NutriLife International, Inc.v.Andrew Bert Foti

Trademark Trial and Appeal Board

May 14, 2014

No. 92056801 (T.T.A.B. May. 14, 2014)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: May 14, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

NutriLife International, Inc.
v.
Andrew Bert Foti
_____
Cancellation No. 92056801
against Reg. No. 3815143
_____

David H. Madden of Mersenne Law, LLC for NutriLife International, Inc.

Roberto C. Quiñones-Rivera and Isabel Torres Sastre, of McConnell Valdés LLC for
Andrew Bert Foti.
_____

Before Bucher, Cataldo, and Gorowitz, Administrative Trademark Judges.

Opinion by Gorowitz, Administrative Trademark Judge:

NutriLife International, Inc. (“petitioner”) has petitioned to cancel a registration
owned by Andrew Bert Foti (“respondent”) for the mark NUTRALIFE for “cooking
strainers; cookware, namely, pots and pans; cookware, namely, steamers; frying
pans; pans; skillets” in Class 21.1 Petitioner is the owner of applications for the
standard character mark Nutri Life International for “cookware, namely stainless-
steel skillets, saucepans, stock pots, griddles, and slicers” in Class 21 and “retail

1 Registration No. 3815143, issued July 6, 2010.
Cancellation No. 92056801

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services by direct solicitation by sales agents in the field of cookware and water
filtration products” in Class 35;2 and for the mark depicted below:

for “retail services by direct solicitation by sales agents in the field of cookware and
water filtration products” in Class 353 (“petitioner’s applications”). Petitioner’s
applications were refused registration on the ground of likelihood of confusion with
respondent’s registration. In the petition for cancellation, petitioner alleges its
standing as well as priority and likelihood of confusion based on the refusals,
asserting that “if, as the trademark attorney contends, Petitioner’s mark so
resembles Respondent’s mark as to be likely, when applied to the goods and/or
services of the Petitioner, to cause confusion; then Respondent’s use of [his] mark
must be equally likely to cause confusion among Petitioner’s customers and the
public. Consequently, Respondent’s registration should be cancelled because
Petitioner has priority of use with respect to the mark for those goods and services.”
Petition for Cancellation, par. 7 (emphasis omitted). In its amended answer,
respondent did not respond to the alleged “legal conclusions” and denied that
petitioner has priority. Respondent asserted five “affirmative defenses,” all related
to the issues of the validity of his registration and priority. These allegations are not

2 Application Serial No. 85428546, filed September 21, 2011.
3 Application Serial No. 85428504, filed September 21, 2011.
Cancellation No. 92056801

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affirmative defenses, but rather are explanations of respondent’s position regarding
his rights and thus are so construed.
On July 23, 2013, the parties filed a stipulation to proceed under accelerated
case resolution (ACR), which was granted by the Board in an order dated October
16, 2013.
The parties stipulated to the following:
• There is a likelihood of confusion between their
marks and thus discovery would be limited to the
issue of priority of use.
• They would follow the cross-summary judgment
model of ACR and treat the briefs and
accompanying evidence as the final briefs and
records in this proceeding.
• The Board may resolve any genuine disputes of
material fact that may be presented by the record
or which may be discovered by the panel
considering the case at final hearing.
• Briefs would be filed serially rather than
concurrently, beginning with petitioner’s motion for
summary judgment.
The Record and Evidentiary Objections
The record includes, by operation of the rules, the pleadings and the file of the
registration sought to be cancelled. Trademark Rule 2.122(b). In addition, petitioner
submitted the following with its motion for summary judgment (“Petitioner’s ACR
Brief”):
-petitioner’s answers to respondent’s interrogatories;
- copies of retail installment sales contract and security
agreements (sales contracts), and invoices from 2003 –
2006;
Cancellation No. 92056801

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- a photograph of what appears to be petitioner’s
promotional material;
- a status copy of petitioner’s abandoned application for
the mark NUTRI LIFE INTERNATIONAL and design;
- respondent’s answers to petitioner’s first set of requests
for admission; and
- respondent’s answers and objections to petitioner’s first
set of interrogatories;
and the following with its reply and opposition to respondent’s cross-motion
(Respondent’s ACR Brief):
- the filing receipt for petitioner’s application, Ser. No.
85428504;
- duplicate copies of sales contracts and invoices from
2003 – 2006 and copies of sales contracts and invoices
from 2011 - 2013;
- Declaration of Oscar Miguel Perez, President and CEO
of petitioner and exhibit thereto consisting of copies of
sales contracts and invoices for the years 2007 – 2010
(Perez Decl.).
Respondent submitted the following with his response to Petitioner’s ACR Brief
and Respondent’s ACR Brief:
- petitioner’s abandoned application, Ser. No. 78599585
and documents from the application file (a copy of the
examiner’s amendment/priority action and notice of
abandonment);
- specimens from respondent’s registration file, consisting
of a brochure for respondent’s products and invoices from
2008 and 2009;4

4 While respondent submitted the specimens separately, since the specimens were part of
the file of the contested registration, they were already a part of the record. See Cold War
Museum Inc. v. Cold War Air Museum Inc., 586 F3d 1352, 92 USPQ2d 1626, 1629 (Fed. Cir.
2009)
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- petitioner’s currently suspended application, Ser. No.
85428504, including specimens;
- copies of Petitioner’s sales contracts and invoices from
2003 – 2006 and from 2011 – 2013;
and the following with its reply in further support of Respondent’s ACR Brief:
- a copy of Petitioner’s written responses to Respondent’s
requests for production of documents.
Respondent objected to the Board’s consideration of the exhibit to the Perez
Decl., which consists of sales contracts and invoices for the years 2007 – 2010,
because these documents were requested during discovery, but not produced.
Petitioner has not denied respondent’s allegation that the documents were
responsive to his discovery requests but were not produced during discovery nor has
it provided a reason for its failure to produce said documents.
A party that fails to provide information may, upon
motion or objection by its adversary, be precluded from
using that information or witness at trial, “unless the
failure was substantially justified or is harmless.” Fed. R.
Civ. P. 37(c)(1). See e.g., Panda Travel, Inc. v. Resort
Option Enterprises, Inc., 94 USPQ2d 1789, 1792-93
(TTAB 2009) (documents not produced until after the
start of trial stricken). See also TBMP § 527.01(e) and
cases cited therein.
Hunter Indus., Inc. v. Toro Co, __ USPQ2d__ (TTAB 2014). Since there is no
justification for Petitioner’s failure to produce the sales contracts and invoices
during discovery, Respondent’s objection is sustained and we will not consider the
sales contracts and invoices.
There were no other objections to the evidence submitted.
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Discussion.
Standing.
Standing is a threshold issue that must be proved in every inter partes case. See
Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189
(CCPA 1982) (“The facts regarding standing … must be affirmatively proved.
Accordingly, [Petitioner] is not entitled to standing solely because of the allegations
in his [pleading].”). To establish standing in a cancellation proceeding, Petitioner
must show both “a real interest” in the proceeding as well as a “reasonable” basis
for its belief of damage. See Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023,
1025 (Fed. Cir. 1999).
Standing can be established if a petitioner proves that it filed an application and
that a rejection was made because of a respondent’s registration. See Fiat Group
Automobiles S.p.A. v. ISM Inc., 94 USPQ2d 1111, 1112 (TTAB 2010), citing Life
Zone Inc. v. Middleman Group Inc., 87 USPQ2d 1953, 1959 (TTAB 2008) (“The
filing of opposer’s application and the Office’s action taken in regard to that
application provides opposer with a basis for pleading its standing.”). In this case,
Petitioner pleaded both ownership of Application Ser. Nos. 85428504 and 85428546
and that the applications were refused registration based on a likelihood of
confusion with the mark in Respondent’s registration. Respondent admitted that
these allegations of ownership are true. Therefore, Petitioner has established its
standing.
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Priority.
The parties have stipulated that there is a likelihood of confusion. Thus, the only
issue that must be decided is which party has prior rights.5
Petitioner asserts that it has been using its marks continuously since 2002. In
part, petitioner bases such assertion on evidence of use consisting of copies of sales
contracts and invoices from 2003 – 2006 and from 2011 – 2013. Petitioner also relies
on the Perez Decl., in which Mr. Perez declared “NutriLife has continuously used
the NUTRI LIFE INTERNATIONAL mark for both ‘cookware’ and ‘retail services
by direct solicitation of sales agents in the field of cookware and water filtration
products’ since October 2002, and first used the mark in commerce at least as early
as October 7, 2002.” Perez Decl. par. 3.6
Respondent concedes that petitioner was the first to use the mark. “The parties
agree that Petitioner’s initial use predated Respondent’s initial use.”7 Respondent
asserts that “the invoices and sales agreements produced by Petitioner show that it
abandoned commercial use of its mark in 2006, if not earlier, and again started to

5 In Respondent’s ACR Brief, respondent asserts the affirmative defense of laches alleging
that Petitioner did not oppose his application. The laches defense was not pleaded in
Respondent’s amended answer. A defendant may not rely on any unpleaded defense.
Chicago Corp. v. North American Chicago Corp., 20 USPQ2d 1715, 1717 n.5 (TTAB 1991)
(defense raised for first time in final brief that opposer lacks proprietary rights in its
common law mark was neither pleaded nor tried); see also TBMP § 314. Accordingly, we
have not considered the laches defense. It is noted, however, that even if the defense had
been considered, it would not change our decision in this case.
6 As discussed, supra, Exhibit 1 to the Perez Decl. consisted of invoices and sales contracts
for the years 2006 – 2011. We have not considered these documents because petitioner did
not produce them during discovery.
7 Respondent’s Memorandum in Support of Response and Cross-Motion for Summary
Judgment, p. 6, 10 TTABVue at 7.
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use the mark more than five years later, in late 2011 … ”8 Respondent filed its
application for the mark NUTRALIFE on September 15, 2008. The application was
based on respondent’s intent to use the mark pursuant to Section 1(b) of the
Trademark Act. As such, respondent’s constructive use date is September 15, 2008.
Respondent admitted that it made no commercial use of the NUTRALIFE mark
before November 20, 2008,9 which is the same date respondent asserted in his
statement of use as his date of first use anywhere and in commerce. Respondent
argues that he has priority because his registration issued on July 6, 2010, more
than a year before the filing of petitioner’s applications. See: Respondent’s
Memorandum in Support of Response and Cross-Motion for Summary Judgment, p.
7, 10 TTABVue at 8.10
Since Petitioner does not have any admissible documentary evidence of its use of
the NutriLife International marks from 2007 – 2010, the question to be answered is
whether the testimony provided in the Perez Decl. is probative evidence of
Petitioner’s use of its marks during the relevant period.
We consider Mr. Perez’ declaration to be the equivalent of an oral testimonial
deposition. It has long been decided that
‘… oral testimony, if sufficiently probative, is normally
satisfactory to establish priority of use in a trademark

8 Respondent’s Memorandum in Support of Response and Cross-Motion for Summary
Judgment, p. 9, 10 TTABVue at 10
9 Respondent’s response to request for admission 2. Petitioner’s ACR Brief, p. 46, 9
TTABVue at 47.
10 The purpose of this cancellation action is to determine whether respondent is entitled to
maintain his registration. A fortiori, the issuance of his registration prior to the filing of
Petitioner’s applications does not establish that Respondent has priority.
Cancellation No. 92056801

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proceeding.’ Powermatics, Inc. v. Globe Roofing Products
Co., 341 F.2d 127, 144 USPQ 430, 432 (CCPA 1965). Such
testimony should ‘not be characterized by contradictions,
inconsistencies and indefiniteness but should carry with
it conviction of its accuracy and applicability.”’ B.R. Baker
Co. v. Lebow Bros., 150 F.2d 580, 66 USPQ 232, 236
(CCPA 1945).
CDS Inc. v. I.C.E.D. Management Inc., 80 USPQ2d 1572, 1582 (TTAB 2006); cf
Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d 1100, 1110 (TTAB 2007).
Mr. Perez has been the President and CEO of Petitioner since 2003. The facts
asserted in his testimonial declaration, which was signed under penalty of perjury,
are based on Mr. Perez’ personal knowledge. Mr. Perez asserted that Petitioner
“made sales under our trademarks in each and every month, including every month
between 2005 and 2008.” Perez Decl., par.4, 11 TTABVue at 61. Many of the sales
were personally made by Mr. Perez. Id., par.7. There are no contradictions,
inconsistencies or indefiniteness in Mr. Perez’ declaration and it carries with it the
conviction of its accuracy and applicability. Accordingly, we find that Mr. Perez’
testimony is sufficiently probative and establishes petitioner’s continuous use of its
marks from 2002 through 2014, thus establishing petitioner’s priority of use.
Having established that there is a likelihood of confusion and that Petitioner has
priority, Petitioner is entitled to the cancellation of Respondent’s registration.
Decision: The petition to cancel Registration No. 3815143 is granted and the
registration will be cancelled in due course.