Sunbio Corporation v. Biogrand Co., Ltd.

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
SUNBIO CORPORATION,
Appellant
v.
BIOGRAND CO., LTD.,
Appellee
______________________
2021-1433
______________________
Appeal from the United States Patent and Trademark
Office, Trademark Trial and Appeal Board in No.
92067124.
______________________
Decided: December 14, 2021
______________________
ALEXANDER J. F ARRELL , Best & Flanagan, LLP, Minne-
apolis, MN, argued for appellant.
BUB-J OO L EE , Lee Anav Chung White Kim Ruger &
Richter LLP, Los Angeles, CA, argued for appellee. Also
represented by T HOMAS H. RYOU, Ryou Law, Washington,
DC.
______________________
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SUNBIO CORP . v. BIOGRAND CO., LTD. 2
Before M OORE, Chief Judge, SCHALL and STOLL , Circuit
Judges.
STOLL , Circuit Judge.
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 cancella-
tion 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 con-
clude that Sunbio had sufficient notice of the argument ul-
timately 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.
BACKGROUND
I
The trademark at issue in this appeal is United States
Trademark Registration No. 4,932,313 for the term “BF-7,”
used for a variety of nutritional supplement goods. J.A. 27.
Sunbio filed its application to register the term BF-7 with
the United States Patent and Trademark Office in August
2015. Sunbio filed its application based on its alleged use
of the mark in commerce. J.A. 1096 (listing “SECTION
1(a)” as the filing basis); 15 U.S.C. § 1051(a) (Section 1(a)
allowing application for registration of a trademark “used
in commerce”); cf. 15 U.S.C. § 1051(b) (alternatively allow-
ing registration based on a “bona fide intention to use
trademark”).
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SUNBIO CORPORATION v. BIOGRAND CO., LTD. 3
To demonstrate its alleged use of the BF-7 mark in
commerce, Sunbio submitted two photographs of a product
as a specimen:
J.A. 1101–02; J.A. 14. Although the two photos showed the
term BF-7 being used on a nutritional supplement—specif-
ically, a supplement containing the ingredient Silk Fibroin,
known as BF-7—neither photograph included any refer-
ence to Sunbio. Instead, the product was colorfully labeled
with the name “SMARTNUTRI,” a company that was
founded and formerly controlled by Thomas Chang.
J.A. 1959 (Chang Dep. 107:3–11); J.A. 1952 (Chang
Dep. 78:2–4). Although Sunbio was also founded by
Mr. Chang (who is also currently Sunbio’s CEO), the two
are separate business entities. J.A. 1210–11.
For a number of years, SmartNutri sold nutritional
products, including supplements with Silk Fibroin in Ko-
rea. The supplier for the raw ingredient of BF-7 for both
SmartNutri and Sunbio was a Korean company called
BrainOn, Inc. BrainOn was founded by a former employee
of Biogrand, the party that petitioned for cancellation of
Sunbio’s registration in the proceeding under review in this
appeal. J.A. 1253. Biogrand claims (without dispute from
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SUNBIO CORP . v. BIOGRAND CO., LTD. 4
Sunbio) that it was the originator of the term BF-7—which
stands for “BRAINFACTOR-7”—and that it has been using
the BF-7 mark in Korea since 2004. Appellee’s Br. 6 (citing
J.A. 1247 (declaration of the Director of Biogrand)).
Around the 2015 to 2016 timeframe, Biogrand and
BrainOn were engaged in a legal dispute regarding Bi-
ogrand’s intellectual property. Appellant’s Br. 5 (citing
J.A. 1962 (Chang Dep. 120:13–21)).
This dispute between Biogrand and BrainOn (Sunbio
and SmartNutri’s supplier) led to serious consequences for
SmartNutri due to SmartNutri’s sales activities for BF-7
products. In early 2016, SmartNutri was raided in Korea
by the police and criminally charged for its actions regard-
ing certain statements advertising BF-7 on its website. Id.
(citing J.A. 1946 (Chang Dep. 57:12–25)); see also
J.A. 1953–54 (Chang Dep. 85:16–87:22). SmartNutri shut
down shortly thereafter towards the end of 2016. It was
during this same timeframe that Sunbio filed its trade-
mark application for the term BF-7 in the United States.
II
Biogrand petitioned the PTO for cancellation of Sun-
bio’s BF-7 registration in October 2017. J.A. 33–58. Bi-
ogrand included several grounds for cancellation, including
that Sunbio “was not, at the time of the filing of [Sunbio’s]
Application, the rightful owner of the [BF-7] Mark for the
goods identified in the Registration.” J.A. 39. Sunbio filed
an answer to Biogrand’s petition. J.A. 59–67. Both sides
moved for summary judgment and the motions were de-
nied. J.A. 465–78. Under the Board’s procedures in a can-
cellation proceeding, the parties filed trial briefs—
petitioner’s main brief, registrant’s main brief, and peti-
tioner’s reply—and the Board held an oral hearing. See
Trademark Trial and Appeal Board Manual of Procedure
(TBMP) § 800 et seq.
The Board granted Biogrand’s petition for cancellation
on the sole basis that Sunbio was not the owner of the BF-7
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SUNBIO CORPORATION v. BIOGRAND CO., LTD. 5
mark at the time it filed its registration application. Bi-
ogrand Co. v. Sunbio Corp., No. 92067124, 2020 WL
6255442, at *3 (T.T.A.B. Oct. 21, 2020) (Board Decision).
The Board did not address Biogrand’s alternative theories
for cancellation.
Sunbio appeals. We have jurisdiction under 28 U.S.C.
§ 1295(a)(4)(B).
D ISCUSSION
On appeal, Sunbio makes two arguments. First, Sun-
bio argues it had no notice of Biogrand’s theory that
SmartNutri, rather than Sunbio, was the owner of the BF-7
mark until Biogrand’s reply brief before the Board. Accord-
ing to Sunbio, this lack of notice warrants reversal. Sec-
ond, Sunbio argues that substantial evidence does not
support the Board’s factual determination that Sunbio was
not the owner of the BF-7 mark at the time of its registra-
tion based on the theory that the record evidence of use in
commerce pointed not to Sunbio, but to SmartNutri in-
stead. As explained below, we disagree with Sunbio on
both points and affirm.
We review the Board’s legal conclusions de novo and its
factual findings for substantial evidence. In re Jobdiva,
Inc., 843 F.3d 936, 940 (Fed. Cir. 2016). Whether a mark
has been used to identify a particular good or service is a
question of fact. Id.; see also Lyons v. Am. Coll. of Veteri-
nary Sports Med. & Rehab., 859 F.3d 1023, 1028 (Fed. Cir.
2017) (“In a priority dispute, the Board’s determination
whether a trademark has been appropriated by first use in
commerce is a fact question that we review for substantial
evidence.”).
I
Sunbio’s lead argument on appeal is procedural. Sun-
bio contends that it was not aware of Biogrand’s theory
that SmartNutri was the owner of the BF-7 mark until Bi-
ogrand’s reply brief before the Board and therefore Sunbio
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SUNBIO CORP . v. BIOGRAND CO., LTD. 6
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 addi-
tion, Biogrand suggests that the APA’s notice provisions do
not apply to Trademark Trial and Appeal Board proceed-
ings. But we need not resolve either of these issues be-
cause, 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.
At the outset, we note that neither party identifies the
applicable standard of review. The Board’s rules address
waiver. See TBMP § 801.01 (“If a party fails to reference a
pleaded claim or affirmative defense in its brief, the Board
will deem the claim or affirmative defense to have been
waived.”). Typically, we give deference to the Board’s deci-
sions related to a party’s compliance with the Board’s own
rules. See Intelligent Bio-Sys., Inc. v. Illumina Cambridge
Ltd., 821 F.3d 1359, 1367 (Fed. Cir. 2016) (“Decisions re-
lated to compliance with the Board’s procedures are re-
viewed for an abuse of discretion.”); Dell Inc. v. Acceleron,
LLC, 884 F.3d 1364, 1369–70 (Fed. Cir. 2018) (applying
abuse of discretion standard in evaluating agency’s refusal
to consider “untimely argument”). Accordingly, we review
the Board’s decision to consider the issue of Sunbio’s own-
ership—and whether the activities pointed to by Sunbio
were, in fact, attributable to SmartNutri—for an abuse of
discretion. We review an agency’s compliance with the no-
tice provisions of the APA de novo. See In re IPR Licensing,
Inc., 942 F.3d 1363, 1369 (Fed. Cir. 2019) (citing In re
NuVasive, Inc., 841 F.3d 966, 970 (Fed. Cir. 2016)).
Because Sunbio’s argument is procedural, a more de-
tailed review of the record and proceedings that led to the
Board’s cancellation is helpful. Starting with the
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SUNBIO CORPORATION v. BIOGRAND CO., LTD. 7
registration itself, the right to register a trademark at the
federal level is based on ownership of the trademark, and
the ownership of a mark is established through the regis-
trant’s use in commerce. See 15 U.S.C. § 1051(a)(1); Cou-
ture v. Playdom, Inc., 778 F.3d 1379, 1381 (Fed. Cir. 2015).
In its 2015 application to register the term “BF-7,” Sunbio
alleged that it owned the mark because it had used it in
commerce prior to its application. J.A. 52–53. In support
of this claim of use, Sunbio submitted two pictures (shown
above) as a specimen. J.A. 1101–02. The PTO accepted
Sunbio’s uncontested claims of use and registered Sunbio’s
mark.
A year-and-a-half later, in October 2017, Biogrand pe-
titioned for cancellation of Sunbio’s registration arguing,
among other things, that “Registrant [Sunbio] is not, and
was not, at the time of the filing of Registrant’s Application,
the rightful owner of the Mark for the goods identified in
the Registration.” J.A. 39 (¶ 28); see 15 U.S.C. § 1064 (de-
scribing “Cancellation of registration”). Sunbio’s answer to
Biogrand’s petition summarily denied this allegation.
J.A. 63 (¶ 28). The parties then engaged in the normal
course of discovery before the Board. See TBMP § 400 et
seq.
After discovery, parties to a TTAB cancellation pro-
ceeding typically introduce evidence and then file “briefs on
the case” that act as trial briefs. TBMP §700 et seq.; id.
at § 800 et seq. Here, Biogrand, as petitioner, filed its open-
ing brief first. J.A. 2289–2331. This is the filing that Sun-
bio argues was deficient, justifying reversal on appeal.
Examining this brief, we agree with the Board that two sec-
tions of the brief are relevant to Biogrand’s argument that
the specific instances of use pointed to by Sunbio as estab-
lishing its ownership actually pointed to SmartNutri in-
stead, thus undermining Sunbio’s claim of ownership.
Board Decision, 2020 WL 6255442, at *7 & n.21 (citing
J.A. 2301–02, 2328–29).
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SUNBIO CORP . v. BIOGRAND CO., LTD. 8
The first section, located in Biogrand’s background
“Statement of Facts,” describes the relationship between
Thomas Chang, Sunbio, and SmartNutri, and analyzes the
preparation of the specimen photographs that Sunbio pre-
sented to the PTO as allegedly evidencing Sunbio’s use of
the mark. See J.A. 2301–02. There, Biogrand described
SmartNutri’s engagement of Medience Co. Ltd., an unre-
lated third-party Korean manufacturer, to manufacture
the specimen that Sunbio submitted as evidence of its own
use in its registration. J.A. 2301. According to Biogrand’s
brief, those specimen products were produced “for
SmartNutri” and “Medience did not work with, report to,
or sell products to Registrant Sunbio.” J.A. 2302. Further-
more, Biogrand contended that SmartNutri designed the
packaging and labeling for the specimen. Id. Thus, this
section directly contended that the specimen submitted by
Sunbio to the PTO as evidence of its use of the term BF-7
was actually attributable to SmartNutri.
Although this contention was in the background sec-
tion of Biogrand’s opening brief, Sunbio recognized it as an
argument against Sunbio’s claim of ownership, showing
that Sunbio was on notice of the cancellation theory ulti-
mately adopted by the Board. Specifically, in the section of
Sunbio’s response brief titled “Petitioner Has Not Estab-
lished Non-Use by Sunbio,” Sunbio countered Biogrand’s
argument that Sunbio was not involved in the manufacture
of the specimen product made by Medience. J.A. 2353–54.
In this section of its brief, Sunbio attempted to minimize
the testimony of a Medience representative who identified
SmartNutri, rather than Sunbio, as being involved in the
manufacture of the specimen. Most telling is the fact that,
for this rebuttal, Sunbio pointed to the very portion of Bi-
ogrand’s brief that it now argues on appeal was insufficient
to have put it on notice. J.A. 2354 (citing “72 TTABVUE
14,” which corresponds to J.A. 2302). Accordingly, Sunbio’s
response to this argument in its own trial brief shows that
it was aware of this argument and the Board’s decision was
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SUNBIO CORPORATION v. BIOGRAND CO., LTD. 9
not “decision by ambush” as Sunbio contends on appeal.
Appellant’s Br. 17–18.
The second portion of Biogrand’s opening brief refer-
enced by the Board further shows that Sunbio was on no-
tice of Biogrand’s theory of non-use. See J.A. 2328–29.
This section discussed abandonment—a different theory
for cancellation advanced by petitioner Biogrand.
J.A. 2328. A mark is “abandoned” when “use has been dis-
continued with intent not to resume such use.” 15 U.S.C.
§ 1127; see also Jobdiva, 843 F.3d at 940. Accordingly, use
in commerce is a predicate to a finding of abandonment.
Logically speaking, you cannot abandon something you
never owned in the first place. The abandonment section
of Biogrand’s brief makes clear that Biogrand was first pre-
serving an argument of non-use before going on to argue
abandonment. J.A. 2328.
In the first paragraph, Biogrand argued that “there
was just one sale of the ‘Smart Memory’ product made for
SmartNutri, a foreign company unrelated to Respondent.”
Id. Furthermore, Biogrand argued “there is no agreement
with SmartNutri relating to the BF-7 trademark,” indicat-
ing SmartNutri’s use would not be attributable to Sunbio.
Id. Then, Biogrand transitioned to abandonment in the
next paragraph: “assuming arguendo, that the single to-
ken sale of ‘SmartMemory’ could be attributable to [Sun-
bio],” it had abandoned the mark. Id. This section of the
brief further demonstrates that Biogrand’s position was
that the actions pointed to by Sunbio as showing use of the
mark were attributable to SmartNutri, not Sunbio, and
thus Sunbio did not own the mark. The Board did not
abuse its discretion in considering this argument; Sunbio
was on notice, and thus we reject its first argument on ap-
peal.
Because we conclude that Sunbio was on notice of Bi-
ogrand’s argument based on Biogrand’s opening trial brief,
Sunbio’s reliance on Novosteel is misplaced. Appellant’s
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SUNBIO CORP . v. BIOGRAND CO., LTD. 10
Br. 12. 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 “ad-
dress 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 ad-
dressed 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”).
II
Sunbio next argues that the Board’s finding that Sun-
bio did not own the mark is not supported by substantial
evidence. We disagree. The Board relied on: (1) evidence
relating to the alleged sales of finished BF-7 nutritional
products (e.g., the specimen) in the form of photos and tes-
timony of Mr. Chang and a Medience representative;
(2) evidence regarding sales of raw BF-7 materials in the
form of Sunbio’s sales records; and (3) evidence regarding
the advertising of the BF-7 mark from the websites of both
SmartNutri and Sunbio. As discussed below, this evidence
provides ample support for the Board’s finding that Sunbio
did not own the mark at the time of filing its application
for registration. The Board also found that SmartNutri’s
use of the mark could not be properly attributed to Sunbio
under the “related companies” doctrine.
A
We first consider the evidence on which the Board re-
lied in finding that Sunbio did not own the mark at the time
it filed its trademark registration application. As dis-
cussed below, that evidence more than satisfies the sub-
stantial evidence standard.
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SUNBIO CORPORATION v. BIOGRAND CO., LTD. 11
1
First, regarding finished nutritional products, the
Board examined the evidence regarding the creation of the
specimen, including the photos submitted by Sunbio with
its registration application shown above. J.A. 1101–02. As
noted above, the photos show a product that refers only to
“SMARTNUTRI” as a potential source, and, as the Board
found, Sunbio’s “company name is nowhere on the product
box.” Board Decision, 2020 WL 6255442, at *8.
The Board also reviewed testimony regarding the pro-
duction of the specimen—including the deposition testi-
mony of Mr. Chang, as well as the declaration and
deposition testimony of Mr. Sang Jae Park, a Medience rep-
resentative. Based on this evidence, the Board found that
SmartNutri, not Sunbio, was the party that worked with
Medience to make the sample product. Board Decision,
2020 WL 6255442, at *8–9. This finding is supported by
substantial evidence. Critically, in a portion of
Mr. Chang’s deposition cited by the Board, Mr. Chang tes-
tified that a “SmartNutri employee” prepared the packag-
ing for the specimen and assisted in developing the final
formulation for those sample products. Id. at *9 n.35 (first
citing J.A. 1950 (Chang Dep. 73:9–25 (testifying that
Chang prepared the label and packaging with his “employ-
ees back then in South Korea”)); and then citing J.A. 1951
(Chang Dep. 77:6–14 (naming a specific SmartNutri em-
ployee that prepared the packaging label))); id. at *8 n.31
(citing J.A. 1964–65 (Chang Dep. 129:20–130:12 (clarifying
that the employee assisted in the formulation))). According
to Mr. Chang, this SmartNutri employee was not an em-
ployee of Sunbio. Id. at *8 n.31 (citing J.A. 1965 (Chang
Dep. 130:13–18)). Likewise, in the portions of Mr. Park’s
declaration and deposition cited by the Board, he testified
that Medience made the sample products “in consultation
with SmartNutri” and sold those products “[o]nly to
SmartNutri.” Id. at *8 nn.29, 31 (first citing J.A. 1757
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SUNBIO CORP . v. BIOGRAND CO., LTD. 12
(Park Decl. ¶¶ 3–4); and then citing J.A. 2223 (Park
Dep. 17:8–11)).
The Board also considered Mr. Chang’s declaration ref-
erencing “email communications” that allegedly evidenced
sales of goods in 2014, along with a check for payment from
them. Id. at *10. The Board noted that, although the check
was “written to Sunbio Corporation,” the email communi-
cation was between the customer and Thomas Chang using
his SmartNutri email address (thomas@smartnutri.co.kr).
In addition, the “product was shipped in the same
[SMARTNUTRI-labelled] product box depicted in the
[specimen] photographs.” Id.
We agree with the Board that this evidence supports
its finding that Sunbio, at the time of filing its application
for registration of the BF-7 mark, was not the owner of the
mark because it had not used the mark in commerce for
finished nutritional products.
2
Second, the Board examined Sunbio’s alleged use of the
BF-7 mark as it related to the sales of raw materials (i.e.,
in powder form), finding the evidence of record as to that
use was deficient to show that Sunbio was the owner of the
mark. Board Decision, 2020 WL 6255442, at *9–10. The
Board examined the sales records submitted by Sunbio in
two groups: (1) the first two sales identified as “SNC001”
(identified as “BF-7 Silk Peptide”); and (2) the remaining
sales identified as “CQ001” (identified as any one of
“Cera-Q,” “Cera-Q (Silk Peptide),” or “Cera-Q (Silk Pep-
tide – BF-7)”). Id.; see also J.A. 2011–12.
For the first group of sales, the Board analyzed the pur-
chase orders introduced by Sunbio, one of which is shown
below:
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SUNBIO CORPORATION v. BIOGRAND CO., LTD. 13
J.A. 2177; see also J.A. 2178. At best, these purchase or-
ders are ambiguous as to Sunbio’s ownership because they
list “SunBio Corporation” as the “vendor,” but were created
on “SmartNutri Co., Ltd.” letterhead, which the Board
found as a factual matter “give[s] the clear impression that
SmartNutri is the ultimate source of the product and Sun-
bio is a middle-man re-seller.” Board Decision, 2020 WL
6255442, at *9.
The Board supported its interpretation of the purchase
orders by relying on Mr. Chang’s testimony, which the
Board found confirmed that “these [p]urchase [o]rders were
indeed invoices that SmartNutri issued in 2015 and 2016,
before the Korean authorities shut down SmartNutri.” Id.
(citing J.A. 1979–80 (Chang Dep. 200–01, 204)). Sunbio
challenges a select portion of this relied-upon testimony,
quoted below, arguing that it was “Biogrand’s counsel tes-
tifying” and suggesting Mr. Chang was confused by the re-
dacted purchase orders in front of him at the time.
Appellant’s Br. 28–29.
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SUNBIO CORP . v. BIOGRAND CO., LTD. 14
Q: And these were invoices that SmartNu-
tri issued before it was shut down; right?
So it’s early 2015 and early 2016 --
A: Okay
Q: --correct?
A: It was blacked out, so I don’t know, yes.
Okay.
J.A. 1979 (Chang Dep. 200:4–9). This selected portion of
Mr. Chang’s testimony is indeed equivocal, as Sunbio ar-
gues. But when the cited testimony is viewed as a whole
(as the Board undoubtedly did), it provides substantial ev-
idence supporting the Board’s finding that SmartNutri was
the source while Sunbio was a mere middle-man. Specifi-
cally, after Mr. Chang’s equivocal response, counsel re-
freshed his recollection by pointing to another document
that was an invoice “dated 2016 January 12th” (the same
date as the redacted invoice he was looking at),
J.A. 1979–80 (Chang Dep. 200:24–201:1), after which
Mr. Chang unequivocally testified:
Q: Okay. So looking at the way the pur-
chase order is set up, the sale is being made
by SmartNutri to Sunbio Corporation, but
the delivery is to the ultimate purchaser;
right?
A: Correct.
J.A. 1980 (Chang Dep. 201:20–24) (emphasis added). This
supports the Board’s finding that the sales of raw material
SNC001 for which Sunbio introduced purchase orders
would have been viewed as coming from SmartNutri, with
Sunbio being only a middle-man.
Next, the Board looked to the remaining orders of
“CQ001,” for which Sunbio did not introduce purchase or-
ders. The Board first noted that direct evidence of use on
raw materials was lacking, explaining that “[p]hotographs
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SUNBIO CORPORATION v. BIOGRAND CO., LTD. 15
of the drums containing raw silk fibroin peptide materials
and bearing BF-7 labels were not submitted into evidence.”
Board Decision, 2020 WL 6255442, at *10. Sunbio argues
on appeal that this meant the Board “did not consider how
goods other than those in the specimen were marked . . .
improperly shift[ing] the burden of proving validity to Sun-
bio.” Appellant’s Br. 27. Contrary to Sunbio’s assertion,
however, the Board did not rely solely on the fact that Sun-
bio did not introduce photographs and purchase orders for
these sales. The Board also relied on Mr. Chang’s testi-
mony that “the name on the air shipment documents and
product drum labels was changed from BF-7 to Cera-Q, as
a favor to [Sunbio’s] customer so as not to confuse further
downstream purchasers of the product re-sold in this
form.” Board Decision, 2020 WL 6255442, at *10 (citation
omitted). Notably, Sunbio does not challenge the Board’s
reliance on this portion of Mr. Chang’s testimony. We con-
clude that this testimony provides substantial evidence to
support the Board’s conclusion that these sales do not show
use of the BF-7 mark by Sunbio.
3
Lastly, the Board briefly addressed evidence in the rec-
ord regarding promotion of the BF-7 mark. The Board
noted that Sunbio’s website, depicted below, promoted a
product “bearing the CERA-Q trademark” rather than the
BF-7 trademark, and that the website of Sunbio’s sole cus-
tomer showed the same CERA-Q mark. Board Decision,
2020 WL 6255442, at *10 (first citing J.A. 1114; then citing
J.A. 1173–75; and then citing J.A. 1179–99).
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SUNBIO CORP . v. BIOGRAND CO., LTD. 16
J.A. 1174. In contrast, the Board found that SmartNutri’s
website, depicted below, showed “a silk fibroin product pro-
moted in association with the BF-7 trademark.” Id. (citing
J.A. 1138–72).
J.A. 1139. This documentary evidence provides further
support for the Board’s finding that Sunbio was not the
owner of the BF-7 mark.
* * *
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SUNBIO CORPORATION v. BIOGRAND CO., LTD. 17
The record evidence, viewed collectively, provides am-
ple support for the Board’s finding that “all indicia point to
SmartNutri as being the owner of the BF-7 mark when
[Sunbio] filed its underlying trademark application.”
Board Decision, 2020 WL 6255442, at *11.
B
We next consider the Board’s determination that
SmartNutri’s use of the BF-7 mark—of which there was
ample evidence—could not be properly attributed to Sun-
bio under the “related company” doctrine. Board Decision,
2020 WL 6255442, at *11–13 (citing 15 U.S.C. §§ 1055,
1127 (regarding the related company doctrine)). The Board
found as a factual matter that: (1) Sunbio “did not exercise
control over the nature and quality of goods sold by
SmartNutri in connection with the BF-7 mark” and
(2) SmartNutri “had no agreements with [Sunbio] concern-
ing the use of the BF-7 mark.” Id. at *12–13. We deter-
mine that substantial evidence supports these fact findings
and agree with the Board’s well-reasoned analysis and con-
clusion.
On appeal, Sunbio does not contest the Board’s finding
that Sunbio did not control SmartNutri such that
SmartNutri’s use should be attributable to Sunbio. In-
stead, Sunbio argues the Board erred by failing to consider
whether an agreement existed granting, from SmartNutri,
the rights to use the term BF-7 in the U.S. market to Sun-
bio. The Board considered this possibility and rejected it,
relying on three pieces of evidence. First, the Board relied
on the fact that Sunbio, in response to an interrogatory,
swore that it would produce documents “evidencing a li-
cense agreement to use the mark ‘BF-7’ in it[s] possession,”
but that no such licenses were introduced into the trial rec-
ord. Board Decision, 2020 WL 6255442, at *12 (alteration
in original) (citing J.A. 1210). Second, the Board noted
Sunbio’s response to a different interrogatory requesting
details of Sunbio’s “relations and communications with
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SUNBIO CORP . v. BIOGRAND CO., LTD. 18
SmartNutri,” to which Sunbio responded that “SmartNutri
. . . does not have any affiliation with [Sunbio].” Id. (quot-
ing J.A. 1210–11). Finally, the Board pointed to
Mr. Chang’s testimony that he endeavored to keep
SmartNutri and Sunbio separate. Id. (citing J.A. 1947–48
(Chang Dep. 59–64)). This record evidence provides more
than substantial evidence to support the Board’s factual
finding that SmartNutri “had no agreements with [Sunbio]
concerning the use of the BF-7 mark.” Id. at *13.
In response, Sunbio points to scant evidence on appeal
attempting to show the existence of a license from
SmartNutri to Sunbio. Principally, Sunbio relies on a short
portion of Mr. Chang’s deposition as establishing the exist-
ence of this agreement. Appellant’s Br. 19 (citing J.A. 1949
(Chang Dep. 68:21–24)). In that cited portion, Mr. Chang
testified that there were “two different finished products
[he] had made. One . . . did not bear ‘BF-7’ anywhere on
the label. The other one, which [he] was trying to launch
in the Korean community in USA had that name ‘BF-7.’”
J.A. 1949 (Chang Dep. 68:21–24). This testimony says
nothing of an agreement. Therefore, we conclude that sub-
stantial evidence supports the Board’s finding that
“SmartNutri . . . had no agreements with [Sunbio] concern-
ing the use of the BF-7 mark.” Board Decision, 2020 WL
6255442, at *13.
CONCLUSION
We have considered Sunbio’s remaining arguments on
appeal but find them unpersuasive. Because we conclude
that Sunbio was on notice of the theory relied upon by the
Board in cancelling Sunbio’s mark and because we con-
clude that substantial evidence supports the Board’s find-
ing that Sunbio was not the owner of the BF-7 mark at the
time of its trademark registration application, we affirm.
AFFIRMED
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