Lockheed Martin Corp.v.Raytheon Co.

Trademark Trial and Appeal Board

Sep 27, 2011

OPP (T.T.A.B. Sep. 27, 2011)

Hearing: Mailed:
April 29, 2011 September 27, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

Lockheed Martin Corporation
v.
Raytheon Company
_____

Opposition No. 91167189
to application Serial No. 78481770

Opposition No. 91174152
to application Serial No. 78672972
_____

Susan Orkin Goldsmith and Patrick M. McPherson of Duane
Morris LLP for Lockheed Martin Corporation.

Jeffrey A. Handelman of Brinks Hofer Gilson & Lione for
Raytheon Company.
______

Before Mermelstein, Bergsman and Wellington,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Raytheon Company (“applicant”) seeks to register the
mark PAVEWAY, in standard character form, on the Principal
Register, for “laser guided bombs” (Serial No. 78481770)
and “laser guided bomb kits,” (Serial No. 78672972) in
Class 13.
Lockheed Martin Corporation (“opposer”) opposed the
applications on the ground that the word “Paveway” is
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91167189
Opposition No. 91174152
2
generic.1 Applicant, in its amended answer, has directly
denied or impliedly denied, and therefore left opposer with
the burden of establishing, the allegations in opposer’s
amended notice of opposition.
Preliminary Issues
A. This case was a good candidate for the Board’s
Accelerated Case Resolution procedure.

Prior to the close of discovery, opposer filed a
motion for summary judgment which generated a large record.
The summary judgment motion and response should have served
as a warning to the Board that this case was going to be a
contentious litigation with the likelihood of an equally
large trial record. Had the Board noted the warning,
intervention might have followed. See Blackhorse v. Pro
Football Inc., 98 USPQ2d 1633, 1634 (TTAB 2011) (the Board
will be taking a more active role in pretrial management of
cases that the Board identifies as having the potential to
become overly contentious and/or involve excessive
records). Of equal note, the parties could have recognized
that the record on summary judgment was so extensive as to
warrant submission of the case for disposition on its

1 In its amended notice of opposition, opposer also asserted
fraud as a ground for opposition. However, because opposer did
not argue fraud in its brief, opposer has waived it as a ground
for opposition.
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3
merits through the Board’s Accelerated Case Resolution
(“ACR”) procedure.
As borne out by the excessive record created in this
case, the parties introduced what can be characterized as
cumulative and irrelevant testimony and evidence (e.g.,
many documents were introduced three times and testimony
regarding how the bombs work was not relevant to the
question whether PAVEWAY is a generic term or a mark).
Most noteworthy, however, is that there was no real dispute
about the operative facts; rather the parties disagreed as
to what the facts meant under applicable law. Under these
circumstances, this case was a good candidate for the
Board’s ACR procedure. ACR is a procedure akin to summary
judgment in which parties can receive a determination of
the claims and defenses in their case promptly, but without
the uncertainty and delay typically presented by standard
summary judgment practice. In order to take advantage of
ACR, the parties must stipulate that, in lieu of submission
of evidence at trial, and subsequent fact finding by the
Board, certain facts are undisputed and the Board can
resolve any remaining material issues of fact based on the
ACR briefs and evidence submitted by the parties. After
ACR briefs and evidence are filed, the Board will issue a
decision within fifty days, which will be judicially
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Opposition No. 91174152
4
reviewable as set out in 37 CFR §2.145. Had the parties
opted for ACR, proceedings would have been expedited and
resulted in savings of time, money and effort. These
savings would have included the Board’s effort in having to
slog through the cumulative and irrelevant testimony and
evidence introduced by the parties.
B. “Of course, the whole point of a Doomsday Machine is
lost, if you keep it a secret!”2

Unfortunately, the parties have improperly designated
a substantial amount of testimony and evidence as
confidential. For example, the parties designated the
entire Benjamin Ford Rule 30(b)(6) discovery deposition as
confidential.3 It was a 200-page deposition where Mr. Ford
primarily authenticated documents that opposer also made of
record in its other notices of reliance. Very little of
Mr. Ford’s testimony and very few of the relevant documents
are justifiably confidential (e.g., Mr. Ford’s educational
background and work experience, the derivation of the name
PAVEWAY, the process by which the government awards

2 Dr. Strangelove or: How I Learned to Stop Worrying and Love
the Bomb (Columbia Pictures 1964).
3 We are at a loss to understand why the entire deposition was
submitted. Unlike the transcript of trial testimony, a discovery
deposition made of record under a notice of reliance need not be
filed in its entirety. Rather, only those parts of the
deposition which are both relevant and relied upon should be
attached to the notice of reliance. Sports Auth. Mich. Inc. v.
PC Auth. Inc., 63 USPQ2d 1782, 1787 (TTAB 2001).
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contracts, etc.). Submissions in Board proceedings are
intended to be publicly available and the improper
designation of materials as confidential thwarts that
intention. It is more difficult to make findings of fact,
apply the facts to the law, and write decisions that make
sense when the facts in evidence may not be discussed. The
Board needs to be able to discuss the evidence of record,
unless there is an overriding need for confidentiality, so
that the parties and a reviewing court will know the basis
of the Board's decision. Therefore, in this opinion, we
will treat as confidential only the testimony and evidence
that was appropriately designated as confidential. See
Edwards Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d
1399, 1402-1403 (TTAB 2010). We will not be bound by all
of the unnecessary confidential designations made by the
parties.
C. Opposer’s motion to strike applicant’s brief on the
case.

In its reply brief, opposer moved to strike
applicant’s brief on the case on the ground that the brief
was not timely filed and, therefore, should not be
considered. Applicant filed a response to opposer’s
motion.
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Opposer’s brief was due Saturday, January 1, 2011.
Pursuant to Trademark Rule 2.196, when the last day for
taking an action falls on a Saturday, Sunday or holiday,
the action may be taken on the next succeeding day that is
not a Saturday, Sunday or holiday. Thus, opposer was
allowed to file its brief as late as Monday, January 3,
2011, and opposer filed it on that date.
Applicant filed its brief on February 2, 2011, thirty
days after January 3, 2011. Applicant contends that
because Trademark Rule 2.128(a) provides that applicant’s
brief is due not later than 30 days after the due date of
opposer’s brief, applicant’s brief was timely filed.
As indicated above, Trademark Rule 2.128(a)(1) clearly
states:
The brief of the party in the position
of plaintiff shall be due not later
than sixty days after the date set for
the close of rebuttal testimony. The
brief of the party in the position of
defendant, if filed, shall be due not
later than thirty days after the due
date of the first brief. (Emphasis
added.)

This language is unambiguous. Barring the granting of
an extension of time by the Board, opposer’s main brief is
due 60 days from the actual date on which the period for
rebuttal testimony closes; applicant’s brief is then due 30
days later. In this case, the parties agreed (with the
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Board's approval) that the rebuttal testimony period was to
end on November 2, 2010.4 Therefore, opposer's brief was
due 60 days from that date, namely Saturday, January 1,
2011. Applicant's brief was then due 30 days later, namely
Monday, January 31, 2011.
Applicant misconstrues the effect of Trademark Rule
2.196 on the dates in question. Trademark Rule 2.196 does
not change the date on which the relevant action must be
taken. To the contrary, when the due date falls on a
weekend or Federal Holiday, it allows that action to be
considered timely if taken on the next succeeding business
day despite the earlier expiration of the due date on a
weekend or holiday. Thus, Trademark Rule 2.196 does not
change any due date, nor does it change or extend the date
of subsequent dependent time periods. Because the time for
filing applicant’s brief was properly calculated from the
date opposer’s brief was actually due, applicant's brief
was two days late.
It is within the Board's discretion to permit a party
to reopen an expired time period where the failure to act
is shown to be due to excusable neglect. See Pioneer
Investment Services Company v. Brunswick Associates Limited
Partnership, 507 U.S. 380 (1993). Excusable neglect has

4 The Board’s August 17, 2010 order.
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8
been shown in this case. Applicant's explanation as to its
mistaken interpretation of the rules clearly demonstrates
that the delay was not willful; the two-day delay in filing
applicant's brief had a negligible impact on the
proceedings; and there is no evidence that opposer has been
harmed by the delay.
In view thereof, the motion to strike applicant's
brief is denied.
The Record
By rule, the record includes applicant’s application
files and the pleadings. Trademark Rule 2.122(b), 37 CFR
§2.122(b).
A. Opposer’s testimony and evidence.
1. Testimony deposition of Joseph Serra, opposer’s
Business Manager for Precision Guided Systems, with
attached exhibits;
2. Opposer’s first notice of reliance on printed
publications;
3. Opposer’s second notice of reliance on documents
produced by applicant in discovery and authenticated by
applicant’s response to opposer’s requests for admission;
4. Opposer’s third notice of reliance on the Rule
30(b)(6) discovery deposition of Benjamin Ford, applicant’s
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Director of International Business Development/Strike
Weapons, with attached exhibits;
5. Opposer’s fourth notice of reliance on
applicant’s responses to opposer’s interrogatories;
6. Opposer’s fifth notice of reliance on the
affidavits of Curtis Cummings, Steven Oakeson and Scott
Driscoll;5
7. Opposer’s sixth notice of reliance on “government
documents and printed publications”;
8. Opposer’s seventh notice of reliance on
“decisions from foreign jurisdictions in opposition,
cancellation, and court cases related to the subject
opposition”; and
9. Opposer’s eighth notice of reliance, submitted in
rebuttal, on excerpts from the discovery depositions of
opposer’s witnesses taken by applicant “which should in
fairness be considered by the Board so as to make not
misleading what was designated by Applicant.”
B. Applicant’s testimony and evidence.
1. Applicant’s first notice of reliance on excerpts
from the Rule 30(b)(6) discovery depositions of Joseph

5 The affidavits were submitted pursuant to a stipulation filed
January 20, 2010, under which the parties agreed to permit the
submission of affidavits in lieu of oral testimony.
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Serra, John Pericci, opposer’s Director of Business
Development of Precision Guided Systems, and Timothy
Stanley, opposer’s Intellectual Property Counsel for
Missiles and Fire Control;
2. Applicant’s second notice of reliance on
opposer’s responses to applicant’s first and second set of
interrogatories and applicant’s requests for admission;
3. Applicant’s third notice of reliance on excerpts
from opposer’s website purportedly displaying trademark use
of military terms;
4. Applicant’s fourth notice of reliance on the
affidavits of Benjamin Ford, Jay Diston, Manager of
Contracts for Atlantic Inertial Systems, Thomas Harlock,
Business Manager at Carleton Technologies, Inc., and David
Carpenter, Sales Manager at Stanley Machining and Tool
Corporation;
5. Applicant’s fifth, sixth and seventh notices of
reliance on file histories of opposer’s trademark
registrations and applications purportedly showing
trademark use of military terms that “contain statements
and admissions by Opposer concerning the trademark
significance of such terms”;
6. Applicant’s eighth notice of reliance on
international trademark registration certificates for the
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11
mark PAVEWAY to “show that PAVEWAY has been registered
internationally in various jurisdictions”;
7. Testimony deposition of Richard Friebert,
applicant’s Paveway Program Director, Raytheon Missile
Systems, with attached exhibits; and
8. Testimony deposition of Barry Maxwell,
applicant’s Senior Manager of Growth and Advanced Concepts,
Paveway Programs, Raytheon Missile Systems, with attached
exhibits.
The Parties and the Goods
The parties are, inter alia, defense contractors who
manufacture and/or supply laser-guided bombs, “or more
precisely laser guidance kits.”6 “A laser guided bomb is a
weapon which is released from an aircraft and follows
reflected laser energy to a target being illuminated by a
laser to provide laser guidance to an otherwise unguided
bomb.”7 The product at issue is essentially a kit with two
main parts: (1) a computer control group affixed to the
front of the bomb; and (2) an air foil group consisting of
a tail kit and front end steering canards. The tail kit is
attached to the rear of the bomb and the canards are

6 Opposer’s first notice of reliance, Exhibit 148 (janes.com).
7 Opposer’s Brief, p. 5, citing Serra Testimony Dep., pp. 15-16.
Opposition No. 91167189
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attached to the computer control group to provide the
steering capability.
In or around the mid-1960’s, applicant’s predecessor,
Texas Instruments, was selected by the U.S. Air Force to
develop and supply the first laser-guided bombs. Thus,
“[f]or over thirty years, [applicant was] the single source
of the unique LGB [laser-guided bomb] products, which
products were marketed under the PAVEWAY mark.”8
In May 2000, the U.S. Air Force sought a second source
for the laser-guided bombs at issue in this proceeding.9
The Commerce Business Daily (May 12, 2000) issued a
“Paveway Sources Sought Synopsis” “intended as a method of
informing potential contractors of the existence of a Bid
Qualification Plan for Paveway II Laser Guided Bombs.”10
Ultimately, opposer qualified to supply laser-guided bombs
and began referring to them as “Paveway Laser-Guided
Bombs.”
The parties are the only two companies qualified by
the Department of Defense to produce these specific laser-
guided bombs. Applicant filed the applications at issue

8 Ford Affidavit ¶5.
9 Serra Testimony Dep., Exhibits 101 and 102.
10 Serra Testimony Dep., Exhibit 101.
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and opposer filed the notices of opposition alleging that
the term “Paveway” is generic.
Opposer’s Standing
To establish its standing to assert that a term is
generic as a ground for opposition or cancellation, “a
plaintiff need only show that it is engaged in the
manufacture or sale of the same or related goods as those
listed in the defendant's involved application or
registration and that the product in question is one which
could be produced in the normal expansion of plaintiff's
business; that is, that plaintiff has a real interest in
the proceeding because it is one who has a present or
prospective right to use the term descriptively [or
generically] in its business.” Binney & Smith Inc. v.
Magic Marker Industries, Inc., 222 USPQ 1003, 1010 (TTAB
1984). The testimony and evidence support opposer’s
contention that it uses the designation PAVEWAY in
connection with laser guided bombs.11 This is sufficient to
demonstrate that opposer has a real interest in this
proceeding and, therefore, has standing.

11 Serra Discovery Dep. (7-30-2011), p. 21 (began using PAVEWAY to
identify laser-guided bombs “subsequent to 2003”); Ford Affidavit
¶6 (“[opposer] began using the PAVEWAY Mark on its competing
[laser guided bomb] products”).
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Whether PAVEWAY is generic?
Section 14(3) of the Trademark Act of 1946, 15 U.S.C.
§ 1064(3), provides in pertinent part, that, [a] registered
mark shall not be deemed to be the generic name of goods or
services solely because such mark is also used as a name of
or to identify a unique product or service. The primary
significance of the registered mark to the relevant public
rather than purchaser motivation shall be the test for
determining whether the registered mark has become the
generic name of goods or services on or in connection with
which it has been used. (Emphasis added).
In determining whether a term is generic, the critical
issue is whether the record shows that members of the
relevant public primarily use or understand the term sought
to be registered to refer to the category or class of goods
in question. H. Marvin Ginn Corp. v. International Ass’n
of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed.
Cir. 1986); In re Women's Publishing Co. Inc., 23 USPQ2d
1876, 1877 (TTAB 1992).
“[T]he test is not the existence of other terms for
the product or recognition of trademark significance by the
trade. It is recognition by the purchasing public.” In re
Murphy Door Bed Co., Inc., 223 USPQ 1030, 1033 (TTAB 1984).
“The fact that a given product has more than one generic
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name makes no difference.” Id. at 1031. A term may start
out as nongeneric as applied to a product but may in time
lose whatever source significance it might originally have
had. Id. See also In re Randall and Hustedt, 226 USPQ
1031, 1032 (TTAB 1985). “[I]f a term has become the
accepted designation for the product to which it is
applied, it has been rendered a common descriptive or
generic name for said product and is unregistrable.” In re
Murphy Door Bed Co., Inc., 223 USPQ at 1031.
“Whether the relevant purchasing public regards a term
as a common descriptive name is a question of fact to be
resolved on the evidence.” Dan Robbins & Associates, Inc.
v. Questor Corp., 599 F.2d 1009, 202 USPQ 100, 105 (CCPA
1979). Making this determination “involves a two-step
inquiry: First, what is the genus of goods or services at
issue? Second, is the term sought to be registered ...
understood by the relevant public primarily to refer to
that genus of goods or services?” Ginn, 228 USPQ at 530.
Evidence of the public’s understanding of a term may be
obtained from any competent source, including testimony,
surveys, dictionaries, trade journals, newspapers and other
publications. See Magic Wand Inc. v. RDB Inc., 940 F.2d
638, 19 USPQ2d 1551, 1553 (Fed. Cir. 1991); In re Merrill
Opposition No. 91167189
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Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 4
USPQ2d 1141, 1143 (Fed. Cir. 1987).
We begin by finding that the genus of the goods at
issue in this case is adequately defined by applicant’s
description of goods, namely, “laser guided bombs” and
“laser guided bomb kits.” Magic Wand Inc. v. RDB Inc.,
19 USPQ2d at 1552 (“[A] proper genericness inquiry focuses
on the description of [goods or] services set forth in the
[application or] certificate of registration”). For our
purposes, laser guided bombs and laser guided bomb kits are
essentially the same thing.12
We now turn to the second inquiry: the relevant
public’s understanding of the term. As indicated above,
the issue is whether the relevant public primarily uses or
understands the term sought to be registered to refer to
the category or class of goods in question. H. Marvin Ginn
Corp. v. International Ass’n of Fire Chiefs, Inc., 228 USPQ
at 530; In re Women's Publishing Co. Inc., 23 USPQ2d at
1877. In a genericness case, the relevant public is
comprised of the potential purchasers of the goods, in this

12 Barry Maxwell Dep., p. 52 (“[laser-guided bombs and laser-
guided bomb kits] are somewhat used interchangeably through the
industry. … They are the same thing as far as essentially the
customer is concerned”); Serra Dep. (7-30-2009), pp. 75 (“my
assumption is when we refer to an LGB we’re talking the LGB kit”
and “a laser guided bomb would be in a discussion typical to the
all up unit”).
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case, the United States Department of Defense,
specifically, the U.S. Air Force and Navy, as well as the
defense ministries of friendly foreign governments.13
The evidence set forth below demonstrates that the
relevant public understands the word “Paveway” to be a
generic reference for a type of laser-guided bomb.
1. The affidavit of Steven Oakeson, Lead Contract
Specialist for the Paveway II Program as of November 1,
2005. As lead contract specialist, Mr. Oakeson supervised
the purchasing of Paveway II goods for the United States
Air Force.14 According to Mr. Oakeson, “the Air Force uses
“Paveway” with each source [opposer and applicant], to
designate the product”15 and “the term ‘Paveway II’ is used
within the Air Force simply as another way to say ‘laser
guided bomb kit.’ It does not indicate a particular source
of the goods.”16
2. The affidavit of Curtis Cummings, the contracting
officer of the Paveway II Program as of November 1, 2005.
As contracting officer, Mr. Cummings managed the purchase
of Paveway II goods for the entire U.S. military.17

13 Serra Testimony Dep., pp. 16-17; Pericci Discovery Dep. (April
5, 2007), P. 98; Benjamin Ford Discovery Dep., pp. 20 and 132;
Opposer’s Brief, pp. 9-10; Applicant’s Brief, pp. 9-12.
14 Oakeson Affidavit ¶ 4.
15 Id. at ¶ 10.
16 Id. at 12.
17 Cummings Affidavit ¶ 4.
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According to Mr. Cummings, “the Air Force uses ‘Paveway’
with each source [opposer and applicant], to designate the
product”18 and “the term ‘Paveway II’ is used within the Air
Force simply as another way to say ‘laser guided bomb kit.’
It does not indicate a particular source of the goods.”19
3. The affidavit of Scott Driscoll, Vice President
of Sales of MLM International Corporation as of January 9,
2007. MLM International is essentially a broker between
the U.S. government and foreign military purchasers in the
field of aircraft bombs, including Paveway guidance kits.20
Mr. Driscoll attested to the following facts:
a. “[T]he guidance kits manufactured by
[opposer] are ‘Paveway,’ and are known to
customers worldwide to be ‘Paveway’”;21
b. “‘Paveway’ is a generic, or common industry
term, for the type of goods. It does not
indicate a particular source of the goods”;22
and
c. “[T]he term ‘Paveway’ is synonymous with
‘laser guided bomb,’ and ‘Paveway’ itself

18 Id. at ¶ 14.
19 Id. at 15.
20 Driscoll Affidavit ¶¶ 3-6.
21 Id. at ¶ 13.
22 Id. at ¶ 14.
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means the technology that primarily uses
lasers to guide a bomb to a target.”23
Applicant argues that these affidavits should be
accorded limited probative value because (i) Messrs.
Oakeson and Cummings were only in their positions for a
short period of time, (ii) the affidavits were signed in
2005, (iii) the affiants were not subject to cross
examination, and (iv) the affidavits were drafted by
counsel and are mirror images of each other.24
We disagree. First, the affidavits of Messrs. Oakeson
and Cummings express their opinions based on their
experience. Second, the parties stipulated to the
introduction of the affidavits and applicant was aware that
it would not have an opportunity to cross examine those
witnesses.25 Third, the fact that the affidavits were
drafted by counsel does not make them any less probative.
See In re Flex-O-Glass, Inc., 194 USPQ 203, 206 (TTAB 1977)
(“[T]he fact that the affidavits may be similar in format
and expression is of no particular significance ... since

23 Id. at ¶ 15.
24 Applicant’s Brief, p. 36.
25 The affidavits introduced by applicant were signed in 2008 and
the witnesses were not subject to cross examination although
opposer deposed Mr. Ford. Although the stipulation didn’t
specifically provide for cross-examination, applicant could
always have called the affiants during its own testimony period
if it thought there would be some value in that.
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20
the affiants have sworn to the statements contained
therein.”). Generally speaking, the Board does not find
the use of form statements problematic. In re Benetton
Group S.p.A., 48 USPQ2d 1214, 1217 (TTAB 1998).
Finally, applicant noted that opposer only introduced
three affidavits when there were numerous other individuals
with greater experience who could have testified: notably,
Loretta Woodward who refused to sign an affidavit for
opposer.26 First, we can only consider the evidence that
has been introduced. In this case, opposer introduced
three affidavits, as well as other evidence that
corroborates the testimony of the witnesses regarding how
consumers perceive the word “Paveway.” While there may be
other witnesses with knowledge, their testimony is not
before us. Second, while Loretta Woodward refused to sign
an affidavit for opposer, there was no testimony regarding
why she declined to voluntarily participate. We note that
applicant did not submit Ms. Woodward’s affidavit or
testimony, so we have no basis on which to infer that, had
she testified, she would have provided evidence adverse to
opposer’s position.

26 Applicant’s Brief, pp. 36-37.
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21
In view of the foregoing, we reject applicant’s
arguments for according these affidavits only limited
probative value.
4. Documents showing use of the term “Paveway” by
the U.S. Air Force and Navy. A representative sample of
those documents is listed below.
a. Opposer’s first notice of reliance.
A Presolicitation Notice for Paveway II
Laser Guided Bombs (September 27, 2000).27
The notice informs interested parties that
“[t]he government intends to award a
contract with an option for Paveway II Laser
Guided Bombs. … [Applicant and opposer] and
Klune Industries … have expressed interest.”
b. Opposer’s sixth notice of reliance.
1. Department of Defense announcement of
awarded contracts
(defense.gov/contracts) (September 24,
2010) announcing that opposer was
awarded a contract for the procurement
of “Paveway II laser guided bomb
control groups.”28

27 Opposer’s Exhibit 103.
28 Opposer’s Exhibit 192.
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22
2. A U.S. Air Force solicitation notice
for “Computer Control Group Paveway II”
(fbo.gov) (May 24, 2010).29 The
solicitation “is restricted to
qualified sources” and “will not be
held up to qualify additional sources.”
3. A U.S. Air Force notice for “GBU-
16 Laser Guided Bomb Sources Sought”
(fbo.gov) (April 9, 2010).30 This
announcement “is intended as a method
of informing potential contractors of
the existence of a Bid Qualification
Plan for Paveway II Laser Guided Bombs.
… [T]he USAF on behalf of the country
of Italy is seeking potential
contractors to become an approved
supplier for Paveway II Laser Guided
Bombs for an anticipated GBU-16 Paveway
II kit procurement. … The Bid
Qualification Plan is designed to
demonstrate each offeror’s competency

29 Opposer’s Exhibit 193.
30 Opposer’s Exhibit 194. See also Opposer’s Exhibit 102 (May 11,
2000), Exhibit 147 (July 21, 2009), Exhibit 160 (May 16, 2000),
and Exhibit 161 (October 3, 2000).
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23
to bid on Paveway II procurements.”
The announcement also states that
applicant and opposer “are the only
known approved sources who currently
have the knowledge, skills, facilities
and equipment for this effort.”
c. Joseph Serra Testimony Deposition
1. Paveway II Laser Guided Bomb PowerPoint
presentation by DaVon W. Day, USAF
(October 30, 2007) at the 2007
Precision Guided Munitions Technical
Coordination Group (PGMTCG) meeting.31
Screen 5 is titled “Paveway II
Logistics.” The bottom of the page
reads as follows: “LGB Kits – Two
manufacturers: Raytheon and Lockheed
Martin.” Screen 8 has the same title
and discusses the “Differences in
usability between Raytheon’s version
and Lockheed Martin’s version.”

31 Opposer’s Exhibit 123. See also Opposer’s Exhibits 128 and
130. The PGMTCG is “a U.S.-run group with domestic and foreign
customers.” (Maxwell Dep., p. 11). It is a user’s group that
the U.S. Air Force uses to facilitate communication and the
exchange of information. (Serra Testimony Dep., pp. 106-107).
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24
2. The 2006 PGMTCG agenda.32 On October
30, 2006, John Pericci, opposer’s
Director of Business Development of
Precision Guided Systems, presented the
“Lockheed Paveway Brief”; Ricky
Friebert from Raytheon presented the
“State of Paveway (Raytheon)”; and
Barry Maxwell from Raytheon presented
“Paveway Logistics, Integration and
Mission Planning.”.
D. Benjamin Ford discovery deposition.
1. “Paveway II Competitive Industry Day”
presentation by Loretta Woodward
(October 25, 2000).33 The purpose of
the competition is to “Award
competitive Navy contract for Paveway
II Laser Guided kits.” Representatives
from both parties, as well as the Navy
and Air Force, attended.

32 Opposer’s Exhibit 124. See also Opposer’s Exhibit 129 (2009
PGMTCG Agenda).
33 Ford Discovery Dep., Exhibit 11. See also Ford Discovery Dep.
Exhibit 15. Loretta Woodward was the primary contracting officer
for Paveway II. (Ford Discovery Dep., p. 82). “Industry Day” is
the government’s attempt to attract bidders. (Ford Discovery
Dep., p. 81).
Opposition No. 91167189
Opposition No. 91174152
25
2. Department of the Air Force,
Procurement Program, Procurement of
Ammunition, Budget Estimates for Fiscal
Years 2004/2005 (February 2003).34 This
document is part of the budget estimate
for ammunition, including bombs and
bullets.35 The budget estimate
identifies both parties as contractors
for providing Paveway fin assemblies
(Bates No. R-004827) and guidance
control units (Bates No. R-004830).
With respect to the Paveway guidance
control unit, the budget estimate
states that the “FY02 unit price is an
average of Raytheon and Martin Lockheed
unit prices” (Bates No. R-004829).36
E. John Pericci Discovery Deposition (April 5,
2007).
Contractor Performance Assessment Report
(May 16, 2005).37 This is an assessment

34 Benjamin Ford Discovery Dep., Exhibit 17.
35 Benjamin Ford Discovery Dep., p. 110.
36 Benjamin Ford explained that the specific part number
referenced in the budget estimate is a Raytheon part. (Benjamin
Ford Dep., p. 111.
37 Pericci Discovery Dep. Exhibit 49.
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26
report issued to opposer by the government.38
The acquisition is identified as “Order 0002
for FY03 buy of Paveway II Laser Guided
Bombs.” The “contract effort description”
is identified as “Provide Paveway II assets
… for the United States Air Force and Navy.”
On a form attached to the assessment report,
the “Program Title” is identified as
“Paveway II Laser-guided Bomb-Kit.”
5. Printed publications showing use of the term
“Paveway.” Printed publications submitted pursuant to
Trademark Rule 2.122(e) are admissible and probative only
for what they show on their face, not as proof of the
matters asserted therein. Safer Inc. v. OMS Investments
Inc., 94 USPQ2d 1031, 1037 n.14 (TTAB 2010). In other
words, the printed publications are evidence of the manner
in which the term “Paveway” has been used in the printed
publications and of the fact that the relevant reading
public has been exposed to the printed publications and may
be aware of the information contained therein. Harjo v.
Pro-Football Inc., 50 USPQ2d 1705, 1721 n.50 (TTAB 1999).
A representative sample of those documents is listed below.

38 Pericci Discovery Dep., p. 221.
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27
A. Opposer’s first notice of reliance.
1. Flight International (March 27, 2001)39
GAO Urged To Investigate
Paveway II Contract

Raytheon was the Paveway sole
source from the late 1960s,
but under Congressional
pressure, the USN last year
allowed Lockheed Martin to
again compete for the work.
Lockheed Martin became a
second source for Paveway in
1988, but won no contracts
after planned production was
cut.

2. Aerospace Daily (March 23,
2003)40

Base-year Paveway contract
promises intense competition
ahead

Both contractors sharing a $
281 million Air Force
contract to build Paveway II

39 Opposer’s Exhibit 108. See also Opposer’s Exhibit 154, Flight
International (March 21, 2006) (“US Navy plans to fund
qualification of a laser seeker for Boeings’ Joint Direct Attack
Munitions (JDAM) guidance kit promise to set up a three-way
competition for future procurements between the weapon and the
dual-mode variants of the Paveway laser-guided bomb (LGB)
produced by Lockheed Martin and Raytheon.”). “Flight
International is one of numerous trade journals, publications
that maintains cognizance of activity ongoing within the defense
industry as a whole.” (Serra Testimony Dep., p. 45).
40 Opposer’s Exhibit 116. See also Opposer’s Exhibit 115,
Aerospace Daily (February 23, 2003) (“Sarah Hammond of Raytheon’s
Missile Systems unit in Tucson, Ariz., said $ 2 billion will be
spent over a six- or seven-year period to buy Paveway bomb kits
‘from both Raytheon and Lockheed Martin, [with] details to
come.’”). Aerospace Daily “is an industry journal, trade journal
covering the activity, ongoing activity in the defense - -
defense business.” (Serra Testimony Dep., p. 50).

Opposition No. 91167189
Opposition No. 91174152
28
laser-guided bomb kits each
say they are in good position
to gain market share after
the base year of the award.

* * *

The Air Force plans to award
up to $ 2 billion for Paveway
II production over a seven-
year period, starting in
fiscal year 2003. The
contract is structured with a
base-year contract followed
by six one-year options, each
of which could be competed
between Raytheon and Lockheed
Martin.

Raytheon was once the Air
Force’s only supplier of
Paveway kits. It is seeking
to protect its market share
from Lockheed Martin’s
upstart competition, Ben
Ford, a Raytheon business
development manager for
Paveway, said in an
interview.

* * *

Lockheed Martin officials,
however, were “excited” by
receiving a 38 percent share
of the first contract less
than a year after the Air
Force certified its Paveway
kits, Lockheed Martin
spokeswoman, Ellen Martin
said.

… [F]inally, in 1999,
Lockheed Martin spent $ 15
million to build and self-
certify its own version of
Opposition No. 91167189
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29
the Paveway II kits, she
said.

Since then Lockheed Martin
has gained momentum in the
market. The company has
received two contracts worth
$ 89 million in FY ’01 to
produce Paveway kits for the
Navy.

3. Jane’s Air-Launched Weapons
(janes.com) (January 16,
2006)41

Paveway II and Paveway III …

The Paveway family of Laser-
Guided Bombs (LGBs) – or more
precisely, laser guidance
kits – was designed and
developed during the 1960s to
meet the need for a precision
attack capability for
tactical aircraft that became
pressing during the Vietnam
War. The Precision Avionics
Vectoring Equipment (PAVE)
prefix was given to a range
of US Air Force guided
weapons initiatives at that
time, but the Paveway
codename has today become
almost a generic title for
LGBs. Within the US there
are now two producers of the
Paveway guidance system:
Raytheon Missile Systems and
Lockheed Martin Missiles and
Fire Control.

* * *

41 Opposer’s Exhibit 148. See also Opposer’s Exhibits 149, 150,
151, 157, 158, and 159. Jane’s is a recognized publisher in the
field of weapons: “the Bible for that type of collection.”
(Serra Testimony Dep., p. 174).
Opposition No. 91167189
Opposition No. 91174152
30
The original Paveway Laser-
Guided Bomb (LGB) became
known as Paveway I in 1978
when a Production Engineering
Program (PEP) was initiated
to improve LGB capabilities.
The outcome of the PEP
resulted in an updated LGB
system, which became known as
Paveway II.

* * *

In August 2002 [sic] Lockheed
Martin was qualified as a
second source supplier to the
USAF for the Paveway II LGB.
… In November 2003 Lockheed
Martin was awarded the
complete USDoD order to
replace all the Paveway IIs
expended by the USAF and US
Navy during combat operations
in Iraq during March/April.

* * *

Today, Paveway II production
continues at both Raytheon
and Lockheed Martin.

* * *

A total of 544 Paveways were
dropped by French during the
campaign.

4. Defense Daily (March 29,
2001)42

42 Opposer’s Exhibit 109. See also Opposer’s Exhibit 117, Defense
Daily (March 30, 2004) (“Raytheon [RTN] yesterday was awarded the
‘maximum available’ share of three competitive contracts for the
production of Paveway II laser-guided bomb (LGB) kits for the Air
Force and Navy, topping a bid from the other major producer of
Paveway-series kits, Lockheed Martin.”). Defense Daily “is
another industry periodical, trade journal that covers it - -
Opposition No. 91167189
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31

Air Force: Lockheed Martin
Did Not Meet Paveway Bid
Qualification

Lockheed Martin [LMT] did not
meet bid qualification
requirements that the company
agreed to in its bid for
components that make up the
Paveway II laser-guided bomb
(LGB), an official at Hill
AFB, Utah, wrote in response
yesterday to questions from
Defense Daily.

* * *

On Feb. 27, Lockheed Martin
received a $9 million second
source contract for
production of 500 Paveway II
GBU-16 guidance kits.

5. Flight Daily News (November
22, 2005)43

US Navy awards Paveway II
development contract

Lockheed Martin has been
selected to develop, qualify
and produce the Paveway II
Dual Mode Laser Guided Bomb
(DMLGB), the next-generation
precision-guided weapon
system for the US Navy.

activity in the defense industry.” (Serra Testimony Dep., p.
47).
43 Opposer’s Exhibit 119. Flight Daily News is “another industry
trade journal covering defense activity.” (Serra Testimony Dep.,
p. 99).
Opposition No. 91167189
Opposition No. 91174152
32
B. Opposer’s sixth notice of reliance.
1. A July 6, 2010 posting on the Defense
Professionals website (defpro.com)
reporting that opposer had just
delivered the “100,000th Paveway II
Enhanced Laser Guided Training Round
(ELGTR) to the U.S. Navy.”44
2. “Laser weapons development is pushing
laser technology out of the laboratory
and into directed-energy weapons
applications in the field,” an article
posted on May 24, 2010 on the Military
& Aerospace Electronics website
(militaryaerospace.com).45 The article
referenced opposer’s Paveway laser
guided bombs. “The Paveway legacy
lives on with [opposer’s] Paveway II
Plus laser-guided bomb. … [Opposer] is
a provider of the Paveway II LGB an all
three variant of the Paveway II MK-80
series LGBs.”

44 Opposer’s Exhibit 200.
45 Opposer’s Exhibit 201.
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33
6. Applicant’s generic use of “Paveway.”
Applicant’s “Paper on Raytheon’s Unique Paveway Laser
Guided bomb (LGB) Family” (June 7, 2004) is a document
highlighting the differences between applicant’s and
opposer’s laser guided bombs.46 It was prepared for
“different customers.”47 The document states that opposer
“is currently a U.S. second-source for Paveway II.
[Opposer’s] LGB is not a build-to-print duplicate of
Raytheon’s Paveway II.”48 In a table of features, applicant
pointed out that it was a qualified supplier for
international Paveway IIs while opposer was not, and that
its total production of Paveway IIs far exceeded opposer’s
production.
The preceding evidence shows that the word “Paveway”
is the generic or common name for a specific type of laser
guided bomb. The Air Force and Navy have advertised for
multiple sources and have contracted with both opposer and
applicant for the production of Paveway laser guided bombs.
The definition of a trademark is a word, name, symbol or

46 Benjamin Ford Discovery Dep., p. 152, Exhibit 27.
47 Id.
48 Applicant denied that it was telling a potential customer that
opposer is a supplier of Paveway II. Benjamin Ford explained
that opposer’s laser guided bomb “is … an alternate source or
second source for our product, that it’s not a Paveway II. … The
fact it is not provided by us says it’s not a Paveway.”
(Benjamin Ford Discovery Dep., p. 157).
Opposition No. 91167189
Opposition No. 91174152
34
device used to identify and distinguish the goods of one
person from the goods of another and to indicate the source
of the goods. Section 45 of the Trademark Act of 1946, 15
U.S.C. § 1127. See also Zimmerman v. National Association
of Realtors, 70 USPQ2d 1425, 1429 (TTAB 2004) (the issue is
whether consumers perceive the term to be a type of product
or the source of the product). A trademark identifies a
single source, not multiple sources. Johnson & Johnson v.
E. I. DuPont de Nemours and Co., 181 USPQ 790, 791 (TTAB
1974) (the function of a trademark is to identify a single,
albeit anonymous, source of goods). The U.S. Air Force and
Navy use the term “Paveway” to identify products produced
by both parties. Therefore, relevant consumers use the
word “Paveway” to identify a type of laser guided bomb.
The above-noted evidence unequivocally demonstrates that
the relevant consumers use and understand “Paveway” to mean
a type of laser guided bomb.
Applicant contends that PAVEWAY is not generic for the
following reasons:
1. Applicant has used PAVEWAY as a trademark;
2. The media uses PAVEWAY as a trademark;
3. Opposer’s use of PAVEWAY has caused confusion;
4. Applicant has enforced its PAVEWAY trademark
rights;
Opposition No. 91167189
Opposition No. 91174152
35
5. The government recognizes applicant’s trademark
rights;
6. There is no competitive need for opposer to use
PAVEWAY;
7. The defense industry recognizes PAVEWAY as
applicant’s trademark; and
8. Opposer’s position in this proceeding is
inconsistent with opposer’s previous attempts to
register military terms.
A. Whether applicant has used PAVEWAY as a trademark?
Applicant contends, and the record supports, that
applicant has used PAVEWAY as a trademark. However,
applicant’s intent to exclusively appropriate the word
“Paveway” as its trademark is not at issue. The issue is
whether “Paveway” is recognized as a trademark for laser
guided bombs by the relevant public, not by the company
seeking to register the mark. In re 1800Mattress.com IP
LLC, 586 F.3d 1359, 92 USPQ2d 1682, 1685 (Fed. Cir. 2009)
(the issue is whether the relevant public understands the
term to be generic). The evidence noted above shows that
the U.S. Air Force and Navy, as well as the media writing
about the defense industry (and presumably read by relevant
customers), perceive the word “Paveway” to be a type of
laser guided bomb, not a source indicator.
Opposition No. 91167189
Opposition No. 91174152
36
B. Whether the media uses PAVEWAY as a trademark?
Applicant argues that there is “ample evidence of use
of the PAVEWAY mark in the media.”49 First, applicant
references its own advertisements that appear in defense
industry trade magazines. This evidence relates to how
applicant uses the word “Paveway” and how consumers may
encounter the term. This evidence is not conclusive that
the relevant public perceives the term as a trademark.
Rather, as noted above, the relevant consumers use the term
“Paveway” to identify a type of laser guided bomb
regardless of applicant’s advertisements.
Applicant also references articles appearing in
defense industry trade journals and argues that the word
“Paveway” is not used as a generic term. Applicant
specifically referenced opposer’s Exhibits 110 and 115 (see
note 36).50 Opposer’s Exhibit 110 is a February 25, 2002
article from Aerospace Daily. Applicant explains that the
author uses the generic terms “laser guided bombs” and
“GBU-16 kits” in referencing the goods.51 The article also
reports that opposer received a contract to supply Paveway
kits.

49 Applicant’s Brief, p. 8.
50 Applicant also referenced Pericci Dep. Exhibit 119, but that
exhibit could not be found in the record.
51 Applicant’s Brief, p. 9.
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37
In February 2001, Lockheed got a $ 9
million Navy contract for 500 GBU-16
Paveway kits, provided it could meet
qualifications.

Furthermore, the article quotes applicant’s spokeswoman as
explaining that applicant “got a contract last year that
was a competition [with Lockheed Martin] where we were the
sole winner to provide Paveway IIs.” The article quotes
applicant’s spokesperson as explaining that applicant and
opposer competed for a Paveway contract.
Opposer’s Exhibit 115 is a February 20, 2003 article
from Aerospace Daily. Applicant asserts that the article
uses the generic terms laser guided bombs and GBU-10, 12
and 16. Moreover, the article reports that applicant “was
the sole supplier of laser-guided bomb kits for many years,
but [opposer] qualified for the work a couple of years
ago.”52 The article also reports that opposer and applicant
are sources for Paveway bomb kits.
Sarah Hammond of [applicant’s] Missile
Systems unit in Tucson, Ariz. Said $ 2
billion will be spent over a six- or
seven-year period to buy Paveway bomb
kits “from both Raytheon and Lockheed
Martin, [with] details to come.”

52 Applicant’s Brief, p. 9.
Opposition No. 91167189
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38
The evidence referenced by applicant does not support
applicant’s contention that the defense industry media
recognizes the term “Paveway” as its trademark.
With respect to applicant’s argument that the news
media refers to the generic name of the product as “laser-
guided bombs,” there can be more than one generic term for
a product. In re 1800Mattress.com IP LLC, 92 USPQ2d at
1685.
C. Whether opposer’s use of PAVEWAY has caused confusion.
Applicant argues that opposer’s “use of the “PAVEWAY
mark in connection with its LGB products has resulted in
numerous instances of actual confusion.”53 According to
applicant, “[t]he extensive evidence of actual confusion
demonstrates that [applicant’s] PAVEWAY mark functions as a
source indicator among the relevant consuming public, and
that [opposer’s] use of the PAVEWAY mark deceives consumers
as to the source and quality of the underling [sic] LGB
products that are being sold.”54
Applicant did not have the confused personnel testify
regarding their purported confusion. Rather, applicant
introduced the instances of confusion through the Ford
Affidavit and the depositions of Ricky Friebert and Barry

53 Applicant’s Brief, p. 22.
54 Applicant’s Brief, p. 24.
Opposition No. 91167189
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39
Maxwell. While applicant asserts that its evidence is not
hearsay, we consider applicant’s testimony regarding
customer confusion to be an exception to the hearsay rule:
that is, the statements regarding the customers’ confusion
fall under the state of mind exception to the hearsay rule.
Nat’l Rural Elec. Coop. Ass’n v. Suzlon Wind Energy Corp.,
78 USPQ2d 1881, 1887 n.4 (TTAB 2006). Although,
applicant’s testimony regarding the instances of confusion
is admissible, the testimony is not as persuasive as it
might have been had it been proffered by the witnesses
experiencing the purported confusion. In this regard, it
is not clear that the witnesses experiencing the purported
confusion perceived PAVEWAY as a trademark.55 The testimony
is ambiguous. In other words, none of the customers
experiencing the confusion testified that they thought that
PAVEWAY was a trademark and, therefore, PAVEWAY identified
a single source.
Applicant referenced the following purported instances
of confusion in its brief. In October 2005, Benjamin Ford
and Richard Rhinehart briefed members of a defense ministry
regarding a PAVEWAY II product. Mr. Ford testified as
follows about what one of the attendees said:

55 In analyzing the purported instances of confusion, we will
maintain the confidentiality of applicant’s customers.
Opposition No. 91167189
Opposition No. 91174152
40
44. … [T]hat [applicant’s] group he
met with in May 2005 had not briefed
the same weapons capability. He
further stated that as a result of the
May briefing, and the reported lack of
ability to hit the moving targets, he
had advised [the defense ministry] to
remove [applicant] from the dual-mode
weapon competition because [applicant’s
PAVEWAY II] product did not meet [the
defense ministry’s] requirements.

45. [Applicant] advised [the defense
minister] that nobody from [applicant]
had briefed [the defense ministry in
May 2005, and that [the defense
minister] must been confused with
another competitor. It was later
determined that the May 2005 briefing
was by [opposer]. … [Applicant] was
almost eliminated from the competition
because of confusion caused by
[opposer’s] use of the PAVEWAY Mark in
connection with an inferior performing
product.56

Applicant contends that the customer thought that
applicant gave the first briefing because of opposer’s use
of PAVEWAY in connection with the laser guide bomb.57
However, it seems unlikely that opposer would not have
clearly identified itself as the source of the particular
“Paveway” laser guided bomb. Moreover, the customer may
have removed applicant from the consideration because the
customer thought that the PAVEWAY type laser guided bomb
did not meet its requirements, not because the customer

56 Benjamin Ford Affidavit ¶¶ 44-45.
57 Applicant’s Brief, p. 22.
Opposition No. 91167189
Opposition No. 91174152
41
thought that PAVEWAY was a brand name. As indicated above,
because the confused persons did not testify, there is
ambiguity surrounding the purported confusion and it
remains unclear whether the confusion was a result of the
customer believing that “Paveway” is applicant’s trademark.
Applicant identified instances in international sales
where opposer’s products have been used to fill orders in
lieu of orders for applicant’s products. In many cases,
the customers’ aircraft are certified to carry applicant’s
products but not opposer’s products. In those instances,
when opposer’s PAVEWAY laser guided bomb is sold in place
of applicant’s laser guided bomb, the bombs cannot be
properly fitted to the aircraft, nor tested by the
customers’ test equipment.58 According to Mr. Friebert,
customers have expressed concern that they might receive
opposer’s PAVEWAY laser guided bombs rather than
applicant’s PAVEWAY laser guided bombs. It is not clear
that the problems referred to by the customers are
trademark confusion as opposed to product confusion (e.g.,
the wrong model number). This is exactly the problem that

58 Applicant’s Brief, pp. 22, citing Friebert Dep., pp. 24-27.
Barry Maxwell also testified regarding these purported instances
of confusion. (Maxwell Dep., pp. 28-30). However, Mr. Maxwell
did not testify that he personally spoke with the customers
experiencing the confusion. Mr. Maxwell did not testify
regarding how he became aware of these purported instances of
confusion.
Opposition No. 91167189
Opposition No. 91174152
42
arises when a generic term is used to “identify” a product.
If a customer requests a pencil, the customer may get any
old pencil, made by any company. To get a specific pencil,
the customer has to use a trademark (e.g., I’ll take the
Eberhard-Faber 5111, please.) In fact this kind of
confusion seems to suggest that PAVEWAY is actually not
capable of distinguishing between these two company’s
products.
In another instance, the U.S. Navy was experiencing
accuracy issues. In trying the resolve the accuracy
issues, applicant contends that “it became apparent that
there was confusion resulting from [opposer’s] use of the
mark PAVEWAY in connection with LGB products.”59
It was determined that the accuracy
issues were with [opposer’s] LGB
products (MAU-209/B) and not
[applicant’s] PAVEWAY II LGB products
(MAU-169). The weapon loadout …
consisted of a majority of [opposer’s]
LGB products (MAU-209) because the
Officer assumed that, since the MAU-209
is a higher number than the MAU-169, it
must be newer or better. They were
unaware of the different manufacturers
as of the reason for the different
numbers.60

This purported instance of confusion is ambiguous.
Mr. Ford’s testimony is that the officer loading the

59 Ford Affidavit ¶ 46.
60 Ford Affidavit ¶ 46.
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43
weapons was unaware that there was more than one source of
PAVEWAY laser guided bombs and that he loaded the highest
model number.
We find that the testimony regarding the purported
instances of confusion is entitled to little weight because
the testimony is ambiguous. The allegedly confused persons
did not testify and, therefore, they were not subject to
cross examination as to whether they were in fact confused,
and if so, what caused their confusion.
D. Whether applicant has enforced its PAVEWAY trademark
rights?

Applicant argues that “[u]pon learning of [opposer’s]
progressive encroachment on its rights in the PAVEWAY mark,
[applicant] took several steps, including: (1) objecting
to [opposer’s] usurpation of [applicant’s] right in the
PAVEWAY mark; and (2) filing federal trademark applications
for the PAVEWAY mark.”61 Applicant cited testimony from
Ricky Friebert, applicant’s Paveway Program Director, and
Barry Maxwell, applicant’s Senior Manager of Growth and
Advanced Concepts for the Paveway Programs, to support its
contention that applicant protested opposer’s use of the
PAVEWAY mark. According to Mr. Friebert, it was a legal
problem. Specifically, Mr. Friebert testified that he and

61 Applicant’s Brief, p. 25.
Opposition No. 91167189
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44
Mr. Ford discussed sending the issue to the legal
department: “[t]he proper course of action is to give it
to our legal department and have them take proper course of
action. … [the discussion] went as simple as we ought to go
tell the legal department and I said you are right, we
ought to.”62 There is nothing in the record to show that
Mr. Friebert or Mr. Ford actually contacted applicant’s
legal department or that that applicant’s legal department
sent a protest to opposer.
Mr. Maxwell testified that with the exception of
defending the opposition, he was not aware that applicant
had done anything to protest opposer’s use of the term
“Paveway.”63 However, Mr. Maxwell did testify that
applicant had always objected to opposer’s use of the term
“Paveway.”
A. We always objected to it. I
recall having a discussion
initiated by Mr. Serra regarding
the PAVEWAY trademark.

Q. What was that discussion?

A. The discussion was can we come to
some form of a settlement on this
and get on. I said that is not my
decision to make.64

62 Friebert Dep., p. 35.
63 Maxwell Dep., p. 86.
64 Maxwell Dep., p. 86.
Opposition No. 91167189
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45
Despite having twice deposed Mr. Serra, applicant did not
proffer any testimony from Mr. Serra regarding any
discussions about “the PAVEWAY trademark.” Moreover,
there is no further evidence regarding any action by
applicant to protest opposer’s use of the term “Paveway.”
Furthermore, during his discovery deposition, Benjamin
Ford testified that he was unaware of any action taken by
applicant to protest opposer’s use of the term “Paveway.”
Q. Has [applicant] ever informed
[opposer] to stop using the term
PAVEWAY for its laser-guided bomb?

A. I don’t know specifics. I don’t
know any specifics.

Q. Why hasn’t [applicant] told them
to stop?

A. I don’t know. … They may have. I
just don’t know.

Q. Has [applicant] ever had a
discussion as to whether [opposer]
should stop using the term
PAVEWAY?

* * *

A. I don’t know.

Q. Are you aware of any
conversations?

A. With [opposer] or what?

Q. Within [applicant].

Opposition No. 91167189
Opposition No. 91174152
46
A. Yeah, I know we have discussed
their encroachment on our mark,
yes.

Q. And as a result of those
discussions, did [applicant]
decide to take any action?

* * *

A. I’m not going to answer.65

Later in his deposition, Mr. Ford testified that he
was unaware if applicant ever formally objected to
opposer’s use of the term “Paveway,” but that he thought
that he raised an objection although he could not recall
with whom or when.66
Applicant further contends that applicant “has
communicated with the U.S. Government about its rights in
the PAVEWAY mark and expressed concern about the confusion
caused by [opposer’s] use of the PAVEWAY mark.67
Q. So any dialogue between
[applicant] and the Air Force
regarding confusion between the
use of the term PAVEWAY between
[applicant] and [opposer] is
handled by the legal department?

* * *

A. All legal correspondence and
things related to legal aspects of
our business we give to our legal

65 Ford Discovery Dep., pp. 121-123. Apparently, Mr. Ford refused
to answer because the answer would potentially disclose advice of
counsel.
66 Ford Discovery Dep., p. 128.
67 Applicant’s Brief, p. 26.
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47
department. We do have a layman’s
dialogue expressing our
frustration with [opposer’s] use
of our name brand PAVEWAY.

Q. Have you had this layman’s
dialogue expressing your
frustration with [opposer’s] use
of the term PAVEWAY?

A. I would say yes.

Q. With whom?

A. I would say _________ back in 2006
just in, you know hall talk.

Q. What was the subject of the
discussion with _________?

A. He comes to program review on a
quarterly basis and we have time
over the break to talk and I might
say something to that nature.
There is not a date and time
specific meeting where I could
cite where that dialogue took
place. I think if anyone asked
him, he would confirm our
frustration.

* * *

Q. What was his response to you when
you raised these concerns?

A. That’s legal. That is out of my
authority.68

68 Freibert Dep., pp. 39-40. Applicant improperly designated some
of this testimony “Highly Confidential- Attorney’s Eye’s Only.”
Nevertheless, we will not disclose the identity of the person to
whom Mr. Friebert spoke. However, the unidentified person was a
Defense Department employee involved in the Paveway program.
(Friebert Dep., p. 40).
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48
Although applicant’s level of frustration apparently
reached the level of internal “hall talk,” there is no
evidence in the record that applicant’s legal department
expressed applicant’s “frustration” to the Department of
Defense, the Air Force or the Navy. Moreover, there is no
indication that applicant followed-up with Mr. Friebert’s
undisclosed contact to corroborate applicant’s frustration
with opposer’s use of the term “Paveway.”
In his affidavit, Benjamin Ford attested to the fact
that upon becoming aware of opposer’s use of the term
“Paveway,” applicant “communicated with the U.S. government
that the only authorized use of the trademark PAVEWAY is in
connection with [applicant] sourced LGB products.”69 Mr.
Ford did not identify who contacted the U.S. government on
behalf of applicant, and when, who applicant’s
representative contacted in the U.S. government, and how
the government responded, if it did respond, to applicant’s
complaint.
Mr. Ford was equally noncommittal during his discovery
deposition.
Q. Did [applicant] have any other
conversations with anyone else at
_____Air Force Base regarding what
the term PAVEWAY meant to them?

69 Ford Affidavit ¶41.
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49
A. We have had informal conversations
with the Air Force about using the
mark and not using the mark.

Q. When you say the Air Force, who
specifically did [applicant] have
conversations with?

A. I don’t know the specifics. I
don’t know.

Q. When you say informal
conversations, what does that
mean?

A. Well, it was discussions. I mean,
there was nothing in writing.

Q. When did these conversations take
place?

A. Over the years from - - I don’t
know the exact time.

Q. You can’t be any more specific
than that?

A. No.70

* * *

Q. Did [applicant] ever object to the
Air Force about the Air Force’s
use of PAVEWAY II?

A. Yeah. We have discussed it with
them.

Q. When did you first discuss it with
the Air Force?

A. I don’t recall the specifics.

Q. Was [applicant] concerned about
the Air Force’s use of the term

70 Benjamin Ford Discovery Dep., pp. 131-132.
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50
PAVEWAY II when they were
considering a second source for
PAVEWAY II?

A. No, not so much because we were
the only supplier at the time.

Q. And when the documents that we
looked at today talk about the
U.S. Government looking for a
second source for PAVEWAY II
laser-guided bombs, did that cause
any concerns with [applicant] with
respect to the trademark usage of
the term PAVEWAY?

A. No. We were more concerned about
the performance.

Q. You were more concerned about the
performance issue than trademark
issues; is that a fair statement?

* * *

A. I don’t know if that’s …

Q. Well, we have looked at documents
today where [applicant] has raised
the issue of performance issues
with respect to [opposer’s] laser-
guided bombs; is that correct?

A. Right.

Q. Did [applicant] ever raise the
issue of the term PAVEWAY by the
U.S. Government for [opposer’s]
laser-guided bombs?

* * *

A. Yes.

Q. And in what specific instances did
they do that?

Opposition No. 91167189
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51
A. We talked with _____ Air Force
Base, with the people.

Q. Was it ever in writing?

A. I don’t recall it in writing.

Q. The talk that you did at _____ Air
Force Base, was that the
discussions we discussed earlier?

A. Yes.

Q. Was it the discussions with
Cummings and Oakeson?71

A. And others.

Q. And what others were they?

* * *

A. Yeah. Like I said, I don’t think
I recall the specific names or who
was who?72

In view of applicant’s assertions that the “PAVEWAY
mark is a strong and highly distinctive mark that
identifies [applicant] as the source of its family of
quality PAVEWAY LGB products,”73 that applicant “has made a
significant investment in developing goodwill in the
mark,”74 and that there were actual instances of confusion,
we find applicant’s testimony vague and evasive regarding

71 Curtis Cummings and Steven Oakeson executed affidavits
attesting to their opinion that the term “Paveway” designates the
product, not a source.
72 Benjamin Ford Dep., pp. 160-161.
73 Applicant’s Brief, p. 4.
74 Applicant’s Brief, p. 39.
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52
its enforcement of the PAVEWAY mark unpersuasive. In fact,
the record shows that applicant failed to expressly and
unequivocally lodge an objection with opposer regarding its
use of the term “Paveway” and that applicant also failed to
notify the U.S. Air Force and Navy regarding their
purported misuse of the term. Although applicant claims to
have made some efforts to lodge such protests, it was
unable to produce any details about such efforts or any
written letters or memoranda memorializing them.
E. Whether the government recognizes applicant’s
trademark rights?

Applicant contends that the government recognizes that
PAVEWAY is applicant’s mark and is taking steps to modify
its practice.75 First, applicant explains that the
government’s specifications for a new laser-guided bomb did
not use the term “Paveway.” According, to applicant this
demonstrates that the government is modifying its practice
to avoid using PAVEWAY as a generic term.76 However,
because there can be more than one generic term for a
product, In re 1800Mattress.com IP LLC, 92 USPQ2d at
1685, all this evidence proves is that the government used
generic terms other than “Paveway.” There is no evidence

75 Applicant’s Brief, p. 27.
76 Applicant’s Brief, pp. 27-28.
Opposition No. 91167189
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53
in the record suggesting that the Department of Defense
stopped referring to the product as a “Paveway.”
Also, applicant asserts that in the February 2006
Budget Estimate for the procurement of ammunition for FY
2006, one of the entries for laser guided bombs identified
PAVEWAY as being uniquely associated with applicant.77 The
description of the product reads as follows:
1. The GBU-10/12 Computer Control
Group is a laser homing guidance unit
used on the GBU-10(MK-84 Warhead, 200lb
class) or GBU-12(MK-82 Warhead, 500lb
class) PAVEWAY II Laser Guided Bomb
(LGB). The PAVEWAY II system has
folding wings which open upon release
for maneuverability and increased
aircraft payload. These weapons are
primarily used for precision bombing
against hardened and non-hardened
targets.

2. This item is procured through two
different contractors. The item name
has been changed from MAU-169H/B
PAVEWAY II Guidance Control Unit to
GBU-10/12 Computer Control Group,
because the previous name designates
only one of the contractor’s product.
Both products are identical in form,
fit and function.

While paragraph No. 2 appears to support applicant’s
contention, paragraph No. 1 shows the government
referencing the product of both parties as the GBU-10 or

77 Benjamin Ford Affidavit ¶56 and Benjamin Ford Discovery Dep.,
Exhibit 29 (Bates No. R-005179).
Opposition No. 91167189
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54
GBU-12 PAVEWAY II Laser Guided Bomb. Thus, it is possible
that the government realized that the model number MAU-169
is associated solely with applicant rather than term
“Paveway.” In fact, Mr. Ford testified that the MAU-169H/B
is applicant’s model number.
Q. Isn’t it true that the MAU-169 HB
only designates [applicant’s]
computer control group?

A. Right. I believe this was based
on our objections, they tried to
make a change to correct that.

Q. So the correction was that they
struck the MAU-169 HB?

A. PAVEWAY II.

Q. PAVEWAY II?

A. Right. Because that is one
contractor’s product.

Q. That is not a recognition that
PAVEWAY II is a trademark of
[applicant], is it?

* * *

A. I don’t know. I would hope so.

Q. But you don’t know.

A. I don’t know.78

In any event, this is the only evidence where the
government even arguably recognized “Paveway” as a

78 Benjamin Ford Discovery Dep., p. 168.
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55
trademark rather than a type of laser guided bomb; and
subsequent Department of Defense communications use Paveway
as a designation for a type of bomb, not a brand of bomb.
As noted above, the Department of Defense announcement of
awarded contracts (defense.gov/contracts) (September 24,
2010), the U.S. Air Force solicitation notice for “Computer
Control Group Paveway II” (fbo.gov) (May 24, 2010), the
U.S. Air Force notice for “GBU-16 Laser Guide Bomb Sources
Sought” (fbo.gov) (April 9, 2010), and the Paveway II Laser
Guided Bomb PowerPoint presentation by DaVon W. Day, USAF
(October 30, 2007) at the 2007 Precision Guided Munitions
Technical Coordination Group (PGMTCG) meeting. These are
all subsequent to the budget estimate, and show the
government using the term “Paveway” to identify a type of
laser guided bomb.
F. Whether there is any competitive need for opposer to
use PAVEWAY?

Applicant argues that opposer is the only other
manufacturer of laser guided bombs that uses the term
“Paveway.” Other manufacturers of laser guided bombs do
not use the term “Paveway” “but use a variety of non-
conflicting marks in marketing and selling their products.
… This demonstrates that quite clearly that there is no
Opposition No. 91167189
Opposition No. 91174152
56
competitive need for others to use the PAVEWAY mark.”79
While the competitive need to use a term may be probative
of whether the term is generic, the correct inquiry is
whether the relevant public would understand the term to be
generic. In re 1800MATTRESS.COM IP LLC, 92 USPQ2d at 1685.
To the extent competitor need is relevant – both the main
customer and the only other relevant competitor – opposer –
use “Paveway” as a generic term for the product, and thus
show a need to do so. We do not need to look at any other
competitors, because the parties are the only ones
qualified by the main customers to make this type of
product. In fact, the use of the term “Paveway” for other
products made by other manufacturers would be
misdescriptive.
G. Whether the defense industry recognizes PAVEWAY as
applicant’s trademark?

Applicant introduced the three declarations listed
below from individuals who work for defense contractors
stating that they associate PAVEWAY as applicant’s
trademark.
1. Jay Diston, Manager of Contracts for Atlantic
Inertial Systems, Inc. Mr. Diston’s is responsible for
“proposing, negotiating and managing the contract from

79 Applicant’s Brief, p. 29.
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57
cradle to tomb with a variety of customers on a variety of
programs.”80 Mr. Diston also stated that “I associate the
Paveway trademark with [applicant].”
2. Thomas Harlock, Business Manager at Carleton
Technologies Inc., “a leading supplier to the Aerospace &
Defense markets.” Mr. Harlock stated that “I, as well as
all Carleton employees, associate the Paveway trademark
with [applicant].”
3. David Carpenter, Sales Manager for Stanley
Machining and Tool Corporation. Mr. Carpenter is
responsible for supplying parts for laser-guided bombs.
Mr. Carpenter stated that “I associate the Paveway
trademark with [applicant].”
Mssrs. Carpenter and Harlock work for companies that
supply parts for laser guided bombs. It is not clear what
Mr. Diston’s company, Atlantic Inertial Systems, does.
Assuming that Atlantic Inertial Systems is also a parts
supplier for laser guided bombs, then all three declarants
work for companies that supply parts to manufacturers of
laser guided bombs (i.e., defense contractors). There is
no indication or explanation as to how the declarants or

80 Although Mr. Diston stated that he has responsibilities
relating to laser-guided bombs, he did not identify what his
company does or what the “contract” relates to.
Opposition No. 91167189
Opposition No. 91174152
58
their companies interact with the U.S. Air Force or Navy,
the relevant customers. While the declarations are
probative as to how these defense contractors perceive the
term “Paveway,” the declarations are not as probative as
the declarations of Messrs. Cummings and Oakeson, who
worked for the Air Force, a relevant customer, and Mr.
Driscoll, who worked as a broker between the U.S.
government and foreign military purchasers.
H. Whether opposer’s position in this proceeding is
inconsistent with opposer’s previous attempts to
register military terms?

Applicant contends that opposer has previously applied
to register marks that have been refused on the ground that
they were generic or descriptive and that in responding to
those refusals, opposer has made statements that are
inconsistent with its position in this case.81 For example,
in responding to the refusal to register the term “Joint
Strike Fighter,” opposer argued that after it was awarded
the contract, it became recognized as the sole source of
the product and owner of the trademark.
Once the contract is awarded and the
project is completed, the name
originally assigned by the government
is then used in connection with the
resulting goods and is given to the
manufacturer of those resulting goods.
… As the contract has been awarded to

81 Applicant’s Brief, p. 30.
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59
Applicant for nearly ten years now, the
U.S. military and all interested
parties recognize Applicant has the
sole source of the JOINT STRIKE FIGHTER
aircraft, and the owner of the mark in
general.82

Applicant argues that this evidence shows that “terms
used to identify military products are associated with, and
owned by, the sole or prime manufacturer of the product. …
[T]hat [opposer] was well aware of the trademark status of
PAVEWAY when it entered the LGB market,” and “[R]ather than
respecting [applicant’s] well established rights, [opposer]
deliberately disregarded those rights and sought to take
advantage of the goodwill embodied in the PAVEWAY mark
while establishing a new product line for [opposer]. … This
type of ‘palming off’ is precisely what the Lanham Act is
designed to prevent.”83
There are numerous problems with this argument.
First, to the extent that applicant is asserting as a
defense that opposer is guilty of unfair competition, the
Board is not authorized to determine that issue. Person's
Co. v. Christman, 900 F.2d 1565, 14 USPQ2d 1477, 1481 (Fed.
Cir. 1990) (Board cannot adjudicate unfair competition
issues); Ross v. Analytical Technology Inc., 51 USPQ2d

82 Applicant’s Exhibit 204, the July 13, 2010 Response.
83 Applicant’s Brief, p. 33.
Opposition No. 91167189
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60
1269, 1270 n.2 (TTAB 1999) (no jurisdiction over unfair
competition claims); Hershey Foods Corp. v. Cerreta, 195
USPQ 246, 252 (TTAB 1977) (determination of whether opposer
is guilty of unfair business practices is not within the
province of the Board).
Second, opposer’s statements in its previous
applications may be used in evidence against opposer as
admissions against interest. TBMP §§ 704.03(b)(2) and
704.04 (3rd ed. 2011). However, no equitable estoppel may
be derived from opposer’s inconsistent position in those
previous applications. American Rice, Inc. v. H.I.T.
Corp., 231 USPQ 793, 798 (TTAB 1986). Moreover, while “a
party’s earlier contrary opinion may be considered relevant
and competent. Under no circumstances, may a party’s
opinion, earlier or current, relieve the decision maker of
the burden of reaching his own ultimate conclusion on the
entire record.” Interstate Brands Corp. v. Celestial
Seasonings, Inc., 576 F.2d 926, 198 USPQ 151, 154 (CCPA
1978). We do not take opposer’s previous positions in
other applications involving other marks and other goods as
detracting materially from its position here that the term
“Paveway” is generic because the primary issue is how the
relevant consumer perceives the term under the facts of
record in this proceeding.
Opposition No. 91167189
Opposition No. 91174152
61
Finally, if you have to lay “blame” on anyone for this
situation, it falls more on the Department of Defense and
on applicant, than on opposer. There is no testimony or
evidence that shows that opposer is trying to fool anyone
that its products originate with applicant. It was the
Department of Defense that decided to obtain a second
source for Paveway laser-guided bombs, not opposer.
Moreover, opposer is not trying to register the mark; it is
only trying to prevent applicant from doing so. That is
not palming off. Opposer has adapted to the marketplace
and is asserting that nobody owns the term “Paveway” as a
mark.
Decision: The opposition is sustained and
registration to applicant is refused.