North Atlantic Operating Company, Inc., North Atlantic Trading Company, Inc., and National Tobacco Companyv.DRL Enterprises, Inc.

Trademark Trial and Appeal Board

Jul 1, 2016

No. 92043031 (T.T.A.B. Jul. 1, 2016)

This Opinion is not a
Precedent of the TTAB

Hearing: June 28, 2016 Mailed: July 1, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

North Atlantic Operating Company, Inc.,
North Atlantic Trading Company, Inc., and
National Tobacco Company

v.

DRL Enterprises, Inc.

_____

Opposition No. 91158276 (parent)
Opposition No. 91158552
Opposition No. 91158568
Opposition No. 91158696
Opposition No. 91158816
Opposition No. 91158978
Opposition No. 91158980
Opposition No. 91158981
Opposition No. 91159360
Cancellation No. 92042927
Cancellation No. 92042928
Cancellation No. 92043031

_____

Richard S. Mandel of Cowan, Liebowitz & Latman, P.C.
for North Atlantic Operating Company, Inc., North Atlantic Trading Company,
Inc., and National Tobacco Company.
Anthony J. McShane of Neal, Gerber & Eisenberg LLP
for DRL Enterprises, Inc.
_____

Opposition No. 91158276 et. al.
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Before Quinn, Bergsman and Lykos,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:
DRL Enterprises, Inc. (hereinafter Defendant) has registered the marks listed
below for cigarette rolling papers, in Class 34:1
1. Registration No. 1481006 for the mark 1.0 (stylized) shown below:2

2. Registration No. 1331207 for the mark 1.5 (stylized) shown below:3

1 DRL Enterprises, Inc. is the owner of the decimal designation registrations and applications
at issue in these proceedings. Republic Tobacco distributes the products on behalf of DRL
Enterprises, Inc. Gold Discovery Dep., pp. 18-19 (140 TTABVUE 65-66); Gold Testimony
Decl. ¶1 (179 TTABVUE 4). We refer to DRL Enterprises and Republic Tobacco collectively
as “Defendant.”
2 Registered March 15, 1988; renewed. While maintaining that “1.0” was not merely
descriptive, Defendant disclaimed the exclusive right to use “1.0.” December 22, 1986
Response to an Office Action. We find this to be a disclaimer offered in the alternative and,
therefore, it does not constitute a concession that “1.0” is not inherently distinctive. See In re
RiseSmart Inc., 104 USPQ2d 1931, 1932 (TTAB 2012). See also TMEP § 1213.01(d) (2016).
3 Registered April 16, 1985 under the provisions of Section 2(f) of the Trademark Act, 15
U.S.C. § 1052(f); second renewal. In the application, Defendant claimed that “its mark is
inherently distinctive and/or that even it its mark is not inherently distinctive, it is now
distinctive by virtue of its acquisition of secondary meaning.” We find that Defendant claimed
acquired distinctiveness in the alternative and, therefore, it does not constitute a concession
that “1.5” is not inherently distinctive. See In re Thomas Nelson, Inc., 97 USPQ2d 1712, 1713
(TTAB 2011). See also TMEP § 1202.02(c).
Opposition No. 91158276 et. al.
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3. Registration No. 1328866 for the mark 1.25 (stylized) shown below:4

Defendant has applied to register the marks listed below for cigarette rolling
papers:
1. Serial No. 76369872 for the mark 1.25 (typed drawing form);5 and
2. Serial No. 78157851 for the mark 1.5 (typed drawing form).6
On August 7, 2001, Defendant applied to register the marks listed below for
cigarettes, in Class 34, based upon Defendant’s allegation of a bona fide intention to
use the marks in commerce under Section 1(b) of the Trademark Act:
1. Serial No. 76296943 for the mark 1.25 (stylized) shown below;

2. Serial No. 76296931 for the mark 1.25 (typed drawing form);

4 Registered April 2, 1985 under the provisions of Section 2(f) of the Trademark Act, 15 U.S.C.
§ 1052(f); second renewal. In the application, Defendant claimed that “its mark is inherently
distinctive and/or that even it its mark is not inherently distinctive, it now distinctive by
virtue of its acquisition of secondary meaning.” We find that Defendant claimed acquired
distinctiveness in the alternative and that it does not constitute a concession that “1.25” is
not inherently distinctive. In re Thomas Nelson, Inc., 97 USPQ2d at 1713.
5 Filed February 12, 2002 based on use in commerce under the provisions of
Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f).
6 Filed August 26, 2002 based on use in in commerce under the provisions of
Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f).
Opposition No. 91158276 et. al.
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3. Serial No. 76296926 for the mark 2.0 (typed drawing form);

4. Serial No. 76158978 for the mark 1.5 (stylized) shown below;

5. Serial No. 76296945 for the mark 1.5 (typed drawing form);

6. Serial No. 76296942 for the mark 1.0 (typed drawing form);

7. Serial No. 76296941 for the mark 1.0 (stylized form) shown below:

North Atlantic Operating Company, Inc., North Atlantic Trading Company, Inc.,
and National Tobacco Company (hereinafter “Plaintiffs”) petitioned to cancel the
registered marks for cigarette rolling papers, and opposed the registration of the
marks 1.25 and 1.5, in typed drawing form and stylized form, for cigarette rolling
papers on the grounds that they are generic terms for cigarette rolling papers and, in
the alternative, that they are merely descriptive of the size of the cigarette rolling
papers.7

7 Plaintiffs have elected not to pursue their pleaded claims based on fraud, deceptive
misdescriptiveness or the improper use of the federal registration symbol. Plaintiffs’ Brief, p.
5 (229 TTABVUE 14).
Opposition No. 91158276 et. al.
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Plaintiffs opposed the registration of the marks for cigarettes on the grounds that
the respective marks 1.0, 1.25, 1.5, and 2.0, in typed drawing and stylized form, are
generic terms for cigarettes, that they are merely descriptive of the size of the paper
in which the cigarette is rolled, and that Defendant lacked a bona fide intent to use
the marks to identify cigarettes at the time the applications were filed.8
Defendant, in its Answer, denied the salient allegations in the complaints. In six
separate affirmative defenses, Defendant alleged, in essence, that Plaintiff’s claims
are barred by acquiescence on the ground that Plaintiffs previously acknowledged
Defendant’s ownership of its numeric marks for smoking products.9
I. Preliminary Issues
A. Defendant’s objections to evidence.

In the August 6, 2014 Order, the Board requested that the parties limit their
evidentiary issues to objections that may be outcome-determinative.
The parties are discouraged from filing objections that are
not outcome-determinative or that do not have an effect on
either their position or their adversary’s position. The
Board will consider all the testimony and evidence keeping
in mind the nature of the evidence (e.g., whether it is
hearsay, whether it is relevant, etc.) and according the

8 Plaintiffs have elected not to pursue their pleaded claims based on fraud, deceptive
misdescriptiveness or the improper use of the federal registration symbol. Plaintiffs’ Brief, p.
5 (229 TTABVUE 14).
9 In the April 29, 2014 Order denying Defendant’s motion for summary judgment, the Board
noted that the equitable defense of acquiescence is not available against claims that a term
is generic or merely descriptive because it is in the public interest to have registered terms
that are generic or merely descriptive stricken from the register and that this interest cannot
be waived. 125 TTABVUE 13. In the August 6, 2014 Order, the Board noted the holding in
the April 29, 2014 Order and that Defendant’s right to argue that the affirmative defense of
acquiescence is applicable to all the claims asserted by Plaintiffs is preserved for appeal. 128
TTABVUE 5.
Opposition No. 91158276 et. al.
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testimony and evidence whatever probative value the
testimony and evidence merits.10
Nevertheless, Defendant lodged numerous objections. None of the evidence sought
to be excluded is outcome-determinative. Moreover, the Board is capable of weighing
the relevance and strength or weakness of the objected-to testimony and evidence,
including any inherent limitations, and this precludes the need to strike the
testimony and evidence. Given these facts, coupled with the number of objections, we
see no compelling reason to discuss the specific objections. As necessary and
appropriate, we will point out any limitations applied to the evidence or otherwise
note that the evidence cannot be relied upon in the manner sought. We have
considered all of the testimony and evidence introduced into the record. In doing so,
we have kept in mind the various objections raised by the parties and we have
accorded whatever probative value the subject testimony and evidence merit.
B. The testimony of Defendant’s witnesses Donald Levin and Seth Gold.
As discussed more fully below, the record establishes, and Defendant does not
contest, that there are primarily four sizes of cigarette rolling papers: single width,
1¼, 1½, and double wide.11 Thus, we have concerns about the testimony of Donald
Levin, Defendant’s Chairman, and Seth Gold, Defendant’s Vice President and
General Counsel, regarding Defendant’s use of the 1.0, 1.25 and 1.5 designations and

10 112 TTABVUE 8.
11 Defendant admitted that “[Defendant’s] mark, ‘1.25’ relates to size.” Defendant’s response
to Plaintiffs’ request for admission No. 4 (141 TTABVUE 32). See also the September 1979
issue of the National Lampoon magazine where Defendant placed an advertisement touting
that “JOB has your size” with an offer to sell double-width, 1.5, 1.25 and single width papers.
142 TTABVUE 116.
Opposition No. 91158276 et. al.
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their relationship to the size of cigarette rolling papers. We are particularly struck by
their evasiveness and failure to respond directly to straightforward questions asked
by Plaintiffs’ counsel. For example, during his discovery deposition, Mr. Levin was
unable to recall if his company was currently selling cigarette rolling papers
designated as 1¼ and 1½ size,12 and during his cross-examination deposition, he was
unable to identify most of the advertisements that his company had published.13
Further, Mr. Levin refused to acknowledge that 1.5 was a number.
Q. Now, when you picked that designation obviously
you were aware that you were picking a number,
right?
A. No.
Q. Really? You didn’t know that 1.5 was a number
when you picked it?
A. It was a fanciful term to me. We have to go back in
time to this is the Vietnam War, this is the Haight
Ashbury era of our lives. I don't know how old you
are. I’m not sure if you were living during those days.
Q. I was.
A. There were no cell phones, there was no cable
television, there was no Internet, there was no
digital world. There was talk at that time they were
trying to get to the metric system in the United
States. I believe we were still on the English system,
is it? We used quarters and eighths. So at that time
everything was a half. There was no points. So 1.5 to
me wasn't a number. It was 1.5. I guess it was -- in
terms of today it's a number. I guess then it would

12 Levin Discovery Dep, p. 34-35 (140 (TTABVUE 26-27).
13 204 TTABVUE 22, 24, 44, 46-47, 77-78, 82, and 85.
Opposition No. 91158276 et. al.
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have been a number, but I didn't think of it as a
number. It was a fanciful trademark.14
Mr. Levin dodged answering simple “yes or no” questions such as whether
Defendant uses JOB 1.0 in connection with single width paper. We note Defendant’s
advertisement introducing its JOB 1.0 cigarette rolling paper stating the “New 1.0™
Cigarette Paper in new Single-Width Size, the original size cigarette paper for the
more experienced rollers.”15
Q. Were you the person who made the decision to use
the designation 1.0?
A. Correct.
Q. And did you actually come up with that designation?
A. I believe so, yes.
Q. And when you chose it were you intending to use it
on a single width product?
A. I intended to use it on a product.
Q. A single width product?
A. A product. It wasn’t -- again, for sake of clarity, a
single width paper has various sizes. There’s not
such a thing as a size of a single width paper. I don’t
mean to be difficult with you, but the single width
paper made by one manufacturer is different in size
perhaps than the size of a different manufacturer.
So within the range I wanted to make a single width
paper, but it wasn't like this size paper. It was a
single width paper, but not necessarily the same
single width paper as another single width paper.
Is that clear as mud?

14 204 TTABVUE 11-12.
15 143 TTABVUE 53.
Opposition No. 91158276 et. al.
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Q. Yes.
A. Okay.
Q. You did intend to use it on what was going to be the
smallest of the papers in the line when you selected
that designation, correct?
A. At that point in time, yes.16
Mr. Gold’s testimony was equally evasive. For example, Mr. Gold refused to
acknowledge that “Top 1½ size” is an example of “1½” used in connection with the
word “size.”17
Q. Let’s jump ahead to page 170, two pages ahead, the
Top products. That says “Top 1 1/2 size.” Have you
ever seen that product before?
18

A. Yes, I have.
Q. And that’s also a product distributed by [Defendant],
correct?

16 204 TTABVUE 78-80. See also Levin Discovery Dep. p. 35 and Exhibit 5 (140 TTABVUE
27 and 40-41) (when asked to explain the meaning of “available in both 1 ¼ and 1 ½ widths”
appearing on a package of papers sold by Defendant, Mr. Levin testified “1 ¼ or 1 ½ of
what?”).
17 As discussed infra, cigarette rolling papers are sold in different sizes to satisfy consumer
preferences.
18 201 TTABVUE 277.
Opposition No. 91158276 et. al.
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A. Correct.
Q. And that would be an example of [Defendant] using
the designation 1 1/2 in reference to the word “size,”
correct?
A. No.
Q. That would not be an example of that?
A. You say “with reference to the word size” and the
answer is with the word “size,” but my point from
the earlier testimony, which we have already gone
over twice, is that this presentation is used over a
variety of dimensions, a variety of surface areas so
that it itself is fanciful. It’s just a convention in the
industry, but, in fact, as we've seen, the variation 16
percent in 1 1/2, 30 percent in 1 1/4, it doesn’t refer
to a particular size, but the word “size” does appear.
So when you say “with reference to size,” that’s not
correct. With the word “size,” there’s a kind of
presentation, I would say that’s what it is.
Q. The presentation on the product is 1 ½ size, correct?
A. Yes, but it’s not with reference to size.
Q. It says “1 1/2 size” with reference to something other
than size is your testimony, right?
A. Correct.
Q. “Size” is meant there -- what does “size” mean there?
Why is the word “size” there at all?
A. That's the point. We've gone through this. There’s
such a variation that it doesn’t translate to size as
we know all the other products in the world. It’s a
tradition of presentation in the cigarette paper
industry, but it doesn’t reference any particular size.
* * *
Q. So your testimony is that the “1 1/2 size” on the Top
product doesn’t communicate anything to the
consumer about the size of the product?
Opposition No. 91158276 et. al.
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A. It doesn’t convey a meaningful size. There is no such
thing as a 1 1/2 size in the paper industry. Someone
without picking up the booklet and using it won’t
know what he or she is getting.
Q. Then why put it there at all?
A. That’s how things have been done.
Q. And it’s your testimony that consumers would pay
no attention to that; they wouldn’t understand it as
meaning anything?
A. Well, after X amount of time ordering it, they would
look to it as something they’ve seen before.
Q. You don’t think they'd understand that 1 1/2 size
paper to be larger than another Top offering that’s 1
1/4?
A. I think they pick the paper they want and that’s the
one they get. I don’t think they think that there's any
relation. They don’t think in those terms.
Q. You don’t think the average consumer seeing a Top
1 1/4 and a Top 1 1/2 wouldn’t draw the conclusion
that the Top 1 1/2 size is a larger version of that
product?
A. That’s like saying wouldn't the person who sees a
Zig-Zag 1 1/2 and a Zig-Zag 1 1/4 think the 1 1/2 is
bigger and it turns out they’re the same size.19
On subsequent cross-examination, Mr. Gold testified that size does not mean size.
Q. Have you seen Exhibit 17 before?

19 201 TTABVUE 61-64. See also Gold Discovery Dep., pp. 30-31 (140 TTABVUE 70-71) (“It’s
not 1-1/2 of anything.”).
Opposition No. 91158276 et. al.
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20

A. Something like it.
Q. And that promotional piece says “Holds all three
popular sizes,” correct?
A. Correct.
Q. And those sizes that are being referenced there
would be the 1.0, 1.25, and 1.5 products, right?
A. Once again, we’ve never argued that within our line
these papers come in different sizes. It’s very clear.
Q. You’ve never argued that they don’t come in
different sizes, right?
A. We’ve never said that they don’t come in different
sizes. We say yes, they come in different sizes, but
none of these is a size that conveys particular
information to a consumer other than one who’s used
it before and liked it.21
This testimony illustrates a pattern of conduct on the part of Messrs. Levin and
Gold that is harassing, frivolous, and not reasonably based on the knowledge of the
witnesses. In short, we find their testimony is not credible. Accordingly, any

20 201 TTABVUE 452. The text in the lower-right side includes “Holds all 3 popular sizes.”
21 201 TTABVUE 128. See also 201 TTABVUE 20 (“Well, within 1.5 there are different sizes.
I mean, the information is the information, but they’re of different size, but they’re not
different sizes.”).
Opposition No. 91158276 et. al.
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testimony provided by Messrs. Levin and Gold based on their knowledge and
experience in the cigarette and cigarette rolling paper industries has little, if any,
probative value.22
II. The Record
The record includes the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), Defendant’s registration and application files. Pursuant to the
August 6, 2014 Order, direct testimony may be introduced though declarations or
affidavits and documents produced by a party in response to a request for production
of documents may be introduced into evidence through a notice of reliance by the
propounding party.23
A. Plaintiff’s Testimony and Evidence
1. Testimony declaration of Keith Burdick, co-owner of NxGP, LLC, with
attached exhibit;24

22 This is not the first time the credibility of Defendant’s witnesses has been questioned by a
court. In Top Tobacco, L.P. and Republic Tobacco L.P. v. North Atlantic Operating Company,
Inc. and National Tobacco Company, Inc., 2007 U.S. Dist. LEXIS 28543 (N.D. Ill. April 17,
2007), the court noted Defendant’s “apparent willingness to say whatever it believes suits it
at the time,” that Mr. Levin “refused to concede the obvious,” that the court “could hardly
believe that Levin gave … testimony with a completely straight face,” that Mr. Levin’s
testimony was “absurd,” and that he was “not playing it straight.” Id. at 14-16.
23 128 TTABVUE.
24 137 TTABVUE.
Opposition No. 91158276 et. al.
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2. Testimony declaration of Joshua D. Kesselman, founder of HBI
International with experience in the distribution and sale of cigarette
rolling papers, with attached exhibits;25
3. Plaintiffs’ first notice of reliance [Part 1] on excerpts from the January 6,
2011 discovery deposition of Donald R. Levin, Defendant’s Chairman, with
attached exhibits;26
4. Plaintiffs’ first notice of reliance [Part 2] on excerpts from the January 5,
2011 discovery deposition of Seth I. Gold, Defendant’s Vice President and
General Counsel, with attached exhibits;27
5. Plaintiffs’ second notice of reliance on the following items:
a. Defendant’s responses to Plaintiffs’ Interrogatory No. 10;28
b. Defendant’s responses to Plaintiffs’ Interrogatory No. 29 in the
cancellation proceedings;
c. Defendant’s responses to Plaintiffs’ requests for admission Nos. 4, 5, and
6; and
d. Defendant’s responses to Plaintiffs’ requests for admission Nos. 13, 14,
19, 20, 22-24, 26-33, 36, 37, 42, 43, 45-47, 49 and 50;

25 138 TTABVUE. The Kesselman declaration was submitted a second time at 146
TTABVUE.
26 140 TTABVUE.
27 140 TTABVUE. The confidential portion of the Gold discovery deposition is filed at 139
TTABVUE.
28 141 TTABVUE.
Opposition No. 91158276 et. al.
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6. Plaintiffs’ third notice of reliance on the following items:29
a. Defendant’s advertisements for cigarette rolling papers in printed
publications, from 1976 through 1981, purporting to set forth the
numeric designations 1.25, 1.5 and 1½ as size designations;30
b. Third-party advertisements for cigarette rolling papers in printed
publications, from 1976 through 1985, purporting to show numbers used
as size designations;31 and
c. Dictionary definitions and encyclopedia entries purportedly to show that
“roll your own cigarettes” are cigarettes made from loose tobacco and
papers;32
7. Plaintiffs’ fourth notice of reliance on the following items:33
a. Copies of printouts of third-party websites purportedly “showing the
interchangeable use of whole, fractional and/or decimal designations by
manufacturers, wholesalers, retailers and secondary market sellers to
designate or refer to the size of cigarette rolling papers”;34

29 142 TTABVUE.
30 142 TTABVUE 10-140.
31 142 TTABVUE 141-259
32 142 TTABVUE 261-295.
33 143 TTABVUE.
34 143 TTABVUE 8-45.
Opposition No. 91158276 et. al.
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b. Copies of Defendant’s advertising and packaging purportedly “using
whole, fractional and decimal numeric designations to refer to the size
of its cigarette rolling papers”;35 and
c. Copies of advertising of third-party cigarette rolling paper
manufacturers purportedly “using whole, fractional and decimal
designations to refer to the size of their cigarette rolling papers”;36
8. Plaintiffs’ fifth notice of reliance on the following items:37
a. Copies of four third-party registrations for cigarette papers consisting in
part of the decimal designation 1.0 or 2.0 where the exclusive right to
use 1.0 and 2.0 were disclaimed;38
b. A copy of the relevant portion of the file history for Registration No.
1399770 for the mark JOKER 1.0;39
c. A copy of the relevant portion of the file history for Registration No.
1399769 for the mark JOKER 2.0;40

35 143 TTABVUE 47-59.
36 143 TTABVUE 61-80.
37 144 and 145 TTABVUE.
38 144 TTABVUE 12-39.
39 144 TTABVUE 41-48. Registered July 1, 1986; renewed. Registrant disclaimed the
exclusive right to use 1.0 in response to a requirement holding that 1.0 is merely descriptive.
144 TTABVUE 42.
40 144 TTABVUE 50-56. Registered July 1, 1986; renewed. Registrant disclaimed the
exclusive right to use 2.0 in response to a requirement holding that 2.0 is merely descriptive.
144 TTABVUE 51.
Opposition No. 91158276 et. al.
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d. A copy of the relevant portion of the file history for Registration No.
1399771 for the mark E-Z WIDER 1.0;41
e. A copy of the relevant portion of the file history for Registration No.
1399771 for the mark E-Z WIDER 2.0;42
f. Copies of 69 third-party registrations for, inter alia, both cigarettes and
cigarette rolling papers;43
g. A copy of the prosecution history for application Serial No. 76296929 for
the numeric fraction 1¼ filed by Defendant and now abandoned;44 and
h. A copy of the prosecution history for application Serial No. 76296930 for
the numeric fraction 1½ filed by Defendant and now abandoned;45
9. Plaintiffs’ sixth notice of reliance on materials printed from the Internet.46
See Safer Inc. v. OMS Investments Inc., 94 USPQ2d 1031, 1039 (TTAB
2010).
a. Excerpts from third-party websites purportedly “showing the use of
whole, fractional and/or decimal numeric designations in connection

41 144 TTABVUE 58- 64. Registered July 1, 1986; renewed. Registrant disclaimed the
exclusive right to use 1.0 in response to a requirement holding that 1.0 is merely descriptive.
144 TTABVUE 59.
42 144 TTABVUE 65-72. Registered July 1, 1986; renewed. Registrant disclaimed the
exclusive right to use 2.0 in response to a requirement holding that 2.0 is merely descriptive.
144 TTABVUE 67.
43 144 TTABVUE 74-489.
44 145 TTABVUE 3-88.
45 145 TTABVUE 90-174.
46 148 TTABVUE.
Opposition No. 91158276 et. al.
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with [Defendant’s] cigarette rolling papers to designate and refer to
the size of its cigarette rolling papers”;47
b. Excerpts from third-party websites purportedly “showing the
interchangeable use of whole, fractional and/or decimal numeric
designations by manufacturers, wholesalers, retailers, secondary
market sellers, and consumers to designate or refer to the size of
cigarette rolling papers”;48
c. Excerpts from third-party websites purportedly “showing how
consumers and retailers use fractions and their corresponding
decimals interchangeably when referring to shoe sizes, hat sizes and
clothing sizes”;49
d. Excerpts from third-party websites showing examples of different
fonts;50
e. Excerpts from third-party websites purportedly “demonstrating
industry practices regarding the size of cigarette rolling papers”;51
and

47 148 TTABVUE 18-67.
48 148 TTABVUE 69-345.
49 148 TTABVUE 347-406
50 148 TTABVUE 408-412.
51 148 TTABVUE 414-443.
Opposition No. 91158276 et. al.
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f. An excerpt from the Nebraska Department of Revenue website
purportedly “to show that ‘roll your own cigarettes’ are properly
defined as a type of cigarette”;52
10. Trial testimony deposition of Joseph Tabshe, President of Good Times
USA, LLC, a cigar company that also sells cigarette rolling papers, with
attached exhibits;53
11. Trial testimony deposition of James Murray, Senior Vice President of
Business Planning for National Tobacco Company, a plaintiff, with
attached exhibits;54

52 148TTABVUE 444-450.
53 150 TTABVUE.
54 152 TTABVUE. The portions of the Murray deposition designated as confidential are filed
at 151 TTABVUE.
Defendant objected to the admissibility of the price lists, order sheets and catalogs identified
as Murray Exhibit Nos. 25-45. Also, Defendant objected to the introduction of these exhibits
in other depositions. 232 TTABVUE 3-5. As grounds for the objection, Defendant asserts that
(i) the witnesses could not properly authenticate the exhibits because they had not seen them
before and, therefore, had no personal knowledge about the exhibits, including whether,
when, and where they were distributed, (ii) that the information in the exhibits is hearsay,
and (iii) that the documents were not produced during discovery. We overrule the objections
for the following reasons:
1. With respect to authentication, the witnesses testified that although they were not
familiar with the specific documents, based on their experience in the tobacco and
cigarette rolling paper industry, the exhibits were the types of price lists, orders sheets
and catalogs used in connection with cigarette rolling papers. In this regard, Steven
Sandman, President of Republic Tobacco, “the sole and exclusive distributor” of
Defendant’s cigarette papers, testified that “there are more than 2,000 wholesalers of
cigarette papers in the United States, all of whom regularly generate price lists,
information sheets, buying guides and other sales materials.” Sandman Decl. ¶12 (164
TTABVUE 7). Moreover, Defendant did not argue that the documents were
manufactured or fabricated by Plaintiffs. Any technical defect in the manner in which
Plaintiffs’ introduced and authenticated these documents is not dispositive, inasmuch
as there simply exists no basis in the record for concluding that these documents are
other than what they appear to be. See Fed. R. Evid. 901(a) and 901(b)(4);
Opposition No. 91158276 et. al.
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12. Plaintiffs’ seventh notice of reliance (rebuttal) on excerpts from the
discovery deposition of Seth Gold with exhibits;55
13. Plaintiffs’ eighth notice of reliance (rebuttal) on the following items:56
a. Excerpts from third-party websites purportedly “showing the
interchangeable use of whole, fractional and/or decimal numeric

2. The hearsay objection to the price lists, order sheets and catalogs is overruled. Those
documents are admissible for whatever they show on their face, but not for the truth
of the matter asserted therein. See Safer, Inc. v. OMS Investments, 94 USPQ2d at
1037 n.14 (“Documents submitted under notice of reliance pursuant to Trademark
Rule 2.122(e) are generally admissible and probative only for what they show on their
face, and not as proof of the matters asserted therein.”). Thus, the documents may be
used to show, for example, that third parties listed cigarette papers using decimal
numbers (e.g., 1.25) in lieu of fractions (e.g., 1¼). See Stuart Spector Designs Ltd. v.
Fender Musical Instruments Corp., 94 USPQ2d 1549, 1553 (TTAB 2009); and
3. With respect to the objection that Plaintiffs’ did not produce the price lists, order
sheets and catalogs during discovery, because Defendant failed to provide copies of
the specific discovery requests to which Plaintiffs purportedly failed to respond, we
cannot judge whether those discovery requests sought the documents that were later
introduced as Plaintiffs’ evidence. See H.D. Lee Co. v. Maidenform Inc., 87 USPQ2d
1715, 1719 (TTAB 2008); Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d 1100,
1105 (TTAB 2007).
Nevertheless, the Board is aware of the limitations to the probative value of these documents
such as the lack of testimony regarding the circulation of the documents, the number of times
such documents printed decimals in lieu of fractions, and their impact on the perception of
the purchasing public.
55 213 TTABVUE. The portions of the Gold discovery deposition designated confidential are
filed at 211 TTABVUE.
56 215 TTABVUE.
Defendant objected to the documents in this notice of reliance on the ground that they
constitute improper rebuttal. 222 TTABVUE 10-14. Plaintiffs proffered the eighth notice of
reliance to rebut Defendant’s testimony and evidence that it has the exclusive right to use
decimal designations in connection with cigarette rolling papers and that the stylized decimal
designations are “fanciful” or distinctive. Defendant’s objection is sustained to the extent that
the documents introduced into evidence in Plaintiffs’ eighth notice of reliance will not be used
to assess Plaintiffs’ case-in-chief but will be limited to rebutting Defendant’s testimony and
evidence.
Opposition No. 91158276 et. al.
- 21 -
designations” “to designate or refer to a category and size of cigarette
rolling papers”;57
b. Webpages from the Harold Levinson catalog purportedly “showing
the interchangeable use of whole, fractional and/or decimal numeric
designations” “to designate or refer to a category and size of cigarette
rolling papers”;58
c. Excerpts from third-party websites purportedly showing how
clothing sizes and shoe sizes vary widely across different brands;59
and
d. Excerpts from Defendant’s website demonstrating how Defendant
uses decimal designations as size categories;60
14. Plaintiff’s ninth notice of reliance (rebuttal) on the file histories of third-
party registrations consisting in part of the decimal designations 1.0 and
2.0 and eight registrations to show that marks constituting relative size
designations are generic or descriptive;61

57 215 TTABVUE.
58 215 TTABVUE.
59 215 TTABVUE.
60 215 TTABVUE.
61 216 TTABVUE.
Defendant objected to the documents in this notice of reliance on the ground that they
constitute improper rebuttal. 222 TTABVUE 14-15. Plaintiffs’ assert that the file histories of
third-party registrations consisting in part of the decimal designations 1.0 and 2.0 are
proffered to rebut Defendant’s testimony regarding its exclusive right to use decimal
designations. 216 TTABVUE 2-3. These documents are substantially similar to the
documents proffered in the fifth notice of reliance (144 and 145 TTABVUE) and needlessly
present cumulative evidence. Defendant’s objection is sustained.
Opposition No. 91158276 et. al.
- 22 -
15. Rebuttal declaration of James Murray with exhibits;62
16. Rebuttal declaration of Stephen M. Nowlis, an expert in marketing,
consumer behavior, and survey methods, with exhibits for the purpose of
reviewing the Scott consumer survey;63
a. Cross-examination deposition of Stephen Nowlis with exhibits;64
B. Defendant’s Testimony and Evidence.65

Plaintiffs proffered the eight registrations constituting relative size designations to rebut
Defendant’s evidence that these terms are not generic. Defendant’s objection is sustained to
the extent that the eight third-party registrations constituting relative size designations
introduced into evidence in Plaintiffs’ ninth notice of reliance will not be used to assess
Plaintiffs’ case-in-chief, but rather will be limited to rebutting Defendant’s testimony and
evidence.
62 218 TTABVUE. The portions of the Murray declaration designated confidential are filed
at 217 TTABVUE.
Defendant objected to the documents in this notice of reliance on the ground that they
constitute improper rebuttal. 222 TTABVUE 15-17. Because the testimony authenticating
the Management Science Associates, Inc. sales tracking data is properly part of Plaintiffs’
case-in-chief, Defendant’s objection is sustained and we do not consider the testimony of the
witness on this subject. However, with respect to the remainder of Mr. Murray’s rebuttal
testimony regarding the role of size designations, Defendant’s objection is overruled and we
give that testimony whatever probative value to which it is entitled.
63 219 TTABVUE.
64 227 TTABVUE.
The cross-examination deposition was introduced by Defendant. Because cross-examination
is part of the testimony of the witness, we listed the cross-examination transcript with
Plaintiffs’ testimony declarations to associate the direct testimony with the cross-
examination. We have identified and listed all of the cross-examination testimony depositions
in this manner.
65 Defendant’s fourth notice of reliance (162 TTABVUE (Confidential)) consists of excerpts
from discovery depositions taken in a civil action between the parties (Republic Tobacco, L.P.
v. North Atlantic Trading Company, Inc., North Atlantic Operating Company, Inc. and
National Trading Company, L.P., Case No. 98-C-4011, in the United States District Court
for the Northern District of Illinois). In the August 6, 2014 order, the Board noted that
although trial testimony taken in a civil action between the parties may be used in these
proceedings, the term “testimony,” as used in Trademark Rule 2.122(f) has been construed to
mean only trial testimony, or a discovery deposition which was used, by agreement of the
parties, as trial testimony in the other proceeding. 128 TTABVUE 11 (citing See Threshold
TV Inc. v. Metronome Enterprises Inc., 96 USPQ2d 1031, 1035 n.8 (TTAB 2010)).
Opposition No. 91158276 et. al.
- 23 -
1. Trial testimony deposition of James Dobbins, Senior Vice President,
Secretary, and General Counsel of North Atlantic Operating Company, Inc.,
one of the Plaintiffs, with attached exhibits;66
2. Trial testimony declaration of Donald Levin, Defendant’s Chairman, with
attached exhibits;67
a. Cross-examination deposition of Donald Levin with attached
exhibits;68
3. Defendant’s first notice of reliance on excerpts from the following discovery
depositions:69
a. Discovery deposition of James Dobbins with attached exhibits;70
b. Discovery deposition of James Murray with attached exhibits;71 and
c. Discovery deposition of Thomas Helms, Director of Trade Marketing
for Plaintiffs, with attached exhibits;72
4. Defendant’s second notice of reliance on the following items:73

Subsequently, the Board denied Defendant’s motion to admit the discovery depositions. 131
TTABVUE. In view thereof, we have not considered the depositions proffered in Defendant’s
fourth notice of reliance.
66 155 TTABVUE. The portions of the testimony designated confidential are filed at 154
TTABVUE.
67 156 TTABVUE.
68 204 TTABVUE. The portions of the cross-examination deposition designated confidential
are filed at 203 TTABVUE.
69 158 TTABVUE (Confidential).
70 158 TTABVUE (Confidential) 6-358.
71 158 TTABVUE (Confidential) 360-543.
72 158 TTABVUE (Confidential) 545-584.
73 159 TTABVUE.
Opposition No. 91158276 et. al.
- 24 -
a. Plaintiffs’ responses to Defendant’s interrogatory Nos. 2, 3 and 7;74
b. Plaintiffs’ responses to Defendant’s interrogatory Nos. 11, 14, and 17-
21;75
c. Plaintiffs’ responses to Defendant’s interrogatory Nos. 26-28;76
d. Plaintiffs’ supplemental responses to Defendant’s interrogatory Nos.
27 and 28;77
e. Plaintiffs’ responses to Defendant’s request for production of
documents Nos. 1-8;78
f. Plaintiffs’ responses to Defendant’s request for production of
documents Nos. 12-15 and 17-19;79
g. Plaintiffs’ responses to Defendant’s request for production of
documents Nos. 18, 21 and 30-34;80
h. Plaintiffs’ responses to Defendant’s requests for admissions Nos. 65,
66, 71, 74, 77, 89, 90, 92, 95, 96, 98, 155 and 157-188;81

74 159 TTABVUE 7-14.
75 159 TTABVUE 16-23.
76 159 TTABVUE 25-31.
77 159 TTABVUE 33-36.
78 159 TTABVUE 38-45.
79 159 TTABVUE 47-52.
80 159 TTABVUE 54-61.
81 159 TTABVUE 63-82.
Opposition No. 91158276 et. al.
- 25 -
i. Plaintiffs’ supplemental responses to Defendant’s requests for
admissions Nos. 4, 9, 56-64 and 155-156;82 and
j. Plaintiffs’ supplemental responses to Defendant’s requests for
admissions Nos. 15-17, 24-26, 33-35, 51-53, 189-191 and 195-197;83
5. Defendant’s third notice of reliance on copies of 13 third-party registrations
purportedly “to show that marks constituting relative size designations can
function as and be registered as trademarks”;84
6. Testimony declaration of Carol Scott, an expert in consumer surveys and
founding partner of Crossfield Associates, LLC, a litigation consulting firm,
with exhibits;85
a. Cross-examination deposition of Carol Scott with exhibits;86
7. Testimony declaration of Steven Sandman, President of Republic Tobacco,
L.P., the distribution arm of Defendant;87
a. Cross-examination deposition of Steven Sandman with attached
exhibits;88

82 159 TTABVUE 84-87.
83 159 TTABVUE 89-100.
84 160 TTABVUE.
85 178 TTABVUE.
86 207 TTABVUE.
87 164 TTABVUE.
88 210 TTABVUE. The portions of the Sandman cross-examination deposition designated
confidential are filed at 209 TTABVUE.
Opposition No. 91158276 et. al.
- 26 -
8. Testimony declaration of Jose Sierra, Defendant’s Zone 1 Manager (Eastern
United States);89
a. Cross-Examination deposition of Jose Sierra with attached
exhibits;90
9. Testimony declaration of Jack Serio, Defendant’s Regional Sales Manager
for Alabama, Georgia, and Florida;91
a. Cross-examination deposition of Jack Serio with attached exhibits;92
10. Testimony declaration of Mary Abbott, a Key Account Manager for
Defendant in Zone 1;93
a. Cross-examination deposition of Mary Abbott with attached
exhibits;94
11. Testimony declaration of Don Grout, a Key Account Manager for
Defendant in Zone 1;95
a. Cross-examination deposition of Don Grout with attached exhibits;96

89 165 TTABVUE.
90 196 TTABVUE.
91 166 TTABVUE.
92 195 TTABVUE.
93 167 TTABVUE.
94 189 TTABVUE.
95 168 TTABVUE.
96 193 TTABVUE.
Opposition No. 91158276 et. al.
- 27 -
12. Testimony declaration of Michael Clark, Defendant’s Zone 2 Manager
(Central United States);97
a. Cross-examination deposition of Michael Clark with attached
exhibits;98
13. Testimony declaration of William Slaughter, a Key Account Manager for
Defendant in Zone 1;99
a. Cross-examination deposition of William Slaughter with attached
exhibits;100
14. Testimony declaration of Robert Evans, a Key Account Manager for
Defendant in Zone 3 (Western United States);101
a. Cross-examination deposition of Robert Evans;102
15. Testimony declaration of Jim Wendelken, owner of GW Distributing LLC,
a distributor of tobacco products, including cigarette rolling papers in
Arizona;103
a. Cross-examination deposition of Jim Wendelken with attached
exhibits;104

97 169 TTABVUE.
98 191 TTABVUE.
99 170 TTABVUE.
100 197 TTABVUE.
101 171 TTABVUE.
102 192 TTABVUE.
103 172 TTABVUE.
104 206 TTABVUE.
Opposition No. 91158276 et. al.
- 28 -
16. Testimony declaration of Richard Little, Operations Manager of Tiger
Mart, a chain of convenience stores in South Carolina;105
a. Cross-examination of Richard Little with exhibits;106
17. Testimony declaration of Glen Lowe, Vice President of Jim Dandy Food
Stores, a chain of 12 convenience stores in North Carolina;107
a. Cross-examination deposition of Glen Low with exhibits;108
18. Testimony declaration of Robert Gregory Kenrick, President and owner of
Gregory’s Gas, a chain of 10 service stations and convenience stores in
South Carolina;109
a. Cross-examination deposition of Robert Gregory Kenrick with
exhibits;110
19. Testimony declaration of Andrea Myers, President of Kocolene
Development Corp,, a chain of 36 convenience stores in Indiana and
Kentucky ;111
a. Cross-examination deposition of Andrea Myers with exhibits;112

105 173 TTABVUE.
106 199 TTABVUE.
107 174 TTABVUE.
108 200 TTABVUE.
109 175 TTABVUE.
110 202 TTABVUE.
111 176 TTABVUE.
112 194 TTABVUE.
Opposition No. 91158276 et. al.
- 29 -
20. Testimony declaration of Jon Burklund, Chairman and CEO of Burklund
Distributors, Inc., a distributor of tobacco products and convenience stores
products;113
a. Cross-examination deposition of Jon Burklund with exhibits;114
21. Testimony declaration of Seth Gold, Defendant’s Vice President and
General Counsel, with attached exhibits;115 and
a. Cross-examination deposition of Seth Gold with attached exhibits.116
III. Standing117
Standing is a threshold issue that must be proven by a plaintiff in every inter
partes case. To establish standing in an opposition or cancellation proceeding, a
plaintiff must show “both a ‘real interest’ in the proceedings as well as a ‘reasonable
basis’ for its belief of damage.” Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753
F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014) (quoting ShutEmDown Sports,
Inc., v. Lacy, 102 USPQ2d 1036, 1041 (TTAB 2012)); Ritchie v. Simpson, 170 F.3d
1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999); Lipton Industries, Inc. v. Ralston
Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982). The Court of Appeals

113 177 TTABVUE.
114 190 TTABVUE.
115 179-181 TTABVUE. The portions of the Gold declaration designated confidential are filed
at 182-184 TTABVUE.
116 201 TTABVUE. The portions of the Gold deposition designated confidential are filed at
198 TTABVUE.
117 In deciding Defendant’s motion for summary judgment, the Board found that there were
genuine material facts in dispute regarding Plaintiff’s standing. 125 TTABVUE 13.
Opposition No. 91158276 et. al.
- 30 -
for the Federal Circuit has enunciated a liberal threshold for determining standing
in Board proceedings. Ritchie v. Simpson, 50 USPQ2d at 1030.
When challenging a term as descriptive or generic, a plaintiff may establish
standing by showing that it is engaged in the manufacture or sale of goods the same
as or related to those covered by the challenged mark. See Eastman Kodak Co. v. Bell
& Howell Document Management Products Co., 23 USPQ2d 1878, 1879 (TTAB 1992),
aff’d, 994 F.2d 1569, 26 U.S.P.Q.2d 1912 (Fed. Cir. 1993); Binney & Smith Inc. v.
Magic Marker Industries, Inc., 222 USPQ 1003, 1010 (TTAB 1984). The record clearly
establishes that both parties sell cigarette rolling papers and Defendant does not
dispute that fact.118 Thus, there is no doubt that Plaintiffs and Defendant are
competitors. Plaintiffs have a legitimate interest in preventing Defendant from
gaining an unfair competitive advantage by maintaining the existing registrations
for and registering purportedly additional generic and/or descriptive terms for
cigarette rolling papers and cigarettes.
Defendant argues that Plaintiffs have contracted away their standing.
Here, [Plaintiffs] have admitted that they are contractually
bound by distribution agreements with Bolloré to
distribute only ZIG ZAG branded cigarette papers that
they buy from Bolloré. Bolloré agreed long ago to not use
[Defendant’s] marks, and to not permit [Plaintiffs] to use
[Defendant’s] marks, on ZIG ZAG papers. Thus, by
operation of these agreements, [Plaintiffs] have no “present
or prospective right” to use the Point Marks “in [their]
business.” Accordingly, they have no stake or interest in

118 Plaintiffs own the distribution rights to ZIG-ZAG cigarette rolling papers in the United
States. Murray Dep., p. (152 TTABVUE 16-18); Dobbins Dep., pp. 8-9 (155 TTABVUE 11-12);
Dobbins Discovery Dep., 10 and 114 (158 TTABVUE (Confidential) 14 and 57); Murray
Discovery Dep, p. 65 (158 TTABVUE (Confidential) 391).
Opposition No. 91158276 et. al.
- 31 -
these proceedings, other than to try to vex, harass or
impede [Defendant’s] business. They are officious
intermeddlers. (Internal citations to the record omitted).119
The Board previously rejected a similar argument in another case. See Duramax
Marine LLC v. R.W. Fernstrum & Co., 80 USPQ2d 1780 (TTAB 2006).
As a competitor, opposer has an interest in seeing that any
other competitor in the field of keel cooler manufacturing
and sales does not register a depiction of a keel cooler that
is, assertedly, descriptive. Even assuming that opposer is,
by the settlement agreement, barred from manufacturing
a keel cooler in the form represented by the depiction, the
exclusive registration of assertedly descriptive matter by a
competitor might provide that competitor with an
advantage, for example, in marketing its products. Cf.
Eastman Kodak Co. v. Bell & Howell Document
Management Products Co., 994 F.2d 1569, 26 USPQ2d
1912 (Fed. Cir. 1993) (Board found standing in opposer
even though proposed marks sought to be registered by
applicant, and challenged by opposer as descriptive, were
not in use by either party, having been applied for under
intent to use. Though the Board dismissed the claim of
descriptiveness by opposer, a competitor, without prejudice
to later filing of a cancellation case if the proposed marks
should eventually be registered, and appeal was taken
from such dismissal, the standing determination was not
challenged or reviewed on appeal).
Id. at 1787-88.
In any event, Bolloré, not Plaintiffs, recognized Defendant’s purported exclusive
right to use the decimal designations to identify cigarette rolling papers. Plaintiffs
could terminate their distribution agreement with Bolloré and find a new supplier of
cigarette rolling papers. Plaintiffs’ prospective interest in one day using the decimal

119 230 TTABVUE 37-38.
Opposition No. 91158276 et. al.
- 32 -
designations to describe the size of their products is a sufficient interest to support
standing.120
Accordingly, we find the record to contain sufficient proof of the allegations related
to standing.
IV. Applicable law for determining whether a term is generic.
It is Plaintiffs’ burden to establish that Defendant’s decimal designations are
generic by a preponderance of the evidence. Magic Wand Inc. v. RDB Inc., 940 F.2d
638, 19 USPQ2d 1551, 1554 (Fed. Cir. 1991) (“Magic Wand had the burden to show
by a preponderance of the evidence that the primary significance of the TOUCHLESS
mark to the relevant public is the automobile washing service itself, rather than a
washing service provided by a particular entity.”).121
There is a two-part test used to determine whether a designation is generic: “First,
what is the genus of goods or services at issue? Second, is the term sought to be
registered or retained on the register understood by the relevant public primarily to
refer to that genus of goods or services?” Princeton Vanguard, LLC v. Frito-Lay N.

120 Further, Plaintiffs explained that they, “like others in the industry, decided to refrain from
adopting the designations 1.0, 1.5 and 1.25 due to concern about litigation from [Defendant].”
Plaintiffs’ response to Defendant’s interrogatory No. 14 (159 TTABVUE 18) (Defendant’s
second notice of reliance). In this regard, Plaintiffs specifically explained to Defendant in a
1977 exchange of correspondence that “without making any admissions regarding the merits
of [Defendant’s] charge of infringement,” Plaintiff’s would use the designations 1, 1 ¼ and 1
½ for its cigarette rolling papers and refrain from using 1.0, 1.25, and 1.5 “solely to avoid
litigation.” Gold Testimony Decl. ¶29 and Exhibit 12 (179 TTABVUE 17 and 119).
Accordingly, we disagree with Defendant’s characterization that “Opposers Themselves Have
Acknowledged [Defendant’s] Rights.” Defendant’s Brief, p. 20 (230 TTABVUE 26).
121 We also note that one seeking to cancel a registration must rebut the presumption that
the registration is valid by a preponderance of the evidence. Dan Robbins & Associates, Inc.
v. Questor Corporation, 599 F.2d 1009, 202 USPQ 100, 105 (CCPA 1979).
Opposition No. 91158276 et. al.
- 33 -
Am., Inc., 786 F.3d 960, 114 USPQ2d 1827, 1830 (Fed. Cir. 2015) (quoting H. Marvin
Ginn Corp. v. Int’l Assn. of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed.
Cir. 1986)). The public’s perception is the primary consideration in determining
whether a term is generic. Loglan Inst. Inc. v. Logical Language Group Inc., 902 F.2d
1038, 22 USPQ2d 1531, 1533 (Fed. Cir. 1992). 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. Loglan Inst., 22
USPQ2d at 1533; Dan Robbins & Associates, Inc. v. Questor Corp., 202 USPQ at 105.
V. Whether Defendant’s decimal designations are generic for
cigarette rolling papers?
A. The genus of goods.
The specific category of the goods is cigarette rolling papers. Magic Wand Inc. v.
RDB Inc., 19 USPQ2d at 1552 (“[A] proper genericness inquiry focuses on the
description of services set forth in the certificate of registration.”). See also In re Trek
2000 Int’l Ltd., 97 USPQ2d 1106, 1112 (TTAB 2010) (“the genus of goods at issue in
this case is adequately defined by applicant’s identification of goods…”).
Based on the testimony of Seth Gold, Defendant’s Vice President and General
Counsel, we find that the cigarette rolling paper category of goods may be
subcategorized by the size of the cigarette rolling papers.
Q. Now, let’s talk a little bit about the variance within
these sizes. If you start looking at the 1 1/4 size
paper - -
A. You mean categories?
Q. I’m sorry.
Opposition No. 91158276 et. al.
- 34 -
A. Well, they’re all different sizes. That’s the point of
the chart.
Q. You called them 1 1/4 size papers, didn’t you?
A. That’s how they are characterized in the market.”122

B. The relevant public.

The second part of the genericness test is whether the relevant public
understands the designation primarily to refer to that class of goods. The relevant
public for a genericness determination is the purchasing or consuming public for the
identified products. Magic Wand Inc. v. RDB Inc., 19 USPQ2d at 1553 (citing In re
Montrachet S.A., 878 F.2d 375, 11 USPQ2d 1393, 1394 (Fed. Cir. 1989)); In re Merrill
Lynch, Pierce, Fenner, & Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir.
1987); H. Marvin Ginn Corp. v. International Ass’n of Fire Chiefs, Inc., 228 USPQ at
530; Dan Robbins & Assocs., Inc. v. Questor Corp., 202 USPQ at 105 (CCPA 1979).
According to James Murray, Senior Vice President of Business Planning for
National Tobacco Company, one of the plaintiffs, “there are some 30, 40 brands [of
cigarette rolling papers], about 200 SKUs that compete in this space.”123 Defendant
sells its cigarette rolling papers to retail chains, tobacco outlets, tobacco outlet chains,
gas station mini-marts, grocery wholesalers, general wholesalers, mass

122 Gold Cross-Examination Dep., p. 30-31 (201 TTABVUE 33-34).
123 Murray Dep., p. 19 (152 TTABVUE 22). “SKU” is an abbreviation for “stock keeping unit,
a code number, typically used as a machine readable bar code, assigned to a single item of
inventory.” SKU, Encyclopeadia Britannica (2015). The Board may take judicial notice
of information in encyclopedias. Productos Lacteos Tocumbo S.A. de C.V. v. Paleteria La
Michoacana Inc., 98 USPQ2d 1921, 1934 n.61 (TTAB 2011).
Opposition No. 91158276 et. al.
- 35 -
merchandisers, convenience stores, dollar stores and drug grocery chains.124 In
addition, there is the ultimate consumer, the user of the cigarette rolling papers.
C. Public perception.

1. Introduction
Consumers prefer specific size cigarette rolling papers depending upon their
ability to roll their own cigarettes and the amount of tobacco or other material they
intend to roll into a cigarette.125
In other words, the size of the paper enables you, is what
constrains you in how much tobacco you can roll. A smaller
piece of paper, less tobacco.
I’ve also been told that as you move down the spectrum,
that you need to become more of an aficionado, a more
professional roller. It is more difficult because there’s less
paper to work with to roll your cigarette.

124 Gold Discovery Dep., p. 88 (140 TTABVUE 96); Gold Testimony Decl. ¶21 (179 TTABVUE
15); Sandman Decl. ¶10 (164 TTABVUE 6-7).
125 142 TTABVUE 12 (an advertisement for the JOB 1.5 cigarette paper promoting 1.5 as “the
perfect size” for a smoker who has trouble rolling a cigarette with the single wide paper but
does not need the double wide paper); 143 TTABVUE 12 (an advertisement for JOKER 1¼
size paper stating that it is “slightly narrower for more experienced rollers.”); 143 TTABVUE
53 (Defendant introduced its JOB 1.0 cigarette rolling paper as a single width paper, “the
original size in cigarette paper for the more experienced roller”), 148 TTABVUE 159 and 176
(the Rolling Paper Warehouse website (rollingpaperwarehouse.com) explained that 1¼
rolling papers “are medium length rolling papers and are the most popular as they are easier
to roll” and that the 1½ is easier to roll than the 1¼ “without giving you too much paper to
smoke”), 148 TTABVUE 232, 148 TTABVUE 416; Sandman Cross-Examination Dep., p. 111
(210 TTABVUE 114); Sierra Cross-Examination Dep., p. 45, 55 (196 TTABVUE 48, 58); Serio
Cross-Examination Dep., p. 27, 30 (195 TTABVUE 30, 33); Abbott Cross-Examination Dep.,
p. 43 (189 TTABVUE 46); Clark Cross-Examination Dep., p 35 (169 TTABVUE 38); Evans
Cross-Examination Dep., p. 31 (192 TTABVUE 34); Lowe Cross-Examination Dep., p. 66 (201
TTABVUE 69); Kenrick Cross-Examination Dep., p. 67 (202 TTABVUE 70) .
Opposition No. 91158276 et. al.
- 36 -
So people have size preferences, perhaps because it may be
easier with a 1½ size product, or it may be how much
tobacco that they want to roll.126
There are four standard size cigarette rolling papers:
1. Single wide or width;

2. 1¼;

3. 1½; and

4. Double wide.127

According to the Museum of Learning website (museumstuff.com),
While a 1 1/4 sized paper is not exactly 25% larger than a
single wide paper, there is meaning to these size names. A
better way to describe these accurately is that a 1 1/4 is
designed to roll a cigarette that contains about 25% more
tobacco then a single wide paper. Similarly a 1 1/2 size
paper is designed to roll a cigarette that contains about
50% more than a single wide paper. A 1 1/4 size paper is
larger than a 1 single wide paper and naturally a 1 1/2 size

126 Murray Dep., p. 22 (152 TTABVUE 25). See also 152 TTABVUE 30 (“The size just makes
it easier and/or more difficult to roll based upon your experience as a professional roller.”).
127 Kesselman Decl. ¶¶8-11 (138 TTABVUE 6). See also Gold Discovery Dep., pp. 124-125
(140 TTABVUE 115-116) (within Defendant’s product line there is a progression from 1.0 to
1.25 to 1.5 to double width); TokeCity.com (148 TTABVUE 168), 148 TTABVUE 414, 420,
421, 425, 427, 432; Tabshe Dep., p. 14 (150 TTABVUE 17); Murray Dep., pp. 15-16 (151
TTABVUE 18-19)l Helms Dep. pp. 70-71 (158 TTABVUE (Confidential) 577-578 (“those
terms are relative to the width of the paper, single width, 1 ¼ or 1.25 or 1 ½ or 1.5 for double
wide.”); Levin Decl. ¶16 (156 TTABVUE 11-12) (“cigarette papers in the industry have come
to use the fractional designations 1¼ and 1½ as size designations”); Sierra Cross-
Examination Dep., p. 38 (196 TTABVUE 41); Abbott Cross-Examination Dep., p. 36 (189
TTABVUE 39); Grout Cross-Examination Dep., p. 46 (193 TTABVUE 49); Clark Cross-
Examination Dep., p. 34, 36 (169 TTABVUE 37, 39) (cigarette papers are categorized by the
size of the paper); Lowe Cross-Examination Dep., p. 62 (200 TTABVUE 65); Kenrick Cross-
Examination Dep., p. 65 (202 TTABVUE 68)..
Opposition No. 91158276 et. al.
- 37 -
paper is larger than a 1 1/4 size paper, and a double wide
is larger than a 1 1/2 size paper.128
Donald Levin, Defendant’s Chairman, testified that in the mid-1970’s, no cigarette
paper had any sizing.129 Based on what may be charitably characterized as Mr.
Levin’s hazy recollection, E-Z WIDER cigarette rolling papers were the first to
designate sizes: either 1¼ or 1½.130 Other companies followed suit.131 Nevertheless,
Seth Gold, Defendant’s Vice President and General Counsel, insists that there is no
industry-wide standard for the size of the cigarette rolling papers.132 “The words 1-
1/2 size in this industry are used to indicate a wide range of actual paper surface
areas.”133 Also, “[i]t is common to see 1-1/4 printed on booklet covers.”134 In fact, the
terms “1 ¼ size” and “1 ½ size are commonly used.”135 “[T]here’s a long history in the

128 148 TTABVUE 414. See also Wikipedia at 148 TTABVUE 427; Tabshe Dep. p. (150
TTABVUE 18); Murray Dep., p. 22 (152 TTABVUE 25) (as you move from single width, 1¼
and 1½, the surface area of the paper increases).
129 Levin Discovery Dep., p. 30 (140 TTABVUE 22).
130 Levin Discovery Dep., pp. 30-31 (140 TTABVUE 22-23).
131 Levin Discovery Dep., p. 31 (140 TTABVUE 23).
132 Gold Discovery Dep., p. 32-35 (140 TTABVUE 72-74); Gold Testimony Decl. ¶12 (179
TTABVUE 10). See also Museum of Learning website at 148 TTABVUE 414 and 427
(“[w]ithin the industry, these designations have slightly different meanings”);
RollingPaperDepot.com at 148 TTABVUE 416 (“Since the numbers do not directly correspond
to a precise measurement, widths of papers can vary.”); Murray Dep., p. 23 (152 TTABVUE
26 (“within a brand, typically those sizes are very consistent,” but in comparing brands,
“there might be minor differences there, but always you have this progression up. You’re
communicating relative size to the consumer with that nomenclature.”); Levin Decl. ¶5 (156
TTABVUE 6) (“there were and are no standard sizes of cigarette papers”).
133 Gold Discovery Dep., p. 34 (140 (TTABVUE 74). See also, Gold Cross-Examination Dep.,
p. 40 (201 TTABVUE 43) (“I say the sizes are all over the place. So they’re not size
designations. They’re fanciful.”).
134 Gold Discovery Dep., p. 55 (140 TTABVUE 81).
135 Gold Discovery Dep., pp. 55-56 (140 TTABVUE 81-82). ). See also, Gold Cross-Examination
Dep., pp. 41-42 (201 TTABVUE 44-45).
Opposition No. 91158276 et. al.
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rolling paper business of manufacturers using fractional designations on papers,”136
but “as a style that’s historically been in the industry,”137 not as a size. Although, “[i]t
says size, [] that doesn’t mean it is a size.”138
Q. Why would you put the word “size” on your paper if
you didn’t mean to communicate something about
size?”
A. Because in the industry people put “size” on all kinds
of things and they aren’t communicating the size.
That’s my point.139
Nevertheless, Mr. Gold conceded that Defendant’s advertising has focused on the size
of the papers.
Q. Now, what has been the focus in a lot of those
advertisements, you’ll agree with me, is references
to the size of the papers, correct?
A. Well, it’s usually a reference to having all the
different sizes that a consumer might want.140
2. Third-party use of size designations.
Donald Levin, Seth Gold, eight of Defendant’s employees, and two of Defendant’s
customers testified that “other” cigarette paper manufacturers use the fractional
designations 1¼ and 1½ “as indications of size ranges.”141

136 Gold Discovery Dep., p. 72 (140 TTABVUE 94).
137 Gold Cross-Examination Dep., p. 43 (201 TTABVUE 46).
138 Gold Cross-Examination Dep., p. 43 (201 TTABVUE 46).
139 Gold Cross-Examination Dep., p. 43 (201 TTABVUE 46). See also Gold Cross-Examination
Dep., pp. 58-59 (201 TTABVUE 61-62).
140 Gold Cross-Examination Dep., p. 107 (201 TTABVUE 110).
141 Levin Cross-Examination Dep., p. 49 (204 TTABVUE 53); Gold Testimony Decl. ¶¶13 and
26 and Exhibits 6-8 (179 TTABVUE 11, 16, and 72-219); Sandman Cross-Examination Dep.,
pp. 32-33 (210 TTABVUE 35-36); Sierra Decl. ¶6 (165 TTABVUE 6); Serio Decl. ¶5 (166
TTABVUE 5); Abbott Decl. ¶5 (167 TTABVUE 6); Grout Decl. ¶5 (168 TTABVUE 5); Clark
Opposition No. 91158276 et. al.
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In a letter dated September 8, 1987, from Donald Levin to Michel Yves Bolloré of
Bolloré Technologies, Mr. Levin wrote that “the current ZIG ZAG 1 1/4 size box clearly
shows the standard designation of the industry in the U.S. is fractional, not
decimal.”142 Subsequently, Mr. Levin testified that “[f]ractions are used by many
people.”143 Mr. Gold corroborates Mr. Levin’s testimony by testifying that “1-1/2 as a
fractional designation size is used by many different papers.”144
Representative examples of cigarette rolling papers advertising size as a feature
of the papers are set forth below:
1. Head Imports advertised its One & A Half 1½ cigarette rolling paper as “The
Perfect Size Rolling Paper.”
Not a single wide.
Not a double wide.
ONE AND A HALF wide.
The perfect size rolling paper.145
2. Manhattanite, Bogie & Marilyn cigarette rolling papers distributed by Joint
Promotions were advertised as 1½ wide.146

Decl. ¶7 (169 TTABVUE 6); Slaughter Decl. ¶5 (170 TTABVUE 5); Evans Decl. ¶5 (171
TTABVUE 5); Lowe Decl. ¶7 (174 TTABVUE 5); Decl. ¶6 (176 TTABVUE 5).

142 Levin Discovery Dep. p. 111, Exhibit 93 (140 TTABVUE 36 and 45-46). See also Levin
Discovery Dep., p. 50 (140 TTABVUE 79) (“there is no consistency as to the dimension of the
product.”), p. 54 (140 TTABVUE 80).
143 Levin Discovery Dep., p. 118 (140 TTABVUE 37).
144 Levin Discovery Dep., p. 50 (140 (TTABVUE 79).
145 142 TTABVUE 143.
146 142 TTABVUE 146.
Opposition No. 91158276 et. al.
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3. Rizla advertises its cigarette rolling papers as “the perfect size double wide,”
even going so far as to compare it with JOB 1.5, JOKER and E-Z WIDER cigarette
rolling papers.147
4. E-Z WIDER advertised its 1¼ size and 1½ size cigarette rolling papers as
follows:
e-z wider 1½ size is halfway between single and double
width.
e-z wider 1¼ size is one of a kind. Just a bit wider than a
single width.148
E-Z WIDER also compares the relative sizes of its cigarette rolling papers in its
advertisements as shown below:149

147 142 TTABVUE 195 and 198.
148 142 TTABVUE 201, 204, 207, 213, 216, 219.
149 142 TTABVUE 225.
Opposition No. 91158276 et. al.
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BAMBU cigarette rolling papers also advertises its relative sizes as shown
below:150

Examples of third parties having used fractional designations and decimal
designations interchangeably are set forth below:
1. HBI International has used numeric size designations, including 1.0, 1.25, 1.5,
1 & 25, and 2.0 on its ZEN cigarette rolling paper packaging.151
2. Joseph Tabshe, President of Good Times USA, LLC, a cigar company that also
sells cigarette rolling papers, testified that 1¼ and 1½ size cigarette rolling papers
are identified decimal form as 1.25 and 1.5 respectively.152 Mr. Tabshe identified 1.25
and 1.5 as size designators.153
3. Jose Sierra, Defendant’s Zone 1 Manager, testified that when he worked for
Brown & Williamson Tobacco, that company launched BUGLER 1.25 cigarette rolling

150 142 TTABVUE 229.
151 Kesselman Decl. ¶14 (138 TTABVUE 6).
152 Tabshe Dep., pp. 15-16 (150 TTABVUE 18-19).
153 Tabshe Dep. pp. 17-19 (150 TTABVUE 20-22).
Opposition No. 91158276 et. al.
- 42 -
papers but “had to take everything back, remove it from the stores, and sell it as a 1
¼.”154
4. Internet distributors and online sellers of cigarette rolling papers use fractions
(1¼ and 1½) and decimals (1.0, 1.25, 1.5 and 2.0) to refer to the size of cigarette rolling
papers.155 Some Internet distributors and online sellers of cigarette rolling papers use
1.25 and 1.5 in lieu of or with their fractional equivalents.156 For example, the
RollingPapers.com website advertised the sale of JOB GOLD 1.0 as “Rolling Papers
Job Gold Singlewide.”157
5. An AC Nielsen reporting system to which Plaintiffs subscribe reports the sales,
market share, and pricing data for cigarette rolling papers.158 The AC Nielsen report
(2008) introduced into evidence shows uses of decimal designations to identify the

154 Sierra Cross-examination Dep., p. 12 (196 TTABVUE 15).
155 148 TTABVUE 18-345.
156 148 TTABVUE 21 and 66 (TOP 1.5 and 1½ size), 24 (1 ½ and ONE & A HALF), 57 (JOB
1.5 described as “1½ (1.5)” and JOKER 1½ (1.5) and ZIG ZAG 1¼ (1.25)), 58-64 (OCB 1.5 and
1-1/2 size), 76 (RAW 1¼ and RAW 1.25), 79 and 133 (EZ WIDER 1.5 and EZ WIDER 1½), 128
(ELEMENTS 1½ and 1.5), 135 (ZIG-ZAG Orange 1.25 and 1¼), 142 and 144 (“PURE HEMP
Unbleached Rolling Papers Size 1.25 (1-¼)), 145, 146 and 165 (ZIG-ZAG 1½ size and “Zig Zag
1.5 Rolling Papers”), 238, 242 and 247 (“JOKER 1¼ (1.25) Finest Quality Rolling Cigarette
Paper!”), 255 (ZEN EFFEN 1 ¼ size and “ZEN Effen 1.25 Rolling Papers”), 263 (“RASTA
WRAPS 1.5 Cigarette Rolling wrap Papers 1½ wrap gummed rap”), 267 (“Hempire 1½ Hemp
Rolling Papers x3 cigarette tobacco 1.5 ryo”), 270 (“Hempire cigarette rolling papers 1 ½ or
1.5 with 33 leaves), 287 (“24 books of OCB premium rolling papers 1.25 size with tongues 79
mm papers 1¼), 291 (“Bob Marley 1 1/4” (78 mm) hemp rolling papers (2 packs) 1.25””) 295
(“Cool Jay’s 1.5 menthol flavored 1½ cigarette rolling papers 25 booklets”). See also Murray
Dep. Exhibit Nos. 26-43 and 45 (152 TTABVUE 196-341 and 366-372) comprising examples
of third-party price lists and order guides where the distributor interchanges its use of
fractions and decimals.
157 148 TTABVUE 104.
158 Murray Dep., pp. 51-55, Exhibit 25 (Confidential) (152 TTABVUE 54-58 and 151
TTABVUE (Confidential) 196-200).
Opposition No. 91158276 et. al.
- 43 -
different size cigarette rolling papers (e.g., JOKER 1.25 Lemon, GLASS 1.25
Transparent, 1 BACK 1.25 Transparent, etc.).
6. Core-Mark is one of Defendant’s distributors.159 Core-Mark’s 2010 order form
includes a listing for “ZIG-ZAG 1.25 SZ Ultra Thin Paper.”160
7. A settlement agreement between Defendant and Robert Burton Associates,
Ltd. (E-Z WIDER and JOKER cigarette rolling papers) provided, inter alia, that
Robert Burton Associates, Ltd. would not make any use of the decimal designations
1.5 and 1.25.161 However, the agreement made no reference to 1.0 or 2.0. Accordingly,
Robert Burton Associates, Ltd. is the owner of the following trademark registrations
for cigarette papers:
a. Registration No. 1399770 for the mark JOKER 1.0;
b. Registration No. 1399760 for the mark JOKER 2.0;
c. Registration No. 1399772 for the mark E-Z WIDER 1.0; and
d. Registration No. 1399771 for the mark E-Z WIDER 2.0.162

159 Gold Discovery Dep., p. 88 (140 TTABVUE 96).
160 Gold Discovery Dep. p. 89, Exhibit 16 (140 TTABVUE 97 and 157-158). Mr. Gold explained
that using the decimal 1.25 in connection with ZIG-ZAG was a mistake and that Defendant
called up the distributor and requested that the distributor correct the mistake. Gold
Discovery Dep., pp. 89-90 (140 TTABVUE 97-98).
161 Levin Decl. ¶19 and Exhibit 7 (156 TTABVUE 13 and 60-65); Gold Cross-Examination
Dep., pp. 170-175 (201 TTABVUE 173-178).
162 144 TTABVUE 12-72. Robert Burton Associates disclaimed the exclusive right to use the
numbers 1.0 and 2.0 because the USPTO found them to be merely descriptive. See also Gold
Discovery Dep., pp. 167-168 (140 TTABVUE 117-118) and Gold Discovery Dep. p. 288-289,
Exhibit 101 (139 TTABVUE (Confidential) 139-140 and 248-268) wherein Defendant agreed
to not interfere with the use and registration of the marks JOKER 1.0, JOKER 2.0, E-Z
WIDER 1.0 and E-Z WIDER 2.0.
Opposition No. 91158276 et. al.
- 44 -
Examples of JOKER 1.0 and JOKER 2.0 cigarette rolling papers advertised at
RollingPaperWarehouse.com on March 31, 2008 are shown below:163

8. The Kardel Blunt Wraps are advertised as “Natural Hemp Ultra Thin 1.25
Rolling Papers.”164
9. The NetBong Smoke Shop website (netbong.com) advertises the JOB 1.0
cigarette rolling paper as a single width paper, the JOB 1.25 cigarette rolling paper
as a 1¼ size paper and the JOB 1.5 cigarette rolling paper as a 1½ size paper.165
10. The WholeSaleRollingPapers.com website uses the decimal 1.25 in lieu of the
fraction 1¼ in advertising the ZIG ZAG ORANGE 1.25, ELEMENTS 1.25, EZ WIDER
1.25, etc.166 See also the advertisement on the CB Distributors website
(cbdistributorsinc.com) using 1½ and 1.5 interchangeably in the same advertisement
for a ZIG ZAG cigarette rolling paper shown below:167

163 143 TTABVUE 30-31.
164 143 TTABVUE 16
165 143 TTABVUE 24-25.
166 143 TTABVUE 27-28. See also 143 TTABVUE 61 (ELEMENTS 1.0), 62-63 (HEMPIRE
1.0), 64 (Randy’s Wired Classic 1.25), 143 TTABVUE 66 (ZIG ZAG 1.25, RIZLA 1.25, TOP
1.25, RAW 1.25, ELEMENTS 1.25 and 1.5, ZEN 1.25, DLX 1.25, PAY PAY 1.25, LARAMIE
1.25 NINE DRAGONS 1.25), 67-69 (BLUNT WRAP 1.25), 70 (ZEN 1&25).
167 143 TTABVUE 29.
Opposition No. 91158276 et. al.
- 45 -

Even Seth Gold, Defendant’s Vice President and General Counsel, referred to the
decimal designations 1.25 and 1.5 to refer to 1¼ and 1½ size papers in his declaration.
In presenting the measurements of various 1¼ and 1½ size papers, Mr. Gold referred
to the papers as 1.25 width and 1.25 length (e.g., “Elements 1.25 width” and
“Elements 1.25 length”) and 1.5 width and 1.5 length (e.g., “Camouflage 1.5 width”
and “Camouflage 1.5 length”).168 Mr. Gold claimed that his use of the decimal
designations was a mistake by “whoever” put together the exhibits.169
Q. So you think that to a wholesaler or consumer or
retailer, they’re going to pay more attention to the
distinction between 1.5 and 1 1/2 than a legal team
charged with putting in evidence to demonstrate
that 1.5 is different than 1 1/2?
A. A consumer for sure.170

168 Gold Decl. ¶¶13-15 and Exhibits 6 - 8 (179 TTABVUE 11-13, 77, 78, 83, 84, 89, 90, 95, 96,
101, 102, 107, 108, 113, 114, 119, 120, 125, 126, 132, 133, 138, 139, 144, 145, 151, 152, 157,
158, 163, 164, 169, 170, 175, 176, 181, 182, 187, 188, 193, 194, 199, 200, 205, 206, 212, 213,
218, and 219).
169 Gold Cross-Examination Dep., p. 72 (201 TTABVUE 75).
170 Gold Cross-Examination Dep., p. 75 (201 TTABVUE 78).
Opposition No. 91158276 et. al.
- 46 -
In fact, Defendant asserts that wholesalers and distributors that interchange
decimal designations for fractions do so mistakenly.
[Defendant] actively polices the use of its marks by
distributors and retailers. Whenever [Defendant] has
learned that a distributor or retailer of cigarette papers has
mistakenly used the Point Marks in promotional material
to identify cigarette papers made by others, or has
incorrectly used the Point Marks to refer to cigarette
papers that bear designations 1½ or 1¼, it has been
requested that they correct their material. These
distributors and retailers have uniformly complied with
[Defendant’s] requests. (Citations omitted).171
Mr. Sandman testified that there are “thousands of wholesalers that produce
thousands and thousands of documents and price lists” and that the evidence of third
parties interchanging decimal designations for fractions “are just a few mistakes.”172
Nevertheless, Defendant faces an uphill struggle to police its purported marks as
demonstrated by the excerpts from the AMAZON.com website featuring
advertisements for cigarette rolling papers using decimal designations to identify the
size of their cigarette rolling papers (e.g., Rasta Royale 1.5”, Raw 1.25 size cigarette
rolling papers, Jamaican Hemp Brand 1.25, etc.)173 and the 2015 issue of the Harold
Levinson Associates Premium Cigar Catalog advertising ZIG ZAG 1.5 Blue Ultra
Thin, ZIG ZAG ORANGE 1.25 and ZIG ZAG ULTRA THIN 1.25 cigarette rolling
papers.174

171 Defendant’s Brief, p. 21 (230 TTABVUE 27) (citing Gold Decl. ¶27 (179 TTABVUE 26-
27) and Sandman Decl. ¶13 (164 TTABVUE 8).
172 Sandman Cross-Examination Dep., p. 58 (209 TTABVUE 61).
173 213 TTABVUE 9-85.
174 213 TTABVUE 89.
Opposition No. 91158276 et. al.
- 47 -
3. Defendant’s use of size designations.

Donald Levin, Defendant’s Chairman, testified (i) that 1.5 is the numeric
equivalent of 1½, (ii) that the number 1.5 is larger than one and smaller than two,
(iii) that the 1.5 paper is larger than a single width paper and smaller than a double
width paper, and (iv) that the 1.25 paper is larger than a single width paper and
smaller than a 1.5 paper.175
Within Defendant’s product line, the 1.0, 1.25 and 1.5 papers are different sizes.
The 1.0 papers are smaller than the 1.25 papers which are smaller than the 1.5
papers.176 In fact, in 1978, Defendant’s predecessor, Adams Apple Distributing
Company, distributed REEFER ROLLERS 1.5 identified as “middle width” cigarette
papers.177 A copy of the package is shown below.178

175 Levin Cross-Examination Dep., p. 12-13 and 39 (204 TTABVUE 16-17 and 43). See also
Little Cross-Examination Dep., p. 68 (199 TTABVUE 71) (1½ and 1.5 are mathematical
equivalents); Myers Cross-Examination Dep., p. 38 (194 TTABVUE 41 (a ZIG-ZAG 1½ size
cigarette rolling paper corresponds to a JOB 1.5 cigarette paper).
176 Levin Discovery Dep., pp. 70-71 (140 TTABVUE 34-35); Levin Cross-Examination Dep.,
pp. 69-70 (204 TTABVUE 73-74); Sierra Cross-Examination Dep. p. 42 (196 TTABVUE 45);
Serio Cross-Examination Dep., p. 28 (195 TTABVUE 31).
177 Kesselman Decl. ¶16 (138 TTABVUE 7). Donald R. Levin, Defendant’s Chairman, testified
that Adams Apple Distributing Company was one of Defendant’s prior names. Levin
Discovery Dep., pp. 11, 17 (140 TTABVUE 15, 21).
178 Kesselman Decl. Exhibit B (138 TTABVUE 12).
Opposition No. 91158276 et. al.
- 48 -
At one time, Defendant printed the legend “A Cigarette Paper and a Half” on its
JOB 1.5 cigarette rolling papers.179

Defendant sells JOB 1.0, JOB 1.25, JOB 1.5 and JOB 2.0 cigarette rolling
papers.180 The difference between the 1.0, 1.25, and 1.5 is the surface areas (i.e., the
size).181
Q. And what is the difference between the 1.0, 1.25, and
1.5?
A. The 1.0 and the 1.25 and the 1.5 have different
surface areas.
Q. Different what?
A. Surface areas.
Q. Meaning different sizes?

179 Gold Testimony Decl. Exhibit 10 (180 TTABVUE 6, 7, 8). Nevertheless, Mr. Gold testified
that “if you take a number 1 1/2, that’s 50 percent greater than the number 1, but there is
nothing about 1.5 that’s 50% of 1.0. And similarly with 1.25.” Gold Cross-Examination Dep.,
14 (201 TTABVUE 17).
180 Gold Discovery Dep., pp. 57-58 (140 TTABVUE 83-84).
181 Gold Discovery Dep., p. 59 (140 TTABVUE 85). See also Little Dep., p. 45 (199 TTABVUE
48 (the difference between the JOB 1.0, 1.25, and 1.5 cigarette rolling papers is the width of
the product). Mr. Gold explains that “[f]rom 1.0 to 1.5, they have ascending surface area, but
it’s not relative proportion.” Gold Cross-Examination Dep., p. 14 (201 TTABVUE 17). See also
Gold Cross-Examination Dep., p. 29-30 (201 TTABVUE 32-33).
Opposition No. 91158276 et. al.
- 49 -
A. Yes.182
The 1.25 is larger than the 1.0 and the 1.5 is larger than the 1.25.183
[T]he cigarette papers sold under the 1.25 mark are longer
and wider than the cigarette papers bearing the mark 1.0,
and the cigarette papers sold under the mark 1.5 are wider
than the cigarette papers bearing the trademark 1.0 and
1.25.184
The JOB ORANGE 1¼ is approximately the same size as the JOB GOLD 1.25 and
the JOB GOLD 1.25 is approximately the same size as other manufacturer’s 1¼ size
papers.185
Q. And like the fractions, the decimals identify the size
of the paper to consumers, correct?
A. Yes.
Q. So a consumer knows that a JOB 1.0 is smaller than
a JOB 1.25, correct?
A. I would assume so, yes.

182 Gold Discovery Dep., p. 59 (140 TTABVUE 85). See also, Sandman Cross-Examination
Dep., p. 34 (210 TTABVUE 37) (Defendant uses decimals to indicate a progression in size as
you go from 1.0 to 1.25 to 1.5 the papers get larger); Serio Discovery Dep., p. 30 (195
TTABVUE 33) (the bigger the decimal, the bigger the paper); Abbott Discovery Dep., p. 36,
43-44 (189 TTABVUE 39, 46-47); Clark Cross-Examination Dep., p. 48 (191 TTABVUE 51)
(1.0, 1.25 and 1.5 “communicate the size - - the successively increasing sizes of the rolling
papers.”); Myers Cross-Examination Dep., p. 37 (194 TTABVUE 40).
183 Gold Discovery Dep., p. 60 (140 TTABVUE 86). See also 143 TTABVUE 56, 57, Little
Cross-Examination Dep., p. 45 (199 TTABVUE 48); Lowe Cross-Examination Dep., pp. 80-81
(200 TTABVUE 83-84) and p. 87 (200 TTABVUE 90) (“Logic tells me that a 1.5 is a larger
product than a 1.25.”); Buckland Cross-Examination Dep., p. 40 (190 TTABVUE 43).
184 Gold Testimony Decl. ¶12 (179 TTABVUE 10). See also Gold Cross-Examination Dep., p.
16 (201 TTABVUE 19) (although the papers get bigger as you go from 1.0 to 1.25 to 1.5,
“there’s no proportionality.”).
185 Serio Cross-Examination Dep., p. 29 (195 TTABVUE 32); Clark Cross-Examination Dep.,
p. 51 (191 TTABVUE 54); Slaughter Cross-Examination Dep. p. 30 197 TTABVUE 33); Myers
Cross-Examination Dep., p. 341 (194 TTABVUE 44).
Opposition No. 91158276 et. al.
- 50 -
Q. And that a JOB Gold 1.25 is smaller than a JOB
Gold 1.5, correct?
A. Yes.186
* * *
Q. Would you agree that the 1.25 and the 1.5
communicate size to the consumers in a similar way
that 1 1/4 and 1 1/2 do?
A. Yes, I guess I’d have to - - it’s reasonable.187
In his cross-examination testimony, William Slaughter, one of Defendant’s Zone 1
Key Account Managers, testified that the decimal designations are size designations:
Q. Do you know what the difference is between the JOB
1.0, 1.25, and 1.5 product?
A. To me it’s an identification for the consumer of
different sizes.
Q. And is it fair to say the 1.0 is the smallest of those
three sizes?
A. Yes.
Q. And the 1.25 is larger than the 1.0?
A. Yes.
Q. And the 1.5 in turn is larger than the 1.25?
A. Yes.
Q. And is it fair to say that consumers know that fact?
A. Most, yes.188

186 Clark Cross-Examination Dep., pp. 40-41 (191 TTABVUE 43-44).
187 Clark Cross-Examination Dep., p. 42 (191 TTABVUE 45). See also Lowe Cross-
Examination Dep., pp. 62-63 (200 TTABVUE 66-67) (“Some use single-wide, some use double-
wide, and some use one and an half, some use 1.5,” and 1.25).
188 Slaughter Cross-Examination Dep., pp. 26-27 (197 TTABVUE 29-30). See also Evans
Cross-Examination Dep., p. 32, 37 (192 TTABVUE 35, 40 ) (1¼, 1.25, 1 ½, and 1.5 are size
Opposition No. 91158276 et. al.
- 51 -
Thus, consumers understand that as the size of the decimal designation increases,
the size of the cigarette rolling paper increases.189 In this regard, Glenn Lowe, the
Vice President of Jim Dandy Food Stores, Inc., a chain of 12 convenience stores in
Coastal Carolina, testified that to indicate the size of the cigarette rolling paper,
consumers “would request a 1.0, 1.25 or 1.5.”190
That consumers perceive 1.0, 1.25 and 1.5 to be size designations is not surprising
since Defendant advertises those decimal designations as size indicators. In the June
1976 issue of High Times magazine Defendant advertised its JOB 1.5 cigarette rolling
paper as “A Paper and a Half.”191 The advertisement included the following text:
We all know an expert roller, who with a twist and a lick,
and roll the perfect cigarette with one, single paper. On the
other hand, almost anyone can roll a double-wide. But
some of us are still sitting on the fence trying to avoid
extremes. Well fellow middle of the roaders, here’s
something for us: JOB’s new one•point•five, the perfect
size rolling paper. Thin, white, rice paper, bigger than a
single paper, smaller than a double-wide.

designations and the fractions and decimals are “synonymous”); Wendelken Cross-
Examination Dep., p. 28 (206 TTABVUE 31); Little Cross-Examination Dep., p. 45 (199
TTABVUE 48); Little Cross-Examination Dep., p. 92, 95 (199 TTABVUE 95, 98); Kenrick
Cross-Examination Dep., p. 36 (202 TTABVUE 39); Myers Cross-Examination Dep., p. 35
(194 TTABVUE 38).
189 Evans Cross-Examination Dep., p. 37 (192 TTABVUE 40). See also Wendelken Cross-
Examination Dep., p. 29, 40-41 (206 TTABVUE 32, 43-44); Kenrick Cross-Examination Dep.,
p. 36, (202 TTABVUE 39); Myers Cross-Examination Dep., p. 35.
190 Lowe Cross-Examination Dep., p. 80 (200 TTABVUE 83); Kenrick Cross-Examination
Dep., p. 68 (202 TTABVUE 71); Myers Cross-Examination Dep., p. 35 (194 TTABVUE 38)
(decimals indicate size in the JOB line); Myers Cross-Examination Dep., p. 341 (194
TTABVUE 44).
191 142 TTABVUE 12.
Opposition No. 91158276 et. al.
- 52 -
JOB, the world’s finest cigarette paper now in three sizes:
double-wide, one•point•five, and single width.192
The September 1976 issue of High Times magazine advertised the JOB 1.5
cigarette rolling paper as “a paper and a half … Bigger by half than a single paper,
smaller than a double-wide.”193
After the introduction of the JOB 1.25 cigarette rolling paper, Defendant promoted
the fact its papers were “available in all four sizes including our new
one•point•25.”194 In the December 1979 issue of National Lampoon magazine,
Defendant’s advertisement featured its product size selection in the manner set forth
below:195

Defendant advertised its JOB 1.0 as a “Single-Width” cigarette rolling paper.196

192 142 TTABVUE 12.
193 142 TTABVUE 18. This advertisement also touted that the JOB papers are available in
three sizes: double-wide, one•point•five, and single width.
194 142 TTABVUE 61.
195 142 TTABVUE 119. See also Gold Decl. Exhibit 10 (180 TTABVUE 8).
196 Gold Testimony Decl. Exhibit 10 (180 TTABVUE 9).
Opposition No. 91158276 et. al.
- 53 -

In the promotion shown below, Defendant highlights the relative sizes of
Defendant’s JOB cigarette rolling papers:197

In Defendant’s counter display shown below, Defendant points out that its display
“holds all three popular sizes” (i.e., 1.0, 1.25 and 1.5).198

197 143 TTABVUE 54 and Gold Testimony Decl. Exhibit 10 (180 TTABVUE 14).
198 Gold Cross-Examination Dep., Exhibit 17 (201 TTABVUE 452).
Opposition No. 91158276 et. al.
- 54 -

D. Findings of fact.

Based on the record described above, we make the findings of fact listed below:
1. Consumers prefer specific size cigarette rolling papers depending upon their
ability to roll their own cigarettes and the amount of tobacco or other material they
intend to roll into a cigarette;
2. There are four primary sizes of cigarette rolling papers:
a. Single wide or width;
b. 1¼;
c. 1½; and
d. Double wide.
3. Although there are no industry standards governing the size of cigarette
rolling papers, the size of the cigarette rolling paper refers generally to the surface of
the paper.
4. 1.25 is the equivalent of 1¼;
5. 1.5 is the equivalent of 1½;
Opposition No. 91158276 et. al.
- 55 -
6. Defendant uses 1.0, 1.25 and 1.5 to identify the size of its cigarette rolling
papers.
7. Consumers perceive Defendant’s 1.0 cigarette rolling paper as a single width
paper;
8. Consumers perceive Defendant’s 1.25 cigarette rolling paper as a 1¼ size
cigarette rolling paper;
9. Consumers perceive Defendant’s 1.50 cigarette rolling paper as a 1½ size
cigarette rolling paper;
10. 1.0 is a generic term for a single width cigarette rolling paper;
11. 1.25 is a generic term for a 1¼ size cigarette rolling paper; and
12. 1.5 is a generic term for a 1½ size cigarette rolling paper.
In view of the foregoing, the oppositions to Serial No. 76369872 for the mark 1.25
(typed drawing form) and Serial No. 78157851 for the mark 1.5 (typed drawing form)
are sustained and registration is refused.
Having found that the terms 1.0, 1.25 and 1.5 are generic terms and are incapable
of functioning as trademarks, we now turn to Registration No. 1481006 for the mark
1.0 (stylized), Registration No. 1328866 for the mark 1.25 (stylized), and Registration
No. 1331207 for the mark 1.5 (stylized), all shown below:

“In order for a term otherwise unregistrable to be capable of distinguishing an
applicant’s goods, the presentation of the term must be sufficiently distinctive so as
Opposition No. 91158276 et. al.
- 56 -
to create a commercial impression separate and apart from the unregistrable
components whereby it is possible to disclaim those unregistrable components and
still have a mark which is registrable as a whole.” In re Bonni Keller Collections Ltd.,
6 USPQ2d 1224, 1227 (TTAB 1987) (citing In re Carolyn’s Candies, Inc., 206 USPQ
356 (TTAB 1980)). Recognizing that the determination of whether the stylization of
an otherwise unregistrable designation is sufficiently distinctive in character to
“rescue” the designation as a whole is a necessarily subjective one, we find that
Defendant’s stylization of the decimal designations is not so unique or unusual as to
create a distinctive commercial impression apart from the number that is
represented. See In re Sambado & Son Inc., 45 USPQ2d 1312, 1315 (TTAB 1997).
The Board’s finding of fact in Carolyn’s Candies, set forth below, is applicable in these
cases:
Where, as both here and in the “BALSAM” case, a “mark”
is composed of a . . . generic notation, and its only claim to
origin-indicating capability is that the letters of the
notation are presented in a somewhat embellished style,
we believe that whatever impact the styling may have is
overridden by, or lost in, the strong significance which the
“mark” has as a . . . generic notation, and that the mark,
considered as a whole, creates only a single commercial
impression, namely that of a . . . generic notation.
In re Carolyn’s Candies, Inc., 206 USPQ at 361.
As for the word “point,” it represents the standard pronunciation of the
punctuation mark that creates a decimal number, and, as used in the registrations,
it would be perceived as indicating that the subject matter is a decimal number. Thus,
considering the terms in their entirety, we find that the components (i.e., the
numbers, the word “point,” and the stylization) do not present a commercial
Opposition No. 91158276 et. al.
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impression that is itself not generic. See In re Driven Innovations, Inc., 115 USPQ2d
1261, 1268 (TTAB 2015) (the word “Dot” in the mark DOTBLOG represents the
standard pronunciation of the punctuation mark in an Internet address).
Defendant argues that Plaintiffs have not met their burden of proof because they
have not introduced any evidence relating to the public use or understanding of the
decimal designations199 and that the decimal designations are arbitrary as applied to
cigarette rolling papers.200 These arguments ignore the evidence discussed above (i.e.,
1.0, 1.25 and 1.5 are perceived to be size designations).
In view of the foregoing, the petitions to cancel Registration No. 1481006 for the
mark 1.0 (stylized), Registration No. 1328866 for the mark 1.25 (stylized), and
Registration No. 1331207 for the mark 1.5 (stylized) on ground that the registered
subject matter is generic are granted.
VI. Whether Defendant’s decimal designations are merely
descriptive for cigarette rolling papers?
We now consider whether Defendant’s decimal designations are merely
descriptive for cigarette rolling papers. Where, as here, Defendant argued during the
prosecution of its applications for registration that the decimal designations at issue
are inherently distinctive and, in the alternative, disclaimed the decimal designation
“1.0” and, in the alternative, sought the benefit of Section 2(f) of the Trademark Act
for the designation 1.25 and design and the designation 1.5 and design, Defendant

199 Defendant’s Brief, p. 33 (230 TTABVUE 39).
200 Defendant’s Brief, p. 34 (230 TTABVUE 40). As noted above, Donald Levin’s testimony
that he adopted 1.5 as a trademark because it is a fanciful term is not credible. (204
TTABVUE 11-12).
Opposition No. 91158276 et. al.
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has not conceded that those designations are not inherently distinctive. See In re
Thomas Nelson, Inc., 97 USPQ2d at 1713 (“An applicant can avoid the admission that
its mark is not inherently distinctive if it makes the claim of acquired distinctiveness
in the alternative and files an appeal of the refusal on the basis that the mark is not
inherently distinctive.”); In re RiseSmart Inc., 104 USPQ2d at 1932 (holding that the
authorization to enter a disclaimer made in the alternative is not an admission that
the mark is merely descriptive). Nevertheless, the registered marks may not be
cancelled on the ground that they are merely descriptive because they were registered
for more than five years when the petitions for cancellation were filed. Section 14 of
the Trademark Act, 15 U.S.C. § 1064. See also Park ‘N Fly v. Dollar Park and Fly,
Inc., 469 US 189, 224 USPQ 327, 331 (1985) (“Without regard to its incontestable
status, a mark that has been registered five years is protected from cancellation
except on the grounds stated in §§ 14(c) and (e). Pursuant to Section 14, a mark may
be cancelled on the grounds that it is merely descriptive only if the petition to cancel
is filed within five years of the date of registration. Section 14(a), 15 U.S.C. §
1064(a).”). Thus, the petitions to cancel Registration No. 1481006 for the mark 1.0
(stylized), Registration No. 1331207 for the mark 1.5 (stylized), and Registration No.
1328866 for the mark 1.25 (stylized) on the ground that they are merely descriptive
are dismissed.
Serial No. 76369872 for the mark 1.25 (typed drawing form) and Serial No.
78157851 for the mark 1.5 (typed drawing form) are legally identical to Registration
No. 1328866 for the mark 1.25 (stylized) and Registration No. 1331207 for the mark
Opposition No. 91158276 et. al.
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1.5 (stylized).201 By applying to register 1.25 and 1.5 in typed drawing form,
Defendant is not asserting rights in any particular display. “By presenting its marks
merely in a typed drawing, a difference cannot legally be asserted by that party.”
Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 939 (Fed. Cir. 1983).
Therefore, Defendant’s marks in typed drawing form can be displayed in the same
stylization as its registered marks.
In the oppositions, the portions of Defendant’s marks which are alleged to be
merely descriptive are legally identical to the subject matter in Defendant’s
incontestable registrations. In addition, the goods recited in the applications and
registrations are identical. We have a situation, therefore, where the marks 1.25
(stylized) and 1.5 (stylized) for cigarette rolling papers cannot be challenged on the
ground that those marks are merely descriptive. Thus, it appears illogical to allow
Plaintiff to oppose the applications to register the decimal designations 1.25 and 1.5,
both in typed drawing form, for “cigarette rolling papers” on the ground that they are
merely descriptive when there is conclusive evidence in the record showing that the
legally identical marks 1.25 stylized and 1.5 stylized are “valid” and incontestable
marks for identical goods. See In re The American Sail Training Association, 230
USPQ 879, 880 (TTAB 1986) (the USPTO may not require applicant to disclaim the
exclusive right to use the term “Tall Ships” in the mark RETURN OF THE TALL
SHIPS when TALL SHIPS is the subject of an incontestable registration for the same

201 Prior to November 2, 2003, “standard character” drawings were known as “typed”
drawings. A typed mark is the legal equivalent of a standard character mark. TMEP §
807.03(i) (January 2015).
Opposition No. 91158276 et. al.
- 60 -
services). See also Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110
USPQ2d 1458, 1472 (TTAB 2014). Cf. Morehouse Manufacturing Corp. v. J.
Strickland and Co., 407 F.2d 881, 160 USPQ 715, 717 (CCPA 1969) (“the opposer
cannot be damaged, within the meaning of section 13 of the statute, by the issuance
to the applicant of a second registration where applicant already has an existing
registration of the same mark for the same goods”).
However, because the prior registration defense set forth in Morehouse is an
equitable defense, see O-M Bread, Inc. v. U.S. Olympic Committee, 65 F.3d 933, 36
USPQ2d 1041, 1045 (Fed. Cir. 1995) (“The prior registration or Morehouse defense is
an equitable defense …”), it is unavailable against a claim of mere descriptiveness.
See TBC Corp. v. Grand Prix Ltd., 12 USPQ2d 1311, 1313 (TTAB 1989). The reason
for this policy was explained by the Board in Southwire Co. v. Kaiser Aluminum &
Chemical Corp., 196 USPQ 566, 573 (TTAB 1977) as follows:
The theory underlying this principle * * * is that it is within
the public interest to preclude registration of merely
descriptive designations, to cancel registrations which are
void ab initio because of this disability of the registered
mark as of the time the application was filed, and to cancel
those registrations where the registered marks have, since
the time of registration, become terms of art or common
description; and that this interest or concern cannot be
waived by the inaction of any single person or concern, no
matter how long the delay persists.
Because the prior registration defense is related to the equitable defenses of laches
or acquiescence, it is unavailable in an inter partes proceeding predicated on mere
descriptiveness of a mark. Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC,
110 USPQ2d at 1472. If we find that Defendant’s decimal designations 1.25 and 1.5,
Opposition No. 91158276 et. al.
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both in typed drawing form, are merely descriptive, that decision will not affect
Defendant’s rights under its incontestable registrations. Couch/Braunsdorf Affinity,
Inc. v. 12 Interactive, LLC, 110 USPQ2d at 1472. We therefore procced to determine
whether the decimal designations 1.25 and 1.5, both in typed drawing form, are
merely descriptive.
The evidence discussed above regarding whether the terms 1.25 and 1.5 are
generic prove that those terms are merely descriptive of the size of a cigarette rolling
paper because they directly impart to the consumer the relative size of the cigarette
rolling paper. In view of the foregoing, the oppositions to Serial No. 76369872 for the
mark 1.25 (typed drawing form) and Serial No. 78157851 for the mark 1.5 (typed
drawing form) on the ground that the subject matter sought to be registered is merely
descriptive are sustained.
VII. Whether Defendant’s decimal designations have acquired
distinctiveness for cigarette rolling papers?
Pursuant to Section 2(f), matter which is merely descriptive under Section 2(e)(1)
may nonetheless be registered on the Principal Register if it “has become distinctive
of the applicant’s goods [or services] in commerce.” Thus, the mark may be registered
on the Principal Register if the applicant proves that the merely descriptive matter
has acquired distinctiveness (also known as “secondary meaning”) as used on the
applicant’s goods and/or services in commerce. See In re Chopper Indus., 222 USPQ
258 (TTAB 1984).
The applicant seeking registration of a mark under Section 2(f) bears the ultimate
burden of establishing acquired distinctiveness. See In re Hollywood Brands, Inc.,
Opposition No. 91158276 et. al.
- 62 -
214 F.2d 139, 102 USPQ 294, 295 (CCPA 1954) (“There is no doubt that Congress
intended that the burden of proof under [Section 2(f)] should rest upon the applicant
for registration….”). See also Yamaha Int’l Corp. v. Hoshino Gakki Co., 840 F.2d 1572,
6 USPQ2d 1001, 1005 (Fed. Cir. 1988). Applicant’s burden is to prove acquired
distinctiveness by a preponderance of the evidence. See In re Noon Hour Food
Products Inc., 88 USPQ2d 1172, 1181 (TTAB 2008). “Finally, the applicant’s burden
of showing acquired distinctiveness increases with the level of descriptiveness; a more
descriptive term requires more evidence of secondary meaning.” In re
Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420, 1424 (Fed. Cir. 2005). As the
Board has explained:
That is to say, the greater the degree of descriptiveness, the
greater the evidentiary burden on the user to establish
acquired distinctiveness. The sufficiency of the evidence
offered to prove acquired distinctiveness should be
evaluated in light of the nature of the designation. Highly
descriptive terms, for example, are less likely to be
perceived as trademarks and more likely to be useful to
competing sellers than are less descriptive terms. More
substantial evidence of acquired distinctiveness thus will
ordinarily be required to establish that such terms truly
function as source-indicators.
In re Greenliant Systems Ltd., 97 USPQ2d 1078, 1085 (TTAB 2010) (internal citations
omitted).
Registration No. 1481006 for the mark 1.0 (stylized), Registration No. 1328866 for
the mark 1.25 (stylized), and Registration No. 1331207 for the mark 1.5 (stylized) are
all more than five years old. Accordingly, they may not be cancelled on the ground
that they have not acquired distinctiveness. Section 14 of the Trademark Act, 15
U.S.C. § 1064. See also Park ‘N Fly v. Dollar Park and Fly, Inc., 224 USPQ at 331. In
Opposition No. 91158276 et. al.
- 63 -
view of the foregoing, the petitions to cancel Registration No. 1481006 for the mark
1.0 (stylized), Registration No. 1328866 for the mark 1.25 (stylized), and Registration
No. 1331207 for the mark 1.5 (stylized) on the ground that the registered subject
matter have not acquired distinctiveness is denied.
As noted in the previous section of this decision, Serial No. 76369872 for the mark
1.25 (typed drawing form) and Serial No. 78157851 for the mark 1.5 (typed drawing
form) are legally identical to Registration No. 1328866 for the mark 1.25 (stylized)
and Registration No. 1331207 for the mark 1.5 (stylized). For the same reasons the
equitable prior registration defense does not apply to the issue of whether a mark is
merely descriptive, it does not apply to the issue of whether a mark has acquired
distinctiveness. We therefore proceed to determine whether the decimal designations
1.25 and 1.5, both in typed drawing form, have acquired distinctiveness. We start by
examining the evidence that the decimal designations have acquired distinctiveness.
A. Defendant’s survey.
In 2007, Carol A. Scott, Ph.D., conducted a “nationwide survey to determine the
extent to which the registered marks 1.0 (stylized), 1.25 (stylized) and 1.5 (stylized)
… are recognized as indicating a single source within the meaning of 15 U.S.C. §
1052(f), that is, the extent to which consumers associates the Marks with a single
brand or company.”202 “The survey consisted of in-person interviews of 361 consumers
of cigarette papers in five states: Florida, North Carolina, Georgia, Tennessee and

202 Scott Decl. ¶4 (178 TTABVUE 7).
Opposition No. 91158276 et. al.
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Alabama.”203 These five states represented the greatest sales volume for the JOB
brand of cigarette papers in 2007.204
The survey respondents were divided into three groups. Each group was shown
(1) images of either 1.0, 1.25, or 1.5, (2) the word “Papers,” (3) the BAMBU cigarette
rolling paper logo, and (4) the stylized mark SMOKING.205 Dr. Scott used the word
“Papers” as a control. “The percentage of respondents who indicated that they
associated ‘PAPERS’ with a single company provides a rough measure of ‘noise,’ that
is, respondents who may believe any mark is associated with a single source or who
may be merely guessing in their responses.”206 “A total of 152 participants viewed the
1.25 (stylized) trademark, while 155 participants viewed the 1.5 (stylized) trademark
and 54 participants viewed the 1.0 (stylized) trademark.”207
16. … Of the 155 participants who viewed an image of
the 1.5 mark, 144 (92.9%) indicated that they had seen it
before. Of those 144 respondents, 108 (75%) associated the
1.5 mark with only one brand or company. Overall, 69.7%
(108/155) of all respondents perceived the 1.5 mark as
unique to one brand.
Findings for the 1.25 mark were similar. Of the152
participants who viewed an image of the 1.25 mark, 137
(90.1%) indicated that they had seen it before. Of those 137
respondents, 99 (72.3%) associated the 1.25 mark with only
one brand or company. A total of 65.1% (99/152) of all
respondents perceived the 1.25 mark as unique to one
brand.

203 Scott Decl. ¶6 (178 TTABVUE 8).
204 Scott Decl. ¶6 n.3 (178 TTABVUE 8).
205 Scott Decl. ¶10 (178 TTABVUE 10).
206 Scott Decl. ¶11 (178 TTABVUE 10).
207 Scott Decl. ¶13 (178 TTABVUE 11).
Opposition No. 91158276 et. al.
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Finally, of the 54 participants who viewed an image of the
1.0 mark, 27 (50%) indicated that they had seen it before.
Of those 27 respondents, 19 (70.4%) associated the 1.0
mark with only one brand or company. Despite the
relatively low percentage of consumers who had seen this
mark before, a total of 35.2% (19/54) of all respondents
perceived the 1.0 mark as unique to one brand.208
With respect to the control image, 12.9% of the respondents identified the generic
word “Papers” as a brand and, therefore, that percentage constitutes noise which
should be subtracted from the totals.209 Accordingly, 56.8% of the respondents
identified 1.5 as being associated with one brand, 52.2% of the respondents identified
1.25 as being associated with one brand, and 22.3% of the respondents associated 1.0
as being associated with one brand.
There are design and execution defects in the survey which cast doubt over the
reliability of the survey. First, Dr. Scott did not properly construct a control to
measure noise. A properly constructed survey should have two groups of respondents:
one group (the test cell) is shown the mark at issue and a second group (the control
group) is shown the control stimuli. 6 McCarthy on Trademarks and Unfair
Competition § 32:187 (4th ed. 2016). Also, the control stimuli should be similar to the
mark at issue. Id. (“a control that contains more elements of the accused mark or
trade dress is ‘stronger’ than one that has fewer.”). See also Saint-Gobain Corp. v. 3M
Co., 90 USPQ2d 1425, 1438 (TTAB 2007):
Mr. Johnson conducted a survey that involved
telephonically contacting users of abrasives. The survey
also involved a control. A control is “a twin product

208 Scott Decl. ¶16 (178 TTABVUE 12).
209 Scott Decl. ¶7 (178 TTABVUE 12).
Opposition No. 91158276 et. al.
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attribute[,] service or stimuli that has the same
characteristics generally as the test stimuli, but does not
have the characteristic that is at issue… it would have all
of the characteristics of purple sandpaper but not be
purple.” Johnson dep. dated April 7, 2005 at 22. For the
control in the survey, Mr. Johnson chose orange sandpaper.
As a result of the survey, Mr. Johnson concluded that
“when one measures how many people would identify 3M
or one company, even if an unknown company, as a single
source of purple sandpaper, and you then subtract the
similar proportion among people who are asked about
orange sandpaper in the control, you end up with six
percent, which is about the same level you'd expect just
based on noise or error.” Johnson dep. dated April 7, 2005
at 34.
It would have been preferable for Dr. Scott to have used as the control another
decimal designation or a fraction rather than a generic word such as “Papers.”
Second, Dr. Scott did not conduct a “nationwide” survey, but restricted the
geographic scope of the survey to the Southeastern United States where Defendant
has the bulk of its sales.
I took five markets out of [Defendant’s] top ten. This is
where this would represent the bulk of [Defendant’s] sales.
And if you were to look at their distribution of sales across
these top ten markets, you would see that after the top ten,
there’s very little volume.210
However, the geographical area selected must be based upon scientific or sampling
grounds. See Ralston Purina Co. v. Quaker Oats Co., 169 USPQ 508 (TTAB 1971)
(survey was excluded, inter alia, because “the choice of cities to be surveyed
apparently was based on convenience rather than any scientific and methodological
reasons.”). See also Bank of Texas v. Commerce Southwest, Inc., 741 F.2d 785, 223

210 Scott Cross-examination Dep., p. 65 (207 TTABVUE 69).
Opposition No. 91158276 et. al.
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USPQ 1174, 1177-78 (5th Cir. 1984) (survey to prove secondary meaning was taken
in too small a geographic area to be probative of secondary meaning in larger area
plaintiff claimed as its own); 6 McCarthy on Trademarks and Unfair Competition §
32:161.
Also the geographical area surveyed must represent a nationwide market. See In
re Spirits International N.V., 86 USPQ2d 1078, 1089 n.19 (TTAB 2008) (indicating
that respondent interviews at one location could impact the results), rev’d and
remanded on other grounds, 563 F.3d 1347, 90 USPQ2d 1489 (Fed. Cir. 2009);
Dynamark Corp. v. Weed Eaters, Inc., 207 USPQ 1026, 1033 (TTAB 1980) (the survey
was defective, inter alia, because it was conducted in two cities without any effort to
determine whether they were representative of a nationwide basis). See also Exxon
Corp. v. Xoil Energy Resources, Inc., 552 F.Supp. 1008, 216 USPQ 634, 645 (S.D.N.Y.
1981) (194 persons informally interviewed at New York City train stations is not
projectable over national market)); General Motors Corp. v. Cadillac Marine & Boat
Co., 226 F.Supp. 716, 140 USPQ 447, 463 (W.D. Mich. 1964) (150 people in a single
area not adequate to sample entire U.S. market); 6 McCarthy on Trademarks and
Unfair Competition § 32:161. By deliberately limiting the survey to a distinct
geographic area where Defendant has its highest market share, Dr. Scott inflated the
results.211

211 Dr. Scott testified that higher sales increases the prospects for establishing secondary
meaning.
Q. So then you believe that the higher [Defendant’s] sales
volume, the more likely it is you’re going to get higher
secondary meaning results?
Opposition No. 91158276 et. al.
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Third, Dr. Scott should not have used the stylized versions of the decimal
designation as displayed in the registered marks in the survey because, as a matter
of law, the acquired distinctiveness of the registered marks is not at issue inasmuch
as they have been registered for more than five years at the time the petitions for
cancellation were filed. Dr. Scott should have used another display of the decimal
designations (e.g., block form) to test whether the survey respondents identified the
decimal designations as indicating a single brand rather than the trade dress to
which consumers have been exposed for many years. In other words, the respondents
may have recognized the font as being associated with a single source rather than the
decimal designations themselves.
Fourth, the survey is stale. Dr. Scott testified that because she conducted the
survey in 2007, she was not opining that the decimal designations have acquired
distinctiveness in 2015.212
Q. But have you ever offered an opinion that a given
mark has secondary meaning today based on a
survey that you had run seven or eight years ago?
A. No. And I don’t today.

A. Well, the more chance that people have seen it. And the
more chance you have to see it, then obviously, the
greater chance there is to have secondary meaning. If you
haven’t seen it, it’s very hard to have secondary meaning.
Scott Cross-examination Dep., p. 64 (207 TTABVUE 68).

212 Scott Cross-examination Dep., p. 43 (207 TTABVUE 47). Whether a mark has acquired
distinctiveness is determined in view of the facts at the time the issue is under consideration.
Coach Services Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1730 (Fed.
Cir. 2012); McCormick & Co. v. Summers, 354 F.2d 668, 148 USPQ 272, 276 (CCPA 1966);
Gen. Foods Corp. v. MGD Partners, 224 USPQ 479, 486 (TTAB 1984).
Opposition No. 91158276 et. al.
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Q. So then let’s establish that. Your opinion is - - the
opinion you’re offering in this case is not that these
marks that you study have secondary meaning today
in 2015?
A. That’s correct.
* * *
Q. Because you can’t be reasonably confident that in
2015 that the results you obtained in 2007 would be
applicable or generalizable to today, could you?
* * *
A. I have no evidence about the status of 2015.213
Fifth, the survey sample sizes are insufficient to provide reliable results. Dr. Scott
essentially conducted three different surveys involving 155 respondents for 1.5, 152
respondents for 1.25, and 54 respondents for 1.0. We agree with Plaintiff’s survey
expert Dr. Stephen Nowlis that Defendant’s sample sizes are insufficient especially
because Dr. Scott combined both test results and control results in a single test.214
Finally, to establish acquired distinctiveness, Defendant’s survey must prove that
buyers associate the decimal designations with it, not with another company. Nextel
Communications, Inc. v. Motorola, Inc., 91 USPQ2d 1393, 1403 (TTAB 2009) (In an
Opposition by Nextel against Motorola’s registration of a chirping sound as a mark
for its cell phones, Motorola’s survey tended to show that as between the parties, if
the chirping sound was associated with any source, it was more likely with the
opposer Nextel, a provider of cell phone services, not with applicant Motorola, a

213 Scott Cross-examination Dep., pp. 43-44 (207 TTABVUE 47-48)
214 Nowlis Decl. ¶43 (219 TTABVUE 21). Dr. Nowlis testified that a survey should have at
least 200 validated responses. Id.
Opposition No. 91158276 et. al.
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maker of cell phones.). Dr. Scott’s calculations failed to subtract responses identifying
a source other than Defendant.
For the reasons stated the survey is inconclusive and is of insufficient probative
value to support finding that Defendant’s decimal designations have acquired
distinctiveness.
B. Defendant’s sales, advertising, and long use of the decimal
designations.

Seth Gold testified that since 1976, Defendant, through its predecessor-in-
interest, has used the decimal designation 1.5 to identify Defendant’s cigarette rolling
papers, since 1977, Defendant has used the decimal designation 1.25 to identify
Defendant’s cigarette rolling papers, and since 1985, Defendant has used the decimal
designation 1.0 to identify Defendant’s cigarette rolling papers.215 Defendant’s sales
of its 1.0, 1.25, and 1.5 cigarette rolling papers have been in the millions of dollars.216
Defendant’s cigarette rolling papers displaying the decimal designations are sold in
over 125,000 retail outlets including convenience stores, tobacco stores, drug stores,
gas stations, mini-marts, dollar stores and mass merchandisers.217 Since 1997,
Defendant has spent in excess of $3 million annually promoting the decimal
designations.218
[Defendant] also advertises its 1.0, 1.25 and 1.5 brand
cigarette papers to consumers by providing retailers of 1.0,

215 Gold Decl. ¶¶7-9 (179 TTABVUE 6-8).
216 Gold Decl. ¶¶23-25 (179 TTABVUE 15). Because Defendant’s sales figures have been
designated as confidential, we will refer to them in general terms.
217 Gold Decl. ¶21 (179 TTABVUE 15).
218 Gold Decl. ¶20 (179 TTABVUE 14).
Opposition No. 91158276 et. al.
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1.25 and 1.5 brand cigarette papers with promotional
material. For retailers generally open to people of all ages,
such as convenience stores or drug stores, [Defendant] is
restricted to “point-of-sale” promotional materials, which
include shelf talkers (which stick to a shelf and point
toward a particular location on the shelf), bowl collars
(which hang from the mouth of a bowl that holds individual
books of cigarette papers) and product displays (which act
as shelving or stands that bear the JOB mark and direct
the consumer’s eye to 1.0, 1.25 and 1.5 brand cigarette
papers). In adults-only locations, such as specialty tobacco
shops, [Defendant] additionally provides retailers with
posters, banners, counter pads, stickers and cards for
windows, cases, and aisles that prominently display the
1.0, 1.25 and 1.5 marks.219
Also, Defendant promotes its decimal designations to wholesalers and retailers at
national and regional trade shows,220 in industry and consumer publications,221 and
through incentive and rebate programs to wholesalers and retailers.222 However,
there is no evidence that Defendant has ever promoted the decimal designations
without the JOB trademark. There is no evidence that the decimal designations have
been used as stand-alone marks. Evidence that only shows a mark used in
conjunction with other wording may be insufficient to show that the mark has
acquired distinctiveness. See In re Mogen David Wine Corp., 372 F.2d 539, 542, 152
USPQ 593, 595-96 (C.C.P.A. 1967) (finding evidence of a bottle design failed to prove
acquired distinctiveness where advertising depicting the bottle design always
featured applicant’s word mark); In re Franklin Cnty. Historical Soc’y, 104 USPQ2d

219 Gold Decl. ¶19 (179 TTABVUE 14).
220 Gold Decl. ¶16 (179 TTABVUE 13).
221 Gold Decl. ¶17 (179 TTABVUE 13-14).
222 Gold Decl. ¶18 (179 TTABVUE 14).
Opposition No. 91158276 et. al.
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1085, 1093 (TTAB 2012) (noting none of applicant’s evidence showed use of the
proposed mark "CENTER OF SCIENCE AND INDUSTRY" without the acronym
"COSI," while other evidence only used the acronym to refer to applicant’s services).
While the above-noted evidence establishes that Defendant’s cigarette rolling
papers are a successful product line, we cannot find that the success of the products
establishes acquired distinctiveness for the decimal designations. Because the
decimal designations are always used with the JOB trademark, we cannot ascertain
whether Defendant’s sales success and advertising expenditures evidence that
consumers recognize the decimal designations as source indicators. See In re Boston
Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056, 1058 (Fed. Cir. 1999) (claim based on
annual sales under the mark of approximately eighty-five million dollars, and annual
advertising expenditures in excess of ten million dollars, not sufficient to establish
acquired distinctiveness in view of highly descriptive nature of mark); In re Bongrain
International (American) Corp., 894 F.2d 1316, 13 USPQ2d 1727, 1729 (Fed. Cir.
1990) (growth in sales of applicant’s “Baby Brie” cheese is insufficient to show term's
distinctiveness or secondary meaning, since increased sales may indicate product's
popularity, or acceptance of applicant’s other mark “Alouette” used on applicant’s
packages, rather than recognition of “Baby Brie” as indicative of origin); ProMark
Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1245 (TTAB 2015 ) (“It is well-
settled that, where, as here, a party's advertising and sales data is based on materials
and packaging in which the mark at issue is almost always displayed with another
Opposition No. 91158276 et. al.
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mark, such data does not prove that the mark at issue possesses the requisite degree
of consumer recognition.”).
C. Customer recognition.223
Defendant introduced the testimony declarations of the six customers listed below
who all testified, in essence, that when customers ask for a 1.0, 1.25 or 1.5 cigarette
rolling paper, they are requesting a JOB brand papers:224
1. Jim Wendelken, owner of GW Distributing LLC, a distributor of tobacco
products, including cigarette rolling papers in Arizona;
2. Richard Little, Operations Manager of Tiger Mart, a chain of convenience
stores in South Carolina;

223 The declarations by Defendant’s employees have little probative value as to consumer
perception regarding whether the decimal designations have acquired distinctiveness
because we expect Defendant’s employees to testify that consumers perceive the decimal
designations to be associated with Defendant. In other words, they have a vested interest in
testifying that consumers perceive the decimal designations as trademarks.
224 Plaintiff argues that “the canned declarations from [Defendant’s] sales representatives
and customers – all containing identical wording – have no probative value,” (citing Mag
Instrument, Inc. v. Brinkmann Corp., 96 USPQ2d 1701, 1723 (TTAB 2010). Plaintiff’s Brief,
p. 40 (229 TTABVUE 49). However, we have no problem with the fact that the declarations
were drafted by counsel. 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 the affiants have sworn to the statements contained therein.”). Under
the circumstances in which these declarations were introduced into evidence, we assume that
counsel, after speaking with the declarants, drafted the declarations for accuracy and
expediency, that each declarant reviewed his or her particular declaration to ensure that it
accurately reflected his or her testimony, and that any necessary edits were incorporated in
the final version of the declarations. Also, we expect that the declarants would exercise
caution because they were signing the declarations under oath. As noted by Plaintiff, the
declarations in the Brinkmann Corp. case had other problems besides the use of identical
wording. On the other hand, we find the testimony by the declarants that Defendant’s counsel
acted merely as a scribe lacks credulity.
Opposition No. 91158276 et. al.
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3. Glen Lowe, Vice President of Jim Dandy Food Stores, a chain of 12 convenience
stores in North Carolina;
4. Robert Gregory Kenrick, President and owner of Gregory’s Gas, a chain of 10
service stations and convenience stores in South Carolina;
5. Andrea Myers, President of Kocolene Development Corp,, a chain of 36
convenience stores in Indiana and Kentucky; and
6. Jon Burklund, Chairman and CEO of Burklund Distributors, Inc., a
distributor of tobacco products and convenience stores products.
However, the companies operated by Richard Little, Robert Gregory Kenrick,
Glenn Lowe, and Andrea Myers, convenience store/gas station chains, sell
Defendant’s cigarette rolling papers on an exclusive basis.225 Accordingly, the
testimony of these witnesses is not as persuasive as it could have been if the witnesses
had sold a variety of cigarette papers which would have a provided a basis for
comparison. See In re The Paint Prods. Co., 8 USPQ2d 1863, 1866 (TTAB 1988)
(“Because these affidavits were sought and collected by applicant from ten customers
who have dealt with applicant for many years, the evidence is not altogether
persuasive on the issue of how the average customer for paints perceives the words
‘PAINT PRODUCTS CO.’ in conjunction with paints and coatings.”).

225 Little Cross-examination Dep., pp. 31-32, 64 (199 TTABVUE 34-35, 67); Kenrick Cross-
examination Dep., p. 22 (202 TTABVUE 25); Lowe Cross-examination Dep., p. 27 (200
TTABVUE 30); and Myers Cross-examination Dep. pp. 27-28 (194 TTABVUE 30-31).
Opposition No. 91158276 et. al.
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Moreover, the declarants, with the exception of Jon Burklund, testified on cross
examination that the decimal designations indicated size.226
Mr. Wendelken, a wholesale distributor of tobacco products, testified that his
company sold TOP and JOB brand cigarette rolling papers, not 1.0, 1.25 or 1.5 brand
papers.
Q. Now within [Defendant’s] group of products, do you
sell one brand or more than one brand?
A. More than one brand.
Q. And what are the different brands you sell?
A. We sell Top and JOB.227
Mr. Wendelken did not identify 1.0, 1.25 and 1.5 as brands is because he
understood them to be size designations, not trademarks.
Q. Now, you made reference to 1.0, 1.25 and 1.5. Is it
your understanding that those are different size
designations with the JOB line?
A. When I first saw it I didn’t realize that, but I guess
taking it, yeah, it would be.
Q. Well, at some point in time you did come to that
understanding, correct?
A. Yes.
Q. And do you recall when you came to that
understanding?

226 Myers Cross-examination Dep., p. 35 (194 TTABVUE 38); Kenrick Cross-examination
Dep., p. 65 (202 TTABVUE 68); Lowe Cross-examination Dep. pp. 62, 80, 92, 118 (200
TTABVUE 65, 83, 95, 121); Little Cross-examination Dep., pp. 45, 83, 92, 95, 97 (199
TTABVUE 48, 86, 95, 98, 100); Wendelken Cross-examination Dep., p. 28 (206 TTABVUE
31).
227 Wendelken Cross-examination Dep. p. 18 (206 (TTABVUE 21).
Opposition No. 91158276 et. al.
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A. A few years later. Probably when I started buying
and that was probably ‘90s.
Q. So in the 1990s, you were actually doing purchasing
for Best Candy and Tobacco?
A. Yes.
Q. And at that point in time, did you form the
understanding that 1.0, 1.25, and 1.5 were different
ways of designating sizes within the JOB family?
* * *
A. I never measured them, but I always looked at the
packaging and I figured it was a different size,
yeah.228
The registration files for the 1.25 and design and 1.5 and design marks include
affidavits from retailers attesting that that the primary significance of the decimal
designations is that they represent cigarette papers sold by Defendant. These
declarations have little probative value because they were bare bone conclusions
without factual foundation and no evidence to suggest that the declarants were
randomly selected. See Mag Instrument, Inc. v. Brinkmann Corp., 96 USPQ2d at
1723. Also, as noted above, we have found that when subjected to cross examination,
the declarants actually perceive that the decimal designations to be size designations
rather than trademarks.
D. Defendant’s substantially exclusive use of the decimal designations.
Defendant contends that its efforts to police the use of the decimal designations
as trademarks for cigarette rolling papers is evidence that competitors recognize

228 Wendelken Cross-examination Dep., pp. 28-29 (206 TTABVUE 31-32).
Opposition No. 91158276 et. al.
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Defendant’s exclusive right to use the decimal designations as trademarks.229 To the
contrary, we find that competitors acquiesced to Defendant’s assertion of its exclusive
right to use the decimal designations to avoid litigation. For example,
1. Joshua Kesselman testified that his company agreed “not to use ‘1 & 25’ to
avoid further legal proceedings”;230
2. To settle a litigation with Defendant, Robert Burton Associates, Ltd. agreed
not use the decimal designations and not to oppose any applications or seek to
cancel any registrations for the decimal designations. Robert Burton
Associates, Ltd. did not expressly acknowledge Defendant’s exclusive right to
use the decimal designations;231 and
3. Plaintiff agreed not use decimal designations in connection with cigarette
rolling papers “solely to avoid litigation.”232
Moreover, in a settlement agreement between Defendant and Commonwealth
Brands, Inc. (successor-in-interest to Robert Burton Associates, Ltd.), Defendant
acknowledged the right of Commonwealth Brands, Inc. to use the decimal
designations 1.0 and 2.0 in connection with JOKER 1.0, JOKER 2.0, E-Z WIDER 1.0
and E-Z WIDER 2.0 cigarette rolling papers.233

229 Defendant’s Brief, pp. 15-18 (230 TTABVUE 21-18).
230 Kesselman Decl. ¶23 (138 TTABVUE 8).
231 Levin Decl. ¶¶18-19 and Exhibit 7 (156 TTABVUE 12-13 and 60-65).
232 Gold Decl. ¶29 and Exhibit 12 (179 TTABVUE 17 and 180 TTABVUE 119).
233 Gold Exhibit 17 (183 TTABVUE 156 at 160).
Opposition No. 91158276 et. al.
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The acknowledgement by Michael Bolloré of Defendant’s exclusive right to use the
decimal designations is not persuasive because Michael Bolloré was the principal of
the Societe Job, the company that manufactured cigarette rolling papers for
Defendant.234 Also, the consent to register by Imperial Tobacco, successor to Robert
Burton Associates, Ltd., is problematical because it states that the decimal
designations “are marks distinctive” of at least two sources: Defendant and “one of
the Top Tobacco Companies.”235
Defendant has used its registrations for the decimal designations 1.0, 1.25 and 1.5
for cigarette rolling papers, as well as its position as one of the market leaders in the
industry, to assert its exclusive right to use the decimal designations to identify
cigarette rolling papers to force competitors from using decimal designations on their
packaging to identify relative size. As we noted above, competitors have acquiesced
to Defendant’s demands to avoid litigation. This kind of evidence does not support a
finding of acquired distinctiveness. See In re Wella Corp., 565 F.2d 143, 196 USPQ 7,
n.2 (CCPA 1977); In re Consolidated Cigar Corp., 13 USPQ2d 1481 (TTAB 1989). Cf.
In re Cree, Inc., 818 F.3d 694, 118 USPQ2d 1253, 1259 (Fed. Cir. 2016) (because it is

234 Levin Discovery Dep., Exhibit 93 (140 TTABVUE 45-51). See 140 TTABVUE 51 (“The only
thing we are going to do is to apply for the registration of the design of the covers of both
booklets JOB 1.5 and 1.25 without any mention of the 1.5 and 1.25 neither in number nor in
letters.”). In his May 4, 2011 correspondence with Defendant, Cédric Bolloré, Industrial
Manager of Bolloré S.A. wrote that “[o]ur company (and its predecessors, Societe Job and
Bolloré Technologies, S.A.) have made papers for the cigarette paper industry, including your
companies, for many decades, and we are not aware of others who have used those marks
[the decimal designations 1.0, 1.25 and 1.5)].” Gold Decl. Exhibit 13 (180 TTABVUE 123).
235 180 TTABVUE 157-59. Although Defendant owns both the JOB brand and the TOP brand,
there is no evidence in the record that consumers know that the JOB and TOP are commonly
owned.
Opposition No. 91158276 et. al.
- 79 -
cheaper to take a license than defend a patent infringement action, licenses are often
entered into to avoid litigation).
While Defendant has been able to coerce its competitors to forgo the use of decimal
designations, its policing efforts with distributors and retailers has not been as
successful because, as noted in the discussion of whether the decimal designations
are generic, the distributors and retailers interchange fractions and decimals to
designate cigarette rolling paper sizes.
E. The totality of the evidence.
In the preceding sections, the panel has analyzed the various evidence of acquired
distinctiveness as individual pieces. So as not to miss the forest for the trees, we now
look at the totality of the evidence to determine whether the evidence taken as a
whole proves that the decimal designations have acquired distinctiveness. It does not.
There is nothing in the record that persuades us that consumers perceive the decimal
designations as anything other than as size designations. Defendant’s best evidence
regarding consumer perception comprises the declarations of its customers. On cross
examination, the Defendant’s customer declarants, with the exception of Jon
Burklund, testified that the decimal designations were size designators. Moreover,
Defendant’s advertising identifies the decimal designations as size designators and
there is no unsolicited third-party recognition of the decimal designations pointing
exclusively to Defendant as the source of cigarette rolling papers.236

236 Unsolicited third-party recognition associating the decimal designations as identifying
Defendant as the source of the cigarette rolling papers is not essential to proving acquired
distinctiveness, but it is relevant. In view of the size of the record in this case, the fact that
Defendant would not include unsolicited third-party recognition associating the decimal
Opposition No. 91158276 et. al.
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In view of the foregoing, we find that Defendant has failed to prove that the
decimal designations have acquired distinctiveness.
The oppositions to the registration of Serial No. 76369872 for the mark 1.25 (typed
drawing form) and Serial No. 78157851 for the mark 1.5 (typed drawing form) on the
ground that the subject matter sought to be registered have not acquired
distinctiveness is sustained.
VIII. Whether Defendant’s decimal designations are generic for
cigarettes?
A. The genus of goods.
The specific category of the goods is cigarettes. The category of goods comprising
cigarettes includes roll-your-own cigarettes.
B. The relevant public.
The retail chains, tobacco outlets, tobacco outlet chains, gas station mini-marts,
grocery wholesalers, general wholesalers, mass merchandisers, convenience stores,
dollar stores and drug grocery chains to which Defendant sells its cigarette rolling
papers also distribute cigarettes.237 In addition, there is the ultimate consumer (i.e.,
smokers).

designations as identifying Defendant as the source of the cigarette rolling papers (e.g., news
stories in newspapers and magazine in general circulation and in the particular trade) is
indicative that no such evidence exists.
237 Wendelken Decl. ¶1 (172 TTABVUE 4); Little Decl. ¶¶1-2 (173 TTABVUE 4); Lowe Decl.
¶¶1-2 (174 TTABVUE 4); Kenrick Decl. ¶ ¶ 1 and 6 (175 TTABVUE 4-5); Myers Decl. ¶¶1-2
(176 TTABVUE 4-5); Burklund Decl. ¶¶ 1 and 3 (177 TTABVUE 4-5); Sandman Decl. ¶16
(164 (TTABVUE 9); Sierra Decl. ¶8 (165 TTABVUE 6); Serio Decl. ¶7 (166 TTABVUE 6);
Abbott Decl. ¶7 (167 TTABVUE 6); Grout Decl. ¶7 (168 TTABVUE 6); Clark Decl. ¶9 (169
TTABVUE 7); Slaughter Decl. ¶7 (170 TTABVUE 6); Evans Decl. ¶7 (171 TTABVUE 6). See
Opposition No. 91158276 et. al.
- 81 -
C. Public Perception.
There is no evidence that cigarettes are categorized by size, that anyone refers to
cigarettes by size, or that cigarette size is a factor in the purchasing decision.
D. Analysis.
Plaintiffs argue that because the decimal designations sought to be registered are
generic for cigarette rolling papers, and because cigarette papers are a component of
cigarettes, the decimal designations are generic for cigarettes,238 citing In re Hask
Toiletries, Inc., 223 USPQ 1254 (TTAB 1984) (HENNA N’PLACENTA generic for hair
conditioner where generic for components of goods).
Thus, while these two ingredient names may not, of
themselves, constitute an apt name for the hair conditioner
product itself, they are so patently and centrally
descriptive of the product's most distinctive characteristic
as to be equally incapable of serving a trademark function.
See T. J. McCarthy, Trademarks and Unfair Competition,
§12.2 E (2d ed., 1984) (to be “incapable” a term need not
comprise or relate solely to the name of a product or service
but may be so regarded if it serves as a common or apt
name or descriptor of some distinctive characteristic of the
product or service).
Id. at 1254.
However, as indicated above, the record fails to demonstrate that consumers
perceive the decimal designations as the size of a cigarette and it fails to demonstrate
that the size of a cigarette is a significant factor in the purchasing decision. In other

also Murray Testimony Dep. Exhibits 27, 30, 31 and 38 (152 TTABVUE 198-222, 231-262,
263-284, and 306-318).
238 Plaintiffs’ Brief, p. 42 (229 TTABVUE 51).
Opposition No. 91158276 et. al.
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words, unlike in Hask Toiletries, the record fails to support a finding that size is a
distinctive characteristic of a cigarette.239
Plaintiffs also argue that Defendant’s employees testified that consumers seeing
cigarettes labelled as 1.0, 1.25 or 1.5 would think that the cigarettes were made using
JOB 1.0, 1.25 or 1.5 paper.240 The testimony referred to by Plaintiffs does not relate
to whether 1.0, 1.25 or 1.5 is a category of cigarette; rather, it is probative of whether
consumers associate those designations with Defendant.
In view of the foregoing, we find that the decimal designations sought to be
registered for cigarettes, 1.0, 1.25 and 1.5, are not generic. Therefore, the oppositions
to Serial No. 76296943 for the mark 1.25 (stylized), Serial No. 76296931 for the mark
1.25 (typed drawing form), Serial No. 76296926 for the mark 2.0 (typed drawing
form), Serial No. 76158978 for the mark 1.5 (stylized), Serial No. 76296945 for the
mark 1.5 (typed drawing form), Serial No. 76296942 for the mark 1.0 (typed drawing
form), and Serial No. 76296941 for the mark 1.0 (stylized form) on the ground that
the subject matter sought to be registered is generic are dismissed.

239 In the non-precedential case cited by Plaintiffs regarding the mark RECYCLED PAPER
GREETINGS for greeting cards, In re PRGCO, LLC, Serial No. 77252690 (TTAB May 4,
2012), the Board found that the term “recycled paper” was a “particular type of greeting card,
categorized according to this ingredient or component, namely, greeting cards that are
printed on recycled paper,” analogous to birthday, anniversary, or get-well cards. There is no
evidence to the effect that 1.0, 1.25 or 1.5 are used or recognized as a particular type of
cigarette.
240 Plaintiffs’ Brief, p. 42 (229 TTABVUE 51) (citing Serio Cross-Examination Dep. p. 44 (195
TTABVUE 47); Clark Cross-Examination Dep., p. 101 (191 TTABVUE 104); Evans Cross-
Examination Dep., p. 48 (192 TTABVUE 51); Slaughter Cross-Examination Dep. pp. 54-55
(197 TTABVUE 57-58); Grout Cross-Examination Dep., p. 71 (193 TTABVUE 74); Little
Cross-Examination Dep., p. 118 (199 TTABVUE 121).
Opposition No. 91158276 et. al.
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IX. Whether Defendant’s decimal designations are merely
descriptive for cigarettes?
A term is merely descriptive of goods or services within the meaning of Section
2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), if it forthwith conveys an
immediate idea of an ingredient, quality, characteristic, feature, function, purpose or
use of the goods or services. In re Chamber of Commerce of the U.S., 675 F.3d 1297,
102 USPQ2d 1217, 1219 (Fed. Cir. 2012). See also, In re Gyulay, 820 F.2d 1216, 3
USPQ2d 1009 (Fed. Cir. 1987). Whether a mark or a component of a mark is merely
descriptive is determined in relation to the goods or services for which registration is
sought and the context in which the term is used, not in the abstract or on the basis
of guesswork. In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 218
(CCPA 1978); In re Remacle, 66 USPQ2d 1222, 1224 (TTAB 2002). A term need not
immediately convey an idea of each and every specific feature of the goods or services
in order to be considered merely descriptive; it is enough if it describes one significant
attribute, function or property of them. See In re Gyulay, 3 USPQ2d at 1010; In re
H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338
(TTAB 1973). This requires consideration of the context in which the mark is used or
intended to be used in connection with those goods or services, and the possible
significance that the mark would have to the average purchaser of the goods or
services in the marketplace. See In re Chamber of Commerce of the U.S., 102 USPQ2d
at 1219; In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed.
Cir. 2007); In re Abcor Dev. Corp., 200 USPQ at 218; In re Venture Lending Assocs.,
226 USPQ 285 (TTAB 1985). The question is not whether someone presented only
Opposition No. 91158276 et. al.
- 84 -
with the mark could guess the products or activities listed in the description of goods
or services. Rather, the question is whether someone who knows what the products
or services are will understand the mark to convey information about them.
DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 103 USPQ2d
1753, 1757 (Fed. Cir. 2012) (quoting In re Tower Tech, Inc., 64 USPQ2d 1314, 1316-
1317 (TTAB 2002). See also In re Patent & Trademark Services Inc., 49 USPQ2d 1537,
1539 (TTAB 1998); In re Home Builders Association of Greenville, 18 USPQ2d 1313,
1317 (TTAB 1990); In re American Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
“[I]f one must exercise mature thought or follow a multi-stage reasoning process
in order to determine what product or service characteristics the term indicates, the
term is suggestive rather than merely descriptive.” In re Tennis in the Round, Inc.,
199 USPQ 496, 498 (TTAB 1978). See also, In re Shutts, 217 USPQ 363, 364-65 (TTAB
1983); In re Universal Water Systems, Inc., 209 USPQ 165, 166 (TTAB 1980). In this
regard, “incongruity is one of the accepted guideposts in the evolved set of legal
principles for discriminating the suggestive from the descriptive mark.” In re Shutts,
217 USPQ at 365. See also In re Tennis in the Round, Inc., 199 USPQ at 498 (the
association of applicant’s mark TENNIS IN THE ROUND with the phrase “theater-
in-the-round” creates an incongruity because applicant’s services do not involve a
tennis court in the middle of an auditorium).
Plaintiffs again argue that “[b]ecause decimals at most describe the size of
cigarette papers, a component of cigarettes, they are likewise merely descriptive for
Opposition No. 91158276 et. al.
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cigarettes.”241 As indicated in the previous section, there is nothing in the record that
demonstrates that consumers understand that size is a feature of cigarettes. While
cigarette paper is a component of a cigarette, there is no immediate connection
between a cigarette and its paper size. Consumers would have to employ reasoning
to connect the decimal designations sought to be registered as the size of a cigarette
(e.g., the cigarettes they are purchasing or smoking is composed of paper which may
be single wide (1.0), 1.25 or 1.5 sized cigarette papers).
The line between suggestive and merely descriptive terms is a fine one, and we
must resolve any doubt on this question in favor of Defendant. See In re Shutts, 217
USPQ at 365. See also In re Gyulay, 3 USPQ2d at 1010; In re Recovery, Inc., 196
USPQ 830, 831 (TTAB 1977). As the Board has noted previously, the concept of mere
descriptiveness “should not penalize coinage of hitherto unused and somewhat
incongruous word combinations whose import would not be grasped without some
measure of imagination and ‘mental pause.’” In re Shutts, 217 USPQ at 364-65.
In view of the foregoing, we find that the decimal designations sought to be
registered for cigarettes, 1.0, 1.25 and 1.5, are not merely descriptive. Therefore, the
oppositions to Serial No. 76296943 for the mark 1.25 (stylized), Serial No. 76296931
for the mark 1.25 (typed drawing form), Serial No. 76296926 for the mark 2.0 (typed
drawing form), Serial No. 76158978 for the mark 1.5 (stylized), Serial No. 76296945
for the mark 1.5 (typed drawing form), Serial No. 76296942 for the mark 1.0 (typed

241 Plaintiffs’ Brief, p. 43 (229 TTABVUE 52).
Opposition No. 91158276 et. al.
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drawing form), and Serial No. 76296941 for the mark 1.0 (stylized form) on the ground
that the subject matter sought to be registered is merely descriptive are dismissed.
X. Whether Defendant’s decimal designations have acquired
distinctiveness for cigarettes?
Even though we have found that the designations are not merely descriptive, in
the event this decision is reversed on appeal, we will proceed for the sake of
completeness to consider the claim that Defendant’s intent-to-use applications for
cigarettes have acquired distinctiveness. In this regard, the Court of Appeals for the
Federal Circuit has explained how an applicant can establish that a mark in an
intent-to-use application has acquired distinctiveness in connection with the
identified goods.
[A]n applicant can establish acquired distinctiveness in an
intent-to-use application where it can show that [the]
“same mark” acquired distinctiveness for related goods or
services, and that this acquired distinctiveness will
transfer to the goods or services specified in the application
when the mark is used in connection with them. See TMEP
§1219.09(a) (1997) (listing cases).
In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1812 (Fed.
Cir. 2001). See also TMEP § 1212.09.
The marks 1.0, 1.25, and 1.5 in their stylized and standard character forms are
legally identical to the registered marks for cigarette rolling papers. There is no
existing registration for the decimal designation 2.0.
As to the second factor, the relatedness of the goods, Plaintiffs argue that because
the filing basis for the cigarette applications is Section 1(b) of the Trademark Act, 15
U.S.C. § 1051(b) (intent to use), and because Defendant has not commenced use of
Opposition No. 91158276 et. al.
- 87 -
the decimal designations sought to be registered,242 the subject applications have not
acquired distinctiveness.243 On the other hand, Defendant argues that even if its
decimal designations are merely descriptive for cigarettes, they “have acquired
distinctiveness from [Defendant’s] decades of exclusive and successful use,”
presumably for cigarette rolling papers.244
Defendant’s prior registrations for cigarette rolling papers do not support acquired
distinctiveness for the decimal designations sought to be registered for cigarettes.
First, there is no prior registration for the decimal designation 2.0 on which
Defendant may rely to support its claim of acquired distinctiveness for Serial No.
76296926 for the mark 2.0 (typed drawing form).
Second, because Defendant disclaimed the exclusive right to use “1.0” in
Registration No. 1481006 for the mark 1.0 (stylized), that registration may not be
accepted as prima facie evidence of acquired distinctiveness for Serial No. 76296942
for the mark 1.0 (typed drawing form), and Serial No. 76296941 for the mark 1.0
(stylized form). See Kellogg Co. v. Gen. Mills, Inc., 82 USPQ2d 1766, 1771 n.5 (TTAB
2007); In re Candy Bouquet Int’l, Inc., 73 USPQ2d 1883, 1889-90 (TTAB 2004).245

242 Levin Decl. ¶ 23 (156 TTABVUE 16)
243 Plaintiffs’ Brief, p. 43 (228 TTABVUE 52).
244 Defendant’s Brief, p. 48 (230 TTABVUE 54).
245 Defendant’s evidence of acquired distinctiveness for the mark 1.0 (stylized) is not sufficient
to support the registration of the mark 1.0 in its various formats for cigarettes. For example,
the secondary meaning survey has little probative value because (i) it was geographically
limited to three of Defendant’s largest markets, rather than conducted on a nationwide basis;
(ii) it was conducted in 2007 and the testimony is ambiguous as to its applicability in 2015-
2016; and (iii) there were only 54 survey respondents. “In general, the sample size are [sic]
around 50 means that there would be a greater potential for error, sampling error.” Scott
Cross-Examination Dep., pp. 88-89 (207 TTABVUE 93-94). Also, Defendant proffered no
Opposition No. 91158276 et. al.
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Finally, because we are cancelling Registration No. 1328866 for the mark 1.25
(stylized), and Registration No. 1331207 for the mark 1.5 (stylized) on the ground
that the registered subject matter is generic, Defendant may not rely on those
registrations to support the registration of Serial No. 76296943 for the mark 1.25
(stylized), Serial No. 76296931 for the mark 1.25 (typed drawing form), Serial No.
76158978 for the mark 1.5 (stylized), Serial No. 76296945 for the mark 1.5 (typed
drawing form). However, if the cancellation of Registration No. 1328866 for the mark
1.25 (stylized), and Registration No. 1331207 for the mark 1.5 (stylized) on the ground
that the registered subject matter is generic were overturned on appeal, then we
would find that those registrations are sufficient to support the registration of Serial
No. 76296943 for the mark 1.25 (stylized), Serial No. 76296931 for the mark 1.25
(typed drawing form), Serial No. 76158978 for the mark 1.5 (stylized), and Serial No.
76296945 for the mark 1.5 (typed drawing form) under Section 2(f) of the Trademark
Act in accordance with 37 C.F.R. § 2.41(a)(1).
In appropriate cases, ownership of one or more active prior
registrations may be accepted as prima facie evidence of
distinctiveness if the goods or services are sufficiently
similar to the goods or services in the application; however,
further evidence may be required.
Id.
“Appropriateness in this kind of case generally means that the existing
registration was acquired based on a finding that the term sought to be registered

evidence that Defendant ever advertised, promoted, or marketed the decimal designation 1.0
separate and apart from the JOB trademark and the packaging of the products displays the
decimal designation 1.0 in close proximity to the JOB mark. Thus, it is not clear whether
consumers recognize JOB or 1.0 as the source of the products.
Opposition No. 91158276 et. al.
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had become distinctive of the goods and services, which finding could be carried over
to the closely related goods or services in respect of which the new application for
registration was filed.” In re Loew’s Theatres, Inc., 223 USPQ 513 (TTAB 1984), aff’d,
769 F.2d 764, 226 USPQ 865 (Fed. Cir. 1985). In the cases before us, Defendant’s
prior registrations for 1.25 and 1.5 are based on acquired distinctiveness. See In re
Best Prods. Co., 231 USPQ 988, 989 n.6 (TTAB 1986) (“[W]e infer in the instant case
that the differences between the marks BEST & Des. and BEST JEWELRY & Des.,
and between the identifications of services in their respective registrations [‘mail
order and catalog showroom services’ and ‘retail jewelry store services’], were deemed
to be immaterial differences.”); In re Owens-Illinois Glass Co., 143 USPQ 431, 432
(TTAB 1964) (applicant’s ownership of a prior registration of LIBBEY for cut-glass
articles acceptable as prima facie evidence of distinctiveness of identical mark for
plastic tableware); In re Lytle Eng’g & Mfg. Co., 125 USPQ 308, 309 (TTAB 1960)
(applicant’s ownership of prior registration of LYTLE for various services, including
the planning, preparation, and production of technical publications, acceptable as
prima facie evidence of distinctiveness of identical mark for brochures, catalogs, and
bulletins).
Plaintiffs argue that cigarettes and cigarette rolling papers are not sufficiently
similar citing In re Lowe’s Theatres, Inc., 769 F.2d 764, 226 USPQ 865 (Fed. Cir. 1985)
(prior registration for DURANGO for cigars was not sufficient to support claim of
acquired distinctiveness for DURANGO for chewing tobacco). The court did not find
that chewing tobacco was not similar to cigars; the Court held that Trademark
Opposition No. 91158276 et. al.
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Examining Attorneys have discretion whether to accept a prior registration as prima
facie evidence of acquired distinctiveness under Trademark Rule 2.41, especially
where the mark or goods in the prior registration are not the same as the mark or
goods in the application. Id. at 869 (“We cannot say that a requirement for some
additional evidence was unduly burdensome or unreasonable or that the finding that
distinctiveness was not established is clearly erroneous.”). In Lowe’s, the applicant
claimed that its mark should be presumed to have acquired distinctiveness based on
its filing a declaration of incontestability in accordance with Section 15 of the
Trademark Act. However, the Board rejected that argument because declarations
filed under Section 15 are not examined as to the substance of what is claimed. In re
Lowe’s Theatres, Inc., 223 USPQ 513, 514 (TTAB 1984). In the case before us,
cigarette papers are a component of cigarettes and, therefore, the relationship
between those goods is evident and additional evidence is not required. See Kellogg
Co. v. General Mills Inc., 82 USPQ2d 1766, 1771 (TTAB 2007) (with respect to a claim
of acquired distinctiveness based on applicant’s ownership of two registrations, the
Board held that “there is no absolute rule that applicant must submit extrinsic
evidence to support its contention that the goods are related. The showing necessary
to establish relatedness will vary from case to case and depend on the nature of the
goods or services involved and the language used to identify them.”).
In view of the foregoing, we find that Defendant has failed to prove that the
decimal designations 1.0, 1.25, 1.5, and 2.0 have acquired distinctiveness when used
in connection with cigarettes. However, in the event that our finding that
Opposition No. 91158276 et. al.
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Registration No. 1328866 for the mark 1.25 (stylized), and Registration No. 1331207
for the mark 1.5 (stylized) should be cancelled on the ground that the registered
subject matter is generic is reversed on appeal, then we find that Defendant has
proven that the marks 1.25 and 1.5 in typed drawing and stylized forms have
acquired distinctiveness.
XI. Whether Defendant had a bona fide intent to use the decimal
designations to identify cigarettes?
Plaintiffs argue that Defendant’s lack of documentation supporting its bona fide
intent to use the decimal designations for cigarettes as of the time it filed its
applications proves that Defendant did not have a bona fide intent to use the decimal
designations for cigarettes.246 See Commodore Electronics Ltd. v. CBM Kabushiki
Kaisha, 26 USPQ2d 1503, 1507 (TTAB 1993) (opposer would be entitled to prevail on
its claim that applicant lacked a bona fide intent to use its mark if opposer proved
that applicant is unable to present any evidence, documentary or otherwise,
supportive or bearing on applicant’s claimed bona fide intention to use the mark in
commerce). On the other hand, Defendant asserts that its capacity to manufacture
and market cigarettes rebuts Plaintiffs’ claim that Defendant lacked the requisite
intent to use the decimal designations for cigarettes.247 See Rolex Watch U.S.A. Inc.
v. AFP Imaging Corp., 101 USPQ2d 1188, 1197 (TTAB 2011), vacated on other
grounds, Rolex Watch U.S.A. Inc. v. AFP Imaging Corp., 107 USPQ2d 1626 (TTAB

246 Plaintiffs’ Brief, p. 45 (229 TTABVUE 54).
247 Defendant’s Brief, pp. 48-49 (230 TTABVUE 54-55).
Opposition No. 91158276 et. al.
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2013) (“If an opposer establishes a prima facie case, the burden shifts to applicant to
rebut that prima facie case by producing evidence which would establish that it had
the requisite bona fide intent to use the mark when it filed its application.”) (citing
Commodore Electronics Ltd. v. CBM Kabushiki Kaisha, supra).
Because of Defendant’s success marketing JOB 1.0, 1.25 and 1.5 cigarette rolling
papers, Defendant planned on expanding the decimal designation brands to
prepackaged cigarettes.248 The idea was to build on the brand loyalty created by the
cigarette rolling papers.249 Since late 2000 and early 2001, Defendant had wanted to
expand the products it sells under the 1.5, 1.25 and 1.0 brands, and had worked to
develop similarly branded cigarettes. In that regard, Defendant filed trademark
registration applications for the marks 2.0, 1.5, 1.25, 1.5 and 1.0 and well as ONES
and TWOS for cigarettes. Defendant identified Republic Tobacco as its exclusive
distributor of such products, with the expectation that it would use the same channels
of distribution for these cigarettes that it has used in the distribution and sale of 1.5,
1.25 and 1.0 brand cigarette papers. By 2004, Defendant identified a manufacturer
for its cigarettes and developed prototypes and packaging. “By March 2005,
[Defendant] had developed prototypes, packaging and commenced selling ONES and

248 Gold Testimony Decl. ¶39 (179 TTABVUE 27-28).
249 Gold Discovery Dep. p. 68, 191 (140 TTABVUE 91, 123).
Opposition No. 91158276 et. al.
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TWOS branded cigarettes.”250 Prototypes and packaging were developed based on a
proprietary blend of tobacco with which the cigarettes will be made.251
[W]e can bring out products over a wide range very quickly.
All we need is some artwork.252
Defendant developed prototypes and packaging designs for ONES, TWOS, 1.5 and
1.25 branded cigarettes.253

The Trademark Act does not define the term “bona fide” as used in the phrase
“bona fide intention,” in order to preserve flexibility which is vital to the proper
operation of the trademark registration system.” S. Rep. No. 100-515, 100th Cong. 2d
Sess. at 24 (1988) (hereinafter “S. Rep.”). However, the legislative history of the TLRA
provides that “ [i]n connection with this bill, ‘bona fide’ should be read to mean a fair,

250 Gold Testimony Decl. ¶42 (179 TTABVUE 28).
251 Levin Decl. ¶23 and Exhibit 10 (156 TTABVUE 16 and 78-86). See also Gold Testimony
Decl. ¶¶40 and 42 (179 TTABVUE 28).
252 Gold discovery dep. p. 242 (140 TTABVUE 130).
253 Gold Testimony Decl. ¶¶42 and 43 and Exhibit 28 (179 TTABVUE 28-29 and 181
TTABVUE 238).
Opposition No. 91158276 et. al.
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objective determination of the applicant's intent based on all the circumstances,” and
that “. . . applicant's bona fide intention must reflect the good faith circumstances
surrounding the intended use.” Id. “[W]hat is real and legitimate will vary depending
on the practices of the industry involved, and should be determined based on the
standards of that particular industry.” H. Rep. No. 100-1028 at 8-9 100th Cong. 2d
Sess. (1988) (hereinafter “H. Rep.”).
Thus, the determination of whether an applicant has a
bona fide intention to use the mark in commerce is to be a
fair, objective determination based on all the
circumstances. That is, applicant’s mere statement of
subjective intention, without more, would be insufficient to
establish applicant’s bona fide intention to use the mark in
commerce. …
However, while the determination of whether the applicant
has the requisite bona fide intention is to be an objective
determination, neither the statute nor the legislative
history of the TLRA specifies the particular type or
quantum of objective evidence that an applicant must
produce to corroborate or defend its claimed bona fide
intention to use the mark in commerce.
Lane Ltd. v. Jackson Int’l Trading Co., 33 USPQ 2d 1351, 1355-56 (TTAB 1994).
We find that Defendant had the requisite bona fide intention to use the decimal
designations 1.0, 1.25, 1.5 and 2.0 in connection with cigarettes as of the application
filing dates. Defendant’s testimony pertaining to the expansion of its product line
built on brand loyalty and established channels of trade corroborates Defendant’s
statements in the applications that it had a bona fide intention to use the decimal
designations in commerce on cigarettes. Specifically, the testimony establishes that
Defendant had the capacity to market, if not manufacture, cigarettes. In fact,
cigarettes are within the normal zone of expansion for a company that sells cigarette
Opposition No. 91158276 et. al.
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rolling papers.254 “Thus, the filing of the application for the [decimal designations] is
consistent with an extension of its current product line.” Rolex Watch U.S.A. Inc. v.
AFP Imaging Corp., 101 USPQ2d at 1197-98.
Plaintiffs point out that at the same time Defendant filed the applications at issue,
it also filed applications for cigarettes covering a full range of decimals (from 1.1 to
1.9) as well as fractions.255 Accordingly, Plaintiffs assert that “[t]he filing of so many
marks for one product, coupled with an attempt to reserve descriptive terms, are
hallmarks of a lack of bona fide intent to use.”256 We disagree. Under the
circumstances of this case, the filing of so many applications by Defendant for
cigarettes is consistent with its incorrect belief as to the extent of its trademark
rights, rather than being indicative of Defendant’s lack of a bona fide intent to use
the marks at issue in these proceedings. Compare L’Oreal S.A. v. Marcon, 102
USPQ2d 1434, 1443-44 (TTAB 2012) (the Board found that applicant lacked a bona
fide intent to use the mark because he lacked any documentary evidence or any other
objective evidence that he can/will use the mark, lack of capacity or experience needed
to manufacture or otherwise offer his goods and he had a pattern of filing intent-to-
use applications for disparate goods under well-known (even famous) marks of others,
which almost always have been abandoned). In other words, under the facts in this

254 Plaintiffs’ Brief, p. 15 (229 TTABVUE 24) (“Moreover, [Plaintiffs] have previously sold
cigarettes, and such products could again be produced in the normal expansion of [Plaintiffs’]
business.”); Murray Testimony Dep., p. 14-15 (152 TTABVUE 17-18) (between 2001 and 2005
or 2006, Plaintiffs sold ZIG-ZAG cigarettes).
255 Plaintiffs’ Brief, p. 45 (229 TTABVUE 54) (citing Gold Discovery Dep., pp. 239, 241-243
(140 TTABVUE 128-131) and 145 TTABVUE 3-4, 6-22, 88, 90-91, 93-109, 174).
256 Plaintiffs’ Brief, p. 45 (229 TTABVUE 54).
Opposition No. 91158276 et. al.
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case, when Defendant decided to expand into cigarettes, it filed applications for
decimal and fractional designations to protect its purported right to use those as
marks for cigarettes, not in a bad faith attempt to gain rights to which it was not
entitled.
In view of the foregoing, the oppositions to the registration of Serial No. 76296943
for the mark 1.25 (stylized), Serial No. 76296931 for the mark 1.25 (typed drawing
form), Serial No. 76296926 for the mark 2.0 (typed drawing form), Serial No.
76158978 for the mark 1.5 (stylized), Serial No. 76296945 for the mark 1.5 (typed
drawing form), Serial No. 76296942 for the mark 1.0 (typed drawing form), and Serial
No. 76296941 for the mark 1.0 (stylized form) on the ground that Defendant did not
have a bona fide intent to use the marks when the applications were filed are
dismissed.
Decision: Opposition No. 91158276 to Serial No. 76369872 for the mark 1.25
(typed drawing) for cigarette rolling papers is sustained on the ground that subject
matter sought to be registered is generic.
Opposition No. 91158552 to Serial No. 76296943 for the mark 1.25 (stylized) for
cigarettes is dismissed.
Opposition No. 91158568 for Serial No. 78157851 for the mark 1.5 (typed drawing)
for cigarette rolling papers is sustained on the ground that the subject matter sought
to be registered is generic.
Opposition No. 91158276 et. al.
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Opposition No. 91158696 for Serial No. 76296931 for the mark 1.25 (typed
drawing) for cigarettes is dismissed.
Opposition No. 91158816 for Serial No. 76296926 for the mark 2.0 (typed drawing)
for cigarettes is dismissed.
Opposition No. 91158978 for Serial No. 76158978 for the mark 1.5 (stylized) for
cigarettes is dismissed.
Opposition No. 91158980 for Serial No. 76296942 for the mark 1.0 (typed drawing)
for cigarettes is dismissed.
Opposition No. 91158981 for Serial No. 76296945 for the mark 1.5 (typed drawing)
for cigarettes is dismissed.
Opposition No. 91159360 for Serial No. 76296941 for the mark 1.0 (stylized) for
cigarettes is dismissed.
Cancellation No. 92042927 for Registration No. 1481006 for the mark 1.0
(stylized) for cigarette rolling papers is granted on the ground that the registered
mark is generic.
Cancellation No. 92042928 for Registration No. 1331207 for the mark 1.5
(stylized) for cigarette rolling papers is granted on the ground that the registered
mark is generic.
Opposition No. 91158276 et. al.
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Cancellation No. 92043031 for Registration No. 1328866 for the mark 1.25
(stylized) for cigarette rolling papers is granted on the ground that the registered
mark is generic.