GAC International LLC V Roth Licensing LLC Nyedce-15-02375 0042.3

Case 2:15-cv-02375-JMA-AKT Document 42-3 Filed 03/16/18 Page 1 of 310 PageID #: 1584
Exhibit G
t\
NORTON ROSE FULBRICHT
November 26,2014
Fulbright & Jaworski LLP
Via Courier 555 South Flower Street
Forty-First Floor
Los Angeles, California 90071
United States
John A. O'Malley
Partner
Direct line +1 213 892 9227
john.omalley@nortonrosefulbright.com
Brian Daucher, Esq.
Sheppard, Mullin, Richter & Hampton LLP
Tel +1 213 892 9200
650 Town Center Drive
Fax+1 213 8925494
Fourth Floor
norton roseful bri ght. co rn
Costa Mesa, CA 92626
Re: Use of "Roth' in Product Materials (Our Ref. No. 20371)

Our reference: THRT.T2249US.DS 11 1410303
Dear Mr. Daucher:
We represent 3M Company in intellectual property matters and are responding to your letter
dated September 17 and subsequent correspondence. 3M appreciates your cooperation in
provid¡ng additional information to hetp 3M understand your client's position and conoerns.
At the outset, please be advised that 3M prides itself on competing fairly in all of the markets it
serves. 3M respects the intellectual property rights of others, ãnd competes on the basis of its
superior products and the valuable goódwill it has buitt up. ln particular, 3M, together with its
predecessor Unitek, has been a feader in the orthodontic field for over six decades, and has
earned a reputat¡on for quality products and innovation. 3M has no need or desire to create
confusion or othenruise trade on your client's name.
By way of background, it bearç notíng that the medical profession is replete with eponyms,
dating back to the Hippocratic oath. As defined in the American Medical Association Manual of
Style, "[e]ponyms are names or phrases derived from or including the name of a person or place
[which] are used in a descriptive or adjectival sense in medical and scíentific writing to describe
entities such as diseases, syndromes, signs, tests, methods, and procedures," See Exhibit A.
There are countless medical eponyms named for their discoverers -- for medical techniques
and procedures (such as the Heimlich maneuver and the Kocher method), for disorders and
diseases (such as Alzheimer's, Asperger's and Parkinson's) and for instruments and devices
(such as the Foley catheter, the Penrose drain and Metzenbaum scissors).
Owing to the ubiquity of this terminology, there are numerous websites listing and defining
medioal eponyms to assist medical professionals and students * sample printouts from some of
these websites are attached as Exhibit B. Some of these sites list medical eponyms numbering
in the thousands. There are also numerous smartphone apps for medical eponyms, likewise to
Fulbright & Jaworskl LLP ¡s a llmlted liablllty partnership registered under the laws of Texas. 41213852'2
Fulbright & Jaworski LLP, Norton Rose Fulbright LLP, Norton Rose Fulbfight Australia, Norton Rose Fulbright Canada LLP, Norton Rose Fulbright
South Afr¡ca (¡ncorporated as Deneys Reitz, lnc.), each of which is ã separate legal entity, are members of Norton Rose Fulbright Verein, a Swiss
Verein. Details of each entity, with ceda¡n regulatory informat¡on, are at nortonrosefulbright.com. Norton Rose Fulbright Vorein helps goordinate lhe
activities of the mômbers but does not ¡tself provide legal services to clients.
ROTH0007007
A
NORTON ROSE FULBRIGHT
November 26, 2014
Page 2
help medical professionals keep track of all of them so they can accurately communicate with
their colleagues and others in the course of providing treatment. See Exhibit C.
The dental profession is no different from the rest of the medical profession in this regard. The
Academy of Prosthodontics glossary lists numerous eponyms for various conditions,
techniques, etc. in the field of prosthodontics alone (e.g., Abbe flap, curve of Spee, Estlander's
operation, Fischer's angle, Hanau's quint, Guerin's fracture, Gunning's splint, Kennedy bar
connector, Jackson crib clasp, Kingsley splint, Roach clasp, and Weber-Fergusson incision).
See Exhibit D. Dr. Roth himself followed the work of Dr. Andrews in developing new orthodontic
techniques and was a contemporary of Drs. Alexander, Hilgers, Bench, Ricketts, Cetlin,
McLaughlin, Bennett and Trevisi (to name just a few), all of whom have orthodontic
prescriptions named after them.
It is a long-established and accepted convention in the field of orthodontics (as in medicine

generally) to use these doctors' names as eponyms to identify the corresponding prescriptions
in textbooks and scientific journals, in communications with colleagues and in product literature.
Such usage accurately and succinctly describes these prescriptions, some of which can entail
numerous specifications for torque, angulation and other parameters. That is precisely how 3M
uses the name "Roth" in its current product materials and what 3M and the rest of the industry
have done for the last several decades.
I am attaching for your reference as Exhibit E copies of catalogs for 3M and its predecessor
Unitek and other orthodontic appliance manufacturers dating back to the 1980's demonstrating
the common use of the "Roth" name in describing the Roth prescription. Attached as Exhibit F
are examples of current product literature for over two dozen companies which use "Roth" for
the same purpose, many of which use the name more prominently than 3M, most of which use
a disclaimer of equal or lesser prominence than 3M's usage, and some of which do not include
a disclaimer at all.
Thus, you can understand 3M's surprise, and indeed shock, at receiving a letter from a lawyer
for Dr. Roth's purported successor demanding that 3M "cease any and all use of the Roth rights
in connection with the marketing and sale of your products" and objecting to uses which 3M has
made for over three decades.
To support your client's contention that 3M is somehow violating its rights, you rely upon: (1) Dr.
Roth's renown in the orthodontic field (resulting from the widespread adoption of his eponymous
prescription); (2) several trademark registrations filed and obtained after Dr. Roth's death which
incorporate a ROTH component; (3) a trademark license taken by GAC International in 2007;
and (4) the alleged acquiescence in your client's demands by a handful of companies.
As to the first point, 3M readily acknowledges Dr. Roth's success in his field, and his family is
deservedly proud of his accomplishments. However, success and accompanying recognition do
not necessarily translate into trademark rights nor do they establish that use by others is likely to
lead to confusion. For example, while almost everyone has heard of Alzheimer's disease, no
one would assume that the late Dr. Alzheimer or his heirs have sponsored or endorsed the
hundreds of hospitals and clinics which prominently display the Alzheimer name in
communicating what services they offer or pharmaceutical manufacturers which reference the
disease by name in their advertising to communicate their products' indications.
41213852.2
ROTH0007008
A
November 26, 2014
Page 3
Likewise, it is absurd to suggest that purchasers of products advertised for use with the Roth
prescription (i.e., orthodontists and clinics) believe that 3M and the dozens of other companies
using this terminology have been endorsed by Dr. Roth or his successors (as well as by Drs.
Andrews, Ricketts, Bennett etc.). This is a quintessential fair use which falls well outside the
scope of your client's trademark protection, if any. See, e.g., New Kids on the Block v. News
Am. Publishing, Inc., 971 F.2d 302, 308 (9th Cir. 1992) (allowing use of NEW KIDS ON THE
BLOCK mark to identify band in newspaper contest); Toyota Motor Sales, U.S.A., Inc. v. Tabari,
610 F.3d 1171, 1177 (9th Cir. 2010) (vacating the district court's injunction where the domain
name buy-a-lexus.com was the "most straightforward, obvious and truthful way to describe" an
auto broker's business). As Justice Oliver Wendell Holmes recognized long ago, "[a trademark]
does not confer a right to prohibit the use of the word or words. When the mark is used in a way
that does not deceive the public we see no such sanctity in the word as to prevent its being
used to tell the truth. It is not taboo." Prestonettes, Inc. v. Coty, 264 U.S. 359, 368 (1924)
(allowing use of COTY mark on label for repackaged goods to identify original source of
contents).
Similarly, the right of publicity does not grant exclusive rights in the use of person's name in
commerce. Instead, it only protects against uses which take advantage of a person's
reputation. Thus, it does not apply to uses which simply and fairly describe the products or
services being offered. Herman Miller v. Palazzetti Imports & Exports, Inc., 270 F.3d 298, 320
(6th Cir. 2001) (upholding injunction that prohibited commercial exploitation but permitted use of
Eames name in advertising to identify originator of chair design). See Restatement (Third) of
Unfair Competition § 47 cmt. c (1995) ("use of a person's identity primarily for the purpose of
communicating information or expressing ideas is not generally actionable as a violation of the
person's right of publicity.").
Regarding the trademark registrations you cited, the validity of these registrations is open to
serious question, as the evidence of widespread and longstanding descriptive use of the Roth
name in the industry was not before the examining attorney during prosecution, and in fact 3M's
use of "Roth" (which you now assert is a trademark use) predates by over a decade your client's
claimed first usage as a mark in 1997. To the contrary, your client submitted a declaration
swearing under oath that "no other person, firm, corporation, or association has the right to use
the mark in commerce, either in the identical form thereof or in such near resemblance thereto
as to be likely, when used on or in connection with the goods/services of such other person, to
cause confusion, or to cause mistake, or to deceive." This oath is hard to reconcile with your
client's current position that these same uses (or uses indistinguishable from them) now
constitute trademark infringement.
In fact, these uses are descriptive uses, not trademark uses, and the evidence of extensive
descriptive usage of "Roth prescription" and the like suggests that such terminology has
become generic and unprotectable, much like the name "Murphy bed" for the bed originally
invented and commercialized by William Lawrence Murphy. See In re Murphy Door Bed Co.,
Inc., 223 U.S.P.Q. 1030, 1033 (T.T.A.B. 1984) (affirming rejection of application for MURPHY
BED and noting that the term "Murphy bed has for a long period of time been used by a
substantial segment of the public as a generic term for a bed which folds into a wall or a
closet").
41213852.2
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A
November 26, 2014
Page 4
Likewise, your client's success in licensing GAC or bullying other companies into removing the
Roth name from their literature is also unpersuasive as to whether 3M has violated any rights of
your client. GAC for years prior to its license in 2007 had used "Roth" descriptively and
continues to use "Roth" in the same manner as other prescriptions, without any indication that
trademark rights are claimed in the term ROTH and without disclaimers for other prescription
names, such as Andrews. See Exhibit G. An inspection of your client's lawsuit against Sybron
reveals that the primary issue was the use of the RW FACE mark by Sybron and the Roth
Williams International Society of Orthodontists. Notably, Sybron continues to use "Roth" along
with "Andrews" and other prescription names) in a descriptive manner and in much the same
character as 3M's usage, with an equivalent disclaimer. See Exhibit H.
Conspicuously absent from your demand letter is an explanation of why your client has
suddenly decided to enforce its alleged rights in "Roth" against uses which have existed, openly
and extensively, in the marketplace for so long. As I am sure you know, Dr. Roth worked
closely as a consultant with orthodontic appliance manufacturers over the years and in the mid-
1990's explored a possible collaboration with 3M. See Exhibit I. It is inconceivable he was
unaware of how the entire orthodontic appliance industry, including 3M, was using his name
over many decades to refer to the prescription he developed.
Not once did Dr. Roth complain to 3M in the three decades 3M used the terminology prior to his
death. Nor in the five years since it filed its trademark applications has your client complained
until now. Because of the consequences of this prolonged inaction (namely, the ingrainment of
such usage into the orthodontic lexicon) and the associated equities, such inaction is fatal to
your client's claims. Miller v. Glenn Miller Prods., Inc., 454 F.3d 975, 941-42 (9th Cir. 2006)
(applying the presumption that a plaintiff's California right of publicity claim is barred by laches
for actions occurring outside of the four-year statute of limitations); cf. Christoff v. Nestle USA,
Inc., 213 P.3d 132, 137 (Cal. 2009) (applying two-year statute of limitations to statutory right of
publicity claim); Jarrow Formulas, Inc. v. Nutrition Now, Inc., 304 F.3d 829, 839 (9th Cir. 2002)
(dismissing Lanham Act claims after plaintiff delayed seven years before filing suit.
* * *
While touting the widespread recognition of Dr. Roth's contributions to the profession, in policing
its alleged "rights" your client is ironically seeking to remove the term "Roth prescription" from
the orthodontic vocabulary. This label bestowed by the profession on the concepts originated
by Dr. Roth, is a tribute to his ingenuity. Recognizing his ingenuity, this shorthand expression
has long been an efficient and effective way of communicating to orthodontists and clinics which
products are suitable for use with Dr. Roth's technique. His technique achieved success in
large part because it enabled orthodontists to standardize the diagnosis and treatment of
malocclusion. Now, after decades of descriptive use of "Roth" to describe components
designed to implement these standards, your client demands that such usage cease, full-stop.
41213852.2
ROTH0007010
A
November 26, 2014
Page 5
Your client's overreaching demands stand in sharp contrast to core beneficial principles of the
American Dental Association Code of Ethics, namely that "[d]entists have the obligation of
making the results and benefits of their investigative efforts available to all when they are useful
in safeguarding or promoting the health of the public". Section 3C, American Dental Association
Code of Ethics. See Exhibit J (see also Section 3D "... patents and copyrights shall not be used
to restrict research or practice"). While Dr. Roth's career epitomized these tenets, your client's
actions do not. It is noteworthy that while Dr. Roth sought trademark protection for ROTH
PHILOSOPHY for educational materials (in an application filed by your firm) in 2004, he did not
claim the exclusive right to use ROTH for orthodontic appliances. It was not until the late 2000's
that Roth Licensing sought such protection, while claiming first use of the "mark" dating back to
1997.
In careful consideration of all these factors, 3M has no intention of ceasing its current
descriptive use of "Roth" in its product literature. Rather, 3M intends to continue using the term
only in its descriptive sense to communicate which 3M products are suitable for that
prescription, together with a disclaimer of endorsement, in the same manner as it has done —
and the rest of the industry has done -- for the past three decades. However, now that you have
brought it to 3M's attention, 3M will modify the Victory Series Gold Appliance System online
brochure to add the disclaimer, which was inadvertently omitted. 3M has no plans to use ROTH
as a trademark or to claim trademark rights in the term.
I trust that this letter explains 3M's position clearly. Should your client continue to press its
unreasonable demands, rest assured that 3M will aggressively defend its right to communicate
its product attributes to its customers in the same manner that it has for many years. Such
defense will include, inter alia, petitioning for cancellation of your client's trademark registrations
for the ROTH mark on the grounds of genericness and abandonment and seeking discovery
into your client's (and your colleague's) knowledge of third party usage in the industry when
preparing and submitting the above-referenced declaration of exclusive use of ROTH with the
USPTO.
If you wish to discuss an informal resolution of the matters you have raised, please feel free to
contact me at the number above. This letter is written without prejudice to 3M's rights and
remedies, all of which are expressly reserved.
Very truly yours,
ohn A. O'Malley
JA0/11m
Attachments
41213852.2
ROTH0007011
Exhibit H
I
Catalog l4
Volume rrr
Part Art. Part Science. All 0rthodontics.
800.645.5530 | www.dentsplygac.com
For better dentistry
Èxspt-v
GAC
DEFENDANT'S
EXHIBIT GAC0001649
Ia 5sìþ
Introduction
Orthodontics is more than a discipline…it’s a passion. That’s why DENTSPLY GAC believes in giving you the tools and
technologies you need to actualize your full professional potential. We offer a complete range of orthodontic solutions that can
easily and cost-effectively be incorporated into your existing practice and treatment plans. From brackets, force-intuitive wires
and highly efficient buccal tubes to bonding, auxiliary appliances and innovative software programs, our products are precision
engineered to help you reach your goals. Because when we help you to reach your full orthodontic potential, you can help your
patients realize the full potential of their smile. And that’s something everyone can be passionate about.
DENTSPLY GAC International

One CA Plaza, Suite 100
Islandia, NY 11749
Phone: 800-645-5530 or 631-357-8600
Fax: 800-422-2656 or 631-357-8793
Voice Mail: 1-888-422-4685
International: +631-357-8600
gac.info@dentsply.com
Customer Service 1-888-422-4685
(8am – 7pm Eastern time Monday thru Thursday)
(8am – 6pm Eastern time Friday)
GAC TechnoCenter OrthoDental

Orthodontist Software Solutions GAC Orthodontic Instruments
One CA Plaza, Suite 100 1000 Porton Drive
Islandia, NY 11749 Calexico, CA 92231
Phone: 888-422-2376 Phone: 800-645-5530
Fax: 631-357-8793 orthodental@gacintl.com
International: +631-357-8600
techno..center@dentsply.com
DENTSPLY GAC has grown to become one of the largest orthodontic products companies in the world. The profession
now depends upon DENTSPLY GAC for innovative new products that advance the practice of orthodontics worldwide.
For a comprehensive list of distributors around the world to serve your orthodontic needs, see page 329.
GAC0001650
Case 2:15-cv-02375-JMA-AKT Document 42-3 Filed 03/16/18 Page 10 of 310 PageID #:
1593
Terms & Conditions of Sale

Conditions
All DENTSPLY GAC products are manufactured to the highest standards under strict quality control procedures. GAC reserves
the right to modify, improve, and change product specifications; to discontinue products; and to change price schedules as it
may deem necessary without notice or incurring obligation.
Warranty
All products manufactured by GAC are warranted to be defect free in material and workmanship for one year from date of
purchase. GAC’s sole responsibility will be, at its option, to replace, repair or credit the purchase price of a product in the event
of a manufacturing defect. Unsatisfied customers may return any standard GAC product within 60 days of purchase for credit
under the following conditions:
An approved product return must have the RMA # [supplied by customer service] on outside shipping box.
If a product is returned without an RMA number it will be returned to the customer and not processed.
1. Products must be standard catalog items in unused and resalable condition, and only from the original purchaser.
2. Products must be of current design.
3. Written explanation must accompany the return stating the reason for the dissatisfaction with the product with the approved
RMA number listed.
4. Returned merchandise must be properly packaged to withstand shipping. Customer must prepay all postage fees,
including insurance value of package.
5. Returns after 60 days will not be credited without prior clearance and/or letter of explanation, and will be subject to a minimum
20% restocking fee.
a. Any product that has been written on and returned but is unopened and after 60 days of purchase, will be accepted back
with the minimum 20 % restocking fee due to rework.
6. Send your return with RMA number on outside of box to:
Attn: Returns Department
1800 Cloister Drive
Lancaster, PA 17601
Please note:
1. Include the GAC Supplied RMA Form in your shipment to ensure proper processing.
2. All GAC products must be in original sealed packaging to receive credit. Opened product that is returned to GAC will not be
accepted back for return and will be returned to sender for no credit.
3. GAC molar bands, brackets, and archwires are designed, manufactured and warranted for single use only.
The following products are non-returnable:

• GAC TechnoCenter hardware
• GAC TechnoCenter software (upon receipt of permanent key code)
• GAC Adhesives
• GAC Custom Welded bands
• GAC Textbooks
• GAC Custom gold bracket orders
• GAC Instruments*
* All GAC instruments are warranted for sharpening, repair and routine maintenance for 1 year from purchase date. Please mail instruments to be serviced
with GAC invoice, GAC account #, return address, and contact information to:
OrthoDental International
280 Avenida Campillo Suite M
Calexico, CA 92231
Any questions? Call GAC Customer Service @ 1-888-GACINTL (422-4685)
Products made up of multiple components must remain intact until delivered to the end user if CE marked.
2
GAC0001651
1594
Table of Contents
Brackets 7-74
Bands 75-84
Buccals 85-134
Archwires 135-184
Instruments 185-208
Adhesives 209-224
Elastomerics 225-238
Extra Oral 239-248
Software 249-254
Lab Essentials 255-302
Supplies 303-328
Distributor List 327-329
Patent List 330
Index 331-334
GAC0001652
1595
GAC0001653
1596
Brackets The appliance you choose is the foundation

for your Orthodontic treatment plan.
patient comfort, the slots are made with
extremely tight tolerances to provide
DENTSPLY GAC manufactures only high consistent and predictable treatment time
quality brackets from aerospace quality after time. Making use of leading edge
stainless steel. Computer Numerated Control inspection equipment and extremely
(CNC) milling and Metal Injection Molding diligent quality control standards, we carry
(MIM) are two manufacturing processes out rigorous inspections on all of our
utilized routinely by DENTSPLY GAC to bracket systems. It is our commitment to
ensure that the brackets we manufacture you to provide the finest product possible
exceed your every expectation. The tie- to support your specialty.
wings are smooth and swept for optimal
800.645.5530 www.dentsplygac.com
GAC0001654
1597
Bracket Section Content
In-Ovation System Intro 7
In-Ovation R 10
In-Ovation C 22
In-Ovation L 29
In-Ovation NO·TRACE 31
Ovation & MiniOvation 34
OmniArch & MicroArch 37
Standard Edgewise 61
Eruption Appliance 67
Mystique 68
Elation 73
GAC0001655
1598
Brackets
Self-Ligating
The In-Ovation® System is a comprehensive, aesthetic and technologically advanced approach to self-ligation. In-Ovation
is available in four bracket types that share many common benefits for your practice and your patients: reduced chair time
and treatment time, fewer and faster adjustments, better oral hygiene and the control required for optimal orthodontic
results. With In-Ovation, you have the ability to choose from a wide range of treatment options to best meet the needs of
your practice and your patients.
In-Ovation R is the original self-ligating mini twin bracket . In-Ovation R features a low
profile design and smooth curves for greater comfort and improved appearance.
In-Ovation R
In-Ovation C is a highly aesthetic self-ligating bracket made from a special ceramic

material with a rhodium processed clip for enhanced aesthetics. The natural color of
In-Ovation C makes the bracket a perfect fit for patients concerned about aesthetics,
while delivering functionality comparable to metal brackets.
In-Ovation C
In-Ovation L turns traditional treatment outside in. Lingual mounting In-Ovation L

brackets offer an all-but-unseen treatment, while simplifying the difficult chore of
archwire changes thanks to the easy-open, easy-close clips.
In-Ovation L
No·Trace™ is a breakthrough in cosmetic correction. The absolutely, undetectable self-

ligating lingual bracket that provides a cost effective solution for minor anterior
misalignments. The brace without a trace.
No·Trace™
GAC0001656
1599
Brackets
Self-Ligating
Known as the “system of choice”, the In-Ovation System is the solution for efficiency, productivity and patient satisfaction.
In-Ovation is a completely adjusted true straight wire appliance system that positions teeth at all four levels: in/out, angulations,
torque, and overcorrection. With this completely adjusted four dimensional appliance system you will need no offset bends in the
archwires to obtain an optimal finish in most cases (if the brackets are optimally positioned on teeth).
In order to be considered a completely four dimensional appliance, the bracket must contain: compound contoured torque in base,
angulations, proper in/out and anti-rotation with level slot alignment at the conclusion of appliance therapy.
Compound Contour Base

The design of the appliances base must mirror the
mesio-distal and occluso or inciso gingival curvature of the
crown of each tooth type. The base curvature must be the
same or slightly more curved than the tooth surface so
that the bracket stem and slot are precisely positioned.
This allows the appliance to properly transmit the
programmed activation.
Compound No Bent
Contour Contour Slot
Torque In The Base

A fundamental necessity for a programmed appliance is
torque in the base, but this must be accompanied by the
correct base contouring or it will not work properly. This
allows the slot point, the base point (middle of the base)
and the reference point on the tooth to be on the same
plane, a necessity for proper tooth positioning and level
slot alignment.
Torque In Torque In
The Slot The Base
GAC0001657
1600
Programmed In/Out
As a result of the proper thickness relative to the adjacent
brackets, in and out (first order) bends are virtually
eliminated with proper bracket placement.
not
straight wire straight wire
Slot Level Alignment

When all the teeth reach their programmed positions, all four
dimensions are correct, allowing alignment, leveling, and
parallelism of all the slots on all the brackets around the arch.
Non-Adjusted Partially Adjusted Completely Adjusted
GAC0001658
1601
Brackets
Self-Ligating
In-Ovation R
The premier mini twin, self-ligating bracket that gives you complete control from start to finish. In-Ovation R enables
orthodontists and staff to treat cases easily and effectively while offering patients a faster, more comfortable and attractive
treatment option. This unique bracket with Interactive™ technology allows doctors to choose the degree of control needed for
each phase of treatment. The results have reflected a faster overall treatment time than traditional braces and improved finishing.
True twin design with

optimal mesial/distal
span and adequate
Inter-bracket distance
“Whale Tail” clip
for easy opening
Distogingival
dimple/color ID
Smooth Swept
tie-wings Patented slot
blocker
Triple Chamfered Torque in base

slot walls design
Spring clip with

full slot coverage
Adequate undercuts & two point contact
for chain or color ties
Palmer Notation
In-Ovation R brackets may be easily identified in two manners. Each bracket base is laser etched with a Palmer Notation to
denote the quadrant and tooth. The Palmer Notation may also be further clarified by a letter that corresponds to a specific
prescription. In addition, a color dot is applied to the distogingival tie-wing for visual identification.
Letter ID Description Color Codes

None RT Rx* CN Blue
A RT Rx* Surgical LT Pink
B RT Rx* Extra Torque UCS Green
C Roncone Rx RT Rx* RT Rx* RT Rx* UBC Purple
D Andrews Rx Surgical Extra Torque AN Orange
E Euro Rx LCS Light Blue
G Greenfield LBC1 White
H CCO LBC2 Red
Roncone Andrews Euro
no
image
available
Greenfield CCO
*Our RT Rx has values that are equivalent to the Roth®

prescription values. No endorsement is implied. Roth®
is a registered trademark of Roth Licensing LLC.
10
GAC0001659
1602
8
Actual Size 6
Example 4
In-Ovation R RT Rx* (in mm)
2
2 4 6 8
The original In-Ovation prescription based on a system of "goal directed" diagnosis and treatment
planning with measurable criteria in facial aesthetics, dental aesthetics, functional occlusion, condylar
position, stability and periodontal health.
Maxillary Arch
Reference Number
Torque Agulation Rotation .018" .022"
Tooth Degrees Degrees Degrees R L R L
U1 12 5 0 189-111-00 189-211-00 189-112-00 189-212-00
U1/extra torque 17 5 0 189-111-01 189-211-01 189-112-01 189-212-01
U2 8 9 0 189-121-00 189-221-00 189-122-00 189-222-00
U2/hook 8 9 0 189-121-10 189-221-10 189-122-10 189-222-10
U2/extra torque 10 9 0 189-121-01 189-221-01 189-122-01 189-222-01
U3 -2 13 4M 189-131-00 189-231-00 189-132-00 189-232-00
U3/hook -2 13 4M 189-131-10 189-231-10 189-132-10 189-232-10
U3/surgical Rx -2 10 4M 189-131-06 189-231-06 189-132-06 189-232-06
U3/hook surgical Rx -2 10 4M 189-131-16 189-231-16 189-132-16 189-232-16
U3/hook extra torque 3 13 4M 189-132-11 189-232-11
U4-5 -7 0 2D 189-141-00 189-241-00 189-142-00 189-242-00
U4-5/hook distal -7 0 2D 189-141-10 189-241-10 189-142-10 189-242-10
U4-5/hook mesial -7 0 2D 189-141-90 189-241-90 189-142-90 189-242-90
U4-5/hook -7 0 2D 87-141-10** 87-241-10** 87-142-10** 87-242-10**
U4-5/hook mesial -7 0 2D 87-141-90** 87-241-90** 87-142-90** 87-242-90**
U6/hook self-ligating -10 0 14D 88-161-05 88-261-05 88-162-05 88-262-05
U7/hook non-conv -10 0 14D 68-171-21 68-271-21 68-172-21 68-272-21
U7/hook non-conv -14 0 14D 68-171-80 68-271-80 68-172-80 68-272-80
Mandibular Arch
Reference Number
L1-2 -1 2 0 189-311-00 189-411-00 189-312-00 189-412-00
L2/hook -1 2 0 189-322-10 189-422-10
L3 -11 7 2M 189-331-00 189-431-00 189-332-00 189-432-00
L3/hook -11 7 2M 189-331-10 189-431-10 189-332-10 189-432-10
L4 -17 -1 4D 189-341-00 189-441-00 189-342-00 189-442-00
L4/hook -17 -1 4D 189-341-10 189-441-10 189-342-10 189-442-10
L4/offset base -17 -1 4D 189-341-08 189-441-08 189-342-08 189-442-08
L4/hook -17 1 4D 87-341-10 87-441-10 87-342-10 87-442-10
L5 -22 -1 4D 189-351-00 189-451-00 189-352-00 189-452-00
L5/hook -22 -1 4D 189-351-10 189-451-10 189-352-10 189-452-10
L5/offset base -22 -1 4D 189-351-08 189-451-08 189-352-08 189-452-08
L5/hook -22 -1 4D 87-351-10** 87-451-10** 87-352-10** 87-452-10**
L6/hook self-ligating -25 0 4D 88-361-09 88-461-09 88-362-09 88-462-09
L7/hook non-conv -25 0 4D 68-371-20 68-471-20 68-372-20 68-472-20
L7/hook non-conv -30 0 4D 68-371-80 68-471-80 68-372-80 68-472-80
UR UL
LR LL
Each grid box represents a mm measurement. All brackets are shown at 350%.
*Our RT Rx has values that are equivalent to the Roth® prescription values. 11
No endorsement is implied. Roth® is a registered trademark of Roth Licensing LLC. **Weldable
GAC0001660
1603
Brackets
Self-Ligating
In-Ovation R RT Rx* Kits

Reference Number
(Brackets only) .018" .022"
RT Rx* U/L 5-5, CS HK K189-055-13 K189-055-23
RT Rx* U/L 5-5, CS Mesial HK on BC K189-055-24
RT Rx* U/L 5-5, CS Distal HK on BC K189-055-22
RT Rx* U/L 5-5, CS - Surgical Rx Mesial HK K189-055-25
RT Rx* U/L 5-5, CS - Surgical Rx Mesial HK on BC K189-055-27
RT Rx* U/L 5-5, CS - Surgical Rx Distal HK on BC K189-055-16 K189-055-26
*Our RT Rx has values that are equivalent to the Roth® prescription values.
No endorsement is implied. Roth® is a registered trademark of Roth Licensing LLC.
12
GAC0001661
1604
8
Actual Size 6
Example 4
In-Ovation R Roncone (in mm)
2
2 4 6 8
Features increased torque in the maxillary incisors so that finishing with less than full size archwires
will still provide the torque necessary to eliminate "over coupling" of the upper and lower anteriors.
The increased buccal root torque in the upper premolars eliminates lingual cusp interferences. Reduced
mandible posterior torque keeps excellent arch form and avoids balancing interferences.
Maxillary Arch
Reference Number
U1 18 5 0 189-111-60 189-211-60 189-112-60 189-212-60
U2 10 8 0 189-121-60 189-221-60 189-122-60 189-222-60
U2/hook 10 8 0 189-121-61 189-221-61 189-122-61 189-222-61
U3 0 8 2M 189-131-60 189-231-60 189-132-60 189-232-60
U3/hook 0 8 2M 189-131-61 189-231-61 189-132-61 189-232-61
U4-5 -10 4 2D 189-141-60 189-241-60 189-142-60 189-242-60
U4-5/hook -10 4 2D 189-141-61 189-241-61 189-142-61 189-242-61
U7/hook non-conv -20 0 20D 68-171-62 68-271-62 68-172-62 68-272-62
Mandibular Arch
Reference Number
L1-2 1 0 0 189-611-60 189-611-60 189-612-60 189-612-60
L3 -3 7 2M 189-331-60 189-431-60 189-332-60 189-432-60
L3/hook -3 7 2M 189-331-61 189-431-61 189-332-61 189-432-61
L4 -7 -1 2D 189-341-60 189-441-60 189-342-60 189-442-60
L4/hook -7 -1 2D 189-341-61 189-441-61 189-342-61 189-442-61
L5 -7 -1 2D 189-351-60 189-451-60 189-352-60 189-452-60
L5/hook -7 -1 2D 189-351-61 189-451-61 189-352-61 189-452-6
L6/hook self-lig dbl -10 0 4D 88-361-08 88-461-08 88-362-08 88-462-08
L6/hook self-lig sgl -14 0 4D 88-161-62 88-261-62 88-162-62 88-262-62
L7/hook non-con -10 0 0 68-371-23 68-471-23 68-372-23 68-472-23
In-Ovation R Roncone Kit

Reference Number
Roncone U/L 5-5 CS HK K189-055-31
Roncone U/L 5-5 CS BC HK K189-055-36
Roncone U/L 5-5 LAT CS BC HK K189-055-29
UR UL
LR LL
13
GAC0001662
1605
Brackets
Self-Ligating
In-Ovation R Euro
This popular Rx is now available within the GAC In-Ovation R product line. Our Euro Rx has prescription values that are equivalent
to the *MBT™ prescription. This Rx is modified from the original straight wire Rx. With the additional benefits of self-ligation,
interactive treatment mechanics, true straight wire features, and In-Ovation R technology, the result - an extremely efficient and
productive appliance system.
Maxillary Arch Reference Number

U1 17 4 0 189-111-80 189-211-80 189-112-80 189-212-80
U2 10 8 0 189-121-80 189-221-80 189-122-80 189-222-80
U3 -7 8 0 189-131-80 189-231-80 189-132-80 189-232-80
U3/hook -7 8 0 189-131-81 189-231-81 189-132-81 189-232-81
U3/hook 0 8 0 189-131-82 189-231-82 189-132-82 189-232-82
U4 -7 0 0 189-541-80 189-541-80 189-542-80 189-542-80
U4/hook -7 0 0 189-141-81 189-241-81 189-142-81 189-242-81
U5 -7 0 0 189-551-80 189-551-80 189-542-80 189-542-80
U5/hook -7 0 0 189-151-81 189-151-80 189-252-80 189-252-80
U6/hook self-lig -14 0 10D 88-161-81 88-261-81 88-162-81 88-262-81
U7/hook non-conv -14 0 10D 68-171-81 68-271-81 68-172-81 68-272-81
Mandibular Arch Reference Number

L1-2 -6 0 0 189-611-80 189-611-80 189-612-80 189-612-80
L3 -6 3 0 189-331-80 189-431-80 189-332-80 189-432-80
L3/hook -6 3 0 189-331-81 189-431-81 189-332-81 189-432-81
L3/hook 0 3 0 189-331-82 189-431-82 189-332-82 189-432-82
L4 -12 2 0 189-341-80 189-441-80 189-342-80 189-442-80
L4/hook -12 2 0 189-341-81 189-441-81 189-342-81 189-442-81
L5 -17 2 0 189-351-80 189-451-80 189-352-80 189-452-80
L5/hook -17 2 0 189-351-81 189-451-81 189-352-81 189-452-81
L6/hook self-lig -20 0 0 88-361-81 88-461-81 88-362-81 88-462-81
L7/hook non-conv -10 0 0 68-371-23 68-471-23 68-372-23 68-472-23
In-Ovation R Euro Kit

Reference Number
Euro U/L 5-5 CS HK K189-552-81
Euro U/L 5-5 CS BC HK K189-551-82 K189-552-82
UR UL
LR LL
14 * MBT is a registered trademark of 3M Unitek. All rights reserved.
GAC0001663
1606
8
Actual Size 6
Example 4
2
(in mm) 2 4 6 8
In-Ovation R CCO Rx
The CCO System is a comprehensive treatment philosophy designed to treat each and every case with goal directed treatment
andpre-visualized results. The CCO Rx was developed to take full advantage of the bracket/archwire interaction when using an
active clip and to achieve optimal tooth position at the end of treatment.
Maxillary Arch
Reference Number
U1 12 5 0 189-111-07 189-211-07 189-112-07 189-212-07
U1/low torque 7 5 0 189-111-08 189-211-08 189-112-08 189-212-08
U2 10 9 0 189-121-07 189-221-07 189-122-07 189-222-07
U2/low torque 3 9 0 189-121-08 189-221-08 189-122-08 189-222-08
U3/hook -7 10 2M 189-131-17 189-231-17 189-132-17 189-232-17
U3/hook low torque 0 10 2M 189-131-18 189-231-18 189-132-18 189-232-18
U4-5 -9 0 0 189-541-07 189-541-07 189-542-007 189-542-07
U4-5/hook -9 0 0 189-141-17 189-241-17 189-142-17 189-242-17
U6/hook non-conv -14 0 10D 68-161-072 68-261-072 68-162-072 68-262-072
U6/hook non-conv -14 0 10D 69-161-072** 69-261-072** 69-162-072** 69-262-072**
U6/hook conv -14 0 10D 69-161-81** 69-261-81** 69-162-81** 69-262-81**
U7/hook non-conv -20 0 10D 68-171-072 68-271-072 68-172-072 68-272-072
U7/hook non-conv -24 0 10D 69-171-072** 69-271-072** 69-172-072** 69-272-072**
Mandibular Arch
Reference Number
L1-2 -6 0 0 189-611-08 189-611-08 189-612-08 189-612-08
L1-2/high torque -1 0 0 189-611-07 189-611-07 189-612-07 189-612-07
L3/hook -8 3 0 189-331-17 189-431-17 189-332-107 189-432-17
L4 -12 2 0 189-341-07 189-441-07 189-342-07 189-442-07
L4/hook -12 2 0 189-341-17 189-441-17 189-342-17 189-442-17
L5 -17 -1 0 189-351-07 189-451-07 189-352-07 189-452-07
L5/hook -17 -1 0 189-351-17 189-451-17 189-352-17 189-452-17
L6/hook non-conv -25 -1 0 68-361-072 68-461-072 68-362-072 68-462-072
L6/hook non-conv -25 -1 0 69-361-072** 69-461-072** 69-362-072** 69-462-072**
L6/hook self-ligating -20 0 0 88-361-81 88-461-81 88-362-81 88-462-81
L7/hook non-conv -20 -1 0 68-371-072 68-471-072 68-372-072 68-472-072
L7/hook non-conv -20 -1 0 69-371-072** 69-471-072** 69-372-072** 69-472-072**
In-Ovation R CCO Kit

Reference Number
CCO U/L 5-5 CS HK K189-017-07 K189-017-17
CCO U/L 5-5 CS BC HK K189-017-08 K189-017-18
CCO U/L 5-5 Light Torque CS HK K189-018-07 K189-018-17
CCO U/L 5-5 Light Torque CS BC HK K189-018-08 K189-018-18
15
**Weldable
GAC0001664
1607
Brackets
Self-Ligating
In-Ovation R Cetlin®/Greenfield
The CG prescription was developed by Dr. Cetlin and Dr. Greenfield to reflect the goals of "Coordinated Arch Development™" -
their unique approach to non-extraction therapy. Buccal root torque in the mandibular posterior teeth has been decreased, while
the buccal root torque in the maxillary posterior teeth has been increased. This maintains the arch development attained in the
first phase of treatment, while directing the occlusal forces through their long axis. The CG prescription will create radiant smiles
and promote long-term stability.
Maxillary Arch
Reference Number
U1 24 5 0 189-111-03 189-211-03 189-112-03 189-212-03
U2 16 8 0 189-121-03 189-221-03 189-122-03 189-222-03
U3 0 10 0 189-131-03 189-231-03 189-132-03 189-232-03
U3/hook 0 10 0 189-131-13 189-231-13 189-132-13 189-232-13
U4-5 -7 0 0 189-541-03 189-541-03 189-542-03 189-542-03
U4-5/hook -7 0 0 189-141-13 189-241-13 189-142-13 189-242-13
Mandibular Arch
Reference Number
L1-2 -6 0 0 189-611-03 189-611-03 189-612-03 189-612-03
L3 -7 5 0 189-331-03 189-431-03 189-332-03 189-432-03
L3/hook -7 5 0 189-331-13 189-431-13 189-332-13 189-432-13
L4 -11 0 0 189-641-03 189-641-03 189-642-03 189-642-03
L4/hook -11 0 0 189-341-13 189-441-13 189-342-13 189-442-13
L5 -15 0 0 189-651-03 189-651-03 189-652-03 189-652-03
L5/hook -15 0 0 189-351-13 189-451-13 189-352-13 189-452-13
UR UL
LR LL
16
GAC0001665
1608
8
Actual Size 6
Example 4
2
(in mm) 2 4 6 8
In-Ovation R 7/3
This true 7/3 Rx incorporates Dr. Andrews "Standard Rx" with the benefits of self-ligation. Working in conjunction with his six
elements approach to diagnosis. It combines the elements of torque in base, precise in/out, and compound contour base
configuration to achieve level slot alignment.
Maxillary Arch
Reference Number
U1 7 5 0 189-111-02 189-211-02 189-112-02 189-212-02
U2 3 9 0 189-121-02 189-221-02 189-122-02 189-222-02
U3/hook -7 11 0 189-131-12 189-231-12 189-132-12 189-232-12
U4-5 -7 0 0 189-541-02 189-541-02 189-542-02 189-542-02
Mandibular Arch
Reference Number
L1-2 -1 0 0 189-611-02 189-611-02 189-612-02 189-612-02
L1-2 opt. -6 2 0 189-311-22 189-411-22 189-312-22 189-412-22
L3/hook -11 5 0 189-331-12 189-431-12 189-332-12 189-432-12
L4 -17 0 0 189-641-02 189-641-02 189-642-02 189-642-02
L5 -22 0 0 189-651-02 189-651-02 189-652-02 189-652-02
UR UL
LR LL
17
GAC0001666
1609
Brackets
Self-Ligating
In-Ovation R Bi-Dimensional
The Bi-Dimensional Technique, as developed by Dr. Anthony Gianelly, can reduce the complexity of treatment and overall chair
time. Orthodontists report better arch form, minimum wire bending, and fewer mistakes. Lectures are given worldwide on the
Bi-Dimensional Technique.
Maxillary Arch
Reference Number
U1 12 5 0 189-111-00 189-211-00
U2 8 9 0 189-121-00 189-221-00
U3/hook 0 7 0 189-132-41 189-232-41
U4-5 0 0 0 189-542-40 189-542-40
U4-5/hook 0 0 0 189-142-41 189-242-41
Mandibular Arch
Reference Number
L1-2 0 0 0 189-611-02 189-611-02
L3/hook 0 5 0 189-332-41 189-432-41
L4-5 0 0 0 189-642-40 189-642-40
L4-5/hook 0 0 0 189-342-41 189-442-41
In-Ovation R Bi-Dimensional Kit

Reference Number
(Brackets only) .022"
Bi-Dimensional U/L 5-5 CS HK K189-055-93
UR UL
LR LL
18
GAC0001667
1610
8
Actual Size 6
Example 4
2
(in mm) 2 4 6 8
In-Ovation R Canadian
Maxillary Arch
Reference Number
Torque Agulation Rotation .022"
Tooth Degrees Degrees Degrees R L
U1 17 5 0 189-112-01 189-212-01
U2 10 8 0 189-122-60 189-222-60
U3/hook 0 10 0 189-132-13 189-232-13
U4-5/hook -7 0 2D 189-142-10 189-242-10
Mandibular Arch
Reference Number
L1-2 -6 0 0 189-612-80 189-612-80
L3/hook -6 3 0 189-332-81 189-432-81
L4-5/hook -11 0 0 189-342-13 189-442-13
UR UL
LR LL
19
GAC0001668
1611
Brackets
Self-Ligating
In-Ovation R Clark
Dr. Clark’s custom prescription has been developed to fully utilize the significant benefits of the In-Ovation system.
Standard: Class I cases, Class II cases (except extreme protrusion cases), extraction cases.
Low Torque: Most Class III cases, severely crowded cases, to upright incisors (extreme protrusion cases).
Maxillary Arch
Reference Number
Standard Degrees Degrees Degrees R L
U1 18 5 0 189-112-60 189-212-60
U2 10 8 0 189-122-60 189-222-60
U3/hook 0 8 2M 189-132-61 189-232-61
U4-5 -7 0 2D 189-142-00 189-242-00
Low Torque
U1 7 5 0 189-112-02 189-212-02
U2 3 9 0 189-122-02 189-222-02
U3/hook 0 8 2M 189-132-61 189-232-61
U4-5 -7 0 2D 189-142-00 189-242-00
Mandibular Arch
Reference Number
Standard Degrees Degrees Degrees R L
L1-2 -1 2 0 189-312-00 189-412-00
L3/hook -6 3 0 189-332-81 189-432-81
L4 -12 2 0 189-342-80 189-442-80
L5 -17 2 0 189-352-80 189-452-80
Low Torque
L1-2 -6 2 0 189-312-22 189-412-22
L3/hook -6 3 0 189-332-81 189-432-81
L4 -12 2 0 189-342-80 189-442-80
L5 -17 2 0 189-352-80 189-452-80
UR UL
LR LL
20
GAC0001669
1612
8
Actual Size 6
Example 4
2
(in mm) 2 4 6 8
In-Ovation R Accessories
Description Reference Number

Engage R ODG88005
In-Ovation R Clip Opener - pack of 5 07-089-10
Engage R Aspel ODG88006
Beaver Tail ODG88001
Positioner Tool ODG88002
R-Tool ODG88004
TN3 Bracket Positioning Tool TN3
Force Module Aspel ODG510
In-Ovation R Consultation Model TYP89-777-77
In-Ovation R Doctor Brochure 120-089-01
In-Ovation R Rx Brochure 120-089-06 Consultation
In-Ovation R SL Buccal Tube Sheet 120-088-01 Model
In-Ovation R Off-set Bicuspid Sheet 120-089-07
In-Ovation System DVD 120-222-03
In-Ovation Patient Brochure - pack of 25 120-089-02
In-Ovation Patient DVD - pack of 25 120-089-08
In-Ovation Poster 1 120-999-01
Please go to www.dentsplygac.com to view all available marketing materials.
Engage R
120-089-01
120-089-02
120-088-01
120-089-06
21
GAC0001670
1613
Brackets
Aesthetic Self-Ligating
In-Ovation C
The first self-ligating bracket made from ceramic material, that compares to the strength and performance of metal. In-Ovation C
combines superb results with enhanced aesthetics. High translucency and a unique rhodium-processed clip make the bracket
nearly invisible from a few feet away. A smooth surface, swept tie-wings and dome-shaped clip ensure superior comfort and
patient acceptance.
True twin design with

optimal mesial/distal
span and adequate
inter-bracket distance “Gingival Sphere”
clip for easy
Distogingival opening
dimple/color ID
Smooth Swept
tie-wings
Patented slot
blocker
Triple Chamfered Torque in base
slot walls design
Spring clip with

full slot coverage
Adequate undercuts & two point contact
for chain or color ties
Color Notation
A color dot is applied to the distogingival tie-wing for visual identification.
Color Codes
CN Blue
LT Pink
UCS Green
UBC Purple
AN Orange
LCS Light Blue
22
GAC0001671
1614
8
Actual Size 6
Example 4
In-Ovation C RT Rx* (in mm)
2
2 4 6 8
The original In-Ovation prescription based on a system of "goal directed" diagnosis and treatment
planning with measurable criteria in facial aesthetics, dental aesthetics, functional occlusion, condylar
position, stability and periodontal health.
Maxillary Arch
Reference Number
U1 12 5 0 100-111-00 100-211-00 100-112-00 100-212-00
U2 8 9 0 100-121-00 100-221-00 100-122-00 100-222-00
U3 -2 13 4M 100-131-00 100-231-00 100-132-00 100-232-00
U3/hook -2 13 4M 100-131-10 100-231-10 100-132-10 100-232-10
U4-5 -7 0 2D 100-141-00 100-241-00 100-142-00 100-242-00
U4-5/hook -7 0 2D 100-141-10 100-241-10 100-142-10 100-242-10
Mandibular Arch
Reference Number
L1-2 -1 2 0 100-311-00 100-411-00 100-312-00 100-412-00
L3 -11 7 2M 100-331-00 100-431-00 100-332-00 100-432-00
L3/hook -11 7 2M 100-331-10 100-431-10 100-332-10 100-432-10
L4* -17 -1 4D 189-341-00 189-441-00 189-342-00 189-442-00
L4/hook* -17 -1 4D 189-341-10 189-441-10 189-342-10 189-442-10
L4/offset base* -17 -1 4D 189-341-08 189-441-08 189-342-08 189-442-08
L5* -22 -1 4D 189-351-00 189-451-00 189-352-00 189-452-00
L5/hook* -22 -1 4D 189-351-10 189-451-10 189-352-10 189-452-10
L5/offset base* -22 -1 4D 189-351-08 189-451-08 189-352-08 189-452-08
* The hardness value of ceramic is greater than that of enamel. To protect against undesired wearing away of the enamel, DENTSPLY GAC does not
manufacture lower bicuspid ceramic brackets. We recommend utilizing In-Ovation R on the lower 4 & 5 bicuspids.
In-Ovation C RT Rx* Kits

Reference Number
RT Rx* U3-3 CS HK K100-131-10 K100-332-10
RT Rx* U/L3-3 CS HK K100-331-10 K100-332-10
RT Rx* U5-5 K100-151-00 K100-152-00
RT Rx* U5-5 CS HK K100-151-10 K100-152-10
RT Rx* U5-5 CS BC HK K100-151-11 K100-152-11
RT Rx* U5-5/L3-3 K100-531-00 K100-532-00
RT Rx* U5-5/L3-3 CS HK K100-531-10 K100-532-10
RT Rx* U5-5/L3-3 CS BC HK K100-531-11 K100-532-11
UR UL
LR LL
23
GAC0001672
1615
Brackets
In-Ovation C Roncone
Features increased torque in the maxillary incisors so that finishing with less than full size archwires will still provide the torque
necessary to eliminate "over coupling" of the upper and lower anteriors. The increased buccal root torque in the upper
premolars eliminates lingual cusp interferences. Reduced mandible posterior torque keeps excellent arch form and avoids
balancing interferences.
Maxillary Arch
Reference Number
U1 18 5 0 100-111-60 100-211-60 100-112-60 100-212-60
U2 10 8 0 100-121-60 100-221-60 100-122-60 100-222-60
U3 0 8 2M 100-131-60 100-231-60 100-132-60 100-232-60
U3/hook 0 8 2M 100-131-61 100-231-61 100-132-61 100-232-61
U4-5 -10 4 2D 100-141-60 100-241-60 100-142-60 100-242-60
U4-5/hook -10 4 2D 100-141-61 100-241-61 100-142-61 100-242-61
Mandibular Arch
Reference Number
L1-2 1 0 0 100-611-60 100-611-60 100-612-60 100-612-60
L3 -3 7 2M 100-331-60 100-431-60 100-332-60 100-432-60
L3/hook -3 7 2M 100-331-61 100-431-61 100-332-61 100-432-61
L4* -7 -1 2D 189-341-60 189-441-60 189-342-60 189-442-60
L4/hook* -7 -1 2D 189-341-61 189-441-61 189-342-61 189-442-61
L5* -7 -1 2D 189-351-60 189-451-60 189-352-60 189-452-60
L5/hook* -7 -1 2D 189-351-61 189-451-61 189-352-61 189-452-61
* The hardness value of ceramic is greater than that of enamel. To protect against undesired wearing away of the enamel, DENTSPLY GAC does not manu-
facture lower bicuspid ceramic brackets. We recommend utilizing In-Ovation R on the lower 4 & 5 bicuspids.
In-Ovation C Roncone Master Kits

Reference Number
Roncone U3-3 CS HK K100-131-61 K100-132-61
Roncone U/L3-3 CS HK K100-331-60 K100-332-60
Roncone U5-5 CS BC HK K100-151-61 K100-152-61
Roncone U5-5/L3-3 CS HK K100-531-60 K100-532-60
Roncone U5-5/L3-3 CS BC HK K100-531-61 K100-532-61
UR UL
LR LL
24
GAC0001673
1616
8
Actual Size 6
Example 4
2
(in mm) 2 4 6 8
In-Ovation C CCO Rx
The CCO System is a comprehensive treatment philosophy designed to treat each and every case with goal directed treatment
and pre-visualized results. The CCO Rx was developed to take full advantage of the bracket/archwire interaction when using an
active clip, and to achieve optimal tooth position at the end of treatment.
Maxillary Arch
Reference Number
U1 12 5 0 100-111-07 100-211-07 100-112-07 100-212-07
U1/low torque 7 5 0 100-111-08 100-211-08 100-112-08 100-212-08
U2 10 9 0 100-121-07 100-221-07 100-122-07 100-222-07
U2/low torque 3 9 0 100-121-08 100-221-08 100-122-08 100-222-08
U3/hook -7 10 2M 100-131-17 100-231-17 100-132-17 100-232-17
U3/hook low torque 0 10 2M 100-131-18 100-231-18 100-132-18 100-232-18
U4-5 -9 0 0 100-541-07 100-541-07 100-542-007 100-542-07
U4-5/hook -9 0 0 100-141-17 100-241-17 100-142-17 100-242-17
U6/hook non-conv -14 0 10D 68-161-072 68-261-072 68-162-072 68-262-072
U6/hook non-conv -14 0 10D 69-161-072** 69-261-072** 69-162-072** 69-262-072**
U6/hook conv -14 0 10D 69-161-81** 69-261-81** 69-162-81** 69-262-81**
U7/hook non-conv -20 0 10D 68-171-072 68-271-072 68-172-072 68-272-072
U7/hook non-conv -24 0 10D 69-171-072** 69-271-072** 69-172-072** 69-272-072**
Mandibular Arch
Reference Number
L1-2 -6 0 0 100-611-08 100-611-08 100-612-08 100-612-08
L1-2/high torque -1 0 0 100-611-07 100-611-07 100-612-07 100-612-07
L3/hook -8 3 0 100-331-17 100-431-17 100-332-107 100-432-17
L4 -12 2 0 100-341-07 100-441-07 100-342-07 100-442-07
L4/hook -12 2 0 100-341-17 100-441-17 100-342-17 100-442-17
L5 -17 -1 0 100-351-07 100-451-07 100-352-07 100-452-07
L5/hook -17 -1 0 100-351-17 100-451-17 100-352-17 100-452-17
L6/hook non-conv -25 -1 0 68-361-072 68-461-072 68-362-072 68-462-072
L6/hook non-conv -25 -1 0 69-361-072** 69-461-072** 69-362-072** 69-462-072**
L6/hook self-ligating -20 0 0 88-361-81 88-461-81 88-362-81 88-462-81
L7/hook non-conv -20 -1 0 68-371-072 68-471-072 68-372-072 68-472-072
L7/hook non-conv -20 -1 0 69-371-072** 69-471-072** 69-372-072** 69-472-072**
25
**Weldable
GAC0001674
1617
Brackets
In-Ovation C Euro
This popular Rx is now available within the GAC In-Ovation C product line. Our Euro Rx has prescription values that are
equivalent to the *MBT™ prescription. This Rx is modified from the original straight wire Rx. With the additional benefits of self-
ligation, interactive treatment mechanics, true straight wire features, and In-Ovation C technology, the result - an extremely
efficient and productive appliance system.
Maxillary Arch
Reference Number
U1 17 4 0 100-111-80 100-211-80 100-112-80 100-212-80
U2 10 8 0 100-121-80 100-221-80 100-122-80 100-222-80
U3/hook -7 8 0 100-131-81 100-231-81 100-132-81 100-232-81
U4 -7 0 0 100-541-80 100-541-80 100-542-80 100-542-80
U4/hook -7 0 0 100-541-81 100-541-81 100-542-81 100-542-81
U5 -7 0 0 100-551-80 100-551-80 100-552-80 100-552-80
U5/hook -7 0 0 100-551-81 100-551-81 100-552-81 100-552-81
Mandibular Arch
Reference Number
L1-2 -6 0 0 100-611-80 100-611-80 100-612-80 100-612-80
L3/hook -6 3 0 100-331-81 100-431-81 100-332-81 100-432-81
L4* -12 2 0 189-341-80 189-441-80 189-342-80 189-442-80
L4/hook* -12 2 0 189-341-81 189-441-81 189-342-81 189-442-81
L5* -17 2 0 189-351-80 189-451-80 189-352-80 189-452-80
L5/hook* -17 2 0 189-351-81 189-451-81 189-352-81 189-452-81
In-Ovation C Euro Master Kits

Reference Number
Euro U5-5/L3-3 CS HK K100-551-81 K100-552-81
Euro U5-5/L3-3 CS BC HK K100-551-82 K100-552-82
Euro U5-5 CS BC HK K100-151-82 K100-152-82
* The hardness value of ceramic is greater than that of enamel. To protect against undesired wearing away of the enamel, DENTSPLY GAC does not
manufacture lower bicuspid ceramic brackets. We recommend utilizing In-Ovation R on the lower 4 & 5 bicuspids.
UR UL
LR LL
* MBT is a registered trademark of 3M Unitek. All rights reserved.
26
GAC0001675
1618
8
Actual Size 6
Example 4
2
(in mm) 2 4 6 8
In-Ovation C Accessories

Engage C ODG88008
In-Ovation C Clip Opener - pack of 5 07-100-10 TN3 Bracket
Positioning Tool TN3
In-Ovation C Consultation Model TYP100-777-77
In-Ovation C and In-Ovation-R Consultation Model TYP100-777-89
In-Ovation C Doctor Brochure 120-100-01
In-Ovation C Rx Brochure 120-100-09
In-Ovation System DVD 120-222-03
High Aesthetic Archwire Sheet 120-002-01
In-Ovation C Patient Brochure - pack of 25 120-100-02
In-Ovation Patient Office Loop 120-100-07
Consultation
In-Ovation C Brochure Holder with 25 Patient Brochures 120-100-05 Model
Engage C
120-999-03 120-999-01 120-999-04
120-100-01 120-100-03 120-100-02

27
GAC0001676
1619
Brackets
In-Ovation L
In-Ovation L provides the benefits of undetectable lingual mounting while resolving the difficulties of archwire changes with our
easy-open, easy-close clip. An extremely low profile coupled with smooth, specially finished surfaces, maximizes comfort and
offers little or no interference with speech.
True twin design
Low profile for patient

comfort and minimal
gingival interference
Smooth swept
tie-wings reduce
occlusal interference
Triple chamfered
slot wall
For No·Trace only - Anatomically
Interactive spring clip correct base
Smaller base design provides full slot
for easy in-direct coverage and two point
placement contact for true twin
rotational control
28
GAC0001677
1620
8
Actual Size 6
Example 4
2
(in mm) 2 4 6 8
In-Ovation L
Maxillary Arch
Reference Number
U1-2 60 0 0 190-511-00 190-511-00
U3 60 0 0 190-531-00 190-531-00
U3/hook 60 0 0 190-531-10 190-531-10
U4-5 10 0 0 190-751-00 190-751-00
U6-7/hook 10 0 0 190-161-10 190-261-10
Mandibular Arch
Reference Number
L1-2 50 0 0 190-611-00 190-611-00
L3 50 0 0 190-631-00 190-631-00
L3/hook 50 0 0 190-631-10 190-631-10
L4-5 10 0 0 190-751-00 190-751-00
L6-7/hook 0 0 0 190-361-10 190-461-10
Reference Number
U 6-6 K190-055-01
U/L 7-7 K190-055-10
UR UL
LR LL
In-Ovation L Accessories

In-Ovation L Consultation Model TYP90-777-77
In-Ovation L Doctor Brochure 120-090-01
Consultation In-Ovation L Archwire Template 03-999-90
Model
29
GAC0001678
1621
Brackets
No·Trace™ System
For patients where the difference between an ordinary smile and an extraordinary one is only a few millimeters, the In-Ovation
System introduces No·Trace. The No·Trace System provides a hidden lingual treatment by using self-ligating lingual brackets. An
easy and predictable treatment, No·Trace requires minimal chair time, is extremely comfortable, requires virtually no patient
compliance, and can treat minor cases in a matter of weeks. No·Trace is the tray aligner alternative that puts control of the
treatment back in your hands.
• Fast correction for minor anterior misalignments

• Easy direct or indirect bonding
• Self-ligating brackets for rapid wire engagements
• Reduced chair and treatment time
• Eliminates virtually all patient compliance issues
• Aesthetic, hidden treatment for patients
True twin design
Low profile for patient

comfort and minimal
gingival interference
Smooth swept
tie-wings reduce
occlusal interference
Triple chamfered
For No·Trace only - Anatomically slot wall
Smaller base design Interactive spring clip correct base
for easy in-direct provides full slot
placement coverage and two point
contact for true twin
rotational control
30
GAC0001679
1622
8
Actual Size 6
Example 4
No·Trace™ System (in mm)
2
2 4 6 8
Maxillary Arch
Reference Number
U1-2-3 60 0 0 190-511-90 190-511-90
U4 10 0 0 190-751-00 190-751-00
Mandibular Arch
Reference Number
L1-2-3 50 0 0 190-611-90 190-611-90
L4 10 0 0 190-751-00 190-751-00
UR UL
LR LL
No·Trace™ System Kit

Reference Number
No•TraceTM U/L 4-4 KI90-055-00
No·Trace™ Accessories
Mini Scaler GAC890
Posterior Bracket Placer BIG JOHN 220
No•TraceTM Consultation Model TYP90-777-90
No•TraceTM Doctor Brochure 120-090-03
No•TraceTM Patient Brochure - Pack of 25 120-090-04
No•TraceTM Instructional Video 120-090-06
No•TraceTM Poster 120-090-07
Consultation No•TraceTM Patient DVD - Pack of 25 120-090-08
Model
No•TraceTM White Paper 120-090-09
31
GAC0001680
1623
Brackets
Traditional
Ovation and MiniOvation Brackets

Ovation and MiniOvation are completely programmed, four dimensional brackets that combine Metal Injection Molding and
Computer Numerator Controlled Milling (CNC). MIM allows the smaller design with greater strength and full compound
contouring of the bases; while the CNC milling ensures a highly consistent and accurate slot.
Ball post for sure engagement of

Ovation elastics and Sentalloy® coils
Central scribe line for long

axis of clinical crown
Distogingival raised and
colored identification
Wider entryway for earlier

insertion of larger wires
Rectangular base to facilitate

horizontal placement
CNC milled slot for
precision and sliding
Raised gingival tie-wing for
easier ligation and less irritation
Metal injection molding
for intricate designs
MiniOvation
30% smaller rhomboid shape
Tie-wings follow the long

axis of the tooth
Color Notation
Color Codes
CN Blue
LT Pink
UCS Green
UBC Purple
AN Orange
LCS Light Blue
LBC1 White
LBC2 Red
Ovation MiniOvation
32
GAC0001681
1624
8
Actual Size 6
Example 4
2
(in mm) 2 4 6 8
Ovation RT Rx*
Maxillary Arch
Reference Number
Torque Angulation Rotation .018" .022"
U1 12 5 0 82-111-00 82-211-00 82-112-00 82-212-00
U1 extra torque 17 5 0 82-111-01 82-211-01 82-112-01 82-212-01
U2 8 9 0 82-121-00 82-221-00 82-122-00 82-222-00
U2 extra torque 10 9 0 82-121-01 82-221-01 82-122-01 82-222-01
U3 -2 13 4M 82-131-00 82-231-00 82-132-00 82-232-00
U3 extra torque 3 9 4M 82-131-01 82-231-01 82-132-01 82-232-01
U3 surgical Rx -2 9 4M 82-131-06 82-231-06 82-132-06 82-232-06
U3/hook -2 13 4M 82-131-10 82-231-10 82-132-10 82-232-10
U3/hook extra torque 3 13 4M 82-131-11 82-231-11 82-132-11 82-232-11
U4-5 -7 0 2D 82-141-00 82-241-00 82-142-00 82-242-00
U4-5/hook -7 0 2D 82-141-10 82-241-10 82-142-10 82-242-10
Mandibular Arch
Reference Number
Torque Angulation Rotation .018" .022"
L1-2 -1 2 0 82-311-00 82-411-00 82-312-00 82-412-00
L3 -11 7 2M 82-331-00 82-431-00 82-332-00 82-432-00
L3/hook -11 7 2M 82-331-10 82-431-10 82-332-10 82-432-10
L4 -17 -1 4D 82-341-00 82-441-00 82-342-00 82-442-00
L4/hook -17 -1 4D 82-341-10 82-441-10 82-342-10 82-442-10
L5 -22 -1 4D 82-351-00 82-451-00 82-352-00 82-452-00
L5/hook -22 -1 4D 82-351-10 82-451-10 82-352-10 82-452-10
Ovation RT Rx* Kits

Reference Number
RT Rx* U/L 5-5 CS BC HK K82-055-22
RT Rx* U/L 5-5 CS BC Mesial HK K82-055-24
RT Rx* U/L 5-5 SP CS BC HK K82-055-26
UR UL
LR LL
No endorsement is implied. Roth® is a registered trademark of Roth Licensing LLC. 33
GAC0001682
1625
Brackets
Traditional
Mini Ovation
Ovation is also available in "mini" brackets compatible with the Ovation technique. The rhomboid shape allows a smaller footprint
and better aesthetics, while still producing Ovation true straight wire results.
• 30% Smaller
• Completely Programmed
• Rhomboid Shape
Maxillary Arch
Reference Number
U1 12 5 0 85-111-00 85-211-00 85-112-00 85-212-00
U2 8 9 0 85-121-00 85-221-00 85-122-00 85-222-00
U3 -2 13 4M 85-131-00 85-231-00 85-132-00 85-232-00
U3/surgical Rx -2 9 4M 85-131-06 85-231-06 85-132-06 85-232-06
U3/hook -2 13 4M 85-131-10 85-231-10 85-132-10 85-232-10
U4-5 -7 0 2D 85-141-00 85-241-00 85-142-00 85-242-00
U4/mesial hook -7 0 2D 85-141-90 85-241-90 85-142-90 85-242-90
Mandibular Arch
Reference Number
L1-2 -1 2 0 85-311-00 85-411-00 85-312-00 85-412-00
L1-2 -5 2 0 85-311-02 85-411-02 85-312-02 85-412-02
L3 -11 7 2M 85-331-00 85-431-00 85-332-00 85-432-00
L3/hook -11 7 2M 85-331-10 85-431-10 85-332-10 85-432-10
L4/offset base -17 -1 4D 85-341-00 85-441-00 85-342-00 85-442-00
L4/hook offset base -17 -1 4D 85-341-10 85-441-10 85-342-10 85-442-10
L5/offset base -22 -1 4D 85-351-00 85-451-00 85-352-00 85-452-00
L5/hook -22 -1 4D 85-351-14 85-451-14 85-352-14 85-452-14
Mini Ovation Kits Reference Number

U/L 5-5 CS Mesial HK K85-055-23
U/L 5-5 CS BC Mesial HK K85-055-24
Mini Ovation Consultation Model TYP85-777-77
UR UL
LR LL
34
GAC0001683
1626
8
Actual Size 6
Example 4
2
(in mm) 2 4 6 8
OmniArch and MicroArch Design

OmniArch and MicroArch combine the outstanding elements of a proven twin system with an advanced bracket design. These
programmed appliances are available in a variety of prescriptions including RT Rx*, Cetlin®, Bi-Dimensional®, SB™ Single Wing,
7/3, Micro-Progressive, Canadian, and Standard Edgewise to suite whatever your need.
OmniArch
Permanent ID mark
Chamfered slot
Equal
tie-wings
Centered scribe line
MicroArch
Chamfered
archwire slot
Inner/Outer
smooth edge
Milled slot
for precision
Rhomboid
wings
Indicates mid point
of long axis of tooth
Color Notation
All OmniArch & MicroArch brackets are notched and color coded on the distogingival and mesiogingival wing as indicated:
Upper Right - Yellow Upper Left - Red

Lower Right - Black Lower Left - Blue
Maxillary cuspids are color coded on both the distogingival and mesiogingival wings by quadrant. Scribe lines are used for
further identifying OmniArch brackets. The entire mandibular arch has a single scribe line running across the gingival wings. The
mandibular second bicuspids have an additional scribe line on the incisal wings, and the maxillary bicuspids have a scribe line
running across the incisal wings. All angulated brackets are notched on the distogingival tie-wing.
OmniArch MicroArch
35
GAC0001684
1627
Brackets
Traditional
OmniArch® RT Rx*
Maxillary Arch
Reference Number
Torque Agulation .018" .022"
Tooth Degrees Degrees R L R L
U1 12 5 77-111-00 77-211-00 77-112-00 77-212-00
U1 extra torque 17 5 77-111-01 77-211-01 77-112-01 77-212-01
U2 8 9 77-121-00 77-221-00 77-122-00 77-222-00
U2 extra torque 13 9 77-121-01 77-221-01 77-122-01 77-222-01
U3 2 10 77-131-00 77-231-00 77-132-00 77-232-00
U3 extra torque 2 10 77-131-01 77-231-01 77-132-01 77-232-01
U3/hook -7 0 77-541-00 77-541-00 77-542-00 77-542-00
U3 0 7 77-131-01 77-231-01 77-132-01 77-232-01
U4 -7 0 77-141-10 77-241-10 77-142-10 77-242-10
U4/hook -7 0 77-551-00 77-551-00 77-552-00 77-552-00
U4 offset base -7 0 77-141-17 77-241-17 77-142-17 77-242-17
U4-5 offset base -7 0 77-541-07 77-541-07 77-542-07 77-542-07
U5 -7 0 77-151-10 77-251-10 77-152-10 77-252-10
Mandibular Arch
Reference Number
L1-2 -1 0 77-611-00 77-611-00 77-612-00 77-612-00
L3 -11 7 77-331-00 77-431-00 77-332-00 77-432-00
L3 0 7 77-231-01 77-131-01 77-232-01 77-132-01
L3/hook -11 7 77-331-10 77-431-10 77-332-10 77-432-10
L4 -17 0 77-641-00 77-641-00 77-642-00 77-642-00
L4/hook -17 0 77-341-10 77-441-10 77-342-10 77-442-10
L4 offset base -17 0 77-641-07 77-641-07 77-642-07 77-642-07
L4 offset base -17 0 77-341-17 77-441-17 77-342-17 77-442-17
L5 -22 0 77-651-00 77-651-00 77-652-00 77-652-00
L5/hook -22 0 77-351-10 77-451-10 77-352-10 77-452-10
L5 offset base -22 0 77-651-07 77-651-07 77-652-07 77-652-07
L5 offset base -22 0 77-351-17 77-451-17 77-352-17 77-452-17
OmniArch® RT Rx* Kits

Reference Number
RT Rx* U/L 5-5 CS BC HK K77-055-12 K77-055-22
RT Rx* U/L 5-5 CS HK K77-055-13 K77-055-23
UR UL
LR LL
36 *Our RT Rx has values that are equivalent to the Roth® prescription values.
GAC0001685
1628
8
Actual Size 6
Example 4
2
(in mm) 2 4 6 8
OmniArch® Roncone
Dr. Ronald Roncone has been a leader in the science of orthodontics for over 25 years. He is a worldwide lecturer on many
subjects from mechanics to TMJ. He has developed a proven practice management system that allows clinicians to efficiently
manage and treat larger patient loads to treat more patients in less time. Dr. Roncone has observed that most orthodontists do
not fill the bracket slots, so his prescription has been adjusted to achieve the same results with smaller archwires. Further, the
torque is reduced in the lower arch to allow the molars to be more upright, while the torque in the upper molars is increased to
provide better contact with the more upright mandibular molars. The GAC Roncone prescription offers the orthodontist a
bracket system that turns practice efficiency into clinical efficiency.
Maxillary Arch
Reference Number
U1 18 5 0 77-111-90 77-211-90 77-112-90 77-212-90
U2 10 8 0 77-121-90 77-221-90 77-122-90 77-222-90
U2/hook 10 8 0 77-121-91 77-221-91 77-122-91 77-222-91
U3 0 8 2M 77-131-90 77-231-90 77-132-90 77-232-90
U3/hook 0 8 2M 77-131-91 77-231-91 77-132-91 77-232-91
U4-5 -10 4 2D 77-141-90 77-241-90 77-142-90 77-242-90
U4-5/hook -10 4 2D 77-141-91 77-241-91 77-142-91 77-242-91
Mandibular Arch
Reference Number
L1-2 1 0 0 77-611-90 77-611-90 77-612-90 77-612-90
L3 -3 7 2M 77-331-90 77-431-90 77-332-90 77-432-90
L3/hook -3 7 2M 77-331-91 77-431-91 77-332-91 77-432-91
L4-5 -7 -1 2D 77-341-90 77-441-90 77-342-90 77-442-90
L4-5/hook -7 -1 2D 77-341-91 77-441-91 77-342-91 77-442-91
L6 -10 0 4D 69-361-08 69-461-08 69-362-08 69-462-08
L7 -10 0 0 69-371-23 69-471-23 69-372-23 69-472-23
OmniArch® Roncone Kits

Reference Number
Roncone U/L 5-5 CS BC HK K77-551-92 K77-552-92
UR UL
LR LL
37
GAC0001686
1629
Brackets
Traditional
OmniArch® Euro
Designed for clinicians who finish without filling the slot, our Euro Version has additional torque in the maxillary anteriors for
more upright molars. The lower molar Rx has reduced torque, so molars are more upright at finishing.
Maxillary Arch
Reference Number
U1 17 4 77-111-60 77-211-60 77-112-60 77-212-60
U2 10 8 77-121-60 77-221-60 77-122-60 77-222-60
U3 -7 8 77-131-60 77-231-60 77-132-60 77-232-60
U3/hook -7 8 77-131-61 77-231-61 77-132-61 77-232-61
U4 -7 0 77-541-60 77-541-60 77-542-60 77-542-60
U4/hook -7 0 77-141-61 77-241-61 77-142-61 77-242-61
U5 -7 0 77-551-60 77-551-60 77-552-60 77-552-60
U5/hook -7 0 77-151-61 77-251-61 77-152-61 77-252-61
Mandibular Arch
Reference Number
L1-2 -6 0 77-611-60 77-611-60 77-612-60 77-612-60
L3 -6 3 77-331-60 77-431-60 77-332-60 77-432-60
L3/hook -6 3 77-331-61 77-431-61 77-332-61 77-432-61
L4 -12 2 77-341-60 77-441-60 77-342-60 77-442-60
L4/hook -12 2 77-341-61 77-441-61 77-342-61 77-442-61
L5 -17 2 77-351-60 77-451-60 77-352-60 77-452-60
L5/hook -17 2 77-351-61 77-451-61 77-352-61 77-452-61
OmniArch® Euro Kits

Reference Number
Euro U/L 5-5 CS HK K77-055-61
Euro U/L 5-5 CS BC HK K77-055-62
UR UL
LR LL
38
GAC0001687
1630
8
Actual Size 6
Example 4
2
(in mm) 2 4 6 8
OmniArch® 7/3 Version

Reference Number
U1 7 5 77-111-02 77-211-02 77-112-02 77-212-02
U2 3 9 77-121-02 77-221-02 77-122-02 77-222-02
U2/hook 3 9 77-121-12 77-221-12 77-122-12 77-222-12
U3 -7 10 77-131-02 77-231-02 77-122-02 77-232-02
U3/hook -7 10 77-131-12 77-231-12 77-132-12 77-232-12
U4 -7 0 77-541-00 77-541-00 77-542-00 77-542-00
U4/hook -7 0 77-141-10 77-241-10 77-142-10 77-242-10
U5 -7 0 77-551-00 77-551-00 77-552-00 77-552-00
U5/hook -7 0 77-151-10 77-251-10 77-152-10 77-252-10
Mandibular Arch
Reference Number
L1-2 1 0 77-611-00 77-611-00 77-612-00 77-612-00
L3 -11 5 77-331-02 77-431-02 77-332-02 77-432-02
L3/hook -11 5 77-331-12 77-431-12 77-332-12 77-432-12
L4 -17 0 77-641-00 77-641-00 77-642-00 77-642-00
L4/hook -17 0 77-341-10 77-441-10 77-342-10 77-442-10
L5 -22 0 77-651-00 72-641-00 77-652-00 77-652-00
L5/hook -22 0 77-351-10 77-451-10 77-352-10 77-452-10
UR UL
LR LL
39
GAC0001688
1631
Brackets
Traditional
OmniArch® MicroProgressive
Maxillary Arch
Reference Number
U1 22 5 77-111-70 77-211-70 77-112-70 77-212-70
U2 14 9 77-121-70 77-221-70 77-122-70 77-222-70
U3 7 5 77-131-70 77-231-70 77-132-70 77-232-70
U3/hook 7 5 77-131-71 77-231-71 77-132-71 77-232-71
U4-5 0 0 77-541-70 77-541-70
U4-5/hook 0 0 77-141-71 77-241-71
Mandibular Arch
Reference Number
L1-2 -1 0 77-611-00 77-611-00 77-612-00 77-612-00
L3 7 5 77-331-70 77-431-70 77-332-70 77-432-70
L3/hook 7 5 77-331-71 77-431-71 77-332-71 77-432-71
L4-5 0 0 77-641-70 77-641-70
L4-5/hook 0 0 77-341-71 77-441-71
OmniArch® MicroProgressive Vertical Slot

Maxillary Arch
Reference Number
U1 22 5 77-111-72 77-211-72 77-112-72 77-212-70
U2 14 9 77-121-72 77-221-72 77-122-72 77-222-70
U3 7 5 77-131-72 77-231-72 77-132-72 77-232-70
U3/hook 7 5 77-131-73 77-231-73 77-132-73 77-232-71
U4-5/univ 0 0 77-541-04 77-541-04 77-542-04 77-542-04
U4-5 extra torque -7 0 77-541-72 77-541-72
Mandibular Arch
Reference Number
L1-2 0 0 77-611-03 77-611-03 77-612-03 77-612-03
L3 7 5 77-331-72 77-431-72 77-332-72 77-432-72
L3/hook 7 5 77-331-73 77-431-73 77-332-73 77-432-73
L4 univ -11 0 77-641-03 77-641-03 77-642-03 77-642-03
L4 extra torque -11 0 77-641-72 77-641-72
L5 univ -17 0 77-651-03 77-651-03 77-652-03 77-653-03
L5 extra torque -17 0 77-651-72 77-651-72
UR UL
LR LL
40 Each grid box represents a mm measurement. All brackets are shown at 350%.
GAC0001689
1632
8
Actual Size 6
Example 4
OmniArch® Bi-Dimensional® Vertical Slot (in mm)
2
2 4 6 8
Maxillary Arch
Reference Number
U1 12 5 77-111-03 77-211-03 77-112-03 77-212-03
U1/extra torque v-slot 22 5 77-111-72 77-211-72
U2 8 9 77-121-03 77-221-03 77-122-03 77-222-03
U3 0 7 77-131-04 77-231-04 77-132-04 77-232-04
U3 -2 7 77-131-03 77-231-03 77-132-03 77-232-03
U3/hook -2 7 77-131-13 77-231-13 77-132-13 77-232-13
U3/hook,
extra torque v-slot 7 5 77-131-73 77-231-73
U4/hook 0 0 77-141-14 77-241-14 77-142-14 77-242-14
U4-5 0 0 77-541-04 77-541-04 77-542-04 77-542-04
U4-5 -7 0 77-541-03 77-541-03 77-542-03 77-542-03
U4-5/extra torque
v-slot -7 0 77-541-72 77-541-72
U4-5/hook -7 0 77-141-13 77-241-13 77-142-13 77-242-13
U4-5/hook 0 0 77-141-14 77-241-14 77-142-14 77-242-14
U4-5/offset base -7 0 77-541-33 77-541-33 77-542-33 77-542-33
U4-5/offset base 0 0 77-541-34 77-541-34 77-542-34 77-542-34
Mandibular Arch
Reference Number
L1-2 0 0 77-611-03 77-611-03 77-612-03 77-612-03
L3 -5 7 77-331-03 77-431-03 77-332-03 77-432-03
L3/hook -5 7 77-331-13 77-431-13 77-332-13 77-432-13
L3/extra torque v-slot 7 5 77-331-72 77-431-72
L3 0 5 77-331-04 77-431-04 77-332-04 77-432-04
L3/hook 0 5 77-331-14 77-431-14 77-332-14 77-432-14
L3/hook,
extra torque v-slot 7 5 77-331-73 77-431-73
L4-5 0 0 77-641-04 77-641-04 77-642-04 77-642-04
L4 -11 0 77-641-03 77-641-03 77-642-03 77-642-03
L4/extra torque v-slot -11 0 77-641-72 77-641-72
L4/offset base -11 0 77-641-33 77-641-33 77-642-33 77-642-33
L4/hook -11 0 77-341-13 77-441-13 77-342-13 77-442-13
L4/hook 0 0 77-341-14 77-441-14 77-342-14 77-442-14
L4-5/offset base 0 0 77-641-34 77-641-34 77-642-34 77-642-34
L5 -17 0 77-651-03 77-651-03 77-652-03 77-652-03
L5/extra torque v-slot -17 0 77-651-72 77-651-72
L5/hook -17 0 77-351-13 77-451-13 77-352-13 77-452-13
L5/offset base -22 0 77-651-33 77-651-33 77-652-33 77-653-33
L5/offset base -17 0 77-351-23 77-451-23 77-352-23 77-452-23
UR UL
LR LL
41
GAC0001690
1633
Brackets
Traditional
OmniArch® Bi-Dimensional® Kit

Reference Number
Bi-Dimensional U/L 5-5, CS HK K77-055-30
OmniArch® Cetlin® Kit

Reference Number
Cetlin U/L 5-5, CS HK K77-055-28
OmniArch® Hasund Formula

Maxillary
Reference Number
Torque Agulation .018"
Tooth Degrees Degrees R L
U1 20 3 77-111-40 77-211-40
U2 14 9 77-121-40 77-221-40
U3 -2 6 77-131-40 77-231-40
U3/hook -2 6 77-131-41 77-231-41
U4-5 -10 2 77-141-40 77-241-40
Mandibular
Reference Number
L1-2 0 0 77-611-40 77-611-40
L3 0 5 77-331-40 77-431-40
L3/hook 0 5 77-331-41 77-431-41
L4 -10 2 77-341-40 77-441-40
L5 -15 2 77-351-40 77-451-40
UR UL
LR LL
42
GAC0001691
1634
8
Actual Size 6
Example 4
2
(in mm) 2 4 6 8
OmniArch® Weldable
RT Rx*
Reference Number
U1 12 5 76-111-00 76-211-00 76-112-00 76-212-00
U2 8 9 76-121-00 76-221-00
U2/hook 8 9 76-121-10 76-221-10 76-122-10 76-222-10
U3 2 10 76-131-00 76-132-00 76-232-00
U3/hook 2 10 76-131-10 76-231-10 76-132-10 76-232-10
U4/hook -7 0 76-141-10 76-241-10 76-142-10 76-242-10
U4 -7 0 76-541-00 76-541-00 76-542-00 76-542-00
U5/hook -7 0 76-151-10 76-251-10 76-152-10 76-252-10
U5 -7 0 76-551-00 76-551-00 76-552-00 76-552-00
L4/hook -17 0 76-341-10 76-441-10 76-342-10 76-442-10
L4 -17 0 76-641-00 76-641-00 76-642-00 76-642-00
L5/hook -22 0 76-351-10 76-451-10 76-352-10 76-452-10
L5 -22 0 76-651-00 76-651-00 76-652-00 76-652-00
Vertical Slot
Reference Number
U4/hook -7 0 76-141-13 76-241-13 76-142-13 76-242-13
U4 -7 0 76-541-03 76-541-03 76-542-03 76-542-03
L4/hook -11 0 76-341-13 76-441-13 76-342-13 76-442-13
L4 -11 0 76-641-03 76-641-03 76-642-03 76-642-03
L5/hook -17 0 76-351-13 76-451-13 76-352-13 76-452-13
L5 -17 0 76-652-03 76-652-03
MicroProgressive
Reference Number
U4-5/hook 0 0 76-141-71 76-241-71
U4-5 0 0 76-541-70 76-541-70
U4-5 -7 0 76-541-72 76-541-72
L4-5/hook 0 0 76-341-71 76-441-71
L4 -11 0 76-641-72 76-641-72
L4-5 0 0 76-641-70 76-641-70
L5 -17 0 76-651-72 76-651-72
43
GAC0001692
1635
Brackets
Traditional
MicroArch® RT Rx*
Maxillary
Reference Number
U1 12 5 0 72-111-00 72-211-00 72-112-00 72-212-00
U1/hook 12 5 0 72-111-10 72-211-10 72-112-10 72-212-10
U2 8 9 0 72-121-00 72-221-00 72-122-00 72-222-00
U2/extra torque 13 9 0 72-121-01 72-221-01 72-122-01 72-222-01
U2/hook 8 9 0 72-121-10 72-221-10 72-122-10 72-222-10
U2/hook extra torque 13 9 0 72-121-11 72-221-11 72-122-11 72-222-11
U3 2 10 4M 72-131-00 72-231-00 72-132-00 72-232-00
U3/extra torque 0 7 4M 72-131-01 72-231-01 72-132-01 72-232-01
U3/hook 2 10 4M 72-131-10 72-231-10 72-132-10 72-232-10
U3/hook extra torque 0 7 4M 72-131-11 72-231-11 72-132-11 72-232-11
U4 -7 0 2D 72-141-00 72-241-00 72-142-00 72-242-00
U4/hook -7 0 2D 72-141-10 72-241-10 72-142-10 72-242-10
U4/hook offset base -7 0 0 72-141-18 72-241-18 72-142-18 72-242-18
U4-5/offset base -7 0 0 72-541-08 72-541-08 72-542-08 72-542-08
U5 -7 0 2D 72-151-00 72-251-00 72-152-00 72-252-00
U5/hook -7 0 2D 72-151-10 72-251-10 72-152-10 72-252-10
Mandibular
Reference Number
L1-2 -1 0 0 72-611-00 72-611-00 72-612-00 72-612-00
L1-2/hook -1 0 0 72-311-11 72-411-11 72-312-11 72-412-11
L3 -11 7 2M 72-331-00 72-431-00 72-332-00 72-432-00
L3/hook -11 7 2M 72-331-10 72-431-10 72-332-10 72-432-10
L4 -17 0 4D 72-341-00 72-441-00 72-342-00 72-442-00
L4/offset base -17 0 0 72-641-08 72-641-08 72-642-08 72-642-08
L4/hook -17 0 4D 72-341-10 72-441-10 72-342-10 72-442-10
L4/hook offset base -17 0 0 72-341-18 72-441-18 72-342-18 72-442-18
L5 -22 0 4D 72-351-00 72-451-00 72-352-00 72-452-00
L5/offset base -22 0 0 72-651-08 72-651-08 72-652-08 72-652-08
L5/hook -22 0 4D 72-351-10 72-451-10 72-352-10 72-452-10
L5/hook offset base -22 0 0 72-351-18 72-451-18 72-352-18 72-452-18
UR UL
LR LL
*Our RT Rx has values that are equivalent to the Roth® prescription values. No endorsement is implied.
Roth® is a registered trademark of Roth Licensing LLC.
44
GAC0001693
1636
8
Actual Size 6
Example 4
2
(in mm) 2 4 6 8
Traditional
MicroArch® RT Rx* Kits

Reference Number
.018" .022"
RT Rx* U/L 5-5 CS HK K77-055-13 K77-055-23
RT Rx* U/L 5-5 CS BC HK K77-055-12 K77-055-22
RT Rx* U/L 5-5 OB HK K77-152-08
RT Rx* U/L 5-5 CS OB HK K77-055-08
45
GAC0001694
1637
Brackets
Traditional
MicroArch® Euro
Maxillary
Reference Number
U1 17 4 72-111-60 72-211-60 72-112-60 72-212-60
U2 10 8 72-121-60 72-221-60 72-122-60 72-222-60
U3 -7 8 72-131-60 72-231-60 72-132-60 72-232-60
U3/hook -7 8 72-131-61 72-231-61 72-132-61 72-232-61
U4 -7 0 72-541-60 72-541-60 72-542-60 72-542-60
U4/hook -7 0 72-141-61 72-241-61 72-142-61 72-242-61
U5 -7 0 72-551-60 72-551-60 72-552-60 72-552-60
U5/hook -7 0 72-151-61 72-251-61 72-152-61 72-252-61
Mandibular
Reference Number
L1-2 -6 0 72-611-60 72-611-60 72-612-60 72-612-60
L3 -6 3 72-331-60 72-431-60 72-332-60 72-432-60
L3/hook -6 3 72-331-61 72-431-61 72-332-61 72-432-61
L4 -12 2 72-341-60 72-441-60 72-342-60 72-442-60
L4/hook -12 2 72-341-61 72-441-61 72-342-61 72-442-61
L5 -17 2 72-351-60 72-451-60 72-352-60 72-452-60
L5/hook -17 2 72-351-61 72-451-61 72-352-61 72-452-61
UR UL
LR LL
46
GAC0001695
1638
8
Actual Size 6
Example 4
2
(in mm) 2 4 6 8
MicroArch® Universal Brackets

Maxillary
Reference Number
U4-5 -7 0 0 72-541-00 72-541-00 72-542-00 72-542-00
U5 -7 0 0 72-551-00 72-551-00 72-552-60 72-552-60
Mandibular
Reference Number
L1-2 -1 0 0 72-611-04 72-611-04
L4 -17 0 0 72-641-00 72-641-00 72-642-00 72-642-00
L5 -22 0 0 72-651-00 72-651-00 72-652-00 72-652-00
47
GAC0001696
1639
Brackets
Traditional
MicroArch® Cetlin® V-slot

Designed to complement Dr. Norman Cetlin’s early molar management mechanics, this formula provides the ideal detailing to
accompany the progressive molar positioning. The vertical slot accepts .014’’ x .014’’ square or .016" round.
Maxillary
Reference Number
U1 12 5 0 72-111-03 72-211-03 72-112-03 72-212-03
U2 8 9 0 72-121-03 72-221-03 72-122-03 72-222-03
U3 -2 7 0 72-131-03 72-231-03 72-132-03 72-232-03
U3/hook -2 7 0 72-131-13 72-231-13 72-132-13 72-232-13
U4-5 -7 0 0 72-541-03 72-541-03 72-542-03 72-542-03
U4-5/offset base -7 0 72-541-33 72-541-33 72-542-33 72-542-33
U4-5/hook -7 0 0 72-141-13 72-241-13 72-142-13 72-242-13
Mandibular
Reference Number
L1-2 0 0 0 72-611-03 72-611-03 72-612-03 72-612-03
L3 -5 7 0 72-331-03 72-431-03 72-332-03 72-432-03
L3/hook -5 7 0 72-331-13 72-431-13 72-332-13 72-432-13
L4/hook -11 0 0 72-341-13 72-441-13 72-342-13 72-442-13
L4/offset base -11 0 72-641-33 72-641-33 72-642-33 72-642-33
L4/hook offset base -11 0 72-341-23 72-441-23 72-342-23 72-442-23
L5/hook -17 0 0 72-351-13 72-451-13 72-352-13 72-452-13
L5/offset base -17 0 72-651-33 72-651-33 72-652-33 72-652-33
UR UL
LR LL
48
GAC0001697
1640
8
Actual Size 6
Example 4
2
(in mm) 2 4 6 8
MicroArch® 7/3 Version
Maxillary
Reference Number
U1 7 5 0 72-111-02 72-211-02 72-112-02 72-212-02
U2 3 9 0 72-121-02 72-221-02 72-122-02 72-222-02
U2/hook 3 9 0 72-121-12 72-221-12 72-122-12 72-222-12
U3 -7 10 0 72-131-02 72-231-02 72-132-02 72-232-02
U3/hook -7 10 0 72-131-12 72-231-12 72-132-12 72-232-12
U4 -7 0 0 72-541-00 72-541-00 72-542-00 72-542-00
U4/hook -7 0 2D 72-141-10 72-241-10 72-142-10 72-242-10
U5 -7 0 0 72-551-00 72-551-00 72-552-00 72-552-00
U5/hook -7 0 2D 72-151-10 72-251-10 72-152-10 72-252-10
Mandibular
Reference Number
L1-2 -1 0 0 72-611-00 72-611-00 72-612-00 72-612-00
L1-2/extra torque -5 0 0 72-611-02 72-611-02 72-612-02 72-612-02
L1-2/hook -1 0 0 72-311-11 72-411-11 72-312-11 72-412-11
L3 -11 5 0 72-331-02 72-431-02 72-332-02 72-432-02
L3/hook -11 5 0 72-331-12 72-431-12 72-332-12 72-432-12
L4 -17 0 0 72-641-00 72-641-00 72-642-00 72-642-00
L4/hook -17 0 4D 72-341-10 72-441-10 72-342-10 72-442-10
L5 -22 0 0 72-651-00 72-651-00 72-652-00 72-652-00
L5/hook -22 0 4D 72-351-10 72-451-10 72-352-10 72-452-10
UR UL
LR LL
49
GAC0001698
1641
Brackets
Traditional
MicroArch® Canadian
Maxillary Arch
Reference Number
U1 17 5 0 77-112-01 77-212-01
U2 8 9 0 77-122-00 77-222-00
U3/hook 2 10 4 77-132-10 77-232-10
U4/ hook -7 0 2D 77-142-10 77-242-10
U5/hook -7 0 2D 77-152-10 77-252-10
Mandibular Arch
Reference Number
L1-2 -1 0 0 77-612-00 77-612-00
L3/hook -7 10 0 77-342-63 77-432-63
L4-5/hook -11 0 0 77-342-17 77-442-17
MicroArch® Canadian Kit

Reference Number
Canadian U/L 5-5 CS BC HK K77-552-35
Canadian U/L 5-5 CS BC HK K77-552-36
UR UL
LR LL
50
GAC0001699
1642
8
Actual Size 6
Example 4
2
(in mm) 2 4 6 8
MicroArch® Bi-Dimensional® Vertical Slot

The Bi-Dimensional Technique, as developed by Dr. Anthony Gianelly, can reduce the complexity of treatment and overall chair
time. Orthodontists report better arch form, minimum wire bending, and fewer mistakes. Lectures are given worldwide on the
Bi-Dimensional technique. The vertical slot accepts .014’’ x .014’’ square or .016" round.
Maxillary
Reference Number
U1 12 5 0 72-111-03 72-211-03
U2 8 9 0 72-121-03 72-221-03
U3 0 7 0 72-132-04 72-232-04
U3/hook 0 7 0 72-132-14 72-232-14
U4-5 0 0 0 72-542-04 72-542-04
U4-5/hook 0 0 0 72-152-14 72-252-14
Mandibular
Reference Number
L1-2 0 0 0 72-611-03 72-611-03
L3 0 5 0 72-332-04 72-432-04
L3/hook 0 5 0 72-332-14 72-432-14
L4-5 0 0 0 72-642-04 72-642-04
L4-5/hook 0 0 0 72-342-14 72-442-14
UR UL
LR LL
51
GAC0001700
1643
Brackets
Traditional
MicroArch® MicroProgressive
Maxillary
Reference Number
U1 22 5 0 72-111-70 72-211-70
U2 13 9 0 72-121-01 72-221-01
U2/hook 13 9 0 72-121-11 72-221-11
U3 7 5 0 72-131-70 72-231-70
U3/hook 7 5 0 72-131-71 72-231-71
U4-5 0 0 0 74-541-22 74-541-22
U4-5/hook 0 0 0 74-141-10 74-241-10
Mandibular
Reference Number
L1-2 -1 0 0 72-611-00 72-611-00
L1-2/hook -1 0 0 72-311-11 72-411-11
L3 7 5 0 72-331-70 72-431-70
L3/hook 7 5 0 72-331-71 72-431-71
L4-5 0 0 0 74-641-22 74-641-22
L4-5/hook 0 0 0 74-341-10 74-441-10
UR UL
LR LL
52
GAC0001701
1644
8
Actual Size 6
Example 4
MicroArch® SB™ (in mm)
2
2 4 6 8
MicroArch SB’s revolutionary design allows both freer sliding and fuller control. An extension on the
interproximal of the tie-wings, the "shoulder" keeps the elastomer off the archwire when freer sliding
is desired. When fuller control is important, simply "figure 8" the elastomer to hold the bracket’s position. SB is an aesthetic
mini-bracket with a vertical slot for Bi-Dimensional mechanics. SB is available for the 3, 4, and 5. Colored ties and high
performance can work together.
Maxillary Arch
Reference Number
U1 12 5 0 85-111-00 85-211-00 85-112-00 85-212-00
U2 8 9 0 85-121-00 85-221-00 85-122-00 85-222-00
U3 0 7 0 75-131-90 75-231-90 75-132-90 75-232-90
U3/hook 0 7 0 75-131-91 75-231-91 75-132-91 75-232-91
U4 -7 0 0 75-141-90 75-241-90 75-142-90 75-242-90
U4/hook -7 0 0 75-141-91 75-241-91 75-142-91 75-242-91
U4-5 0 0 0 75-141-94 75-241-94 75-142-94 75-242-94
U4-5/hook 0 0 0 75-141-95 75-241-95 75-142-95 75-242-95
Mandibular Arch
Reference Number
L1-2 -1 2 0 85-311-00 85-411-00 85-312-00 85-412-00
L3 -11 7 0 75-331-90 75-431-90 75-332-90 75-432-90
L3/hook -11 7 0 75-331-91 75-431-91 75-332-91 75-432-91
L4 -17 0 0 75-341-90 75-441-90 75-342-90 75-442-90
L4/hook -17 0 0 75-341-91 75-441-91 75-342-91 75-442-91
L5 -22 0 0 75-351-90 75-451-90 75-352-90 75-452-90
L5/hook -22 0 0 75-351-91 75-451-91 75-352-91 75-452-91
Lower Bicuspids with Offset Base

Reference Number
L4/hook -17 0 0 75-341-97 75-441-97 75-342-97 75-442-97
L5/hook -22 0 0 75-351-97 75-451-97 75-352-97 75-452-97
UR UL
LR LL
53
GAC0001702
1645
Brackets
Traditional
MicroArch® Standard Edgewise

Maxillary Arch Reference Number
.018" .022"
Tooth R L R L
U1 74-511-32 74-511-32 74-512-32 74-512-32
U2 74-521-22 74-521-22 74-522-22 74-522-22
U3 74-031-22 74-031-22 74-032-22 74-032-22
U3/hook 74-131-10 74-231-10 74-132-10 74-232-10
U4-5 74-541-22 74-541-22 74-542-22 74-542-22
U4-5/hook 74-141-10 74-241-10 74-142-10 74-242-10
Mandibular Arch Reference Number

.018" .022"
Tooth R L R L
L1-2 74-611-12 74-611-12 74-612-12 74-612-12
L3 74-031-22 74-031-22 74-032-22 74-032-22
L3/hook 74-331-10 74-431-10 74-332-10 74-432-10
L4-5 74-641-22 74-641-22 74-642-22 74-642-22
L4-5/hook 74-341-10 74-441-10 74-342-10 74-442-10
Vertical Slot - Maxillary Arch Reference Number

.018" .022"
Tooth R L R L
U1 74-311-32 74-311-32 74-312-32 74-312-32
U2 74-321-22 74-321-22 74-322-22 74-322-22
U3/hook 74-131-13 74-231-13 74-132-13 74-232-13
U4-5
U4-5/hook 74-142-13 74-242-13
Vertical Slot - Mandibular Arch Reference Number

.018" .022"
Tooth R L R L
L1-2 74-391-12 74-391-12 74-392-12 74-392-12
L3/hook 74-331-13 74-431-13 74-332-13 74-432-13
L4-5 74-342-20 74-342-20
UR UL
LR LL
54
GAC0001703
1646
8
Actual Size 6
Example 4
MicroArch® Single Wing (in mm)
2
2 4 6 8
Maxillary
Reference Number
U1/twin 14 5 72-111-50 72-211-50 72-112-50 72-212-50
U1/hook 12 5 72-111-10 72-211-10 72-112-10 72-212-10
U2/twin 7 9 72-121-50 72-221-50 72-122-50 72-222-50
U2/hook 8 9 72-121-10 72-221-10 72-122-10 72-222-10
U3/lang (sw) -3 10 72-131-50 72-231-50 72-132-50 72-232-50
U3/hook (sw) -3 10 72-131-51 72-231-51 72-132-51 72-232-51
U4/lewis (sw) -7 0 72-541-50 72-541-50 72-542-50 72-542-50
U4/hook (sw) -7 0 72-541-51 72-541-51 72-542-51 72-542-51
U5/lewis (sw) -7 0 72-551-50 72-551-50 72-552-50 72-552-50
U5/hook (sw) -7 0 72-551-51 72-551-51 72-552-51 72-552-51
U4-5/wide (sw) -7 0 72-541-53 72-541-53
U4-5/hook/wide (sw) -7 0 72-541-54 72-541-54
U4-5/offset base -7 0 72-541-58 72-541-58 72-542-58 72-542-58
U4-5/hook offset base -7 0 72-541-59 72-541-59 72-542-59 72-542-59
Mandibular
Reference Number
L1-2/lewis (sw) -5 0 72-611-50 72-611-50 72-612-50 72-612-50
L1-2/hook (sw) -5 0 72-611-51 72-611-51 72-612-51 72-612-51
L1-2/hook (sw) -1 0 72-611-54 72-611-54
L1-2 (sw) -5 0 72-611-36 72-611-36
L1-2 (sw) -1 0 72-611-53 72-611-53 72-612-53 72-612-53
L2/hook (sw) -1 6 72-321-54 72-421-54
L3/lang (sw) -7 6 72-331-50 72-431-50 72-332-50 72-432-50
L3/hook (sw) -7 6 72-331-51 72-431-51 72-332-51 72-432-51
L3 (sw) 0 6 72-331-52 72-431-52
L4/lewis (sw) -11 0 72-641-50 72-641-50 72-642-50 72-642-50
L4/offset base -11 0 72-641-58 72-641-58 72-642-58 72-642-58
L4/hook (sw) -11 0 72-641-51 72-641-51 72-642-51 72-642-51
L4/hook -11 0 72-641-59 72-641-59 72-642-59 72-642-59
L5/lewis (sw) -17 0 72-651-50 72-651-50 72-652-50 72-652-50
L5/offset base -17 0 72-651-58 72-651-58 72-652-58 72-652-58
L5/hook (sw) -17 0 72-651-51 72-651-51 72-652-51 72-652-51
L5/hook offset base (sw) -17 0 72-651-59 72-651-59 72-652-59 72-652-59
UR UL
LR LL
55
GAC0001704
1647
Brackets
Traditional
MicroArch® Swing
The SWING System, varies the bracket specifications based on the diagnosis for treatment. SWING System brackets are available
in the .022" slot only.
SWING Class 1
Maxillary Arch
Reference Number
U1 14 5 0 72-112-84 72-212-84
U2 8 9 0 72-122-84 72-222-84
U2/hook 8 9 0 72-122-85 72-222-85
U3 0 10 0 72-132-84 72-232-84
U3/hook 0 10 0 72-132-85 72-232-85
U4 -7 0 0 72-542-60 72-542-60
U5 -7 0 0 72-552-60 72-552-60
Mandibular Arch
Reference Number
L1-2 -1 2 0 72-312-84 72-412-84
L1-2/hook -1 2 0 72-312-85 72-412-85
L3 -11 7 0 72-332-84 72-432-84
L3/hook -11 7 0 72-332-85 72-432-85
L4 -11 0 0 72-642-60 72-642-60
L5 -17 0 0 72-352-60 72-452-60
SWING Class 2
Maxillary Arch
Reference Number
U1 7 7 0 72-112-86 72-212-86
U2 3 11 0 72-122-86 72-222-86
U2/hook 3 11 0 72-122-87 72-222-87
U3 -7 7 0 72-132-86 72-232-86
U3/hook -7 7 0 72-132-87 72-232-87
U4 -7 0 0 72-542-60 72-542-60
U5 -7 0 0 72-552-60 72-552-60
Mandibular Arch
Reference Number
L1-2 4 0 0 72-312-86 72-412-86
L1-2/hook 4 0 0 72-312-87 72-412-87
L3 -7 11 0 72-332-86 72-432-86
L3/hook -7 11 0 72-332-87 72-432-87
L4 -11 0 0 72-642-60 72-642-60
L5 -17 0 0 72-652-62 72-652-62
56
GAC0001705
1648
8
Actual Size 6
Example 4
2
(in mm) 2 4 6 8
SWING Class 3
Maxillary Arch
Reference Number
U1 21 3 0 72-112-88 72-212-88
U2 13 7 0 72-122-88 72-222-88
U2/hook 13 13 0 72-122-89 72-222-89
U3 7 13 0 72-132-88 72-232-88
U3/hook 7 13 0 72-132-89 72-232-89
U4 -7 0 0 72-542-60 72-542-60
U5 -7 0 0 72-552-60 72-552-60
Mandibular Arch
Reference Number
L1-2 -10 4 0 72-312-88 72-412-88
L1-2/hook -10 4 0 72-312-89 72-412-89
L3 -17 3 0 72-332-88 72-432-88
L3/hook -17 3 0 72-332-89 72-432-89
L4 -11 0 0 72-642-60 72-642-60
L5 -17 -5 0 72-352-64 72-452-64
UR UL
LR LL
57
GAC0001706
1649
Brackets
Traditional
MicroArch® Options
Maxillary Arch
Reference Number
U1 22 5 0 72-112-30 72-212-30
U2 8 9 0 72-121-80 72-221-80
U2 17 9 0 72-122-30 72-222-30
U2/hook 17 9 0 72-122-31 72-222-31
U2 13 9 0 72-121-01 72-221-01 72-122-01 72-222-01
U2/hook 13 9 0 72-121-11 72-221-11 72-122-11 72-222-11
U3/extra wide 2 10 4M 72-131-05 72-231-05
U3/hook/extra wide 2 10 4M 72-131-15 72-231-15 72-132-15 72-232-15
U3/mes hook 2 10 4M 72-131-17 72-231-17 72-132-17 72-232-17
U3 0 7 4M 72-131-01 72-231-01 72-132-01 72-232-01
U3/hook 0 7 4M 72-131-11 72-231-11 72-132-11 72-232-11
U3/tw/hook -2 10 0 72-131-56 72-231-56 72-132-56 72-232-56
U3/hook -7 5 0 72-132-16 72-232-16
Mandibular Arch
Reference Number
L1 -5 0 0 72-611-02 72-611-02 72-612-02 72-612-02
L1-2 -1 2 0 72-311-05 72-411-05 72-312-05 72-412-05
L1-2 -10 0 0 72-611-05 72-611-05 72-612-05 72-612-05
L1/hook -10 2 0 72-312-66 72-412-66
L3/hook -7 10 0 72-332-63 72-432-63
L3/twin wing -7 6 0 72-331-55 72-431-55
L3/tw/hook -7 6 0 72-331-56 72-431-56 72-332-56 72-432-56
L4 -11 0 0 72-641-07 72-641-07 72-642-07 72-642-07
L4/hook -11 0 0 72-341-17 72-441-17 72-342-17 72-442-17
L4 -11 -4 0 72-341-68 72-441-68 72-342-68 72-442-68
L4 -17 0 0 72-641-80 72-641-80 72-642-80 72-642-80
L4/hook -17 0 0 72-341-81 72-441-81 72-342-81 72-442-81
L4 -7 0 0 72-642-06 72-642-06
L4-5 -7 0 0 72-642-83 72-642-83
L5 -17 0 0 72-651-07 72-651-07 72-652-07 72-652-07
L5/hook -17 0 0 72-351-17 72-451-17 72-352-17 72-452-17
L5 -17 -6 0 72-351-68 72-451-68 72-352-68 72-452-68
L5 -22 0 0 72-652-80 72-652-80
L5/hook -22 0 0 72-351-81 72-451-81 72-352-81 72-452-81
58
GAC0001707
1650
8
Actual Size 6
Example 4
2
(in mm) 2 4 6 8
MicroArch® Weldable
RT Rx*
Maxillary Arch
Reference Number
U3 2 10 73-131-00 73-231-00 73-132-00 73-232-00
U3/hook 2 10 73-131-10 73-132-10 73-232-10
U4/hook -7 0 73-141-10 73-241-10 73-142-10 73-242-10
U4 -7 0 73-541-00 73-541-00 73-542-00 73-542-00
U4/hook -7 0 73-541-54 73-541-54
U5/hook -7 0 73-152-10 73-252-10
U5 -7 0 73-551-00 73-551-00
Mandibular Arch
L3 -11 7 73-331-00 73-431-00
L3/hook -11 7 73-331-10 73-431-10 73-332-10 73-432-10
L4/hook -17 0 73-341-10 73-441-10 73-342-10 73-442-10
L4 -17 0 73-641-00 73-641-00 73-642-00 73-642-00
L5/hook -22 0 73-351-10 73-451-10 73-352-10 73-452-10
L5 -22 0 73-651-00 73-651-00 73-652-00 73-652-00
Vertical Slot
Maxillary Arch
Reference Number
U3 -2 7 73-131-03 73-231-03 73-132-03 73-232-03
U3/hook -2 7 73-131-13 73-231-13 73-132-13 73-232-13
U3/hook 0 7 73-132-14 73-232-14
U4/hook -7 0 73-141-13 73-241-13 73-142-13 73-242-13
U4 -7 0 73-541-03 73-541-03 73-542-03 73-542-03
Mandibular Arch
L3 -5 7 73-331-03 73-431-03 73-332-03 73-432-03
L3/hook -5 7 73-331-13 73-431-13 73-332-13 73-432-13
L4/hook -11 0 73-341-13 73-441-13
L4 -11 0 73-641-03 73-641-03 73-642-03 73-642-03
L5/hook -17 0 73-351-13 73-451-13 73-352-13 73-452-13
L5 -17 0 73-651-03 73-651-03 73-652-03 73-652-03
Bi-Dimensional
Maxillary Arch
Reference Number
U4 0 0 73-542-04 73-542-04
U4/hook 0 0 73-142-14 73-242-14
Mandibular Arch
L3/hook 0 5 73-332-14 73-432-14
L4 0 0 73-642-04 73-642-04
L4/hook 0 0 73-342-14 73-442-14
Roth® is a registered trademark of Roth Licensing LLC. 59
GAC0001708
1651
Brackets
Traditional
OmniArch and MicroArch Accessories

OmniArch Consultation Model TYP77-777-77
MicroArch Consultation Model TYP72-777-77
OmniArch - MicroArch Doctor Brochure 120-777-01
OmniArch MicroArch Patient Brochure - pack of 25 120-072-01
Consultation MicroArch After Care Card - pack of 25 120-072-02
Model
OmniArch Patient Brochure - pack of 25 120-077-01
OmniArch After Care Card - pack of 25 120-077-02
MicroArch
Consultation
Model
120-777-01 120-077-01 120-072-01
120-077-02 120-072-02
60
GAC0001709
1652
8
Actual Size 6
Example 4
2
(in mm) 2 4 6 8
Standard Edgewise
GAC's Standard Edgewise brackets are available both bondable and weldable. We offer single, twin, "T" slot, double vertical slot,
Lewis and deep slot designs. In addition, many of our brackets are available with offset, wedged shaped, or low profile alternatives.
Standard “T” Slot Double Vertical Lewis
Standard Low Profile Offset Tie-wing
61
GAC0001710
1653
Brackets
Traditional
Standard Edgewise - Twin Edgewise

Width Reference Number
Maxillary Central mm .018" .022"
Extra Wide Twin 4.0 37-211-42 37-212-42
Wide Twin 3.2 37-211-32 37-212-32
Medium Twin 2.6 37-212-22
37-212-32
Lateral
Wide Twin 3.2 37-221-32 37-222-32
Medium Twin 2.6 37-221-22 37-222-22
37-222-22
Upper/Lower Cuspid
Wide Twin 3.2 37-231-32 37-232-32
Medium Twin 2.6 37-231-22 37-232-22
Narrow Twin 2.1 37-231-12 37-232-12
Narrow, Low Profile 37-231-10 37-232-10
37-232-22 Medium, Low Profile 37-231-20 37-232-20
Upper/Lower Cuspid With Hook

Wide Post, UR/LL 37-234-33 37-236-33
Wide Post, UL/LR 37-235-33 37-237-33
37-236-33
Upper Bicuspid
Offset Wing, Wide 3.2 37-251-31 37-252-31
Offset Wing, Medium 2.6 37-251-21 37-252-21
Offset Wing, Narrow 2.1 37-251-11 37-252-11
Narrow 37-241-12 37-242-12
37-252-21 Medium 37-241-22 37-242-22
Wide 37-242-32
Upper/ Lower Molar

Extra Wide 4.0 37-281-42 37-282-42
Wide 3.2 37-281-32 37-282-32
37-281-42
Lower Anterior
Low Profile Narrow Twin 2.1 37-261-10 37-262-10
Low Profile Medium Twin 2.6 37-261-20 37-262-20
Standard Narrow Twin 2.1 37-291-12 37-292-12
Standard Medium Twin 2.6 37-291-22 37-292-22
37-261-10
Lower Bicuspid
Low Profile, Wide 3.2 37-251-30
Low Profile, Medium 2.6 37-251-20 37-252-20
Low Profile, Medium, Kidney Base 2.6 37-241-21 37-242-21
Low Profile, Narrow 2.1 37-251-10 37-252-10
37-252-20
62
GAC0001711
1654
8
Actual Size 6
Example 4
2
(in mm) 2 4 6 8
Standard Edgewise - 018” x 018” Vertical Slot

Maxillary Central mm .018" .022"
Extra Wide Twin 4.0 37-311-42 37-312-42
Wide Twin 3.2 37-311-32 37-312-32 37-312-32
Maxillary Lateral
Medium Twin 2.6 37-321-22 37-322-22
37-322-22
Upper/Lower Cuspid
Wide Twin 3.2 37-331-32 37-332-32
Medium Twin 2.6 37-331-22 37-332-22 37-332-22
Upper/Lower Cuspid With Hook

Wide Post, UR 37-336-32
Wide Post, UL 37-337-32
37-337-32
Upper Bicuspid
Offset Wing, Medium Twin 2.6 37-351-21 37-352-21
37-352-21
Upper Cuspid With Hook
Wide Post, Upper Right 37-346-32 image
Wide Post, Upper Left 37-347-32 not available
Upper/ Lower Molar

Extra Wide 4.0 37-381-42 37-382-42
Wide 3.2 37-381-32 37-382-32
37-381-32
Lower Anterior
Low Profile, Medium Twin 2.6 37-361-20 37-392-20
Low Profile, Narrow Twin 2.1 37-361-10 37-362-10
Standard, Medium Twin 2.6 37-391-22 37-392-22
Standard, Narrow Twin 2.1 37-391-12 37-392-12 37-362-10
Lower Bicuspid
Low Profile, Medium Twin 2.6 37-351-20 37-352-20
Standard, Medium Twin 2.6 37-341-22 37-342-22
Standard, Wide Twin 3.2 37-341-32 37-342-32
Standard, Narrow Twin 37-341-12 37-342-12 37-352-20
63
GAC0001712
1655
Brackets
Traditional
Standard Edgewise - Single Edgewise

Central mm .018" .022"
Extra Wide 2.6 37-112-42
Wide 2.0 37-111-32 37-112-32
37-112-42
Lateral
Extra Wide 2.6 37-122-42
Wide 2.0 37-121-32 37-122-32
37-122-32
Cuspid
Extra Wide 2.6 37-132-42
Wide 2.0 37-131-32 37-132-32
Narrow 1.3 37-131-12
37-132-32
Bicuspid
Wide, Low Profile 2.0 37-151-30 37-152-30
Narrow, Standard 1.3 37-141-12 37-142-12
Wide, Standard 2.0 37-141-32 37-142-32
37-142-32
Lower Anterior
Trapezoid 1.3 37-161-10 37-162-10
Narrow, Standard 1.3 37-191-12 37-192-12
Wide, Low Profile 2.0 37-161-30 37-162-30
Extra Wide, Standard 2.6 37-192-42
37-162-10
64
GAC0001713
1656
8
Actual Size 6
Example 4
2
(in mm) 2 4 6 8
Standard Edgewise - 018” x 018” Vertical Slot

Maxillary mm .018" .022"
Central/Lateral Medium 5.0 37-521-22 37-522-22
37-521-22
Upper/Lower Cuspid
Medium Lewis 5.0 37-531-22 37-532-22
Medium Lang 6.5 37-531-24
37-531-22
Upper/Lower Bicuspid
Offset Wing, Medium 5.0 37-541-21 37-542-21
Standard, Medium 5.0 37-541-22 37-542-22
37-542-21
Lower Anterior
Standard, Narrow 4.0 37-591-12 37-592-12
Standard, Medium 5.0 37-591-22
37-561-10
Reference Number
Standard Edgewise- Accupoint .030"
Flat U/L 1-2 37-090-89
Curved 3-4-5 37-030-89
37-090-89
65
GAC0001714
1657
Brackets
Traditional
Standard Edgewise - V-Slot Lewis

image Maxillary Central mm .018" .022"
not available Narrow 4.0 37-691-12 37-692-12
Upper / Lower Cuspid

image
not available Medium 5.0 37-631-22 37-632-22
Narrow 4.0 37-631-12 37-632-12
Upper / Lower Bicuspid

Medium 5.0 37-641-22 37-642-22
Narrow 4.0 37-641-12 37-642-12
Lower Bicuspid Anterior

Standard, Narrow 4.0 37-691-12 37-692-12
Twin Edgewise-Double Vertical Slot (.040'' x .020'')

image Upper Central mm .018" .022"
not available Single, Wide 2.3 37-812-32
Upper/Lower Cuspid
Standard, Medium 2.6 37-431-22 37-432-22
Single, Wide 2.3 37-832-32
Standard, Wide 3.2 37-431-32 37-432-32
Upper/Lower Bicuspid
Standard, Medium 2.6 37-441-22 37-442-22
Single, Wide 2.3 37-842-32
Lower Anterior
Standard, Narrow 2.1 37-491-12 37-492-12
66
GAC0001715
1658
8
Actual Size 6
Example 4
2
(in mm)
Standard Edgewise - V-Slot Lewis 2 4 6 8
Reference Number
Standard Flat .018" .022"
Single, Wide, Low Profile 05-192-30
Single, Narrow 05-111-12 05-112-12
Single, Wide 05-112-32
Twin, Narrow 05-211-12 05-212-12
Twin, Medium 05-211-22 05-212-22
Twin, Wide 05-211-32P 05-212-32
Twin, Extra Wide 05-211-42 05-212-42
Standard Curved
Narrow, Twin 05-231-12 05-232-12
Medium, Twin 05-231-22 05-232-22
Wide, Twin 05-231-32 05-232-32
Single, Extra Wide 05-131-42 05-132-42
Twin, Medium, Offset 05-232-21
Standard V-Slot
Twin, Narrow, Flat Anterior 05-391-12 05-392-12
Twin, Extra Wide, Flat 05-311-42 05-312-42
Twin, Medium, Curved 05-331-22 05-332-22
Twin, Medium, BC, Low Profile, 17°NT 05-342-28
Twin, Medium, BC, Low Profile, 22°NT 05-342-27
Standard Special Upper Bicuspid

Twin, Medium, Offset 05-241-21 05-242-21
Twin, V-Slot, Medium, Offset 05-341-21 05-342-21
Twin, V-Slot, Medium, Offset, 7°NT 05-342-25
Twin, V-Slot, Medium, Offset 05-351-21 05-352-21
Reference Number
Options .022"
Standard, Lewis, Curved, Medium 05-542-22
Offset, Lewis, Curved, Medium 05-542-21
Eruption Appliance
After bonding the hook to an impacted tooth, attach an
elastic thread to the end of the chain. Movement of the
tooth is measured by counting the links of the chain as Eruption Appliance
they become exposed. The low profile of the hook
minimizes irritation. U-Flex

Eruption Appliance 17-000-10
Eruption Appliance, Eyelet 17-001-10
Eruption Appliance, U-FLEX 17-100-50
U-FLEX Loop 30-000-10
67
GAC0001716
1659
Brackets
Traditional Aesthetics
Mystique® MB
Translucent is beautiful.
Mystique® MB has an optimal level of translucency and blends in perfectly with every shade of
enamel. The aesthetics are further complemented by the revolutionary silica slot liner. In fact,
from a distance of only one meter, Mystique® MB is virtually invisible to the naked eye. When it
comes to ceramic brackets, the choice is clear. Mystique® MB.
Unparalleled strength and durability.

Aesthetics are certainly an important aspect of ceramic brackets; the strength and
durability of the brackets themselves is even more critical. Fortunately, Mystique® MB
delivers on all fronts. A thoroughly tested and proven second generation mechanical lock
base system ensures reliable bonding and debonding, while super heated glazing ensures
overall structural integrity.
Debonding made easy.

With a mechanical lock and beveled edges, debonding with the new Mystique® MB
is a breeze. Just remove any excess flash, squeeze at the base/tooth interface and the
bracket pops off.
The Silica Slot difference.

While some ceramic brackets feature a metal slot liner, Mystique® MB is different. A virtually
invisible silica lining takes the place of unsightly metal slots and thus provides a more
aesthetically pleasing bracket with optimal sliding mechanics. The silica slot lining process
results in a true rectangular slot that has uncompromising torque.
It’s her smile… and your reputation. Put your trust in Mystique® MB.
By combining a revolutionary ceramic bracket with a proven mechanical base, Mystique® MB
delivers exceptional aesthetics and incomparable performance. For your patients, it means
confidence in their smile; for you, it means confidence in your reputation.
68
GAC0001717
1660
8
Actual Size 6
Example 4
2
(in mm) 2 4 6 8
Mystique® MB
Color Notation
Color Codes
U1 Blue
U2 Pink
U3 Green
U4-5 Violet
L1-2 Orange
L3 Light Blue
The uniquely molded,

dimpled base surface
assures a consistently
precise 100% mechanical
bond that allows worry
Torque in free bracket removal
Color code ID for easy base design when debonding
bracket identification
The silica treated slot

provides smooth, deeply
recessed edges that
Molded of highly substantially reduce
translucent ceramic, abrasion between the
Mystique® MB brackets archwire and slot Generously undercut
are virtually invisible tie-wings dramatically
improves ligation when
compared to traditional
ceramic bracket
69
GAC0001718
1661
Brackets
Traditional Aesthetic
Mystique® RT Rx* Ovation

Maxillary Arch
Reference Number
U1 12 5 0 110-111-00 110-211-00 110-112-00 110-212-00
U2 8 9 0 110-121-00 110-221-00 110-122-00 110-222-00
U3 -2 13 4M 110-131-00 110-231-00 110-132-00 110-232-00
U3/hook -2 13 4M 110-131-10 110-231-10 110-132-10 110-232-10
U4-5 -7 0 2D 110-141-00 110-241-00 110-142-00 110-242-00
U4-5/hook -7 0 2D 110-141-10 110-241-10 110-142-10 110-242-10
Mandibular Arch
Reference Number
L1-2 -1 2 0 110-311-00 110-411-00 110-312-00 110-412-00
L3 -11 7 2M 110-331-00 110-431-00 110-332-00 110-432-00
L3/hook -11 7 2M 110-331-10 110-431-10 110-332-10 110-432-10
Reference Number
Mystique® MB Kits (brackets only) .018" .022"
RT Rx* 3-3 KIT110-331-00 KIT110-332-00
RT Rx* 3-3CS HK KIT110-331-10 KIT110-332-10
RT Rx* U4-4/L3-3 KIT110-431-00 KIT110-432-00
RT Rx* U4-4/L3-3 CS HK KIT110-431-10 KIT110-432-10
RT Rx* U5-5/L3-3 KIT110-531-00 KIT110-532-00
RT Rx* U5-5/L3-3 CS HK KIT110-531-10 KIT110-532-10
RT Rx* U5-5/L3-3 CS BC HK KIT110-531-11 KIT110-532-11
UR UL
LR LL
70
GAC0001719
1662
8
Actual Size 6
Example 4
2
(in mm) 2 4 6 8
Mystique® Roncone
Maxillary Arch
Reference Number
U1 18 5 0 110-111-90 110-211-90 110-112-90 110-212-90
U2 10 8 0 110-121-90 110-221-90 110-122-90 110-222-90
U2/hook 10 8 0 110-121-91 110-221-91 110-122-91 110-222-91
U3 0 8 2M 110-131-90 110-231-90 110-132-90 110-232-90
U3/hook 0 8 2M 110-131-91 110-231-91 110-132-91 110-232-91
U4-5 -10 4 2D 110-141-90 110-241-90 110-142-90 110-242-90
U4-5/hook -10 4 2D 110-141-91 110-241-91 110-142-91 110-242-91
Mandibular Arch
Reference Number
L1-2 1 0 0 110-611-90 110-611-90 110-612-90 110-612-90
L3 -3 7 2M 110-331-90 110-431-90 110-332-90 110-432-90
L3/hook -3 7 2M 110-331-91 110-431-91 110-332-91 110-432-91
Reference Number
Mystique® MB Kits (brackets only) .022"
Roncone 3-3 KIT110-332-90
Roncone 3-3CS HK KIT110-332-91
Roncone U5-5/L3-3 KIT110-532-90
Roncone U5-5/L3-3 CS HK KIT110-532-91
Roncone U5-5/L3-3 CS BC HK KIT110-532-92
UR UL
LR LL
71
GAC0001720
1663
Brackets
Mystique® MB Accessories
Reference Number
Mystique Adhesive Burs, pack of 5 110-766-40
Mystique Debonding Instrument ODG346RT
Bite Ramps, pack of 10 97-980-00
Mystique® MB Consultation Model TYP110-777-77
Mystique® MB Patient Brochures, pack of 25 120-110-02
Mystique® MB Patient After Care Cards pack of 25 120-110-03
Mystique® MB Debonding Guide 120-110-04
Mystique Debonding
Instrument
72
GAC0001721
1664
8
Actual Size 6
Example 4
2
(in mm) 2 4 6 8
Elation™ MB
The DENTSPLY GAC Commitment to Innovation: Elation™ MB

Newly incorporated into the Elation™ MB design is a durable, high-quality mechanical base. This innovative mechanical base has
been thoroughly tested and proven reliably effective in both bonding and de-bonding procedures. In addition, this design
improvement will eliminate the need for a plastic primer.
Our newest insert flows around the wire, which actually lowers friction, as the wire touches the insert only at four small points at
the polymeric wall. Next, Elation™ MB’s steel translates the torque through the base without the usual distortion or give of plastic
and other polymeric materials. Unlike inserts which only line the slot wall, Elation™ MB’s unique slot is placed within the body to
strengthen the whole bracket, not just the slot. This placement also makes the steel insert harder to see, creating a more
aesthetic appearance. Elation™ MB works effectively with our NeoBond® adhesive; however, you can expect the same level of
effectiveness from any light cure or chemical cure DENTSPLY GAC adhesive. Elation™ MB can be utilized with any archwire. But
for a total aesthetic solution appliance, we recommend GAC High Aesthetic Wires.
Polymeric strength
resists discoloration
Color code ID for easy and erosion
bracket identification
New tested and

proven mechanical
lock base
Nearly invisible
steel insert
Color Notation
Color Codes
UR1 Yellow UL1 Red
UR2 Yellow UL2 Red
U3 Yellow UL3 Red
UR4-5 2 Yellow
L1-2 2 Black
LR Black LL3 Blue
L4 2 Blue
L5 Black
Note: Universal brackets with hooks have no color dots.
73
GAC0001722
1665
Brackets
Elation™ RT Rx* Formula

Maxillary Arch
Reference Number
U1 12 5 0 133-111-60 133-211-60 133-112-60 133-212-60
U2 8 9 0 133-121-60 133-221-60 133-122-60 133-222-60
U3 0 10 4M 133-131-60 133-231-60 133-132-60 133-232-60
U3/hook 0 10 4M 133-131-61 133-231-61 133-132-61 133-232-61
U4-5 -7 0 2D 133-541-60 133-541-60 133-542-60 133-542-60
U4-5/hook -7 0 2D 133-541-61 133-541-61 133-542-61 133-542-61
Mandibular Arch
Reference Number
L1-2 0 0 0 133-611-60 133-611-60 133-612-60 133-612-60
L3 -11 7 1M 133-331-60 133-431-60 133-332-60 133-432-60
L3/hook -11 7 1M 133-331-61 133-431-61 133-332-61 133-432-61
L4 -17 0 4D 133-641-60 133-641-60 133-642-60 133-642-60
L4/hook -17 0 4D 133-641-61 133-641-61 133-642-61 133-642-61
L5 -22 0 4D 133-651-60 133-651-60 133-652-60 133-652-60
L5/hook -22 0 4D 133-651-61 133-651-61 133-652-61 133-652-61
Elation™ RT Rx* Kits (brackets only) .018" .022"

Elation 5-5 CS HK KIT133-551-61 KIT133-552-61
Elation 5-5 CS & BC HK KIT133-551-62 KIT133-552-62
All Elation brackets are sold in packs of 10.
UR UL
LR LL
Elation Accessories

Elation Consultation Model TYP133-777-77
74 Roth® is a registered trademark of Roth Licensing LLC.
GAC0001723
1666

One CA Plaza - Suite 100
Islandia, NY 11749
1-800-645-5530
www.dentsplygac.com
©
2015 DENTSPLY GAC International. All Rights Reserved. 0280-MM-120-000-00 Rev. 03
GAC0001984
1667
Exhibit I
1668
ADR SERVICES" INç.
Roth Licensing, LLC, AÐRS Case No.: 15-3234

a California limited liability company,
AIÆNDED AND RESTA.rED
Claimant, STATES{ENT OF CLAIMS
v.
GAC Internatiofial LLC,

a New York limited liabilit¡t company,
Respondent.
AMENDED EXHIBIT A
This Amended and Rostated Statement of Claims ¡eplaces Exhibit A to the
Arbitration Demand in its entirety. Claimant Roth Licensing, LLC alle'ges the following
against respondent GAC International, i LC ("GACi'):
1. Dr. Ronald Roth was a well-known practitioner in the fîeid of orthodontics
who pioneered aphilosophy of orthodontic ffeatment in the arêa of functional occlusion,
The Roth name has been feafr-rred and used in connection with the advertising and sale of
a wide variety of orthodontic products whose manufacture and distribution in the United
Statês has been approved and authorized since at least as early as I,99'7,first by Dr. Roth
ønd late:r, after his death, by his successors-in-interest (initialiy' Adriane Roth as the
Trustee of tn'e Roth Family Trust, and now, Roth Licensing, LLC (together, hereinafter
referred to as, "Roth Lieensing").).
ROTH0004468
1669
2. Roth Lieensing has obt¿ined a number of federal trademark registrations to
protect the value of its well,knqwn ROTII@ trademark in connection with ortlodontic
products. Roth owrrs a nuffiber of U.S. federal trademark registrations duly registered
with the'United States Pa-tent and Trademark Office, including the mark, ROTH@, Reg.
No. 3,733;539, fof orthodontic appliances.
3. On June I ,2003,and again on May 1,2004,Dr. Roth and GAC entered
into a lie'ensing agreenìent províding,for GAC!s ri$t to use Dr. Rothls n,ame, likeness,
and endorsement (the "Roth Rights") in exchange for compensation.
4. Dr. Roth passed away on January 24,2005, at which time the 2004
lieensing agreement automatically terminated. GAC continued to use the Roth Rig-hts
after termination of the 2004 licensing agreement without paying compensation to Roth's
suecessors, specifically his widow Adriane Roth.
5. After a series of negotiations, on May 3, 2007, Roth Licensing (by its
predecessor Adriane Roth as Trustee) and GAC entered into a Settlement and Release
Agreement (attached as Exhibit 1,), which provided that GAC would make payment fôr
prior use and execute a continuing license agreement for five years, as set forth in the
concurrently executed 20,t7 Liaense,A.greement.
6. The 2007 License Agreement (attached as Bxhibit 2) was effective
January 7, 2007 and ran through December 31, 2011 . It prorided for a xed fee per year
for use of the Roth Rights. GAC and Roth Licensing also entered into a Trademark
Assignment to confirm Roth License (attached as Exhibit 3). Pursuant to the Settlernent
and Release Agreement and Trademark Assignment, GAC assigned to Rothits right,
-2-
ROTH0004469
1670
title, and interest in all of the trademarks identified in Scheduie I of the Trademark
Assignment.
7. Upon the expiration of the 2007 License Agreement on
December 37,201i, GAC againsontinued to use Dr. Roth's name, likeness, and
e¡dofsement without an agfeement permitting such use. Efforts by Roth Licensing to
renew or extend the License Agreement were unsuccessful.
8. In AugqsI207?., under the tçrms of the 2CI:0r7 License Agreement, Roth
Licensing filed an arbihation demand with ADR Services against GAC for trademark
infringement under the Lanham Act, comrnon law infringement of the right of publicity,
and violation of Califomia Civil Code section 3344.1.
9. To s,ettle claims and to provide for a continuing lieensing anangement, on
March 19,2013, Roth Licensing and GAC entered into a ,license agreement (attached
hereto as Exhibit 4), effective retroactively IÌom January 1 ,2012 for three years through
December 31 ,2014 (T 3.1), which similarly provided that GAC would pay a fixed fee,
per year to Roth ticensing (the "2012 License Agreement").
10. Efforts to renew or extend tlre License Agreement were, again,
unsuccêssful. The 2ll2License Agreement expired on December 31, 2AI4. TheZßIZ
License Agreement required GAC within 90 days to "cease any and all use of the Roth
Rights, including marks that include the word ROTH, and deliver tô Roth Licensing or
destroy any and all marketing, advertising, or promotional materials bearing the Roth
Marks or otherwise incorporating the Roth Rights." (Ex. D,lT 3.4.)
^
LJ-
ROTH0004470
1671
1 1. On April 15,2015, Roth Licensing sent a ietter (attached as ExhibÍt 5) to
GAC to follow up on tþ9 status of thç phase'out of use by GAC of theROTH marks,
rroting GAC's continued use of ROTH and replacement of ROTH with the term "RT" ot'
"RT Rx." Roth Licensing noted that these changes were in bad faith, constituted ongoing
uSe of the Roth RightS, ànd demanded that GAC ceaSe and desist using the Roth Rights.
This.letter placed GAC on notioe that continuod use of the Roth Rights would be deemed
â willfuI infringemsnl sf Rothts pro)prjetary rights.
12. On Apnl 22,2015, GAC sent a letter to Roth Licensing denying the
allegations made by Roth Licensing, and refusing to cease and desist use of the "RT'
designation (attached as Exhibiú 6).
13. On information and belief, GAC has used the "RT Rx" mark beyond the
license period on at leâstthe following product lines;1
a. Balancc@ brackets
b. Cryscera@brackets
c. Elation@ brackets
d. Facebows
e. Generus@ brackets
f. In-Ovation@ C brackets
g. In-Ovation@ Mini brackets
h. In-Ovation@ R br:ackets
This list does not include each and every product line upon which GAC uses the "RT Rx" mark. This list is
subjeet to amendmentpursuant toRoth Licensing's forthcoming requests for production to GA,C which
will seek an identifrcation of all products bearing or promoted rurder the "RT Rx" nrark.
-4-
ROTH0004471
1672
i. In-Ovation@ SL brackets
j,. Mandrbular busoal tubes
k. Maxillary buccal tr¡bes
l. Mic.roArch@brackets
m. Mïni0vation@ brackets
n. Mystique-ÔMB braçke s,
o. OmniArchobrackets
p. ÖrnniArih@ Plus brackets
q. Ovations brackets
r. Ovation@ C brackets
s. Resstrve@ Ceramis brackets
14. On April 27,2A15, GACìgnored the 'arbitration provision ínthe2Al2
License Agreement. and instead filed suit in the Llnited States District Courf for the
Eastern District of New York againsi Roth Lioensing. Specifrcally, the arbi:tration
provision re,q¡rires that:
any claim or Çontroversy arising out of or relating to this

Lieense Agreer-nent shall be settled by arbitration through
ADR Sewices, Inc. ('iADR Services") in San Francisço"
Califomia.
20L2License Agreement,1T4.5. The 2AI2License Agreement contains rights and
obligations that extend beyond the terrn of the Agreernent. See, e.g., fl 2.2 (requìring
GAC to provide evidence of use atanytime during the License,,or thereafter); 12.3
(prohibiting GAC from contesting the Roth Rights çither during or after the'term of the
-5-
ROTH0004472
1673
License); and u 3-.4 (after termination, çease use of the Roth Rights and delivery or
destroy markçting materials).
15. GAC has violatedtheZAl2 License Agreement by tailing to comply with
its obligations u,pon temrination of the Agreement, including by continuing to use the
Roth Rights without Roth Lloensingls pêmrission. Sucrh actions c0nstiû1te a violation of
Roth's right ofpullicity. GAC,has violated federal and common law trademark law by
deceptively using Roth's trademarks an'd by otherw.is,e uSing the Roth name in a wây that
falsely conveys the impression that GAC's products have been licensed, approved and/or
endorsed by Roth.
First Cause of Açtion
Breach of Contract
16. Roth realleges andrinöoryorates by reference herein the allegations set forth
above.
17, The tefins of the 20L2 License Agreement constitute a written contract
between Roth Licensing, on the one hand, and GAC, on the other hand . The 2012
License Agreement inçludes, in addition to the terms set forth above, an implied duty of
good faith and fair dealing.
18. At all relevant times, Roth Lioensing performed each of its obligations
under the 2072 License Agreement.
19. GAC breached the terms of the 2012 License Agreement and/or the implied
covenant of good faith and fair dealing by failing to "cease any and all use of the Roth
Rights . . . and deliver to Licensor or destroy any and all marketing, advertising or
-6-
ROTH0004473
1674
promotional matcrials bearing the Roth Marks or otherwise incorporating the Roth
Righ{s.' I3.4.
20. Roth Licensing has been damaged and continues to be damaged by this
conduct in an amount subject to proof.
Second. Causc'of Action
Trademark Infringement Under TheLanham Act ând C,ommon Law
21. Roth l-ieensingrrealleges and incorporates bry reference herein the
allegations set forth abovo.
22. GAC has used in commerce, without Roth Licerrsing's oonsent, marks that
are identical to or sCI resemble Roth Licensing's tradernarks that they are likely to cause
confusion w-ith respect to the source and origin of GAC's products and bu,siness and
likely to cause confusion sr mistake and to deeeive purchasers as to the,a-ffiliation,
connection, or assooiation of GAC with Roth Licensing and/or the sale of their products.
23;. An infonnâtion and belief, at the time that GAC eontinued use of Roth
Licensing's ffademarks after expiration of the 2072L,tcense Agreement, GAC knew of
Roth Lioensingis prior adoption, ownership, and use of the trademarks, and knew of the
valuable goodwill and reputation acquired by them.
24. GAC's acts constitute an infringement of Roth Licensing's trademarks in
violation of the Lanham Act, 15 U.S.C. $ 1114 and the common law.
25. As.a direct and proximate result of GAC's wrongful acts, Roth Licensing
has suffeted and oontinues to suffer damage to its business repulation ând goodwill.
GAC will continue, unless restrained, to use marks that are identical or confusingly
-7-
ROTH0004474
1675
similar to Roth Licensing's trademarks and will cause irreparable damage to Roth
Licensing. Roth Lice-nsing has no adequate remedy atlaw. Roth Licensing is entitled to
an injunction restrâining GAC, its offrcers, agertts and employees, and all persons acting
in conceft with G,A.C, frorn engaging in ûlrther aots of trademark infringemenl.
26. Roth Licensing iS also entitlêd to fecover from GAC the actual dam4ges it
sustained as a result of GAC's wrongful acts. Roth Licensing is presently unable to
aScertain the full :extent of the rnonelary damages it has suffered.by reâson.of GAC!s acts
of trademark infringement.
27. Roth Licensing is further entitled to recover frorn GAC the gains, profits,
and advantages GAC n-as obtained as a result of its wrongful acts. Roth Licensing is
presently unable to ascertain the full extent of the gains, profits, and advantages GAC has
realizadby rêason of,its acts, of tradernark infringernent..
28. Because of the willful nature of GAC's wrongful acts, Roth Licensing is
entitled to an award of treble damages under 15 U.S.C. $ 1117 and an award of prrnitive
damages under the common law.
Third Cause of Action
Corn.mon Law InfrÍngement Of Right Of Publicily
29. Roth Licensing realleges and incorporates by reference herein the
allegations set forth above.
30. Roth Licensing has the exclusive rightto the commercial use of Dr, Roth's
name, likeness, endorsemento and related trademark rights.
-8-
ROTH0004475
1676
31. GAC has willfully misappropriated Roth Licensingls exchrsive right to use
Dr. Roth's ûame, likeness, endorsement, and rel.ated hademark rights without any
authorization from Roth Licensing and continues to do so in conlection with theil use of
Dr. Rotlt's name'ts commercially endorse GAC's produets f,or profit.
32. Roth Licensing iS entitlêd to recover frpm GAC the damages lt has
sustained and will sustain as a result of GAC's wrongful conduct as alleged herein. Roth
Licensing is ftrther entitled to'rêcover from GAC the gains, p.féfrts,,and advantages fhat
GAC has, obtainedas a result of such wrongful conduct. Roth Licensing is presently
unable to asoertain the fuI1 extent of the gains, profits, and advantages GAC has realized
liy reason of the wrongful conduct described herein.
Fourth Cause of Action
Viol¿tion of California Civil Code Section 3344,1
33. Roth Licensing realleges and incorporates by reference herein the
allegations set forth above.
34. Roth Lioensing has the exclusi:vê right to the cornmercial use of Dr. Roth's
name, photograph, and likeness.
35. Roth Licensing's exclusive right to the commercial use of Dr. Roth's name,
photograph, and likeness was recordçd with the California Secretary of State on
August 21,20A6.
36. Dr. Roth died in 2005 and all of the actions by GAC complained of herein
occurred with 70 years of his death.
-9-
ROTH0004476
1677
3'7. Atthe time of hjs death and since then, Dr. Roth's nalre, photograph, and
likenes.s had and has continued to have commercial value.
38. GAC, without Roth Licensingts prior consent, have viola.ted Roth
tioensingis exclusive right to make use of Dr. Roth's name, photograph, and lìkeness by
uSing the Roth name,En a¡d aftêr January 1,2A15 to çommercially endorse pro-duotS
without pemissions and, indeed, over Rothls express dernand that GAC cease and desist
such use.
39. GAC's conduct violates California Civil Code Section 3344.1.
40. Roth Licensing is enJitled to recover from GAC the damages it has
sustained and will sustain as a result of GAC's wrongful conduct as alleged herein. Roth
Licensing is further errti-tled to recover frorn GAC the gains, pro:fits and advantages that
GAC has obtained as a result of such wrongful conduct. Roth Licensing is further
entitled to an award of punitive damages. Roth Licensing at present is unable to ascertain
the rfull extent of its damages, 'or the extent of the gains, profits, and advantages that GAC
has obtained by reason of the wrongful conduct described herein.
Claim or Relief Soueht
An injunction barring GAC from using Roth Licensing's narne, likeness,
endorsement, tradgmarks, and marks confusingly similar thereto, such "RT" and "RT
Rx"; darnages according to proof at arbitration; damages for disgorgement of GACrs
unjust enrichment caused by GAC's trademark infringement and use of Roth Licensing's
right of publicity; exemplary damages; attorneys'fees; arbitration costs; and interest.
-10-
ROTH0004477
1678
D-ated: August LZ,'20T6
Rcsp eetffrþ :subnlitted
S ITE.PP.ARD' N{U,.LLIN, RI CHTEI & HATVÍ PTON,LLP
Byi ßl gr¡an DaueÍwr,

B¡an'Nd, Þ.aueftçr
G,azal Ï, Po,ur."M'bçqzi
'65O T:öilt{l ebnfer.Þrive; 4h Fl,osr
,Oosna. ivfos,¿, Califomia'926?,6;1:9.93,
7:14-5I3.,r$100,
$tlorneys for ül,øtnønt:
''.11-
RCIrHd0ö447d
1679
Exhibit J
1680
From: Brian Dauoher

Sent: Tuesday, January 17 ,2017 3:22:39 PM
To: 'Emanuel Vlhsserman'
cc: Gazal Pour4/oezzi
SubJect: Rolh Examination Outl¡ne
Attåchments: 480595712_1.docx
Hi Dr. W
As we have discussed, here is a draft examination outline for your testimony at the upcoming arbitrat¡on heari ng in 5F on February 6.
For some questiÕns, I have included ânswers based upon our discussions and your deposition testimony.
I do not wish to dictâte your answers, I just want to be able to advânce our discussions, by show¡ng:
(a) my current understanding ofyour views; and

(b) the type of response ¡n terms of what typê of ¡nformation we are seeking.
As discussed, because you are our w¡tness, I have a duty to ask you more open-ended and non-leading questions.
That takes some practice and work âhead oft¡me.
Take a look at th¡s outline, perhâps mâke some notes, then let's discuss.
I am available for instãnce virtually ãnytime tomorrow or TH at your convenience if either might work for you, thanks,
Br¡an.
CONFIDENTIAL ROTHoo1 1453

1681
Wasserman Trial Examination Outline
Good morning Dr. Wasserman
Can you give us your education background?
And do you hold any professional licenses?
What licenses
Do you need to have a license to serve orthodontic patients in CA?
So you have practiced as an orthodontist?
For how long
Where has your practice been located
When did you begin working in Beverly Hills
Did you start your practice with another orthodontist?
And did you eventually take over his practice?

'When
did he retire?
And so, you probably saw your share of famous patients is that right?
Are you still practicing?
So you have been at it for _ years?
Approximately how many patients have you treated during that time?
ln addition to your private practice, have you taught any aspect oforthodontics?
For how many years?
Where?
So you commuted to Harvard for that purpose?
How is it that you came to teach at Harvard?
CONFIDENTIAL ROTHoo1 1454

1682
During your time as a practicing and teaching orthodontist, did you apply the teachings of Dr
Roth? (Yes - I used his teachings in my practice, and taught them at Harvard)
Why did you use his methods?
For how long have you been using his methods?
How did you come to learn about Dr. Roth's methods?
Can you give us a sense of Dr. Roth's contributions to the field of orthodontics
Historical methods - bent wire
Andrews - straight wire, but impractical due to numerous use cases

Roth reflrned that into a formulation that would work for majority of patients
When did Roth first begin to teach his ideas to other orthodontists?
And did Dr. Roth's formulations evolve over time?
How did that evolution occur?
Did you help Dr. Roth develop his methods?
How?
Participating in his study group
What is a study group?
How often would it meet?
When did you first join this group?
How did it come to pass that you joined his study group?
For how many years did the group meet?
For about 20 years, mid 80s to just prior to his passing in 2005
And what function did the study group serve?
Gave continuous data feedback to Dr. Roth
CONFIDENTIAL ROTH0011455
1683
Which he then took and refined into his prescription
Can you describe his basic theory?
Are the Roth methods still influential in orthodontics today?
Yes
Why do you think so?
Still the best results, as he says, goal directed, measurable, efficient, and stable
REFER EX JCO ARTICLE
Familiar with Journal of Clinical Orthodontics?
Who publishes this?
When is this from?
And what does this tell us?
Roth is still the best known specific method
In your view is there any better method available than Roth?
There is not.
Why do you hold that view?
What has been your personal experience in applying the Roth methods?
Amazingresults, taking patients where you would not know where to begin
Apply Roth methods, and you end up in a stable predictable and terrific result
REFER EX USE CASES

-
Let's take a look at some of your cases, three of them here
Can you walk us through these
Including the challenges you face at the outset
What method was applied
CONFIDENTIAL ROTHO01 1456

1684
And what results were achieved
What was Dr. Roth's reputation among orthodontists?
Explain that he was an upstart, iconoclast, change agent
So there was some resistance, but results were unassailable
How did Dr. Roth's methods gain popularity
Dr. Roth himself traveled the world to teach it
Not just in US, but in Japan, South America, Europe
Formed an institute with Dr. Williams
He put on conferences in conjunction with GAC to teach these methods
Does everyone use the Roth methods?
No
Why not
Many competing methods, just that results are not as good
Everyone wants to name a method, few do
Some people refer to Dr. Roth's work as the Roth prescription is that right?
Prior to the time that Dr. Roth advanced his work, was it common to use the name of the
orthodontist in relation to a particular method?
No that started with Dr. Roth.
Is Dr Andrews still practicing?
Are products still sold referencing his name? No
Did he have any relationship to Dr. Roth
What?
He became Dr. Roth's student
CONFIDENTIAL ROTHoO1 1457

1685
Are there other orthodontists practicing today who have similar levels of influence to Dr. Roth?
Not in my opinion
Dr. Roth passed away in 2005?
SHOW ARTICLES ABOUT HIM WI{EN HE PASSED
SCHULTZ
In the past l0 years, how has his death aff'ected the use of his methods?
Well he's not out there, so there's not as much teaching as he used to do
but his methods have survived
REFEREX ONDR. ROTH

-RECENTBOOK
Dr. Grardeaux
Is this your copy?
What method is taught in this book?
The Roth method
When was it published
2OI4I THINK CHECK
Let's focus on the way that orthodontists implement Dr. Roth's teachings.
Can you tell us what are the basic types of products do you use in treating a patient?
Brackets, wires, glue, LISt
What is the basic purpose of each?
What type of brackets do you use?
Roth Innovation brackets
What company sells these brackets?
GAC\\
CONFIDENTIAL ROTHOO11458
1686
How long have you been purchasing product from GAC?
Since Dr. Roth started working with them, maybe 20 years ago
Why do you buy products from GAC?
They sell the real ROTFI products, the ones he created
Was GAC the first company Dr Roth worked with?
No
Who was the first company
I believe A Company, it was Dr. Andrews company
Did you buy from A Company when Dr. Roth was working with them?
Yes
And when did you switch?
When Dr. Roth switched
Did you know about GAC before Dr Roth started working for them?
They were afairly small company back then, had heard of but did not buy
(MAYBE 40M Sales, bought in 1998 by Dentsply FYI)
And what was the relationship between Dr. Roth and GAC like?
Very close
They would modify his product in any way he asked
He liked working with GAC
During those 20 years, have you received catalogs from GAC?
Are those mailed to you or delivered by a sales rep?
REFER EX _ OLDER CATALOG
Is this one of those catalogs?
CONFIDENTIAL ROTHoO1 1459

1687
And is the product you currently buy shown in this catalog?
?? CONFIRM - but should be Roth lnnovation
Can you point out where in the cafalogthe Roth products are located?
Very first product?
What page is that on?
REFERPAGE _ SHOWINGDR. R -Who is the man pictured?
Are you familiar with whether GAC has changed the name of this product?
Yes, I understand, that they changed the name to Inovation RT RX
How did you learn about that?
Earlier this year, through this case
Do you know exactly when GAC changed the product name?
I am not sure.
REFER EX CURRENT CATALOG COMPLETE

-
Recognize this? Yes, current catalog
Is the Roth product in here?
Where
FIRST PRODUCT LISTED
You see the letters RT RX at the top?
Does that have any meaning to you?
What does that mean to you?
Stands for Roth Prescription
There is a description, three lines, appearing below that, do you see that?
ln that description, is there language that you recognize as sourced from Dr. Roth's teachings?
CONFIDENTIAL ROTHOO1 1460

1688
What language?
REFER EX _ WEBPAGE SHOWING ''THE ORIGINAL''
What product is shown here?
The words, "The Original" what does that mean to you?
How is ordering handled in your office?
My offrce manager calls GAC and places orders
They know that we buy the Roth Innovation product
How long has that ordering process been in place?
Long time.
Did you receive any announcement from GAC at any time indicating that they were changing the
name of the Roth product?
No.
Do you know if similar brackets are available from other companies?
Well I know that other companies sell brackets that
are supposed to be consistent with the Roth prescription
How do you know that?
I get catalogs from other companies
REFEREX _North American Braces Catalog
Is this one such catalog?
Yes
And do they sell a product that uses a Roth prescription?
Yes
CONFIDENTIAL ROTHOo1 1461

1689
Which ones?
First products here, the self ligating brackets
And does this company refer to the Roth Prescription?
Yes
Where?
Toward the bottom of the page
And the way this is presented, you would understand this to be similar to the Roth Innovation
product sold by GAC?
I am assuming so based upon the reference at bottom to Roth
, but I have not confrrmed
You would have to do some precise measurements and use them to know
So you don't need to see the word Roth in the title of the product?
Do companies other than North Am Braces sell similar products?
Yes many do.
Are GAC prices competitive with other suppliers?
Not really, more expensive
Do you know approximately what the price differential is between the GAC Roth Innovation
product and those that competitors offer as similar?
About 2 times as expensive for GAC I believe
Then why do you buy from GAC?
Because they sell the original product, the ones designed by Dr. Roth
I want the real thing, the one he refined and worked on
I trust the Roth Innovation product
CONFIDENTIAL ROTHOo1 1462

1690
Exhibit K
1691
EX 1038
1692
EX 1038
1693
EX 1038
1694
EX 1038
1695
EX 1038
1696
EX 1038
1697
EX 1038
1698
EX 1038
1699
EX 1038
1700
EX 1038
1701
EX 1038
1702
EX 1038
1703
EX 1038
1704
EX 1038
1705
EX 1038
1706
EX 1038
1707
EX 1038
1708
EX 1038
1709
Ex 1039
1710
Ex 1039
1711
Ex 1039
1712
Ex 1039
1713
Ex 1039
1714
Ex 1039
1715
Ex 1039
1716
Ex 1039
1717
Ex 1039
1718
Ex 1039
1719
Ex 1039
1720
Ex 1039
1721
Ex 1039
1722
Ex 1039
1723
Ex 1039
1724
Ex 1039
1725
Exhibit L
1726
Page Invoice
One CA Plaza
Suite 100 1 of 2 28737584
Islandia, NY 11749
N.Y. (631) 357−8600 Date
Toll Free: (800) 645−5530 3/16/2012
Direct Customer Service: 1−888−GAC−INTL
Customer Service Fax: (631) 357−8797
Purchasing Fax: (631) 357−8793
Invoice
Invoice To: DR EMANUEL WASSERMAN Ship To: DR EMANUEL WASSERMAN

435 N ROXBURY DR 435 N ROXBURY DR
STE PH STE PH
BEVERLY HILLS, CA 90210 BEVERLY HILLS, CA 90210
Cust No. Shipped Via Order No. Sls No. Terms MFG P.O. Date P.O. No.
563920 UPSB SO00730252 048 Net 30 − From Invoice Date
Item number Description Quantity Unit Unit price Amount

189−112−80 IN−OVATION® R EURO 022/UR1 17T 4A 30 EA
Ship St. CA

Ship St. CA
189−132−10 IN−OVATION® R ROTH 022/UR3 −2T 13A4MHK 30 EA

Ship St. CA
189−142−90 IN−OVATION® R ROTH 022/UR4&5 −7T 0A2DM 60 EA

Ship St. CA
189−212−80 IN−OVATION® R EURO 022/UL1 17T 4A 30 EA

Ship St. CA

Ship St. CA
189−232−10 IN−OVATION® R ROTH 022/UL3 −2T 13A 4MHK 30 EA

Ship St. CA
189−242−90 IN−OVATION® R ROTH 022/UL4&5 −7T0A2DM 60 EA

Ship St. CA
189−452−10 IN−OVATION® R ROTH 022/LL5 −22T −1A4DHK 10 EA

Ship St. CA
52−777−03 IDEAL® COND (ETCH) 5ML SYRINGE 20 EA

Ship St. CA
52−777−04 IDEAL® ETCHING TIPS PKG OF 8 20 EA

Ship St. CA
Total Amount of Free Goods:
Continued on next page

CONFIDENTIAL GAC0046463
1727
Page Invoice
One CA Plaza
Suite 100 2 of 2 28737584
Islandia, NY 11749
N.Y. (631) 357−8600 Date
Toll Free: (800) 645−5530 3/16/2012
Invoice

STE PH STE PH
Subtotal $2,511.00
Total Tax $219.71
Handling $0.00
For accounts receivable questions, please contact our Shared Services department directly at Total $2,730.71
(800) 877−0020 extension 57859 or fax them at (717) 849−4754. Paid Credit Card $0.00
Amount Due $2,730.71
***Past due balances are subject to 1.5% per month finance charge.***
Currency USD
Please Remit to Address Below Complete the following to charge your

balance on:
DENTSPLY INTERNATIONAL INC ( ) Mastercard
DEPT. GAC ( ) Visa
P. O. BOX 31001−1205
PASADENA, CA 91110−1205 ( ) American Express
Card #
Exp Date
Wiring Instructions: Signature

PNC Bank
ABA #: 031000053 Cust No. Date Invoice Amount
SWIFT#: PNCCUS33
Acct: Dentsply Sirona Inc. 563920 3/16/2012 28737584 $2,730.71
Acct #: 8611723909
1728
Page Invoice
One CA Plaza
Suite 100 1 of 3 28772717
Islandia, NY 11749
N.Y. (631) 357−8600 Date
Toll Free: (800) 645−5530 6/6/2012
Invoice

STE PH STE PH

68−462−60 EURO SGL CVT 022/LL6 −20T 0A 20 EA
Ship St. CA
68−372−23 EURO SGL 022/LR7 −10T 0OF HK 20 EA

Ship St. CA
68−472−23 EURO SGL 022/LL7 −10T 0OF HK 20 EA

Ship St. CA
68−362−60 EURO SGL CVT 022/LR6 −20T 0A 20 EA

Ship St. CA
189−312−00 IN−OVATION® R ROTH 022/LR1&2 −1T 2A 40 EA

Ship St. CA
189−332−10 IN−OVATION® R ROTH 022/LR3 −11T 7A2MHK 20 EA

Ship St. CA
189−342−10 IN−OVATION® R ROTH 022/LR4 −17T−1A 4DHK 20 EA

Ship St. CA
189−352−10 IN−OVATION® R ROTH 022/LR5 −22T−1A4DHK 20 EA

Ship St. CA
189−412−00 IN−OVATION® R ROTH 022/LL1 & 2 −1T 2A 40 EA

Ship St. CA
189−432−10 IN−OVATION® R ROTH 022/LL3 −11T 7A 2M HK 20 EA

Ship St. CA

Ship St. CA

1729
Page Invoice
One CA Plaza
Suite 100 2 of 3 28772717
Islandia, NY 11749
N.Y. (631) 357−8600 Date
Toll Free: (800) 645−5530 6/6/2012
Invoice

STE PH STE PH

Ship St. CA
68−172−09 AND SGL 022/UR7 10NT 7 OF HKMG 20 EA

Ship St. CA
68−272−09 AND SGL 022/UL7 10NT 7 OF HKMG 20 EA

Ship St. CA
189−132−10 IN−OVATION® R ROTH 022/UR3 −2T 13A4MHK 20 EA

Ship St. CA
189−142−90 IN−OVATION® R ROTH 022/UR4&5 −7T 0A2DM 40 EA

Ship St. CA
189−232−10 IN−OVATION® R ROTH 022/UL3 −2T 13A 4MHK 20 EA

Ship St. CA
189−242−90 IN−OVATION® R ROTH 022/UL4&5 −7T0A2DM 40 EA

Ship St. CA

Ship St. CA

Ship St. CA

Ship St. CA

Ship St. CA

1730
Page Invoice
One CA Plaza
Suite 100 3 of 3 28772717
Islandia, NY 11749
N.Y. (631) 357−8600 Date
Toll Free: (800) 645−5530 6/6/2012
Invoice

STE PH STE PH

97−300−50 PROPHY ANGLE DISPOSABLE PK144 1 EA
Ship St. CA
SENTALLOY® .014" MEDIUM UPPER ACCUFORM MEDIUM

02−511−112 1 EA
Ship St. CA
03−622−632 OVATION® SS ACU 16X22 UP MD 5 EA

Ship St. CA
03−622−942 OVATION® RES ACU 16X22 LW MD 2 EA

Ship St. CA
03−622−932 OVATION® RES ACU 16X22 UP MD 5 EA

Ship St. CA
Total Amount of Free Goods:
Subtotal $3,400.80
Total Tax $297.62
Handling $0.00
For accounts receivable questions, please contact our Shared Services department directly at Total $3,698.42
(800) 877−0020 extension 57859 or fax them at (717) 849−4754. Paid Credit Card $0.00
Amount Due $3,698.42
***Past due balances are subject to 1.5% per month finance charge.***
Currency USD
Please Remit to Address Below Complete the following to charge your

balance on:
DENTSPLY INTERNATIONAL INC ( ) Mastercard
DEPT. GAC ( ) Visa
P. O. BOX 31001−1205
PASADENA, CA 91110−1205 ( ) American Express
Card #
Exp Date
Wiring Instructions: Signature

PNC Bank
ABA #: 031000053 Cust No. Date Invoice Amount
SWIFT#: PNCCUS33
Acct: Dentsply Sirona Inc. 563920 6/6/2012 28772717 $3,698.42
Acct #: 8611723909
1731
Exhibit M
1732
Hon. James Lambden (Ret.)

1
ADR SERVICES, INC.
2
100 First Street, 27th Floor
3
San Francisco, CA 94105
4
(415) 772-0900
5 (415) 772-0960 (FAX)
6 justicelambden@adrservices.org
7
ARBITRATION BEFORE ADRS SERVICES
8
9
ROTH LICENSING, LLC, ) ADR Services Case No.: 15-3234-JL
10
Claimant, ) FINAL ARBITRATION AWARD
11
vs. ) [Issued November 21, 2107 after
12 GAC INTERNATIONAL, LLC, ) correction pursuant to ADRS Rule 34 (e)]
13 Respondent ) Justice James Lambden (Ret.) Arbitrator
14
15 INTRODUCTION
The Initial And Reconvened Hearings On Liability
16
The Final Arbitration Hearing commenced with an initial five-day session on
17
February 6, 7, 8, 9, and 10, 2017. At the conclusion of the initial hearing the parties
18
stipulated to bifurcate the issues of liability and remedies. Accordingly, pursuant to
19
ADRS Rule 27 (d) the Arbitrator issued an interim decision regarding liability dated
20 March 18, 2017. The first interim decision found Respondent GAC liable for willful
21 infringement of Claimant’s trademark under the Lanham Act as well as California
22 common law, and for breach of contract and violation of statutory posthumous rights of
23
publicity.
Within a month of the liability decision, Respondent’s attorneys contacted the
24
Arbitrator and requested an emergency hearing to request reopening of the liability-phase
25
of the Arbitration based on “newly discovered” evidence that a witness had committed
-1-
1733
“perjury” during the first hearing. The Arbitrator heard argument regarding
1
Respondent’s request on April 20, 2017 and promptly vacated the March 18 Interim
2
Award. The Arbitrator set an additional briefing schedule and ordered the attorneys to
3
meet and confer regarding preparations for the reconvened hearing that took place on
4
June 21 and 22. 2017. (Arbitration Management Conference (“AMC”) Order #10).
5 The Arbitrator issued additional orders adjusting the briefing schedule, directing
6 the attorneys to exchange information in preparation for the hearing and specifying the
7 scope of the next hearing. Claimant’s attorneys were ordered to produce Dr. Emanuel
8
Wasserman (the alleged “perjurer”) and his office manager, Irene Vega, at the
reconvened hearing. The Arbitrator denied Respondent’s requests to re-open general
9
discovery, to take additional depositions and for issuance of broad subpoenas of
10
additional documents. (AMC orders #11 and #12). The attorneys negotiated the
11
exchange of documents to be used in the next hearing and generally agreed upon
12 authentication of certain documents and for the submission of other evidence by
13 declaration or stipulation. Dr. Wasserman retained his own attorney, Randall Clement,
14 who attended the second hearing.
15 Dr. Wasserman was examined and cross-examined for a full day on June 21. His
office manager Irene Vega also testified regarding their office procedures. The
16
reconvened hearing also introduced a new witness, an orthodontist affiliated with
17
Respondent, Dr. Antonino Secchi, who testified on June 22.
18
Dr. Wasserman had testified at the first hearing that he was a “disciple” of Dr.
19
Roth who was converted the first time he heard Roth lecture and that he immediately
20 began to purchase the Roth In-Ovation bracket for use in his practice. He described his
21 close friend Roth as a prophet and said that he and many other orthodontists built their
22 practices on the Roth system. He stated that he bought GAC appliances because he
23
“trusted” Dr. Roth’s endorsement, and that before Roth began working with GAC, he had
never heard of GAC. He stated that he “always” bought “Roth” from Respondent GAC
24
based on his loyalty to Dr. Roth’s system. He also stated that the “RT RX” mark at the
25
center of this dispute “meant Roth” to him. GAC’s attorneys previewed Dr.
-2-
1734
Wasserman’s testimony when he was deposed in December of 2016, months prior to the
1
first hearing.
2
After losing the initial decision on liability, GAC purported to examine its own
3
records and claimed to discover for the first time that in 2012 Dr. Wasserman had begun
4
purchasing brackets in a different system (Dr. Secchi’s “CCO” system) and that he had
5 “never” purchased the “RT RX” mark at the center of the arbitration.1 This is the “game-
6 changing revelation” that disclosed “perjury, collusion and fraud upon the tribunal” and
7 that formed the basis of Respondent’s argument that the exposure of “Dr. Wasserman’s
8
lies” had “disproved the entire case”. (GAC’s July 24 Response to Roth Post-Hearing
Brief, p. 1).
9
GAC’s new argument continued to stress the inaccuracies in Dr. Wasserman’s
10
initial testimony in hyperbolic terms without acknowledging the other evidence that
11
supported the original, vacated decision, including the damaging admissions of it own
12 employees and the implications raised by its own documents. GAC also argued that the
13 evidence of similarities between ROTH and CCO appliances, combined with
14 Wasserman’s testimony that the CCO is a derivative product, should be construed as an
15 improper newly raised claim in the arbitration. (GAC Post-Hearing Brief at p. 2).
However, Claimant never claimed that Dr. Secchi’s CCO and In-Ovation are part
16
of the ROTH rights at issue. The evidence at the reconvened hearing showed that Dr.
17
Roth was closely associated with “CCO” as well as with In-Ovation. On the one hand,
18
Dr. Secchi’s testimony and other evidence described his CCO system based use of a
19
difference-sized wire that required small adjustments when used with Roth style
20 appliances (as well as with other systems). On the other hand, and in the context of all
21 the evidence, Dr. Secchi’s testimony suggested that GAC’s infringing conduct with
22 respect to RT RX was accompanied by a parallel effort to groom Dr. Secchi as a new
23
“Key Opinion Leader,” closely aligned with the history of Dr. Roth’s system, who could
1 It is undisputed that GAC possessed the records of its own sales of brackets to Dr. Wasserman
24
before, during and after Dr. Wasserman’s deposition; and GAC’s attorneys asked no questions
25 and raised no objections regarding Dr. Wasserman’s hearing testimony until after GAC was
found liable in the first the Interim Decision.
-3-
1735
tout a similar system with a different name. Rather than altering or adding to Roth
1
Licensing’s claims of liability, the new evidence suggested additional support for the
2
Arbitrator’s original conclusion that GAC’s selection of the infringing RT RX mark was
3
part of a broad and intentional effort to continue reaping the benefits of the association
4
between Dr. Roth and GAC’s best-selling product line.
5 To be sure, the evidence presented at the reconvened hearing showed that Dr.
6 Wasserman was incorrect when he said his office “always” purchased “Roth” products
7 −when in fact he had not purchased “RT RX” marked brackets from GAC. Wasserman
8
explained these errors in terms of the undisputed winding down of his practice (he is 75
years old), his distance from the inventory process in his office, the facts that his
9
inventory of brackets persisted over time and that combinations of brackets from different
10
systems are routinely employed.
11
However, the principal point of his original testimony was to demonstrate the
12 existence of a loyal coterie of Roth followers. Nothing in the renewed hearing disturbed
13 the prior finding that the Roth system continues to have resonance with a loyal group of
14 doctors who continue to buy brackets. GAC’s own evidence, including the testimony of
15 Dr. Secchi, demonstrated that fact. Indeed, there was ample other evidence to support the
findings that support liability, even assuming that Dr. Wasserman’s misstatements are
16
disregarded. Other evidence supported all of the first Interim Decision’s citations to Dr.
17
Wasserman’s testimony.
18
GAC objected strenuously to the admission of portions of Dr. Wasserman’s
19
previous deposition testimony that were lodged to show prior statements that were
20 consistent with his testimony at the hearing, namely: that he did not handle product
21 orders; that he learned of GAC’s use of “RT RX” in these proceedings; that he was
22 winding down his practice and seeing fewer patients; that he had previously testified
23
regarding RT RX products, (which explained the reason for his answers included in the
trial testimony outline prepared after his deposition); and that ROTH products can be
24
used in only 65 to 70 percent of cases, rather than with all patients. The Arbitrator took
25
GAC’s objection under submission and the parties briefed the issue.
-4-
1736
California Evidence Code §791 permits introduction of prior consistent statements

1
(1) where a witness’s credibility has been attacked by admission of statements
2
inconsistent with testimony at the hearing and (2) where an express or implied charge is
3
made that the hearing testimony resulted from fabrication, bias or other improper motive.
4
GAC spent almost an entire day at the reconvened hearing attacking Dr. Wasserman’s
5 credibility and attempting to show that his testimony was “coached” by Roth Licensing’s
6 attorneys. Section §791 applies; and GAC has supplied no persuasive contrary authority
7 that it does not, arguing instead that it had no opportunity to cross examine Wasserman
8
because the deposition excerpts were lodged after he was excused from the reconvened
hearing.
9
GAC relied primarily upon Federal Rule of Evidence 801(d)(1), which mentions
10
cross-examination regarding the prior statement; and GAC argued that §791 also
11
“implicitly” requires cross-examination. Aside from the fact that GAC had a full day to
12 examine Wasserman a third time, and that it did not object to post-hearing briefing on the
13 question, the Arbitrator has discretion to consider and weigh evidence concerning the
14 credibility of witnesses. The ADR Services Rules that govern these proceedings provide
15 that “strict conformity with the rules of evidence is not required” and permit the
Arbitrator wide discretion in deciding the weight to be given evidence after due
16
consideration of objections to its admission. (ADRS Rule 27).
17
Beyond the mere fact of the conceded inaccuracy of certain parts of his testimony
18
regarding his purchase history, there was no evidence to suggest scienter on the part of
19
Dr. Wasserman. He made no secret of his close friendship with Dr. Roth; he was
20 forthcoming about his “out-of-court” discussions with Claimant’s attorneys; and he
21 appeared contrite regarding his errors. In any event, the dead horse of Wasserman’s
22 testimony was thoroughly beaten: GAC’s attorneys had the opportunity to interrogate Dr.
23
Wasserman on three occasions spread over several months. Ultimately, Dr. Wasserman’s
24
25
-5-
1737
alleged “perjury” had little effect on the outcome since other evidence was not merely
1
sufficient but generally stronger on the points that mattered.2
2
The second Interim Decision regarding liability was largely a revision of the
3
earlier, vacated decision. This was so primarily because much of GAC’s later argument
4
merely reiterated its contentions with a gloss of hyperbole regarding tangential matters.
5 The revised liability decision emphasized the sufficiency of the evidence to support the
6 initial findings supporting liability, and concluded that the conceded inaccuracies of parts
7 of Dr. Wasserman’s testimony were entitled to little, if any, weight in the context of all
8
the evidence.
The Concluding Hearing Regarding Remedies
9
The final hearing to determine remedies took place on October 16, 2017 after
10
extensive briefing and the submission of additional evidence, including expert opinions.
11
The parties also stipulated to resolve certain matters as undisputed, including language to
12 be included in the injunctive relief requested by Roth as well as the reasonableness of the
13 attorneys fees and litigation expenses incurred by Roth. This cooperation by the
14 attorneys helped to focus the arguments presented at the ultimate hearing on these issues:
15 • First and foremost, whether the equitable remedy awarded should consist of
disgorgement of all of GAC’s profits from sales of RT RX during the 26-month
16
period of infringement, rather than a more modest award of damages based on
17
18 2 The other “perjuries” asserted by GAC were that Wasserman lied when he said
he was licensed in other states (his Pennsylvania, Maryland and New York licenses
19
had been allowed to lapse before he approached retirement) and that he lied when
20 he said “paid a premium” for what he thought were Roth products. These points
deserve only a footnote because they are of no consequence in the context of the
21 other evidence. Claimant had no burden to show that GAC’s RT RX products
22
were more expensive than other products. GAC’s own documents showed that
ROTH products are sold at a “premium” compared with other products in the
23 marketplace (see exhibits 447 and 448); and that they are relatively more profitable
for GAC when compared with its other products (see exhibits 326 and 274).
24
Moreover, there was substantial evidence that because the Roth system/philosophy
25 is holistic, it costs more in the sense that its use is more extensive, elaborate and
therefore more expensive than other systems.
-6-
1738
calculation of a reasonable royalty payment for that time period, enhanced to deter
1
such infringement; Roth licensing has also requested trebling of any award made
2
using the royalty calculation;
3
• Second, whether the stipulated language of the injunctive remedy should be
4
supplemented to include requirements for corrective advertising and notice to
5 customers;
6 • Third, whether GAC’s parent Dentsply Sirona Orthodontics Inc. (“Dentsply”) can
7 be subject to the jurisdiction of the Arbitration so that the U.S. Patent and
8 Trademark Office can be ordered to deny Dentsply’s RT RX trademark

application submitted on behalf of GAC and to dismiss with prejudice Dentsply’s
9
cancellation proceeding against the ROTH trademark; and
10
• Fourth, whether an award of Roth’s attorney fees and expenses is justified by
11
exceptional circumstances presented in these proceedings.
12
13 This Final Award subsumes the prior interim awards and resolves all claims and
14 counterclaims presented in the Arbitration.
15 BACKGROUND AND PARTIES
16
This is an action brought by Claimant Roth Licensing LLC against Respondent
GAC International LLC (which was previously merged into Dentsply) for federal
17
trademark infringement under the Lanham Act and under California common law, for
18
breach of contract, and violation of Dr. Roth's posthumous right of publicity.
19
Claimant Roth Licensing, LLC, (“Roth Licensing”) was formed in 2012, and owns
20
the federally registered trademark “ROTH”, as well as the registered statutory right of
21 publicity related to the late orthodontist Dr. Ronald Roth (the “Roth Rights”). Roth
22 Licensing is successor-in-interest to the Roth Rights, by way of assignment from the Roth
23 Family Trust. Roth is comprised of the late Dr. Roth’s three daughters.
In early 2017, GAC International LLC was merged into Dentsply Sirona
24
Orthodontics, Inc. The parties have stipulated that Dentsply Sirona Orthodontics, Inc.
25
has been substituted as Respondent for GAC International, LLC. For ease of reference
-7-
1739
and consistency with prior pleadings and proceedings, this revised decision will continue
1
to refer to all respondent parties collectively as “GAC”.
2
Roth has requested that any final award be entered against Denstply Sirona
3
Orthodontics Inc. as successor-in-interest to GAC International, along with Dentsply
4
Sirona Inc., its parent company, with reference to the breach of contract claim related to
5 the parent company’s trademark filing (RT RX) and petition to cancel the ROTH mark.
6 BACKGROUND
7 In the course of the Arbitration the parties described two countervailing narratives,
8
with Roth Licensing recounting the story of a brilliant orthodontist who pioneered a
holistic method that revolutionized the practice of orthodontic medicine. In 1975, Dr.
9
Roth described his philosophy, and his method, which was designed to go beyond more
10
traditional methods in order to achieve “functional occlusion,” in other words, a method
11
of treatment designed to result in optimal function as well as cosmetic aesthetics.
12 Dr. Roth's methods relied upon a system of orthodontic appliances that had the
13 result (happily for patients as well as their doctors) of requiring less time for adjustments.
14 This was attractive to orthodontists because it “streamlined the ability to treat as many
15 patients as possible, [and did not] compromise in any way the result”. Dr. Roth was a
dedicated and compelling teacher whose proselytizing on “goal-directed” and
16
“Comprehensive Clinical Orthodontics” (CCO) resonated with orthodontists, not least
17
because the “Roth System” offered greater profitability as well as better results.
18
Teaching centers were established worldwide; and Dr. Roth lectured widely and often,
19
gaining many converts to his methods of treatment.
20 The Roth Family Narrative
21 In 1997, Dr. Roth was recruited by GAC as a “Key Opinion Leader”. Mark
22 Elwell, a GAC employee, became his friend and collaborator. GAC entered into a five-
23
year consulting agreement with Dr. Roth, who developed and marketed products for
GAC; and GAC was granted a non-exclusive license to use Dr. Roth's name and image.
24
Although the license was non-exclusive, Dr. Roth was precluded from consulting for any
25
other orthodontic company. GAC and Dr. Roth developed and promoted: first, the “Roth
-8-
1740
Ovation” and later, the “Roth In-Ovation” self-ligating brackets and supporting products.
1
GAC began using the ROTH mark in connection with its brackets as early as November
2
1998. Dr. Roth’s business associate, Mark Elwell, recognized the potential value of Dr.
3
Roth's endorsement by highlighting it in GAC‘s 1997 business plan.
4
Thereafter, for seventeen years, until December 31, 2014, GAC licensed the right
5 to use the ROTH name, image, and trademarks, first from Dr. Roth, and then from his
6 successors-in-interest, the Roth Family Trust and Roth Licensing. During the rest of his
7 life Roth lectured tirelessly while continuing to practice; and he established worldwide
8
teaching centers and study groups for the continuing education of orthodontists. Many
orthodontists among his students became devoted followers and proponents of his
9
method. The positive financial effect of their ability to treat more patients in their
10
practices made them loyal to his product preferences despite the higher total price of the
11
appliances required by the Roth system.
12 Dr. Roth promoted his methods and GAC products, especially Roth Ovation and
13 Roth In-Ovation brackets, at trade shows as well as though his lectures and study groups.
14 Dr. Emanuel Wasserman, a disciple of Dr. Roth, testified that as soon as he heard Dr.
15 Roth lecture he became a “convert” and immediately began to purchase the Roth In-
Ovation bracket for use in his practice. He described his close friend Roth almost as a
16
prophet and testified that he and many other orthodontists built their practices on the Roth
17
system. He stated in his initial testimony that he bought GAC appliances because he
18
“trusted” Dr. Roth’s endorsement, and that before Roth began working with GAC, he had
19
never heard of GAC.
20
GAC vigorously promoted its relationship with Dr. Roth and used his name
21 and image in advertisements. It referred to itself as “Roth Headquarters.” The
22 Roth In-Ovation “self-ligating” bracket that allowed Orthodontists to treat more
23 patients in less time became GAC’s single highest-selling product. GAC also used
Dr. Roth's name in connection with other brackets, such as the MicroArch Roth
24
and the OmniArch Roth, two other important products in GAC’s ROTH-branded
25
line. For many years GAC products enjoyed its highest sales across each of these
-9-
1741
bracket lines.
1
GAC's Roth Ovation and Roth In-Ovation products were marketed as
2
“Genuine Roth” products; and GAC also created a badge to convey that it was the
3
source of “Genuine Roth” products. GAC used this emblem throughout its
4
marketing materials. John Piervencenti, GAC's Senior Product Manager, testified
5
that the emblem was created to not only to signify Dr. Roth's endorsement but also
6 to set GAC apart from its competitors. Mr. Piervencenti acknowledged that GAC
7 also advertised that Dr. Roth's endorsement was unique to GAC.
8 Business was good. Even today the appliances originally associated with
9 Dr. Roth comprise half of GAC's bracket business. Mr. Piervencenti testified that
Dr. Roth was instrumental in helping GAC become relevant in the orthodontic
10
industry, that Dr. Roth grew sales for the company, and that he helped build
11
GAC's reputation. He conceded “Dr. Roth's influence was an asset to GAC for
12
many years.”
13
John Kringel, GAC's former Director of Marketing, who otherwise testified
14
that Dr. Roth’s influence had “diminished”, conceded that GAC's ROTH brackets
15 still outsell GAC's other brackets, most likely because of Dr. Roth's influence and
16 legacy. Mr. Kringel also testified that Dr. Roth's students form a continuing loyal
17 customer base for GAC. Dr. Antonino Secchi testified at the reconvened hearing
18
that he was one of Dr. Roth’s students, attended many of his lectures and that he
was extraordinarily well acquainted with the history of the Roth philosophy of
19
treatment.
20
In 2003, GAC renewed its consulting agreement with Dr. Roth for another
21
five years. The agreement provided that Dr. Roth continued to exclusively consult
22
for GAC; and it renewed GAC's license to use his name and image. (Ex. 51A at §
23 2.) The 2003 agreement confirmed Dr. Roth's ownership of the mark. The
24 agreement also assured Dr. Roth that GAC intended to register the mark on his
25 behalf and that GAC would be responsible for costs associated policing the mark.
-10-
1742
(Ex. 51A at § 2.) However, there was no evidence presented that GAC ever took
1
any steps register the ROTH trademark, and no evidence that it took any steps to
2
protect it.
3
In January of 2005 Dr. Roth died.
4
GAC held a memorial service to honor Dr. Roth; and GAC's President,
5
Charles Schultz, attended the service. However, with Dr. Roth's passing in 2005,
6
under the terms of the licensing agreement between Dr. Roth and GAC the license
7 automatically terminated. GAC continued to use Dr. Roth's name and image
8 without permission from, or further compensation to, Dr. Roth's successors.
9 Indeed, after the memorial service GAC did not attempt to contact the family
about the license agreement or GAC’s continued use of the mark.
10
Dr. Roth's widow, Adriane Roth, became his successor-in-interest as
11
Trustee of the Roth Family Trust. On July 29, 2006, after learning that GAC
12
continued to use the mark after expiration of the 2003 agreement, Mrs. Roth sent
13
GAC a letter proposing a license for its ongoing use of Dr. Roth's name and
14
image. GAC did not respond and continued to use Dr. Roth’s name and image.
15 (TR at 190:21-191:2.)
16 Mrs. Roth retained attorneys and negotiated a settlement agreement under the
17 terms of which GAC paid the Roth Family Trust for its unlicensed use of Dr.
18 Roth's name and image. (Ex. 52.) The parties also entered into a non-exclusive license
19
whereby GAC paid $200,000 per year for a period five years for the use of the Roth
Rights. During these negotiations, GAC refused to produce any sales records. (Ex.
20
125 at 1-14; Ex. 126; Ex. 127; TR at 192:19-193:1.)
21
Under the 2007 license, GAC acknowledged the Roth Family Trust's exclusive
22
ownership of the Roth Rights, and agreed not to contest those rights.
23
During 2008 and 2009, GAC worked with the Roth Family Trust to help the
24
Trust file applications for seven (7) trademarks incorporating the term ROTH. (Exs.
25 10, 165, 172, 175, 179, 183). GAC assisted in the registration process by providing
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“first-use” dates for each of these marks, as well specimens showing each of the
1
marks. With GAC's assistance, all seven of the ROTH trademarks were registered and
2
there was no opposition to the registration of any of the seven ROTH trademarks by
3
any individual or entity.
4
Dr. Secchi testified that he began lecturing about his “CCO” system in 2008
5
and GAC began compensating him for lectures and as a consultant in 2010. Secchi
6 discussed the “adjustments” to the Roth system (and other systems) required by his
7 use of a .019 x .025 finish wire, which changes the need for overcorrection, and which
8 is at the heart of his CCO method. It was undisputed that Secchi used Roth case
studies to illustrate his “new” method. Secchi consulted with Todd Metts at GAC to
9
come up with the designation “CCO” that was the subject of a trademark application
10
by GAC in 2012 (Exhibit 429, later abandoned without notice to Secchi; Exhibit 1036
11
was judicially noticed to explain abandonment of the application).
12
Secchi was not credible when he testified he was unaware that Dr. Roth had
13
used the term CCO in his “Complete Clinical Orthodontics” courses for many years.
14 However, he was candid in his description of his work with GAC that would make
15 CCO appealing to Roth customers. Several exhibits were admitted that demonstrate
16 the overlap between Roth adherents and potential CCO customers (See e.g. Exhibits
17
382, 387, 388, 389, 391 and 427). Secchi also admitted that he consulted with GAC’s
attorneys in person and by telephone for hours and exchanged written summaries of
18
their conversations in preparation for his testimony at the reconvened hearing.
19
GAC’s 2007 license to use ROTH expired in 2012, (the same year it attempted
20
to register the “CCO” mark). GAC again continued its use of the ROTH name
21
without permission and compensation to the Roth Family Trust. In August 2012, the
22
Roth Family Trust served an arbitration demand against GAC for trademark
23 infringement and violation of Dr. Roth's publicity rights. (Ex. 139.) GAC and the
24 Trust’s assignee, Roth Licensing, once again settled their dispute (in March 2013) by
25 entering into a retroactive, three-year license, effective from January 1, 2012 until
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December 31, 2014. (Ex. 53.) During these negotiations Roth Licensing again
1
requested sales records from GAC; and GAC refused to provide sales records. (Ex.
2
137 at 10-18) Roth Licensing again accepted a fixed fee of $200,000 a year under the
3
license. (Ex. 53 § 1.)
4
In this last agreement, GAC again recognized Roth Licensing's ownership of
5
the Roth Rights, and also agreed not to contest those rights during or after the term of
6 the license. (Ex. 53 § 2.3.) Upon expiration of the license on December 31, 2014,
7 GAC had 90 days (through March 31, 2015) to cease all use of the Roth Rights,
8 including the mark ROTH. (Ex. 53 §§ 3.1 and 3.4.)
9 In 2014, GAC was considering adoption of a new mark to replace its use of
ROTH. (Ex. 78.) Mr. Kringel was in charge of selecting and implementing a new
10
name, with assistance from Jeanne Ricciardi (Senior Marketing Communications
11
Manager), John Piervencenti (Senior Product Manager). and Lindsay Viola (Product
12
Manager). During the last part of 2014, Roth Licensing’s attorney in theses
13
proceedings, Brian Daucher, attempted unsuccessfully to discuss the renewal of the
14 license with Dane Baumgardner, counsel for GAC and its parent company, Dentsply
15 Sirona, Inc. (Exs. 146-149.) From September 22, 2014 through October 24, 2014, Mr.
16 Daucher sent six emails to Mr. Baumgardner to discuss the license. (Ex. 146.) Mr.
17
Baumgardner did not respond to these emails even though he had earlier agreed to
schedule a call to discuss the matter.
18
By early 2015, GAC had decided not to renew its license agreement with Roth
19
Licensing. GAC planned to replace all uses of the ROTH mark with a new trademark.
20
However, GAC was aware that it was in a unique and constrained situation because of its
21
longstanding licensing relationship with Roth Licensing. In a January 2015 presentation
22
by Mr. Kringel describing GAC’s strategy for giving up the license for ROTH mark, the
23 accompanying PowerPoint stated “GAC is in a unique situation based on our history
24 with the Roth Estate Around this Mark. Without the license we are more restricted than
25 the competition.” (Ex. 75 at 4.) In February 2015, counsel for Roth Licensing sent Mr.
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Baumgardner an email reminding GAC of its duty to cease all use of the ROTH mark by
1
the phase-out deadline of March 31, 2015. (Ex. 148.) Roth Licensing warned GAC that it
2
would “insist upon very strict non-use of the ROTH name going forward by GAC.”
3
The registration for the ROTH mark is the only one of the seven Roth trademark
4
registrations that remains active. In December 2015, Roth Licensing filed a Declaration
5
of Excusable Non-use with the U. S. Patent and Trademark Office (“PTO”), in which it
6 stated that the instant dispute with GAC prevents current continued use and/or any
7 further license of the ROTH mark. (Ex. 171) The PTO accepted this reason as
8 “excusable non-use” and extended the ROTH trademark rights through January 5, 2020.
(Ex. 168)
9
GAC’s View of the Roth “Legacy”
10
GAC contends that it decided to end it licensing arrangement with the family’s
11
Roth Licensing entity because in the decade following the doctor’s death the trademark
12
had lost its value. GAC contends there was diminishing interest in the Roth method
13
even before the doctor’s death in 2005. GAC also contends that that there was a 50%
14
decline in sales of ROTH products between 2008 and 2015 so that the notion of GAC
15 profiting from ROTH was “contrary to logic.” (GAC Opening Brief p. 35, and Ex.325)
16 GAC neglects to acknowledge that there was a precipitous decline in all of GAC’s sales
17 after 2010.3
18 John. Piervencenti, GAC’s Senior Sales Manager, testified that his first
19
experience observing a Roth lecture in 2001 was unimpressive because only 10
orthodontists attended. John Kringel, GAC’s Director of Marketing (until April of 2015)
20
testified that during his tenure the Roth “prescription” represented the highest unit
21
volume of GAC’s products, representing of sales in certain product lines.
22
Nevertheless he had concluded by early 2015 that the interest in the Roth method was in
23
3 In March 2011 the Fukushima tsunami destroyed GAC’s manufacturer. GAC’s supply of
24 products ended, resulting in a precipitous drop in the sales of all of GAC’s product lines that
persists to the present day. GAC claims that the 2012 License agreement to pay $600,000 was
25 not an acknowledgment that the Roth name had any value but rather a decision based on the
“extenuating circumstances” of the “massive business disruption” caused by the tsunami.
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1746
decline as other philosophies of orthodontic practice gained ground, presumably

1
including Dr. Secchi’s CCO system developed in collaboration with GAC. Kringel
2
joined GAC in 2009 and soon concluded that the “Roth” name was on the “downside of
3
its life” and because of its “maturity and decline” did not warrant more investment and
4
development. Accordingly, and in particular after the overall drop in GAC sales after
5 the 2011 tsunami cut off product supplies, Kringel favored “harvesting” the remaining
6 value in a trademark such as ROTH, which was “past its peak.”
7 During the fourth quarter of 2014 discussions were under way at GAC concerning
8 possible renewal of the license and how to handle the marketing challenge of giving up
the Roth Licensing mark. Kringel acknowledged the significance of Roth products to
9
GAC’s bottom line at that time by estimating them to constitute
10
of its sales. He testified that the logistical scale of changing GAC’s marketing
11
materials was so daunting that GAC’s leaders discussed making an offer to renew the
12
license for another five years with a nominal payment of $30,000 per year. Management
13 ultimately conclude that even this small payment was too much to pay, even in the face
14 of what was described as the “enormous” logistical burden of changing GAC’s
15 marketing materials. Once the decision was made to “move away” from use of the Roth
16
Rights, both Mr. Kringel and Ms. Ricciardi testified that they sought to select a new
mark that would allow GAC's customers to “understand” that they were purchasing a
17
bracket in a “Roth prescription.”
18
GAC has always argued that there is a significant distinction between the “Roth
19
Rights” and the “Roth prescription.” GAC offered evidence to show that “companies
20
have used the ‘Roth’ name in connection with the advertising and sale of orthodontic
21 brackets going back to 1981, long pre-dating GAC’s relationship with Dr. Roth”. GAC
22 argues that the name Roth is “universally used and understood in orthodontics to
23 describe a system of brackets that uses the Roth “prescription values”. Thus GAC
contends that “Roth” is part of the common orthodontic nomenclature just as other
24
doctors’ names are associated with particular sets of “prescription values” (i.e. torque,
25
angulation, and offset) that are part of the bracket systems used in different orthodontic
-15-
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philosophies. One of GAC’s main arguments is that the conflation of the Roth name
1
with the “Roth prescription” has transformed “Roth” into a generic term that essentially
2
describes only the prescription.
3
Even so, the evidence describing the care taken by GAC to select a new mark
4
suggests GAC’s lack of confidence in that conclusion, as well as an appreciation of
5 GAC’s “unique situation” as a decades-long former licensee of the Roth Rights.
6 GAC considered several replacement marks, including: RTH, RT, R, RO, and
7 RSW. GAC rejected several of these choices after concluding, for example, that it could
8
not use RTH because it was too close to ROTH. Ultimately, GAC replaced ROTH with
the mark “RT RX” and began using the new mark on April 1, 2015. GAC attempted to
9
register this mark as its own trademark. GAC's documents and practice show that RT
10
was the principal component of the new name. In an email, Mr. Piervencenti stated,
11
“[t]he key change is ROTH to RT.” (Ex. 254 at 2.) In Europe, GAC replaced ROTH with
12 only RT, not RT RX. Similarly the U.S. Patent and Trademark Office (“PTO”) required
13 GAC to disclaim any exclusive right to use the “RX” portion of the mark because it is an
14 abbreviation for “prescription.”
15 At the initial arbitration hearing, GAC's witnesses uniformly denied that “RT”
means ROTH. Ms. Ricciardi conceded in her deposition that the “R” in RSW4 stood for
16
ROTH, but she did not concede this fact at the arbitration hearing; and she also denied at
17
the hearing that the “R” in any of the GAC proposed marks stood for ROTH. Likewise,
18
in his deposition Mr. Piervencenti admitted that “RT RX means Roth prescription” while
19
later insisting that the prescription is distinct from the name of the doctor. Former GAC
20 sale manager John Kringel agreed that GAC could have selected a completely different
21 mark (such as “Asia”) as it had done by reframing the “MDT” mark owned by 3M
22 Unitek Corporation as GAC’s “Euro.” Kringel testified that his own preference would
23
have been to use the Roth name with a disclaimer, but that in lieu of that option, and as
24
25
4
RWISO is the acronym for the Roth Williams International Society of Orthodontists
-16-
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GAC’s Director Of Marketing, he argued for “closer to Roth the better”5 in order to
1
avoid the “harder” explanation which would upset the sales team, who would be required
2
to educate customers regarding any change. It was clear that Kringel wanted the new
3
name to be as close as possible to Roth while at the same time “far enough away” to
4
avoid a trademark dispute and to avoid distressing his sales team.
5 GAC decided not to publicize the name change. Kringel strongly supported the
6 decision to make no announcement highlighting the name change, in particular because
7 the name change would “not be happy news for his sales team.” Accordingly, GAC did
8
not announce the name change publicly, and it did not require its sales representatives to
proactively inform ROTH customers of the name change. Dr. Wasserman, a longtime
9
GAC customer, testified without contradiction that he learned of the name change only
10
as a result of his involvement in the arbitration proceeding. Based on the testimony of
11
Kringel, Ricciardi and Piervencenti as well as all the other evidence, it is beyond dispute
12 that GAC intended its new “RT” mark to be as close as possible to ROTH and that GAC
13 did not wish to draw attention to the change in its marketing materials. There was no
14 credible alternative explanation offered for the choices made by GAC’s management.
15 GAC Changes the Subject to Dr. Wasserman

Much of GAC’s post-hearing brief following the reconvened hearing consisted of
16
a recitation of the daylong renewal of the examination of Dr. Wasserman to establish
17
these points:
18
• “Dr. Wasserman falsely testified about his loyalty to the Roth Prescription.”
19
• “Dr. Wasserman falsely testified about a non-existent price premium for GAC
20 and “genuine Roth” brackets.”
21 • “Dr. Wasserman falsely testified about his patient volume and his annual
22 expenditures….”
23 • “Dr. Wasserman falsely testified about his collaboration with Mr. Daucher
24 5 GAC’s attorneys objected to this paraphrasing of Kringel’s testimony and point out that he
never used the word “close.” However, a fair reading of the record shows that Kringel
25 responded affirmatively to the question: “[t]he closer you can get to Roth the better, as far as you
are concerned, right?’ (Hearing Tr. 1014:13-1016:1)
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1749
[Roth’s attorney].”
1
GAC was successful in its effort to discredit Dr. Wasserman’s testimony in
2
certain particulars. The additional evidence produced at the second hearing, including
3
the testimony of Irene Vega, his office manager, showed that he was confused about his
4
own inventory and purchase history as he wound down his practice. As GAC put it,
5 “Dr. Wasserman had to concede that loyalty to the Roth prescription was neither
6 practical nor important to purchasing orthodontists because his own purchase records
7 reflected that he bought GAC In-Ovation brackets in at least four different
8
prescriptions−Roth, Euro, Roncone, and Andrews−before 2012….”
GAC also showed that after 2012 Dr. Wasserman added purchases of Secchi’s
9
CCO brackets to his inventory. However, GAC overstates the matter by claiming that
10
the fact of Wasserman’s imprecise testimony can establish that “loyalty to the Roth
11
prescription” was not “important to practicing orthodontists”. As to GAC’s argument
12 that Wasserman’s complete “loyalty to the Roth prescription” was not “practical”, the
13 evidence was undisputed that orthodontists routinely mix brackets from different
14 prescriptions in a single patient’s treatment. Wasserman remains demonstrably loyal to
15 the Roth system and still uses it in conjunction with other prescriptions and systems.
Thus, the concessions resulting from the intensive additional examination of Dr.
16
Wasserman were hardly a “game changing revelation” that “destroys Roth’s case” as
17
GAC contends. The meager basis for GAC’s hyperbole is inexplicable.
18
GAC was also unsuccessful in its effort to show that Wasserman’s confusion
19
was the result of improper coaching by Roth’s attorneys. They had as much, if not
20 more reason, than anyone else to be distressed and surprised by Wasserman’s faulty
21 memory and changed testimony. Indeed, the evidence at the reconvened hearing
22 showed that GAC’s attorneys prepared for Dr. Secchi’s testimony in much the same
23
way.
Finally, GAC’s claim that Wasserman’s “conversion” to CCO after 2012
24
“defeats the claimed violation of the Roth rights” is an attempted distraction from the
25
extensive evidence−including admissions by GAC own employees−that supports the
-18-
1750
original finding of willful infringement. Dr. Wasserman purchased CCO

1
brackets−adding them to others in his inventory−and claimed he did so to evaluate
2
whether CCO is derived from Roth. The truth or falsity of that explanation is largely
3
immaterial. His fundamental testimony, supported by the testimony of GAC’s Dr.
4
Secchi, remained credible to show there is a significant group of orthodontists who
5 remain loyal to the Roth system.6
6 Two Views Of The Dispute
7 The contrast between the parties’ views of the evidence is stark. GAC contends
8
that Roth Licensing is fixated on the past and has provided evidence centered only upon
the “legacy that Dr. Roth left to GAC” which is insufficient to meet its burden of proof.
9
For GAC, the resolution of the dispute “is not about the past” and must be “…centered on
10
the perceptions of orthodontists today. GAC argues that the evidence it submitted
11
conclusively demonstrated that these consumers are not likely to 1) confuse its RT Rx
12 mark with the ROTH mark or 2) be confused that Dr. Roth, who passed away in 2005,
13 currently endorses GAC products that use the RT Rx mark.” (Emphasis in original, GAC
14 Initial Post Hearing Brief p.1)
15 GAC Contends:
• Roth Licensing does not own a trademark that includes the term “Roth
16
Prescription” and that term is so widely used that it has become generic
17
18
6GAC’s claim that Roth has attempted to assert a new claim against the CCO mark is another
19 distraction. No lengthy discussion of Secchi’s testimony and credibility is necessary beyond
mentioning his own paid affiliation with GAC to market the CCO system. Despite being a South
20 American student of Dr. Roth with a career-long interest in the history of Dr. Roth’s lectures and
method, Secchi claimed to be unaware of three dozen Roth “Comprehensive Clinical
21
Orthodontics [CCO]” courses presented in South America between 2003 and 2006. Secchi
22
claimed that he did not know Roth used the term “CCO” until he appeared in this arbitration. He
claimed he picked the name “CCO” in 2008 because it “basically described what any doctor
23 would want” and it was a translation of a Spanish phrase referring to “continuing education”.
Although he denied the system he markets with GAC is derivative, he used Roth system case
24 studies to market his CCO system. (Exhibits 412-415, 407, 336 and RH TR 1437:12-24). GAC
was well aware of the Roth connection to the “CCO” designation (Exhibits 377 [the brochure of
25 a CCO course offer in Peru in 2010 with Dr. Roth’s picture and GAC’s logo on the cover], 429
and 382 [GAC’s “Key Opinion Leaders” for CCO included many Roth students and adherents].
-19-
1751
nomenclature among orthodontists, who therefore cannot be confused by the name

1
change;
2
• The direct evidence, including the “experiment” that resulted in the opinion of
3
GAC’s expert Dr. Wind, does not show any likelihood of confusion between RT
4
Rx and ROTH or suggest endorsement by Dr. Roth;
5 • The use of ROTH in connection with the sale of orthodontic appliances has been
6 pervasive and Roth Licensing has been “inconsistent and ineffective” in its efforts
7 to enforce its trademark rights;
8 • GAC claims that it acted in good faith and could not have intended to deceive
consumers with “RT RX” because the term refers to the generic prescription;
9
• “ROTH” has no value; and
10
• Roth licensing fraudulently represented to the PTO that the existence of the instant
11
trademark dispute has compelled it to suspend efforts to license the ROTH mark to
12
third parties.
13
14 Contrast the contentions made by Roth Licensing:

15 • GAC’s RT Rx mark infringes the valid ROTH mark, which is not generic; there is
16 no competitive need to use the ROTH mark; and third party uses of ROTH are
17
irrelevant;
• GAC may not challenge the validity of the ROTH mark because of the no-contest
18
provision of the 2012 License Agreement and because the doctrine of licensee
19
estoppel applies as a bar;
20
• Applying the Sleekcraft factors, GAC’s RT Rx mark is likely to confuse
21
consumers; and GAC’s use is subject to strict scrutiny as a former licensee;
22
• GAC willfully infringed the ROTH mark;
23 • GAC has breached the 2012 License Agreement by challenging the ROTH mark,
24 by continuing to use ROTH and by promoting its affiliation with Dr. Roth; and
25 • GAC has violated Dr. Roth’s statutory right of publicity.
-20-
1752
DISCUSSION OF LIABILITY
1
ROTH Is A Valid Trademark
2
To prevail on its trademark infringement claim, Roth Licensing must prove (1) it
3
owns a valid trademark, and (2) GAC uses a mark similar to Roth Licensing's mark in a
4
manner that is likely to cause confusion, mistake, or deception as to the source,
5 sponsorship, affiliation or approval of the goods. Network Automation, Inc. v. Advanced
6 Sys. Concepts, 638 F.3d 1137, 1144 (9th Cir. 2011). The elements of Roth Licensing's
7 state law trademark infringement claim are the same as its federal trademark infringement
8
claim. Grey v. Campbell Soup Co., 650 F. Supp. 1166, 1173 (C.D. Cal. 1986) ("The tests
for infringement of a federally registered mark under § 32(1), 15 U.S.C. § 1114(1), [and]
9
infringement of a common law trademark . . . are the same"). GAC cannot dispute the
10
registration of the ROTH mark that is the subject of the infringement claims.
11
GAC assisted the Roth Family Trust in its application for seven (7) trademarks
12 incorporating the term ROTH. (Exs. 10, 165, 172, 175, 179, 183, and 186; TR at 277:13-
13 18.) GAC provided first use dates for each of these marks, as well specimens showing
14 how it used each marks. (TR at 277:19-279:8; Ex. 163.) All seven of the ROTH
15 trademarks were registered. (TR at 282:14-16; Exs. 166, 169, 173, 177, 181, 184, and
187.) Following publication of the applications, no individual or entity opposed the
16
registration of any of the seven ROTH trademarks. (TR at 351:24-353:13.)
17
The registration for the ROTH mark presently is the only one that remains active.
18
In December 2015, Roth Licensing filed a Declaration of Excusable Non-use with the
19
PTO, in which it cited this dispute with GAC as preventing current continued use and/or
20 further license of the ROTH mark. (Ex. 171; TR at 284:15-286:19.) The PTO accepted
21 this reason as excusable non-use and extended the ROTH trademark rights through
22 January 5, 2020. (Ex. 168; TR at 286:21-287:22.)
23
Federal registration of a trademark constitutes prima facie evidence that the
registered mark is valid and that the registrant's owns the mark. 15 U.S.C. § 1115 ("the
24
registration shall be conclusive evidence of the validity of the registered mark . . . of the
25
registrant's ownership of the mark, and of the registrant's exclusive right to use the
-21-
1753
registered mark"); Solid 21, Inc. v. Breitling USA, Inc., 512 Fed. Appx. 658, 686 (9th Cir.
1
2013). Federal registration for the ROTH Mark also creates the presumption that the
2
mark is valid; and the presumption is “strong” that the mark is not generic. This has the
3
effect of shifting the burden of proof to GAC to show by a preponderance of the evidence
4
that the mark is not protectable. Id. (citing a summary judgment case, Zobmondo Entm't,
5 LLC v. Falls Media, LLC, 602 F.3d 1108, 1113-14 (9th Cir. 2010). "[T]he presumption of
6 validity is a strong one, and the burden on the defendant necessary to overcome that
7 presumption . . . is heavy." Zobmondo, 602 F.3d at 1115 (see also Tie Tech, Inc. v.
8
Kinedyne Corp. 296 F. 3d 778, 783 (9th Cir. 2002).
GAC attempted to overcome this presumption of validity in part by conjuring an
9
admission by Roth Licensing that both Dr. Roth’s Philosophy and the “Roth prescription”
10
are not within the ROTH trademark or Roth Rights. First, GAC supports this contention
11
by citing Leslie Aldag’s testimony that Roth Licensing “…has done nothing to assess or
12 appraise the value of the ROTH mark and Roth Rights” (TR. at 251:12-20). GAC first
13 argues that Ms. Aldag’s conflates Dr. Roth’s teachings and the Roth philosophy with its
14 intellectual property rights and that “[t]he two are separate and distinct; and the former
15 are not protected intellectual property.” Second, GAC argues that Roth licensing has
conceded the distinction between the ROTH mark and the Roth Rights in Section 1.2 of
16
the Settlement Agreement between the Roth Family Trust and Sybron Dental Specialties,
17
Inc. (“Sybron”) which states that “[n]otwithstanding the foregoing, and for the avoidance
18
of doubt, Sybron and its agents are permitted to use the Roth name to refer to Dr. Roth’s
19
teachings and to refer to products in a non-trademark manner.” (Ex. 8 at Section 1.2).
20 GAC argues that the ROTH mark could not have included the “Roth prescription”
21 because, “for many years prior to the 1998 Agreement, GAC and other companies openly
22 and publicly referenced the Roth prescription in their marketing materials. GAC
23
concludes that no reasonable business entity would have entered into a license to pay for
rights that it and other orthodontic companies already possessed.”
24
These “admissions” and the asserted market circumstances do not support GAC’s
25
burden to overcome the presumption. Indeed, they do not even contest the validity of the
-22-
1754
ROTH mark; and GAC’s obvious intention is to shift the focus of the inquiry this way:
1
“…the issue of confusion should be limited to whether orthodontists are likely to be
2
confused that RT Rx signifies the ROTH mark or an endorsement by Dr. Roth – not
3
whether orthodontists are likely to believe that RT Rx means the Roth prescription.”
4
(GAC Post-Hearing Brief p. 5). GAC has not overcome the presumption that the ROTH
5 mark is valid. Rather than contesting the ROTH mark’s validity, GAC shifts the focus of
6 the dispute by claiming the mark is generic because of widespread reference to the Roth
7 prescription values in the marketplace without objection by Roth Licensing.
8
Efforts by Roth Licensing to police the ROTH mark
There was evidence presented that Roth Licensing reasonably attempted to enforce
9
its trademark rights in the market (and without assistance despite GAC’s earlier
10
contractual promise to bear the costs of enforcement). GAC’s evidence did not show that
11
there is a competitive need to use the ROTH mark, or “any mark confusingly similar
12 thereto such as RT RX …within the product name” (as described in Roth Licensing’s
13 Reply Brief).
14 A trademark owner is not required to act against every infringing use, no matter
15 how inconsequential, at risk of losing rights in the mark." McCarthy on Trademarks and
Unfair Competition § 31:101 (4th ed. 2015); see also Hurricane Fence Co. v. A-1
16
Hurricane Fence Co., Inc., 468 F. Supp. 975, 989 (S.D. Ala. 1979) ("to impose upon the
17
mark owner the duty of monitoring every sale of every dealer to regulate its use of the
18
mark would be unconscionable"); Playboy Entertainment, Inc. v. Chuckleberry Publ'g,
19
Inc., 486 F. Supp. 414, 422-23 (S.D.N.Y. 1980) ("The owner of a mark is not required to
20 police every conceivably related use . . ."). Rather, a mark owner need only use
21 reasonable efforts to police its trademark. See Accurate Merch., Inc. v. Am. Pac., 186
22 U.S.P.Q. 197, 200 (1975) (trademark owner must take "reasonable measures" to protect
23
mark); Rockwell Graphic Sys., Inc. v. DEV Indus., Inc., 925 F.2d 174, 179 (7th Cir. 1991)
(noting trademark owner's duty to "take reasonable efforts to police infringements of his
24
mark").
25
-23-
1755
The mark owner's successful policing of unauthorized uses of its mark supports a
1
finding that the mark is not generic. See, e.g., STK LLC v. Backrack, Inc., 2012 WL
2
2024459, at *18 (TTAB May 21, 2012) (finding trademark not generic where mark owner
3
effectively policed its mark); In re Trek 2000 In'tl Ltd., 97 U.S.P.Q.2d 1106, 1112-13
4
(TTAB 2010) (mark not generic where owner had successfully enforced its trademark
5 rights to stop unauthorized use); Hermes Int'l v. Lederer de Paris Fifth Ave., Inc., 219
6 F.3d 104, 110 (2d Cir. 2000) (affirming finding that plaintiff's mark was not generic
7 where, among other things, plaintiff policed its mark).
8
In its 2003 agreement with Dr. Roth, GAC acknowledged that Dr. Roth “owns the
trademarks to the ‘Roth’ name” and represented that it would “bear the cost of filing and
9
defending this trademark.” (Ex. 51A at ¶ 2.) Despite its obligation, and its knowledge of
10
third party uses of the ROTH mark, GAC apparently made no efforts to police the ROTH
11
mark. (See TR at 763:10-764:21.) In contrast, the evidence established that Roth
12 Licensing consistently policed unauthorized use of the ROTH mark, commensurate with
13 its limited resources, and has achieved some compliance in the market, including both
14 through litigation (against RWISO/ Sybron) and through its pre-litigation cease-and-
15 desist letter writing efforts. Although Roth Licensing must concede that instances of
third party use of the ROTH mark continue, it is reasonable that Roth Licensing has
16
temporarily suspended its policing efforts in order to devote its resources to its dispute
17
with GAC. (TR at 205:1-206:5; TR at 430:9-19.) To conclude otherwise would be to
18
allow GAC to ignore its promise to assist in the enforcement of the mark and later raise
19
the contention that Roth Licensing (and its predecessors in interest) failed to police the
20 mark.
21 GAC represented in 2003 that it would “bear the cost of filing and defending this
22 trademark.” (Ex. 51A at ¶ 2.) Despite this promise, and the “mountain of evidence” of
23
third party use of the mark referenced in GAC’s briefs, there was no evidence offered that
GAC ever attempted to police the ROTH mark. (See TR at 763:10-764:21. And even if
24
GAC were to argue that its 2003 promise has been subsumed by later agreements, the
25
evidence established that Roth Licensing has policed unauthorized use of the ROTH
-24-
1756
mark and has achieved compliance in the market through its litigation and pre-litigation
1
letter-writing efforts. Although there are apparently continuing instances of third party
2
use of the ROTH mark, the undeniable disparity of resources between the parties
3
established that it was reasonable for Roth Licensing to have temporarily and suspended
4
its policing efforts in order to devote its resources to this dispute with GAC. (TR at
5 205:1-206:5; TR at 430:9-19.)
6 Both the evidence and principles of equitable estoppel support Roth Licensing’s
7 contention that it has done the best it could in policing the mark. Those efforts have been
8
sufficient to preserve the mark.
No Competitive Need to Use ROTH
9
Federal courts “look to a variety of sources of evidence to determine whether a
10
term is generic,” including the “use of the term in the relevant industry, as evidenced by
11
trade publications, trade organizations, and use by competitors.” Solid 21, Inc. v. Hublot
12 of Am., 109 F. Supp.3d 1313, 1324 (C.D. Cal. 2015). GAC has failed to show that there
13 is a competitive need to use the ROTH mark, or any mark similar thereto such as RT RX,
14 as prominently as it does, i.e., within GAC’s product names. Other than its bare
15 assertions that RT RX refers only to the prescription, and not to ROTH, GAC produced
no evidence that it is competitively necessary to connect the prescription to its products
16
by using the similar “RT” in its name.
17
Although GAC contends that it does not use ROTH or RT RX as trademarks, the
18
following evidence establishes the contrary: (1) ROTH and RT RX are part of GAC’s
19
product names as evidenced by GAC's catalogs (See, e.g., Exs. 55 and 104); (2) when
20 GAC formally announced the adoption of RT RX to its sales team via email, the subject
21 of the email read “Product Name Change Announcement” (Ex. 85); (3) GAC historically
22 has used trademark designations (TM) for ROTH and RT RX (Ex. 55 at 44; Ex. 554 at
23
46; Ex. 264 at 46); (4) GAC's parent company, Dentsply Sirona, filed a trademark
application for RT RX (Ex. 81); (5) GAC regularly files documents with the PTO
24
confirming that its use of prescription names on product packaging and catalogs
25
constitutes trademark use (Ex. 81 at 7, 328 at 1, 327 at 7, 329 at 6); and (6) GAC and its
-25-
1757
competitors have routinely trademarked prescription names in connection with

1
orthodontic appliances, including CETLIN, CCO, BI-DIMENSIONAL, MBT, DAMON,
2
and RICKETTS (Exs. 294, 292, 289, 300, 298, and 302). Accordingly, GAC does use
3
ROTH in its product name and as a trademark.
4
The evidence also establishes that, unlike GAC, many of its competitors do not
5 make such prominent use of ROTH. (See, e.g., Ex. 123 at 6 (North American Braces
6 catalog.) Through Roth Licensing's enforcement efforts, a number of orthodontic
7 companies have agreed to either cease all use of ROTH in connection with their products,
8
or make an otherwise non- prominent fair use of ROTH to denote compatibility with the
Roth prescription. (See supra ¶¶ 64-66.) The lack of competitive necessity is further
9
supported by the fact that no individual or entity opposed the registration of any of the
10
trademarks included in the application process to register the seven ROTH trademarks.
11
(TR at 351:24-353:13.)
12 GAC's own conduct shows there is no competitive need to use a trademarked
13 prescription name in the product name, because GAC has adopted the entirely arbitrary
14 name “EURO” to connote its version of the MBT prescription, a trademark owned by 3M
15 Unitek Corporation. (Ex. 555 at 18; Ex. 300).) In fact, GAC's customers understand that
EURO connotes GAC's version of the MBT prescription. Ms. Ricciardi acknowledged
16
that GAC's customers understand that EURO means MBT. (TR at 473:11-14) Dr.
17
Wasserman’s testimony was undisputed that he understands “EURO” means “MBT” (TR
18
at 178:1-9).
19
GAC is barred from challenging the validity of the ROTH mark
20 GAC promised in the 2012 agreement that it would “not contest the Roth Rights or
21 the Roth Marks, including Licensor's ownership thereof, either during or after the term of
22 the License.” (Ex. 53 at ¶ 2.3.) This express promise precludes GAC from challenging the
23
ROTH mark. See, e.g., MWS Wire Indus., Inc. v. California Fine Wire Co., 797 F.2d
799, 802 (9th Cir. 1986) (if defendant acknowledged validity of plaintiff's trademark in
24
an agreement, defendant "is estopped to assert the invalidity of [plaintiff's] trademark as a
25
defense to [plaintiff's] claims"); RE/MAX Int'l, Inc. v. Equity Max Realty, Inc., No. 06-cv-
-26-
1758
1345, 2007 WL 1110590, at *3 (S.D. Cal. Apr. 3, 2007) [consent order in which
1
“Defendants admission that Plaintiff's trademarks are valid and enforceable . . . precludes
2
Defendants from attacking the plaintiff's trademark as merely generic and therefore
3
unenforceable”].
4
GAC also is barred from challenging the ROTH mark under the doctrine of
5 licensee estoppel. “The theory underlying the licensee estoppel doctrine is that a licensee
6 should not be permitted to enjoy the benefits afforded by the license agreement while
7 simultaneously urging that the trademark which forms the basis of the agreement is
8
void.” John C. Flood of Virgina, Inc. v. John C. Flood, Inc., 642 F.3d 1105, 1111 (D.C.
Cir. 2011); see also Pac. Supply Coop. v. Farmers Union Cent. Exch., 318 F.2d 894, 908-
9
09 (9th Cir. 1963) [noting the “long settled principle of law that a licensee . . . of a
10
trademark or tradename may not set up any adverse claim in it as against its licensor”]; 2
11
Ann Gilson Lalonde, Gilson on Trademarks § 6.07[7] (2015) [“By entering into the
12 license agreement, the licensee recognizes the licensor's ownership of the mark and, by
13 implication, covenants not to challenge the licensor's rights”].
14 The “licensee estoppel doctrine precludes a licensee from challenging the validity
15 of the licensor's trademark based upon conduct that occurred during the life of its
license.” Monster, Inc. v. Dolby Labs. Licensing Corp., 920 F. Supp. 2d 1066, 1076-77
16
(N.D. Cal. 2013) (Emphasis added). In essence, GAC is estopped from challenging the
17
validity of the ROTH mark except based on facts that arose after the license expired.
18
GAC's invalidation argument rests primarily on facts that GAC was aware of before and
19
during the nearly two decades it licensed the ROTH mark.
20 GAC claims that the ROTH mark is invalid because its competitors have used the
21 mark without license. Extensive evidence shows that GAC has been aware of this
22 alleged competitive use for decades, including during the 17 years (1998-2014) it
23
licensed the ROTH mark from Dr. Roth and his successors. For example, a GAC
advertisement for ROTH products from approximately 1996-1997, expressly references
24
third party uses of the ROTH name. (Ex. 54 at 2 [“Other manufacturers promote
25
‘Improved Roth’ by modifying the fundamental attributes of the formula . . .”].) GAC
-27-
1759
began its valuable relationship with Dr. Roth later. GAC's representatives admitted their
1
longtime knowledge of this third party use, and were aware of such use as early as 2001.
2
(TR at 763:17-764:21 (Piervencenti – knowledge since 2001): TR at 1023:22-1024:1
3
(Kringel: knowledge since 2009); Ex. 134 (Elwell: knowledge as of 2008).)
4
Notwithstanding its knowledge of third party use, GAC repeatedly licensed the right to
5 use the ROTH mark; it acknowledged the validity of the right; and it unquestionably
6 benefited from such use.
7 The inequity of GAC’s strategy is shown by the fact that GAC utterly failed to
8
assist in policing the mark despite its promise to do so. Accordingly, GAC may not now
challenge the ROTH mark with information it possessed before and during its licenses
9
with Dr. Roth and his successors. See, e.g., Council of Better Bus. Bureaus, Inc. v. Better
10
Bus. Bureau, Inc., 200 U.S.P.Q. 282 (S.D. Fla. 1978) (ex-licensee estopped from
11
challenging mark as generic where facts that formed basis of challenge arose prior to
12 termination of license).
13 GAC’s RT RX Mark Is Likely To Confuse Consumers
14 Where the alleged infringer is a former licensee of the trademark owner, the
15 “quantum of proof necessary to establish a likelihood of confusion” can be less than in

cases involving non-licensees. See Downtonwer/Passport Int'l Hotel Corp. v. Norlew,
16
Inc., 841 F.2d 214, 219 (8th Cir. 1988). Indeed, “common sense compels the conclusion
17
that a strong risk of consumer confusion arises when a terminated [licensee] continues to
18
use the former [licensor's] trademarks.” Id. Accordingly, a former licensee bears a duty to
19
select a clearly distinguishable mark so as to not promote the perception that it is still
20 affiliated with or endorsed by its ex-licensor. See Church of Scientology Int'l v. Elmira
21 Mission, 794 F.2d 38, 41-42 (2d Cir. 1986) [“the potential for consumer confusion is
22 greater than in the case of a random infringer” due to the association in consumers’ minds
23
between the licensor and licensee].
“A former licensee who continues use of a mark not identical, but confusingly
24
similar to, the formerly licensed mark is trying to convey the false message of continued
25
affiliation and commits infringement.” McCarthy on Trademarks and Unfair Competition
-28-
1760
§ 25:31. “Where a licensee persists in the unauthorized use of a licensor's trademark,

1
courts have found that the continued use alone establishes a likelihood of consumer
2
confusion.” Sun Microsystems v. Microsoft Corp., 999 F. Supp. 1301, 1311 (N.D. Cal.
3
1998); see also Burger King Corp. v. Mason, 710 F.2d 1480, 1492-93 (11th Cir. 1983)
4
[“Because of this risk, many courts have held that continued trademark use by one whose
5 trademark license has been canceled satisfies the likelihood of confusion test and
6 constitutes trademark infringement.”].
7 GAC licensed and used the ROTH mark for nearly twenty years. As a former
8
licensee closely linked to Dr. Roth, GAC had a duty to select a mark that was clearly
distinguishable from ROTH. Before Roth Licensing asserted this duty, Mr. Kringel,
9
(who was in charge of the new name selection) was aware of it, and deliberately selected
10
the similar RT RX mark to be close to ROTH. In his January 2015 PowerPoint
11
presentation on the strategy for the “Roth Trademark Exit,” Mr. Kringel stated, “GAC is
12 in a unique situation based on our history with the Roth Estate Around this Mark.
13 Without the license we are more restricted than the competition.” (Ex. 75 at 4.) At the
14 first arbitration hearing, Mr. Kringel confirmed his understanding that GAC had a
15 heightened duty to select a distinguishable mark. (TR at 1021:15-1022:23.) Later, in

February 2015, prior to the change to RT RX, Roth Licensing’s counsel expressly
16
reminded GAC of this duty. (Ex. 148 at 1 (“[g]iven GAC's longstanding license, [Roth
17
Licensing is] going to have to insist upon very strict non-use of the ROTH name going
18
forward.”). Nevertheless, and despite GAC’s undisputed ability to choose a completely
19
different mark (e.g. such as “Asia”) GAC chose a confusingly similar mark in keeping
20 with Kringel’s affirmative response to the characterization posed by Roth Licensing’s
21 attorney: “in other words ‘the closer [to ROTH] the better.’”
22 GAC complains that the rule of stricter scrutiny of former licensees has not been
23
applied by the 9th Circuit Court of Appeals and therefore has no application here. Even
if that were true, GAC cannot dispute that as a longtime licensee of the ROTH mark, it
24
was obligated to select a clearly distinguishable mark. GAC also argues that Mr.
25
Kringel’s opinion testimony as a “layperson” that GAC had a higher duty should be
-29-
1761
ignored and that GAC was “very conservative” in its selection of RT RX, a mark just two
1
letters shy of ROTH. However, the evidence demonstrated GAC’s intention and
2
expectation that customers would understand that RT RX referred to ROTH. Such use by
3
a former licensee can show that confusion is likely even without resort to authorities
4
outside the 9th Circuit. In any event, analysis under the Sleekcraft factors also establishes
5 that the RT RX mark is confusingly similar to the ROTH mark.
6 The Sleekcraft Factors
7 The Ninth Circuit considers eight, non-exclusive factors to assess likelihood of
8
confusion: (1) strength of plaintiff's mark; (2) similarity of the parties' marks; (3)
similarity of the goods; (4) similarity of the marketing channels; (5) defendant's intent in
9
selecting its mark; (6) evidence of actual confusion; (7) degree of care exercised by
10
consumers; and (8) likelihood of expansion into other markets. AMF, Inc. v. Sleekcraft
11
Boats, 599 F.2d 341, 348-49 (9th Cir. 1979). “The test is a fluid one and the plaintiff need
12 not satisfy every factor, provided that strong showings are made with respect to some of
13 [the factors.].” Surfvivor Media, Inc. v. Survivor Prods., 406 F.3d 625, 631 (9th Cir.
14 2005); see also E. & J. Gallo Winery v. Gallo Cattle Co., 967 F.2d 1280, 1290-91 (9th
15 Cir. 1992) [“The presence or absence of a particular factor does not necessarily drive the
determination of a likelihood of confusion.”].
16
Strength of Mark
17
The strength of a mark is determined by its placement on a “continuum of marks
18
from ‘generic,’ afforded no protection; through ‘descriptive’ or ‘suggestive,’ given
19
moderate protection; to ‘arbitrary or fanciful’ awarded maximum protection.” E. & J.
20 Gallo Winery v. Gallo Cattle Co., 967 F.2d 1280, 1291 (9th Cir. 1992). “While personal
21 names used as trademarks are not inherently distinctive, they are treated as strong marks
22 upon a showing of secondary meaning.” Id.; see also E.I Du Pont De Nemours & Co. v.
23
Societe S. T. Dupont, 161 U.S.P.Q. 489 (T.T.A.B. 1969) ("Where a surname has acquired
a secondary meaning it is afforded the same protection as if it were an arbitrary, technical
24
mark."). “Furthermore, registration on the principal register creates a presumption of
25
distinctiveness—in the case of a surname trademark, acquired distinctiveness.” Avery
-30-
1762
Dennison Corp. v. Sumpton, 189 F.3d 868, 876 (9th Cir. 1999) (citing 15 U.S.C. §
1
1057(b)); see also Americana Trading Inc. v. Russ Berrie& Co., 966 F.2d 1284, 1287
2
(9th Cir. 1992) [“registration carries a presumption of secondary meaning”].
3
The ROTH mark is registered on the federal principal register, and therefore
4
Roth Licensing is entitled to a presumption that its mark has acquired secondary
5
meaning, and is also entitled to the highest level of protection. And, Roth Licensing
6 (via its licensee GAC) substantially and continuously used and promoted the ROTH
7 mark in connection with orthodontic appliances for nearly twenty years. Throughout
8 that time GAC closely-linked its products to the ROTH name and Dr. Roth's image.
GAC found numerous ways to market the fact that Dr. Roth's endorsement was
9
unique to GAC. (Exs. 54, 55 at 19-38, 103, 111, 112, 113, and 114; TR at 734:9-
10
747:10.) GAC’s use, coupled with more than in sales in the last nine
11
years shows that GAC succeeded in making itself the “true” source of ROTH
12
products, as it claimed in its marketing materials. (Ex. 325.)
13
Similarity of Mark
14
Similarity of the marks “has always been considered a critical question in the
15 likelihood of confusion analysis.” Goto.com, Inc. v. Walt Disney Co., 202 F.3d
16 1199, 1205 (9th Cir. 2000). The greater the similarity, the greater the likelihood of
17 confusion. Id. at 1206. Similarity between marks is tested with respect to sight,
18
sound, and meaning, and similarities weigh more heavily than differences.
Sleekcraft, 599 F.2d at 351. And, courts generally assign “greater weight to a
19
dominant feature of a mark.” Daddy's Junky Music Stores, Inc. v. Big Daddy's
20
Family Music Ctr., 109 F.3d 275, 284 n. 4 (6th Cir. 1997); see also E. & J. Gallo
21
Winery, 967 F.2d at 1291-92 (same). “[W]hen a mark consists of two or more
22
words, some of which are disclaimed, the word not disclaimed is generally regarded
23 as the dominant or critical term.” Citigroup Inc. v. Capital City Bank Group, Inc.,
24 637 F.3d 1344, 1349 (Fed. Cir. 2011). Exact identity is not necessary. See, e.g.,
25 McCarthy on Trademarks and Unfair Competition §23:20 [“To find trademark
-31-
1763
infringement only by exact identity and not where the junior user makes some slight
1
modification would 'be in effect to reward the cunning infringer and punish only the
2
bumbling one.’”]
3
Because GAC has disclaimed the “RX” portion of its mark (Ex. 82 at 2), the
4
dominant element of GAC's mark is “RT.” GAC has acknowledged that “[t]he key
5
change is ROTH to RT,” and it operates in Europe accordingly, using only RT (not
6 RT RX) to refer to its ROTH products. (Ex. 254 at 2; Ex. 257 at 1.) ROTH and RT
7 share two of the same letters, “R” and “T”, and both marks also start with the letter
8 “R”. Ms. Riccardi acknowledged the similarities between the two marks. (TR at
499:9-12.) Although Mr. Piervencenti denied the similarity at the arbitration, in his
9
deposition, he admitted “RT RX means ROTH prescription.” (TR at 769:1-2.) There
10
can be no reasonable dispute that RT is intended to mean ROTH. None of the GAC
11
witnesses was convincing in their uniform denial of GAC’s intention to select a
12
name as close as possible to ROTH and yet “far enough away” to avoid a trademark
13 dispute, as Mr Kringel candidly stated. ROTH and RT are substantially similar.
14 Similarity of Marketing Channels
15 “Related goods are generally more likely than unrelated goods to confuse the
16 public as to the producers of the goods.” Brookfield Commc'ns, Inc. v. W. Coast
17 Entm't, 174 F.3d 1036, 1055 (9th Cir. 1999). Similarly, “[c]onvergent marketing
18
channels increase the likelihood of confusion.” Sleekcraft, 599 F.2d at 353. GAC
continues to use RT RX in connection with the same goods that were once ROTH
19
goods, and continues to market the RT RX goods as it did the ROTH goods (e.g., in
20
its catalogs and online). (See, e.g., TR at 497:3-15.) GAC claims that confusion is
21
unlikely because the purchasers of GAC's products, orthodontists, exercise a high
22
degree of care in making their purchase. However, even “[w]hen the buyer has
23 expertise in the field, . . . it will not preclude a finding that confusion is likely.”
24 Sleekcraft, 599 F.2d at 353 (citing Am. Drill Bushing Co. v. Rockwell Mfg. Co., 342
25 F.2d 1019, 1022 (C.C.P.A. 1965) [expertise in field differentiated from expertise as
-32-
1764
to trademarks]. The evidence also shows that GAC did not announce the name
1
change outside of the company. (TR at 464:20-465:4 ("we didn't really communicate
2
it outside of the company"); TR at 479:14-16.) The evidence shows that
3
orthodontists that are loyal customers may not examine the marks closely each time
4
they restock their inventory. (TR at 98:16-99:1.) Indeed the evidence, including the
5 new evidence introduced to discredit Dr. Wasserman, established precisely this
6 point. Accordingly, the marketing channel factor weighs heavily in Roth
7 Licensing's favor.
8
GAC's intent in selecting its mark
Courts may further infer “that there are confusing similarities” between the parties'
9
marks based on the defendant's deceptive intent. Brookfield, supra 174 F.3d at 1059. The
10
intent that matters for purposes of the Sleekcraft analysis is whether the defendant
11
“adopted his mark with knowledge, actual or constructive, that it was another’s
12 trademark” and not whether defendant intended to deceive consumers. Brookfield, 174
13 F.3d at 1059 (emphasizing intent factor "is not so narrowly confined" as to include only
14 “intent to deceive the public.”). “[W]hen an alleged infringer knowingly adopts a mark
15 similar to another's, courts will presume an intent to deceive the public.” Official Airline
Guides, Inc. v. Goss, 6 F.3d 1385, 1395 (9th Cir. 1993).
16
The evidence establishes that GAC willfully and deliberately infringed the ROTH
17
trademark:
18
• GAC was a longstanding licensee, and thus aware of value of the ROTH mark,
19
having devoted substantial of its own resources to develop and promote its ROTH
20 products for nearly 20 years. (See, e.g., Exs. 50, 51, 54, 111, 113, 114.)
21 • In 2015, when GAC decided it would not renew its license arrangement with Roth
22 Licensing, Mr. Kringel was tasked with selecting a new name. In doing so, he was
23 aware that GAC had a heightened duty to move away from the mark because of its
status as a licensee. (Ex. 75 at 4; TR at 1021:15-1022:23.) And, in February 2015,
24
when it became clear that the parties would not agree on a further license, Roth
25
Licensing's counsel expressly reminded GAC of its strict duty to move away from
-33-
1765
ROTH. (Ex. 148 at 1.) Notwithstanding knowledge of its duty, GAC selected RT
1
RX, a mark just two letters removed from ROTH.
2
• Kringel stated that he deliberately chose a mark similar to ROTH (i.e., RT RX) in
3
order to avoid having to “explain” the name change to customers, which would
4
have disturbed his sales force as “unhappy news.”
5
• The evidence shows that GAC considered only marks that started with R: R RX,
6 RO RX, RT RX, RTH RX, and RSW, and Ms. Ricciardi acknowledged that the
7 “R” in at least one of the marks stood for ROTH, while later inexplicably denying
8 that the other uses of “R” referred to ROTH. (Ex. 75 at 9; Ex. 84; TR at 469:24-
471:3.)
9
• At the initial arbitration hearing, GAC's witnesses all refused to admit that RT RX
10
means ROTH prescription. However, in his deposition, Mr. Piervencenti admitted,
11
“RT RX means Roth prescription.” (TR at 768:10-796:2.) The name change
12
announcement sent by Ms. Ricciardi confirms that RT RX means ROTH
13
prescription, stating, “we will be referring to the Roth prescription as RT Rx.” (Ex.
14 85 at 1.) A similar marketing email from Elizabeth Malson, GAC's former
15 Director of Marketing, states, “‘Roth’ now ‘RT’.” (Ex. 86 at 2). GAC’s attempted
16 distinction between ROTH and the Roth prescription is a chimera.
17
• Mr. Kringel and Ms. Ricciardi both acknowledged that in selecting a new name, it
was important for consumers to understand what they were purchasing (TR at
18
1015:9- 1016:1; TR at 471:10-16.); and under interrogation Kringel acknowledged
19
that he wanted the new name to be close to ROTH in order to provide the
20
“strongest messaging possible.” (TR at 1015:18-1016:1).
21
GAC’s arguments that Roth Licensing’s mark is “weak in a crowded market” is
22 itself weak in comparison with the evidence supporting a finding of likely confusion after
23 analysis of all the Sleekcraft factors, especially when the evidence of GAC’s intention is
24 considered.
25
-34-
1766
Likewise GAC’s argument it did not intend to trade on the ROTH mark because it
1
uses a disclaimer is disingenuous.7 GAC has admitted that its disclaimer serves to
2
“inform” consumers that RT RX means ROTH, indirectly demonstrating GAC's intent to
3
trade on the ROTH mark. (TR at 878:6-10; TR at 888:3-10.) GAC's own “confusion
4
expert,” Dr. Wind, testified that GAC's disclaimer might actually increase the likelihood
5 of confusion. (TR at 695:24- 696:3; TR at 578:10-22). GAC's disclaimer does not
6 eliminate the likely confusion created by its use of the RT RX mark. The disclaimer
7 appears at the very bottom of GAC's advertisements and website, not proximate to the RT
8
RX mark, which appears at the top of the advertisement and website. (Ex. 104 at 12.)
Additionally, the disclaimer appears in print that is significantly smaller than that used for
9
the RT RX mark. See, e.g., Cartier, Inc. v. Deziner Wholesale, L.L.C., 55 U.S.P.Q. 2d
10
1131 (S.D.N.Y. 2000) [disclaimer in print smaller than defendant’s use of infringing
11
mark is not effective to offset likely confusion].
12 In trademark infringement disputes, “the efficacy of disclaimers generally is in
13 doubt.” Beacon Mut. Ins. Co. v. OneBeacon Ins. Corp., 376 F. Supp. 2d 251, 266 (D.R.I.
14 2005). Accordingly, many courts have held that disclaimers do not preclude a finding of
15 likely confusion. )See, e.g., McCarthy on Trademarks and Unfair Competition § 23:51;
Australian Gold, Inc. v. Hatfield, 436 F.3d 1228 (10th Cir. 2006) [disclaimer on website
16
does not dispel likelihood of confusion caused by use of plaintiff's mark]). A relatively
17
inconspicuous disclaimer generally will not preclude a finding of likely confusion. See
18
Weight Watchers Int'l, Inc. v. Stouffer Corp., 744 F. Supp. 1259 (S.D.N.Y 1990) (A
19
disclaimer of connection or affiliation appeared in “miniscule print” on the very bottom
20 of an ad…“because of its location and size, the disclaimer does not effectively eliminate
21 the misleading impression conveyed in the ad's large headline.”]. It is the defendant's
22 burden to prove that use of a disclaimer avoids consumer confusion. Home Box Office,
23
Inc. v. Showtime/The Movie Channel Inc., 832 F.2d 1311, 1315 (2d Cir. 1987); see also
24
7
GAC's disclaimer states as follows: Our RT Rx has values that are equivalent to the Roth®
prescription values. No endorsement is implied. Roth® is a registered trademark of Roth
25 Licensing LLC. (Ex. 69 at 5)
-35-
1767
Clinique Labs., Inc. v. Dep Corp., 945 F. Supp. 547, 556 (S.D.N.Y. 1996) (noting it is a
1
“heavy burden”).
2
GAC's willful intent is further shown by the fact that it could have selected any
3
name to replace ROTH, but nevertheless chose RT RX. GAC claims that it should be
4
free to use “ROTH” (or its variant “RT”) to describe its products because no other word
5 properly conveys Dr. Roth”s prescription. Yet, GAC has adopted entirely arbitrary names
6 to connote other trademarked prescription names. MBT, like ROTH, is a prescription
7 used by orthodontic companies in connection with brackets. One of GAC's major
8
competitors, the 3M Unitek Corporation, owns the rights to the MBT trademark. (Ex.
300.) GAC has not licensed the right to use the MBT mark, and does not use the term
9
“MBT” in the names of its brackets. Instead, GAC uses a completely remote name,
10
EURO, for its brackets offered in the MBT prescription; and it refers to MBT less
11
prominently. (Ex. 104 at 15.) GAC's customers understand that GAC's EURO
12 prescription is the equivalent to MBT. (TR at 473:8-16; TR at 178:1-9.) Unlike the Roth
13 Family Trust and its assignee Roth Licensing, 3M Unitek is a large company with the
14 resources to respond aggressively to any infringement. The fact that GAC gives 3M a
15 wide berth regarding its MBT mark, by using EURO, while deliberately staying “close”
to Roth Licensing’s ROTH by using RT RX supports a finding of willfulness in this case.
16
Mr. Kringel admitted that instead of RT RX, GAC could have selected a
17
completely distinct name like “ASIA.”8 (TR at 1016:23-1017:5.) Instead GAC selected
18
RT in order to be close to ROTH. The most reasonable inference is that GAC intended to
19
capitalize and continue to trade on Roth Licensing’s distinctive ROTH mark, as well as
20 the recognition and goodwill associated with that mark. See Sleekcraft, 599 F.2d at 354
21 [“[w]hen the alleged infringer knowingly adopts a mark similar to another's, reviewing
22 courts presume that the defendant can accomplish his purpose: that is, that the public will
23
be deceived.”]
Although GAC had licensed the ROTH mark from Roth Licensing and its
24
predecessors for nearly twenty years, it did not inform Roth Licensing of its decision to
25
8 Following the Interim Decision on liability GAC changed its mark to “BASE.”
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1768
use RT RX. (TR at 208:2-18.) Based on their history of negotiations, GAC could be
1
certain that Roth Licensing would object to this use. In 2011 and 2012, Roth Licensing
2
had informed GAC of its enforcement efforts against Sybron and RWISO for their use of
3
the letter “R” in the name RW FACE. (TR at 295:22-25; Exhibits 136 and 137 at 9.)
4
GAC must have known that use of “RT” was objectionable since the use of “R” had
5 already been disputed.
6 Willfulness is further supported by GAC's deliberate choice not to communicate
7 the name change to its loyal ROTH customer base, presumably to conceal its decision to
8
end its relationship with the Roth family. After all, GAC’s Marketing manager admitted
that he preferred to avoid the need to “explain” the change. GAC did not announce this
9
name change publicly, nor did it require its sales representatives to proactively inform
10
ROTH customers of this name change. (TR at 479:14-16; 480:3-481:8.) Dr. Wasserman
11
did not learn of the name change until his involvement in this proceeding in 2016. (TR at
12 98:16-99:1). Although Ms. Ricciardi testified that GAC's best “A and B list” customers
13 received the updated RT RX catalog (TR at 483:5-484:4), Dr. Wasserman did not receive
14 the catalog, even after he requested it. (TR at 100:20-103:1.) Telephone records admitted
15 in the reconvened hearing showed that Wasserman called to request a catalog; and GAC
failed to establish any sinister collusion with Roth’s attorneys based on that request.
16
GAC's customers cannot order products from GAC’s website, thereby lessening the
17
likelihood that they would learn of the change there (TR at 489:6-8.)
18
This evidence shows that GAC knew its breach with the Roth family would
19
resonate with longtime customers and that GAC intended to downplay the end of that
20 relationship. Before any announcement of the name change, all references to the word
21 “relationship” were removed form GAC’ materials. (Ex. 256 at 3-4.) GAC's Vice
22 President noted that the change was necessary to “distill [] down the ‘relationship value’
23
of this transition as I don't want our reps to get wrapped up that we may or may not have
had a falling out with the Roth estate.” (Ex. 256 at 3.) The fact that GAC did not want to
24
send this message, even internally, also constitutes evidence of GAC's awareness of the
25
value of the perceived association between GAC and ROTH within the precise cohort of
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1769
loyal Roth followers in the orthodontic appliance market. This amounts to deliberate
1
confusion of some customers as to the relationship between Dr. Roth, the ROTH mark
2
and GAC.
3
Actual Confusion Need Not Be Shown
4
“Neither actual confusion nor intent is necessary to a finding of likelihood of
5 confusion.” Century 21 Real Estate Corp. v. Sandlin, 846 F.2d 1175, 1178 (9th Cir.
6 1988). Courts have long recognized that demonstrating actual confusion is difficult and
7 the lack of such evidence is generally not noteworthy. Network Automation, 638 F.3d at
8
1151; Brookfield, 174 F.3d at 1050 [“difficulties in gathering evidence of actual
confusion makes its absence generally unnoteworthy”]; Levi Strauss & Co. v. Blue Bell,
9
Inc., 778 F.2d 1352, 1360 n. 10 (9th Cir. 1985) [“[t]he absence of evidence of actual
10
confusion need not give rise to an inference of no likelihood of confusion.”]
11
Nonetheless, GAC argues the that a negative inference should be drawn against
12 Roth Licensing for failing to offer survey evidence to show confusion in the market.
13 However, courts in the Ninth Circuit recognize that surveys are expensive, and fault a
14 plaintiff for not conducting a survey only where it has “the financial resources to pay for
15 such a survey.” Playboy Entertainment, Inc. v. Netscape Commc'ns Corp., 55 F. Supp.

2d 1070, 1079, 1084 (C.D. Cal. 1999) [noting plaintiff had $300 million in net sales in
16
1997]; see also Cairns v. Franklin Mint. Co., 24 F. Supp. 2d 1013, 1041 (C.D. Cal. 1998)
17
[negative inference against plaintiff who failed to offer a survey where “it has the
18
financial resources to do so”]. “[A] a plaintiff's attorney may well make a rational
19
decision not to pay for a confusion survey because she correctly feels that other evidence
20 is strong enough to prove plaintiff's infringement case.” McCarthy on Trademarks and
21 Unfair Competition § 32:195. Roth Licensing is a small family business with limited
22 funds, and last had income in 2014. (TR at 180:17-22.) The evidence in this case,
23
including the above-discussed evidence establishing GAC's willful conduct, is sufficient
to prove GAC's intentional infringement.
24
This finding of willful infringement defeats several of GAC’s arguments and
25
affirmative defenses including:
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1770
• Classic Fair Use requires the term to be used “fairly and in good faith.” Cairns v.
1
Franklin Mint Co., 292 F. 3d 1139, 1150 (9th Cir. 2002);
2
• Nominative Fair Use also depends upon good faith and requires that “the
3
defendant did nothing that would, in conjunction with the mark, suggest
4
sponsorship or endorsement by the plaintiff”. New kids on the Block v. News
5 America Pub., Inc. 971 F. 2d 302,308 (9th Cir. 1992); and
6 • Unclean Hands is an equitable concept that actually works against GAC in this
7 instance because “equity requires that those seeking its protection shall have acted
8 fairly and without fraud or deceit as to the controversy in issue.” Ellenburg v.

Brockway, Inc., 763 F2d. 1091, 1097 (9th Cir. 1985).
9
10
GAC’s “Experimental” Survey Opinion Is Entitled To Little Weight
11
“Surveys demonstrating an absence of actual confusion among a certain
12
population would not necessarily defeat the likelihood of confusion.” Century 21 Real
13 Estate Corp., 846 F.2d at 1181 (9th Cir. 1988). GAC paid approximately $200,000 for a
14 confusion analysis by “legendary” marketing expert Dr. Jerry Wind from The Wharton
15 School. Dr. Wind himself insisted that his work was an “experiment” and not a survey.
16
In any event, his opinion is not persuasive because of the methodology he employed in
conducting his experiment: (1) the universe he selected was flawed; (2) the stimuli
17
applied were inappropriate; and (3) the questions presented were improperly framed and
18
thus did not lead to useful data. Ultimately, Dr. Wind presented no persuasive findings.
19
Dr. Wind failed to take into account the heterogeneity of the market for
20
orthodontic appliances. The market for orthodontic appliances is heterogeneous because
21 only some doctors are willing to pay higher prices for certain brands or bracket types, and
22 most favor a particular prescription brand, (e.g., such as ROTH). The evidence
23 established that Roth brackets are relatively more expensive in several ways. Dr. Wind
did not attempt to pre-screen or survey orthodontists who had received training from Dr.
24
Roth, or who used a ROTH-branded prescription, or who are willing to pay a premium
25
price for a brand. Instead, Dr. Wind chose to survey the entire field of orthodontists.
-39-
1771
(TR at 628-630) His experimental groups excluded precisely the doctors likely to be loyal
1
to a brand connected to Dr. Roth.
2
Dr. Wind obtained completed surveys from a total of only 203 respondents. (Ex.
3
504 at 12.) To obtain these respondents, Dr. Wind used two sources (online and a contact
4
list) to contact more than 1,500 potential respondents. In total, only approximately 1 in 7
5 of the contacted survey candidates provided a completed survey, immediately raising
6 questions of sample bias. An obvious example of bias is the selection of orthodontists
7 from those willing to complete the survey for $25 to $75 compensation. Patently those
8
doctors are unlikely to be the busy, successful set of orthodontists willing to pay higher
prices for appliances. (TR at 646-649.) Indeed, certain of the respondents expressed price
9
sensitivity, suggesting that they would seek the lowest price and never pay a premium for
10
any bracket product. (TR at 655.)
11
Dr. Wind also selected inappropriate stimuli for his experiment. First, Dr. Wind
12 selected OMNIARCH RT RX (a less expensive metal twin bracket) as the test product
13 rather than a premium self-ligating9 product like In-Ovation, which is undoubtedly
14 associated with Dr. Roth. (TR at 665.) By selecting a lower selling, and lower-priced
15 product that Dr. Roth had not promoted, Dr. Wind’s survey failed to address a central
question in this case: namely the value of the ROTH endorsement on key ROTH products
16
like In-Ovation RT RX.
17
In keeping with GAC’s argument that unprotected “prescriptions values” are
18
distinct from the mark, the test and control stimuli presented by Dr. Wind are
19
substantially similar. The only change of stimuli between the experimental groups was
20 the replacement of RT RX with ROTH PRESCRIPTION. (Ex. 504 at 153-60.) As GAC’s
21 executive Piervencenti admitted, “RT RX means ROTH PRESCRIPTION”.
22 Accordingly, the test and control stimuli were essentially identical. Roth Licensing
23
points out that Dr. Wind has previously been criticized for his technique of using test and
9 Self-ligating brackets are more expensive because they include a mechanism to allow wires to
24
be more easily attached. They greatly accelerate the adjustment process, thus allowing more
25 patients to be treated in a day. This is one reason that Dr. Roth’s system has been attractive to
the busiest and most lucrative orthodontic practices.
-40-
1772
control stimuli that were too similar. Louis Vuitton Malletier, S.A. v. Hyundai Motor
1
America, No. 10 Civ. 1611, 2012 WL 1022247, at *24 (S.D.N.Y Mar. 22, 2012) [noting
2
that use of test ad with basketball in chestnut brown emblazoned with LV logo was
3
arguably too similar to the control ad with a chestnut brown basketball]. In the instant
4
experiment Dr. Wind should have used a control that did not refer to ROTH at all.
5 Finally, Dr. Wind constructed questions that did not focus upon the issues in this
6 case and instead asked about the maker of the product and about permission to make the
7 product (thus tracking the theme of GAC’s disclaimer argument). These questions
8
resulted in the exclusion of most of the 203 respondents from the open-ended response
portions of the survey. (Ex. 504 at 167, 169, 170, 214.) Hardly anyone was left to
9
answer the open-ended questions that might have been most revealing. The initial
10
skewed selection of responding doctors, the prejudicial selection of stimuli and the
11
winnowing of responses to open-ended questions left nothing but a shell of an
12 experiment. Like an egg drained by a weasel, the remaining shell has almost no weight.10
13 GAC Breached The 2012 License Agreement
14 In the 2012 agreement, GAC agreed to cease all use of the ROTH rights after the
15 90-day phase-out period following December 31, 2014. GAC also agreed that it would
not contest GAC's rights to the ROTH mark, including after expiration of the license.
16
(Ex. 53 §§ 2.3 “no contest” provision and 3.4 “phase-out” obligation). The evidence
17
shows that GAC, and its parent Dentsply Sirona breached the 2012 agreement by: (1)
18
continuing to use RT RX which is the near-equivalent version of ROTH while seeking to
19
register the RT RX mark, and promoting its affiliation with Dr. Roth; and (2) challenging
20 the validity of the ROTH mark.11
21
22
10
23 No offense to Dr. Wind is intended by the use of this description, which was coined by Justice
Roger Traynor of the California Supreme Court to refer to words and legal arguments that lack
24 genuine substance.
11 GAC contends that Roth licensing should be barred from recovery based on certain of the
25 asserted breaches of the 2012 agreement because it failed to timely plead them. Not so in the
context of arbitration; and certainly not where prejudice has not been shown.
-41-
1773
Under the 2012 agreement, GAC was to cease all use of the Roth Rights, including
1
the ROTH mark, and Dr. Roth's name and image by March 31, 2015. (Ex. 53 § 2.3.) In
2
addition to its trademark infringement, GAC's use of RT RX, a near-equivalent to ROTH,
3
constitutes breach of the 2012 contract. See McCarthy on Trademarks and Unfair
4
Competition § 25:31 [noting continued use of licensed mark post-license constitutes
5 trademark infringement and breach of contract].
6 The evidence also shows that GAC continued to use the ROTH rights after the
7 phase-out period, as recently as February of 2017. In 2015, GAC sought to use “Roth in
8
the search algorithm” of its website, so that “if [users][search] Roth, they get results for
RT Rx”. (Ex. 87 at 4.) Ms. Ricciardi testified that she does not know whether GAC ever
9
implemented that algorithm. (TR at 507:13-15.) She also testified that when she did a
10
search for “ROTH” after the name change, GAC's website yielded no results. (TR at
11
507:16-508:2.) Nevertheless, during the initial arbitration hearing, on February 7, 2017,
12 a search for the term “ROTH” on GAC's website yielded 316 pages of products hits,
13 including over 2000 brackets. (TR at 507:13- 508:12.) Although Ms. Ricciardi claims
14 that this may be due to the use of ROTH in the disclaimer (TR at 508:13-17), GAC was
15 using the disclaimer as of April 1, 2015, when Ms. Ricciardi performed the same search
and allegedly received no results.
16
Although GAC claims that it began moving away from use of the ROTH brand
17
and Dr. Roth’s endorsement in 2009, the evidence is otherwise. In 2009, GAC added
18
language to its catalog signifying Dr. Roth's teaching philosophy. (Ex. 554 at 11.) Both
19
Dr. Wasserman and Mr. Kringel confirmed that this language uniquely describes Dr.
20 Roth's treatment plan. (TR at 104:18-105:22; TR at 923:6-924:16.) This language
21 remains in GAC’s current catalog, published in 2015, regarding its In-Ovation R RT RX
22 product, and continues to remind customers of the association between Dr. Roth and this
23
specific, and most profitable, product. (Ex. 104 at 11.)
Similarly, GAC's marketing website, www.dsorthodontics.com, identifies (as the
24
leading article of 2016) an article related to the In-Ovation bracket. (Ex. 324.) The article
25
makes repeated references to Dr. Roth and his role in developing the In-Ovation bracket
-42-
1774
with GAC. (Ex. 324 at 8, 9, and 15.) This article was first published on GAC’s
1
marketing website on March 25, 2015 (Ex. 113), just days before the end of the phase-
2
out period under the 2012 license agreement.
3
GAC has posted this article to its Facebook page at least four times since the
4
termination of the parties’ license agreement, including as recently as January 9, 2017.
5 (Ex. 324 at 46-49.) GAC’s use of Dr. Roth’s name years after the end of its license
6 shows that even during the arbitration hearing, GAC continued to promote its longtime
7 association with Dr. Roth and use the ROTH name.
8
GAC also breached the agreement by contesting the ROTH mark after
expiration of the license period in several proceedings. First, on April 27, 2015, GAC
9
filed a tactical declaratory relief action for non-infringement in the U.S. District Court
10
for the Eastern District of New York. (Ex. 79.) That detour significantly delayed these
11
arbitration proceedings. In support of its claims in the New York case, GAC alleged
12
that the ROTH mark was not entitled to trademark protection and had become generic.
13 (Ex. 79 at ¶¶ 11, 20.) The same issues are central in this proceeding (Ex. 80 at 11, 13
14 and 17) leading the U.S. District Court in New York to defer to this arbitration.
15 On September 20, 2016, GAC, through its parent company, Dentsply Sirona,
filed a trademark proceeding with the Trademark Trial and Appeal Board seeking to
16
cancel Roth Licensing's registration for the ROTH mark. (Ex. 288.) Dentsply Sirona
17
alleged that the ROTH mark is generic and thus not entitled to federal registration.
18
Dentsply Sirona also alleged that the ROTH mark stood as a bar to use of the RT RX
19
mark, and accordingly, should be cancelled. (Ex. 288 at¶ 5.) GAC argues that it
20 cannot be held liable for this cancellation petition because Dentsply Sirona, and not
21 GAC, filed the petition. However, the evidence shows that only GAC uses the RT RX
22 mark; Dentsply Sirona does not use the trademark. (Baumgardner Depo. at 64:7-65:2.)
23 And, although Dentsply Sirona filed the trademark application for the RT RX mark, it
is the company's general practice to file trademark applications in Dentsply Sirona’s
24
name, rather than in the name of its subsidiaries. (Baumgardner Depo. at 64:10-18.)
25
Accordingly, although Dentsply technically is the entity seeking cancellation of
-43-
1775
the ROTH mark, it is indisputably doing so as GAC's agent and solely to protect GAC’s
1
ability to use the RT RX mark. Such conduct is attributable to GAC, and plainly
2
violates the no contest provision in the 2012 agreement. Finally, the filing of the RT
3
RX trademark application by Dentsply Sirona also violates the duties not to contest and
4
not to use the ROTH mark, as via the application, GAC is attempting to register a mark
5 that conflicts (i.e., is likely to cause confusion) with the ROTH mark. 12
6 GAC has violated Dr. Roth’s statutory right of publicity
7 California Civil Code Section 3344.1(a)(1) provides for a right of action against
8
one who uses the name or likeness of a deceased personality in any manner, on or in
products, or for the purpose of advertising or selling goods without the prior consent of
9
the decedent's successor. Cal. Civ. Code § 3341(a)(1). A “deceased personality” is any
10
natural person whose name, voice, signature, photograph, or likeness has commercial
11
value at the time of his death. Cal. Civ. Code § 3344.1(h). Generally, there must be a
12 “direct connection” between the unpermitted use and a commercial purpose. Yeager v.
13 Cingular Wireless LLC, 673 F. Supp. 2d 1089, 1095 (E.D. Cal. 2009).
14 “To trigger infringement of the right of publicity, the plaintiff must be
15 ‘identifiable’ from defendant's unauthorized use.” McCarthy Rights of Publicity and

Privacy § 3:17 (2d ed. 2015). Liability does not require that defendant use plaintiff's
16
exact name, so long as a reasonable person could identify plaintiff from defendant's use.
17
(See id. § 4:53 [“A defendant's disguised use of plaintiff's name will not avoid
18
identification if the context makes plaintiff readily identifiable to the reasonable
19
person.”] “No one is free to trade on another's name and appearance and claim
20 immunity because what he is using is similar to but not identical with the original.”
21 Onassis v. Christian Dior-New York, Inc. 472 N.Y.S.2d 254, 261 (1st Dep't 1985).
22 GAC has violated the posthumous right of publicity pertaining to Dr. Roth
23
12
Roth Licensing argues that to completely resolve this dispute Dentsply Sirona, Inc, (GAC’s
24 ultimate parent) must be added to the arbitration as a party, because Dentsply Sirona, Inc. filed
the trademark application for RT Rx as well as a cancellation proceeding challenging the ROTH
25 mark. Whether or not Dentsply Sirona, Inc. is a proper party, GAC can be ordered to obtain the
dismissal of those proceedings by its parent and agent, Dentsply Sirona, Inc.
-44-
1776
because the evidence establishes that Dr. Roth's name had “commercial value” at the
1
time of his death. GAC cannot dispute that when he died, Dr. Roth had an ongoing
2
endorsement agreement with GAC whereby GAC compensated Dr. Roth for use of his
3
name in connection with its products and advertising. (Ex. 51A.) GAC touted the fact
4
that Dr. Roth endorsed its products exclusively, and recognized that Dr. Roth helped
5 build GAC's reputation in the industry, and grew sales for GAC. (Ex. 54 at 4; TR at
6 745:21-24; TR at 756:15-757:17; TR at 756:6-8.)
7 As discussed above, GAC's adoption of RT RX is intended to mimic Dr. Roth's
8
name, and GAC even admits that RT RX means ROTH. GAC’s use of a variant of Dr.
Roth's name does not preclude liability. See Chaplin v. Amador, 93 Cal. App. 358 (1st
9
Dist. Ct of Appeal 1928) [enjoining actor from appearing in motion picture as “Charlie
10
Aplin.”]. GAC has continued to refer to Dr. Roth in a variety of ways in an ongoing
11
effort to preserve the perception of affiliation and endorsement.
12 Accordingly, GAC is liable for willful trademark infringement under the Lanham
13 Act and under California common law, for breach of contract, and for violation of Dr.
14 Roth's posthumous statutory right of publicity.
15 DISCUSSION OF REMEDIES
The Lanham Act provides a variety of remedies for trademark infringement,
16
including injunctive relief, monetary damages in the amount of defendant’s profits,
17
enhanced damages and attorney fees. See 15 U.S.C. §§ 1116 and 1117; Fifty-Six Hope
18
Road Music, Ltd. v. A.V.E.L.A., Inc., 778 F.3d 1059, 1074 (9th Cir. 2015) (defendant's
19
profits awarded for trademark infringement); Earthquake Sound Corp. v. Bumper Indus.,
20 352 F.3d 1210 (9th Cir. 2003) (plaintiff's attorney fees awarded for trademark
21 infringement).
22 The Lanham Act permits “considerable discretion in fashioning an appropriate
23
remedy for infringement.” Taco Cabana Int'l, Inc. v. Two Pesos, Inc., 932 F.2d 1113,
1127 (5th Cir. 1991); Southland Sod Farms v. Stover Seed Co., 108 F.3d 1134, 1146 (9th
24
Cir. 1997) (district court has “discretion to fashion relief, including monetary relief,
25
based on the totality of circumstances.”). And in crafting such remedies “it is essential
-45-
1777
that the trial courts carefully fashion remedies which will take all the economic incentive
1
out of trademark infringement.” Playboy Enters., Inc. v. Baccarat Clothing Co., Inc., 692
2
F.2d 1272, 1275 (9th Cir. 1982) Indeed, “[t]he trial court's primary function is to make
3
violations of the Lanham Act unprofitable to the infringing party.” Roulo v. Russ Berrie
4
& Co., Inc., 886 F.2d 931, 941 (7th Cir. 1989), citing Otis Clapp & S, Inc. v. Filmore
5 Vitamin Co., 754 F. 2d 738,744 (7th Cir.1985).
6 “Great latitude is given the trial judge in awarding damages,” and “[t]his is
7 especially true of an award fashioned pursuant to the Lanham Act which confers upon
8
district judges wide discretion in determining a just amount of recovery for trademark
infringement.” Ramada Inns, Inc. v. Gadsden Motel Co., 804 F.2d 1562, 1564-65 (11th
9
Cir. 1986); see also Playboy Enters., Inc. v. Baccarat Clothing Co., Inc., supra at 1275
10
(“any decision concerning the awarding of an accounting of profits remedy should
11
remain within the discretion of the trial court.”).
12 Roth Seeks Disgorgement of All Profits
13 Roth contends “In this case, damages are appropriately measured by GAC's profits
14 on the RT RX products. As this Panel has determined, GAC's infringement was willful
15 and deliberate. Despite licensing the ROTH mark from Dr. Roth and his successors for
nearly twenty years, GAC recklessly disregarded the longstanding ROTH trademark
16
rights when it adopted the RT RX mark, cynically presuming that Roth Licensing would
17
be unable to challenge this infringement. Accordingly, this Panel should award GAC's
18
profits as unjust enrichment, to deter GAC from future infringements and ensure that
19
GAC does not realize substantial profits from this activity.”
20 The parties have stipulated that GAC's profits on sales of RT RX products from
21 April 1, 2015 to February 28, 2017 totaled . This stipulation also permits “a
22 straight line extrapolation from these numbers for any further period of use of RT Rx by
23
GAC beyond February 28, 2017.” (Ex. 449) The parties have agreed, for purposes of the
analysis of damages, that GAC used the RT RX mark for an additional three months,
24
through May 31, 2017, for a total of 26 months. (Ex. 450.) Accordingly, it is understood
25
-46-
1778
GAC's profits for the entire infringement period (i.e., April 1, 2015 to May 31, 2017)
1
amount to . (Ex. 450.)
2
Arguing unjust enrichment and relying on the foregoing authorities that
3
deterrence is the primary goal of an award of damages, Roth seeks disgorgement by
4
GAC of the entire amount of .
5 GAC Argues Disgorgement Punitive and a Windfall
6 Relying upon some of the same authorities as Roth, GAC argues that in the 9th
7 Circuit damages may be awarded “only to the extent the award ‘shall constitute
8
compensation and not a penalty.’” Fifty-Six Hope Road Music, Ltd. v. A.V.E.L.A., Inc.,
supra. Therefore, GAC contends that the proper measure of damages in a case such as
9
this, where the parties have a previous agreement, must be based on the reasonable value
10
of royalty payments under the circumstance of this case. Design Innovation, Inc. v.
11
Fisher-Price, Inc., 463 F. Supp. 2D 177,183 (D. Conn 2006); Ramada Inns, Inc. v.
12 Gadsden Motel Co., 804 F. 2d 1562, 1565 (11th Cir. 1986); Holiday Inns, Inc., v. Airport
13 Holiday Corp., 493 F. Supp. 1025, 1028 (N.D. Tex. 1980).
14 GAC’s argument that disgorgement of all of GAC’s profits would require a
15 finding that GAC’s own efforts were valueless in achieving the sales producing those
profits is persuasive; and such a conclusion would likely be inequitable and contrary to
16
the evidence. Moreover, any effort to apportion the credit due each side for those sales
17
would be difficult and possibly speculative on this record.
18
GAC Stresses “Established Rate” as Reasonable Royalty
19
On the other hand the parties agree that the Arbitrator may also consider awarding
20 a reasonable royalty payment in lieu of profits. The authorities recognize a reasonable
21 royalty as a measure of damages in trademark infringement cases. See, e.g., Sands,
22 Taylor & Wood v. Quaker Oaks Co., 34 F.3d 1340, 1350 (7th Cir. 1994). Courts have
23
awarded a royalty in the context of a trademark license, where the licensee continued to
use the mark after the license ended. See McCarthy on Trademarks and Unfair
24
Competition § 30:85. And sometimes the royalty rate can be measured (in part) by a rate
25
the parties had agreed upon. Id.
-47-
1779
However, contrary to GAC’s argument that the payments made historically by

1
GAC to Roth must be the primary basis for determining a reasonable royalty, the former
2
license rate in this case does not necessarily constitute a reasonable royalty in calculating
3
damages. Trio Process Corp. v. L. Goldstein's Sons, Inc., 612 F.2d 1353 (3d Cir. 1980)
4
(“existing licensee fees” not conclusive evidence of a “reasonable” royalty) (patent
5 infringement); see also Nickson Indus., Inc. v. Rol Mfg. Co., 847 F.2d 795, 798 (Fed. Cir.
6 1988) (noting reasonable royalty may be greater than actual license rate) (patent
7 infringement); Russell Box Co. v. Grant Paper Box Co., 203 F.2d 177, 182-83 (1st Cir.
8
1953) (fact that licensee previously paid a set royalty did not preempt application of the
reasonable royalty measure of damages).
9
Such analysis is particularly pertinent under the facts of this case, both because
10
Roth accepted the former fees to avoid the expense of litigation; and because Roth
11
repeatedly requested, and GAC refused to disclose, sales records, which would have
12 allowed Roth to formulate a fair market value for licensing the ROTH mark. In the face
13 of GAC’s persistent sharp practices in restricting good faith negotiation of the licensing
14 fees, the assertion by GAC’s expert Rosenthal that the former “established rate” must
15 drive the analysis of a reasonable royalty payment is entitled to little weight. This should
not be interpreted as an effort to compensate for any past, lost opportunity to obtain a
16
higher rate of payment; rather it is an observation that the former rate of pay is not the
17
only factor to be considered and is not determinative.
18
The Ninth Circuit has held that a license fee does not constitute an “established”
19
rate if it was accepted in the face of litigation (Faulkner v. Gibbs, 199 F.2d 635, 638 (9th
20 Cir. 1952)) and the parties’ history of litigation has been amply demonstrated:
21 • Roth Licensing entered into two license agreements with GAC, the 2007
22 and 2012 agreements, both of which were negotiated while GAC was
23
making unlicensed use of the ROTH mark. (Exs. 52-53.) After Dr. Roth
died in 2005, GAC continued to use the ROTH mark without compensating
24
Dr. Roth's successors. (TR at 190:6-191:2.) After sending two cease and
25
desist letters (Exs. 73-74), and negotiating for months, in 2007, the Roth
-48-
1780
Family Trust entered into a settlement agreement with GAC. (Ex. 52; TR
1
at 192:3-24.)
2
• As part of that settlement, the Roth Family Trust agreed to accept a
3
$200,000 annual license fee. (Id.) Roth Family Trust accepted this lower
4
rate to avoid the expense of litigation. (TR at 194:22-195:3 ("[W]e didn't
5 have the resources to fight them on it. And we just wanted a friendly
6 resolution, so we accepted it.")).
7 • During these negotiations, GAC refused to produce sales records, forcing
8 the Roth Family Trust to choose between litigation or a fixed fee. (Liability
Decision at 9; TR at 192:19-193:24; Ex. 125 at 1-14; Exs. 126-127.)
9
• Upon expiration of this license in 2011, GAC continued to use the ROTH
10
mark without compensation. (TR at 198:6-16.) In August 2012, after
11
waiting months for GAC to confirm renewal of the license, the Roth Family
12
Trust filed an arbitration demand against GAC for trademark infringement
13 and violation of Dr. Roth's publicity rights. (Ex. 139.)
14 • The parties settled this dispute seven months later, in March 2013, by
15 entering into a further three-year license. (Ex. 53.) During these
16 negotiations, Roth Licensing again requested sales records from GAC, but
GAC refused to produce them. (Liability Decision at 10; TR at 198:17-
17
199:18; Ex. 137 at 10-18.)
18
Neither Roth nor its predecessor the Roth Family Trust was ever provided with
19
sales or profits information from GAC. Moreover there was no evidence o support
20
GAC’s argument that Dr. Roth himself was presumptively aware of GAC’s sales figures
21 during his lifetime because he was a a close friend of Mark Elwell. The evidence showed
22 that GAC always refused to turn over such information, leaving Roth Licensing to
23 negotiate with substantially incomplete information. Roth Licensing’s damages expert
24
Nolte pointed out, without dispute by GAC, that in considering a reasonable royalty,
courts assume that parties have necessary information. (Ex. 92 at 13-14.)
25
-49-
1781
Factors Used to Calculate Reasonable Royalty Payment

1
The parties agree that a number of factors must be considered to arrive at a
2
“reasonable” rate, and those factors are described in Georgia Pacific Corp. v. U.S.
3
Plywood Corp., 318 F. Supp. 1116, 1122 (S.D.N.Y. 1970). The reports of both experts
4
evaluated those factors in strikingly different ways
5 The following factors, among others, are relevant to determining a reasonable
6 royalty: (a) royalty rates in prior licenses, as received by plaintiff/licensor or paid by
7 defendant/licensee; (b) the special value of the mark to the infringer, and the nature and
8
scope of the infringer's infringing use; (c) the profitability of the infringer's use; (d) the
lack of viable alternatives; (e) the amount that the licensor and licensee would have
9
agreed upon in voluntary negotiations; and (f) the opinion of expert witnesses. Sands,
10
Taylor and Wood v. Quaker Oaks, No. Civ A-84-8075, 1993 WL 204092, at *4 (N.D. Ill.
11
June 8, 1993) (overruled on other grounds) (citing Georgia-Pacific, supra).
12 Based on these factors, Roth Licensing's damages expert, David Nolte, determined
13 that the reasonable royalty rate in this case is 7%, with a floor of 5%. (Nolte Report Ex.
14 92 at 16-18.) Against GAC's of worldwide sales for RT RX products for
15 the period of infringement (April 2015 to May 2017), this yields an estimated royalty of
. (Nolte Report Ex. 92 at 18; Ex. 449 at ¶¶ 1,3.)
16
The following evidence supports Mr. Nolte’s opinion regarding his estimate of a
17
reasonable royalty amount:
18
• Trademark licenses in the corporate field (including GAC's industry) are
19
generally in the range of 5-9%. (Ex. 92 at 16-18.)
20 • The ROTH brand is the lifeline of GAC's business. ROTH is GAC's highest-
21 selling prescription brand, comprising up to " of [GAC's] bracket
22 business," and brackets in turn comprise of GAC's business. (Ex. 92 at
23 15; Ex. 58 at 3; Ex. 57 at 7; Ex. 325.)

• GAC licensed and used the ROTH mark for nearly 20 years. (Exs. 50-53.)
24
During this time, GAC partnered with Dr. Roth, and developed with him an
25
-50-
1782
exclusive line of brackets (i.e., Ovation ROTH and In-Ovation R ROTH). (TR
1
at 723:18-724:10; Ex. 113 at 1.)
2
• GAC and Dr. Roth heavily promoted the ROTH branded products during his
3
lifetime. (TR at 732:25-733:28.) Under his agreement with GAC, Dr. Roth
4
was precluded from consulting for any other orthodontic company, effectively
5 ensuring that only GAC would be linked to his name. (Ex. 50 § 2; TR at
6 747:11-749:1.)
7 • GAC touted its unique relationship with Dr. Roth, using his name and image in
8 advertisements, and even referring to itself as "Roth Headquarters." (Ex. 54 at

2; Ex. 55 at 19-38; Ex. 103 at 2; Ex. 112; Ex. 114.)
9
• GAC witnesses acknowledged that Dr. Roth was instrumental to its business.
10
Mr. Piervencenti acknowledged that Dr. Roth helped build GAC's reputation in
11
the industry, grew sales for the company, and that his influence was an asset to
12
GAC. (TR at 756:4-8; TR at 756-15-757:17.) Mr. Kringel testified that GAC's
13 ROTH brackets far outsell all of GAC's other brackets because of Dr. Roth’s
14 influence and legacy in the industry. (TR at 940:21-942:2). Mr. Kringel also
15 testified that Dr. Roth's students form a loyal customer base for GAC, and
16
remain very loyal to the brand. (TR at 975:16-977:9.)
• In place of ROTH, GAC adopted the mark RT RX, a clear variant of the
17
ROTH mark, in an effort to continue to trade on ROTH goodwill.
18
In contrast, GAC’s expert Rosenthal’s opinion relied most heavily on factors that
19
distorted the evidence in favor of overreliance on the “established rate” of the parties’
20
prior relationship, such as, among other things:
21 • Stressing that the license was “non-exclusive” and that GAC was not a
22 “competitor” without acknowledging that under Dr. Roth’s consulting
23 agreement with GAC he was effectively precluded from working with any
24 other company; and his name was inextricably connected to GAC;
25
-51-
1783
• The primary reliance on the “long history” between the parties of a $200,000
1
annual fee, without consideration of the actual history of litigation and GAC’s
2
persistent refusal to inform Roth of the enormous volume of GAC sales of
3
Roth related products;
4
• The assumption of “indisputably declining sales” without acknowledgment that
5 all GAC sales were reduced after the Fukushima Tsunami destroyed the Tomy
6 plant;
7 • The citation of “no higher profit margin” for Roth Prescription brackets while
8 failing to acknowledge that ROTH remained GAC’s highest selling line of

products; and
9
• Relying on “undisputed” evidence that GAC was “moving away” from using
10
the Roth endorsement when in fact there was evidence of GAC’s use of Dr.
11
Roth name even during the Arbitration.
12
It is not surprising that Rosenthal’s estimate of a reasonable royalty for the period
13 April 2015 to May 2017 was only 1% to 1.5% and resulted in a range of damage
14 estimates If GAC were permitted to
15 retain all profits beyond the “established rate” of $200,000 per year, even increased in the
16 meager amounts of Rosenthal’s royalty estimates, then this infringement would prove
wildly profitable, and Roth’s significant efforts to stop the infringement would have been
17
unjustifiably risky and expensive.
18
Accordingly, the $200,000 “established” rate so heavily stressed by GAC’s expert
19
distorted his analysis of the fair market value of a reasonable royalty, and thus, GAC’s
20
proposed royalty payment range does not adequately compensate Roth Licensing for
21 GAC's infringement. See, e.g., Ramada Inns, Inc. v. Gadsden Motel Co., 804 F.2d 1562,
22 1567 (11th Cir. 1986) (ex-franchisee held over and used licensor’s marks for six months
23 after termination; court affirmed the award of damages beyond mere lost royalties per the
24
parties’ franchise agreement) (“Were we to hold that trademark infringement damages
could not be recovered if the franchisor received like damages in a separate action for
25
breach of the franchise agreement, we would provide an incentive for some infringers to
-52-
1784
‘hold over.’ With the knowledge that they could only be answerable for contractual
1
damages, unscrupulous infringers would ‘hold over’ with impunity.”)
2
Roth’s expert’s analysis and opinion was far more persuasive than the opinion
3
offered by GAC in light of all the evidence; and the Arbitrator finds that the reasonable
4
royalty payment payable as damages for the period of infringement (April 2015 to May
5 2017) is $4.97 million.
6 Enhanced Damages
7 The Lanham Act grants discretion to award up to treble damages. For actual
8
damages, “the court may enter judgment, according to the circumstances of the case, for
any sum above the amount found as actual damages, not exceeding three times such
9
amount.” 15 U.S.C. § 1117(a). As a matter of equity, if the amount of damages “is either
10
inadequate or excessive the court may in its discretion enter judgment for such sum as the
11
court shall find to be just, according to the circumstances of the case.” Id.; and the 9th
12 Circuit recognizes the equitable principle of the statutory scheme: see PepsiCo, Inc. v.
13 Triunfo-Mex., Inc., 189 F.R.D. 431, 432 (C.D. Cal. 1999) (a court may treble damages if
14 the amount of recovery is inadequate to deter future infringing conduct).
15 Here, treble damages are appropriate because the Arbitrator has determined to
award damages based the foregoing finding of the reasonable royalty rate for the period
16
of infringement and also finds that said damages are inadequate to deter future infringing
17
conduct. In light of GAC's significant profits totaling , and in
18
consideration that some portion of such profits are attributable to the efforts of GAC, the
19
Arbitrator concludes that a damages award of will not
20 adequately deter GAC from future infringing conduct, because its willful infringement
21 would still prove profitable. Trebling such damages is necessary to “take all the
22 economic incentive out of [GAC's] trademark infringement.” Playboy, 692 F.2d at 1275
23
(emphasis added); see also Maier Brewing Co., 390 F.2d at 123 (purpose of the Lanham
Act is to “mak[e] acts of deliberate trade-mark infringement unprofitable”).
24
The award of enhanced damages is particularly appropriate because the arbitrator
25
has concluded that GAC committed willful infringement. Nintendo of Am., Inc. v.
-53-
1785
Dragon Pac. Int'l, 40 F.3d 1007, 1010 (9th Cir. 1994); Binder v. Disability Group, Inc.,
1
772 F. Supp. 2d 1172, 1182-83 (C.D. Cal. 2011); Taco Cabana Int'l, Inc. v. Two Pesos,
2
Inc., 932 F.2d 1113, 1127 (5th Cir. 1991) (“An enhancement of damages may be based
3
on a finding of willful infringement). Accordingly, the damage award shall be trebled to
4
produce a total award of $14,910,000.
5 Attorney Fees And Costs
6 Under the Lanham Act, attorneys' fees are available only to the prevailing party in
7 “exceptional cases.” (15 U.S.C. § 1117). The Ninth Circuit has historically required that
8
to support a finding of ‘exceptional,” a claimant must plaintiff show that the defendant
engaged in “malicious, fraudulent, deliberate or willful infringement.” See, e.g., Lindy
9
Pen Co. v. Bic Pen Corp., 982 F.2d 1400, 1409 (9th Cir. 1993). However, in Octane
10
Fitness, the Supreme Court held that an analogous standard under the Patent Act was
11
“unduly rigid and impermissibly encumber[ed] the statutory grant of discretion to district
12 courts.” Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S.Ct. 1749, 1755
13 (2014).
14 The Supreme Court thus clarified that “[d]istrict courts may determine whether a
15 case is ‘exceptional’ in the case-by-case exercise of their discretion, considering the

totality of the circumstances.” Id. at 1756. While there is "no precise rule or formula for
16
making these determinations, “the following non-exclusive factors may be considered:
17
“frivolousness, motivation, objective unreasonableness (both in the factual and legal
18
components of the case) and the need in particular circumstances to advance
19
considerations of compensation and deterrence.” Id. at 1756 n. 6.
20 Following the Octane Fitness decision, the Ninth Circuit has applied this standard
21 for assessing “exceptional” cases under the Lanham Act. See SunEarth, Inc. v. Sun Earth
22 Solar Power Co., 839 F.3d 1179, 1181 (9th Cir. 2016). The Arbitrator finds that facts in
23
this case certainly meet this test.
The Arbitrator has not concluded that the defense of this infringement claim was
24
frivolous, and does not intend to suggest that any litigation tactic employed by any
25
attorney under instructions from their client was undertaken in bad faith or in violation of
-54-
1786
any ethical duty. Nevertheless, dilatory litigation tactics that are reasonably interpreted
1
as an effort to overwhelm an under-resourced opponent should be regarded as
2
“exceptional” in light of the Octane Fitness decision.
3
Exceptional Circumstances
4
Particularly in light of the evidence showing that GAC initiated this litigation in
5 order to avoid paying a $200,000 annual fee out of of profits,
6 this case stands out from the ordinary, thus entitling Roth to its attorney fees and costs.
7 As discussed above, there is a substantial need to deter GAC from profiting from willful
8
infringing conduct; GAC's defense of trademark invalidity was substantively meritless;
and in certain material respects, GAC litigated this case in an unreasonable manner, as
9
follows:
10
• Promptly upon learning of GAC's use of the RT RX mark, Roth Licensing
11
sent GAC an unequivocal cease and desist letter, informing GAC that its
12 use of RT RX infringed the ROTH mark, and demanding that GAC
13 immediately cease and desist from use of the mark. (Ex. 149.) GAC
14 responded by filing a declaratory relief action in the Eastern District of
15 New York (Ex. 79), notwithstanding the arbitration clause in the parties'
2012 agreement (Ex. 53 at § 4.5)
16
• GAC knew that Claimant was without substantial resources and
17
deliberately forced it to litigate unnecessarily in a distant federal court.
18
Roth spent over a year and substantial funds to have the federal action
19
stayed in favor of this arbitration proceeding. (TR at 210:1-9.) As noted
20 above, this detour significantly delayed these arbitration proceedings.
21 • Following the New York District Court’s grant of Roth's motion to compel
22 arbitration, these proceedings resumed in July 2016. GAC again engaged
23 in delayed these proceedings by filing a motion to stay this arbitration in

favor of the trademark opposition proceeding pending before the TTAB.
24
(GAC's 9-1-16 Motion To Stay Arbitration.) GAC sought this stay despite
25
-55-
1787
the fact that TTAB cases are ordinarily suspended in favor of pending civil
1
actions and arbitrations;
2
• Upon receipt of the unfavorable liability decision, GAC moved for a new
3
hearing based on additional evidence regarding Dr. Wasserman, and
4
claiming Dr. Wasserman had committed perjury based on evidence that
5 was within GAC's possession and control throughout these proceedings,
6 suggesting lack of diligence and arguably improper tactical motives; and
7 • GAC overstated the significance of the “new” evidence already in its
8 possession. After an additional two-day hearing, additional motions and

substantial pre and post-hearing briefing, GAC's proffered evidence did not
9
change the ultimate decision. 13
10
“A case may be exceptional based on the unreasonable manner in which it was
11
litigated." Digital Reg of Tex., LLC v. Adobe Sys., No. C 12-1971 CW, 2015 U.S. Dist.
12
LEXIS 29328, at *9 (N.D. Cal. March 9, 2015) (citation omitted); see also Interstellar
13 Starship Servs., Ltd. v. Epix Inc., 184 F.3d 1107, 1112 (9th Cir. 1999). GAC's litigation
14 tactics undoubtedly delayed these arbitration proceedings (which are generally expected
15 to be more expeditious that court proceedings) and cost GAC’s underfunded opponent
16
more than was reasonably necessary to resolve this dispute. Thus, this case is
“exceptional” under the Octane opinion’s interpretation of the Lanham Act; and an award
17
of reasonable attorney fees and costs is appropriate.
18
AWARD SUMMARY
19
Roth Licensing seeks its attorney fees related to this arbitration, the federal
20 declaratory relief action instituted by GAC, and the two trademark proceedings related to
21 the RT RX and ROTH marks pending before the U.S. Patent and Trademark Office.
22 GAC was commendably cooperative during the ultimate arbitration hearing and agreed
23 that in the event of an award of attorney fees and costs, the sums sought by Roth
licensing are reasonable as follows:
24
25 13 One might speculate that GAC’s aim was a failed strategy to create a basis to allege fraud in
any court proceeding that might be necessary to confirm the Arbitration Award.
-56-
1788
• Attorney fees of $935,723.50 through October 10, 2017 were stipulated to

1
be reasonable;
2
• The parties stipulated on October 26, 2017 that Roth Licensing has incurred
3
additional attorney fees in the amount $30,000 for work done in connection
4
with the ultimate hearing. Thus the total amount of attorney fees awarded
5 to Roth Licensing shall be $965,723.50;
6 • Roth Licensing’s total recoverable costs (not including its expert David
7 Nolte) have been stipulated to be $108,724.85. The parties also stipulated
8 that the final invoice of ADR Services, Inc. shall be payable by Roth
Licensing; and that amount is included in the foregoing total of recoverable
9
costs.
10
• Roth Licensing is therefore awarded total monetary relief, including
11
damages, attorney fees and costs, in the sum of $15,984,448.40.
12
INJUNCTIVE AND MANDATORY RELIEF
13 Dentsply Sirona Orthodontics, Inc. (formerly known as GAC International Inc.)
14 and its officers, agents, servants, employees and attorneys (hereafter individually and
15 collectively referred to as "Dentsply Sirona Orthodontics"), and other persons who
16 receive actual notice of this injunction and are in active concert or participation with any
of the aforementioned, are hereby permanently enjoined from any of the following:
17
• Using in commerce the ROTH mark, the RT RX mark, Dr. Roth’s image,
18
or any reproduction, counterfeit, copy, or colorable imitation of the ROTH
19
mark in connection with the sale, offering for sale, distribution, or
20
advertising of any goods or services on or in connection with which such
21 use is likely to cause confusion, or to cause mistake, or to deceive members
22 of the public to believe that products or services advertised, sold, and/or
23 offered for sale by Dentsply Sirona Orthodontics, or other persons who
24 receive actual notice of this injunction and are in active concert or

participation with Dentsply Sirona Orthodontics, originate from Roth
25
Licensing and/or Dr. Roth, or that such goods or services have been
-57-
1789
1790
PROOF OF SERVICE
State of California
County of San Francisco
I certify that I am employed in the County of San Francisco, State of California. I am over the age of 18
and not a party to the within action; my business address is 100 1st Street, 27th Floor, San Francisco,
California 94105.
On November 27, 2017, I served the foregoing document described as the FINAL ARBITRATION
AWARD [Issued November 21, 2107 after correction pursuant to ADRS Rule 34 (e)]; and PROOF
OF SERVICE on the interested parties in this action as follows:
Brian M. Daucher, Esq. Richard M. Barnes, Esq.

SHEPPARD MULLIN RICHTER HAMPTON LLP GOODELL DEVRIES
650 Town Center Drive, 4th Floor One South Street, 20th Floor
Costa Mesa, California 92626 Baltimore, Maryland 21202
bdaucher@sheppardmullin.com rmb@gdldlaw.com
Randall J. Clement, Esq.
CLEMENT & HO
201 W. Whiting Avenue
Fullerton, California 92832
randy@clementandholaw.com
X BY CERTIFIED U.S. MAIL, I placed a true copy of the document described above in a
sealed envelope and caused such envelope with postage thereon to be placed in the United
States mail at San Francisco, California.
BY FACSIMILE, I caused such to be faxed to the attorneys on November 27, 2017
X BY E-MAIL OR ELECTRONIC TRANSMISSION: I caused a copy of the document(s)

to be sent from e-mail address kathleen@adrservices.com to the persons at the e-mail
addresses listed in the Service List. I did not receive, within a reasonable time after the
transmission, any electronic message or other indication that the transmission was
unsuccessful.
BY PERSONAL SERVICE, I caused such envelope to be delivered by hand to the
attorneys on November 27, 2017.
X STATE I declare under penalty of perjury under the laws of the State of California that the
above is true and correct.
FEDERAL I declare that I am employed in the office of a member of the bar of this court at
whose direction the service was made.
Executed on November 27, 2017 at San Francisco, California
____________________________________
Kathleen Emma
Proof of Service 2 – 9/17/13

1791
1792
Exhibit N
1793
1794
1795
1796
1797
1798
1799
1800
1801
1802
1803
1804
1805
1806
1807
1808
1809
1810
1811
1812
1813
Exhibit O
1814

1 ADR SERVICES, INC.
2 San Francisco, CA 94105
(415) 772-0900
3 (415) 772-0960 (FAX)
justicelambden@adrservices.org
4
5
ARBITRATION BEFORE ADRS SERVICES
6
7 )
ROTH LICENSING, LLC, ADR Services, Case No.: 15-3234-JL
)
8 )
Claimant, INTERIM ARBITRATION DECISION
) REGARDING LIABILITY
9 )
vs.
) Justice James Lambden (Ret.) Arbitrator
10 )
GAC INTERNATIONAL, LLC, )
11 )
Respondent )
12
13
INTRODUCTION
14
The Final Arbitration Hearing commenced with an initial five-day session
15
on February 6, 7, 8, 9, and 10, 2017. Brian M. Daucher, Esq. and Gazal Pour-
16
Moezzi, Esq. of Sheppard, Mullin, Richter and Hampton LLP appeared for
17
Claimant. Richard M. Barnes, Esq. and Matt Kohel, Esq. of Goodell, DeVries,
18
Leech and Dann LLP appeared for Respondent. The proceedings took place under
19
the provisions of the ADR Services, Inc. Arbitration Rules (“ADRS Rules”).
20
At the conclusion of the initial hearing the parties stipulated to bifurcate the
21
issues of liability and remedies. Accordingly, pursuant to ADRS Rule 27 (d) the
22
Arbitrator issues this interim decision regarding liability.
23 PARTIES
24 This is an action brought by Claimant Roth Licensing LLC against
25 Respondent GAC International LLC (recently merged into Dentsply Sirona
-1-
1815
Orthodontics Inc.) for federal trademark infringement under the Lanham Act and
1
under California common law, for breach of contract, and violation of Dr. Roth's
2
posthumous right of publicity.
3
Claimant Roth Licensing, LLC, was formed in 2012, and owns the federally
4
registered trademark “ROTH”, as well as the registered statutory right of publicity
5
related to the late orthodontist Dr. Ronald Roth (the “Roth Rights”). Roth Licensing
6
is successor-in-interest to the Roth Rights, by way of assignment from the Roth
7
Family Trust. Roth Licensing is comprised of the late Dr. Roth’s three daughters.
8
In early 2017, GAC International LLC was merged into Dentsply Sirona
9
Orthodontics, Inc. The parties have stipulated that Dentsply Sirona Orthodontics,
10
Inc. has been substituted as respondent for GAC International, LLC. For ease of
11 reference and consistency with prior pleadings and proceedings, this decision will
12 continue to refer to “GAC”.
13 BACKGROUND
14 In the course of the arbitration the parties described two countervailing
15 narratives, with Roth Licensing recounting the story of a brilliant physician who
16 pioneered a holistic method that revolutionized the practice of orthodontic
17 medicine. In 1975, Dr. Roth described his philosophy, and his method, which was
18 designed to go beyond more traditional methods in order to achieve “functional
19
occlusion,” in other words, a method of treatment designed to result in optimal
function as well as cosmetic aesthetics.
20
Dr. Roth's methods relied upon a system of orthodontic appliances that had
21
the result (happily for patients as well as their doctors) of requiring less time for
22
adjustments. This was attractive to orthodontists because it “streamlined the
23
ability to treat as many patients as possible, [and did not] compromise in any way
24
the result”. Dr. Roth was a dedicated and compelling teacher whose proselytizing
25
on “goal-directed” orthodontics resonated with orthodontists, not least because the
-2-
1816
“Roth System” offered greater profitability as well as better results. Teaching

1
centers were established worldwide; and Dr. Roth lectured widely and often,
2
gaining many converts to his methods of treatment.
3
The Roth Family Narrative
4
In 1997, Dr. Roth was recruited by GAC. Mark Elwell, a GAC employee,
5
became his friend and collaborator. GAC entered into a five-year consulting
6
agreement with Dr. Roth, who developed and marketed products for GAC; and
7
GAC was granted a non-exclusive license to use Dr. Roth's name and image.
8
Although the license was non-exclusive, Dr. Roth was precluded from consulting
9
for any other orthodontic company. GAC and Dr. Roth developed and promoted:
10
first, the “Roth Ovation” and later, the “Roth In-Ovation” self-ligating brackets and
11 supporting products. GAC began using the ROTH mark in connection with its
12 brackets as early as November 1998. Dr. Roth’s business associate, Mark Elwell,
13 recognized the potential value of Dr. Roth's endorsement by highlighting it in
14 GAC‘s 1997 business plan.
15 Thereafter, for seventeen years, until December 31, 2014, GAC licensed the
16 right to use the ROTH name, image, and trademarks, first from Dr. Roth, and then
17 from his successors-in-interest, the Roth Family Trust and Roth Licensing. During
18 the rest of his life he lectured tirelessly while continuing to practice; and he
19
established teaching centers and study groups for the continuing education of
orthodontists. Many orthodontist among his students became devoted followers
20
and proponents of his method. The positive financial effect of their ability to treat
21
more patients in their practices made them loyal to his product preferences despite
22
the higher total price of the appliances required by the Roth system.
23
Dr. Roth promoted his methods and GAC products, especially Roth Ovation
24
and Roth In-Ovation brackets, at trade shows as well as though his lectures and
25
study groups. Dr. Emanuel Wasserman, a disciple of Dr. Roth, testified that as
-3-
1817
soon as he heard Dr. Roth lecture he became a “convert” and immediately began to
1
purchase the Roth In-Ovation bracket for use in his practice. He described his
2
close friend Roth almost as a prophet and testified that he and many other
3
orthodontists built their practices on the Roth system. He stated that he bought
4
GAC appliances because he “trusted” Dr. Roth’s endorsement, and that before
5
Roth began working with GAC, he had never heard of GAC.
6
GAC vigorously promoted its relationship with Dr. Roth and used his
7
name and image in advertisements. It referred to itself as “Roth
8
Headquarters.” The Roth In-Ovation “self ligating” bracket that allowed
9
Orthodontists to treat more patients in less time became GAC’s single
10
highest-selling product. GAC also used Dr. Roth's name in connection with
11
other brackets, such as the MicroArch Roth and the OmniArch Roth, two
12
other important products in GAC’s ROTH-branded line. For years GAC
13 products enjoyed its highest sales across each of these bracket lines.
14
GAC's Roth Ovation and Roth In-Ovation products were marketed as
15 “Genuine Roth” products and GAC also created a badge to convey that it
16 was the source of “Genuine Roth” products. GAC used this emblem
17 throughout its marketing materials. John Piervencenti, GAC's Senior Product
18 Manager, testified that the emblem was created to not only to signify Dr.
19 Roth's endorsement but also to set GAC apart from its competitors. Mr.
20 Piervencenti acknowledged that GAC also advertised that Dr. Roth's
21 endorsement was unique to GAC.
22 Business was good. Even today the appliances originally associated

23 with Dr. Roth comprise half of GAC's bracket business. Mr. Piervencenti
24 testified that Dr. Roth was instrumental in helping GAC become relevant in
25
the orthodontic industry, that Dr. Roth grew sales for the company, and that
-4-
1818
he helped build GAC's reputation. He conceded “Dr. Roth's influence was an

1
asset to GAC for many years.” John Kringel, GAC's former Director of
2
Marketing, who otherwise testified that Dr. Roth’s influence had diminished,
3
conceded that GAC's ROTH brackets still outsell GAC's other brackets,
4
most likely because of Dr. Roth's influence and legacy. Mr. Kringel also
5
testified that Dr. Roth's students form a continuing loyal customer base for
6
GAC.
7
In 2003, GAC renewed its consulting agreement with Dr. Roth for
8
another five years. The agreement provided that Dr. Roth continued to
9
exclusively consult for GAC; and it renewed GAC's license to use his name
10
and image. (Ex. 51A at § 2.) The 2003 agreement confirmed Dr. Roth's
11
ownership of the mark. The agreement also assured Dr. Roth that GAC
12
intended to register the mark on his behalf and that GAC would be
13 responsible for costs associated policing the mark. (Ex. 51A at § 2.)
14 However, there was no evidence presented that GAC ever took any steps
15 register the ROTH trademark, and no evidence that it took any steps to
16 protect it.
17 In January of 2005 Dr. Roth died.
18 GAC held a memorial service to honor Dr. Roth and GAC's President,
19 Charles Schultz, attended the service. However, with Dr. Roth's passing in
20 2005, the licensing agreement between Dr. Roth and GAC automatically
21 terminated by its terms. GAC continued to use Dr. Roth's name and image
22 without permission from, or further compensation to, Dr. Roth's successors.
23 Indeed, after the memorial service GAC did not attempt to contact the family
24 about the license agreement or GAC’s continued use of the mark.
25 Dr. Roth's widow, Adriane Roth, became his successor-in-interest as
-5-
1819
Trustee of the Roth Family Trust. On July 29, 2006, after learning that GAC
1
continued to use the mark after expiration of the 2003 agreement, Mrs. Roth
2
sent GAC a letter proposing a license for its ongoing use of Dr. Roth's name
3
and image. GAC did not respond and continued to use Dr. Roth’s name and
4
image. (TR at 190:21-191:2.)
5
Mrs. Roth retained attorneys and negotiated a settlement agreement under
6
the terms of which GAC paid the Roth Family Trust for its unlicensed
7
use of Dr. Roth's name and image. (Ex. 52.) The parties also entered into a non-
8
exclusive license whereby GAC paid $200,000 per year for a period five years
9
for the use of the Roth Rights. During these negotiations, GAC refused to
10
produce any sales records. (Ex. 125 at 1-14; Ex. 126; Ex. 127; TR at 192:19-
11
193:1.)
12
Under the 2007 license, GAC acknowledged the Roth Family Trust's
13
exclusive ownership of the Roth Rights, and agreed not to contest those rights.
14
During 2008 and 2009, GAC worked with the Roth Family Trust to help
15
the Trust file applications for seven (7) trademarks incorporating the term
16
ROTH. (Exs. 10, 165, 172, 175, 179, 183). GAC assisted in the registration
17 process by providing “first-use” dates for each of these marks, as well
18 specimens showing each of the marks. With GAC's assistance, all seven of the
19 ROTH trademarks were registered and there was no opposition to the
20 registration of any of the seven ROTH trademarks by any individual or entity.
21 Of these seven registrations, the registration for the ROTH mark is the
22 only one that remains active. In December 2015, Roth Licensing filed a
23 Declaration of Excusable Non-use with the U. S. Patent and Trademark Office
24 (“PTO”), in which it stated that the instant dispute with GAC prevents current
25 continued use and/or any further license of the ROTH mark. (Ex. 171) The PTO
-6-
1820
accepted this reason as “excusable non-use” and extended the ROTH trademark
1
rights through January 5, 2020. (Ex. 168)
2
The 2007 license expired in 2012, and GAC again continued its use of the
3
ROTH name without permission and compensation to the Roth Family Trust. In
4
August 2012, the Roth Family Trust filed an arbitration demand against GAC
5
for trademark infringement and violation of Dr. Roth's publicity rights. (Ex.
6
139.) GAC and the Trust’s assignee, Roth Licensing, once again settled their
7
dispute (in March 2013) by entering into a retroactive, three-year license,
8
effective from January 1, 2012 until December 31, 2014. (Ex. 53.) During these
9
negotiations Roth Licensing again requested sales records from GAC; and GAC
10
refused to provide sales records. (Ex. 137 at 10-18) Roth Licensing again
11
accepted a fixed fee of $200,000 a year under the license. (Ex. 53 § 1.)
12
In this agreement, GAC again recognized Roth Licensing's ownership of
13
the Roth Rights, and also agreed not to contest those rights during or after the
14
term of the license. (Ex. 53 § 2.3.) Upon expiration of the license on December
15 31, 2014, GAC had 90 days (through March 31, 2015) to cease all use of the
16 Roth Rights, including the mark ROTH. (Ex. 53 §§ 3.1 and 3.4.)
17 In 2014, GAC was considering adoption of a new mark to replace its use
18 of ROTH. (Ex. 78.) Mr. Kringel was in charge of selecting and implementing a
19 new name, with assistance from Jeanne Ricciardi (Senior Marketing
20 Communications Manager), John Piervencenti (Senior Product Manager). and
21 Lindsay Viola (Product Manager). During the last part of 2014, Roth
22 Licensing’s attorney, Brian Daucher, attempted unsuccessfully to discuss the
23 renewal of the license with Dane Baumgardner, counsel for GAC and its parent
24 company, Dentsply Sirona, Inc. (Exs. 146-149.) From September 22, 2014
25
through October 24, 2014, Mr. Daucher sent six emails to Mr. Baumgardner to
-7-
1821
discuss the license. (Ex. 146.) Mr. Baumgardner did not respond to these emails
1
even though he had earlier agreed to schedule a call to discuss the matter.
2
By early 2015, GAC had decided not to renew its license agreement with
3
Roth Licensing. GAC planned to replace all uses of the ROTH mark with a new
4
trademark. However, GAC was aware that it was in a unique and constrained
5
situation because of its longstanding licensing relationship with Roth Licensing. In
6
a January 2015 presentation by Mr. Kringel describing GAC’s strategy for giving
7
up the license for ROTH mark, the accompanying PowerPoint stated “GAC is in a
8
unique situation based on our history with the Roth Estate Around this Mark.
9
Without the license we are more restricted than the competition.” (Ex. 75 at 4.) In
10
February 2015, counsel for Roth Licensing sent Mr. Baumgardner an email
11
reminding GAC of its duty to cease all use of the ROTH mark by the phase-out
12
deadline of March 31, 2015. (Ex. 148.) Roth Licensing warned GAC that it would
13 “insist upon very strict non-use of the ROTH name going forward by GAC.”
14
GAC’s View of the Roth “Legacy”
15
GAC contends that it decided to end it licensing arrangement with the
16
family’s Roth Licensing entity because in the decade following the doctor’s death
17 the trademark had lost its value. GAC contends there was diminishing interest in
18 the Roth method even before the doctor’s death in 2005. GAC also contends that
19 that there was a 50% decline in sales of ROTH products between 2008 and 2015
20 so that the notion of GAC profiting from ROTH was “contrary to logic.” (GAC
21 Opening Brief p. 35, and Ex.325) GAC neglects to acknowledge that there was a
22 precipitous decline in all of GAC’s sales after 2010.1
23
1 In March 2011 the Fukushima tsunami destroyed GAC’s manufacturer. GAC’s supply of
24 products ended, resulting in a precipitous drop in the sales of all of GAC’s product lines that
persists to the present day. GAC claims that the 2012 License agreement to pay $600,000 was
25 not an acknowledgment that the Roth name had any value but rather a decision based on the
“extenuating circumstances” of the “massive business disruption” caused by the tsunami.
-8-
1822
John. Piervencenti, GAC’s Senior Sales Manager, testified that his first
1
experience observing a Roth lecture in 2001 was unimpressive because “only” 10
2
orthodontists attended. John Kringel, GAC’s Director of Marketing (until April of
3
2015) testified that during his tenure the Roth “prescription” represented the
4
highest unit volume of GAC’s products, representing of sales in
5
certain product lines. Nevertheless he had concluded by early 2015 that the
6
interest in the Roth method was in decline as other philosophies of orthodontic
7
practice gained ground. Kringel joined GAC in 2009 and soon concluded that the
8
Roth name was on the “downside of its life” and because of it “maturity and
9
decline” did not warrant more investment and development. Accordingly, and in
10
particular after the overall drop in GAC sales after the 2011 tsunami cut off
11 product supplies, Kringel favored “harvesting” the remaining value in a trademark
12 such as ROTH, which was “past its peak.”
13 During the fourth quarter of 2014 discussions were under way at GAC
14 concerning possible renewal of the license and how to handle the marketing
15 challenge of giving up the Roth mark. Kringel acknowledged the significance
16 Roth products to GAC’s bottom line at that time by estimating them to constitute
17 approximately of its sales. He testified that the logistical scale of
18 changing GAC’s marketing materials was so daunting that GAC’s leaders
19 discussed making an offer to renew the license for another five years with a
20 nominal payment of $30,000 per year. Management ultimately conclude that even
21
this small payment was too much to pay, even in the face of what was described as
22
the “enormous” logistical burden of changing GAC’s marketing materials. Once
the decision was made to “move away” from use of the Roth Rights, both Mr.
23
Kringel and Ms. Ricciardi testified that they sought to select a new mark that
24
would allow GAC's customers to “understand” that they were purchasing a bracket
25
in a “Roth prescription.”
-9-
1823
GAC has always argued that there is a significant distinction between the
1
“Roth Rights” and the “Roth prescription.” GAC offered evidence to show that
2
“companies have used the ‘Roth’ name in connection with the advertising and sale
3
of orthodontic brackets going back to 1981, long pre-dating GAC’s relationship
4
with Dr. Roth”. GAC argues that the name Roth is “universally used and
5
understood in orthodontics to describe a system of brackets that uses the Roth
6
“prescription values”. Thus GAC contends that “Roth” is part of the common
7
orthodontic nomenclature just as many other doctors’ names are associated with
8
particular sets of “prescription values” (i.e. torque, angulation, and offset) that are
9
part of the bracket systems used in different orthodontic philosophies. One of
10
GAC’s main arguments is that the conflation of the Roth name with the “Roth
11 prescription” has transformed “Roth” into a generic term that essentially describes
12 only the prescription. Even so, the evidence describing the care taken by GAC to
13 select a new mark suggests a lack of full confidence in that conclusion as well as
14 an appreciation of GAC’s “unique situation” as a decades-long former licensee of
15 the Roth Rights.
16 GAC considered several replacement marks including: RTH, RT, R, RO,
17 and RSW. GAC rejected several of these choices after concluding, for example,
18 that it could not use RTH because it was “too close” to ROTH. Ultimately, GAC
19
replaced ROTH with the mark “RT RX” and began using the new mark on April
1, 2015. This is the mark that GAC attempted to register as its own trademark.
20
GAC's documents and practice show that RT is the key component of the new
21
name. In an email, Mr. Piervencenti stated, “[t]he key change is ROTH to RT.”
22
(Ex. 254 at 2.) In Europe, GAC replaced ROTH with only RT, not RT RX.
23
Similarly the U.S. Patent and Trademark Office ("PTO") required GAC to
24
disclaim any exclusive right to use the “RX” portion of the mark because it is an
25
abbreviation for “prescription.”
-10-
1824
At the initial arbitration hearing, GAC's witnesses uniformly denied that RT

1
means ROTH. Ms. Ricciardi conceded in her deposition that the “R” in RSW
2
stood for ROTH, but she did not concede this fact at the hearing; and she also
3
denied at the hearing that the “R” in the other proposed marks stood for ROTH.
4
Likewise, in his deposition Mr. Piervencenti admitted that “RT RX means Roth
5
prescription” while later insisting that the prescription is distinct from the name of
6
the doctor. Former GAC employee John Kringel agreed that GAC could have
7
selected a completely different mark (such as “Asia”) as it had done by reframing
8
the “MDT” mark owned by 3M Unitek Corporation as GAC’s “Euro.” Kringel
9
testified that his own preference would have been to use the Roth name, but that in
10
lieu of that option, and as GAC’s Director Of Marketing, he argued for “closer to
11 Roth the better” in order to “educate” customers. He wanted the new name to be
12 “as close as possible” to Roth while at the same time “far enough away” to avoid
13 any trademark dispute.
14 GAC decided not to publicize the name change. Kringel agreed with this
15 decision to make no announcement highlighting the name change, in particular
16 because the name change would “not be happy news for his sales team.”
17 Accordingly, GAC did not announce the name change publicly, and it did not
18 require its sales representatives to proactively inform ROTH customers of the
19
name change. Dr. Wasserman, the only practicing orthodontist to testify and a
longtime GAC customer, said that he learned of the name change only as a result
20
of his involvement in the arbitration proceeding. Undoubtedly GAC did not wish
21
to draw attention to the change.
22
Two Views Of The Dispute
23
The contrast between the parties’ views of the evidence is stark. GAC
24
contends that Roth Licensing is fixated on the past and has provided evidence
25
centered only upon the “legacy that Dr. Roth left to GAC” which is insufficient to
-11-
1825
meet its burden of proof. For GAC the resolution of the dispute “is not about the
1
past” and must be “…centered on the perceptions of orthodontists today, and GAC
2
argues that the evidence it submitted conclusively demonstrated that these
3
consumers are not likely to 1) confuse its RT Rx mark with the ROTH mark or 2)
4
be confused that Dr. Roth, who passed away in 2005, currently endorses GAC
5
products that use the RT Rx mark.” (emphasis in original, GAC Post Hearing Brief
6
p.1)
7
Accordingly GAC’s main contentions are that:
8
 Roth Licensing does not own a trademark that includes the term “Roth
9
Prescription” and that term is so widely used that it has become generic
10
nomenclature among orthodontists who therefore cannot be confused by the
11
name change;
12  The direct evidence, including the opinion of GAC’s expert Dr. Wind, does
13 not show any likelihood of confusion between RT Rx and ROTH or suggest
14 endorsement by Dr. Roth;
15  The use of ROTH in connection with the sale of orthodontic appliances has
16 been pervasive and Roth Licensing has been “inconsistent and ineffective”
17 in its efforts to enforce its trademark rights;
18  GAC claims that it acted in good faith and could not have intended to
19 deceive consumers with “RT RX” because the term refers to the generic
20 prescription;
21  ROTH has no value; and
22  Roth licensing fraudulently represented to the PTO that the existence of the
23 instant trademark dispute has compelled it to suspend efforts to license the
24
ROTH mark to third parties.
25
-12-
1826
Contrast the contentions made by Roth Licensing:

1
 GAC’s RT Rx mark infringes the valid ROTH mark which is not generic;
2
there is no competitive need to use the ROTH mark; and third party uses of
3
ROTH are irrelevant;
4
 GAC may not challenge the validity of the ROTH mark because of the no-
5
contest provision of the 2012 License Agreement and because the doctrine
6
of licensee estoppel applies as a bar;
7
 Applying the Sleekcraft factors, GAC’s RT Rx mark is likely to confuse
8
consumers; and GAC’s use is subject to strict scrutiny as a former licensee;
9
 GAC willfully infringed the ROTH mark;
10
 GAC has breached the 2012 License Agreement by challenging the ROTH
11
mark, by continuing to use ROTH and by promoting its affiliation with Dr.
12
Roth; and
13
 GAC has violated Dr. Roth’s statutory right of publicity.
14
DISCUSSION
15
ROTH Is A Valid Trademark
16 To prevail on its trademark infringement claim, Roth Licensing must prove
17 (1) it owns a valid trademark, and (2) GAC uses a mark similar to Roth Licensing's
18 mark in a manner that is likely to cause confusion, mistake, or deception as to the
19 source, sponsorship, affiliation or approval of the goods. Network Automation,
20 Inc. v. Advanced Sys. Concepts, 638 F.3d 1137, 1144 (9th Cir. 2011). The elements
21 of Roth Licensing's state law trademark infringement claim are the same as its
22 federal trademark infringement claim. Grey v. Campbell Soup Co., 650 F. Supp.
23 1166, 1173 (C.D. Cal. 1986) ("The tests for infringement of a federally registered
24
mark under § 32(1), 15 U.S.C. § 1114(1), [and] infringement of a common law
25
-13-
1827
trademark . . . are the same"). GAC cannot dispute the registration of the ROTH
1
mark that is the subject of the infringement claims.
2
GAC assisted the Roth Family Trust in its application for seven (7)
3
trademarks incorporating the term ROTH. (Exs. 10, 165, 172, 175, 179, 183, and
4
186; TR at 277:13-18.) GAC provided first use dates for each of these marks, as
5
well specimens showing how it used each marks. (TR at 277:19-279:8; Ex. 163.)
6
All seven of the ROTH trademarks were registered. (TR at 282:14-16; Exs. 166,
7
169, 173, 177, 181, 184, and 187.) Following publication of the applications, no
8
individual or entity opposed the registration of any of the seven ROTH trademarks.
9
(TR at 351:24-353:13.)
10
The registration for the ROTH mark presently is the only one that remains
11 active. In December 2015, Roth Licensing filed a Declaration of Excusable Non-
12 use with the PTO, in which it cited this dispute with GAC as preventing current
13 continued use and/or further license of the ROTH mark. (Ex. 171; TR at 284:15-
14 286:19.) The PTO accepted this reason as excusable non-use and extended the
15 ROTH trademark rights through January 5, 2020. (Ex. 168; TR at 286:21-287:22.)
16 Federal registration of a trademark constitutes prima facie evidence that the
17 registered mark is valid and that the registrant's owns the mark. 15 U.S.C. § 1115
18 ("the registration shall be conclusive evidence of the validity of the registered mark
19
. . . of the registrant's ownership of the mark, and of the registrant's exclusive right
to use the registered mark"); Solid 21, Inc. v. Breitling USA, Inc., 512 Fed. Appx.
20
658, 686 (9th Cir. 2013). Federal registration for the ROTH Mark also creates the
21
presumption that the mark is valid; and the presumption is “strong” that the mark is
22
not generic. This has the effect of shifting the burden of proof to GAC to show by
23
a preponderance of the evidence that the mark is not protectable. Id. (citing a
24
summary judgment case, Zobmondo Entm't, LLC v. Falls Media, LLC, 602 F.3d
25
1108, 1113-14 (9th Cir. 2010). "[T]he presumption of validity is a strong one, and
-14-
1828
the burden on the defendant necessary to overcome that presumption . . . is heavy."

1
Zobmondo, 602 F.3d at 1115 (see also Tie Tech, Inc. v. Kinedyne Corp. 296 F. 3d
2
778, 783 (9th Cir. 2002).
3
GAC attempted to overcome this presumption of validity in part by
4
conjuring an admission by Roth Licensing that Dr. Roth’s Philosophy and the
5
“Roth prescription” are not within the ROTH trademark or Roth Rights. First,
6
GAC supports this contention by citing Leslie Aldag’s testimony that Roth
7
Licensing “…has done nothing to assess or appraise the value of the ROTH mark
8
and Roth Rights” (TR. At 251:12-20). GAC argues that Ms. Aldag’s conflates Dr.
9
Roth’s teachings and the Roth philosophy with its intellectual property rights and
10
that “[t]he two are separate and distinct; and the former are not protected
11 intellectual property.” Second, GAC argues that Roth licensing has conceded the
12 distinction between the ROTH mark and the Roth Rights in Section 1.2 of the
13 Settlement Agreement between the Roth Family Trust and Sybron Dental
14 Specialties, Inc. (“Sybron”) which states that “[n]otwithstanding the foregoing, and
15 for the avoidance of doubt, Sybron and its agents are permitted to use the Roth
16 name to refer to Dr. Roth’s teachings and to refer to products in a non-trademark
17 manner.” (Ex. 8 at Section 1.2). GAC argues that the ROTH mark could not have
18 included the “Roth prescription” because, “for many years prior to the 1998
19
Agreement, GAC and other companies openly and publicly referenced the Roth
prescription in their marketing materials. No reasonable businessperson would
20
enter into a license to pay for rights that it and other orthodontic companies already
21
possessed.”
22
These “admissions” and the asserted market circumstances do not support
23
GAC’s burden to overcome the presumption. Indeed they do not contest the
24
validity of the ROTH mark; and GAC’s intention is to shift the focus of the inquiry
25
this way: “…the issue of confusion should be limited to whether orthodontists are
-15-
1829
likely to be confused that RT Rx signifies the ROTH mark or an endorsement by

1
Dr. Roth – not whether orthodontists are likely to believe that RT Rx means the
2
Roth prescription.” (GAC Post-Hearing Brief p. 5). GAC has not overcome the
3
presumption that the ROTH mark is valid. Rather than contesting the ROTH
4
mark’s validity, GAC shifts the argument by claiming the mark is generic because
5
of widespread reference to the Roth prescription values in the marketplace without
6
objection by Roth Licensing.
7
Efforts by Roth Licensing to police the ROTH mark
8
There was evidence presented that Roth Licensing reasonably attempted to
9
enforce its trademark rights in the market (and without assistance despite GAC’s
10
earlier contractual promise to bear the costs of enforcement). GAC’s evidence did
11 not show that there is a competitive need to use the ROTH mark, or “any mark
12 confusingly similar thereto such as RT RX …within the product name” (as noted
13 in Roth Licensing’s Reply Brief).
14 A trademark owner is not required to act against every infringing use, no
15 matter how inconsequential, at risk of losing rights in the mark." McCarthy on
16 Trademarks and Unfair Competition § 31:101 (4th ed. 2015); see also Hurricane
17 Fence Co. v. A-1 Hurricane Fence Co., Inc., 468 F. Supp. 975, 989 (S.D. Ala.
18 1979) ("to impose upon the mark owner the duty of monitoring every sale of every
19
dealer to regulate its use of the mark would be unconscionable"); Playboy Enters.,
Inc. v. Chuckleberry Publ'g, Inc., 486 F. Supp. 414, 422-23 (S.D.N.Y. 1980) ("The
20
owner of a mark is not required to police every conceivably related use . . .").
21
Rather, a mark owner need only use reasonable efforts to police its trademark. See
22
Accurate Merch., Inc. v. Am. Pac., 186 U.S.P.Q. 197, 200 (1975) (trademark owner
23
must take "reasonable measures" to protect mark); Rockwell Graphic Sys., Inc. v.
24
DEV Indus., Inc., 925 F.2d 174, 179 (7th Cir. 1991) (noting trademark owner's
25
duty to "take reasonable efforts to police infringements of his mark").
-16-
1830
The mark owner's successful policing of unauthorized uses of its mark

1
supports a finding that the mark is not generic. See, e.g., STK LLC v. Backrack,
2
Inc., 2012 WL 2024459, at *18 (TTAB May 21, 2012) (finding trademark not
3
generic where mark owner effectively policed its mark); In re Trek 2000 In'tl Ltd.,
4
97 U.S.P.Q.2d 1106, 1112-13 (TTAB 2010) (mark not generic where owner had
5
successfully enforced its trademark rights to stop unauthorized use); Hermes Int'l v.
6
Lederer de Paris Fifth Ave., Inc., 219 F.3d 104, 110 (2d Cir. 2000) (affirming
7
finding that plaintiff's mark was not generic where, among other things, plaintiff
8
policed its mark).
9
In its 2003 agreement with Dr. Roth, GAC acknowledged that Dr. Roth
10
"owns the trademarks to the 'Roth' name" and represented that it would "bear the
11 cost of filing and defending this trademark." (Ex. 51A at ¶ 2.) Despite its
12 obligation, and its knowledge of third party uses of the ROTH mark, GAC
13 apparently made no efforts to police the ROTH mark. (See TR at 763:10-764:21.)
14 In contrast, the evidence established that Roth Licensing consistently policed
15 unauthorized use of the ROTH mark, commensurate with its limited resources, and
16 has achieved some compliance in the market, including both through litigation
17 (against RWISO/ Sybron) and through pre-litigation cease-and-desist letter writing
18 efforts. Although Roth Licensing must concede that instances of third party use of
19
the ROTH mark continue, it is reasonable that Roth Licensing has temporarily
suspended its policing efforts in order to devote its resources to its dispute with
20
GAC. (TR at 205:1-206:5; TR at 430:9-19.) To conclude otherwise would be to
21
allow GAC to ignore its promise to assist in the enforcement of the mark and later
22
raise the contention that Roth Licensing (and its predecessors in interest) failed to
23
police the mark.
24
GAC represented in 2003 that it would "bear the cost of filing and defending
25
this trademark.” (Ex. 51A at ¶ 2.) Despite this promise, and GAC’s the “mountain
-17-
1831
of evidence” of third party use of the mark that GAC references in its briefs, there
1
was no evidence offered that GAC ever attempted to police the ROTH mark. (See
2
TR at 763:10-764:21. And even if GAC were to argue that its 2003 promise has
3
been subsumed by later agreements, the evidence established that Roth Licensing
4
has policed unauthorized use of the ROTH mark and has achieved compliance in
5
the market through litigation and pre-litigation letter writing efforts. Although
6
there are apparently continuing instances of third party use of the ROTH mark, the
7
disparity of resources between the parties makes it reasonable for Roth Licensing
8
to have temporarily and suspended its policing efforts in order to devote its
9
resources to this dispute with GAC. (TR at 205:1-206:5; TR at 430:9-19.) The
10
evidence and equitable estoppel support Roth Licensing’s contention that it has
11 done the best it could in policing the mark. Those efforts have been sufficient to
12 preserve the mark.
13 No Competitive Need to Use ROTH
14 Federal courts "look to a variety of sources of evidence to determine whether
15 a term is generic," including the "use of the term in the relevant industry, as
16 evidenced by trade publications, trade organizations, and use by competitors."
17 Solid 21, Inc. v. Hublot of Am., 109 F. Supp.3d 1313, 1324 (C.D. Cal. 2015). GAC
18 has failed to show that there is a competitive need to use the ROTH mark, or any
19
mark similar thereto such as RT RX, as prominently as it does, i.e., within GAC’s
product names. Other than its assertions that RT RX refers only to the
20
prescription, and not to ROTH, GAC produced no evidence that it is competitively
21
necessary to connect the prescription to its products by using the similar “RT” in
22
its name. The only orthodontist that testified, Dr. Wasserman, testified that he had
23
no problem connecting the prescription to RT RX because he had no reason to
24
suspect that “RT” did not refer to ROTH; and that he bought those products
25
because he “trusted Dr. Roth”. This is evidence of confusion rather than the
-18-
1832
certainty that GAC claims “completely dooms [Roth Licensing’s] case” (GAC
1
Post-Hearing Reply Brief p. 2).
2
Although GAC contends that it does not use ROTH or RT RX as
3
trademarks, the following evidence establishes the contrary: (1) ROTH and RT RX
4
are part of GAC's product names as evidenced by GAC's catalogs (See, e.g., Exs.
5
55 and 104); (2) when GAC formally announced the adoption of RT RX to its sales
6
team via email, the subject of the email read "Product Name Change
7
Announcement" (Ex. 85); (3) GAC historically has used trademark designations
8
(TM) for ROTH and RT RX (Ex. 55 at 44; Ex. 554 at 46; Ex. 264 at 46); (4)
9
GAC's parent company, Dentsply Sirona, has filed a trademark application for RT
10
RX (Ex. 81); (5) GAC regularly files documents with the PTO confirming that its
11 use of prescription names on product packaging and catalogs constitutes trademark
12 use (Ex. 81 at 7, 328 at 1, 327 at 7, 329 at 6); and (6) GAC and its competitors
13 have routinely trademarked prescription names in connection with orthodontic
14 appliances, including CETLIN, CCO, BI-DIMENSIONAL, MBT, DAMON, and
15 RICKETTS (Exs. 294, 292, 289, 300, 298, and 302). Accordingly, GAC does use
16 ROTH in its product name and as a trademark.
17 The evidence also establishes that, unlike GAC, many of its competitors do
18 not make such prominent use of ROTH. (See, e.g., Ex. 123 at 6 (North American
19
Braces catalog.) Through Roth Licensing's enforcement efforts, a number of
orthodontic companies have agreed to either cease all use of ROTH in connection
20
with their products, or make an otherwise non- prominent fair use of ROTH to
21
denote compatibility with the Roth prescription. (See supra ¶¶ 64-66.) The lack of
22
competitive necessity is further supported by the fact that no individual or entity
23
opposed the registration of any of the trademarks included in the application
24
process to register the seven ROTH trademarks. (TR at 351:24-353:13.)
25
-19-
1833
GAC's own conduct shows there is no competitive need to use a

1
trademarked prescription name in the product name, because GAC has adopted the
2
entirely arbitrary name “EURO” to connote its version of the MBT prescription, a
3
trademark owned by 3M Unitek Corporation. (Ex. 555 at 18; Ex. 300).) In fact,
4
GAC's customers understand that EURO connotes GAC's version of the MBT
5
prescription. Ms. Ricciardi acknowledged that GAC's customers understand that
6
EURO means MBT. (TR at 473:11-14) Dr. Wasserman testified that he
7
understands that EURO means MBT (TR at 178:1-9).
8
GAC is barred from challenging the validity of the ROTH mark
9
GAC promised in the 2012 agreement that it would “not contest the Roth
10
Rights or the Roth Marks, including Licensor's ownership thereof, either during or
11 after the term of the License.” (Ex. 53 at ¶ 2.3.) This express promise precludes
12 GAC from challenging the ROTH mark. See, e.g., MWS Wire Indus., Inc. v.
13 California Fine Wire Co., 797 F.2d 799, 802 (9th Cir. 1986) (if defendant
14 acknowledged validity of plaintiff's trademark in an agreement, defendant "is
15 estopped to assert the invalidity of [plaintiff's] trademark as a defense to
16 [plaintiff's] claims"); RE/MAX Int'l, Inc. v. Equity Max Realty, Inc., No. 06-cv-
17 1345, 2007 WL 1110590, at *3 (S.D. Cal. Apr. 3, 2007) (consent order in which
18 "Defendants admitted that Plaintiff's trademarks are valid and enforceable . . .
19
precludes Defendants from attacking the plaintiff's trademark as merely generic
and therefore unenforceable").
20
GAC also is barred from challenging the ROTH mark under the doctrine of
21
licensee estoppel. "The theory underlying the licensee estoppel doctrine is that a
22
licensee should not be permitted to enjoy the benefits afforded by the license
23
agreement while simultaneously urging that the trademark which forms the basis of
24
the agreement is void." John C. Flood of Virgina, Inc. v. John C. Flood, Inc., 642
25
F.3d 1105, 1111 (D.C. Cir. 2011); see also Pac. Supply Coop. v. Farmers Union
-20-
1834
Cent. Exch., 318 F.2d 894, 908-09 (9th Cir. 1963) (noting the "long settled
1
principle of law that a licensee . . . of a trademark or tradename may not set up any
2
adverse claim in it as against its licensor"); 2 Ann Gilson Lalonde, Gilson on
3
Trademarks § 6.07[7] (2015) ("By entering into the license agreement, the licensee
4
recognizes the licensor's ownership of the mark and, by implication, covenants not
5
to challenge the licensor's rights").
6
The "licensee estoppel doctrine precludes a licensee from challenging the
7
validity of the licensor's trademark based upon conduct that occurred during the
8
life of its license." Monster, Inc. v. Dolby Labs. Licensing Corp., 920 F. Supp. 2d
9
1066, 1076-77 (N.D. Cal. 2013) (emphasis added). In essence, GAC is estopped
10
from challenging the validity of the ROTH mark except on facts that arose after the
11 license expired. GAC's invalidation argument rests primarily on facts that GAC
12 was aware of before and during the nearly two decades it licensed the ROTH mark.
13 GAC claims that the ROTH mark is invalid because its competitors have
14 used the mark without license. Extensive evidence shows that GAC has been
15 aware of this alleged competitive use for decades, including during the 17 years
16 (1998-2014) it licensed the ROTH mark from Dr. Roth and his successors. For
17 example, a GAC advertisement for ROTH products from approximately 1996-
18 1997, expressly references third party uses of the ROTH name. (Ex. 54 at 2 ("Other
19
manufacturers promote 'Improved Roth' by modifying the fundamental attributes
of the formula . . .").) GAC began its valuable relationship with Dr. Roth later.
20
GAC's representatives admitted their longtime knowledge of this third party use,
21
and were aware of such use as early as 2001. (TR at 763:17-764:21 (Piervencenti –
22
knowledge since 2001): TR at 1023:22-1024:1 (Kringel: knowledge since 2009);
23
Ex. 134 (Elwell: knowledge as of 2008).) Notwithstanding its knowledge of third
24
party use, GAC repeatedly licensed the right to use the ROTH mark; it
25
-21-
1835
acknowledged the validity of the right; and it unquestionably benefited greatly

1
from such use.
2
The inequity of GAC’s strategy is buttressed by the fact that GAC also
3
utterly failed to assist in policing the mark despite its promise to do so.
4
Accordingly, GAC may not now challenge the ROTH mark with information it
5
possessed before and during its licenses with Dr. Roth and his successors. See, e.g.,
6
Council of Better Bus. Bureaus, Inc. v. Better Bus. Bureau, Inc., 200 U.S.P.Q. 282
7
(S.D. Fla. 1978) (ex-licensee estopped from challenging mark as generic where
8
facts that formed basis of challenge arose prior to termination of license).
9
GAC’s RT RX Mark Is Likely To Confuse Consumers
10
Where the alleged infringer is a former licensee of the trademark owner, the
11 “quantum of proof necessary to establish a likelihood of confusion” can be less
12 than in cases involving non-licensees. See Downtonwer/Passport Int'l Hotel Corp.
13 v. Norlew, Inc., 841 F.2d 214, 219 (8th Cir. 1988). Indeed, “common sense
14 compels the conclusion that a strong risk of consumer confusion arises when a
15 terminated [licensee] continues to use the former [licensor's] trademarks." Id.
16 Accordingly, a former licensee bears a duty to select a clearly distinguishable mark
17 so as to not promote the perception that it is still affiliated with or endorsed by its
18 ex- licensor. See Church of Scientology Int'l v. Elmira Mission, 794 F.2d 38, 41-42
19
(2d Cir. 1986) ("the potential for consumer confusion is greater than in the case of
a random infringer" due to the association in consumers' minds between the
20
licensor and licensee).
21
“A former licensee who continues use of a mark not identical, but
22
confusingly similar to, the formerly licensed mark is trying to convey the false
23
message of continued affiliation and commits infringement." McCarthy on
24
Trademarks and Unfair Competition § 25:31. "Where a licensee persists in the
25
unauthorized use of a licensor's trademark, courts have found that the continued
-22-
1836
use alone establishes a likelihood of consumer confusion." Sun Microsystems v.

1
Microsoft Corp., 999 F. Supp. 1301, 1311 (N.D. Cal. 1998); see also Burger King
2
Corp. v. Mason, 710 F.2d 1480, 1492-93 (11th Cir. 1983) ("Because of this risk,
3
many courts have held that continued trademark use by one whose trademark
4
license has been canceled satisfies the likelihood of confusion test and constitutes
5
trademark infringement.").
6
GAC licensed and used the ROTH mark for nearly twenty years. As a
7
former licensee closely linked to Dr. Roth, GAC had a duty to select a mark that
8
was clearly distinguishable from ROTH. Before Roth Licensing asserted this
9
duty, Mr. Kringel, (who was in charge of the new name selection) was aware of it,
10
and deliberately selected the similar RT RX mark to be “close” to ROTH. In his
11 January 2015 PowerPoint presentation on the strategy for the "Roth Trademark
12 Exit," Mr. Kringel stated, "GAC is in a unique situation based on our history with
13 the Roth Estate Around this Mark. Without the license we are more restricted than
14 the competition." (Ex. 75 at 4.) At the arbitration hearing, Mr. Kringel confirmed
15 his understanding that GAC had a heightened duty to select a distinguishable mark.
16 (TR at 1021:15-1022:23.) Later, in February 2015, prior to the change to RT RX,
17 Roth Licensing's counsel expressly reminded GAC of this duty. (Ex. 148 at 1
18 ("[g]iven GAC's longstanding license, [Roth Licensing is] going to have to insist
19
upon very strict non-use of the ROTH name going forward."). Nevertheless and
despite GAC’s undisputed ability to choose a completely different mark (e.g. such
20
as “Asia”) in keeping with Kringel’s opinion: “the closer [to ROTH] the better.”
21
GAC complains that the rule of stricter scrutiny of former licensees has not
22
been applied by the 9th Circuit Court of Appeal and therefore has no application
23
here. Even if that were true, GAC cannot dispute that as a longtime licensee of the
24
ROTH mark, it was obligated to select a clearly distinguishable mark. GAC argues
25
that Mr. Kringel’s opinion testimony as a “layperson” that GAC had a higher duty
-23-
1837
should be ignored and that GAC was “very conservative” in its selection of RT
1
RX, a mark just two letters shy of ROTH. However, the evidence demonstrated
2
GAC’s intention and expectation that customers would understand that RT RX
3
referred to ROTH. Such use by a former licensee can show that confusion is likely
4
even without resort to authorities outside the 9th Circuit. In any event analysis
5
under the Sleekcraft factors also establishes that the RT RX mark is confusingly
6
similar to the ROTH mark.
7
The Sleekcraft Factors
8
The Ninth Circuit considers eight, non-exclusive factors to assess likelihood
9
of confusion: (1) strength of plaintiff's mark; (2) similarity of the parties' marks;
10
(3) similarity of the goods; (4) similarity of the marketing channels; (5) defendant's
11 intent in selecting its mark; (6) evidence of actual confusion; (7) degree of care
12 exercised by consumers; and (8) likelihood of expansion into other markets. AMF,
13 Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979). "The test is a fluid
14 one and the plaintiff need not satisfy every factor, provided that strong showings
15 are made with respect to some of [the factors.]." Surfvivor Media, Inc. v. Survivor
16 Prods., 406 F.3d 625, 631 (9th Cir. 2005); see also E. & J. Gallo Winery v. Gallo
17 Cattle Co., 967 F.2d 1280, 1290-91 (9th Cir. 1992) ("The presence or absence of a
18 particular factor does not necessarily drive the determination of a likelihood of
19
confusion.").
Strength of Mark
20
The strength of a mark is determined by its placement on a "continuum of
21
marks from 'generic,' afforded no protection; through 'descriptive' or 'suggestive,'
22
given moderate protection; to 'arbitrary' or fanciful' awarded maximum protection."
23
E. & J. Gallo Winery v. Gallo Cattle Co., 967 F.2d 1280, 1291 (9th Cir. 1992).
24
"While personal names used as trademarks are not inherently distinctive, they are
25
treated as strong marks upon a showing of secondary meaning." Id.; see also E.I
-24-
1838
Du Pont De Nemours & Co. v. Societe S. T. Dupont, 161 U.S.P.Q. 489 (T.T.A.B.
1
1969) ("Where a surname has acquired a secondary meaning it is afforded the same
2
protection as if it were an arbitrary, technical mark."). "Furthermore, registration
3
on the principal register creates a presumption of distinctiveness—in the case of a
4
surname trademark, acquired distinctiveness." Avery Dennison Corp. v. Sumpton,
5
189 F.3d 868, 876 (9th Cir. 1999) (citing 15 U.S.C. § 1057(b)); see also
6
Americana Trading Inc. v. Russ Berrie& Co., 966 F.2d 1284, 1287 (9th Cir. 1992)
7
("registration carries a presumption of secondary meaning").
8
The ROTH mark is registered on the federal principal register, and
9
therefore Roth Licensing is entitled to a presumption that its mark has acquired
10
secondary meaning, and is also entitled to the highest level of protection. And,
11
Roth Licensing (via its licensee GAC) substantially and continuously used and
12
promoted the ROTH mark in connection with orthodontic appliances for nearly
13 twenty years. Throughout that time GAC closely-linked its products to the
14 ROTH name and Dr. Roth's image. GAC found numerous ways to market the
15 fact that Dr. Roth's endorsement was unique to GAC. (Exs. 54, 55 at 19-38,
16 103, 111, 112, 113, and 114; TR at 734:9-747:10.) GAC’s use, coupled with
17 more than in sales in the last nine years shows that GAC
18 succeeded in making itself the “true” source of ROTH products. (Ex. 325.)
19 Similarity of Mark
20 Similarity of the marks “has always been considered a critical question in
21 the likelihood of confusion analysis.” Goto.com, Inc. v. Walt Disney Co., 202
22 F.3d 1199, 1205 (9th Cir. 2000). The greater the similarity, the greater the
23 likelihood of confusion. Id. at 1206. Similarity between marks is tested with
24 respect to sight, sound, and meaning, and similarities weigh more heavily than
25
differences. Sleekcraft, 599 F.2d at 351. And, courts generally assign "greater
-25-
1839
weight to a dominant feature of a mark." Daddy's Junky Music Stores, Inc. v.

1
Big Daddy's Family Music Ctr., 109 F.3d 275, 284 n. 4 (6th Cir. 1997); see
2
also E. & J. Gallo Winery, 967 F.2d at 1291-92 (same). "[W]hen a mark
3
consists of two or more words, some of which are disclaimed, the word not
4
disclaimed is generally regarded as the dominant or critical term." Citigroup
5
Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344, 1349 (Fed. Cir. 2011).
6
Exact identity is not necessary. See, e.g., McCarthy on Trademarks and
7
Unfair Competition §23:20 ("To find trademark infringement only by exact
8
identity and not where the junior user makes some slight modification would
9
'be in effect to reward the cunning infringer and punish only the bumbling
10
one.'")
11
Because GAC has disclaimed the "RX" portion of its mark (Ex. 82 at 2),
12
the dominant element of GAC's mark is “RT.” GAC has acknowledged that
13 “[t]he key change is ROTH to RT,” and it operates in Europe accordingly,
14 using only RT (not RT RX) to refer to its ROTH products. (Ex. 254 at 2; Ex.
15 257 at 1.) ROTH and RT share two of the same letters, "R" and "T," and both
16 marks also start with the letter "R." Ms. Riccardi acknowledged the
17 similarities between the two marks. (TR at 499:9-12.) Although Mr.
18 Piervencenti denied the similarity at the arbitration, in his deposition, he
19 admitted that "RT RX means ROTH prescription." (TR at 769:1-2.) Dr.
20 Wasserman, a longtime GAC customer, also testified that RT RX "meant
21
ROTH to [him]." (TR at 104:6-13.) There can be no reasonable dispute that
22
RT is intended to mean ROTH. None of the GAC witnesses was convincing
in their uniform denial of GAC’s intention to select a name “as close as
23
possible” to ROTH and yet “far enough away” to avoid a trademark dispute as
24
Mr Kringel candidly stated. ROTH and RT are substantially similar.
25
-26-
1840
Similarity of Marketing Channels

1
2
“Related goods are generally more likely than unrelated goods to confuse
the public as to the producers of the goods.” Brookfield Commc'ns, Inc. v. W.
3
Coast Entm't, 174 F.3d 1036, 1055 (9th Cir. 1999). Similarly, "[c]onvergent
4
marketing channels increase the likelihood of confusion." Sleekcraft, 599
5
F.2d at 353. GAC continues to use RT RX in connection with the same goods
6
that were once ROTH goods, and continues to market the RT RX goods as it
7
did the ROTH goods, e.g., in its catalogs, online. (See, e.g., TR at 497:3-15.)
8
GAC claims that confusion is unlikely because the purchasers of GAC's
9
products, orthodontists, exercise a high degree of care in making their
10
purchase. However, even "[w]hen the buyer has expertise in the field, . . . it
11
will not preclude a finding that confusion is likely." Sleekcraft, 599 F.2d at
12
353 (citing Am. Drill Bushing Co. v. Rockwell Mfg. Co., 342 F.2d 1019, 1022
13 (C.C.P.A. 1965) (expertise in field differentiated from expertise as to
14 trademarks). The evidence also shows that GAC did not announce the name
15 change outside of the company. (TR at 464:20-465:4 ("we didn't really
16 communicate it outside of the company"); TR at 479:14-16.) And, the
17 evidence shows that orthodontists that are loyal customers may not examine
18 the marks closely each time they restock their inventory.(TR at 98:16-99:1.)
19 Indeed the testimony of Dr. Wasserman established precisely this point.
20 Accordingly, the marketing channel factor weighs heavily in Roth Licensing's
21
favor.
22
GAC's intent in selecting its mark
Courts may further infer "that there are confusing similarities" between the
23
parties' marks based on the defendant's deceptive intent. Brookfield, supra 174 F.3d
24
at 1059. The intent that matters for purposes of the Sleekcraft analysis is whether
25
the defendant “adopted his mark with knowledge, actual or constructive, that it was
-27-
1841
another's trademark” and not whether defendant intended to deceive consumers.

1
Brookfield, 174 F.3d at 1059 (emphasizing intent factor "is not so narrowly
2
confined" as to include only “intent to deceive the public.”). “[W]hen an alleged
3
infringer knowingly adopts a mark similar to another's, courts will presume an
4
intent to deceive the public." Official Airline Guides, Inc. v. Goss, 6 F.3d 1385,
5
1395 (9th Cir. 1993).
6
The evidence establishes that GAC willfully and deliberately infringed the
7
ROTH trademark:
8
 GAC was a longstanding licensee, and thus aware of value of the ROTH
9
mark, having devoted substantial resources to develop and promote its
10
ROTH products for nearly 20 years. (See, e.g., Exs. 50, 51, 54, 111, 113,
11
114.)
12
 In 2015, when GAC decided it would not renew its license arrangement
13 with Roth Licensing, Mr. Kringel was tasked with selecting a new name. In
14 doing so, he was aware that GAC had a heightened duty to move away from
15 the mark because of its status as a licensee. (Ex. 75 at 4; TR at 1021:15-
16 1022:23.) And, in February 2015, when it became clear that the parties
17 would not agree on a further license, Roth Licensing's counsel expressly
18 reminded GAC of its strict duty to move away from ROTH. (Ex. 148 at 1.)
19 Notwithstanding knowledge of its duty, GAC selected RT RX, a mark just
20 two letters removed from ROTH.
21  Kringel stated that he deliberately chose RT RX to be as “close” as possible
22
to ROTH in order to avoid having to “explain” the name change to
23
customers, which would have disturbed his sales force as “unhappy news.”
24
 The evidence shows that GAC considered only marks that started with R: R
RX, RO RX, RT RX, RTH RX, and RSW, and Ms. Ricciardi acknowledged
25
-28-
1842
that the "R" in at least one of the marks stood for ROTH. (Ex. 75 at 9; Ex.
1
84; TR at 469:24-471:3.)
2
 At the arbitration hearing, GAC's witnesses refused to admit that RT RX
3
means ROTH prescription. However, in his deposition, Mr. Piervencenti
4
admitted that "RT RX means Roth prescription." (TR at 768:10-796:2.) The
5
name change announcement sent by Ms. Ricciardi confirms that RT RX
6
means ROTH prescription, stating, "we will be referring to the Roth
7
prescription as RT Rx." (Ex. 85 at 1.) A similar marketing email from
8
Elizabeth Malson, GAC's former Director of Marketing, states, “‘Roth' now
9
‘RT’.” (Ex. 86 at 2). GAC’s attempted distinction of the prescription is a
10
chimera.
11
 Mr. Kringel and Ms. Ricciardi both acknowledged that in selecting a new
12
name, it was important for consumers to understand what they were
13 purchasing. (TR at 1015:9- 1016:1; TR at 471:10-16.); and Kringel admitted
14 that he wanted to get as close to ROTH as possible in order to provide the
15 “strongest messaging possible.” (TR at 1015:18-1016:1).
16 GAC’s arguments that Roth Licensing’s mark is “weak in a crowded
17 market” is itself weak in comparison with the evidence supporting a finding of
18 likely confusion after analysis of all the Sleekcraft factors, especially when the
19 evidence of GAC’s intention is considered.
20 GAC’s argument it did not intend to trade on the ROTH mark because it
21
uses a disclaimer is disingenuous.2 GAC admits that its disclaimer serves to
22
“inform” consumers that RT RX means ROTH, in part demonstrating GAC's
23
24
2
GAC's disclaimer states as follows: Our RT Rx has values that are equivalent to the Roth®
prescription values. No endorsement is implied. Roth® is a registered trademark of Roth
25 Licensing LLC. (Ex. 69 at 5)
-29-
1843
intent to trade on the ROTH mark. (TR at 878:6-10; TR at 888:3-10.) GAC's own
1
“confusion expert”, Dr. Wind, testified that GAC's disclaimer might actually
2
increase the likelihood of confusion. (TR at 695:24- 696:3; TR at 578:10-22).
3
GAC's disclaimer does not eliminate the likely confusion created by its use of the
4
RT RX mark. The disclaimer appears at the very bottom of GAC's advertisements
5
and website, not proximate to the RT RX mark, which appears at the top of the
6
advertisement and website. (Ex. 104 at 12.) Additionally, the disclaimer appears in
7
print that is significantly smaller than that used for the RT RX mark. See, e.g.,
8
Cartier, Inc. v. Deziner Wholesale, L.L.C., 55 U.S.P.Q. 2d 1131 (S.D.N.Y. 2000)
9
(disclaimer in print smaller than defendant's use of infringing mark is not effective
10
to offset likely confusion).
11 In trademark infringement disputes, “the efficacy of disclaimers generally is
12 in doubt.” Beacon Mut. Ins. Co. v. OneBeacon Ins. Corp., 376 F. Supp. 2d 251,
13 266 (D.R.I. 2005). Accordingly, many courts have held that disclaimers do not
14 preclude a finding of likely confusion. See, e.g., McCarthy on Trademarks and
15 Unfair Competition § 23:51; Australian Gold, Inc. v. Hatfield, 436 F.3d 1228 (10th
16 Cir. 2006) (disclaimer on website does not dispel likelihood of confusion caused
17 by use of plaintiff's mark). A relatively inconspicuous disclaimer generally will not
18 preclude a finding of likely confusion. See Weight Watchers Int'l, Inc. v. Stouffer
19
Corp., 744 F. Supp. 1259 (S.D.N.Y 1990) (A disclaimer of connection or
affiliation appeared in "miniscule print" on the very bottom of an ad. "Because of
20
its location and size, the disclaimer does not effectively eliminate the misleading
21
impression conveyed in the ad's large headline."). It is the defendant's burden to
22
prove that use of a disclaimer avoids consumer confusion. Home Box Office, Inc.
23
v. Showtime/The Movie Channel Inc., 832 F.2d 1311, 1315 (2d Cir. 1987); see also
24
Clinique Labs., Inc. v. Dep Corp., 945 F. Supp. 547, 556 (S.D.N.Y. 1996) (noting
25
it is a "heavy burden").
-30-
1844
GAC's willful intent is further supported by the fact that it could have
1
selected any name to replace ROTH, but nevertheless chose RT RX. GAC claims
2
that it should be free to use "ROTH" (or its variant "RT") to describe its products
3
because no other word properly conveys Dr. Roth's prescription. Yet, GAC has
4
adopted entirely arbitrary names to connote other trademarked prescription names.
5
MBT, like ROTH, is a prescription used by orthodontic companies in connection
6
with brackets. One of GAC's major competitors, the 3M Unitek Corporation, owns
7
the rights to the MBT trademark. (Ex. 300.) GAC has not licensed the right to use
8
the MBT mark, and does not use the term "MBT" in the names of its brackets.
9
Instead, GAC uses a completely remote name, EURO, for its brackets offered in
10
the MBT prescription; and it refers to MBT less prominently. (Ex. 104 at 15.)
11 GAC's customers understand that GAC's EURO prescription is the equivalent to
12 MBT. (TR at 473:8-16; TR at 178:1-9.) Unlike the Roth Family Trust and its
13 assignee Roth Licensing, 3M Unitek is a large company with the resources to
14 respond aggressively to any infringement. The fact that GAC gives 3M a wide
15 berth regarding its MBT mark by using EURO, while deliberately staying “close”
16 to Roth Licensing’s ROTH by using RT RX supports a finding of willfulness in
17 this case.
18 Mr. Kringel admitted that instead of RT RX, GAC could have selected a
19
completely distinct name like “ASIA.” (TR at 1016:23-1017:5.) Instead GAC
selected RT to be as “close as possible” to ROTH. The reasonable inference is that
20
GAC intended to capitalize and continue to trade on Roth Licensing’s distinctive
21
ROTH mark, and the recognition and goodwill associated with that mark. See
22
Sleekcraft, 599 F.2d at 354 ("[w]hen the alleged infringer knowingly adopts a mark
23
similar to another's, reviewing courts presume that the defendant can accomplish
24
his purpose: that is, that the public will be deceived.")
25
-31-
1845
Although GAC had licensed the ROTH mark from Roth Licensing and its
1
predecessors for nearly twenty years, it did not inform Roth Licensing of its
2
decision to use RT RX. (TR at 208:2-18.) Based on their history of negotiations,
3
GAC knew that Roth Licensing would object to this use. In 2011 and 2012, Roth
4
Licensing had informed GAC of its enforcement efforts against Sybron and
5
RWISO for their use of the letter "R" in the name RW FACE. (TR at 295:22-25;
6
Exs. 136 and 137 at 9.) GAC must have known that use of "RT" was objectionable
7
since the use of “R” had already been disputed.
8
Willfulness is further supported by GAC's deliberate choice not to
9
communicate the name change to its loyal ROTH customer base, presumably
10
intending to conceal its decision to end its relationship with the Roth family. After
11 all, GAC’s Marketing manager admitted that he preferred to avoid the need to
12 “explain” the change. GAC did not announce this name change publicly, nor did it
13 require its sales representatives to proactively inform ROTH customers of this
14 name change. (TR at 479:14-16; 480:3-481:8.) Dr. Wasserman, a longtime GAC
15 customer loyal to ROTH products, did not learn of the name change until his
16 involvement in this proceeding in 2016. (TR at 98:16-99:1). Although Ms.
17 Ricciardi testified that GAC's best “A and B list” customers received the updated
18 RT RX catalog (TR at 483:5-484:4), Dr. Wasserman did not receive the catalog,
19
even after he requested it. (TR at 100:20-103:1.) GAC's customers cannot order
products from GAC’s website, thereby lessening the likelihood that they would
20
learn of the change there (TR at 489:6-8.)
21
This evidence shows that GAC knew its breach with the Roth family would
22
resonate with longtime customers and that GAC intended to downplay the end of
23
that relationship. Before any announcement of the name change, all references to
24
the word "relationship" were removed form GAC’ materials. (Ex. 256 at 3-4.)
25
GAC's Vice President noted that the change was necessary to "distill[] down the
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1846
'relationship value' of this transition as I don't want our reps to get wrapped up that
1
we may or may not have had a falling out with the Roth estate." (Ex. 256 at 3.) The
2
fact that GAC did not want to send this message, even internally, constitutes
3
evidence of GAC's awareness of the value of the perceived association between
4
GAC and ROTH in the precise cohort of loyal DR. Roth followers the orthodontic
5
appliance market. This amounts to deliberate confusion of some of GAC’s best
6
customers as to the relationship between Dr. Roth, the ROTH mark and GAC.
7
Actual Confusion Need Not Be Shown
8
"Neither actual confusion nor intent is necessary to a finding of likelihood of
9
confusion." Century 21 Real Estate Corp. v. Sandlin, 846 F.2d 1175, 1178 (9th Cir.
10
1988). Courts have long recognized that demonstrating actual confusion is difficult
11 and the lack of such evidence is generally not noteworthy. Network Automation,
12 638 F.3d at 1151; Brookfield, 174 F.3d at 1050 ("difficulties in gathering evidence
13 of actual confusion makes its absence generally unnoteworthy"); Levi Strauss &
14 Co. v. Blue Bell, Inc., 778 F.2d 1352, 1360 n. 10 (9th Cir. 1985) ("[t]he absence of
15 evidence of actual confusion need not give rise to an inference of no likelihood of
16 confusion."
17 GAC argues the that a negative inference should be drawn against Roth
18 Licensing for failing to offer survey evidence to show confusion in the market.
19
However, courts in the Ninth Circuit recognize that surveys are expensive, and
fault a plaintiff for not conducting a survey only where it has "the financial
20
resources to pay for such a survey." Playboy Enters., Inc. v. Netscape Commc'ns
21
Corp., 55 F. Supp. 2d 1070, 1079, 1084 (C.D. Cal. 1999) (noting plaintiff had $300
22
million in net sales in 1997); see also Cairns v. Franklin Mint. Co., 24 F. Supp. 2d
23
1013, 1041 (C.D. Cal. 1998) (negative inference against plaintiff who failed to
24
offer a survey where "it has the financial resources to do so"). "[A] a plaintiff's
25
attorney may well make a rational decision not to pay for a confusion survey
-33-
1847
because she correctly feels that other evidence is strong enough to prove plaintiff's
1
infringement case." McCarthy on Trademarks and Unfair Competition § 32:195.
2
Roth Licensing is a small family business with limited funds, and last had no
3
income in 2014. (TR at 180:17-22.) The evidence in this case, including the above-
4
discussed evidence establishing GAC's willful conduct, is sufficient to prove
5
GAC's intentional infringement.
6
This finding of willful infringement defeats several of GAC’s arguments and
7
affirmative defenses including:
8
 Classic Fair Use requires the term to be used “fairly and in good faith.”
9
Cairns v. Franklin Mint Co., 292 F. 3d 1139, 1150 (9th Cir. 2002);
10
 Nominative Fair Use also depends upon good faith and requires that “the
11
defendant did nothing that would, in conjunction with the mark, suggest
12 sponsorship or endorsement by the plaintiff”. New kids on the Block v. News
13 America Pub., Inc. 971 F. 2d 302,308 (9th Cir. 1992); and
14  Unclean Hands is an equitable concept that works against GAC in this
15 instance because “equity requires that those seeking its protection shall have
16 acted fairly and without fraud or deceit as to the controversy in issue.”
17 Ellenburg v. Brockway, Inc., 763 F2d. 1091, 1097 (9th Cir. 1985).
18 GAC’s “Experimental” Survey Opinion Is Entitled To Little Weight
19 “Surveys demonstrating an absence of actual confusion among a certain
20 population would not necessarily defeat the likelihood of confusion." Century 21
21
Real Estate Corp., 846 F.2d at 1181 (9th Cir. 1988). GAC paid approximately
22
$200,000 for a confusion survey by “legendary” marketing expert Dr. Jerry Wind.
Dr. Wind himself insisted that his work was an “experiment” and not a survey. In
23
any event, his opinion is not persuasive because of the methods he employed in
24
conducting his experiment: (1) the universe he selected was flawed; (2) the stimuli
25
applied were inappropriate; and (3) the questions presented were improperly
-34-
1848
framed and thus did not lead to useful data. Ultimately, Dr. Wind presented no
1
statistically significant and persuasive findings at all.
2
Dr. Wind failed to take into account the heterogeneity of the market for
3
orthodontic appliances. The market for orthodontic appliances is heterogeneous
4
because only some doctors are willing to pay premium prices for certain brands or
5
bracket types, and most favor a particular prescription brand, e.g., ROTH. Dr.
6
Wind did not attempt to pre-screen or survey orthodontists who had received
7
training from Dr. Roth, or who used a ROTH-branded prescription, or who are
8
willing to pay a premium price for a brand. Instead, Dr. Wind chose to survey the
9
entire field of orthodontists. (TR at 628-630) His experimental groups excluded
10
precisely the doctors likely to be loyal to a brand connected to Dr. Roth.
11 Dr. Wind obtained completed surveys from a total of 203 respondents. (Ex.
12 504 at 12.) To obtain these respondents, Dr. Wind used two sources (online and a
13 contact list) to contact more than 1,500 potential respondents. In total,
14 approximately 1 in 7 contacted survey candidates provided a completed survey,
15 immediately raising questions of sample bias. An obvious example of bias is the
16 selection of orthodontists from those willing to complete the survey for $25 to $75
17 compensation. Patently those doctors are unlikely to be the busy, successful set of
18 orthodontists willing to pay premium prices for appliances. (TR at 646-649.)
19
Indeed, certain of the respondents expressed price sensitivity, suggesting that they
would not pay a premium for any bracket product. (TR at 655.)
20
Dr. Wind also selected questionable stimuli for his experiment. First, Dr.
21
Wind selected OMNIARCH RT RX (a less expensive metal twin bracket) as the
22
test product rather than a premium self-ligating3 product like In-Ovation, which is
23
3 Self-ligating brackets are more expensive because they include a mechanism to allow wires to
24
be more easily attached. They greatly accelerate the adjustment process, thus allowing more
25 patients to be treated in a day. This is one reason that Dr. Roth’s system has been attractive to
the busiest and most lucrative orthodontic practice.
-35-
1849
1
associated with Dr. Roth. (TR at 665.) By selecting a lower selling, lower-priced
2
product that Dr. Roth had not used, Dr. Wind's survey failed to address a central
3
question in this case, namely the value of the ROTH endorsement on key ROTH
4
products like In-Ovation RT RX.
5
In keeping with GAC’s argument that unprotected “prescriptions values” are
6
distinct from the mark, the test and control stimuli presented by Dr. Wind are
7
substantially similar. The only change of stimuli between the experimental groups
8
was the replacement of RT RX with ROTH PRESCRIPTION. (Ex. 504 at 153-60.)
9
As Mr. Piervencenti admitted, RT RX means ROTH PRESCRIPTION.
10
Accordingly, the test and control essentially were identical. Roth Licensing points
11 out that Dr. Wind was previously criticized for using test and control stimuli that
12 were too similar. Louis Vuitton Malletier, S.A. v. Hyundai Motor America, No. 10
13 Civ. 1611, 2012 WL 1022247, at *24 (S.D.N.Y Mar. 22, 2012) (noting that use of
14 test ad with basketball in chestnut brown emblazoned with LV logo was arguably
15 too similar to the control ad with a chestnut brown basketball). In the instant
16 experiment Dr. Wind should have used a control that did not refer to ROTH at all.
17 Finally, Dr. Wind constructed questions that did not focus upon the issues in
18 this case and instead asked about the maker of the product and about permission to
19
make the product (thus tracking GAC’s disclaimer argument). These questions
resulted in the exclusion of most of the 203 respondents from each of the open-
20
ended response portions of the survey. (Ex. 504 at 167, 169, 170, 214.) Hardly
21
anyone was left to answer the open-ended questions that might have been most
22
revealing. The initial skewed selection of respondents, the prejudicial selection of
23
stimuli and the winnowing of responses to open-ended questions left nothing but a
24
shell of an experiment. Like an egg drained by a weasel, the remaining shell has
25
almost no weight.
-36-
1850
GAC Breached The 2012 License Agreement

1
In the 2012 agreement, GAC agreed to cease all use of the ROTH rights
2
after the 90-day phase-out period following December 31, 2014 GAC also agreed
3
that it would not contest GAC's rights to the ROTH mark, including after
4
expiration of the license. (Ex. 53 §§ 2.3 “no contest” provision and 3.4 “phase-out”
5
obligation). The evidence shows that GAC, and its parent Dentsply Sirona
6
breached the 2012 agreement by: (i) continuing to use RT RX which is the near-
7
equivalent version of ROTH while seeking to register the RT RX mark, and
8
promoting its affiliation with Dr. Roth; and (ii) challenging the validity of the
9
ROTH mark.4
10
Under the 2012 agreement, GAC was to cease all use of the Roth Rights,
11 including the ROTH mark, and Dr. Roth's name and image by March 31, 2015.
12 (Ex. 53 § 2.3.) In addition to its trademark infringement, GAC's use of RT RX, a
13 near-equivalent to ROTH, constitutes breach of the 2012 contract. See McCarthy
14 on Trademarks and Unfair Competition § 25:31 (noting continued use of licensed
15 mark post-license constitutes trademark infringement and breach of contract).
16 The evidence also shows that GAC continued to use the ROTH rights after
17 the phase-out period, as recently as February of 2017. In 2015, GAC sought to use
18 "Roth in the search algorithm" of its website, so that "if [users] sear[ch] Roth, they
19
get results for RT Rx." (Ex. 87 at 4.) Ms. Ricciardi testified that she does not
know whether GAC ever implemented that algorithm. (TR at 507:13-15.) She also
20
testified that when she did a search for “ROTH” after the name change, GAC's
21
website yielded no results. (TR at 507:16-508:2.) Nevertheless, during the
22
arbitration hearing, on February 7, 2017, a search for the term "ROTH" on GAC's
23
24
4 GAC contends that Roth licensing should be barred from recovery based on certain of the
25 asserted breaches of the 2012 agreement because it failed to timely plead them. Not so, at least in
the context of arbitration; and certainly not where no prejudice is shown.
-37-
1851
website yielded 316 pages of products hits, including over 2000 brackets. (TR at
1
507:13- 508:12.) Although Ms. Ricciardi claims that this may be due to the use of
2
ROTH in the disclaimer (TR at 508:13-17), GAC was using the disclaimer as of
3
April 1, 2015, when Ms.Ricciardi performed the same search and allegedly
4
received no results.
5
Although GAC claims that it began moving away from use of the ROTH
6
brand and Dr. Roth's endorsement in 2009, the evidence is otherwise. In 2009,
7
GAC added language to its catalog signifying Dr. Roth's teaching philosophy.
8
(Ex. 554 at 11.) Both Dr. Wasserman and Mr. Kringel confirmed that this
9
language uniquely describes Dr. Roth's treatment plan. (TR at 104:18-105:22; TR
10
at 923:6-924:16.) This language remains in GAC's current catalog, published in
11 2015, regarding its In-Ovation R RT RX product, and continues to remind
12 customers of the association between Dr. Roth and this specific, and most
13 profitable, product. (Ex. 104 at 11.)
14 Similarly, GAC's marketing website, www.dsorthodontics.com, identifies
15 (as the leading article of 2016) an article related to the In-Ovation bracket. (Ex.
16 324.) The article makes repeated references to Dr. Roth and his role in developing
17 the In-Ovation bracket with GAC. (Ex. 324 at 8, 9, and 15.) This article was first
18 published on GAC's marketing website on March 25, 2015 (Ex. 113), just days
19 before the end of the phase-out period under the 2012 license agreement.
20
GAC has posted this article to its Facebook page at least four times since the
21
termination of the parties' license agreement, including as recently as January 9,
2017. (Ex. 324 at 46-49.) GAC’s use of Dr. Roth's name years after the end of
22
its license shows that even during the arbitration hearing, GAC continued to
23
promote its longtime association with Dr. Roth and use the ROTH name.
24
GAC also breached the agreement by contesting the ROTH mark after
25
expiration of the license period in several proceedings. First on April 27, 2015,
-38-
1852
GAC filed a tactical declaratory relief action for non-infringement in the U.S.
1
District Court for the Eastern District of New York. (Ex. 79.) That detour
2
significantly delayed these arbitration proceedings. In support of its claims in
3
the New York case, GAC alleged that the ROTH mark was not entitled to
4
trademark protection and had become generic. (Ex. 79 at ¶¶ 11, 20.) The same
5
issues are central in this proceeding (Ex. 80 at 11, 13 and 17) leading the U.S.
6
District Court in New York to defer to this arbitration.
7
On September 20, 2016, GAC, through its parent company, Dentsply
8
Sirona, filed a trademark proceeding with the Trademark Trial and Appeal Board
9
seeking to cancel Roth Licensing's registration for the ROTH mark. (Ex. 288.)
10
Dentsply Sirona alleged that the ROTH mark is generic and thus not entitled to
11 federal registration. Dentsply also alleged that the ROTH mark stood as a bar to
12 use of the RT RX mark, and accordingly, should be cancelled. (Ex. 288 at¶ 5.)
13 GAC argues that it cannot be held liable for this cancellation petition because
14 Dentsply, and not GAC, filed the petition. However, the evidence shows that only
15 GAC uses the RT RX mark; Dentsply does not use the trademark. (Baumgardner
16 Depo. at 64:7-65:2.) And, although Dentsply filed the trademark application for
17 the RT RX mark, it is the company's general practice to file trademark
18 applications in Dentsply's name, rather than in the name of its subsidiaries.
19
(Baumgardner Depo. at 64:10-18.)
20
Accordingly, although Dentsply technically is the entity seeking
21
cancellation of the ROTH mark, it is indisputably doing so as GAC's agent and
solely to protect GAC's ability to use the RT RX mark,. Such conduct is
22
attributable to GAC, and plainly violates the no contest provision in the 2012
23
agreement. Finally, the filing of the RT RX trademark application by Dentsply
24
Sirona also violates the duties not to contest and not to use the ROTH mark, as
25
via the application, GAC is attempting to register a mark that conflicts (i.e., is
-39-
1853
likely to cause confusion) with the ROTH mark. 5

1
GAC has violated Dr. Roth’s statutory right of publicity
2
California Civil Code Section 3344.1(a)(1) provides for a right of action
3
against one who uses the name or likeness of a deceased personality in any
4
manner, on or in products, or for the purpose of advertising or selling goods
5
without the prior consent of the decedent's successor. Cal. Civ. Code §
6
3341(a)(1). A “deceased personality” is any natural person whose name, voice,
7
signature, photograph, or likeness has commercial value at the time of his death.
8
Cal. Civ. Code § 3344.1(h). Generally, there must be a "direct connection"
9
between the unpermitted use and a commercial purpose. Yeager v. Cingular
10
Wireless LLC, 673 F. Supp. 2d 1089, 1095 (E.D. Cal. 2009).
11
“To trigger infringement of the right of publicity, the plaintiff must be
12 ‘identifiable’ from defendant's unauthorized use.” McCarthy Rights of Publicity
13 and Privacy § 3:17 (2d ed. 2015). Liability does not require that defendant use
14 plaintiff's exact name, so long as a reasonable person could identify plaintiff from
15 defendant's use. see id. § 4:53 (“A defendant's disguised use of plaintiff's name
16 will not avoid identification if the context makes plaintiff readily identifiable to
17 the reasonable person.”) “No one is free to trade on another's name and
18 appearance and claim immunity because what he is using is similar to but not
19 identical with the original.” Onassis v. Christian Dior-New York, Inc. 472
20
N.Y.S.2d 254, 261 (1st Dep't 1985).
21
GAC has violated the posthumous right of publicity pertaining to Dr. Roth.
The evidence establishes that Dr. Roth's name had “commercial value” at the time
22
of his death. GAC cannot dispute that when he died, Dr. Roth had an ongoing
23
24
5
Roth Licensing argues that to completely resolve this dispute Dentsply Sirona, Inc, (GAC’s
ultimate parent) must be added to the arbitration as a party, because Dentsply Sirona, Inc. filed
25 the trademark application for RT Rx as well as a cancellation proceeding challenging the ROTH
mark. This question is reserved for briefing and decision in the remedy phase of the arbitration.
-40-
1854
1855
PROOF OF SERVICE
State of California
California 94105.
On March 22, 2017, I served the foregoing document described as the INTERIM ARBITRATION
DECISION REGARDING LIABILITY; and PROOF OF SERVICE on the interested parties in this
action as follows:

BY U.S. MAIL, I placed a true copy of the document described above in a sealed envelope
and caused such envelope with postage thereon to be placed in the United States mail at San
Francisco, California.
BY FACSIMILE, I caused such to be faxed to the attorneys on March 22, 2017

to be sent from e-mail address tyler@adrservices.org to the persons at the e-mail addresses
listed in the Service List. I did not receive, within a reasonable time after the transmission,
any electronic message or other indication that the transmission was unsuccessful.
attorneys on March 22, 2017.
Executed on March 22, 2017 at San Francisco, California
____________________________________
Tyler Smith

1856
Exhibit P
1857
1858
1859
1860
1861
1862
PROOF OF SERVICE
State of California
California 94105.
On June 12, 2017, I served the foregoing document described as the ARBITRATION
MANAGEMENT ORDER #14; and PROOF OF SERVICE on the interested parties in this action as
follows:

Randall J. Clement, Esq.
CLEMENT & HO
201 W. Whiting Avenue
Fullerton, California 92832
randy@clementandholaw.com
BY U.S. MAIL, I placed a true copy of the document described above in a sealed envelope
and caused such envelope with postage thereon to be placed in the United States mail at San
Francisco, California.
BY FACSIMILE, I caused such to be faxed to the attorneys on June 12, 2017

to be sent from e-mail address tyler@adrservices.org to the persons at the e-mail addresses
listed in the Service List. I did not receive, within a reasonable time after the transmission,
any electronic message or other indication that the transmission was unsuccessful.
attorneys on June 12, 2017.
Executed on June 12, 2017 at San Francisco, California
____________________________________
Tyler Smith

1863
Exhibit Q
2:15-cv-02375-JMA-AKT Document 42-3 Filed 03/16/18 Page 281 of 310 Page
1864
Commercial
Arbitration Rules and Mediation Procedures
Including Procedures for Large, Complex Commercial Disputes
Available online at adr.org/commercial

Rules Amended and Effective October 1, 2013
Fee Schedule Amended and Effective October 1, 2017
Rules Amended and Effective October 1, 2013. Fee Schedule Amended and Effective October 1, 2017. COMMERCIAL RULES 1
2:15-cv-02375-JMA-AKT Document 42-3 Filed 03/16/18 Page 282 of 310 Page
1865
R-18. Disqualification of Arbitrator
(a) Any arbitrator shall be impartial and independent and shall perform his or her

duties with diligence and in good faith, and shall be subject to disqualification for:
i. partiality or lack of independence,

ii. inability or refusal to perform his or her duties with diligence and in good

faith, and
iii. any grounds for disqualification provided by applicable law.

(b) The parties may agree in writing, however, that arbitrators directly appointed by a

party pursuant to Section R-13 shall be non-neutral, in which case such arbitrators
need not be impartial or independent and shall not be subject to disqualification
for partiality or lack of independence.
(c) Upon objection of a party to the continued service of an arbitrator, or on its own

initiative, the AAA shall determine whether the arbitrator should be disqualified
under the grounds set out above, and shall inform the parties of its decision,
which decision shall be conclusive.
R-19. Communication with Arbitrator
(a) No party and no one acting on behalf of any party shall communicate ex parte

with an arbitrator or a candidate for arbitrator concerning the arbitration,
except that a party, or someone acting on behalf of a party, may communicate
ex parte with a candidate for direct appointment pursuant to R-13 in order to
advise the candidate of the general nature of the controversy and of the
anticipated proceedings and to discuss the candidate’s qualifications, availability,
or independence in relation to the parties or to discuss the suitability of
candidates for selection as a third arbitrator where the parties or party-designated
arbitrators are to participate in that selection.
(b) Section R-19(a) does not apply to arbitrators directly appointed by the parties

who, pursuant to Section R-18(b), the parties have agreed in writing are
non-neutral. Where the parties have so agreed under Section R-18(b), the AAA
shall as an administrative practice suggest to the parties that they agree further
that Section R-19(a) should nonetheless apply prospectively.
(c) In the course of administering an arbitration, the AAA may initiate

communications with each party or anyone acting on behalf of the parties either
jointly or individually.
(d) As set forth in R-43, unless otherwise instructed by the AAA or by the arbitrator,

any documents submitted by any party or to the arbitrator shall simultaneously be
provided to the other party or parties to the arbitration.
18 RULES AND MEDIATION PROCEDURES American Arbitration Association

1866
Exhibit R
1867
ADR SERVICES, INC.
ROTH LICENSING, LLC, *
Claimant, *
v. * ADRS Case No.: 15-3234
GAC INTERNATIONAL LLC, *
Respondent. *
******************************************************************************
GAC INTERNATIONAL LLC’S BRIEF REGARDING RE-OPENING

THE HEARING ON LIABILITY AND REQUEST FOR RECUSAL
1868
TABLE OF CONTENTS
INTRODUCTION ........................................................................................................................1
ARGUMENT................................................................................................................................3
I. Roth Licensing’s waiver arguments have already lost and cannot be used to
truncate the re-opened hearing..........................................................................................3
II. Dr. Wasserman’s explanation for switching his purchases from Roth to CCO in
2012 does not exculpate him and actually disproves Roth Licensing’s entire case .........5
A. Roth Licensing’s explanations for Dr. Wassermann’s false testimony only

re-affirm that he did not testify accurately on crucial parts of its liability
case........................................................................................................................5
B. The attempt to save Dr. Wasserman by linking brackets endorsed as

“genuine Roth” to the CCO System further undercuts Roth Licensing’s
liability theory.......................................................................................................6
C. Dr. Secchi primarily developed the CCO System, which is a GAC

trademark, and fully rebuts Roth Licensing’s new theory of liability ..................9
III. Because Justice Lambden treated Dr. Wasserman as representative of Roth

loyalists, the false testimony poisoned the entire vacated Interim Decision ..................10
A. False testimony perpetuated the lie that GAC imposed premium pricing
along with the Roth endorsement .......................................................................11
B. False testimony poisoned the arbitrator’s view of a scientifically sound

study by a highly regarded expert.......................................................................13
C. Roth licensing’s false narrative was used to create an illusory duty and
standing to police the Roth mark ........................................................................17
D. Dr. Wasserman’s false testimony supported the erroneous finding that

GAC had a duty to aggressively publicize the expiration of the license
agreement and that RT Rx was not a Roth endorsement ....................................18
E. Justice Lambden found likelihood of confusion based on Dr. Wasserman’s

surprise testimony that GAC would not give him its catalog a week before
the hearing...........................................................................................................19
IV. Justice Lambden should be recused and replaced with an arbitrator who did not
decide the case based on Dr. Wasserman’s false narrative.............................................20
-i-
1869
CONCLUSION...........................................................................................................................23
CERTIFICATE OF SERVICE ...................................................................................................24
- ii -
1870
INTRODUCTION
As often happens when one is caught in a lie, the excuses concocted to justify the lie only
make matters worse. Roth Licensing crafted a false narrative that GAC adopted the descriptive
term “RT Rx” in 2015 to commercially exploit a sizable group of Roth loyalists. As Roth
Licensing told the story, the Roth loyalists’ unwavering devotion to Roth-endorsed brackets that
use the original Roth prescription values would allow GAC to charge a premium price relative to
similar brackets that used other prescriptions (or the Roth prescription but without the Roth
endorsement).
For the false narrative to take hold, Roth Licensing needed help. But, instead of engaging
an expert to conduct a scientific survey of customer confusion, it groomed a close friend of the
late Dr. Roth, Dr. Wasserman, to tell a series of lies to give life to its false narrative. Dr.
Wasserman delivered, falsely testifying that, as a Roth loyalist, he currently buys GAC’s In-
Ovation R RT Rx brackets, always buys brackets in the Roth prescription, and is “never
changing.” All lies. But they worked—at least initially—because the arbitrator accepted them as
true and found in its favor on liability.
But a lie can’t live forever. Confronted later with the truth—that Dr. Wasserman
abandoned the Roth prescription in 2012, one month after taking Dr. Antonino Secchi’s course
on the CCO System and, since then, has consistently purchased In-Ovation R brackets in the
CCO prescription—Dr. Wasserman and Roth Licensing proffer an excuse that takes down the
entire case. Hoping for a free pass, Dr. Wasserman claims that his testimony was essentially true
because he considers the CCO prescription tantamount to the Roth prescription. It is not. Adding
insult to perjury, Roth Licensing suggests that GAC is lucky that Roth Licensing is not also
-1-
1871
suing it for infringing on the Roth Rights with its CCO prescription. Luck is not the reason that
GAC has not been sued over CCO.
Instead of getting Dr. Wasserman and Roth Licensing out of their predicament, these
latest arguments expose the entire case as a sham. Although Dr. Wasserman clearly reveres Dr.
Roth, he is not a Roth loyalist who buys only GAC products in the Roth prescription, and his
testimony was Roth Licensing’s only evidence that such Roth loyalists existed in any appreciable
numbers in 2015. Yet, by pretending to be one, Dr. Wasserman duped the arbitrator into
believing that (1) Roth loyalists existed in significant numbers in 2015, (2) they would pay a
premium for Roth-endorsed GAC brackets and GAC brackets in the Roth prescription,
(3) scientific survey evidence that refutes this and shows no confusion in the marketplace must
be unreliable or biased, and (4) GAC acted improperly to commercially exploit these Roth
loyalists and rob the Roth family of lucrative licensing fees. None of this is true.
The infringement and publicity claims, as presented by Roth Licensing, hinge on the
existence of a significant number of these purported Roth loyalists and GAC’s adoption of the
RT Rx descriptor to capture them (as opposed to merely describing the prescription programmed
into the bracket). Accepting Dr. Wasserman’s testimony as true and that loyalists like him exist
in commercially significant numbers in 2015 and afterwards, Justice Lambden initially found
GAC was liable for willful infringement. But, without Roth loyalists, Roth Licensing’s theory of
liability no longer makes sense.
Dr. Wasserman did not switch to buying CCO prescription brackets in 2012 because “he
trusts Dr. Roth.” The CCO prescription was developed years after Dr. Roth had died. The hard
reality is that many of even ardent admirers of the late Dr. Roth have abandoned the Roth
prescription and Dr. Roth’s methods.
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GAC also is not an irrational business. If GAC could have used the ROTH mark in 2015
to reap in additional revenue, it would have jumped at the chance to continue to license
the mark annually for $200,000. But Dr. Wasserman’s actual purchasing decisions—as well as
GAC’s actual decision to move away from the ROTH mark in 2009 and for the final six years of
the licensing agreement—show that the once-valuable Roth endorsement was not a golden
goose. GAC could not have charged a premium price by using the ROTH mark in 2015.
Roth Licensing’s house of cards has fallen, but not before it tricked an arbitrator to write
a lengthy opinion—since vacated—replete with adverse findings based on Dr. Wasserman’s
false testimony. GAC contracted for a fair hearing before a neutral arbitrator. Dr. Wasserman’s
perjury has poisoned the first arbitrator’s view of the parties. Invoking ADR Services Rule 10(E)
and C.C.P. 170.1(6)(A), GAC requests a new hearing with a new arbitrator.
ARGUMENT
I. Roth Licensing’s waiver arguments have already lost and cannot be used to truncate
the re-opened hearing.
The arbitrator has already considered and rejected Roth Licensing’s argument that it
should not hear arguments that are based on GAC’s business records. During the April 20, 2017,
phone hearing, Justice Lambden (1) vacated his Interim Order on liability and (2) stated that we
“certainly need to re-open the hearing” and conduct “further proceedings” because of Dr.
Wasserman’s “lies” at the liability hearing and the overriding need “to get this [liability decision]
right.” But Roth Licensing’s May 5 brief virtually ignores Justice Lambden’s statements. It
argues—as it unsuccessfully did on April 20—that it is too late to examine the veracity of Dr.
Wasserman’s testimony because GAC had access to the relevant records when Dr. Wasserman
originally lied to the tribunal. See Br. at 1-5.
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If Justice Lambden had accepted the argument that it is too late for GAC to challenge Dr.
Wasserman’s testimony, he never would have vacated the interim decision on liability during the
April 20 hearing. Nor would he have ordered briefing on the best way to re-open the hearing on
liability if he agreed with Roth Licensing that GAC had waived its objections to Dr.
Wasserman’s testimony. Roth Licensing simply repeats a lost argument without any new basis.
Roth Licensing’s waiver argument is not helped by the appellate cases that it cites as
support. The cited cases address the impropriety of re-trying a case—after a final judgment—
based on evidence that could have been uncovered at trial. See Br. at 5. There is no final
judgment here; there is not even an interim decision. And the arbitrator has told the parties that
he will re-open the proceedings to get this decision right on the merits. Cases that resist re-
opening final judgments have little relevance here.
Roth Licensing punctuates its recycled procedural-waiver argument with the confounding
argument that the continued “hearing should be, at most, limited only to further examination of
Dr. Wasserman.” Id. at 5. In other words, because GAC purportedly does not deserve another
opportunity to cross-examine Dr. Wasserman about his purchases and brand loyalty, it should be
allowed to examine only Dr. Wasserman in the resumed hearing. This makes no sense. If GAC
waived its opportunity to cross-examine Dr. Wasserman, why would it be allowed to re-examine
him and only him? Despite claiming waiver, Roth Licensing argues for the exact opposite of the
normal consequences of a waiver: giving GAC permission to do what has been waived while
barring it from doing anything else. That is not how waiver works.
Justice Lambden clearly indicated that Dr. Wasserman needs to explain himself on the
record. And even Roth Licensing concedes that Dr. Wasserman should be examined in future
proceedings. It has no basis for limiting the re-opened hearing to its efforts to sanitize and
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explain away Dr. Wasserman’s perjury. Instead, everything that Dr. Wasserman tainted with his
false testimony should be open to re-examination.
II. Dr. Wasserman’s explanation for switching his purchases from Roth to CCO in
2012 does not exculpate him and actually disproves Roth Licensing’s entire case.
A. Roth Licensing’s explanations for Dr. Wasserman’s false testimony only re-
affirm that he did not testify accurately on crucial parts of its liability case.
Caught in a lie—because he testified that, as a Roth loyalist, he “continued to purchase”
GAC’s In-Ovation R RT Rx brackets instead of GAC’s In-Ovation CCO brackets and other
brackets that do not use the Roth prescription—Dr. Wasserman (or Roth Licensing’s counsel)
digs in deeper. See TR 133:23-134:10. Through averments of Roth Licensing’s counsel, Dr.
Wasserman argues that purchasing GAC’s In-Ovation CCO brackets—which use neither the
“ROTH” nor “RT Rx” marks and have very different prescription values—nonetheless supports
the infringement claim because it is “consistent with his expressed loyalty to Dr. Roth and his
methods.” Br. at 4. That is deliberate confusion and fatal to Roth Licensing’s liability case.
Dr. Wasserman’s testimony was proffered—and found persuasive by Justice Lambden—
to show that he and other Roth loyalists exclusively and currently buy brackets that are endorsed
by Dr. Roth and use the RT Rx descriptor, despite their purportedly higher cost, because of Dr.
Roth’s endorsement. Dr. Wasserman agreed on direct examination that “In-Ovation R RT Rx, is
. . . the product [he] currently purchase[s] from GAC.” TR 103:13-23. And he testified that he
always buys the In-Ovation bracket in the Roth prescription: “we always order the same thing. .
. . which is the Roth In-Ovation bracket,” and “we are never changing.” Id. at 97:5-15.
The revelation that Dr. Wasserman (1) started buying In-Ovation R CCO brackets in
2012, (2) stopped buying In-Ovation R brackets that used the Roth prescription in 2012, and
(3) never bought a bracket with the “RT Rx” descriptor obliterates the premise that Dr.
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Wasserman—or any other purchaser—was loyal to Dr. Roth’s endorsement, the Roth
prescription values, or confused ROTH and RT Rx. Roth Licensing’s carefully crafted
explanation for Dr. Wasserman’s false testimony rebuts none of the facts that prompted Justice
Lambden to vacate the interim decision. Instead, it corroborates the key factual elements of
GAC’s charge of perjury. It is now uncontested that Dr. Wasserman:
(1) started buying thousands of GAC’s In-Ovation R CCO brackets in 2012, just one
month after taking Dr. Secchi’s CCO seminar;
(2) stopped buying In-Ovation R brackets that used the Roth prescription in 2012; and
(3) never bought a bracket with the “RT Rx” descriptor.
If that is the behavior of a “Roth loyalist,” Roth Licensing’s entire case is a sham.
Roth Licensing’s infringement case alleges that GAC’s use of the descriptive term RT Rx
was “likely to cause confusion or mistake or to deceive purchasers as to the affiliation,
connection, or association of GAC with Roth Licensing and/or the sale of their products.”
Compl. ¶ 21. But now it has no testimony from anyone who actually purchased a bracket
described as “RT Rx” and no survey evidence that any orthodontic purchasers were likely to be
confused by the RT Rx term. Without Dr. Wasserman, its case rests on vague innuendo and a
ready willingness to assume the worst about GAC, its employees, its witnesses, its retained
experts, and its counsel. That is no basis for a finding of willful infringement.
B. The attempt to save Dr. Wasserman by linking brackets endorsed as

“genuine Roth” to the CCO System further undercuts Roth Licensing’s
liability theory.
Desperate to salvage its claim and explain away Dr. Wasserman’s perjury, Roth
Licensing conjures a new theory of GAC misconduct that fails to save the claim or sanitize Dr.
Wasserman’s lies. It now suggests for the first time that CCO “is substantially-identical to
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ROTH, and in fact a mark that Dr. Roth at least laid material groundwork for, in a real sense.”
May 9 Daucher e-mail. Dr. Wasserman’s cover-up effort not only falls apart on closer
examination but it also takes Roth Licensing’s entire case with it.
The argument that CCO is substantially identical to ROTH contradicts the core findings
of Justice Lambden’s original interim decision. Justice Lambden found that GAC infringed on
the Roth trademark because of linguistic similarities between “ROTH” and “RT.” Justice
Lambden further found that GAC could have fully complied with the law by seeking a clearly
distinguishable mark like “ASIA”—or CCO—which has no possibly confusing similarity to the
protected term “R-O-T-H.” Roth Licensing now suggests that Dr. Wasserman’s purchases of
GAC’s In-Ovation CCO brackets support a liability finding.
Even if one accepts Dr. Wasserman’s excuse that he did not commit perjury because he
considered “CCO” a Roth-endorsed product and still uses licensed Roth-endorsed brackets, his
explanation nonetheless eviscerates the bases for the finding that GAC infringed upon the Roth
Rights after its licensing agreements expired in 2015. GAC’s In-Ovation CCO bracket sales
plainly do not violate the ROTH mark or Roth Rights. Nor were they ever alleged to be
infringing. And there is no colorable argument that GAC violated the Roth Rights during the life
of the licensing agreement when it was paying Dr. Roth and his successors millions of dollars for
a non-exclusive license to use the Roth mark.
Rather, it is uncontested that, in 2009, with six years remaining on GAC’s license to use
the Roth endorsement, GAC decided to stop using Dr. Roth’s endorsement, image, and name in
connection with its brackets. TR 842:5-844:1. Roth Licensing’s counsel acknowledged, at least
twice, that GAC had de-emphasized the Roth relationship and had moved away from the Roth
mark before its license had expired. Ex. 902; 912 at GAC8951. From 2009 to 2015, GAC’s
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catalog presented the In-Ovation and Ovation brackets that used the Roth prescription in the
same manner that it presented its brackets that used other prescriptions. TR 841:20-842:4;
847:21-24; 862:13-19; 864:7-13. This is simply not the conduct of a company that is preparing to
commercially exploit the Roth endorsement or Roth loyalists.
With Dr. Wasserman’s purchasing history exposed as contradicting Roth Licensing’s
entire theory of liability, Roth Licensing tries to stretch its theory far beyond anything that the
trademark law or the right of publicity or the vacated Interim Decision contemplates. It now
suggests that CCO infringes the Roth Rights. Incredibly, Mr. Daucher argues that “[a]lthough we
could perhaps make a further case out of GAC’s use of CCO (as a mark that trades off of Dr.
Roth’s personal work), Roth Licensing has no desire to expand or extend this litigation.” May 9
Daucher e-mail. In other words, Roth Licensing wants the arbitrator to accept its brisk assertion
that CCO is also part of the Roth Rights and that orthodontists who purchase an In-Ovation CCO
bracket—which is a protected GAC trademark—believe that they are buying genuine Roth-
branded products that strictly comply with the Roth prescription values.
Roth Licensing’s false modesty should fool no one. Its assertion that it has “no desire” to
pursue a multi-million dollar infringement claim against GAC (for CCO) while it is
simultaneously pursuing a multi-million dollar infringement claim against GAC (for RT Rx)
blinks reality. Roth Licensing has not only brought multiple infringement actions against GAC, it
previously filed a similar trademark lawsuit against the non-profit dental organization that Dr.
Roth co-founded, the Roth-Williams International Society of Orthodontists. If a valid
infringement claim against GAC existed, it would undoubtedly pursue it. But Roth Licensing
understandably “has no desire to expand or extend this litigation” to pursue these absurd claims
because it cannot begin to do so. Purchasing In-Ovation R CCO brackets—whose prescription
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values differ from the “original genuine” Roth prescription values—cannot be harmonized with
strict loyalty to Dr. Roth, his methods, and his philosophy because it betrays that loyalty.
Roth Licensing hopes that the arbitrator will entertain the claim that CCO is quasi-
infringing only long enough to get Dr. Wasserman off the hook and then quickly drop the issue
before considering the full ramifications of the argument. Roth Licensing cannot have it both
ways. It cannot ask the arbitrator to view CCO as infringing on the Roth Rights to exculpate Dr.
Wasserman’s perjury but then ignore how deeply the same argument hurts the underlying case.
C. Dr. Secchi primarily developed the CCO System, which is a GAC trademark,
and fully rebuts Roth Licensing’s new theory of liability.
The attached Declaration of Dr. Antonino G. Secchi, whom GAC will call at the June 21-
22 hearing1, puts the lie to Roth Licensing’s suggestion that CCO “is substantially-identical to
ROTH, and in fact a mark that Dr. Roth at least laid material groundwork for, in a real sense.”
Dr. Secchi’s Declaration tackles many misconceptions that Dr. Wasserman appears to be
promoting or poised to promote at the June 21-22 hearing. It carefully explains that (1) In-
Ovation brackets were not invented by Dr. Roth or linked to any specific prescription and
(2) fierce price competition among companies selling self-ligating brackets makes extracting a
price premium for a perceived Roth endorsement untenable. Dr. Secchi explains further that Dr.
Roth’s influence and the Roth prescription’s use have been in decline since at least 2009.
It was Dr. Secchi who selected the term Complete Clinical Orthodontics (“CCO”) in
2010—after Dr. Roth’s death. Complete Clinical Orthodontics is the name of a course that he
taught at the University of Pennsylvania. Dr. Secchi’s CCO System and CCO Rx are not
affiliated with any single practitioner or philosophy, and no reasonable orthodontist would
1
GAC reserves its right to call other GAC witnesses to rebut Dr. Wasserman’s testimony and
new theories of liability as well as to authenticate documents and provide any other relevant
testimony.
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confuse the CCO System and principles with the Roth prescription. Dr. Secchi’s declaration
shows that the CCO principles differ from the Roth principles. The decision to use an
orthodontic bracket or prescription, thus, is not based on loyalty to a man or a specific
philosophy but to an orthodontist’s own unique circumstances, training, and clinical experience.
Any fair examination of this new theory of liability exposes the fundamental problem
with Roth Licensing’s overall liability case. In 2015, there was no significant population of
“Roth loyalists” willing to pay a premium for “genuine Roth” products. Even Dr. Wasserman—
who has arguably proven himself as the most intensely devoted of all Roth loyalists—switched
away from the brackets in the Roth prescription in 2012 and started purchasing thousands of
brackets in the CCO prescription. See Ex. A, Wasserman invoices, GAC0046367, 46370, 46375-
85, 46390-46400, 46403, 46405-46416, 46420-2, 46427-33, 46442-44, 46648-49, 46651-52,
46655-57. Because of Dr. Wasserman’s demonstrable lack of loyalty and his failure to purchase
brackets that use RT Rx, there is no evidence that any orthodontists were likely to confuse the
“RT Rx” mark, which GAC introduced in 2015, with an actual endorsement by the late Dr. Roth
that would impact their purchase decisions.
III. Because Justice Lambden treated Dr. Wasserman as representative of Roth

loyalists, the false testimony poisoned the entire vacated Interim Decision.
Right from its opening statement, Roth Licensing used Dr. Wasserman’s purported
loyalty to build a false narrative about devoted Roth loyalists, whose existence was necessary to
mischaracterize GAC’s otherwise unremarkable business decisions as greedy and unlawful. Roth
loyalists, who would unwaveringly pay any price for a bracket that Dr. Roth endorsed, are the
cornerstone of Roth Licensing’s case. Even Roth Licensing’s post-hearing brief repeatedly
invokes Dr. Wasserman’s testimony in support of its liability theory. RL Post-Hr’g Br. at 4, 9,
15, 17, 42, 55, 62, 63, 68, 70, 75. Without these Roth loyalists, according to this narrative, GAC
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could not have generated of dollars in ill-gotten revenue by referring to its bracket that
used the Roth prescription values—which all parties agree are not owned by the Roth family or
anyone else (TR 217:7-12)—as “RT Rx” in 2015. But the only evidence of a group of Roth
loyalists, who will pay a premium price for “genuine Roth” endorsed brackets, was the false
testimony of Dr. Wasserman. Without it, Roth Licensing has no evidence that any appreciable
population of Roth loyalists even existed when the GAC licensing agreements ultimately ended
in 2015. Its entire theory of liability—that brackets that use RT Rx generate additional revenue
by trading upon the goodwill of the ROTH mark or Roth Rights—falls apart.
Although Roth Licensing will implore the arbitrator to preserve the original findings and
simply work around Dr. Wasserman’s discredited testimony, his perjury established a false
narrative that infected every material aspect of the original interim decision. Several of the
vacated findings were rooted in the false premise that a sizable group of devoted Roth loyalists
existed in 2015. This requires a completely new hearing on all issues.
A. False testimony perpetuated the lie that GAC imposed premium pricing
along with the Roth endorsement.
Relying on Dr. Wasserman’s testimony, Justice Lambden accepted the false premise that
GAC charged and collected a premium price for brackets that were purportedly affiliated with
the genuine ROTH mark. But GAC’s witnesses testified that the price of the company’s brackets
do not vary by prescription—and this is proven by the invoices sent to Dr. Wasserman when he
purchased GAC’s In-Ovation R brackets in the Roth, Euro, and CCO prescriptions. Justice
Lambden rejected GAC’s testimony and evidence in favor of Dr. Wasserman’s improvisation.
There is no evidence that GAC charged a premium for the self-ligating In-Ovation
bracket in the RT Rx prescription relative to major competitors’ comparable self-ligating
brackets. See Ex. C, Secchi Decl. Nor is there evidence that Ovation, a traditional metal twin
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bracket sold only in the Roth prescription, is priced at a premium relative to other comparable
brackets. In fact, these images captured from Dr. Wasserman’s actual invoices in June and
November 2012 reflect that the prices for self-ligating brackets across various prescriptions are
virtually identical and there is no “premium” associated with the ROTH mark or prescription:
Ex. B, Wasserman invoices, GAC0046443, GAC0046547.
Yet, Justice Lambden—believing that GAC could and did charge a premium price in
2015 for “Roth-endorsed products”—ascribed sinister motives to GAC’s business decisions
related to the RT Rx mark. If Dr. Wasserman’s true actions reflect the conduct of other Roth
loyalists (i.e., they personally admire Dr. Roth but moved on to buying brackets not endorsed by
or affiliated with Dr. Roth), then there is no basis to believe that there exists an appreciable
group of Roth loyalists in 2015 who are so devoted to Dr. Roth and the “ROTH brand” that they
will pay a premium for “Roth-endorsed” brackets. Given the fierce competition in an industry
with dozens of competitors, Dr. Wasserman’s testimony provides no basis for a finding that
GAC charged or collected a premium price.
Beyond Dr. Wasserman’s testimony, Roth Licensing offered no evidence to meet its
burden of proving that GAC extracted premium prices from actual purchasers due to its
purportedly infringing activity. Although it is not a defendant’s burden to show that it has not
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charged a premium, GAC has nonetheless shown here with Dr. Wasserman’s own invoices that
the premise that GAC could and did charge a premium price in 2015 for “Roth-endorsed
products” is a sham. Ex. B, Wasserman invoices, GAC0046443, GAC0046547. This dooms
Roth Licensing’s case.
B. False testimony poisoned the arbitrator’s view of a scientifically sound study

by a highly regarded expert.
Convinced that GAC was a bad actor because of Dr. Wasserman’s false testimony, the
arbitrator followed Roth Licensing’s lead and trashed Dr. Wind’s scientifically sound study as
the shoddy work of a results-oriented “weasel.” Leaning heavily on the often-unsupported
assertions in Roth Licensing’s post-hearing brief, Justice Lambden abandoned his responsibility
to test—or at least confirm—the assertions of counsel and citations to the record. Instead, he
placed his trust exclusively in one party to accurately critique the other party’s expert, and he
assumed that all criticisms were valid. This was a grave error that prompted several mistakes in
the vacated interim decision’s analysis.
First, Justice Lambden’s vacated decision treated Dr. Wind like a bumbling hack,
analogizing him to a “weasel” and scoffing at GAC’s representation that he was a “legendary”
figure in his discipline. Nothing in Dr. Wind’s distinguished career or his work in this case
merits such disdain. Dr. Wind is a full-tenured professor of marketing at the world-renowned
Wharton School of Business at the University of Pennsylvania, where he is, among other things,
Director of Wharton’s SEI Center for Advanced Studies in Management. He has written 22
books, published hundreds of articles, performed hundreds of surveys across many industries,
and been qualified as an expert in countless court proceedings. See Ex. 504, App’x A. Yet,
Justice Lambden found all of his testimony dubious in light of the fact that one court had once
questioned one aspect of a survey he did. Vacated Interim Decision (“VID”) at 36.
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Second, Justice Lambden fundamentally misunderstood both the design of Dr. Wind’s
survey and the significance of its data. Dr. Wind followed industry-standard best practices—as
set forth in Dr. Shari Seidman Diamond’s “Reference Guide on Survey Research,” the leading
treatise on the use of surveys in litigation—when designing, conducting, and analyzing the
ROTH survey.2 Justice Lambden wrongly claimed that the study results were not statistically
significant when, in fact, the survey found no statistically significant difference between the
results for the control group and the test group. TR 672:6-11. In other words, Dr. Wind found no
evidence that the RT Rx mark confused purchasing orthodontists and that neither “RT Rx” nor
“Roth Prescription” evoked Dr. Roth in their minds.
Third, Justice Lambden accepted as true Roth Licensing’s unfounded criticisms of Dr.
Wind’s survey, which negated valid and significant data that contradicted Dr. Wasserman’s
narrative. As just one example, Justice Lambden accepted the entirely speculative claim that
using orthodontists willing to accept $25 to $75 as compensation for the survey would somehow
preclude purchasers who are likely “to be busy, successful set of orthodontists willing to pay
premium prices for appliances.” From that purely conjectural premise, Justice Lambden further
accepted Roth Licensing’s argument that this level of compensation “excluded precisely the
doctors likely to be loyal to a brand connected to Dr. Roth.” VID at 35. In other words, the
survey that yielded hard data showing no likelihood of confusion was dismissed under Dr.
2
See Reference Manual on Scientific Evidence, 2nd Edition (2000), Federal Judicial Center. Dr.
Diamond identifies nine criteria for evaluating survey research in litigation: (1) An expert should
design, conduct, and analyze the survey; (2) The survey design should properly addresses its
objectives; (3) The relevant universe is defined appropriately; (4) A representative sample is
drawn from that universe; (5) Existence of control groups and/or control questions; (6) questions
should be framed clearly and precisely, to avoid bias, order and context effects; (7) Respondents
not informed of the purpose of the survey or why the survey is being conducted; (8)
questionnaire is structured in a correct and unbiased manner and in accordance with generally
accepted standards of procedure for internet surveys; (9) the data are accurately analyzed and
reported.
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Wasserman’s premise that he was one of many “busy, successful” Roth loyalists who would pay
a premium for Roth-endorsed products (and apparently would not bother to take a survey). This
is wild speculation spawned by Dr. Wasserman’s false testimony.
The premise that an appreciable number of Roth loyalists in 2015 were willing to pay
premium prices for the Roth brand has been exposed as a lie. (If any orthodontists decided to use
GAC brackets because of Dr. Roth’s endorsement before 2015, that could not be actionable
because GAC paid Dr. Roth millions to license his name, likeness, and endorsement then.) The
only premium that orthodontists were willing to pay was for self-ligating brackets, which is a
technology wholly independent of prescriptions and is available in many different prescriptions
with no difference in cost between RT Rx, CCO prescription, or any other prescription.
Despite Roth Licensing’s empty criticisms of the stimuli used in the survey, Dr. Wind
used the best design available. Qualified respondents were randomly assigned to individual
groups and shown only two pages of an orthodontic catalog before being asked if they knew who
made or sold the bracket. If they responded affirmatively, they were asked to indicate the
maker’s name and provide information about the company. This format is known as the
“Eveready Format,” which is the “gold standard” for likelihood-of-confusion studies.3
Yet, Dr. Wasserman’s testimony poisoned this aspect of the arbitrator’s view of the
survey. The vacated Interim Decision, using language lifted directly from Roth Licensing’s brief,
laments that if the “value of the ROTH endorsement on key ROTH products like In-Ovation RT
Rx” is a “central question” in the case, then the question has been improperly framed. ID at 36. It
cannot be stressed enough that In-Ovation R is not a “ROTH product,” it is a GAC product
3
Swann, Jerre B. “Consumer Confusion” in Diamond and Swann Trademark and Deceptive
Advertising Surveys: Law, Science, and Design (2012). Intellectual Property and Law Section,
American Bar Association
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that can be purchased in the Roth prescription. There is no such thing as a “ROTH product.” If
the arbitrator finds that GAC currently markets its brackets as “Roth products,” based on Dr.
Wasserman’s say-so, then Roth Licensing has already slanted the analysis in its favor.
The key question is whether RT Rx is confusingly similar to ROTH and, if so, whether
GAC enhances its sales through use of the RT Rx descriptor. Dr. Wind’s survey shows that the
“answer is no.” TR 608:17-22. But, instead of coming to a conclusion consistent with the
overwhelming scientific evidence that Dr. Roth’s impact on the industry had declined
significantly by 2015, Justice Lambden held fast to Dr. Wasserman’s perjured opinion that Dr.
Roth was just as influential in his (and other orthodontists’) purchasing decisions today as he was
a decade before his death. Two hundred orthodontists, who were not improperly motivated in
any way as was Dr. Wasserman, disagreed in a properly constructed blind survey, but the
arbitrator was convinced by one highly motivated and dishonest witness.
Justice Lambden was also misled by Roth Licensing’s post-hearing brief into misquoting
the record. Prompted by Roth Licensing’s brief, Justice Lambden stated that “Dr. Wind testified
that GAC’s disclaimer might actually increase the likelihood of confusion.” VID at 30 (cite to
post-hearing brief). Dr. Wind’s actual testimony was an affirmative response to the question of
whether “the disclaimer actually increases the likelihood of association with Roth prescription.”
TR at 695:24-696:3. Dr. Wind added that had “GAC known the results of the study” when they
marketed RT Rx, using a disclaimer, which explicitly referenced the Roth prescription, such
knowledge would have “help[ed] continue the association with Roth prescription, but not with
Roth as a source.” TR at 696:9-12. Liability here turns on the likelihood of consumers’
confusion of RT Rx with a Roth endorsement not their association of RT Rx with the Roth
prescription values.
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C. Roth Licensing’s false narrative was used to create an illusory duty and
standing to police the Roth mark.
The vacated Interim Decision also accepted the false narrative that GAC was a bad actor
that shirked its purported duty to police the ROTH mark throughout the 17 years that it non-
exclusively licensed the Roth Rights. VID at 16-18, 22. It further accepted the false narrative that
GAC then tried to exploit its purported breach by arguing that widespread marketplace use of the
word Roth made it extremely unlikely that consumers in 2015 would perceive “RT Rx” as an
actual endorsement by Dr. Roth rather than a reference to the Roth prescription and technical
values, which were not part of the Roth Rights. See id. This entire narrative collapses when one
sheds the assumption that GAC was trying to unfairly exploit vulnerable Roth loyalists.
Carried by the momentum of a false narrative, the vacated interim decision overlooked
the fact that GAC (1) never promised to police the mark and (2) lacked standing to do so. The
2003 agreement with Dr. Roth was a non-exclusive licensing agreement that obligated GAC to
“bear the cost of filing and defending this trademark.” VID at 17 (emphasis added). In other
words, GAC had to pay Dr. Roth’s costs for whatever enforcement efforts he undertook to police
his mark. There was no evidence that Dr. Roth undertook any enforcement actions during the
agreement or that GAC refused to pay any such costs.
Although Roth Licensing is quick to suggest that GAC should have been actively
policing and not merely “bear[ing] the cost,” as it had agreed to do, the law holds that “[w]here
the license is non-exclusive, the licensee does not have standing to bring an infringement
action” under 15 U.S.C. § 1114(1) or a false-designation-of-origin claim under Section 1125(a).
Visa U.S.A., Inc. v. First Data Corp., 2005 WL 6271242, at *4-5 (N.D. Cal. Aug. 16, 2005)
(emphasis added). GAC made this point in its post-hearing brief (at 82-83), but Justice Lambden
never addressed it. Instead, Justice Lambden accepted Roth Licensing’s assurance that GAC had
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agreed to police the mark and repeatedly hammered GAC for not doing what it had no obligation
or ability to do. VID at 5, 16-18, 22.
In any event, even if one assumes—incorrectly—that GAC had both the duty and
standing to police the mark, Mr. Daucher conceded that any obligations related to policing the
mark ended in 2005 with the expiration of 2003 Agreement. TR 1118:3-16. Thus, the
widespread and decades-long marketplace use of the word Roth to describe the Roth prescription
and technical values made it extremely unlikely that consumers in 2015 would perceive “RT Rx”
as an actual endorsement by Dr. Roth. Dr. Wasserman’s false narrative obscured both the
relevant facts and controlling law on this critical point to GAC’s great prejudice.
D. Dr. Wasserman’s false testimony supported the erroneous finding that GAC
had a duty to aggressively publicize the expiration of the license agreement
and that RT Rx was not a Roth endorsement.
Under the false premise that a significant number of orthodontic consumers in 2015 were
not only paying premium prices for “genuine Roth” brackets but also blindly loyal to their
suppliers and too busy to look at what they were buying, Roth Licensing built into their false
narrative the story-line that GAC was “concealing” the change to RT Rx to foster the illusion of
endorsement by the late Dr. Roth. Not only is this demonstrably untrue but Roth Licensing’s
“concealment” claims also conflate concealment with the fundamentally different notion of
failing to wage an aggressive consumer-education campaign. They are not the same.
GAC did not conceal its use of RT Rx, which always included an explicit disclaimer of
association with the ROTH trademark. One cannot seriously argue that a company is improperly
concealing something that it publishes in a sales catalog on the internet and provides directly to
customers and potential customers. And Roth Licensing mischaracterizes as GAC “admissions”
various company records that relate to rolling out the new descriptor of the Roth prescription
- 18 -
1888
values. These documents reflect the concern that customers would not understand what RT Rx
means or how to continue to purchase products that use the Roth prescription values from a
company that—unlike virtually all competitors—would refrain from using the word Roth in a
good faith effort to comply with the overbearing demands of Roth Licensing to scrub all
references to the word Roth, even when there is an undisputed clinical need to make reference to
the Roth prescription values for doctors to treat patients.
The opprobrium that attaches to the allegation that GAC failed to adequately publicize or
explain that the descriptor RT Rx is not a Roth endorsement rests—like all of Roth Licensing’s
case—on the premise that it would have made a significant difference by changing the
purchasing behavior of so-called Roth loyalists. For the reasons already detailed in this brief, the
only evidence that Roth loyalists existed in large numbers, never deviated from what Dr. Roth
used, and were willing to pay a premium for the Roth endorsement is the false testimony of Dr.
Wasserman. With his perjury exposed, the prior presumption that GAC has some duty to
publicize the absence of an endorsement must be re-examined along with the rest of the case.
E. Justice Lambden found likelihood of confusion based on Dr. Wasserman’s

surprise testimony that GAC would not give him its catalog a week before
the hearing.
Dr. Wasserman was so motivated to deliver a favorable ruling for the Roth family that he
took it upon himself to conduct a private investigation only a week before he testified at the
hearing. As he tells it, he called GAC and requested a free catalog but allegedly was told he
could not have one unless he paid for it. Justice Lambden found this evidence of GAC’s intent to
conceal the use of the RT Rx descriptor and used the testimony to support his initial finding of
willful infringement.
- 19 -
1889
This does not pass the smell test. First, Dr. Wasserman admittedly already had a GAC
catalog; he had no reason to call GAC to request another one unless he had some ulterior motive.
Second, GAC does not sell its catalogs and has no pricing or cost structure available to do so. It
not only makes them available for free but also publishes its catalogs on the internet for anyone
in the world to download free of charge. Third, if he truly did not receive a catalog, there are
many possible explanations that do not involve any intent to conceal the catalog’s contents. Dr.
Wasserman was not merely sympathetic to the Roth family, he manufactured evidence to obtain
a favorable ruling for Roth Licensing on deception and intent. That should not stand.
IV. Justice Lambden should be recused and replaced with an arbitrator who did not
decide the case based on Dr. Wasserman’s false narrative.
This arbitration needs to start over with a new arbitrator. Justice Lambden decided
liability based on Dr. Wasserman’s perjured testimony. He committed himself to a narrative that
harmonized the evidence with Dr. Wasserman’s false testimony and minimized or disregarded
the evidence and law that refuted it. Even if Justice Lambden agreed to now disregard Dr.
Wasserman’s false testimony and “re-draft” the liability opinion, the damage to GAC has already
been done. The false narrative of GAC as a bad actor that exploited Roth loyalists has been set.
No reasonable observer would believe that any arbitrator who heard Dr. Wasserman’s false
testimony and then found GAC liable for willful infringement, disregarded every piece of
evidence it proffered, and dismissed the admissions it obtained as “conjured,” could (1) un-
decide liability, (2) re-hear the evidence, and then (3) re-decide liability—shielded from
appellate review—as a truly neutral factfinder.
The California Code provides that a judge shall be disqualified if a “person aware of the
facts might reasonably entertain a doubt that the judge would be able to be impartial.” C.C.P.
§ 170.1(6)(A). “The test is an objective one—whether such an impression is created in the eyes
- 20 -
1890
of the hypothetical reasonable person.” Betz v. Pankow (1995) 31 Cal.App.4th 1503, 1508
(citations omitted). The question is whether a reasonable person would doubt the impartiality of
an arbitrator who had been beguiled by perjury and formed severe opinions about witnesses and
experts based on false testimony and misplaced faith in one party’s briefing.
Here, the objective standard for recusal has been met. Swayed by Dr. Wasserman’s
testimony, Justice Lambden committed himself—in a lengthy written opinion—to the view that
GAC was a bad actor that willfully infringed the Roth trademark to exploit the blind devotion of
Roth loyalists. He cannot retreat from that view without publicly admitting that he was fooled by
Dr. Wasserman and Roth Licensing. And no one wants to appear foolish. Justice Lambden
should be recused—not because he lacks ability, integrity, or the desire to be fair—but because
he is human. And human nature is such that anyone in Justice Lambden’s position would want to
see their assessments of the litigants’ motives and related judgment vindicated and salvage the
ultimate conclusion from the original opinion. It is human nature to try to contain Dr.
Wasserman’s perjury as something that was unfortunate but ultimately irrelevant.
Dr. Wasserman robbed GAC of the opportunity for a fair hearing. To be free from the
unfairness that resulted from Dr. Wasserman’s perjury, ADR Services must provide a new
arbitrator to re-hear the case. It should suspend the June 21-22 hearing until a new arbitrator is
prepared to handle the case. GAC cannot receive a fair hearing—in a forum that provides
virtually no opportunity for appellate review—from the same arbitrator who accepted Dr.
Wasserman’s perjury as true, accepted the proposition that the relevant market in 2015 held a
substantial number of Roth loyalists, and found that GAC willfully infringed on Roth
Licensing’s trademark to deceive and exploit the purported Roth loyalists.
- 21 -
1891
Roth Licensing cannot be heard to complain that it is inconvenient to postpone the
continued hearing or have another full hearing. Roth Licensing is virtually certain to argue that
the liability decision can be salvaged with nothing more than Dr. Wasserman’s testimony at the
June 21-22 hearing and a “re-drafted” opinion. And it will undoubtedly argue that GAC’s request
for recusal and re-hearing is a sore loser’s bid for a second bite at the apple or some nefarious
plan to delay proceedings or tax resources. But one must remember what got us here. Roth
Licensing prepared Dr. Wasserman—conferring with him on ten occasions—and presented him
as a representative Roth loyalist, who bought “genuine Roth” brackets regardless of the price and
purportedly transferred this unwavering loyalty to Dr. Roth to GAC products that used RT Rx to
describe the Roth prescription values. This narrative, which Justice Lambden originally found
credible, was baked into every aspect of the vacated Interim Decision. And it was all a lie.
If the arbitrator is reluctant to recuse himself or stay the hearing pending ADR Services’
consideration of the request for a new hearing under ADR Services Rule 10(E), GAC proposes
an alternative middle path. A newly assigned arbitrator, who is able to view Dr. Wasserman’s
testimony in its full context, i.e., including his testimony at the re-convened hearing, before
making any adverse findings can review the entire record and rule on liability. To cure the taint
of Dr. Wasserman’s false testimony, the new arbitrator would be screened from the vacated
Interim Decision and any briefing that followed the Interim Decision as well as any
communications with Justice Lambden regarding the case. If the new arbitrator then wanted any
further briefing or hearings, it would be the arbitrator’s prerogative to instruct the parties
accordingly. If the arbitrator was satisfied that the full record provided all the evidence necessary
to make a fair and fully informed ruling on liability, nothing more from the parties would be
needed after the upcoming hearings.
- 22 -
1892
CONCLUSION
For these reasons, GAC respectfully asks ADR Services to suspend the June 2I-22
hearings and assign this matter to a new arbitrator, who would decide the appropriate next steps.
Respectfully submitted,
GOODELL, DeVRIES, LEECH & DANN' LLP
By:
Barnes (rmb@gdldlaw.com)
Matthew D. Kohel (mkohel@gdldlaw.com)
One South Street, 20th Floor
Baltimore, Maryland 21202
(410) 783-4000 Tel.; (410) 783-4040 Fax
Attorneys for GAC International, LLC
-23 -
1893
CERTIFICATE OF SERVICE
I, Richard M. Barnes, certify that on June 2, 2017 ,I served a copy of GAC International
LLC's Brief Regarding Re-Opening the Hearing on Liability and Request for Recusal on all
parties or their registered counsel of record via electronic mail and first-class mail, postage
prepaid, as set forth below:
Brian M. Daucher
bdaucher@sheppardmullin. com
Gazal Pour-Moezzi
gpour- mo e zzi@sheppardmul I i n. com
Sheppard Mullin Richter Hampton, LLP
650 Town Center Drive, 4th Floor
Costa Mesa, CA92626
Attorneys for Roth Licensing, LLC
Randall J. Clement
r andy @clementandholaw. com
Clement & Ho, a Professional Law Corporation
201 W. V/hiting Avenue
Fullerton, CA92832
Attorney for Dr. Emanuel lilasserman

j usticelambden@adrservices.com
ADR Services, Inc.
350 Saint Catherine's Square
Benicia, CA 94510
Tyler Smith
tyler@adrservices. com
ADR Services,Inc.
San Francisco, CA 94105
M. Barnes
4822-6329-1209,v. I
-24 -

GAC International LLC V Roth Licensing LLC Nyedce-15-02375 0042.3

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Case 2:15-cv-02375-JMA-AKT Document 42-3 Filed 03/16/18 Page 1 of 310 PageID #: 1584

Re: Use of "Roth' in Product Materials (Our Ref. No. 20371)

Dear Mr. Daucher:

It is a long-established and accepted convention in the field of orthodontics (as in medicine

Very truly yours,

Part Art. Part Science. All 0rthodontics.

For better dentistry

DENTSPLY GAC International

GAC TechnoCenter OrthoDental

Terms & Conditions of Sale

The following products are non-returnable:

Extra Oral 239-248

Lab Essentials 255-302

Distributor List 327-329

Patent List 330

Brackets The appliance you choose is the foundation

Bracket Section Content

In-Ovation System Intro 7

Ovation & MiniOvation 34

OmniArch & MicroArch 37

In-Ovation C is a highly aesthetic self-ligating bracket made from a special ceramic

In-Ovation L turns traditional treatment outside in. Lingual mounting In-Ovation L

No·Trace™ is a breakthrough in cosmetic correction. The absolutely, undetectable self-

Compound Contour Base

Torque In The Base

Slot Level Alignment

Non-Adjusted Partially Adjusted Completely Adjusted

True twin design with

Triple Chamfered Torque in base

Spring clip with

Letter ID Description Color Codes

Roncone Andrews Euro

*Our RT Rx has values that are equivalent to the Roth®

In-Ovation R RT Rx* Kits

In-Ovation R Roncone Kit

Maxillary Arch Reference Number

Mandibular Arch Reference Number

In-Ovation R Euro Kit

In-Ovation R CCO Kit

In-Ovation R Bi-Dimensional Kit

Description Reference Number

Please go to www.dentsplygac.com to view all available marketing materials.

True twin design with

Spring clip with

In-Ovation C RT Rx* Kits

In-Ovation C Roncone Master Kits

In-Ovation C Euro Master Kits

Description Reference Number

Please go to www.dentsplygac.com to view all available marketing materials.

120-999-03 120-999-01 120-999-04

120-100-01 120-100-03 120-100-02

True twin design

Low proﬁle for patient

Description Reference Number

• Fast correction for minor anterior misalignments

True twin design

Low proﬁle for patient

No·Trace™ System Kit

Please go to www.dentsplygac.com to view all available marketing materials.

Ovation and MiniOvation Brackets

Ball post for sure engagement of

Central scribe line for long

Wider entryway for earlier