No. 92047584 (T.T.A.B. Feb. 24, 2009)

Micro Nutrient LLCv.Jeffrey D. Thompson

Trademark Trial and Appeal BoardFeb 24, 2009

No. 92047584 (T.T.A.B. Feb. 24, 2009)

+++++++++++++++++++++++++ Mailed: February 24, 2009 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ Micro Nutrient LLC v. Jeffrey D. Thompson _____ Cancellation No. 92047584 _____ Ronald A. DiCerbo of McAndrews, Held & Malloy, Ltd. for Micro Nutrient LLC. Jeffrey D. Thompson, pro se.1 _____ Before Walsh, Cataldo and Mermelstein, Administrative Trademark Judges. Opinion by Cataldo, Administrative Trademark Judge: Micro Nutrient LLC (“petitioner”) has petitioned to partially cancel under Section 18 of the Trademark Act Registration No. 2901580 for the mark BIO-TUNING, owned by Jeffrey D. Thompson (“respondent”). The registration issued on November 9, 2004 on the Principal Register. The services are identified therein as “health care” in International Class 44. 1 Respondent’s August 22, 2008 revocation of power of attorney was accepted in a Board order issued on December 4, 2008. THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B. Cancellation No. 92047584 2 In its petition for cancellation, petitioner asserts that it is the owner of an application for the mark BIOTUNING for “nutraceuticals for use as a dietary supplement; food supplements; vitamin and mineral supplements; nutritional supplements; dietary supplements” in International Class 5.2 Petitioner asserts in addition that its application has been refused registration by the Trademark Examining Operation under Section 2(d) of the Trademark Act on the basis that petitioner’s mark is likely to cause confusion with the mark in respondent’s Registration No. 2901580; and that petitioner will be damaged thereby. Petitioner further asserts that respondent is not using his BIO-TUNING mark on “health care,” but rather is using such mark on a narrower range of services, namely, “audio therapy services provided at neuroacoustic clinics to facilitate stress reduction, deep relaxation and personal health benefits” (petition to cancel, para. 16). Petitioner argues that the recitation of services in the involved registration “should be modified to more accurately portray the services provided there under” (Id.). Petitioner further argues that restriction of respondent’s recitation of services will avoid a likelihood of confusion with petitioner’s pending application. 2 Application Serial No. 78484087 was filed on September 15, 2004 based upon an assertion of a bona fide intent to use the mark in commerce under Section 1(b) of the Trademark Act. Cancellation No. 92047584 3 Respondent’s answer consists of a general denial of the allegations in the petition for cancellation. The record consists of the pleadings, the file of the application that matured into the involved registration, and petitioner’s notice of reliance upon the following: petitioner’s first set of requests for admissions, first set of requests for production of documents and things, and first set of interrogatories; respondent’s responses to petitioner’s first set of interrogatories, requests for admissions and requests for production;3 petitioner’s second set of requests for admissions, which stand admitted in view of applicant’s failure to respond thereto;4 and petitioner’s second set of interrogatories and requests for production, which respondent also assertedly failed to answer.5 Only petitioner filed a main brief on the case. 3 We note that while petitioner made of record respondent’s written responses to petitioner’s first set of requests for production, no responsive documents were made of record. 4 See Fed. R. Civ. P. 36(a), Trademark Rule 2.120(j)(3)(i) and TBMP §704.10 (2d ed. rev. 2004). 5 As for the printouts from respondent’s Internet website (neuroacoustics.com) submitted with petitioner’s notice of reliance, it is well settled that Internet printouts are not self-authenticating and are “not proper subject matter for introduction by means of a notice of reliance under Trademark Rule 2.122(e).” Plyboo America Inc. v. Smith & Fong Co., 51 USPQ2d 1633, 1634 n.3 (TTAB 1999). See also Michael S. Sachs Inc. v. Cordon Art B.V., 56 USPQ2d 1132, 1134 (TTAB 2000); and Raccioppi v. Apogee Inc., 47 USPQ2d 1368, 1370 (TTAB 1998). Thus, these Internet printouts are not in evidence and will not be considered. We hasten to add that even if these materials were considered, the result would be the same. Cancellation No. 92047584 4 Petitioner’s Standing A party has standing to cancel a registration under Section 18 of the Trademark Act of 1946 if that party can demonstrate that it has a real interest in the proceeding (i.e., a direct and personal stake in the outcome of the proceeding). Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025-1026 (Fed. Cir. 1999); Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982). In this case, petitioner has been refused registration of the mark in its asserted application because of the mark in the involved registration. As a result, petitioner has a real interest in this proceeding and a reasonable belief of damage. Petitioner thus has demonstrated its standing to petition to cancel respondent’s mark for BIO-TUNING for “health care.” See Cerveceria Modelo S.A. de C.V. v. R.B. Marco & Sons, Inc., 55 USPQ2d 1298, 1300 (TTAB 2000); and Hartwell Co. v. Shane, 17 USPQ2d 1569, 1570 (TTAB 1990). Section 18 Petition for Partial Cancellation or Restriction Section 18 of the Trademark Act, 15 U.S.C. §1068, reads as follows: In such proceedings the Director may refuse to register the opposed mark, may cancel the registration, in whole or in part, may modify the application or registration by limiting the goods or services specified therein, may otherwise restrict or rectify with respect to the register the registration of a registered mark, may refuse to register any or all of several interfering Cancellation No. 92047584 5 marks, or may register the mark or marks for the person or persons entitled thereto, as the rights of the parties hereunder may be established in the proceedings: Provided, that in the case of the registration of any mark based on concurrent use, the Director shall determine and fix the conditions and limitations provided for in subsection (d) of section 1052 of this title. However, no final judgment shall be entered in favor of an applicant under section 1(b) before the mark is registered, if such applicant cannot prevail without establishing constructive use pursuant to section 1057(c) of this title. (Amended Nov. 16, 1988, 102 Stat. 3941; Nov. 29, 1999, 113 Stat. 1501A-583.) The Board discussed the requirements for a Section 18 restriction in Eurostar Inc. v. “Euro-Star” Reitmoden GmbH & Co. KG, 34 USPQ2d 1266 (TTAB 1995). In particular, the Board stated: We believe, moreover, that a party should be held to have established a proper case for restriction of an application or registration where, in a case involving likelihood of confusion, it pleads and proves that (i) the entry of a proposed restriction to the goods or services in its opponent’s application or registration will avoid a finding of likelihood of confusion; and (ii) the opponent is not using its mark on those goods or services that will be effectively excluded from the application or registration if the proposed restriction is entered. Id. at 1270. In this case, petitioner seeks to restrict the recitation of services in respondent’s involved registration from “health care” to “audio therapy services” (brief, p. Cancellation No. 92047584 6 12).6 In support thereof, petitioner mainly relies upon respondent’s admissions to petitioner’s second set of admission requests. By its failure to respond thereto, respondent has conclusively admitted, under Fed. R. Civ. P. 36(b), the following: Registrant’s Mark is not used on nutritional supplements; Registrant’s Mark is not used on nutritional supplements sold, distributed, or placed in any way in interstate commerce; Registrant’s Mark is not used on labels used on or in connection with nutritional supplements; Registrant’s Mark is not used on labels used on or in connection with nutritional supplements sold, distributed, or placed in any way in interstate commerce; Registrant’s Mark is not used on packaging used on or in connection with nutritional supplements; Registrant’s Mark is not used on packaging used on or in connection with nutritional supplements sold, distributed, or placed in any way in interstate commerce; Registrant has a single clinic from which he provides his services; Registrant’s sole clinic is the Center for Neuroacoustic Research; Registrant’s Center for Neuroacoustic Research is located in Encinitas, California; Registrant advertises his Bio-Tuning process on his website www.neuroacoustic.com; 6 We note that, contrary to petitioner’s contention, “health care” is neither so broad and expansive a term as to “render Registrant’s recitation of services meaningless” (brief, p. 15) nor is it so “ambiguous” (Id.) as to require extrinsic evidence in order to comprehend it. Cf. In re Trackmobile, Inc., 15 USPQ2d 1152 (TTAB 1990). In fact, “health care” is listed among acceptable recitations of services in the US Acceptable Identification of Goods and Services Manual maintained by the United States Patent and Trademark Office at http://atlas/netahtml/tidm.html. Cancellation No. 92047584 7 Registrant does not advertise nutritional analysis services on his website www.neuroacoustic.com; Registrant does not advertise nutritional counseling services on his website www.neuroacoustic.com; Registrant does not advertise the sale of nutritional products on his website www.neuroacoustic.com; Registrant does not provide nutritional products through the internet via his website at www.neuroacoustic.com; Registrant does not provide nutritional counseling services through the internet via his website at www.neuroacoustic.com; Registrant does not provide nutritional analysis services through the internet via his website at www.neuroacoustic.com; Registrant does not provide nutritional products outside of California; Registrant does not provide nutritional counseling services outside of California; Registrant does not provide nutritional analysis services outside of California; Registrant does not sell nutritional products through trade shows; Registrant does not provide nutritional counseling services through trade shows; Registrant does not provide nutritional analysis services through trade shows; Documents Bates Nos. Bio-1 - Bio-3 comprise a true and accurate copy of Registrant's application for the mark BIO- TUNING; Documents Bates Nos. Bio-4 - Bio-6 comprise a true and accurate copy of the Office Action issued on 9/30/03 in regard to Registrant's application for the mark BIO-TUNING; Documents Bates Nos. Bio-7 - Bio-10 are true and accurate copies of the specimens submitted by the Registrant to the Cancellation No. 92047584 8 Trademark Office on 1/21/04 in regard to Registrant’s application for the mark BIO-TUNING; Documents Bates Nos. Bio-11 - Bio-14 comprise a true and accurate copy of the Response submitted by the Registrant to the Trademark Office on 1/21/04 in regard to Registrant’s application for the mark BIO-TUNING; Documents Bates Nos. Bio-15 - Bio-17 comprise a true and accurate copy of the Office Action issued on 2/27/04 in regard to Registrant’s application for the mark BIO-TUNING; Documents Bates Nos. Bio-18 - Bio-20 comprise a true and accurate copy of the Statement of Use submitted by the Registrant to the Trademark Office on 4/14/04 in regard to Registrant’s application for the mark BIO-TUNING; Documents Bates Nos. Bio-21 - Bio-22 are true and accurate copies of the specimens submitted by the Registrant to the Trademark Office on 4/14/04 in regard to Registrant’s application for the mark BIO-TUNING; Documents Bates Nos. Bio-23 - Bio-24 comprise a true and accurate copy of the Examiner's Amendment issued on 5/13/04 in regard to Registrant’s application for the mark BIO- TUNING; and Registrant never informed the Trademark Office that it uses the mark BIO-TUNING on or in connection with any product or service other than audio therapy services. Based on the foregoing admissions, petitioner has established that respondent does not provide nutritional supplements, analysis or counseling under the mark in its involved registration in interstate commerce, although it appears that such goods and services may be offered within the State of California. Further, petitioner has established that respondent provides its services from a single clinic, also located in California. However, respondent’s admissions fail to establish that respondent is Cancellation No. 92047584 9 solely engaged in “audio therapy services” to the exclusion of other services in the field of health care. That is to say, while respondent may not be using his BIO-TUNING mark in connection with goods and services related to nutrition, his admissions do not support a finding that respondent is not otherwise engaged in “health care” or that such recitation of services is overly broad and needs to be restricted. Further, there is no testimony or evidence of record to support a finding that respondent is engaged solely in “audio therapy services” under his BIO-TUNING mark. Neither respondent’s answers to petitioner’s first set of admission requests, nor his responses to petitioner’s first set of interrogatories or requests for production, contain any admissions or responses indicating that respondent is not engaged in “health care” services. To the contrary, respondent’s discovery responses unequivocally deny such allegations. Similarly, respondent’s answer to the petition for cancellation generally denies the salient allegations thereof, including those directed toward the scope of respondent’s recitation of services. In addition, there is no testimony or evidence of record to establish that petitioner’s proposed restriction would avoid a likelihood of confusion. Rather, petitioner merely asserts that an amendment of respondent’s recitation of services to “audio Cancellation No. 92047584 10 therapy services” will render confusion unlikely. As a result, petitioner has failed to introduce evidence sufficient to prove its allegations. In short, petitioner’s proposed restriction does not satisfy either prong of the Eurostar test. As discussed above, it is not clear from the record of this case that the proposed restriction would avoid a likelihood of confusion. Furthermore, petitioner has failed to introduce evidence that respondent is not using his BIO-TUNING mark on the services sought to be excluded. Section 18 is an equitable remedy. Id. at 1271, n.3. Equity would not be served in this case by petitioner’s proposed restriction. As this tribunal pointed out in Eurostar, Section 18 was not intended “to restrict applications and registrations to unworkably narrow descriptions of goods and services.” Id. See also Penguin Books Ltd. v. Eberhard, 48 USPQ2d 1280 (TTAB 1998) (applicant that pleaded particular restriction precluded from pursuing alternative restriction raised for first time during briefing; initial proposal would not avoid likelihood of confusion). Accordingly, we deny the petition for partial cancellation or restriction of respondent’s registration. Decision: the petition for partial cancellation is denied.