I)
`
`(I
`
`RONALD J. LEHRMAN
`DAVID WEILD III
`STEPHEN BIGGER
`MICHAEL I. DAVIS
`ROGER L. ZISSV
`MARIE V. DRISCOLL
`RICHARD 1. LEI-IV
`DAVID W. EHRLICH
`SUSAN UPTON DOUGLASS
`JANET L. HOFFMAN
`PETER J. SILVERMAN
`LAWRENCE ELIAPOLZON
`BARBARA A. SOLOMON
`LISA PEARSON
`MARK D. ENGELMANN
`NADINE ILJACOBSON
`ANDREW N. FREDBECK
`GEORGES NANITCHEVANSKY
`CRAIG S. MENDE
`PATRICK T. PERKINS
`J. ALLISON STRICKLAND
`JOHN P. MARGIOTTA
`MARIA A. SCUNGIO
`
`FRoss ZELNICK LEHRMAN & ZISSU, P.C.
`
`866 UNITED NATIONS PLAZA
`
`AT FIRST AVENUE & 48”’ STREET
`
`New YORK, N. Y. 10017
`
`TELEPHONE: (212) 313-5900
`FACSIMILE: (212) 813-5901
`E-MAIL:
`fz|z@frossze|nick.com
`
`May 10, 2004
`
`771415
`
`JAMES D.SILBERSTEIN
`RUTH E.LAlAR
`JOYCE M. FERRARO
`PHILIP T.SHANNON
`COUNSEL
`MICHELLE P. FOXMAN
`ROBERT A. BECKER
`TAMAR NIV BESSINGER
`ANGELA KIM
`LYDIA T. GOBENA
`MICNAEL CHIAFPETTA
`JESSICA MANN
`EVAN GOURVITZ
`CARLOS CUCURELLA
`NANCY C. DICONZA
`ZOE NILDEN
`LAUREN J. MANDELL
`JAMES D.WElNBERGER
`JASON M. VOGEL
`VEJAV G. LALLA
`DAVID LGREENBAUM
`DAVID DONAHUE
`CHARLOTTA MEDER
`MELISSA A. ANTONECCHIA
`NANCY SABARRA
`LAURA FOPF-ROSENBERG
`
`VIA EXPRESS MAIL
`
`Commissioner for Trademarks
`
`2900 Crystal Drive
`Arlington VA 22202-3513
`
`Attn: Box TTAB — NO FEE
`
`05-10-2004
`
`US. Patent & TMOfc/TM Mail Rep: 01 #73
`
`Re:
`
`Eveready Battery Company, Inc. v.
`The Gillette Company
`Opposition and Cancellation No. 91159092
`
`Gentlemen:
`
`I have enclosed the following in connection with the above referenced proceeding:
`
`1. Motion for Summary Judgment
`
`2. Memorandum in Support of Motion for Summary Judgment with confidential
`portions excised
`
`3. confidential Memorandum in Support of Motion for Summary Judgment
`
`4. Declaration of Mario Ortiz with Exhibits
`
`5. Declaration of Marie V. Driscoll with Exhibits, except for confidential
`exhibits
`
`6. Confidential Exhibits 4 through 6 to Driscoll
`
`7. Statement of Undisputed Facts
`
`

`
`
`
`Commissioner for Trademarks
`
`May 10, 2004
`Page 2
`
`Please acknowledge receipt on the enclosed postcard.
`
`Sincerely,
`
`Marie V. Driscoll
`
`MVD:pz
`Enclosures
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`EVEREADY BATTERY COMPANY, INC.,
`
`Opposer,
`
`Opposition and Cancellation
`No. 91 1 59092
`
`‘
`
`V.
`
`THE GILLETTE COMPANY,
`
`Applicant.
`
`THE GILLETTE COMPANY
`
`Counterclaim Petitioner,
`
`v.
`
`EVEREADY BATTERY COMPANY, INC.,
`
`Counterclaim Registrant.
`
`in“!
`
`05-10-2004 -
`us. Patent & TMOfcITM Mall Hop! 0‘
`
`, #73
`
`APPLICANT/COUNTERCLAIM PETITIONER’S
`MOTION FOR SUMMARY JUDGMENT
`
`Pursuant to Rule 2.127(e) of the Trademark Rules of Practice, The Gillette
`
`Company, which is the Applicant and Counterclaim Petitioner herein, moves for
`
`summary judgment in the Opposition and on the Counterclaim on the ground that
`
`Applicant/Counterclaim Registrant’s alleged trademark QUATTRO, on which the
`
`Opposition is based, is merely descriptive of the product on which it is used, namely a
`
`razor having four blades. In support of said Motion The Gillette Company relies on the
`
`

`
`
`
`Declarations of Marie V. Driscoll and Mario Ortiz, with exhibits, on the pleadings and
`
`proceedings herein, and on the Memorandum filed herewith.
`
`Dated:
`
`New York, New York
`
`May 10, 2004
`
`Certificate of Ex ress Mailin
`
`FROSS ZELNICK LEHRMAN
`
`Respectfully submitted,
`
`I hereby certify that this paper or fee is being deposited with the
`United States Postal Service "Express Mail Post Office to
`Addressee" service and is addressed to the Commissioner for
`Trademarks, 2900 Crystal Drive, Arlington, Virginia 22202-3513.
`Express Mail Cert. No. EV 328452410 US.
`
`May 10,2004
`(D“‘° °fD°"°5“)
`
`Marie v. Driscoll
`(Name of person signing Certificate)
`
`V
`-
`(Signature;
`
`‘
`
`May 10,2004
`(Date of Signature)
`
`& ZISSU, P.C.
`
`By;
`
`.
`
`4/
`
`‘-
`
`Marie V. Driscoll
`Barbara A. Solomon
`
`Y‘-
`
`Attorneys for Applicant and
`counterclaim Petitioner
`
`866 United Nations Plaza
`New York, New York 10017
`(212) 813-5900
`
`Of Counsel:
`
`Leon Bechet
`
`Boston, Massachusetts
`
`I:\mdriscoll\GLTC\Eveready v. Schick\Pleadings\Applicant Counterclaim Petitioner's Motion for Summary Judgmentdoc
`
`

`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`EVEREADY BATTERY COMPANY, INC.,
`
`Opposer,
`
`v.
`
`:
`:
`
`Opposition and Cancellation
`No. 91159092
`
`THE GILLETTE COMPANY,
`Applicant.
`
`
`
`THE GILLETTE COMPANY
`
`2 M
`05-10-2004 .
`D! we
`u.s.Pavant&TMotcITM Ma“ R°"‘
`'
`
`:
`
`Counterclaim Petitioner,
`
`V.
`
`EVEREADY BATTERY COMPANY, INC.,
`
`Counterclaim Registrant.
`
`
`MEMORANDUM IN SUPPORT OF MOTION
`BY THE GILLETTE COMPANY
`
`FOR SUMMARY JUDGMENT
`
`

`
`
`
`TABLE OF CONTENTS
`
`Table of Authorities .................................................................................................................... .. ii
`
`STATEMENT OF FACTS ......................................................................................................... .. 2
`
`I.
`
`11.
`
`Gi11ette’s Standing .................................................................................................... .. 2
`
`Practice in the Trade .................................................................................................. .. 3
`
`III.
`
`The QUATTRO Product ............................................................................................ .. 3
`
`IV.
`
`The QUATTRO Application ..................................................................................... .. 4
`
`V.
`
`Gillette’s QUANTUM Application ........................................................................... .. 5
`
`ARGUMENT .............................................................................................................................. .. 5
`
`I.
`
`The QUATTRO Registration Is Invalid as a Matter of Law ..................................... .. 6
`
`A. FOUR is Descriptive of Razors with Four Blades ............................................. .. 6
`
`B. QUATTRO is Descriptive of Razors with Four Blades ..................................... .. 9
`
`II.
`
`The Opposition Should be Dismissed as a Matter of Law ........................................ .. 11
`
`CONCLUSION ......................................................................................................................... .. 13
`
`

`
`
`
`TABLE OF AUTHORITIES
`
`CASES
`
`Binney & Smith Inc. v. Magic Marker Industries, Inc., 222 U.S.P.Q. 1003
`(T.T.A.B. 1984) ......................................................................................................... ..11
`
`Black & Decker Corp. v. Dunsford, 42 U.S.P.Q.2d 1531 (S.D.N.Y 1996) ................................. ..12
`
`Callaway Vineyard & Winery v. Endsley Capital Group Inc., 63 U.S.P.Q.2d 1919
`(T.T.A.B. 2003) ....................................................................................................... ..7, 8
`
`Devcon Corp. v. Woodhill Chemical Sales Corp., 173 U.S.P.Q. 257 (1st Cir.
`1972) ...................................................................................................................... ..7, 11
`
`Domino ’s Pizza, Inc. v. Little Caesar Enterprises, Inc., 7 U.S.P.Q.2d 1359
`(T.T.A.B. 1988) ........................................................................................................... ..8
`
`In re Ethnic Home Lifestyles Corp., 70 U.S.P.Q.2d 1156 (T.T.A.B. 2003) .................................. ..7
`
`In re Garcia, 175 U.S.P.Q. 732 (T.T.A.B. 1972) .......................................................................... ..9
`
`In re Geo. A. Hormel & Co., 227 U.S.P.Q. 813 (T.T.A.B. 1985) ................................................. ..9
`
`Goodyear Tire & Rubber Co. v. Continental General Tire Inc., 70 U.S.P.Q.2d
`1067 (T.T.A.B. 2003) .................................................................................................. ..8
`
`Interpayment Services Ltd. v. Docters & Thiede, 66 U.S.P.Q.2d 1463 (T.T.A.B.
`2003) ................................................................................................................... .. 5, 7, 8
`
`In re Jos. Schlitz Brewing Co., 223 U.S.P.Q. 45 (T.T.A.B. 1983) ................................................ ..9
`
`Lucent Information Management Inc. v. Lucent Technologies Inc., 45 U.S.P.Q.2d
`1019 (D. Del. 1997) ................................................................................................... .. 12
`
`In re San Miguel Corp., 229 U.S.P.Q. 617 (T.T.A.B. 1986) ......................................................... ..9
`
`WarnerVision Entertainment Inc. v. Empire of Carolina, Inc., 140 U.S.P.Q.2d
`1855 (2"“ Cir. 1996) .................................................................................................. .. 12
`
`Weiss Noodle Co. v. Golden Cracknel & Specialty Co., 129 U.S.P.Q. 411
`(C.C.P.A. 1961) ......................................................................................................... ..10
`
`I:\MORTIZ\GLTC\Evercady v. gillette\TABLE OF CONTENTS.doc
`
`

`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`EVEREADY BATTERY COMPANY, INC.,
`
`Opposer,
`
`V.
`
`.
`:
`
`Opposition and Cancellation
`No. 91159092
`
`THE GILLETTE COMPANY,
`
`Applicant.
`
`
`THE GILLETTE COMPANY
`
`Counterclaim Petitioner,
`
`V.
`
`EVEREADY BATTERY COMPANY, INC.,
`
`Counterclaim Registrant.
`
`
`MEMORANDUM IN SUPPORT OF MOTION
`BY THE GILLETTE COMPANY
`FOR SUMMARY JUDGMENT
`
`Applicant and Counterclaim Petitioner The Gillette Company (hereafter
`
`"Gi1lette") submits this memorandum in support of its Motion for Summary Judgment (1)
`
`ordering cancellation of the registration of QUATTRO that issued to Opposer and
`
`Counterclaim Registrant Eveready Battery Inc. (hereafter "Eveready") and (2) dismissing
`
`the Opposition.
`
`

`
`
`
`It is undisputed that QUATTRO is the Italian definition of FOUR. It is undisputed
`
`that a significant characteristic of the razor on which QUATTRO is used is the presence
`
`of four blades. Under the doctrine of foreign equivalents it is clear that QUATTRO is
`
`merely descriptive of the razor and blades on which it is used. Indeed, it is so highly
`
`descriptive as to be incapable of functioning as a trademark. In the circumstances the
`
`registration should clearly not have issued and should be cancelled. Since Eveready
`
`would then lose its priority date by operation of law, the opposition should necessarily be
`
`dismissed.
`
`STATEMENT OF FACTS
`
`I.
`
`Gillette's Standing
`
`Gillette is and for many years has been a leading manufacturer and marketer of
`
`razors and razor blades. Among its products are razors that have two or three blades, a
`
`feature that Gillette has emphasized in connection with their sale. References to this
`
`feature are made both on packaging and in advertising and promotion. (Ortiz Declaration
`
`Ex. 17-19) The back labels of MACH3 packaging, for example, refer to "a revolutionary
`
`triple-blade shaving system" and to "3 Blades... specially positioned to extend gradually
`
`closer to your beard..." SENSOR EXCEL packaging refers to "the closest, most
`
`comfortable twin blade shave" and "se1f-adjusting twin blades." (Ortiz Declaration Ex.
`
`16, 18) Advertising for MACH3 has featured the description THREE REVOLUTION-
`
`ARY BLADES. SENSOR3 advertising stated “Now Sensor has three blades for the
`
`closest, most comfortable Sensor shave ever.” Another SENSOR3 ad referred to it as
`
`“the only disposable razor with three spring-mounted Sensor blades.” (Ortiz Declaration
`
`Ex. 19)
`
`

`
`
`
`II.
`
`Practice in the Trade
`
`Gillette has also presented indisputable evidence that third parties have also used
`
`numerical references to describe the characteristics of their razors. To cite just a few: The
`
`High Endurance Shaving System shows "Triple 3 Blade; Duane Reade's Tri-Flexxx refers
`
`to a "3 Blade Cartridge" as does Rite Aid's Tri-Flex. Walgreen's shows the numeral #3
`
`adjacent to Triple Blade. Super-Max refers to Triple Blades and uses the numeral 3.
`
`Noxema sells Triple Blade disposable razors. Bic has a BIC Comfort 3 Triple Blade
`
`Comfort. (Ortiz Declaration Ex. 8-16)
`
`Schick itself has emphasized the fact that its XTREME3 razors have three blades
`
`for "Triple Blade Closeness." (Ortiz Declaration Ex. 20)
`
`III. The QUATTRO Product
`
`Eveready's alleged trademark is QUATTRO. There is no dispute that this is the
`
`Italian word for FOUR. Eveready admitted this in the application that its predecessor in
`
`interest filed in the United States Patent and Trademark Office (Ortiz Declaration Ex.
`
`23) and it is so defined in Cassell‘s Italian Dictionary. Indeed, FOUR is the o_n1y
`
`definition of QUATTRO in that dictionary. (Ortiz Declaration Ex. 21)
`
`There is also no dispute that Eveready's Schick affiliate is using the QUATTRO
`
`trademark on a razor with four blades. This feature is obviously important and is
`
`emphasized on packaging and advertising. On the front of packaging for the razor
`
`QUATTRO appears immediately above 4 BLADES and on the back QUATTRO
`
`appears immediately above the slogan WORLD'S FIRST FOUR BLADED SHAVE.
`
`(Ortiz Declaration Ex. 1, 2) The same slogan is on the packaging for the QUATTRO
`
`replacement blades. (Ortiz Declaration Ex. 3) Advertising likewise features QUATTRO
`
`

`
`
`
`in association with FOUR. A full page free standing insert, for example, shows
`
`QUATTRO immediately above the following trio of descriptions (Ortiz Declaration Ex.
`
`5):
`
`FOUR BLADES FOR AN INCREDIBLY
`CLOSE AND SMOOTH SHAVE
`
`4 BLADES
`
`THE POWER OF FOUR
`
`The storyboard for a television commercial mentions the number 4 no less than five
`
`times (Ortiz Declaration Ex. 6):
`
`First there was one blade. Then 2. Then 3, but 4 blades...
`give me a break right? Wrong. The new Schick Quatro (sic)
`has the power of ...4 blades and 2 conditioning strips.
`Which makes Quatro (sic) unlike any other razor and those
`4 blades... give you an incredibly close, smooth shave. So
`your 5 o'clock shadow shows up late. 4 blades. Where will
`it stop? Schick Quatro (sic). The power of 4.
`
`The Schick QUATTRO website has similar descriptions (Ortiz Declaration Ex. 7)
`
`The world's First 4-Bladed Razor Has Arrived!
`
`The new Schick Quattro has the power of 4 blades and 2
`conditioning strips...
`
`Four precisely synchronized blades.
`
`[ CONFIDENTIAL MATERIAL 0MITTED)]‘
`
`IV. The QUATTRO Application
`
`It was alleged in the application to register QUATTRO that the applicant had a
`
`bona fide intention to use the mark on razors and razor blades. While Eveready did
`
`disclose, in response to an inquiry by the Trademark Examining Attorney, that
`
`QUATTRO means FOUR, it did not disclose that the razors on which the alleged mark
`
`1 NOTE: Material in brackets is Confidential and Subject to Protective Order.
`
`

`
`was to be used had four blades. When it was necessary to file a Statement of Use in
`
`support of the application, with a specimen showing use, Eveready submitted a
`
`photograph which hid the descriptor 4 BLADES, although that description appears on the
`
`razor's packaging as it appears in the marketplace. (Ortiz Declaration Ex. 24) The
`
`Trademark Office, thus, had no way of knowing that the presence of FOUR — or
`
`QUATTRO — blades was a characteristic of the razor on which the alleged mark was used.
`
`In the Statement of Use filed in support of its application, Eveready represented to
`
`the Trademark Office that it first used QUATTRO on September 11, 2003. (Ortiz
`
`Declaration Ex. 23)
`
`V. Gillette's QUANTUM Application
`
`On March 28, 2003, Gillette filed an application to register QUANTUM as a
`
`trademark claiming a bona fide intention to use the mark on "razors and razor blades;
`
`dispensers, cassettes, holders and cartridges, all containing blades; and structural parts
`
`therefor." Eveready's use of QUATTRO did not begin until September 11, 2003, several
`
`months afitg the Gillette filing and constructive use date.
`
`ARGUMENT
`
`Gillette is entitled to summary judgment. There are no genuine issues of material
`
`fact and it is entitled to judgment as a matter of law, Interpayment Services Ltd. v.
`
`
`Docters & Thiede 66 U.S.P.Q.2d 1463, 1468 (T.T.A.B. 2003). The matter is clear-cut:
`
`1.
`
`FOUR is descriptive of razors with four blades.
`
`2. The number of blades is an important characteristic of a razor.
`
`

`
`3. Gillette is a direct competitor of Opposer and is entitled to use apt descriptive
`
`terms on its products without the specter of protest by Eveready or its affiliated
`
`company Schick.
`
`4. QUATTRO means FOUR in Italian.
`
`5. The link of the QUATTRO product to the number FOUR is made on
`
`packaging and in advertising over and over.
`
`6. Under the doctrine of foreign equivalents, QUATTRO is descriptive.
`
`7. The registration thus should not have issued and should be cancelled.
`
`8. By losing its registration and thus its constructive use date, Opposer can rely
`
`only on its date of first use of QUATTRO.
`
`9. Gillette thus has priority since the filing, and thus the inchoate constructive
`
`use date of its QUANTUM application, is several months before the first use
`
`of QUATTRO.
`
`I. The OUATTRO Registration Is Invalid as a Matter of Law
`
`A. FOUR is Descriptive of
`Razors with Four Blades
`
`It is apparent from the labeling of numerous products in the marketplace that the
`
`number of blades in a razor is a characteristic of major importance to consumers. The
`
`undisputed evidence shows that describing the blade count is a major marketing tool for
`
`Gillette, for Eveready's affiliate Schick, and for many third parties. (Ortiz Declaration Ex.
`
`8-20)
`
`It is also evident that Eveready and its Schick affiliate continue to acknowledge the
`
`importance of blade count by emphasizing over and over on packaging and in advertising
`
`that the QUATTRO razor has four blades. The message is relentless and includes the
`
`

`
`slogans THE POWER OF FOUR and THE WORLD'S FIRST FOUR BLADED SHAVE.
`
`(Ortiz Declaration Ex. 1-7)
`
`The standard for determining descriptiveness in the context of registration is well
`
`
`established, and is succinctly set forth in Interpayment Services Ltd. V. Docters & Thiede
`
`66 U.S.P.Q.2d 1463, 1466 (T.T.A.B. 2003):
`
`It is well settled that a term or symbol is
`considered to be merely descriptive of goods or
`services, within the meaning of Section 2(e)(1)
`of the Trademark Act, if it forthwith conveys
`information concerning any significant
`ingredient, quality, characteristic, feature,
`function, purpose, subject matter or use of the
`goods or services.
`
`"It is not necessary that a term describe all of the purposes, functions,
`
`characteristics or features of the goods
`
`It is enough if the term describes one significant
`
`attribute of the goods...", Callaway Vineyard & Winery v. Endsley Capital Group Inc., 63
`
`U.S.P.Q.2d 1919, 1922 (T.T.A.B. 2002). And, context of use is important, In re Ethnic
`
`Home Lifestyles Cogp., 70 U.S.P.Q.2d 1156, 1158 (T.T.A.B. 2003).
`
`The QUATTRO razor has four blades. It cannot be disputed that four describes a
`
`characteristic of the razor. Indeed, Schick's packaging and advertising clearly show, again
`
`without dispute, that this is the razor's most important characteristic. [CONFIDENTIAL
`
`MATERIAL OMITTED] (Driscoll Declaration Ex. 6)2
`
`An analogous case is Devcon Corp. v. Woodhill Chemical Sales Corp, 173
`
`U.S.P.Q. 257 (1“ Cir. 1972), in which the plaintiff claimed rights in 5 MINUTE for use on
`
`a quick-drying epoxy. The Court rejected the argument that this was merely suggestive,
`
`2 NOTE: Material in brackets is Confidential and Subject to Protective Order.
`
`

`
`noting that the length of the time for the setting of the epoxy, i.e. five minutes, would be
`
`uppermost in the minds of a purchaser. The same is certainly true in the present case,
`
`fueled by the promotional materials of Schick which emphasize over and over the benefit
`
`of having four blades.
`
`
`See also Domino's Pizza Inc. v. Little Caesar Enterprises, Inc., 7 U.S.P.Q.2d
`
`1359, 1366 (T.T.A.B. 1988) in which it was held that the words SINGLE, DOUBLE, and
`
`TRIPLE were merely descriptive of pizza. In that case as in this there was evidence of a
`
`practice in the pizza business to use such size designations descriptively.
`
`There can be no doubt that under applicable case law and under the facts of this
`
`case, FOUR is as clearly descriptive as were 5 MINUTE, SINGLE, DOUBLE, and
`
`TRIPLE. It is also clear that, in order to compete effectively, members of the trade need
`
`to and do refer to blade count in their marketing, a factor which makes the grant of
`
`registration to QUATTRO particularly incorrect, Goodyear Tire & Rubber Co. v.
`
`Continental General Tire Inc., 70 U.S.P.Q.2d 1067 (T.T.A.B. 2003).
`
`The issue of descriptiveness is clearly one suited to summary judgment. For
`
`example, in Integpayment Services Ltd. v. Docters & Thiede, 66 U.S.P.Q.2d 1463
`
`(T.T.A.B. 2003), the trademark was a design similar to the symbol for euro currency. The
`
`Board granted summary judgment to the opposer because of the descriptiveness of the
`
`design when used in connection with software for use in various financial transactions.
`
`Summary judgment was also granted in Callaway Vineyard & Winery v. Endsley Capital
`
`Group Inc., 63 U.S.P.Q.2d 1919, 1923 (T.T.A.B. 2002) because of the descriptive nature
`
`of COASTAL WINERY for use on varietal wines.
`
`

`
`B.
`
`QUATTRO is Descriptive of Razors with Four Blades
`
`The next proposition is equally clear and not open to dispute. If FOUR is
`
`descriptive of a four-bladed razor, QUATTRO, which is the Italian translation of FOUR,
`
`is also descriptive. Eveready cannot claim trademark rights in a descriptive term by
`
`merely translating the term into a foreign language. The Board in In re Geo. A. Hormel
`
`& Co., 227 U.S.P.Q 813, 814 (T.T.A.B. 1985) stated the principle succinctly in a
`
`proceeding involving the term SAPORITO which is the Italian word for tasty:
`
`Since no distinction can be made between English words
`and their foreign equivalents with respect to
`registrability we conclude that “SAPORITO" is merely
`descriptive of applicant's dry sausage.
`
`See also In re Garcia, 175 U.S.P.Q. 732 (T.T.A.B. 1972) (no registrable distinction can
`
`be drawn between foreign words and their English equivalents notwithstanding that the
`
`foreign words may be meaningless to the public generally). The case involved MUSICA
`
`LATINA, words familiar to Spanish speakers. In re San Miguel Corp, 229 U.S.P.Q. 617
`
`(T.T.A.B. 1986) held that foreign words are translated into English and then tested for
`
`descriptiveness or genericness. It involved the Spanish word SELECTA. The doctrine
`
`applies whether or not the translation is known to only some or to many, as decided in In
`
`re Jos. Schlitz Brewing Co., 223 U.S.P.Q. 45 (T.T.A.B. 1983), which involved the term
`
`KUHLBRAU for use on beer:
`
`It is well established that normally no distinction can be
`made between English terms and their foreign equivalents
`with respect to registrability, and that the foreign equivalent
`of a merely descriptive English term is no more registrable
`than the English term itself despite the fact that the foreign
`term may not be commonly known to members of the
`general public in the United States.
`
`

`
`Even a word as unusual as HALUSHKA, which is Hungarian and which translates as
`
`NOODLE, is unregistrable for such a product, Weiss Noodle Co. v. Golden Cracknel &
`
`Specialty Co., 129 U.S.P.Q. 411 (C.C.P.A. 1961).
`
`In the present case we have a word known to those familiar with the Italian
`
`language, and also to Spanish speakers given its phonetic identity to CUATRO, the
`
`Spanish word for four. (Ortiz Declaration Ex. 22) Since the issue of descriptiveness is
`
`also determined in context, the incessant linkage of QUATTRO with FOUR on product
`
`labeling and advertising will necessarily result in pushing those not quite sure of the
`
`translation into the correct conclusion that QUATTRO means FOUR. The doctrine is
`
`particularly important in this age of multilingual purchasers and imported goods, as
`
`recognized by the Restatement of the Law Third Unfair Competition, § 14, comment a.
`
`[CONFIDENTIAL MATERIAL OMITTED] (Driscoll Ex. 6)3
`
`The descriptiveness of QUATTRO has also been reinforced by references in the
`
`media such as the following (Ortiz Declaration Ex. 25-29):
`
`a. Courier-Journal, Louisville, Kentucky:
`“The unique feature of the Schick Quattro is as the name
`describes: four blades that outperform the three-blade
`systems.”
`
`b. Albuquerque Tribune:
`“For those unfamiliar with ‘The Sopranos: Quattro means a
`razor with four blades.”
`
`c. Philadelphia Inquirer and The Charlotte Observer:
`“In the latest act of escalation, taking millions of dollars in
`development and years of research, Gillette arch-rival Schick
`last month introduced a four-blade — four! — razor aptly named
`the Quattro.”
`
`3 NOTE: Material in brackets is Confidential and Subject to Protective Order.
`
`10
`
`

`
`d. Dubuque Telegraph Herald:
`“Now it’s four blades (quarto is Spanish for four — how clever.
`Of course they spelled it wrong).”
`
`The fact that Gillette does not presently sell a razor with four blades does not
`
`excuse registration of this clearly descriptive term, Binney & Smith Inc. v. Magic Marker
`
` Industries Inc., 222 U.S.P.Q. 1003 (T.T.A.B. 1984). It is a competitor and it is entitled to
`
`sell razors and blades of many sizes and to use apt words to describe them. Given the
`
`usage in the marketplace, the issuance of registration to a word that describes the number
`
`of blades in a razor has a clearly anti-competitive effect, Devon Corp. v. Woodhill
`
`Chemical Sales Corp, 173 U.S.P.Q. 257 (l“ Cir. 1972).
`
`Having no right to exclude others from selling epoxies
`having its particular set characteristic, plaintiff may not
`handicap its competitors by compelling them to water down
`their own announcement so that plaintiff may seem to be the
`only one that fits the bill.
`
`It is apparent from the foregoing that no registration should have issued to
`
`QUATTRO, and that the Counterclaim for Cancellation should be granted. FOUR and its
`
`equivalents in other languages, including the Italian QUATTRO, cannot be the property
`
`of a single competitor in the razor and blade industry. All who now make or have the
`
`potential of making four-bladed razors should not be precluded from having the right to
`
`use such terms without fear of retaliation from Eveready.
`
`II. The Opposition Should be Dismissed
`as a Matter of Law
`
`Gillette's application to register QUANTUM, which is the mark herein opposed
`
`by Eveready, is an intent to use application with a filing and inchoate constructive use
`
`date of March 28, 2003. (Driscoll Declaration Ex. 1) While the filing date of the
`
`11
`
`

`
`QUATTRO intent to use application was earlier in time, that date cannot be relied upon
`
`by Eveready. Its registration should never have issued and should be cancelled as invalid
`
`ab initio. Eveready is not entitled to rely on the filing date of the application as a priority
`
`date since its rights were never and cannot now be lawfully perfected.
`
`Eveready is then left only with reliance on its use, which did not begin until
`
`September 11, 2003, a date several months after the filing date of Gillette's intent to
`
`use application for QUANTUM. (Ortiz Declaration Ex. 23) Any claim that
`
`QUATTRO has acquired secondary meaning is of no avail to Opposer. Since its use
`
`began several months gin the filing of Gillette's QUANTUM application, Eveready
`
`cannot have acquired secondary meaning prior to the constructive use date to which
`
`Gillette is entitled. Eveready simply cannot prevail.
`
`There is no doubt that the March 28, 2003 constructive use date to which Gillette
`
`is entitled has the same legal effect as if Gillette had actually used its trademark at
`
`common law as of the filing date of its QUANTUM application, Black & Decker Corp. v.
`
`
`Dunsford 42 U.S.P.Q.2d 1531, 1537, n. 12 (S.D.N.Y. 1996); the fact that Eveready was
`
`first in the marketplace is of no consequence. WarnerVision Entertaimnent Inc. V. Empire
`
`
`of Carolina Inc., 140 U.S.P.Q.2d 1855 (2nd Cir. 1996) Indeed, a contrary holding would
`
`completely undermine both the letter and spirit of the intent to use provisions of the
`
`Lanham Act. Cf. Lucent Information Management Inc. v. Lucent Technologies Inc., 45
`
`U.S.P.Q.2d 1019 (D. Del. 1997).
`
`Cancellation of the registration for the descriptive word QUATTRO necessarily
`
`will result in termination of this opposition. If Eveready cannot rely on the constructive
`
`use date in its intent to use application which matured to the registration for QUATTRO,
`
`12
`
`

`
`it can then rely only on its common law rights which stem from use. In the circumstances,
`
`it no longer enjoys priority.
`
`CONCLUSION
`
`Since Eveready cannot, as a matter of law, prove priority over Gillette, it is not
`
`necessary to reach the issue of the alleged likelihood of confusion between the
`
`trademarks. Gillette is entitled to judgment in its favor and the Opposition should be
`
`dismissed.
`
`Dated: New York, New York
`May 10, 2004
`
`Respectfully submitted,
`
`FROSS ZELNICK LEHRMAN
`
`&Zl SU,P.C.
`
`‘
`
`Marie V. Driscoll
`
`Barbara A. Solomon
`
`Attorneys for Applicant and
`Counterclaim Petitioner
`
`866 United Nations Plaza
`
`New York, New York 10017
`
`(212) 813-5900
`
`Of Counsel:
`
`Leon Bechet
`
`Boston, Massachusetts
`
`I:\mdriscoll\GLTC\Eveready v. Schick\0404211—Memo in support of motion-pz.doc
`
`13
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`EVEREADY BATTERY COMPANY, INC.,
`
`Opposer,
`
`v.
`
`Opposition and Cancellation
`No. 91159092
`
`'
`
`THE GILLETTE COMPANY,
`
`Applicant.
`
`THE GILLETTE COMPANY
`
`Counterclaim Petitioner,
`
`v.
`
`EVEREADY BATTERY COMPANY, INC.,
`
`Counterclaim Registrant.
`
`05-10-2004
`US. Patent & TMOfv-./TM Mail Rcpt Dt. #78
`
`DECLARATION IN SUPPORT OF
`
`MOTION FOR SUMMARY JUDGMENT
`
`1, Mario Ortiz, declare and say:
`
`1.
`I am a paralegal employed by the firm of Fross Zelnick Lehrman & Zissu, P.C.
`I was asked to purchase a QUATTRO razor and to copy advertisements for the razor.
`
`2. Attached hereto are the following Exhibits:
`
`Exhibit 1:
`
`a color copy of the front labeling
`of the QUATTRO razor packaging
`
`Exhibit 2:
`
`a color copy of the back labeling of
`the QUATTRO razor packaging
`
`

`
`
`
`Exhibit 3:
`
`a color copy of the front labeling for
`the QUATTRO replacement blades
`
`Exhibit 4:
`
`a color copy of the back labeling for
`the QUATTRO replacement blades
`
`Exhibit 5:
`
`a color copy of an advertisement for the
`QUATTRO razor
`
`Exhibit 6:
`
`a copy of a story board for a television
`advertisement for the QUATTRO razor
`
`Exhibit 7:
`
`copies of materials taken from the
`website at www.schickguattro.com
`
`3.
`
`I was also asked to locate razors from third parties that mention on product
`
`packaging the number of blades in the razor. Attached as Exhibits 8 through 15 are color
`
`copies of the fronts of such packages.
`
`4. Attached as Exhibits 16 through 18 are color copies of the fronts of packages
`
`for Gillette products with either two or three blades.
`
`5. Attached as Exhibit 19 are prototypes of advertisements in which Gillette
`
`refers to the number of blades in its razors.
`
`6. Attached as Exhibit 20 is a color copy of the top of packaging for a Schick
`
`disposable razor with three blades.
`
`7. A copy of the English translation of QUATTRO taken from Cassell’s Italian
`
`Dictionary is attached as Exhibit 21. In Spanish CUATRO means four as shown in the
`
`entry in the Larousse dictionary, attached as Exhibit 22.
`
`8. A copy of the file wrapper for Eveready’s application to register QUATTRO is
`
`attached as Exhibit 23. A copy of the specimen of use filed in support of the application,
`
`taken from the file wrapper, is attached as Exhibit 24.
`
`

`
`9. Attached as Exhibits 25 through 29 are copies of articles taken from the Nexis
`
`data base which mention the meaning of QUATTRO.
`
`I declare under penalty of perjury that the foregoing is true and correct.
`
`Executed on May2004
`
` Mario Ortiz
`
`I:\mdriscol1\GLTC\Eveready v. Schick\PIeadings\Declaration in Support of Motion for Summary Judgment - Mario Ortiz.doc
`
`

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