Reynolds Consumer Products, Inc.v.PRS Mediterranean Ltd.

Trademark Trial and Appeal Board

Sep 27, 2013

No. 91189669 (T.T.A.B. Sep. 27, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: September 27, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Reynolds Consumer Products, Inc.
v.
PRS Mediterranean Ltd.
_____

Opposition No. 91189669
against Serial No. 77248825
_____

James H. Donoian, Sarah Marks, Heidi Garfield and Daniel J. Navarro,
of Greenberg Traurig LLP for Reynolds Consumer Products, Inc.

Richard M. Klein and George P. Huang of Fay Sharpe LLP,
for PRS Mediterranean Ltd.
_____

Before Bucher, Kuhlke and Shaw,
Administrative Trademark Judges.

Opinion by Bucher, Administrative Trademark Judge:
PRS Mediterranean Ltd. (hereinafter “applicant” or “PRS”) seeks registration on
the Principal Register of the mark NEOWEB (in standard characters) for the
following goods:
nonmetallic building materials, namely, three-dimensional
polymeric cells, cellular confinement systems, and expandable
plastic webbing sheets all for road base and for ground support
used for construction of roads and for prevention of ground
Opposition No. 91189669
2

erosion; plastic articles for reinforcing geotechnical-reinforced
materials for use in building and construction; materials, namely,
sand, gravel, crushed stone, graded aggregate, recycled asphalt,
crushed concrete, native soil, fly ash, quarry waste in the nature
of fine crushed stone, earth, soil and concrete, earth and soil for
use in road building and civil engineering construction; polymeric
webbing, and sheets constructed from plastic, all for road base
and ground support, for building roads and for civil engineering
construction and for the prevention of erosion of roads and the
like structures; pavements and pavement materials, namely,
sand, gravel, ballast, recycled concrete, recycled asphalt, crushed
stone, quarry waste in the nature of fine crushed stone, earth, soil
and concrete” in international class 19.1
Reynolds Consumer Products, Inc., doing business as Presto Products
Company (hereinafter “opposer” or “Reynolds/Presto”), opposed registration of
applicant’s mark, asserting as its ground for opposition, that registration of
applicant’s NEOWEB mark in connection with goods legally identical to opposer’s own
cellular confinement systems would lead to a likelihood of confusion under Section
2(d) of the Trademark Act, 15 U.S.C. § 1052(d) based upon its GEOWEB
trademarks (hereinafter the “GEOWEB marks”) previously used and registered by
Reynolds/Presto:
GEOWEB for “road base and ground support plastic webbing sheets for
building roads and preventing erosion of roads” in International
Class 19;2

for “construction materials, namely, plastic erosion control and
protection blocks, sheets, mats and webbing for use in
constructing roadways, airstrips, driveways, railroads, trailways,
parking lots, floors, patios, paddocks, boat ramps, greenhouse

1 Application Serial No. 77248825 was filed on August 7, 2007. The application includes a
statement of a bona fide intention to use the mark in commerce, and a claim of priority,
pursuant to Section 44(d) of the Trademark Act, 15 U.S.C. § 1126(d), based upon Israeli
application number 197823 filed on February 12, 2007.
2 Registration No. 1351682 issued on July 30, 1985; renewed.
Opposition No. 91189669
3

shelving, hillsides, ramps, and dam spillways, and for ground and
soil stabilization, erosion prevention, and turf protection” in
International Class 19.3

Consistent with the extensive testimony and exhibits made part of this record,
throughout this opinion we will refer to opposer’s involved Class 19 products as
identified above as simply a cellular confinement system or opposer’s “GEOWEB
products.”
Opposer also alleges that its famous GEOWEB marks are likely to be diluted by
registration of applicant’s NEOWEB mark under the Trademark Dilution Revision
Act of 2006 (“TDRA”), Trademark Act Section 43(c), 15 U.S.C. § 1125(c).
I. Evidentiary Issues
Before proceeding to the merits of the opposition, we note that the evidentiary
record in this case is relatively large, and each party has interposed evidentiary
objections pursuant to the Federal Rules and TTAB precedent. See Harjo v. Pro-
Football Inc., 45 USPQ2d 1789, 1792 (TTAB 1998); and Marshall Field & Co. v.
Mrs. Fields Cookies, 25 USPQ2d 1321, 1326 (TTAB 1992). Many of the parties’
objections relate to admissibility (e.g., hearsay, “late-produced” documents), while
others relate to relevance and probative value (e.g., witness bias).

3 Registration No. 3699433 issued on October 20, 2009, from its pleaded U.S. Application
Serial No. 77202954. Hunt Control Systems Inc. v. Koninklijke Philips Electronics N.V., 98
USPQ2d 1558, 1563 n.6 (TTAB 2011) (an applicant is on notice that an opposer intends to
rely on a registration that matured from a pleaded application); UMG Recordings Inc. v.
O’Rourke, 92 USPQ2d 1042, 1045 n.12 (TTAB 2009); and Standard Knitting Ltd. v. Toyota
Jidosha Kabushiki Kaisha, 77 USPQ2d 1917, 1920 (TTAB 2006).
Opposition No. 91189669
4

Patents
Reynolds/Presto objects to extensive testimony and documentation related to
allegations of use (or misuse) of its patents in the years after 2006, and applicant’s
patents that were filed with the United States Patent and Trademark Office around
2007. Opposer’s objections have to do with relevance,4 PRS’ cross-examination of
opposer’s witness allegedly exceeding the scope of the direct examination,5 etc.
While we find no reason to strike the testimony and evidence about the role of
patents, patent markings and an aggressive use of all forms of intellectual property
rights claimed by each party in the marketplace skirmishes between these
competitors, we also find no probative evidence supporting allegations that
Reynolds/Presto made improper threats of patent infringement against PRS
customers and distributors based upon expired patents. In general, we find little
relevance in the detailed inclusion of applicant’s various patents on this record
other than further demonstration of applicant’s intensive research and development
efforts, which fact we acknowledge.
Opposer’s three arguably late Notices of Reliance
Due to difficulties opposer experienced in filing several of its Notices of Reliance
using the Board’s electronic filing system known as ESTTA, we review the
complicated histories surrounding three of these filings.

4 See Stelter Dep. of Dec. 1, 2011, 90 TTABVUE at 105-114, and 92 TTABVUE at 135-36,
PRS Ex. 8 GEO-785-76,
5 Stelter Dep., 90 TTABVUE at 109-110.
Opposition No. 91189669
5

Opposer’s trial period closed on December 16, 2011. Applicant alleges that
among three late Notices of Reliance we should exclude from the record is opposer’s
Fifth Notice of Reliance entitled “Notice of Reliance on Agreements and Related
Correspondence between Opposer and Applicant.” This is a confidential entry of
agreements between the parties of 1996 (22 pages), 1999 (nine page letter with
three pages of exhibits) and 2001 (five page letter and two pages of exhibits),
correctly filed and served via ESTTA on December 12, 2011.6 Accordingly, these
documents and exhibits are clearly of record in this proceeding.
Opposer’s Seventh Notice of Reliance was entitled “Notice of Reliance on printed
publications.” This notice was prepared by counsel on December 15, 2011, filed via
First-class mail with a Certificate of Mailing on December 15, 2011, allegedly also
served upon applicant by First-class mail on December 15, 2011, and received by
the United States Patent and Trademark Office on December 21, 2011. However,
upon receipt at the TTAB, these 133 pages of documents were stored electronically
behind the 27 pages of confidential information remaining in 48 TTABVUE at 4-30.7
For this reason, opposer was unsure at the time it filed its main brief in this
proceeding that the documents were indeed part of the record. When this problem

6 40 TTABVUE at 5-45, NEO-00268 to NEO-00308: 1996 agreement (NEO-00268 to NEO-
00289); 1999 letter (NEO-00290 to NEO-00298); 1999 exhibits (NEO-00299 to NEO-00301);
2001 letter (NEO-00302 to NEO-00306); and 2001 exhibits (NEO-00307 to NEO-00308).
Opposer received tracking number ESTTA445757 as confirmation.
7 99 TTABVUE at 6-138, printed publications; GEO-026-27, GEO-033-35, GEO-039-41,
GEO-044-45, GEO-051-53, GEO-058-60, GEO-064-67, GEO-070-71, GEO-076-77, GEO-080-
83, GEO-087-89, GEO-094-97, GEO-100-02, GEO-109-11, GEO-119-25, GEO-130-31, GEO-
133-35, GEO-140-43, GEO-155-61, GEO-165-70, GEO-175, GEO-193-95, GEO-460-61, GEO-
853-56 and GEO-965-96.
Opposition No. 91189669
6

came to the attention of the Office, these pages were rescanned into the record in
November 2012 as entry #99. Inasmuch as this original Notice of Reliance was filed
with a Certificate of Mailing on December 15, 2011, and opposer’s trial period ended
on December 16, 2011, these documents are clearly of record in this proceeding. 37
CFR § 2.195(c), 37 CFR § 2.197(a), and TBMP § 110.01(c).
Much like opposer’s Fourth Notice of Reliance on applicant’s marketing
materials, it appears that opposer’s Sixth Notice of Reliance entitled “Notice of
Reliance on Discovery Interrogatories and Requests for Admission” was prepared by
counsel on December 12, 2011, and these documents, according to the signature of
Millie Badillo, were allegedly also served upon applicant by First-class mail on
December 12, 2011. Although Ms. Badillo signed on that date a certification of
service on applicant, there is no certification of filing with the United States Patent
and Trademark Office. Nonetheless, Nycol Morrisey, senior trial paralegal for
opposer’s counsel, signed a declaration in November 2012 that on December 13,
2011, she had “filed [these documents] using … ESTTA … [but that they are] not
currently appearing on the TTABVUE system for this proceeding.” She did not
reference an ESTTA tracking number or attach a printout of an on-screen
acknowledgement, an e-mail filing receipt, or a certification of mailing to support
this statement.8 Unlike opposer’s first three notices of reliance sent days earlier via
ESTTA by opposer’s counsel, opposer has provided no ESTTA tracking number as
confirmation. TBMP § 109. And unlike the case in the Fourth Notice of Reliance,

8 Without such confirmation a party may not assume that a notice has been successfully
filed.
Opposition No. 91189669
7

there is no indication that a duplicate copy of applicant’s discovery responses was
subsequently filed (as opposed to merely served on opposing counsel) via First-class
mail with Certificate of Mailing and no evidence at all that this Notice of Reliance
was ever filed with the Board during opposer’s testimony period in December 2011.
Under 37 CFR 2.120(j) and 37 CFR 2.122(e), Notices of Reliance are required to be
filed with the Board during the testimony period of the offering party. As noted in
the Board’s Order of December 14, 2011, opposer’s testimony period closed on
December 16, 2011, and opposer’s rebuttal period closed on March 30, 2012.
Presumably opposer discovered this deficiency at a point where it could no longer be
cured. This Notice of Reliance was filed on November 16, 2012, which is well outside
of opposer’s testimony period. Hence, we have given no consideration to opposer’s
untimely filed notice of reliance on discovery interrogatories and requests for
admission.9
Probative value of portions of Oded Erez’s trial testimony
Opposer objects to multiple portions of the trial deposition testimony of Oded
Erez, conducted on February 2, 2012 (“Erez Dep.”) on a variety of grounds, which

9 See 100 TTABVUE at 2-8. Opposer states that a Board “docketing clerk also informed
Opposer that the Board did not have a copy of Opposer’s Notice of Reliance on Discovery
[and] that if the Notice of Reliance on Discovery had been properly submitted to the Board
during the testimony period but was not currently displayed on the docket, opposer could
submit an affidavit describing the submission and re-file the Notice of Reliance on
Discovery.” Opp. Reb. Br. at 2. As discussed above, opposer has not established that this
Notice of Reliance “had been properly submitted” by “describing the submission” with the
statement that opposer “filed” this Notice – given the absence of documentary evidence to
support the affidavit, either a tracking number confirmation from ESTTA or a certificate of
mailing, in stark contrast to the supporting ESTTA tracking number for some of opposer’s
other Notices of Reliance. We hasten to add that consideration of these documents would
not have changed the result herein.
Opposition No. 91189669
8

include relevance,10 hearsay,11 lack of foundation and speculation.12 Mr. Erez
founded PRS in 1996, spent many years as its CEO and continues as chairman of
the PRS Board of Directors. He has an impressive array of academic credentials. He
has worked as an Israeli consular official stationed in the United States (in the field
of international trade), as a senior consultant on behalf of the United Nations to
developing countries, and as an international business person at the highest levels
of several multinational corporations. For more than a decade, he maintained a
significant and close-working relationship with Reynolds/Presto.
It goes without saying that Mr. Erez is biased in favor of PRS in this litigation.
However, his testimony is not characterized by contradictions or inconsistencies.
The fact that, as applicant’s Chairman of the Board his testimony may be biased,
merely goes to the weight or probative value of the testimony. For example, we find
his unsubstantiated suggestions of bribes and corruption on the part of
Reynolds/Presto in connection with tender offers in Florida and Hawaii to be
irrelevant and of no probative value absent corroborating evidence.13 Some of his
discussions of applicant’s communications with Strata, or of third-party uses of
“Geo”- or “-Web-” formatives by others in the geosynthetics industry, for example,
seem to reflect dated and third-hand oral information he claimed to have heard that

10 See, e.g., Erez Dep. 75 TTABVUE at 86-87, 96-100, 102-103, 108-121; applicant’s Not. of
Rel. on Patents, filed February 14, 2012, 50 TTABVUE at 5-131, NEO 001159-001285.
11 77 TTABVUE at 94-95, 161-65.
12 75 TTABVUE at 63-64, 67, 109-11, 135-36; 77 TTABVUE at 74, 101-02, 146-50, 154-57,
161-69.
13 77 TTABVUE at 68-75.
Opposition No. 91189669
9

has little to no support elsewhere in the record. We have not considered these
examples of hearsay for the truth of the matter stated. On yet the other hand, we
find his testimony regarding applicant’s commercial and research activities such as
PRS’ commitment to innovation, scholarship and excellence to be probative. Hence,
we have carefully accorded to the various portions of his testimony the probative
value each portion merits.
Other objections
Similarly, to the extent we have relied on specific material against which either
party has lodged an objection, we will explain our reasoning below. Other than
those specifically discussed above, we see no need to discuss the other objections
separately, as none of them is outcome determinative. Rather, we have considered
the entire record in making our decision, keeping in mind the parties’ various
objections, and have consistently accorded whatever probative value the subject
testimony and evidence merit.
II. The Record
Opposer’s Notices of Reliance:
1. Opposer’s First Notice of Reliance on opposer’s GEOWEB
registrations;14
2. Opposer’s Second Notice of Reliance on records from
trademark registrations, applications, and proceedings in
foreign jurisdictions;15

14 39 TTABVUE at 5-11, Registration Nos. 1351682 and 3699433; filed via ESTTA on
December 12, 2011, and allegedly served upon applicant by first class mail on November 30,
2011 (having a heading within the Certificate of Service dated December 12, 2011). Opposer
received tracking number ESTTA445754 as confirmation.
15 41 TTABVUE at 5-27, GEO-942 to GEO-964; documents from Lithuania, Latvia,
Estonia, Mexico, India, Portugal, Slovenia, Turkey, Sweden, Austria and South Africa;
Opposition No. 91189669
10

3. Opposer’s Third Notice of Reliance on Internet
materials;16
4. Opposer’s Notice of Reliance on the discovery deposition
and exhibits taken from Strata Systems’ witness Chip
Fuller, as taken on April 21, 2011 (“Fuller Dep.”);17
5. Opposer’s Fourth Notice of Reliance on applicant’s
marketing materials;18
6. As discussed above, Opposer’s Fifth Notice of Reliance
was entitled “Notice of Reliance on Agreements and
Related Correspondence Between Opposer and
Applicant” was correctly filed and served via ESTTA on
December 12, 2011;19
7. As discussed above, opposer’s Seventh Notice of Reliance
on printed publications are clearly of record in this
proceeding;20
8. Opposer’s Notice of Reliance on Testimony from a

filed via ESTTA on December 12, 2011, and allegedly served upon applicant by first class
mail on November 30, 2011. Opposer received tracking number ESTTA445760 as
confirmation.
16 44 TTABVUE at 4-11, GEO-000993 to GEO-000994; copies of source data and
screenshots from applicant’s website http://www.prs-med.com/en-
US/Content.aspx?Page=earth_retention as accessed on November 12, 2010. Opposer
received tracking number ESTTA446568 as confirmation.
17 45 TTABVUE at 4-177, the transcript of Mr. Fuller’s deposition, and opposer’s attached
exhibits B, C, D, E, I, M and N are deemed “Confidential”; the unredacted, public portions
are located at 46 TTABVUE at 4-120, and include opposer’s exhibits A, F, G, H, J, K and L,
and applicant’s exhibit 2; the documents of both entries were filed via First-class mail with
Certificate of Mailing on December 15, 2011, Allegedly also served upon applicant by First-
class mail on December 15, 2011, and received by the United States Patent and Trademark
Office on December 21, 2011. This discovery deposition and exhibits were submitted pursuant
to a stipulation of the parties to have this admitted as trial testimony (See 35 TTABVUE at
2).
18 47 TTABVUE at 4-163; includes NEO-00383 to NEO-00394, and NEO-00400 to NEO-
00534, and NEO-00536 to NEO-00551; notice was prepared by counsel on December 12,
2011. Evidently, Nycol Morrisey, senior trial paralegal for opposer’s counsel, attempted
unsuccessfully to file these documents via ESTTA on December 13, 2011. A duplicate copy
of these documents were subsequently filed via First-class mail with Certificate of Mailing
on December 15, 2011, allegedly also served upon applicant by First-class mail on December
15, 2011, and received by the United States Patent and Trademark Office on December 21,
2011.
19 40 TTABVUE at 5-45, (see discussion at footnote 6, supra).
20 99 TTABVUE at 6-138 (see discussion at footnote 7, supra).
Opposition No. 91189669
11

Canadian Trademark Proceeding,21 pursuant to an
earlier stipulation of the parties,22 having affidavits of
Oded Erez, Gary Bach and Patricia Stelter;23
9. Opposer's Eighth and Rebuttal Notice of Reliance on
Printed Publications and Third Party Trademark
Registrations and File Histories;24 and

Opposer’s testimony:
1. Trial Deposition of Manuel Almonte, Jr., taken on
December 14, 2011, and exhibits annexed thereto
(“Almonte Dep.”);25
2. Trial Deposition of Gary Bach, taken on December 1, 2011,
and exhibits annexed thereto (“Bach Dep.”);26 and
3. Trial Deposition of Patricia Stelter, dated December 1, 2011,
and exhibits annexed thereto (“Stelter Dep.”)27
Applicant’s Notices of Reliance:
1. Applicant’s Notice of Reliance on patents;28
2. Applicant’s Notice of Reliance on one trademark file
history from Canada29 and three trademark files from the
United States;30

21 Docket Entry # 80 TTABVUE indicating opposer’s intentions to rely on such affidavits, etc.
March 21, 2012.
22 60 TTABVUE, dated March 5, 2012.
23 NEO002845 to NEO003071 and NEO003491 to NEO003641.
24 83 TTABVUE at 4-61, GEO-0995 to GEO-1052.
25 86 TTABVUE at 4-87; Presto Exhibits ## 61 and 62.
26 88 TTABVUE at 4-86 (redacted version); 89 TTABVUE at 4-140 (Confidential with Presto
Exhibits ## 1-3).
27 90 TTABVUE at 4-194 (redacted version with Presto Exhibits ## 4-11 (GEO-00214 to GEO-00229
and GEO-00274 to GEO-00323); 91 TTABVUE at 4-190, Presto Exhibits ## 12-55 (GEO-00230-37,
GEO-00242-61, GEO-00266-273, GEO-00324-33, GEO-00348-89, GEO-00404-08, GEO-00430-
31, GEO-00460-61, GEO-00500-45, GEO-00787 to GEO-00800, GEO-00803-16, GEO-00818-20,
GEO-00822, GEO-00824, GEO-00826, GEO-00828, GEO-00830, GEO-00832, and GEO-00916-
923); 92 TTABVUE at 4-58, Presto Exhibit #56 (GEO00026 to GEO00125); 92 TTABVUE at 60-138,
PRS Exhibits ## 1-10 (NEO-001725-27; GEO-00001-35, GEO-00061-83, GEO-00327-39, GEO-
00548, GEO-00785-87, and GEO-00812).
28 50 TTABVUE at 5-213, PRS Patents Nos. 7462254, 7501174, 7541084, 7648754, 7674516,
7842373, 7993080, 8025457 and 8026309 (NEO-001157 to NEO-001285, NEO-003211-66)
and Presto Patents Nos. 4778309, 4797026 and 4965097 (NEO-003185- NEO-003210).
29 51 TTABVUE at 5-34 (NEO-00552-81).
Opposition No. 91189669
12

3. Applicant’s Notice of Reliance on trademark
registrations;31
4. Applicant's Notice of Reliance on printed publications;32
5. Applicant’s Notice of Reliance on testimony from another
proceeding,33 pursuant to an earlier stipulation of the
parties,34 having affidavits of Oded Erez and Patricia
Stelter,35 and pursuant to another stipulation of the
parties,36 the discovery deposition and exhibits of Strata
Systems’ witness, Chip Fuller, taken on April 21, 2011;37
6. Applicant’s Notice of Reliance on certain confidential
materials;38 and
Applicant’s testimony:

The Trial Deposition of Oded Erez, taken on February 2,
2012, and exhibits annexed thereto (“Erez Dep.”).39

30 51 TTABVUE at 35-271, opposer’s Reg. Nos. 1351682 (GEOWEB) and 3699433,
and applicant’s Reg. No. 3653070 (NEOLOY) (NEO-001396 to NEO-001632).
31 54 TTABVUE at 4-190 (NEO-000102-03, NEO-000212-48, NEO-003464-90, NEO-001370-
83, NEO-003072 to NEO-003174, and NEO-003356-59.
32 55 TTABVUE at 7-321 (NEO-000249-57, NEO-000582-90, NEO-001286 to NEO-001395,
and NEO-001725 to NEO-001925); 56 TTABVUE at 2-398 (NEO-001926 to NEO-002751-
NEO-002322); 57 TTABVUE at 1-331 (NEO-002323 to NEO-002653); and 58 TTABVUE at
2-341 (NEO-002654-96, NEO-002748 to NEO-002844, and NEO-003175 to NEO-003461).
33 Docket Entry # 79 TTABVUE indicating applicant intentions to rely on such affidavits, etc.
March 20, 2012.
34 60 TTABVUE, dated March 5, 2012.
35 NEO-002845 to NEO-003071 and NEO-003491 to NEO-003641.
36 35 TTABVUE at 2, ¶1.
37 45 and 46 TTABVUE, see footnote 16, supra.
38 49 TTABVUE 5-70 (NEO-00268 to NEO-0308 and NEO-000327-51).
39 61 TTABVUE at 5-204 (redacted version of first portion of Mr. Erez’s testimony); 62
TTABVUE at 5-195 (redacted version of second portion of Mr. Erez’s testimony); 63
TTABVUE at 5-34, non-confidential PRS Exhibits ## 8, 11-13 (GEO-785-86, NEO-001287-
98, NEO-002925-32, NEO-003194 to NEO-003201); 64 TTABVUE at 5-64, PRS Exhibits ##
14-18, 21-22 (NEO-002770-72, NEO-002841-44, NEO-003361-62, NEO-003414-17, NEO-
003430-57, and NEO-003462); 65 TTABVUE at 4-80, PRS Exhibits ## 23-27 (NEO-001301-
24, NEO-001734-41, NEO-003267-77, NEO-003387 to NEO-003413, and NEO-003418-23);
Opposition No. 91189669
13

III. The Parties
The parties to this action are international competitors within the geosynthetics
industry. Geosynthetic products are polymeric materials used to reinforce the earth
or soil. Specifically, the goal is to offer solutions to challenging engineering
problems, including porous pavement, load support, slope protection and earth
retention. Among the many different types of geosynthetic products that have
been introduced over the past three decades, the type of geosynthetic product of
greatest interest to us in this case is what is known as cellular confinement
systems, or geocells.40 A geocell is a three-dimensional honeycombed cellular
structure formed from plastic strips that are welded together at intervals in an offset
manner to form “webbing.” This permits the structure to be collapsed during
shipping, and then expanded into the cellular structure. When the cells are filled

66 TTABVUE at 5-77, PRS Exhibits ## 28-34 (NEO-00458-78, NEO-001725-33, NEO-
001745-50, NEO-001939-53, NEO-002751-63, and NEO-003380-86; 67 TTABVUE at 5-123,
PRS Exhibits ## 35-37, and 42-44, 46-48 (NEO-00383-94, NEO-00445-57, NEO-002739-46,
NEO-003278 to NEO-003358, and NEO-003458-61; 68 TTABVUE at 5-51, PRS Exhibits
#44-d&e (NEO-002394 to NEO-002440); 69 TTABVUE at 5-43, PRS Exhibits #44-f (NEO-
002441-79); 70 TTABVUE at 5-77, PRS Exhibits #44-n-q (NEO-002624-96); 71 TTABVUE
at 5-64, PRS Exhibits #44-a-c (NEO-002334-93); 72 TTABVUE at 5-71, PRS Exhibits #44-g-
i (NEO-002480 to NEO-002546); 73 TTABVUE at 5-81, PRS Exhibits #44-j-m (NEO-002547
to NEO-002623); 74 TTABVUE at 5-180, PRS Exhibit 45. In comparing the Bates numbers
for applicant’s patents in this Entry #74 with the same patents in Entry #50, we find two
confusing numbering systems:
Patent No. Bates in #74 Bates in #50 Patent No. Bates in #74 Bates in #50
7,501,174 NEO-000168-0201 NEO-001168-1201 7,541,084 NEO-000132-0149 NEO-001202-1218
7,648,754 NEO-000116-0131 NEO-001219-1234 7,674,516 NEO-000150-0167 NEO-001235-1251
76 TTABVUE at 5-65, Confidential PRS Exhibits ## 19, 20, and 38-41 (NEOS-000632-35,
NEO-003463, and NEO-00327-382); and 77 TTABVUE at 5-195 (confidential version of Mr.
Erez’s testimony).
40 Erez Dep., 61 TTABVUE at 36.
Opposition No. 91189669
14

with soil, earth, or related material and then compacted, the material is confined
and becomes very stiff and strong.
By the late-seventies and early-eighties, Reynolds/Presto (through its
predecessors-in-interest) had gained experience with environmentally-friendly
construction products, and one of opposer’s employees, an engineer named Gary
Bach, was directly involved with the U.S. Army Corps of Engineers in the invention
and development of an entirely new product line, namely an expandable grid for
stabilizing an undersurface – a new product line that came to be known as a
cellular confinement system, or simply geocells.41 Opposer’s geocells were
manufactured from a high density polyethylene (HDPE) material. Ground
reinforcement is achieved by in-filling the cells with local compacted materials,
cement, etc. Given this history, perhaps not surprisingly, Reynolds/Presto was the
first non-exclusive licensee of the ’026 patent for these geocells.
For more than three decades, Reynolds/Presto has continued to be a prominent
player in the field of geosynthetics – manufacturing construction products that offer
solutions to challenging engineering problems, including porous pavement, load
support, slope protection and earth retention. Since the mid-1980s, Reynolds/Presto
has continuously marketed, distributed and sold its GEOWEB cellular confinement
products under its GEOWEB marks throughout the United States and worldwide. 42
As seen above, opposer has obtained U.S. Trademark Registration Nos. 1351682

41 U.S. Patent No. 4797026 (“the ’026 patent”) was filed by the United States of America (as represented
by the Secretary of the Army) in 1986. 50 TTABVUE at 141-148 (NEO-003194 to NEO-003201).
42 88 TTABVUE at 57-58.
Opposition No. 91189669
15

and 3699433 for the GEOWEB marks, and both registrations are valid and
subsisting. Over the decades, opposer has invested substantial amounts of time,
money and effort in to the development, advertisement and promotion of its GEOWEB
products, and has expended considerable resources to protect the strength, goodwill
and value of its GEOWEB marks.
PRS was incorporated in Israel in 1996.43 Applicant is the alter ego of Mr.
Oded Erez, its founder/Chairman/former CEO, etc. In October 1996, PRS entered
into a licensing arrangement with Reynolds/Presto to use its GEOWEB trademarks
in conjunction with the manufacturing, distribution and sale of GEOWEB
products. PRS was permitted by license to distribute GEOWEB products in certain
international markets in Europe, the Middle East and Africa.
Then in 2001, following litigation between the parties, Reynolds/Presto and PRS
entered into a settlement agreement that extended the licensing agreement for
another five years, whereby Reynolds/Presto agreed to allow PRS continued use of
its GEOWEB marks. At some point while PRS was still a trademark licensee of
Reynolds/Presto’s GEOWEB marks, PRS made the decision to market and sell its
own cellular confinement systems. In 2006, Reynolds/Presto terminated its
contractual relationship with PRS.
Erez is an entrepreneur and inventor who has pushed his company to invest
heavily in R&D, innovation, marketing, etc. According to his testimony, from early-
on in his relationship with opposer’s predecessor, Erez was frustrated, and

43 Erez Dep., 61 TTABVUE at 23-26.
Opposition No. 91189669
16

ultimately his efforts proved unsuccessful in getting Presto’s high-level
management to invest in making the original 1980s version of temporary geocells
stronger and more durable. In spite of opposer’s involvement with the invention of
this entire product in conjunction with the Army Corps of Engineers (in the 70s and
80s), Erez alleges that Presto was complacent – willing to blend in with all the other
“also-rans” who joined this field in recent decades. Mr. Erez and PRS committed to
years of aggressive research and development activities. Accordingly, almost
immediately after its licensing arrangement with Reynolds/Presto ended (2006),
PRS had positioned itself to begin offering its initial generation of NEOWEB product
(2007) to customers – HDPE geocells that were quite similar to the GEOWEB
product it had earlier been manufacturing and selling. This placed PRS in direct
competition with Reynolds/Presto's GEOWEB products. Then in 2008, PRS began
offering its second-generation NEOWEB geocells (made out of NEOLOY polymeric
alloys) to customers, claiming that this product had vastly improved performance
characteristics compared to geocells made of HDPE. All subsequent generations of
NEOWEB products have been made from various blends of NEOLOY polymeric alloys.
IV. Summary of the position taken by PRS
Applicant argues that during its business relationship with Opposer, PRS
envisioned a geocell that could be used for demanding road base and ground support
applications (e.g. highway and railway construction) in which heavy load capacity
and durability were critical. Mr. Erez contends that the HDPE from which
Reynolds/Presto’s GEOWEB product was initially designed as a temporary measure,
Opposition No. 91189669
17

and the HDPE was not a suitable material for more permanent and demanding
applications because it deformed under heavy stress.44 These issues have been
recognized in a relevant trade publication:
… [W]ithout improvements, HDPE geomembranes are not
suitable for long term applications. Problems of durability
related to leaching of additives, oxidation, and to UV exposed
facing should be addressed. Large thermal contraction and
expansion of outer cells due to daily and seasonal temperature
changes combined with high intrinsic thermal coefficient of the
geocell material could lead to progressive failure initiating at
the outer cells. Stress cracking of exposed facing could occur in
low temperature. Low stiffness and strength may lead to
significant creep having poor long-term dimensional stability.
Considering the objectives of this research, PRS-Mediterranean
received guidelines for developing the new polymeric alloy,
Neoloy®, and thus improve its Neoweb® system, facilitating its
use in retention systems. It also obtained design tools enabling
utilization of the Neoweb® in demanding applications
considering long-term performance.45
According to Mr. Erez, PRS notified Reynolds/Presto of these deficiencies, and
urged opposer to devote R&D funding to improving the composition of its geocells,
but opposer’s top management was unwilling to invest the resources necessary to

44 Erez Dep., 62 TTABVUE at 7-14.
45 “Research and innovation: Seismic performance of various geocell earth-retention
systems,” http://geosyntheticsmagazine.com/articles/0809_f5_seismic.html, 55 TTABVUE at
24, by Dov Leshchinsky. This is an example where applicant has gotten a positive write-up
in a specialty magazine in the geosynthetics field. We note that although applicant
characterizes its “intensive research and development efforts” as having been recognized by
“independent” third parties, the record reveals a very close relationship between Prof. Dov
Leshchinsky and applicant’s Oded Erez. The record repeatedly suggests overlapping webs of
professional affiliation and financial support among Erez, his co-inventors, professors at the
Transportation Research Institute of the University of Kansas, and other professionals who
have worked extensively in this narrow field – with evidence of generous financial support
from PRS and hands-on technical advice from Mr. Erez. We also note that this excerpt from a
printed publication may not be taken for the truth of the matter asserted. On the other hand,
the article does assist in a general sense of understanding applicant’s product, and this piece of
basic information has not been objected to by opposer.
Opposition No. 91189669
18

stay on the cutting edge of innovative geosynthetic materials.46 The 2001 agreement
did not prevent PRS from developing its own geocells or selling its own geocells
under other brand names. When Mr. Erez decided that Reynolds/Presto’s “outdated”
GEOWEB product was unable to meet the more demanding applications he
envisioned, Erez testified that PRS began investing heavily (many years and
millions of dollars) in order to develop new manufacturing processes to produce
superior polymeric alloys for improved geocells having higher performance and
durability.47 According to one report, these included initially superior HDPE blends
and later novel polymeric alloys, having a lower thermal expansion coefficient and
higher tensile stiffness and strength compared to HDPE.48 These polymeric alloys
later became known as PRS’ NEOLOY49 materials. PRS’ ongoing research and
development efforts have been recognized with utility patents for these polymer
alloys and for geocells incorporating them – many filed with the United States
Patent and Trademark Office.50 Mr. Erez is the inventor on at least nine patents
(filed around 2007) for NEOLOY material and NEOWEB geocell products.

46 Erez Dep., 62 TTABVUE at 29-33.
47 Erez Dep., 61 TTABVUE at 199-200; 62 TTABVUE at 8-11, 34.
48 “UNPAVED ROADS: Tough cell,” http://www.roadsbridges.com/unpaved-roads-tough-cell,
58 TTABVUE 338 at 341, 67 TTABVUE 108 at 109. This research was funded, inter alia, by
the Transportation Research Institute of the University of Kansas and applicant, and
depended upon “great cooperation, guidance, support and/or assistance from the following
individuals: Prof. Dov Leshchinsky, Prof. Robert Parsons, Prof. Mustaque Hossain, Prof.
David White, Dr. Robert Honea, Mr. Oded Erez, Mr. Izhar Halahmi and Dr. Ofer Keif.
49 Registration No. 3653070 issued to PRS on July 14, 2009.
50 74 TTABVUE at 3 – 180. Oded Erez listed as an inventor or all of them, and most
also include the name of Izhar Halahmi,
Opposition No. 91189669
19

As early as 2005, PRS began designing its marketing campaign for its improved geocell
product. After collecting dozens of possible brand names from professional marketing
firms and internal management committee brainstorming sessions, Mr. Erez decided to
select the name “NEOWEB”51 because the prefix “neo,” meaning “new,” emphasizes the
novel, innovative aspect of PRS’ products, and so this mark “is shouting new,
different, something that was not known before. Better polymeric material, better
this and everything is new!”52 Mr. Erez said he specifically wanted to avoid any
confusion or association with opposer or other manufacturers using the GEO
prefix.53 After applicant and opposer terminated their business relationship in 2006,
PRS says it immediately took steps to proceed with only appropriate and limited use of the
GEOWEB trademark. While applicant had for years used the mark “Geoweb” on its
website, Erez claims they subsequently tried to remove all uses of the term
“Geoweb” from the website, and when they were later informed of a potential
remaining use, this use was immediately corrected. Further, any mention of
opposer’s mark in applicant’s promotional materials was to make it clear that PRS
had credentials and experience in the industry, and that PRS’ first generation geocell
products (HDPE NEOWEB) meet the minimum specifications of competing HDPE
products in the marketplace, including the GEOWEB products. However, Mr. Erez
points out that it used the phrase “formerly Geoweb” in the materials to stress that
PRS’ prior business relationship with opposer no longer existed. Rather, Erez argues

51 Erez Dep., 62 TTABVUE at 34-46.; and PRS Exhibits ## 38 & 39, 76 TTABVUE at 10-17
(confidential).
52 Erez Dep., 62 TTABVUE at 46.
53 Erez Dep., 62 TTABVUE at 114-128.
Opposition No. 91189669
20

that PRS takes every opportunity in oral presentations and in written materials to
claim the superiority of the NEOWEB products over HDPE products such as
GEOWEB geocells.
V. Summary of the position taken by Reynolds/Presto
Reynolds/Presto argues that when PRS made a decision to adopt its NEOWEB
trademark for use in conjunction with its cellular confinement products, PRS
decided merely to alter Reynolds/Presto GEOWEB marks by a single letter. Opposer
argues that without a doubt applicant intended to trade on the goodwill, expertise
and reputation associated with opposer's GEOWEB prior marks. Reynolds/Presto
points to applicant’s marketing materials that refer to its NEOWEB products as “the
next generation of,” “identical to,” and “formerly” the GEOWEB products. According
to opposer, applicant trumpets its NEOWEB products as the “new” GEOWEB
products. As proof of PRS’ illicit use of Reynolds/Presto’s GEOWEB mark, opposer
points to white-on-white uses in recent years of GEOWEB in metadata to draw
search engine traffic to PRS’ website.
VI. Evidence of “Geo-” prefix by opposer and by third parties
Applicant placed into the record copies of opposer’s other “Geo-” formative marks, as
follows:
GEOBLOCK for “plastic road base and ground support blocks for building
roads and preventing erosion of roads” in Int. Class 19;54
GEOSYSTEMS for “construction materials, namely plastic blocks, sheets and
webbing for use in construction of roadways, airstrips,

54 Registration No. 1335543 issued on May 14, 1985; renewed.
Opposition No. 91189669
21

driveways, railroads, trailways, parking lots, floors, patios,
paddocks, boat ramps, riverbank and shore stabilization,
bridge abutment stabilization, ditch stabilization, greenhouse
shelving, landscaping, hillside erosion control, building
foundation stabilization, ramp construction, dam spillways,
riverbank slope protection and revetment and dam systems
across rivers” in International Class 19;55
GEORUNNER for “construction materials, namely, plastic blocks, plastic
erosion control and protection mats for access walks, turf,
sand, and all terrain vehicle trails; plastic playground tiles;
and plastic construction supports for plantings and
secondary, less structural materials” in Int. Class 19;56
GEOBIN for “composting containers made of plastic” in Int. Class 20;57
GEOPATH for “construction materials, namely, plastic erosion control
and protection blocks, sheets, mats and webbing for ground
and soil stabilization, erosion prevention and turf protection”
in International Class 19;58
GEOTERRA for “construction materials, namely, plastic erosion control
and protection mats for road construction, ground
stabilization and erosion prevention” in Int. Class 19;59
GEOPAVE for “construction materials, namely, plastic erosion control
and protection blocks, sheets, and mats for use in
constructing roadways, airstrips, driveways, railroads,
railways, parking lots, floors, patios, paddocks, boat ramps,
greenhouse shelving, hillsides, ramps, and dam spillways,
and for ground and soil stabilization, erosion prevention, and
turf protection” in International Class 19;60

for “construction materials, namely, plastic erosion control
and protection blocks, sheets, mats and webbing for use in
constructing roadways, airstrips, driveways, railroads,
trailways, parking lots, floors, patios, paddocks, boat ramps,
greenhouse shelving, hillsides, ramps, and dam spillways,
and for ground and soil stabilization, erosion prevention, and
turf protection” in International Class 19;61

55 Registration No. 1444150 issued on June 23, 1987; renewed.
56 Registration No. 2774697 issued on October 21, 2003; Section 8 affidavit accepted and
Section 15 affidavit acknowledged.
57 Registration No. 3513774 issued on October 7, 2008.
58 Registration No. 3517718 issued on October 14, 2008.
59 Registration No. 3628394 issued on May 26, 2009.
60 Registration No. 3722991 issued on December 8, 2009.
61 Registration No. 3787779 issued on May 11, 2010.
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Opposition No. 91189669
23

64 65

Although none of the following appears to cover cellular confinement systems,
applicant placed into the record copies of the following five third-party registrations
(owned by four different entities) having “Geo-” formative marks, as follows:66
GEOLON for “erosion control fabrics-namely, textile fabrics used for soil
filtration and stabilization” in International Class 19;67
GEOCOIR for “open mesh fabrics for preventing soil erosion” in International
Class 19;68
GEOTECH for “erosion control matting, meshes and blankets for stabilizing soil
and vegetation” in International Class 19;69
GEOPLAST for “building materials not of metal, namely, materials for ceilings
and floors; building panels not of metal, namely, floor panels, ceiling
panels; facings not of metal for building; frameworks not of metal
for building; reinforcing materials not of metals for building;
surfacing not of metal for building, namely, non-metal roofing, non-
metal flooring; tiles not of metal for building; non-metal formworks
for foundations; non-metal formworks for ventilated foundations;
plastic formwork for columns; stay-in-place plastic formworks for
floors, walls, ceilings, slabs; stay-in-place plastic formworks for
columns; modular plastic formworks for floors, ceilings and slabs;
non-metal formworks for slabs; non-metal modular elements for
drainage basins, namely, plastic conduit for drainage; poured

64 http://www.geoproducts.org/, 58 TTABVUE at 202-09, 242-259 (NEO-003316-23, NEO-
003362-79).
65 http://www.hanesgeo.com/category.asp?csid=126, 58 TTABVUE 310-13 (NEO-003430-33).
66 We note that Registration Nos. 3787588 and 3903151 are owned by the same party, and
as registrations under Section 66(a) of the Trademark Act, 15 U.S.C. § 1141f(a), they are
based upon an International Registration, not use in commerce, as was also the case with
Registration No. 3418613.
67 Registration No. 1212454 issued on October 12, 1982; renewed.
68 Registration No. 1732090 issued on November 10, 1992; second renewal.
69 Registration No. 3632633 issued on June 2, 2009.
Opposition No. 91189669
24

concrete tanks; non-metal grid for drivable lawns, namely, non-
metal lattices; non-metal pre-vegetated system for roof gardens
composed of modular elements made of thermoformed plastic suited
to contain a layer of soil and plants; plastic tiles for sport surfaces;
non-metal grid for water-permeable flooring for areas dedicated to
hoofed animals, namely, non-metal lattices” in International Class
19;70
GEOSTRONG for “building materials, namely, erosion control matting, meshes
and blankets for stabilizing soil and vegetation” in International
Class 19;71
VII. Evidence of “-web-” formatives by third parties
In addition to the well-documented uses of opposer’s GEOWEB and AGRIWEB
marks, and applicant’s NEOWEB mark, applicant produced for the record evidence
of third-party uses of product trademarks in the field of cellular confinement
systems having “-web-” formatives (mostly suffixes) in the trademarks, trade
names, etc.:72
73 74

70 Registration No. 3883696 issued on November 30, 2010.
71 Registration No. 3925965 issued on March 1, 2011. We note that this registration is
owned by Pave Tech, the owner of the GEOTECH mark applicant listed above.
72 We have given no consideration to the following third-party properties referenced by
applicant: Application Serial No. 77770180 [DIAMONDWEB] abandoned October 2011;
Registration No. 0924065 [AEROWEB] expired 2002; and Registration No. 1443188
[PARAWEB] cancelled December 1993.
73 http://www.dx2.net/1~dx2main.html and http://www.sitesupply.info/miraweb.htm, 58
TTABVUE at 210-20, 294-309 (NEO-003324-34, NEO-003414-29). Applicant also produced
an expired registration for the mark MIRAWEB for cellular confinement systems
(Registration No. 2582787) cancelled under Section 8 of the Act in 2009, to which we have
given no consideration.
Opposition No. 91189669
25

75 76
77 78
79

74 http://www.fiberweb.com/, http://www.typargeotextiles.com/ and
http://www.geosynthetica.net/ 55 TTABVUE at 110-113 (NEO-001385-88); and
http://www.typargeotextiles.com/, Typar Geosynthetics from Fiberweb, 58 TTABVUE at 62-
63, 74, 135 (NEO-002764-65, NEO-002776, NEO-002837).
75 http://www.terrafixgeo.com/assets/pdf/terraweb.pdf , 58 TTABVUE at 142 (NEO-002844).
terrafix Geosynthetics Inc. is a leading distributor and manufacturer of geosynthetic
products headquartered in Toronto, Canada.
76 http://www.tenaxus.com/en/geosynthetics/products/geocell-tenweb.htm , 55 TTABVUE at
61 (NEO-001322), and 58 TTABVUE at 153-63, 229-35 (NEO-003267-77, NEO-003343-49).
77 The SorbWeb™ Plus system is a geocomposite material designed for the containment of
hydrocarbons. www.sorbwebplus.com, 58 TTABVUE at 45-48 (NEO-002747-50). Applicant
also submitted a copy of Registration No. 3014800 [SorbWeb] issued to a Canadian company
under Section 44(e) of the Act on November 15, 2005. However, as of July 2011, the Section
8 affidavit was accepted and the Section 15 affidavit was acknowledged.
78 55 TTABVUE at 109 (NEO-001384), and 58 TTABVUE at 314-37 (NEO-003434-57).
79 http://www.geogrid.com/products-upper-left-menu-93/strata-web-introduction.html as
accessed by applicant on January 31, 2012, 58 TTABVUE at 267 (NEO-003387). Although
applicant referenced an application abandoned in 1992 for the mark STRATAWEB for
plastic geosynthetic products (Application No. 74127614), Application Serial No. 85089482
issued on February 21, 2012, as Registration No. 4102960 [StrataWeb] for “geotextiles for
use in load support, slope and channel erosion protection and earth stabilization and
Opposition No. 91189669
26

VIII. Standing and Priority
Opposer’s two pleaded registrations for its GEOWEB marks have been made of
record, they are clearly owned by opposer, and are in full force and effect. Because
opposer has made these pleaded registrations properly of record, opposer has
established its standing to oppose registration of applicant’s mark and its priority is
not in issue. King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ
108 (CCPA 1974). In addition to its pleaded registrations, the record demonstrates
widespread common law usage of the GEOWEB marks in connection with cellular
confinement systems from a date that long precedes any date that applicant can
claim for adoption and use of its NEOWEB mark. In fact, applicant does not dispute
opposer’s priority.
IX. Likelihood of Confusion
Our determination under Trademark Act Section 2(d) is based on an analysis of
the probative facts in evidence that are relevant to the factors bearing on a
likelihood of confusion. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973); see also Palm Bay Imp., Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and
In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). In
considering the evidence of record on these factors, we keep in mind that “[t]he

retention” in International Class 19. See also 58 TTABVUE at 236-240, 267-293 (NEO-
003350-55, NEO-003387-NEO-003413).
Opposition No. 91189669
27

fundamental inquiry mandated by Section 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods and differences in the
marks.” Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ
24, 29 (CCPA 1976); see also In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209
(TTAB 1999).
A. Relationship of the Goods/Trade Channels/Class of Customers
We first turn our attention to an evaluation of the relationship of the goods
described in the application and registrations. It is apparent that the parties to this
litigation were contractual partners as licensor/licensee with a decade of common
history, before becoming competitors. Although applicant repeatedly points out the
superiority of its products, for our purposes, we consider the involved goods herein
to be legally identical. This is true in comparing the goods as identified in the
pleaded registrations and the involved application, and as we understand both
opposer’s and applicant’s respective common law uses.
Considering the channels of trade and classes of purchasers, because the goods
are identical and there are no limitations as to channels of trade or classes of
purchasers in either the application or opposer’s registration, we must presume that
applicant’s and opposer’s goods will be sold in the same channels of trade and will
be bought by the same classes of purchasers. In re Viterra Inc., 671 F.3d 1358, 101
USPQ2d 1905, 1908 (Fed. Cir. 2012). See also Hewlett-Packard Co. v. Packard Press
Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); Canadian Imperial Bank v.
Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987); Genesco Inc. v.
Opposition No. 91189669
28

Martz, 66 USPQ2d 1260, 1268 (TTAB 2003) and In re Smith and Mehaffey, 31
USPQ2d 1531 (TTAB 1994). Moreover, the record shows that applicant and opposer
are competitors for the same customers and contracts, and their respective goods do
indeed move through the same channels of trade to the same classes of customers.
Accordingly, these several du Pont factors strongly favor a finding of likelihood of
confusion.
B. Renown of opposer’s GEOWEB marks
The record shows that opposer was most likely the first company to offer
commercially cellular confinement systems, and continues to be a prominent player
in this industry after more than thirty years. Based on this entire record, there is no
question but that opposer’s GEOWEB marks have served as distinctive source
indicators for its cellular confinement products for more than three decades. Given
the confidential nature of the parties’ respective financial data, we cannot discuss
specific sales figures. However, in evaluating this critical du Pont factor, we find no
clear context for the numbers and nothing about the parties’ respective market
shares in recent years. Accordingly, we find that opposer has failed to make a
persuasive case that its GEOWEB marks have achieved the level of renown
required when one compares the evidence in this record with the plaintiff’s
showings in a variety of precedential cases dealing with fame. See Shen
Manufacturing Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73 USPQ2d 1350 (Fed. Cir.
2004); General Mills v. Health Valley Foods, 24 USPQ2d 1270 (TTAB 1992);
Kimberly-Clark Corp. v. H. Douglas Enter., Ltd., 774 F.2d 1144, 227 USPQ 541 (Fed.
Opposition No. 91189669
29

Cir. 1985); and Specialty Brands Inc. v. Coffee Bean Distribs., Inc., 748 F.2d 669, 674-
75, 223 USPQ 1281, 1284 (Fed. Cir. 1984). Renown and strength are measured in
degrees, and while this evidence falls short of demonstrating fame sufficient to play
a “dominant” role in the process of balancing the du Pont factors, it does confirm
GEOWEB as a well-established brand in this field sufficient to accord it a slightly
wider scope of protection, despite any possible conceptual weakness.
C. Inherent strength of the GEOWEB marks in the cited
registrations
The sixth du Pont factor requires consideration of any evidence pertaining to
“the number and nature of similar marks in use on similar goods.” Applicant has
shown that both components of the literal portion of opposer’s marks – the “GEO-”
prefix and the “-WEB” suffix – are used by third-party competitors within this field.
However, no third party has been shown to have adopted or used a mark as similar
to opposer’s marks (i.e., having the combination of these terms) as is applicant’s
applied-for mark. Furthermore, absent a counterclaim to cancel these registrations,
applicant cannot collaterally attack the validity of these registrations. Whatever
arguable weaknesses may have been inherent in opposer’s selection in 1984 of the
term “Geoweb” for geocells in the form of plastic “webbing,” under Section 7 of the
Lanham Act, and in keeping with more than thirty years of usage in this field, we
accord the pleaded marks the scope of protection to which they are rightly entitled.

Opposition No. 91189669
30

D. The Marks
Applicant has applied to register the mark NEOWEB. The registered mark is
GEOWEB. In comparing the marks, we must consider the marks in their entireties
as to appearance, sound, connotation and commercial impression, to determine the
similarity or dissimilarity between them. Palm Bay, 73 USPQ2d at 1692. The test,
under the first du Pont factor, is not whether the marks can be distinguished when
subjected to a side-by-side comparison, but rather whether the marks are
sufficiently similar in terms of their overall commercial impression that confusion
as to the source of the goods offered under the respective marks is likely to result.
Because the similarity or dissimilarity of the marks is determined based on the
marks in their entireties, the analysis cannot be predicated on dissecting the marks
into their various components; that is, the decision must be based on the entire
marks, not just part of the marks. In re National Data Corp., 753 F.2d 1056, 224
USPQ 749, 751 (Fed. Cir. 1985). On the other hand, different features may be
analyzed to determine whether the marks are similar. Price Candy Company v.
Gold Medal Candy Corporation, 220 F.2d 759, 105 USPQ 266, 268 (CCPA 1955). In
fact, there is nothing improper in stating that, for rational reasons, more or less
weight has been given to a particular feature of a mark, provided the ultimate
conclusion rests on a consideration of the marks in their entireties. In re National
Data Corp., 224 USPQ at 751.
As to appearance, these two marks are identical except for the first letter
(GEOWEB versus NEOWEB). They are also strikingly similar in sound. As to
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connotation, the prefix “Geo-” has the suggestion of “earth,” while “Neo-” has a
different meaning, often that of “new” or “revised.” While applicant suggests that
this distinction should be the end of this inquiry, we agree with opposer that
prospective customers might well view “Neo-” as an intentional play on the word
“Geo” – the more so inasmuch as applicant consistently touts its NEOWEB product
as a later generation of products that improves significantly upon GEOWEB
products. This combination of identical pronunciations and structure, and an almost
intuitive connection to the earlier product is significant in this case, works to create
a close association between the overall commercial impressions of the two marks
used in a marketplace of legally identical, competing products. Thus, we find the
marks to very similar in appearance, sound, connotation and commercial
impression, and this du Pont factor weighs in favor of finding a likelihood of
confusion.
E. Sophistication of customer/expense/care in purchasing
decisions
The engineering challenges involving porous pavement, load support, slope
protection and earth retention are necessarily enormous jobs. Hence, a single
project is incredibly expensive given the total volume of cellular confinement
materials and the required commitment of construction labor. Therefore, we have
no doubt but that these products, as used in specific projects, involve expensive
applications. The purchasers will inevitably involve engineers who should know in
detail the specifications of complex products. A contract between a geosynthetics
manufacturer like Reynolds/Presto or PRS, and an organization like CalTrans, for
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example, will be entered into after much deliberation.80 Hence, we find that care
will be exercised on the part of sophisticated purchasers. This du Pont factor weighs
in favor of a finding of no likelihood of confusion.
F. Accusation by both parties of the other’s bad faith
Inasmuch as both parties have spent a great deal of time and money during this
litigation trying to impugn the motivations and behaviors of each other, we feel
compelled to discuss briefly such accusations.
With regard to the alleged bad faith by opposer, we note that the only relevance
such actions would have relates to a possible defense of unclean hands, which was
not pleaded by applicant. Moreover, we also find that the record does not establish
actions amounting to unclean hands. As noted earlier, Mr. Erez accuses opposer of
threatening to sue a number of applicant’s potential distributors for infringing an
expired patent that had been owned by the U.S. Army. The record contains
confidential documents and testimony that Reynolds/Presto personnel may well
have been aggressive in using opposer’s trademarks, patents, copyrights, etc., in
defending its share of the international market from its new competitor beginning
in 2007. It seems possible that at least one potential U.S. distributor may well have
backed out of preliminary discussions with PRS based upon calls from at least one
of opposer’s principals. However, we cannot be sure this goes beyond the rough-and-
tumble of fierce competitors having a duty to protect their intellectual property
rights. Certainly there is no proof in this record that opposer committed any

80 58 TTABVUE at 197.
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wrongdoing with its product markings or by issuing verbal threats of patent
infringement based upon an expired patent.
During his testimony in this proceeding, Mr. Erez points to requests for
proposals from various U.S. municipalities or agencies that specified GEOWEB by
its exact product specifications, if not its brand name. He goes so far as to accuse
opposer of possible bribes and corruption in the way these specific transactions were
handled. Again, the record contains no proof that opposer committed any
wrongdoing in its dealings with these specific projects in Florida and Hawaii.
Opposer’s accusations of applicant’s bad faith or intent to confuse fall under the
thirteenth du Pont factor. L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1442 (TTAB
2012). Specifically, opposer points to a single example in recent years of applicant’s
website having a white-on-white usage of GEOWEB in its metatags to help draw
search traffic to its website.81 Upon notice, applicant corrected it immediately, and
given the years of partnership between these parties, it is certainly within the
realm of possibility that it was an innocent mistake hidden within thousands of
lines of source codes.
In addition, opposer cites to a pattern among applicant’s written materials (in
black-on-white) where it alleges applicant was clearly trying to trade on the good
will of opposer’s GEOWEB trademark. Indeed, applicant repeatedly touts its ten
years of experience in the industry – manufacturing, selling and distributing

81 Almonte dep., 86 TTABVUE at 21-47; Exhibits 61 and 62.
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opposer’s branded GEOWEB products internationally. While opposer treats these as
evidence of malevolence, we disagree.
When applicant began to market its own new geocell products, it is not
surprising that it would lead with ten-years of manufacturing expertise in the field,
and as a way of showing its bona fides as a source of cellular confinement systems.
Applicant argues that wherever the word GEOWEB appears in its ads, applicant
immediately proceeds to tout the alleged improvements in its “new”/”NEO-“
products as a significant differentiating factor from opposer’s “outdated” product
that it formerly manufactured and distributed as Presto’s licensee. While some of
applicant’s marketing materials may raise an eyebrow, this is not sufficient to
support a finding of intent to confuse. Starbucks Corp. v. Wolfe’s Borough Coffee,
Inc., 588 F.3d 97, 92 USPQ2d 1769, 1782 (2d Cir. 2009).
G. Conclusion: Balancing the Likelihood of Confusion factors
The goods, the channels of trade and classes of consumers herein are identical.
Even if one concedes some inherent conceptual weakness in the trademark when
opposer first adopted its mark in 1984, it has nonetheless become a widely-known
and established brand, and the parties’ marks involved herein are quite similar in
appearance, sound and overall commercial impression. These factors, going in favor
of a finding of likelihood of confusion, outweigh that which goes in applicant’s favor,
namely the care with which these goods will be purchased by fairly sophisticated
professionals, and hence, we find that confusion is likely between opposer’s
GEOWEB marks and applicant’s NEOWEB mark. To the extent we retain any doubt
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as to whether there is a likelihood of confusion, we resolve such doubt, as we must,
in favor of opposer, the prior registrant. In re Shell Oil Co., 992 F.2d 1204, 26
USPQ2d 1687, 1691 (Fed. Cir. 1993).
X. Dilution
Having found for opposer on likelihood of confusion, we find it unnecessary to
analyze in depth the alternative issue of dilution. However, fame for dilution
purposes requires an even more stringent showing than fame for likelihood of confusion
purposes. Hence, where opposer has failed to demonstrate fame for purposes of
likelihood of confusion, ipso facto, there is certainly an inadequate showing of fame
for purposes of dilution.
Decision: The opposition herein is sustained on the basis of likelihood of
confusion, and the registration of applicant’s mark is hereby denied.