For Life Products, LLC v. Virox Technologies, Inc. et al

Filing 104

OPINION and ORDER denying 49 Motion to Dismiss Counts V and VI of the First Amended Complaint. Signed by Judge James P. Jones on 7/14/2021. (flc)

IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF VIRGINIA
ABINGDON DIVISION
FOR LIFE PRODUCTS, LLC,
Plaintiff,
v.
UNIVERSAL COMPANIES, INC.,
ET AL.,
Defendants.

)
)
)
)
)
)
)
)
)
)

Case No. 1:20CV00016
OPINION AND ORDER
By: James P. Jones
United States District Judge

Terry L. Clark, Matthew D. Zapadka, and Brian R. Iverson, B ASS, BERRY &
SIMS, PLC, Washington, D.C., for Plaintiff; Geoffrey M. Bohn, BOHN & BATTEY,
PLC, Arlington, Virginia, and Shawn R. Farmer, MUSKIN & FARMER, LLC, Lansdale,
Pennsylvania, for Defendants.
In this intellectual property case, For Life Products, LLC
Products
Companies

For Life

has sued
Virox Technologies, Inc.

alleging various trademark

and unfair competition claims, including fraudulent procurement of a trademark and
cancelation of a descriptive trademark. The defendants have moved under Rules
12(b)(6) and 9(b) to dismiss the latter two claims. For reasons that follow, the
motion will be denied.

I.
The plaintiff alleges in the First Amended Complaint the following facts,
which I must take as true and draw al

for

the purpose of deciding the Motion to Dismiss.
A.
For Life Products manufactures and sells household and commercial cleaning,
restoration, and surface care products under several of its Rejuvenate trademarks.1
For Life Products launched its Rejuvenate line in 1999. Its catalog now lists over
70 Rejuvenate products to treat a variety of surfaces, including hardwood, vinyl,
laminate, tile, grout, countertops, upholstery, clothing, furniture, as well as
automobiles, and boats.

For Life Products markets many products, such as

Rejuvenate all-purpose cleaner, antibacterial floor cleaner, and all floors quick clean
wipes.

products are sold through commercial retailers like

In 2006, For Life Products registered with the United States Patent and
Trademark Office ( USPTO ) the Rejuvenate trademark for polishes on floors,
cabinets, and furniture. Over the next few years, For Life Products registered similar
trademarks with the USPTO for other goods, such as Rejuvenate Deep Clean!, an

1

For clarity, hereinafter
trademarks will be styled as
trademark will be styled as REJUVenate.
-2-

all-purpose cleaner; Rejuvenate Refresher for household cleaning products;
Rejuvenate Megaclean, a laundry pre-treatment and stain remover for fabrics,
clothing, and carpet; and Rejuvenate Versa Clean for household mops. For Life
Products has used Rejuvenate for surface care products since January 2016.
On September 3, 2019, Virox registered with the USPTO a similarly styled
trademark,

[a]ll-purpose disinfectants for infection control
First Am. Compl. ¶ 59, ECF No. 49. Virox has

marketed its products to salons, spas, medical offices, and cruise ships, selling them
through the website of its exclusive distributor, defendant Universal Companies, and
on Amazon.com.
Although the USPTO has granted Virox the exclusive right to use
REJUVenate only on the category of goods described above, the plaintiff alleges
that the defendants have intentionally used
that fall within the scope of goods covered by

trademark on cleaning products
mark. According

to the First Amended Complaint, Virox and Universal Companies have marketed
and sold REJUVenate disinfectant cleaner, disinfectant cleaner concentrate, and
disinfectant cleaner ready to use spray on Amazon, causing customers to purchase
For Life Products manufactures
them. The First Amended Complaint alleges that Virox fraudulently induced the
USPTO to issue the REJUVenate mark by mischaracterizing the goods it would use
-3-

in connection with the mark, and making materially false statements or omissions
about whether anyone else had the right to use a similar mark in a way that would
likely cause confusion.
B.
The allegations of fraud
applications. On January 20, 2017,

Dolly Kao, filed a

all purpose disinfectants

Id. ¶ 43.2

The next day, January 21, 2017, Virox filed a similar application with the United
States PTO to register REJUVenate
Id. ¶ 44. Virox pursued registration in the United
States on the bases of its pending Canadian application under 15 U.S.C. § 1126(d),
to use the mark in commerce under 15 U.S.C. § 1051(a),
(b). On April 25, 2017, the United States trademark examiner sent a letter to Kao
rejecting

because it was confusingly similar to For Life

2

Dolly Kao served as
registered trademark agent and submitted filings on
behalf to the Canadian Intellectual Property Office and USPTO. Kao filed some
documents c/o Dolly Kao Professional Corpor
others with a letterhead or email
address corresponding to Perry + Currier Patent and Trademark Agents. First Am. Compl.
Ex. 11, Canadian Trademark File 7, ECF No. 49-11; Id. at Ex. 12, USPTO Trademark File
83, ECF No. 49-12.
-4-

registered trademarks for Rejuvenate Deep Clean, Rejuvenate Refresher,
and Rejuvenate Auto. Id. at Ex. 12, USPTO Letter 119 3, ECF No. 49-12.
To cure this deficiency, Virox made the first alleged misrepresentation
mischaracterizing its goods to appear different than those covered under For Life
trademark. Kao

,

USPTO

application deleted the Class 003 goods and changed the Class 005 description from
[a]ll-purpose cleaner disinfectants for infection control and
prevention and biosecurity. Id. at Kao Letter 78, ECF No. 49-12.
Virox made a second fraudulent statement when it attached to that amendment
an October 23, 2017, declaration of
applied-for trademark

-purpose cleaner disinfectants for infection

control and prevention and biosecurity. The subject goods are disinfectants with
cleaning properties. Virox does not make and sell cleaning products, per se

Id. ¶

at Ex. 13, Pilon Decl. 1, ECF No. 49-13.

Canadian trademark application. On October 26, 2017, the Canadian examiner
wrote to Kao, reporting

REJUVenate mark was not registerable because

is considered to be confusing w

Canadian Rejuvenate

trademark. Id. at Ex. 11, at 35, ECF No. 49-11. After Virox unsuccessfully tried to
amend its Canadian application, the Canadian examiner objected on the same
-5-

grounds in a May 23, 2018, letter to Perry + Currier. That letter stated that placing
REJUVenate and
the average Canadian consumer of average intelligence to immediately conclude that
For Life Products. Id. at 34. These issues would cause
Virox to eventually abandon its Canadian trademark application. Consequently,
Virox could no longer rely on that foreign application as a basis to register
REJUVenate with the USPTO.
In order to register REJUVenate on the only remaining basis, use or intent to
use in commerce, Virox told the USPTO that no one else had the right to use a similar
mark in a way that would cause confusion, even though Virox had been advised to
the contrary. Indeed, to register a mark based on use or intention to use the mark in
commerce, the applicant must submit a verified statement, attesting that
person has the right to use such mark in commerce either in the identical form thereof

(a)(3)(D),
(b)(3)(D). To meet this requirement, on October 26, 2018, Virox submitted a
declaration signed by Randy Pilon, stating:
no other persons,
except, if applicable, authorized users, members, and/or concurrent
users, have the right to use the mark in commerce, either in the
identical form or in such near resemblance as to be likely, when
used on or in connection with goods/services/collective membership
-6-

organization of such other persons, to cause confusion or mistake, or
to deceive.
First Am. Compl. Ex. 12, Pilon Decl. 33 34, ECF No. 49-12 (emphasis
added). This statement was false because Virox submitted it after examiners had put
it on notice that REJUVenate could be confused with

Canadian

and American marks.
On September 3, 2019, the USPTO issued Virox a trademark for
REJUVenate. The plaintiff claims that Virox fraudulently procured the mark, as the
USPTO only granted the application because Virox mischaracterized its goods, and
falsely disclaimed the likelihood of confusion with other marks. The plaintiff further
alleges that REJUVenate is insufficiently distinct to warrant trademark protection
because it merely describes the function of

products and has not attained a

secondary meaning.
The defendants have moved to dismiss Count V of the First Amended
Complaint (fraud on the USPTO) under Rule 12(b)(6), arguing that the plaintiff does
not plausibly allege the identified statements were knowingly false, material, or
made with fraudulent intent. They contend that Count V should alternatively be
dismissed under Rule 9(b), because the plaintiff does not allege the circumstances
of the fraud with particularity. Finally, the defendants argue that Count VI of the
First Amended Complaint (cancellation of a descriptive trademark) should be
dismissed because REJUVenate does more than simply describe the function of
-7-

products. The Motion to Dismiss has been fully briefed and is ripe for
review.3
II.
When deciding a motion to dismiss under Federal Rule of Civil Procedure

Fessler v. IBM Corp., 959 F.3d 146, 151 5
only the legal sufficiency of the complaint, and not the facts in support of it, are
tested under a Rule 12(b)(6) motion, [the court] assume[s] the truth of all facts
alleged in the complaint and the existence of any fact that can be proved, consistent
Id.4

Id. (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007)).
Fraudulent procurement is a type of fraud claim and thus subject to the
heightened pleading requirements of Rule 9(b). To satisfy Rule 9(b), a plaintiff must
plead the time, place, and contents of the false representations, as well as the

3

I will dispense with oral argument because the facts and legal contentions are
adequately presented in the materials before the court and argument would not significantly
aid the decisional process.
4

Internal quotations, marks, citations, and alterations are omitted throughout this
Opinion unless otherwise specified.
-8-

Harrison v. Westinghouse Savannah River Co., 176 F.3d 776, 784 (4th Cir. 1999).
A fraud
claim likely passes muster under Rule 9(b) if the court is satisfied (1) that the
defendant has been made aware of the particular circumstances for which [it] will
have to prepare a defense at trial, and (2) that plaintiff has substantial prediscovery
Harrison, 176 F.3d at 784.
III.

In re Bose Corp., 580 F.3d 1240, 1243
(Fed. Cir. 2009). To succeed on a fraudulent trademark procurement claim, a
plaintiff must show that the defendant

knowingly made false, material

representations of fact and intended to deceive the Patent and Trademark Office.
Resorts of Pinehurst, Inc. v. Pinehurst Nat. Corp., 148 F.3d 417, 420 (4th Cir. 1998).
The plaintiff asserts that Virox made fraudulent statements in October 2017
when Kao and Pilon mischaracterized

and when Pilon disclaimed

confusion with similar marks on October 26, 2018. However, the defendants argue
that the First Amended Complaint has not alleged those statements were false,
intended to defraud, or material. They further contend that the First Amended
Complaint has not alleged the fraud with particularity as required by Rule 9(b).
-9-

A.
The plaintiff

s of

goods were false. Specifically, the plaintiff claims that Virox describing its
goods as all-purpose disinfectants for infection control and prevention and

the scope of

mark. First Am. Compl. ¶ 63, ECF No. 49. On the

other hand, the defendants counter that the description is not actually false because
its goods are

Resp. Opp

ECF No. 63.

Mot. Dismiss 8,

actually disinfectants as it represented

to the USPTO, cleaners as For Life Products suggests, or both, is a factual question
that may be determined at a later stage of litigation by the fact-finder, perhaps with
the assistance of expert testimony.5 At this juncture, I must accept as true For Life
well-pled allegation

.

Additionally, the plaintiff plausibly alleges that Virox mischaracterized its
goods with fraudulent intent, namely to deceive the USPTO into registering the
mark. Virox had been repeatedly unsuccessful in registering its trademark to use
with other goods. After the USPTO denied the use of REJUVenate on cleaners,

5

motion to dismiss points to different scientific definitions of disinfectants
and cleaners to argue that its products fall within the former category. Reply Supp. Mot.
Dismiss 13, ECF No. 67. But these are facts outside the First Amended Complaint thatI
cannot consider at the motion to dismiss stage.
-10-

Virox corrected course and represented that it would only use REJUVenate on allpurpose disinfectants. But according to the plaintiff, the defendants still used the
mark on cleaning products. These allegations permit the inference that any false
mischaracterization of the products as disinfectants was intentionally deceptive.
Finally, the plaintiff has plausibly alleged that
. Because the USPTO had previously rejected

confusion with

mark, it is reasonable to infer that describing
the cleaners within the scope

of

mark was necessary for registration.
Virox argues that even if describing its products as disinfectants was false,

that description was not be material because the patent examiner knew that Virox
intended to use REJUVenate on products with cleaning properties and approved the
application anyway. Indeed, Pilon

, declaration representing that
of

infectant cleaners

First Am. Compl. Ex. 12, Pilon

Decl. 83 118, ECF No. 49-12. But this argument assumes that the examiner actually
reviewed and considered these product samples. It also fails to account for the
plausible scenario that the examiner reasonably expected Virox would only use
REJUVenate on disinfectant products as the application purported, even if it had
-11-

sold disinfectant cleaners in the past. In any event, the defendants arguments to
bely materiality sidestep the operative question at this procedural stage, namely
whether there are sufficient factual allegations to plausibly infer materiality.
B.
The First Amended Complaint also contains sufficient factual allegations to
October 26, 2018, disclaimer that REJUVenate
would not likely be confused with similar marks. The defendants contend that this
statement cannot be fraudulent because Pilon subjectively believed the statements to
Mem. Supp. Mot. Dismiss 9,
ECF No. 62-1.

here is no fraud if a false misrepresentation is occasioned

In re Bose Corp., 580 F.3d at 1246. Moreover, a
fraudulent procurement claim. Id. at 1245 (holding
that a false statement occasioned by an

does not establish

a subjective intent to deceive). Thus, according to the defendants,

caveat

renders any false statement in the declaration a good faith belief incapable of
evidencing fraudulent intent. But these arguments invite inappropriate factual
determinations at the motion to dismiss stage.
What is relevant at this juncture is that the First Amended Complaint contains
sufficient allegations to plausibly infer that Pilon
-12-

disclaimer was false, material

and made to deceive the USPTO. The statement is alleged to be false because Pilon
knew there would be a likelihood of confusion with

mark as the

USPTO and Canadian examiners
very reason.

The plaintiff plausibly alleges materiality and fraudulent intent by

asserting that Pilon made the false disclaimer to improperly secure registration of
REJUVenate, and that the registration would not have been issued without such a
statement.
C.
The defendants argument that the fraudulent procurement claim does not
meet

lacks merit. For Life Products has alleged

(1) the identities of the specific individuals acting on behalf of Virox who
Kao and Randy Pilon); (2) the
place of the misrepresentations (the USPTO); (3) the dates of when those
misrepresentations were made to the USPTO during prosecution (e.g., October 23,
2017, October 24, 2017, and October 26, 2018); (4) the contents of the
misrepresentations (misrepresentation of the goods that would be used in connection
with the mark, and whether REJUVenate would be confused with similar marks);
(5) that Virox knowingly made these misrepresentations to obtain its REJUVenate
registration; and (6) that the USPTO relied on the misrepresentations to allow
registration of the Rejuvenate mark. The particularized allegations in the First
-13-

Amended Complaint put the defendants on notice of the claims against them, and
allowed them to prepare a defense at trial. For Life Products has also provided the
defendants with a voluminous record of prediscovery evidence regarding its claims,
attached as exhibits to the First Amended Complaint. This is enough to comply with
Rule 9(b).
IV.
The defendants have also moved to dismiss Count VI of the First Amended
Complaint which seeks to cancel REJUVenate because it is merely descriptive.
[O]nly distinctive marks garner the protection of trademark law

Paleteria La

Michoacana, Inc. v. Productos Lacteos Tocumbo S.A. De C.V., 743 F. App x 457,
464 (D.C. Cir. 2018) (unpublished).

-mark is to point

distinctively, either by its own meaning or by association, to the origin or ownership
of the wares to which it is applied.

Estate of P.D. Beckwith, Inc. v. Comm r of

Patents

[t]he requirement of distinctiveness is
Restatement (Third) of Unfair

Competition § 13

(1995).

The Fourth Circuit has analyzed distinctiveness in terms of a spectrum
reflecting four categories of marks which garner different protection: (1) generic, (2)
descriptive, (3) suggestive, and (4) arbitrary or fanciful. Ashley Furniture Indus.,
Inc. v. SanGiacomo N.A. Ltd., 187 F.3d 363, 369 (4th Cir. 1999). A descriptive mark
-14-

Id.; see W.E. Bassett Co. v. Revlon, Inc.,
354 F.2d 868 (2d Cir.1966) ( T

for manicuring implements). A mark in this

category
marketplace (Ashley Furniture Indus., Inc., 187 F.3d at 369), whereby consumers
understand[ ] that the mark, when used in context, refers, not to what the descriptive
word ordinarily describes, but to the particular business that the mark is meant to
Perini Corp. v. Perini Constr., Inc., 915 F.2d 121, 125 (4th Cir. 1990).
The party challenging the validity of a registered trademark has the burden to show
that it is invalid.

Pizzeria Uno Corp. v. Temple, 747 F.2d 1522, 1529 (4th Cir.

1984).
Here, For Life Products has alleged that REJUVnate merely describes the
that the mark has appropriated the secondary
meaning of

senior mark without establishing any independent

meaning of its own. The defendants retort that REJUVenate does not describe the
function of

ct does not rejuvenate

anything --

Mem. Supp. Mot. Dismiss

15, ECF No. 62-1.
Determining the appropriate categorization for REJUVenate and whether it
has attained secondary meaning are factual questions. It would be inappropriate to
determine these issues at the motion to dismiss stage. Field of Screams, LLC v.
-15-

Olney Boys & Girls Cmty. Sports Ass n, No. DKC 10-0327, 2011 WL 890501, at *6
(D. Md. Mar. 14, 2011) (collecting cases); see also Dayton Progress Corp. v. Lane
Punch Corp., 917 F.2d 836, 839 (4th Cir. 1990) (

district court s finding as to the

category in which a mark belongs is reviewed under the clearly erroneous
. In this case, I must accept as true

allegations that
For Life

mark, has not acquired a secondary meaning in the market. These
allegations are enough to survive a motion to dismiss.
V.
For the foregoing reasons, it is ORDERED that the defendants Motion to
Dismiss Counts V and VI of the First Amended Complaint, ECF No. 49, is DENIED.
ENTER: July 14, 2021
/s/ JAMES P. JONES
United States District Judge

-16-