Cottee Dairy Products Pty Ltd.v.U.S. Foods & Pharma-ceuticals, Inc.

Trademark Trial and Appeal Board

Aug 29, 2003

No. 92030920 (T.T.A.B. Aug. 29, 2003)

Mailed:8/29/2003
Paper No. 26
RFC
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
Cottee Dairy Products Pty Limited
v.
U.S. Foods & Pharmaceuticals, Inc.
_____
Cancellation No. 30,920
_____
Julie B. Seyler of Abelman Frayne & Schwab for Cottee Dairy
Products Pty Limited.
Jordana Thomadsen of Quarles & Brady LLP for U.S. Foods &
Pharmaceuticals, Inc.
_____
Before Cissel, Hairston and Bucher, Administrative Trademark
Judges.
Opinion by Cissel, Administrative Trademark Judge:
On July 16, 1996, Reg. No. 1,986,849 issued to U.S.
Foods & Pharmaceuticals, Inc., a Wisconsin corporation,
registering the mark DARI CAL on the Principal Register for
“nutritional milk mineral supplements, namely a purified
powdered form of milk minerals extracted from whey permeate
and/or whey and de-lactosed whey permeate,” in Class 5. The
registration was based on the claim of use of the mark in
commerce since April 1, 1994. The registration includes a
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Cancellation No. 30,920
2
disclaimer of the exclusive right to use the word “dairy”
apart from the mark as shown.
On August 10, 2000, a petition to cancel this
registration was filed by Cottee Dairy Products Pty Limited,
an Australian corporation doing business in New South Wales.
As grounds for cancellation, petitioner alleged that it
owned the trademarks DAIRYCAL and DAIRYCAL MILK CALCIUM for
“pharmaceutical substances; infants’ and invalids’ foods;
food ingredients in this class including proteins,” in Class
5; and “vegetable and meat extracts; milk and other dairy
products; food supplements; preserves, pickles, sauces and
spices,” in Class 29; that it had applied to register these
marks in the United States, but that registration had been
refused based on the registration it seeks to cancel; that
the owner of that registration had abandoned its use of the
mark in connection with the products specified in the
application; and that petitioner is, and will continue to
be, damaged by the existence of this registration.
Respondent’s answer denied the essential allegations
set forth in the petition to cancel.
A trial was conducted in accordance with the Trademark
Rules of Practice. Petitioner submitted a brief on appeal,
respondent filed its brief, and petitioner filed a reply
brief, but an oral hearing before the Board was not
requested.
Cancellation No. 30,920
3
The registration was canceled under the provisions of
Section 8 of the Act on April 19, 2003, after all the
evidence and testimony, as well as the briefs of the
parties, had been submitted. In view of the fact that
petitioner has not filed a motion to withdraw the
cancellation, we have proceeded to decide the proceeding on
its merits.
The record includes the registration sought to be
canceled, respondent’s responses to petitioner’s
Interrogatories Number 6 and 7, and two depositions, with
exhibits, of respondent’s president, Rajan Vembu.
During its testimony period, apparently in view of the
fact that petitioner is located in Australia, respondent
submitted a Notice of Deposition on Written Questions to
petitioner. The questions related to petitioner’s interest
in the mark and whether petitioner could establish that it
had a reasonable belief that it would be damaged by
respondent’s continued registration of the mark. Petitioner
objected to all forty-nine of respondent’s questions on the
basis of relevance, asserting that evidence concerning
petitioner’s business and its use of its mark was not
relevant to the issue of whether respondent had abandoned
use of the registered mark.
After its testimony period had closed, petitioner moved
to reopen its testimony period for the purpose of making of
Cancellation No. 30,920
4
record the file histories of the applications of which
petitioner had asserted ownership in the petition to cancel.
Petitioner argued that it inadvertently had failed to make
them of record during its testimony period, but that the
Board should allow their admission at that time. The motion
was denied by the Board because petitioner had not
established that its failure constituted excusable neglect.
As noted above, petitioner had pleaded that its two
applications had been refused registration based on the
existence of the registration it seeks to cancel, and that
respondent had abandoned use of its registered mark. The
first allegation satisfied the requirement to plead standing
and the second allegation satisfied the requirement to plead
a ground upon which cancellation could be granted.
As respondent points out, however, although the record
contains substantial testimony and evidence directed to the
issue of abandonment, petitioner never made of record the
applications which were the pleaded basis for its claim that
it possessed standing, nor did petitioner take any testimony
or introduce any other evidence which would prove that
petitioner has standing to bring this cancellation
proceeding. The belated effort to get these applications
into the record having failed, petitioner has not
established its standing, so the petition to cancel cannot
be granted.
Cancellation No. 30,920
5
Petitioner argues that even though its pleaded
applications were not timely made of record, the Board
should consider petitioner to have established its standing
and should proceed to the resolution of this action on the
merits of petitioner’s claim of abandonment. Petitioner,
however, confuses whether it properly pleaded its standing
with whether it proved its standing. As noted above,
petitioner’s pleading was a sufficient allegation of
standing. It stated petitioner’s belief that it would be
damaged by the continued existence of respondent’s
registration and a reasonable basis for that belief, in that
petitioner’s applications had been refused registration
based on the registration. Petitioner did not introduce any
evidence or testimony, however, to establish a factual basis
for its allegations. It is not enough merely to plead the
facts which would constitute standing. Petitioner was
obligated to prove the facts that it alleged. Lipton
Industries, Inc. v. Ralston Purina Company, 670 F.2d 1024,
213 USPQ 185 (CCPA 1982).
Petitioner argues that we should impute standing to it
because [“r]espondent consistently acted as if Petitioner
had a real interest in the proceeding” (brief, p. 5) by,
among other things, proceeding with the trial depositions of
Mr. Vembu without challenging petitioner’s standing.
Additionally, petitioner argues that its standing is
Cancellation No. 30,920
6
established by the testimony of Mr. Vembu to the effect that
when petitioner’s representatives visited respondent in
Wisconsin, they sought a business relationship with
respondent and offered to purchase respondent’s trademark.
As respondent points out, petitioner cites no legal
precedent for the notion that respondent’s actions in
continuing to defend its registration somehow constitute a
concession that the petitioner had established the facts
upon which its claim of standing is based. Furthermore,
neither a legal basis nor a rational one is provided for the
argument that by making an offer to buy respondent’s
trademark, petitioner could somehow vest itself with
standing to cancel the registration of the mark. As
respondent points out, if this were the rule, any person or
entity could establish its standing to cancel any
registration by simply offering to purchase the mark at any
time prior to filing the Petition to Cancel. Such a rule
would allow any entity, no matter whether or not it actually
had a reasonable basis for believing it would be damaged by
the continued existence of a registration, to slip past the
threshold issue of standing easily without meeting the legal
requirements of Section 14 of the Lanham Act.
In view of the fact that petitioner has not proved the
facts upon which its allegation of standing is based,
petitioner cannot prevail in this cancellation proceeding.
Cancellation No. 30,920
7
In an effort to provide a complete ruling on all the matters
before us, however, we will address briefly the issue of
abandonment which would have been before us if petitioner
had proved its standing.
Simply put, the record demonstrates that although
respondent has maintained the hope and desire to have the
product identified in the registration produced and to
market it under the registered mark to customers throughout
the world, respondent has never sold any product bearing the
mark in transactions that could accurately be characterized
as commercial transactions. While it is true that over the
years, several different batches of product were produced
and provided in containers bearing the registered mark to
potential customers and others for testing and evaluation,
there have been no commercial sales of goods bearing the
mark. Even the specimens of use provided with the
application that matured into the challenged registration
are plainly labeled “Product Sample For Analysis Only.” Mr.
Vembu’s testimony is clear that although respondent wanted
to have the product produced and to market it on a
commercial scale, for a number of reasons which he explains
in detail, this never happened.
Ordinarily, cases where abandonment is the central
issue involve an interruption or discontinuance of the use
of the mark. In the case at hand, however, we have no
Cancellation No. 30,920
8
evidence that the mark was ever used in a commercial
transaction, as opposed to a shipment of a sample for
evaluation, testing or “development.” Mr. Vembu testified
that several prospective purchasers expressed their
willingness to place orders, but that respondent was never
able to arrange for production on a commercial scale. The
parties to which samples of respondent’s product were
shipped usually paid only for the shipping expenses, but
even when they may have paid for the product itself, the
transaction was not in the ordinary course of commerce for
these products, to be used by the purchaser or resold to the
ultimate user, but rather the shipment was only a sample for
evaluation purposes. Even if the two sample shipments in
1995 could be construed as commercial transactions, such
shipments were never followed up with orders for commercial
quantities of product. “Trademark rights are not created by
sporadic, casual and nominal shipments of goods bearing a
mark. There must be a trade in the goods sold under the
mark or at least an active and public attempt to establish
such a trade.” Procter & Gamble Co. v. Johnson & Johnson
Inc., 205 USPQ 697, 715 (SDNY 1979).
When asked whether there has ever been any commercial
sale in the United States of products which incorporate the
mark, Mr. Vembu answered, “No, not yet, but soon will be.”
(May 23, 2002 Vembu deposition, p. 16).
Cancellation No. 30,920
9
In that respondent did not demonstrate any use of its
mark in commerce, much less that the years of non-use
constitute discontinuance of use with the intent to resume
use, if petitioner had established its standing to bring
this action, the record would have supported granting the
petition to cancel.
One additional issue needs to be discussed. In its
brief, respondent argued that on December 7, 2001,
petitioner voluntarily wound up its business and was placed
into liquidation. Submitted in support of this contention
were copies of what respondent asserts are the minutes of a
meeting of petitioner’s creditors which took place on
December 18, 2001. Also submitted was a copy of what is
purported to be the account and statement of the liquidator.
Respondent argued that these documents are records available
from the Australian Securities and Investments Commission,
and that as such, they constitute records of which the Board
may take judicial notice.
We decline to do so. These documents are not the type
of evidence of which we take judicial notice under Rule 201
of the Federal Rules of Evidence. Their validity is not
something we can readily verify, nor is it clear to us what
their significance under Australian law might be. Moreover,
their submission with respondent’s brief is not just
manifestly untimely, it is improper. Respondent did not
Cancellation No. 30,920
10
move to reopen its testimony period or otherwise move to
allow these materials to be made of record at this late
juncture. Accordingly, they have not been considered.
DECISION: Because the petitioner has not proved its
standing, the petition to cancel is dismissed.