Thomas Skoldv.Galderma Laboratories, Inc.

Trademark Trial and Appeal Board

Nov 8, 2012

No. 92052897 (T.T.A.B. Nov. 8, 2012)

Mailed: November 8, 2012

Cancellation No. 92052897

Thomas Sköld

v.

Galderma Laboratories, Inc.

Before Bucher, Zervas and Bergsman,
Administrative Trademark Judges.

By the Board:

Thomas Sköld (“petitioner”) seeks to cancel two
registrations of Galderma Laboratories, Inc. (“respondent”) for
the mark RESTORADERM for, “therapeutic skin care preparations
and treatment for skin disorders” in Class 5 (hereinafter “‘751
registration”);1 and “non-medicated skin care preparations” in
Class 3 (hereinafter “‘514 registration”).2 The amended
petition to cancel is based on allegations of likelihood of
confusion, priority of use and abandonment. As clarified by
the Board’s order of October 13, 2011, the claim of abandonment
is raised solely as to the ‘751 registration, while the claim

1 Registration No. 2985751, registered Aug. 16, 2005, claiming
dates of first use and first use in commerce of May 27, 2005.
Section 8 affidavit/declaration filed Mar. 28, 2012.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
Cancellation No. 92052897

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of priority and likelihood of confusion is raised as to both
registrations. By its answer, respondent has denied the
salient allegations of the complaint.
This case now comes up for consideration of respondent’s
motion, filed April 27, 2012, for partial summary judgment on
the ground that it has not abandoned use of its RESTORADERM
mark as to goods in Class 5 of the ‘751 registration. In its
motion for partial summary judgment, respondent argues that it
has never abandoned, or intended to abandon its mark; that
respondent and its predecessor CollaGenex, have actively and
continuously developed RESTORADERM-branded products,
culminating in the nationwide sale of its current products;
that respondent currently uses the mark on the goods identified
in the registration, and respondent or CollaGenex have never
ceased using the mark with intent not to resume use since the
filing of the application through to the present. In support
of its motion, respondent submitted the declarations of Lisa N.
Congleton, attorney for respondent; Cindy Kee, Group Product
Director of Galderma Laboratories, L.P.; Art Clapp, Director of
Business Development of Galderma Laboratories, L.P.; and Maud
Robert, Trademark Counsel and Trademark & Copyright Manager of
Galderma, S.A.; as well as numerous exhibits, including
dictionary definitions for the term “therapeutic,” such as “of
or relating to the treatment of disease or disorders by

2 Registration No. 3394514, registered Mar. 11, 2008, claiming
Cancellation No. 92052897

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remedial agents or methods;”3 or “administered or applied for
reasons of health; a therapeutic shampoo.”4
In response, petitioner argues that there is no evidence
supporting use as a “medicated” skin lotion, or that
respondent’s use is not in lawful use in commerce under the
Food, Drug and Cosmetic Act, 21 U.S.C. § 321, because
respondent has not sought regulatory approval for its product
as a “drug.” In essence, petitioner argues, a “therapeutic”
skin lotion is necessarily a “medicated” one, and respondent
cannot sell the same product as both a “therapeutic” one in
Class 5, and a “cosmetic” one in Class 3. Thus, petitioner
argues, respondent has abandoned its registration for goods in
Class 5, because it cannot show use of the mark for a
“medicine.”
Petitioner also requests that to the extent the Board
“does not accept” petitioner’s contention that respondent has
not supported an assertion of use for Class 5 goods, then the
issue of abandonment is “still in dispute,” and petitioner
seeks discovery relating to respondent’s motion for partial
summary judgment.

dates of first use and first use in commerce of Jun. 21, 2007.
3 Exhibit A to Declaration of Lisa N. Congleton, Free Merriam-
Webster Dictionary at www.merriam-
webster.com/dictionary/therapeutic accessed Apr. 23, 2012.
4 Exhibit B to Declaration of Lisa N. Congleton, Oxford
Dictionaries Online (U.S. English) at
www.oxfordictionaries.com/definition/therapeutic accessed Apr.
23, 2012.

Cancellation No. 92052897

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In reply, respondent argues that petitioner has not
challenged respondent’s evidence that it is using the mark in
commerce for skin care products for use by people suffering
with atopic dermatitis or eczema, or that its use of the mark
has been continuous, but rather that the mark is not
“medicated.” Respondent argues that the Office has
consistently found that a non-medicated product can be a
“therapy” or a “treatment” classified in Class 5, and that a
product may have “dual uses,” causing it to be classified in
both Class 3 and Class 5.
Motion for Rule 56(d) Discovery Denied
To the extent petitioner argues that it cannot respond
to respondent’s motion for partial summary judgment absent
further discovery, the motion is denied. See Trademark Rule
2.127(e)(1) and TBMP § 528.06 (3d ed. rev. 2012).
Petitioner responded to the motion on the merits, rather
than moving for discovery under Fed. R. Civ. P. 56(d), and
the Board finds the request for further discovery at this
juncture pointless. 5 See Ron Cauldwell Jewelry, Inc. v.

5 To the extent petitioner seeks to test the sufficiency of
respondent’s responses to requests for admission, or to compel
further discovery, the Board notes that petitioner did not file
such motions prior to the filing of the motion for partial
summary judgment. Petitioner should note that generally, if
there is an admission or a denial to a request for admission, the
Board will not find the response to be insufficient. Cf.
comments to Fed. R. Civ. P. 36(a)(4 – 6) regarding improper
responses which may be considered effective admissions. Further,
if a party that served a request for discovery receives a
response thereto which it believes to be inadequate, but fails to
file a motion to challenge the sufficiency of the response, it
Cancellation No. 92052897

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Clothestime Clothes, Inc., 63 USPQ2d 2009, 2012 n.8 (TTAB
2002) (motion for Rule 56 discovery denied where nonmovant
filed a response to the motion for summary judgment on the
merits).
Partial 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
party. Olde Tyme Foods Inc. v. Roundy's Inc., 961 F.2d 200,
22 USPQ2d 1542, 1544 (Fed. Cir. 1992).
A mark is deemed abandoned when its use has been
discontinued without intent to resume use. Nonuse in the
United States for a period of three consecutive years
establishes a prima facie case of abandonment. See 15 U.S.C. §
1127. A petitioner for cancellation of a registration on the
ground of abandonment bears the burden of proving such
abandonment by a preponderance of evidence. Cerverceria
Centroamericana S.A. v. Cerveceria India Inc., 892 F.2d 1021,

may not thereafter be heard to complain about the sufficiency
thereof. Time Warner Ent. Co. v. Jones, 65 USPQ2d 1650, 1656
(TTAB 2002) (having failed to file motion to compel, defendant
will not later be heard to complain that interrogatory responses
were inadequate).
Cancellation No. 92052897

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13 USPQ2d 1307 (Fed. Cir. 1989). Conversely, respondent, as
the party moving for summary judgment dismissing the claim of
abandonment, must establish continuous use of its mark for all
of the goods named in the registration, or that it has not
ceased use without an intent to resume use.
According to respondent, and as supported with documents
supplied by petitioner with its initial disclosures, respondent
was using the mark in the ‘751 registration on a product used
in at least one clinical study at the time of the filing of
CollaGenex’s Statement of Use in 2005; and CollaGenex continued
to seek ways to further develop that product until its
acquisition by respondent on April 10, 2008. CollaGenex also
registered the mark for goods in Class 3, claiming dates of
first use and first use in commerce of June 21, 2007, for which
the Office issued the ‘514 registration. Petitioner notes that
respondent appears to have been using the mark in connection
with clinical testing of a moisturizer in June 2009.6 By the
declaration of Cindy Kee, Group Product Director of
respondent’s wholly-owned subsidiary Galderma Laboratories,
L.P., respondent asserts that it currently offers two
RESTORADERM-branded products, a moisturizer and a bodywash, for
sale in retail stores nationwide, and that these products were
formulated to aid those with atopic dermatitis and/or eczema-

6 Petitioner’s brief in opposition to motion for partial summary
judgment at 8, referring to the “Clapp declaration.”

Cancellation No. 92052897

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prone skin. Respondent also presents a listing from the
National Eczema Association website of those products,
including respondent’s RESTORADERM body wash and moisturizer,
which have received the organization’s “seal of acceptance.”7
Petitioner argues that by this evidence, respondent has
“near to conceded that it has abandoned its Class 5
registration.”8 Petitioner relies on TMEP § 1402.03(5) which
explains that,
Many goods are commonly understood to move in a
particular channel of trade or have particular
attributes. … For example, “skin lotion” usually
refers to a cosmetic product - one that is not
medicated. For that reason, it can be classified
in Class 3 without further specification.

However, a skin lotion that is medicated should be
classified in Class 5, and the identification
should indicate that the product is medicated in
order to justify its classification in Class 5
rather than in the more commonly understood and
assigned Class 3.

TMEP § 1401.03(5) (rev. Oct. 2012). Petitioner recognizes that
the issue is one of “definition” for the term “therapeutic,”
but would also make the leap that a “therapeutic” item is
necessarily a “medicated” one, and thus classifiable only in
Class 5.9

7 Exhibit H to the Declaration of Lisa N. Congleton, respondent’s
counsel. Seal of Acceptance Product Directory,
www.nationaleczema.org/seal-accetance/product-directory-personal-
care accessed Apr. 23, 2012.
8 Petitioner’s brief in opposition at 12.
9 Petitioner’s citation to Phillips v. AWH Corp., 415 F.3d 1303,
1321, 75 USPQ2d 1321, 1333 (Fed. Cir. 2005)(en banc) regarding
the context of dictionary definitions is inapposite. That case
involved the definition of an entirely different term, “baffles”
in the context of patent claims.
Cancellation No. 92052897

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Under petitioner’s theory, a product classified as a
“cosmetic” could not also be classified as “therapeutic.” But,
TMEP § 1401.07 recognizes that a product may have a plurality
of uses, such that it may be classified in two, or more,
classes. See also, In re International Salt Co., 166 USPQ 215,
216 (TTAB 1970)(holding same goods capable of classification in
more than one class where specimen of use does not negate other
uses).
Further, our primary reviewing court has previously found
that a single product may have dual uses as both a cosmetic and
a pharmaceutical preparation, where there is testimony to
support such use, and the specimens do not contradict the dual
classification. Jean Patou, Inc. v. Theon, Inc., 9 F.3d 971,
975 29 USPQ2d 1771, 1774 (Fed. Cir. 1993).
While we must view respondent’s motion for partial summary
judgment on petitioner’s pleaded claim of abandonment in a
light most favorable to petitioner as the nonmoving party,
petitioner was required to set forth specific facts, by
declarations or as otherwise provided in the rule, rebutting
respondent’s evidence of continuous use and showing that there
are genuine disputed facts remaining for trial. See Fed. R.
Civ. P. 56(e). See also Copelands' Enterprises Inc. v. CNV
Inc., 945 F.2d 1563, 20 USPQ2d 1295, 1298 (Fed. Cir. 1991), and
Octocom Systems Inc. v. Houston Computer Services Inc., 918
F.2d 937, 16 USPQ2d 1783, 1786 (Fed. Cir. 1990). Assuming for
Cancellation No. 92052897

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the sake of the summary judgment motion that the goods sold in
Class 3 are the same as the goods sold in Class 5, there is
nothing showing abandonment of the goods. To the contrary,
petitioner concedes that respondent has “well established that
Cetaphil Restoraderm Skin Restoring Moisturizer is a good…,
well, moisturizer,”10 and does not dispute that the mark is in
use as a “cosmetic.” Likewise, assuming that the goods sold in
Class 5 are somehow different from those sold in Class 3,
respondent has presented evidence that the goods in Class 5 are
recognized as alleviating symptoms associated with atopic
dermatitis and eczema, and there is no evidence of non-use or
abandonment. Neither has petitioner established that a
“therapeutic” product is necessarily a “medicine” or a “drug,”
and dictionary definitions do not support that theory.
Accordingly, respondent’s motion for partial summary
judgment on petitioner’s claim of abandonment is granted, and
petitioner’s claim of abandonment is hereby dismissed with
prejudice.11
Dates Reset
Proceedings are resumed. Dates are reset as set out below.12

10 Petitioner’s brief in opposition at 1.
11 As the decision on the motion for partial summary judgment is
interlocutory in nature, any appeal can be can be raised only
after final disposition of this proceeding. See Trademark Rule
2.145(d), and Procter & Gamble Co. v. Sentry Chem. Co., 22 USPQ2d
1589, 1594 n.4 (TTAB 1992). See also Copelands' Enter. Inc. v.
CNV Inc., 887 F.2d 1065, 12 USPQ2d 1562, 1564 (Fed. Cir. 1989).
12 The parties should note that the evidence submitted in
connection with the motion for summary judgment is of record only
for consideration of that motion. To be considered at final
Cancellation No. 92052897

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Expert Disclosures Due 12/3/2012
Discovery Closes 1/2/2013
Plaintiff's Pretrial Disclosures Due 2/16/2013
Plaintiff's 30-day Trial Period Ends 4/2/2013
Defendant's Pretrial Disclosures Due 4/17/2013
Defendant's 30-day Trial Period Ends 6/1/2013
Plaintiff's Rebuttal Disclosures Due 6/16/2013
Plaintiff's 15-day Rebuttal Period Ends 7/16/2013
In each instance, a copy of the transcript of
testimony, together with copies of documentary exhibits,
must be served on the adverse party within thirty days after
completion of the taking of testimony. Trademark Rule
2.l25.
Briefs shall be filed in accordance with Trademark
Rules 2.l28(a) and (b). An oral hearing will be set only
upon request filed as provided by Trademark Rule 2.l29.
***

hearing, any such evidence must be properly introduced in
evidence during the appropriate trial period. See Land O’ Lakes
Inc. v. Hugunin, 88 USPQ2d 1957, 1960 n.7 (TTAB 2008); Univ.
Games Corp. v. 20Q.net Inc., 87 USPQ2d 1465, 1468 n.4 (TTAB
2008); Levi Strauss & Co. v. R. Josephs Sportswear Inc., 28
USPQ2d 1464 (TTAB 1993)(declaration of witness submitted in
connection with summary judgment motion was part of record for
trial where witness identified and attested to accuracy of it
during applicant’s testimony period).