This Opinion is not a
`Precedent of the TTAB
`
`
`
`Hearing: June 28, 2016
`Mailed: July 1, 2016
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____
`
`Trademark Trial and Appeal Board
`_____
`
`North Atlantic Operating Company, Inc.,
`North Atlantic Trading Company, Inc., and
`National Tobacco Company
`
`v.
`
`DRL Enterprises, Inc.
`
`_____
`
`Opposition No. 91158276 (parent)
`Opposition No. 91158552
`Opposition No. 91158568
`Opposition No. 91158696
`Opposition No. 91158816
`Opposition No. 91158978
`Opposition No. 91158980
`Opposition No. 91158981
`Opposition No. 91159360
`Cancellation No. 92042927
`Cancellation No. 92042928
`Cancellation No. 92043031
`
`_____
`
`Richard S. Mandel of Cowan, Liebowitz & Latman, P.C.
`for North Atlantic Operating Company, Inc., North Atlantic Trading Company,
`Inc., and National Tobacco Company.
`Anthony J. McShane of Neal, Gerber & Eisenberg LLP
`
`for DRL Enterprises, Inc.
`
`
`
`_____
`
`

`
`Opposition No. 91158276 et. al.
`
`Before Quinn, Bergsman and Lykos,
`Administrative Trademark Judges.
`
`
`Opinion by Bergsman, Administrative Trademark Judge:
`DRL Enterprises, Inc. (hereinafter Defendant) has registered the marks listed
`
`below for cigarette rolling papers, in Class 34:1
`
`1. Registration No. 1481006 for the mark 1.0 (stylized) shown below:2
`
`
`2. Registration No. 1331207 for the mark 1.5 (stylized) shown below:3
`
`
`
`
`1 DRL Enterprises, Inc. is the owner of the decimal designation registrations and applications
`at issue in these proceedings. Republic Tobacco distributes the products on behalf of DRL
`Enterprises, Inc. Gold Discovery Dep., pp. 18-19 (140 TTABVUE 65-66); Gold Testimony
`Decl. ¶1 (179 TTABVUE 4). We refer to DRL Enterprises and Republic Tobacco collectively
`as “Defendant.”
`2 Registered March 15, 1988; renewed. While maintaining that “1.0” was not merely
`descriptive, Defendant disclaimed the exclusive right to use “1.0.” December 22, 1986
`Response to an Office Action. We find this to be a disclaimer offered in the alternative and,
`therefore, it does not constitute a concession that “1.0” is not inherently distinctive. See In re
`RiseSmart Inc., 104 USPQ2d 1931, 1932 (TTAB 2012). See also TMEP § 1213.01(d) (2016).
`3 Registered April 16, 1985 under the provisions of Section 2(f) of the Trademark Act, 15
`U.S.C. § 1052(f); second renewal. In the application, Defendant claimed that “its mark is
`inherently distinctive and/or that even it its mark is not inherently distinctive, it is now
`distinctive by virtue of its acquisition of secondary meaning.” We find that Defendant claimed
`acquired distinctiveness in the alternative and, therefore, it does not constitute a concession
`that “1.5” is not inherently distinctive. See In re Thomas Nelson, Inc., 97 USPQ2d 1712, 1713
`(TTAB 2011). See also TMEP § 1202.02(c).
`
`- 2 -
`
`

`
`Opposition No. 91158276 et. al.
`
`3. Registration No. 1328866 for the mark 1.25 (stylized) shown below:4
`
`
`Defendant has applied to register the marks listed below for cigarette rolling
`
`papers:
`
`1. Serial No. 76369872 for the mark 1.25 (typed drawing form);5 and
`
`2. Serial No. 78157851 for the mark 1.5 (typed drawing form).6
`
`On August 7, 2001, Defendant applied to register the marks listed below for
`
`cigarettes, in Class 34, based upon Defendant’s allegation of a bona fide intention to
`
`use the marks in commerce under Section 1(b) of the Trademark Act:
`
`1. Serial No. 76296943 for the mark 1.25 (stylized) shown below;
`
`
`2. Serial No. 76296931 for the mark 1.25 (typed drawing form);
`
`4 Registered April 2, 1985 under the provisions of Section 2(f) of the Trademark Act, 15 U.S.C.
`§ 1052(f); second renewal. In the application, Defendant claimed that “its mark is inherently
`distinctive and/or that even it its mark is not inherently distinctive, it now distinctive by
`virtue of its acquisition of secondary meaning.” We find that Defendant claimed acquired
`distinctiveness in the alternative and that it does not constitute a concession that “1.25” is
`not inherently distinctive. In re Thomas Nelson, Inc., 97 USPQ2d at 1713.
`5 Filed February 12, 2002 based on use in commerce under the provisions of
`Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f).
`6 Filed August 26, 2002 based on use in in commerce under the provisions of
`Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f).
`
`- 3 -
`
`

`
`Opposition No. 91158276 et. al.
`
`
`3. Serial No. 76296926 for the mark 2.0 (typed drawing form);
`
`4. Serial No. 76158978 for the mark 1.5 (stylized) shown below;
`
`
`5. Serial No. 76296945 for the mark 1.5 (typed drawing form);
`
`6. Serial No. 76296942 for the mark 1.0 (typed drawing form);
`
`7. Serial No. 76296941 for the mark 1.0 (stylized form) shown below:
`
`
`North Atlantic Operating Company, Inc., North Atlantic Trading Company, Inc.,
`
`and National Tobacco Company (hereinafter “Plaintiffs”) petitioned to cancel the
`
`registered marks for cigarette rolling papers, and opposed the registration of the
`
`marks 1.25 and 1.5, in typed drawing form and stylized form, for cigarette rolling
`
`papers on the grounds that they are generic terms for cigarette rolling papers and, in
`
`the alternative, that they are merely descriptive of the size of the cigarette rolling
`
`papers.7
`
`
`7 Plaintiffs have elected not to pursue their pleaded claims based on fraud, deceptive
`misdescriptiveness or the improper use of the federal registration symbol. Plaintiffs’ Brief, p.
`5 (229 TTABVUE 14).
`
`- 4 -
`
`

`
`Opposition No. 91158276 et. al.
`
`Plaintiffs opposed the registration of the marks for cigarettes on the grounds that
`
`the respective marks 1.0, 1.25, 1.5, and 2.0, in typed drawing and stylized form, are
`
`generic terms for cigarettes, that they are merely descriptive of the size of the paper
`
`in which the cigarette is rolled, and that Defendant lacked a bona fide intent to use
`
`the marks to identify cigarettes at the time the applications were filed.8
`
`Defendant, in its Answer, denied the salient allegations in the complaints. In six
`
`separate affirmative defenses, Defendant alleged, in essence, that Plaintiff’s claims
`
`are barred by acquiescence on the ground that Plaintiffs previously acknowledged
`
`Defendant’s ownership of its numeric marks for smoking products.9
`
`I. Preliminary Issues
`
`A. Defendant’s objections to evidence.
`
`In the August 6, 2014 Order, the Board requested that the parties limit their
`
`evidentiary issues to objections that may be outcome-determinative.
`
`The parties are discouraged from filing objections that are
`not outcome-determinative or that do not have an effect on
`either their position or their adversary’s position. The
`Board will consider all the testimony and evidence keeping
`in mind the nature of the evidence (e.g., whether it is
`hearsay, whether it is relevant, etc.) and according the
`
`8 Plaintiffs have elected not to pursue their pleaded claims based on fraud, deceptive
`misdescriptiveness or the improper use of the federal registration symbol. Plaintiffs’ Brief, p.
`5 (229 TTABVUE 14).
`9 In the April 29, 2014 Order denying Defendant’s motion for summary judgment, the Board
`noted that the equitable defense of acquiescence is not available against claims that a term
`is generic or merely descriptive because it is in the public interest to have registered terms
`that are generic or merely descriptive stricken from the register and that this interest cannot
`be waived. 125 TTABVUE 13. In the August 6, 2014 Order, the Board noted the holding in
`the April 29, 2014 Order and that Defendant’s right to argue that the affirmative defense of
`acquiescence is applicable to all the claims asserted by Plaintiffs is preserved for appeal. 128
`TTABVUE 5.
`
`- 5 -
`
`

`
`Opposition No. 91158276 et. al.
`
`testimony and evidence whatever probative value the
`testimony and evidence merits.10
`Nevertheless, Defendant lodged numerous objections. None of the evidence sought
`
`to be excluded is outcome-determinative. Moreover, the Board is capable of weighing
`
`the relevance and strength or weakness of the objected-to testimony and evidence,
`
`including any inherent limitations, and this precludes the need to strike the
`
`testimony and evidence. Given these facts, coupled with the number of objections, we
`
`see no compelling reason to discuss the specific objections. As necessary and
`
`appropriate, we will point out any limitations applied to the evidence or otherwise
`
`note that the evidence cannot be relied upon in the manner sought. We have
`
`considered all of the testimony and evidence introduced into the record. In doing so,
`
`we have kept in mind the various objections raised by the parties and we have
`
`accorded whatever probative value the subject testimony and evidence merit.
`
`B. The testimony of Defendant’s witnesses Donald Levin and Seth Gold.
`
`As discussed more fully below, the record establishes, and Defendant does not
`
`contest, that there are primarily four sizes of cigarette rolling papers: single width,
`
`1¼, 1½, and double wide.11 Thus, we have concerns about the testimony of Donald
`
`Levin, Defendant’s Chairman, and Seth Gold, Defendant’s Vice President and
`
`General Counsel, regarding Defendant’s use of the 1.0, 1.25 and 1.5 designations and
`
`
`10 112 TTABVUE 8.
`11 Defendant admitted that “[Defendant’s] mark, ‘1.25’ relates to size.” Defendant’s response
`to Plaintiffs’ request for admission No. 4 (141 TTABVUE 32). See also the September 1979
`issue of the National Lampoon magazine where Defendant placed an advertisement touting
`that “JOB has your size” with an offer to sell double-width, 1.5, 1.25 and single width papers.
`142 TTABVUE 116.
`
`- 6 -
`
`

`
`Opposition No. 91158276 et. al.
`
`their relationship to the size of cigarette rolling papers. We are particularly struck by
`
`their evasiveness and failure to respond directly to straightforward questions asked
`
`by Plaintiffs’ counsel. For example, during his discovery deposition, Mr. Levin was
`
`unable to recall if his company was currently selling cigarette rolling papers
`
`designated as 1¼ and 1½ size,12 and during his cross-examination deposition, he was
`
`unable to identify most of the advertisements that his company had published.13
`
`Further, Mr. Levin refused to acknowledge that 1.5 was a number.
`
`A.
`
`Q. Now, when you picked that designation obviously
`you were aware that you were picking a number,
`right?
`A. No.
`Q. Really? You didn’t know that 1.5 was a number
`when you picked it?
`It was a fanciful term to me. We have to go back in
`time to this is the Vietnam War, this is the Haight
`Ashbury era of our lives. I don't know how old you
`are. I’m not sure if you were living during those days.
`I was.
`There were no cell phones, there was no cable
`television, there was no Internet, there was no
`digital world. There was talk at that time they were
`trying to get to the metric system in the United
`States. I believe we were still on the English system,
`is it? We used quarters and eighths. So at that time
`everything was a half. There was no points. So 1.5 to
`me wasn't a number. It was 1.5. I guess it was -- in
`terms of today it's a number. I guess then it would
`
`Q.
`A.
`
`
`12 Levin Discovery Dep, p. 34-35 (140 (TTABVUE 26-27).
`13 204 TTABVUE 22, 24, 44, 46-47, 77-78, 82, and 85.
`
`- 7 -
`
`

`
`Opposition No. 91158276 et. al.
`
`have been a number, but I didn't think of it as a
`number. It was a fanciful trademark.14
`Mr. Levin dodged answering simple “yes or no” questions such as whether
`
`Defendant uses JOB 1.0 in connection with single width paper. We note Defendant’s
`
`advertisement introducing its JOB 1.0 cigarette rolling paper stating the “New 1.0™
`
`Cigarette Paper in new Single-Width Size, the original size cigarette paper for the
`
`more experienced rollers.”15
`
`Q. Were you the person who made the decision to use
`the designation 1.0?
`A. Correct.
`Q. And did you actually come up with that designation?
`A.
`I believe so, yes.
`Q. And when you chose it were you intending to use it
`on a single width product?
`I intended to use it on a product.
`A.
` Q. A single width product?
`A. A product. It wasn’t -- again, for sake of clarity, a
`single width paper has various sizes. There’s not
`such a thing as a size of a single width paper. I don’t
`mean to be difficult with you, but the single width
`paper made by one manufacturer is different in size
`perhaps than the size of a different manufacturer.
`So within the range I wanted to make a single width
`paper, but it wasn't like this size paper. It was a
`single width paper, but not necessarily the same
`single width paper as another single width paper.
`Is that clear as mud?
`
`
`
`
`14 204 TTABVUE 11-12.
`15 143 TTABVUE 53.
`
`- 8 -
`
`

`
`Opposition No. 91158276 et. al.
`
`Q. Yes.
`A. Okay.
`Q. You did intend to use it on what was going to be the
`smallest of the papers in the line when you selected
`that designation, correct?
` At that point in time, yes.16
`A.
`Mr. Gold’s testimony was equally evasive. For example, Mr. Gold refused to
`
`acknowledge that “Top 1½ size” is an example of “1½” used in connection with the
`
`word “size.”17
`
`Q.
`
`
`
`Let’s jump ahead to page 170, two pages ahead, the
`Top products. That says “Top 1 1/2 size.” Have you
`ever seen that product before?
`
`
`
`
`
`
`18
`
`
`
` A. Yes, I have.
`Q. And that’s also a product distributed by [Defendant],
`correct?
`
`
`16 204 TTABVUE 78-80. See also Levin Discovery Dep. p. 35 and Exhibit 5 (140 TTABVUE
`27 and 40-41) (when asked to explain the meaning of “available in both 1 ¼ and 1 ½ widths”
`appearing on a package of papers sold by Defendant, Mr. Levin testified “1 ¼ or 1 ½ of
`what?”).
`17 As discussed infra, cigarette rolling papers are sold in different sizes to satisfy consumer
`preferences.
`18 201 TTABVUE 277.
`
`- 9 -
`
`

`
`Opposition No. 91158276 et. al.
`
`
`
`A. Correct.
`Q. And that would be an example of [Defendant] using
`the designation 1 1/2 in reference to the word “size,”
`correct?
`A. No.
`Q.
`That would not be an example of that?
`A.
`You say “with reference to the word size” and the
`answer is with the word “size,” but my point from
`the earlier testimony, which we have already gone
`over twice, is that this presentation is used over a
`variety of dimensions, a variety of surface areas so
`that it itself is fanciful. It’s just a convention in the
`industry, but, in fact, as we've seen, the variation 16
`percent in 1 1/2, 30 percent in 1 1/4, it doesn’t refer
`to a particular size, but the word “size” does appear.
`So when you say “with reference to size,” that’s not
`correct. With the word “size,” there’s a kind of
`presentation, I would say that’s what it is.
`The presentation on the product is 1 ½ size, correct?
`Yes, but it’s not with reference to size.
`It says “1 1/2 size” with reference to something other
`than size is your testimony, right?
`A. Correct.
`Q.
`“Size” is meant there -- what does “size” mean there?
`Why is the word “size” there at all?
`That's the point. We've gone through this. There’s
`such a variation that it doesn’t translate to size as
`we know all the other products in the world. It’s a
`tradition of presentation in the cigarette paper
`industry, but it doesn’t reference any particular size.
`*
`*
`*
`So your testimony is that the “1 1/2 size” on the Top
`product doesn’t communicate anything to the
`consumer about the size of the product?
`
`Q.
`A.
`Q.
`
`A.
`
`Q.
`
`- 10 -
`
`

`
`Opposition No. 91158276 et. al.
`
`A.
`
`It doesn’t convey a meaningful size. There is no such
`thing as a 1 1/2 size in the paper industry. Someone
`without picking up the booklet and using it won’t
`know what he or she is getting.
`Then why put it there at all?
`Q.
`That’s how things have been done.
`A.
`Q. And it’s your testimony that consumers would pay
`no attention to that; they wouldn’t understand it as
`meaning anything?
`A. Well, after X amount of time ordering it, they would
`look to it as something they’ve seen before.
`Q. You don’t think they'd understand that 1 1/2 size
`paper to be larger than another Top offering that’s 1
`1/4?
`I think they pick the paper they want and that’s the
`one they get. I don’t think they think that there's any
`relation. They don’t think in those terms.
`Q. You don’t think the average consumer seeing a Top
`1 1/4 and a Top 1 1/2 wouldn’t draw the conclusion
`that the Top 1 1/2 size is a larger version of that
`product?
`That’s like saying wouldn't the person who sees a
`Zig-Zag 1 1/2 and a Zig-Zag 1 1/4 think the 1 1/2 is
`bigger and it turns out they’re the same size.19
`On subsequent cross-examination, Mr. Gold testified that size does not mean size.
`
`A.
`
`A.
`
`Q. Have you seen Exhibit 17 before?
`
`
`
`
`19 201 TTABVUE 61-64. See also Gold Discovery Dep., pp. 30-31 (140 TTABVUE 70-71) (“It’s
`not 1-1/2 of anything.”).
`
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`
`

`
`Opposition No. 91158276 et. al.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`20
`
`
`
`
`
`
`
`Something like it.
`A.
`Q. And that promotional piece says “Holds all three
`popular sizes,” correct?
`Correct.
`A.
`Q. And those sizes that are being referenced there
`would be the 1.0, 1.25, and 1.5 products, right?
`A. Once again, we’ve never argued that within our line
`these papers come in different sizes. It’s very clear.
`Q. You’ve never argued that they don’t come in
`different sizes, right?
`A. We’ve never said that they don’t come in different
`sizes. We say yes, they come in different sizes, but
`none of these is a size that conveys particular
`information to a consumer other than one who’s used
`it before and liked it.21
`This testimony illustrates a pattern of conduct on the part of Messrs. Levin and
`
`Gold that is harassing, frivolous, and not reasonably based on the knowledge of the
`
`witnesses. In short, we find their testimony is not credible. Accordingly, any
`
`
`20 201 TTABVUE 452. The text in the lower-right side includes “Holds all 3 popular sizes.”
`21 201 TTABVUE 128. See also 201 TTABVUE 20 (“Well, within 1.5 there are different sizes.
`I mean, the information is the information, but they’re of different size, but they’re not
`different sizes.”).
`
`- 12 -
`
`

`
`Opposition No. 91158276 et. al.
`
`testimony provided by Messrs. Levin and Gold based on their knowledge and
`
`experience in the cigarette and cigarette rolling paper industries has little, if any,
`
`probative value.22
`
`II. The Record
`
`The record includes the pleadings and, by operation of Trademark Rule 2.122(b),
`
`37 C.F.R. § 2.122(b), Defendant’s registration and application files. Pursuant to the
`
`August 6, 2014 Order, direct testimony may be introduced though declarations or
`
`affidavits and documents produced by a party in response to a request for production
`
`of documents may be introduced into evidence through a notice of reliance by the
`
`propounding party.23
`
`A. Plaintiff’s Testimony and Evidence
`
`1. Testimony declaration of Keith Burdick, co-owner of NxGP, LLC, with
`
`attached exhibit;24
`
`
`22 This is not the first time the credibility of Defendant’s witnesses has been questioned by a
`court. In Top Tobacco, L.P. and Republic Tobacco L.P. v. North Atlantic Operating Company,
`Inc. and National Tobacco Company, Inc., 2007 U.S. Dist. LEXIS 28543 (N.D. Ill. April 17,
`2007), the court noted Defendant’s “apparent willingness to say whatever it believes suits it
`at the time,” that Mr. Levin “refused to concede the obvious,” that the court “could hardly
`believe that Levin gave … testimony with a completely straight face,” that Mr. Levin’s
`testimony was “absurd,” and that he was “not playing it straight.” Id. at 14-16.
`23 128 TTABVUE.
`24 137 TTABVUE.
`
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`
`

`
`Opposition No. 91158276 et. al.
`
`2. Testimony declaration of Joshua D. Kesselman, founder of HBI
`
`International with experience in the distribution and sale of cigarette
`
`rolling papers, with attached exhibits;25
`
`3. Plaintiffs’ first notice of reliance [Part 1] on excerpts from the January 6,
`
`2011 discovery deposition of Donald R. Levin, Defendant’s Chairman, with
`
`attached exhibits;26
`
`4. Plaintiffs’ first notice of reliance [Part 2] on excerpts from the January 5,
`
`2011 discovery deposition of Seth I. Gold, Defendant’s Vice President and
`
`General Counsel, with attached exhibits;27
`
`5. Plaintiffs’ second notice of reliance on the following items:
`
`a. Defendant’s responses to Plaintiffs’ Interrogatory No. 10;28
`
`b. Defendant’s responses to Plaintiffs’ Interrogatory No. 29 in the
`
`cancellation proceedings;
`
`c. Defendant’s responses to Plaintiffs’ requests for admission Nos. 4, 5, and
`
`
`
`
`
`6; and
`
`d. Defendant’s responses to Plaintiffs’ requests for admission Nos. 13, 14,
`
`19, 20, 22-24, 26-33, 36, 37, 42, 43, 45-47, 49 and 50;
`
`
`25 138 TTABVUE. The Kesselman declaration was submitted a second time at 146
`TTABVUE.
`26 140 TTABVUE.
`27 140 TTABVUE. The confidential portion of the Gold discovery deposition is filed at 139
`TTABVUE.
`28 141 TTABVUE.
`
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`
`

`
`Opposition No. 91158276 et. al.
`
`6. Plaintiffs’ third notice of reliance on the following items:29
`
`a. Defendant’s advertisements for cigarette rolling papers in printed
`
`publications, from 1976 through 1981, purporting to set forth the
`
`numeric designations 1.25, 1.5 and 1½ as size designations;30
`
`b. Third-party advertisements for cigarette rolling papers in printed
`
`publications, from 1976 through 1985, purporting to show numbers used
`
`as size designations;31 and
`
`c. Dictionary definitions and encyclopedia entries purportedly to show that
`
`“roll your own cigarettes” are cigarettes made from loose tobacco and
`
`papers;32
`
`7. Plaintiffs’ fourth notice of reliance on the following items:33
`
`a. Copies of printouts of third-party websites purportedly “showing the
`
`interchangeable use of whole, fractional and/or decimal designations by
`
`manufacturers, wholesalers, retailers and secondary market sellers to
`
`designate or refer to the size of cigarette rolling papers”;34
`
`
`29 142 TTABVUE.
`30 142 TTABVUE 10-140.
`31 142 TTABVUE 141-259
`32 142 TTABVUE 261-295.
`33 143 TTABVUE.
`34 143 TTABVUE 8-45.
`
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`
`

`
`Opposition No. 91158276 et. al.
`
`b. Copies of Defendant’s advertising and packaging purportedly “using
`
`whole, fractional and decimal numeric designations to refer to the size
`
`of its cigarette rolling papers”;35 and
`
`c. Copies of advertising of
`
`third-party cigarette rolling paper
`
`manufacturers purportedly “using whole, fractional and decimal
`
`designations to refer to the size of their cigarette rolling papers”;36
`
`8. Plaintiffs’ fifth notice of reliance on the following items:37
`
`a. Copies of four third-party registrations for cigarette papers consisting in
`
`part of the decimal designation 1.0 or 2.0 where the exclusive right to
`
`use 1.0 and 2.0 were disclaimed;38
`
`b. A copy of the relevant portion of the file history for Registration No.
`
`1399770 for the mark JOKER 1.0;39
`
`c. A copy of the relevant portion of the file history for Registration No.
`
`1399769 for the mark JOKER 2.0;40
`
`
`35 143 TTABVUE 47-59.
`36 143 TTABVUE 61-80.
`37 144 and 145 TTABVUE.
`38 144 TTABVUE 12-39.
`39 144 TTABVUE 41-48. Registered July 1, 1986; renewed. Registrant disclaimed the
`exclusive right to use 1.0 in response to a requirement holding that 1.0 is merely descriptive.
`144 TTABVUE 42.
`40 144 TTABVUE 50-56. Registered July 1, 1986; renewed. Registrant disclaimed the
`exclusive right to use 2.0 in response to a requirement holding that 2.0 is merely descriptive.
`144 TTABVUE 51.
`
`- 16 -
`
`

`
`Opposition No. 91158276 et. al.
`
`d. A copy of the relevant portion of the file history for Registration No.
`
`1399771 for the mark E-Z WIDER 1.0;41
`
`e. A copy of the relevant portion of the file history for Registration No.
`
`1399771 for the mark E-Z WIDER 2.0;42
`
`f. Copies of 69 third-party registrations for, inter alia, both cigarettes and
`
`cigarette rolling papers;43
`
`g. A copy of the prosecution history for application Serial No. 76296929 for
`
`the numeric fraction 1¼ filed by Defendant and now abandoned;44 and
`
`h. A copy of the prosecution history for application Serial No. 76296930 for
`
`the numeric fraction 1½ filed by Defendant and now abandoned;45
`
`9. Plaintiffs’ sixth notice of reliance on materials printed from the Internet.46
`
`See Safer Inc. v. OMS Investments Inc., 94 USPQ2d 1031, 1039 (TTAB
`
`2010).
`
`a. Excerpts from third-party websites purportedly “showing the use of
`
`whole, fractional and/or decimal numeric designations in connection
`
`
`41 144 TTABVUE 58- 64. Registered July 1, 1986; renewed. Registrant disclaimed the
`exclusive right to use 1.0 in response to a requirement holding that 1.0 is merely descriptive.
`144 TTABVUE 59.
`42 144 TTABVUE 65-72. Registered July 1, 1986; renewed. Registrant disclaimed the
`exclusive right to use 2.0 in response to a requirement holding that 2.0 is merely descriptive.
`144 TTABVUE 67.
`43 144 TTABVUE 74-489.
`44 145 TTABVUE 3-88.
`45 145 TTABVUE 90-174.
`46 148 TTABVUE.
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`Opposition No. 91158276 et. al.
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`with [Defendant’s] cigarette rolling papers to designate and refer to
`
`the size of its cigarette rolling papers”;47
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`b. Excerpts from third-party websites purportedly “showing the
`
`interchangeable use of whole, fractional and/or decimal numeric
`
`designations by manufacturers, wholesalers, retailers, secondary
`
`market sellers, and consumers to designate or refer to the size of
`
`cigarette rolling papers”;48
`
`c. Excerpts from third-party websites purportedly “showing how
`
`consumers and retailers use fractions and their corresponding
`
`decimals interchangeably when referring to shoe sizes, hat sizes and
`
`clothing sizes”;49
`
`d. Excerpts from third-party websites showing examples of different
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`fonts;50
`
`e. Excerpts from third-party websites purportedly “demonstrating
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`industry practices regarding the size of cigarette rolling papers”;51
`
`and
`
`
`47 148 TTABVUE 18-67.
`48 148 TTABVUE 69-345.
`49 148 TTABVUE 347-406
`50 148 TTABVUE 408-412.
`51 148 TTABVUE 414-443.
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`Opposition No. 91158276 et. al.
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`f. An excerpt from the Nebraska Department of Revenue website
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`purportedly “to show that ‘roll your own cigarettes’ are properly
`
`defined as a type of cigarette”;52
`
`10. Trial testimony deposition of Joseph Tabshe, President of Good Times
`
` USA, LLC, a cigar company that also sells cigarette rolling papers, with
`
` attached exhibits;53
`
`11. Trial testimony deposition of James Murray, Senior Vice President of
`
`Business Planning for National Tobacco Company, a plaintiff, with
`
`attached exhibits;54
`
`
`52 148TTABVUE 444-450.
`53 150 TTABVUE.
`54 152 TTABVUE. The portions of the Murray deposition designated as confidential are filed
`at 151 TTABVUE.
`Defendant objected to the admissibility of the price lists, order sheets and catalogs identified
`as Murray Exhibit Nos. 25-45. Also, Defendant objected to the introduction of these exhibits
`in other depositions. 232 TTABVUE 3-5. As grounds for the objection, Defendant asserts that
`(i) the witnesses could not properly authenticate the exhibits because they had not seen them
`before and, therefore, had no personal knowledge about the exhibits, including whether,
`when, and where they were distributed, (ii) that the information in the exhibits is hearsay,
`and (iii) that the documents were not produced during discovery. We overrule the objections
`for the following reasons:
`1. With respect to authentication, the witnesses testified that although they were not
`familiar with the specific documents, based on their experience in the tobacco and
`cigarette rolling paper industry, the exhibits were the types of price lists, orders sheets
`and catalogs used in connection with cigarette rolling papers. In this regard, Steven
`Sandman, President of Republic Tobacco, “the sole and exclusive distributor” of
`Defendant’s cigarette papers, testified that “there are more than 2,000 wholesalers of
`cigarette papers in the United States, all of whom regularly generate price lists,
`information sheets, buying guides and other sales materials.” Sandman Decl. ¶12 (164
`TTABVUE 7). Moreover, Defendant did not argue that the documents were
`manufactured or fabricated by Plaintiffs. Any technical defect in the manner in which
`Plaintiffs’ introduced and authenticated these documents is not dispositive, inasmuch
`as there simply exists no basis in the record for concluding that these documents are
`other than what they appear to be. See Fed. R. Evid. 901(a) and 901(b)(4);
`
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`Opposition No. 91158276 et. al.
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`12. Plaintiffs’ seventh notice of reliance (rebuttal) on excerpts from the
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`discovery deposition of Seth Gold with exhibits;55
`
`13. Plaintiffs’ eighth notice of reliance (rebuttal) on the following items:56
`
`a. Excerpts from third-party websites purportedly “showing the
`
`interchangeable use of whole, fractional and/or decimal numeric
`
`
`2. The hearsay objection to the price lists, order sheets and catalogs is overruled. Those
`documents are admissible for whatever they show on their face, but not for the truth
`of the matter asserted therein. See Safer, Inc. v. OMS Investments, 94 USPQ2d at
`1037 n.14 (“Documents submitted under notice of reliance pursuant to Trademark
`Rule 2.122(e) are generally admissible and probative only for what they show on their
`face, and not as proof of the matters asserted therein.”). Thus, the documents may be
`used to show, for example, that third parties listed cigarette papers using decimal
`numbers (e.g., 1.25) in lieu of fractions (e.g., 1¼). See Stuart Spector Designs Ltd. v.
`Fender Musical Instruments Corp., 94 USPQ2d 1549, 1553 (TTAB 2009); and
`3. With respect to the objection that Plaintiffs’ did not produce the price lists, order
`sheets and catalogs during discovery, because Defendant failed to provide copies of
`the specific discovery requests to which Plaintiffs purportedly failed to respond, we
`cannot judge whether those discovery requests sought the documents that were later
`introduced as Plaintiffs’ evidence. See H.D. Lee Co. v. Maidenform Inc., 87 USPQ2d
`1715, 1719 (TTAB 2008); Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d 1100,
`1105 (TTAB 2007).
`Nevertheless, the Board is aware of the limitations to the probative value of these documents
`such as the lack of testimony regarding the circulation of the documents, the number of times
`such documents printed decimals in lieu of fractions, and their impact on the perception of
`the purchasing public.
`55 213 TTABVUE. The portions of the Gold discovery deposition designated confidential are
`filed at 211 TTABVUE.
`56 215 TTABVUE.
`Defendant objected to the documents in this notice of reliance on the ground that they
`constitute improper rebuttal. 222 TTABVUE 10-14. Plaintiffs proffered the eighth notice of
`reliance to rebut Defendant’s testimony and evidence that it has the exclusive right to use
`decimal designations in connection with cigarette rolling papers and that the stylized decimal
`designations are “fanciful” or distinctive. Defendant’s objection is sustained to the extent that
`the documents introduced into evidence in Plaintiffs’ eighth notice of reliance will not be used
`to assess Plaintiffs’ case-in-chief but will be limited to rebutting Defendant’s testimony and
`evidence.
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`Opposition No. 91158276 et. al.
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`designations” “to designate or refer to a category and size of cigarette
`
`rolling papers”;57
`
`b. Webpages from the Harold Levinson catalog purportedly “showing
`
`the interchangeable use of whole, fractional and/or decimal numeric
`
`designations” “to designate or refer to a category and size of cigarette
`
`rolling papers”;58
`
`c. Excerpts from third-party websites purportedly showing how
`
`clothing sizes and shoe sizes vary widely across different brands;59
`
`and
`
`d. Excerpts from Defendant’s website demonstrating how Defendant
`
`uses decimal designations as size categories;60
`
`14. Plaintiff’s ninth notice of reliance (rebuttal) on the