Potion Enterprisesv.Health Restored LLC

Trademark Trial and Appeal Board

Oct 12, 2021

92076664 (T.T.A.B. Oct. 12, 2021)

Faint
October 12, 2021

Cancellation No. 92076664

Potion Enterprises

v.
Health Restored LLC

Before Bergsman, Lynch, and Lebow,
Administrative Trademark Judges.

By the Board:

Potion Enterprises (Petitioner) seeks cancellation of Health Restored LLC’s
(Respondent) registration on the Principal Register for the standard character mark
MIGRAINE MAGIC for, “dietary supplements” in International Class 5.1 Respondent’s
underlying application was filed March 21, 2020, based on intent to use the mark in
commerce, and Respondent claimed in its statement of use a date of first use of the mark
anywhere of March 30, 2020, and a date of first use in commerce of July 19, 2020.
In the petition for cancellation, Petitioner asserts likelihood of confusion with its mark
MIGRAINE MAGICK for which Petitioner filed an application2 that has been refused

1 Registration No. 6218527. A disclaimer of “MIGRAINE” is of record.
2 Application Serial No. 90378823, filed Dec. 14, 2020 based on use in commerce for, “Dietary
supplements; Herbal supplements; Liquid herbal supplements; Mineral nutritional
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
General Contact Number: 571-272-8500
General Email: TTABInfo@uspto.gov
THIS ORDER IS NOT A
PRECEDENT OF THE
TTAB
Cancellation No. 92076664

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registration based on Respondent’s registration.3 In its answer, Respondent denies the
salient allegations of the petition to cancel, and admits that its “Statement of Use is
supported by the date 7/19/2020.”4
This proceeding is now before the Board for consideration of Petitioner’s motion,
filed July 12, 2021, for summary judgment on likelihood of confusion. The motion is
fully briefed.
The Board has carefully considered all of the parties’ arguments, presumes the
parties’ familiarity with the factual bases for their filings, and does not recount the
facts or arguments here except as necessary to explain this decision. See Guess? IP
Holder LP v. Knowluxe LLC, 116 USPQ2d 2018, 2019 (TTAB 2015).
I. The Parties’ Arguments and Evidence
A. Petitioner’s Arguments and Evidence
In support of its motion for summary judgment, Petitioner submitted the
Declarations of its owner Lisa Erickson, and of its attorney Michael Atkins, including
exhibits.
Ms. Erickson attests that Petitioner has continuously used its mark MIGRAINE
MAGICK in United States commerce in connection with “Dietary supplements;
Herbal supplements; Liquid herbal supplements; Mineral nutritional supplements;
Natural herbal supplements,” by listing and selling them through its website as well

supplements; Natural herbal supplements,” in International Class 5, claiming dates of first
use anywhere and in commerce of Jan. 6, 2014.
3 1 TTABVUE 3.
4 4 TTABVUE 4.
Cancellation No. 92076664

3
as through Facebook, YouTube, Pinterest, Instagram and TikTok, with sales at least
as early as December 13, 2014; and that by the March 30, 2020 filing date of
Respondent’s underlying application, Petitioner had sold approximately $100,000
worth of its MIGRAINE MAGICK products to customers in the United States.5
The exhibits introduced by Ms. Erickson include (1) copies of customer sales
receipts created and maintained in the ordinary course of business showing sales on
December 13, 2014, February 28, 2017 and March 21, 2019;6 and (2) screenshots of
Petitioner’s website.7
Mr. Atkins’ declaration introduces (1) copies of Petitioner’s interrogatories to
Respondent and Respondent’s answers thereto;8 (2) copies of Petitioner’s requests for
admission and Respondent’s responses thereto;9 (3) a printout from the USPTO’s
Trademark Electronic Search System (TESS) database of Petitioner’s use-based
application Serial No. 90378823;10 (4) a printout from TESS of the Examining
Attorney’s Office Action refusing registration to Petitioner based on a likelihood of
confusion with Respondent’s registration.11

5 Erickson Decl., 7 TTABVUE 3.
6 Id. at 7-9.
7 Id. at 11-15.
8 8 TTABVUE 8-13.
9 Id. at 15-58.
10 Id. at 69-75. The declaration also introduced printouts of Petitioner’s two unpleaded
applications. The Board has not considered this evidence. A plaintiff may not rely on an
unpleaded claim. See, e.g., Omega SA (Omega AG) (Omega Ltd.) v. Alpha Phi Omega, 118
USPQ2d 1289, 1291 n.2 (TTAB 2016) (no consideration given to applicant’s unpleaded prior
registration defense in connection with motion for summary judgment).
11 8 TTABVUE at 94-111. Mr. Atkins also attached copies of Respondent’s application and
registration. It was unnecessary to include these documents, as the entire file of Respondent’s
Cancellation No. 92076664

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Petitioner argues there is no genuine dispute of material fact that (1) it has
entitlement to a statutory cause of action, formerly referred to as standing (see the
discussion below); (2) it has priority; (3) the parties’ goods are identical; (4) the parties’
marks are similar; (5) the marks have the same connotation and commercial
impression; (6) the parties’ goods are offered in identical channels of trade to identical
classes of consumers; and (7) confusion is likely.12
B. Respondent’s Arguments
Respondent filed a response entitled, “Respondent’s Opposition to Petitioner’s
Motion for Summary Judgement,” consisting entirely of the following arguments:
1. Petioners [sic] motion is premature and should be denied. It is
premature in that it is based on facts that only came into existence 10
days prior to Petitioners motion for summary judgement and
Respondent has had no opportunity for discovery.

A trial court should not grant summary judgement when Petitioner [sic]
has not completed discovery. Respondent is entitled to discovery and a
fair trial. Respondent cannot effectively oppose Motion for Summary
Judgement without discovery.

Respondent delivered initial requests for discovery on Petitioner July 2,
2021. Petitioner has not responded to requests for discovery.

2. Petitioners [sic] claim that there is no genuine dispute to any material
fact, is false. Respondent provided evidence to Petitioner within its
discovery responses showing lack of likliehood [sic] and confusion and
that products are not same and similar.

registration is already of record pursuant to Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b).
See Cold War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352, 92 USPQ2d 1626,
1628 (Fed. Cir. 2009) (entire file of subject registration, including any evidence made of record
during prosecution of underlying application, is part of record in cancellation proceeding
without any action of parties).
12 6 TTABVUE 10-14.
Cancellation No. 92076664

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Petitioner has also provided conflicting first dates of use in its own
discovery requests which Respondent has requested additional evidence
of such date in discovery served on Petitioner July 2, 2021.

Conclusion

For these reasons, this court should deny Petitioners Motion for
Summary Judgement and further compel Petitioner to respond to
discovery.13

II. Respondent’s Request for Discovery.
To the extent Respondent believed that it could not effectively oppose
Petitioner’s motion without first taking discovery, it was incumbent on
Respondent to file a motion for additional discovery under Fed. R. Civ. P. 56(d) in
response to Petitioner’s motion. Paris Glove of Canada Ltd. v. SBC/Sporto Corp.,
84 USPQ2d 1856, 1860 (TTAB 2007) (incumbent upon non-movant to file Rule
56[d] motion if it believed it needed discovery to respond to summary judgment
motion). A motion for discovery must be supported by an affidavit or declaration
showing that the nonmoving party cannot, for reasons stated therein, present
facts essential to justify its opposition to the motion. See Fed. R. Civ. P. 56(d);
TBMP § 528.06 (2021). The affidavit or declaration must identify the specific facts
that discovery would reveal, and explain why those facts would preclude summary
judgment. Keebler Co. v. Murray Bakery Prods., 866 F.2d 1386, 9 USPQ2d 1736,
1739 (Fed. Cir. 1989) (“[T]he Rule requires that each request for discovery be
adequately supported by a showing of need”).

13 10 TTABVUE 2-3.
Cancellation No. 92076664

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Here, Respondent’s response to the motion is not supported by an affidavit or
declaration and Respondent has failed to identify any specific facts that discovery
would uncover that would preclude summary judgment, particularly in light of
Respondent’s own answer, admissions and interrogatory responses. Thus, the
Board cannot construe the response as a motion for discovery under Rule 56(d).
See Sweats Fashions Inc. v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793,
1799 (Fed. Cir. 1987) (mere assertion in brief that discovery is necessary is
insufficient); see also Bad Boys Bail Bonds, Inc. v. Yowell, 115 USPQ2d 1925, 1930
(TTAB 2015) (motion for Rule 56(d) discovery denied as moot because party
responded to summary judgment motion on its merits); Nature’s Way Prods. Inc.
v. Nature’s Herbs Inc., 9 USPQ2d 2077, 2081 (TTAB 1989) (Rule 56[d] motion, to
extent it could be construed as such, was not supported by required affidavit); J.I.
Case Co. v. F.L. Indus., Inc., 229 USPQ 697, 701 (TTAB 1986) (statement by
applicant of need to take discovery on validity of assignment was unsupported
speculation); see also TBMP § 528.06 (request for discovery filed in combination
with response on merits of summary judgment motion will ordinarily be deemed
moot).
III. Standard for Summary Judgment
Summary judgment is an appropriate method of disposing of cases in which there
are no genuine disputes as to any material facts, allowing the case to be resolved as
a matter of law. See Fed. R. Civ. P. 56(a). All evidence must be viewed in a light
favorable to the non-movant, in this case Respondent, and all justifiable inferences
Cancellation No. 92076664

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are to be drawn in the non-movant’s favor. Lloyd’s Food Prods., Inc. v. Eli’s, Inc., 987
F.2d 766, 25 USPQ2d 2027, 2029 (Fed. Cir. 1993); Opryland USA Inc. v. Great Am.
Music Show, Inc., 970 F.2d 847, 23 USPQ2d 1471, 1472 (Fed. Cir. 1992). In deciding
a summary judgment motion, the Board may not resolve disputes of material fact; it
may only ascertain whether such disputes exist. Lloyd’s Food Prods., 25 USPQ2d at
2029; Olde Tyme Foods, Inc. v. Roundy’s, Inc., 961 F.2d 200, 22 USPQ2d 1542, 1544
(Fed. Cir. 1992). When the movant sufficiently demonstrates that there is no genuine
dispute of material fact, and that it is entitled to judgment as a matter of law, the
burden shifts to the non-movant to demonstrate the existence of specific genuinely
disputed facts that must be resolved at trial. Freki Corp. N.V. v. Pinnacle Entm’t, Inc.,
126 USPQ2d 1697, 1700 (TTAB 2018); Enbridge, Inc. v. Excelerate Energy L.P., 92
USPQ2d 1537, 1540 (TTAB 2009). The non-movant may not rest on the mere
allegations of its pleadings and assertions of counsel, but must designate specific
portions of the record or produce additional evidence showing the existence of a
genuine dispute as to a material fact for trial. See Fed. R. Civ. P. 56(c); Celotex Corp.
v. Catrett, 477 U.S. 317, 324 (1986); Freki Corp., 126 USPQ2d at 1700.
As the party moving for summary judgment on its Section 2(d) claim based on
common law rights in its pleaded mark, Petitioner must establish that there is no
genuine dispute that: (1) it has an entitlement to a statutory cause of action; (2) it is
the prior user of its pleaded mark; and (3) contemporaneous use of the parties’
respective marks on their respective goods would be likely to cause confusion or
mistake or deceive consumers. See Fram Trak Indus., Inc. v. WireTracks LLC, 77
Cancellation No. 92076664

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USPQ2d 2000, 2004 (TTAB 2006); Hornblower & Weeks, Inc. v. Hornblower & Weeks,
Inc., 60 USPQ2d 1733, 1735 (TTAB 2001).
IV. Analysis
A. Petitioner’s Entitlement to a Statutory Cause of Action
Entitlement to a statutory cause of action must be established by the plaintiff in
every inter partes proceeding.14 Australian Therapeutic Supplies Pty. Ltd. v. Naked
TM, LLC, 965 F.3d 1370, 2020 USPQ2d 10837 at *3 (Fed. Cir. 2020) (citing Lexmark
Int’l, Inc. v. Static Control Components, Inc., 572 U.S. 118, 125-26 (2014)). To
establish entitlement to a statutory cause of action under Sections 13 and 14 of the
Trademark Act, 15 U.S.C. §§ 1063 and 1064, a plaintiff must demonstrate that
cancellation of the registration is within the zone of interests protected by the statute
and that plaintiff has a reasonable belief of damage proximately caused by continued
registration of the mark. Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 2020 USPQ2d
11277 at *6-7 (Fed. Cir. 2020), cert. denied, __ S. Ct. __ (2021), 210 L. Ed. 2d 833 (U.S.
2021); see also Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111
USPQ2d 1058 (Fed. Cir. 2014); Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d
1356, 101 USPQ2d 1713, 1727 (Fed. Cir. 2012).
Petitioner has established the absence of a genuine dispute as to its entitlement
to a statutory cause of action through the declaration and related exhibits of its owner

14 Board decisions have previously analyzed the requirements of Sections 13 and 14 of the
Trademark Act, 15 U.S.C. §§ 1063-64, under the rubric of “standing.” Despite the change in
nomenclature, our prior decisions and those of the Court of Appeals for the Federal Circuit
interpreting Sections 13 and 14 remain applicable. See Spanishtown Enters., Inc. v. Transcend
Res., Inc., 2020 USPQ2d 11388 at *2 (TTAB 2020).

Cancellation No. 92076664

9
Ms. Erickson, who attests that Petitioner has sold and continues to sell dietary
supplements under Petitioner’s MIGRAINE MAGICK mark and that Respondent’s
registered mark is likely to cause confusion with Petitioner’s prior use of its mark.
See DeVivo v. Ortiz, 2020 USPQ2d 10153, *2 (TTAB 2020) (cleaned up) (“A claim of
likelihood of confusion that is not wholly without merit, including prior use of a
confusingly similar mark, may be sufficient to establish a reasonable basis for a belief
that one is damaged.”).
In addition, Petitioner has submitted the declaration of its attorney, Mr. Atkins,
which introduces exhibits including (1) a printout from the USPTO’s TESS database
of petitioner's pleaded application Serial No. 90378823 for the MIGRAINE MAGICK
mark;15 and (2) the Examining Attorney’s Office Action refusing Petitioner’s
application under Trademark Act § 2(d) based on likelihood of confusion with
Respondent’s registered MIGRAINE MAGIC mark.16 See Fiat Grp. Autos. S.p.A. v.
ISM, Inc., 94 USPQ2d 1111, 1112 (TTAB 2010) (“The filing of [petitioner’s]
application and the Office’s action taken in regard to that application provides
[petitioner] with a basis for pleading its . . . [entitlement to a statutory cause of
action]”).
Accordingly, there is no genuine dispute that Petitioner has established its
entitlement to a statutory cause of action, i.e., its real interest in cancelling
Respondent’s registration and reasonable belief that Respondent’s registration is

15 8 TTABVUE 69-75.
16 Id. at 95-108.
Cancellation No. 92076664

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causing Petitioner damage. See Empresa Cubana Del Tabaco, 111 USPQ2d at 1062;
Saddlesprings, Inc. v. Mad Croc Brands, Inc., 104 USPQ2d 1948, 1950 (TTAB 2012)
(standing adequately alleged by allegation that petitioner's intent-to-use application
has been refused based on respondent's registrations); ShutEmDown Sports Inc. v.
Lacy, 102 USPQ2d 1036, 1041 (TTAB 2012).
B. Likelihood of Confusion
Consideration of likelihood of confusion in the context of summary judgment is
based on an analysis of all of the undisputed facts in evidence that are relevant to the
thirteen evidentiary factors set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 567 (CCPA 1973) (DuPont). Any of the DuPont factors “may
from case to case play a dominant role.” Id. Not all of the DuPont factors are relevant
in every case and only those factors for which there is evidence in the record must be
considered. Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1801 (Fed.
Cir. 2018). Therefore, we look to whether there are genuine disputes with respect to
any of the DuPont factors which would be material to a decision on the merits.17
Turning first to the issue of priority, Petitioner must show that there is no genuine
dispute that it has established priority through prior common law use of its mark in
the United States as a trademark, or prior use analogous to trademark use. See
Giersch v. Scripps Networks, Inc., 90 USPQ2d 1020, 1023 (TTAB 2009) (in absence of

17 To the extent there are other relevant factors, in the absence of any evidence, the Board
treats them as neutral. Lebanon Seaboard Corp. v. R&R Turf Supply Inc., 101 USPQ2d 1826,
1831 (TTAB 2012) (treating certain DuPont factors as neutral when no evidence provided by
the parties).
Cancellation No. 92076664

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pleaded registration, petitioner must show prior common law use); see also T.A.B.
Sys. v. PacTel Teletrac, 77 F.3d 1372, 37 USPQ2d 1879, 1881 (Fed. Cir. 1996). Oral
testimony of a witness may be sufficient to prove first use of a party’s mark when it
is based on personal knowledge of the facts and the testimony is clear, convincing,
and has not been contradicted. See Kohler Co. v. Baldwin Hardware Corp., 82
USPQ2d 1100, 1108 (TTAB 2007) (oral testimony, if “sufficiently probative,” may be
sufficient to prove priority); Nat’l Blank Book Co. v. Leather Crafted Prods., Inc., 218
USPQ 827, 828 (TTAB 1983); Liqwacon Corp. v. Browning-Ferris Indus., Inc., 203
USPQ 305, 316 (TTAB 1979) (oral testimony may be sufficient to establish both prior
use and continuous use when testimony is proffered by witness with knowledge of
facts and testimony is clear, convincing, consistent, and sufficiently circumstantial to
convince the Board of its probative value).
In her declaration, Ms. Erickson identifies herself as Petitioner’s owner and
attests to her personal knowledge of the facts. She further attests that Petitioner has
used the mark MIGRAINE MAGICK for sales in the United States for “Dietary
supplements; Herbal supplements; Liquid herbal supplements; Mineral nutritional
supplements; Natural herbal supplements” since “at least as early as January 5,
2014;” she provides sales receipts for three customers in 2014, 2017 and 2019; and
she describes the materials included with the declaration.18

18 7 TTABVUE 3.
Cancellation No. 92076664

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By his declaration, Mr. Atkins provides Respondent’s July 2, 2021 signed
responses to requests for admission19 and interrogatories including the following:
Request No. 1: Admit that Health Restored’s earliest priority date in this
proceeding is March 30, 2020.

Answer: __X___ Admit _____ Deny

Request No. 30: Admit that you have no evidence that Exhibit C is not a true and
correct invoice that shows the sale of products bearing Potion Enterprises’
MIGRAINE MAGICK trademark on December 13, 2014.

Answer: __X___ Admit _____ Deny

Request No. 32: Admit that you have no evidence that Exhibit D is not a true and
correct invoice that shows the sale of products bearing Potion Enterprises’
MIGRAINE MAGICK trademark on February 28, 2017.

Answer: __X___ Admit _____ Deny

Request No. 34: Admit that you have no evidence that Exhibit E is not a true and
correct invoice that shows the sale of products bearing Potion Enterprises’
MIGRAINE MAGICK trademark on March 21, 2019.

Answer: _X____ Admit _____ Deny

Request No. 40: Admit that Health Restored’s MIGRAINE MAGIC trademark
looks and sounds similar to Potion Enterprises’ MIGRAINE MAGICK trademark.

Answer: __X___ Admit _____ Deny

By its admissions, Respondent admits that its earliest priority date is March 30,
2020, that Petitioner’s invoices showing sales on December 13, 2014, February 28,

19 For purposes of summary judgment only, admissions, interrogatory answers or other
materials may be submitted in support of, or in opposition to, such a motion. Fed. R. Civ. P.
56(c)(1)(A).
Cancellation No. 92076664

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2018 and March 21, 2019 are “true and correct,” and that the parties’ marks are
similar.20
By its signed answer to Interrogatory No. 1, Respondent states,
Petitioner admits through its own request for admission Request No. 33
that Potion Enterprises did not introduce products to consumers under
the mark MIGRAINE MAGICK until March of 2019, exactly 1 year
before Respondent.21

By its signed answer to Interrogatory No. 3, Respondent states that the date it
first sold dietary supplements bearing the MIGRAINE MAGIC mark in the United
States is July 19, 2020.22 Respondent also admits by its answer that it first filed for
its trademark on March 31, 2020 and that its Statement of Use “is supported by the
date” July 19, 2020.23
Taken in combination with the supporting materials, we find Petitioner’s
testimony sufficient to establish use of its mark in commerce prior to the filing date
of Respondent’s underlying application for registration and Respondent’s claimed
date of first use in commerce. See, e.g., Liqwacon Corp., 203 USPQ at 316 (finding
witness testimony clear and convincing and probity of documents dependent on
testimony). See also Media Online Inc. v. El Clasificado Inc., 88 USPQ2d 1285, 1288

20 8 TTABVUE 37-
21 8 TTABVUE 11.
22 Id. at 8 and 11.
23 4 TTABVUE 4. July 19, 2020 is Respondent’s claimed date of first use in commerce.
Cancellation No. 92076664

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(TTAB 2008) (respondent may rely on filing date of registration at issue as
constructive date of first use).24
Regarding the first DuPont factor, Petitioner’s MIGRAINE MAGICK Mark and
Respondent’s MIGRAINE MAGIC mark are similar in appearance and sound. By its
response to Request for Admission No. 40, shown above, Respondent admits that the
marks are similar in sight and sound. Moreover, Respondent has not submitted any
evidence to raise a genuine dispute regarding any potential differences in the
meaning or overall commercial impression of the parties’ respective marks.
Respondent argues that the “products” are not the same or similar.25 Regarding
this second DuPont factor, we must compare the goods identified in the involved
registration to those that Petitioner offers under its mark. See Hewlett-Packard Co.
v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002).
Respondent’s goods are identified in its registration as dietary supplements. By its
signed answer to Interrogatory No. 6, Respondent confirms that both parties’ goods
are dietary supplements and “are promoted to the same group of consumers.”26
Petitioner testified that it has used its mark to identify, inter alia dietary
supplements27 and provided a copy of its application which identifies the goods in
part as dietary supplements.28 Thus, the goods are in part legally identical.

24 The Board notes that Petitioner’s documentary exhibits of use alone are insufficient to
establish prior use in commerce.
25 10 TTABVUE 2.
26 8 TTABVUE 12.
27 Erickson Decl. ¶2 (7 TTABVUE 3).
28 8 TTABVUE 69.
Cancellation No. 92076664

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With respect to the third DuPont factor, the channels of trade, because there is no
limitation in the involved registration to the channels of trade or class of purchasers,
Respondent is presumed to offer its dietary supplements in all normal channels of
trade and to all prospective purchasers, including the channels of trade and classes
of consumers to whom Petitioner offers its dietary supplements. Coach Servs., Inc.,
101 USPQ2d at 1722; see also Packard Press, Inc. v. Hewlett-Packard Co., 227 F.3d
1352, 1361 (Fed. Cir. 2000) (“When the registration does not contain limitations
describing a particular channel of trade or class of customer, the goods or services are
assumed to travel in all normal channels of trade.”). In addition, because the goods
are legally identical, we must presume that the channels of trade and classes of
consumers are the same. See In re Yawata Iron & Steel Co., Ltd., 403 F.2d 752, 159
USPQ 721, 723 (CCPA 1968) (where there are legally identical goods, the channels of
trade and classes of purchasers are considered to be the same); Am. Lebanese Syrian
Associated Charities, Inc. v. Child Health Research Inst., 101 USPQ2d 1022, 1028
(TTAB 2011); see also In re Viterra, Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed.
Cir. 2012) (even though there was no evidence regarding channels of trade and classes
of consumers, Board was entitled to rely on this legal presumption in determining
likelihood of confusion).
Here, the declaration testimony of Petitioner’s witnesses and corresponding
exhibits showing use of Petitioner’s mark on and in connection with its goods
demonstrate Petitioner’s common law use of the mark MIGRAINE MAGICK in
connection with dietary supplements. Thus, we find that that Petitioner has carried
Cancellation No. 92076664

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its burden to establish that there is no genuine dispute that its pleaded mark is
similar to the subject mark in sight, sound, and commercial impression, that the
marks are used on or in connection with the same type of goods, namely, dietary
supplements, and that the goods travel in the same normal channels of trade to some
of the same classes of prospective purchasers.
Viewing the foregoing in the light most favorable to Respondent as the non-moving
party, the Board finds Petitioner, as the party moving for summary judgment, has
carried its burden of demonstrating that there are no genuine disputes of material
fact regarding its priority of use and likelihood of confusion.
The burden of production thus shifts to Respondent to demonstrate that a genuine
dispute exists for trial. See Celotex Corp. v. Catrett, 477 U.S. at 331 (Brennan, J.,
dissenting). Respondent, as the non-moving party, must produce countering evidence,
as provided in Fed. R. Civ. P. 56(c)(1), showing that there is a factual dispute for trial
regarding any of the DuPont factors relevant to this case. See Enbridge, Inc. v.
Excelerate Energy L.P., 92 USPQ2d 1537, 1540 (TTAB 2009) (nonmovant must proffer
countering evidence to show existence of genuine factual dispute for trial).
Despite Respondent’s statement that it is entitled to discovery, and unsupported
claim that “Petitioner has also provided conflicting dates of first use,”29 Respondent
has failed to produce any evidence in response to the motion for summary judgment
that would, at a minimum, challenge the sufficiency of the evidence submitted in
connection with Petitioner’s motion or raise a genuine dispute of material fact

29 10 TTABVUE 2.
Cancellation No. 92076664

17
regarding the likelihood of confusion claim. Respondent merely asserts that genuine
disputes of material fact remain because it has not completed discovery and asks the
Board to deny the motion for summary judgment, which the Board construes as
argument on the merits of Petitioner’s motion. As pointed out above, Respondent
must designate specific portions of the record or produce additional evidence showing
the existence of a genuine dispute as to a material fact for trial. However, Respondent
failed to do so.
C. Conclusion
Petitioner has carried its burden of proof in establishing that there are no genuine
disputes of material fact regarding establishment to a statutory cause of action,
priority, and likelihood of confusion. Petitioner therefore is entitled to judgment as a
matter of law on its Section 2(d) claim.
V. Decision
In view of the foregoing, we find that, based on the record herein, no genuine
disputes of material fact remain for trial regarding Petitioner’s likelihood of confusion
claim. Accordingly, Petitioner’s motion for summary judgment on the claim of
likelihood of confusion is granted. The petition to cancel is granted, and
Registration No. 6218527 will be cancelled in due course.