Ascora GmbHv.Ascentech Pty Ltd as Trustee for The Smith Family Trust

Trademark Trial and Appeal Board

Oct 26, 2018

No. 91216243 (T.T.A.B. Oct. 26, 2018)

Mailed: October 26, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Ascora GmbH
v.
Ascentech Pty Ltd as Trustee for The Smith Family Trust
_____

Opposition No. 91216243
_____

P. Jay Hines and H. David Starr, Muncy, Geissler, Olds and Lowe, P.C.,
for Ascora GmbH.

John L. Welch, Wolf, Greenfield & Sacks, P.C.,
for Ascentech Pty Ltd as Trustee for The Smith Family Trust.
_____

Before Hightower, Heasley, and Pologeorgis,
Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:
Opposer Ascora GmbH opposes registration by Applicant Ascentech Pty Ltd as
Trustee for The Smith Family Trust on the Principal Register of two applications:
• ASCORA in standard characters (Serial No. 86080318), and
• (Serial No. 86080319). The description of
the mark states: “The mark consists of [t]he stylized wording ‘ASCORA’
under an incomplete gear wheel design.” Color is not claimed as a feature
of the mark.
This Opinion Is Not a
Precedent of the TTAB
Opposition No. 91216243
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The subject applications were filed October 2, 2013 under Sections 1(b) and 44(e)
of the Trademark Act, 15 U.S.C. §§ 1051(b) and 1126(e), based on Applicant’s bona
fide intention to use the marks in commerce and ownership of Australian Registration
Nos. 1498519 and 1498520, respectively. Both opposed applications identify the
following goods:
Software for managing the operations of a trade or service-based
businesses [sic] specifically to assist businesses with the management
and operations of a mobile workforce or workers in the field; Software
for processing images, graphics and text; Computer software for
business and accounts management, online database access and
business operations management and reporting; Computer software
and firmware for operating system programs; Computer programs
recorded on data media (software) designed for use in trade,
construction, service based and any business that may have mobile or
remote workers; computer software adapted for use in the operation
of computers, designed to estimate costs, downloaded from the
Internet, for analysing address files, for authorising access to data
bases, for business purposes, for communication between computer
processes, for processing address files, for processing address files
[sic], for database management, for spreadsheet management, in the
field of construction, service and trade based industries; Industrial
process control software; Interactive computer kiosks comprising
computers, computer hardware, computer peripherals, and computer
operating software, for use in providing scheduling, job maintenance
and customer relationship management; Computer software for
network management; Computer software for storing, managing,
tracking, analyzing, and reporting data in the field of time and
workflow processes and employee efficiency; computer software and
downloadable computer software for use in accessing, updating,
manipulating, modifying, organizing, storing, backing up,
synchronizing, transmitting, and sharing data, documents, files,
information, text, photos, images, graphics, music, audio, video, and
multimedia content via global computer networks, mobile phones,
and other communications networks; Computer software for job
scheduling and trade or service-based businesses for use on Tablets,
Smart Phones and Computers, in International Class 9.1

1 As discussed below, a motion is pending to amend the identification of goods should the
Board deem the amendment necessary to dismiss the opposition. See 9-10 and 18 TTABVUE.
Opposition No. 91216243
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The sole ground for opposition is likelihood of confusion under Trademark Act
Section 2(d), 15 U.S.C. § 1052(d). Opposer asserts prior common-law rights in the
mark and trade name ASCORA for software and related research and consulting
services. The proceeding is fully briefed. We sustain the opposition.
I. Evidentiary Objections
Applicant objects to the admission of nearly every item of evidence submitted by
Opposer. See Appeal Brief at 8, 51 TTABVUE 9. We have considered all objections,
but address only those concerning evidence material to our decision.
Applicant seeks to strike in its entirety the deposition on written questions of
Opposer’s witness, Dr. Sven Abels, and accompanying exhibits. The apparent basis
for Applicant’s objection is that the deposition notice fails to sufficiently identify the
qualifications of the court reporter. See Appendix to Applicant’s Brief at 36-38, 51
TTABVUE 37-39.
Opposer’s Second Revised Notice of Taking of Deposition Upon Written Questions
states that the deposition will be taken “before a US certified court reporter named
Thelma Harries who is a person before whom depositions may be taken as provided
by Rule 28 of the Federal Rules of Civil Procedure.” 20 TTABVUE 2. We identify no
substantive shortcoming in the notice or the certificate at the conclusion of the
deposition transcript, which identifies the officer as “Thelma Harries, MBIVR, ACR,
Certified Court Reporter.” 22 TTABVUE 80.2

2 Applicant also questions what oath was taken by the witness. Applicant’s Brief at 38, 51
TTABVUE 39. The notice identifies Ms. Harries as a “US certified court reporter,” and she
states in the transcript that the witness was “duly sworn.” Abels Tr. at 7, 78, 22 TTABVUE
Opposition No. 91216243
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Moreover, Applicant waived objection to this notice. Fed. R. Civ. P. 32(d) provides
in part that objections are waived under the following circumstances:
(1) To the Notice. An objection to an error or irregularity in a
deposition notice is waived unless promptly served in writing
on the party giving the notice.
(2) To the Officer’s Qualification. An objection based on
disqualification of the officer before whom a deposition is to be
taken is waived if not made:
(A) before the deposition begins; or
(B) promptly after the basis for disqualification becomes known
or, with reasonable diligence, could have been known.
See also TBMP § 707.03(c) (2018) (identifying disqualification of officer before whom
deposition is to be taken as procedural in nature because defect can be obviated or
removed). Applicant objects that the second revised notice was filed on January 18,
2016, a mere four days before the deposition, and that “[s]uch a short notice provided
no reasonable opportunity for [Applicant] to consider or investigate the propriety of
the notice or the credentials of the person who would take the testimony.” Applicant’s
Brief at 37, 51 TTABVUE 38. Applicant nonetheless could have promptly filed a
motion to quash the notice and requested a telephone conference with the assigned
Board attorney. See TBMP § 521. Applicant’s motion to strike the deposition
transcript of Opposer’s witness is denied.

5, 80. Applicant has identified no basis for striking the transcript due to a defect in the oath
or its administration. Cf. Tampa Rico Inc. v. Puros Indios Cigars Inc., 56 USPQ2d 1382, 1383
(TTAB 2000) (accepting deposition transcript taken under oath pursuant to standard manner
in Honduras).
Opposition No. 91216243
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II. Record
The record comprises the pleadings and, without any action by the parties, the file
of the involved application. Trademark Rule 2.122(b)(1), 37 C.F.R. § 2.122(b)(1).
Subject to Applicant’s objections, Opposer submitted the following evidence:
• The deposition on written questions of Dr. Sven Abels, Opposer’s founder,
CEO and only shareholder, with exhibits (“Abels Tr.”), 22 (redacted)
through 28 TTABVUE and 29 (confidential) TTABVUE; and
• Opposer’s Notice of Reliance, 13 and 14 (confidential) TTABVUE.
Applicant submitted the following evidence:
• The deposition on written questions of Courtney Smith, founder and sole
Director of Applicant, with exhibits (“Smith Tr.”), 41 (confidential) and 42
TTABVUE (redacted);
• The testimony declaration of Applicant’s counsel John L. Welch, with
exhibits, 46 TTABVUE; and
• Applicant’s Notice of Reliance, 45 TTABVUE.
III. Opposer’s Standing
Standing is a threshold issue that must be proven by the plaintiff in every
inter partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270,
111 USPQ2d 1058, 1062 (Fed. Cir. 2014); see also, e.g., Bell’s Brewery, Inc. v.
Innovation Brewing, 125 USPQ2d 1340, 1344 (TTAB 2017). Under Section 13 of the
Trademark Act, 15 U.S.C. § 1063, a party with a real interest in the proceeding and
a reasonable belief that it would be damaged by a registration has standing to oppose.
Applicant does not dispute Opposer’s standing. Applicant’s Brief at 9, 51
TTABVUE 10. We find that Opposer has standing to bring this proceeding because
Applicant seeks registration of marks consisting of or comprising ASCORA, a term
identical to Opposer’s asserted trade name and mark.
Opposition No. 91216243
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IV. Priority
Applicant may rely for priority on the filing date of its involved applications – here,
October 2, 2013. See, e.g., Kemi Organics, LLC v. Gupta, 126 USPQ2d 1601, 1604
(TTAB 2018). Applicant also submitted evidence of an earlier priority date, in May
2011. Smith Tr. at P-4, 42 TTABVUE 10; Applicant’s Response to Opposer’s
Interrogatory No. 3(a), Exhibit 12 to Opposer’s Notice of Reliance, 13 TTABVUE 175.
Opposer submitted testimony and invoices establishing that it used ASCORA at
least as a trade name in the United States in association with a variety of software
applications as early as 2003. See, e.g., Abel Tr. at 10:11-12:2 & Exhibit 1, 22
TTABVUE 12-14 & 23 TTABVUE. There is also a 2008 invoice for the U.S. sale of a
“premium update service,” which Dr. Abels testified was “a service for support and
product usage, including licenses, updates and maintenance.” Id. at 31:20-32:9, 34:21-
35:22 & Exhibit 1, 22 TTABVUE 33-34, 36-37 & 23 TTABVUE 26. The invoices
display the ASCORA trade name, as in Opposer’s Trial Exhibit 1, 23 TTABVUE 19:

Opposition No. 91216243
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Applicant argues that Opposer has not established continuous use of ASCORA.
See, e.g., Applicant’s Brief at 15, 21, 24, 51 TTABVUE 16, 22, 25. An opposer,
however, need only show prior use of a mark, not continuous use, unless the
defendant has asserted the affirmative defense of abandonment, and Applicant has
not. West Fla. Seafood Inc. v. Jet Rests. Inc., 31 F.3d 1122, 31 USPQ2d 1660, 1665
(Fed. Cir. 1994) (“The governing statute does not speak of ‘continuous use,’ but rather
of whether the mark or trade name has been ‘previously used in the United States by
another and not abandoned.’ 15 U.S.C. Section 1052(d) (emphasis added).”).
By showing first use of its inherently distinctive mark approximately eight years
before the earliest use date on which Applicant may rely, Opposer has established
priority in the ASCORA mark. Because Opposer has established priority, we proceed
to analyze whether Applicant’s mark is likely to cause confusion with Opposer’s mark.
V. Likelihood of Confusion
We assess all probative facts in evidence that are relevant to the factors bearing
on the issue of likelihood of confusion. In re E.I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 567 (CCPA 1973); see also In re Majestic Distilling Co., 315 F.3d
1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis,
however, two key considerations are the similarities between the marks and the
similarities between the goods or services, the first two DuPont factors. 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 bears the burden of proving its claim of likelihood of confusion by
Opposition No. 91216243
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a preponderance of the evidence. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55
USPQ2d 1842, 1848 (Fed. Cir. 2000). We address in turn the DuPont factors relevant
to this proceeding.
A. Similarity of the Marks
The first DuPont factor is the similarity of the parties’ marks. In a likelihood of
confusion analysis, we compare the marks in their entireties for similarities and
dissimilarities in appearance, sound, connotation and commercial impression. Stone
Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157,
1160 (Fed. Cir. 2014).
Opposer’s founder and CEO, Dr. Abels, testified that he came up with the name
“Ascora,” which stands for Abels Software Consulting, Research and Analytics, and
that it has “several benefits. It represented me as a founder by the last name. It was
easy to pronounce in English, German and most other languages, and it was not used
by any other tech company before.” Abels Tr. at 9:17-10:6, 22 TTABVUE 11-12.
Applicant does not disagree “that the marks of the parties are identical or
substantially similar.” Applicant’s Brief at 9, 51 TTABVUE 10. We find that
Applicant’s standard-character mark is identical to Opposer’s mark. The word
ASCORA also is the dominant and only literal portion of Applicant’s composite mark,
and therefore more likely to indicate the origin of Applicant’s goods. See, e.g., In re
Viterra, Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1911 (Fed. Cir. 2012). We conclude,
as Applicant conceded, that its composite mark considered as a whole is substantially
similar to Opposer’s ASCORA mark, and that consumers “will see the marks as
variations of each other, pointing to a single source.” In re Hitachi Hi-Techs., 109
Opposition No. 91216243
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USPQ2d 1769, 1774 (TTAB 2014). The first DuPont factor thus weighs heavily in
favor of a finding that confusion is likely as to both of Applicant’s marks.
B. Similarity of the Goods and Channels of Trade
We next consider the second and third DuPont factors, the similarity or
dissimilarity of the parties’ goods and channels of trade. Our analysis is based on the
identification of goods as set forth in the application. Stone Lion, 110 USPQ2d at
1162. In this case, we compare Applicant’s identified goods to the goods in which
Opposer has proven its priority. See, e.g., Bell’s Brewery, 125 USPQ2d at 1344 (finding
prior proprietary rights in opposer’s registered and common-law marks).
The test is not whether consumers are likely to confuse the goods, but rather
whether they are likely to be confused as to their source. E.g., Bond v. Taylor, 119
USPQ2d 1049, 1053 (TTAB 2016). Therefore, to support a finding of likelihood of
confusion, it is not necessary that the goods be identical or even competitive. It is
sufficient that the goods are related in some manner, or that the circumstances
surrounding their marketing are such that they would be encountered by the same
persons in situations that would give rise, because of the marks, to a mistaken belief
that they originate from the same source or that there is an association or connection
between the sources of the goods. Apple Comput. v. TVNET.net Inc., 90 USPQ2d 1393,
1397 (TTAB 2007).
The more similar the parties’ marks, the lesser the degree of similarity between
their goods necessary to support a finding of likelihood of confusion. E.g., Bd. of
Regents, Univ. of Tex. Sys. v. S. Ill. Miners, LLC, 110 USPQ2d 1182, 1189 (TTAB
2014); see also In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1689 (Fed. Cir.
Opposition No. 91216243
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1993) (stating that, “even when goods or services are not competitive or intrinsically
related, the use of identical marks can lead to the assumption that there is a common
source”). Where the parties’ marks are identical, there need only be a viable
relationship between the goods to find that there is a likelihood of confusion. L’Oreal
S.A. v. Marcon, 102 USPQ2d 1434, 1439 (TTAB 2012). As we found above, in this case
Applicant’s standard character mark is identical to Opposer’s ASCORA mark, while
Applicant’s composite mark is substantially similar.
We begin by considering the subset of goods to which Applicant proposes in the
alternative to amend its identification. If confusion is likely as to those restricted
goods, we need not consider the remaining goods as currently identified. It is
sufficient for a finding of likelihood of confusion if relatedness is established for any
item encompassed by the identification of goods within a particular class in an
application. Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ
986, 988 (CCPA 1981); see also, e.g., Orange Bang, Inc. v. Olé Mexican Foods, Inc.,
116 USPQ2d 1102, 1117 n.28 (TTAB 2015).
Applicant has moved in the alternative to amend its goods to: “Software for
managing the operations of a trade or service-based business specifically to assist
businesses with the management and operations of a mobile workforce or workers in
the field.” 10 TTABVUE 3.3 Goods offered in association with the ASCORA mark in
which Opposer established priority include AbNote, which Dr. Abels described as “an
app to manage job-related notes, allowing fast and easy access to information.” Abels

3 These goods are those identified in the first clause of the current ID.
Opposition No. 91216243
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Tr. at 34:21-35:5, 22 TTABVUE 36-37; see also id. at 13:25-14:4, 22 TTABVUE 15-16.
We find that Applicant’s identification of goods is broad enough to encompass
Opposer’s AbNote goods, establishing a viable relationship between them. These two
types of software, as described, also can have complementary uses. See In re Iolo
Techs., LLC, 95 USPQ2d 1498, 1500 (TTAB 2010). On the facts of this case, in which
Opposer offers multiple types of applications in association with the ASCORA mark,
consumers would be likely to assume that Applicant’s use of that mark for its software
goods identifies an extension of Opposer’s product line. See, e.g., Joel Gott Wines LLC
v. Rehoboth Von Gott Inc., 107 USPQ2d 1424, 1433 (TTAB 2013).
The record establishes that the parties’ goods are distributed through identical
trade channels, in particular, the Apple App Store and Google Play Store. Smith Tr.
at P-4, P-16, 42 TTABVUE 10, 22; Abel Tr. at 25:22-26:4, 48:17-49:7, 22 TTABVUE
27-28, 50-51.
We recognize that Applicant’s director, Mr. Smith, testified that the particular
software Applicant offers under the ASCORA marks is not similar to the several types
of software products offered by Opposer. See, e.g., Smith Tr. at P-13, 42 TTABVUE
19. We also are mindful, however, that Mr. Smith testified that Applicant asked the
Google Play Store to remove Opposer’s apps from its site. See id. at P-19-20, 42
TTABVUE 25-26. Mr. Smith testified: “I consider all apps that bear the Ascora mark
of [Applicant] ASC Software to be a willful violation of our IP rights. Any app which
contains our trademark without our consent should be removed from sale in any app
store.” Id. at P-20, 42 TTABVUE 26.
Opposition No. 91216243
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In light of the fact that the parties’ marks consist of or comprise the identical
coined term ASCORA, we find that a viable relationship exists between Applicant’s
software applications and the software applications in which Opposer has established
priority under the second DuPont factor. Because the parties distribute their goods
through identical trade channels, we also find that the third DuPont factor weighs in
favor of a finding that confusion is likely.
C. Purchaser Care
Finally, Applicant argues, without supporting evidence, that purchasers of its
goods exercise care to assess its product. See Applicant’s Brief at 29, 51 TTABVUE
30. This argument pertains to the fourth DuPont factor, the “conditions under which
and buyers to whom sales are made, i.e. ‘impulse’ vs. careful, sophisticated
purchasing.” DuPont, 177 USPQ at 567.
As Opposer points out, Applicant’s app is distributed free of charge. See Opposer’s
Brief at 24, 48 TTABVUE 25; Applicant’s Response to Opposer’s Interrogatory
No. 3(a), Exhibit 12 to Opposer’s Notice of Reliance, 13 TTABVUE 175 (stating that
Applicant’s “ASCORA brand product has always been available as a free download
via the Apple app store”). Because there is no evidence that consumers of these free
apps are sophisticated purchasers, we find the fourth DuPont factor to be neutral.
D. Conclusion as to Likelihood of Confusion
We have carefully considered all arguments and evidence, including the
arguments and evidence not specifically discussed. We have found that the first,
second, and third and DuPont factors support a conclusion that confusion is likely,
while the fourth factor is neutral. We find that Opposer has carried its burden to
Opposition No. 91216243
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establish by a preponderance of the evidence that Applicant’s marks are likely to
cause consumer confusion with Opposer’s mark when used in association with the
goods in the subject applications, both as currently identified and as per Applicant’s
proposed amendment.
VI. Applicant’s Motion to Amend
In view of our decision that confusion is likely between Opposer’s ASCORA mark
and Applicant’s use of its marks on the goods as amended, Applicant’s motion to
amend is denied.
Decision: The opposition to registration of applications Serial Nos. 86080318 and
86080319 is sustained based on a likelihood of confusion with Opposer’s ASCORA
mark under Trademark Act Section 2(d).