North Atlantic Operating Co., Inc. v. DRL Enterprises, Inc.
| Decision Date | 01 July 2016 |
| Docket Number | Cancellation 92042927,92042928,92043031 |
| Court | Trademark Trial and Appeal Board |
| Parties | North Atlantic Operating Company, Inc., North Atlantic Trading Company, Inc., and National Tobacco Company v. DRL Enterprises, Inc. Opposition Nos. 91158276, 91158552, 91158568, 91158696, 91158816, 91158978, 91158980, 91158981, 91159360 |
This Opinion is not a Precedent of the TTAB
Hearing: June 28, 2016
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.
Before Quinn, Bergsman and Lykos, Administrative Trademark Judges.
Bergsman, Administrative Trademark Judge.
DRL Enterprises, Inc. (hereinafter Defendant) has registered the marks listed below for cigarette rolhng papers, in Class 34:[1]
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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;
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2. Serial No. 76296931 for the mark 1.25 (typed drawing form);
3. Serial No. 76296926 for the mark 2.0 (typed drawing form);
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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]
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]
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 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.
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 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.
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