PRODUCT SOURCE INTERNATIONAL, LLC v. NAHSHIN

Filing 95

MEMORANDUM OPINION re Cross-Motions for Summary Judgment. Signed by District Judge T. S. Ellis, III on 6/24/15. (klau, )

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF VIRGINIA
Alexandria Division
PRODUCT SOURCE

INTERNATIONAL, LLC,
Plaintiff, Counter Defendant,
Case No. l;14-cv-816
V.

LEONID NAHSHIN,
Defendant, Counter Claimant.

MEMORANDUM OPINION

This 15 U.S.C. § 1071(b) trademark dispute grows out of a decision of the Trademark
Trial and Appeal Board ("TTAB") to cancel plaintiff Product Source International, LLC's
("PSI") registration of the trademark "NIC OUT" for mechanical cigarette filters designed to

remove nicotine from cigarettes. In February 2010, defendant Leonid Nahshin ("Nahshin"), who
contends that he is the actual owner of the NIC OUT mark, filed a petition with the TTAB
seeking cancellation of PSI's registration of the NIC OUT mark. This petition succeeded, and on
June 21, 2013, the TTAB issued a decision cancelling PSI's registration of the NIC OUT mark.
In this § 1071(b) action, PSI contends that the TTAB incorrectly concluded that Nahshin, rather

than PSI, owns the NIC OUT mark and requests that PSI's registration of the mark be reinstated
pursuant to 15 U.S.C. § 1119, which provides that "[i]n any action involving a registered mark
the court may... restore canceled registrations." In response, Nahshin alleges three
counterclaims;

(1)

First, Nahshin asserts a claim for trademark infringement
on the ground that PSI's use of the "NIC OUT" mark
constitutes a "false designation of origin, false or
misleading description of fact, or false or misleading
representation of fact" that is likely to cause confusion or
1