Tuesday, December 14, 2021

Sunbio loses trademark case at CAFC

The outcome

Sunbio Corporation appeals the Trademark Trial and Appeal Board’s cancellation of Sunbio’s “BF-7” mark for nutritional supplements. The Board cancelled the mark on the basis that Sunbio was not the owner of the BF-7 mark at the time of Sunbio’s application for registration because it had not used the mark. Sunbio appeals the cancellation on two grounds: (1) it did not have notice of the cancellation theory relied on by the Board until petitioner Biogrand Co. Ltd.’s reply brief at trial; and (2) substantial evidence does not support the Board’s finding of non-use. We conclude that Sunbio had sufficient notice of the argument ultimately accepted by the Board in cancelling Sunbio’s mark and that substantial evidence supports the Board’s finding that Sunbio was not the owner of the mark due to non-use. We therefore affirm.

Of the notice argument:

Sunbio’s lead argument on appeal is procedural. Sunbio contends that it was not aware of Biogrand’s theory that SmartNutri was the owner of the BF-7 mark until Biogrand’s reply brief before the Board and therefore Sunbio had “no meaningful opportunity to address it.” Appellant’s Br. 12–13. Thus, according to Sunbio, the Board’s reliance on this waived theory warrants reversal. Id. (citing Novosteel SA v. United States, 284 F.3d 1261, 1274 (Fed. Cir. 2002)). It is unclear whether Sunbio’s argument rests on principles of waiver or notice and opportunity to respond under the Administrative Procedure Act. In addition, Biogrand suggests that the APA’s notice provisions do not apply to Trademark Trial and Appeal Board proceedings. But we need not resolve either of these issues because, whether we view this issue as one of waiver or notice under the APA, we disagree with Sunbio based on review of the record below.


In Novosteel, we held an argument waived because it had not been raised until a summary judgment reply brief before the Court of International Trade and was not considered by that court; accordingly, we refused to “address that argument in the first instance.” Novosteel, 284 F.3d at 1264, 1273–74. Here, as explained above, the argument was made in Biogrand’s opening brief (and addressed in Sunbio’s response brief). Furthermore, the Board expressly considered the argument, negating the concern that we, as an appellate court, would be wandering down our own path in considering an argument the Board did not consider. See id. at 1274 (noting that “parties must give a trial court a fair opportunity to rule on an issue”)


Post a Comment

<< Home