CERTIFICATE OF MAILING 37 C.F.R. 1.8
`
`
`
`
` I hereby certify that this correspondence is being deposited with the U.S. Postal Service with sufficient postage as First Class Mail i
`an envelope addressed to: Commissioner for Trademarks, 2900 Crysl l Drive, Arlington, VA 22202-3513, on the date below:
`/#7424» 2; 2002
`f7? fib-
`T_..)___.____
`Date
`Stephen P. Meleen
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`EXXON MOBIL CORPORATION,
`
`§
`
`Petitioner,
`
`v.
`LATEXX PARTNERS BERHAD,
`Registrant‘
`
`g
`Cancellation No. 32,534
`i
`§
`2
`03-28-2002
`
`PETITIONER’S RESPONSE TO REGISTRANT’S
`
`MOTION FOR AN ORDER ENTERING JUDGMENT
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`u.s. Pawn: at TMotcITM Mall Rcpt Dt. #73
`
`AGAINST PETITIONER PURSUANT TO FED. R. CIV. P. RULE 11
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`Introduction
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`Registrant‘ owns a registration for the mark TECHTEXX, which it uses (or has used) in the
`I
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`following design format, as shown in the specimen supporting the subject registration:
`
` J‘:
`
`TECH
`
`J
`.J
`I
`C.)
`
`‘ Registrant has filed its motion in the name of Latexx Partners Berhad (“Latexx”), although the
`Patent and Trademark Office records appear to show different ownership of the registration. For
`purposes of this Response, ExxonMobi1 will accept Latexx’s representation to the Board that it is
`the current owner of the registration, and will refer to Registrant as “Latexx” throughout this
`brief. Latexx is a manufacturer of plastic gloves, and makes and sells its gloves under Various
`trademarks incorporating the suffix “EXX” and an interlocking X design, inoluding.QTEXX,
`CLEANTEXX, MEDTEXX, DENTEXX, and TECHTEXX, each of which is the subject of a
`pending opposition (QTEXX) or cancellation proceeding.
`Internet materials showing the use of
`these marks are attached hereto as Exhibit A.
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`25l49130.I
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`

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`
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`ExxonMobil filed a petition to cancel this registration, relying on its family of “XX” marks
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`that includes its famous EXXON and EXXONMOBIL marks (including the design forms of those
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`marks featuring ExxonMobil’s Interlocking X design), its Interlocking X design, and its many other
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`marks featuring the “EXX” formative. The famous EXXON logo has been featured in a myriad of
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`uses, including on signs at thousands of gasoline stations around the United States, on millions of
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`quarts of motor oil, in numerous other petroleum and chemical applications, and in extensive
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`advertising for ExxonMobil’s various products and services:
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` axon
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`ExxonMobil believes and has pled that consumers seeing Latexx’s plastic gloves sold under
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`its mark containing “EXX” (and especially in a package prominently featuring the interlocking X
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`design) are likely to believe that the gloves are made from materials supplied by ExxonMobil or are
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`otherwise affiliated with ExxonMobil in some way. Despite the similarities between Latexx’s mark
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`and ExxonMobil’s marks, Latexx argues that ExxonMobil’s claims for cancellation are so frivolous
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`that the Board should enter judgment in Latexx’s favor as a sanction under Fed. R. Civ. P. 11.
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`Latexx’s brief in support of its motion misstates the law, confuses the standard of pleading with the
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`standard of proof necessary to prevail at the end of the proceeding, and falls far short ofjustifying
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`such a drastic result.
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`25l49l30.l
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`

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`
`
`Argument
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`1.
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`Latexx’s Arguments Fall Far Short of the Standard for Rule 11 Sanctions
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`In its Rule 11 motion, Latexx does not specifically dispute any factual allegations made in
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`the Petition for Cancellation, nor does it claim any misconduct on the part of Petitioner’s attorneys?
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`Despite the Board’s suspension of this proceeding (by notice: mailed January 28, 2002), Registrant
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`filed its motion on March 5, 2002 without seeking to lift the suspension. Accordingly, Latexx has
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`not served an answer or other responsive pleading admitting or denying the factual allegations in
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`the Petition. Instead, in its Rule 11 motion, Latexx essentially makes legal arguments that it asserts
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`will prevent ExxonMobil from prevailing on its claims.
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`In doing so, Latexx ignores the heavy burden on a party that seeks sanctions under Rule 11
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`for the filing of what it believes is an unmeritorious case. “Many courts agree with the Second
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`Circuit, which has said that Rule 11 is violated only when it is patently clear that a claim has
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`absolutely no chance of success and that all doubts should be resolved in favor of the signer.”
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`Wright & Miller, Federal Practice and Procedure: Civil 2d § 1335 at 88 (citing Eastway Const.
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`Corp. v. City ofNew York, 762 F.2d 243, 254 (2d Cir. 1985) and Cross & Cross Properties, Ltd. v.
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`Everett Allied Co., 885 F.2d 497 (2d Cir. 1989)) (footnotes and internal quotes omitted); see also
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`2 Latexx does state, with no explanation or support, that the “only reasonable conclusion” it can
`reach “is that Petitioner filed the Petition for an improper purpose, i.e., to harass Registrant
`during settlement negotiations over an unrelated matter.” Latexx’s brief at 4. This “argument” is
`so devoid of support as to defy a response. ExxonMobil presumes that Latexx is referring to
`negotiations for possible settlement of ExxonMobil’s opposition to registration of Latexx’s mark
`QTEXX & Design (Opposition No. 123,273). Latexx’s application for the mark QTEXX &
`Design, and its Internet materials promoting that mark, feature the same interlocking X design as
`used in Latexx’s other —EXX marks, including TECHTEXX. All of these marks have been
`considered together in the parties’ settlement discussions. As the pages from Latexx’s website in
`Exhibit A show, Latexx’s use of the QTEXX mark can hardly be called “unrelated” to its use of
`its other ~EXX marks.
`
`25l49l30.l
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`

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`
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`Hoflman-LaR0che Inc. v. Invamed, Inc., 213 F.3d 1359, l365 (Fed. Cir. 2000) (affirming denial of
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`Rule 11 sanctions sought by defendant based on plaintiffs allegedly baseless patent infringement
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`claim).
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`Latexx was apparently unable to find a single case in which a Petition for Cancellation was
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`the subject of a motion for Rule 11 sanctions, much less a case granting dismissal as a Rule 11
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`sanction at such an early stage in the proceeding.
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`Instead, Latexx’s brief cites a string of cases
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`establishing the general proposition that Rule 11 applies in TTAB proceedings (which ExxonMobil
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`does not dispute), including some cases where a party’s egregious conduct during discovery or
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`motion practice warranted some degree of sanctions. As explained more fully below, the claims in
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`ExxonMobil’s Petition are sufficiently pled and well grounded in both fact and law, and Latexx’s
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`overreaching motion is wholly without merit.
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`II.
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`ExxonMobil’s Likelihood of Confusion Claim Is Meritorious
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`Under the well-understood “notice pleading” standard of the Federal Rules of Civil
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`Procedure, a party asserting a claim must make “a short and plain statement of the claim showing
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`that the pleader is entitled to relief.” Fed. R. Civ. P. 8(._a)(2). ExxonMobil is not required to set
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`forth all evidence on which it will rely to prove its claim. However, it is clear from the facts pled
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`that ExxonMobil has a well-grounded likelihood of confusion claim, and certainly one that exceeds
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`the Rule 11 threshold.
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`In determining likelihood of confusion, the Board considers the well-known Dupont factors,
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`recited in In re E.I. DuPont DeNem0urs & C0., 476 F.2d 1357, 1361-62, 177 U.S.P.Q.2d 563, 567
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`(C.C.P.A. 1973). “[N]ot all of the DuPont factors are relevant or of similar weight in every case,”
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`Oprjyland USA Inc. v. The Great American Music Show Inc., 970 F.2d 847, 850 (Fed. Cir. 1992),
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`25l49l30.l
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`

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`and ExxonMobil does not need to prevail on each factor to show likelihood of confusion. See
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`Giant Food, Inc. v. Nation 's Foodservice, Inc., 710 F.2d 1565, 1571, 218 U.S.P.Q. 390, 396 (Fed.
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`Cir. 1983) (noting also that different factors may play dominant roles from case to case).
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`Additionally, the Board and the Federal Circuit “resolve[] doubts about the likelihood of confusion
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`against the newcomer because the newcomer has the opportunity and obligation to avoid confusion
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`with existing marks.” Hewlett—Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265 (Fed. Cir.
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`2002). Analyzing the most relevant factors in this case makes clear the merits of ExxonMobil’s
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`position. Simply looking at the factors of the strength of ExxonMobil’s marks, the relatedness of
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`the goods, and the similarity of the marks, it is clear that ExxonMobil has a well-grounded claim.
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`A.
`
`ExxonMobil’s Family of “XX” Marks is Strong and Distinctive
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`Latexx does not and cannot dispute that the marks EXXON and EXXONMOBIL, with their
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`distinctive Interlocking X’s, are very strong and well-known marks. ExxonMobil’s use of the
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`distinctive XX formative in its family of “XX” marks dates back to its 1972 name change from
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`Standard Oil Company (New Jersey) to Exxon Corporation. In the process that led to the selection
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`of the mark EXXON, the company determined that the distinctive XX formative appears in no
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`language other than Maltese (except in some family names). See Exhibit B hereto at 14.
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`As stated in the Petition for Cancellation, ExxonMobil uses numerous other marks that
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`incorporate this distinctive XX feature. During its testimony period in this case, ExxonMobil will
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`establish that its family of “XX” marks is “a group of marks having a recognizable common
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`characteristic, wherin the marks are composed and used in such a way that the public associates not
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`only the individual marks, but the common characteristic of the family [i.e., the XX formative],
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`with the trademark owner.” J & J Snack Foods Corp. v. McDonald ’s Corp, 932 F.2d 1460 (Fed.
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`25149130.]
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`

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`
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`Cir. 1991). When ExxonMobil uses its marks such as EXXELOR for polymers, EXXSOL for
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`solvents, and FIREXX for grease, particularly in connection with the EXXON or EXXONMOBIL
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`house marks, consumers can easily associate the distinctive XX formative with ExxonMobil.
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`1.
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`Latexx’s “Family of Marks” Argument is Unavailing
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`Latexx’s claim that ExxonMobil “has no basis in fact for asserting that its ‘EXX’ marks and
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`its Interlocking ‘X’ marks constitute a ‘family’ of marks because they do not share a common
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`feature,” Latexx’s Brief at 6, makes no sense. To the extent Latexx contends that ExxonMobil has
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`not alleged a common feature shared by its family of marks, Latexx has simply ignored
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`ExxonMobi1’s Petition for Cancellation, which clearly identifies a family of “XX” marks sharing
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`the common feature of consecutive X’s. The Petition also states that “[m]any of Petitioner’s “XX”
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`marks are used and promoted together” and that “relevant consumers recognize and rely upon
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`Petitioner’s family of “XX” marks as an indicator of origin.” Petition for Cancellation at ‘H 5. To
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`the extent Latexx is disputing that consumers recognize the collection of marks as a family, Latexx
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`is raising a factual issue to be resolved during the testimony period, not on a Rule ll motion. This
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`pleading is more than sufficient to put Latexx on notice of ExxonMobil’s family of marks, as
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`evidenced by Latexx’s vigorous, if misguided, defense to that claim.
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`2.
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`ExxonMobil’s Rights Are Not Limited Solely to Its Registrations
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`Latexx also argues that in determining whether ExxonMobil can establish a family of
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`marks, ExxonMobil is limited to the marks and design formats shown in the registrations listed in
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`its Petition. Latexx’s Motion at 6-7.
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`It does so despite acknowledging that ExxonMobil has pled
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`that its “EXXONMOBIL mark is often used in a form that includes the Interlocking X Mark,”
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`arguing that only the form of a mark shown in its registration may be considered. Id. at 7.
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`25l49l30.l
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`

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`
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`This is a clear misstatement of the law.
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`It
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`is well established that an Opposer or
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`cancellation Petitioner is entitled to rely upon common-law rights, as well as stylized fonnats or
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`designs that accompany registered word marks. Burger Chef Sys., Inc. v. Burger Man, Inc., 492
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`F.2d 1398, 1399 (C.C.P.A. 1974) (“Appellant is entitled, in an opposition, to rely on its uses as well
`
`as its registrations.”); see also Fossil, Inc. v. The Fossil Group, 49 U.S.P.Q.2d 1451, 1454 (TTAB
`
`1994) (“[I]t is quite true that an opposer is not limited in an opposition to relying solely on those
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`marks for which it has registrations. An opposer can rely upon other forms of its marks or indeed
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`other marks for which it lacks registrations, provided opposer is the prior user.” The Board noted
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`that the common law rights must be pled, which ExxonMobil has done in this proceeding.); 3 J.
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`Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 20:18, at 20-44 (4th ed.
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`2001) (noting that “an opposer is entitled to rely not only upon its mark and usage as shown in its
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`registration, but also upon any unregistered usage that it can prove”).
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`B.
`
`Latexx’s Goods Are Related to ExxonMobil’s Goods and Services
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`Latexx concedes that ExxonMobil uses “some of its marks in connection with materials that
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`are used to make plastic gloves” and that “Registrant’s mark is used in connection with gloves of
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`plastic construction material for industrial use.” Latexx’s Brief at 10. This concession adequately
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`establishes the relatedness of the parties’ good for Rule 11 purposes and supports ExxonMobil’s
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`allegation that consumers seeing Latexx’s plastic gloves sold under a mark containing “EXX” (and
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`especially in a package prominently featuring the interlocking X design) are likely to believe that
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`the gloves are made from materials supplied by ExxonMobil or are otherwise affiliated with
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`ExxonMobi1 in some way.
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`25149130.]
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`

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`
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`Rather than dispute this relationship between the goods, Latexx argues that the relevant
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`consumers are professional buyers, and that these sophisticated consumers will not be confused.
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`Latexx’s Brief at l0—l l. Latexx is certainly entitled to make (and attempt to prove) its arguments
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`regarding differences in the goods and sophistication of buyers when the case is submitted for
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`decision? However, it is specious for Latexx to claim that the existence of such arguments shows
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`that ExxonMobil’s assertions “have no basis in law or fact.”
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`C.
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`The Similarity of the Marks Favors ExxonMobil, as Latexx has Incorporated
`ExxonMobil’s Distinctive XX feature and Simulated Its Interlocking X Design
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`The similarity of marks factor also supports a finding of likelihood of confusion. Latexx’s
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`mark incorporates the distinctive XX feature of ExxonMobil’s family of marks and the “EXX”
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`formative that is common to many of ExxonMobil’s marks, and is used in a format that simulates
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`ExxonMobil’s distinctive Interlocking X Design.
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`Latexx argues that its TECHTEXX mark is not similar enough to ExxonMobil’s marks to
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`cause a likelihood of confusion, again pressing arguments that are better suited for its trial brief.
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`Latexx acknowledges that “marks that were similar in part and sharing either a similar prefix or a
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`similar suffix have been found confusingly similar,” but asserts that “there is less chance of
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`likelihood of confusion when marks that are similar in part share a similar prefix and a similar
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`suffix.” Petitioner’s brief at 9. Latexx then claims that ExxonMobil’s marks that do use ‘EXX’ as
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`a suffix are so different from Latexx’s mark TECHTEXX that “it is not possible or even probable
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`that a consumer would be confused .
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`.
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`.
`
`.” Id. This paragraph of Latexx’s brief alone suffices to
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`3 Latexx’s disposable gloves are Very inexpensive, selling for under $6.00 for a box of 100 (see
`Exhibit A hereto), which undermines Latexx’s arguments on the DuPont factor relating to
`sophistication of buyers and conditions of purchase.
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`25149130.]
`
`

`
`
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`demonstrate the fallacy of Latexx’s argument that ExxonMobil’s assertion of likely confusion is so
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`baseless as to warrant Rule 11 sanctions.
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`Latexx apparently realizes that its use of the XX formative in an interlocking design
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`virtually identical to ExxonMobil’s Interlocking X Design seriously undermines its case. Rather
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`than argue that such use will not cause confusion, Latexx erroneously claims that the Board may
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`not consider its actual use of the marks in determining likelihood of confusion. Latexx cites Wells
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`Fargo & Co. v. Stagecoach Properties, Inc., 685 F.2d 302, 306 (9th Cir. 1982). That case involved
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`a registration in design form. The Ninth Circuit remarked that “the Board considers only the use
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`shown in the application,” id., but there was no indication that App1icant’s actual use varied from
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`its registration. Latexx also cites Penguin Books Ltd. v. Eberhard, 48 USPQ2d 1280 (TTAB 1998),
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`in which the Board refused to consider the allegedly narrower channel of trade that Applicant
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`claimed for its goods, when the registration was not so narrowed.
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`Latexx, however, ignores a clear line of authority stating that for a registration in which the
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`mark appears in typed format, it is appropriate for the Board to consider the mark as actually used.
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`This is because an application that includes a typed drawing “is not limited to the mark depicted in
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`any special fonn or lettering.” 37 CFR. § 252(1). As Professor McCarthy states, “As to format,
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`if applicant’s mark is shown in the application in typed letters, it is appropriate to compare actual
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`specimens of the applicant’s use with opposer’s format usage.” McCarthy, §20:15 at 20-31.
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`In Phillips Petroleum Co. v. C..]. Webb, Inc., 442 F.2d 1376, 1378 (C.C.P.A. 1971), the
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`court explained that because the application was in typed format, it was “not limited to the mark
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`depicted in any special form,” and found that “[i]n trying to visualize what other forms the mark
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`might appear in, we are aided by the specimens submitted with Webb’s application as illustrating
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`25149130.]
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`

`
`
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`‘the mark as actually used.”’ Accord, In re Richardson Ink Co., 171 U.S.P.Q. 818, 819 (TTAB
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`1971).
`
`In another case involving a typed drawing, the Board concluded that “to see how the mark
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`may be used in other forms and ‘as actually used’, it is permissible for purposes herein to look at
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`specimens filed with the application and at other of applicant’s literature forming a part of the
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`record herein.” Industrial Valley Bank & Trust Co. v. Bankers Trust ofSouth Carolina, 201 USPQ
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`888, 894 (TTAB 1979). Other cases making clear the Board will consider specimens and other
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`materials showing an Applicant’s or Registrant’s actual use of the mark include Finance Co. of
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`America v. Bank/lmerica Corp., 205 U.S.P.Q. 1016, 1027 (TTAB 1980); Pfizer Inc. v. Cody John
`
`Cosmetics, Inc., 211 USPQ 64, 67 (TTAB 1981); and INB’ National Bank v. Metro/zost Inc., 22
`
`U.S.P.Q.2d 1585, 1588 (TTAB 1992). There is simply no question that Latexx’s argument on this
`
`issue is incorrect.
`
`D.
`
`the Likelihood That
`ExxonMobil’s Diverse Product Offering Increases
`Consumers Will Associate Latexx’s Products with ExxonMobil
`
`The registrations cited in the Petition show the diversity of ExxonMobil’s petroleum and
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`chemical product offering. ExxonMobil’s customers and the general public know that ExxonMobil
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`makes marks a wide variety of goods, including plastics and related materials, and ExxonMobil
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`uses its family of “XX” marks in connection with those goods. Such consumers are likely to
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`believe that plastic gloves sold under the name TECHTEXX are somehow associated with
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`ExxonMobil. See In re Duofold Inc., 184 USPQ 638, 639 (TTAB 1974) (“In this day and age of
`
`diversification, mergers, and the like, purchasers have come to expect many different items within a
`
`particular field sold under the same or similar mark to have a common origin .
`
`.
`
`. .”); see also, R. J
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`Reynolds Tobacco Co. v. R. Seelig & Hille, 201 USPQ 856, 858 (TTAB 1978) (recognizing the
`
`“common practice .
`
`.
`
`. for large corporations, not only to expand their present line of products, but
`
`251491304
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`10
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`

`
`
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`also to diversify their business to include new fields of endeavor”); McCarthy, § 24.54 (explaining
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`that “the law must take into account
`
`that [a reasonably prudent] buyer knows that modern
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`corporations have control over widely diversified products”) This likelihood of confusion is
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`further exacerbated by Latexx’s use of an interlocking X design virtually identical to ExxonMobil’s
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`federally registered and famous Interlocking X Design.
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`E.
`
`The Facts in This Case are Sufficient for :1 Finding of Likelihood of Confusion
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`While the ultimate question of likelihood of confusion will be decided alter all the evidence
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`has been presented, there can be no question that ExxonMobi1 has pled a prima facie case that
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`Latexx’s TECHTEXX mark, particularly when used in its interlocking X format, is likely to cause
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`confiasion with ExxonMobil’s family of “XX” marks. The Board sustained opposition and refused
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`registration of a mark due to likelihood of confusion in a case similar to this one, McDonald ’s
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`Corp. v. McClain, 37 USPQ2d 1274 (TTAB 1995). There, the applicant sought to register “MC
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`CLAIM” for legal and legal consultation services. McDc>nald’s opposed based on its family of
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`McDONALD’S marks, used for food services and products. The Board held that the applicant’s
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`mark “plainly resembles opposer’s marks,” and noted that the applicant’s use of a rounded “scales
`
`of justice” design to form the initial letter “M” was somewhat analogous to the rounded “golden
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`arches” design of the initial “M” in McDONALD’S.
`
`Id. at 1276. The Board concluded that “in
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`View of the strength of opposer’s famous family of marks, and the fact that opposer uses its marks,
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`and licenses its marks, on a wide variety of goods and services, some of which are not at all related
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`to food products or food services, consumers are likely to believe that opposer is connected to
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`applicant’s operation in some way, if not directly, then by authorizing or sponsoring applicant’s
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`activities.”
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`1617.,‘ see also AMF Inc. v. American Leisure Products, Inc., 474 F.2d 1403, 1407
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`2514913o.1
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`ll
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`

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`
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`(C.C.P.A. 1973) (reversing dismissal of opposition where Opposer established a family of “fish”
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`marks with a corresponding design and the court concluded that Applicant’s different “fish” mark
`
`and design “would appear to many to be a member of [Opposer’s] family of marks”). Similarly,
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`here consumers who see Latexx’s mark which incorporates the XX formative in an interlocking
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`design nearly identical to ExxonMobi1’s are likely to believe that ExxonMobil is connected to
`
`Latexx’s plastic glovemaking operation in some Way.
`
`Conclusion
`
`Latexx’s motion to dismiss this proceeding as a Rule 11 sanction is entirely devoid of merit.
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`ExxonMobil’s Petition for Cancellation is well-grounded in fact and law, and properly pled, and
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`this proceeding will establish that Latexx’s use of its mark is likely to cause confusion with its
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`family of “XX” marks. Latexx’s misguided motion should be denied in its entirety.
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`Resp tfully submitted,
`
`
`Date: March 25, 2002
`
`
`
`Lo s T. Pirkey
`William G. Barber
`
`
`
`
`
`Stephen P. Meleen
`FULBRIGHT & JAWORSKI L.L.P.
`
`600 Congress Avenue, Suite 2400
`Austin, Texas 78701
`
`
`
`Tel: (512) 474-5201
`
`ATTORNEYS FOR PETITIONER
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`251491301
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`12
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`

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`
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`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and correct copy of the foregoing document was served on the
`following attorney of record for Applicant by depositing same in the United States mail, first class,
`postage prepaid, on March 25, 2002:
`
`Leonard D. DuBoff
`
`The DuBoff Law Group, LLC
`6665 S.W. Hampton Street, Suite 200
`Portland, OR 97223
`
`fifwb
`
`Stephen P. Meleen
`
`252491301
`
`l3