Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA1081353
`09/11/2020
`
`ESTTA Tracking number:
`
`Filing date:
`
`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
`
`Attorney informa-
`tion
`
`Dynamic Sports Nutrition, LLC
`
`Limited Liability Company
`
`Citizenship
`
`Texas
`
`1240 WILSON RD. CT.
`HUMBLE, TX 77396
`UNITED STATES
`
`KELLY O. WALLACE
`WELLBORN & WALLACE, LLC
`1218 MENLO DR. SUITE E
`ATLANTA, GA 30318
`UNITED STATES
`Primary Email: kelly@wellbornlaw.com
`Secondary Email(s): sam@wellbornlaw.com
`404-352-3990
`
`Docket Number
`
`Registration Subject to Cancellation
`
`Registration No.
`
`3378354
`
`Registration date
`
`02/05/2008
`
`Registrant
`
`HI-TECH PHARMACEUTICALS, INC.
`6015-B UNITY DRIVE
`NORCROSS, GA 30071
`UNITED STATES
`
`Goods/Services Subject to Cancellation
`
`Class 005. First Use: 2002/03/04 First Use In Commerce: 2002/03/31
`All goods and services in the class are subject to cancellation, namely: Dietary supplements, exclud-
`ing anobolicsteroids
`
`Grounds for Cancellation
`
`Abandonment
`
`Trademark Act Section 14(3)
`
`The mark is or has become generic
`
`Trademark Act Section 14(3), or Section 23 if on
`Supplemental Register
`
`Immoral or scandalous matter
`
`Trademark Act Sections 14(3) and 2(a)
`
`The registration is being used by, or with the per-
`mission of, the registrant so as to misrepresent
`the source of the goods or services on or in con-
`nection with which the mark is used
`
`Trademark Act Section 14(3)
`
`Fraud on the USPTO
`
`Trademark Act Section 14(3); In re Bose Corp.,
`
`

`

`Related Proceed-
`ings
`
`Hi-Tech Pharmaceuticals, Inc. v. Dynamic Sports Nutrition, et al., Civil Action
`No. 1:16-cv-949-MLB (N.D. Georgia)
`
`580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir.
`2009)
`
`Attachments
`
`Cancellation Petition.pdf(343329 bytes )
`Ex A - Order.pdf(1048135 bytes )
`Ex B - Ciba Registration.pdf(581614 bytes )
`Ex C - The Upjohn Company.pdf(876346 bytes )
`Ex D - USPTO File for 2002 Attempted Reg.pdf(1110773 bytes )
`Ex E - USPTO File for 2005 Attempted Reg.pdf(2823555 bytes )
`Ex F - USPTO File for 2008 Registration.pdf(1106615 bytes )
`Ex G - Criminal.pdf(887652 bytes )
`Ex H - 2006 Crim.pdf(5587345 bytes )
`Ex I - FTC 2017 Order.pdf(1492290 bytes )
`Ex J - 2017 Crim.pdf(2022149 bytes )
`Ex K - Catlin Depo Pages.pdf(2184216 bytes )
`Ex L - BSCG Report.pdf(2643244 bytes )
`Ex M - Bannister Depo Pages.pdf(673169 bytes )
`
`Signature
`
`Name
`
`Date
`
`/Kelly O. Wallace/
`
`Kelly O. Wallace
`
`09/11/2020
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Registration No. 3,378,354
`Registered on February 5, 2008
`
`DYNAMIC SPORTS NUTRITION, LLC,
`
`
`
`Petitioner,
`
`
`v.
`
`
`
`HI-TECH PHARMACEUTICALS, INC.
`
`
`
`Respondent.
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`Cancellation No. ________
`
`PETITION FOR CANCELLATION
`
`Petitioner, Dynamic Sports Nutrition, LLC (“Petitioner” or “DSN”), believes it is and
`
`will be damaged by the continued registration of U.S. Registration No. 3,378,354 on the
`
`Principal Register and hereby petitions for cancellation of said registration.
`
`As grounds for this Petition, it is alleged that:
`
`The Parties
`
`1.
`
`Respondent Hi-Tech Pharmaceuticals, Inc. (“Respondent” or “Hi-Tech”) is a
`
`corporation organized under the laws of the State of Georgia.
`
`2.
`
`Respondent is the owner of the “DIANABOL” Mark, U.S. Registration No.
`
`3,378,354, filed on June 26, 2007 and registered on the Principal Register on February 5, 2008
`
`for “Dietary supplements, excluding anabolic steroids,” in International Class 5 (the “Mark”).
`
`Respondent has claimed an alleged date of first use in commerce of March 31, 2002.
`
`3.
`
`Petitioner DSN is one of the leading manufacturers and sellers of dietary and
`
`nutritional supplements in the United States.
`
`
`
`1
`
`

`

`4.
`
`Petitioner and Respondent both manufacture and sell dietary and nutritional
`
`supplements and compete with each other in the marketplace in general.
`
`The “Dianabol” name and Respondent’s DIANABOL Mark
`
`5.
`
`In 1958, Ciba Pharmaceutical Company (“Ciba”) registered the DIANABOL
`
`Mark for use as the trade name of an anabolic steroid (methandrostenolone). (See Exhibit A,
`
`June 2, 2016 Order from Hi-Tech Pharmaceuticals v. Dynamic Sports Nutrition, LLC, et al.,
`
`Civil Action No. 1:16-CV-00949-MLB (N.D. Georgia 2016) (the “Order”) at 14-15 (detailed
`
`discussion of “dianabol1” and citations); Exhibit B, USPTO File on Ciba Registration at 5).
`
`6.
`
`The term has come to be known generically to refer to goods that either contain or
`
`function the same as the anabolic steroid methandrostenolone. (Id.). Indeed, as early as 1969,
`
`United States federal courts recognized that “dianabol” (with a lower-case “d”) referred to “a
`
`drug to help patients gain weight and improve their appetite.” Patton v. Finch, 305 F. Supp. 810,
`
`812 (W.D.N.C. 1969); see also SEC No-Action letter re: the Upjohn Company, 1985 WL 54062
`
`(Mar. 26, 1985) (referring to “dianabol” as a generic drug name) (copy attached at Ex. C). The
`
`word “dianabol” is now ubiquitous as a reference to anabolic steroids and other performance
`
`enhancing substances generally. (Order at 14-15).
`
`7.
`
`On December 29, 2000, Ciba’s original DIANABOL mark was cancelled for
`
`failure to file the required Section 8 Declaration of Use. See Exhibit B at 1-2.
`
`Respondent’s Initial Attempts to Register the Mark
`
`8.
`
`Hi-Tech first attempted to register the DIANABOL Mark in 2002 for “Goods and
`
`Services: the sale and identification of specific vitamin and nutritional supplements.” (See
`
`
`1 As used herein, DIANABOL in all-capital letters refers to the Hi-Tech mark; “Dianabol” with a capital D refers to
`the products with which Hi-Tech has used the DIANABOL mark; and “dianabol” in all lower case refers to the
`generic steroid which was the subject of the original Ciba registration.
`
`
`
`2
`
`

`

`Exhibit D, USPTO File for 2002 Registration at 23). The USPTO rejected that application for a
`
`variety of defects, including a failure to provide evidence of use in commerce. (Id. at 15).
`
`9.
`
`Hi-Tech attempted again in 2005 to register the DIANABOL Mark for “Vitamins
`
`and dietary supplements.” In the initial Office Action, the USPTO denied the registration
`
`because “the proposed mark DIANABOL [was] the common generic name for a certain type of
`
`anabolic steroid, which is also known as Methandrostenolone.” (Ex. E, USPTO File for
`
`Attempted 2005 Registration at 23). In a subsequent Office Action, the USPTO again denied the
`
`registration, reasoning : (1) if the subject product contained dianabol, the proposed mark was
`
`generic (and illegal), and (2) if the subject product did not contain dianabol, the proposed mark
`
`was “deceptively misdescriptive” because it “describe[d] an ingredient, quality, characteristic,
`
`function or feature of the relevant goods and/or services, and the description conveyed by the
`
`mark [was] both false and plausible” (i.e., consumers would be likely to believe that the product
`
`did, in fact, contain dianabol). (Id. at 8-10).
`
`Respondent’s Registration and Maintenance Filings for the Mark
`
`10.
`
`Hi-Tech tried again with a third registration attempt for DIANABOL in 2007, this
`
`time describing the covered Goods & Services as “dietary supplements, excluding anabolic
`
`steroids.” (Ex. F, USPTO File for 2008 Registration at 66). Notwithstanding the USPTO’s prior
`
`determination that the manufacture and sale of a non-steroid supplement under the DIANABOL
`
`Mark would be inherently “deceptively misdescriptive,” Wheat’s attempt at registration was
`
`ultimately approved in 2008. (Id. at 2).
`
`11.
`
`In Hi-Tech’s 2017 Declaration of Use of that Mark, the “Goods or Services”
`
`offered by Hi-Tech under the Mark were again described as “dietary supplements, excluding
`
`anabolic steroids.” (Id. at 8-11 (emphasis added)).
`
`
`
`3
`
`

`

`Respondent’s Illegal Business Operations Using the Mark
`
`Illegal Sale of Anabolic Steroids and Other Drugs
`
`12.
`
`Hi-Tech and its founder Jared Wheat (“Wheat”) are digital age drug dealers,
`
`spiking their products with anabolic steroids and other controlled substances. Wheat’s career in
`
`the drug industry began in 1990, when he was convicted in Alabama federal court for possession
`
`of MDMA (“ecstasy”) with intent to distribute. (Ex. G, Pertinent Pleadings from United States v.
`
`Wheat et al., Criminal Case No. 90PT120S (N.D. Ala. 1990) at 1-7). Five years later, Wheat
`
`was sentenced to 24 months in prison after being caught driving a vehicle containing 20 pounds
`
`of marijuana and more than $38,000 in cash. (Id. at 8-11). In 2006, Wheat, Hi-Tech, and other
`
`Hi-Tech associates were charged with a host of federal counts arising from a massive five-year
`
`scheme involving their illegal importation and sale of anabolic steroids, prescription drugs, and
`
`other controlled substances. (Ex. H, Pertinent Pleadings from United States v. Wheat et al.,
`
`Criminal Case No. 1:06-CR-382-JTC (N.D. Ga. 2006) at 1-51 (Sep. 7, 2006 Indictment [DE 1])
`
`and 52-93 (Mar. 26, 2008 Superseding Indictment [DE 567])). Wheat pleaded guilty and was
`
`sentenced to more than four years in prison. (Id. at 94-106 (Aug. 15, 2008 Guilty Plea) and 107-
`
`111 (Feb. 2, 2009 Sentencing Order)).
`
`Deceptive Trade Practices and False Advertising
`
`13.
`
`Also in 2008, this United States District Court for the Northern District of
`
`Georgia (the “N.D. Georgia”) issued an order for summary judgment– including a permanent
`
`injunction – in favor of the FTC and against Hi-Tech, Wheat, and others in a lawsuit involving
`
`deceptive trade practices and false advertising. FTC v. National Urological Group Inc., 645 F.
`
`Supp. 2d. 1167 (N.D. Ga. 2008), aff’d 356 Fed. App’x 358 (11th Cir. 2009). In November 2011,
`
`the FTC filed a contempt-related show-cause motion arising from Hi-Tech and Wheat’s violation
`
`of the injunction. (Ex. I, Order [DE 966], FTC v. National Urological Group Inc., Civil Action
`
`
`
`4
`
`

`

`No. 1:04-cv-3294-CAP (N.D. Ga. Oct. 10, 2017) at 4-7). Ultimately, on October 10, 2017, the
`
`N.D. Georgia entered judgment in favor of the FTC and assessed $40+ million in sanctions
`
`against Hi-Tech. and Wheat (Id. at 132).
`
`Sale of Illegal Anabolic Steroids in “Spiked Supplements”
`
`14. Meanwhile, on October 4, 2017, Wheat was yet again arrested by the federal
`
`authorities. (Ex. J, Pertinent Pleadings from United States v. Wheat, Criminal Case No. 1:17-cr-
`
`2009-AT-CMS (N.D. Ga.) at 19 (Oct. 13, 2017 Executed Arrest Warrant [DE 30])). The illegal
`
`acts of which Hi-Tech and Wheat stand accused include the manufacture and sale of numerous
`
`muscle-building “prohormone dietary supplements” (including Superdrol, Equibolin, 1-AD, 1-
`
`Testosterone, and Androdiol) that, in fact, contained Schedule III Controlled Anabolic Steroids
`
`such as androstanedione, 4-androstenediol and/or 5-androstenediol, and boldione. (Id. at 1-18
`
`(Sep. 28, 2017 First Superseding Indictment [DE 7])).
`
`Illegal Anabolic Steroids and Other Misbranded Ingredients
`
`15.
`
`The government’s allegations in the present criminal action are consistent with
`
`the testing performed by Hi-Tech itself on Dianabol. The Banned Substances Control Group
`
`(“BSCG”) is a third-party certification and testing provider specializing in dietary supplements
`
`and is recognized as a leading entity in its field. (Ex. K, Catlin Dep. 7:19-14:14). In August
`
`2016, BSCG oversaw testing of a sample of Dianabol purchased in 2015 through normal retail
`
`channels by Defendants’ investigator. BSCG’s analysis showed that Dianabol’s ingredients
`
`include two controlled anabolic steroids (androstenedione and dihydrotestosterone (“DHT”)), as
`
`well as dehydroepiandrosterone (“DHEA”). (Id. at 29:4-14; Ex. L, BSCG Testing Report). In
`
`December 2016, Hi-Tech’s own testing confirmed the presence in Dianabol of Androstenedione
`
`and DHEA and could not exclude the presence of DHT. (Ex. M, Bannister Depo. at 89:23-90:3
`
`and 101:10-103:5).
`
`
`
`5
`
`

`

`Intentional Inclusion and Sale of Illegal Anabolic Steroids Using the Mark
`
`16.
`
`Upon information and belief, at all times prior to, during, and following the
`
`application and registration of the Mark, Respondent has knowingly and intentionally used the
`
`DIANABOL mark to sell supplements which contained illegal anabolic steroids.
`
`17.
`
`Upon information and belief, at all times prior to, during, and following the
`
`application and registration of the Mark, Respondent had no intent to use the DIANABOL mark
`
`to sell goods which did not contain illegal anabolic steroids.
`
`COUNT I
`UNLAWFUL USE OF THE DIANABOL MARK
`
`18.
`
`Petitioner repeats and realleges by reference the allegations set forth in paragraphs
`
`1 through 17.
`
`19.
`
`At all times prior to and following the date of first registration of Respondent’s
`
`“DIANABOL” Mark, Respondent was aware that anabolic steroids were illegal, and so
`
`Respondent intentionally and expressly excluded “anabolic steroids” from the Identification of
`
`Goods provided in its application for the Mark.
`
`20.
`
`At all times prior to and following the date of first registration of Respondent’s
`
`“DIANABOL” Mark, Respondent was aware that anabolic steroids were illegal but nevertheless
`
`intentionally included the steroids in the goods bearing the “DIANABOL” mark.
`
`21.
`
`In 2008, Respondent pleaded guilty in United States v. Wheat et al., Criminal
`
`Case No. 1:06-CR-382-JTC to spiking its supplements with anabolic steroids. (See Exhibit H).
`
`22.
`
`In 2017, Respondent was indicted again in United States v. Wheat, Criminal Case
`
`No.: 1:17-CR-2009-AT-CMS for spiking its supplements with anabolic steroids. (See Exhibit J).
`
`23.
`
`Respondent’s own testing of the product sold using the “DIANABOL” Mark
`
`shows that the product is spiked with anabolic steroids.
`
`
`
`6
`
`

`

`24.
`
`Respondent has per se violated 21 U.S.C. § 856 for its conspiracy, manufacture,
`
`and distribution of controlled substances.
`
`25.
`
`Respondent has per se violated 21 U.S.C. §§ 851(a)(1) and (b)(1)(E) and 18
`
`U.S.C. § 2 by manufacturing and distributing controlled substances.
`
`26.
`
`Respondent has per se violated 21 U.S.C §§ 331(a) and 333(a)(2) and 18 U.S.C. §
`
`2 by introducing misbranded drugs into interstate commerce.
`
`27.
`
`Each product containing the DIANABOL Mark that was manufactured,
`
`distributed, and sold which contained anabolic steroids was and is a per se violation of the
`
`above-mentioned criminal statutes.
`
`28.
`
`Accordingly, the “DIANABOL” Mark is subject to cancellation in violation of 15
`
`U.S.C. § 1051(a)(3)(C), as Respondent’s use in commerce is an unlawful use, thereby depriving
`
`any rights under trademark law to the word DIANABOL.
`
`COUNT II
`USE OF THE DIANABOL MARK IN AN IMMORAL, SCANDALOUS, OR DECEPTIVE
`MANNER
`
`29.
`
`Petitioner repeats and realleges by reference the allegations set forth in paragraphs
`
`1 through 17.
`
`30.
`
`At all times prior to and following the date of first registration of Respondent’s
`
`“DIANABOL” Mark, Respondent has knowingly used the Mark to sell products containing
`
`illegal anabolic steroids.
`
`31.
`
`At all times prior to and following the date of first registration of Respondent’s
`
`“DIANABOL” Mark, Respondent was aware that anabolic steroids were illegal, and so
`
`Respondent intentionally and expressly excluded “anabolic steroids” from the Identification of
`
`Goods provided in its application for the Mark.
`
`
`
`7
`
`

`

`32.
`
`At all times prior to and following the date of first registration of Respondent’s
`
`“DIANABOL” Mark, Respondent was aware that anabolic steroids were illegal but nevertheless
`
`intentionally included the steroids in the goods bearing the “DIANABOL” mark.
`
`33.
`
`At the time that Respondent filed its initial application and all subsequent
`
`declarations of use, Respondent was aware that it was not actually selling the goods listed in the
`
`Identification of Goods, namely “dietary supplements, excluding anabolic steroids”.
`
`34.
`
`Accordingly, the “DIANABOL” Mark is subject to cancellation pursuant to 15
`
`U.S.C. § 1064(3), as Respondent is using it for an immoral, scandalous, or deceptive manner,
`
`namely the sale of illegal anabolic steroids.
`
`COUNT III
`VOID AB INITIO FOR FAILURE TO USE THE MARK WHEN THE INITIAL
`APPLICATION WAS FILED
`
`35.
`
`Petitioner repeats and realleges by reference the allegations set forth in paragraphs
`
`1 through 17.
`
`36.
`
`At the time that Respondent filed the initial application for its “DIANABOL”
`
`Mark, and upon the filing of each subsequent allegation of use by Respondent, Respondent only
`
`sold products containing illegal anabolic steroids under the “DIANABOL” Mark.
`
`37.
`
`As a result, Respondent failed to make a bona fide use of its mark in commerce as
`
`required by 15 U.S.C. § 1051(a) in connection with the goods described in the Identification of
`
`Goods, namely, “Dietary supplements, excluding anabolic steroids.
`
`38.
`
`At the time that the application was filed, Respondent had made no bona fide
`
`sales in commerce of products bearing the “DIANABOL” mark for goods contained within the
`
`Identification of Goods in the trademark application.
`
`39.
`
`Registrant has used the mark to misrepresent the source of the goods in
`
`connection with which the “DIANABOL” Mark is used.
`
`
`
`8
`
`

`

`40.
`
`Accordingly, pursuant to U.S.C. § 1064(3) the Mark is subject to cancellation by
`
`the U.S. Patent and Trademark Office due to Respondent’s use in a manner that misrepresents
`
`the source of the goods.
`
`COUNT IV
`FRAUD ON THE USPTO IN FILING RESPONDENT’S INITIAL APPLICATION
`
`41.
`
`Petitioner repeats and realleges by reference the allegations set forth in paragraphs
`
`1 through 17.
`
`42.
`
`At the time Respondent filed its application for the “DIANABOL” Mark,
`
`Respondent was aware that it was using the mark to sell products which contained illegal
`
`anabolic steroids.
`
`43.
`
`At the time that Respondent filed its application for the “DIANABOL” Mark,
`
`Respondent knew that it was explicitly disclaiming the use of the mark in connection with
`
`products which contained anabolic steroids.
`
`44.
`
`At the time that Respondent filed its application for the “DIANABOL” Mark,
`
`Respondent was aware that it was not actually selling the goods described in the identification of
`
`goods for the mark.
`
`45.
`
`Despite that knowledge, Respondent declared in its trademark application, “The
`
`applicant is using the mark in commerce, or the applicant's related company or licensee is using
`
`the mark in commerce, or the applicant's predecessor in interest used the mark in commerce, on
`
`or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as
`
`amended."
`
`46.
`
`Respondent's statement was false and fraudulent, and was made by Respondent
`
`with knowledge of its falsity and with the intent that the U.S. Patent and Trademark Office rely
`
`
`
`9
`
`

`

`on that statement in reviewing respondent's application in order to allow the mark to be
`
`registered.
`
`47.
`
`Such knowing false or fraudulent statements were relied on by authorized agents
`
`of the U.S. Patent and Trademark Office to publish for opposition Trademark Application No.
`
`77/215,242. And, reasonably relying on the truth of such false statements, the U.S. Patent and
`
`Trademark Office did, in fact, publish Applicant's mark for opposition on November 20, 2007.
`
`48.
`
`Accordingly, pursuant to U.S.C. § 1064(3) the Mark is subject to cancellation by
`
`the U.S. Patent and Trademark Office due to Respondent’s intentional fraud in obtaining the
`
`registration.
`
`COUNT V
`FRAUD ON THE USPTO IN FILING RESPONDENT’S DECLARATIONS OF USE
`
`49.
`
`Petitioner repeats and realleges by reference the allegations set forth in paragraphs
`
`1 through 17.
`
`50.
`
`At the time Respondent filed the Declarations of Use to renew the registration for
`
`its “DIANABOL” Mark, Respondent was aware that it was using the Mark to sell products
`
`containing anabolic steroids.
`
`51.
`
`Respondent intentionally and explicitly excluded “anabolic steroids” from its
`
`Identification of Goods at the time that it filed its trademark application and each subsequent
`
`declaration of use for the “DIANABOL” Mark.
`
`52.
`
`Respondent was aware that anabolic steroids were illegal, and so Respondent
`
`knew that it could not include goods containing anabolic steroids within the Identification of
`
`Goods for the “DIANABOL” Mark.
`
`
`
`10
`
`

`

`53.
`
`At the time that Respondent filed its Declarations of Use for the “DIANABOL”
`
`Mark registration, Respondent was aware that it was not actually selling the goods contained
`
`within the Identification of Goods, namely, “Dietary supplements, excluding anabolic steroids.”
`
`54.
`
`Despite this knowledge, Respondent filed Section 8 and 15 Declarations on
`
`February 5, 2014, stating that, “[the] mark is in use in commerce or in connection with the goods
`
`and/or services identified above, as evidenced by the attached specimen(s) showing the mark as
`
`used in commerce. The mark has been in continuous use for five (5) consecutive years after the
`
`date of registration, or the date of publication under Section 12(c) and is still in use in
`
`commerce.”
`
`55.
`
`Despite this knowledge, Respondent also filed Section 8 and 9 Declarations on
`
`February 15, 2017, stating that “the mark is in use in commerce on or in connection with all
`
`goods/services … listed in the existing registration for this specific class: Dietary supplements
`
`excluding anabolic steroids.”
`
`56.
`
`The Respondent’s statements when filing the Section 8 Declarations were false
`
`and fraudulent, and were made by Respondent with knowledge of its falsity and with the intent
`
`that the U.S. Patent and Trademark Office rely on that statement in reviewing Respondent’s
`
`application in order to allow the registration of the mark to be maintained.
`
`57.
`
`Such knowingly false or fraudulent statements were relied on by authorized
`
`agents of the U.S. Patent and Trademark Office in order to continue to allow Trademark
`
`Registration No. 3,378,354 for the mark “DIANABOL” to be registered on the Principal
`
`Register.
`
`
`
`11
`
`

`

`58.
`
`On more than one occasion, Respondent committed fraud when filing the Section
`
`8 Declarations attesting to the alleged use of Respondent’s mark on goods as identified in the
`
`Identification of Goods for the Mark.
`
`59.
`
`Accordingly, pursuant to U.S.C. § 1064(3) the Mark is subject to cancellation by
`
`the U.S. Patent and Trademark Office due to Respondent’s intentional fraud in filing its
`
`Declarations of Use for its “DIANABOL” Mark.
`
`COUNT VI
`ABANDONMENT
`
`60.
`
`Respondent has abandoned the trademark DIANABOL, U.S. Reg. No. 3,378,354,
`
`by discontinuing its use of the mark in connection with the registered goods and with no intent to
`
`resume such use.
`
`61.
`
`Upon information and belief, the “DIANABOL” Mark is not presently in use by
`
`Respondent as a trademark in association with the identified goods.
`
`62.
`
`Respondent has not made a bona fide use of the “DIANABOL” Mark in the
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`ordinary course of trade for a period of more than three years from the present.
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`63.
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`Any use by Respondent of the “DIANABOL” Mark on any “Dietary supplements,
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`excluding anabolic steroids,” within the past three years has been token use made merely to
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`reserve a right in the trademark.
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`64.
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`Accordingly, pursuant to U.S.C. § 1064(3) the Mark is subject to cancellation by
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`the U.S. Patent and Trademark Office due to Respondent’s abandonment of the Mark by failing
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`to use it in commerce in connection with any goods listed in or related to those described in the
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`Mark’s Identification of Goods.
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`12
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`

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`COUNT VII
`RESPONDENT’S MARK IS GENERIC
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`65.
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`Respondent’s “DIANABOL” Mark is a generic term that is incapable of
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`functioning as a trademark.
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`66.
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`Consumers and the relevant public do not associate the term “DIANABOL” as an
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`indicator of origin.
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`67.
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`Consumers and the relevant public do not associate the term “DIANABOL” with
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`Respondent.
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`68.
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`Consumers and the relevant public commonly understand the term “DIANABOL”
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`as being used in association with anabolic steroids generally, which are in no way associated
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`with Respondent.
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`69.
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`Accordingly, pursuant to U.S.C. § 1064(3) the Mark is subject to cancellation by
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`the U.S. Patent and Trademark Office due to the term “DIANABOL” becoming the generic
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`name for the goods associated with Respondent’s Mark.
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`WHEREFORE, Petitioner respectfully request that the Trademark Trial and Appeal
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`Board cancel U.S. Registration No. 3,378,354.
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`Submitted this 11th day of September, 2020.
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`13
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`

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`WELLBORN & WALLACE, LLC
`
`
`/s/ Kelly O. Wallace
`________________________________________________
`Kelly O. Wallace
`Georgia Bar No. 734166
`Samuel A. Mullman
`Georgia Bar No. 456630
`
`WELLBORN & WALLACE, LLC
`1218 Menlo Dr. NW, Suite E
`Atlanta, GA 30318
`kelly@wellbornlaw.com
`sam@wellbornlaw.com
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`Telephone:
`Fax:
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`(404) 352-3990
`(404) 352-3995
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`
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`14
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`

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`CERTIFICATE OF SERVICE
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`I hereby certify that I served copies of the foregoing Petition for Cancellation (and all
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`included Exhibits) upon Respondent’s counsel of record by depositing a copy thereof in the
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`United States Mail, first-class postage prepaid, on September 11, 2020, addressed as follows:
`
`Jessica H. Leach
`The Law Office of Arthur W. Leach
`4080 McGinnis Ferry Road, Suite 401
`Alpharetta, GA 30005
`
`
`
`________________________________________________
`Kelly O. Wallace
`Georgia Bar No. 734166
`Attorney for Petitioner Dynamic Sports Nutrition, LLC
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`
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`15
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`EXHIBIT A
`EXHIBIT A
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`

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`Case 1:16-cv-00949-MLB Document 82 Filed 06/02/16 Page 1 of 33
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`IN T H E UNITED STATES D I S T R I C T COURT
`F O R T H E NORTHERN D I S T R I C T O F G E O R G I A
`ATLANTA DIVISION
`
`H I - T E C H P H A R M A C E U T I C A L S
`INC., a Georgia corporation,
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`Plaintiff,
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`C I V I L A C T I O N F I L E
`
`V .
`
`NO. l:16-CV-949-MHC
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`DYNAMIC SPORTS NUTRITION,
`L L C , a Texas limited liability
`company doing business as Anabolic
`Research, BRIAN C L A P P an
`individual, and PBB T R A D E M A R K
`HOLDINGS, L L C ,
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`Defendants.
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`O R D E R
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`This case comes before the Court on Plaintiffs Second Application for
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`Temporary Restraining Order [Doc. 54] ("PL's Mot. for TRO"). The Court
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`conducted a hearing on May 27, 2016, during which the Court heard argument
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`from counsel.
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`I.
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`BACKGROUND
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`A.
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`P R O C E D U R A L H I S T O R Y
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`Plaintiff filed the above-styled Complaint against Defendants Dynamic
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`Sports Nutrition, LLC ("DSN") and Brian Clapp on September 28, 2015. Compl.
`
`

`

`Case 1:16-cv-00949-MLB Document 82 Filed 06/02/16 Page 2 of 33
`
`Doc. 1]. The Complaint includes claims for the following: trademark
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`infringement under 15 U.S.C. § 1114 (2012) (Counts 1 & II); false designation of
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`origin and unfair competition under 15 U.S.C. § 1125(a) (2012) (Counts III & IV);
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`false advertising under 15 U.S.C. § 1125(a) (Count V); violation of the Georgia
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`Deceptive Trade Practices Act, O.C.G.A. §10-l-372(a) (2015) (Count VI); unfair
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`competition under common law (Count VII); and violations of the Georgia
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`Racketeer Influenced and Corrupt Organizations Act ("RICO"), O.C.G.A. § 16-14-
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`4(a)-(c) (2015) (Counts V I I I through X).
`
`This Court entered an Order on November 18, 2015 [Doc. 32], denying
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`Plaintiffs initial application for a TRO and granting Defendants' motion to
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`transfer venue. This Court transferred the case to the United States District Court
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`for the Southem District of Texas because a substantially similar case (the "Texas
`
`lawsuif) that predated the above-styled action was pending in that forum;
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`consequently, it was the appropriate court to decide whether the Southem District
`
`of Texas or the Northern District of Georgia is the appropriate venue to resolve the
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`underlying dispute.
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`The District Court for the Southern District of Texas dismissed the Texas
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`lawsuit. See Order, Dynamics Sports Nutrition, LLC v. Hi-Tech Pharms., Inc., No.
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`H-15-2645 (S.D. Tex. Mar. 15, 2016) [Doc. 45-1]. The above-styled case then was
`
`2
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`

`

`Case 1:16-cv-00949-MLB Document 82 Filed 06/02/16 Page 3 of 33
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`transferred back to this Court. See Order, Hi-Tech Pharms., Inc.v. Dynamics
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`Sports Nutrition, LLC, No. 4:15-CV-3401 (S.D. Tex. Mar. 24, 2016), Doc. 46.
`
`Soon thereafter, Plaintiff filed its Second Application for a Temporary Restraining
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`Order to prevent Defendants from selling, offering for sale, distributing, marketing,
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`and advertising their D-ANABOL 25, DECA 200, TREN 75, and Pituitary Growth
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`Hormone products.
`
`Plaintiff filed an Amended Complaint on April 18, 2016, to add PBB
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`Trademark Holdings, LLC ("PBB") as a Defendant and allegations related to four
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`additional products allegedly sold by Defendants: WINN-50, CLEN, TEST 600x,
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`and VAR 10 [Doc. 62].' The Amended Complaint is the operative complaint in
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`this case. The crux of Plaintiff s claims in the Amended Complaint and Motion for
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`TRO is that Defendants' products and allegedly unlawful actions violate Hi-Tech's
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`DIANABOL® trademark and have otherwise harmed Plaintiff and its dietary
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`supplement business.
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`Plaintiff filed a Supplement to its Second Application for a TRO on April 20,
`2016 [Doc. 65] indicating that the arguments set forth in the Second Application
`for a TRO apply equally to Defendant PBB and four products, allegations of which
`were added by virtue of the Amended Complaint.
`
`3
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`

`

`Case 1:16-cv-00949-MLB Document 82 Filed 06/02/16 Page 4 of 33
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`B.
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`The DIANABOL® Trademark
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`On Febraary 5, 2008, the Patent & Trademark Office ("PTO") issued a
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`registration for DIANABOL® as a trademark permitting the use of the
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`DIANABOL® marie in the pharmaceutical class of trademarks (Class 5) in
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`connection with certain "dietary supplements, excluding anabolic steroids."
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`Registration No. 3,378,354 [Doc. 64-1] (the "Registration"), attached as Ex. 1 to
`
`Am. Compl. "The mark consists of standard characters without claim to any
`
`particular font, style, size or color." Id. The Registration indicates that the first
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`use of this mark was on March 4, 2002, and the first use in commerce was on
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`March 31, 2002. I d On February 5, 2014, Plaintiff filed an affidavit with the PTO
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`certifying that (1) the goods associated with DIANABOL® have been in
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`continuous use for five consecutive years and are still in use in commerce, (2) no
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`final decision exists that is adverse to the owner's claim of ownership of
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`DIANABOL® for such goods, or to the owner's right to register the same or to
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`keep the same on the register, and (3) there is no proceeding involving said rights
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`pending in the PTO or in a court and not finally disposed o f Decl. of Use and
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`Incontestability [Doc. 54-17], attached as Ex. Q to PL's Mot. for TRO. The PTO
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`responded to Plaintiffs declaration with a Notice of Acceptance and
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`Acknowledgement indicating that Plaintiffs affidavit met the requirements of the
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`4
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`

`

`Case 1:16-cv-00949-MLB Document 82 Filed 06/02/16 Page 5 of 33
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`Trademark Act, 15 U.S.C. §§ 1058, 1065 (2012). E-mail from the PTO dated Feb.
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`19, 2014 [Doc. 54-18] ("Notice of Acceptance and Acloiowledgement"), attached
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`as Ex. R to PL's Mot. for TRO.
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`C.
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`DSN'S Attempt to Register D-Anabol 25
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`In March of 2011, DSN applied to the PTO to register D-Anabol 25 as a
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`trademark for dietary supplements. Am. Compl. ]| 21. On June 28, 2011, the PTO
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`issued an initial registration refusal citing three grounds for the refusal: (1) there
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`was a likelihood of confusion with the DIANABOL® trademark, (2) D-Anabol 25
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`was merely descriptive of a feature of the product, and in the alternative, (3) the
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`product is deceptively misdescriptive. Letter from PTO to DSN dated June 28,
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`2011 [Doc. 62-2] ("Initial PTO Refusal") attached as Ex. 2 to the Am. Compl.
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`Specifically, with regard to the second reason, the PTO examiner found that DSN's
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`D-Anabol 25 is the phonetic equivalent to the trade name for the anabolic steroid
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`methandrostenolone, dianabol (also known as danabol).^ Id. The PTO examiner
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`cited documentation indicating that the anabolic steroid dianabol
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`(methandrostenolone) is an orally-effective anabolic steroid originally developed
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`by John Ziegler and released in the United States by the Ciba Pharmaceutical
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`^ The materials relied upon by the parties use the terms "danabol" and "dianab