Gillette Canada Companyv.Robin Research Laborator-ies, Inc.

Trademark Trial and Appeal Board

Apr 12, 2005

No. 91124984 (T.T.A.B. Apr. 12, 2005)

Mailed:
April 12, 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Gillette Canada Company, dba Oral-B Laboratories
v.
Robin Research Laboratories, Inc.
_____

Opposition No. 91124984
to application Serial No. 75662006
filed on March 17, 1999
_____

Michelle Brownlee and Raymond J. De Vellis of The Gillette
Company for Gillette Canada Company.

Patrick J. Coyne and James M. Pacious of Collier Shannon
Scott for Robin Research Laboratories, Inc.
______

Before Walters, Bucher and Rogers,
Administrative Trademark Judges.

Opinion by Rogers, Administrative Trademark Judge:

Robin Research Laboratories, Inc. [applicant] has
applied to register, on the Principal Register, the
following mark for goods identified as "electric toothbrush
and dental flossing units," in Class 21.

This Opinion is Not
Citable as Precedent
of the TTAB
Opposition No. 91124984
2
The application is based on applicant's claim of use of
the mark in commerce and includes a statement explaining
that the forms of lining in the mark represent,
respectively, the colors blue and yellow.1
Gillette Canada Company [opposer] has filed a notice of
opposition seeking to prevent issuance of a registration to
applicant. In its pleading, opposer has set forth a claim
of ownership of seven federal registrations for the marks
ORAL B or ORAL-B, the majority of them in certain stylized
forms. Plain photocopies of the registrations were attached
as exhibits to opposer's pleading. In addition to its
assertion that it believes it will be damaged if applicant's
mark is registered, opposer has pleaded a claim of
likelihood of confusion under Trademark Act Section 2(d), 15
U.S.C. § 1052(d), and a claim of dilution under Trademark
Act Sections 2(f) and 43(c), 15 U.S.C. §§ 1052(f) and
1125(c).2 Applicant, by its answer, admitted only opposer's
allegation regarding the filing of applicant's application
and what mark applicant seeks to register.

1 Under current practice, applicant would have submitted a
drawing of the mark showing the colors and a statement claiming
colors as features of the mark. However, at the time this
application was filed, various lining patterns were used to show
where color appeared in a mark. See Trademark Rules 2.52 and
2.54, 37 C.F.R. §§ 2.52 and 2.54.

2 Opposer has not referenced these sections of the statute, but
its pleading is quite clear as to the claims it is asserting.

Opposition No. 91124984
3
On the last day of its main testimony period, opposer
took the testimony deposition of Heather Gregg, a director
in "the oral care division, Oral-B," of The Gillette
Company. A transcript of the testimony and the exhibits
introduced during the deposition were later filed for our
consideration. On the penultimate day of the testimony
period scheduled for rebuttal, opposer filed, by certificate
of mailing, a notice of reliance on eight registrations.
Applicant did not participate in the taking of testimony
from opposer's sole witness and apparently did not introduce
any evidence of its own, as there is none in the record.
Opposer filed a brief. Applicant did not. Neither
party requested an oral hearing. We dismiss the opposition
for opposer's failure to bear its burden of proof as
plaintiff in this case.
Had opposer properly established, in any one of various
ways, its ownership of, and the current status of, its
pleaded registrations, that would have been sufficient to
establish opposer's standing and to remove priority as an
issue to be proved. See TBMP Section 704.03(b)(1)(A) (2d
ed. rev. 2004), for an explanation of the various ways in
which an opposer can ensure that its pleaded registrations
are entered into or considered to be part of the record; see
King Candy Company v. Eunice King's Kitchen, Inc., 496 F.2d
1400, 182 USPQ 108 (CCPA 1974), and Carl Karcher Enterprises
Opposition No. 91124984
4
Inc. v. Stars Restaurants Corp., 35 USPQ2d 1125 (TTAB 1995),
for the proposition that priority of use of a mark need not
be proved when a pleaded registration for that mark is
properly made of record.
Opposer's pleading did not make its registrations of
record because the copies attached thereto are plain
photocopies, not certified copies prepared by the USPTO
showing status and title. Nor did the answer admit
opposer's ownership of the registrations and their
continuing validity.3 Thus, proper introduction of the
registrations was a matter to be completed at trial.
Opposer's notice of reliance filed during the testimony
period scheduled for rebuttal did not serve to place the
registrations attached thereto into the record, because
proof of ownership and status of the registrations is part
of opposer's case in chief. Therefore, filing of the notice
of reliance during rebuttal constitutes improper rebuttal.
Sprague Electric Company, Inc. v. Electrical Utilities
Company, 209 USPQ 88, 93 and 95 (TTAB 1980), and Jacobsen
Manufacturing Company v Automotive Associates, Inc., 149

3 Items attached to a pleading (with the exception of certified
copies of registrations showing status and title) do not form
part of the trial record in a Board inter partes proceeding, in
the absence of an admission of their authenticity by the non-
offering party in a responsive pleading, or by a stipulation of
the parties, or by proper introduction during trial. See
Trademark Rule 2.122(c) and (d), 37 C.F.R. §2.122(c) and (d); see
also TBMP Sections 317, 704.05, 704.06 and 706 (2d ed. rev.
2004).

Opposition No. 91124984
5
USPQ 651, 652-53 (TTAB 1966)("As to opposer's registrations
of 'TURBOCONE' and 'TURBO-VAC', apart from any other
consideration, they manifestly constitute improper matter
for rebuttal."). See also, Jean Patou Inc. v. Theon Inc.,
18 USPQ2d 1072, 1075 (TTAB 1990) (untimely notice of
reliance on status and title copy of registration filed
after close of testimony period).
Moreover, as applicant did not present any evidence
during its assigned testimony period, there was no case in
chief presented by applicant and nothing for opposer to
rebut. Therefore, opposer actually had no right to file
anything during its rebuttal testimony period. Accordingly,
we have not considered opposer's notice of reliance.
As noted above, the TBMP outlines various ways for a
plaintiff to make its pleaded registrations part of the
record, including by appropriate testimony from a competent
witness, and even notes ways in which a defendant may
effectively have stipulated that the pleaded registrations
are of record notwithstanding that a plaintiff has not
properly introduced them. In this case, applicant has done
nothing that can be considered an admission of the validity
and ownership by opposer of the registrations. Nor has
opposer's witness established her competency to testify as
to ownership and status of the pleaded registrations. The
witness did not testify as to the relationship between the
Opposition No. 91124984
6
company for which she works, The Gillette Company, and
opposer, Gillette Canada Company. In short, no foundation
was laid to establish her personal knowledge of the status
and title of registrations purportedly owned not by her
employer but by another entity.4 Moreover, even if she had
testified as to the relationship of the companies, she did
not present any testimony whatsoever about the
registrations.5
We have reviewed the deposition of opposer's witness to
determine whether there is any testimony concerning use, as
opposed to registration, of opposer's marks, and whether
such testimony is sufficient to establish use by opposer
prior to the filing date of applicant's application. We
have found none. The testimony of the witness focuses
primarily on sales and advertising figures, consumer
recognition of opposer and its products, and opposer's

4 Ms. Gregg testified that she is employed by "The Gillette
Company" and its "oral care division, Oral-B." In contrast,
opposer is "Gillette Canada Company, dba Oral-B Laboratories."
Opposer's brief (p. 1) states that The Gillette Company is
opposer's parent company. Statements in a brief, however, are
not evidence. See authorities collected in TBMP Section
704.06(b) n. 186 (2d ed. rev. 2004).

5 In contrast, in Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d
1768, 1770 (TTAB 1992), opposer presented stipulated testimony
from the "Director of Trademarks of The Gillette Company"
regarding the relationship between opposer and The Gillette
Company, and the knowledge of the Director of Trademarks of
registrations pleaded therein by opposer. Of course, each case
requires its own record and the applicant in this case was not a
party to the prior proceeding, so there is no preclusive effect
in this case resulting from stipulated testimony or findings of
fact in the prior case.
Opposition No. 91124984
7
market share vis a vis its competitors. There is no
testimony of use of specific marks for particular products,
as of any date prior to applicant's filing date.6 We note,
in this regard, that opposer, in its brief, has cited to the
dates of use in its oldest registration as evidence of its
use long prior to applicant. However, dates of use recited
in registrations are not evidence of use and are a matter
for proof. See authorities discussed in TBMP Section 704.04
(2d ed. rev. 2004). Moreover, as noted above, opposer's
registrations have not been made of record.
Because there is no evidence of use of opposer's
pleaded marks prior to applicant's filing date, and because
opposer did not remove the issue of priority by properly
making its pleaded registrations of record, opposer's claim
under Section 2(d) fails for lack of proof and is dismissed.
See Lone Star Manufacturing Co., Inc. v. Bill Beasley, Inc.,
498 F.2d 906, 182 USPQ 368, 369 (CCPA 1974)(when an
applicant does not prove use as of any particular date, it
may only rely on the filing date of its application); see
also, Intersat Corp. v. International Telecommunications
Satellite Organization, 226 USPQ 154 n.5 (TTAB 1985).

6 There are discussions of products launched in the two or three
years prior to the taking of the deposition in January 2004, and
of sales figures for those years. There is even a passing
reference to tracking studies measuring consumer awareness having
been conducted as early as 2001. There is not, however, any
testimony as to use of marks prior to March 17, 1999, i.e.,
applicant's filing date.
Opposition No. 91124984
8
Likewise, because there is no evidence of opposer's use
prior to applicant's filing date, there can be no proof that
opposer's marks became famous prior to applicant's filing
date and, therefore, its dilution claim also fails for lack
of proof and is dismissed. Toro Co. v. ToroHead Inc., 61
USPQ2d 1164, 1174-75 (TTAB 2001)(opposer pleading dilution
must prove that its mark became famous prior to the filing
date of an intent to use application).7
Decision: The opposition is dismissed as to both of
opposer's claims.

7 At note 9 of the Toro decision, the Board wrote, "In a use-
based application under Section 1(a) of the Trademark Act, 15
U.S.C. §1051(a), the party alleging fame must show that the mark
had become famous prior to the applicant's use of the mark."
Solely for purposes of this case, which involves a use-based
application, we assume that this statement from Toro applies when
there is proof of applicant's actual use. We also assume that
the issue of dilution should be treated the same as the issue of
priority when there is no proof of an applicant's actual use
prior to its filing date. Consequently, we assume that an
opposer in such case would only have to prove the fame of its
mark prior to the applicant's filing date.