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

Trademark Trial and Appeal BoardSep 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. Opposition N App “GEO-” from the As s geosynt Industr magazin include the Geo and the trade na 62 Regist 63 http://w o. 9118966 licant arg prefix (for suffix of e een above hetics indu y magazi e, Geofab GeoAmeri synthetics ASTM G mes of oth ration No. 3 ww.presto 9 fo a co tr g a tu ues from example, ach mark , the recor stry, such ne titles rics Journ cas, Geo-F Institute ( eosynthe ers in the 787780 iss geo.com/, 5 r “constru nd protecti nstructing ailways, pa reenhouse nd for grou rf protectio the recor with the within thi d is replet as geocel include G al, and Ge rontiers, a GSI), the G tics Techn field: ued on May 5 TTABVU 22 ction mater on blocks, roadway rking lots, shelving, h nd and soil n” in Inter d that op same sha s family of e with des ls, geogrid eo-Strata osynthetic nd EuroG eosynthe ical Com 11, 2010. E at 121-22 ials, name sheets, ma s, airstrip floors, pat illsides, ra stabilizatio national Cl poser con de of blue marks: criptions s, geotext magazin s magazin eo5. Indu tic Mater mittee D3 (NEO-0017 ly, plastic ts and web s, drivew ios, paddoc mps, and n, erosion ass 19;62 sistently ) in order of product iles, geom e, Geosyn e. Industr stry associ ials Assoc 5. It is al 25-26). erosion co bing for us ays, railro ks, boat ra dam spillw prevention highlights to separa lines from embranes, thetics W y trade sh ations inc iation (GM so used in ntrol e in ads, mps, ays, , and the te it 63 the etc. orld ows lude A), the 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 Opposition No. 91189669 31 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 Opposition No. 91189669 32 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. Opposition No. 91189669 33 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. Opposition No. 91189669 34 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 Opposition No. 91189669 35 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.