Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA1194658
`
`Filing date:
`
`03/04/2022
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding no.
`
`92075839
`
`Party
`
`Correspondence
`address
`
`Submission
`
`Filer's name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Defendant
`L&R Health Products
`
`MICHAEL J BRADFORD
`LUEDEKA NEELY GROUP PC
`900 SOUTH GAY ST STE 1504
`KNOXVILLE, TN 37902
`UNITED STATES
`Primary email: mbradford@luedeka.com
`Secondary email(s): lprichard@luedeka.com
`865-546-4305
`
`Opposition/Response to Motion
`
`Michael J. Bradford
`
`mbradford@luedeka.com, lprichard@luedeka.com
`
`s/Michael J Bradford/
`
`03/04/2022
`
`LR_HealthResponseToMSJ.pdf(183506 bytes )
`Burks Declaration.pdf(127988 bytes )
`Exhibits A-F-public.pdf(3342992 bytes )
`Exh G.pdf(6202988 bytes )
`Exh H-O.pdf(4962699 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`__________________________________________
`Nutripacks, LLC,
`
`
`Petitioner,
`
`Cancellation No. 92075839
`
`
`v.
`
`
`L&R Health Products, LLC,
`
`
`Respondent.
`_________________________________________
`
`
`
`RESPONDENT’S RESPONSE TO PETITIONER’S
`MOTION FOR SUMMARY JUDGMENT AND RESPONDENT’S CROSS MOTION
`FOR SUMMARY JUDGMENT
`Respondent L&R Health Products, LLC, through its undersigned counsel, hereby submits
`
`this Response in opposition to Petitioner’s Motion for Summary Judgment.
`
`In its motion, Petitioner has alleged that Respondent abandoned the NUTRIPAC mark due
`to naked licensing and non-use. Petitioner is incorrect on both accounts. With regard to the naked
`licensing assertion, Respondent and its licensee – Lifeline Foods, LLC - are commonly owned by
`the same family. One of Respondent’s members – Andrew Burks – is responsible for controlling
`the quality of its licensee’s products and serves as the licensee’s CEO. Mr. Burks, acting in his
`role as an owner/member of Respondent, has maintained complete control over the quality of
`Lifeline Foods’ licensed products and there is no basis for Petitioner’s allegation to the contrary.
`With regard to non-use, Respondent and its licensee did not sell product under the mark for
`approximately 15-16 months, but the licensee has restarted sales and is currently selling licensed
`products under the NUTRIPAC mark. And authorized retailers have continued selling the
`NUTRIPAC product continuously to the present. During the relatively brief period of non-use by
`Respondent and its licensee, they maintained an intent to resume use of the mark. Respondent has
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`

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`Cancellation No. 92075839
`
`
`not abandoned the NUTRIPAC mark.
`
`As set forth in more detail below, Petitioner has failed to meet the burden of demonstrating
`the absence of any genuine issues of material fact and that it is entitled to summary judgment as a
`matter of law. Therefore, Respondent respectfully requests that Petitioner’s Motion for Summary
`Judgment be denied.
`
`Furthermore, Respondent asserts that the facts at issue so clearly show that Respondent’s
`trademark has not been abandoned due to naked licensing or nonuse, such that summary judgment
`should be granted in favor of Respondent. Accordingly, Respondent hereby cross-moves for
`summary judgment in its favor on all claims raised by Petitioner.
`
`FACTUAL BACKGROUND
`Respondent L&R Health Products, LLC is the owner of the NUTRIPAC mark of U.S.
`
`Registration No. 5,389,391, which is the subject of this proceeding, as well as eighteen other
`federally registered trademarks. However, L&R Health Products does not personally sell or
`distribute goods under the trademarks. Rather, all sales and distributions of products under the
`trademarks are handled by Respondent’s licensee Lifeline Foods, LLC. Declaration of Andrew
`Burks (“Burks Decl.”), ¶2.
`
`L&R Health, LLC and Life Line Foods, LLC are owned by the same family and have the
`same principal office address. L&R Health Products, LLC has three members – Lester Burks;
`Lester’s son, Andrew Burks; and Lester’s son-in-law, Luis Alonso. Life Line Foods has five
`members – Lester Burks; Andrew Burks; Luis Alonso; Lester’s daughter, Tracie Alonso; and
`Lester’s ex-wife, Rose Burks. Burks Decl., ¶3. As part of Andrew Burks’ job duties as a member
`of L&R Health Products, he monitors and controls the quality of Life Line Foods products sold
`under the trademark owned by L&R Health. In this regard, Andrew Burks is Chief Executive
`Officer of Life Line Foods and he handles the day-to-day operations of Life Line Foods, which
`2
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`Cancellation No. 92075839
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`includes monitoring and controlling the quality of the products sold by Life Line Foods. Burks
`Decl., ¶4.
`
`L&R Health and Life Line Foods have had a licensor-licensee relationship for many years.
`In 2010, they decided to formalize that relationship in writing and they entered into a formal
`written license agreement in 2010. The license agreement was prepared by attorney John Beard
`at the Chattanooga, Tennessee law firm Patrick Beard Schulman & Jacoway, PC in 2010. The
`agreement was signed by Lester Burks in 2010 on behalf of both parties. An unexecuted copy of
`that license agreement is attached as Exhibit A, but the original executed document cannot be
`located. Upon learning that the original document appears to have been lost, the agreement was
`re-executed on June 15, 2021 by Lester Burks for L&R Health and by Andrew Burks for Lifeline
`Foods. Burks Decl., ¶5 & Exh. A-B.
`
`With regard to the NUTRIPAC mark that is the subject of this proceeding, Life Line Foods
`has sold multi-serve bottled liquid supplements for decades. In 2016, L&R Health and Life Line
`Foods decided to begin selling single-serve pouches of the liquid supplements and chose the
`product name NUTRIPAC for the new products. L&R Health Products filed U.S. Application
`Serial No. 87251859 on November 30, 2016, seeking to register the NUTRIPAC mark for use with
`“liquid dietary supplements,” based on an intent to use the mark in commerce. The application
`was signed by Andrew Burks on behalf of L&R Health Products. L&R Health Products intended
`for use of the mark for liquid dietary supplements to be made by its licensee Life Line Foods.
`Thereafter, on August 31, 2017, L&R Health Products filed an Amendment to Allege Use,
`claiming a date of first use of the NUTRIPAC in commerce since at least July 2017 and providing
`evidence showing use of the NUTRIPAC mark for products sold and distributed by its licensee
`Life Line Foods. Burks Decl., ¶6.1
`
`1 Pursuant to 37 C.F.R. § 2.122, the file history for the registration subject to a cancellation
`3
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`

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`Cancellation No. 92075839
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`Life Line Foods manufactured the NUTRIPAC product and sold NUTRIPAC products
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`throughout the United States directly to consumers through its website at www.buriedtreasure.com
`and via its Amazon store. Life Line Foods also sold NUTRIPAC products to third party retailers.
`Numerous different versions of the NUTRIPAC product have been sold, including ACF, Hair Skin
`And Nails Plus, Herbal Iron, Aller Ease, Whole Foods Multi, Active Man, Active Women, Neuro
`Motivate. Burks Decl., ¶7 & Exh. L-M.
`
`Life Line Foods sold the NUTRIPAC products continuously in United States commerce
`from at least July 2017 through the fourth quarter of 2020. Burks Decl., ¶8 & Exh. C. Third party
`retailers have continued to sell through their inventory to the present. For example, Walmart.com
`was selling the Hair Skin And Nails Plus version of the NUTRIPAC product on March 25, 2021,
`and the product is still for sale on Walmart.com. Respondent understands the product has been
`available for purchase on Walmart.com continuously through the present. Burks Decl., ¶8 & Exh.
`D-E. Walmart.com is an authorized retailer of the NUTRIPAC product. Burks Decl., ¶8 & Exh.
`F.
`As noted above, the NUTRIPAC single-serve pouches were a new type of product
`
`packaging and the products unfortunately had intermittent failure issues that resulted in leaking.
`It is presently believed that the chemistry of some of the NUTRIPAC formulations was destructive
`to the adhesive layer. Due to these issues, Andrew Burks decided to temporarily stop
`manufacturing new NUTRIPAC product in mid-2020, with the intent to re-release the NUTRIPAC
`product at a later date with anticipated new packaging and potentially new formulations. Burks
`Decl., ¶9. However, Life Line continued to receive requests for the NUTRIPAC product. Some
`of the NUTRIPAC supplements were out-of-stock in August 2020, so Life Line placed the
`
`
`proceeding is automatically included as part of the record in the proceeding. Accordingly, copies
`of the referenced application filings are not submitted as Exhibits to this Response.
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`Cancellation No. 92075839
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`statement “(Update 8/19/2020 NutriPac products have been discontinued)” on its website to inform
`customers that the NUTRIPAC product was not currently available. Id. The statement did not
`state the product was being permanently discontinued and was not intended to indicate permanent
`discontinuance. Id. In this regard, as noted, sales of the product by Life Line Foods continued for
`several months thereafter, and through to the present by third party retailers. Also, the product
`pages continued to be displayed on Life Line Foods’ Amazon store and on its website through
`mid-2021. Burks Decl., ¶9 & Exh. G-H.
`
`On February 15, 2022, Life Line Foods re-started manufacturing the Herbal Iron version
`of its NUTRIPAC product. Burks Decl., ¶11 & Exh. I. The Herbal Iron version of the NUTRIPAC
`product did not face the failure issues encountered with other versions of the product. The
`NUTRIPAC product was posted for sale on Life Line Foods’ website on February 17, 2022 and
`continues to be through the present. Burks Decl., ¶11 & Exh. J. Also, Life Line Foods restarted
`promotion of the NUTRIPAC product on social media on February 17, 2022. Burks Decl., ¶11 &
`Exh. K, p. 3.
`
`ARGUMENT
`A. Summary Judgment Standards
`
`Petitioner’s motion can be granted only if there are no genuine issues as to any material
`
`fact and Petitioner is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(c); Celotex Corp.
`v. Catrett, 477 U.S. 317 (1986). To meet its burden, Petitioner must show that there is an absence
`of evidence to support Respondent’s case. Id. at 323. In deciding a motion for summary judgment,
`the Board may not resolve an issue of fact, but may only determine whether a genuine issue of
`material fact exists. Meyers v. Brooks Shoe, Inc., 912 F.2d 1459, 1461, 16 U.S.P.Q.2d 1055 (Fed.
`Cir. 1990). A factual dispute is genuine if a reasonable fact finder could resolve the matter in favor
`of the nonmoving party. Lloyd’s Food Products Inc. v. Eli’s Inc., 987 F.2d 766, 767, 25
`
`
`
`5
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`Cancellation No. 92075839
`
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`U.S.P.Q.2d 2027 (Fed. Cir. 1993). The nonmoving party must be given the benefit of all
`reasonable doubt as to whether genuine issues of material fact exist; and the evidentiary record,
`and all inferences to be drawn from the undisputed facts, must be viewed in the light most favorable
`to the nonmoving party. Id.
`
`B. Respondent’s Mark has Not Been Abandoned Due to Naked Licensing
`
`Under 15 U.S.C. § 1055, a trademark registration may be based on use of the mark by
`
`related companies. See Sock It To Me, Inc. v. Aiping Fan, 2020 USPQ2d 10611, *2 (TTAB 2020).
`For the purposes of establishing trademark use, a licensee may be a related company. Id. at *3;
`Moreno v. Pro Boxing Supplies, 124 USPQ2d 1028, 1035 (TTAB 2017). "[R]ights to a mark may
`be acquired and maintained through the use of that mark by a controlled licensee even when the
`only use of the mark has been, and is being, made by the licensee." Pneutek, Inc. v. Scherr, 211
`USPQ 824, 833 (TTAB 1981). While a license generally is written, a valid license may be oral or
`implied by the relationship between the parties. See Sock It To Me, Inc. v. Aiping Fan, 2020
`USPQ2d 10611 at *4; Woodstock's Enters. Inc. (Cal.) v. Woodstock's Enters. Inc. (Or.), 43
`USPQ2d 1440, 1447 (TTAB 1997); Doeblers' Pennsylvania Hybrids, Inc. v. Doebler, 442 F.3d
`812, 824 (3rd Cir.2006) (“Although it appears that there is no express written license agreement
`between the parties, a trademark license can also be implied.... It is irrelevant whether the parties
`thought of the arrangement at the time in terms of an implied license. The test for whether or not
`an implied license existed is based solely on the objective conduct of the parties.”) (internal
`quotations and citations omitted). While the licensor must control the quality of goods produced
`under the mark by its licensee, "[a] contractual provision giving the licensor the right to supervise
`and control the nature and quality of the licensee's goods and services is not an essential element
`if adequate quality control was in fact exercised." Sock It To Me, Inc. v. Aiping Fan, 2020 USPQ2d
`10611 at *3-4, quoting J. Thomas McCarthy, 3 MCCARTHY ON TRADEMARKS AND
`6
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`Cancellation No. 92075839
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`UNFAIR COMPETITION 18:59 (5th ed). And the licensor is not required to show that its quality
`control efforts are comprehensive or extensive. Woodstock's Enters. Inc., 43 USPQ2d at 1447.
`
`"Sufficient control by a licensor may exist despite the absence of any formal arrangements
`for policing the quality of the goods sold or services rendered under the mark by its licensee(s),"
`Id. An informal, rather than formal, system of quality control may suffice. Winnebago Indus., Inc.
`v. Oliver & Winston, Inc., 207 USPQ 335, 341 (TTAB 1980) cited in Ballet Tech Found. Inc. v.
`Joyce Theater Found. Inc., 89 USPQ2d 1262, 1266 (TTAB 2008), judgment vacated pursuant to
`settlement, 2013 TTAB LEXIS 581, 2013 WL 6199539 (TTAB 2013). This holds true especially
`where the licensor and licensee have a close working relationship, such as a familial relationship.
`In Taco Cabana v. Two Pesos, the Fifth Circuit Court of Appeals found:
`
`The history of the Stehling brothers' relationship warrants this relaxation of formalities.
`Prior to the licensing agreement at issue, the Stehling brothers operated Taco Cabana
`together for approximately eight years. Taco Cabana and TaCasita do not use significantly
`different procedures or products, and the brothers may be expected to draw on their mutual
`experience to maintain the requisite quality consistency.
`
`Taco Cabana Int'l, Inc. v. Two Pesos, Inc., 932 F.2d 1113, 19 USPQ2d 1253, 1259 (5th Cir. 1991),
`aff'd, 505 U.S. 763, 112 S. Ct. 2753, 120 L. Ed. 2d 615, 23 USPQ2d 1081 (1992). See also Sock It
`to Me v. Aiping Fan, 2020 TTAB LEXIS 201, *17, 2020 U.S.P.Q.2D 10611; Doeblers, 442 F.3d
`at 823. (“Such a ‘special relationship’ may exist here, considering that the litigants were closely-
`held business entities owned and managed by family members and which included a high degree
`of interlocking ownership and control”); Paleteria La Michoacana, Inc. v. Productos Lacteos
`Tocumbo S.A. De C.V., 188 F. Supp. 3d 22, 93 (D.D.C. 2016) (Where the licensees were members
`of a family, the licensor "satisfied the minimum level of control necessary to avoid abandonment
`through naked licensing.... [T]hey regard their businesses as being part of a family tradition that
`stretches back generations.").
`
`
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`

`Cancellation No. 92075839
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`
`In the motion for summary judgment, Petitioner first states that “there is no genuine issue
`
`of material fact in dispute that the licensing agreement between Respondent and Life Line Foods
`is invalid,” asserting that the license constitutes a naked license. However, this issue is very much
`in dispute. And a “naked licensing” assertion “involves a heavy burden.” Stockpot, Inc. v. Stock
`Pot Rest., Inc., 220 U.S.P.Q. 52, 61 (TTAB 1983); Doeblers, 442 F.3d at 824 (party seeking to
`invalidate a mark on the ground of naked licensing “faces a stringent burden of proof” and the
`“burden is high”). Petitioner clearly has not met its heavy burden.
`
`To support its naked license assertion, Petitioner first argues that the quality control
`provisions in the license agreement are not properly worded. However, as explained above, quality
`control wording in a license agreement is not necessary. Sock It To Me, Inc. v. Aiping Fan, 2020
`USPQ2d 10611 at *3-4. And, in fact, a written license agreement is not even necessary – the
`license may be entirely informal and/or oral. Id. This is especially true when there is a familial
`relationship between the entities. Id. The key issue is that the licensor has sufficient control over
`the quality of the licensee’s products.
`
`Here, the licensor, Respondent L&R Health, has three members that own the LLC – a father
`(Lester Burks), his son (Andrew Burks), and his son-in-law (Luis Alonso). These members also
`own the licensee, Life Line Foods, along with two other family members (Lester’s ex-wife and
`daughter). As one of Andrew Burks’ job duties as a member of L&R Health Products, he monitors
`and controls the quality of Life Line Foods products sold under the trademark owned by L&R
`Health. And, as noted, Andrew Burks is Chief Executive Officer of Life Line Foods and he handles
`the day-to-day operations of Life Line Foods, which includes monitoring and controlling the
`quality of the products sold by Life Line Foods. It should be noted that Andrew Burks signed the
`subject trademark application on behalf of L&R Health, but signed the confirmatory 2021 license
`agreement on behalf of Life Line Foods. This shows the two entities are completely intertwined.
`
`
`
`8
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`

`Cancellation No. 92075839
`
`
`The fact that an owner of Respondent directly controls its licensee’s day-to-day operations,
`including quality control over the products, should end the inquiry into whether there is a naked
`license.
`
`Petitioner further attempts to show that there was insufficient quality control, because the
`NUTRIPAC products allegedly had quality issues. Petitioner relies on four customer complaints
`received by Life Line Foods over a 14-month period for the assertion that Respondent did not
`maintain sufficient quality control. However, the fact that a trademark owner received “quality-
`related complaints” does not result in the trademark being abandoned. See e.g. Great Treats, Inc.
`v. Bigger Than Bill, Inc., 2020 TTAB LEXIS 175, *31, Opposition No. 91231322 (Trademark
`Trial & App. Bd. February 4, 2020). And furthermore, concerns with quality issues are what led
`Andrew Burks to make the decision to temporarily cease manufacture of the NUTRIPAC product.
`This shows complete control over the quality of the products.
`
`Last, Petitioner complains that Respondent did not produce internal communications or
`other internal documents concerning quality issues. However, as explained in Andrew Burks
`declaration, it is important to understand that Life Line Foods is a fairly small, family-owned
`business that is primarily operated out of a single location. Burks Decl., ¶10. Most internal
`communication is in-person and oral. Id. The lack of internal quality control documentation does
`not mean there was no control over the quality of Life Line Foods products.
`
`Clearly, Petitioner has not met its heavy burden to show abandonment by naked licensing.
`In fact, Respondent asserts the facts clearly show that the license is not “naked” and therefore
`cross-moves for summary judgment on Petitioner’s naked licensing claim.
`
`
`
`
`
`
`9
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`

`C. Respondent’s Mark has Not Been Abandoned Due to Non-Use
`
`A mark shall be deemed abandoned if use of the mark has been discontinued with intent
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`Cancellation No. 92075839
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`
`
`
`
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`not to resume such use. 15 U.S.C. § 1127. A petitioner can allege either "a prima facie case of
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`abandonment by a pleading of at least three consecutive years of non-use or must set forth facts
`
`that show a period of non-use less than three years coupled with an intent not to resume use." Otto
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`Int'l Inc. v. Otto Kern GmbH, 83 USPQ2d 1861, 1863 (TTAB 2007). In this case, Petitioner has
`
`alleged both bases for abandonment due to non-use.
`
`
`
`First, importantly, a key requirement for abandonment is “non-use.” However, here, the
`
`NUTRIPAC mark has been used continuously in commerce since the subject registration issued.
`
`On page 3 of its Motion, Petitioner cites to a portion of Respondent’s response to Petitioner’s
`
`Interrogatory No. 1 wherein Respondent stated that it and its licensee were not currently selling
`
`product under the NUTRIPAC mark at the time the interrogatory was answered. However,
`
`Petitioner conveniently omits the subsequent explanation in Respondent’s June 2, 2021 response
`
`to Interrogatory No. 1 that “third party retailers continue to sell the NUTRIPAC product.” Exh,
`
`O, p. 2. The response also provides an example of such a third party retailer – Walmart.com –
`
`with a link to the Walmart.com webpage. The March 25, 2021 Walmart.com webpage was
`
`produced to Respondent in discovery. See Exhibit G. The webpage shows the NUTRIPAC mark
`
`in close proximity to the product, with pricing and means for ordering the product. As such, the
`
`web page constitutes a point of sale display that qualifies as use of the mark. See TMEP § 904.03(i)
`
`and In re Sones, 590 F.3d 1282, 1288, 93 USPQ2d 1118, 1123 (Fed Cir. 2009). Additionally, as
`
`explained in TMEP § 904.03(i), an online point of sale display is not required to come from an
`
`
`
`10
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`

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`applicant’s own website. “A web page from a third-party website may also be acceptable as a
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`Cancellation No. 92075839
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`display.” Id., citing In re Osterberg, 83 USPQ2d 1220, 1223-1224 (TTAB 2007). The same
`
`Walmart.com web page is still selling the NUTRIPAC product. See Exhibit H. Respondent
`
`understands Walmart.com has been continuously selling the NUTRIPAC product to the present.
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`Accordingly, there has not been any period of non-use and Petitioner’s abandonment claim
`
`therefore fails.
`
`
`
`If third party retailer sales of the NUTRIPAC product do not suffice for some reason to
`
`show use of a trademark, Petitioner’s abandonment claim still fails. As explained above, Life Line
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`Foods did not sell any NUTRIPAC product from the fourth quarter of 2020 through February 17,
`
`2022 – a period of 15-16 months. In order for prima facie abandonment to apply, there must be a
`
`period of non-use of over three years, so Petitioner’s claim for prima facie abandonment fails on
`
`its face. Petitioner attempts to assert that there has been four years of non-use, asserting that Life
`
`Line Foods’ use of the NUTRIPAC mark does not inure to the benefit of Respondent due to naked
`
`licensing. However, as explained above, the license between Respondent and Life Line Foods is
`
`not a naked license. Accordingly, Petitioner’s claim for prima facie abandonment should be
`
`dismissed.
`
`
`
`Turning to Petitioner’s claim of express abandonment, if there has been less than three
`
`years of non-use, a mark can still be abandoned if the Petitioner shows Respondent had an intent
`
`not to resume use during the period of non-use. However, when Petitioner does not have the
`
`benefit of the presumption of abandonment due to three years of non-use, Petitioner has the burden
`
`to prove both that Respondent discontinued use and that Respondent intended not to resume use.
`
`
`
`11
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`

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`Toufigh v. Persona Parfum, Inc., 95 USPQ2d 1872, 1875 (TTAB 2010). If Petitioner does not
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`Cancellation No. 92075839
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`establish both nonuse and intent not to resume use, it is not necessary for Respondent to submit
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`rebuttal testimony or other evidence. Id. at 1876.
`
`
`
`Again, there has not been any period of non-use, so the Petitioner has not met the first
`
`requirement. With regard to the second requirement, to support its claim the Respondent had an
`
`intention not to resume use, Petitioner relies upon a statement Life Line Foods placed on one page
`
`of its website in August 2020 that Nutripac products have been discontinued and a statement by a
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`Life Line Foods employee to a customer that Nutripac products were discontinued. However,
`
`Petitioner’s argument ignores the fact that Life Line Foods continued to include product listings
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`for the Nutripac product on its website and Amazon store well into 2021, months after the website
`
`statement. See Exhibits G and H. Also, Life Line Foods’ CEO explains in his attached declaration
`
`that the discontinuance was not intended to be permanent, but instead was a temporary
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`discontinuance. Burks Decl., ¶9. Furthermore, Respondent explained in its March 31, 2021,
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`interrogatory responses and its June 2, 2021 supplement interrogatory responses that it had a
`
`continuing intent to restart manufacturing and sales of products under the NUTRIPAC mark. Exh.
`
`N, p. 2, 6-7 & Exh. O, p. 2, 6-7. These responses were provided only a few months after Life Line
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`Foods’ sales of the Nutripac product had temporarily ceased and evidence a clear intent to resume
`
`use of the mark. Finally, most importantly, Life Line Foods has in fact resumed use of the
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`NUTRIPAC mark and is currently selling the products. Burks Decl., ¶11 & Exh. I-K. Clearly,
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`there was not an intent not to resume use of the NUTRIPAC mark.
`
`
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`12
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`

`Petitioner also attempts to speculate that there was no attempt to resume use because
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`Cancellation No. 92075839
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`
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`Respondent did not produce documents in discovery that discuss plans to resume manufacturing
`
`or sales. However, again, as explained in Mr. Burks’ declaration, Life Line Foods is a fairly small,
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`family-owned business that is primarily operated out of a single location. Most internal
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`communication is in-person and oral. During the period when Life Line Foods was not actively
`
`manufacturing and selling products, they had regular discussions about restarting these activities.
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`Burks Decl., ¶10. The fact that these discussions were not in writing does not mean the trademark
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`has been abandoned.
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`
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`Petitioner cites the Board’s Retrobrands decision for the assertion that a public
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`announcement of an intention to discontinue sales of a product may be a circumstance from which
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`an intent not to resume may be inferred. However, the Retrobrands actually supports Respondent.
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`In Retrobrands, the Board held that a mark had not been abandoned despite a public announcement
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`that the product had been discontinued. Retrobrands USA LLC v. Intercontinental Great Brands
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`LLC, 2020 TTAB LEXIS 239, *26 (Trademark Trial & App. Bd. May 29, 2020). The Board
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`explained that these statements “do not address whether Respondent … would resume use” and
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`they do “not unequivocally state that the mark will no longer be used.” Id. at *28. Additionally,
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`the Board explained the respondent resumed use of the mark within two years, which showed that
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`there was not an intent not to resume use of the mark. Id. at *29. As they explained, “[i]ntent is
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`difficult to prove and, on balance, Petitioner's position is based more on speculation than fact.” Id.
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`at *35. Therefore, the Board dismissed the Petitioner’s abandonment claim.
`
`
`
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`Similarly, here, Petitioner has not met its burden to show non-use and an intention not to
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`Cancellation No. 92075839
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`resume use. At a minimum, there are significant genuine issues of material fact that prevent
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`summary judgment in Petitioner’s favor on abandonment. However, Respondent asserts that the
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`facts clearly show that it did not abandon its trademarks and therefore cross-moves for summary
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`judgment in Respondent’s favor on Petitioner’s abandonment claim.
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`CONCLUSION
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`For the foregoing reasons, Respondent respectfully requests that the Board deny
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`Petitioner’s motion summary judgment. Furthermore, Respondent requests entry of summary
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`judgment in its favor on its cross-motion for summary judgment and dismissal of Petitioner’s
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`claims with prejudice.
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`Dated: March 4, 2022
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`Respectfully Submitted,
`LUEDEKA NEELY GROUP, P.C.
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`By: s/Michael J. Bradford
`Michael J. Bradford, Reg. No. 52,646
`LUEDEKA NEELY GROUP, P.C.
`P.O. Box 1871
`Knoxville, TN 37901-1871
`Phone: (865) 546-4305
`Facsimile: (865) 523-4478
`Email: MBradford@Luedeka.com
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`Cancellation No. 92075839
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`Certificate of Service
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`This is to certify that a true and correct copy of the foregoing is being served on counsel
`of record, by email, addressed as follows:
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`Leon G. Rendeiro, Jr. – lee@rendeiroiplaw.com, docket@rendeiroiplaw.com
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`Date: March 4, 2022
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`s/Michael J. Bradford/
` Michael J. Bradford
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`__________________________________________
`Nutripacks, LLC,
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`Petitioner,
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`Cancellation No. 92075839
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`v.
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`L&R Health Products, LLC,
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`Respondent.
`_________________________________________
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`DECLARATION OF ANDREW BURKS
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`I, ANDREW BURKS, hereby declare that:
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`1.
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`I am a member of Respondent L&R Health Products, LLC and a member and the
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`Chief Executive Office or Respondent’s licensee, Life Line Foods, LLC. I have personal and
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`firsthand knowledge of the facts stated herein and, if called and sworn as a witness, I could and
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`would testify competently to the following facts.
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`2.
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`Respondent L&R Health Products, LLC is the owner of the NUTRIPAC mark of
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`U.S. Registration No. 5,389,391, which is the subject of this proceeding, as well as eighteen other
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`federally registered trademarks. However, L&R Health Products does not personally sell or
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`distribute goods under the trademarks. Rather, all sales and distributions of products under the
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`trademarks is handled by Respondent’s licensee Lifeline Foods, LLC.
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`3.
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`L&R Health, LLC and Life Line Foods, LLC are owned by the same family and
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`have the same principal office address. L&R Health Products, LLC has three member/owners –
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`Lester Burks; Lester’s son, which is me - Andrew Burks; and Lester’s son-in-law, Luis Alonso.
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`Life Line Foods has five member/owners – Lester Burks; me; Luis Alonso; Lester’s daughter,
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`Tracie Alonso; and Lester’s ex-wife, Rose Burks.
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`4.
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`As part of my job duties as a member of L&R Health Products, I monitor and
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`control the quality of licensee Life Line Foods’ products sold under the trademarks owned by L&R
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`Health. As noted above, I am the Chief Executive Officer of Life Line Foods and I handle the
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`day-to-day operations of Life Line Foods, which includes monitoring and controlling the quality
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`of the products sold by Life Line Foods.
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`5.
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`L&R Health and Life Line Foods have had a licensor-licensee relationship for many
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`years. Initially, the license was an implied, oral license, due to the their common, familial
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`ownership. In 2010, a decision was made to formalize that relationship in writing and the entities
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`entered into a formal written license agreement in 2010. The license agreement was prepared by
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`attorney John Beard at the Chattanooga, Tennessee law firm Patrick Beard Schulman & Jacoway,
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`PC in 2010. The agreement was signed by Lester Burks in 2010 on behalf of both parties. A true
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`and correct copy of an unexecuted copy of that license agreement is attached as Exhibit A, but the
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`original executed document cannot be located. Upon learning that the original document appears
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`to have been lost, the agreement was re-executed on June 15, 2021 by Lester Burks for L&R Health
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`and by me for Lifeline Foods. A true and correct copy of the 2021 executed license agreement is
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`attached as Exhibit B.
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`6.
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`With regard to the NUTRIPAC mark that is the subject of this proceeding, Life
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`Line Foods has sold multi-serve bottled liquid supplements for decades. In 2016, L&R Health and
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`Life Line Foods decided to begin selling single-serve pouches of its liquid supplements and chose
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`the product name NUTRIPAC for the new products. L&R Health Products filed U.S. Application
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`Serial No. 87251859 on November 30, 2016, seeking to register the NUTRIPAC mark for use with
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`“liquid dietary supplements,” based on an intent to use the mark in commerce. The application
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`was signed by me on behalf of L&R Health Products. It should be noted that my email address
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`uses the “lifelinefoods.com” domain. L&R Health