Société Des Produits Nestlé S.A. v. Taboada

Decision Date05 August 2020
Docket Number91232597
CourtTrademark Trial and Appeal Board
PartiesSociété des Produits Nestlé S.A. v. Cándido Viñuales Taboada

Andrea Anderson and Amy J. Tindell of Holland & Hart LLP for Société des Produits Nestlé S.A.

Roberto Ledesma of Law Office of Roberto Ledesma for Cándido Viñuales Taboada.

Before Coggins, Hudis and Lebow, Administrative Trademark Judges.

OPINION

HUDIS ADMINISTRATIVE TRADEMARK JUDGE:

Cándido Viñuales Taboada ("Applicant"), pursuant to an application filed on April 18, 2016 under Trademark Act Section 66(a), 15 U.S.C. § 1141f(a), [1] seeks registration on the Principal Register of the mark NESPORT (in standard characters) for:

Preparations containing amino acids, vitamins, trace elements and minerals for human consumption, namely, nutritional and dietary supplements and vitamins; vitamin preparations mineral food supplements; dietetic beverages, foodstuffs and substances for medical purposes, namely, dietary supplemental drinks in the nature of vitamin and mineral beverages crackers and supplements; nutritional and dietetic supplements for medical purposes; preparations for pharmaceutical purposes for enhancing physical endurance, reflexes, attention span and physical capabilities; pharmaceutical products, preparations for medical and veterinary purposes for the treatment of fatigue; sanitary products for medical use, namely, sterilizing preparations; food for babies; food supplements for humans or animals; plasters and material for dressings for medical purposes; teeth filling and dental impression materials; disinfectants; preparations for destroying vermin; fungicides, herbicides; dietetic nutritional supplements made with flours, cereals, rice, tapioca and sago for human consumption; nutritional supplements made with flours, cereals, rice, tapioca and sago for human consumption, namely, supplements containing vitamins, minerals, trace elements and/or essential fatty acids; dietary nutritional supplements not for medical purposes made from plant extracts, in International Class 5.
Royal jelly for human consumption and for dietary purposes; energy bars made from cereals; energy bars made from cereals containing nutritional supplements; food preparations and meal substitutes, namely, energy bars not for medical use made with coffee, tea, cocoa, sugar, flours, cereals, rice, tapioca, sago, for stimulating muscle development; food supplements made from cereals; substances, supplements and extracts made from cereals for dieting, namely, processed cereals; savory ready-to-eat foods consisting in extruded corn; savory food preparations made of potato flour, namely, rolls; coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals, namely, cereal snack bars; bread, pastry and confectionery products, namely, cakes; edible ices; sugar, honey, golden syrup; yeast, baking powder; salt; mustard; vinegar, sauces; spices; ice, in International Class 30.
Energy drinks; isotonic beverages and sports drinks; aloe vera drinks and juices, beverages made from cola, fruit and vegetable juices, concentrated fruit juices and fruit nectars; syrups, fruit extracts and essences for preparing non-alcoholic beverages excluding essential oils; preparations in liquid, powder or concentrate form for making non-alcoholic beverages; soda waters, whey beverages; whey-based preparations for making beverages, soy-based beverages not being milk substitutes; preparations for making soy-based beverages not being milk substitutes; beers; mineral waters and other non-alcoholic cocktails; fruit-based beverages and fruit juices; syrups and other preparations for making colas, in International Class 32.
I. Procedural History

Société des Produits Nestlé S.A. ("Opposer") opposed registration of Applicant's NESPORT mark on the following grounds: [2]

• Priority and likelihood of confusion pursuant to Trademark Act Section 2(d), 15 U.S.C. § 1052(d) [Count I];[3]
• Dilution pursuant to Trademark Act 43(c), 15 U.S.C. § 1125(c) [Count II];[4] and
• Applicant's lack of bona fide intent to use the NESPORT mark in commerce pursuant to Trademark Act Section 1(b), 15 U.S.C. § 1051(b) [Count III].[5]

Applicant denied the salient allegations of the Notice of Opposition in its Answer, [6]and asserted "affirmative defenses." However, they are not true affirmative defenses, but rather mere amplifications of Applicant's denials of Opposer's claims.

After the close of discovery, [7] Opposer moved for partial summary judgment on Count III of the Notice of Opposition, namely, Applicant's lack of a bona fide intent to use the NESPORT mark in commerce for the goods recited in his application.[8] The Board denied Opposer's motion, citing genuine disputes of material fact that could not be resolved on summary judgment, [9] and encouraged the parties to consider resolving the Opposition using the Board's accelerated case resolution procedure ("ACR").[10] The parties subsequently entered into an ACR stipulation, [11] the relevant portions of which are set out below:

1. [Opposer] … stipulates that it will withdraw its likelihood of confusion claim under 15 U.S.C. § 1052(d) and its dilution claim under 15 U.S.C. § 1125(c) asserted in its Notice of Opposition (1 TTABVUE) with prejudice.
2. Applicant stipulates that [Opposer] … has standing in this opposition proceeding pursuant to TBMP § 309.03(b).[12]
3. The Parties stipulate that the materials submitted with briefs on the motion for summary judgment (5, 7, 8 TTABVUE) be considered at trial as trial evidence, which may be supplemented by additional evidence during the parties' trial periods (TBMP § 705 and 37 C.F.R. § 2.127(e)(2)).
4. The Parties reserve the right to object to evidence on substantive grounds such as competency, materiality, and relevancy.

The Board approved the parties' stipulation, and reset trial dates.[13] Following trial, the parties filed briefs on the case.

II. Whether Opposer's Lack of Bona Fide Intent Claim was Properly Pleaded

Trademark Act Section 66(a) is the statutory filing basis for the NESPORT application. Section 66(a) requires that, at the time of filing of the international application with the International Bureau ("IB") of the World Intellectual Property Organization ("WIPO"), an applicant requesting for extension of protection to the United States include a declaration of bona fide intention to use the mark in commerce. 15 U.S.C. §1141f(a). The declaration must specify that the applicant (or "holder"[14]) has a bona fide intention to use the mark in commerce on or in connection with the goods specified in the international application. Trademark Act Sections 45 and 60(5), 15 U.S.C. §§ 1127, 1141(5); see also Trademark Rules 2.33(e)(1), 2.34(a)(5), 37 C.F.R. §§ 2.33(e)(1), 2.34(a)(5).

The declaration also must include a statement that: the signatory is properly authorized to execute the declaration; the signatory believes the applicant/holder to be entitled to use the mark in commerce on or in connection with the goods specified in the international application; and to the best of his knowledge and belief, no other person, firm, corporation, association, or other legal entity has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods of such other person, firm, corporation, association, or other legal entity, to cause confusion, or to cause mistake, or to deceive. Trademark Act Sections 45 and 60(5); see also Trademark Rules 2.33(e)(2)-(4), 2.34(a)(5).

As noted by the Trademark Manual of Examining Procedure (TMEP) (October 2018):

The [United States Patent and Trademark Office ("USPTO")] … has provided the [International Bureau of the World Intellectual Property Organization ("IB")] … a [form] declaration of bona fide intention to use the mark in commerce for a trademark …, which is part of the official IB form for international applications and subsequent designations in which the United States is designated for an extension of protection (IB Form MM18). … The IB will ensure that the MM18 form is annexed to the international application or subsequent designation in which there is a request for extension of protection to the United States, that the wording of the declaration has not been altered, and that the document has been signed before forwarding the request for extension of protection to the USPTO. The IB does not send the verified statement to the USPTO. … The verified statement remains part of the international registration on file with the IB. Trademark Rule 2.33(e).

TMEP § 1904.01(c) (emphasis added). See also Wirecard AG v. Striatum Ventures B.V., 2020 U.S.P.Q.2d 10086, at *3 n.7 (TTAB 2020):

Under Section 66(a) of the Trademark Act, 15 U.S.C. § 1141f(a), the holder of an international registration may file a request for extension of protection of that registration to the United States. An applicant who files such a request must declare its intention to use the mark in the United States, Section 66 of the Trademark Act, 15 U.S.C. § 1141f(a), and the resulting U.S. application is subject to examination and opposition, Section 68 of the Trademark Act, 15 U.S.C. § 1141h. Saddlesprings, Inc. v. Mad Croc Brands, Inc., 104 U.S.P.Q.2d 1948, 1950 (TTAB 2012).

As noted, Count III of the Notice of Opposition alleges Applicant's lack of bona fide intent to use the NESPORT mark in commerce in derogation of Trademark Act Section 1(b) rather than Trademark Act Section 66(a).[15] Both statutory provisions require a verified statement of bona fide intent at the time each such type of application is filed with USPTO. Citation of the incorrect statutory se...

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