Amer Group, Inc.v.ARBOR Technology Corporation

Trademark Trial and Appeal Board

Aug 3, 2018

No. 91222992 (T.T.A.B. Aug. 3, 2018)

This Opinion is Not a Precedent of the TTAB Mailed: August 3, 2018 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ Amer Group, Inc. v. ARBOR Technology Corporation _____ Opposition No. 91222992 _____ Mark B. Harrison of Venable, for Amer Group, Inc. ARBOR Technology Corporation, pro se. _____ Before Mermelstein, Adlin, and Larkin, Administrative Trademark Judges. Opinion by Larkin, Administrative Trademark Judge: ARBOR Technology Corporation (“Applicant”) seeks registration on the Principal Register of the mark shown below for the following goods in International Class 9: Programmable data access processors in the nature of data processors; computers; dynamic random access memory; Opposition No. 91222992 - 2 - computer terminals; computer hardware; computer input and output recorders in the nature of electronic data recorders; touch-sensitive input devices for computer; mobile phones; video telephones; apparatus for transmission of communication; computer software to enable the transmission or reproduction of sound or images; computer servers; cash registers; personal digital assistant; smart phones and monitors.1 Amer Group, Inc. (“Opposer”) has opposed registration based on a single claim of priority and likelihood of confusion under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d). Only Opposer filed a brief. We dismiss the opposition. I. Pleadings and Evidentiary Record Because Opposer made no other evidence of record during its trial period or otherwise, the record consists solely of the pleadings and, by operation of Trademark Rule 2.122(b)(1), 37 C.F.R. § 2.122(b)(1), the file history of Applicant’s involved application. Opposer argues in its brief that it “cited U.S. Registration No. 4,689,739 for the trademark AMOBIPAY as basis for the instant opposition proceeding,” 7 TTABVUE 8 n.1, and it discusses the registration in its brief, id. at 9-10, 13, 15-18, but Opposer failed to make the registration of record. The ESTTA cover sheet to Opposer’s Notice of Opposition lists Registration No. 4689739 as the “Mark Cited by Opposer as Basis for Opposition,” 1 TTABVUE 1-2, but Opposer’s mere inputting of the registration number into the ESTTA database did not make the referenced registration of record. Melwani v. Allegiance Corp., 97 USPQ2d 1537, 1540 (TTAB 2010). The registration was neither attached to the Notice 1 Application Serial No. 86251064 was filed on April 14, 2014 under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), based on Applicant’s allegation of a bona fide intention to use the mark in commerce. Opposition No. 91222992 - 3 - of Opposition in the manner prescribed in Trademark Rule 2.122(d)(1), 37 C.F.R. § 2.122(d)(1), nor introduced during trial as set out in Trademark Rule 2.122(d)(2), 37 C.F.R. § 2.122(d)(2).2 A plaintiff’s pleaded registration may be deemed to be of record notwithstanding failure to comply with Trademark Rule 2.122(d)(1) if the defendant’s answer admits the plaintiff’s ownership of the registration and its current active status, see Trademark Trial and Appeal Board Manual of Procedure (“TBMP”) § 704.03(b)(1)(A) (June 2018), and cases cited in note 19, but Registration No. 4689739 is nowhere mentioned in the body of Opposer’s Notice of Opposition or in Applicant’s Answer.3 Applicant admitted that Opposer filed an application to register AMOBIPAY for numerous goods in International Class 9, and that Opposer’s filing date was earlier than the filing date of the opposed application. 1 TTABVUE 6-7 (Not. of Opp. ¶ 12); 4 TTABVUE 3 (Ans. ¶ 12). These admissions “obviate[d] the need to prove the admitted allegation[s] of fact, but no more.” UMG Recordings Inc. v. O’Rourke, 92 USPQ2d 1042, 1045 (TTAB 2009) (applicant’s admission of opposer’s ownership of a pending application did not make the resulting registration of record when it issued); see also Demon Int’l LC v. Lynch, 86 USPQ2d 1058, 1060 n.6 (TTAB 2008). Opposer did not allege, and Applicant did not admit, that Opposer owned Registration No. 4689739 2 Trademark Rule 2.122(d)(2) provides that a pleaded registration may be made of record at trial “by appropriate identification and introduction during the taking of testimony or by filing a notice of reliance” accompanied by a current status and title copy of the registration or the equivalent from the electronic records of the Patent and Trademark Office, but Opposer did not take any testimony or submit any other evidence during its trial period. 3 Applicant was represented by counsel when its answer was filed. 4 TTABVUE 4. Applicant subsequently discharged its counsel and proceeded pro se. 6 TTABVUE 2. Opposition No. 91222992 - 4 - and that it was valid and subsisting. Cf. Tiffany & Co. v. Columbia Indus., Inc., 455 F.2d 582, 173 USPQ 6 (CCPA 1972); United Glob. Media Grp., Inc. v. Tseng, 112 USPQ2d 1039, 1041-44 (TTAB 2014). While Opposer attached a copy of the certificate of registration to its brief, 7 TTABVUE 53-55, that post-trial action did not make the registration of record, see, e.g., Bass Pro Trademarks LLC v. Sportsman’s Warehouse Inc., 89 USPQ2d 1844, 1848 (TTAB 2008); Life Zone Inc. v. Middleman Grp. Inc., 87 USPQ2d 1953, 1955 (TTAB 2008), and accordingly Registration No. 4689739 is not in evidence. As the Federal Circuit noted many years ago, the Trademark Rules regarding making registrations of record “are simple and clear,” Hewlett-Packard Co. v. Olympus Corp., 931 F.2d 1551, 18 USPQ2d 1710, 1713 (Fed. Cir. 1991),4 but Opposer and its counsel did not follow them, and we have not given Registration No. 4689739 any consideration. Because Opposer made no other evidence of record, it must rely solely on Applicant’s admissions in its Answer to establish Opposer’s standing and priority, and the existence of a likelihood of confusion. We thus turn to the facts established through the pleadings. In addition to the allegations regarding Opposer’s filing of an application to register AMOBIPAY, Applicant admitted the following material allegations in the Notice of Opposition: 4 It is even easier today to make a registration of record following amendment of Rule 2.122(d) to allow the submission of electronic records. United Global Media, 112 USPQ2d at 1042 n.10; Melwani, 97 USPQ2d at 1540. Opposition No. 91222992 - 5 - 4. Opposer, Amer Group Inc., was registered as a Delaware corporation on January 26, 2011 (please, see Exhibit B) to provide banking services, financial consulting services, credit card services, electronic payment services involving electronic processing and subsequent transmission of bill payment data, insurance carrier services, insurance brokerage services, and services relating to clearing and reconciling financial transactions via a global computer network.5 10. By virtue of this use, customers identify AMOBIPAY mark [sic] as originating exclusively from Opposer. Opposer has invested considerable time, effort, and expense in the developing and marketing of its services under AMOBIPAY, and continues to do so.6 11. Because Opposer has used its AMOBIPAY mark to advertise and sell its services in interstate commerce prior to the filing date of Application [sic], Opposer owns common law rights in and to its AMOBIPAY mark.7 Applicant denied Opposer’s allegations regarding: (1) the use of the AMOBIPAY mark “as a shortened form of the word ‘AMOBILEPAY’” on the webpage shown in Exhibit C to the Notice of Opposition, and customer recognition of the word AMOBILEPAY as Opposer’s mark;8 (2) Opposer’s acquisition of common law rights in the AMOBILEPAY mark;9 (3) Opposer’s first use of the AMOBIPAY mark on September 9, 2011;10 and (4) all of Opposer’s allegations regarding likelihood of 5 1 TTABVUE 5, 18-19 (Not. of Opp. ¶ 4; Ex. B); 4 TTABVUE 2 (Ans. ¶ 4). 6 1 TTABVUE 6 (Not. of Opp. ¶ 10); 4 TTABVUE 3 (Ans. ¶ 10). 7 1 TTABVUE 6 (Not. of Opp. ¶ 11); 4 TTABVUE 3 (Ans. ¶ 11). 8 1 TTABVUE 5-6 (Not. of Opp. ¶¶ 5, 7); 4 TTABVUE 3 (Ans. ¶¶ 5, 7). Applicant claimed that it was without knowledge or information sufficient to form a belief as to these allegations and certain others. Such a claim “has the effect of a denial.” Fed. R. Civ. P. 8(b)(5). 9 1 TTABVUE 6 (Not. of Opp. ¶ 7); 4 TTABVUE 3 (Ans. ¶ 7). 10 1 TTABVUE 6 (Not. of Opp. ¶¶ 8-9); 4 TTABVUE 3 (Ans. ¶¶ 8-9). Opposition No. 91222992 - 6 - confusion, including allegations that the marks, goods and services, and channels of trade and classes of customers are similar.11 II. Standing A threshold issue in every inter partes case is the plaintiff’s standing to challenge registration. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014); John W. Carson Found. v. Toilets.com Inc., 94 USPQ2d 1942, 1945 (TTAB 2010). The plaintiff must show that it possesses a real interest in the proceeding beyond that of a mere intermeddler, and that it has a reasonable basis for its belief of damage resulting from registration of the subject mark. Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999). “Proof of standing in the absence of proof of ownership of a registration can result from proving any one of a number of types of use sufficient to establish prior proprietary rights.” Demon Int’l, 86 USPQ2d at 1060 (citing Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1378 (Fed. Cir. 2000) and Nat’l Cable Television Ass’n, Inc. v. Am. Cinema Editors, Inc., 937 F.2d 1572, 19 USPQ2d 1424, 1429 n.5 (Fed. Cir. 1991)). Applicant admitted that “Opposer owns common law rights in and to its AMOBIPAY mark,”12 and this admission gives Opposer standing based on a real interest in the proceeding and a reasonable basis for its belief of damage resulting from registration of the subject mark, based on a likelihood of confusion claim that is not wholly without merit. Herbko, 64 USPQ2d at 1377-78; 11 1 TTABVUE 7-8 (Not. of Opp. ¶¶ 13-16); 4 TTABVUE 3 (Ans. ¶¶ 13-16). 12 1 TTABVUE 6 (Not. of Opp. ¶ 11); 4 TTABVUE 3 (Ans. ¶ 11). Opposition No. 91222992 - 7 - Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982). III. Opposer’s Section 2(d) Claim Section 2(d) of the Trademark Act prohibits the registration of a mark that “[c]onsists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive.” 15 U.S.C. § 1052(d). To prevail on its § 2(d) claim, Opposer must prove, by a preponderance of the evidence, that it has priority of use of its mark, because it did not prove ownership of a registration. Cf. King Candy Co. v. Eunice King’s Kitchen, 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974) (ownership of an unchallenged registration eliminates need to prove priority). In addition, Opposer must prove, by a preponderance of the evidence, that use of Applicant’s mark is likely to cause confusion, mistake, or deception as to the source or sponsorship of Applicant’s goods. Cunningham, 55 USPQ2d at 1848. Opposer has the burden of proving that Applicant is not entitled to a registration even in the absence of contrary evidence or argument. Threshold TV, Inc. v. Metronome Enters., Inc., 96 USPQ2d 1031, 1040 (TTAB 2010). A. Priority Priority may arise from “prior trademark or service mark use, prior use as a trade name, prior use analogous to trademark or service mark use, or any other use sufficient to establish proprietary rights.” Herbko, 64 USPQ2d at 1378. Because Opposition No. 91222992 - 8 - Applicant did not make any evidence of record, the April 14, 2014 filing date of the opposed application is its constructive use priority date.13 See, e.g., Kemi Organics, LLC v. Gupta, 126 USPQ2d 1601, 1604 (TTAB 2018); Cent. Garden & Pet Co. v. Doskocil Mfg. Co., 108 USPQ2d 1134, 1140 (TTAB 2013). Applicant admitted that “Opposer has used its AMOBIPAY mark to advertise and sell its services in interstate commerce prior to the filing date of [the] Application” and that, as a result, “Opposer owns common law rights in and to its AMOBIPAY mark.”14 Applicant’s admissions of Opposer’s prior use of AMOBIPAY establish Opposer’s priority. B. Likelihood of Confusion Our determination of the issue of likelihood of confusion under § 2(d) is based on all probative facts in evidence that are relevant to the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). In every likelihood of confusion analysis, two key factors are the similarities between the marks and the similarities between the goods or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks.”). Opposer addresses these two key factors, as well as the du Pont factor regarding the similarity of the channels of trade. 13 While the subject application was filed based on Trademark Act § 1(b), Applicant could have relied on any evidence of use of the mark that it may have had to show use prior to its filing date. Fair Indigo LLC v. Style Conscience, 85 USPQ2d 1536, 1539 (TTAB 2007). 14 1 TTABVUE 6 (Not. of Opp. ¶ 11); 4 TTABVUE 3 (Ans. ¶ 11). Opposition No. 91222992 - 9 - 1. Similarity or Dissimilarity of the Marks We compare the parties’ marks, in their entireties, for similarities and dissimilarities in appearance, sound, connotation, and commercial impression. Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). “The proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that persons who encounter the marks would be likely to assume a connection between the parties.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (citation omitted). “The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks.” In re C.H. Hanson Co., 116 USPQ2d 1351, 1353 (TTAB 2015) (citation omitted). Opposer makes a cursory and conclusory argument that “Applicant’s mark AMOBILE is nearly identical to the Opposer’s AMOBIPAY mark in sound and meaning” and that “Applicant’s mark has the same meaning and presents the same commercial impression as Opposer’s AMOBILE mark . . . .” 7 TTABVUE 14. A comparison of the marks in their entireties shows, however, that they are not “nearly identical in sound and meaning” and do not present the “same commercial impression.” On the basis of Applicant’s admissions in its answer, we must deem Opposer’s common-law mark to be AMOBIPAY in plain capitalized black letters, as that is how Opposition No. 91222992 - 10 - the mark is set forth in Opposer’s Notice of Opposition.15 We must compare that mark to Applicant’s mark, which we reproduce below: The colors blue/green and yellow are claimed as a feature of Applicant’s mark. The marks begin with the same first five letters, but they differ in appearance when considered in their entireties. Opposer’s mark in plain, all capital letters does not emphasize any particular element.16 In Applicant’s mark, however, the combination of the display of upper case letters followed by lower case letters, and the depiction of the letter “o” in a different color from the surrounding letters, visually emphasizes the word “Mobile” and obscures the presence of the five-letter string “a- m-o-b-i” that Applicant’s mark shares with Opposer’s mark. The marks sound different because Applicant’s mark is likely to be pronounced in three syllables ending with the word “mobile,” while Opposer’s mark is likely to be 15 1 TTABVUE 6 (Not. of Opp. ¶¶ 10-11); 4 TTABVUE 3 (Ans. ¶¶ 10-11). 16 We cannot assume, as we would if Registration No. 4689739 were of record, that Opposer’s mark “could be used in any typeface, color, or size, including the same stylization actually used or intended to be used by the other party, or one that minimizes the differences or emphasizes the similarities between the marks.” Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1823 (TTAB 2015) (citing Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1258-59 (Fed. Cir. 2011)); see also In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1186 (TTAB 2018) (Board required to consider that literal elements of cited mark registered in standard-character form “may be presented in any font style, size and color, including the same font, size and color as the literal portions of Applicant’s mark”). To the contrary, an unregistered mark must be considered as it is actually used with the relevant goods or services. See, e.g., Teledyne Techs., Inc. v. Western Skyways, Inc., 78 USPQ2d 1203, 1206 (TTAB 2008). Although Opposer introduced no evidence of its actual use, its Notice of Opposition alleged use of a mark which was depicted in plain black capital letters, which Applicant admitted. Applicant did not admit Opposer’s use of its mark in any other form. Opposition No. 91222992 - 11 - pronounced in four syllables ending with the word “pay.” Perhaps most importantly from the standpoint of consumers’ general recollection of the two marks, they differ in connotation and commercial impression because Applicant’s mark connotes mobility, due to the presence of the emphasized word “mobile,” while Opposer’s AMOBIPAY mark connotes some sort of unspecified payment, due to the suffix “pay.”17 The similarities between Applicant’s mark and Opposer’s AMOBIPAY mark are outweighed by the differences. This du Pont factor weighs against a finding of a likelihood of confusion. 2. Similarity or Dissimilarity of the Goods and Services If Registration No. 4689739 were of record, our determination of the similarity or dissimilarity of the goods and services would be based on the identifications of goods in that registration and in Applicant’s application. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014); Octocom Sys., Inc. v. Hous. Computs. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). Because Registration No. 4689739 is not of record, we must assess the similarity of the goods identified in Applicant’s application to whatever Applicant admitted Opposer’s goods or services to be. The goods identified in the opposed application are Programmable data access processors in the nature of data processors; computers; dynamic random access memory; computer terminals; computer hardware; computer input 17 This connotation is consistent with Opposer’s alleged use of its mark in connection with online banking services for providing secure payments, which we discuss below. Opposition No. 91222992 - 12 - and output recorders in the nature of electronic data recorders; touch-sensitive input devices for computer; mobile phones; video telephones; apparatus for transmission of communication; computer software to enable the transmission or reproduction of sound or images; computer servers; cash registers; personal digital assistant; smart phones and monitors. Applicant admitted Opposer’s allegation in ¶ 4 of the Notice of Opposition that Opposer “was registered as a Delaware corporation on January 26, 2011 . . . to provide banking services, financial consulting services, credit card services, electronic payment services involving electronic processing and subsequent transmission of bill payment data, insurance carrier services, insurance brokerage services, and services relating to clearing and reconciling financial transactions via a global computer network.”18 This admission does not establish Opposer’s use of its common-law mark AMOBIPAY in connection with the alleged services because it concerns only Opposer’s formation in Delaware, and perhaps its intention at the time, but not Opposer’s actual rendition, under its common-law mark, of the services that Opposer alleges that it was formed to provide. UMG Recordings, 92 USPQ2d at 1045.19 Applicant has not otherwise admitted the nature of, or use of the pleaded mark for, Opposer’s services. Read against the backdrop of the allegations in paragraphs describing Opposer’s services, which allegations Applicant denied for lack of 18 1 TTABVUE 5, 18-19 (Not. of Opp. ¶ 4; Ex. B); 4 TTABVUE 2 (Ans. ¶ 4). As noted above, Applicant denied Opposer’s allegation regarding the services provided through its website. 1 TTABVUE 5-6 (Not. of Opp. ¶¶ 5, 7); 4 TTABVUE 3 (Ans. ¶¶ 5, 7). 19 The page from the website of the Delaware Secretary of State that reflects Opposer’s incorporation contains no information regarding Opposer’s goods or services. 1 TTABVUE 19. Opposition No. 91222992 - 13 - knowledge or information sufficient to form a belief as to their truth,20 Applicant’s admissions could establish at most that Opposer uses its mark for online banking services for providing secure payments. Opposer presents no arguments regarding the similarity of Applicant’s goods to online banking services for providing secure payments. Rather, Opposer focuses solely on a comparison of the goods in Registration No. 4689739 to the goods in the application. 7 TTABVUE 15-16 (arguing that Opposer’s and Applicant’s “computers,” and the parties’ goods identified as “mobile phones” and “telephones,” are legally identical). Even assuming that Applicant’s goods are used in rendering online banking services for providing secure payments, such conjoint use would be insufficient by itself to show that these goods and services are related. Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73 USPQ2d 1350, 1355-56 (Fed. Cir. 2004) (finding that the relatedness of kitchen textiles to cooking classes could not be based merely on the fact that the goods would necessarily be used in providing the services). There is nothing in the record showing that “‘the respective products [and services] are related in some manner and/or that the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that they emanate from the same source.’” Coach Servs., 101 USPQ2d at 1722 (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)). This du Pont factor therefore weighs against a finding of a likelihood of confusion. 20 1 TTABVUE 5-6 (Not. of Opp. ¶¶ 5-7); 4 TTABVUE 2-3 (Ans. ¶¶ 5-7). Opposition No. 91222992 - 14 - 3. Similarity or Dissimilarity of Channels of Trade Opposer’s argument on the third du Pont factor, “[t]he similarity or dissimilarity of established, likely-to-continue trade channels,” Stone Lion, 110 USPQ2d at 1061, is again based entirely on the goods in Registration No. 4689739. 7 TTABVUE 16-17 (arguing that “Applicant’s ‘computers’ would be presumed to travel in the same marketing and trade channels as do the ‘computers’ of the Opposer”). Given the absence of evidence showing that the channels of trade for Applicant’s goods overlap with the channels of trade for Opposer’s online banking services for providing secure payments, this du Pont factor also weighs against a finding of a likelihood of confusion. Conclusion Opposer’s failure to make Registration No. 4689739 of record negatively affected Opposer’s case. We must decide this case on the record before us, and on that scant record, none of the relevant du Pont factors support a finding of a likelihood of confusion. Accordingly, we find that Opposer failed to carry its burden of proving by a preponderance of the evidence that Applicant’s use of its mark in connection with the goods identified in the opposed application is likely to cause confusion as the source or sponsorship of Applicant’s goods. Decision: The opposition is dismissed.