SmithKline Beecham Corp.v.Omnisource DDS, LLC

Trademark Trial and Appeal Board

Nov 29, 2010

No. 91178539 (T.T.A.B. Nov. 29, 2010)

Hearing: July 20, 2010 Mailed: November 29, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

SmithKline Beecham Corp.
v.
Omnisource DDS, LLC
_____

Opposition No. 91178539
to application Serial No. 78893144
_____

Glenn A. Gundersen, Erik Bertin and Jacob R. Bishop of
Dechert LLP for SmithKline Beecham Corp.

Erik M. Pelton of Erik M. Pelton & Associates for Omnisource
DDS, LLC.
______

Before Quinn, Cataldo and Mermelstein,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Applicant, Omnisource DDS, LLC, filed an intent-to-use
application to register on the Principal Register the mark
AQUAJETT for “dental instruments, namely oral irrigators” in
International Class 10.1 Opposer, SmithKline Beecham Corp.,
opposed registration under Section 2(d) of the Trademark
Act, 15 U.S.C. §1052(d), on the ground that applicant’s
mark, when applied to applicant’s goods, so resembles

1 Application Serial No. 78893144 was filed on May 25, 2006.

THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Opposition No. 91178539
2
opposer's previously used and registered AQUAFRESH and
AQUAFRESH-formative marks for toothpaste, toothbrushes, and
related oral care products as to be likely to cause
confusion. Opposer, in an amended notice of opposition,
added a claim that applicant lacked a bona fide intent to
use the mark in commerce when the application was filed.2
Applicant, in its answers, denied the salient
allegations in the original and amended notices of
opposition.3
The parties submitted briefs on the merits of the case
and opposer submitted a reply brief. In addition, counsel
for the parties presented arguments at an oral hearing held
before the Board on July 20, 2010.
Evidentiary Matters
In an interlocutory order issued on June 10, 2009, the
Board granted applicant’s motion to strike opposer’s ninth
notice of reliance and deferred until final hearing
applicant’s motion to strike Exhibit A from opposer’s
second, third and fourth notices of reliance on the ground
that the materials comprising such exhibits are inadmissible
hearsay. In the same order, as well as a related

2 In addition, opposer asserted a claim of dilution, but did not
pursue this claim at trial or present arguments with regard
thereto in its brief. Accordingly, such claim is deemed waived.
3 Also, in its answers applicant asserted numerous “affirmative
defenses” that are more in the nature of amplifications of its
denials of the allegations contained in the notices of opposition
and have been so construed.
Opposition No. 91178539
3
interlocutory order issued on October 5, 2009, the Board
granted opposer’s motion to strike Exhibit 7, portions of
Exhibit 8, and Exhibits 11-13 from applicant’s notice of
reliance.
In their briefs, each party has filed further
objections against certain testimony and exhibits introduced
by its adversary. We note, however, that none of the
testimony and/or exhibits sought to be excluded is outcome
determinative. Given this fact, coupled with the number of
objections, we see no compelling reason to discuss the
objections in a detailed fashion. Suffice it to say, we
have considered all of the testimony and exhibits submitted
by the parties, with the exception of those specifically
excluded as indicated above. In doing so, we have kept in
mind the various objections raised by the parties, and we
have accorded whatever probative value the subject testimony
and exhibits merit.
Standing
Standing is a threshold issue that must be proven by a
plaintiff in every inter partes case. Ritchie v. Simpson,
170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999). The purpose
of the standing requirement is to prevent litigation when
there is no real controversy between the parties. Lipton
Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185 (CCPA 1982).
Opposition No. 91178539
4
In this case, opposer properly introduced copies
showing the current status and title of its pleaded
registrations for its AQUAFRESH and AQUAFRESH-formative
marks for toothbrushes, toothpaste, and other oral care
products.4 This evidence establishes that opposer has a
real interest in the outcome of this proceeding; that is,
opposer has a direct and personal stake in preventing the
registration of applicant's mark for the identified goods.
Once the standing threshold has been crossed, opposer may
rely on any legal ground that negates applicant's right to
the registration it seeks. Estate of Biro v. Bic Corp., 18
USPQ2d 1382 (TTAB 1991).
Bona Fide Intent
Opposer maintains that applicant lacked the requisite
bona fide intent to use the mark in commerce when it filed
the involved application. Specifically, opposer argues:
Applicant was formed in 2005;5
The goods identified in the subject application are
described in the following U.S. Patents, all issued in 1996,
Patent Nos. 5511693 and 5556001, owned by applicant’s
principal Dr. William Weissman, and Patent No. 5564629,
owned by Dr. Weissman and co-inventors;6

4 Opposer submitted copies of 17 registrations, of which 12
currently remain valid and subsisting.
5 Opposer’s 5th Notice of Reliance; Weissman Deposition at p. 52.
6 Id., at 18, 22, 26-7; Opposer’s 11th Notice of Reliance,
Weissman Deposition, Exhibits 2-4.
Opposition No. 91178539
5
Dr. Weissman has not assigned or licensed the above-
noted patents to applicant or to any third party;7
Applicant has neither used nor licensed the AQUAJETT
mark either on the goods identified in the subject
application or any other goods or services;8
Applicant’s principal prepared a single prototype for
the above-noted patent applications, but its whereabouts
currently are unknown;9
Applicant has not sold nor attempted to sell any oral
irrigators under the AQUAJETT mark, nor does applicant have
any inventory of such goods;10
Applicant has neither identified nor considered the
possible users of its goods under the AQUAJETT mark nor
considered when such products would be sold;11
Applicant has neither given thought to where its goods
under the AQUAJETT mark would be manufactured, nor
identified or contracted with third parties who might
manufacture such goods, nor identified materials needed
therefor, nor prepared any schematics therefor, nor prepared
instructional manuals therefor;12

7 Opposer’s 5th Notice of Reliance, Weissman Deposition at p. 19;
Opposer’s 6th Notice of Reliance, Exhibit C; Opposer’s 7th Notice
of Reliance, Exhibits A, B.
8 Opposer’s 5th Notice of Reliance, Weissman Deposition at p. 28-
9; Opposer’s 7th Notice of Reliance, Exhibits A, B.
9 Opposer’s 5th Notice of Reliance, Weissman Deposition, at p. 29.
10 Opposer’s 7th Notice of Reliance, Exhibits A, B.
11 Opposer’s 5th Notice of Reliance, Weissman Deposition at p. 23.
12 Id. at p. 30-9.

Opposition No. 91178539
6
In response to opposer’s discovery requests, applicant
did not produce any documents supporting its bona fide
intent to use the AQUAJETT mark other than copies of the
patents noted above;13
Applicant possesses no business or marketing plans, nor
has applicant identified or contracted with third parties to
create a business plan;14
In response to opposer’s discovery requests, applicant
indicated it possesses no documents relevant to its
selection, adoption or use of the AQUJETT mark;15
Applicant has neither planned nor created labels, tags,
or packaging for its products under the AQUAJETT mark, nor
identified or contracted with third parties to do so;16
Applicant has neither planned nor created marketing,
advertising or promotional materials for the goods under the
AQUJETT mark, nor identified or hired third parties to do
so;17 and
Applicant has neither set prices for the goods
identified under the AQUJETT mark, nor prepared a budget for
their production and marketing, nor attempted to obtain

13 Id. at 45-7; Opposer’s 6th Notice of Reliance, Exhibit B;
Opposer’s 11th Notice of Reliance, Exhibit 11.
14 Opposer’s 5th Notice of Reliance, Weissman Deposition at p. 48-
9.
15 Opposer’s 6th Notice of Reliance, Exhibit A.
16 Opposer’s 5th Notice of Reliance, Weissman Deposition at p. 39-
41; Opposer’s 7th Notice of Reliance, Exhibits A, B.
17 Opposer’s 5th Notice of Reliance, Weissman Deposition at p. 34-
47; Opposer’s 7th Notice of Reliance, Exhibits A, B.
Opposition No. 91178539
7
liability insurance therefor.18
Based upon the foregoing, opposer points to the absence
of evidence, documentary or otherwise, to support
applicant’s assertion of its bona fide intent to use the
AQUJETT mark at the time of filing. Further, opposer argues
that applicant did not offer any testimony or evidence
regarding its intent.
Applicant counters by contending that it “has provided
a plethora of evidence in a variety of forms which
substantiate its bona fide intent to use the AQUJETT
mark.”19 Specifically, applicant argues:
Its principal, Dr. Weissman, is a practicing dentist
who has attended trade shows where oral irrigators are
marketed by others;20
Dr. Weissman’s testimony, reproduced below, is
proffered as evidence that applicant has “considered the
potential types of customers and channels of trade for oral
irrigators;”
Q. What is the target audience or the target
market for the oral irrigators that Omnisource
intends to sell?

A. To the general consuming public who’s
interested in oral care goods.

Q. Ordinary consumers?

A. Ordinary consumers.

18 Id. at 35-50.
19 Applicant’s brief, p. 29.
20 Weissman Deposition at p. 23-4, 41-2.
Opposition No. 91178539
8

Q. … Just to clarify, “oral care goods” again
would include toothpaste, toothbrushes,
toothpicks, floss, oral irrigators. Anything else
in that category?

A. Mouthwash. Yeah, those are generally the
items.

Q. And the users of those items would be ordinary
consumers?

A. Yes.21

Dr. Weissman’s further testimony, reproduced below, is
offered as evidence that applicant “has considered options
for the manufacturing and licensing of its product;”
Q. Do you plan to manufacture them yourself or do
you plan to contract with a third-party to
manufacture them?

A. More than likely, contract with a third-party.

Q. Are you planning to sell oral irrigators
yourself, or are you planning to license them to
third-parties who would then sell them to
consumers?

A. Both ways have been contemplated, but no
decision has been made.

Q. Have you given any thought to what types of
third-parties that you would license this product
to?

A. Generally, companies which would be in the oral
care industry.

Q. If I could clarify that answer a little bit,
what segment of the oral care industry, if any?

A. That would probably be any companies that would
be in the oral care industry who are in the

21 Applicant’s Brief, p. 30, citing Weissman Deposition at p. 22,
51.
Opposition No. 91178539
9
preventative oral care field.

Q. What, if anything, have you done to identify
any potential licensees?

A. Being a dentist, I’m aware of the different
companies that are involved with dental care. So
those would just be general companies that would
come to my mind.

Q. But you have not contacted any specific
companies?

A. Back in 1990, back when this was done, I
remember I did send off letters to different oral
care companies regarding the oral irrigator.

Q. So at the time that your patent was issued or
some time – early ‘90s or mid ‘90s?

A. Anywhere between 1990 and 1996, ’97.

Q. You would have made these contacts?

A. Correct.

Q. And do you remember what you did in that
regard?

A. To my recollection, I sent off letters to the
different companies.

Q. Do you have a copy of those letters?

A. No.

Q. Do you remember what companies they were that
you sent the letters to?

A. Not specifically.

Q. Have you made any attempts to contact any of
those companies since 1996?

A. No.22

22 Applicant’s brief, p. 30, citing Weissman Deposition at p. 22-
58.

Opposition No. 91178539
10
Applicant has offered in evidence minutes from its June
14, 2006, annual meeting noting the following:
Events of significance of the past year include
the following: 1. The continued research and
development of new and novel products for the
dental marketplace for both the consumer and the
dental profession.23

Applicant has produced minutes from its June 1, 2007,
annual meeting noting the following:
We have, over the past year, successfully
submitted and received some Trademark names that
will be used for future commercial ventures once
all research has been completed and business
practices begin. We will be signing NDA’s with
interested parties and then determining if
potential sale or licensing agreements can be
made. We anticipate the next 6 months will be
spent furthering our business plans as most of our
research has been completed.24

Applicant has produced the above-noted patents, as well
as testimony concerning its prototype and the manner in
which such product would operate;25 and
Applicant alleges that it has exercised due diligence
in selecting and filing the application for the AQUJETT mark
and retained counsel to assist therewith.26
Trademark Act Section 1(b), 15 U.S.C. §1051(b), states
that “a person who has a bona fide intention, under
circumstances showing the good faith of such person, to use

23 Applicant’s Notice of Reliance, Exhibit 8.
24 Weissman Deposition at p. 23; Applicant’s Notice of Reliance,
Exhibit 8.
25 Id.; Applicant’s Notice of Reliance, Exhibit 9.
26 Weissman Deposition, Exhibit 8.

Opposition No. 91178539
11
a trademark in commerce” may apply for registration of the
mark. A determination of whether an applicant has a bona
fide intention to use the mark in commerce is an objective
determination based on all the circumstances. Lane Ltd. v.
Jackson International Trading Co., 33 USPQ2d 1351, 1355
(TTAB 1994). Opposer has the burden of demonstrating by a
preponderance of the evidence that applicant lacked a bona
fide intent to use the mark on the identified goods. The
absence of any documentary evidence on the part of an
applicant regarding such intent constitutes objective proof
that is sufficient to prove that the applicant lacks a bona
fide intention to use its mark in commerce. See Commodore
Electronics Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503,
1507 (TTAB 1993). See also Honda Motor Co. v. Winkelmann,
90 USPQ2d 1660 (TTAB 2009); Boston Red Sox Baseball Club LP
v. Sherman, 88 USPQ2d 1581 (TTAB 2008); and L.C. Licensing
Inc. v. Berman, 86 USPQ2d 1883 (TTAB 2008).
In this case, we find that opposer has met its burden
of demonstrating applicant's lack of a bona fide intent to
use the mark by showing that applicant has no documentary
evidence regarding such intent. The patents issued to
applicant’s principal and co-inventors indicate only that
the named inventors sought to protect the device described
therein, not that applicant possesses a bona fide intent to
use the AQUAJETT mark on the goods identified in the
Opposition No. 91178539
12
involved trademark application. Similarly, the minutes from
applicant’s annual meetings contain only vague references to
research and development of products in the dental field for
consumers and dental professionals, filing various trademark
applications for unspecified products, and the creation of a
business plan. No reference is made in the minutes either
to the AQUAJETT mark or the oral irrigators identified
thereby, let alone any plans to build, license, market or
sell such goods. Furthermore, applicant has not made of
record copies of any business plans mentioned above in the
minutes of its 2007 annual meeting. Finally, applicant has
not produced the letters assertedly sent by its principal to
oral care companies regarding the manufacturing and
licensing of products under the AQUAJETT mark.
In sum, applicant has no documentation to demonstrate
that it had the requisite bona fide intent to use the mark
AQUAJETT in commerce when it filed the present application.
As evidenced by its responses to discovery requests,
applicant has no plans relating to manufacture, licensing,
marketing or use of the mark. So as to be clear, the record
is devoid of any evidence such as manufacturing efforts,
licensing efforts, test marketing, correspondence with
prospective licenses, preparation of marketing plans or
business plans, creation of labels, marketing or promotional
materials, and the like.
Opposition No. 91178539
13
Applicant has not rebutted opposer's showing that
applicant lacked the requisite bona fide intent. The fact
that applicant filed applications for various marks,
including the one at issue herein, hardly establishes a bona
fide intent to use the mark. If the filing and prosecution
of a trademark application constituted a bona fide intent to
use a mark, then in effect, lack of a bona fide intent to
use would never be a ground for opposition or cancellation,
because an inter partes proceeding can only be brought if
the defendant has filed an application. See Research In
Motion Ltd. v. NBOR Corp., 92 USPQ2d 1926, 1931 (TTAB 2009).
However, our precedent and the legislative history of the
Trademark Law Revision Act clearly contemplate such a
claim.27 The absence of documentation coupled with
applicant's failure to take testimony or offer any evidence
supporting its bona fide intent to use the AQUAJETT mark in
connection with the identified goods convince us that
applicant did not possess a bona fide intent to use the
mark.
Further, applicant's mere statement that it intends to
use the mark, and its denial that it lacked a bona fide
intent, do not establish, in fact, that it had a bona fide
intent to use the mark in commerce when it filed the
involved application. Evidence bearing on bona fide intent

27 Trademark Law Revision Act of 1988, 15 U.S.C. §1051 (1982).
Opposition No. 91178539
14
is “objective” in the sense that it is evidence in the form
of real life facts and by the actions of the applicant, not
solely by applicant's uncorroborated testimony as to its
subjective state of mind. That is to say, Congress did not
intend the issue to be resolved simply by an officer of
applicant later testifying, “Yes, indeed, at the time we
filed that application, I did truly intend to use the mark
at some time in the future.” J.T. McCarthy, McCarthy on
Trademarks and Unfair Competition, §19:14 (4th ed. 2009).
Here, the lack of documentation or testimony clearly
outweighs any subjective or sworn intent to use the mark.
Cf. Imperial Tobacco Ltd. v. Philip Morris Inc., 14 USPQ2d
1390, 1394 (Fed. Cir. 1990) (“Nothing in the statute
entitles a registrant who has formerly used a mark to
overcome a presumption of abandonment arising from
subsequent nonuse by simply averring a subjective
affirmative ‘intent not to abandon.’”).
As discussed above, applicant’s vague and speculative
statements in the minutes from its annual meetings fail to
make any mention of the AQUAJETT mark or the goods
identified thereby. Similarly, the patent registrations and
asserted prototype fail to mention the AQUAJETT mark or
provide evidence that applicant had a bona fide intent to
use such mark on oral irrigators at the time applicant filed
the involved trademark application. The asserted letters
Opposition No. 91178539
15
sent by applicant’s principal to potential manufacturers of
the identified goods are not of record, and applicant’s
principal testified that he cannot remember to whom they
were sent. Furthermore, the mere fact that applicant’s
principal is a practicing dentist who attends trade shows at
which oral irrigators are marketed by others falls far short
of demonstrating that applicant itself sought to market the
oral irrigators under its AQUAJETT mark at such trade shows.
Similarly, the statements by applicant’s principal that he
contemplated whether the identified goods would be directly
marketed by applicant or licensed to a third party and that
he considered who would be the intended consumers of the
goods fail to demonstrate that applicant possessed a bona
fide intent to use the AQUAJETT at the time the application
was filed.
Finally, applicant argues that opposer has failed to
introduce evidence that applicant acted in bad faith and
that “Opposer’s claim that Applicant did not have a bona
fide intent to use the AQUAJETT mark in connection with the
identified good should be denied because Opposer’s claim is
necessarily an allegation of fraud that has neither been
sufficiently pled nor proven by clear and convincing
evidence.”28 In so arguing, applicant essentially seeks to
conflate the requirements for pleading and proving the lack

28 Applicant’s brief, p. 1-2.
Opposition No. 91178539
16
of a bona fide intent to use a mark with the requirements
for pleading and proving fraud. This is incorrect.
Applicant cites to no authority for its apparent position
that a plaintiff seeking to prove that an applicant lacked a
bona fide intent to use its mark at the time it filed its
application must demonstrate that applicant acted in bad
faith and intended to deceive the USPTO. To the contrary,
the absence of evidence of an applicant’s bona fide intent
to use a mark does not necessitate a showing that such
applicant acted in bad faith. Simply put, the lack of a
good faith intent to use a mark does not equate to bad
faith.
Priority and Likelihood of Confusion
Because we have found that applicant lacked a bona fide
intention to use the mark in commerce at the time it filed
the involved application, we decline to make a determination
on the merits on the ground of priority and likelihood of
confusion. See American Paging Inc. v. American Mobilphone
Inc., 13 USPQ2d 2036 (TTAB 1989), aff'd unpublished, 17
USPQ2d 1726 (Fed. Cir. 1990).
Decision
The opposition is sustained on the ground of a lack of
bona fide intention to use the mark in commerce; and
registration to applicant is refused.