GDM Enterprises, LLC v. Astral Health & Beauty, Inc. et al

Filing 123

ORDER granting in part and denying in part 99 motion for partial summary judgment and denying 103 motion to strike. Signed on 9/30/19 by District Judge Stephen R. Bough. (Diefenbach, Tracy)

IN THE UNITED STATES DISTRICT COURT FOR THE
WESTERN DISTRICT OF MISSOURI
WESTERN DIVISION
GDM ENTERPRISES, LLC,

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Plaintiff,
v.
ASTRAL HEALTH & BEAUTY, INC., et al.,
Defendants

Case No. 17-1069-CV-W-SRB

ORDER
Before the Court are Defendants’ Motion for Partial Summary Judgment Cancelling U.S.
Trademark Registration No. 4,541,526 (Doc. #99) and Plaintiff’s Motion to Strike Defendants’
Motion for Reconsideration of Partial Summary Judgment, and Suggestions in Support (Doc.
#103). For the following reasons, Defendants’ Motion (Doc. #99) is GRANTED IN PART and
DENIED IN PART, and Plaintiff’s Motion (Doc. #103) is DENIED.
I.

Legal Standard
Federal Rule of Civil Procedure 56(a) requires a court to grant a motion for summary

judgment if 1) the moving party “shows that there is no genuine dispute of material fact” and 2)
the moving party is “entitled to judgment as a matter of law.” A nonmoving party survives a
summary judgment motion if the evidence, viewed in the light most favorable to the nonmoving
party, is “such that a reasonable jury could return a verdict for the nonmoving party.” Stuart C.
Irby Co. v. Tipton, 796 F.3d 918, 922 (8th Cir. 2015) (quoting Anderson v. Liberty Lobby, Inc.,
477 U.S. 242, 248 (1986)). While a plaintiff opposing summary judgment “may not simply
point to allegations in the complaint,” Robbins v. Becker, 794 F.3d 988, 993 (8th Cir. 2015)
(internal quotation marks and citation omitted), the “standard for avoiding summary judgment”

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is “relatively lenient.” Amgen Inc. v. Conn. Ret. Plans & Trust Funds, 568 U.S. 455, 479–80
(2013) (citing Anderson, 477 U.S. at 248). The purpose of summary judgment “is not to cut
litigants off from their right of trial by jury if they really have issues to try.” Hughes v. Am.
Jawa, Ltd., 529 F.2d 21, 23 (8th Cir. 1976) (internal quotation marks omitted) (quoting Poller v.
Columbia Broadcasting Sys., Inc., 368 U.S. 464, 467 (1962)).
II.

Background
Considering the parties’ statements of fact and supporting evidence in the light most

favorable to Plaintiff as the non-moving party, the Court finds the relevant facts to be as follows:
Plaintiff GDM Enterprises, LLC, and Defendants Astral Health & Beauty, Inc. and Astral
Brands, Inc. are all companies involved in the cosmetic industry. Plaintiff owns the registered
trademark for “PURE COSMETICS.” Plaintiff filed the application for the trademark on
September 19, 2012, with the United States Patent & Trademark Office (“PTO”). The
application was a use-based application under Section 1(a) of the Lanham Act, 15 U.S.C.
§ 1051(a). In its application, Plaintiff applied for registration of the trademark in International
Classes 3, 4, 16, and 21. Ultimately, Plaintiff deleted International Classes 4 and 16 from the
application, and the trademark registered for the product descriptions Plaintiff selected within
International Class 3, Cosmetics and Cleaning Preparations; and International Class 21,
Household Utensils.1
Plaintiff alleges Defendants are infringing on Plaintiff’s trademark by utilizing the
confusingly similar brand name, “Pür Cosmetics.” The claims that remain active in Plaintiff’s
Second Amended Complaint are for trademark infringement under 15 U.S.C. § 1114(1), Count
1; federal unfair competition/false designation of origin under 15 U.S.C. § 1125(a), Count 4; and

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Plaintiff selected over one hundred product descriptions within International Class 3 and ten product descriptions
within International Class 21.

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state common law unfair competition, Count 5. Defendants argue they cannot have infringed on
Plaintiff’s trademark because Plaintiff’s trademark is invalid and must be canceled. Defendants
bring two counterclaims—declaration of non-infringement, Counterclaim 1; and cancelation of
U.S. trademark for PURE COSMETICS, Counterclaim 2.
Early in the discovery period, Defendants moved for partial summary judgment on their
Counterclaim 2 and Plaintiff’s Count 1, arguing they could not have infringed on Plaintiff’s
trademark and that Plaintiff’s trademark should be canceled. Defendants argued Plaintiff’s
trademark registration was procured by fraud and the trademark is void ab initio as a result of
Plaintiff’s failure to use the trademark in commerce prior to the filing date of the application.
The Court denied Defendants’ motion with respect to the cancellation argument in part based on
the lack of development of the factual record. Because Plaintiff conceded in its briefing that
certain product descriptions should be eliminated from the trademark registration based on lack
of use prior to the application filing date, the Court instructed Plaintiff to clarify which product
descriptions should be eliminated and invited the parties to conduct further motion practice.
Defendants now move for partial summary judgment again on their Counterclaim 2 and
Plaintiff’s Count 1, arguing Plaintiff’s trademark registration is void ab initio, or, in the
alternative, that all but seven product descriptions must be stricken from the registration.
Plaintiff argues that 37 product descriptions should remain part of the trademark registration.
III.

Discussion
A. Cancelation of Trademark
To apply for trademark registration under Section 1(a) of the Lanham Act, the trademark

must be “used in commerce.” 15 U.S.C. § 1051(a)(1).

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The term “use in commerce” means the bona fide use of a mark in the ordinary
course of trade, and not made merely to reserve a right in a mark. For purposes of
this chapter, a mark shall be deemed to be in use in commerce—
(1) on goods when—
(A) it is placed in any manner on the goods or their containers or the displays
associated therewith or on the tags or labels affixed thereto, or if the nature of
the goods makes such placement impracticable, then on documents associated
with the goods or their sale, and
(B) the goods are sold or transported in commerce[.]
15 U.S.C. § 1127. The trademark must be “in use in commerce as of the application
date.” 37 C.F.R. § 2.34(a)(1)(i).
1. Void Ab Initio
Defendants argue that Plaintiff’s failure to timely cure its trademark registration should
result in the registration being canceled in its entirety. Plaintiff argues cancelation of the
registration in its entirety is not an appropriate remedy. A use-based trademark application is
void ab initio2 when “the applicant has not used the applied-for mark on any of the goods or
services identified in the application prior to the filing of the application.” Grand Canyon West
Ranch, LLC v. Hualapai Tribe, 78 U.S.P.Q. 2d 1696, 2006 WL 802407, at *1 (T.T.A.B. 2006).
However, in the absence of fraud, “as long as the mark was used on some of the identified goods
or services as of the filing of the application, the application is not void in its entirety.” Id. at *1.
“One way to cure the defect would be to delete from the description those goods or services on
which the mark was not used.” 6 J. Thomas McCarthy, McCarthy on Trademarks and Unfair
Competition, § 31:73 (5th ed. 2019). Viewed in the light most favorable to Plaintiff, Plaintiff’s
summary corporate records demonstrate that the trademark was used on two of Plaintiff’s goods
prior to the filing of the trademark application—body crème and anti-aging face to body lotion.
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“Void ab initio” means “[n]ull from the beginning.” Black's Law Dictionary 1064 (8th ed. 2004).

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Accordingly, the Court finds the registration is not void in its entirety. See Grand Canyon, 2006
WL 802407, at *1.
2. Partial Cancelation
Defendants argue alternatively that Plaintiff’s registration for use on body crème and
anti-aging face to body lotion should be limited to seven product descriptions within
International Class 3: beauty creams for body care; beauty lotions; body cream; body creams;
body lotion; body lotions; and non-medicated skin creams and lotions. Plaintiff argues its two
goods properly identify with thirty product descriptions within International Class 3 in addition
to the seven proposed by Defendants.3
“The identification of goods or services must be specific, definite, clear, accurate, and
concise.” In Re Petroglyph Games, Inc., 91 U.S.P.Q.2d 1332, 2009 WL 1759327, at *3
(T.T.A.B. 2009) (quoting TMEP § 1402.01) (emphasis in original). “With few exceptions, an
identification of goods and services will be considered acceptable if it: [d]escribes the goods
and/or services so that an English speaker could understand what the goods and/or services are . .
. [and] [i]s in the correct class, i.e., there is no language in the identification that makes
classification difficult or ambiguous; each class lists goods or services that are clearly in a single
class.” In Re Faucher Indus. Inc., 107 U.S.P.Q.2d 1355, 2013 WL 5407312, at *7 (T.T.A.B.
2013) (citing TMEP § 1402.01(a)). “An identification is unacceptable if it is inconsistent with

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The additional thirty product descriptions Plaintiff proposes are: cosmetics; cosmetic creams; cosmetic
preparations, namely, firming creams; cosmetic preparations, namely, firming lotions; cosmetic preparations for skin
care; cosmetic preparations for skin renewal; cosmetics and cosmetic preparations; cosmetics and make-up;
cosmetics in the form of milks, lotions and emulsions; face and body beauty creams; face and body creams; face and
body lotions; face creams for cosmetic use; face milk and lotions; facial lotion; lotions for cosmetic purposes;
lotions for face and body care; lotions for skin, face; make-up; make-up for the face and body; non-medicated skin
creams; non-medicated skin creams and lotions; non-medicated skin care preparations, namely creams, lotions; nonmedicated skin care preparations, namely, lotion; non-medicated stimulating lotions for the skin; scented body
lotions and creams; skin and body topical lotions, creams and oils for cosmetic use; skin conditioning creams for
cosmetic purposes; skin lotion; skin lotions; and wrinkle-minimizing cosmetic preparations for topical facial use.

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the goods or services indicated by the specimens, or if the ordinary meaning of the identification
language is at variance with the goods or services evidenced by the specimens or any other part
of the record.” Id. (quoting TMEP § 1402.05). “The primary purposes for requiring a clear
identification of the goods in a trademark application are (i) to allow for informed judgments
concerning likelihood of confusion under 15 U.S.C. § 1052(d) and (ii) to allow for the proper
classification of the goods.” Id. (citing TMEP § 1402.0).
In accordance with this standard and the policy behind it, the record supports that the
following product descriptions, all within International Class 3, properly describe Plaintiff’s
body crème and anti-aging face to body lotion:
1. Beauty creams for body care;
2. Beauty lotions;
3. Body cream;
4. Body creams;
5. Body lotion;
6. Body lotions;
7. Cosmetics;
8. Cosmetic creams;
9. Cosmetic preparations, namely, firming lotions;
10. Cosmetic preparations for skin care;
11. Cosmetic preparations for skin renewal;
12. Cosmetics and cosmetic preparations;
13. Face and body lotions;
14. Facial lotion;

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15. Lotions for cosmetic purposes;
16. Lotions for face and body care;
17. Lotions for skin, face;
18. Non-medicated skin creams;
19. Non-medicated skin creams and lotions;
20. Non-medicated skin care preparations, namely, creams, lotions;
21. Non-medicated skin care preparations, namely, lotion;
22. Non-medicated stimulating lotions for the skin;
23. Skin conditioning creams for cosmetic purposes;
24. Skin lotion;
25. Skin lotions; and
26. Wrinkle-minimizing cosmetic preparations for topical facial use.
The cases cited by Defendants in support of their argument to limit Plaintiff’s registration
to seven product descriptions involve descriptions that were misleading and inaccurate in the
sense that the descriptions could be construed as corresponding with products across
International Classes. No such concern exists in this case, as the two goods at issue identify
solely with product descriptions within International Class 3. Defendants’ chief concern is with
Plaintiff’s argument that the two products are properly described as cosmetics and make-up. The
Court finds the products satisfy the definition of cosmetics. See 21 U.S.C. § 321(i) (“The term
‘cosmetic’ means articles intended to be rubbed, poured, sprinkled, or sprayed on, introduced
into, or otherwise applied to the human body or any part thereof for cleansing, beautifying,
promoting attractiveness, or altering the appearance[.]”). The Court, however, finds that Plaintiff
has produced no evidence sufficient to support the conclusion that body crème and face to body

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lotion are properly described as make-up, face milk, emulsions, or oils. Accordingly, Plaintiff’s
trademark registration for PURE COSMETICS is canceled as to all product descriptions except
for the 26 listed above.
IV.

Conclusion
Defendants’ Motion for Partial Summary Judgment Cancelling U.S. Trademark

Registration No. 4,541,526 (Doc. #9) is GRANTED IN PART and DENIED IN PART.
Defendants’ motion for summary judgment on their Counterclaim 2 and Plaintiff’s Count 1 on
the grounds that Plaintiff’s trademark should be canceled in its entirety as void ab initio is
DENIED. Defendants’ motion for cancelation of Plaintiff’s trademark as to all product
descriptions with which the trademark was not in use as of the application filing date is
GRANTED.
Plaintiff’s Motion to Strike Defendants’ Motion for Reconsideration of Partial Summary
Judgment, and Suggestions in Support (Doc. #103) is DENIED.
Pursuant to 15 U.S.C. § 1119, this Order is hereby certified to the Director of the PTO.
The Director shall make appropriate entry upon its records regarding the PURE COSMETICS
trademark, registration number 5451526, in accordance with this Order.

IT IS SO ORDERED.

/s/ Stephen R. Bough
STEPHEN R. BOUGH
UNITED STATES DISTRICT JUDGE
Dated: September 30, 2019

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