Fouad Kallamniv.Asad A. Khan

Trademark Trial and Appeal Board

Feb 14, 2012

No. 92051344 (T.T.A.B. Feb. 14, 2012)

Goodman

Mailed: February 14, 2012

Cancellation No. 92051344

Fouad Kallamni

v.

Asad A. Khan

Before Seeherman, Ritchie & Wolfson, Administrative
Trademark Judges.

By the Board:

Asad A. Khan, (“respondent”), owns Registration
No. 3447536 for the mark OZO ENERGY DRINK, as shown below,

for “soft drinks, namely, energy drinks, cola drinks, fruit
flavored soft drinks, fruit juices, low calorie soft drinks”
in International Class 32. The registration issued on June
17, 2008, based on Section 44(e) of the Trademark Act.1
Fouad Kallamni (“petitioner”) filed a petition to cancel the
registration on priority and likelihood of confusion and

1 Priority was claimed under Section 44(d) based on an
application in Pakistan; the involved registration issued based
on a Community Trade Mark registration.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451 THIS OPINION IS
A PRECEDENT OF
THE TTAB
Cancellation No. 92051344
2
fraud grounds. In his answer, respondent denied the salient
allegations in the petition to cancel.
On July 27, 2011, the Board denied petitioner’s motion
for summary judgment on an unpleaded ground related to
Section 44, granting petitioner leave to amend the petition
to cancel to assert the Section 44 ground and affording
petitioner an opportunity to renew his motion for summary
judgment. Petitioner filed an amended petition to cancel on
August 10, 2011, asserting that respondent did not, at the
time his registration issued, have a bona fide and effective
industrial or commercial establishment in the European Union
to support a registration under Section 44(e), or own a
registration from any country which he could validly claim
as a country of origin. Petitioner further renewed his
motion for summary judgment on that basis. Respondent did
not file an answer to the amended petition to cancel.
However, respondent did file a cross-motion for summary
judgment on the Section 44 ground and a motion for summary
judgment on the fraud ground; we view these motions as a
general denial of the salient allegations set forth in the
amended petition to cancel, as respondent neither admits nor
concedes the grounds stated therein.2

2 Petitioner’s motion was filed on August 10, 2011; respondent’s
combined filing--response, cross-motion, and motion for summary
judgment--were filed September 3, 2011.
Cancellation No. 92051344
3
Petitioner’s evidence on his renewed motion for summary
judgment consists of respondent’s responses to petitioner’s
discovery requests; a TARR printout of petitioner’s pending
application Serial No. 77265347 for the mark OSO for “energy
drink”; a website printout from the Department of State
identifying members of the European Union; and the
declaration of petitioner’s counsel, Christopher J. Day,
with an accompanying exhibit. Petitioner also relies on
concessions and admissions made by respondent in
respondent’s June 18, 2011 first cross-motion for summary
judgment.
Respondent’s evidence on summary judgment consists of
his responses to petitioner’s discovery requests.
Respondent also relies on statements made in his June 18,
2011 first cross-motion for summary judgment and his July 4,
2011 reply in support of his June 18, 2011 first cross-
motion for summary judgment.
A party is entitled to summary judgment when it has
demonstrated that there is no genuine dispute as to any
material fact and that it is entitled to judgment as a
matter of law. Fed. R. Civ. P. 56(a). In reviewing a
motion for summary judgment, the evidentiary record and all
reasonable inferences to be drawn from the undisputed facts
must be viewed in the light most favorable to the nonmoving
Cancellation No. 92051344
4
party. Olde Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200,
22 USPQ2d 1542, 1544 (Fed. Cir. 1992).
Standing
We find that there is no genuine dispute as to
petitioner’s standing. Petitioner has shown, by a TARR
printout, that he filed application Serial No. 77265347 for
the mark OSO for “energy drink” in Class 32, and that this
application has been finally refused on the basis of
likelihood of confusion with respondent’s registration, and
is in suspended status pending the determination of this
proceeding. Thus, proof of petitioner’s direct commercial
interest has been established. See Life Zone Inc. v.
Middleman Group Inc., 87 USPQ2d 1953 (TTAB 2008) (standing
found based on opposer’s ownership of pending trademark
application and Office action which raised defendant’s
application as a potential bar to registration).
Section 44, Country of Origin
We turn to the parties’ cross-motions for summary
judgment on the Section 44(e) claim.
The parties agree that the material facts are not in
dispute with regard to this claim, but their opinions
diverge on the legal conclusions to be drawn from such
facts, which are questions of law. As the Board is faced
with a purely legal question, the issue is appropriate for
resolution by summary judgment.
Cancellation No. 92051344
5
The undisputed facts may be summarized as follows:
1. Respondent Asad A. Khan is a Pakistani national
and is domiciled in Pakistan. (Registration file;
Respondent’s response/cross-motion for summary
judgment.)3

2. Respondent filed the underlying application
which matured into the registration at issue in
this proceeding, claiming priority based on
Pakistan Application Number 231092, filed in
Pakistan on December 30, 2006. (Registration
file).

3. As part of the underlying application,
respondent submitted a copy of Community Trade
Mark Registration No. 005662887 issued by the
European Union on January 11, 2008, claiming this
registration was from respondent’s country of
origin. (Registration file).

4. Respondent’s U.S. registration issued under
Section 44(e) based on Community Trade Mark
Registration No. 005662887. (Registration file).

5. At the time of issuance of the U.S.
registration, the only foreign registration
respondent owned was Community Trade Mark
Registration No. 005662887, which respondent
claimed ownership of and submitted during
prosecution of his underlying U.S. application.
(Petitioner’s motion for summary judgment,
Exhibits D and H, respondent’s responses to
petitioner’s interrogatory request no. 2 and
document request no. 9; Registration file).

6. At the time of issuance of respondent’s U.S.
registration, respondent’s Pakistan Application
No. 231092 had not matured into a registration.
The Pakistan application is still pending.
(Petitioner’s motion for summary judgment, Exhibit
G, Declaration of Christopher Day and accompanying
exhibit; Respondent’s response/cross-motion for
summary judgment).

3 See Apple Computer v. TVNET.net Inc., 90 USPQ2d 1393 (TTAB
2007)(considering certain facts as undisputed based on discovery
responses and on concessions made in applicant’s brief in
response to motion for summary judgment).
Cancellation No. 92051344
6
7. Between January 2006 through April 2009, SC
Trade Venture & Projects SA (“SC Trade Venture”)
of Romania, acted on behalf of respondent in
regard to “product placement/finding of product
customers” [sic] in the Romanian market, and as a
“concentrate supplier” for the OZO ENERGY DRINK
brand in the European Union. (Petitioner’s motion
for summary judgment, Exhibits D and H,
respondent’s January 12, 2011 and May 5, 2011
discovery responses).4

8. SC Trade Venture performed these duties on
behalf of respondent and the OZO ENERGY DRINK
brand in Romania. (Petitioner’s motion for
summary judgment, Exhibits D and H, respondent’s
January 12, 2011 and May 5, 2011 discovery
responses).

9. SC Trade Venture was paid by respondent for the
work performed on respondent’s behalf including
office fees, marketing fees, and technical fees.
(Petitioner’s motion for summary judgment, Exhibit
D, respondent’s January 12, 2011 discovery
responses; Respondent’s response/cross-motion for
summary judgment).

10. Respondent engaged Value Added Marketing
Service (Pvt) Ltd. (VAMS), a marketing firm and
import/sourcer of energy concentrate located in
Pakistan, for value-added marketing services,
including website development, domain name
registration, advertising, consumer taste trial,
clearing of raw material, and for human resources.
(Petitioner’s motion for summary judgment,
Exhibits D and H, respondent’s January 12, 2011
and May 5, 2011 discovery responses; Respondent’s
response/cross-motion for summary judgment).

11. OZO Switzerland Ltd., located in Pakistan,
handles export documentation on behalf of
respondent. (Petitioner’s motion for summary
judgment, Exhibit D, respondent’s January 12, 2011
discovery responses).

12. Respondent shipped and sold OZO ENERGY DRINK
brand product to third-party distributors in
Romania and Bulgaria. (Petitioner’s motion for

4 Information regarding SC Trade Venture’s role as a concentrate
supplier was provided by an affidavit produced in discovery.
Cancellation No. 92051344
7
summary judgment, Exhibits D and H, respondent’s
January 12, 2011 and May 5, 2011 discovery
responses).

13. Romania and Bulgaria are members of the
European Union. (Petitioner’s motion for summary
judgment, Exhibit F).

14. All of the OZO ENERGY DRINK supplied to the
European Union was shipped from Pakistan. No
evidence was provided regarding the extent of the
sale of concentrate, if any, in the European Union
as a result of SC Trade Venture’s activity.
(Petitioner’s motion for summary judgment,
Exhibits D and H, respondent’s January 12, 2011
and May 5, 2011 discovery responses).

15. Pakistan is not a member of the European
Union. (Petitioner’s motion for summary judgment,
Exhibit F).

16. Respondent has not made use in commerce in
the United States of the mark identified in his
U.S. registration. (Petitioner’s motion for
summary judgment, Exhibit B, respondent’s January
29, 2011 discovery responses; Registration file).

Section 44(e) of the Trademark Act provides, inter
alia, that “a mark duly registered in the country of origin
of the foreign applicant may be registered on the principal
register if eligible, otherwise on the supplemental register
herein provided.” 15 U.S.C. § 1126(e). Section 44(c) of
the Trademark Act defines an applicant’s “country of origin”
as “the country in which he has a bona fide and effective
industrial or commercial establishment, or if he has not
such an establishment the country in which he is domiciled,
or if he has not a domicile in any of the countries
described in subsection (b) of this section, the country of
Cancellation No. 92051344
8
which he is a national.” 15 U.S.C. § 1126(c).5 See In re
Fisons Limited, 197 USPQ 888, 891 (TTAB 1978): Section
44(e) “must be read in conjunction with 44(c).”6 The
country of origin criteria under Section 44(c) involves a
“hierarchical alternative analysis.” In re International
Barrier Corp., 231 USPQ 310, 311 (TTAB 1986). “If the
person does not have a bona fide and effective industrial or
commercial establishment in any country with which the
United States has a treaty (or equivalent) relationship then
and only then does one of the other criteria, i.e. domicile
or nationality, come into play.” Id. at 311-312.
An establishment is defined as “‘the place where one is
permanently fixed for * * * business; * * * an institution
or place of business, with its fixtures and organized
staff.’” Ex Parte Blum, 138 USPQ 316, 317 (Comm’r 1963). A
mere office or storehouse is insufficient. Id. A mere

5 An applicant can have more than one “country of origin” so long
as it has a “bona fide and effective industrial or commercial
establishment” in said countries for purposes of Section 44(c).
In re ETA Systems Inc., 2 USPQ2d 1367 (TTAB 1987).
6 The parties do not dispute that respondent was eligible to file
for registration pursuant to Trademark Act Section 44. Section
44(b) provides that an entity is entitled to the benefits of
Section 44 if it is a “person whose country of origin is a party
to any convention or treaty relating to trademarks … to which the
United States is also a party… .” 15 U.S.C. § 1126(b). The
evidence shows that respondent is a Pakistani domiciliary and
national; Pakistan is a treaty nation of the Paris Convention.
However, respondent did not base his registration on a Pakistan
registration (and, indeed, it does not appear from the record
that a Pakistan registration has issued). Rather, respondent
based his registration on a Community Trade Mark registration
and, therefore, the question is whether any country in the
European Union qualifies as a “country of origin” of respondent.

Cancellation No. 92051344
9
postal address is also insufficient. In re International
Barrier Corp., 231 USPQ at 311 n.3. Factors to consider as
to whether a bona fide and effective industrial or
commercial establishment exists may include “the presence of
production facilities, business offices and personnel.” J.
Thomas McCarthy, McCarthy on Trademarks and Unfair
Competition § 19.31.40 (4th ed. June 2011) (discussing the
similar provision in Trademark Act Section 66 requiring a
“real and effective industrial or commercial establishment”
for registration and finding no legally significant
difference between these terms under Trademark Act Section
44 and Section 66); TMEP Section 1002.04 (8th Ed. October
2011).
Petitioner argues that none of respondent’s activities
as supported by the documentation produced by respondent in
discovery shows that he has a bona fide and effective
industrial or commercial establishment in the European
Community and that “mere product sales” in the European
Union, hiring a company (VAMS) to “develop ‘marketing
tools,’” and “contracting with an independent company” (SC
Trade Venture) located in the European Union do not
“establish a country of origin,” as all are insufficient for
this purpose. Petitioner also points out that on the date
the registration issued, respondent owned no other
registrations, and therefore had nothing with which to
Cancellation No. 92051344
10
support a Section 44(e) basis for issuance of a U.S.
registration.
In response, respondent argues that his relationship
with SC Trade Venture is “more of an Employer and a
Contractual Employee.” According to respondent, SC Trade
Venture “was employed . . . for the sole purpose of
marketing, developing OZO brand business and support on
technical matters for EU” [sic] and that “the Energy Drink
Buyers [in the EU] were sold product directly and payments
received directly in the Defendant’s Companies.” With
regard to respondent’s expenditures for value-added
marketing through VAMS, respondent argues that this company
developed “marketing concepts” “for target countries,”
particularly “marketing tools for EU countries” for which
respondent “paid [sic] significant amount of money.”
Respondent submits that his business transactions
demonstrate a bona fide and effective commercial
establishment in the European Union as evidenced by his
hiring of “personnel (SC Trade Venture), on contractual
basis, to expand business in EU and made significant sales
[in the EU] is a proof that the Defendant can claim EU as
country of origin in spite of being a Pakistan
national.”[sic] Respondent’s brief/cross-motion, attachment
1.
Cancellation No. 92051344
11
Although respondent likens his relationship with SC
Trade Venture to that of an “employer and contractual
employee,” there is no genuine dispute of material fact that
respondent has neither a permanently fixed place of business
with employees located in the European Union nor production
facilities in the European Union. Instead, respondent
conducted business through SC Trade Venture, an independent
entity in the European Union with which it had a contractual
relationship for product sourcing, business development,
and marketing. In fact, respondent himself has asserted
that “SC Trade Venture is neither a Licensee, nor a
Subsidiary, nor a Parent Company, nor a holding company, nor
a special instrument company created for royalty or tax
advantages.” Respondent’s brief/cross-motion, attachment 2,
Respondent’s reply to its first cross motion for summary
judgment, pp. 3-4. Thus, respondent’s own characterization
shows that SC Trade Venture is an independent entity,
separate from respondent.7 We find as a matter of law that
a bona fide and effective industrial or commercial
establishment cannot be created by respondent’s reliance on
the commercial facilities of an independent legal entity
which respondent retained to source his European Union

7 Respondent has argued that SC Trade Venture is an employee,
referencing the U.S. Internal Revenue Service definition of an
employee. Respondent’s argument is misplaced since the
definition of an employee applies to an individual, and SC Trade
Venture is a corporation.
Cancellation No. 92051344
12
business. See Ex parte Blum, 138 USPQ at 317 (country of
origin cannot be established by relying on the contractual
relationship with a licensee in another country where
trademark owner maintains no place of business there).
We also find as a matter of law that respondent’s
shipment of product from Pakistan to third-party
distributors in Romania and Bulgaria, did not create a bona
fide and effective commercial establishment in the European
Union. Lastly, we find as a matter of law that respondent’s
activities in Pakistan, including the creation of targeted
marketing for European Union countries, do not support a
claim of a bona fide and effective commercial establishment
in the European Union. With regard to the other provisions
of Section 44(c), there is no genuine dispute that
respondent is neither domiciled in nor a national of a
European Union country and does not meet the criteria for
registration on these bases.
Accordingly, we find, as a matter of law, that
respondent has not established the European Union as his
country of origin, and that respondent’s ownership of
Community Trade Mark Registration No. 005662887, issued by
the European Union, cannot serve as a basis for registration
under Section 44(e).
Accordingly, respondent has no issued foreign
registration on which he could rely at the time his U.S.
Cancellation No. 92051344
13
registration issued under Section 44(e) (and, indeed, still
does not have such a registration). In view thereof,
petitioner’s motion for summary judgment on the Section 44
ground is granted, and respondent’s cross-motion for summary
judgment on this ground is denied.
The petition to cancel is granted, and respondent’s
Registration No. 3447536 will be cancelled in due course.8

8 In view of our granting petitioner’s motion for summary
judgment on the Section 44 ground, resulting in cancellation of
the registration, we need not consider respondent’s motion for
summary judgment on the fraud ground, nor do we need to consider
the other grounds pleaded in the petition for cancellation.