Escolar Documentos
Profissional Documentos
Cultura Documentos
Herbaceuticals, Inc.
v.
By the Board:
1
Xel's registrations, each of which include a disclaimer of
HERBACEUTICALS, are as follows:
Registration No. 2845260, issued May 25, 2004, for the mark XEL
HERBACEUTICALS in standard character form and Registration No.
2860543, issued July 6, 2004, for the mark XEL HERBACEUTICALS and
design, both for "teas; herbal teas for food purposes, green
teas, black teas, iced teas, coffee based beverages containing
milk, herbal teas and chicory based coffee substitute; functional
foods, namely, chocolate-based ready-to-eat food bars, candy
bars, granola-based snack bars, bread, processed cereals,
breakfast cereals, biscuits and cakes; noodles and pasta; candy,
chewing gum, bubble gum; ice cream, frozen yogurt and ice cream
substitute; functional beverages, namely, grain-based food
beverage containing oats or oat extracts" in International Class
30;
Registration No. 2948354 for the mark XEL HERBACEUTICALS in
standard character form and Registration No. 2948359 for the mark
XEL HERBACEUTICALS and design, both issued May 10, 2005, and both
for "skin care preparations, namely, anti-wrinkle, moisturizing,
skin lightener and skin-firming creams, lotions, toners,
cleansers, moisturizers, gels, emulsions, serums, facial mask
packs, cleansers, eye treatments, and face and body powder,
creams; cosmetics, namely, foundation, blushers, blemish touch-up
sticks, mascara, eyeshadow, eyeliner, eye makeup, lipstick, lip
Cancellation No. 92045172
Xel's failure to have used its marks on all of the goods set
and facial skin lotions, creams and powders, body and facial
cleansing products."
2
Cancellation No. 92045172
its answer.
particular, HCI contends that Xel was not using its marks on
knew or should have known that it was not using the subject
3
Cancellation No. 92045172
30, HCI contends that Xel knew or should have known that it
have known that it was not using the mark on any of the
for the mark HCI HERBACEUTICALS, INC and design and its use
4
Cancellation No. 92045172
"pharmaceutical."
5
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the goods on which the marks are in use; that the examining
doctrine of laches.
6
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a claim of fraud.
Inc., 961 F.2d 200, 22 USPQ2d 1542, 1544 (Fed. Cir. 1992).
3
"[I]t is within the public interest to have registrations which
are void ab initio stricken from the register and that this
interest or concern cannot be waived by the inaction of any
single person or concern no matter how long the delay persists."
W.D. Byron & Sons, Inc. v. Stein Bros. Mfg. Co., 146 USPQ 313
(TTAB 1965), aff'd, 377 F.2d 1001, 153 USPQ 749 (CCPA 1967).
7
Cancellation No. 92045172
F.2d 1560, 4 USPQ2d 1793 (Fed. Cir. 1987). When the moving
8
Cancellation No. 92045172
Co. v. Rexall Drug & Chem. Co., 463 F.2d 1122, 174 USPQ 458,
the record now before us, and for the reasons discussed
4
HCI also relies upon its unpleaded Registration No. 2822094 in
support of its claim to standing. HCI may not rely upon an
unpleaded registration in support of its claims. See TBMP
Section 314 (2d ed. rev. 2004). If HCI wants to rely upon its
Registration No. 2822094, it must seek leave to amend its
petition to cancel to rely on such. See Fed. R. Civ. P. 15(a);
TBMP Section 507.02(a) (2d ed. rev. 2004).
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Cancellation No. 92045172
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when mark had not been used for any identified items for men
had not been used anywhere in the world for some of the
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Cancellation No. 92045172
5
Xel's reliance upon Grand Canyon West Ranch LLC v. Hualapai
Tribe, 78 USPQ2d 1696 (TTAB 2006), in support of its contention
that partial cancellation is the appropriate remedy under the
circumstances is misplaced. In that case, the Board found that,
in view of applicant's nonuse of the involved mark on some of the
services identified in the involved application, partial judgment
as to the goods for which use of the mark was not made was
appropriate. However, that was because no fraud claim had yet
been pleaded and the Board was only concerned with the question
of use or non-use for particular items.
12
Cancellation No. 92045172
in its answer that the mark was not used on stents. The
Id. at 1208.
13
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14
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15
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synonymous.
its statements of use that the mark was not in use on all of
should have known was false." General Car and Truck Leasing
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for trial and not one for which HCI has shown a current
entitlement to judgment.
6
The parties are reminded that our decision granting partial
summary judgment is interlocutory in nature and may not be
appealed until a final decision is rendered in the proceeding.
See Copeland's Enterprises Inc. v. CNV Inc., 887 F.2d 1065, 12
USPQ2d 1562 (Fed. Cir. 1989).
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Cancellation No. 92045172
Brief for plaintiff in the cancellation shall be due: January 30, 2009
19