Pfizer, Inc.v.Gregg Hamer-schlag

Trademark Trial and Appeal Board

Sep 27, 2001

No. 91118181 (T.T.A.B. Sep. 27, 2001)

9/27/01

EAD

Opposition No. 118,181

Pfizer, Inc.

v.

Gregg Hamerschlag

Before Cissel, Chapman, and Wendel, Administrative
Trademark Judges.

By the Board:

Pfizer, Inc. filed a notice of opposition to
registration of the mark CLIAGRA for “natural, herbal
vitamins and mineral supplements, namely an herbal
aphrodisiac to enhance female sexual desire”1 on the
grounds that applicant’s mark so resembles opposer’s
previously used and registered mark VIAGRA for “compound
for treating erectile dysfunction” (Registration No.
2,162,5482) as to be likely to cause confusion, mistake or
deception; and that

1 Application Serial No. 75/599,401 was filed on December 4,
1998 under Trademark Act Section 1(b) based on applicant’s
assertion of a bona fide intention to use the mark in commerce.
2 Registration No. 2,162,548, issued on June 2, 1998.

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
2900 Crystal Drive
Arlington, Virginia 22202-3513

THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Opposition No. 118,181
2
applicant’s CLIAGRA mark will cause dilution3 of the
famous and distinctive quality of opposer’s VIAGRA mark.
On March 27, 2001, opposer filed a motion to amend
its notice of opposition to add claims (i) that
application Serial No. 75/599,401 is void ab initio under
Trademark Act Section 1(b) because applicant did not have
a bona fide intent to use the mark in commerce when he
filed the application, and (ii) that applicant made an
invalid assignment of his intent-to-use application under
Trademark Act Section 10. On the same date, opposer also
filed a motion for summary judgment on the Section 1(b)
and Section 10 claims.
Turning first to opposer’s motion to amend, which
was accompanied by a signed copy of the amended notice of
opposition, we note that the Board received no opposition
to the motion. Further, on May 16, 2001, applicant filed
its answer to the amended notice of opposition.4

3 Opposer is advised that dilution claims are properly based not
on Trademark Act Section 2(f) of the Trademark Act (cited by
opposer in its notice of opposition) but on Section 43(c).
Further, opposer is advised that its dilution claim was not
properly pleaded insofar as there is no allegation as to when
opposer’s mark became famous. Polaris Industries, Inc. v. DC
Comics, 59 USPQ2d 1798 (TTAB 2000).
4 Both applicant’s original answer and answer to the amended
notice of opposition seek an award of “all costs, including a
reasonable attorney’s fee”. Pursuant to Trademark Rule
2.127(f), the Board will not award attorneys' fees or other
expenses to any party. See Duke University v. Haggar Clothing
Co., 54 USPQ2d 1443 (TTAB 2000); Trademark Trial and Appeal
Opposition No. 118,181
3
Opposer’s motion to amend its notice of opposition is
granted pursuant to Fed. R. Civ. P. 15(a) and Trademark
Rule 2.107. Accordingly, both opposer’s amended notice
of opposition and applicant’s answer thereto are
accepted.
Turning to opposer's motion for summary judgment,
the granting of a motion for summary judgment is
appropriate where there exists no genuine dispute as to
any material fact and where the moving party is entitled
to judgment as a matter of law. See Fed. R. Civ. Pro.
56(c); Celotex Corp. v. Catrett, 477 U.S. 317, 106 S. Ct.
2548 (1986).
We consider first the pleaded ground that applicant
did not have a bona fide intent to use the mark in
commerce when the application was filed and the
application is void ab initio under Section 1(b). In
support of its motion, opposer relies, inter alia, on
applicant Gregg Hamerschlag’s deposition testimony that
he has invested no money in the development of the
CLIAGRA product and possesses no business plans to
develop said product; and applicant’s discovery responses
producing, in response to more than 40 requests for

Board Manual of Procedure (TBMP) §502.06. Applicant’s request
is denied.
Opposition No. 118,181
4
documents relating to applicant’s CLIAGRA mark, only
copies of opposer’s three letters to applicant regarding
the mark and a copy of his involved trademark
application.
In opposing the motion for summary judgment, Mr.
Hamerschlag relies on his deposition testimony, and his
affidavit5 which show that at the time Hamerschlag filed

5 In its reply brief, opposer included a “motion” to strike Mr.
Hamerschlag’s entire affidavit (submitted with applicant’s
opposition to the motion for summary judgment) on the ground
that it contradicts his prior deposition testimony. A party
cannot create an issue of fact by supplying an affidavit
contradicting his prior deposition testimony without explaining
the contradiction or attempting to resolve the disparity.
Sinskey v. Pharmacia Opthalmics, Inc., 982 F.2d 494, 25 USPQ2d
1290 (Fed. Cir. 1992) cert. denied, 508 U.S. 912 (1993). Here,
upon careful review of the deposition testimony and affidavit,
we find that Mr. Hamerschlag’s affidavit does not contradict so
much as it clarifies and explains responses given in his
deposition testimony. Opposer’s motion to strike the
Hamerschlag affidavit is denied.
We hasten to add that, insofar as the deposition testimony
establishes that applicant had plans to manufacture and market
its herbal aphrodisiac, the deposition testimony alone raises a
genuine issue of material fact regarding applicant’s bona fide
intent to use the involved mark in commerce and striking the
affidavit would not alter the outcome of the summary judgment
motion in this regard.
Attached to applicant’s affidavit were additional documents
which applicant claims show his bona fide intent to use the mark
in commerce. In his affidavit, applicant states that he did not
remember the existence of these documents at the time of his
deposition and only discovered them at an unspecified later
point.
Also in its reply brief opposer included another “motion” to
strike these documents on the ground that they were not
disclosed during discovery, and applicant’s discovery responses
were not supplemented when applicant found the responsive
documents. Pursuant to Fed. R. Civ. P. 37(c), opposer’s motion
is granted and we have given the documents attached to Mr.
Opposition No. 118,181
5
his trademark application for the CLIAGRA mark he
intended to market the product in magazines and other
print media; that he conducted research before filing the
application and his research demonstrated to him that he
could buy, package, and sell the product with his own
funds; that because he would not be seeking investors or
borrowing funds to launch the product he did not see the
necessity of a formal business
plan; that he did not want to invest time and effort on
building a brand until he secured rights to the name; and
that his intention was to develop the product upon
completion of the registration process.
As a general rule, the factual question of intent
is particularly unsuited to disposition on summary
judgment. See Copelands' Enterprises, Inc. v. CNV,
Inc., 945 F.2d 1563, 20 USPQ2d 1295 (Fed. Cir. 1991).
The Board has held, however, that the absence of any
documentary evidence regarding an applicant's bona fide
intention to use a mark in commerce is sufficient to
prove that an applicant lacks such intention as required
by Section 1(b) of the Trademark Act, unless other facts
are presented which adequately explain or outweigh

Hamerschlag’s affidavit no consideration in reaching our
decision herein.
Opposition No. 118,181
6
applicant's failure to provide such documentary
evidence. See Commodore Ltd. v. CBM Kabushiki Kaisha,
26 USPQ2d 1503 (TTAB 1993). Here, applicant’s
deposition testimony and affidavit regarding his modest
and informal business plan for his intended use of the
mark CLIAGRA is sufficient to raise a genuine issue as
to his bona fide intention to use a mark in commerce in
the context of opposer’s motion for summary judgment.
See Lane Ltd. v. Jackson International Trading Co., 33
USPQ2d 1351, 1356 (TTAB 1994).
After a careful review of the parties' arguments, and
drawing all reasonable inferences in favor of applicant
as the non-moving party, we find that disposition of the
issue of applicant’s bona fide intention to use the mark
in commerce by summary judgment is inappropriate. There
is a genuine issue of fact regarding applicant’s bona
fide intention to use the involved mark in commerce. In
view of the foregoing, opposer’s motion for summary
judgment is denied on the Section 1(b) claim.
We next consider opposer's motion for summary
judgment on the ground that applicant filed an invalid
assignment of the intent-to-use application and the
application is void ab initio under Trademark Act Section
10.
Opposition No. 118,181
7
Opposer has moved for summary judgment on the ground
that the unlawful assignment voids the application
because Gregg Hamerschlag did not have an ongoing and
existing business under the CLIAGRA mark that could be
assigned to a successor and thus did not meet the
statutory exception for assignment of intent-to-use
applications. In its motion opposer relies upon the
undisputed facts that applicant has invested no money in
the development of the CLIAGRA product; that since filing
the application, applicant has done nothing to bring the
product to market; that when applicant assigned the
application, he did not assign related business assets to
Cliagra LLC; and that applicant assigned nothing other
than the trademark to Cliagra LLC. Opposer also relies,
inter alia, on applicant Gregg Hamerschlag’s deposition
testimony in which applicant states that “at the time I
transferred the mark to Cliagra LLC, I as an individual
did not have any business, ongoing business using the
mark.” (Hamerschlag Dep. Pages 56-57).
In support of his position that he did have an
ongoing and existing business, and thus the assignment of
his intent-to-use application for the involved mark fit
the statutory exception for an assignment of an intent-
to-use application to a successor to the business, Mr.
Opposition No. 118,181
8
Hamerschlag submits his affidavit in which he states that
Cliagra LLC is a limited liability company organized
under the laws of Vermont; that he is the sole member;
that he formed Cliagra LLC after learning of opposer’s
opposition to registration of the CLIAGRA mark; and that
he assigned his application to Cliagra LLC on advice of
counsel in order to protect himself from personal
liability. Applicant argues that Cliagra LLC is clearly
a successor business to Gregg Hamerschlag and that both
the businesses of Cliagra LLC and Gregg Hamerschlag were
ongoing and existing at the time of the assignment.
The record makes clear that Gregg Hamerschlag filed
application Serial No. 75/599,401 under Trademark Act
Section 1(b) on December 4, 1998; that applicant assigned
application Serial No. 75/599,401 to Cliagra, LLC on
August 9, 19996; and that applicant assigned the
application prior to the filing of an allegation of use
under Section 1(c) or Section 1(d).
Trademark Act Section 10 states, in pertinent part
(emphasis added):
A registered mark or a mark for
which an application to register has
been filed shall be assignable with
the good will of the business in which

6 The U. S. Patent and Trademark Office Assignment Branch
records indicate that the assignment was recorded at Reel 1991,
Frame 0121.
Opposition No. 118,181
9
the mark is used, or with that part of
the good will of the business
connected with the use of and
symbolized by the mark.
Notwithstanding the preceding
sentence, no application to register a
mark under section 1(b) shall be
assignable prior to the filing of an
amendment under section 1(c) to bring
the application into conformity with
section 1(a) or the filing of the
verified statement of use under
section 1(d), except for an assignment
to a successor to the business of the
applicant, or portion thereof, to
which the mark pertains, if that
business is ongoing and existing.

The legislative history of Section 10 states that
“Permitting assignment of applications before a mark is
used would conflict with the principle that a mark may be
validly assigned only with some of the business or
goodwill attached to use of the mark and would encourage
trafficking in marks.” S. 1883, 100th Cong., 1st Sess.,
133 Cong. Rec.
§16552 (daily ed. November 19, 1987), reprinted in United
States Trademark Association, The Trademark Law Revision
Act of 1988 (1989).7 The Board has held that the Section

7 We note that the assignment document, in which Hamerschlag
merely transferred his “title and interest” in the application,
is a naked transfer which does not convey to the assignee any
goodwill associated with the mark. A trademark cannot be sold
or assigned apart from the good will it symbolizes. Trademark
Act Section 10; and The Clorox Co. v. Chemical Bank, 40 USPQ2d
1098 (TTAB 1996). Accordingly, the assignment is also invalid
as a prohibited assignment in gross.
Opposition No. 118,181
10
10 requirement that applicant’s business be “ongoing and
existing” fills a loophole that would permit otherwise
prohibited assignments. “For example, an ‘intent to use’
applicant may intend to create a new business in which
the mark will be used but decide, after the application
is made, not to do so. Without the requirement that the
business be ‘ongoing and existing,’ the applicant would
be able to assign the marks that are the subject of the
‘intent to use’ application to another business, which
purports to be a successor to the first company's no
longer existing business. By closely limiting
assignments, these provisions will protect against
trafficking in marks and help ensure that the intention
of the ‘intent to use’ applicant is bona fide.” The
Clorox Co. v. Chemical Bank, 40 USPQ2d 1098 (TTAB 1996).
See also, In re Circuit City Stores West Coast Inc., 40
USPQ2d 1536 (Comm. 1996)(statutory exception not met when
applicant wishes to transfer ownership of applications to
sister subsidiary “since no other assets are
intended to be transferred with the subject
applications”). Unless the statutory exception is met,
the legal effect of assigning an intent-to-use
application, prior to the filing of a verified allegation
Opposition No. 118,181
11
of use, is that the application is void.8 The Clorox Co.
v. Chemical Bank, supra.
Upon careful consideration of the arguments and
evidence presented by the parties, we find that there is
no genuine issue of material fact that applicant did not
have an ongoing and existing business pertaining to the
CLIAGRA mark at the time he assigned his application.
Applicant does not claim that he is or was in the
business of selling the identified herbal aphrodisiacs,
the business pertaining to the CLIAGRA mark. Instead,
applicant specifies “the battle against Pfizer for use of
the mark ‘Cliagra’…was its only business then and that is
its only business now.” Unwittingly or not, a party who
has no business except obtaining a trademark on the basis
of intent to use and who prior to starting a business
assigns that application to another falls squarely into
the trademark trafficking activity that Section 10 is
intended to preclude.

8 We note that the recordation of transfer of interest documents
at the U.S. Patent and Trademark Office Assignment Branch is a
ministerial act. It does not include a decision on the legal
sufficiency or the legal effect of the document(s) offered for
recordation.
Opposition No. 118,181
12
In sum, we find that there is no genuine issue of
material fact that applicant did not have an ongoing and
existing business pertaining to the involved mark and, as
a result, applicant did not meet the statutory exception
when he assigned his intent-to-use application to the
“successor” to the as-yet unrealized business to which
the CLIAGRA mark pertains. Therefore, as a matter of law
the assignment of application Serial No. 75/599,401
violated Section 10 of the Trademark Act, and the
application is void. Opposer’s motion for summary
judgment is granted on the ground based on Section 10 of
the Trademark Act, and judgment is entered against
applicant on that basis.
Accordingly, the opposition is sustained on
opposer’s Section 10 ground, and application Serial No.
75/599,401 is refused registration as being void.