This Opinion is a
`Precedent of the TTAB
`
`
`
`
`
`
`
`
`Mailed: December 13, 2017
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`Hearing: January 24, 2017
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____
`
`Trademark Trial and Appeal Board
`_____
`
`Kohler Co.
`v.
`Honda Giken Kogyo K.K.
`_____
`
` Opposition No. 91200146
`_____
`
`Kenneth R. Nowakowski of Husch Blackwell LLP for Kohler Co.
`
`Vinita Ferrera of Wilmer Cutler Pickering Hale and Dorr LLP for Honda Giken Kogyo
`K.K.
`
`_____
`
`Before Adlin, Heasley, and Larkin,
`Administrative Trademark Judges.
`
`
`Opinion by Larkin, Administrative Trademark Judge:
`Table of Contents
`
`Introduction
`I. Prosecution History, Pleadings, and Evidentiary Record
` A. Prosecution History
` B. Pleadings
` C. Evidentiary Record
` 1. Opposer’s Evidence
` a. Trial Testimony
` b. Notices of Reliance
` c. Witness Declarations
`
`

`

`Opposition No. 91200146
`
` 2. Applicant’s Evidence
` a. Trial Testimony
` b. Notices of Reliance
`II. Evidentiary Objections
` A. Applicant’s Objections to Admissibility of Japanese Utility Model Applications
` B. Applicant’s Objections to Admissibility of Foreign Trademark Documents
` C. Opposer’s Objections to Admissibility of Court Documents From Prior Civil
` Infringement Litigation Between Applicant or American Honda, and Third
` Parties
` D. Daubert Motions
` 1. Mieritz Testimony Regarding Comparative Engine Performance, Cost, and
`Quality
` 2. Mieritz Testimony Regarding Industry Recognition of GX Engine
` 3. Reisel Testimony
` E. Applicant’s Renewed Motion to Exclude Whitmore Testimony
`III. General Factual Background Regarding the GX Engine and Applicant’s Claimed
` Mark
`A. General Purpose Utility Engines
`B. The Development of the GX Engine
`C. Redesign of the GX Engine
`IV. Standing
`V. Defining the Claimed Mark
`VI. Opposer’s Functionality Claim
`A. The Law of Functionality
`B. The Parties’ Arguments Regarding Functionality
`C. The Components and Overall Design of the GX Engine
`1. The Fan Cover
` 2. The Fuel Tank
` 3. The Carburetor Cover
` 4. The Air Cleaner Cover
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`Opposition No. 91200146
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`
` 5. The Claimed “Configuration of an Engine With an Overall Cubic Design”
` 6. The Applied-For Mark in Its Entirety
`D. The Morton-Norwich Categories of Evidence
`1. The Existence of a Utility Patent Disclosing the Utilitarian Advantages of the
`Design
`a. United States Utility Patents
`b. Japanese Model Applications
`c. United States Design Patents
` 2. Advertising Touting the Utilitarian Advantages of the Design
` 3. Competitive Alternatives
` 4. Simple and/or Inexpensive Methods of Manufacture
`VII. Opposer’s Claim of Lack of Acquired Distinctiveness
`A. Opposer’s Prima Facie Case
`B. Applicant’s Evidence of Acquired Distinctiveness
` 1. Direct Evidence
` a. Testimony
` b. Surveys
` 2. Circumstantial Evidence
` a. Length and Exclusivity of Use
` b. Sales and Advertising
` c. Proof of Intentional Copying
`Decision
`Appendix
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`

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`Opposition No. 91200146
`
`Introduction
`
`Honda Giken Kogyo K.K. (“Applicant” or “Honda”) seeks registration on the
`
`Principal Register under Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f), of the
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`product configuration mark shown below for “engines for use in construction,
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`maintenance and power equipment,” in International Class 7:1
`
`The mark is described in the application as follows:
`
`
`
`The mark consists of the configuration of an engine with
`an overall cubic design, with a slanted fan cover, the fuel
`tank located above the fan cover on the right, and the air
`cleaner located to the left of the fuel tank. The air cleaner
`cover features a cube shape with beveled top outside edges,
`and a belt-like area on the lower portion of the cover
`encompassing the entire circumference and the top of the
`belt-like area is aligned with a rib of the fuel tank. The
`carburetor cover features four ribs along its outside edge
`and a receded area where control levers are located. The
`
`
`1 Application Serial No. 78924545 was filed on July 7, 2006 under Section 1(a) of the
`Trademark Act, 15 U.S.C. § 1051(a), on the basis of Applicant’s claim of first use in October
`1983 and first use in commerce in December 1984.
`
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`Opposition No. 91200146
`
`
`fuel tank is roughly rectangular. The engine features a
`beveling that runs around its top circumference.
`Color is not claimed as a feature of the mark. Applicant has disclaimed the exclusive
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`right to use “the design mark’s purely functional components, namely levers, bolts,
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`nuts and caps.”
`
`Three companies, Cummins Inc. (“Cummins”), Briggs & Stratton Corporation
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`(“Briggs & Stratton”), and Kohler Company (“Kohler” or “Opposer”), filed separate
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`oppositions to registration of Applicant’s claimed mark.2 The Cummins opposition
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`was dismissed and the Briggs & Stratton and Kohler oppositions were consolidated
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`on February 9, 2012, with the Briggs & Stratton opposition designated as the “parent”
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`case. Following the parties’ submission of evidence and briefs, and shortly before the
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`scheduled oral hearing, Briggs & Stratton and Applicant settled and stipulated to
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`dismissal of Opposition No. 91200832 with prejudice. 226 TTABVUE 2.3 The Board
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`dismissed that opposition. 228 TTABVUE.
`
`Kohler’s Opposition No. 91200146 remains for decision. The case is fully briefed
`
`and the parties appeared at an oral hearing before the panel on January 24, 2017.
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`We sustain the opposition on two of the four pleaded claims and do not reach the
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`others.4
`
`
`2 Cummins filed Opposition No. 91187217, Kohler filed Opposition No. 91200146, and Briggs
`& Stratton filed Opposition No. 91200832.
`3 Because the entire trial record is in the file of the now-dismissed Opposition No. 91200832,
`citations in this opinion are to the TTABVUE docket in that case. References in this opinion
`to “Opposer” may include Briggs & Stratton as well as Kohler, as the context requires.
`4 “Like the federal courts, the Board has generally used its discretion to decide only those
`claims necessary to enter judgment and dispose of the case. . . [T]he Board’s determination
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`Opposition No. 91200146
`
`I. Prosecution History, Pleadings, and Evidentiary Record
`
`A. Prosecution History
`
`The prosecution history of the opposed application is lengthy. We describe it below
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`in some detail because it bears on several issues in this opposition and because
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`Applicant’s evidence of acquired distinctiveness made of record during prosecution in
`
`support of its claim to registration under Section 2(f) of the Trademark Act, 15 U.S.C.
`
`§ 1052(f), is automatically of record in this proceeding, subject to any objections.
`
`Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b). See also AS Holdings, Inc. v. H & C
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`Milcor, Inc., 107 USPQ2d 1829, 1831 (TTAB 2013) (citing Cold War Museum, Inc. v.
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`Cold War Air Museum, Inc., 586 F.3d 1352, 92 USPQ2d 1626, 1628-29 (Fed. Cir.
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`2009)).
`
`After Applicant filed its application, the Examining Attorney issued a first Office
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`Action refusing registration on the ground that Applicant’s claimed mark is a non-
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`distinctive configuration of the goods that does not function as a mark under Sections
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`1, 2, and 45 of the Trademark Act, 15 U.S.C. §§ 1051, 1052, 1127.
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`Applicant responded by amending its application to seek registration under
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`Section 2(f) of the Trademark Act, and made of record: (1) a declaration of Scott
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`Conner, the Assistant Vice President of Applicant’s subsidiary American Honda
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`Motor Company, Inc. (“American Honda”), attesting to the sales of “GX engines”
`
`
`of registrability does not require, in every instance, decision on every pleaded claim.”
`Multisorb Tech., Inc. v. Pactiv Corp., 109 USPQ2d 1170, 1171 (TTAB 2013).
`
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`Opposition No. 91200146
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`bearing the design shown in the application in the United States since 1984,5 setting
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`forth revenue and advertising figures for GX Engines and for products incorporating
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`GX Engines, for periods between 2000-2006, and attaching brochures and
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`photographs showing the design; and (2) 16 “Distributor Statement[s]” from
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`distributors of the GX Engines.
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`The application was approved for publication, but the Examining Attorney then
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`withdrew the application from publication and issued a second Office Action
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`requiring Applicant to submit a description of the mark “to clarify what the applicant
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`seeks to register.” Applicant responded: “The mark consists of the configuration of an
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`engine. The ‘phantom’ lining shown in the drawing is not part of the mark and serves
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`only to indicate position.” Applicant submitted an amended drawing of its mark in
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`which a portion was shown in dotted lines. The application was again approved for
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`publication and subsequently published for opposition on March 25, 2008.
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`Four months later, the Commissioner for Trademarks notified the Examining
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`Attorney of a Letter of Protest claiming that the matter presented for registration
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`appeared to be functional, and that the Letter of Protest had been accepted by the
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`Commissioner, who had determined that a clear error had been made in allowing
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`publication. The Commissioner restored jurisdiction over the application to the
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`Examining Attorney to take appropriate action on the Letter of Protest.
`
`
`5 The parties have referred to this engine as the “GX Engine” in their briefs and we will do
`so as well except where otherwise indicated.
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`Opposition No. 91200146
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`The Examining Attorney issued a third Office Action now refusing registration of
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`Applicant’s claimed mark under Section 2(e)(5) of the Trademark Act, 15 U.S.C.
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`§ 1052(e)(5), because it was a functional design for the goods. The Examining
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`Attorney also requested that Applicant provide certain
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`information and
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`documentation regarding the claimed mark.
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`Applicant responded to the third Office Action by submitting declarations
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`disputing the functionality of the GX Engine.6 The Examining Attorney issued a
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`fourth Office Action withdrawing the functionality refusal and requesting that
`
`Applicant provide a more detailed description of its mark. Applicant provided the
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`following description of its mark in its response: “The mark consists of the
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`configuration of an engine with a slanted fan cover, the fuel tank located above the
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`fan cover on the right, and the air cleaner located above the fan cover on the left. The
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`broken lining in the drawing is not part of the mark and serves only to indicate
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`position.” The application was again approved for publication.
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`The application was again withdrawn from publication, however, and remanded
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`to the Examining Attorney.7 The Examining Attorney issued a fifth Office Action
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`reinstating the functionality refusal, rejecting Applicant’s evidence, and referring to
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`three of Applicant’s patents that had previously been made of record. The Examining
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`Attorney noted that the mark might be registrable if Applicant limited its claimed
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`mark to the following elements: “The overall ‘cubic’ look of the engine; the shape of
`
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`6 Statements made in these declarations “are not testimony on behalf of [Applicant] . . .”
`Trademark Rule 2.122(b)(2), 37 C.F.R. § 2.122(b)(2).
`7 February 5, 2010 Office Action at 1.
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`Opposition No. 91200146
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`the air cleaner housing; the design of the carburetor cover; the shape and size of the
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`fuel tank; the combined and complementary shape of the fuel tank and air cleaner
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`housing; and the positioning and orientation of the major engine components.”8 The
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`Examining Attorney requested a new description of the claimed mark and an
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`amended drawing.
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`Applicant responded by submitting a new description of its claimed mark in the
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`form currently in the opposed application. Applicant declined to submit a new
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`drawing on the ground that while “there were functional portions of the design, the
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`shape and position of such portions constitutes part of the design.”9 The Examining
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`Attorney issued a sixth Office Action accepting Applicant’s amended description of its
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`mark, but making final the requirement for an amended drawing.
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`Applicant filed a Request for Reconsideration requesting that the Examining
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`Attorney enter a statement in the application that the “design mark does not include
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`the purely functional components, namely, levers, bolts, nuts, and caps.” The
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`statement was entered and the application again was published for opposition.
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`B. Pleadings
`
`Opposer filed a Second Amended Notice of Opposition on February 2, 2013.10 It
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`alleges that Applicant’s claimed mark is primarily functional, under Section 2(e)(5)
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`of the Trademark Act, 15 U.S.C. § 1052(e)(5);11 has not acquired distinctiveness under
`
`
`8 February 5, 2010 Office Action at 1.
`9 August 4, 2010 Response to Office Action at 1.
`10 46 TTABVUE.
`11 ¶¶ 6, 8-10.
`
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`Opposition No. 91200146
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`Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f);12 is generic;13 and has been
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`abandoned.14 Applicant answered,15 denying Opposer’s material allegations.
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`C. Evidentiary Record
`
`The evidentiary record is voluminous, comprising more than 5,000 pages of
`
`testimony, exhibits, and other documentary evidence. It consists of the pleadings
`
`discussed above, the file of the involved application, by operation of Trademark Rule
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`2.122(b)(1), 37 C.F.R. § 2.122(b)(1), and various types of evidence made of record by
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`the parties during their respective testimony and rebuttal periods, or otherwise by
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`agreement of the parties.
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`Most of the parties’ evidentiary submissions, as well as their briefs, have been
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`filed in both a redacted (public) version, and an unredacted (confidential) version
`
`under seal, because they contain material that the parties designated as
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`“Confidential” or “Attorneys’ Eyes Only” under a stipulated Confidentiality and
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`Protective Order filed by the parties and approved by the Board.16 Under the terms
`
`
`12 ¶¶ 4-5, 7. Opposer’s pleaded claim is that Applicant’s mark is not distinctive under Section
`2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1). To conform to the claim pursued by
`Opposer and defended by Applicant at trial, and given Applicant’s admission during
`prosecution that its applied-for mark is not inherently distinctive, but has acquired
`distinctiveness, we construe this claim as pleading that Applicant’s mark has not acquired
`distinctiveness under Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f).
`13 ¶¶ 4-5, 7, 15.
`14 ¶¶ 11-14.
`15 89 TTABVUE.
`16 8/9 TTABVUE. In our description of the record below, the public and confidential versions
`of filings are identified by two citations to the TTABVUE file (e.g., 162/163 TTABVUE), with
`the first number identifying the public version of a filing and the second and any additional
`numbers indicating the confidential version(s). In some instances noted below, there is no
`publicly accessible version of a filing, or there is an incomplete one (e.g., exhibits without
`accompanying testimony). Except where otherwise indicated, citations in this opinion to
`- 10 -
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`Opposition No. 91200146
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`of the Protective Order, materials designated as Confidential are “to be shielded by
`
`the Board from public access.” 8 TTABVUE 6.
`
`This obligation presents a significant challenge in discussing the evidence in a
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`publicly accessible opinion. The difficulty is compounded by the extensive and, in
`
`many instances, indiscriminate, designation of entire deposition transcripts and
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`other materials as Confidential without any apparent basis for the designation, as
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`perhaps revealed by the fact that some testimony and materials designated as
`
`Confidential have been discussed, quoted, or cited by one or both of the parties in
`
`their publicly accessible briefs.17
`
`Confidentiality designations do not provide absolute immunity from the public
`
`disclosure of materials so designated. See Noble House Home Furnishings, LLC v.
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`Floorco Enters., LLC, 118 USPQ2d 1413, 1416 n.21 (TTAB 2016) (the Board must be
`
`able to discuss the record evidence in its opinions unless there is an overriding need
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`for confidentiality). Cf. Trademark Rule 2.116(g), 37 C.F.R. § 2.116(g) (“The Board
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`may treat as not confidential that material which cannot reasonably be considered
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`confidential, notwithstanding a designation as such by a party.”). Accordingly, while
`
`
`specific pages in the record and in the parties’ briefs are to the public versions of the filings,
`and citations to testimony are to the internal pages and lines of the pertinent transcript (e.g.,
`Tr. 131:18-132:6), with identification of the witness if required, rather than to the
`corresponding TTABVUE pages. We will use the term “Confidential” to describe the parties’
`designations of testimony and documents as either “Confidential” or “Attorneys’ Eyes Only.”
`17 Where, in any publicly accessible filing, a party has cited, quoted from, or described,
`without redaction, testimony or documents designated by it as Confidential, we have treated
`this as a waiver of its claim of confidentiality. Where, in any publicly accessible filing, a party
`has cited, quoted from, or described, without redaction, testimony or documents designated
`by its adversary as Confidential, and the adversary has not subsequently objected, we have
`also treated this as a waiver of the adversary’s claim of confidentiality as to the content and
`subject matter of the pertinent materials.
`
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`Opposition No. 91200146
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`we will give appropriate consideration to the parties’ designations of evidence as
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`Confidential, we will not be bound by inappropriate designations and “in this opinion,
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`we will treat only testimony and evidence that is truly confidential or commercially
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`sensitive as such.” Noble House, 118 USPQ2d at 1416 n.21.18
`
`1. Opposer’s Evidence
`
`a. Trial Testimony:
`
`● Testimony deposition of Dr. John Reisel, an expert witness on functionality,
`
`and exhibits thereto (164/165 TTABVUE);
`
`● Testimony deposition of Jeff Whitmore, a Briggs & Stratton engineer, and
`
`exhibits thereto (166/171 TTABVUE);
`
`● Testimony deposition of Cameron Litt, a Kohler employee, and exhibits thereto
`
`(162/163 TTABVUE); and19
`
`● Testimony and rebuttal testimony depositions of Hal Poret, a marketing expert
`
`witness who conducted a survey, and exhibits thereto (199 TTABVUE);
`
`
`
`
`18 Where necessary to protect such evidence from disclosure, we have summarized it in
`general terms.
`19 Opposer did not file a redacted version of the transcript of Mr. Litt’s testimony deposition.
`Opposer also did not file redacted versions of Applicant’s responses to certain requests for
`admission, and the deposition excerpts referenced in Opposer’s Second, Third, Fourth, and
`Fifth Notices of Reliance. Applicant did not file redacted versions of the deposition transcripts
`of Motohiro Fujita and Scott Conner, the discovery depositions of Peter Hotz and Mr. Fujita,
`the prior testimony of Kevin Hoag, and Briggs & Stratton’s responses to certain requests for
`admission. “[B]ecause it is the general policy of the Board that all papers in a proceeding be
`public, Opposer[] and Applicant are allowed until thirty days from the date of this decision
`in which to submit redacted versions of these [materials], failing which they will be treated
`as part of the public record.” Ayoub, Inc. v. ACS Ayoub Carpet Serv., 118 USPQ2d 1392, 1398
`n.39 (TTAB 2016).
`
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`Opposition No. 91200146
`
`
`b. Notices of Reliance:
`
`● First Notice of Reliance on Applicant’s admissions in response to Briggs &
`
`Stratton’s First, Second, Fourth, Fifth, and Sixth Sets of Requests for Admission
`
`(Requests for Admission Nos. 1-353 and exhibits thereto), Applicant’s Supplemental
`
`Responses to Briggs & Stratton’s Fifth Set of Requests for Production of Documents,
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`and a copy of a December 16, 2005 Decision of the Second Board of Appeal of the
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`Office for Harmonization in the Internal Market (Trade Marks and Designs) on an
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`application filed by Applicant to register a three-dimensional trademark in the
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`European Union (114/116 TTABVUE);
`
`● Second Notice of Reliance on Internet pages showing third-party engines and
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`Applicant’s marketing and sale of the GX Engine, and excerpts of a deposition of
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`expert witness Kevin L. Hoag taken in a prior litigation involving American Honda,
`
`by stipulation of the parties (117/118 TTABVUE);20
`
`● Third Notice of Reliance on excerpts from the discovery deposition of
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`Applicant’s Rule 30(b)(6) designee Yukio Sugimoto, and certain exhibits thereto, by
`
`agreement of the parties (122/123 TTABVUE);
`
`● Fourth Notice of Reliance on excerpts from the discovery deposition of John
`
`Lally, an employee of Applicant, and certain exhibits thereto, by agreement of the
`
`parties (121/124 TTABVUE);
`
`
`20 The parties entered into a number of stipulations and agreement regarding the
`presentation of evidence. 104 TTABVUE; 119 TTABVUE; 120 TTABVUE; 140 TTABVUE.
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`

`

`Opposition No. 91200146
`
`
`● Fifth Notice of Reliance on a page from the discovery deposition of Applicant’s
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`Rule 30(b)(6) designee Motohiro Fujita and an exhibit thereto (125/126 TTABVUE);
`
`● Sixth Notice of Reliance on various of Applicant’s United States patents and
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`Japanese utility model applications (127/128 TTABVUE);
`
`● Seventh Notice of Reliance on excerpts from the discovery deposition of Kohler
`
`employee Manuel Rumao and an exhibit thereto, by agreement of the parties, and an
`
`exhibit from the discovery deposition of Briggs & Stratton employee Peter Hotz
`
`(167/168 TTABVUE);
`
`● Eighth Notice of Reliance on additional excerpts from the deposition of Mr.
`
`Hoag taken in the above-mentioned prior litigation involving American Honda
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`(169/170 TTABVUE);
`
`● Ninth Notice of Reliance on excerpts from the discovery deposition of Mr. Hotz
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`(172/173 TTABVUE);
`
`● Tenth Notice of Reliance on excerpts and exhibits from the discovery deposition
`
`of Mr. Conner (174/175 TTABVUE);
`
`● Eleventh Notice of Reliance on pp. 201-216 from an article by Shari Seidman
`
`Diamond, a professor at Northwestern University School of Law, entitled “Control
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`Foundations: Rationales and Approaches”
`
`from Trademark and Deceptive
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`Advertising Surveys, Law, Science, and Design (2012) (176 TTABVUE);21
`
`
`21 Opposer offers these pages from Professor Diamond’s article as part of a printed
`publication. 176 TTABVUE 3. Applicant similarly offered portions of the Reference Guide on
`Survey Research from the Reference Manual on Scientific Evidence, also written by Professor
`Diamond, under notice of reliance as printed publications. 141 TTABVUE. In the absence of
`any objections, we will consider these materials for substantive guidance on the survey issues
`discussed below.
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`Opposition No. 91200146
`
`
`● Twelfth Notice of Reliance on excerpts from the prosecution history of United
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`States Patent No. 4,813,385 (177 TTABVUE);
`
`● Thirteenth Notice of Reliance on certain Internet pages regarding the
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`marketing and sale by third parties of GX Engines with cyclone air cleaners (178
`
`TTABVUE); and
`
`● Fourteenth Notice of Reliance on advertisements for Briggs & Stratton
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`engines, Kohler engines, and third-party engines, as well as GX Engines, including
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`from Applicant’s websites and third-party websites (178 TTABVUE).
`
`c. Witness Declarations:
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`● Declarations of Brad Murphy, Larry Cotton, Denis Bedard, and Allen Gillette,
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`employees of third-party engine manufactures, by agreement of the parties (130/131
`
`TTABVUE).
`
`2. Applicant’s Evidence
`
`a. Trial Testimony:
`
`● Testimony deposition of Mr. Fujita, and exhibits thereto (202 TTABVUE);
`
`● Testimony deposition of Mr. Conner, and exhibits thereto (188/186/189
`
`TTABVUE);
`
`● Testimony deposition of George Mantis, a marketing expert witness who
`
`conducted a survey, and exhibits thereto (185 TTABVUE); and
`
`● Testimony deposition of James Mieritz, an expert witness on functionality, and
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`exhibits thereto (197/196 TTABVUE);
`
`
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`Opposition No. 91200146
`
`
`b. Notices of Reliance:
`
`● First Notice of Reliance on excerpts from the discovery deposition of Mr. Hotz,
`
`and certain exhibits thereto (154/155 TTAB);
`
`● Second Notice of Reliance on the discovery deposition of Manuel Rumao, and
`
`exhibits thereto, filed by stipulation of the parties (156/155 TTABVUE);
`
`● Third Notice of Reliance on Briggs & Stratton’s Second Supplemental
`
`Responses to certain interrogatories in Applicant’s First and Second Sets of
`
`Interrogatories (152/151 TTABVUE);
`
`● Fourth Notice of Reliance on Kohler’s Second Supplemental Responses to
`
`certain interrogatories in Applicant’s First and Second Sets of Interrogatories
`
`(150/159 TTABVUE);
`
`● Fifth Notice of Reliance on Briggs & Stratton’s admissions in response to
`
`certain requests in Applicant’s First Set of Requests for Admission (149/148
`
`TTABVUE);
`
`● Sixth Notice of Reliance on Kohler’s admissions in response to certain requests
`
`in Applicant’s First Set of Requests for Admission (147 TTABVUE);
`
`● Seventh Notice of Reliance on the certificate of registration of Community
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`Trademark No. 003365988 (146 TTABVUE);
`
`● Eighth Notice of Reliance on various court documents from prior civil litigation
`
`between Applicant or American Honda, and third parties (150 TTABVUE);
`
`● Ninth Notice of Reliance on counter excerpts from the discovery deposition of
`
`Mr. Fujita, and certain exhibits thereto (145/144 TTABVUE);
`
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`Opposition No. 91200146
`
`
`● Tenth Notice of Reliance on counter excerpts from the deposition of Mr. Hoag
`
`in earlier civil litigation, and his expert report, by agreement of the parties
`
`(143/142 TTABVUE); and
`
`● Eleventh Notice of Reliance on certain pages from Professor Diamond’s
`
`Reference Guide on Survey Research, Reference Manual on Scientific Evidence (2d
`
`ed. Federal Judicial Center 2000) and (3d ed. Federal Judicial Center 2011) (141
`
`TTABVUE).
`
`II. Evidentiary Objections
`The parties devote more than 30 pages of their briefing at final hearing to
`
`numerous detailed evidentiary objections.22 As a general matter, “the Board is
`
`capable of weighing the relevance and strength or weakness of the objected-to
`
`testimony and evidence, including any inherent limitations,” and keeping in mind
`
`“the various objections raised by the parties” in determining the probative value of
`
`objected-to testimony and evidence. Luxco, Inc. v. Consejo Regulador del Tequila,
`
`A.C., 121 USPQ2d 1477, 1479 (TTAB 2017). To the extent necessary, we decide below
`
`the parties’ major evidentiary objections going to the admissibility, rather than the
`
`weight, of certain evidence.
`
`
`22 Applicant also renewed a pre-trial motion to strike portions of Mr. Whitmore’s testimony,
`to which the parties had already devoted more than 40 pages of briefing. 208 TTABVUE 64
`n.3.
`
`- 17 -
`
`

`

`Opposition No. 91200146
`
`
`A. Applicant’s Objections to Admissibility of Japanese Utility Model
`Applications23
`Applicant objects to the admission of copies of Japanese-language and translated
`
`versions of 14 Japanese utility model applications filed by Applicant with the
`
`Japanese Patent Office and made of record under Opposer’s Sixth Notice of Reliance.
`
`The bases for the objection are that the rationales for the relevance of United States
`
`utility patents and applications set forth in Valu Eng’g Inc. v. Rexnord Corp., 278
`
`F.3d 1268, 61 USPQ2d 1422, 1429 (Fed Cir. 2002), do not apply to foreign patent
`
`documents because foreign patents do not cover the United States and implicate non-
`
`U.S. law, and because the Japanese utility model system has no counterpart in
`
`United States law and it is not clear whether the Japanese applications were ever
`
`examined or ever issued. 208 TTABVUE 71-72.
`
`Opposer argues that these materials should be considered under TrafFix Devices,
`
`Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 58 USPQ2d 1001 (2001), and Valu Eng’g,
`
`given the evidentiary significance of the statements made by Applicant, and that
`
`Applicant’s statements in the Japanese applications were admissions. 209 TTABVUE
`
`42.
`
`The admissibility of foreign utility model applications appears to be an issue of
`
`first impression for the Board, as the parties have not cited, and we have not found,
`
`any applicable Federal Circuit or Board cases. In Valu Eng’g, the Federal Circuit held
`
`
`23 The Japanese utility model system protects the utilitarian shape or structure of a device
`for a shorter term than under the Japanese patent system. 208 TTABVUE 71-72; 209
`TTABVUE 42-43.
`
`- 18 -
`
`

`

`Opposition No. 91200146
`
`that “an abandoned patent application should be considered under the first Morton-
`
`Norwich factor, because an applied-for utility patent that never issued has
`
`evidentiary significance for the statements and claims made in the patent application
`
`concerning the utilitarian advantages, just as an issued patent has significance.” 61
`
`USPQ2d at 1429. Although non-U.S. patents do not appear to have been at issue in
`
`that case, this rationale is not jurisdiction-specific, and we note that the analysis of
`
`any statements or claims made by Applicant in its Japanese utility model
`
`applications does not require us to understand or apply Japanese law.24 Instead, that
`
`analysis requires us to do what we must do in considering Applicant’s issued United
`
`States patents—determine whether the claims and disclosures in the patent show
`
`the utilitarian advantages of the design sought to be registered as a trademark. See,
`
`e.g., In re Becton, Dickinson and Co., 675 F.3d 1368, 102 USPQ2d 1372, 1377 (Fed.
`
`Cir. 2012). Indeed, this is what we do in examining an applicant’s statements in
`
`advertising in functionality cases as well. We overrule Applicant’s objection and have
`
`considered the utility model applications for whatever probative value they may have
`
`on the issue of functionality.
`
`
`24 See Alphaville Design, Inc. v. Knoll, Inc., 627 F. Supp. 2d 1121, 1132-33 (N.D. Cal. 2009)
`(court reviewed two expired foreign patents to determine whether defendant and
`counterclaimant had committed fraud on the Patent and Trademark Office by failing to
`disclose the foreign patents); Franek v. Walmart Stores, Inc., 2009 WL 674269, at *14 (N.D.
`Ill. Mar. 13, 2009) (court analyzed the impact of a foreign patent on the functionality of the
`plaintiff’s circular beach towel design), aff’d sub nom., Jay Franco & Sons, Inc. v. Franek, 96
`USPQ2d 1404 (7th Cir. 2010).
`
`- 19 -
`
`

`

`Opposition No. 91200146
`
`
`B. Applicant’s Objections to Admissibility of Foreign Trademark
`Documents
`Applicant objects to the admission of two documents that it alleges are irrelevant
`
`that were made of record under Opposer’s First Notice of Reliance: (1) a copy of the
`
`December 16, 2014 Decision of the Second Board of Appeal of the Office of
`
`Harmonization in the Internal Market (Trademarks and Designs) (“OHIM”)25
`
`affirming a refusal to register a three-dimensional depiction of the GX Engine shown
`
`in Applicant’s Community Trademark Application No. 3 365 996, and (2) a copy of a
`
`May 30, 2005 filing by Applicant’s Turkish counsel with a Turkish court in support
`
`of a request for a precautionary injunction against a Turkish company that Applicant
`
`claimed was selling water pumps containing counterfeits of the GX Engine. 116
`
`TTABVUE 408-414, 457-473 (Confidential Version).
`
` Opposer argues that it does “not rely on the objected-to foreign trademark
`
`documents for any legal conclusions or application of ‘foreign trademark standards,’”
`
`but rather on the OHIM “tribunal’s observation that the vertical and horizontal
`
`planes of the GX engine are ‘in line’ in order to create a more compact engine,” and
`
`the statements made by Applicant’s counsel in the Turkish litigation “that the GX
`
`engine is ‘renowned … for occupying little space’ and that the red, white, and black
`
`color combination is the ‘most important