BULKY DOCUMENTS
`(exceeds 300 pages)
`
`Proceeding] Serial No: 9 1 1 6 1373
`
`Filed: O 1- 12-2007
`
`Title: Notice of Filing of Testimony Deposition
`Transcript Pursuant to 37 C.F.R. 2.125(c)
`
`Part 1 of 2
`
`

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`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`N
`TTAB
`67 Q /iii? la W3
`
`AMERICAN ITALIAN PASTA COMPANY
`
`Opposer,
`
`v.
`
`BARILLA G. E R. FRATELLI -
`SOCIETA PER AZIONI
`
`Applicant.
`
`‘—~¢\;\4\,\4»—~«~a~a~.’
`
`Opposition No. 91/161,373
`,—
`~———
`_,
`V
`_ _,
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`_.
`
`-1,
`
`01-12-2007
`7
`U.S. Patent & TMOfc/TM Mail Rcpt DL3122
`
`NOTICE OF FILING OF TESTIMONY DEPOSITION
`
`TRANSCRIPT PURSUANT TO 37 C.F.R. § 2.125§c)
`
`Applicant, BARILLA G. E R. FRATELLI — SOCIETA PER AZIONI
`
`(“Applicant”) hereby give notice to Opposer, AMERICAN ITALIAN
`
`PASTA COMPANY (“Opposer”)
`
`in the above—identified Opposition
`
`proceeding
`
`that a certified transcript and accompanying exhibits
`
`10-28 of the testimony deposition of Kenneth B. Germain taken by
`
`Applicant on December 20, 2006 in Chicago, Illinois
`
`(attended by
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`Cheryl Burbach on behalf of Opposer and Brian Banner, Esq. on
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`behalf of Applicant), has been filed with the U.S. Patent and
`
`Trademark Office, before the Trademark Trial and Appeal Board.
`
`This transcript and Applicant deposition exhibits 17B, 18, 21,
`
`and 22 are being filed under seal pursuant
`
`to the Protective
`
`Order entered in this case. A redacted copy of the Germain
`
`deposition, excluding the confidential portions,
`
`is also appended
`
`for the public record. All of Applicant's exhibits except for
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`17B, 18, 21, and 22 are available for the public record. Please
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`ote that 17B is incorrectly referred to as exhibit 16B in the
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`ranscript.
`
`

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`Counsel for Applicant has filed and served the transcript
`
`and accompanying exhibits 10-28 in accordance with the rules of
`
`the Trademark Trial and Appeal Board.
`
`January 11, 2007
`
`Respectfully submitted,
`BARILLA G. E R. FRATELLI -
`SOCIETA PER AZIONI
`
`By:
`
`2§%%§zg§%Z&gZ§j
`
`Brian Banner, Esq
`G. Franklin Rothwell, Esq.
`Rothwell, Figg, Ernst
`& Manbeck
`1425 K Street N.W.
`Suite 800
`
`Washington D.C. 20005
`
`

`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a true and correct
`copy of the following NOTICE OF FILING OF TESTIMONY DEPOSITION
`TRANSCRIPT PURSUANT TO 37 C.F.R. § 2.125©) was served on this
`12” day of January, 2007, by U.S. Mail postage pre-paid on the
`following counsel for Opposer:
`
`Thomas H. Van Hoozer, Esq.
`Hovey Williams, LLP.
`2405 Grand Boulevard
`Suite 400
`
`Kansas City, Missouri 64108
`
` atrick Collares
`
`

`
`K. GERMRIN
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMRRK TRIAL
`
`AND APPEAL BOARD
`
` ORIGINAL
`
`OPPOSTION NO. 91161373
`
`AMERICAN ITALIAN PASTA
`
`COMPANY
`
`VS.
`
`OPPOSER
`
`BARILLA G.E.R.
`
`FARTELLI-SOCIETA PER
`
`DEPOSITION TAKEN ON
`
`AZIONI
`
`BEHALF OF APPLICANT
`
`*********
`
`DEPONENT:
`
`KENNETH B. GERMAIN
`
`DECEMBER 20, 2006
`
`12:56 P.M.
`
`Reported by:
`
`Jennifer E. Davis, CSR
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`212-267-6868
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`VERITEXT/NEW YORK REPORTING COMPANY
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`516-608-2400
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`

`
`K. GERMAIN
`
`On behalf of the Plaintiffs,
`
`Cheryl L. Burbach, Esq.
`
`Hovey Willliams, LLP
`
`2405 Grand Boulevard, Suite 400
`
`Kansas City, Missouri
`
`64108
`
`(816)474-9057
`
`On behalf of the Defendants,
`
`Brian E. Banner, Esq.
`
`Rothwell, Figg, Ernst & Manbeck P.C.
`
`1425 K Street, NW, Suite 800
`
`Washington, D.C. 20005
`
`(202)783-6040
`
`*********
`
`212-267-6868
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`VERITEXT/NEW YORK REPORTING COMPANY
`
`516-608-2400
`
`

`
`K. GERMRIN
`
`S T I P U L A T I O N S
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`IT IS HEREBY STIPULATED AND AGREED by and between
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`counsel for the applicant and counsel for the opposer that
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`this deposition may be taken in stenographic shorthand by
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`Jennifer E. Davis, Certified Court Reporter, and afterwards
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`reduced into typewriting.
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`IT IS FURTHER STIPULATED AND AGREED by and between
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`the parties that presentment to the attorneys of record of
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`a copy of this deposition shall be considered submission
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`to the witness for signature pursuant to 703.01(j) --
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`37 CFR 2.123(e)(5); but shall in no way be considered as
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`a waiver of the witness's signature,
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`to be signed by the
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`witness at any time before or at the trial of this case,
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`and if not signed by the time of trial it may be used as if
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`signed.
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`IT IS FURTHER STIPULATED AND AGREED between
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`counsel for the respective parties hereto that the
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`deposition of the witness may be signed before a notary
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`public
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`**'k*******
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`516-608-2400
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`

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`K. GERMRIN
`
`WITNESS:
`
`KENNETH B. GERMRIN
`
`DIRECT EXAMINATION:
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`By Mr. Banner .
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`CROSS-EXAMINATION:
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`By Ms. Burbach .
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`FURTHER DIRECT EXAMINATION:
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`By Mr. Banner .
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`REPORTERS CERTIFICATE
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`212-267-6868
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`516-608-2400
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`VERITEXT/NEW YORK REPORTING COMANY
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`

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`K. GERMRIN
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`NUMBER
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`APPLICANT'S
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`EXHIBIT
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`EXHIBIT
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`16B (CONFIDENTIAL)....
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`(CONFIDENTIAL)....
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`VERITEXT/NEW YORK REPORTING COMPANY
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`516-608-2400
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`
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`

`
`K. GERMAIN
`
`KENNETH B. GERMAIN
`
`Having been previously sworn the Witness testified as
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`follows:
`
`DIRECT EXAMINATION
`
`Mr. Germain, my name is Brian Banner.
`
`I'll
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`be taking your deposition in this matter
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`today on behalf of Barilla. When I
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`conclude Ms. Cheryl Burbach representing
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`the opposer will be taking your cross. As
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`you know testimonial depositions are like a
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`trial, but there's no judge.
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`In an
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`opposition proceedings such as this, no
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`judge is around so we are going to take
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`your verbal answers to my verbal questions
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`down, and that's going to be used in a
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`brief before the Trademark Trial and Appeal
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`Board; do you understand?
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`Yes.
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`I'll ask you to speak clearly, and not nod
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`your head in any direction so that the
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`court reporter can report what your answers
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`to my questions are.
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`On occasions I mess
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`up a question, and if you don't understand
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`K. GERMRIN
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`what I'm asking you, stop and ask me to
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`rephrase the question.
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`Yes, sir.
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`Please understand that if you need a break
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`at any time or water or coffee or whatever,
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`answer the question that's been asked of
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`you, and then we will stop, and you can
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`have a break.
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`Sometimes it happens that
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`you will give an answer to a question and
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`we will go on. Then you will remember
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`something to highlight or magnify your
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`answer, and you'll want to tell us what
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`that is.
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`If that happens, tell us that you
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`want to add something to your previous
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`answer, and at that point in time, while
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`it's fresh in your mind we will stop and
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`you can add that to your prior answer.
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`You're not -- are you taking any
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`medications or prescriptions that might
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`make it difficult for you to understand
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`what's going to happen in this deposition
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`today?
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`No.
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`Would you please state your full name for
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`212-267-6868
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`516-608-2400
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`VERITEXT/NEW YORK REPORTING COMPANY
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`K. GERMAIN
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`the record?
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`Kenneth Barry Germain.
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`Want to spell your middle?
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`Spell?
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`The middle name?
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`B-A-R-R-Y.
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`Okay. Are you appearing today pursuant to
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`the Notice of Deposition that I have marked
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`Exhibit I6?
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`M. BANNER:
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`Please mark this Exhibit 10.
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`(Applicant's Exhibit No. 10 was marked for the purpose of
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`identification.)
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`A.
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`Yes. And there's an attached subpoena
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`also.
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`Okay. Please tell us your educational
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`achievements since high school?
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`I attended Rutgers College, part of Rutgers
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`University, and received a Bachelorette
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`degree in 1966. Had academic honors, Phi
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`Beta Kappa stuff like that.
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`I proceeded
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`immediately to law school and went to New
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`York University where I obtained a JD
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`degree in 1969.
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`I was on the NYU Law
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`Review, generally a good student. Those
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`K. GERMRIN
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`are all my academic degrees.
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`
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`Thank you.
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`Who is your current emloyer?
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`I'm a partner at Thompson Hine, LLP in the
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`Cincinnati office.
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`Were you ever employed by a corporation or
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`an individual as a brand director or
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`marketing director?
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`No.
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`’Did you ever teach trademark law?
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`Many times.
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`When and where?
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`
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`first professorial appointment was at the
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`University of Kentucky in Lexington,
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`Kentucky.
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`I started there in 1971, and as
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`early as the winter term of 1972 I taught a
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`course called, Unfair Trade Practices which
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`is sort of an introduction to what we now
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`call Intellectual Property Law.
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`From that
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`time forward, almost every year I have
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`taught that course, a revised version of
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`that course, another course called
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`Trademarks and Unfair Competition or
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`another course called Trademark Practice
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`212-267-6868
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`My first academic appointment, well, my
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`K. GERMRIN
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`and Procedure, most years.
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`Okay.
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`Thank you.
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`In teaching trademark
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`law, did you ever have an occasion to
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`review proper trademark use versus improper
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`trademark use?
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`Yes.
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`It's a typical topic for those
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`courses.
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`Can you explain for me what proper
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`trademark use is?
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`Trademark use or also called use as a
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`trademark, means that the party claiming
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`that it has created a trademark has put
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`that mark on goods or on packages or goods
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`or on shelf displays used in close in
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`connection with goods,
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`the thing claimed to
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`be the trademark,
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`in a way such that normal
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`buyers and normal competitors would
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`perceive that there is a claim that this
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`term or name or symbol or device identifies
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`and distinguishes the source of those
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`goods.
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`Thank you.
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`Is there, is there any
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`requirements for marking a trademark that
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`is normal before it is registered?
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`

`
`K. GERMAIN
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`There's no requirement, but it is fairly
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`typical for a party claiming that a word,
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`name, symbol or device is a trademark to
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`adorn that word, name, symbol or device
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`with a TM symbol.
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`TM short form for
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`trademark.
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`It's a way of saying, I view
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`this as a trademark, and I hope you do
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`also.
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`And if a mark is federally registered is
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`there some sort of -- is there any symbol
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`that one would normally be able to attach
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`with the trademark?
`
`Yes.
`
`The most normal symbol is a capital R
`
`in a circle.
`
`It's the federal registration
`
`symbol. One could also use a legend
`
`registered at the United States Patent and
`
`Trademark Office or the phrase, registered
`
`trademark. Those all would serve the same
`
`purpose.
`
`Thank you.
`
`In teaching trademark law, did
`
`you ever review cases dealing with the
`
`issue of genericness of a trademark?
`
`Well, once again, genericness is a very
`
`common topic with the general validity of
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`K. GERMRIN
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`marks. And genericness came up in every
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`iteration of a trademark or trademark
`
`related course that I've ever taught.
`
`Beyond that I've, of course, been aware of
`
`cases on genericness because of my
`
`practice, and because of my work as an
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`expert witness, and of my work as a
`
`lecturer.
`
`Okay. Thank you.
`
`In teaching trademark
`
`law, did you ever review cases on acquired
`
`distinctiveness?
`
`Pretty much the same answer as the last
`
`one. Acquired distinctiveness, also known
`
`as secondary meaning, is a common topic in
`
`all trade dress and trademark related
`
`cases. Unless a mark is inherently
`
`distinctive it has to have acquired
`
`distinctiveness, also known as secondary
`
`meaning, before it can be recognized to be
`
`a mark.
`
`Thank you. Have you ever studied case law
`
`on the evidence necessary to prove acquired
`
`distinctiveness?
`
`Yes.
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`K. GERMAIN
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`Can you tell me a little bit about what is
`
`needed for acquired distinctiveness?
`
`Yes.
`
`The concept is that a term,
`
`typically
`
`a term which in it's inception is
`
`descriptive of the relevant goods or
`
`services, over time, and through
`
`advertising promotions, declarations, use
`
`of trademark, notators like TM and R -- not
`
`R in a circle but TM. That the term can
`
`take on a second in time, sometimes called
`
`secondary meaning, as a trade indicator and
`
`not merely as a descriptive term.
`
`So
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`length of time in use, mode of use
`
`particularly focus on the term and claims
`
`of trademark status, amount of advertising,
`
`particularly focused advertising on this
`
`term.
`
`Sometimes look for claims.
`
`Look for
`
`this color.
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`Look for this mark. That's a
`
`symbol of our proprietorship. All of those
`
`things help to establish secondary meaning.
`
`Okay.
`
`In teaching trademark law, did you
`
`ever have an occasion to review the
`
`difference between mere advertising and
`
`trademark usage?
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`K. GERMAIN
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`Yes.
`
`Can you please tell me what mere
`
`advertising and trademark usage, how they
`
`differ?
`
`Well advertising, whether it's called mere
`
`or not, is designed to draw attention to a
`
`product or service and to excite a desire
`
`to buy it.
`
`A lot of advertising is focused
`
`on characteristics or at least claimed
`
`characteristics of the product or service.
`
`Buy my product because it runs well, lasts
`
`longer, stands up under pressure better,
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`descriptive things, is less expensive.
`
`Trademark usage is different in that its
`
`purpose is to identify the purveyor and to
`
`distinguish that purveyor from other
`
`purveyors of similar goods or services.
`
`Okay.
`
`Thank you.
`
`In teaching trademark
`
`law do you continue to study and review
`
`case law dealing with proper trademark
`
`usage?
`
`Yes.
`
`Have you ever lectured to employees of the
`
`United States Patents and Trademark Office
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`K. GERMRIN
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`on trademark law or trademark practice?
`
`Yes, both.
`
`When?
`
`I think my first lecture to the USPTO
`
`trademark examining operation -- that's the
`
`examiners -- was back in the mid 80s. And
`
`I think that was on the substantive topic
`
`of the certain sections of the Lanham Act.
`
`At that time my recollection tells me that
`
`there were some members,
`
`they were then
`
`called members of the Trademark Trial and
`
`Appeal Board, in attendance.
`
`In the later
`
`years I have lectured there to the same
`
`kind of audience on numerous occasions.
`
`I'm guessing half a dozen, and all of those
`
`occasions I lectured on recent
`
`developments in cases.
`
`Perhaps some
`
`statutory developments on a wide variety of
`
`topics.
`
`So you -- do you follow the legislative
`
`developments and case law developments in
`
`trademark law and practice and unfair
`
`competition as part of your profession?
`
`Yes.
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`K. GERMAIN
`
`Have you lectured to bar groups or
`
`associations on trademark case law
`
`development in practice?
`
`Yes. Almost 200 times in total.
`
`I guess
`
`that includes ones before the PTO.
`
`When you address those groups, do you ever
`
`speak about genericness versus
`
`descriptiveness versus acquired
`
`distinctiveness?
`
`Yes.
`
`When you address those groups, do you ever
`
`talk about case law developments on proper
`
`trademark usage?
`
`Probably.
`
`I don't recall any times when
`
`that topic was discussed.
`
`I might mention
`
`that in the early 1980s I also was an
`
`author for years of what is colloquially
`
`known as the Annual Review of American
`
`Trademark Law.
`
`What is that?
`
`Well,
`
`the technical name is something like
`
`the blank -- fill in a number —- Year of
`
`Administration Lanham Trademark Act of
`
`1946.
`
`It was a project started by Walter
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`K. GERMRIN
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`17
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`Derenburg who,
`
`in fact, was my law school
`
`professor for two courses called Unfair
`
`Trade Practices I and II. And he was
`
`probably the single best known trademark
`
`practitioner/academic in the country.
`
`For
`
`the first 25 years of existence of the
`
`Lanham Act, which actually took effect in
`
`1947, Professor Derenburg wrote this
`
`lengthy article which was then published in
`
`The Trademark Reporter. Which was in those
`
`days published by The United States
`
`Trademark Association. And that
`
`organization later morphed into the
`
`International Trademark Association.
`
`Professor Derenburg stopped doing this
`
`after 25 years.
`
`For a few years it was
`
`done by some of his proteges, and then I
`
`was given the honor of the task. ‘ 1, did it
`
`myself for 2 years,
`
`the entire project, and
`
`then I did it with another co-author for
`
`2 years, and I served as the overall
`
`editor.
`
`The trade -- this project requires
`
`the author to read every single case
`
`decided by an American Court or American
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`K. GERMRIN
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`18
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`Administrative body such as the Trademark
`
`Trial and Appeal Board, analyze each case
`
`and summarize each case.
`
`I became steeped
`
`in these cases for the 4 years that I did
`
`this project.
`
`Thank you. Are you familiar with the All
`
`Ohio Annual Institute on Intellectual
`
`Property?
`
`Very.
`
`How are you familiar with a that?
`
`When I moved to Cincinnati approximately
`
`18 years ago I realized that the Ohio IP
`
`Bar could profit from a high quality
`
`seminar on intellectual property law.
`
`Such
`
`a seminar did not then exist.
`
`So I
`
`conceived of, and then with a partner,
`
`created a program which, and I gave it that
`
`name.
`
`The concept is that all Ohio
`
`practitioners will be able to get high
`
`quality IP education, continuing legal
`
`education, no farther than 2 hours from
`
`their home. And the way we achieve that,
`
`because Ohio is a pretty good size state,
`
`is to hold the seminar in two cities on
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`K. GERMRIN
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`consecutive days. Typically, almost all
`
`the time it was in Cleveland,
`
`in the north,
`
`twice or three times in Akron, and then
`
`every year here in Cincinnati.
`
`So I
`
`conceived the program.
`
`I created it.
`
`I
`
`have administered it all these years, and I
`
`lecture in it every year.
`
`How many years are we talking about?
`
`We just did the 16th last September.
`
`So
`
`next September will be the 17th, and it
`
`drew over 400 attendees.
`
`Wow.
`
`A few even snuck in across the state
`
`border.
`
`In preparation for this annual event in two
`
`cities, you say, do you review materials
`
`and current trademark law in practice?
`
`Yes. Every year I have given the update
`
`talk on trademark and trade dress, and
`
`related trade identifiers.
`
`I also attend
`
`the program, and hear many of the other
`
`speakers.
`
`I'd like to have marked as Exhibit 11 that
`
`document.
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`K. GERMAIN
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`20
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`(Applicant's Exhibit No. 11 was marked for the purpose of
`
`identification.)
`
` Q. And then I will hand you Exhibit 11, and
`
`ask you to identify it for the record,
`
`
`
`
`please?
`
`This is the lecture outline I developed for
`
`the 16th rendition of the All Ohio Annual
`
`Institute on Intellectual Property.
`
` Okay.
`
`Thank you. Have you ever
`
`participated in an INTA or International
`
`Trademark Association or its predecessor,
`
`the United States Trademark Association
`
`Annual Meeting, as a lecturer on US
`
`trademark law and/or trademark practice?
`
`Yes.
`
`
`A number of times.
`
`The first one was
`
`in 1979.
`
`Then during my years as a writer
`
`
`
`
`
`
`times in the 80s, and then since then a
`
`or co-writer of The Annual Review four
`
`number of other times as requested.
`
`
`
`Do you continue to study legislative case
`law developments including annual Trademark
`
`
`
`Trial and Appeal Board decisions,
`
`to remain
`
`knowledgeable in developments in all
`
`aspects of trademark law and practice?
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`K. GERMRIN
`
`Yes.
`
`Are you familiar with, for example,
`
`the
`
`case of,
`
`IN RE: American On-Line,
`
`the
`
`Trademark Trial and Appeal Board concluded
`
`that the mark Instant Massager was not
`
`generic for computer and telecommunications
`
`services?
`
`A.
`
`Yes.
`
`I'm familiar with the case.
`
`MR. BANNER:
`
`Please mark Exhibit Number 12.
`
`(Applicant's Exhibit No. 12 was marked for the purpose of
`
`identification.)
`
`Q.
`
`I'll hand you what has been marked as
`
`Applicant's Exhibit Number 12, and ask you
`
`to identify that document for me?
`
`This is a so-called certificate of Kenneth
`
`B. Germain.
`
`A document that I signed, and
`
`I apologize, I forgot to cross the T in my
`
`own name, on November 28th of this year.
`
`And what do you agree to do under this
`
`certificate in brief one?
`
`I agree to observe the terms of a
`
`stipulated protective agreement that the
`
`parties entered into and which was filed
`
`with the TTAB in February of 2005.
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`K. GERMRIN
`
`Thank you.
`
`Please mark this Applicant's Exhibit Number
`
`13.
`
`(Applicant's Exhibit No. 13 was marked for the purpose of
`
`identification.)
`
`Q.
`
`
`I'm handing you Applicant's Exhibit Number
`
`
`
`13, and ask you to identify it for the
`
`record?
`
`This is a report bearing the title,
`
`Rebuttal Exert Report of Kenneth B.
`
`
`Germain.
`
`It looks like a true copy of the
`
`report that I submitted in connection with
`
`this case.
`
`I signed it on December 14th,
`
`and I did cross the T this time.
`
`
`It has
`
`Exhibit Numbers 1, 2, and 3 appended.
`
`Directing your attention to Tab Number 1 or
`
`Exhibit Number 1, I should say; can you
`
`identify that for me?
`
`
`
`I also
`
`
`have a one—pager that I use on certain
`
` occasions. This one runs 20 pages.
`
`
`
`Is it accurate today?
`
`I strive to keep it up to date, and I think
`
`it is.
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`212-267-6868
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`This is what I call my long resume.
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`K. GERMRIN
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`23
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`Directing your attention to Exhibit Number
`
`2. Can you identify what that is?
`
`This is a list of cases over the past
`
`four years or so 2003, 4, 5, 6 -- which, of
`
`course, 2006 is almost over -- cases in
`
`which I have provided in-court testimony or
`
`deposition testimony.
`
`Okay.
`
`To your knowledge is it accurate
`
`_today?
`
`Yes.
`
`Thank you.
`
`Please mark this as Applicant's Exhibit
`
`Number 14.
`
`(Applicant's Exhibit No. 14 was marked for the purpose of
`
`identification.)
`
`Q.
`
`I'm going to hand you Applicant's Exhibit
`
`Number 14, and ask you to identify it for
`
`the record?
`
`This is the other report that I wrote and
`
`signed in connection with this case. This
`
`one bears the title of Expert Report of
`
`Kenneth B. Germain.
`
`I also signed this on
`
`December 14th of this year.
`
`It has the
`
`same three Exhibits numbered 1, 2, and 3 as
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`K. GERMAIN
`
`the Rebuttal Report.
`
`And those exhibits are accurate today?
`
`Yes.
`
`Thank you.
`
`Please mark this Exhibit 15. Applicant's
`
`Exhibit 15.
`
`(Applicant's Exhibit No. 15 was marked for the purpose of
`
`identification.)
`
`Q.
`
`I'm going to hand you what's been marked
`
`Applicant's Exhibit 15, and ask you to
`
`identify it, please?
`
`This is the March 6, 2006 Declaration of
`
`Ann Willoughbay.
`
`I think I added a letter.
`
`Are the letters in the wrong order?
`
`I
`
`think it's misspelled.
`
`It should be
`
`W-I-L-L-0-U-G-H-B-Y.
`
`As it is in the first line.
`
`Yes. As it is here, but not in the title.
`
`Okay. Did you study this Declaration in
`
`preparation of your Rebuttal Expert Report
`
`identified previously?
`
`Yes, I did.
`
`Did you study it in the preparation for
`
`today's deposition?
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`K. GERMAIN
`
`Yes.
`
`Drawing your attention to paragraph number
`
`four on page two. What, if any,
`
`conclusions did you draw from your review
`
`of the declarations?
`
`Well --
`
`Regarding the contents of paragraph four?
`
`-- in a more general sense,
`
`the conclusions
`
`I drew about Ms. Willougby's Declaration
`
`are detailed in my Rebuttal Expert Report,
`
`specifically, starting on page five. And
`
`the particular coments that relate to her
`
`paragraph four appear in my paragraph
`
`number eight.
`
`What are those?
`
`Well one thing is that Ms. Willoughby was a
`
`marketing person.
`
`Said that, quote,
`
`consumers of food products can regard a
`
`term or phrase as puffery, and still
`
`associate and identify that term or phrase
`
`as a branding statement, close quotes.
`
`I
`
`noted that that is possible, but for a term
`
`such as American's Favorite Pasta, which is
`
`the term at issue in this case, which is so
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`K. GERMRIN
`
`26
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`highly descriptive and slash generic, and
`
`so self-laudatory as that phrase.
`
`It is
`
`very, very hard to convert that merely
`
`descriptive slash generic term into a
`
`trademark via acquired distinctiveness.
`
`Ms. Willoughby doesn't seem to appreciate
`
`that.
`
`Do you have any special knowledge or do you
`
`have any understanding of the BMW,
`
`America's Strongest -- BMW, The Ultimate
`
`Driving Machine, mark that she refers to in
`
`paragraph four, regarding the focus that
`
`that particular advertising might have had?
`
`Yes. Ms. Willoughby uses BMW, The Ultimate
`
`Driving Machine as one of a few examples of
`
`slogans which have served as trademarks.
`And she postulates by analogy that
`
`America's Favorite Pasta would be in that
`
`kind of category. My belief is that she is
`
`completely wrong for two reasons.
`
`Why?
`
`Well,
`
`in its inception BMW, The Ultimate
`
`Driving Machine is not merely descriptive,
`
`and certainly not as vanilla, mundane,
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`212-267-6868
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`516-608-2400
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`VERITEXT/NEW YORK REPORTING COM@ANY
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`K. GERMAIN
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`routine, ordinary as America's Favorite
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`Pasta.
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`So, therefore, it would not have
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`taken as much effort or as much time or as
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`much combination effort and time to get
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`secondary meaning.
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`Secondly,
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`the BMW
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`slogan was the focal point of a lot of
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`advertising for a long time.
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`It's actually
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`been in use for 30 years.
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`It's been, well,
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`a focal point, and it indeed has been
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`federally registered. And I think was
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`probably federally registered some years
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`ago.
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`So American's Favorite Pasta, at
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`least as claimed by the opposer in this
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`case, is not registered and the opposer has
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`only started the registration process very
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`recently.
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`What advantages are there to registering a
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`trademark to the owner?
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`Registration gives constructive notice
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`nationally,
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`including to Alaska and Hawaii
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`and US territories, of the claim of
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`ownership of the registrant.
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`It
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`creates presumptions of validity
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`ownership and exclusive right to
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`516-608-2400
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`

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`K. GERMAIN
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`mark in comerce in favor of the
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`registrant.
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`It is the gateway to a higher
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`status called incontestability which is
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`available no sooner than the fifth
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`anniversary of the registration. And all
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`marks that have attained incontestable
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`status then get a higher level of
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`presumptive validity,
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`in fact, it's called
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`conclusive.
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`Is it real expensive and real difficult for
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`a business to register a trademark in the
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`United States?
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`I should break that down.
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`Is it real expensive for a business to
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`register a trademark in the United States?
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`I think the answer, basically, is no. At
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`least if the company is a company of any
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`size and substance.
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`If it's just a mom and
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`pop store selling sandwiches maybe it would
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`be considered expensive at that level.
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`Do you know approximately how much it would
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`cost a person to come to your firm to
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`register a word trademark that is
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`inherently distinctive?
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`Well the filing fee that the USPTO charges
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`

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`K. GERMRIN
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`is something like $325 these days.
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`29
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`I think
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`it's a little more if you file in paper
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`rather than electronically.
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`Law firms will
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`charge $500, maybe, it will vary from firm
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`for the processing that's involved at least
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`to get the application on file. And maybe
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`some follow-up charges based on office
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`practice.
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`So it's a $1000, $1,500 maybe.
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`So it's not the type of investment that
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`normally a business would have to go to a
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`bank to borrow money for?
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`Again, not a business of any size or
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`substance, this would not be a daunting
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`expense.
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`In your experience as a teacher and as a
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`practicing professional, is it normal to
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`recommend to businesses to seek federally
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`registration of their brands?
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`Very normal.
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`And the reason they would want to do that
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`is what?
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`To get the benefits that I just mentioned,
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`and also to send a signal to -- a few
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`different signals. One is a signal to
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`

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`K. GERMRIN
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`30
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`competitors when the competitors see the R
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`in a circle appear on the mark that's a no
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`trespassing sign.
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`It's no trespassing
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`protected by the US Government. And the
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`other thing is by having the mark
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`registered,
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`that mark will then show up in
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`every search run of the federal register
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`and serve as a warning to parties that have
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`not yet adopted a mark that perhaps they
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`should not adopt this one.
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`Okay. Thank you. Directing your attention
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`to paragraph five, of Anne Willoughby's
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`declaration. Do you draw any conclusions
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`from her statements in paragraph number
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`five?
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`Yes. As I pointed out in one of the
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`paragraphs of my report, this part of this
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`Ms. Wil1oughby's declaration is pretty
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`wishy washy.
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`For example, she quotes her
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`own earlier declaration -- what she called
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`a report -- in which she said she had
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`reached the conclusion that quote, all of
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`these trade dress features including the
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`phrase America's Favorite Pasta serves as a
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`516-608-2400
`
`

`
`K. GERMRIN
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`trademark function and help consumers
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`recognize the Mneller's brand, end quote.
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`And then she goes on to say, and this is
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`quoting the current declaration. This
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`reflects that a number of constituent
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`elements may serve either individually or
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`collectively to provide a brand identity,
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`end quote. Well I've noted that it's very
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`vague. She's, this, her declaration is
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`focusing on America'