Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 LEVI STRAUSS & CO.
R. JOSEPHS SPORTSWEAR, INC.
July 5, 1995
Date of original release: August 22, 1994
Opposition No. 81,072, to application Serial No. 73/770,553 filed December 20, 1988
Before Simms, Seeherman and Hohein
Opinion by Seeherman
Levi Strauss & Co. has requested reconsideration, modification and clarification of the Board's June 29, 1993 opinion dismissing this opposition, and also has moved to amend the notice of opposition. Applicant, R. Josephs Sportswear, has opposed these requests and motion.
Request for Reconsideration
Opposer bases its request for reconsideration on the anomaly in the result in this decision, pointed out by the Board in footnote 11 of the opinion. That anomaly is our recognition that applicant will be able to register its mark even though the evidence shows that opposer used ACTION SLACKS in the manner of a trademark for pants prior to the earliest date of use on which applicant can rely. As we stated, this anomaly resulted from the fact that opposer did not plead priority of use and likelihood of confusion as a ground for opposition, but alleged as its only ground for opposition that ACTION SLACKS is merely descriptive of applicant's goods. We also pointed out that we were constrained to decide the case only on the ground which was pleaded and tried.
Opposer now asserts that because the record shows that opposer made prior use of ACTION SLACKS as a trademark, applicant cannot establish ownership of this term as a mark. Apparently intermingling the concepts of ownership and distinctiveness, opposer goes on to argue that applicant's use of ACTION SLACKS cannot distinguish applicant's goods from those of another, and therefore that applicant has not shown the distinctiveness that is required to warrant registration. Opposer also argues that its pleading is not deficient because its use of "merely descriptive" in the allegations in the notice of opposition is the equivalent of "nondistinctive."
We are not persuaded by opposer's arguments. The issue of whether opposer is the prior user and/or owner of the mark ACTION SLACKS was neither pleaded nor tried. Opposer cannot now try to remedy the failure by equating ownership and distinctiveness in order to somehow convert its pleading that applicant's mark is merely descriptive into a pleading that applicant is not the owner of the mark because opposer has prior rights in ACTION SLACKS as a mark. Opposer's notice of opposition is very clear: the opposition was brought solely on the ground that "registration of the term 'ACTION SLACKS' would be in direct conflict with Section 2(e) of the Trademark Act of 1946, which prohibits registration of a term if 'when applied to the goods of the applicant [it] is merely descriptive....' " Although the purpose of notice pleading is to obviate the need to allege particular "magic words," the pleading must give the defendant fair notice of the ground alleged. In no way can opposer's notice of opposition be logically interpreted as asserting that applicant is not entitled to registration because opposer is the owner of ACTION SLACKS by its prior use of that term, and that applicant's use of that mark is likely to cause confusion.
*2 Although we have recognized that there is an anomaly in our decision, that anomaly was caused by opposer itself, in deciding to bring the opposition solely on the ground of mere descriptiveness. We note in this regard that opposer could have, but did not, plead the Section 2(e)(1) and Section 2(d) grounds alternatively.
Opposer has also argued that prior purely descriptive use of a non-distinctive term by another precludes registration of such term to a subsequent user. Citing the following language in AMF Inc. v. Battle Creek Equipment Co., 167 USPQ 375 (TTAB 1970), opposer asserts that because the Board found that some of opposer's uses of the term ACTION SLACKS were in a descriptive manner, this descriptive use by opposer as the prior user bars registration to applicant:
It is well settled that the prior use of a term even in a purely descriptive sense will preclude the subsequent registration of the same or a confusingly similar term by another for the same goods.
Opposer's reliance on this decision is misplaced. The applicant in AMF had asserted that the opposer therein had no standing because the term on which opposer relied was a commonly used descriptive name and had only been used in a descriptive sense by opposer.
Here there is no question that opposer has standing to bring this action, such standing being based on its allegation that it sells trousers and has used the term ACTION SLACKS to describe trousers and other garments. [FN1]
Opposer's request for reconsideration is denied.
Opposer's Rule 15(b) Motion
Opposer seeks to amend the notice of opposition to "conform the pleadings to the evidence adduced at trial" by alleging "Opposer's 'priority of use' of the term 'Action Slacks' and the 'likelihood of confusion' which will result if a Registration is issued to Applicant for that term." pp. 1-2. Opposer bases this motion on the Board's finding that opposer has used ACTION SLACKS in the manner of a trademark since prior to applicant's filing date, which in the absence of other evidence, is the earliest date on which applicant can rely. Opposer states that the evidence submitted by opposer at trial supports this finding, and that this evidence was submitted "with the express consent of, or, at the very least, with the implied consent of, Applicant." Opposer also asserts that no objections to opposer's prior use evidence were raised by applicant at trial or in its brief at final hearing.
Rule 15(b) of the Federal Rules of Civil Procedure provides that "when issues not raised by the pleadings are tried by express or implied consent of the parties, they shall be treated in all respects as if they had been raised in the pleadings." Implied consent to the trial of an unpleaded issue can be found only where the nonoffering party (1) raised no objection to the introduction of evidence on the issue, and (2) was fairly apprised that the evidence was being offered in support of the issue. See, Colony Foods, Inc. v. Sagemark, Ltd., 735 F.2d 1336, 222 USPQ 185 (Fed.Cir.1984); P.A.B. Produits et Appareils de Beaute v. Satinine Societa In Nome Collettivo di S.A. e.M. Usellini, 570 F.2d 328, 196 USPQ 801 (CCPA 1978).
*3 After a thorough review of the record, we find that the issue of priority of use and likelihood of confusion was not tried by consent of the parties and, in particular, that applicant was never fairly apprised that opposer's evidence was being offered in support of a Section 2(d) claim. To the contrary, until its present request for reconsideration/motion to amend, opposer has taken the position throughout the proceeding that it has not used ACTION SLACKS as a trademark and has not claimed trademark rights in this term.
In its brief on the case, opposer states unequivocally that there are two issues in this proceeding, namely, has opposer established that ACTION SLACKS is merely descriptive of or a generic term for men's pants and slacks, and should applicant be denied a registration because it has not placed in the record any evidence supporting its date of use of ACTION SLACKS. Opposer does not in any way suggest that priority of its use of ACTION SLACKS as a trademark and likelihood of confusion is an issue. Its brief is replete with indications that opposer never viewed this issue as having been tried. For example, on page 10 of its main brief opposer stated, in its summary of facts, that beginning at least as early as 1979 opposer "has used the term 'Action Slacks' in the merely descriptive/common descriptive and/or generic sense." Opposer also asserted, at pages 23 and 24 of its brief, that the direct testimony of its witness Anne Rio was about opposer's non-proprietary use of the term "Action Slacks," and that her testimony as to non-proprietary third-party uses of the term "Action Slacks' was not presented to the Board to support any proprietary claim by opposer or by anyone else.
As for applicant, it is true, as opposer has pointed out, that applicant stated in its brief that opposer's use of ACTION SLACKS was and is as a trademark. However, this statement cannot be viewed as a concession that the issue of priority and likelihood of confusion was also tried. As applicant has said in its memorandum in opposition to opposer's motion to amend:
[Applicant] relied solely on its filing date, since opposer Levi Strauss did not plead priority of use, and therefore [applicant] Josephs had no reason to prove an earlier date. If opposer Levi Strauss had alleged prior use, so applicant Josephs would have known it was an issue, Josephs could have proved a date prior to Levi Strauss's by, among other things, proving analogous use, use by a predecessor, by tacking, or otherwise."
Although we found that opposer has used and advertised ACTION SLACKS in the manner of a trademark since 1979, opposer cannot extrapolate from such a finding that the issue of priority was tried. The testimony of opposer's witnesses, in connection with opposer's use of the term beginning in 1979, is that it was as a descriptive term, not a trademark. However, Section 2(d) of the Act prohibits registration of a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another, as to be likely, when used on the goods of the applicant, to cause confusion. Thus, the record does not support the contention raised by opposer in its motion that the issues of priority and likelihood of confusion were tried.
*4 With its Rule 15(b) motion to amend the notice of opposition opposer has submitted an amended notice of opposition which also asserts that applicant's mark falsely suggests a connection with opposer, and is therefore barred from registration under Section 2(a) of the Act. Again, the record does not in any way support a conclusion that the issue of false suggestion was tried. In fact, among the necessary elements of a Section 2(a) claim is that the applied-for mark is the same or a close approximation of the plaintiff's previously used name or identity, and that the mark would be recognized as such. See Ritz Hotel Ltd. v. Ritz Closet Seat Corp., 17 USPQ2d 1467 (TTAB 1990). The name claimed to be appropriated must point uniquely and unmistakably to the plaintiff's personality or "persona." McDonnell Douglas Corp. v. National Data Corp., 228 USPQ 45 (TTAB 1985). However, throughout this proceeding opposer has attempted to show third-party use of "Action Slacks" as a descriptive term, and in its brief argued that there has been "long and continuous prior use by Opposer, and third parties, of the identical, or equivalent, term in the non-proprietary, non-trademark sense...." p. 12. Thus, we find that the Section 2(a) ground which opposer now attempts to assert was not tried.
Opposer's motion to amend the pleadings pursuant to Rule 15(b) of the Federal Rules of Civil Procedure is denied.
Request for Clarification of Rule 2.122(b)(2)
Opposer has requested clarification regarding the Board's ruling that Rule 2.122(b)(2) does not place an affirmative duty on an applicant to present evidence establishing its date of use of the mark and confirming use of the specimens filed with the application to establish such use. The Board fully discussed this issue at pages 9 and 10 of its opinion, and does not believe that further clarification is required. The section of Professor McCarthy's treatise cited by opposer is not in conflict with the Board's interpretation of Rule 2.122(b)(2).
With respect to opposer's request for citations of cases, its attention is drawn to Alliance Manufacturing Co., Inc. v. ABH Diversified Products, Inc., 226 USPQ 348, 351 (TTAB 1985), in which the opposer made a claim very like the position taken by opposer herein, and in which the Board stated:
We have given no consideration to the ground, raised by opposer for the first time in its brief, that the subject application is not, in any event, entitled to proceed to registration because applicant has not proved any use of its mark. The issue was not raised by opposer in its pleading and no effort was made to amend prior to trial of the case. Under these circumstances, especially since applicant had no notice of the claim, opposer's present request for leave to amend the pleadings is denied. Even were this issue before us, opposer's theory that the statement in new Trademark Rule 37 CFR § 2.122(b)(2), effective June 22, 1983, that "a date of first use of a mark must be established by competent evidence" (emphasis supplied), modifies earlier decisions which entitle an applicant to rely upon the filing date of its application, without proof of use as of that date, is without merit.... No change was effected by this rule in the prior decisions holding that an applicant is entitled to rely upon the filing date of its application as a presumption of use of the mark subject of the application as of that date.
*5 See also, Lone Star Mfg. Co., Inc. v. Bill Beasley, Inc., 498 F.2d 906, 182 USPQ 368, 369 (CCPA 1974) (applicant took no testimony and thus is restricted to its filing date for first use); Chicago Corp. v. North American Chicago Corp., 20 USPQ2d 1715 (TTAB 1991) (in the absence of any testimony or evidence, the earliest date of use upon which applicant may rely is the filing date of the involved application); ECI Division of E-Systems, Inc. v. Environmental Communications Incorporated, 207 USPQ 443, 448 (TTAB 1980) (in the absence of specific evidence of applicant's use of the mark sought to be registered, the earliest use on which applicant can rely is the filing date of the application); Miss Universe, Inc. v. Drost, 189 USPQ 212 (TTAB 1975) (inasmuch as applicant took no testimony in its behalf, he is limited to the filing date of his application as the earliest date of use upon which he can rely). Implicit in all these cases in which the applicant submitted no evidence whatsoever, or submitted no evidence as to its use of the mark, is that an applicant does not have an affirmative duty to submit evidence of its use of the mark.
Request for Clarification of Unanswered Questions
Opposer has requested that the Board modify or clarify its opinion insofar as the Board's ruling regarding opposer's objections to applicant's questions on cross-examination, and opposer's attorney's consequent instruction to opposer's witnesses not to answer these questions. The Board had found that opposer's objections were not well taken, and therefore assumed that the answers would have been adverse to opposer's position.
Opposer asserts that, to permit meaningful appellate review of the Board's determinations concerning the unanswered questions, the Board should issue a supplemental opinion stating, on a question-by-question basis, (1) which of applicant's questions were improperly challenged by opposer's objections, (2) which of applicant's questions were inappropriate, based on privilege and other supportable bases for objection, and (3) which of applicant's questions were otherwise improper. Opposer has also asked the Board to identify "those answers and those issues which the Board 'must presume' would have been 'adverse to opposer's position' in the opposition. [FN2]
The Board disagrees that detailed rulings on each of these questions are necessary to clarify a "too broad and possibly erroneous ruling."
First, opposer goes too far in essentially asking the Board to find a viable basis on which opposer can now object to the questions proposed by applicant. The Board's ruling was on the validity of the objections which opposer raised to applicant's questions, which objections were the basis of opposer's attorney's directives to opposer's witnesses not to answer the questions. By not raising any other objections earlier, i.e., during the deposition or in its brief, opposer has waived any other objections it might have had. Thus, opposer cannot now ask the Board to discover if there were some other basis that would warrant an objection to each question. [FN3]
*6 This brings us to opposer's request that we state, for each question, which of applicant's questions were improperly challenged by opposer's objections.
As opposer is well aware, and as pointed out in footnote 2 supra, opposer's attorney instructed its witnesses not to answer a great many questions. Because of this, the Board did not treat each question and presumed adverse response individually but, as indicated in the opinion at page 20, drew the inference that "opposer and third parties in the clothing field do not regard ACTION as descriptive of slacks."
At pages five and six of our opinion the Board discussed the questions to which opposer objected, stating that the questions related to opposer's registration of or claim of trademark rights in any marks/phrases consisting of or containing the word ACTION, and to any conversations the witnesses had with either opposer's personnel or third parties relating to such marks or phrases. We noted that opposer's position in making the objections was that, because the term at issue is ACTION SLACKS, and because the witnesses' direct testimony was about that term, it was beyond the scope of direct examination for applicant to raise any questions about any use of ACTION other than as ACTION SLACKS. [FN4]
The specific language of opposer's objection can be found at pages 87 to 95 of the testimony deposition of Anne Rio, and was raised in response to the first question put by applicant on cross-examination, namely, "Has Levi's ever claimed any trademark rights in 'Action II'?" [FN5] Opposer's attorney stated that any attempts by opposer to register ACTION II or any other mark other than the term "Action Slacks" was irrelevant and immaterial and beyond the scope of direct examination, and did not relate to the witnesses' credibility. [FN6] He also said he would instruct the witness not to answer with respect to any use of the single word "action" in any context by Levi Strauss or by anyone else. Based on the foregoing objection, the witness did not answer, on instructions from opposer's attorney, questions which included the following:
Has Levi's ever claimed trademark rights in "Action II" for clothing;
Is it true that Levi's has asserted that "Action II" was a valid trademark and not descriptive from July 22, 1985, to date;
Has Levi's ever tried to disclaim "action" in the registration for "Action II";
If "action" was descriptive since the registration issued and Levi's claim no rights in "action," why didn't you disclaim it;
Did Katherine Durgin ever tell you that she knew that "Action for Pants" was descriptive;
Has Levi's ever claimed trademark rights in Levi's "Action Naturals";
Was that registration for "Levi's Action Naturals" for pants, jackets, vests and suits in full force and effect at least until October 9, 1990;
*7 Has Levi's ever tried to disclaim the word "action" in the registration for "Levi's Action Naturals".
Applicant also asked Ms. Rio about the use of a "TM" after "Action Cotton" on the Levi's hang tag. Opposer's counsel instructed the witness not to answer any questions about "Action Cotton" or "Action Wool" as going beyond the scope of her direct examination because her direct testimony was with respect to opposer's not using a "TM" in connection with the words "Action Slacks." Thereafter she did not answer the following questions:
How long did you use that "TM" with "Action Cotton?"
It [the hang tag] also has "Action Wool" and it has a "TM" after "Action Wool." Does that "TM" refer to both the words "Action Wool" or does it just refer to "wool"?
Applicant's attorney, referring to an interoffice memo introduced by opposer which mentioned a registration by a third party for HAGGAR ACTION SLACKS, asked Ms. Rio if she had any conversations with Haggar about the word "action" or a phrase containing this word. Opposer's attorney instructed her not to answer because "the issue here is not the single word 'action,' " but the term ACTION SLACKS.
Again, in referring to another memo of opposer's which opposer introduced during its direct testimony, and which stated that opposer was opposing registration by Hampton Industries of the term "action" per se, applicant asked Ms. Rio whether she had ever had any conversations with any employee of Hampton Industries about the term "action" or any phrase containing the word "action." Opposer's attorney instructed the witness not to answer because the issue under consideration was the term ACTION SLACKS, and not the single word "action."
Opposer's attorney made very clear the reason for his objections, and for his instruction to the witness not to answer questions regarding third-party use of the word "action" or phrases containing the word "action." Specifically, he stated at page 151 of the Rio deposition:
I want you to understand and I want the Board to understand the basis for my objection. The issue is not whether Ms. Rio has had conversations with anybody about "action shoes" or "action underwear" or "action sportswear."
The issue is purely and simply this company's position, Levi Strauss & Co., concerning the registrability of the term "Action Slacks" in that precise form for pants for men.
That is the basis of my objection. That is the basis of my ongoing instruction to this witness and other witnesses not to answer any questions that are so broad to include the word "action" in conjunction with any product other than slacks or pants for men.
The issue is not whether the single word "action" is or has been or may ever be appropriatable exclusively by any source.
The testimony deposition of opposer's witness Stephen Goldstein followed that of Anne Rio. The parties stipulated, in order to save time, that applicant's attorney be deemed to have asked this witness the same questions to which opposer's attorney objected during Ms. Rio's deposition, and that opposer's attorney be deemed to have objected and directed Mr. Goldstein not to answer those questions.
*8 We maintain our position that it is unnecessary to list each of the questions which opposer's attorney unwarrantedly instructed its witnesses not to answer. It is clear from the partial listing of the questions herein that many of the individual questions, as well as the questions as a group, support the adverse inference we drew that "opposer and third parties in the clothing field do not regard ACTION as descriptive of slacks."
As part of direct testimony Ms. Rio and Mr. Goldstein testified that opposer had taken the position that ACTION SLACKS is a descriptive, nonproprietary term from the time opposer began using it. Given that SLACKS is a generic term for opposer's goods, it was appropriate for applicant to test the credibility of the witnesses' statements by inquiring as to whether opposer might have taken an inconsistent position about such descriptiveness in connection with its other uses of the word ACTION, or whether they were aware of a different position taken by others in the trade.
Similarly not well taken is opposer's objection to applicant's question about why opposer took the position that ACTION SLACKS is descriptive. Ms. Rio testified about opposer taking such a position and introduced a memo setting forth this position. Applicant's cross-examination as to the basis for taking this position was therefore relevant and within the scope of direct examination.
Opinion, pp. 5-6.
Finally, and most importantly, the detailed listing of unanswered questions from which we drew adverse inferences, and which was requested by opposer in order "to permit meaningful appellate review," is not necessary. This is because the adverse responses which we presumed from the witnesses' refusals to answer the questions put to them on cross-examination had no effect on our decision that opposer failed to prove that ACTION SLACKS is a merely descriptive/generic term for pants and slacks. The opinion discusses at length the evidence submitted by opposer regarding both its and third-party use of the term "Action Slacks," and concludes that:
Considering the evidence in its totality, we find that opposer has failed to meet its burden in proving that ACTION SLACKS is merely descriptive and/or generic.
It is only after this conclusion that we made the only reference to an adverse inference in our analysis, which is found in the last sentence of the opinion:
Our opinion is bolstered by the adverse inferences which must be drawn from opposer's witnesses' refusal to answer nonobjectionable questions put to them on cross-examination, such inferences being that opposer and third parties in the clothing field do not regard ACTION as descriptive of slacks.
Thus, while the adverse inferences support our finding that ACTION SLACKS was not proven to be a merely descriptive or generic term, our finding was not based on these inferences; we would and did reach the same conclusion even without the inferences.
*9 Opposer's request for reconsideration, motion to amend and requests for clarification are denied.
Members, Trademark Trial and Appeal Board
FN1. It should be noted that to the extent the language in AMF, with its reference to prior use of a confusingly similar term, implies that prior use of a merely descriptive term may serve as the basis for an action brought under Section 2(d) of the Trademark Act, this is an incorrect statement of the law. See Otto Roth & Company, Inc. v. Universal Foods Corporation, 640 F.2d 1317, 209 USPQ 40, 43 (CCPA 1981), "One who opposes registration to an applicant under section 2(d) is attempting to protect his individual rights, as the owner of some means of identifying the source of his goods, by preventing registration of a mark so similar to that which he asserts identifies source that concurrent use of the two is likely to cause confusion and thus foil the function of his means of identification. In this situation, the opposer must prove he has proprietary rights in the term he relies upon to demonstrate likelihood of confusion as to source, whether by ownership of a registration, prior use of a technical 'trademark,'...." Citations omitted.
FN2. In its request opposer takes issue with the Board's "tacit acceptance" of applicant's contention that opposer's counsel's instructions applied to "virtually all of the questions put to opposer's witnesses on cross-examination. However, whether opposer's attorney instructed opposer's witnesses Rio and Goldstein not to answer "virtually all" of the questions put to these witnesses on cross-examination, or a "substantial" number of questions, or even "many" questions is beside the point. There is no question that opposer's attorney did in fact instruct its witnesses not to answer a number of questions put to them on cross-examination, as a review of the transcripts of the Rio and Goldstein testimony depositions readily reveals. For example, the cross-examination of Ms. Rio began at page 87 of the deposition transcript. At page 110 of the transcript, opposer's attorney acknowledges that to that point there were only two questions put to the witness which opposer's attorney allowed her to answer. These questions were to identify her position with opposer on a particular date, and to answer whether she knew a particular employee of opposer and to confirm her title.
FN3. We in no way intend to imply that there were valid objections to the questions which opposer failed to raise.
FN4. Opposer also stated that the Board had ruled, in denying applicant's motion for summary judgment, that attempts by opposer to register any mark other than the specific term ACTION SLACKS, and use by opposer of the word "Action," were beyond the bounds of the issues in the opposition. The ruling on the summary judgment motion was that opposer was not estopped from asserting that ACTION SLACKS is merely descriptive or generic despite opposer's claim of trademark rights in ACTION II and LEVI'S ACTION NATURALS for slacks. However, as the Board pointed out at page 4 of the final decision in this case, that ruling did not mean that both opposer's and applicant's registrations for ACTION marks, and the claim and recognition of trademark rights in these marks, are not relevant to the issue of whether ACTION SLACKS is a merely descriptive or generic term.
FN5. The interchange was as follows (Rio deposition, pp. 87-89):
Mr. Schlemmer (opposer's attorney): Objection. I am going to enter the objection right now and have you answer for me, if you will, Counsel, if you are going to get into those matters which the Trademark Trial and Appeal Board has specifically indicated are out of bounds in its Order denying your Motion for Summary Judgement dated September 27, 1991.
It's very clear from that order, sir, what the issues that are remaining in this opposition are. "Action II" or any other attempts by Levi Strauss to register any mark in the United States or in any foreign country other than the precise term "Action Slacks" is irrelevant and immaterial and I am going to instruct this witness not to answer.
If your whole line of questioning is going to be on those issues then I am going to call these depositions to a halt and we will go ahead and continue tomorrow with Mr. Goldstein.
You know very well, sir, what the parameters of the information that is relevant in this opposition is.
I am also going to object on an even more pertinent ground, namely that you are bound by the Rules of Evidence to cross-examine on those issues which are covered by my direct examination of Ms. Rio or any other issues that relate to her credibility. Nothing else.
This is not a discovery deposition. This is a testimony deposition the parameters of which are limited by the Federal Rules of Evidence to those points raised and discussed and testified to by Ms. Rio on her direct examination.
If there is any question about that fact I will direct your specific attention to Federal Rules of Evidence 611(b) and I will quote it for you, sir. I am sure you are familiar with it. "Cross-examination should be limited to the subject matter of the direct examination and matters affecting the credibility of the witness."
Mr. Hornbaker (applicant's attorney): I'll tell you how this is relevant. This witness has testified that Levi Strauss has only used the word "action" in a descriptive manner and has made no proprietary claim and I'm going to address that issue directly.
Mr. Schlemmer: Counsel, you mischaracterized Ms. Rio's testimony in a most dramatic way. She has never made that statement. She has never suggested that statement. She has done nothing other than to say that Levi Strauss has made no proprietary claim to the two-word term "Action Slacks."
That is the issue in these proceedings. That is the issue about which she testified. That is the only issue about which she testified. I will allow no testimony and I will instruct her not to answer with respect to any use of the single word "action" in any context by Levi Strauss or by anyone else.
FN6. During the course of Ms. Rio's testimony deposition opposer's attorney pointed out that applicant's attorney was asking questions which had been prepared in advance, and asserted that this showed the questions were beyond the scope of the witness's direct examination since applicant's attorney could not have known what the witness would testify about. Applicant's attorney responded that he could anticipate the substance of her testimony.
Whether or not applicant's attorney had prepared cross-examination questions in advance is irrelevant to the question of whether opposer's objections were well taken. As we stated in our opinion, it was appropriate for applicant to test the credibility of the witnesses' statements on direct that ACTION SLACKS is a descriptive term by inquiring as to whether opposer might have taken an inconsistent position about such descriptiveness in connection with its other uses of the word ACTION.