Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1118357
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`Filing date:
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`03/04/2021
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding
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`92071109
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`Party
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`Correspondence
`Address
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`Defendant
`Majik Medecine, LLC
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`BLYNN L SHIDELER
`THE BLK LAW GROUP
`3500 BROOKTREE ROAD, SUITE 200
`WEXFORD, PA 15090
`UNITED STATES
`Primary Email: blynn@blkLawGroup.com
`724-934-5450
`
`Submission
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`Motion for Summary Judgment
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`Yes, the Filer previously made its initial disclosures pursuant to Trademark Rule
`2.120(a); OR the motion for summary judgment is based on claim or issue pre-
`clusion, or lack of jurisdiction.
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`The deadline for pretrial disclosures for the first testimony period as originally set
`or reset: 07/23/2021
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`Blynn Shideler
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`Blynn@BLKLawGroup.com
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`/Blynn L. Shideler/
`
`03/04/2021
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`MotionForSummaryJudgementMARCH2021.pdf(135088 bytes )
`EXHIBITFirstRequestforDiscoveryJanuary22FINAL2021.pdf(141643 bytes )
`EXHIBITInitialDisclosurePetitioner.pdf(14250 bytes )
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`Filer's Name
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`Filer's email
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`Signature
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`Date
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`Attachments
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`
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`CBDMD, LLC
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`Plaintiff/Petitioner
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`
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`
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`-v-
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`Majik Medecine, LLC,
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`Defendant/ Registrant
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`
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`Cancellation Proceeding # 92071109
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`Registration # 5173264
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`
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`MOTION FOR SUMMARY JUDGEMENT
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`This filing is a motion for summary judgement pursuant to 37 C.F.R. §2.120, with
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`integrated brief, as this motion establishes that there is no genuine dispute as to any
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`material fact and the Registrant is entitled to judgment as a matter of law and dismal of
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`the petition for cancelation.
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`This filing is proper as it follows the Defendants Initial disclosures (submitted timely
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`on January 11, 2021) and is prior to the deadline for pretrial disclosures for the first
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`testimony period.
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`Pursuant to 37 C.F.R. §2.127(e)(2), this filing is supported by the admissions
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`contained within the “Registrant’s first request for Admissions, set of Interrogatories
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`and Request for production of documents directed to Petitioner CBDMD, LLC”
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`(hereinafter Registrant’s First Request attached hereto as an exhibit) which was properly
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`served upon counsel for Petitioner on January 22, 2021. The Request for Admissions
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`contained in the Registrant’s First Request are deemed admitted by operation of law
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`Motion
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`pursuant to Fed. R. Civ. P. 36(a)(3) as the party from whom the admissions were
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`requested, the Petitioner, failed to respond thereto.
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`Pursuant to 37 C.F.R. §2.127(e)(2), this filing is supported by what purports to be
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`the Petitioners Initial Disclosure, a copy of which is attached hereto.
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`This filing is further supported by the pleadings, the file of the registration that is
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`the subject of the proceeding, and those registration pleaded and made of record by the
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`plaintiff with its complaint.
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`CONCURRENT FILINGS
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`Concurrent with this Motion for Summary Judgement the Registrant is filing i)
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`Registrants Opposition to Petitioner’s Motion to Stay Proceeding Pending
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`Outcome of Civil Action and ii) a Motion to Compel Discovery. These concurrent
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`filings are interrelated and are separated in accordance with the guidance of TBMP
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`502.02(b), although the background below is generally repeated verbatim in all these
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`filings.
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`BACKGROUND
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`This action remains a blatant attempt of a multimillion dollar corporation, now
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`known as cbdMD, Inc (the managing member of the Petitioner1) to usurp the legitimate
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`prior trademark rights of a smaller competitor.
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`
`1 Admission No.3 of Registrant’s First Request
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`Motion
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`The Petitioner was formed November 26, 2018 by Level Brands, Inc after Level
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`Brands, Inc. was advised to cease and desist from using marks confusing similar to the
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`Registrant’s mark, CBD MD.2 The Petitioner’s very name, CBDMD, LLC (now CBD
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`Industries LLC), was selected to unfairly usurp the rights of the Registrant and in violation
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`of federal and state unfair competition laws. The name of the managing member of
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`Petitioner was changed from Level Brands, Inc. to cbdMD, Inc in the spring of 20193 to
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`unfairly usurp the rights of the Registrant and in violation of federal and state unfair
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`competition laws and further at a time well after it was formally advised to cease and
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`desist from using marks confusing similar to the Registrant’s mark CBD MD.
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`The Petitioner filed this cancellation proceeding in bad faith to drive up the legal
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`fees of the Registrant. Marty Sumachrist, chairman of the Board of Directors and CoCEO
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`of cbdMD, Inc., made this strategy clear when he sent a text message to a member of
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`Registrant stating “I hope your shareholders like to write checks to lawyers.”4 The initial
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`pleadings of the Petitioner were so deficient that the Board noted in the Order of
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`December 30, 2019 (paper #13 – Granting Defendant’s motion to dismiss on 7 of 9
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`grounds and denying the motion on two remaining grounds) that the “abundance of
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`deficiencies in the pleadings appears to demonstrate a lack of reasonable inquiry into the
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`subject matter.”
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`The Plaintiff filed a Corrected Amended Complaint which in paragraphs 61-63
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`baselessly asserted that that the “phrase CBD MD is a commonly used descriptive phrase
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`2Admission No.2 of Registrant’s First Request
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`3 Admission No. 11 of Registrant’s First Request
`4 Admission Nos. 77-78 of Registrant’s First Request
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`Motion
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`that connotes information on products which include CBD as an ingredient” (Emphasis
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`Added). The Petitioner concludes therein that the “CBD MD mark is incapable of
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`distinguishing the goods of [Registrant] from the goods of others and therefore cannot
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`function as a trademark and an indicator of source.” The Petitioner had, and still has, no
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`basis to support this assertion which was raised in bad faith solely to harass the
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`Defendant and increase their costs in defending this baseless claim.
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`The Defendants sought to engage in a discovery conference, in which, in
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`accordance with Fed. R. Civ. P. 26(f)(2), “the parties must consider the nature and basis
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`of their claims.” The Plaintiff further evidenced their bad faith filing of this case and their
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`complete disinterest in prosecuting the merits of this action when for several months
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`through November 16, 2020 they failed to cooperate with the Defendant to even schedule
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`the required Discovery Conference. Pursuant to 37 C.F.R. § 2.120(h)(1) the Defendant
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`filed a Motion for Sanctions on November 16, 2020 against Plaintiff for its failure to
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`participate in the required Discovery Conference.
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`
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`The Plaintiff’s counsel contacted the undersigned only after the filing of the Motion
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`for Sanctions. The Parties then hastily conducted an extremely brief Discovery
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`Conference, that the undersigned considers so brief and unavailing as not believed to be
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`within the spirit or meaning of the rules. In the Discovery Conference when discussing
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`the cancellation grounds that the “CBD MD mark is incapable of distinguishing the goods
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`of [Registrant] from the goods of others and therefore cannot function as a trademark and
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`an indicator of source” because “phrase CBD MD is a commonly used descriptive phrase
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`that connotes information on products which include CBD as an ingredient,” the Plaintiff’s
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`counsel would provide the undersigned no details or hint of supporting material.
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`Motion
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`The Order of January 8, 2021 (Paper 30) set a deadline for the Parties’ Initial
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`Disclosures to be due on January 11, 2021. On Monday January 11, 2021 the Registrant
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`sent their initial disclosure to the Petitioner. On this court set deadline, the Plaintiff again
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`evidenced their bad faith filing of this case and their complete disinterest in prosecuting
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`the merits of this action when they made no disclosures to the Registrant and did not
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`contact the undersigned on or prior to this deadline regarding this submission.
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`
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` On Wednesday January 22, 2021 The Registrant served the Registrant’s First
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`Request upon Petitioner’s counsel, which included requesting the identification and
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`submission (Or making the materials available for inspection) of the materials that could
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`form the Plaintiff’s initial disclosures. The Plaintiff was required to file a response to
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`these discovery requests ON OR BEFORE February 22, 2021. The Plaintiff again
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`evidenced their bad faith filing of this case and their complete disinterest in prosecuting
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`the merits of this action when they made no disclosures to the Registrant and did not
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`contact the undersigned on or prior to this deadline regarding this submission.
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`The Registrant timely filed, on January 25, 2021, a motion to compel the omitted
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`Initial Disclosures within 30 days of the Petitioner’s failure to file their Initial Disclosures
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`(due on January 11, 2021) (Paper 31). In the Board’s order of February 1, 2021, the Board
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`reiterated that the “deadline for service of initial disclosures was January 11, 2021” adding
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`that the Petitioner must submit such disclosures “by February 8, 2021 in an absence of
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`consent for an extension or suspension from Respondent. The Board hesitates to remind
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`Petitioner that it brought this cancellation proceeding in the first instance and that it was
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`filed on April 16, 2019, over 21 months ago. Petitioner carries the burden of moving
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`forward in a timely manner on the proceeding schedule.” (Emphasis added).
`5 | P a g e Cancellation Proceeding No. 92071109
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`Motion
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`The Petitioner submitted what purports to be the Petitioners Initial Disclosure on
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`Friday February 5, 2021, a copy of which is attached hereto. Allegedly complying with
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`the requirement that the party provide “a description by category and location” “of all
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`documents, electronically stored information, and tangible things that the disclosing party
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`has in its possession, custody, or control and may use to support its claims or defenses,”
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`the Petitioner noted that the following category of “documents are located at the office of
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`Petitioner or its counsel in this proceeding”: “(1) Petitioner’s business operations, (2)
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`Petitioner’s use of cbdMD as a mark, (2) Registrants’ business and use of CBD MD as a
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`mark, and (4) regulatory actions and position taken by federal and state offices or
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`agencies.”
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`As set forth in TBMP 401.02 “the Board encourages parties to actually exchange
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`copies of disclosed documents rather than to merely identify their location.” Contrary to
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`this suggestion, the Petitioner here further evidenced their bad faith prosecution of this
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`case with their clear intention of not supplying any of the alleged documents listed in the
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`purported Petitioner’s Initial Disclosures. The Petitioner disingenuously suggests in the
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`Initial Disclosure that “Petitioner will produce such information as required subject to an
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`appropriate protective order entered by the Board.” The Petitioner is likely aware a
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`protective order has already been entered in this case. Further there was no effort made
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`by the Petitioner to propose a protective order or a modification of the existing one.
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`In response to the Petitioner’s Initial Disclosures the undersigned sent email
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`correspondence to the Petitioner’s counsel on Saturday February 6, 2021 that said, in its
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`entirety:
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` Thank you for the Initial Disclosures.
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`Motion
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` It would seem that a mutually agreeable and signed Protective
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`Order Or Modification to Protective Order may be required or desired
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`shortly – would you like to propose one?
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` When and where can we review the documents identified in
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`your initial disclosure? Can we set up some timing for this review – I
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`believe this is imperative to move forward with quickly.
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` I believe our Depositions would likely begin with Martin
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`Sumichrast, Scott Coffman and Dr. Sibyl Swift, after responses to
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`outstanding discovery, of course. Please advise of desired format in this
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`COVID world, and I am sure we can accommodate reasonable requests,
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`and advise of general timing and availability.
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` I believe that we should discuss general timing in this case.
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`Outside of this case I would strongly urge your client to contact my client
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`directly before this proceeding moves on and potentially damages the
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`trademark rights of your client (possibly my client’s rights as well but I feel
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`your client is less concerned about that).”
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`In response to the inquiry of February 6, 2021, the Petitioner did not propose a
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`signed protective order, or modifications to the existing protective order, nor allow for a
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`review of the purported documents, nor discuss the format of depositions, nor discuss the
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`timing of this case. It is clear the Petitioner had no intentions of complying with basic
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`discovery rules in this tribunal and had no intentions of prosecuting this matter in any
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`substantive manner. This entire action was entered in bad faith and the Petitioner has
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`consistently ignored the rules of this tribunal throughout this proceeding.
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`Motion
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`The Plaintiff again evidenced their bad faith filing of this case and their complete
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`disinterest in prosecuting the merits of this action in this tribunal that they selected when
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`on February 12, 2021, the petitioner commenced a civil action (3:21-cv-69) in the U.S.
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`District Court of the Western District of North Carolina that included a request for
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`cancellation of the subject mark, together with other claims.
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`Also on February 12, 2021 the Petitioner filed with this tribunal Petitioner’s Motion
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`to Stay Proceeding Pending Outcome of Civil Action (paper No. 33) as a way to
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`whitewash and dismiss their bad faith filing of this action and their complete failure to
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`comply with the rules of this tribunal or prosecute the merits of this action. It is relevant
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`here to note that a stay or suspension of a Board proceeding pending the final
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`determination of another proceeding is solely within the discretion of the Board; the court
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`in which a civil action is pending has no power to suspend proceedings in a case before
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`the Board, nor do parties or their attorneys. [See Opticians Association of America v.
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`Independent Opticians of America Inc., 734 F. Supp. 1171, 14 USPQ2d 2021 (D.N.J.
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`1990) (district court has no control over Board docket and no power to stay Board
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`proceedings), rev’d on other grounds, 920 F.2d 187, 17 USPQ2d 1117 (3d Cir. 1990);
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`Martin Beverage Co. v. Colita Beverage Corp., 169 USPQ 568, 570 (TTAB 1971).]
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`ARGUMENTS
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`1. On the evidence of record in this proceeding, there is no genuine issue
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`of material fact to be resolved and the Registrant is entitled to judgement
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`on the unsupportable and unproven ground of Cancellation of the mark
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`CBD MD allegedly failing to function as a mark.
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`Motion
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`Paragraphs 56-65 of the Corrected Amended Petition allegedly set forth the basis
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`of cancellation that the subject mark CBD MD “fails to function as a mark” Paragraphs
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`61-63 are the only paragraphs that attempt to outline the petitioners alleged argument
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`that that the subject mark CBD MD “fails to function as a mark”. The petitioner argues
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`that the “phrase CBD MD is a commonly used descriptive phrase that connotes
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`information on products which include CBD as an ingredient.” The petitioner
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`concludes that the “CBD MD mark is incapable of distinguishing the goods of [Registrant]
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`from the goods of others and therefore cannot function as a trademark and an indicator
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`of source.” These unsupportable conclusions are against the evidence set forth in this
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`case.
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`The critical inquiry in determining whether a term functions as a trademark under
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`Sections 1, 2 and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052 and 1127 is “how
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`the designation would be perceived by the relevant public. To make this determination
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`[the Board] looks to specimens and other evidence of record showing how the designation
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`is actually used in the marketplace.” In re Eagle Crest, 96 USPQ2d 1227, 1229
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`(TTAB2010).
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`The parties acknowledge and agree that trademark CBDMD sought to be
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`registered in trademark application serial number 88/944,504 creates the same
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`commercial impression as the mark CBD MD in the Registrant’s Registration No.
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`5,173,264.5 Further the parties have acknowledged that the trademark sought to be
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`registered in trademark application serial number 88/451,429 containing the term CBDMD
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`5 Admission No. 25 of Registrant’s First Request
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`Motion
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`creates the same commercial impression as the mark CBD MD in the Registrant’s
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`Registration No. 5,173,264.6 Finally the parties acknowledge and agree that the
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`trademark cbdMD sought to be registered in trademark application serial number
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`88/451,502 creates the same commercial impression as the mark CBD MD in the
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`Registrant’s Registration No. 5,173,264.7 Collectively in this motion the marks in
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`trademark application serial numbers 88/944,504, 88/451,429, and 88/451,502 will be
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`referenced as the petitioner’s CBDMD marks. There is no dispute and no genuine issue
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`of material fact to be resolved between the parties that the public perception of the
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`petitioner’s CBDMD marks is the same as the Registrant’s CBD MD mark.
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`Further there is no dispute and no genuine issue of material fact to be resolved
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`between the parties that the goods sold in class 003 and 005 under the Petitioners
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`CBDMD marks sought to be registered in trademark application serial numbers
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`88/944,504, 88/451,429, and 88/451,502 contain CBD8, and these goods in these classes
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`substantially overlap with the goods identified in class 003 and 005 in the Registrant’s
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`Registration No. 5,173,264.9
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`Further the record establishes that the Petitioner asserts that petitioner’s CBDMD
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`marks, without regard to the alleged mark of the Registrant, is capable of distinguishing
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`the goods of the applicant from the goods of others and can function as a trademark and
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`an indicator of source.10 Thus it is indisputable that the Registrant’s CBD MD mark, which
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`6 Admission No. 37 of Registrant’s First Request
`7 Admission No. 49 of Registrant’s First Request
`8 Admissions Nos. 23, 35 and 47 of Registrant’s First Request
`9 Admissions Nos. 24, 36 and 48 of Registrant’s First Request
`10 Admissions Nos. 22, 34 and 46 of Registrant’s First Request
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`Motion
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`creates the same commercial impression and the petitioner’s CBDMD marks, on
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`overlapping CBD containing goods, also is capable of distinguishing the goods of the
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`applicant from the goods of others and can function as a trademark and an indicator of
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`source.
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`The parties acknowledge and agree that petitioner’s CBDMD marks sought to be
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`registered in trademark application serial number numbers 88/944,504, 88/451,429, and
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`88/451,502, 88/451,429 are not a commonly used descriptive phrases that connotes
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`information on products which include CBD as an ingredient.11 Thus it is indisputable that
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`the Registrant’s CBD MD mark, which creates the same commercial impression and the
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`petitioner’s CBDMD marks, on overlapping CBD containing goods, also is not a not a
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`commonly used descriptive phrase that connotes information on products which include
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`CBD as an ingredient.
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`In addition to the evidence of record above, the burden of the Registrant in this
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`motion may be met by showing "that there is an absence of evidence to support the
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`nonmoving party’s case." The Petitioner never had, and has not produced any evidence,
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`to support their conclusions. Of course the Petitioner never intended to produce such
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`evidence and merely used this baseless allegation to drive up the litigation costs of the
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`Registrant, and the Petitioner was able to keep this farce going for about two years,
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`without a shred of evidence. The category of documents that the Petitioner had in “its
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`possession, custody, or control and may use to support its claims or defenses” includes
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`“(1) Petitioner’s business operations, (2) Petitioner’s use of cbdMD as a mark, (2)
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`11 Admissions Nos. 21, 33 and 45 of Registrant’s First Request
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`Motion
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`Registrants’ business and use of CBD MD as a mark, and (4) regulatory actions and
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`position taken by federal and state offices or agencies.”12 None of these admittedly broad
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`categories would include commonly used descriptive phrases that connotes information
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`on products which include CBD as an ingredient. There was no category of documents
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`listed to support this count because, of course, the Petitioner had no such documentation
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`and merely included and maintained this count in bad faith to advance the strategy of Mr.
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`Sumachrist to have the Registrant “write checks to lawyers.”13
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`Based upon the evidence in this proceeding, there is no genuine issue of material
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`fact to be resolved that the mark CBD MD does indeed function as a mark. The
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`conclusions that “CBD MD mark is incapable of distinguishing the goods of [Registrant]
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`from the goods of others and therefore cannot function as a trademark and an indicator
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`of source” is contradicted by the evidence in this case. The registrant is entitled to
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`judgement on this basis of Cancellation of the mark CBD MD.
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`2. On the evidence of record in this proceeding, there is no genuine issue
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`of material fact to be resolved and the Registrant is entitled to judgement
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`on the unsupportable and unproven ground of Cancellation of the mark
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`CBD MD based upon an alleged lack of bone fide intention to use the mark
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`in legal commerce.
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`Paragraphs 22-55 of the Corrected Amended Petition allegedly set forth the basis
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`of cancellation that the subject mark CBD MD due to an alleged lack of bone fide intention
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`12 Petitioners Initial Disclosures
`13 Admission Nos. 77-78 of Registrant’s First Request
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`Motion
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`to use the mark in legal commerce, however there remains no genuine issues of fact to
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`support this basis. The essence of this argument is that the use of the subject mark on
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`the goods was not legal for the subject goods. The Board has already established in this
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`case that the Petitioner must demonstrate by clear and convincing evidence not only that
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`the use violated the applicable law, but also “that the non-compliance was material, that
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`is was of such gravity and significance that the usage must be considered unlawful- so
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`tainted that, as a matter of law, it could have no trademark rights – warranting cancellation
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`of the mark involved.” (Emphasis Added) See Satinine Societa in Nome Collettivo Di S.A.
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`e. M. Usellina v P.A.B. Produits Et Appareils De Beaute, 209 USPG 958, 964-65 (TTAB).
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`The suggestion that the Petitioner could meet this standard is obviated by the admissions
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`of the Petitioner.
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`As noted above, there is no dispute and no genuine issue of material fact to be
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`resolved between the parties that the goods sold in class 003 and 005 under the
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`Petitioners CBDMD marks sought to be registered in trademark application serial
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`numbers 88/944,504, 88/451,429, and 88/451,502 contain CBD14, and these goods in
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`these classes substantially overlap with the goods identified in class 003 and 005 in the
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`Registrant’s Registration No. 5,173,264.15
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`Petitioner asserts that the goods in class 003 and 005 used with the mark CBDMD
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`in trademark application serial number 88/944,504 sold since at least as early as May 24,
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`2017, with the mark in trademark application serial number 88/451,429 as at least as early
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`as December 20, 2018, and with the mark in trademark application serial number
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`14 Admissions Nos. 23, 35 and 47 of Registrant’s First Request
`15 Admissions Nos. 24, 36 and 48 of Registrant’s First Request
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`Motion
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`88/451,502 as at least as early as December 20, 2018 have not and do not violate any
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`known federal or state laws.161718 The Parties agree that the cbdMD, Inc made no public
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`statements, or SEC filings suggesting that the goods in class 003 and 005 used with the
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`mark CBDMD in trademark application serial number 88/944,504 sold since at least as
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`early as May 24, 2017, with the mark in trademark application serial number 88/451,429
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`as at least as early as December 20, 2018, and with the mark in trademark application
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`serial number 88/451,502 as at least as early as December 20, 2018 violate any known
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`federal or state laws.192021
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`The FDA statements on CBD make it clear that CBD products are not a per se
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`violation of a statute regulating a parties goods. The FDA has made their position known
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`on their website “FDA Regulation of Cannabis and Cannabis-Derived Products, Including
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`Cannabidiol (CBD) | FDA” stating “There is a significant interest in the development of
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`therapies and other consumer products derived from cannabis and its components,
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`including cannabidiol (CBD). FDA recognizes the potential opportunities that cannabis or
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`cannabis-derived compounds may offer and acknowledges the significant interest in
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`these possibilities. However, FDA is aware that some companies are marketing products
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`containing cannabis and cannabis-derived compounds in ways that violate the Federal
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`Food, Drug and Cosmetic Act (FD&C Act) and that may put the health and safety of
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`consumers at risk. The agency is committed to protecting the public health while also
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`16 Admission No. 62 of Registrant’s First Request
`17 Admission No. 66 of Registrant’s First Request
`18 Admission No. 70 of Registrant’s First Request
`19 Admissions Nos. 63-64 of Registrant’s First Request
`20 Admissions Nos. 67-68 of Registrant’s First Request
`21 Admissions Nos. 71-72 of Registrant’s First Request
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`Motion
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`taking steps to improve the efficiency of regulatory pathways for the lawful marketing of
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`appropriate cannabis and cannabis-derived products. FDA has a number of resources
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`available that address cannabis and cannabis-derived products, such as CBD, and the
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`agency wants to ensure that consumers and other stakeholders have access to these
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`resources in a centralized location.” In short, FDA is working to create and advance a
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`meaningful regulatory framework for CBD products.
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`What the FDA considers illegal is best illustrated by the warning letters it sends out
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`to illegal marketers. On December 22, 2020 at FDA Warns Companies Illegally Selling
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`CBD Products | FDA the FDA announced, in relevant part, that “Today, the U.S. Food
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`and Drug Administration issued five warning letters to companies for selling products
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`containing cannabidiol (CBD) in ways that violate the Federal Food, Drug, and Cosmetic
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`Act (FD&C Act). All five warning letters address the illegal marketing of unapproved CBD
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`products claiming to treat medical conditions. The warning letters include CBD products
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`that are especially concerning from a public health perspective due to the route of
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`administration, including nasal, ophthalmic and inhalation. In addition, they address
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`violations relating to the addition of CBD to food, and the impermissible marketing of CBD
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`products as dietary supplements. Two of the letters also address CBD products illegally
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`marketed for pets, including a product for use in the eye. “The FDA’s first priority is to
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`protect the health and safety of Americans. Many questions remain regarding the
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`science, safety, effectiveness and quality of products containing CBD,” said FDA
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`Principal Deputy Commissioner Amy Abernethy, M.D., Ph.D. “We remain focused
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`on exploring potential pathways for CBD products to be lawfully marketed while
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`also educating the public about these outstanding questions of CBD’s safety.
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`15 | P a g e Cancellation Proceeding No. 92071109
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`Motion
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`Meanwhile, we will continue to monitor and take action, as needed, against
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`companies that unlawfully market their products — prioritizing those that pose the
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`greatest risk of harm to the public.”
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`As the FDA clearly does not consider CBD containing products as a per se violation
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`of a statute regulating such goods, the issue is whether a court or government agency
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`having competent jurisdiction under the statue involved has previously determined that
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`the party is not in compliance with the relevant statute. The Petitioner admits that neither
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`the Petitioner nor cbdMD, Inc. has received any warning letter or other correspondence
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`from the FDA regarding the goods in class 003 and 005 used with the mark CBDMD in
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`trademark application serial number 88/944,50422, or with the mark in trademark
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`application serial number 88/451,429,23 or with the mark in trademark application serial
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`number 88/451,502.24 These goods overlap with the Registrants CBD containing goods.
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`The Registrant has received no such FDA warning letter and the Petitioner can produce
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`no evidence to support this conclusion.
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`The evidence supports quite the opposite, namely that the Registrants goods
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`violate no known state or federal law as neither does the Petitioners. Thus the facts
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`unequivocally establish that the Petitioner cannot demonstrate by clear and convincing
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`evidence not only that the use violated the applicable law, but also “that the non-
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`compliance was material, that is was of such gravity and significance that the usage must
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`22 Admission No. 65 of Registrant’s First Request
`23 Admission No. 69 of Registrant’s First Request
`24 Admission No. 73 of Registrant’s First Request
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`be considered unlawful- so tainted that, as a matter of law, it could have no trademark
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`rights – warranting cancellation of the mark involved.”
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`As there is no genuine issue of material fact to be resolved that the mark CBD MD
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`should be cancelled due to an alleged lack of bone fide intention to use the mark in legal
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`commerce, the Registrant is entitled to judgement on this basis of Cancellation of the
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`mark CBD MD.
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`3. On the evidence of record in this proceeding, there is no genuine issue
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`of material fact to be resolved and these facts establish that the Petitioner
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`is guilty of unclean hands and gross misconduct and bad faith in the
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`Cancellation of the mark CBD MD and the Registrant is entitled to
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`judgement.
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`The doctrine of unclean hands and bad faith is an affirmative defense that is
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`available in Board proceedings. See Trademark Rule 2.106(b)(1) and Fed. R. Civ. P.
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`8(b); Seculus Da Amazonia S/A v. Toyota Jidosha Kabushiki Kaisha, 66 USPQ2d 1154,
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`1157-58 (TTAB 2003); Hornblower & Weeks Inc. v. Hornblower & Weeks Inc., 60
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`USPQ2d 1733, 1738 (TTAB 2001); See also Duffy-Mott Company v. Cumberland
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`Packing Company, 424 F2d 1095, 165 USPQ 422, 425 (CCPA 1972) (“Trademark rights
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`under the statute are no longer divorced from equitable principles.”). In establishment of
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`an unclean hands defense, a trademark defendant must show both the misconduct and
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`second that the defense is related to a plaintiff's claim. In other words, misconduct
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`unrelated
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`to
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`the claim
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`to which
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`it
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`i