Compagnie Gervais Danonev.Precision Formulations, LLC and Precision Formulations, LLC v. Compagnie Gervais Danone

Trademark Trial and Appeal Board

Jan 5, 2009

No. 91184174 (T.T.A.B. Jan. 5, 2009)

coggins Mailed: January 5, 2009

Opposition No. 91179589

Compagnie Gervais Danone

v.

Precision Formulations, LLC

--------------------

Opposition No. 91184174

Precision Formulations, LLC

v.

Compagnie Gervais Danone

Before Bucher, Zervas, and Wellington
Administrative Trademark Judges.

By the Board:

These cases now come up on Compagnie Gervais Danone's
motion for summary judgment (filed June 19, 2008, in Opposition
No. 91179589) and motion to dismiss (filed June 19, 2008, in
Opposition No. 91184174). Because the parties are in reverse
positions in the two opposition proceedings, we will
hereinafter refer to Compagnie Gervais Danone as "Danone," and
Precision Formulations LLC as "Precision."
Upon review of the motions, the Board notes that
Opposition Nos. 91179589 and 91184174 involve the same
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451 THIS OPINION IS A
PRECEDENT OF THE
TTAB
Opposition Nos. 91179589 and 91184174
2
parties and common questions of law and fact. While these
separate oppositions have not been formally consolidated,
the Board exercises its discretion to issue this single
order determining the pending motions for summary judgment
and to dismiss.
MOTION FOR SUMMARY JUDGMENT IN OPPOSITION NO. 91179589
Precision seeks to register the mark FRUITOLOGY for
various cosmetic products in International Class 3, various
nutritional goods and medicated skin creams in International
Class 5, and various beverage goods in International Class 32.1
Danone has moved for summary judgment in its favor on its
claim of priority and likelihood of confusion regarding
Precision's nutritional goods of International Class 5 and the
goods of International Class 32. Danone has not opposed
Precision's application to register the mark in International
Class 3.
Summary judgment is appropriate when there is no genuine
issue of material fact in dispute and the moving party is
entitled to judgment as a matter of law. See Fed. R. Civ. P.
56(c). A genuine dispute with respect to a material fact
exists if sufficient evidence is presented that a reasonable
fact finder could decide the question in favor of the non-
moving party. See Opryland USA Inc. v. Great American Music
Show Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992).
Thus, all doubts as to whether any particular factual issues
are genuinely in dispute must be resolved in the light most
Opposition Nos. 91179589 and 91184174
3
favorable to the non-moving party. See Olde Tyme Foods Inc. v.
Roundy's Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir. 1992).
A party moving for summary judgment in its favor on a
priority and likelihood of confusion claim must establish that
there is no genuine dispute that (1) it has standing to
maintain the proceeding; (2) it is the prior user of its
pleaded mark or marks or the owner of a valid and subsisting
federally registered mark; and (3) contemporaneous use of the
parties' respective marks in connection with their respective
goods or services would be likely to cause confusion, mistake
or to deceive consumers. See Hornblower & Weeks, Inc. v.
Hornblower & Weeks, Inc., 60 USPQ2d 1733 (TTAB 2001); see also,
King Candy Co., Inc. v. Eunice King's Kitchen, Inc., 496 F.2d
1400, 182 USPQ 108 (CCPA 1974).
There are no questions as to standing or similarity of the
marks and goods in these cases, as the parties' submissions
show they have filed trademark applications for nearly
identical marks, for overlapping or legally identical goods,
and each party has claimed there is a likelihood of confusion.
Moreover, in its answer to the notice of opposition Precision
admitted that the parties' marks are "identical in sight,
sound, connotation and commercial impression" and that "there
is direct overlap between some" of the parties' goods. The
parties have therefore effectively conceded that confusion is
likely between the opposed goods in each opposed class. The
sole issue that remains is one of priority.

1 Application Serial No. 77112583, filed February 21, 2007, under
Opposition Nos. 91179589 and 91184174
4
Danone argues that because its priority filing date is
earlier than Precision's filing date or any date of use which
Precision has claimed, Danone is entitled to judgment as a
matter of law.
We begin by looking at Precision's priority date. A party
that has filed an intent-to-use application may rely on the
filing date of its application to establish priority. See
Larami Corp. v. Talk To Me Programs Inc., 36 USPQ2d 1840, 1845
n. 7 (TTAB 1995) (constructive use provisions may be used both
defensively and offensively to establish priority); see also,
Zirco Corp. v. American Telephone & Telegraph Co., 21 USPQ2d
1542, 1544 (TTAB 1991) (right to rely on constructive use date
comes into existence with filing of intent-to-use application).
Precision may, therefore, claim priority back to the February
21, 2007 date on which it filed the intent-to-use application.
Precision has not relied on any earlier date for priority
purposes.2

Section 1(b) of the Trademark Act, 35 U.S.C. § 1051(b).
2 In Precision's brief in opposition to the motion for summary
judgment, Precision's responses to Danone's first set of
interrogatories, and Precision's notice of opposition in
Opposition No. 91184174, Precision has relied on February 2007 as
the point in time when it began "marketing" its FRUITOLOGY goods.
In view, however, of Precision's repeated failure to identify a
specific day of that month, the earliest date on which Precision
could rely for priority for its "marketing" (should it be able to
show that "marketing" was actual use or use analogous to
trademark use) would be February 28, 2007, the last day of the
specified time period. EZ Loader Boat Trailers, Inc. v. Cox
Trailers, Inc., 213 USPQ 597, 598 n.5 (TTAB 1982) (documentary
evidence showed first use in 1977, the month and day were
unknown, therefore, the Board could not presume any date earlier
than the last day of the proved period). See also Osage Oil &
Transportation, Inc. v. Standard Oil Co., 226 USPQ 905, 911 n.22
(TTAB 1985) (evidence established first use in 1968-1969,
therefore December 31, 1969 is date of first use).
Opposition Nos. 91179589 and 91184174
5
We next consider Danone's priority date. We note that
Danone filed its application on May 22, 2007 pursuant to
Section 66, 15 U.S.C. § 1141f, of the Trademark Act.3 Section
66(b), 15 U.S.C. § 1141f(b), provides that a Section 66(a)
application:
...shall constitute constructive use of the mark,
conferring the same rights as those specified in
section 7(c), as of the earliest of the following:
(1) The international registration date, if the
request for extension of protection was filed in the
international application.
(2) The date of recordal of the request for extension
of protection, if the request for extension of
protection was made after the international
registration date.
(3) The date of priority claimed pursuant to section
67.

Section 67 of the Trademark Act, 15 U.S.C. § 1141g, states
that an applicant is entitled to claim a date of priority when
it holds an international registration, makes a request for
extension of protection (application) to the U.S., includes a
claim of priority based on a right of priority under Article 4
of the Paris Convention for the Protection of Industrial
Property, and the date of the international registration is
within six months of the filing date of the application
underlying the international registration. Danone's
International Registration No. 0930814 issued May 22, 2007.
The International Registration is based on an underlying
French application (No. 06 3 467 672) filed December 6, 2006,
which issued on May 11, 2007, as French Registration No.

3 The filing date of Danone's §66(a) application is the
international registration date of May 22, 2007. See TMEP §
1904.01(b).
Opposition Nos. 91179589 and 91184174
6
06 3 467 672. Danone claimed priority based on the December
6, 2006 filing date of the French application. Thus, pursuant
to Sections 66(b) and 67, Danone is entitled to a priority
date of December 6, 2006. See General Motors Corp. v.
Aristide & Co., Antiquaire de Marques, 87 USPQ2d 1179, 1181
(TTAB 2008).
Because Danone's application has an effective filing date
of December 6, 2006, and that date is earlier than Precision's
filing date of February 21, 2007, Danone may rely on its
effective filing date to establish priority. Thus, we find
that there are no genuine issues of material fact as to the
issue of priority.
Accordingly, Danone's motion for summary judgment is
granted, contingent upon application Serial No. 79041120
maturing into a registration.4 If application Serial No.
79041120 matures into a registration, the Board will enter
judgment against Precision, sustain the opposition, and refuse
registration to Precision for International Classes 5 and 32.5

4 Section 66(b), 15 U.S.C. § 1141f(b), confers the same rights as
those specified in Section 7(c) of the Trademark Act, 15 U.S.C. §
1057(c). Section 7(c) provides that filing an application for
registration on the Principal Register establishes constructive
use and nationwide priority, contingent upon issuance of a
registration. Thus, we do not enter judgment at this time, but
rather grant Danone's summary judgment motion contingent on the
issuance of a registration in application Serial No. 79041120.

5 Although Danone's motion does not seek summary judgment against
Precision's "medicated skin creams" in International Class 5, we
note that all of the goods in International Class 5 were opposed
in the notice of opposition. Where priority and likelihood of
confusion are established as to any of the goods identified in an
opposed class, the opposition to registration of the mark as to
the entire class will be sustained. See Baseball America Inc. v.
Opposition Nos. 91179589 and 91184174
7
MOTION TO DISMISS IN OPPOSITION NO. 91184174
In its notice of opposition for proceeding no. 91184174,
Precision alleges that it filed an application on February 21,
2007, for a mark that is almost identical to the Danone mark
being opposed; that Precision first used its mark in February
2007; that Danone filed with the USPTO "an intent-to-use
application" on May 22, 2007; and that based on Precision's
prior use of its mark as early as February 2007, Precision's
rights in the mark are superior to Danone's rights. In
response to the notice of opposition, Danone filed a motion to
dismiss under Fed. R. Civ. P. 12(b)(6) alleging Precision's
failure to state a claim upon which relief can be granted.
To withstand a motion to dismiss, a notice of opposition
need only allege such facts that, if proved, would establish
that opposer is entitled to the relief sought, that is, that
(1) opposer has standing to challenge the application, and (2)
a valid ground exists for seeking to oppose registration. See
Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024,
213 USPQ 185 (CCPA 1982).
Precision has adequately alleged standing in this
proceeding by pleading in the notice of opposition that it has
filed an application for a mark nearly identical to Danone's
mark for overlapping or legally identical goods. By pleading
that it has filed such an application, Precision has
sufficiently alleged that it has a "real interest" and a
"direct and personal stake" in the outcome of the proceeding.

Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004) and
Opposition Nos. 91179589 and 91184174
8
See Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025
(Fed. Cir. 1999).
For purposes of determining whether a valid ground exists
for seeking to oppose registration, all of Precision's well-
pleaded allegations must be accepted as true, and the notice of
opposition must be construed in the light most favorable to
Precision as the non-movant. See Advanced Cardiovascular
Systems Inc. v. SciMed Life Systems Inc., 988 F.2d 1157,
26 USPQ2d 1038 (Fed. Cir. 1993); see also 5A Wright & Miller,
Federal Practice And Procedure: Civil 2d § 1357 (1990).
In the motion to dismiss, Danone argues that Precision has
failed to properly allege priority because "the facts [pleaded]
in the notice of opposition and incorporated by reference by
virtue of" Danone's application "support the conclusion that
Danone and not Precision has priority...." Danone states that
its underlying application Serial No. 79041120 is "incorporated
by reference" in the notice of opposition and is therefore
available to the Board for consideration on a motion to dismiss
for failure to state a claim.
In its brief in opposition to the motion to dismiss,
Precision argues that the Board must construe Precision's
priority claim as true. That is, the Board must accept as true
Precision's statements that Precision filed an application on
February 21, 2007, and that Danone filed an intent-to-use
application on May 22, 2007.

cases cited therein.
Opposition Nos. 91179589 and 91184174
9
In reply, Danone reiterated its argument that its
application (request for extension of protection) was
"incorporated by reference" in the notice of opposition and
should therefore be available to the Board for consideration on
the motion to dismiss. Danone submitted two copies of its
application Serial No. 79041120 with its reply brief, one from
the Office's Trademark Document Retrieval (TDR) system and one
from the Office's Trademark Application and Registration
Retrieval (TARR) database.
If, on a motion to dismiss for failure to state a claim
upon which relief can be granted, matters outside the pleadings
are submitted and not excluded by the Board, the motion will be
treated as a motion for summary judgment under Fed. R. Civ. P.
56. See, for example, Fed. R. Civ. P. 12(b); Advanced
Cardiovascular Systems Inc. v. SciMed Life Systems Inc.,
988 F.2d 1157, 26 USPQ2d 1038 (Fed. Cir. 1993); Libertyville
Saddle Shop Inc. v. E. Jeffries & Sons Ltd., 22 USPQ2d 1594
(TTAB 1992); TBMP § 503.04 (2nd ed. rev. 2004).
For all practical purposes, such conversions will not be
effected for motions to dismiss filed in opposition or
cancellation proceedings commenced on or after November 1,
2007. The USPTO published a notice of final rulemaking in the
Federal Register on August 1, 2007, at 72 Fed. Reg. 42242. By
this notice, various rules governing Trademark Trial and Appeal
Board inter partes proceedings were amended. Certain
amendments had an effective date of August 31, 2007, while most
had an effective date of November 1, 2007. In inter partes
Opposition Nos. 91179589 and 91184174
10
proceedings commenced prior to November 1, 2007, a party is
permitted to file a motion for summary judgment under Trademark
Rule 2.127(e)(1) at any time after notification of the
proceeding had been sent to the parties by the Board but before
commencement of the first testimony period.6 In inter partes
proceedings commenced after November 1, 2007, a party may not
file a motion for summary judgment under Trademark Rule
2.127(e)(1) until the party has made its initial disclosures,
except for a motion asserting claim or issue preclusion or lack
of jurisdiction by the Board.7
Because the Board does not allow a party to file a motion
for summary judgment prior to the moving party's service of
initial disclosures on the adverse party, the Board generally
will no longer exercise its discretion to convert motions to
dismiss that refer to matters outside the pleadings into
motions for summary judgment, if such motions are filed before
the moving party serves its initial disclosures. Conversion of
a motion to dismiss would result in a premature motion for
summary judgment. However, if a motion to dismiss is filed
that references matters outside the pleadings, the Board may
exclude from consideration the matters outside the pleadings

6 Opposition No. 91179589, and the motion for summary judgment
filed therein, discussed supra, is such a case.
7 Moreover, because a party's initial disclosures are not filed
with the Board, if a party moves for summary judgment prior to
the deadline for making initial disclosures it should indicate in
its motion that the disclosures have been made, or are not
required because the motion seeks judgment on claim or issue
preclusion, or on a jurisdictional issue.

Opposition Nos. 91179589 and 91184174
11
and may consider the motion for whatever merits it may present
as a motion to dismiss.
In the current opposition proceeding, in accordance with
the practice discussed above, we will not convert Danone's
motion to dismiss into a motion for summary judgment. However,
it is unnecessary for us to convert the motion to dismiss to a
motion for summary judgment to be able to consider the matters
relied on by Danone, namely, the filing basis and filing date
of its application, as well as the priority date accorded
thereto.
Despite the requirement that the Board must treat all
well-pleaded allegations as true, there are facts the Board may
consider when a party has filed a motion to dismiss under Fed.
R. Civ. P. 12(b)(6). For example, the Board may look to such
facts as the filing date, filing basis, priority date,
publication date, and applicant's name in an application that
is the subject of an opposition proceeding. These are facts
not subject to proof, and the Board may look to Office records
for such facts to determine if a party's allegations are well-
pleaded.8
In this case, Precision's allegation that Danone's
application was filed under an intent-to-use basis is not

8 In contrast, allegations made in an application, for example,
dates of first use and first use in commerce, and allegations
relative to acquired distinctiveness, are not objective facts but
are subject to proof in an inter partes proceeding. See Yamaha
International Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d
1001, 1004 (Fed. Cir. 1988)(acquired distinctiveness); Miss
Universe, Inc. v. Drost, 189 USPQ 212, 213 (TTAB 1975)(dates of
use).

Opposition Nos. 91179589 and 91184174
12
supported by Office records. Precision's pleading is incorrect
as to the basis of Danone's application. Specifically,
Danone's application was not filed as "an intent-to-use
application" under Section 1(b) of the Trademark Act, 35 U.S.C.
§ 1051(b). Rather, Danone's application was a request for
extension of protection filed under Section 66 of Trademark Act
pursuant to the Protocol Relating to the Madrid Agreement
Concerning the International Registration of Marks ("Madrid
Protocol"), 35 U.S.C. § 1141f.
As explained in detail earlier in this order, Danone's
priority filing date for the subject extension application
under Sections 66(b) and 67 of the Trademark Act is December 6,
2006. Precision's allegation that Danone filed an intent-to-
use application on May 22, 2007 is not well-pleaded.
Therefore, the Board is under no obligation to accept such
allegation as true. The Board will not take as true any
allegations contradicting facts in Office records.
For purposes of pleading, Precision's allegations of
priority are insufficient. Precision's allegations of February
21, 2007 as the filing date of its own intent-to-use
application, and February 2007 as the date Precision began use
of its mark for marketing, do not establish a claim of priority
over Danone's effective filing date of December 6, 2006, which
date is claimed in the subject application filed under Section
66 of the Trademark Act. Precision pleads no other allegations
concerning Danone's filing basis or priority date. The
allegations therefore do not allege such facts that, if proved,
Opposition Nos. 91179589 and 91184174
13
would establish that Precision is entitled to the relief
sought.
Accordingly, Danone's motion to dismiss is granted,
contingent upon issuance of a registration to Danone.9
Application Serial No. 79041120 may proceed to registration
under further processing in accordance with Section 66
applications.

9 When we grant a motion to dismiss filed under Fed. R. Civ. P.
12(b)(6), it is our general practice to allow the plaintiff time
to amend its pleading, if appropriate. However, in view of the
evidence submitted by Precision in opposition to Danone's motion
for summary judgment, Precision cannot plead priority of use.
Accordingly, it would be futile to allow Precision time to file
an amended pleading.