )
`
`

`

`SKD013 - Petition to Cancel.pdf(198078 bytes )
`SKD013_EXH_1_GDConsolidated.pdf(401623 bytes )
`SKD013_EXH_2_2004Agmt.pdf(1222828 bytes )
`SKD013_EXH_3_SkoldBrief.pdf(4300198 bytes )
`SKD013_EXH_4_SkoldReplyBrief.pdf(229934 bytes )
`SKD013_EXH_5_GDCrossAppellantReplyBrief.pdf(190673 bytes )
`
`Signature
`
`/Arthur E. Jackson/
`
`Name
`
`Date
`
`Arthur E. Jackson
`
`11/01/2018
`
`

`

`
`
`
`
`
`In the Matter of Registration No. 4429015
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`In the Matter of Registration No. 4429015
`
`Dated: November 1, 2018
`______________________________________
`Thomas Sköld,
`)
`
`Petitioner,
`)
`
`
`)
`
`v.
`)
`
`
`) Cancellation No. ______
`Galderma Laboratories, L.P.,
`)
`Registrant
`)
`______________________________________ )
`
`BOX TTAB/FEE Galderma Laboratories, L.P. Galderma Limited, LLC
`Commissioner for Trademarks
`2900 Crystal Drive
`Arlington, VA 22202-3513
`
`
`
`
`
`
`LETTER ACCOMPANYING PETITION FOR CANCELLATION
`
`
`
`Consistent with the actions in Cancellation Proceeding No. 92052897, the Board would
`
`likely, absent the Civil Litigation described in the accompanying Petition, hear the priority claim,
`
`and consider whether to dismiss the contract claim. Registrant would want to seek to dismiss one
`
`or both claims. If the Board is inclined to stay in light of Civil Action No. 2:14-cv-05280 filed in
`
`the United States District Court for the Eastern District of Pennsylvania, and the appeals in front
`
`of the Court of Appeals for the Third Circuit (Docket Nos. 17-3148 and 17-3231), Petitioner
`
`suggests in the interest of efficiency staying this matter, while noting for the Registrant the
`
`preservation of the right to file motions to dismiss and an Answer when the stay is lifted to the
`
`same extent and on comparable timing, as if the lifting of the stay had started the clock for such
`
`actions, and noting for the Petitioner a comparable preservation of rights.
`
` 1
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`
`
`

`

`
`
`
`
`
`In the Matter of Registration No. 4429015
`
`Respectfully submitted,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Date: November 1, 2018___________ By: ___/Arthur E Jackson/______
`
`
`
`
`
`
`
`
`
`
`
`Arthur E. Jackson, Ph.D., Esq.
` New Jersey Bar No. 00288-1995
`
` ajackson@mtiplaw.com
` MOSER TABOADA
`
`1030 Broad Street, Suite 203
`
`Shrewsbury, NJ 07702
`
`(732) 935-7100
`
`(732) 935-7122
` Attorney for Petitioner
`
`
`
`
`
`
`
`
` 2
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`
`
`

`

`
`
`
`
`
`In the Matter of Registration No. 4429015
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`In the Matter of Registration No. 4429015
`
`Dated: November 1, 2018
`______________________________________
`Thomas Sköld,
`)
`
`Petitioner,
`)
`
`
`)
`
`v.
`)
`
`
`) Cancellation No. ______
`Galderma Laboratories, L.P.,
`)
`Registrant
`)
`______________________________________ )
`
`BOX TTAB/FEE Galderma Laboratories, L.P. Galderma Limited, LLC
`Commissioner for Trademarks
`2900 Crystal Drive
`Arlington, VA 22202-3513
`
`
`PETITION FOR CANCELLATION
`
`
`
`
`
`
`
`Thomas Sköld an individual who is a citizen of Sweden, and resident at Björnö Gård, S-
`
`761 41, Norrtälje, Sweden, believes that he will be damaged by Registration No. 4429015
`
`("Subject Registration") as it relates to goods in Class 3, namely cosmetics and skin care
`
`preparations, namely, face, hand and body soaps, cleansers and moisturizers; hair shampoos and
`
`conditioners; sunblocks and sunscreens., and hereby petitions to cancel the registration of the
`
`mark RESTORADERM for these goods.
`
`According to the registration, the Registrant is Galderma Laboratories, L.P., composed of
`
`Galderma Limited, LLC, a Delaware limited liability company. Apparently in more detail, recent
`
`court filings by Registrant indicate that Registrant is "a privately-held partnership owned in part
`
`by Galderma General LLC and in part by Galderma Limited LLC." Consolidated Principal and
`
`Response Brief of Appellees / Cross-Appellants filed 11 May 2018 in Docket Nos. 17-3148 and
`
` 1
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`

`

`
`
`
`
`
`In the Matter of Registration No. 4429015
`
`17-3231 before the Court of Appeals for the Third Circuit ("Galderma Consolidated Brief,"
`
`attached as Exhibit 1). Although such assignment does not appear to have been recorded, the
`
`Galderma Consolidated Brief asserts at n. 5 that "Galderma's [incl. Galderma Laboratories, L.P.]
`
`U.S.-based intellectual property was assigned to Nestlé Skin Health [Care, S.A.], a parent
`
`company of the Galderma entities." Thus, Nestlé Skin Health Care, S.A., is believed to be the
`
`assignee of the Subject Registration.
`
`In suspended Cancellation Proceeding No. 92052897, Sköld sought cancellation of
`
`Registration No. 2985751, which asserts to relate to goods in Class 5, namely therapeutic skin
`
`care preparations and treatment for skin disorders, and Registration No. 3394514, which asserts
`
`to relate to goods in Class 3, namely non-medicated skin care preparations. Both registrations list
`
`Galderma Laboratories, Inc. as the current owner. Registration No. 2985751 has been formally
`
`abandoned by Galderma Laboratories, Inc. Recent court filings by Registrant indicate that
`
`Galderma Laboratories, Inc. is now known as NSH Services, Inc. Galderma Consolidated Brief
`
`at p. i.
`
`Thus, the surviving relevant RESTORADERM registrations are the Subject Registration,
`
`Class 3 to COSMETICS AND SKIN CARE PREPARATIONS, NAMELY, FACE, HAND
`
`AND BODY SOAPS, CLEANSERS AND MOISTURIZERS; HAIR SHAMPOOS AND
`
`CONDITIONERS; SUNBLOCKS AND SUNSCREENS, and Class 5 to PHARMACEUTICAL
`
`AND MEDICAL PREPARATIONS, NAMELY, ORAL AND TOPICAL DRUGS FOR THE
`
`TREATMENT OF INFLAMMATORY DISORDERS OF THE SKIN, NAMELY, ACNE,
`
`DERMATITIS, PSORIASIS, ECZEMA, ROSACEA, AND RELATED DISORDERS; and No.
`
`3394514, Class 3 to NON-MEDICATED SKIN CARE PREPARATIONS. These registrations, if
`
`under conflicting ownership, would create a likelihood of confusion.
`
` 2
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`

`

`
`
`
`
`
`In the Matter of Registration No. 4429015
`
`In the application for the Subject Registration, to overcome such a rejection for likelihood
`
`of confusion, Registrant filed an Affidavit of Maud Robert averring that "[t]hrough the corporate
`
`chain, both Galderma Laboratories, L.P. and Galderma Laboratories, Inc. are ultimately 100%
`
`owned by Galderma Pharma S.A." Though (by apparent editorial error) the Affidavit says the
`
`opposite, Galderma Pharma S.A. is believed to be a wholly-owned subsidiary of Galderma, S.A.
`
`Consistent with control by Galderma, S.A., the Affidavit stated that the global portfolio of the
`
`Galderma family of trademarks is "centrally maintained and managed by Galderma S.A. through
`
`its trademark department based in Lausanne Switzerland." In the associated response to Office
`
`Action, Galderma's attorney stated: "As in In re Wella A.G. [5 USPQ2d 1359, 1361 (TTAB
`
`1987)], Galderma Pharma S.A. 'controls the activities and operations of [Galderma Laboratories,
`
`L.P. and Galderma Laboratories, Inc.][company name insertion in the original], including the
`
`selection, adoption and use of the trademarks.'" Thus, the use of the mark, and control of
`
`trademark prosecution, rests in the same hands.
`
`On information and belief, when Nestlé S.A. acquired all of the stock of Galderma S.A.
`
`in 2014, it placed Galderma S.A. as a wholly-owned subsidiary of its wholly-owned Nestlé Skin
`
`Health S.A. This matches representations on ownership made by Galderma Laboratories L.P.,
`
`Galderma Laboratories, Inc., Galderma S.A. and Nestlé Skin Health S.A. in a Galderma
`
`Consolidated Brief at p. i.
`
`Cancellation No. 92052897 was briefed for final hearing on Cause 1, Priority of Use,
`
`when on 28 January 2015 the Board suspended proceedings pending final disposition of Civil
`
`Action No. 2:14-cv-05280 filed in the United States District Court for the Eastern District of
`
`Pennsylvania on 15 September 2014. The defendants in that civil action include Galderma
`
`Laboratories, L.P, as well as Galderma Laboratories, Inc., Galderma S.A. and Nestlé Skin Health
`
` 3
`
`
`
`
`
`

`

`
`
`
`
`
`In the Matter of Registration No. 4429015
`
`S.A. That civil action has now had a Judgment, and has had a hearing on 30 October 2018 in
`
`front of the Court of Appeals for the Third Circuit on cross appeals (Docket Nos. 17-3148 and
`
`17-3231). In the Judgment, the appended Verdict Form recited that Plaintiff had established that
`
`under a 2004 Agreement (attached as Exhibit 2), the same agreement so named below,
`
`defendants were required to transfer the RESTORADERM mark to Sköld following agreement
`
`termination. (Brief of Appellant Sköld, including Vol. 1 of the Appendix, including the
`
`Judgment at JA00006, appended as Exhibit 3; further appended, as Exhibit 4, is Reply Brief of
`
`Appellant in Support of Principal Appeal and Brief in Opposition to Cross-Appeal; also further
`
`appended, as Exhibit 5, is Cross-Appellants' Reply Brief)
`
`
`
`This current Petition maintains the claim of priority and also a contract theory that
`
`Respondent no longer owns the mark, which contract theory Sköld believes is properly within
`
`the Board's legislative mandate.
`
`
`As grounds therefor, it is alleged that:
`
`1.
`
`Sköld has adopted and continuously used the trademark RESTORADERM, since at least
`
`as early as December, 2001 to the present, in connection with presentations and promotions of a
`
`technology utilizing phospholipid and/or ceramide, cholesterol and fatty acid for dermally and
`
`transdermally delivering bioactive substances ("RESTORADERM Technology").
`
`2.
`
`Collagenex Pharmaceuticals Inc. ("Collagenex") is the predecessor in interest to the
`
`current record owner of the '514 registration, Galderma Laboratories, Inc., and of the record
`
`owner of the Subject Registration, Registrant. In 2008, Galderma Laboratories, Inc. acquired all
`
`outstanding stock of Collagenex.
`
` 4
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`

`

`
`
`
`
`
`In the Matter of Registration No. 4429015
`
`3.
`
`Sköld is the first to use the mark in the United States, and has continuously used the mark
`
`in the United States to this time. Therefore, Sköld seeks cancellation of Registrant's registrations.
`
`4.
`
`Under the contract theory supported below, Registrant no longer owns the trademark
`
`RESTORADERM, moreover, Sköld has priority of use of the mark. So Sköld, the true owner, as
`
`found by the jury in Civil Action No. 2:14-cv-05280, seeks cancellation of Registrant's
`
`registrations.
`
`Factual Background
`
`5.
`
`In mid-2001, Sköld began development work on the composition that would soon be
`
`termed RESTORADERM, the work done at Institute of Surface Chemistry (a division within the
`
`Royal Institute of Technology in Stockholm Sweden). Thereafter Sköld began marketing a
`
`RESTORADERM Technology that was based on compositions of stratum corneum lipids
`
`(phospholipids/ceramide/cholesterol/fatty acid) and the presence of different macromolecular
`
`aggregates
`
`formed of
`
`the
`
`lipids, and consulting services
`
`in connection
`
`therewith.
`
`RESTORADERM Technology is among other things for delivering pharmaceutically active
`
`substances into or through the dermis of a patient.
`
`6.
`
`On information and belief, samples of such compositions labeled RESTORADERM were
`
`sent in 2001 to dermatology professors in the United States.
`
`7.
`
`In late 2001, Sköld presented to Collagenex the technology, which he labeled the
`
`"Restoraderm Technology." Prior to such presentation, on information and belief, Collagenex did
`
`not use the trademark RESTORADERM.
`
`8.
`
`In late 2001, Jeff Day, Vice President for Dermatology at Collagenex began negotiations
`
`for exclusive license to the RESTORADERM Technology.
`
` 5
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`

`

`
`
`
`
`
`In the Matter of Registration No. 4429015
`
`9.
`
`Sköld licensed the trademark RESTORADERM and the associated RESTORADERM
`
`Technology to Collagenex Pharmaceuticals Inc. ("Collagenex"), the predecessor in interest to the
`
`current owners of said Subject Registration and '514 registration, Galderma Laboratories Inc.
`
`("Galderma"), in an Agreement effective February 11, 2002 (the "2002 Agreement"). (Note: it is
`
`well settled that "[w]hether a transfer of a particular right or interest under a patent is an
`
`assignment or a license does not depend upon the name by which it calls itself, but upon the legal
`
`effect of its provisions." Vaupel Textilmaschinen KG v. Meccanica Euro Italia SPA, 944 F.2d
`
`870, 875 (CAFC 1991), quoting Waterman v. Mackenzie, 138 U.S. 252, 255 (1891).)
`
`10.
`
`Thereafter, Collagenex filed the application leading to the now abandoned '751
`
`registration in late February 2002, and collaborated with Sköld on the filing of a first provisional
`
`patent application on the RESTORADERM Technology in March, 2002. The resulting '751
`
`registration was in International Class 005 and was for THERAPEUTIC SKIN CARE
`
`PREPARATIONS AND TREATMENT FOR SKIN DISORDERS.
`
`11.
`
`The 2002 Agreement was for development services and formulations. Collagenex
`
`undertook in the 2002 Agreement to pay Sköld notable amounts of money for three deliverables,
`
`and a notable annual consulting fee. The amounts of these payments could not reasonably be
`
`termed "token" payments. Moreover, other, more substantial payment obligations are set forth in
`
`the 2002 Agreement that are inextricably tied to the deliverables and the consulting services.
`
`12.
`
`The deliverables were conveyed by Sköld under the labeling RESTORADERM to
`
`Collagenex in Newtown, Pennsylvania, USA ("Collagenex Worksite"), and payments therefor
`
`were made to Sköld from the JP Morgan Chase Bank NA bank of 1 Chase Manhattan Plaza, NY
`
` 6
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`
`
`10081 New York, USA.
`
`
`
`

`

`
`
`
`
`
`In the Matter of Registration No. 4429015
`
`13.
`
`The consulting services, labeled RESTORADERM Technology, were delivered both by
`
`phone and fax to the Collagenex Worksite and via in person visits by Sköld to the Collagenex
`
`Worksite, and payments therefor were made to Sköld from the JP Morgan Chase Bank NA bank
`
`of 1 Chase Manhattan Plaza, NY 10081 New York, USA. Payments (made first under the 2002
`
`Agreement, then under the Consulting Agreement identified below) were made on a quarterly
`
`basis from February 2002 throughout May 2007 to an amount which cannot be termed "token."
`
`14.
`
`The 2002 Agreement permitted, and thereby acknowledged, the continued use of
`
`RESTORADERM by Sköld.
`
`15.
`
`Throughout a period from about February 2002 until about November 2007, Sköld
`
`applied his consulting services as part of the development team, in connection with which he
`
`used his own laboratory facility, drafted clinical studies to be conducted by U.S. dermatologists,
`
`published clinical studies, supervised third party laboratories and manufacturing plants,
`
`presented and promoted to many pharmaceutical companies, presented to opinion leaders mostly
`
`in the United States, attended scientific committee meetings and acted as an ambassador for the
`
`RESTORADERM Technology at small and large medical conventions in the U.S. and
`
`elsewhere. These presentations included presentations to Ferndale Lab (presentation at Ferndale,
`
`Ferndale, MI), Johnson & Johnson (presentation at New Jersey, NJ), Medicis (presentation at
`
`Scottsdale, AZ), Novartis (presentation at East Hanover, NJ), Pfizer (presentation at Newtown,
`
`PN), Ranbaxy (presentation at Princeton, NJ), Stiefel (meeting at Waldorf Astoria Hotel, New
`
`York, NY), Valeant (presentation at the Grand Hotel Stockholm, Sweden), and more. Such
`
`meetings promoted interest in RESTORADERM Technology, including the RESTORADERM
`
`consulting services of Sköld.
`
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`

`
`
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`
`
`In the Matter of Registration No. 4429015
`
`16.
`
`On information and belief, one or more posters on RESTORADERM was exhibited at the
`
`American Academy of Dermatology 2004 (Washington, DC) and 2005 (New Orleans, LA). A
`
`poster was exhibited at the American Contact Dermatitis Society, 16th Annual Meeting,
`
`February 17, 2005 (New Orleans, LA) (titled "A Comparator Study of an Adjunctive Dermal
`
`Lipid Replacement Foam (Restoraderm®) in the Management of Refractory Hand Contact
`
`Dermatitis"). The Poster showed
`
`the RESTORADERM composition, without added
`
`medicament, effective in reducing or eliminating irritant and/or allergic contact dermatitis.
`
`Starting at about this timeframe onwards, presentations by Sköld noted this non-medicated
`
`effectiveness. Such meetings promoted interest in RESTORADERM Technology, including the
`
`RESTORADERM consulting services of Sköld.
`
`17.
`
`RESTORADERM Technology has been presented a various scientific meetings during
`
`the period from 2002-2011, and to various disease unions (such as the Rocesea Society). All
`
`such meetings promoted
`
`interest
`
`in RESTORADERM Technology,
`
`including
`
`the
`
`RESTORADERM consulting services of Sköld.
`
`18.
`
`Collagenex acquired modified rights
`
`in
`
`the
`
`technology,
`
`labeled "Restoraderm
`
`Technology," in an agreement effective August 19, 2004 (the "2004 Agreement"). The 2004
`
`Agreement superseded the 2002 Agreement as to the Restoraderm Technology, and provided
`
`that it is binding upon its successors (§9.2).
`
`19.
`
`The 2004 Agreement references a Consulting Agreement to be executed on date even
`
`therewith. Again Sköld's services were to be annually paid for with non-token payments.
`
` 8
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`

`

`
`
`
`
`
`In the Matter of Registration No. 4429015
`
`20.
`
`In June 2005, Collagenex filed a Statement of Use in the application leading to the now
`
`abandoned '751 registration, providing specimens that indicated that the material was a "foam for
`
`the delivery of skin care preparations…"
`
`21.
`
`In July 2007, Collagenex filed the application leading to the '514 registration. The
`
`resulting registration was in International Class 003 and was for NON-MEDICATED SKIN
`
`CARE PREPARATIONS. This application was filed with a specimen which incompletely shows
`
`the labeling of the product. On information and belief, that labeling indicated only a moisturizing
`
`use, not a pharmaceutical use.
`
`22.
`
`In November 2007, Greg Ford, Director of Business Development at Collagenex,
`
`announced and later emailed that the company did not have the resources to continue
`
`development and promotion of RESTORADERM Technology. The email was in reply from an
`
`email by Sköld seeking certainty so that he could "start talking to various parties that might have
`
`an interest in the technology."
`
`23.
`
`From December 2007 to March 2011 the RESTORADERM Technology was marketed
`
`by Sköld to many dermatological companies in the world, with a majority of the marketing
`
`efforts made in person in the United States. In 2008 a number of potential deals were terminated
`
`due to uncertainties of whether or not the rights to patents and trademarks were to be returned to
`
`Sköld by Collagenex/Galderma (Registrant) without litigation. The floor terms of these
`
`negotiations were at valuations for among other things the consulting services of Sköld are for
`
`values that could not be termed "token."
`
`24.
`
`Citing breach of contract, Sköld sent a termination letter to Collagenex (2004 Agreement)
`
`on January 29, 2008 requesting patents and patent applications, trademarks to be returned
`
` 9
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`

`
`
`
`
`
`In the Matter of Registration No. 4429015
`
`together with a settlement on outstanding milestones. In seeking the milestone payment
`
`settlement, in effect, Sköld was seeking payments that were inextricably linked to his
`
`RESTORADERM consulting services and RESTORADERM Technology compositions.
`
`25.
`
`On February 12, 2008, Collagenex responded, asserting that it was not in breach.
`
`26.
`
`On February 26, 2008, Collagenex announced to Sköld that Collagenex had been
`
`acquired by Galderma.
`
`27.
`
`In March 2008, Sköld sent a letter to Collagenex giving Galderma time to decide whether
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`the RESTORADERM Technology was of interest to it. In a Conference call in March between
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`Sköld and Art Clapp of Galderma, Galderma stated that it needed three to six months to make
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`such a decision.
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`28.
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`In or about March 2009, Sköld enquired of Quintin Cassady, Vice President and General
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`Counsel at Galderma, of about his having heard that Galderma had decided not to pursue the
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`RESTORADERM Technology but had interest in the trademark RESTORADERM. Mr. Cassady
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`said that this was nonsense and that Sköld should take no notice to such "rumors."
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`29.
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`In August 2009, Galderma Laboratories, L.P. (Galderma Limited, LLC, general partner)
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`filed a U.S. Trademark Application No. 77805846
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`in International Class 003 for
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`RESTORADERM for COSMETICS AND SKIN CARE PREPARATIONS, NAMELY, FACE,
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`HAND AND BODY SOAPS, CLEANSERS AND MOISTURIZERS; HAIR SHAMPOOS
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`AND CONDITIONERS; SUNBLOCKS AND SUNSCREENS. That application has become
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`Registration No. 4429015, the Subject Registration now sought to be cancelled. The specimen,
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`filed 8 August 2013, was in highly relevant part as follows:
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`In the Matter of Registration No. 4429015
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`30.
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`In November 27th, 2009, Galderma sent Sköld a notice of termination of the 2004
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`Agreement, in which it stated that per a Paragraph 8.5(b) of the 2004 Agreement that it was
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`returning all applicable materials, documents, and/or information to Sköld. Among the things set
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`forth in the cited provision is "all goodwill" relating to "Restoraderm Intellectual Property."
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`Among the things returned to Sköld pursuant to this letter was an international portfolio of patent
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`applications and about 1,000 products and samples labeled RESTORADERM. Patents and patent
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`applications were returned to Sköld on February 22nd 2010. This letter made clear to Sköld, that
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`while payments due for past services and products may be in dispute, Sköld's RESTORADERM
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`Technology and services needed to be even more actively marketed elsewhere.
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`31.
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`The United States Patent and Trademark Office received on December 8, 2009, and
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`recorded at Reel/Frame: 4109/0411, an assignment from Collagenex Pharmaceuticals, Inc. to
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`Galderma Laboratories, Inc. of Registration No. 3394514, the assignment having an execution
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`date of August 1, 2008.
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`32.
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`During 2010, beginning on or about February 16, 2010, Sköld was paid for travel and
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`paid additional fees in connection with his RESTORADERM consulting services. Also during
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`this period, samples labeled RESTORADERM were sent to multiple pharmaceutical companies.
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`Also during 2010, PowerPoint presentations on RESTORADERM Technology were made to
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`multiple pharmaceutical companies. Slide presentations that identify the natural components of
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`the RESTORADERM Technology compositions and their excellent skin penetration were made
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`to pharmaceutical companies throughout the period from late 2001 to today.
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`33.
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`RESTORADERM Technology, as that terminology is used by Sköld, is well known
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`among U.S. dermatology physicians regarded as opinion leaders as well as by most
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`pharmaceutical companies working in the dermatology field.
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`34.
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`Sköld has received on or about 100 or more phone calls and e-mails from people in the
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`U.S., most of from dermatologists, making enquiries about whether RESTORADERM refers to a
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`lipid composition based on natural skin lipids (as the terminology is used by Sköld) or a more
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`traditional dermatological suave (as the term "Restoraderm" is now used by Galderma).
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`35.
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`The evident confusion became apparent, Sköld noticed, during the summer of 2010 when
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`rumors spread that Galderma was in the process of launching "Cetaphil Restoraderm" in Canada
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`(Cetaphil being a trademark owned by Galderma) and later on would also be launching the same
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`in the U.S.
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`36.
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`"Cetaphil Restoraderm," according to Sep. 14, 2010 Press Release from Galderma on
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`Cetaphil Restoraderm,, was being offered for sale in the U.S in at least the late 2010 time frame.
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`According to web postings in this time frame, this product contained (emphasis added): water,
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`glycerin, caprylic/capric triglyceride, helianthus annuus (sunflower) seed oil, pentylene glycol,
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`butyrospermum parkii (shea butter), sorbitol, cyclopentasiloxane, cetearyl alcohol, behenyl
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`alcohol, glyceryl stearate, tocopheryl acetate, hydroxypalmitoyl sphinganine, niacinamide,
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`allantoin, panthenol, arginine, disodium ethylene dicocamide PEG-15 disulfate, glyceryl stearate
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`citrate, sodium PCA, ceteareth-20, sodium polyacrylate, caprylyl glycol, citric acid,
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`dimethiconol, disodium EDTA, sodium hyaluronate, cetyl alcohol. RESTORADERM
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`Technology however is dependent on significant amounts of phospholipid and/or ceramide,
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`cholesterol and free fatty acids. RESTORADERM Technology is also incompatible with
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`significant amounts of oils, such as those underlined above. Thus, clearly, "Cetaphil
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`Restoraderm" is not RESTORADERM Technology.
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`37.
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`Objective evidence of the confusion is provided by rosacea-support.org/cetaphil-
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`restoraderm-for-extra-dry-skin-and-eczema.html, where it is written with respect to the "Cetaphil
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`Restoraderm" that (emphasis added): "When Galderma acquired Collagenex in 2008, Collagenex
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`listed a technology known as Restoraderm (along with Oracea and Sansrosa) as one of the assets
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`acquired. RESTORADERM Technology at that time was described as a 'proprietary, foam-
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`based, topical drug delivery technology'. It isn’t clear to me whether this product [Cetaphil
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`Restoraderm] is related to this technology or is something else entirely."
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`38.
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`Sköld attended the Caribbean Dermatology Symposium on Aruba in January 2011, along
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`with about 300 U.S. dermatologists. One of the lectures was sponsored by Galderma and
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`mentioned Cetaphil Restoraderm and some of its components. It was clear to Sköld that
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`attendees were looking around in the audience for Sköld wondering what this was all about.
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`After the lecture dermatologists came up to Sköld and wondered why Sköld had changed the
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`composition and dropped the basic idea behind RESTORADERM Technology.
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`39.
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`Sköld is currently working with a company called Ferndale, and with another company
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`previously known as Intraderm Oculus, to develop products using Sköld’s Restoraderm
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`technology. The product developed with Intraderm Oculus is based on Sköld’s Restoraderm
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`technology and was launched into the marketplace in April 2016. However, because of
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`Galderma’s actions, Sköld cannot use his Restoraderm trademark to identify those products---
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`though Sköld would do so if he could.
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`40.
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`In possible anticipation of the outcome of the appeal of the civil action, the Galderma
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`parties may be seeking to transition consumers to buy its eczema products without the disputed
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`mark. Two products found in a CVS store on 25 September 2018 were seemingly directed to the
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`same market niche, but one was Cetaphil® PRO RESTORADERM® Gentle Body Wash (with
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`Filagrin complex and a National Eczema Association certification), and the other was Cetaphil®
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`PRO DRY SKIN Soothing Wash (with "unique" Filagrin complex and a National Eczema
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`Association certification). Looking these products up online shows that they have the same list of
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`ingredients (Water, Butyrospermum Parkii (Shea) Butter, Sodium Trideceth Sulfate, Helianthus
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`Annuus (Sunflower) Seed Oil, Glycerin, Sodium Lauroamphoacetate, Sodium Chloride,
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`Cocamide MEA, Citric Acid, Niacinamide, Sodium PCA, Allantoin, Arginine, Tocopheryl
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`Acetate, Caprylyl Glycol, 1,2 Hexanediol, Guar Hydroxypropyltrimonium Chloride, Potassium
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`Sorbate, Disodium EDTA). At www.cetaphil.com/pro-gentle-body-wash, it says, suggestive of
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`the transition away from the disputed mark: Cetaphil PRO Gentle Body Wash – New name,
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`same great formula as Cetaphil RestoraDerm!" At www.amazon.com/Cetaphil-Pro-Soothing-
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`Wash-Ounce/dp/B07CYD55KZ, there is the following interesting graphic suggestive of the
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`intent, in the United States, to transition away from using the RESTORADERM mark:
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`In the Matter of Registration No. 4429015
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`Cause 1: Priority of Use
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`41.
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`Recitations on the history and use of RESTORADERM, ¶¶1 – 39 above, are adopted and
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`re-alleged here.
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`42.
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`Sköld has used RESTORADERM in the United States in connection with a dermatology
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`product, and in connection with consulting services for a dermatology product, from a time prior
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`to any conception of that mark by Registrant or its predecessor.
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`43.
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`Sköld has continuously used RESTORADERM in this country from his first use in the
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`United States until today.
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`44.
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`The RESTORADERM services and Technology are integrally connected with the goods
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`described in the Subject Registration, and the RESTORADERM services are, within the small
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`world of dermatological product developers, well identified as associated with Sköld. Therefore,
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`those in small world of dermatological product developers will be likely to confuse any goods
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`sold under the Subject Registration as being associated with Sköld.
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`45.
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`Accordingly, the Subject Registration, Registration No. 4429015, should both be
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`cancelled under Lanham Act §2(d), 15 U.S.C. §1052(d).
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`Cause 2: Contract Theory
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`46.
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`The trademark RESTORADERM is owned by Sköld due to (a) the trademark being part
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`of that recited in Section 2.1 of the 2004 Agreement or (b) a fatal ambiguity in the 2004
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`Agreement as to the trademark subject matter, which in turn implicates parole evidence which
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`clearly indicates that trademark RESTORADERM was a subject of the 2004 Agreement.
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`47.
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`Under Pennsylvania law, a contract will be found to be ambiguous if, and only if, it is
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`reasonably or fai