IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition and Cancellation
`No. 91 159092
`
`'
`
`EVEREADY BATTERY COMPANY, INC.,
`
`Opposer,
`
`v.
`
`THE GILLETTE COMPANY,
`
`Applicant.
`
`THE GILLETTE COMPANY
`
`Counterclaim Petitioner,
`
`V.
`
`EVEREADY BATTERY COMPANY, INC.,
`
`Counterclaim Registrant.
`
`REPLY MEMORANDUM IN SUPPORT
`OF MOTION FOR SUMMARY JUDGMENT
`
`
`
`

`
`TABLE OF AUTHORITIES
`
`FEDERAL CASES
`
`Burke-Parsons-Bowlby Corp. v. Appalachian Log Homes, Inc., 10 U.S.P.Q. 2d 1443
`(6thCir. 1989) .................................................................................................................... ..4
`
`Chanel, Inc. v. Suttner, 109 U.S.P.Q. 493 (S.D.N.Y. 1956) ......................................................... ..3
`
`Co-Rect Products, Inc. v. Marvy! Advertising Photography, Inc., 228 U.S.P.Q. 2d 429
`(8th Cir. 1985) ................................................................................................................... ..5
`
`Commerce National Insurance Services, Inc. v. Commerce Insurance Agency, Inc.,
`5 U.S.P.Q. 2d 1098 (3d Cir. 2000) .................................................................................... ..5
`
`Estee Lauder Inc. v. The Gap, Inc., 42 U.S.P.Q. 2d 1228 (2d Cir. 1997) ..................................... ..3
`
`Investacorp, Inc. v. Arabian Investment Banking Corp., 19 U.S.P.Q. 2d 1056 (11th Cir.
`1991) .................................................................................................................................. .. 5
`
`IP. Lund Trading v. Kohler Co., 56 U.S.P.Q. 2d 1776 (D. Mass. 2000) ...................................... ..7
`
`Jordache Enterprises, Inc. v. Levi Strauss & Co., 30 U.S.P.Q. 2d 1721 (S.D.N.Y. 1993) ........... ..4
`
`Larami Corp. v. Talk To Me Programs Inc., 36 U.S.P.Q. 2d 1840 (T.T.A.B. 1995) .................... ..6
`
`In re MBNA America Bank, N.A., 67 U.S.P.Q. 2d 1778 (Fed. Cir. 2003) ..................................... ..2
`
`Papercutter, Inc. v. Fay’s Drug Co., Inc., 14 U.S.P.Q. 2d 1450 (2d Cir. 1990) ........................... ..5
`
`Perini Corp. v. Perini Construction, Inc., 16 U.S.P.Q. 2d 1039 (4th Cir. 1990) .......................... ..5
`
`Saratoga Vichy Spring Co., Inc. v. Lehman, 208 U.S.P.Q. 175 (2d Cir. 1980) ............................ ..5
`
`Scott Paper Co. v. Scott's Liquid Gold, Inc., 200 U.S.P.Q. 421 (3d Cir. 1978) ............................ ..5
`
`The Paddington Corp. v. Attiki Importers & Distributors, Inc., 27 U.S.P.Q. 2d 1189 (2d
`Cir. 1993) ........................................................................................................................... ..3
`
`University of Georgia Athletic Association v. Laite, 225 U.S.P.Q. 2d 1122 (11th Cir.
`1985) .................................................................................................................................. .. 5
`
`I:\mdriscol1\GLTC\Evcrcady v. Schick\Pleadings\TOA.doc
`
`
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition and Cancellation
`No. 91159092
`
`'
`
`EVEREADY BATTERY COMPANY, INC.,
`
`Opposer,
`
`v.
`
`THE GILLETTE COMPANY,
`
`Applicant.
`
`THE GILLETTE COMPANY
`
`Counterclaim Petitioner,
`
`V.
`
`EVEREADY BATTERY COMPANY, INC.,
`
`Counterclaim Registrant.
`
`REPLY MEMORANDUM IN SUPPORT
`
`OF MOTION FOR SUMMARY JUDGMENT
`
`Applicant, pursuant to Rule 2.127(e)(l) of the Trademark Rules of Practice,
`
`requests that the Board, in the exercise of its discretion, consider this reply to the
`
`arguments set forth in Opposer’s opposition to the Motion for Summary Judgment. The
`
`Opposer has raised issues concerning descriptiveness and secondary meaning that need to
`
`be addressed in order to present a full exposition to the Board.‘
`
`' Applicant also files herewith a separate Motion to Strike testimony relied upon by Opposer that
`improperly discloses the contents of a settlement offer made by Applicant. The settlement offer should not
`be considered in connection with the disposition of the Motion for Summary Judgment.
`
`
`
`

`
`I. QUATTRO Is Not
`Inherently Distinctive
`
`QUATTRO — or FOUR — describes a razor with four blades. This is fortified by
`
`Opposer’s advertising message that trumpets the FOUR BLADES message, over and
`
`over. (Ortiz Original Declaration Ex. 1-7)
`
`Incredibly, Opposer would have us believe that consumers would not make such
`
`an association, but instead would believe this is the number of lubricating strips, the
`
`number of wires wrapped around the blades, the number of springs, the number of
`
`gripping pads, the weight of the razor, or its place as fourth in a product line. (Opposer’s
`
`Memorandum p. 6) Descriptiveness, however, must be determined in context.
`
`Marketing practices provide evidence of how the relevant public perceives the mark in a
`
`
`commercial environment. In re MBNA America Bank N.A., 67 U.S.P.Q.2d 1778, 1782
`
`(Fed. Cir. 2003). [Confidential materials omitted.] The so-called optional meanings
`
`suggested by Opposer are mere figments of its imagination given the direct and clear
`
`linkage of FOUR to the number of blades.
`
`Opposer submitted the Declaration of Amy Roman, which showed references
`
`from Nexus and elsewhere to QUATTRO. In all instances, the product was clearly
`
`identified as a four-bladed razor, thus reinforcing the descriptive connotation. Opposer
`
`did not, however, include with these Declarations other articles produced by way of
`
`discovery, which showed the following references (Ortiz Supplemental Declaration Ex.
`
`1-3):
`
`
`
`

`
`“The Quattro with — you guessed it — four blades.”
`
`“The unique feature of the Schick Quattro is as the name describes:
`four blades that outperform the three-blade system”
`
`“. . .Gillette archrival Schick last week introduced a four-blade
`
`four! Razor aptly named the Quattro.”
`
`To summarize: QUATTRO means FOUR and its FOUR blades are the main
`
`feature of Opposer’s razor. The alleged trademark is without doubt descriptive. In the
`
`circumstances, the cases cited by Opposer, where numbers had no descriptive
`
`connotation, are clearly inapposite. The Paddington Corp. v. Attiki Importers &
`
`
`Distributors Inc., 27 U.S.P.Q.2d 1189 (2d Cir. 1993), for example, involved the mark 12
`
`OUZO for use on ouzo. The Court noted that producers of ouzo had traditionally used
`
`numbers to identify the barrels of their respective products when shipped in bulk. Thus,
`
`“while the decision to use a number designation for ouzo probably could not be
`
`considered arbitrary... the choice of the number ‘ 12’ was undeniably arbitrary.” But 12
`
`doesn’t say anything about the characteristics of ouzo. On the other hand QUATTRO or
`
`FOUR for a four-bladed razor undeniably does and is @ arbitrary. In Estee Lauder Inc.
`
`v. The Gap, Inc., 48 U.S.P.Q.2d 1228 (2d Cir. 1997), it was held that 100% was
`
`suggestive rather than descriptive because it “certainly does not convey specific product
`
`attributes.” QUATTRO or FOUR for a four-bladed razor certainly d_o_e_s convey
`
`information about such attributes.
`
`
`The other cases cited by Opposer are also not relevant. The Court in Chanel Inc.
`
`V. Suttner, 109 U.S.P.Q. 493 (S.D.N.Y 1956) found CHANEL NO. 5 to be protectable.
`
`There was absolutely no evidence that the numeral 5 has any descriptive connotation
`
`
`
`

`
`when used on fragrances. Again, the opposite is true for QUATTRO or FOUR on four-
`
`bladed razors. And, in Jordache Enterprises, Inc. v. Levi Strauss & Co., 30 U.S.P.Q.2d
`
`1721 (S.D.N.Y. 1993), the numeral 501, which was at issue in that case, obviously did
`
`not describe a feature ofjeans.
`
`Nothing convincing, thus, has been put forth by the Opposer to counter the clear
`
`showing made by Applicant, on the Motion, that QUATTRO — FOUR — is merely
`
`descriptive of a four-bladed razor.
`
`II. Opposer’s Arguments
`As To Secondary Meaning
`Are Not Relevant
`
`Opposer, as the second prong of its attempt to avoid summary judgment, claims
`
`that QUATTRO has acquired secondary meaning. Its timing, however, is wrong. The
`
`first public mention of QUATTRO put forth in Opposer’s papers was a press release
`
`dated August 12, 2003. (Roman Declaration ‘H 7) Gillette filed its application to register
`
`QUANTUM, based on intent to use, some four and one-half months earlier on March 28,
`
`2003. There is no proof that QUATTRO was used in any public way prior to that filing
`
`date. The Opposer’s QUATTRO application did have a filing date prior to March 28.
`
`However, Applicant submits that this application date cannot defeat the Motion for
`
`Summary Judgment under the particular facts of this case. Otherwise, filing for a clearly
`
`inherently unregistrable term — QUATTRO — could be used to cut off the legitimate
`
`rights of a second filer for what is inherently a qualified trademark, in this case
`
`QUANTUM.
`
`The parallels from well established principles of trademark law are clear. A
`
`plaintiff claiming trademark rights in a term that is inherently descriptive of a feature of
`
`
`
`

`
`the product on which it is used can prevail only if it can prove that the term has acquired
`
`secondary meaning. And, the secondary meaning has to have been acquired prior to the
`
`defendant’s first use of the allegedly infringing term. In an infringement context where
`
`priority is at issue, the cases are clear and consistent, Saratoga Vichy Spring Co., Inc. v.
`
`Lehman, 208 U.S.P.Q. 175 (2d Cir. 1980); Papercutter, Inc. v. Fay’s Drug Co., Inc., 14
`
`U.S.P.Q.2d 1450 (2d Cir. 1990); Scott Paper Co. v. Scott’s Liguid Gold, Inc., 200
`
`U.S.P.Q. 421 (3d Cir. 1978); Commerce National Insurance Services Inc. V. Commerce
`
`Insurance Agency, Inc., 5 U.S.P.Q.2d 1098(3d Cir. 2000); Perini Copp. v. Perini
`
`
`Construction Inc., 16 U.S.P.Q.2d 1039 (4th Cir. 1990); Burke-Parsons-Bowlby Corp. v.
`
`
`Appalachian Log Homes, Inc., 10 U.S.P.Q.2d 1443 (6th Cir. 1989); Co-Rect Products
`
`E v. Marvy! Advertising Photography, Inc., 228 U.S.P.Q.2d 429 (8th Cir. 1985); and
`
`Investacorp, Inc. v. Arabian Investment Banking Co1_'p., 19 U.S.P.Q.2d 1056 (1 1th Cir.
`
`1991).
`
`The reason behind the rule is clear. Secondary meaning is the means by which
`
`otherwise unprotectible descriptive marks may obtain protection. It is not until secondary
`
`meaning is attained that a word originally incapable of serving as a mark becomes a “full
`
`fledged trademark.” Universig of Georgia Athletic Association v. Laite, 225 U.S.P.Q
`
`1122, 1126 (11th Cir. 1985).
`
`Equally here, Applicant submits that there had to be secondary meaning in
`
`QUATTRO prior to the filing date of Gi11ette’s application. Since Gillette’s application
`
`is for a qualified, registrable trademark, it should not be trumped by an application which,
`
`when filed, was not a “full fledged trademark”, but merely a descriptive word. The
`
`statute was meant to give certain benefits by allowing trademark owners to file without
`
`
`
`

`
`first making use. However, filing for something that is clearly not a trademark should not
`
`retroactively destroy the intervening rights of another party filing for a “real” trademark.
`
`Applicant respectfully submits that its interpretation of the intent to use provisions
`
`of the Trademark Act is the correct one under the facts of this case. “Constructive use
`
`means that which establishes a priority date with the same legal effect as the earliest
`
`actual use of a trademark at common law,” McCarthy on Trademarks and Unfair
`
`Competition § 16:17 (4th ed.) A descriptive term, however, is not entitled to Q);
`
`protection at common law on the date of its first use.
`
`It is clear at common law that a first use of a descriptive term followed by a
`
`several month hiatus with no use could not be relied upon to defeat the intervening rights
`
`of another. Opposer may have a March 28 statutory first use date. However that gives it
`
`no more than it would have had were March 28 a “real” first use date. Since the alleged
`
`mark in question is descriptive, it necessarily follows that the first use, whether statutory
`
`or real, had to be followed up by use sufficient to establish secondary meaning. This was
`
`not done prior to Applicant’s intervening rights.
`
`Opposer relies on Larami Corp. v. Talk To Me Programs Inc., 36 U.S.P.Q.2d
`
`1840 (T.T.A.B. 1995). The case is distinguishable in that, in Laramie, the Opposer’s
`
`mark was not descriptive. Applicant respectfully submits that the dicta in Larami should
`
`not be relied upon to allow Opposer to prevail simply because it filed an earlier
`
`application to register a term that is unregistrable. To allow a “non-trademark” filing to
`
`defeat the intervening rights of the applicant whose mark QUANTUM is not defective
`
`flies in the face of the aforesaid applicable law concerning timing of the acquisition of
`
`secondary meaning. Applicant respectfully submits that the provisions of the statute
`
`
`
`

`
`basing priority on filing dates should be read to cover marks that are really marks and not
`
`unregistrable descriptors.
`
`III.References to the Survey
`Should be Disregarded
`
`In further opposition to the Motion, Opposer has submitted the Declaration of one
`
`Geoffrey Fong who did a survey to test whether QUATTRO had acquired secondary
`
`meaning. The survey apparently tested secondary meaning as of June and July 2004 and
`
`is thus not relevant. In any event, incredibly, Opposer has failed to submit a copy of the
`
`survey or any underlying materials. The only thing one can really know about what Dr.
`
`Fong did is to look at his prior work, as described in I.P. Lund Trading v. Kohler Co., 56
`
`U.S.P.Q 2d 1776, 1791 (D. Mass. 2000). The Court in that case held that the secondary
`
`meaning survey Dr. Fong did was flawed in several respects. One error was so bad it was
`
`described by the Court as “glaring.” Surely Opposer cannot defeat a Motion for
`
`Summary Judgment by relying on such an “expert” without even giving complete
`
`information about just what he did in this case to test secondary meaning.
`
`
`
`

`
`Conclusion
`
`For the foregoing reasons and for those reasons set forth in Applicant’s Principal
`
`Memorandum, Applicant respectfully submits that the Motion for Summary Judgment
`
`should be granted in all respects.
`
`Dated:
`
`New York, New York
`November 12, 2004
`
`I hereby certify that this correspondence is being deposited with the
`United States Postal Service "Express Mail Post Office to Addressee"
`service on the date indicated below and is addressed to: Commissioner
`for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.
`
`“Express Mail" mailing label No. EV 220030309 US
`
`November 12, 2004
`(Date of Deposit)
`,
`,
`Mane V. Dl'1SC0ll
`(Name of person signing Certificate)
`_
`
`‘ 5 ~vi w
`(Signature)
`
`November 12,2004
`(Date of Signature)
`
`Respectfully submitted,
`
`FROSS ZELNICK LEHRMAN
`
`&
`
`(/
`‘
`l; 1tl:lLc7'€Lq
`/W\lil:-wet
`By‘
`Marie V. Driscoll
`
`Barbara A. Solomon
`Attorneys for Applicant and
`C
`t
`1
`.
`P ft.
`r
`Oun érc alm _ e 1 lone
`866 Umted Nations Plaza
`New York, New York 10017
`(212) 813-5900
`
`‘
`
`Of counsel
`
`Leon Bechet
`
`Boston, Massachusetts
`
`
`
`

`
`CERTIFICATE OF MAILING
`
`A copy of the foregoing Reply Memorandum in Support of Motion for Summary
`
`Judgment was mailed by first class mail postpaid to Opposer’s attorney Jason C. Kravitz
`
`at Nixon Peabody LLP, 101 Federal Street, Boston, Massachusetts 02110-1832 this 12th
`
`day of November 2004.
`
`
`
`
`
`Marie V. Driscoll
`
`I:\n1driscoll\GLTC\Eveready v. Schick\Pleadings\Reply Memorandum in Support of Motion for Summary Judgment Non Confidential
`Copy.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.
`
`MOTION TO STRIKE REFERENCES
`
`TO SETTLEMENT OFFER
`
`Jason Kravitz, the present attorney for the Opposer in this proceeding, submitted a
`
`Declaration in Opposition to the Motion for Summary Judgment filed by Applicant, The
`
`Gillette Company (“Gillette”). He included as Exhibit 14 a copy of a letter dated
`
`February 2, 2004, from Gillette’s in—house Assistant Trademark Counsel, Leon Bechet, to
`
`Thomas Polcyn, who at the time was the attorney for Opposer. In this letter Mr. Bechet
`
`made a settlement offer. Opposer now seeks to use this settlement offer in support of an
`
`argument, found at pages 3 and 16 of Opposer’s Opposition to Summary Judgment that
`
`Gillette is apparently not entitled to the relief sought on its Motion for Summary
`
`Judgment because it is inconsistent with the offer of a compromise made by Mr. Bechet.
`
`
`
`

`
`Applicant hereby moves to strike Kravitz Exhibit 14 and the aforesaid portions of
`
`the Memorandum which refer to and quote from the settlement proposal.
`
`The disclosure of the settlement offer by the Opposer’s attorney is clearly
`
`improper. Federal Rule of Evidence 408 provides as follows:
`
`Compromise and Offers to Compromise
`
`Evidence of (1) furnishing or offering or promising to furnish, or
`(2) accepting or offering or promising to accept, a valuable
`consideration in compromising or attempting to compromise a
`claim which was disputed as to either validity or amount, is not
`admissible to prove liability for or invalidity of the claim or its
`amount. Evidence of conduct or statements made in compromise
`negotiations is likewise not admissible. This rule does not require
`the exclusion of any evidence otherwise discoverable merely
`because it is presented in the course of compromise negotiations.
`This rule also does not require exclusion when the evidence is
`offered for another purpose, such as proving bias or prejudice of a
`witness, negativing a contention of undue delay, or proving an
`effort to obstruct a criminal investigation or prosecution.
`
`The reason for this rule is anchored in public policy. Disclosure of settlement
`
`offers to undermine a claim asserted by a party would obviously have the effect of
`
`deterring attempts to settle, which is certainly not in the interest ofjudicial economy,
`
`Deisenroth V. Numonics Corp., 997 F. Supp. 153, 158 (D. Mass. 1998). This Board
`
`addressed the issue in Toro Co. V. Torohead Inc., 61 U.S.P.Q.2d 1164 (TTAB 2001).
`
`Applicant in that case argued that a settlement offer made by Opposer impeached
`
`Opposer’s claim that it vigorously defended its trademarks. The holding by the Board is
`
`firm and unequivocal (p. 1173):
`
`Applicant’s reliance on an alleged settlement offer by opposer is
`inexcusable and will not be given any consideration. (emphasis
`added)
`
`
`
`

`
`Opposer’s disclosure of Gillette’s settlement offer in the present case is
`
`equally inexcusable. Opposer’s attorney has refused to remove the offending
`
`material from the record. His email message to that effect is attached hereto as
`
`Exhibit 1. The use which Opposer is trying to make of the settlement offer is not
`
`within the stated exceptions to Rule 408. Nor does arguing bad faith on the part
`
`of Gillette excuse the improper disclosure of Gillette’s offer, Southwest Nurseries
`
`
`V. Florists Mutual Insurance inc., 266 F. Supp. 1253, 1257 (D. Col. 2003). In any
`
`event, “on balance. . .the better practice is to exclude evidence of compromises or
`
`compromise offers whenever the issue of admissibility is doubtful.”
`
`Opposer clearly chose to defy Rule 408. The inadmissibility of the
`
`settlement offer is clear and it cannot be relied upon to defeat the Motion for
`
`Summary Judgment. Gillette asks that it be stricken from the record.
`
`Dated: New York, New York
`November 12, 2004
`
`Certificate of Ex ress Mailin
`I hereby certify that this correspondence is being deposited with the
`United States Postal Service "Express Mail Post Office to
`Addressee" service on the date indicated below and is addressed to:
`Commissioner for Trademarks, P.O. Box l451, Alexandria, VA
`22313-1451.
`
`Respectfully submitted,
`
`& ZISSU, P.C.
`
`HRP ,1 Q
`
`N
`
`“Express Mail” mailing label No. EV 220080309 US
`November 12,2004
`(Date of Deposit)
`
`-/' If//“
`.
`I,»
`\\
`(/,»
`.'.
`’
`"
`'
`'
`'
`".
`in L.
`. L
`»
`l
`-
`.
`By.
`
`Marie V. Driscoll
`
`Marge v_ Driscoll
`
`Barbara A. Solomon
`
`(Name of person signing Certificate)
`—. /V ,2
`..
`;
`—
`Q
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`In 4
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`
`rgnature
`Novembe, 12,2004
`(Dateofsignature)
`
`Attorneys for Applicant and
`Counterclairn Petitioner
`_
`.
`866 UmtedNat1ons Plaza
`New York, New York 10017
`(212) 813-5900
`
`Of Counsel:
`Leon Bechet
`
`Boston, Massachusetts
`
`
`
`

`
`CERTIFICATE OF MAILING
`
`A copy of the foregoing Motion to Strike References to Settlement Offer was
`
`mailed by first class mail postpaid to Opposer’s attorney Jason C. Kravitz at Nixon
`
`Peabody LLP, 101 Federal Street, Boston, Massachusetts 02110-1832 this 12”‘ day of
`
`November 2004.
`
`K /7] V;
`;’/I , Q4
`
`Marie
`
`.
`1 \
`17 ‘if; L'n.*”‘l .1» L39’
`;
`Driscoll
`
`1:\mdrisc0ll\GLTC\Eveready V. Schick\P1eadings\MOTION TO STRIKE REFERENCES TO SETTLEMENT OFFER.doc
`
`
`
`

`
`
`
`EXHIBIT 1EXHIBIT 1
`
`

`
`
`
`Wane Driscoll - RE: Eveready v. Gillette
`v
`
`Page 1
`
`From:
`To:
`Date:
`Subject:
`
`"Kravitz, Jason" <JKRAVlTZ@nixonpeabody.com>
`"Marie Drisco||" <mdriscoll@frosszelnick.com>
`Mon, Nov 1, 2004 9:36 AM
`RE: Eveready v. Gillette
`
`I disagree, Marie. The rule you reference only precludes its use as
`evidence of liability. That is not why it was cited.
`
`Jason
`
`-----Original Message-----
`From: Marie Driscoll [mailtozmdriscol|@frossze|nick.com]
`Sent: Monday, November 01, 2004 9:31 AM
`To: Kravitz, Jason
`Subject: Eveready v. Gillette
`
`I see that you have included Leon Bechet's letter of February 2, 2004,
`to former counsel for Eveready as an exhibit to your Declaration and
`have referred to its substance in your memorandum in opposition to the
`Motion for Summary Judgment. Mr. Bechet's letter was an offer of
`settlement and compromise. As such it is clearly not admissible under
`Rule 408 of the Federal Rules of Evidence, and your disclosure of its
`contents is clearly improper.
`In the circumstances, I must ask that you
`immediately take steps to remove this exhibit from the record and modify
`your memorandum to omit references to the offer of settlement and
`compromise.
`
`***************************************************************i********
`*******************i*********fii*************
`
`The information contained in this E-mail message may be privileged,
`confidential, and protected
`from disclosure. Any unauthorized use, printing, copying, disclosure or
`dissemination of this
`
`communication may be subject to legal restriction or sanction.
`think that you have received
`**************************iii****ii*************************************
`this E-mail message in error, please reply to the sender.
`*********************************************i
`
`If you
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition and Cancellation
`No. 91 159092
`
`'
`
`EVEREADY BATTERY COMPANY, INC.,
`
`Opposer,
`
`V.
`
`THE GILLETTE COMPANY,
`
`Applicant.
`
`THE GILLETTE COMPANY
`
`Counterclaim Petitioner,
`
`v.
`
`EVEREADY BATTERY COMPANY, INC.,
`
`Counterclaim Registrant.
`
`SUPPLEMENTAL DECLARATION OF MARIO ORTIZ
`
`IN SUPPORT OF MOTION FOR SUMMARY JUDGMENT
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`1, Mario Ortiz, declare and state:
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`1.
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`I am a paralegal employed by the firm of Fross Zelnick Lehnnan & Zissu, P.C.,
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`which represents The Gillette company in this proceeding.
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`2.
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`I was asked to compare the exhibits to the Declaration of Amy Roman, which
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`consisted in large part of Nexus printouts of stories about the QUATTRO razor to the
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`Nexus printouts previously produced by the Opposer in this proceeding in response to
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`discovery requests.
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`3. Attached as Exhibits 1 through 3 are the following printouts that Ms. Roman did
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`not include as exhibits to her Declaration:
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`Exhibit 1 — September 12, 2003 article mentioning “The Quattro with — you
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`guessed it — four blades.”
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`Exhibit 2 — October 25, 2003 article stating “The unique feature of the Schick
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`Quattro is as the name describes: four blades that outperform the three-blade systems.”
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`Exhibit 3 — October 12, 2003 article stating “. . .Gil1ette archrival Schick last week
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`introduced a four-blade four! Razor aptly named the Quattro.”
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`I declare under penalty of perjury that the foregoing is true and correct. Executed
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`this 12”‘ day ofNoVember, 2004.
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`EXHIBIT 1EXHIBIT 1
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`155 of2l6 DOCUMENTS
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`Copyright 2003 CanWest Interactive, a division of
`CanWest Global Communications Corp.
`All Rights Reserved
`Ottawa Citizen
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`September 12, 2003 Friday Final Edition
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`SECTION: Business; Pg. D4
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`LENGTH: 386 words
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`HEADLINE: Schick-Wilkinson Sword battles for leading edge in razor wars: The wet-shave fight with Gillette gets
`more cutthroat every day, Michael McCullough writes.
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`SOURCE: CanWest News Service
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`BYLINE: Michael McCullough
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`DATELINE: VANCOUVER
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`BODY:
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`VANCOUVER - The market for men’s shaving products will get a little more precious next Friday when Schick-
`Wilkinson Sword unveils its new Quattro razor.
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`The Quattro, with -- you guessed it -- four blades, will sell for $17 U.S. for a pack of eight cartridges in the United
`States. Sales in Canada are slated to begin early next year.
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`The product rollout comes despite the fact that Schick’s new owner, Energizer Holdings Inc. of St. Louis, is
`embroiled in a lawsuit with razor heavyweight Gillette Co. over patent infringement with the Quattro. The two
`companies dominate the U.S. razor market from which they derive about $5 billion a year in revenue.
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`On Aug. 12, Gillette sought a court injunction to stop the rollout of Quattro, which Gillette claims borrowed from
`its $ l —bil1ion research and development effort to produce its three-bladed Mach3 razor. Before Mach3, which has 28 per
`cent of the global market, virtually all commercial razor cartridges carried one or two blades. In addition to the
`unprecedented fourth blade, the Quattro promises two conditioning strips with Vitamin E and aloe positioned before and
`after the blades.
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`The Quattro, Gillette says in its writ, "threatens to significantly damage Gillette’s reputation as a technology leader,
`its goodwill with the trade and consumers, and its huge investments."
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`"Gillette is likely to lose customers -— some of whom may never return," the statement of claim predicted.
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`But U.S. District Judge Patti Saris declined to issue an immediate injunction and set a date for a preliminary
`hearing in November, thereby allowing the Quattro launch to proceed.
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`The defence team pledged to challenge the validity of Gillette’s patent for "progressive geometry," which in theory
`makes each successive blade shave closer than the last. Before the Quattro case, the two companies were already
`engaged in a suit over the same technology in Europe.
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`The corporate spat takes on new dimensions when you consider that Gillette also makes Duracell batteries, which
`have had their own legal tiffs over marketing practices with Energizer’s bunny.
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`EVERO001018
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`Page 322
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`Ottawa Citizen September 12, 2003 Friday Final Edition
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`Gillette remains the dominant player in the wet-shave category, with second—quarter blade sales of $1 billion,
`compared with Schick’s $206 million in its most recent financial quarter.
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`GRAPHIC: Graphic;Diagram: U.S. District Court, The Associated Press; This drawing is among court papers filed by
`the Gillette company of Boston in its patent-infringement lawsuit against competitor Schick-Wilkenson Sword for
`trying to introduce the Schick Quattro four-blade shaving product in August.
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`LOAD-DATE: September 12, 2003
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`EVER0001019
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`EXHIBIT 2EXHIBIT 2
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`10/12/03 STLTI L4
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`facjfiuriia.
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`(Publication page references are not available for this document.)
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`Copyright
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`(c) 2003 Bell & Howell Information and Learning Company. All rights
`reserved.
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`The Seattle Times
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`Sunday, October 12, 2003
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`Northwest Life
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`Razor firms in a race for cutting—edge technology ; But good, old straight
`razor may give best shave
`Eils Lotozo
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`Knight Ridder Newspapers
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`PHILADELPHIA For most of the past century,
`Philadelphia
`has mainly been about one man, one blade.
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`the story of shaving
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`The man was a shrewd traveling salesman named King Camp Gillette, who turned
`shavers into a lucrative consumer market in 1901 when he invented the safety
`razor with disposable blades.
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`The single blade ruled until 1971, when the Gillette Co. brought out the twin-
`blade razor followed five years ago by the three- blade razor,
`the Mach3.
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`taking millions of dollars in development and
`In the latest act of escalation,
`years of research, Gillette archrival Schick last week introduced a four-blade
`four! razor aptly named the Quattro.
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`Becoming more mod
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`And in a retaliatory strike, Gillette is rolling out a new version of the Mach3
`the Mach3 Turbo Champion in brilliant red, a color that will be familiar to any
`balding middle-aged man who has shopped for a convertible.
`(Can't afford the
`sports car? At least she'll glimpse that racy razor in the medicine cabinet.)
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`At stake in all this is market share in the global $7.8 billion "wet—shave"
`business, nearly three-quarters of which is owned by Gillette.
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`With the Quattro, Schick is making a bold strike to capture the most desirable
`type of shaver the "grooming—involved" man.
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`You know who you are.
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`The "grooming—involved" man doesn't balk at shelling out $8.99 for a razor,
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`Copr. © West 2004 No Claim to Orig. U.S. Govt. Works
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`plus another $8.99 for a four—count refill as often as necessary.
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`He's the type who has nothing to learn from those exasperated lectures on
`proper shaving technique delivered by Kyan,
`the grooming guru on "Queer Eye for
`the Straight Guy."
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`(For the rest of you, a summary: Always shave after a shower, because warm
`water softens the beard, and shave in the direction the hair grows.)
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`Schick's Quattro, billed as "the most technologically advanced razor for men,"
`joins a panoply of high—tech "shaving systems" with names befitting fighter
`jets and Formula 1 race cars names fit to pilot across a rugged face: The ST,
`the Xtreme,
`the Mach3 Turbo G- Force.
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`They have "knurled elastomeric“ handles and lubricating strips with Vitamin E
`and aloe.
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`They promise Revolutionary New Shaving Technology! and The World's Closest
`Shave!
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`But four blades? Is this a gimmick? Aren't three enough?
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`they are not, said Dave VerNooy, Schick vice president of
`Unfortunately,
`research, development and engineering. He said the company studied magnified
`videotapes of men shaving with existing razors and discovered that horror!
`"even with three blades going over the face, hairs were being missed "
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`the Quattro added a shaving edge that is part of
`To solve that, VerNooy said,
`a "synchronized dynamic blade pack" wrapped with wires to aid "shaving force
`distribution." Who knew?
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`Gillette, which spent a reported $750 million to develop the Mach3 and $300
`million to market it,
`is in a bit of a lather over the Quattro. Its Mach3 line
`accounts for $2 billion in annual sales, and is the most-stolen retail item in
`the country,
`if not
`the world.
`(Gillette's three—blader for women,
`the Venus,
`is also a top seller.)
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`Clearly hoping to hold up the launch, Gillette filed a patent— infringement
`lawsuit last month, claiming the Quattro steals the Mach3's "progressive blade
`geometry." A federal court hearing is scheduled for November.
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`"It takes more than four blades to make a great shave," said Michele Szynal,
`Gillette's communications director. "It's a combination of the blades,
`the
`cushioning,
`the ergonomics of the handle. Men are going to spend an average of
`800 hours in their lives removing facial hair. You want it to be comfortable,
`and you want it to be pleasant."
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`Copr.
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`(9 West 2004 No Claim to Orig. U_.s. Govt. Works
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`Another challenger
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`Of course, Gillette and Schick aren't the only ones upping the blade ante. Quik
`Shave, a company launched by a Houston entrepreneur inspired by King Camp
`Gillette's rags—to—riches saga,
`is promoting a razor with two side—by-side
`shaving heads. "It's like hooking two lawn mowers together," said owner-
`inventor Herbie McNinch.
`"You cover twice as much space."
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`Not everyone thinks more is better. Ray Dupont is one shaver who scoffs at
`blade inflation.
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`"There's a constant battle for market share going on between Schick and
`Gillette, and each is trying to out—technicalize the other," said Dupont, who
`sells shaving supplies. "It's not rocket science. You don't shave with a
`system, you shave with a blade, and men have been doing it for centuries."
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`Dupont has been shaving with a straight razor for 30 years. Often handed down
`from fathe