Mankind Research Foundation, Inc. et al.v.Essiac Products Services, Inc.

Trademark Trial and Appeal Board

Sep 25, 2000

No. 92022218 (T.T.A.B. Sep. 25, 2000)

Hearing: Paper No. 124
March 23, 2000 Bottorff
9/25/00
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
Mankind Research Foundation, Inc., David Dobbie and
Essiac Products, Inc.
v.
Essiac Products Services, Inc.
_____
Cancellation No. 22,218
_____
Allen M. Lenchek for Petitioner Mankind Research
Foundation, Inc.
Donald L. Dennison of Dennison, Meserole, Scheiner &
Schultz for Petitioners David Dobbie and Essiac Products,
Inc.
Essiac Products Services, Inc., pro se.
_____
Before Hohein, Hairston and Bottorff, Administrative
Trademark Judges.
Opinion by Bottorff, Administrative Trademark Judge:
On March 9, 1990, respondent Essiac Products
Services, Inc., a Florida corporation, filed an
application to register the mark ESSIAC, in typed form,
for “food supplements.” The application eventually
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Cancellation No. 22,218
2
matured into Registration No. 1,625,600, issued to
respondent on December 4, 1990.1
On September 29, 1993, petitioners Mankind Research
Foundation, Inc. (“Mankind” or “MRF”), a Maryland
corporation, and David Dobbie (“Dobbie”), an individual
Canadian citizen, filed a petition for cancellation of
Registration No. 1,625,600.2 In their petition for
cancellation, petitioners allege as follows:
1. Petitioners, and their predecessors in
interest Resperin Corporation, a Canadian company,
and Rene M. Caisse, a Canadian citizen, now
deceased, are recognized in the marketplace as
distributors of a food supplement both in Canada and
the United States bearing the mark ESSIAC. David
Dobbie is the exclusive licensee, manufacturer and
distributor of goods bearing the mark ESSIAC in the
U.S. and elsewhere for Mankind Research Foundation.
Long prior to registrant’s use of the mark ESSIAC,
Petitioners through their predecessors adopted and
continuously used and is [sic] still using the mark
ESSIAC for food supplements in the United States and
Canada.
2. Petitioners obtained exclusive rights to
make and sell ESSIAC food supplement from Resperin,
a company that was selling that product in Canada

1 Respondent filed a combined affidavit under Trademark Act
Sections 8 and 15 on May 2, 1996. The Office accepted that
affidavit on March 3, 1997. The propriety of the Section 15
affidavit is discussed infra.
2 During the course of the proceeding, David Dobbie moved to
substitute Essiac Products, Inc., a Canadian corporation, as
petitioner in his place. However, in its order dated January
30, 1998, the Board joined, rather than substituted, Essiac
Products, Inc. as a party plaintiff. In this opinion, the Board
shall refer to both Dobbie and Essiac Products, Inc. as
“Dobbie.”
Cancellation No. 22,218
3
and the United States. Resperin, in turn, obtained
its rights to make and sell food supplement under
the ESSIAC trademark from Rene M. Caisse, the
product originator and distributor. On information
and belief, Caisse adopted the name ESSIAC (her name
spelled backwards) beginning in about 1934 in
connection with her herbal food supplement which was
sold in Canada and the U.S. as a food supplement
with potential anticancer properties.
3. On information and belief, from about 1934
until about 1977 Caisse maintained the exact
formulation of her ESSIAC food supplement as a trade
secret at which time she conveyed the trademark
ESSIAC and its formulation to Resperin who later
conveyed trademark rights to MRF. Dobbie is the
manufacturing and marketing agent for MRF.
4. From at least about 1934 to date, the mark
has been used continuously, and consumers in the
United States and Canada have come to associate the
mark ESSIAC with a food supplement from a single
source, i.e., from Caisse and thereafter her
successors in interest.
5. On information and belief, Respondent’s ‘600
registration was obtained fraudulently in that at
the time the application papers were filed it was
falsely stated under oath that the mark was first
used by Respondent in interstate commerce “on or
before 1922.” Respondent’s use of the subject mark,
if any, occurred much later than 1922.
6. Respondent’s ‘600 registration is void ab
initio because, at the time of filing the
application resulting in the ‘600 registration, the
oath did not comply with 15 U.S.C. §1051(a)(1)(A),
in that it omitted the statement that “no other
person, firm, corporation or association has the
right to use the mark in commerce.” Thus, the oath
is fatally defective.3

3 On December 30, 1994, petitioners moved for summary judgment
in their favor on the claim asserted in Paragraph 6 of the
petition to cancel. On March 26, 1996, the Board issued an
order denying petitioners’ motion for summary judgment and
instead granting summary judgment to respondent on this claim.
Paragraph 6 was ordered stricken.
Cancellation No. 22,218
4
7. On information and belief Respondent has
violated 15 U.S.C. §§1052(a) and 1064(3) by
misrepresenting the source of the goods and/or
falsely associating its food supplement sold under
the ESSIAC label with Rene Caisse and by falsely
suggesting to the public that its product is made
pursuant to formulation obtained from Caisse.
8. Respondent’s ESSIAC mark for its food
supplement is confusingly and deceptively similar to
Petitioner’s ESSIAC mark and, as the goods are
closely related, is likely to create confusion,
mistake and deception of purchasers into believing
that Respondent’s goods originate with or are in
some way sponsored, licensed or authorized by or
otherwise associated with Petitioner, resulting in
loss of Petitioner’s sales and goodwill.
9. If Respondent is permitted to retain the
registration sought to be cancelled, a cloud will be
placed in MRF’s title in and to its ESSIAC trademark
and on Petitioners’ right to enjoy the free and
exclusive use thereof in connection with its [sic]
goods, all to the great injury of Petitioners and
all inconsistent with the prior and established
rights of Petitioners in the mark ESSIAC. In fact,
such injury to MRF has already been demonstrated by
the fact that the Patent and Trademark Office, in an
Office Action dated April 14, 1993, has refused
registration of MRF’s ESSIAC trademark application
on the Principal Register (filed on January 14,
1993; ser. No. 74/348,347) based on the existence of
the ‘600 registration in connection with Class 5.
10. The concurrent use and registration of
ESSIAC by Respondent and Petitioners is likely to
cause confusion, mistake and deception of customers
as to the source, sponsorship, or origin of the
respective marks in derogation of the rights of
Petitioners.
11. By reason of all of the foregoing,
Petitioners have been and will continue to be
gravely damaged by the continued existence of
Registration No. 1,625,600.

Cancellation No. 22,218
5
Respondent filed an answer denying the allegations
of the petition to cancel which are essential to
petitioners’ claims and asserting various affirmative
defenses.
Petitioners and respondent presented testimony in
support of their respective positions.4 Petitioner
Dobbie’s objections to certain of respondent’s testimony
depositions are discussed, infra. Petitioners filed two
main briefs, one brief from each petitioner. Respondent
likewise filed two briefs, i.e., one brief in opposition
to each of petitioners’ two briefs. Petitioners filed
two reply briefs, one from each petitioner.5 An oral

4 It appears from the record that petitioners and respondent
each enjoyed two full testimony periods in this case, the first
in 1996 and the second in 1997-98. A single rebuttal testimony
period was held in 1999.
5 Co-petitioner Dobbie objected, in its reply brief, to
respondent’s filing of two separate briefs. He argues, inter
alia, that respondent is only entitled to file one brief. We
find the objection to be not well-taken. The co-petitioners
themselves filed two separate main briefs and two separate reply
briefs, and we see no harm or prejudice arising from
respondent’s filing of two separate briefs. We likewise decline
to sustain petitioners’ other objections to the form and
substance of respondent’s briefs.
Cancellation No. 22,218
6
hearing was requested and held, but Dobbie was the only
party represented at the hearing.6
Petitioners’ evidence of record in this case
consists of: the August 8, 1996 testimony deposition of
Pat Safriet; the August 8, 1996 testimony deposition of
Harold Collins; the August 23, 1996 testimony deposition
on written questions of David Dobbie; the October 17,
1997 testimony deposition of David Dobbie; the May 29,
1998 testimony deposition of Carl Schleicher; the April
8, 1999 rebuttal testimony deposition of Carl Schleicher;
and the April 12, 1999 rebuttal testimony deposition of
David Dobbie.7
Respondent’s evidence of record consists of: the
December 16, 1996 testimony deposition of Gilbert
Blondin; the December 17, 1996 testimony deposition of

6 We are not persuaded by respondent’s arguments in support of
its request for reconsideration of the Board’s order denying
respondent’s request for a rescheduling of the oral hearing, and
accordingly deny that request for reconsideration.
7 Pursuant to the Board’s order dated March 10, 1999,
petitioners’ rebuttal testimony period was set to close on April
10, 1999. Because that date fell on a Saturday, Mr. Dobbie’s
deposition on April 12, 1999, the next business day, was timely.
See Trademark Rule 1.7, 37 C.F.R. §1.7. To the extent that
respondent, in its brief, has objected to the deposition on the
ground of untimeliness, that objection is overruled.
Cancellation No. 22,218
7
Robert Strang; and the December 17, 1996 testimony
deposition of Pierre Gaulin.8
We sustain petitioner Dobbie’s objection to the
admissibility of the July 24, 1998 testimony deposition,
conducted by respondent, of co-petitioner MRF’s principal
Carl Schleicher as an adverse witness. The deposition
transcript was never signed by the witness, as required
by Trademark Rule 2.123(e)(5). Because that requirement
was not waived on the record by agreement of all the
parties, and because petitioner Dobbie properly and
timely objected on that ground to the admissibility of
the deposition, we have not considered the deposition as
forming part of the record.
We likewise sustain petitioner Dobbie’s objection
to the admissibility of the July 31, 1998 testimony
deposition of Pierre Gaulin. The deposition transcript
is unsigned by the witness and, that requirement not
having been waived and the objection having been properly

8 Respondent also has submitted a Court Reporter’s “Certificate
of Non-Appearance,” purporting to set forth the non-appearance
of a non-party, Kevin Maloney, for a testimony deposition
noticed for December 9, 1997. The witness apparently was served
with a subpoena from the United States District Court for the
Southern District of Florida, but failed to appear pursuant
thereto. However, respondent apparently took no action to
compel the attendance of the witness. The Trademark Rules do
not provide for the filing of a “Certificate of Non-Appearance”
in lieu of a testimony deposition transcript, and we have given
this filing no further consideration.
Cancellation No. 22,218
8
and timely asserted, the deposition cannot be considered.
See Trademark Rule 2.123 (e)(5). Additionally, we
sustain petitioner Dobbie’s objection to the deposition
based on Federal Rule of Evidence 612. It appears that
Mr. Gaulin, the witness, was improperly reading his pre-
prepared answers into the record for much if not all of
the deposition. See Fed. R. Evid. 612; Hall v. American
Bakeries Co., 873 F.2d 1133 (8th Cir. 1989).
We also sustain petitioner Dobbie’s objection to the
July 31, 1998 deposition based on Dobbie’s lack of
opportunity for full cross-examination of the witness.
We find that this lack of opportunity resulted from
respondent’s delay in scheduling the deposition until the
very last day of its testimony period, and not from
Dobbie’s counsel’s reasonable termination of the
deposition at six o’clock p.m. on a Friday evening, after
a full day of Mr. Gaulin’s pro se direct examination of
himself. Further, having read the deposition transcript,
we concur with Dobbie’s contention that Mr. Gaulin’s
direct examination of himself was rife with irrelevant,
hearsay, and otherwise objectionable matter. Dobbie’s
counsel’s raising of objections to such matter was both
proper and necessary, and we accordingly reject
respondent’s contention that Dobbie’s counsel, by raising
Cancellation No. 22,218
9
such objections, was responsible in any way for the undue
prolongation of the deposition. For all of the reasons
discussed above, we sustain Dobbie’s objection to the
July 31, 1998 deposition, and have given it no further
consideration.9
We turn now to a consideration of the grounds for
cancellation involved in this case. As noted above, the
grounds for cancellation pleaded in the petition to
cancel (and not previously stricken by the Board) are:
that in the application which led to the registration
involved herein, respondent fraudulently alleged first
use of the mark on or before 1922; that respondent has
violated Trademark Act Sections 2(a) and 14(3) by
misrepresenting the source of the goods and/or falsely
associating its food supplement sold under the ESSIAC
label with Rene Caisse and by falsely suggesting to the
public that its product is made pursuant to formulation
obtained from Caisse; and that the registration should be
cancelled under Trademark Act Section 2(d) in view of
petitioners’ asserted priority and the existence of a

9 We note that the December 17, 1996 testimony deposition of Mr.
Gaulin suffered from many of the same deficiencies, and that
petitioner Dobbie’s former counsel had timely and properly
raised objections at the deposition. However, those objections
were not preserved in petitioners’ briefs, and petitioners have
treated the deposition as being properly of record. We shall do
likewise.
Cancellation No. 22,218
10
likelihood of confusion. At the oral hearing held in
this matter, petitioner Dobbie’s counsel also moved,
pursuant to Fed. R. Civ. P. 15(b), to amend the petition
to cancel to include a claim that respondent submitted to
the Office a false and fraudulent affidavit under
Trademark Act Section 15.10
Taking the last issue first, we deny Dobbie’s Rule
15(b) motion for leave to amend the petition to cancel.
We cannot conclude on this record that the issue of
respondent’s filing of a Section 15 affidavit was fully
litigated by the express or implied consent of the
parties, as required by Rule 15(b). Respondent filed the
Section 15 affidavit on May 2, 1996, and it was accepted
by the Office on March 3, 1997, prior to petitioners’
second main testimony period. However, petitioners did
not raise the issue at trial until Mr. Dobbie’s rebuttal
testimony deposition on April 12, 1999, during
petitioners’ rebuttal testimony period. Petitioners
never filed a motion to amend the pleadings under Fed. R.
Civ. P. 15(a), and have provided no explanation for such

10 At the oral hearing, Dobbie’s counsel also argued, apparently
in the alternative to petitioners’ pleaded claims, that ESSIAC
is a generic or merely descriptive term as applied to
respondent’s goods. Because the issues of genericness and mere
descriptiveness were neither pleaded nor tried, we have not
considered counsel’s argument.
Cancellation No. 22,218
11
failure. In these circumstances, we cannot conclude that
petitioners should be allowed to amend their pleading to
assert this new ground for cancellation.
As for petitioners’ pleaded claim that respondent
committed fraud when, in its application, it alleged
first use of the mark on or before 1922, we have
carefully reviewed the evidence of record and conclude
that petitioners have failed to prove this ground for
cancellation. In the first place, the ground, as pleaded
by petitioners, is legally insufficient. An applicant's
misstatement in the application of the dates of first use
of its mark is not material to the Office's decision to
grant a registration and does not constitute fraud, so
long as valid use of the mark was made prior to the
application filing date. See Western Worldwide
Enterprises Group Inc. v. Qingdao Brewery, 17 USPQ2d
1137, 1141 (TTAB 1990); Colt Industries Operating Corp.
v. Olivetti Controllo Numerico S.p.A., 221 USPQ 73, 76
(TTAB 1983); J. Thomas McCarthy, McCarthy on Trademarks
and Unfair Competition §31:74 (4th Ed. 6/99).
Petitioners, in their petition to cancel, did not allege
that respondent had not made valid trademark use prior to
the March 9, 1990 filing date of its application. Absent
such an allegation, which must be made with
Cancellation No. 22,218
12
particularity, see Fed. R. Civ. P. 9(b), the petition to
cancel fails to state a claim for fraud.
This pleading issue aside, we also find that
petitioners have failed to present evidence sufficient to
support their pleaded fraud claim. Even assuming,
arguendo, that respondent’s allegation in the application
of use of the mark since 1922 was false, there is no
evidence in the record establishing that respondent made
the misstatement with fraudulent intent. That is, there
is no basis in the record for finding that respondent,
when it made its allegation of use of the mark on or
before 1922, made that allegation with knowledge of its
falsity and with the intention of deceiving the Trademark
Office. Absent such proof, petitioners’ fraud claim must
fail. See Smith International, Inc. v. Olin Corporation,
209 USPQ 1033, 1043-44 (TTAB 1981). Petitioners’ fraud
claim is dismissed.
We turn next to petitioners’ pleaded ground for
cancellation under Trademark Act Sections 2(a) and 14(3),
by which petitioners claim that respondent is
“misrepresenting the source of the goods and/or falsely
associating its food supplement sold under the ESSIAC
label with Rene Caisse and by falsely suggesting to the
public that its product is made pursuant to formulation
Cancellation No. 22,218
13
obtained from Caisse.” (Petition to cancel, paragraph
7.) After careful review of the record, we conclude that
petitioners have failed to prove this ground for
cancellation.
Petitioners have not proven their claim, under
Trademark Act Section 14(3), that respondent is
misrepresenting the source of its goods. That statutory
ground for cancellation requires a petitioner to plead
and prove that registrant deliberately sought to pass off
its goods as those of petitioner. Use, even willful use,
of a confusingly similar mark is not sufficient. See
McDonnell Douglas Corporation v. National Data
Corporation, 228 USPQ 45 (TTAB 1985); McCarthy, supra, at
§20:60. No such pleading or proof exists in this case.
We construe petitioners’ alternative allegations
that respondent is “falsely associating its food
supplement sold under the ESSIAC label with Rene Caisse
and … falsely suggesting to the public that its product
is made pursuant to formulation obtained from Caisse” to
be claims, respectively, under the “false suggestion of a
connection” and the “deceptiveness” prongs of Trademark
Act Section 2(a). Both claims must fail.
The “false suggestion of a connection” ground set
forth in Trademark Act Section 2(a) is essentially a
Cancellation No. 22,218
14
statutory implementation of the rights of privacy and
publicity. See University of Notre Dame Du Lac v. J.C.
Gourmet Food Imports Co., 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983). As such, the ground is personal to the
person or institution named in the mark, and may only be
asserted by that person or institution. See Internet,
Inc. v. Corporation for National Research Initiatives, 38
USPQ2d 1435 (TTAB 1996); Heroes, Inc. v. Boomer Esiason
Hero’s Foundation, Inc., 43 USPQ2d 1193 (D.D.C. 1997);
McCarthy, supra, at §20:20.
In this case, there is no evidence that respondent’s
mark ESSIAC (“Caisse” spelled backwards) points uniquely
to the persona or identity of Rene Caisse, as opposed to,
for example, her herbal formulation. For that reason
alone, petitioners’ “false suggestion of a connection
claim” fails. See University of Notre Dame, supra.
However, even assuming arguendo that ESSIAC points
uniquely to the persona or identity of Rene Caisse, only
Rene Caisse or her estate would have standing to assert
the Section 2(a) “false suggestion of a connection”
ground for cancellation. See Internet, Inc., supra, and
Heroes, Inc., supra. Nothing in the record establishes
that petitioners are entitled to assert this statutory
Cancellation No. 22,218
15
ground for cancellation on behalf of Rene Caisse or her
estate. Certainly, the 1977 agreement between Caisse and
Resperin Corporation, from which petitioners’ pleaded
rights in the mark are derived, makes no such provision.
Accordingly, we find that petitioners are not entitled to
prevail on their claim that respondent has violated
Trademark Act Section 2(a)’s “false suggestion of a
connection” provision by “falsely associating its food
supplement sold under the ESSIAC label with Rene Caisse.”
Likewise, we find that respondent’s claim under the
“deceptiveness” prong of Section 2(a), i.e., that
respondent is “falsely suggesting to the public that its
product is made pursuant to formulation obtained from
Caisse,” has not been proven. The Board cannot determine
on this record which, if any, of the parties exclusively
possesses the “true,” “authentic,” or “original”
formulation obtained from Rene Caisse, nor can we
conclude that any such formulation actually remains
extant, if it ever existed at all. Both parties claim to
be in possession of the original documentation
purportedly obtained from Rene Caisse, but those claims
are based solely on the wholly self-serving and
uncorroborated testimony of the parties’ respective
principals and on the clearly inadmissible hearsay
Cancellation No. 22,218
16
statements of various other persons. Despite the
existence of a stipulated protective agreement in this
case, neither party has made its purported documentation
(and authenticating evidence) of record, not even for the
Board’s in camera inspection.
We cannot conclude on this record that respondent’s
product is not, in fact, manufactured pursuant to
Caisse’s original formulation. That is not to say that
we are persuaded that respondent’s product is, in fact,
manufactured according to Caisse’s original formulation.
We simply have no evidentiary basis for making that
determination one way or the other. In view thereof, and
because the burden of proof on this pleaded claim rests
on petitioners, we find that petitioners’ Section 2(a)
“deceptiveness” claim, like its Section 2(a) “false
suggestion of a connection” and its Section 14(3)
“misrepresenting the source of the goods” claims, must
fail.
Thus, the only remaining pleaded ground for
cancellation is petitioners’ Section 2(d) claim of
priority and likelihood of confusion. Respondent has not
disputed that confusion is likely to result from the
parties’ use of the identical mark, ESSIAC, on identical
goods, and we find that a likelihood of confusion clearly
Cancellation No. 22,218
17
exists in this case. Thus, the only issue to be decided
is which party has priority under Section 2(d).
Two preliminary comments are in order. First, the
issue of which of the parties, if any, possesses or is
using Rene Caisse’s alleged “true” or “original” herbal
food supplement formula is irrelevant to our priority
analysis. The issue is priority of use of the trademark
in commerce, not the alleged authenticity or
inauthenticity of the product on which each party is
using the trademark or the validity or invalidity of each
party’s claim to be the rightful heir of Rene Caisse’s
legacy. Second, we note that the co-petitioners appear
to have had a falling out during the course of this
proceeding, and that each is claiming rights in the mark
which are adverse to the other’s rights. However, our
task in this case is not to determine the co-petitioners’
respective rights in the mark, inter se. Rather, the
only issue presented is whether continued registration of
respondent’s mark is barred under Section 2(d).11

11 Based on the pleadings and the evidence of record, we find
that each co-petitioner has established its standing to petition
to cancel respondent’s mark. The apparent adversity of the co-
petitioners’ interests does not negate either co-petitioner’s
standing. Moreover, respondent’s contentions regarding the
alleged inauthenticity of co-petitioner’s product are irrelevant
to the issue of standing.
Cancellation No. 22,218
18
We begin our priority analysis by noting that
respondent filed the application which matured into
Registration No. 1,625,600, the registration involved in
this proceeding, on March 9, 1990. Respondent
accordingly is is entitled to rely, for priority
purposes, on the statutory presumption of constructive
use of its mark as of that filing date. See Trademark
Act Section 7(c), 15 U.S.C. §1057(c); J. C. Hall Company
v. Hallmark Cards, Incorporated, 144 USPQ 435 (CCPA
1965).12 Thus, our initial inquiry is whether either of

12 Respondent is entitled to rely on the statutory presumption
of constructive use as of its application filing date because
the issue of whether respondent had used the mark prior to the
application filing date was neither pleaded by petitioners nor
tried by the express or implied consent of the parties. See
Levi Strauss & Co. v. R. Josephs Sportswear Inc., 28 USPQ2d 1464
at n.4 (TTAB 1993). As discussed above in connection with
petitioners’ fraud claim, petitioners did not plead, as a
separate ground for cancellation, that respondent had not used
its mark in commerce prior to the application filing date.
Likewise, we cannot conclude on this record that the nonuse
issue was tried by the express or implied consent of the parties
as an additional ground for cancellation. Respondent’s evidence
of its use of the mark was presented for the purpose of
defeating petitioner’s pleaded Section 2(d) priority claim, not
for the purpose of establishing its use of the mark prior to the
application filing date in order to defeat an unpleaded nonuse
claim. As discussed infra, petitioners’ evidence in support of
its priority claim centers on the alleged activities of Resperin
Corporation and of Mankind Research Foundation commencing in the
late 1970’s. Not suprisingly, respondent’s evidentiary efforts
to defeat petitioners’ priority claim likewise focus on the
alleged activities of respondent or its predecessors during and
prior to the late 1970’s. In the absence of any pleading of
nonuse as a separate ground for cancellation, respondent had no
burden of specifically proving use of its mark prior to the 1990
application filing date, and it is entitled to rely on that
filing date as its date of constructive first use, for purposes
Cancellation No. 22,218
19
the petitioners have proven that the ESSIAC mark or trade
name was “previously used [i.e., prior to March 9, 1990]
in the United States … and not abandoned” by the
petitioner(s) or their predecessors-in-interest. If not,
they cannot prevail on their Section 2(d) claim.
In the petition to cancel, petitioners base their
priority claim on the alleged previous use of the ESSIAC
mark in the United States by their predecessors-in-
interest, i.e., Rene Caisse since 1934 and the Canadian
company Resperin Corporation since 1977. Petitioner
Dobbie, in his brief, continues to rely on this alleged
previous use of the mark by Caisse and Resperin.
However, petitioner Mankind Research Foundation, in its
brief, does not cite to or rely on any evidence of this
pleaded previous use by Caisse and Resperin, but rather
relies on its evidence of its own (unpleaded) use of the
mark in the United States since October 1978.
We address first Dobbie’s reliance on the alleged
previous use of ESSIAC in the United States by Rene

of Section 2(d) priority. See Levi Strauss & Co., supra, and
Levi Strauss & Co. v. R. Josephs Sportswear Inc., 36 USPQ2d 1328
(TTAB 1994). (Similarly, petitioners’ arguments in their briefs
that respondent has failed to prove that it has made any use at
all of its mark are unavailing, even if we assume, arguendo,
that they are correct. Abandonment, like nonuse, is not a
pleaded ground for cancellation in this case, nor was it tried
by the express or implied consent of the parties.)
Cancellation No. 22,218
20
Caisse and Resperin Corporation. Petitioners presented
no evidence to support a finding that Rene Caisse, prior
to her death in 1978, ever used the mark ESSIAC in the
United States. In fact, it was respondent, not
petitioners, who attempted to prove and rely upon such
use by Caisse, and petitioners objected (properly, in our
view) on hearsay and other grounds to any and all such
attempts by respondent.
Petitioner Dobbie also contends, however, that the
Canadian company Resperin Corporation, petitioners’
immediate predecessor-in-interest, used the mark in the
United States beginning in 1977 and continuously until
1991, when it entered into a “representation agreement”
with petitioner Mankind Research Foundation. In support
of this contention, Dobbie relies on the “Statutory
Declaration” of Resperin’s former director and president
Dr. Matthew Dymond, and on his own trial testimony.13

13 Although they are not cited to or relied upon in Dobbie’s
brief, the August 8, 1996 testimony depositions of petitioners’
witnesses Harold Collins and Pat Safriet should be noted, if
only to point out that neither witness’ testimony is probative
or corroborative evidence of use of the ESSIAC mark in the
United States by Resperin Corporation. Pat Safriet, a resident
of Tennessee, testified that she obtained a single shipment of
ESSIAC for personal use in late 1989. She ordered it by placing
a phone call from Tennessee to Canada, and the product was
shipped from Canada to her in Tennessee. However, she could not
identify from whom she bought the product, and she did not
testify that the product came from Resperin Corporation or any
of its principals. Harold Collins, a resident of Michigan,
Cancellation No. 22,218
21
We turn first to Dr. Dymond’s “Statutory
Declaration” (Dobbie Exhibit P-11).14 Petitioner Dobbie

testified that in Fall 1988 he placed a telephone call (from
Michigan) to Dr. Dymond, a principal of Resperin Corporation who
was located in Canada, and ordered ESSIAC for his personal use.
Dr. Dymond shipped the product from his location in Canada to
Windsor, Ontario, Canada, and Mr. Collins drove from Michigan to
Windsor, picked up the product, and brought it back to Michigan.
This incident did not constitute use of the ESSIAC mark by
Resperin Corporation “in the United States,” and is de minimus
in any event.
14 This two-page document is entitled “STATUTORY DECLARATION”
and begins: “I, Dr. Matthew Dymond, M.D.C.M., F.C.F.P., LL.D.,
of Port Perry, Ontario, Canada do solemnly and sincerely declare
as follows:”. The document then sets forth Dr. Dymond’s
curriculum vitae for the years 1935-1982, after which is set
forth the following:
In summary I was actively involved in medical
practice at both practical and administrative levels
from 1942. Two Universities, the University of
Western Ontario, London, Ontario and Queens
University, Kingston, Ontario, both granted me an
LL.D.
During my term as Minister of Health I became
interested in Resperin Corporation and in the product
Essiac through the then President, the late David
Fingard. Following my resignation from the Ministry
of Health I became more active in the company. I was
a member of the Board of Directors of Resperin
Corporation and also held the position of President
of Resperin Corporation. The exclusive rights to
Essiac were signed over to Resperin Corporation by
Rene Caisse in 1977.
From 1979 until 1987 I devoted some time to the
promotion, selling, taking orders for and shipping
the product Essiac in Canada and to Greece, U.K.,
U.S.A. and other places. Essiac was sold into the
U.S.A. at least as early as 1986 and into England
[and] Greece at least as early as 1987. It was sent
in the form of units of two bottles in a purpose made
cardboard container, which in turn was packed in
polystyrene chips in an outer box. I resigned from
all activity with Resperin Corporation in 1993.
Cancellation No. 22,218
22
relies, in particular, on Dr. Dymond’s assertion, in the
declaration, that “[f]rom 1979 until 1987 I devoted some
time to the promotion, selling, taking orders for and
shipping the product Essiac in Canada and to Greece,
U.K., U.S.A. and other places. Essiac was sold into the
U.S.A. at least as early as 1986 ….”
The declaration appears to have been signed by Dr.
Dymond and notarized on August 25, 1994, after the
commencement of this proceeding. Petitioner Dobbie
testified as follows regarding how this document came to
be prepared:
In 1994 I had been involved in Essiac for three
years and we were trying to establish the
provenance of Essiac and this was just one method
of doing it or one link in the chain of doing it.
Dr. Dymond was not in very good health, and he
proposed that he make a declaration outlining his
knowledge of Essiac and his – his business with
it. And this was the – this was the result.
(Dobbie October 17, 1997 deposition, at 31.) It appears
from the record that Dr. Dymond subsequently died over a
year later, in late 1995 or early 1996.
Trademark Rule 2.123(b) allows for the testimony of
a witness to be submitted in affidavit (or declaration)

AND I MAKE this solemn declaration conscientiously
believing the same to be true and knowing that it is
Cancellation No. 22,218
23
form only “by written agreement of the parties.” No such
written agreement covering the Dymond declaration is of
record.15 Trademark Rule 2.123(l) provides that
“[e]vidence not obtained and filed in compliance with
these sections [including Trademark Rule 2.123(b)] will
not be considered.” Dr. Dymond’s declaration was not
obtained and filed in compliance with Trademark Rule
2.123(b), and it accordingly will not be considered.
Moreover, the declaration clearly is hearsay to the
extent that petitioner relies on it for the truth of the
matters asserted therein.16
Petitioner Dobbie also cites to and relies on his
own testimony as evidence that Resperin Corporation used
the Essiac mark in the United States beginning in 1977.

of the same force and effect as if made under oath
and by virtue of the Canadian Evidence Act.
15 Nor can we deem respondent to have waived the “written
agreement” requirement of Trademark Rule 2.123(b). Although
respondent did not object, during Dobbie’s deposition, to
introduction of the declaration as an exhibit to Dobbie’s
testimony, neither did respondent, in its brief on the case,
treat the declaration or the assertions made therein as being
properly of record. Distinguish, e.g., Hilson Research Inc. v.
Society for Human Resource Management, 27 USPQ2d 1423 (TTAB
1993). In these circumstances, we see no basis for disregarding
the clear and express requirement for a written agreement set
out in Trademark Rule 2.123(b).
16 Respondent also attempted to introduce into evidence the
affidavits of several persons. We have not considered those
affidavits for the same reasons we have not considered Dr.
Dymond's declaration, i.e., because they are not offered in
compliance with Trademark Rule 2.123(b) and because they
constitute hearsay.
Cancellation No. 22,218
24
By his own admission, however, Mr. Dobbie has no personal
knowledge of Resperin’s activities prior to 1991, and
bases his testimony wholly on what he was told by the
principals of Resperin Corporation and on the above-
referenced declaration of Dr. Dymond. See, e.g., Dobbie
August 23, 1996 testimony deposition on written questions
at pp. 15-17; Dobbie October 17, 1997 testimony
deposition at pp. 42-43, 153, 157-58, and 176; and Dobbie
April 12, 1999 rebuttal testimony deposition at pp. 25-
26. His testimony on this issue is inadmissible hearsay,
and is not probative evidence that Resperin Corporation
had ever used the ESSIAC mark in the United States prior
to its February 18, 1991 agreement with Mankind Research
Foundation or, more importantly for our purposes, prior
to the March 9, 1990 filing date of respondent’s
application.
There is no other evidence in the record to
corroborate the hearsay statements of Resperin’s
principals regarding Resperin Corporation’s use of the
mark in the United States. Moreover, we note that the
February 18, 1991 agreement between Respirin and Mankind
Research Foundation, which was drafted and executed prior
to the commencement of this proceeding, in fact appears

Cancellation No. 22,218
25
to bely any asserted previous use of the mark in the
United States by Resperin. The agreement’s recitals
state only that Resperin “has a proprietary interest in a
formulated product known as ‘Essiac’ and has for some
time prior to the date hereof marketed the said product
through various medical practitioners in Canada as a
treatment for cancer….” (Emphasis added.) Pursuant to
Paragraph 7 of the agreement, Mankind Research Foundation
agreed “to assume all obligations of RCL [Resperin] to
patients in Canada presently being treated with Essiac."
(Emphasis added.) Inasmuch as Mankind Research
Foundation is located in the United States, it is
reasonable to assume that the agreement would have
obligated Mankind to assume Resperin’s obligations to
Resperin’s patients or customers in the United States, if
any, as well as Resperin’s obligations to its Canadian
patients. The agreement makes no mention of any such
United States patients or customers, nor does it recite
any previous marketing of Essiac in the United States by
Resperin.
Petitioner Dobbie, by his own admission, first
learned of Essiac in April 1991 and did not begin his own
use of the ESSIAC mark in the United States until
September 1991, a date subsequent to respondent’s March
Cancellation No. 22,218
26
9, 1990 application filing date. (Dobbie Depo. on
Written Questions, at 15.) As discussed above, the
evidence of record, when taken as a whole, fails to
establish that either of Dobbie’s pleaded predecessors-
in-interest, Rene Caisse and Resperin Corporation, had
used ESSIAC as a mark or a trade name in the United
States prior to respondent’s March 9, 1990 application
filing date. In view thereof, we conclude that
petitioner Dobbie has failed to establish his priority,
vis-à-vis respondent, and that his Section 2(d) ground
for cancellation accordingly must fail. Likewise, to the
extent that petitioner Mankind Research Foundation relies
upon the pleaded but unproven previous use of the ESSIAC
mark in the United States by Rene Caisse and Resperin
Corporation, its Section 2(d) claim must fail.
As noted above, however, Mankind and Dobbie had a
falling out during the course of this proceeding.
Mankind appears in its briefs to have abandoned the
theory of priority that it, along with Dobbie, pleaded in
the petition to cancel. Rather than relying on any
alleged use of the ESSIAC mark in the United States by
Rene Caisse or by Resperin Corporation, Mankind now
claims priority based on its own alleged use of the mark
in the United States since October 1978.
Cancellation No. 22,218
27
In support of this new priority claim, Mankind
relies on the May 29, 1998 testimony deposition of its
principal, Dr. Carl Schleicher. He testified that
Mankind began using the mark in the United States on
October 31, 1978, and has continued to use the mark
without interruption since then. He introduced as
exhibits to his testimony four invoices from October and
November 1978, and testified that they document actual
sales and/or shipments of goods marked ESSIAC from
Mankind’s offices in Maryland to purchasers in New York,
Pennsylvania and Washington, D.C., as well as a shipment
to the National Cancer Institute in Maryland for
evaluation and testing purposes.17
This evidence is sufficient to prove Mankind’s use
of the mark in 1978. However, upon careful review of the
entire record, the Board finds that Mankind’s claim of
continuous use of the mark after 1978 is problematic.
Although Dr. Schleicher testified that Mankind has used
the mark continuously since 1978, his testimony is quite
vague on the details and is not corroborated by any
documentary evidence dated after 1978.
For example, it is unclear from Dr. Schleicher’s
testimony where Mankind obtained the ESSIAC products it

17 We reject as unproven and unfounded respondent’s contention
Cancellation No. 22,218
28
is asserted to have sold or shipped after 1980. He
testified that he received samples of the product, “not
very many” bottles, from Resperin during 1978-1980, but
does not identify Mankind’s source for the product, if
any, after 1980. He testified that he received the
formula for the product from Resperin along with
instructions on how to prepare the product, but he cannot
recall, even generally, when that might have occurred.
It is reasonable to assume, however, that Mankind did not
receive Resperin’s formula for the Essiac product until
the parties entered into their 1991 agreement. That
agreement specifically provides that the formula for the
product is “attached hereto in a sealed envelope.” No
such attachment presumably would have been necessary if
Mankind had already received the formula from Resperin
prior to 1991. Indeed, it is not clear why Mankind would
have entered into the agreement at all, and obligated
itself to pay royalties to Resperin, if it already
possessed the formula.
When he was asked why Mankind did not file a U.S.
trademark application for registration of the ESSIAC mark
until 1993, if it had been using the mark since 1978, Dr.
Schleicher testified: “Well, we weren’t sure if we were

that these invoices are false or fraudulent documents.
Cancellation No. 22,218
29
going to proceed with this at all. It took us a while to
sort out Essiac and see if it would be in our interest to
make an agreement, which we eventually did. And we made
a filing on the trademark.” (Schleicher depo., at 117.)
This testimony weighs against a finding that Mankind was
making continuous commercial use of the mark prior to its
1991 agreement with Resperin Corporation. Additionally,
the 1991 agreement itself, at Paragraph 8, deals with
setting the royalty amounts to be paid by Mankind to
Resperin. It speaks only prospectively of Mankind’s
production of the Essiac product: “Upon the said product
being produced and marketed by MRF [Mankind], a selling
price shall be determined ….”
Section 2(d) requires that a plaintiff’s confusingly
similar mark be shown to have been “previously used in
the United States … and not abandoned.” Mankind has
presented evidence sufficient to establish its use of the
mark in the United States in 1978, and thus has proven
that its mark was “previously used.” However, the issue
of whether Mankind’s use of the mark was “not abandoned”
is much less clear. Its claim of continuous use of the
mark between 1978 and its 1991 agreement with Resperin
Corporation rests solely on the vague and uncorroborated
testimony of Dr. Schleicher.
Cancellation No. 22,218
30
In a Section 2(d) case, it is not the plaintiff’s
burden to prove that its previously used mark is “not
abandoned.” Rather, it is the defendant’s burden to
plead and prove such abandonment. See West Florida
Seafood v. Jet Restaurants, 31 F.3d 1122, 31 USPQ2d 1660
(Fed. Cir. 1994). In this case, respondent specifically
pleaded abandonment as an affirmative defense.
Respondent also introduced evidence which, when combined
with the inconclusiveness of Dr. Schleicher’s testimony,
leads us to conclude that a preponderance of the evidence
supports a finding that Mankind abandoned its use of the
mark prior to respondent’s March 9, 1990 application
filing date.
Specifically, respondent has made of record certain
correspondence between Mankind and respondent, an
exchange of cease and desist letters between the parties
which occurred in 1991. In response to a cease and
desist letter from respondent, Dr. Schleicher wrote a
letter to respondent dated October 16, 1991 in which he
stated, “We plan to distribute this [the Essiac product]
in the U.S. commencing in about 30 days but we are
already distributing this now in Canada.” (Gaulin
12/17/96 depo., Exh. F.) Respondent, in its November 20,
1991 letter in response to Mankind’s October 16, 1991
Cancellation No. 22,218
31
letter, rejected Mankind’s cease and desist request,
stating “we have been in production since 1978 and you
are the new kid on the block.” (Gaulin 12/17/96 depo.,
Exh. K.) In response to that letter, Mankind sent
another letter dated November 26, 1991, which stated,
inter alia, “This letter is to put you and your company
under advisement that our organization has been granted
exclusive world-wide rights to ESSIAC by the Resperin
Corporation.” In response to respondent’s claim, in its
November 20, 1991 letter, that it had been distributing
Essiac since 1978, Mankind asserted in its November 26,
1991 letter: “We are not ‘the new kid on the block,’ as
you falsely and derogatorily assumed. We have followed
ESSIAC since 1977, and have been in contact with the
Resperin Corporation since 1980.” (Gaulin 12/17/96
depo., Exh. AL.)
Mankind’s October 16, 1991 and November 26, 1991
letters to respondent, which obviously were written and
mailed prior to the commencement of this proceeding,
contain admissions by Dr. Schleicher which cast serious
doubt on Mankind’s assertion that it has used the ESSIAC
mark in the United States continuously since 1978.
Indeed, that claim of use since 1978 is directly
contradicted by Dr. Schleicher’s statement, in the
Cancellation No. 22,218
32
October 16, 1991 letter, that Mankind “plan[s] to
distribute this [Essiac] in the U.S. commencing in about
30 days,” i.e., on or about November 16, 1991. The only
logical interpretation of this statement is that, as of
October 16, 1991, Mankind had not been distributing
Essiac in the United States.
Additionally, when confronted with respondent’s
claim in its November 20, 1991 letter that respondent had
been distributing the Essiac product since 1978, one
would think that, if Mankind too had in fact been using
the mark in the United States since 1978 as it now
claims, it would have made that assertion in its November
26, 1991 response to respondent’s November 20, 1991
letter, in order to present its strongest case for
priority. Instead, Mankind stated only that it has
“followed” ESSIAC since 1977 and that it has “been in
contact with Resperin Corporation since 1980.” Likewise,
in its November 26, 1991 letter, Mankind indicated that
its rights in the ESSIAC mark arose from and were based
on the rights it obtained from Resperin Corporation, not
from any prior use of the mark by Mankind itself. That
is completely consistent with Mankind’s originally-
pleaded claim that its priority is based on the previous
use of the mark by its predecessor-in-interest Resperin
Cancellation No. 22,218
33
Corporation, but it is inconsistent with Mankind’s newly-
asserted claim of priority based on its own alleged
continuous use of the mark since 1978.
Upon review and consideration of the entire record,
we find that even if Mankind had “previously used” the
ESSIAC mark in the United States, i.e., in 1978, such use
had been abandoned prior to respondent’s March 9, 1990
filing date. Accordingly, we find that Mankind has not
established its priority vis-à-vis respondent and thus
its entitlement to judgment under Trademark Act Section
2(d).
In summary, we find that petitioners have failed to
prove any of their pleaded grounds for cancellation of
respondent’s registration, i.e., fraud, misrepresentation
of source under Trademark Act Section 14(3), false
suggestion of a connection and deceptiveness under
Trademark Act
Cancellation No. 22,218
34
Section 2(a), or priority of use under Trademark Act
Section 2(d).
Decision: The petition to cancel is dismissed.
G. D. Hohein
P. T. Hairston
C. M. Bottorff
Administrative Trademark Judges
Trademark Trial and Appeal Board