CERTIFICATE OF MAILING
`
`I hereby certify that this correspondence and the identified
`enclosures are being deposited with the U.S. Postal Service
`overnight Express Mail, postage prepaid, in an envelope addressed
`to: United States Patent & Trademark Office, Trademark Trial and
`Appeal Board, PO. Box 1451, Alexandria, Virginia 22313-1451
`on October 31, 2006.
`
`
`
`Serial No. 75/862,409
`File No. 63382-0002
`
`
`A B
`
`Simone Robinson
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`FORT JAMES OPERATING COMPANY,
`
`Opposer
`
`v.
`
`ROYAL PAPER CONVERTING, INC.
`
`Applicant
`
`Opposition No. 91 122964
`
`Application Serial No. 75/862,409
`
`Filed: December 2, 1999
`
`Mark: Emboss Design
`
`
`
`APPLICANT'S TRIAL BRIEF
`
`Bernard R. Gans, Esq.
`Brian W. Kasell, Esq.
`JEFFER MANGELS BUTLER & MARMARO LLP
`
`1900 Avenue of the Stars, Seventh Floor
`Los Angeles, California 90067-5010
`Telephone: (310) 203-8080
`Facsimile: (310) 203-0567
`
`Attorneys for Applicant
`ROYAL PAPER CONVERTING, INC.
`
`4273892vl
`
`

`
`TABLE OF CONTENTS
`
`Serial No. 75/862,409
`File No. 63382-0002
`
`Egg
`
`INTRODUCTION ............................................................................................................ .. 1
`
`STATEMENT OF THE ISSUES ...................................................................................... .. 2
`
`III.
`
`DESCRETION OF THE RECORD ................................................................................ .. 2
`
`A.
`
`B.
`
`Opposer's Evidence ............................................................................................... .. 2
`
`Applicant's Evidence ............................................................................................. .. 3
`
`STATEMENT OF FACTS ............................................................................................... .. 4
`
`A.
`
`B.
`
`Opposer and its SCRUBBING CIRCLE Marks ................................................... .. 4
`
`Applicant Royal Paper and Its Mark ..................................................................... .. 4
`
`ARGUMENT .................................................................................................................... .. 5
`
`A.
`
`B.
`
`C.
`
`Opposer's Standing ............................................................................................... .. 5
`
`Opposer's Priority ................................................................................................. .. 5
`
`Will There Be A Likelihood of Confusion Between the Parties‘ Marks? ............. .. 6
`
`VI.
`
`CONCLUSION ............................................................................................................... .. 14
`
`4273892vl
`
`i
`
`

`
`Serial No. 765/862,409
`File No. 63382-0002
`
`Pagegsz
`
`TABLE OF AUTHORITIES
`
`CASES
`
`In re." E. I. Du Pont De Nemours & Co.,
`
`177 U.S.P.Q. 563 (C.C.P.A. 1973) .................................................................................... ..7
`
`Han Beauty, Inc. v. Alberto-Culver Co.,
`57 U.S.P.Q. 2d 1557 (Fed. Cir. 2001) ................................................................................ ..7
`
`Hilson Research, Inc. v. Societyfor Human Resources Management,
`27 U.S.P.Q. 2d 1423 (1993) ............................................................................................. ..13
`
`Miles Laboratories, Inc. v. Naturally Vitamin Supplements, Inc.,
`1U.S.P.Q. 2d 1445 (1986) ............................................................................................... ..13
`
`STATUTES
`
`15 U.S.C. § 1057(c) ....................................................................................................................... ..5
`
`MISCELLANEOUS
`
`5 McCarthy on Trademarks and Unfair Competition, § 322180 (4th ed.) ................................... ..13
`
`4273892vl
`
`ii
`
`

`
`I.
`
`INTRODUCTION
`
`Royal Paper Converting, Inc. ("App1icant" or "Royal Paper") is defending an
`
`opposition brought by Fort James Operating Company ("Opposer" or "Fort James") against
`
`Royal Paper's application for a design mark to be used as an embossed pattern on paper towels
`
`and other paper products. Fort James is asserting a likelihood of confiasion with two design mark
`
`registrations it owns which issued from applications filed prior to Applicant's application.
`
`Opposer has named its registered designs, which also consist solely of embossed patterns,
`
`SCRUBBING CIRCLES.
`
`Opposer asserts that when members of the public see Applicant's paper towels
`
`and design they will be confused into believing that Applicant's product originated with the same
`
`company which sells BRAWNY® paper towels. In making this assertion, Opposer relies on
`
`evidence that its sales of products with the SCRUBBING CIRCLES are very large and that it has
`
`spent many millions of dollars advertising its paper towels bearing the SCRUBBING CIRCLES.
`
`However, notwithstanding Opposer's significant advertising expenditures and the
`
`similarity of the parties’ respective goods, Fort James' Opposition should be dismissed for the
`
`simple reason that there is no likelihood of confusion. There is no evidence that, afier six years
`
`of co-extensive use, anyone has ever been confilsed by the parties’ use of their respective design
`
`marks, nor is there any evidence that, separate from the brand name recognition that might flow
`
`from Opposer's advertising and sales, Opposer's registered emboss design marks have achieved
`
`significant enough consumer recognition to support a likelihood of confusion claim against
`
`Applicant's distinctively different emboss design.
`
`

`
`II.
`
`STATEMENT OF THE ISSUES
`
`The issues are:
`
`A.
`
`B.
`
`How strong are Opposer's marks?
`
`Do consumers, upon seeing the Opposer's SCRUBBING CIRCLES on paper
`
`towels, consider them to be indicators of source?
`
`C.
`
`Would consumers, upon seeing Applicant's mark, be confused, deceived, or
`
`mistaken that Applicant's paper towels come from the same company which sells
`
`BRAWNY® paper towels?
`
`III.
`
`DESCRIPTION OF THE RECORD
`
`A.
`
`Opposer's Evidence
`
`Opposer has made the following testimony and evidence of record:'
`
`1.
`
`Testimony of Gino Biondi, Director of Brand Marketing/Towels for
`
`Georgia-Pacific Corporation, and Exhibit Nos. 1-24 (filed Feb. 9, 2004), and Opposer's Notice of
`
`Filing of Testimony Responses and Objections to Written Cross-Examination of Gino Biondi
`
`(filed Feb. 1, 2005)?
`
`2.
`
`Rebuttal Testimony Declaration of Cheryl Barre, Senior Vice President of
`
`Retail Marketing for Georgia Pacific Corporation North American Consumer Products (filed
`
`July 20, 2006).
`
`3.
`
`Opposer's Notice of Reliance pursuant to Rule 2.120(j) on portions of the
`
`discovery deposition of Robert Sarrafzadeh, Chief Operating Officer and Vice President of
`
`Operations for Royal Paper Converting, Inc. and Exhibits 6 and 7 (filed Feb. 9, 2004).
`
`."
`, Exh.
`' References to declaration testimony will be designated as, for example "Biondi Decl. at 1]
`, lines _.
`References to deposition testimony will be designated as, for example, "Sarrafzadeh Disc. Dep. p.
`Notices of Reliance and accompanying exhibits are designated as, for example, "Opposer's Not. Of Rel.
`, Exh.
`
`ll
`
`September 24, 2004, the parties filed a Revised Joint Stipulation for Affidavit or Declaration Testimony.
`2
`
`

`
`4.
`
`Opposer's Notice of Reliance pursuant to Rule 2.120(j) on portions of
`
`discovery deposition of Sepehr Dardashti, Vice President of Sales and Marketing for Royal
`
`Paper Converting, Inc., and Exhibit 9 (filed Feb. 9, 2004).
`
`5.
`
`Opposer's Notice of Reliance Pursuant to Rule 2. l22(d)(2), containing
`
`status and title copies of Opposer's valid and subsisting pleaded U.S. Trademark Registration
`
`Nos. 2,582,686 and 2,582,685 (filed Feb. 3, 2004).
`
`6.
`
`Opposer's Notice of Reliance Pursuant to Rule 2.122(e), containing file
`
`histories for the applications that matured into Opposer's pleaded U.S. Registration Nos.
`
`2,583,686 and 2,582,695 (filed Aug. 5, 2004).
`
`7.
`
`Opposer's Rebuttal Notice of Reliance Pursuant to Rule 2. l22(e)
`
`consisting of copies of articles fiom printed publications of general circulation (filed July 20,
`
`2006).
`
`8.
`
`Opposer's Notice of Filing Cross-Examination Testimony Deposition of
`
`Robert Sarrafzadeh and Exhibits 1 and 2 (filed July 27, 2006).
`
`9.
`
`Opposer's Notice of Filing of Cross-Examination Testimony Deposition of
`
`Sepehr Dardashti and Exhibits 3-9 (filed July 27, 2006).
`
`B.
`
`Applicant's Evidence
`
`Applicant has made the following testimony and evidence of record:
`
`1.
`
`Declaration of Robert Sarrafzadeh, Vice President of Operations for Royal
`
`Paper Converting, Inc. (filed May 2, 2005).
`
`2.
`
`Declaration of Sepehr Dardashti, Vice President of Marketing Royal Paper
`
`Converting, Inc. and Exhibits A-K (filed May 2, 2005).
`
`

`
`IV.
`
`STATEMENT OF FACTS
`
`A.
`
`Oggoser and its SCRUBBING CIRCLE Marks
`
`Opposer has sold hundreds of millions of dollars of paper towels bearing one or
`
`more of the SCRUBBING CIRCLES. 3 The SCRUBBING CIRCLES shown in U.S. Reg. No.
`
`2,582,685 appears on the back of BRAWNY® paper towels, and a smaller version of the
`
`SCRUBBING CIRCLES also appears on Opposer's MARDI GRAS®, GREEN FOREST®, and
`
`SO DRI® paper towels.‘
`
`Advertisements for BRAWNY® paper towels promote the SCRUBBING
`
`CIRCLES as "Thirsty O's."5
`
`The packaging for Opposer's paper towels specifically touts the utilitarian and
`
`functional nature of the SCRUBBING CIRCLES?
`
`B.
`
`Applicant Royal Paper and Its Mark
`
`Applicant is a paper-products company that manufactures and sells paper
`
`products, such as paper towels, facial tissue, bath tissue, and paper napkins.7
`
`On December 2, 1999, Applicant filed its intent-to-use Application Serial No.
`
`75/862,409 seeking registration of its design. Applicant first used its design on paper towels in
`
`May or June 2000.“
`
`Applicant manufactures and sells paper towels containing the embossed design
`
`that comprises Applicant's mark? Applicant sells its paper towels bearing Applicant's mark to
`
`grocery stores,” retail stores," discount stores,” and dollar stores.”
`
`3 Biondi Decl. at 1111 8 and 10
`4 Opposer's Brief, p. 9
`5I_d_. at1[ 16, Exh.ll
`5 I_d. at 11 9
`7 Opposer's Not. Of Rel. (filed Feb. 9, 2004) on Discovery Dep. Of R. Sarrafzadeh ("Sarrafzadeh Disc. Dep."), p. 53,
`lines 6 — 9; Dardashti Decl. at 1] 4.
`8 Sarrafzadeh Disc. Dep. P. 94-, lines 4 — 1 1; Dardashti Decl. at 11 8.
`
`4
`
`

`
`Applicant sells paper towels bearing Applicant's design in the same channels of
`
`trade and to some of the same stores and wholesale distributors in which Opposer's BRAWNY®
`
`paper towels are sold.“
`
`V.
`
`ARGUMENT
`
`A.
`
`Opposer's Standing
`
`Applicant does not contest Opposer's standing to file and prosecute the opposition
`
`proceeding.
`
`B.
`
`Opposer's Priorig
`
`Opposer filed its two applications and used the two designs prior to Applicant's
`
`filing date or date of first use of its design. This accords certain rights to the Opposer, as
`
`registrant, as provided by 15 U.S. C. § l057(c) (Sec. 7(c) of the Lanham Act).
`
`This section of the Lanham Act provides that, contingent on the registration of a
`
`mark on the Principal Register, the filing of the application shall constitute constructive use of
`
`the mark, conferring a right of priority, nationwide in effect, on or in connection with the goods
`
`specified in the registration. This means that in disputes against others, the mark is treated as
`
`having been in use nationwide as on the filing date.
`
`However, because the purpose of the Lanham Act is not to provide substantive
`
`rights other than those explicitly provided, such as that provided by Sec. 7(c), the question
`
`becomes what rights did Opposer acquire when it filed its application on December 22, 1998? It
`
`is Applicant's position that Sec. 7(c) only created constructive use (and thus priority), but no
`
`9 Dardashti Decl. at {I 4; Dardashti Test. Dep. P. 24, lines 16 — 22 and p. 25 , lines 1 — 4, and p. 8, lines 1 ~ 11, and p.
`11, lines 10 -19.
`“’ Dardashti Test. Dep. P. 8, lines 21 — 22, and p. 9, lines 18 — 20.
`“1_d. at p. 9, lines 1 — 14.
`12 lg;
`13
`14 Dardashti Test. Dep. P. 22, lines 17 22, p. 23, lines 1 — 2 and 20 — 22, p. 24, lines 1 — 4, p. 34, lines 6 — 13, and p.
`58, lines 3 -10.
`
`5
`
`

`
`more rights than would have been created by the common law if Applicant had, in fact, initiated
`
`actual nationwide use as of the filing date.
`
`Properly analyzed in this way, a critical issue becomes whether Opposer's designs
`
`achieved secondary meaning p§1o_r to Applicant's first use date, or subsequent to Applicant's first
`
`use. Because there is no protection or rights accorded to "secondary meaning in the making," if
`
`Opposer acquired its secondary meaning after Applicant initiated its use of its design, then the
`
`acquired secondary meaning must be analyzed in the context of Applicant's design being in the
`
`marketplace.
`
`Opposer filed its Sec. 2(1) Declarations in each of its applications on August 9,
`
`2001, long after Applicant filed its application and long after Applicant initiated use of its
`
`design. Moreover, nowhere in its Brief does Opposer present evidence of when it asserts its
`
`designs acquired secondary meaning. Accordingly, Opposer has failed to meet its burden on this
`
`critical issue. On this ground alone, Opposer's Opposition should be dismissed.
`
`C.
`
`Will There Be A Likelihood of Confusion Between the Parties‘ Marks?
`
`In determining likelihood of confusion, the Board should consider evidence
`
`relating to the thirteen (13) factors set forth in In re: E. I. Du Pont De Nemours & Co., 177
`
`U.S.P.Q. 563, 567 (C.C.P.A. 1973). However, the Board need not consider each and every Du
`
`Pont factor. Han Beauty, Inc. v. Alberto-Culver Co., 57 U.S.P.Q. 2d 1557, 1559 (Fed. Cir.
`
`2001). Here, an analysis of the most relevant factors leads to a conclusion of no likelihood of
`
`confiision.
`
`1.
`
`The Fame of the SCRUBBING CIRCLES
`
`There is no dispute that Opposer's SCRUBBING CIRCLES have appeared on
`
`millions of paper towel sheets, and Applicant has no intention of arguing that BRAWNY® for
`
`

`
`use with paper towels is not a strong mark. The question is, however, whether the SCRUBBING
`
`CIRCLES themselves are famous or even well known, and whether the asserted emboss designs
`
`are strong marks. Applicant contends that these marks are extraordinarily weak, and should be
`
`afforded a concomitantly small degree of protection.
`
`More specifically, all the evidence presented by Opposer is directed to the
`
`extensive advertising and promotion of the name BRAWNY® and of the "Brawny Man," and the
`
`very large sales of the paper towels. However, the fame or strength of a primary mark does not
`
`automatically inure to the secondary or collateral designs associated with the products.
`
`Applicant suspects that Opposer knows this; nonetheless, when Opposer presents
`
`evidence of advertising or promotion directed specifically to the SCRUBBING CIRCLES, the
`
`material promotes the utilitarian features of the embossed design. Supportive of Applicant's
`
`position on this issue is the Opposer's own decision to call its asserted designs "scrubbing
`
`circles" and "thirsty 0's." In fact, Opposer does all it can to condition consumers of its paper
`
`towels that the embossed design is a useful and desirable feature of its product and not an
`
`indication of source. Indeed, Opposer has presented no evidence whatsoever that, separate from
`
`any brand-name recognition associated with the products on which the emboss designs appear,
`
`the designs provide any source-indicating role that is recognized by any appreciable segment of
`
`the consuming public. Accordingly, Opposer's emboss design marks must be viewed as
`
`extremely weak, with a narrowly proscribed scope of protection.
`
`In short, the embossed designs which are the subject of Opposer's two
`
`registrations are not famous or strong marks. Moreover, to the extent Opposer argues that they
`
`are famous, it could only be as a utilitarian feature and not as an indication of source.
`
`

`
`2.
`
`The Similarity of The Goods and The Channels of Trade
`
`These are not really issues in this proceeding. Applicant admittedly uses an
`
`emboss design for its paper towels. Opposer uses four-and-a-half pages of its Brief to argue that
`
`Applicant sells paper towels, Opposer sells paper towels, and that the paper towels are sold in the
`
`same charmels of trade, and, therefore, there will be a likelihood of confusion as to source.
`
`Applicant will concede the facts but not the conclusion.
`
`3.
`
`The Comparison of The Applicant's Emboss Design and Opposer's
`Emboss Design
`
`Applicant contends that the differences between its embossed design and the
`
`designs of Opposer outweigh any similarities between the marks, and provide strong support for
`
`a finding of no likelihood of confusion. Specifically, the principal features of Applicant's
`
`emboss pattem include:
`
`(a)
`
`A principal unit composed of an internal circle surrounded by one
`
`small and one large hexagon; and
`
`(b)
`
`the units are aligned orthogonally adjacent to each other, and each
`
`grouping of four units has a small square pattern turned 45° from the horizontal.
`
`In stark contrast, Opposer's two embossed designs are composed of:
`
`(a)
`
`Principal units composed of either a dot or a small circle
`
`surrounded by three progressively larger circles;
`
`(b)
`
`in one design, the units positioned at a 45° angle touch one
`
`another, and each grouping of four units has a small square between them; and
`
`c)
`
`in the other design, the units do not touch each other and they have
`
`a diamond-style square between each four units with a dot in the middle.
`
`

`
`Applicant believes that a comparison of the features of the parties‘ respective
`
`design marks shows significant differences such as to preclude a finding of likelihood of
`
`confusion.
`
`4.
`
`The Conditions Under Which, and Buyers to Whom, Sales Are Made
`
`It is undisputed that the marks at issue are the embossed designs which are placed
`
`on the Applicant's and Opposer's sheets of paper towels. Significantly, the marks at issue have
`
`nothing to do with, and are completely distinct from, the brand names or primary marks under
`
`which the products are sold. Opposer, however, ignores this key fact and relies instead on
`
`evidence that is inextricably entwined with its products’ brand names and primary marks. Not
`
`surprisingly, this evidence actually undermines Opposer's position.
`
`More specifically, the facts show that Opposer's products are marketed under their
`
`brand and primary names — not under the embossed designs that appear on the surface of the
`
`paper towels. Thus, the "conditions" under which the paper towels are sold consist of packaging
`
`and advertising that highlights those brand and primary names, not Opposer's design marks.
`
`Accordingly, consumers make their purchasing decisions based on the brand name; in other
`
`words, consumers who want BRAWNY® towels will look for BRAWNY® on the packaging,
`
`and consumers who want other brands will look for the desired brand name on the packaging.
`
`Indeed, Opposer has not provided a shred of evidence that consumers base their purchasing
`
`decisions on the emboss designs (as opposed to brand-name recognition). Moreover, because the
`
`products in question are staple items bought on a regular and recurring basis by consumers, it is
`
`unlikely they will take the time to examine something like the emboss design on the surface of
`
`the paper towels themselves.
`
`Thus, the conditions under which sales of the products at issue are made weighs
`
`strongly against a finding of likelihood of confusion.
`
`9
`
`

`
`5.
`
`Opposer's Conduct Has Caused Its Marks to Lose Their Significance
`as Marks
`
`Further, Opposer's own conduct undermines its position that its design marks
`
`function effectively as source indicators.
`
`In particular, Opposer has (a) selected emboss designs
`
`which inherently are not recognized as indicators of source, (b) has promoted the emboss designs
`
`as utilitarian features and not as indicators of source, and (c) has used the emboss designs with
`
`different brands of paper towels.
`
`As alluded to and implicit from the above discussions, if a paper towel
`
`manufacturer wants to provide its towels with scrubbing circles or thirsty o's, it will, by
`
`necessity, need to emboss its paper towels with circles as Opposer has done. Also, circles are the
`
`most common geometric pattern. Thus, if a paper towel manufacturer intends its emboss design
`
`to be an indicator of source, it should select a design which is more distinctive and not common.
`
`Opposer, on the other hand, has selected an extraordinarily common and non-distinctive design,
`
`and its selection functions poorly as an indication of source.
`
`Secondly, as shown by the evidence submitted by Opposer and by the name it has
`
`given to its design, i.e. "scrubbing circles" and "Thirsty O's," the emboss design has been
`
`promoted as a functional and utilitarian feature of the paper towels. This fact severely
`
`undermines Opposer's contention that its design marks serve as an indicator of source.
`
`Thirdly, and perhaps most importantly, Opposer has used its emboss designs on
`
`different brands of paper towels and has presented no evidence that consumers know that each of
`
`these brands originate from the same company. This is a critical flaw in Opposer's case, in that a
`
`mark that does not indicate a single source of origin cannot be viewed as anything other than
`
`weak and entitled to little protection.
`
`10
`
`

`
`Opposer will likely argue that it is not necessary for consumers to know the actual
`
`source or origin of a product under which a mark is sold, but that the source can be anonymous.
`
`This argument, however, misses the point — it is critical that the mark represents a "single"
`
`source, rather than multiple sources. Opposer has submitted no evidence to show consumers
`
`recognize a single source for the various products on which Opposer's design marks appear.
`
`In summary, Applicant believes Opposer's emboss designs should be treated as
`
`extremely weak indicators of source.
`
`6.
`
`This Is Not a Design Patent or Copyright Infringement Case
`
`The arguments made by Opposer are more suited for a case of design patent
`
`infringement or copyright infringement. However, the issue is not merely, as Opposer appears to
`
`believe, how similar the respective designs are, but rather, will the use of designs under the
`
`nonnal conditions under which the consumers will see the designs, be likely to cause confusion,
`
`mistake, or deception.
`
`Applicant contends that no serious argument can be made that a consumer
`
`purchasing Applicant's paper towels will believe that they are BRAWNY® towels, GREEN
`
`FOREST® towels, MARDI GRAS® towels, or SO DRI® towels. And, in order for Opposer to
`
`argue that the consumers will believe that Applicant's towels are a new brand being offered in
`
`Opposer's line of paper towels, it would have needed to present evidence that consumers know
`
`that BRAWNY®, GREEN FOREST®, MARDI GRAS®, and SO DRl® originate from a single
`
`source. This it has not done.
`
`7.
`
`No Evidence of Actual Confusion
`
`Although evidence of actual confusion is not necessary to establish a likelihood of
`
`confusion, the absence of such evidence can often be quite telling. Here, it is significant and
`
`11
`
`

`
`material that Opposer has no such evidence.” While Opposer makes the arguments that its
`
`marks are well-known, that Applicant's products and Opposer's products are identical, that
`
`Applicant's products and Opposer's products travel in the same charmel of trade, and that the
`
`similarity of the marks are "strikingly similar" and "compelling," Opposer has presented no
`
`evidence of even a single instance of actual confusion in the marketplace. This lack of evidence
`
`is quite striking, given that it has been over six years that the respective marks have co-existed.
`
`8.
`
`Opposer Has Not Presented Any Survey Evidence
`
`In this proceeding, Opposer has failed to present any trademark survey evidence
`
`to support its claim that there is a likelihood of confusion between Opposer's registered designs
`
`and the design that is the subject of the Application. In trademark matters, survey evidence is an
`
`important method whereby a party can show a likelihood of confusion, and indeed the
`
`Trademark Board regularly considers survey evidence when determining whether a likelihood of
`
`confusion exists. E Miles Laboratories, Inc. v. Naturally Vitamin Supplements, Inc., 1
`
`U.S.P.Q.2d 1445 (1986); 5 McCarthy on Trademarks and Unfair Competition, § 32:l80 (4‘h ed.).
`
`While Applicant recognizes that Opposer is not required to provide survey evidence, the facts in
`
`this instance suggest that the Board should take into consideration Opposer's failure to present
`
`such evidence.
`
`First, while the Board views survey evidence as one means to prove a likelihood
`
`of confusion, a party need not present such evidence to establish a likelihood of confusion where
`
`other evidence exists. 5 McCarthy on Trademarks and Unfair Competition, § 32:l80 (4th ed.).
`
`Here, however, Opposer has failed to provide any "other" evidence of a likelihood of confusion.
`
`Instead, Opposer relies solely on its argument that there is a similarity between the designs in
`
`‘5 For the record, Applicant notes that it is not aware of a single instance of actual confusion between its marks or
`products and the marks or products of Opposer.
`
`12
`
`

`
`appearance and commercial impression. Opposer has not offered any other evidence, including
`
`evidence of actual confirsion in the marketplace, to prove that there is a likelihood of confiision.
`
`As Opposer has failed to provide evidence of actual confusion, or any other
`
`substantive evidence of a likelihood of confusion between the designs, the Board should take
`
`into account in its analysis Opposer's failure to provide the Board with any survey evidence, and
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`draw a negative inference therefrom.
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`Second, as the Board has made clear, one of the main reasons for not mandating
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`that a party provide survey evidence is that the Board "appreciate[s] the significant financial
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`costs of surveys." Hilson Research, Inc. v. Societyfor Human Resources Management, 27
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`U.S.P.Q.2d 1423 (1993). However, here that rationale is not applicable. Opposer is a large and
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`highly successful business in a strong financial position, and thus the financial costs associated
`
`with conducting a trademark survey cannot realistically be seen as having deterred Opposer from
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`conducting a survey. In fact, Opposer even stated in its Trial Brief that Opposer's BRAWNY®
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`brand of paper towels (one brand containing the SCRUBBING CIRCLES marks at issue here), is
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`the second-leading paper towel brand in the United States. Opposer's Trial Brief, p. 1. Given.
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`Opposer's admittedly strong financial position, the financial costs associated with trademark
`
`surveys should not be taken into account when considering that the Opposer did not provide any
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`survey evidence here.
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`Either Opposer conducted a survey and did not like the results, or decided not to
`
`conduct a survey. If Opposer decided not to conduct a survey, the reason could likely have been
`
`that it did not want to conduct a survey using only sheets of paper towels bearing the subject
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`emboss designs and it also did not want to use the actual products and packaging used by the
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`parties. In either case, it is Applicant's position that there would be no confusion.
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`13
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`

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`Therefore, while the Board is not generally amenable to drawing any negative
`
`inference from a party's failure to offer survey evidence, here the Board should act within its
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`discretion and, at a minimum, take into consideration, in the overall analysis of the likelihood of
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`confusion analysis, the rather obvious fact that Opposer, a financially p0WCI'fl.ll entity, has failed
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`to offer any survey evidence whatsoever.
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`VI.
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`CONCLUSION
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`For all the reasons stated herein, Applicant respectfully requests that the Board
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`dismiss the Opposition on all grounds and permit the application to continue in its prosecution.
`
`Date: October 31,2006
`
`By:
`
`M r
`
`flag/\=@
`
`Respectfully submitted,
`
`Bernard R. Gans, Esq.
`Brian W. Kasell
`
`JEFFER MANGELS BUTLER & MARMARO LLP
`
`1900 Avenue of the Stars
`
`Los Angeles, CA 90067
`Telephone: (310) 203-8080
`Facsimile:
`(310) 203-0567
`
`ATTORNEYS FOR APPLICANT
`
`14
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`

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`CERTIFICATE OF SERVICE
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`It is hereby certified that on October 31, 2006, a copy of the foregoing APPLICANT‘S
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`TRIAL BRIEF has been sent by first class mail, postage prepared to the attorney of record for
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`Opposer:
`
`Linda K. McLeod, Esq.
`
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER LLP
`
`901 New York Avenue, NW
`
`Washington, DC 20001-4413
`
`202.408.4000 [tel.]
`
`202.408.4400 [fax]
`
`Simone Robinson