Royal BodyCare, Inc.v.Miracle Minerals, Inc.

Trademark Trial and Appeal Board

Apr 19, 2001

No. 92030109 (T.T.A.B. Apr. 19, 2001)

United States Patent and Trademark Office
Trademark Trial and Appeal Board
2900 Crystal Drive
Arlington, VA 22202-3513
CEW
4/19/01 Cancellation No. 30,109
Royal BodyCare, Inc.
v.
Miracle Minerals, Inc.
Before Hohein, Hairston and Walters, Administrative
Trademark Judges.
By the Board:
This case comes up now on the motion of petitioner,
Royal BodyCare, Inc., for summary judgment. Petitioner
seeks to cancel respondent’s Registration No. 2,164,015 on
the Principal Register of the mark MAGICAL for “calcium and
magnesium dietary supplement,” in International Class 5.
Respondent’s registration issued June 9, 1998, based upon
an application filed May 27, 1997. Petitioner asserts that
there is no genuine issue of material fact that petitioner
has priority of use of its mark, MAGICAL, for “calcium and
magnesium dietary supplements,” over respondent’s
registered mark and that a likelihood of confusion exists.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Cancellation No. 30,109
2
Both parties have briefed the motion. Petitioner
submitted various exhibits in support of its motion.1
Respondent submitted an affidavit of its president, Roger
Gunderson, with exhibits, in opposition to the motion.
Petitioner contends in its motion that the parties’
marks and goods are identical; that, “in failing to admit
or deny the allegations contained within [petitioner’s]
Petition to Cancel U.S. Trademark Registration No.
2,164,015 and Petitioner’s First Requests for Admissions to
[respondent], the Registrant has admitted the allegations
contained therein”; and that, therefore, no genuine issues
of material fact exist. Respondent argues, inter alia,
that petitioner’s allegations are “unsupportable.”
A party is entitled to summary judgment when it has
demonstrated that there are no genuine issues as to any
material fact, and that it is entitled to judgment as a
matter of law. Fed. R. Civ. P. 56(c); See Celotex Corp. v.
Catrett, 477 U.S. 317, 106 S. Ct. 2548 (1986). A factual
dispute is genuine if, on the evidence of record, a
reasonable fact finder could resolve the matter in favor of
1 Those of petitioner’s exhibits that are not merely copies of papers
already filed in this case are not supported by a declaration or
affidavit and, thus, are of limited value. Also of limited value, is
the copy submitted by petitioner of respondent’s purported answers to
petitioner’s interrogatories because the document is not signed by
respondent.
Cancellation No. 30,109
3
the nonmoving party. See Opryland USA Inc. v. Great
American Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471
(Fed. Cir. 1992); and Old Tyme Foods Inc. v. Roundy’s Inc.,
961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir. 1992). The
evidence must be viewed in a light most favorable to the
nonmovant, and all justifiable inferences are to be drawn
in the nonmovant’s favor. Lloyd’s Food Products Inc. v.
Eli’s Inc., 987 F.2d 766, 25 USPQ2d 2027 (Fed. Cir. 1993);
and Opryland USA, supra.
We begin by noting that respondent is proceeding pro
se, through its president, in this case before the Board.
Regardless, both parties are required to follow the
appropriate procedures and rules of practice for a
cancellation proceeding before the Board.
Considering respondent’s answer to the petition to
cancel, we find that respondent has failed to clearly admit
or deny the salient allegations of the petition regarding
priority and likelihood of confusion. Rather, respondent
contends, essentially, that because its mark is registered,
respondent has “the legal right to the exclusive use of the
mark MAGICAL ….” To the extent that respondent believes
that its registration is immune to challenge by a prior
user of a confusingly similar mark, respondent is mistaken.
Respondent appears to misunderstand the nature of trademark
Cancellation No. 30,109
4
rights and the scope of protection afforded by a federal
registration.2
Because petitioner has not submitted with its motion
any evidence establishing its use of its mark, we must look
to the purported admissions made by respondent. Petitioner
submitted with its motion a copy of the requested
admissions sent to respondent along with evidence
establishing that the requested admissions were mailed on
July 18, 2000 and were received by respondent on July 21,
2000. Although petitioner expressly relies in its summary
judgment motion upon respondent’s failure to respond to the
requested admissions, respondent does not mention the
requested admissions in its response to petitioner’s
motion, nor does respondent ask for relief from its failure
to respond to the requested admissions.
Thus, we conclude that respondent did not respond to
petitioner’s requested admissions. The requested
admissions are deemed to be admitted by respondent since
respondent neither responded to petitioner’s request nor
2 Respondent asserts its reliance on the Act of 1881, which was
repealed by the Trademark Act of 1946, as amended, 15 U.S.C. 1051 et.
seq. Further, rights in a mark in the United States arise upon proper
use of that mark, under both common law and the Trademark Act of 1946.
See 15 U.S.C. 1051(a). Upon federal registration, the registered mark
has a constructive first use date of its application filing date. See
15 U.S.C. 1057(c). A registered mark is subject to cancellation on the
grounds of priority of use and likelihood of confusion within five
years from the date of registration. See 15 U.S.C. 1064.
Cancellation No. 30,109
5
objected thereto within thirty days after the date of
service of petitioner’s request for admissions. See FRCP
36(a) and Trademark Trial and Appeal Board Manual of
Procedure (TBMP), Section 411.01.
The facts deemed admitted by respondent include the
following relevant facts:
Respondent has used the mark MAGICAL on calcium
and magnesium dietary supplements;
Respondent’s first sale in interstate commerce of
such goods under the MAGICAL mark was May 21,
1997;
Petitioner uses the mark MAGICAL as a trademark
in interstate commerce on calcium and magnesium
dietary supplements; and
Petitioner’s first such use of its mark is prior
to respondent’s commencement of its use of the
mark MAGICAL in connection with the sale of its
product.
In view thereof, we find that petitioner and
respondent are using the identical mark, MAGICAL, in
connection with the identical goods, calcium and magnesium
dietary supplements; and that petitioner has priority of
use of the mark MAGICAL on these goods.
In conclusion, we find there are no genuine issues of
material fact regarding either petitioner’s priority of use
or that a likelihood of confusion exists between the
parties’ identical marks for identical goods. Petitioner’s
Cancellation No. 30,109
6
motion for summary judgment is granted and respondent’s
registration will be cancelled in due course.