Green v. Institut Allergosan Pharmazeutische Produkte Forschungs- Und Vertriebs GMBH, 92069600

• Decision Date: 01 September 2021
• Docket Number: 92069600
• Parties: Jason Green v. Institut Allergosan Pharmazeutische Produkte Forschungs- und Vertriebs GmbH
• Court: Trademark Trial and Appeal Board

Jason Green v. Institut Allergosan Pharmazeutische Produkte Forschungs- und Vertriebs GmbH

No. 92069600

United States Patent and Trademark Office, Trademark Trial and Appeal Board

September 1, 2021

This Opinion is Not a Precedent of the TTAB

Erik M. Pelton of Erik M. Pelton & Associates, PLLC for Jason Green.

Randolph E. Digges, III of Rankin, Hill & Clark LLP for Institut Allergosan Pharmazeutische Produkte Forschungs- und Vertriebs GmbH.

Before Wellington, Larkin, and Hudis, Administrative Trademark Judges.

OPINION

Larkin, Administrative Trademark Judge

Institut Allergosan Pharmazeutische Produkte Forschungs- und Vertriebs GmbH ("Respondent" or "IAP") owns Registration No. 5243392 of the standard character mark OMNI BIOTIC (BIOTIC disclaimed) for the following goods and services:

Cosmetics for use on the skin; cosmetic products relating to health care, namely body lotions, shower gel, cuticle cream shampoo, conditioner, non-medicated lip balm, body polish body and foot scrub and non-medicated foot cream, baby powder, baby shampoo, baby wipes, bath and shower gels and salts not for medical purposes, bath salts, not for medical purposes, body emulsions for cosmetic use, cleansing and polishing preparations, cosmetic preparations for bath, face and beauty creams, hair care preparations, hand cleaning preparations, non-medicated lip balm, lip glosses, shampoos, shaving gels, non-medicated skin-serum, skin cleansers, skin conditioners, skin creams, skin lotions, sun care lotions; bleaching preparations and other substances for laundry use; liquid soaps for hands, face and body, solid hand and body soaps; hair lotions; dentifrices, in International Class 3;

Food supplements, in particular antioxidants, adapted for medical use; dietetic preparations, namely, powder mix adapted for medical use and food supplements for medical use; dietetic preparations, namely powder mixes for the preparation of beverages for medical use; dietetic preparations for specific medical purposes or balanced diets, namely nutritional supplements, allergy relief medication, bacterial preparations for medical purposes, bacterial culture mediums, natural dietary supplements; food for babies in particular milk powder for babies, food supplements and dietetic nutritional supplements for sports and enhancing performance for medical purposes; mineral food supplements, starch for dietetic or pharmaceutical purposes; food supplements, mainly consisting of vitamins, amino acids, minerals and trace elements for medical purposes; herbal teas for medicinal purposes; pharmaceutical, veterinary and dietetic preparations, as well as preparations for health care, namely dietary supplements and dietary supplements for animals; infant formula; nutritive substances for microorganism cultures; vitamin preparations; medical preparations for weight loosing purposes; appetite suppressants for medical purposes; bacterial preparations for medical and veterinary use; bacteriological preparations for medical and veterinary use; biological preparations for medical purposes for the treatment of constipation and intestine disorder; dietetic substances adapted for medical use; dietetic foods adapted for medical use; enzyme preparations for medical purposes; capsules for medical purposes for the treatment of constipation and intestine disorder; bouillons and nutritive substances for bacteriological cultures; digestives for pharmaceutical purposes; pharmaceutical health care preparations and medicinal health care preparations for the treatment of constipation and intestine disorder, in International Class 5, and

Licensing of industrial or intellectual property rights and copyright, in International Class 45.^[1]

Jason Green ("Petitioner" or "Green") seeks cancellation of Respondent's registration, as to Class 5 only, on the grounds that (1) under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), Petitioner claims that he is the prior user of the mark OMNIBIOTIC for dietary and nutritional supplements in the United States, and Respondent's use of the OMNI BIOTIC mark in connection with the Class 5 goods identified in the registration is likely to cause confusion, to cause mistake, or to deceive, and (2) Respondent obtained its registration by fraud on the United States Patent and Trademark Office ("USPTO"), by falsely stating in the application that matured into the registration that Respondent had a bona fide intention to use the mark in commerce in connection with the identified goods and services.

The case is fully briefed.^[2] We deny the Petition for Cancellation on both asserted grounds.

I. Procedural History, Record, and Evidentiary Issues

A. Procedural History

Petitioner's Petition for Cancellation pleaded claims of likelihood of confusion, non-use, abandonment, and fraud. 1 TTABVUE 3-15. Respondent moved to dismiss the non-use and fraud claims, 7 TTABVUE, and the Board granted the motion as to the non-use claim, finding that Petitioner failed to state a claim upon which relief could be granted with respect to an application filed under Section 66(a) of the Trademark Act. 13 TTABVUE 6-8. Respondent then answered the Petition for Cancellation and denied its salient allegations. 14 TTABVUE 2-7.^[3]

B. Record

The record consists of the pleadings, the file history of Respondent's registration, by operation of Trademark Rule 2.122(b)(1), 37 C.F.R. § 2.122(b)(1), Petitioner's Testimony Declaration of Jason Green ("Green Decl.") and Exhibits A-AE thereto (19 TTABVUE 2-133, 20 TTABVUE 1-54), ^[4] Respondent's Testimony Declaration of Anita Frauwallner ("Frauwallner Decl.") and Exhibits 1-35 thereto (25 TTABVUE 2-121), ^[5] and Respondent's Notice of Reliance and Exhibits 36-48 thereto (27 TTABVUE 2-261).

C. Evidentiary Issues

Petitioner objects that "Respondent attempts to make of record documents that are entirely in German, with no English translation," 30 TTABVUE 10, and argues that "Applicant's evidence should be excluded or ignored." Id. The referenced documents are exhibits to the Frauwallner Declaration or to Respondent's Notice of Reliance.

In an Appendix to his brief, Petitioner argues that this evidence "is unusable and/or immaterial as it is almost entirely in German, not in English." Id. at 37 (citing Trademark Trial and Appeal Board Manual of Procedure ("TBMP") Section 104; Swiss Watch Int'l Inc. v. Fed'n of the Swiss Watch Indus., 101 U.S.P.Q.2d 1731 (TTAB 2012); Johnson & Johnson v. Obschestvo s Ogranitchennoy; Otvetstvennostiu "WDS", 95 U.S.P.Q.2d 1567 (TTAB 2010)). Petitioner objects on this ground to four specific types of documents.

First, Petitioner objects to three invoices attached to the Frauwallner Declaration, id. (citing Frauwallner Decl. ¶¶ 18-19, 21, and 23; Exs. 13-14, 16-17), ^[6] because "[t]hese business records are written entirely in German, with the quantity and type of sale being indeterminable," and it "is unclear as to whether these invoices represent legitimate sales that could potentially establish trademark use." Id. Petitioner argues that "[t]he invoices, one of which is missing from the record entirely, ^[7] should therefore be given little to no probative value in the determination of use and/or priority." Id.^[8]

Second, Petitioner objects to "screenshots that supposedly demonstrate [Petitioner's] website traffic." Id. at 38 (citing Frauwallner Decl. ¶¶ 30-32; Exs. 21-23). Petitioner separately objects to this evidence on the ground that it is "irrelevant, in that it does not show purchases of the product; rather, it only shows passive visitors to the website." Id.^[9]

Third, Petitioner objects to "examples of [Petitioner's] advertisements and product packaging," id., specifically Frauwallner Decl. Exs. 14 and 15 discussed above, because "all of the words featured on these advertisements and packaging, including what appears to be nutritional information, are in German," and "[t]his evidence is not probative in demonstrating Respondent's use of the OMNI BIOTIC mark, as an English-speaking consumer would not be able to understand that the products are dietary supplements, how many to take, or what their purpose is." Id.

Finally, Petitioner objects to screenshots from Respondent's website because they are "solely in German and it is therefore indecipherable as to how to buy the product-it is unclear that there is a way to add it to an online cart or otherwise begin a purchase." Id. (citing Respondent's Notice of Reliance Exs. 42-43 (27 TTABVUE 245-48)).^[10]

Respondent addresses Petitioner's objections in Appendix A to Respondent's brief, 31 TTABVUE 25-28, and also attaches to that Appendix "a certified English language translation of the three invoices in question" to "show that there is nothing in the German language in such invoices that would have any bearing on the issue of priority" and that "Petitioner's objections are much ado about nothing." Id.^[11]

With respect to the three invoices, Respondent argues that "the relevant information set forth in the invoices is translated into English" in the Frauwallner Declaration. Id. at 25. Respondent argues that she "identifies that they are invoices corroborating her testimony regarding specific sales," id., and "identifies, in English, who the purchasers were in each instance, what goods were sold and identifies the packaging bearing the OMNI BIOTIC mark in which they were sold, the address in the United States where the goods were shipped by Respondent, and the date of the sales." Id. Respondent claims that "[t]here is no other information in the invoices that is relevant to the determination of priority." Id.

Respondent also "point[s] out that copies of the three invoices in question (with the purchaser's name and address redacted) and other invoices...