Trademark Trial and Appeal Board Electronic Filing System. httgj/estta.usQto.gov
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`91 1 92657
`
`Defendant
`Doctor's Associates Inc.
`
`RICHARD R MICHAUD
`MICHAUD KINNEY GROUP LLP
`306 INDUSTRIAL PARK ROAD, SUITE 206
`MIDDLETOWN, CT 06457-1532
`UNITED STATES
`
`mutch|er@mkgip.com, snyder@mkgip.com, enge|@mkgip.com,
`doo|an@mkgip.com, we|sh@mkgip.com, michaud@mkgip.com
`Defendant's Notice of Reliance
`
`Walter B Welsh
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`we|sh@mkgIp com
`/Walter Welshl
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`04/01/2012
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`DAI'S Eleventh Notice of Re|iance.pdf (3 pages )(75061 bytes)
`Att. A to DA|'s Eleventh Notice of Reliance — APP 275.pdf ( 19 pages )(772499
`bytes)
`Att. B to DA|'s Eleventh Notice of Reliance — APP 025.pdf ( 5 pages )(399783
`bytes)
`Att. C to DA|'s Eleventh Notice of Reliance — APP 028.pdf ( 39 pages )(8558540
`bytes)
`Att. D to DA|'s Eleventh Notice of Reliance — APP 023.pdf ( 26 pages )(2468895
`bytes )
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`Proceeding
`Party
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`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA464772
`ESTTA Tracking number:
`04/01/2012
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91192657
`Defendant
`Doctor's Associates Inc.
`RICHARD R MICHAUD
`MICHAUD KINNEY GROUP LLP
`306 INDUSTRIAL PARK ROAD, SUITE 206
`MIDDLETOWN, CT 06457-1532
`UNITED STATES
`mutchler@mkgip.com, snyder@mkgip.com, engel@mkgip.com,
`doolan@mkgip.com, welsh@mkgip.com, michaud@mkgip.com
`Defendant's Notice of Reliance
`Walter B. Welsh
`welsh@mkgip.com
`/Walter Welsh/
`04/01/2012
`DAI'S Eleventh Notice of Reliance.pdf ( 3 pages )(75061 bytes )
`Att. A to DAI's Eleventh Notice of Reliance - APP 275.pdf ( 19 pages )(772499
`bytes )
`Att. B to DAI's Eleventh Notice of Reliance - APP 025.pdf ( 5 pages )(399783
`bytes )
`Att. C to DAI's Eleventh Notice of Reliance - APP 028.pdf ( 39 pages )(8558540
`bytes )
`Att. D to DAI's Eleventh Notice of Reliance - APP 023.pdf ( 26 pages )(2468895
`bytes )
`
`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
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`Opposition No. 91192657
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`SHEETZ OF DELAWARE, INC.
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`Opposer,
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`v.
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`DOCTOR’S ASSOCIATES INC.
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`Applicant.
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`DAI’S ELEVENTH NOTICE OF RELIANCE
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`Applicant Doctor’s Associates Inc. (“DAI” or “Applicant”) hereby gives notice pursuant
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`to TBMP §§ 704-05, Trademark Rule 2.120, the Stipulation to Proceed Under ACR (Doc. No.
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`60), and the Board’s Order granting the same (Doc. No. 61) that DAI intends to rely on the
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`following evidence at trial:
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`Applicant
`Exhibit
`APP 023
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`APP 025
`APP 028
`APP 275
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`Title
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`Complaint in DAI v. Sheetz, Inc. et al. in 1:09cv88 (EDVA)
`Declaration of Mr. Robert Wilker
`Declaration of Tammy Dunkley of February 4, 2009
`Hearing Transcript
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`1
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`Respectfully Submitted,
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`Attorney for Doctor’s Associates Inc.
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`/s/ Walter Welsh
`Walter B. Welsh
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`Michaud-Kinney Group LLP
`101 Centerpoint Road
`Suite 206
`Middletown, CT 06457
`Tel: (860) 632-7200
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`Fax: (860) 632-8269
`welsh@mkgip.com
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`2
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`Date: March 30, 2012
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`CERTIFICATE OF SERVICE AND FILING
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`The undersigned hereby certifies that a copy of the DAI’S ELEVENTH NOTICE OF
`RELIANCE is being transmitted electronically to the Commissioner of Trademarks and is being
`served by overnight carrier on the attorney for Opposer at the following address:
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`Roberta Jacobs-Meadway
`Eckert Seamans Cherin & Mellott, LLC
`Two Liberty Place
`50 South 16th Street
`22d floor
`Philadelphia PA 19102
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`/s/ Walter Welsh
`Name:
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`3
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`March 30, 2012
`Date:
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`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF VIRGINIA
`ALEXANDRIA DIVISION
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`DOCTOR'S ASSOCIATES,
`Plaintiff,
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`INC.,
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`V.
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`)
`5 Docket No. 1:09-cv-88
`) Alexandria, Virginia
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`§ February 6, 2009
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`SHEETZ,
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`INC., et al.,
`Defendants.
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`10:00 a.m.
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`)
`5
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`TRANSCRIPT OF HEARING
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`BEFORE THE HONORABLE CLAUDE M. HILTON
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`UNITED STATES DISTRICT JUDGE
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`APPEARANCES:
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`For the Plaintiff:
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`Paul Grandinetti, Esq.
`Rebecca J. Stempien, Esq.
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`For the Defendants:
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`Roberta Jacobs—Meadway, Esq.
`Edward J. Longosz, II, Esq.
`Sean McConnell, Esq.
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`Court Reporter:
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`Tracy L. Westfall, RPR, CMRS, CCR
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`Proceedings reported by machine shorthand,
`by computer—aided transcription.
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`transcript produced
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`Tracy L. Westfall
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`OCR—USDC/EDVA
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`APP 27.5, Page 1 of 19
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`APP 275, Page 1 of 19
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`P R O C E E D I N G S
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`THE CLERK: Civil Action 09-88, Doctor's Associates,
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`Inc. v. Sheetz, Inc., et al.
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`MS. STEMPIEN: Good morning, Your Honor.
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`Rebecca J.
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`Stempien for the plaintiff. With me is Mr. Paul Grandinetti.
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`Your Honor, we had moved for admission of
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`Mr. Grandinetti pro hac on Wednesday to the clerk, but it hasn't
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`quite worked its way up.
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`I would orally move for his admission.
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`THE COURT: All right.
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`Your motion is granted.
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`MR. LONGOSZ: Good morning, Your Honor.
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`Edward Longosz
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`on behalf of the Sheetz defendants. With me is my partner,
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`Roberta Jacobs—Meadway, and also Sean McConnell.
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`We'd likewise —— we'd moved for Ms. Jacobs—Meadway's
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`admission earlier this week and the papers are before the Court.
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`She will be giving the argument today, if it pleases the Court.
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`THE COURT: Your motion is granted as well.
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`MS.
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`JACOBS-MEADWAY:
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`Thank you, Your Honor.
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`THE COURT: All right.
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`MR. GRANDINETTI: Your Honor, may it please the Court,
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`with the Court's permission, I'd like to pass up just a few
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`documents.
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`THE COURT: All right.
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`MR. GRANDINETTI:
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`The main documents are already in the
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`record.
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`I just thought separate copies might be a little easier
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`for everybody to follow.
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`Tracy L. Westfall OCR-USDC/EDVA
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`APP 275, Page 2 of 19
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`APP 275, Page 2 of 19
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`Oh, and if I may, after reading the response brief
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`yesterday,
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`I thought it might beneficial to pass copies of these
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`letters up.
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`They are not in the record and they're not
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`particularly important regarding their content, but they do
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`establish a date or two which might be useful as we discuss this
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`matter.
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`In particular, it seemed to me as though it might have
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`been a little unclear, but the headquarters of Subway, which is
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`Doctor's Associates,
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`to the best of their knowledge first
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`learned about the Sheetz advertisements on or around
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`January 9th.
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`The purpose of these two letters is to show that
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`on January 14th,
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`they sent out a letter regarding their
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`concerns. They received their response on January 22nd.
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`That‘s
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`really the only purpose of these letters.
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`The only other thing is that the letter from Eckert
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`Seamans on the last page,
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`third to last paragraph,
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`talks about
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`how the Sheetz advertising campaign is scheduled to terminate in
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`about five to six weeks from right now.
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`So it's really the only
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`two pieces of information important there.
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`Your Honor,
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`the first page I passed up is, as I said,
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`already in the record. This was Exhibit 3 to Subway's
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`complaint. This is a photocopy of Subway's composite mark.
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`After reading the response brief yesterday,
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`I thought it might
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`be beneficial to take a look at the composite mark and to go
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`through what Subway is claiming trademark rights to. Forgive
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`Tracy L. Westfall OCR-USDC/EDVA
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`APP 275, Page 3 of 19
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`APP 275, Page 3 of 19
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`the grammar.
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`Basically, Subway came up with a composite mark where
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`they use some symbols and at least one word element that are
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`somewhat unrelated. There's a hand,
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`there's a dollar symbol
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`with a numeral, and then there's the word footlong. This
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`combination of different elements forms a composite mark. Any
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`one particular element may or may not have a meaning, may have
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`some descriptive nature, but there's a bit of a fanciful play
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`here which has proved well for Subway, and one is is that they
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`associate the word foot with a completely opposite symbol of the
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`word hand.
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`So it's somewhat fanciful.
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`It's a bit of a play.
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`They've chosen the word footlong as opposed to
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`submarines, grinders,
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`the many other words that these kinds of
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`sandwiches can be called, and have even filed for a trademark
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`registration for the word footlongs for their sandwiches.
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`It's
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`this grouping of symbols and often the word footlong that forms
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`the composite mark.
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`Subway began using this composite around May of 2008
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`and it's had a lot of success, a lot of public recognition.
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`For
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`that reason, I've passed up to the Court another copy of
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`Enclosure 1 to Mr. Wilker's declaration, This is entitled Key
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`Measures Summary. This document was not prepared for the
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`purposes of this hearing. This is something that was internal
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`to Subway.
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`They were trying to figure out how was their
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`campaign going, what was it that the public was recognizing.
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`Tracy L. Westfall OCR-USDC/EDVA
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`APP 275, Page 4 of 19
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`APP 275, Page 4 of 19
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`If the Court would notice, at the top of the middle
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`column is the composite mark that we just described:
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`the hand,
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`the dollar sign symbol, a numeral, and the word footlongs.
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`Then
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`also next to that is another symbol, mostly text, and that
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`appears in many of the placards that Subway uses.
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`The benefit that this particular exhibit gives us is
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`that it does show that the use of the composite mark has been
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`quite successful.
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`The public does recognize it as coming from
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`or designating the source of Subway for particular services and
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`goods,
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`that at least 41 percent of the public says that it could
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`only be for Subway. That when the composite mark is used with
`the subway house brand, recognition goes up to 93 percent.
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`The lower chart here shows the statistics of the
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`recognition of these marks with just the hand cutout,
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`the words
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`$5 footlong,
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`the 12-inch arrow,
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`the orange background, and it
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`shows what the public in general identifies with Subway
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`regarding these composite marks and the various elements in the
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`mark. Once again,
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`this was not prepared for purposes of this
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`hearing. This was just something that was internal which we
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`were able to present to the Court in our main brief.
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`Now, Sheetz is a good—sized retail oil company.
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`They're a sophisticated company. This is not a mom-and—pop
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`operation.
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`They have, and they say this in their brief,
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`they
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`have for many years been developing their own branding.
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`In
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`particular, if you're familiar with it, I know we have one out
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`Tracy L. Westfall OCR-USDC/EDVA
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`APP 275, Page 5 of 19
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`APP 275, Page 5 of 19
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`in Chantilly,
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`they have these usually quite beautiful,
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`distinctive buildings with these awnings, or whatever it is that
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`you drive under when you're going to get your gas, and red is
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`their color.
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`If you've ever seen one of these stations, you
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`remember red.
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`The other thing is is at night they light up
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`their stations like there's no tomorrow.
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`It's like the sun.
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`They have for many years been developing their own marks and
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`their own brand identification.
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`The point to that is that they don't -— a company that
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`‘sophisticated and having those resources does not have to trade
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`off or knock off somebody else's marks.
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`If we can take a look at the other page I passed up, it
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`is a copy, this is a copy of the Sheetz mark. This was Exhibit
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`5 on Subway's complaint.
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`The purpose of handing the Court this
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`is to show that the composite mark that was adopted by Sheetz
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`has the same key elements,
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`the same design features,
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`the same.
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`word element; that is, a hand closely associated with the word
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`foot in the word footlong.
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`So it's the same play on words,
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`the
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`same fanciful connection.
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`It also has the dollar symbol and it
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`has a numeral.
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`So it's the same composite elements, but also, and
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`importantly, as far as trademark usage, it's in the same general
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`relationship, spacial and geometric relationship. You've got
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`the hand and the dollar sign,
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`the numeral, sort of overlapping
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`in close association with each other. They're off to —- as you
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`Tracy L. Westfall OCR—USDC/EDVA
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`APP 275, Page 6 of 19
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`APP 275, Page 6 of 19
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`.look at it -— the left.
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`Then across the banner you have the
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`word footlong.
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`What is interesting here is Sheetz, with its resources,
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`could have done this many other ways.
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`They could have been
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`distinctive.
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`They could have come up with their own branding.
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`They could have come up with their own association and spacial
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`arrangements.
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`They could have separated the hand from the
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`dollar symbol, for example.
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`They could have used some word
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`other than footlong.
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`They could have used 12-inch sub,
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`submarine sandwich. There's many other words they could have
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`used, but what they did is they have at least four elements that
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`form the same composite mark.
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`Now, after reading the response brief yesterday,
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`there
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`seems to be some confusion. Once again, according to the
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`letter, Sheetz is planning on terminating its advertising
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`campaign in about five weeks.
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`Subway is not here asking the
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`Court to enjoin the Sheetz advertising campaign.
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`We don't —— or at least our client does not care if
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`Sheetz is selling $4 subs.
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`It does not care if it's advertising
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`to the world that they're $4. What Sheetz —- what Subway is
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`asking Sheetz to do is to pull down the signs that have this
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`composite mark and to use their own mark, come up with something
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`on their own.
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`To pull down these signs from the windows in the
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`Sheetz gas stations is essentially no cost. Sheet; is a
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`privately—owned company so all of the managers of these stations
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`Tracy L. Westfall OCR-USDC/EDVA
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`APP 275, Page 7 of 19
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`APP 275, Page 7 of 19
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`are employees. There's no hardship to them. They're not
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`separate franchisers, for example.
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`One single e—mail from the
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`company can get these signs down in an afternoon.
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`Now, a lot was made of the billboards.
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`The billboards,
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`it would be nice to have them down in an afternoon, but if an
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`extra few days or a week is required, Subway certainly
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`understands that. Once again, Subway is not asking the Court to
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`order Sheetz to stop its advertising campaign.
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`They can sell as
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`many sandwiches as they want at $4 or $2. That's not the
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`important issue.
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`It's knocking off the composite mark.
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`Your Honor,
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`the last page I just handed up was the
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`second page of a declaration from Mr. Rogers. Mr. Rogers is a
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`statistician with Subway. This second page was prepared for
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`purposes of this hearing. What the second page shows is that
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`where you look at Subways that are in the same zip code area as
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`Sheetz stores that are using the composite mark,
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`there has been
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`a decline in customer count and also the average unit volume of
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`dollars passing through those particular Subway stores.
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`When you look at the statistics that occur where --
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`well, nationally, which would be the lower chart,
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`the same harm
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`and damage is not being done.
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`Now,
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`this is not an overly
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`sophisticated survey or anything like that-. These are
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`statistics that were readily available for purposes of this
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`hearing, but these statistics, which were submitted in
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`declaration format, do show that the use of this composite mark,
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`Tracy L. Westfall OCR-USDC/EDVA
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`APP 275, Page 8 of 19
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`APP 275, Page 8 of 19
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`which the public recognizes,
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`the use of this composite mark by
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`Sheetz is hurting,
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`is causing confusion,
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`is causing erosion of
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`market share and is damaging Subway.
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`Now,
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`there was one other thing in the brief that I was
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`reviewing yesterday that may be a little bit muddled.
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`Subway's
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`concern, again,
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`is that its marks are being knocked off by
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`Sheetz.
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`Sheetz has its own advertising people, certainly is
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`wealthy enough to come up with its own campaign, use its own
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`brand identity, but given the opportunity in this situation,
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`Subway sees Sheetz using the same composite mark,
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`the same
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`spacial arrangements.
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`The point of the commercial,
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`that was discussed in our
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`brief and also in the Sheetz brief, is that in 2003 Sheetz ran a
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`commercial advertisement which, for the most part, was a parody.
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`Once again, Subway understands that, you know, competitors are
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`allowed to do direct comparisons of marks to marks, competitors
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`are allowed to do parodies. There's no problem with that.
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`People don't necessarily like it, but that's the way it is.
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`What was done in the 2003 advertisement is that at the
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`very end of the commercial, what Sheetz did is they flashed the
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`word Jared up on the screen.
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`It appears on a license plate of a
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`car that the individual was driving.
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`Jared is another mark that
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`is very closely associated only with Subway.
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`It's not a common
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`name.
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`It's a mark of Subway.
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`The purpose of bringing that up in the briefs is to
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`Tracy L. Westfall OCR-USDC/EDVA
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`APP 275, Page 9 of 19
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`APP 275, Page 9 of 19
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`show that is somewhat predatory in behavior,
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`that Sheetz does
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`not seem to be out there developing its own marks or knocking
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`off other people's marks.
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`They seem to be focusing on Subway.
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`The only other item which I would like to address is
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`that a lot was made in the Sheetz brief about third~party usage
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`of various elements and, you know, whether or not there are
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`other trademarks out there of a hand or a dollar symbol or
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`something along those lines that use the word footlong.
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`The individual components on their own are different.
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`The fact that it's a composite mark, it's the grouping, it's the
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`spacial arrangement,
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`the geometry,
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`that is what Subway is
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`complaining about here today and that's why we're asking the
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`Court to enjoin'She%tz from using these composite marks, not
`their advertisement campaign.
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`Thank you, Your Honor.
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`THE COURT: All right.
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`MS.
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`JACOBS—MEADWAY: Good morning, Your Honor.
`
`There are a number of facts that I think need to be
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`emphasized here. One is that Subway's use of the alleged
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`composite mark is not only relatively recent, it's extremely
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`inconsistent.
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`If you look at the signage in the Metzger
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`declaration, Exhibit 2, what you see is a wide range of
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`arrangements of the alleged composite elements.
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`Sometimes the
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`hand is there, sometimes the hand isn't there. At one point
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`Subway,
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`in its papers,
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`talked about a distinctive orange color.
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`APP 275, Page 10 of 19
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`In fact, most of the signage that we've seen and that you see in
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`the exhibits,
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`in the Dunkley and the Metzger declarations,
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`is
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`yellow and green.
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`There isn't any one composite mark, generally speaking.
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`You have an advertising campaign by Subway for $5 footlongs.
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`Now, it's not foot.
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`It's not contrasting a hand and a foot the
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`way Mr. Grandinetti would have it.
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`It's footlong, and footlong
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`is a generic term for a sandwich of approximately 12 inches.
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`The fact that there may be other synonyms that people can use
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`for a footlong sandwich doesn't make footlong any less generic
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`and any less subject to exclusive appropriation.
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`What Subway has done is they've built an advertising
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`campaign around the concept of a $5 footlong. Their television
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`commercials don't show the composite mark,
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`the radio doesn't
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`show the alleged composite mark, much of the signage doesn't
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`show the alleged composite mark because the focus of the
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`campaign is a $5 footlong sandwich. That's the value
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`proposition.
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`Now, Sheetz,
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`since the middle of November, has had a
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`comparative price campaign for a $4 footlong sandwich. There is
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`a clear price advantage for the Sheetz product.
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`If you take a
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`look at the Sheetz signage, which is Dunkley Declaration
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`Exhibit 4 and Metzger Declaration Exhibit 2, which is the Subway
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`advertising, you see very clearly that in fact these are
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`different representations and there is in fact no knockoff.
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`APP 275, Page 11 of 19
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`What you have here is a comparison between a $5
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`footlong, which Subway offers, and the $4 footlong offer from
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`Sheetz.
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`It's very clear that in fact the spacial arrangement
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`isn't the same.
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`The concept is the same.
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`There's the use of
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`the footlong, which is the name of the product. There's a price
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`with a dollar sign, which is what you're promoting.
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`In each
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`case there's the logo that is identified with each of the
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`respective companies.
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`Now, one of the things that the case law in this
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`circuit clearly establishes is you don't look at any of these
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`elements in a vacuum. You look at these elements in the context
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`in which they are seen by the relevant consumer. Here you have,
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`on the one hand,
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`the relevant consumer going into a Sheetz store
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`and seeing the Sheetz product in the context of the Sheetz red
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`and orange color scheme, which Sheetz has used for many years as
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`you can see in the exhibits to the Dunkley declaration.
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`On the
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`other hand, you have Subway's units which generally have their
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`green and yellow color scheme and a wide range of different
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`signage promoting their $5 footlong product.
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`There's simply, Your Honor, no reasonable likelihood
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`that any person who can see is going to be confused into
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`thinking that there's some relationship, sponsorship, or
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`affiliation here.
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`If anything,
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`the Subway campaign sets a
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`particular price point and tells people come to Subway for your
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`$5 footlong. What Sheetz has is a campaign that says if you
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`APP 275, Page 12 of 19
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`APP 275, Page 12 of 19
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`13
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`want a $4 footlong, come over here to Sheetz. There's no
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`confusion and there's no intent to confuse.
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`Just like with the 2003 parody ad,
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`the point of a
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`parody is to say, hey, we're not them, come over and look at us
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`instead. Not to confuse but to differentiate.
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`For Subway to
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`say that a parody ad in 2003 and a comparative campaign in 2008,
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`2009 establishes some sort of pattern of predatory conduct is,
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`I
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`submit, overreaching.
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`What you have here is an instance where we point to the
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`third—party use, not to say that any one of those third parties
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`has prior rights or anything else, it's simply to say that
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`people don't look to certain elements as indicia of origin.
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`Footlong is generic. Lots of people for many years have used
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`fingers extended in different configurations to indicate
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`numbers.
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`You have here a situation where the Sheetz ad depicts
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`the footlong sandwich.
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`Subway’s ads don't.
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`They show a hand,
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`and the focus is the word footlong and a hand and the Sheetz --
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`and the Subway logo.
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`On the other hand, if you look at Sheetz‘,
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`you've got the focal point being a sandwich graphic over the
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`word Sheetz.
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`The elements aren't the same.
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`The elements are
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`clearly distinguishable.
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`You have,
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`in the Subway papers, a lot of sort of
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`extraneous information, but what this all boils down to is is
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`there any real likelihood that consumers are going to be
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`APP 275, Page 13 of 19
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`14
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`confused into thinking there's a relationship between Sheetz and
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`Subway.
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`I submit, Your Honor,
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`that there is no such likelihood
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`and that's really the beginning and the end of it.
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`Now,
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`the fact that Subway may have had a slight
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`temporary drop in sales in an area, standing by itself,
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`particularly because this is not a two-company market,
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`there are
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`lots of quick—service restaurants out there offering a wide
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`range of products, and to say that Subway experienced a slight
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`drop in one area without paying any attention to what's
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`happening with the other competitors doesn't establish anything.
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`There's no causal link. There's no notion here of, did
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`everybody take a sales hit that month? Did everybody go up
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`except Subway? Are other people with other offers cannibalizing
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`some of Subway's business? There's no way to tell. There's no
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`evidence. There's no causation.
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`I submit that the chart may be of some interest later
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`after some discovery, but at the present point, it says nothing.
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`There is,
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`in fact, Your Honor, no actual confusion. Despite the
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`fact that Subway claims that these parties are head—to—head in
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`the same marketplace and the Sheetz campaign has been out since
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`the middle of November,
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`there's no evidence of confusion because
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`there is no likelihood of confusion and there won't be any.
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`Does the Court have any questions?
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`THE COURT: No.
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`Do you have any response you want to
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`make?
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`APP 275, Page 14 of 19
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`APP 275, Page 14 of 19
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`MR. GRANDINETTI:
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`Just quickly, Your Honor.
`
`That the Enclosure 1 from the Wilker's, it does show
`
`that there's a lot of brand identification with this composite
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`mark.
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`The fact that there are other third parties out there
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`selling sandwiches, none of them are knocking off the composite
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`mark.
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`There's a very strong likelihood of confusion based on
`
`what this study shows, and that is that the public does identify
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`this composite mark with Subway.
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`The other problem here is
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`Subway often --
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`THE COURT: Well,
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`it's kind of hard not to.
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`It says
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`Subway on it, doesn't it?
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`MR. GRANDINETTI: That particular copy, yes.
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`THE COURT:
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`Isn't that the one that you have these
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`numbers to match? Or are you showing them.a whole variety of
`
`different’composites?~~
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`. v_..-‘MR; GRAMDINETTI: That is the clearest --
`
`THE COURT:
`
`It's hard to look at this one and not
`
`associate it with Subway, and it‘s pretty hard to look at this
`
`one and not associated it with Sheetz. You got the name up
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`there.
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`The name is very prominent on both of them.
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`MR. GRANDINETTI:
`
`The fact that the house brands are
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`prominent would argue that it would help the public to
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`distinguish, but the problem that Subway has with this is Subway
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`often has concessions or franchisees in other people's gas
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`APP 275, Page 15 of 19
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`APP 275, Page 15 of 19
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`16
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`stations, other people's stores.
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`It's not uncommon to go along the highway and to go
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`into a facility where there's gasoline being sold and have a
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`number of restaurants,
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`including a Subway restaurant,
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`there.
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`So
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`the fact that there are sandwiches being sold in a gas station
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`called Sheetz, but they're using Subway‘s composite mark,
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`the
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`fact that it's in a Sheetz and Sheetz has got its name up there
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`doesn't lesson the likelihood of confusion because Subway puts
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`its restaurants, its franchises,
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`in other people's gas stations
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`so there's still a very good risk that there's going to be
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`confusion.
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`They're trading on the goodwill of Subway.
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`They didn't
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`just come up with a campaign,
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`they didn't just come up with a
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`cheaper sandwich. What they did is they knocked off a composite
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`mark and they're using it on the same goods and they're using it
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`‘in the same type of outlet.
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`Where that occurs,
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`the chart shows,
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`the statistics show,
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`that in those zip codes it does hurt Subway
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`and there is a likelihood that the public is going to be
`
`confused.
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`That's why Subway is only asking that those signs be
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`taken down.
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`Sheetz can sell as many sandwiches as they want,
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`they can put big signs in their windows that says we're cheaper,
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`they can say four bucks,
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`they can say anything they want, but
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`use their own mark. What they've done is knock off Subway's
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`composite mark.
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`APP 275, Page 16 of 19
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`APP 275, Page 16 of 19
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`They're a sophisticated company.
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`They have plenty of
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`resources.
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`They could have come up with anything.
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`They could
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`have come up something distinctive, but they didn't. They used
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`the same four elements and the same spacial arrangement and the
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`same campaign,
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`same goods,
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`same type of outlet.
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`THE COURT: Well,
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`I understand your argument, but I
`
`guess I just don't see it.
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`In looking at these two ads, it
`
`seems to me that there's little likelihood of confusion when
`
`looking at the two of them.
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`The names are clearly there.
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`And
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`when you talk about the spacial arrangement,
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`the spacial
`
`arrangement of the two are different.
`
`The names are clearly on
`
`both of them.
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`I just don't see that there's any likelihood of
`
`confusion from looking at this trade address.
`
`You also have the problems with the fact that
`
`footlongs, that's certainly generic and somebody's hand's
`
`generic.
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`I understand your argument that you could have a trade
`
`address that uses these combinations of things that could cause
`
`a problem, be distinctive, it could cause confusion, but in
`
`looking at these two ads,
`
`I just don't see it.
`
`I'm going to have to deny your motion for a temporary
`
`restraining order.
`
`I'll consider it a motion for a preliminary
`
`injunction and deny a motion for preliminary injunction as well.
`
`I make no assessment as to how these facts will develop and what
`
`you'll eventually be able to show, but on what's presented to
`
`me,
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`I just don't find any likelihood of confusion and deny your
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`0CR—USDC/EDVA
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`APP 275, Page 17 of 19
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`APP 275, Page 17 of 19
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`18
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`motion on that basis.
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`Are these something you would like to have back or you
`
`want
`
`them made a part of the record?
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`MR. GRANDINETTI: We would ask they be made part of the
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`record, Your Honor.
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`THE COURT: All right. They'll be made part of the
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`record.
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`All right.
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`If we have no further business, we'll
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`adjourn until Monday morning at 9:30.
`
`9:**
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`(Proceedings concluded at 10:31 a.m.)
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`CERTIFICATION
`
`I certify,
`
`this 17th day of February 2009,
`
`that the
`
`foregoing is a correct transcript from the record of proceedings
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`in the above-entitled matter.
`
`Tracy Westfall, RPR,
`
`CMRS, CCR
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`APP 275, Page 19 of 19
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`Case 1:09-cv-00088-CMH-IDD Document 8 Filed 02/02/09 Page 1 of 5
`
`UNITED STATES DISTRICT COURT
`
`EASTERN DISTRICT OF VIRGINIA
`ALEXANDRIA DIVISION
`
`DOCTOR'S ASSOCIATES INC.,
`
`Plaintiff,
`
`v.
`
`SHEETZ,INC.,
`
`SHEETZ OF DELAWARE, INC., and
`
`DOES 1-10,
`
`Defendants.
`
`)
`)
`)
`
`)
`
`)
`
`)
`
`)
`
`)
`)
`
`Case Number
`
`l'.V\ J.'.ii 12 P
`
`-
`
`..
`"'-
`
`■
`
`DECLARATION OF MR. ROBERT WILKER
`
`1.
`
`I am Mr. Robert Wilker, the Worldwide Profit Building Manager for the Plaintiff,
`
`Doctor's Associates Inc., and I am the official authorized to make this declaration. I declare as
`
`follows.
`
`2.
`
`Doctor's Associates Inc. (hereafter "Subway"), a Florida Corporation, is the
`
`owner of U.S. Trademark Registration Number 1,174,608 for the famous trademark
`
`SUBWAY®. Subway also owns other registered and unregistered trademarks and service marks
`
`associated with the SUBWAY® restaurant system. Subway vigorously protects its registered
`
`and unregistered trademarks. Additionally, Subway has copyright protection in all of the images
`
`and materials used throughout the Subway system, including all advertising materials.
`
`3.
`
`Subway is the franchiser of Subway restaurants. Subway licenses many franchises
`
`throughout the Commonwealth of Virginia including this Judicial District. Currently, there are
`
`21,900 SUBWAY® restaurants in the United States and 30,524 SUBWAY® restaurants
`
`operating worldwide.
`
`APP 025
`
`Page 1 of 5
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`

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`Case 1:09-cv-00088-CMH-IDD Document 8 Filed 02/02/09 Page 2 of 5
`
`4.
`
`Subway franchisees are commonly found in convenience stores, gasoline stations,
`
`roadside rest facilities, and similar concessions throughout the Eastern District of Virginia and
`
`elsewhere.
`
`5.
`
`There are currently 351 Subway locations operating in the Eastern District of
`
`Virginia. At least 28 of these locations are convenient stores and/or gas stations and at least four
`
`are truck stops.
`
`6.
`
`Subway