BioScan, Inc.v.Biolight Patent Holding AB

Trademark Trial and Appeal Board

Apr 25, 2007

No. 92027044 (T.T.A.B. Apr. 25, 2007)

Oral Hearing Mailed:
October 26, 2006 April 25, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

BioScan, Inc.

v.

Biolight Patent Holding AB
_____

Cancellation No. 92027044
_____

Scott W. Johnston and Heather J. Kliebenstein of Merchant &
Gould P.C. for BioScan, Inc.

Mark Lebow of Young & Thompson for Biolight Patent Holding
AB.
______

Before Quinn, Grendel and Zervas, Administrative Trademark
Judges.

Opinion by Zervas, Administrative Trademark Judge:

On December 12, 1997, BioScan, Inc. (“petitioner”)
filed a petition to cancel Trademark Registration
No. 1943458 for the mark BIOLIGHT (in typed form) for “light
generating apparatus and light applicator for medical
treatment and healing” in International Class 10. Biolight
Patent Holding AB (“respondent”) is the owner of record of
this registration, which issued on December 26, 1995 as a
THIS OPINION IS
NOT A PRECEDENT
OF THE T.T.A.B.
Cancellation No. 92027044
2
result of an application filed on March 9, 1994 based on
Section 44(e) of the Trademark Act, 15 U.S.C. § 1126(e).
The registration has been renewed.
In its petition to cancel, petitioner claims that it
has filed an application to register the mark BIOLIGHT for
“light and magnetic energy generating equipment for healing
bone and tissue lesions and related accessories and
equipment”; and that its application has been refused
registration because of a likelihood of confusion in view of
respondent's registration. Petitioner further claims that
respondent’s mark should be cancelled because petitioner has
used its mark long prior to the filing date of respondent’s
application; and that respondent’s mark as used on its goods
create a likelihood of confusion with petitioner's mark as
used on its goods. Respondent, in its answer, has denied
the salient allegations of the petition to cancel.
Both parties have filed briefs. The Board held an oral
hearing on October 26, 2006.
The Record
In addition to the pleadings, the record includes
evidence submitted by petitioner, namely, the testimonial
depositions of Nadine Donahue, president and chief executive
officer of petitioner, and Dr. Lawrence J. Hutti, who,
according to petitioner, is a predecessor in interest to
petitioner, along with the exhibits to their testimonial
Cancellation No. 92027044
3
depositions; and petitioner's notice of reliance making of
record (i) the affidavit of Hilmer C. Lindahl, manufacturer
of petitioner's BIOLIGHT product (filed pursuant to a
stipulation between the parties), (ii) various invoices
regarding petitioner's goods (filed pursuant to a
stipulation between the parties), (iii) respondent’s answers
to petitioner's first set of interrogatories and exhibits
attached to the interrogatory answers, and (iv) respondent’s
responses to petitioner's requests for admissions.1
The record also includes evidence submitted by
respondent, namely, the testimony upon written questions of
Rolf Thiberg, respondent’s founder and current research and
development manager; and respondent's first notice of
reliance consisting of the file history for the application
underlying respondent’s BIOLIGHT registration and various
dictionary definitions and articles.
Preliminary Matters
Petitioner has raised several objections to the
evidence submitted by respondent. Each of petitioner's
objections is discussed below.

1 While petitioner submitted respondent’s answers to petitioner's
first set of interrogatories, petitioner did not submit the
interrogatories. To the extent that we can obtain any
information from the interrogatory answers, we have done so.
We have not been able to obtain any information from
respondent's responses to petitioner's requests for admissions
because petitioner has not submitted the requests; petitioner has
only submitted the responses, e.g., “Admitted.”
Cancellation No. 92027044
4
First, petitioner argues that we must exclude part of
Mr. Thiberg’s testimony. Specifically, petitioner argues
that Mr. Thiberg’s testimony in his deposition upon written
questions relating to “Registrant’s Exhibit 1” must be
excluded because respondent did not file Exhibit 1 with the
Board or serve it on petitioner and because petitioner could
not determine what Mr. Thiberg was testifying about in his
deposition upon written questions. Exhibit 1 consists of
respondent's answers to petitioner's interrogatories, which
respondent had served on petitioner on August 4, 1998, well
before Mr. Thiberg’s deposition. Although respondent has
not filed Exhibit 1 with the Board, because respondent has
served respondent's answers to petitioner's interrogatories
on petitioner, and because it is apparent from Question 12
in Mr. Thiberg’s deposition that Exhibit 1 consists of
interrogatory answers, petitioner's objection is overruled.
Petitioner's objection to Mr. Thiberg’s testimony as it
pertains to Exhibit 1 because it assumes facts not in
evidence is also overruled – petitioner introduced the
interrogatory answers into evidence with its notice of
reliance filed during its earlier testimony period and hence
the interrogatory answers were already in evidence.
Second, petitioner has objected to respondent’s use of
various exhibits to respondent's answers to petitioner's
interrogatories. Specifically, in answering various
Cancellation No. 92027044
5
interrogatories, respondent provided a narrative and
referred to various exhibits comprising copies of
correspondence, agreements and a brochure. Petitioner
maintains that the copies are inadmissible because they
(i) lack authentication and a proper foundation, and
(ii) violate the best evidence rule. Brief at pp. 18 - 19.
Additionally, petitioner objects to the admission of the
correspondence on the basis that they contain hearsay
statements. Brief at pp. 19 - 20.
Because it was petitioner that submitted these
documents into evidence, petitioner has waived any
objections it may have to such documents. Petitioner’s
objections on the grounds of authenticity, foundation, the
best evidence rule and hearsay to such documents – and to
Mr. Thiberg’s testimony relating to such documents - are
hence overruled. However, while we have not excluded these
documents, we have considered the hearsay nature of various
statements in such documents and have given them the weight
that they are due. See discussion infra.
Third, petitioner has objected to the admission of
Exhibits 1-7 to respondent’s notice of reliance comprising
printouts from Internet websites defining the term “lite.”2

2 Petitioner did not object to Exhibits 8 – 10 which consist of
one dictionary definition of “lite” and two articles taken from
the Internet, submitted with respondent’s notice of reliance.
Thus, to the extent that the same objections apply to Exhibits
Cancellation No. 92027044
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According to petitioner, “the documents constitute hearsay”
and respondent did not properly authenticate the printouts,
which was necessary because they do not qualify as “printed
publications” that may be introduced by a notice of
reliance. Petitioner is correct. Internet evidence is not
self-authenticating. It must be authenticated by the person
with first-hand knowledge who searched for and downloaded
the information. Starbucks U.S. Brands LLC v. Ruben, 78
UPSQ2d 1741 (TTAB 2006); Raccioppi v. Apogee, Inc., 47
USPQ2d 1368 (TTAB 1998). See also TBMP § 704.08 (2d ed.
rev. 2004). Inasmuch as respondent has not provided any
testimony of the person with first-hand knowledge who
searched for and downloaded the Internet material,
respondent has not authenticated these exhibits and they
hence are given no further consideration.
Likelihood of Confusion
Both petitioner's and respondent's marks are identical
and their goods are virtually identical. When identical
terms are used on virtually the same goods, there is no
dispute that confusion is likely. Respondent itself at p. 1
of its brief has conceded that there is a likelihood of
confusion. Therefore, the only issue remaining for decision
is priority.

8 – 10 as to Exhibits 1 – 7, petitioner has waived such
objections by failing to raise them.

Cancellation No. 92027044
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Priority
Petitioner and respondent both claim priority. As
noted above, respondent filed its Section 44(e) application
on March 9, 1994. Respondent does not rely exclusively on
the filing date of its application but rather contends that
it is entitled to a priority date of January 30, 1991 based
on earlier use of its mark in the United States. Petitioner
disagrees, and maintains that it is entitled to a priority
date as least as early as 1993, if not earlier.
It is well established that a registrant may rely on
the filing date of its application or, if it submits
testimony or evidence of an earlier first use date, on such
earlier date. See Trademark Act §§ 2(d), 7(c) and 45, 15
U.S.C. §§ 1052(d), 1057(c) and 1127; T.A.B. Systems v.
PacTel Teletrac, 77 F.3d 1372, 37 USPQ2d 1879 (Fed. Cir.
1996); Intersat Corp. v. International Telecommunications
Satellite Organization, 226 USPQ 154 (TTAB 1985). This also
applies to a Section 44(e) registrant who seeks to rely on a
use date in the United States earlier than its underlying
application filing date.
We thus consider whether respondent has established
that it used its mark in U.S. commerce prior to the filing
date of its underlying application.
Respondent’s interrogatory responses and Mr. Thiberg’s
testimony reflect that on January 30, 1991, Mr. Thiberg sent
Cancellation No. 92027044
8
a letter to Eva Marklund in Florida concerning the marketing
of its BIOLIGHT apparatus in the United States. Answer to
Interrogatory Nos. 8 and 9. Mr. Thiberg testified that he
sold a BIOLIGHT apparatus to Ms. Marklund “sometime in
February or March … [but] did not receive payment until May
26 of the same year,” that is, in 1991. Thiberg dep.
question 12. Ms. Marklund’s sister “collected” the
apparatus in Sweden and transported it back to the United
States. Thiberg’s dep. question 14.
Although Mr. Thiberg testified that he sold a BIOLIGHT
apparatus to Ms. Marklund in 1991, he has not stated that
such a sale occurred in the United States. Mr. Thiberg
testified that the apparatus “was collected” by Ms.
Marklund’s sister in Sweden; there is no evidence that
respondent transported the apparatus in commerce with the
United States. Further, there is no non-hearsay evidence
regarding how Ms. Marklund paid for the apparatus and that
payment was not made in Sweden.3 Mr. Thiberg’s testimony,
even when considered in combination with his letter to Ms.
Marklund, and the correspondence of record regarding the
operation of the BIOLIGHT apparatus from Ms. Marklund back

3 A handwritten note entered into the record by petitioner
bearing a facsimile transmittal date of May 26, 1991 from Ms.
Marklund to Mr. Thiberg states: “My sister leaves for home
today, so I sent the money with them. They will deposit the
money on your account tomorrow.” This statement, of course, is
hearsay.

Cancellation No. 92027044
9
to Mr. Thiberg, are simply not sufficiently probative and do
not establish that respondent sold its apparatus in the
United States.
In addition to corresponding with Ms. Marklund, Mr.
Thiberg corresponded from Sweden with a gentleman in Florida
named William Runnstrom about marketing the BIOLIGHT product
in the United States. The first record of Mr. Runnstrom’s
involvement with BIOLIGHT is in a letter dated July 30, 1991
in which Mr. Runnstrom inquired of Ms. Marklund about
cooperating in connection with products originating from Mr.
Thiberg. In a letter dated one week later, on August 7,
1991, Mr. Runnstrom asked Mr. Thiberg whether Ms. Marklund
had any business relationship with Mr. Thiberg. Almost two
years later, on June 15, 1993, Mr. Runnstrom sent a draft
exclusive distributorship and marketing agreement for the
United States to Mr. Thiberg.4 There is no indication that
Messrs. Thiberg and Runnstrom ever entered into a written
agreement. Subsequent correspondence to or from Messrs.
Thiberg and Runnstrom, including correspondence dated after
the filing date of respondent’s application, do not reflect
any sales of respondent’s goods or any significant efforts
to expose the consuming public to respondent’s goods.

4 Respondent has not explained what, if anything, transpired in
the two year period between the August 7, 1991 letter and the
June 15, 1993 letter.
Cancellation No. 92027044
10
Respondent also included various letters to and from
other individuals regarding the BIOLIGHT product with its
exhibits to its interrogatory responses. Many of such
letters are dated after the filing date of respondent’s
application. In its brief, respondent has only commented as
follows regarding these letters; “During the next several
years, and continuing beyond Registrant’s filing date,
efforts were made to establish the BIOLIGHT apparatus in the
U.S. market. Appendix I … provides copies of correspondence
between Mr. Thiberg and others, including an FDA expert,
during this period to try and obtain FDA approval for the
widespread use of the goods in the United States under the
BIOLIGHT mark.” From these few letters – which are replete
with hearsay statements - we are unable to determine what
respondent and its contacts had achieved in attempting to
develop a market for respondent’s goods in the United
States. We also are unable to determine what efforts were
undertaken in connection with seeking FDA approval.
Respondent has also contended that it sought to “place
the mark in use in the United States” through an individual
named Konny Soderman, of Freeport, Bahamas. In February
1991, Mr. Soderman sent Mr. Thiberg a letter asking for a
“cooperation” with Mr. Thiberg. Mr. Soderman and Mr.
Thiberg communicated through the Fall of 1991 regarding
marketing of the BIOLIGHT product in the United States, with
Cancellation No. 92027044
11
Mr. Soderman repeatedly requesting brochures in English.
The record does not reflect that respondent ever received
any orders for, or made any sales of, the BIOLIGHT apparatus
as a result of Mr. Soderman’s efforts. Also, because Mr.
Soderman was not located in the United States, the
communications to and from him are not evidence of attempts
to market the goods in the United States, and the statements
in those letters regarding Mr. Soderman’s efforts in the
United States are hearsay.
The parties have not cited any reported cases which set
the standard of proof a party must meet in establishing a
use in commerce date prior to the filing date of its Section
44(e) application. Even if the standard is the lower
preponderance of the evidence standard rather than the
higher clear and convincing evidence standard, see, e.g.,
George Putnam & Co., Inc. v. Hydro-Dynamics Inc., 228 USPQ
951 (TTAB 1986), aff'd, 811 F.2d 1470, 1 USPQ2d 1772 (Fed.
Cir. 1987), we find that respondent has not shown by a
preponderance of the evidence that it has sold or
transported goods bearing the mark in U.S. commerce or in
commerce with the United States, or that it has used the
mark in a manner analogous to trademark use, earlier than
the filing date of its application.
We now consider petitioner's evidence in support of its
contention that it has priority. If the evidence shows that
Cancellation No. 92027044
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petitioner has had use or analogous use of BIOLIGHT prior to
March 9, 1994, petitioner must be awarded priority.
Petitioner maintains that it has actively and
continuously sold its goods using the BIOLIGHT mark since at
least as early as 1992. Ms. Donohue incorporated petitioner
in 1993 and became its president and chief operating
officer. Donohue dep. at pp. 104 and 106. Petitioner has
introduced invoices dated March 25, 1993, January 10, 1994,
February 17, 1994 and February 23, 1994 showing the sale of
a BIOLIGHT product on each invoice. Exhibit 23 to Donohue
Dep. Also, Ms. Donohue has testified that petitioner has
sold BIOLIGHT devices continuously since its first sale of a
BIOLIGHT device. Donohue dep. at pp 74 – 75. In view of
her testimony and the documentary evidence of record, we
find that petitioner has clearly and convincingly
established use of its mark in the United States prior to
the filing date of respondent's application. See Oland's
Breweries [1971] Limited v. Miller Brewing Company, 189 USPQ
481, 483 (TTAB 1975) (“… the burden of … plaintiff herein to
establish by clear and convincing evidence that it has used
the mark ‘SCHOONER’ in commerce which may lawfully be
regulated by Congress since a time prior to” the filing date
of defendant’s application.) We hence award priority to
petitioner and need not consider the evidence and arguments
Cancellation No. 92027044
13
regarding earlier use of the same or similar marks by
petitioner’s predecessor(s) in interest.
Because petitioner has priority, the marks are
identical and the goods are virtually identical, and because
respondent has conceded likelihood of confusion, we find
that the continued registration of respondent’s mark is
barred by Section 2(d).
DECISION: The petition for cancellation is granted and
respondent's Registration No. 1943458 shall be cancelled in
due course.