Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA956995
`
`Filing date:
`
`02/27/2019
`
`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.
`
`Petitioner Information
`
`Name
`
`Entity
`
`Address
`
`Fotona, LLC
`
`Corporation
`
`2307 Springlake Road
`Suite 518
`Dallas, TX 74234
`UNITED STATES
`
`Citizenship
`
`Wyoming
`
`Attorney informa-
`tion
`
`Steven P. Hollman
`Sheppard Mullin Richter & Hampton, LLP
`2099 Pennsylvania Avenue, NW, Suite 100
`Washington, DC 20006-6801
`UNITED STATES
`shollman@sheppardmullin.com
`202-747-1941
`
`Registration Subject to Cancellation
`
`Registration No.
`
`3898378
`
`Registration date
`
`01/04/2011
`
`Registrant
`
`Millennium Dental Technologies, Inc.
`10945 South Street, Suite 306
`Cerritos, CA 90703
`UNITED STATES
`Email: docket@jacksontidus.com
`
`Goods/Services Subject to Cancellation
`
`Class 041. First Use: 2003/01/01 First Use In Commerce: 2004/10/01
`All goods and services in the class are subject to cancellation, namely: Educational services, namely,
`conducting programs in the field of laser dental procedures
`
`Class 044. First Use: 2003/01/01 First Use In Commerce: 2004/10/01
`All goods and services in the class are subject to cancellation, namely: Medical services, namely,
`laser dental procedures
`
`Grounds for Cancellation
`
`The mark is or has become generic
`
`Trademark Act Section 14(3), or Section 23 if on
`Supplemental Register
`
`Related Proceed-
`ings
`
`Millennium Dental Technologies, Inc. v. Dr. Allen Scott Terry and Fotona, LLC,
`Civil No. 8:18-cv-00348- DOC-KES (C.D. Cal.)
`
`

`

`Attachments
`
`Fotona -- Petition for Cancellation 02.27.19.pdf(77692 bytes )
`
`Signature
`
`/Steven P. Hollman/
`
`Name
`
`Date
`
`Steven P. Hollman
`
`02/27/2019
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`)
` )
`)
` )
`) Cancellation No. __________________
` )
`MILLENNIUM DENTAL TECHNOLOGIES, )
`INC.,
`)
` )
`)
` )
` )
` )
` )
` )
`
`FOTONA, LLC,
`
`
`
`Petitioner,
`
`
`
`v.
`
`
`
`Respondent.
`
`In the matter of Registration No. 3898378
`For the mark: LANAP
`Date registered: January 4, 2011
`
`
`
`
`
`
`
`PETITION FOR CANCELLATION
`
`
`Petitioner Fotona, LLC (“Petitioner” or “Fotona”), a limited liability corporation
`
`organized and existing under the laws of the State of Wyoming, having an address at 2307
`
`Springlake Road #518, Dallas, Texas 74234, believes it is or will be damaged by the continued
`
`registration of the mark LANAP shown in Registration No. 3898378 for services in International
`
`Classes 41 and 44, registered January 4, 2011, by Respondent Millennium Dental Technologies,
`
`Inc. (“MDT”), a corporation organized and existing under the laws of the state of California and
`
`having an address at 10945 South Street, Suite 104A, Cerritos, California 90703, and hereby
`
`petitions to cancel the same.
`
`
`
`As grounds for cancellation, Petitioner states and alleges the following:
`
`1.
`
`Fotona is the exclusive United States distributor of a world leading medical laser
`
`manufactured by Fotona d.o.o. and recognized for its innovative award-winning laser systems for
`
`applications in aesthetics and dermatology, dentistry, surgery, and gynecology. Fotona d.o.o. is
`
`SMRH:489520310.3
`
`
`
`-1-
`
`
`
`
`
`

`

`the maker and creator of the LightWalker® dual-wavelength dental laser system featuring both
`
`an Er:YAG and Nd:YAG laser. The LightWalker® is designed to treat periodontal disease
`
`through a laser assisted new attachment procedure leading to periodontal regeneration, i.e. true
`
`regeneration of the attachment apparatus (new cementum, new periodontal ligament, and new
`
`alveolar bone) on a previously diseased root surface, along with a host of general dentistry
`
`applications including, but not limited to, cavity preparation, crown lengthening, endodontic
`
`treatment, and placing implants in cases of periodontitis. Fotona d.o.o. developed its first
`
`LightWalker® laser (then known as the Fotona Fidelis) in 1994 and has sold various iterations of
`
`the LightWalker® laser device since then.
`
`2.
`
`Respondent MDT is the maker and creator of the PerioLase MVP-7 dental laser
`
`device (the “PerioLase”), an Nd:YAG laser designed to treat periodontal disease through a laser
`
`assisted new attachment procedure leading to periodontal regeneration, i.e. true regeneration of
`
`the attachment apparatus (new cementum, new periodontal ligament, and new alveolar bone) on
`
`a previously diseased root surface.
`
`3.
`
`On July 1, 1997, MDT obtained United States Patent No. 5,642,997 (“the ‘997
`
`Patent”), which relates to a laser assisted new attachment procedure used to perform periodontal
`
`therapy.
`
`4.
`
`In addition, in 2004, MDT obtained clearance from the United States Food and
`
`Drug Administration (the “FDA”) for the patented LANAP protocol. See MDT Response to
`
`ADA Laser Position Statement (released Apr. 29, 2009)
`
`http://millenniumdental.com/MDT_Response_to_ADA_Laser_Position_Statement/Press_Releas
`
`e_for_ADA_Laser_StatementV3_2009.htm (last viewed Feb. 26, 2019) (“The LANAP protocol
`
`was … patented in 1994 and FDA cleared in 2004.”). Specifically, MDT’s 510(k) submission to
`
`SMRH:489520310.3
`
`
`
`-2-
`
`
`
`
`
`

`

`the FDA (No. K030290) indicated that the intended use for the PerioLase laser device includes
`
`“laser assisted new attachment procedure (cementum-mediated periodontal ligament new-
`
`attachment to the root surface in the absence of long junctional epithelium).” MDT marketed its
`
`patented laser assisted new attachment procedure through the use of the simple acronym
`
`“LANAP” from at least as early as October of 2004.
`
`5.
`
`On December 28, 2007, MDT filed with the Trademark Office its application for
`
`the subject LANAP mark. The application was assigned Serial No. 77360886. The term
`
`“LANAP” is an acronym for the generic term “Laser Assisted New Attachment Procedure.”
`
`6.
`
`Along with that application, MDT provided specimens showing usage of the mark
`
`in commerce. In one specimen, a promotional letter from MDT founder Robert H. Gregg, MDT
`
`wrote that it had “developed the Laser Assisted New Attachment Procedure™, (LANAP™) . . .
`
`to treat moderate to severe periodontal disease.” A second specimen was a sheet explaining the
`
`“Laser Assisted New Attachment Procedure™/PerioLase MVP-7® Licensing Package” that
`
`elsewhere shortened “Laser Assisted New Attachment Procedure™” to “LANAP™.” See
`
`Specimens (2) attached to MDT TEAS Plus Application, December 28, 2007. Among other
`
`matters, these specimens highlighted the fact that “LANAP” is merely an acronym for “laser
`
`assisted new attachment procedure.” See id.
`
`7.
`
`On March 31, 2008, the Trademark Office issued an Office Action refusing
`
`registration of the proposed mark. The Office Action explained that the proposed mark was
`
`“merely descriptive” because “[a]s shown by the attached Internet evidence, LANAP is a
`
`commonly used acronym for LASER ASSISTED NEW ATTACHMENT PROCEDURE and is
`
`used in a descriptive manner in connection with dental laser procedures.” See March 31, 2008,
`
`Office Action, Serial No. 77/360886.
`
`SMRH:489520310.3
`
`
`
`-3-
`
`
`
`
`
`

`

`8.
`
`The Office Action added that “with regard to the Class 44 services [as a dental
`
`procedure], the proposed mark [also] appears to be generic in connection with the identified
`
`services and, therefore, incapable of functioning as a source-identifier for applicant’s services.”
`
`Id. In other words, “LANAP” was simply a term understood in the marketplace to describe a
`
`“laser assisted new attachment procedure,” not a term used to identify a particular source for that
`
`procedure.
`
`9.
`
`Further, the Office Action explained that “Registration is refused because the
`
`proposed mark, as used on the specimen of record, does not function as a service mark to
`
`identify and distinguish applicant’s services from those of others and to indicate their source.” Id.
`
`Rather, with respect to the educational services in Class 41, the Office Action explained that the
`
`mark did not “function as a service mark because it is being referred to only as the subject matter
`
`for educational courses. It is not being used in the sale or advertisement of medical services, nor
`
`is it acting as a service mark to identify the source of the educational courses.” Id.
`
`10.
`
`Therefore, the mark initially was refused registration under Trademark Act
`
`Section 2(e)(1), 15 U.S.C. § 1052(e)(1); TMEP §§ 1209 et seq.
`
`11. MDT filed responses to the Board’s Office Actions refusing registration, in which
`
`it contended that the LANAP mark was not generic and was not merely descriptive because it
`
`referred directly to MDT’s patented technology protected by the ‘997 patent. For instance, in its
`
`September 29, 2008 Response to Office Action, MDT explained that LANAP is a coined term
`
`for “a procedure unique only to Applicant” that MDT sought “to market and license.”
`
`Specifically, MDT explained that “Applicant is engaged in the license and exploitation of its
`
`patented procedure and related LANAP brand.” See September 29, 2008, MDT Response to
`
`Office Action (emphasis added). Indeed, MDT asserted that the cited uses of LANAP provided
`
`SMRH:489520310.3
`
`
`
`-4-
`
`
`
`
`
`

`

`by the examining attorney to conclude that LANAP was descriptive were “all licensed uses of
`
`Applicant’s marks.” Id.
`
`12.
`
`Similarly, in its December 30, 2009 Response to Office Action, MDT explained
`
`that “Applicant obtained a patent (U.S. Patent No. 5,642,997) for an underlying dental
`
`procedure. Applicant markets and provides educational and medical services to other dentists
`
`and doctors under the trademark LANAP in the form of training programs relating to this
`
`procedure and licenses to use the procedure.” See December 30, 2009, MDT Response to
`
`Office Action, at *1 (emphasis added). Further, MDT explained that the LANAP term could not
`
`be generic because “to the extent that the LANAP mark has been used by some as a short-hand
`
`way to describe the procedure and related services . . . it is only because Applicant, as a patent
`
`holder, currently maintains the exclusive right to use and license the technology.” Id. at *3–4
`
`(emphasis added). The Response went on to state “[a]s that patent ultimately expires and other
`
`competitors enter the market, consumers will then use a generic name for this type of procedure
`
`and related services more frequently”. Id. at *4.
`
`13.
`
`Finally, in a third Response to Office Action, first filed on July 26, 2010 and then
`
`amended and refiled due to a signature error on August 3, 2010, MDT again reiterated that
`
`“LANAP is the brand name of a species of laser dental services offered by Applicant through its
`
`licensees” related to “a patent for a revolutionary new procedure for treating gum disease with a
`
`laser.” See August 3, 2010, MDT Response to Office Action, at *4, 8. And, to be clear, the
`
`referred to licensees were “dentists who license Applicant’s technology” and specifically MDT’s
`
`patent-protected technology. Id. at *4. Further, MDT argued that LANAP had acquired
`
`secondary meaning as “distinctive of Applicant’s [patented] services.” Id. at *17. In other
`
`words, according to MDT itself, LANAP is an acronym that refers to the unique technology that
`
`SMRH:489520310.3
`
`
`
`-5-
`
`
`
`
`
`

`

`was protected by the ‘997 patent at the time MDT was prosecuting its application for the
`
`LANAP mark.
`
`14.
`
`The Trademark Office accepted MDT’s arguments and cleared the LANAP mark
`
`for publication on October 19, 2010. MDT was granted Registration No. 3898378 for services in
`
`International Classes 41 and 44 for LANAP on January 4, 2011.
`
`15.
`
`Notably, concurrently with MDT’s efforts to trademark LANAP, Fotona sought
`
`FDA clearance for its ability to perform laser assisted new attachment procedure.
`
`16.
`
`On March 4, 2008, the FDA granted Fotona’s 510(k) submission to the FDA (No.
`
`K070355) and cleared the indication of “laser assisted new attachment procedure (cementum-
`
`mediated periodontal ligament new-attachment to the root surface in the absence of long
`
`junctional epithelium)” for the Fotona Fidelis III Er:YAG/Nd:YAG Laser System Family (the
`
`predecessor to what is now the Fotona LightWalker® laser family).
`
`17.
`
`Having learned of Fotona’s new indication, MDT sued Fotona for patent
`
`infringement in the United States District Court for the Central District of California on March
`
`16, 2009. See Millennium Dental Technologies, Inc. v. Fotona d.d., Case 2:09-cv-01792-R-RZ,
`
`(C.D. Cal., March 16, 2009).
`
`18.
`
`In its lawsuit, MDT explained that it “ha[d] become well known for its patented
`
`Laser-Assisted New Attachment Procedure, which is marketed and referred to as LANAP.”
`
`Compl. ¶ 2. Nevertheless, MDT asserted that “Fotona applied for FDA clearance that allows the
`
`Fotona products to be used to perform the LANAP method covered by the ‘997 Patent.” Id.
`
`¶ 11. Further, MDT offered its belief that Fotona’s laser “products include some features and
`
`functionality that were included in the products for the specific purpose of performing the
`
`patented [LANAP] method, and have no non-infringing use.” Id. ¶ 12.
`
`SMRH:489520310.3
`
`
`
`-6-
`
`
`
`
`
`

`

`19.
`
`Partially in response to the lawsuit, Fotona submitted an Amendment to its 510(k)
`
`No. K070355 clearance on July 10, 2009, in which Fotona asked for the removal of its clearance
`
`for “laser assisted new attachment procedure (cementum-mediated periodontal ligament new-
`
`attachment to the root surface in the absence of long junctional epithelium).” The FDA acceded
`
`to Fotona’s request. The parties settled the lawsuit in 2012.
`
`20.
`
`From 2009 to 2016, despite the fact that Fotona’s lasers could perform laser
`
`assisted new attachment procedure (or LANAP), as the FDA already had determined, Fotona did
`
`not market its lasers as having the ability to perform “laser assisted new attachment procedure”
`
`or “LANAP,” nor did it teach the patented method to its customers.
`
`21.
`
`In February of 2016, MDT’s ‘997 patent expired. Upon the expiration of MDT’s
`
`‘997 patent and the consequent termination of MDT’s patent monopoly, the “laser assisted new
`
`attachment procedure,” or “LANAP,” became dedicated to public use.
`
`22.
`
`Following the expiration of its patent, MDT sought and obtained FDA clearance
`
`for “Periodontal regeneration - true regeneration of the attachment apparatus (new cementum,
`
`new periodontal ligament, and new alveolar bone) on a previously diseased root surface when
`
`used specifically in the LANAP® Protocol” under clearance K151763 issued by the FDA on
`
`March 15, 2016.
`
`23.
`
`Fotona subsequently submitted to the FDA a new 510(k) application, and on June
`
`26, 2017 the FDA granted Fotona’s request to add “laser assisted new attachment procedure
`
`(cementum-mediated periodontal ligament new-attachment to the root surface in the absence of
`
`long junctional epithelium)” to its list of cleared indications.
`
`24.
`
`Fotona also applied to the FDA for 510(k) clearance for “Periodontal regeneration
`
`– true regeneration of the attachment apparatus (new cementum, new periodontal ligament, and
`
`SMRH:489520310.3
`
`
`
`-7-
`
`
`
`
`
`

`

`new alveolar bone) on a previously diseased root surface.” The FDA granted the clearance on
`
`December 1, 2017 under clearance K172819.
`
`25.
`
`On October 11, 2016, MDT brought suit against Fotona and Dr. Allen Scott Terry
`
`in Superior Court of the State of California charging that a technique developed by Dr. Terry and
`
`used on a Fotona LightWalker® device, called the “Dual Wavelength Laser Assisted Osseous
`
`Surgery” or “DWLAOS,” was nothing more than LANAP by a different name and that
`
`defendants were engaging in acts of unfair competition by training practitioners to perform the
`
`DWLAOS procedure and comparing that procedure to LANAP, which MDT claimed as
`
`proprietary despite the expiration of the ‘997 patent. In a Second Amended Complaint charging
`
`a Lanham Act violation, MDT specifically alleged: “Defendant’s Misappropriation of
`
`Millennium’s trademarked term ‘LANAP®’ to assist in their sales of Fotona’s products and
`
`procedures causes . . . a likelihood of consumer confusion, and deprives Millennium of the fair
`
`earnings of its skill, labor and enterprise invested in developing the LANAP® mark.” Second
`
`Amended Complt., ¶ 43, filed in Millennium Dental Technologies, Inc. v. Dr. Allen Scott Terry
`
`and Fotona, LLC, Case No. 30-2016-00880518-CU-BC-CJC (Orange Cou. Sup. Ct. Feb. 9,
`
`2018). The suit, now removed to federal court, is pending as Civil No. 8:18-cv-00348-DOC-
`
`KES, before the United States District Court for the Central District of California, Southern
`
`Division.
`
`26.
`
`Concurrent with the expiration of the ‘997 patent, MDT’s trademark registration
`
`for LANAP—a specific term for its previously patented technology—must be cancelled as well.
`
`This is so because MDT cannot use the name it gave to its previously patented method and
`
`perpetuate indefinitely an exclusive right by ignoring the dedication of the formerly patented
`
`procedure to public use: “the cessation of the monopoly and the falling of the patented [method]
`
`SMRH:489520310.3
`
`
`
`-8-
`
`
`
`
`
`

`

`into the domain of things public [means] that along with the public ownership of the [method]
`
`there must also necessarily pass to the public the generic designation of the [method] which has
`
`arisen during the monopoly.” See Singer Mfg. Co. v. June Mfg. Co., 163 U.S. 169, 185–86
`
`(1896); see also Kellogg v. National Biscuit Co., 305 U.S. 111, 119–120 (1938) (“Since during
`
`the life of the patents [a specific term] was the general designation of the patented product, there
`
`passed to the public upon the expiration of the patent, not only the right to make the article as it
`
`was made during the patent period, but also the right to apply thereto the name by which it had
`
`become known.”); Scott Paper Co. v. Marcalus Mfg. Co., 326 U.S. 249, 256 (1945) (explaining
`
`that a patentee may not secure “a continuation of his [or her] monopoly by resorting to trademark
`
`law and registering as a trademark any particular descriptive matter appearing in the
`
`specifications”); In re Farmer Seed & Nursery Co., 137 U.S.P.Q. (BNA) ¶ 231 (T.T.A.B. Feb. 6,
`
`1963) (explaining that upon cessation of the patent, “the owner of the patent or the manufacturer
`
`of the patented thing [may not] . . . retain[] the designated name which [is] essentially necessary
`
`to vest the public with the full enjoyment of that which ha[s] become theirs”); cf. Anti-Monopoly,
`
`Inc. v. General Mills Fun Group, 611 F.2d 296, 300 (9th Cir. 1979) (“Trademarks . . . are not
`
`properly used as patent substitutes to further or perpetuate product monopolies.”).
`
`27. Moreover, the acronym LANAP with respect to “laser assisted new attachment
`
`procedure” is clearly a descriptive and “generic term of the [patented method], which describes it
`
`with a fair degree of accuracy.” Thus, upon the cessation of the monopoly, MDT has no
`
`exclusive right to the term. See Kellogg, 305 U.S. at 112–113.
`
`28.
`
`Fotona lasers are capable of performing the previously patented laser assisted new
`
`attachment procedure or “LANAP” as found by the FDA based on its determination of
`
`substantial equivalence between Fotona’s LightWalker® laser device and the predicate MDT
`
`SMRH:489520310.3
`
`
`
`-9-
`
`
`
`
`
`

`

`PerioLase device. Until the expiration of the patent, however, Fotona had no right to produce
`
`lasers designed specifically to perform LANAP or to promote and teach LANAP to its
`
`customers. Over that time, LANAP acquired and became a common meaning for the generic
`
`term laser assisted new attachment procedure and was used to describe the patented method,
`
`especially as MDT licensed its patent to others. Now that Fotona and others are at liberty to
`
`promote the formerly patented method because the patent has expired, it follows that MDT must
`
`not be allowed to extend its patent monopoly by asserting that the LANAP designation for the
`
`formerly patented procedure remains the exclusive and proprietary source identifier for MDT.
`
`Because the LANAP procedure disclosed in the patent has been dedicated to public use, it cannot
`
`be exclusive or proprietary to MDT.
`
`29.
`
`Notwithstanding the public dedication of the patented LANAP procedure, MDT
`
`has acted to extend its patent monopoly and to restrict others – including Fotona – from
`
`performing LANAP and from promoting their ability to do so. But MDT cannot protect LANAP
`
`as the acronym for the generic term laser assisted new attachment procedure which describes the
`
`formerly patented method.
`
`30.
`
`Accordingly, for each and every reason stated above, Fotona believes that it will
`
`be damaged by the continued registration of the generic acronym LANAP and the continued
`
`efforts of MDT to claim exclusive rights to the term LANAP and to bar others from making
`
`reference to LANAP in describing the formerly patented procedure. Fotona therefore
`
`respectfully petitions to cancel Registration No. 3898378.
`
`
`
`
`
`SMRH:489520310.3
`
`
`
`-10-
`
`
`
`
`
`

`

`WHEREFORE, Fotona prays that this Petition for Cancellation be sustained in favor of
`
`Petitioner and that Registration No. 3898378 be cancelled.
`
`
`Date: February 27, 2018
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`SHEPPARD, MULLIN, RICHTER &
` HAMPTON, LLP
`
`By /Steven P. Hollman/__________
` Steven P. Hollman
` James N. Bierman, Jr.
`
`2099 Pennsylvania Ave., N.W., Suite 100
`Washington, D.C. 20006
`Tel: (202) 747-1941
`Fax: (202) 747-3437
`shollman@sheppardmullin.com
`jbierman@sheppardmullin.com
`
`Mark Finkelstein
`Brent Colasurdo
`UMBERG ZIPSER LLP
`1920 Main Street, Suite 750
`Irvine, CA 92614
`Tel: (949) 670-0052
`Fax: (949) 679-0461
`mfinkelstein@umbergzipser.com
`bcolasurdo@umbergzipser.com
`
`Counsel for Petitioner Fotona, LLC
`
`SMRH:489520310.3
`
`
`
`-11-
`
`
`
`
`
`

`

`
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on this 27th day of February, 2019, a copy of the foregoing Petition
`
`for Cancellation was served by first class mail, postage prepaid, addressed to the following
`
`correspondent of record for Respondent Millennium Dental Technologies, Inc.:
`
`
`
`M. Alim Malik, Esq.
`JACKSON TIDUS
`2030 Main Street, Suite 1200
`Irvine, California 92614
`
` amalik@jacksontidus.law
`
`
`
`
`/Steven P. Hollman/
`Steven P. Hollman
`James N. Bierman, Jr.
`SHEPPARD, MULLIN, RICHTER &
` HAMPTON, LLP
`2099 Pennsylvania Ave., N.W., Suite 100
`Washington, D.C. 20006
`Tel: (202) 747-1941
`Fax: (202) 747-3437
`shollman@sheppardmullin.com
`jbierman@sheppardmullin.com
`
`
`Counsel for Petitioner Fotona, LLC
`
`
`
`
`
`
`
`
`
`
`
`SMRH:489520310.3
`
`
`
`
`-12-
`
`
`
`
`
`