Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA818510
`
`Filing date:
`
`05/03/2017
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`92065406
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's e-mail
`
`Signature
`
`Date
`
`Defendant
`Pharmadel LLC
`
`ROBERT R JIMENEZ
`ESPINOSA TRUEBA MARTINEZ PL
`1428 BRICKELL AVE SUITE 100
`MIAMI, FL 33131
`UNITED STATES
`rjimenez@etlaw.com, jespinosa@etlaw.com, lmansen@etlaw.com,
`zsanchez@etlaw.com, trademarks@etlaw.com
`
`Motion for Summary Judgment
`
`Robert R. Jimenez
`
`rjimenez@etlaw.com
`
`/Robert R. Jimenez/
`
`05/03/2017
`
`Attachments
`
`Pharmadel MSJ 5.3.2017 - FNL 5.3.2017.pdf(255008 bytes )
`
`

`

`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`In the Matter of:
`
`4,581,604
`
`Registration No.:
`August 5, 2014
`
`Registered:
`
`KOFAL
`
`Trademark:
`
`__________________________________________
`
`
`
`
`
`
`
`)
`Plaza Izalco, Inc.,
`
`
`
`
`)
`
`
`
`
`
`
`
`)
`
`
`
`
`Petitioner,
`
`)
`
`
`
`
`
`
`
`)
`
`v.
`
`
`
`
`
`)
`
`
`
`
`
`
`
`)
`Pharmadel, LLC,
`
`
`
`
`)
`
`
`
`
`
`
`
`)
`
`
`
`
`Registrant.
`
`)
`__________________________________________)
`
`
`
`
`
`
`Cancellation No. 92065406
`
`
`
`REGISTRANT’S MOTION FOR SUMMARY JUDGMENT
`
`
`
`Registrant, Pharmadel, LLC (“Registrant”), by and through undersigned counsel and
`
`pursuant to Fed. R. Civ. P. 56 and TBMP 528, hereby moves for entry of summary judgment
`
`against Petitioner Plaza Izalco, Inc. (“Petitioner”), and in support states as follows:
`
`I.
`
`INTRODUCTION AND BACKGROUND.
`
`On December 2, 2008, Registrant was granted Registration Ser. No. 3540972 for the Mark
`
`KOFAL-T in International Class 005 for analgesic balm. On July 10, 2013, Registrant filed an
`
`application for the Mark KOFAL in International Class 005 on the basis of Lanham Act § 1(a).
`
`The associated goods for Registrant’s KOFAL Mark are Adhesive bandages; Adhesive bands for
`
`medical purposes; Analgesic and muscle relaxant pharmaceutical preparations; Analgesic balm;
`
`Anti-inflammatory gels; Anti-inflammatory salves; Anti-inflammatory sprays; Balms for medical
`
`purposes; Balms for pharmaceutical purposes; Curare for use as a muscle relaxant; Herbal
`
`topical creams, gels, salves, sprays, powder, balms, liniment and ointments for the relief of aches
`
`
`
`1
`
`

`

`
`
`and pain; Medicaments for promoting recovery from tendon and muscle injuries and disorders
`
`and sports related injuries; Multipurpose medicated antibiotic cream, analgesic balm and
`
`mentholated salve; Muscle relaxants; Sports cream for relief of pain; Therapeutic spray to sooth
`
`and relax the muscles. KOFAL matured to registration on August 4, 2014.
`
`On August 6, 2013, Applicant filed Application Ser. No. 86029611 for the Mark COFAL
`
`in International Class 005 on the basis of Lanham Act § 1(a). The associated goods for the COFAL
`
`Mark were described as analgesic and muscle relaxant pharmaceutical preparations; Analgesic
`
`balm; Analgesic preparations; Curare for use as a muscle relaxant; Medicaments for promoting
`
`recovery from tendon and muscle injuries and disorders and sports related injuries; Multipurpose
`
`medicated antibiotic cream, analgesic balm and mentholated salve; Muscle relaxants. On
`
`November 25, 2013, the Examiner issued an Office action refusing registration on the grounds that
`
`COFAL creates a likelihood of confusion with Registrant’s Mark KOFAL-T, and the Examiner
`
`also advised of Registrant’s pending application for KOFAL, which preceded Applicant’s
`
`application. On April 10, 2014, the Examiner issued a suspension notice due to the pending
`
`KOFAL application and an Opposition Action initiated by Applicant (Opposition No. 91214315)
`
`regarding Application Ser. No. 85821526 (which was abandoned). Ultimately, the Examiner
`
`issued a final Office action on January 30, 2016, refusing registration on the grounds that
`
`Applicant’s Mark COFAL is confusingly similar to Registrant’s KOFAL-T and KOFAL.
`
`Applicant appealed, ultimately moving for suspension of said proceeding upon filing of the instant
`
`cancellation action on February 9, 2017.
`
`In the instant case, Applicant argues that KOFAL should be cancelled because it creates a
`
`likelihood of confusion with COFAL, arguing also that KOFAL is primarily merely a surname.
`
`Applicant’s cancellation action is wholly silent with regard to KOFAL-T, likely because TBMP
`
`
`
`2
`
`

`

`
`
`307 and Lanham Act § 14 (15 U.S.C. § 1064) prevent cancellation of said mark on the grounds
`
`alleged by Applicant against KOFAL. For the reasons discussed infra, summary judgment should
`
`be entered on behalf of Registrant because the pre-existing registration for KOFAL-T renders the
`
`instant case futile, and Applicant cannot be harmed as a matter of law because of the pre-existing
`
`registration of KOFAL-T.
`
`II.
`
`LEGAL STANDARD FOR SUMMARY JUDGMENT.
`
`
`
`“37 CFR§ 2.116(a), provides that “[e]xcept as otherwise provided, and wherever applicable
`
`and appropriate, procedure and practice in inter partes proceedings shall be governed by the
`
`Federal Rules of Civil Procedure.” TBMP 502.01. Section 14 of the Lanham Act (15 U.S.C. §
`
`1064) sets forth the requirements with respect to the standing of a petitioner seeking to cancel a
`
`registration of a mark. “For a petitioner to prevail in a cancellation proceeding, it is incumbent
`
`upon that party to show (1) that it possesses standing to challenge the continued presence on the
`
`register of the subject registration and (2) that there is a valid ground why the registrant is not
`
`entitled under law to maintain the registration.” See A.V. Brands, Inc. v. Spirits International,
`
`B.V., 2009 TTAB LEXIS 199 (TTAB 2009) (citing Lipton Industries, Inc. v. Ralston Purina
`
`Company, 670 Fed.2d 1024, 213 USPQ 185, 187 (CCPA 1982). See also, TBMP 503.02.
`
`“Summary judgment is appropriate ‘if the pleadings, depositions, answers to interrogatories, and
`
`admissions on file, together with the affidavits, if any, show that there is no genuine issue as to
`
`any material fact and that the moving party is entitled to a judgment as a matter of law.” Fed. R.
`
`Civ. P. 56(c). See also, TBMP 528. “The motion for summary judgment is a pretrial device to
`
`dispose of cases in which ‘the pleadings, the discovery and disclosure materials on file, and any
`
`affidavits show that there is no genuine issue as to any material fact and that the movant is entitled
`
`to judgment as a matter of law.’” TBMP 528.01. “The purpose of the motion is judicial economy,
`
`
`
`3
`
`

`

`
`
`that is, to avoid an unnecessary trial where there is no genuine issue of material fact and more
`
`evidence than is already available in connection with the summary judgment motion could not
`
`reasonably be expected to change the result in the case.” Id. “The burden of the moving party
`
`may be met by showing “that there is an absence of evidence to support the nonmoving party’s
`
`case.” Id. “A party moving for summary judgment should specify, in its brief in support of the
`
`motion, the material facts that are undisputed.” Id.
`
`A. Statement of Undisputed Facts.
`
`1.
`
`On December 2, 2008, Registrant was granted Registration Ser. No. 3540972 for
`
`the Mark KOFAL-T in International Class 005 for analgesic balm.
`
`2.
`
`On July 10, 2013, Registrant filed an application for the Mark KOFAL in
`
`International Class 005 on the basis of Lanham Act § 1(a).
`
`3.
`
`The associated goods for Registrant’s KOFAL Mark are Adhesive bandages;
`
`Adhesive bands for medical purposes; Analgesic and muscle relaxant pharmaceutical
`
`preparations; Analgesic balm; Anti-inflammatory gels; Anti-inflammatory salves; Anti-
`
`inflammatory sprays; Balms for medical purposes; Balms for pharmaceutical purposes; Curare
`
`for use as a muscle relaxant; Herbal topical creams, gels, salves, sprays, powder, balms, liniment
`
`and ointments for the relief of aches and pain; Medicaments for promoting recovery from tendon
`
`and muscle injuries and disorders and sports related injuries; Multipurpose medicated antibiotic
`
`cream, analgesic balm and mentholated salve; Muscle relaxants; Sports cream for relief of pain;
`
`Therapeutic spray to sooth and relax the muscles.
`
`4.
`
`5.
`
`KOFAL matured to registration on August 4, 2014.
`
`On August 6, 2013, Applicant filed Application Ser. No. 86029611 for the Mark
`
`COFAL in International Class 005 on the basis of Lanham Act § 1(a).
`
`
`
`4
`
`

`

`
`
`6.
`
`The associated goods for the COFAL Mark were described as analgesic and muscle
`
`relaxant pharmaceutical preparations; Analgesic balm; Analgesic preparations; Curare for use
`
`as a muscle relaxant; Medicaments for promoting recovery from tendon and muscle injuries and
`
`disorders and sports related injuries; Multipurpose medicated antibiotic cream, analgesic balm
`
`and mentholated salve; Muscle relaxants.
`
`7.
`
`On November 25, 2013, the Examiner issued an Office action refusing registration
`
`on the grounds that COFAL creates a likelihood of confusion with Registrant’s Mark KOFAL-T,
`
`and the Examiner also advised of Registrant’s pending application for KOFAL, which preceded
`
`Applicant’s application.
`
`8.
`
`On April 10, 2014, the Examiner issued a suspension notice due to the pending
`
`KOFAL application and an Opposition Action initiated by Applicant (Opposition No. 91214315)
`
`regarding Application Ser. No. 85821526 (which was abandoned).
`
`9.
`
`The Examiner issued a final Office action on January 30, 2016, refusing registration
`
`on the grounds that Applicant’s Mark COFAL is confusingly similar to Registrant’s KOFAL-T
`
`and KOFAL.
`
`10.
`
`Applicant moved for suspension of said proceeding upon filing of the instant
`
`cancellation action on February 9, 2017.
`
`III. ARGUMENT
`
`THE PRE-EXISTING REGISTRATION OF KOFAL-T BARS THE
`CANCELLATION ACTION AS A MATTER OF LAW.
`
`A.
`
`Applicant has no standing because it has no personal or direct stake.
`
`Under TBMP 309.03(b), “any person who believes it is or will be damaged by the
`
`registration of a mark has standing to file a complaint.” Although at the pleading stage, “all that
`
`is required is that a plaintiff allege facts sufficient to show a ‘real interest’ in the proceeding, and
`
`
`
`5
`
`

`

`
`
`a ‘reasonable basis’ for its belief that it would suffer some kind of damage,”1 such allegations
`
`“must later be affirmatively proved by the plaintiff.” Id. Moreover, courts reject the premise that
`
`in a cancellation action “a petitioner should be found to have standing by virtue of its complaint
`
`alone.” Lipton Indus. v. Ralston Purina Co., 670 F.2d 1024, 1029 (C.C.P.A. 1982). In this matter,
`
`although the cancellation action filed by Applicant is against the mark KOFAL, because COFAL
`
`can never register as a result of the likelihood of confusion with the incontestable KOFAL-T
`
`(discussed infra), Applicant cannot have a “direct and personal interest” in the outcome of this
`
`action. As such, Applicant has no standing because it cannot show “a direct injury to itself,”2 and
`
`there is no controversy sufficient for Applicant to maintain the action. Plainly, as a result of the
`
`pre-existing and subsisting registration for KOFAL-T, Applicant cannot by definition have a
`
`personal stake in the outcome of the proceeding given that it cannot be impacted by maintenance
`
`of KOFAL. See e.g., Ritchie v. Simpson, 170 F. 3d 1092 (Fed. Cir. 1999) (explaining standing in
`
`the context of Board actions and stating that “[t]he crux of the matter is not how many others share
`
`one’s belief that one will be damaged by the registration, but whether that belief is reasonable and
`
`reflects a real interest in the issue”).
`
`B. Morehouse derails Applicant’s cancellation action, leaving an inability to
` plead standing.
`
`
`“The Morehouse defense, an equitable affirmative defense… is based on the theory that an
`
`opposer cannot be injured by the registration sought because there already exists a similar
`
`registration and, therefore, an additional registration for the same or substantially similar mark and
`
`goods or services can no more injure the plaintiff than the prior registration.” See Mag Instrument,
`
`Inc. v. The Brinkmann Corporation, 2010 TTAB LEXIS 322, *23 (TTAB 2010). “It is well settled
`
`
`1 Id.
`2 Ritchie v. Simpson, 170 F. 3d 1092, 1096 (Fed. Cir. 1999).
`
`
`
`6
`
`

`

`
`
`that ownership of a subsisting registration is a proper defense to a cancellation proceeding when
`
`the registration is for the same or substantially identical mark for the same or substantially identical
`
`goods or services. See Dimitri Valiant v. Carl Karcher Enterprises, Inc., 1984 TTAB LEXIS 97
`
`(TTAB 1984) (warning that summary judgment would be entered if the petitioner failed to petition
`
`for cancellation of the pre-existing registrations). See also, Morehouse Manufacturing
`
`Corporation v. J. Strickland & Co., 407 F 2d 881 (CCPA 1969)). The Morehouse defense is based
`
`on the theory “that a party cannot be further injured by the registration sought or already owned
`
`because there already exists a substantially similar registration and, therefore, an additional
`
`registration for the same mark for substantially identical goods and services can no more injure
`
`the plaintiff than the subsisting prior registration.” The Solomon-Page Group LLC and The
`
`Clinical Resource Network LLC v. Clinical Resources Network, 2012 TTAB LEXIS 124 (TTAB
`
`2012). “These situations should be summarily dealt with and the plaintiff should be precluded
`
`from challenging a new application if the defendant owns a registration for a substantially similar
`
`mark for substantially similar goods.” See Carl Karcher Enterprises, Inc. v. Gold Star Chili, Inc.,
`
`1983 TTAB LEXIS 74 (TTAB 1983) (entering summary judgment as a result of the Morehouse
`
`defense and because the opposer failed to file a petition to cancel the pre-existing registration).
`
`“No added damage results…from the second registration.” Id.
`
`In the instant case, Applicant’s cancellation action is based upon an alleged likelihood of
`
`confusion between the registered mark KOFAL and the applied-for mark, COFAL, and Applicant
`
`also argues that KOFAL is primarily merely a surname. Even overlooking the spurious nature of
`
`such a position, the entire cancellation action fails because Applicant cannot be damaged by
`
`KOFAL’s listing on the Principal Register due to the pre-existing registration for KOFAL-T, also
`
`owned by Registrant. As discussed below, the two requirements for application of the Morehouse
`
`
`
`7
`
`

`

`
`
`defense –substantially identical marks and substantially identical goods—are satisfied as a matter
`
`of law. .
`
`
`
`
`
`i. The marks are all substantially identical.
`
` “For purposes of the Morehouse defense, two marks are ‘substantially identical’ when
`
`they are either literally identical or legally equivalent.” See O-M Bread Inc. v. United States
`
`Olympic Committee, 65 F.3d 933, 36 USPQ2d 1041 (Fed. Cir. 1995) (OLYMPIC and OLYMPIC
`
`KIDS are neither the same nor legally equivalent). In the instant case, the Marks KOFAL and
`
`KOFAL-T are substantially identical because they share the same commercial impression and the
`
`differences between them are insignificant. See Dimitri Valiant v. Carl Karcher Enterprises, Inc.,
`
`1984 TTAB LEXIS 97 (TTAB 1984).
`
`In Dimitri Valiant, the term “star” was held to be “the dominant feature” of the marks
`
`STAR HAMBURGER and STAR CHEESEBURGER in much the same way as the dominant
`
`portion of the KOFAL and KOFAL-T marks are the word “kofal.” This Board also held in Dimitri
`
`Valiant that the addition of the word “cheese” was insignificant, and in this matter the “-T”
`
`represents an insignificant difference between KOFAL and KOFAL-T. Thus, the Morehouse
`
`rationale is applicable because the KOFAL mark to be cancelled is substantially identical to the
`
`subsisting and pre-existing registration for KOFAL-T, meaning Applicant cannot be damaged by
`
`maintenance of the KOFAL registration. Moreover, and as the Examiner determined through
`
`denial of the application for COFAL, there is a likelihood of confusion between COFAL on the
`
`one hand and both KOFAL and KOFAL-T on the other, satisfying the first of the two Morehouse
`
`requirements.
`
`The Board should agree with the conclusion previously reached by the Examiner regarding
`
`all three marks relevant here: “[a]ccordingly, it is the examining attorney’s opinion that the marks
`
`
`
`8
`
`

`

`
`
`are similar.” See Jan. 30, 2016 Final Office action in Application No. 86029611 for COFAL, p.
`
`3.
`
`
`
`
`
`
`
`ii. The goods are substantially identical or substantially similar between
` Registrant’s own marks and Applicant’s mark.
`
`The Examiner who refused registration of Applicant’s COFAL mark considered the
`
`relatedness of all the goods at issue in this matter, finding they were all substantially the same or
`
`related in a way that bars registration of Applicant’s mark COFAL (which evinces that Applicant
`
`cannot be injured by maintenance of KOFAL given the unchallenged KOFAL-T). The Examiner
`
`stated as follows in the Final Office action:
`
`In this case, the identification set forth in the application and registration has no restrictions
`as to nature, type, channels of trade, or classes of purchasers. Therefore, it is presumed that
`these goods and/or services travel in all normal channels of trade, and are available to the
`same class of purchasers. Further, the registrant uses broad wording to describe the goods
`and this wording is presumed to encompass all goods of the type described, including those
`in applicant’s more narrow identification. The registrant’s broad identification of “balms
`for medical purposes” and “balms for pharmaceutical purposes” is seen to include the
`applicant’s analgesic balm. Similarly, the applicant’s broad identification of “analgesic
`preparations” is seen to include goods such as the registrant’s analgesic balm and analgesic
`muscle relaxant pharmaceutical preparations. In addition, see the attached evidence
`illustrating a producer of both bandages and analgesic cream.
`
` A
`
` search of Office records illustrates a more specific connection between the
`identified goods. The trademark examining attorney has attached evidence from the
`USPTO’s X-Search database consisting of a number of third-party marks registered for use
`in connection with the same or similar goods as those of both applicant and registrant in
`this case. This evidence shows that the goods listed therein, namely, “analgestic
`preparations” and “analgesic balm” or “adhesive bandages” goods, are of a kind that
`may emanate from a single source under a single mark. See In re Aquamar, Inc., 115
`USPQ2d 1122, 1126 n.5 (TTAB 2015) (citing In re Mucky Duck Mustard Co., 6 USPQ2d
`1467, 1470 n.6 (TTAB 1988)); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-
`86 (TTAB 1993); TMEP §1207.01(d)(iii).
`
`
`See Jan. 30, 2016 Final Office action in Application No. 86029611 for COFAL, p. 3 (emphasis
`
`added). As considered below, the Examiner was correct.
`
`“The Morehouse defense requires the goods to be ‘identical, substantially the same, or so
`
`related so as to represent in law a distinction without a difference.” See Mag Instrument, Inc. v.
`
`
`
`9
`
`

`

`
`
`The Brinkmann Corporation, 2010 TTAB LEXIS 322, *26 (TTAB 2010). This is what the
`
`Examiner
`
`found and what Registrant hopes
`
`the Board
`
`rules
`
`in
`
`this matter.
`
`Registration for KOFAL-T is for analgesic balm in International Class 005, and Registrant’s
`
`KOFAL and Applicant’s COFAL similarly list analgesic balm as a category of goods in the same
`
`class. Notably, the goods listed by Applicant for its mark are Analgesic and muscle relaxant
`
`pharmaceutical preparations; Analgesic balm; Analgesic preparations; Curare for use as a
`
`muscle relaxant; Medicaments for promoting recovery from tendon and muscle injuries and
`
`disorders and sports related injuries; Multipurpose medicated antibiotic cream, analgesic balm
`
`and mentholated salve; Muscle relaxants also in International Class 005. Again, the Examiner
`
`found that these goods are related as evidence shows they emanate from a single source and are
`
`connected. The Examiner is correct.
`
`The aforementioned goods listed for both COFAL and KOFAL3 are indeed related to those
`
`in the registration for KOFAL-T because consumers “are likely to believe that the [goods],
`
`similarly marked, come from the same source, or are somehow connected with or sponsored by a
`
`common company.” See Daddy’s Junky Music Stores, Inc. v. Big Daddy's Family Music Ctr., 109
`
`F.3d 275 (6th Cir. 1997). As such, the pre-existing KOFAL-T registration bars Applicant’s
`
`cancellation action under Morehouse and its progeny because, as the Examiner also pointed out
`
`
`3 The goods listed in the registration for KOFAL are Adhesive bandages; Adhesive bands for
`medical purposes; Analgesic and muscle relaxant pharmaceutical preparations; Analgesic balm;
`Anti-inflammatory gels; Anti-inflammatory salves; Anti-inflammatory sprays; Balms for medical
`purposes; Balms for pharmaceutical purposes; Curare for use as a muscle relaxant; Herbal
`topical creams, gels, salves, sprays, powder, balms, liniment and ointments for the relief of aches
`and pain; Medicaments for promoting recovery from tendon and muscle injuries and disorders
`and sports related injuries; Multipurpose medicated antibiotic cream, analgesic balm and
`mentholated salve; Muscle relaxants; Sports cream for relief of pain; Therapeutic spray to sooth
`and relax the muscles.
`
`
`
`10
`
`

`

`
`
`supra, the goods listed for KOFAL and KOFAL-T qualify as substantially identical and related,
`
`preventing COFAL from registering as a result.
`
`As set forth above, KOFAL-T blocks registration of COFAL under every scenario,
`
`showcasing that the Morehouse Defense and Doctrine pled in this case is sound, that Applicant
`
`can have no interest in the maintenance of the registration for KOFAL, that Applicant has no
`
`standing given the inability to obtain relief in this action, and that summary judgment is ripe for
`
`Applicant given the absence of any genuine issues of material fact.
`
`WHEREFORE, for the reasons set forth above, Registrant prays the Board enter summary
`
`judgment in favor of Registrant and award Registrant any and all relief that is just and proper.
`
`Dated: May 3, 2017.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully Submitted,
`
`ESPINOSA TRUEBA MARTINEZ P.L.
`
`
`
`
`
`By: /s/ Robert R. Jimenez
`
`Jorge Espinosa
`
`Florida Bar No. 779032
`
`jespinosa@etlaw.com
`
`Robert R. Jimenez
`
`Florida Bar No. 72020
`
`rjimenez@etlaw.com
`1428 Brickell Ave., Suite 100
`Miami, FL 33131
`Tel: 305-854-0900
`Fax: 855-854-0900
`
`
`
`
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`As per TBMP R. 113, I hereby certify that on May 3, 2017 a true copy of this document
`
`was served via email upon the following attorney of record for Applicant, Oliver A. Ruiz of Malloy
`
`& Malloy, P.L., 2800 SW 3rd Ave., Miami, Florida 33129, to oruiz@malloylaw.com, and
`
`jcmalloy@malloylaw.com, jnmcdonaled@malloylaw.com.
`
`By: /s/ Robert R. Jimenez
`
`Robert R. Jimenez
`
`
`
`
`
`
`
`11
`
`