Nature’s Path Foods Inc.v.Mary’s Gone Crackers, Inc.

Trademark Trial and Appeal Board

Dec 29, 2015

No. 92059388 (T.T.A.B. Dec. 29, 2015)

Mailed: December 29, 2015

Cancellation No. 92059388
Nature’s Path Foods Inc.
v.
Mary’s Gone Crackers, Inc.

Before Quinn, Lykos and Hightower, Administrative Trademark Judges.
Opinion by Hightower, Administrative Trademark Judge:

Nature’s Path Foods Inc. (“Petitioner”) has petitioned to cancel two registrations
owned by Mary’s Gone Crackers, Inc. (“Registrant”) for the marks PEACE, LOVE &
CRUNCH (in standard characters)1 and .2 Both registrations
are for “crackers” in International Class 30.

1 Registration No. 3542995, issued December 9, 2008; Section 8 affidavit accepted.
2 Registration No. 3546281, issued December 16, 2008; Section 8 affidavit accepted. The
registration includes the following description: “The mark consists of the overlined and
underlined wording ‘PEACE, LOVE & CRUNCH’ all in the color burgundy above a broken
cracker in the shape of a peace symbol in various shades of brown. The white in the
drawing represents background and is not claimed as a feature of the mark.”
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
General Contact Number: 571-272-8500
Cancellation No. 92059388
2
Now before us are Petitioner’s motion for leave to file an amended petition for
cancellation, filed July 9, 2015; Registrant’s motion for summary judgment, filed
November 17, 2014 on the two claims in Petitioner’s petition for cancellation, i.e.,
that Registrant’s marks have been abandoned and that its registrations are void
ab initio due to non-use before the applications were filed; and Petitioner’s cross-
motion to strike, filed as part of its response to Registrant’s motion for summary
judgment on July 9, 2015. The motions are fully briefed.
Petitioner’s Motion to Amend
We first address Petitioner’s motion for leave to amend its petition. By the
proposed amendment to the petition for cancellation, Petitioner seeks to add a claim
that Registrant committed fraud in obtaining and maintaining the subject
registrations.
Pursuant to Trademark Rule 2.127(d), 37 C.F.R. § 2.127(d), when any party has
filed a potentially dispositive motion, including a motion for summary judgment,
“the case will be suspended by the Trademark Trial and Appeal Board with respect
to all matters not germane to the motion and no party should file any paper which
is not germane to the motion except as otherwise specified in the Board’s
suspension order.” Proceedings in this matter have been suspended since November
23, 2014, after Registrant filed its motion for summary judgment midway through
the discovery period.
Petitioner’s motion to amend is not germane to the summary judgment motion
and should not have been filed while the case was suspended pending disposition of
Cancellation No. 92059388
3
the summary judgment motion. Petitioner’s motion to amend therefore will be given
no consideration.
Registrant’s Motion for Summary Judgment
In support of its motion for summary judgment, Registrant submitted the
Declaration of Dale Rodrigues, then Registrant’s CEO and president, with exhibits.
Petitioner moved for, and on March 26, 2015, was granted, a discovery deposition of
Mr. Rodrigues pursuant to Fed. R. Civ. P. 56(d). However, because Mr. Rodrigues
had resigned his position,3 Registrant withdrew his declaration and exhibits.
Registrant attempted to resubmit the Rodrigues Declaration with its reply brief.4
Pursuant to ¶ 5 of the Board’s Order of April 6, 2015,5 however, the declaration “will
be given no consideration by the Board when determining the outstanding motion
for summary judgment.” We therefore have given the Rodrigues Declaration and
exhibits no consideration.
In place of the Rodrigues declaration, Registrant submitted the substitute
declaration of Mary Waldner, Registrant’s chairman and founder, with exhibits.6
Registrant also made the following evidence of record in support of its motion:
• A declaration of Registrant’s counsel Anna E. Raimer in support of
Registrant’s motion for summary judgment, except for the sentence

3 Raimer Decl. at 1 ¶ 4, 24 TTABVUE 13. His last day with the company was March 31,
2015. Waldner Tr. at 11:23-24, 17 TTABVUE 38.
4 Exhibit 3 to Raimer Decl., 24 TTABVUE 89-93.
5 12 TTABVUE 2.
6 13-14 TTABVUE. Exhibits B, D, and F to the declaration have been designated as
confidential and filed under seal at 14 TTABVUE.
Cancellation No. 92059388
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stricken from that declaration by the Board’s order of March 26, 2015,7
with Exhibits A-K;8 and
• Ms. Raimer’s declaration in support of Registrant’s reply brief, with
exhibits 1-2, 4, and 6-7.9
Petitioner submitted the following evidence:
• The transcript of the Rule 56(d) deposition of Mary Waldner;10 and
• A declaration of Petitioner’s counsel Jessica G. Bower, with exhibits 1-2
and 7-14.11
Both parties are reminded that the files of the subject registrations are
automatically of record in this proceeding and need not be resubmitted. Trademark
Rule 2.122(b)(1), 37 C.F.R. § 2.122(b)(1); see also Cold War Museum Inc. v. Cold War
Air Museum Inc., 586 F.3d 1352, 92 USPQ2d 1626, 1628 (Fed. Cir. 2009).12
Petitioner moves to strike the Waldner Declaration on the basis that it is
improperly signed, that many of the facts it contains are not based on
Ms. Waldner’s personal knowledge, and that “[t]he alleged evidence set forth in her
declaration was often contradicted by her deposition testimony.”13

7 See 11 TTABVUE 1-3.
8 5 TTABVUE 11-128.
9 24 TTABVUE 13-88, 94-126, and 134-50.
10 17 TTABVUE 26-127 and 18 TTABVUE. The portions of Ms. Waldner’s deposition
transcript at 18 TTABVUE are designated confidential and filed under seal.
11 17 TTABVUE 128-44 and 169-85.
12 The parties also are encouraged to review Trademark Rule 2.120(j)(7), 37 C.F.R.
§ 2.120(j)(7), and avoid the submission of duplicative evidence at trial. Also, evidence and
argument relating to use of Registrant’s marks on goods outside the United States is
irrelevant to the claims in this proceeding. See, e.g., Rivard v. Linville, 41 USPQ2d 1731,
1736 (TTAB 1996), aff’d, 133 F.3d 1446, 45 USPQ2d 1374 (Fed. Cir. 1998).
13 Petitioner’s Response in Opposition to Registrant’s Motion for Summary Judgment and
Motion to Strike the Declaration of Mary Waldner at 2, 17 TTABVUE 2. Petitioner
improperly embedded the motion to strike within its response to Registrant’s motion for
summary judgment. See Melwani v. Allegiance Corp., 97 USPQ2d 1537, 1541 (TTAB 2010);
TBMP 502.02(b).
Cancellation No. 92059388
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We decline to strike the Waldner Declaration on the basis that it was
electronically signed by Registrant’s counsel, with the authorization of
Ms. Waldner, who was traveling and could not provide her own physical signature
by the deadline for submission of the substitute declaration.14 The declaration was
made under penalty of perjury and affirmed by Ms. Waldner at deposition.15 The
remainder of Petitioner’s arguments go to the weight due to the declaration, not its
admissibility. The motion to strike therefore is DENIED.
We turn now to the merits of Petitioner’s motion. Summary judgment is
appropriate where there is no genuine dispute as to any material fact, thus
allowing the case to be resolved as a matter of law. Fed. R. Civ. P. 56(a). The
party seeking summary judgment bears the burden of demonstrating the
absence of any genuine dispute of material fact, and that it is entitled to a
judgment as a matter of law. Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986);
Sweats Fashions Inc. v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793,
1796 (Fed. Cir. 1987). A factual dispute is genuine if, on the evidence of record, a
reasonable fact finder could resolve the matter in favor of the non-moving
party. Opryland USA Inc. v. Great Am. Music Show Inc., 970 F.2d 847, 23 USPQ2d
1471, 1472 (Fed. Cir. 1992); Olde Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22
USPQ2d 1542, 1544 (Fed. Cir. 1992). Evidence on summary judgment must be
viewed in a light most favorable to the non-movant, and all justifiable inferences

14 Declaration of Anna E. Raimer in Support of Registrant’s Opposition to Petitioner’s
Motion to Strike the Declaration of Mary Waldner at 2 ¶ 6, 22 TTABVUE 15.
15 See Waldner Tr. at 8:15-10:3, 17 TTABVUE 35-37.
Cancellation No. 92059388
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are to be drawn in the non-movant’s favor. Lloyd’s Food Prods. Inc. v. Eli’s Inc.,
987 F.2d 766, 25 USPQ2d 2027, 2029 (Fed. Cir. 1993); Opryland USA, 23
USPQ2d at 1472. The Board may not resolve genuine disputes as to material facts;
it may only ascertain whether genuine disputes as to material facts exist. Lloyd’s
Food Prods., 25 USPQ2d at 2029.
We consider Registrant’s motion as to the abandonment and non-use claims in
turn.
Count I – Abandonment
Paragraph 6 of the Petition for Cancellation alleges that:
Upon information and belief, Registrant has discontinued all use of its
marks PEACE, LOVE & CRUNCH and PEACE, LOVE & CRUNCH (&
design) in conjunction with Registrant’s goods, as set forth in
Registrant’s Registrations, for at least the last three years, with an
intent not to resume such use. As a result, Registrant has abandoned
these marks and Registrant’s Registrations should be cancelled.
Section 45 of the Trademark Act states, in pertinent part, that a mark shall be
deemed to be abandoned when its
use has been discontinued with intent not to resume such use. Intent
not to resume may be inferred from circumstances. Nonuse for 3
consecutive years shall be prima facie evidence of abandonment. “Use”
of a mark means the bona fide use of such mark made in the ordinary
course of trade, and not made merely to reserve a right in a mark.
Even where a three-year statutory period of nonuse of a mark is established, the
Board may consider evidence and testimony regarding a defendant’s practices that
occurred before or after the three-year statutory period to infer the defendant’s
intent to resume use during the nonuse period. Crash Dummy Movie LLC v. Mattel
Inc., 601 F.3d 1387, 94 USPQ2d 1315, 1317 (Fed. Cir. 2010).
Cancellation No. 92059388
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On December 9, 2014, Registrant submitted with its combined declaration of use
and incontestability for Registration No. 3542995 (the standard character mark) an
image of a box of Registrant’s crackers in a grocery store displaying the trademark
PEACE, LOVE & CRUNCH on the top panel, as shown below:16

The date shown on the box is June 1, 2015.
Consistent with this specimen of use, in ¶ 8 of her declaration executed April 21,
2015, Mary Waldner stated: “Additionally, Mary’s Gone Crackers now uses the
PEACE, LOVE & CRUNCH trademark on boxes of its crackers and cookies. A copy
of packaging for Mary’s Gone Crackers’ Original crackers, which is currently on

16 See also 19 TTABVUE 62, 146. The Section 15 incontestability affidavit was rescinded in
a post-registration Office action issued July 15, 2015, stating that the affidavit had been
acknowledged in error because this proceeding is pending.
Cancellation No. 92059388
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store shelves, is attached as Exhibit J.”17 The exhibit shows the wording PEACE,
LOVE & CRUNCH on the top panel of the package. During her discovery
deposition, Ms. Waldner testified that Exhibit J to her declaration was “a
photograph of our original cracker box,” and that Registrant’s “actual packaging for
the crackers appear[ed] in the same manner.”18 Ms. Waldner testified that she was
uncertain when Registrant first used the word mark on its packaging, but indicated
that it likely was in 2013 or 2014.19
Based on the record evidence, we find there is no genuine dispute that
Registrant has used the PEACE, LOVE & CRUNCH word mark in conjunction with
its crackers on its packaging within the past three years. Even if Petitioner could
establish a period of nonuse of the word mark in conjunction with Registrant’s goods,
it cannot establish the required element of intent not to resume such use because
Registrant in fact resumed use within the past three years. Registrant therefore is
entitled to judgment as a matter of law on Petitioner’s abandonment claim regarding
its standard character mark. With respect to Registration No. 3542995, Registrant’s
motion for summary judgment is GRANTED as to Petitioner’s abandonment claim,
which is dismissed with prejudice.

17 13 TTABVUE 6. Ms. Waldner also stated at ¶ 8 of her declaration that Registrant “has
never intended to abandon” its marks, testifying that is so “[b]ecause we love this
trademark and we use it frequently and never wanted to give it up.” Id.; Waldner Tr. at
88:24-89:7, 17 TTABVUE 115-16. The intent that is relevant to an abandonment claim,
however, is not the intent to abandon a mark, but the intent vel non to resume its use. See
Imperial Tobacco Ltd. v. Philip Morris Inc., 899 F.2d 1575, 14 USPQ2d 1390, 1394 (Fed.
Cir. 1990) (“In every contested abandonment case, the respondent denies an intention to
abandon its mark; otherwise there would be no contest.”).
18 Waldner Tr. at 89:16-90:9, 17 TTABVUE 116-17.
19 See id. at 37:8-17, 90:10-13, 17 TTABVUE 64, 117.
Cancellation No. 92059388
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We reach a different conclusion with respect to Registration No. 3546281,
Registrant’s composite mark. The specimen of use submitted December 9, 2014 does
not show the URLs of the web pages. Registrant also submitted printouts from the
“Internet Archive Wayback Machine” (available at archive.org) displaying pages
from Registrant’s website marysgonecrackers.com from the years 2012 through
2014. All of these pages were submitted in black-and-white, but Registrant’s
composite mark is lined for color. Cf. Trademark Manual of Examining Procedure
(TMEP) § 904.02(c)(ii) (October 2015) (requiring that specimens of use must show
use of the color(s) claimed as a feature of a mark). Moreover, on some printouts the
mark is too small to be legible. Finally, Ms. Waldner was unable to testify as to
specifically when the composite mark was in use on the website.
Viewing the evidence in a light most favorable to Petitioner, we find that
Registrant has not carried its burden to demonstrate the absence of any genuine
dispute of material fact as to when and how it has used its registered mark
in association with its goods within the past three years. Registrant’s
motion for summary judgment is therefore DENIED with respect to Petitioner’s
abandonment claim for Registration No. 3546281.
Cancellation No. 92059388
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Count II – Non-Use
Petitioner alleges that the subject registrations are void ab initio because
Registrant had not made actual use of its marks as trademarks prior to March 24,
2008, the filing date of its applications.
The record evidence pertaining to use of the marks before the application dates
concerns Registrant’s presence at a 2008 trade show.20 In ¶ 3 of her declaration,
Ms. Waldner states:
Mary’s Gone Crackers attended the Expo West Natural Products Show
on March 14, 2008. As part of the trade show booth, a banner
prominently displayed the Registered Marks. A true and correct copy
of a photograph from this trade show, which shows the banner, is
attached as Exhibit A. Mary’s Gone Crackers sold many cases of its
crackers at this trade show. True and correct copies of some of the
order forms evidencing these sales are attached as Exhibit B.
Exhibit A appears as follows:

20 Ms. Waldner testified that Registrant first used the subject marks “in March of 2008,”
but she did not remember whether they were used before the trade show. Waldner Tr. at
13:20-21, 28:1-12, 17 TTABVUE 40, 55.
Cancellation No. 92059388
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Similarly, in identical July 30, 2008 responses to Office actions during
examination of its two applications, Registrant made the following argument:
The specimen of use provided by Applicant consists of a banner, which
is being used by Applicant as point-of-sale material for Applicant’s
crackers. The banner was first used by Applicant at the Expo West
Natural Products Show in March 2008, where it was displayed
alongside the goods in question.
The specimen submitted appears below:

It is apparent that the banner submitted as a specimen is not the same banner
displayed in Exhibit A to the Waldner Declaration. In the banner in Exhibit A, the
broken cracker in the composite mark is tilted slightly to the left, rays descend to
touch the overline, and the box below sits parallel to the top of the banner. In the
specimen, the broken cracker is tilted slightly to the right, there are no rays
immediately above the overline, and the box sits at an angle. Moreover,
Ms. Waldner testified that she did not know for certain whether Exhibit A is from
the same trade show at which Registrant apparently first used the marks.21

21 Waldner Tr. at 24:8-10, 17 TTABVUE 51.
Cancellation No. 92059388
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The issue before us is whether Registrant has established the absence of any
genuine dispute as to its use of the subject marks before March 24, 2008. We find
that the conflict between the file histories and summary judgment evidence in
Registrant’s depiction of the banner bearing its marks at the March 2008 trade
show raises a dispute of material fact as to first use of the marks that precludes
summary judgment in Registrant’s favor.22
There is another piece of evidence concerning Registrant’s first use of its marks
that Petitioner did not address in its brief. Ms. Waldner testified that Registrant
distributed “sell sheets” displaying the subject marks at the March 2008 trade
show. Although they were not order forms, the sell sheets appear to contain
sufficient information to serve as displays associated with Registrant’s crackers,
including a toll-free telephone number for Registrant and specifications of its goods
such as shelf life, shipping weight, and pallet layout. The sell sheet, incorporating a
third rendering of Registrant’s mark (with the breaks in the cracker presented
straight up-and-down, rays extending completely through the wording, and a
smaller box of crackers moved to the side) appeared as follows:

22 Registrant argues, concerning its specimen of use, that “Applicant did not claim that the
identical banner was first used at the Expo West Natural Products Show.” Reply Brief at 4,
24 TTABVUE 5. In view of the file history, this argument is unpersuasive.
Cancellation No. 92059388
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Because the composite mark displayed in the sell sheet is different from the
registered mark , this evidence also does not establish that there are
no genuine disputes of material fact concerning the timing of Registrant’s first use
of the composite mark.
Turning to Registrant’s standard character mark, that the sell sheet omits the
comma from the registered mark PEACE, LOVE & CRUNCH is immaterial to the
mark’s commercial impression. See In re Promo Ink, 78 USPQ2d 1301, 1305 (TTAB
2006); TMEP § 807.14(c) (“Punctuation, such as quotation marks, hyphens, periods,
commas, and exclamation marks, generally does not significantly alter the
commercial impression of the mark.”). There is nonetheless another problem with
respect to this evidence. This use of the sell sheets (as opposed to their use as
catalog inserts beginning at an unspecified time in 2008 after the trade show) is not
Cancellation No. 92059388
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mentioned in Ms. Waldner’s declaration, but she testified that they were displayed
on Registrant’s table at the March 2008 trade show.23 However, she was unable to
confirm the dates when the trade show was held.24 Although Registrant submitted
Internet printouts stating on their face that the trade show was held March 13-16,
2008,25 such evidence constitutes hearsay and does not establish the truth of the
matter printed. Safer Inc. v. OMS Investments Inc., 94 USPQ2d 1031, 1040 (TTAB
2010).
In order to defeat Petitioner’s non-use claim on summary judgment, Registrant
must establish that there is no genuine dispute of material fact that it used its
marks before its March 24, 2008 application filing date, its constructive use date.
On careful consideration of all of the parties’ evidence and arguments, even if not
specifically discussed in this decision, and drawing all inferences with respect to the
motion in favor of Petitioner as the non-moving party, we find that Registrant has
not established that there is no dispute of material fact concerning its use before the
filing date. Therefore, its motion for summary judgment on this claim is DENIED as
to both registrations.

23 Waldner Tr. at 35:17-37:4, 58:15-59:2, 17 TTABVUE 62-64, 85-86. See also Waldner Decl.
¶ 4 & Exhibit C, 13 TTABVUE 5, 13-14.
24 See id. at 29:10-14, 17 TTABVUE 56:
Q. So the Expo West Trade Show, is it correct that one of the dates it was held on was
March 14th, 2008?
A. I would assume so.
Q. Do you know for certain?
A. No.
25 See Exhibit 4 to Defendant’s Reply in Support of Motion for Summary Judgment, 24
TTABVUE 94-126.
Cancellation No. 92059388
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Dates Reset
Proceedings are resumed. Discovery is open. Trial and other dates are reset as
follows:26
Expert Disclosures Due 3/11/2016
Discovery Closes 4/10/2016
Plaintiff’s Pretrial Disclosures 5/25/2016
Plaintiff’s 30-day Trial Period Ends 7/9/2016
Defendant’s Pretrial Disclosures 7/24/2016
Defendant’s 30-day Trial Period Ends 9/7/2016
Plaintiff’s Rebuttal Disclosures 9/22/2016
Plaintiff’s 15-day Rebuttal Period Ends 10/22/2016
In each instance, a copy of the transcript of testimony, together with copies of
documentary exhibits, must be served on the adverse party within thirty days after
completion of the taking of testimony. Trademark Rule 2.125.
Briefs shall be filed in accordance with Trademark Rule 2.128. An oral hearing
will be set only on request as provided by Trademark Rule 2.129.
* * *

26 The fact that we have identified genuine disputes of material fact as a sufficient basis for
denying Registrant’s motion for summary judgment in part should not be construed as a
finding that these are necessarily the only issues which remain for trial. In addition, the
parties should note that all evidence submitted in support of and opposition to the motion
for summary judgment is of record only for consideration of that motion. Any evidence to be
considered at final hearing must be properly introduced into evidence during the
appropriate trial periods. See Levi Strauss & Co. v. Josephs Sportswear Inc., 28 USPQ2d
1464, 1465 n.2 (TTAB 1993).