Automated Solutions Corporationv.Paragon Data Systems, Inc.

Trademark Trial and Appeal Board

May 13, 2008

No. 91171739 (T.T.A.B. May. 13, 2008)

Mailed:
May 13, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Automated Solutions Corporation
v.
Paragon Data Systems, Inc.
_____

Opposition No. 91171739
to application Serial No. 78564411
filed on February 10, 2005
_____

David A. Kunselman of Goodman Weiss Miller LLP for Automated
Solutions Corporation.

Cynthia S. Murphy of Renner, Otto, Boisselle & Sklar, LLP
for Paragon Data Systems, Inc.
______

Before Quinn, Hairston and Bergsman, Administrative
Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Paragon Data Systems, Inc. filed an intent-to-use
application for the mark SCDS, in standard character format,
for goods ultimately identified as a “distribution system
for unit by unit distribution and composed of computer
hardware, barcode scanners, bar code readers, and other
indicia marking devices, namely, laser writers, and the
associated computer software for operating the distribution
system,” in Class 9 (Serial No. 78564411).
THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Opposition No. 91171739
2
Automated Solutions Corporation opposed the
registration of applicant’s mark on the ground of priority
of use and likelihood of confusion under Section 2(d) of the
Trademark Act of 1946, 15 U.S.C. §1052(d). Opposer alleged
that it has been using the mark SCDS in commerce since April
30, 2001 in connection with computer software for “improving
efficiency and accuracy of planning, distribution,
collection, and electronic signature capture of deliverable
items, namely, periodical publications and supplies;
software for mobile, client, and server computers to allow
accessing, creating, editing, managing, and processing sales
and field service data; communications software, namely,
system applications and operating software for transferring
data to and from databases, computer programs, and computer
files via public and private telecommunications and computer
networks; software interfaces for automatically exchanging
data with circulation management and accounting software;
software for managing security of electronic communication;
software to automate logistics, analyze, and present sales
and field service data; computer devices, computer
peripherals, and accessories used for sales and field
service; downloadable computer programs and files,
electronic documents, and electronically distributable
marketing and training materials for sales and field
service,” and therefore applicant’s use of SCDS, in
Opposition No. 91171739
3
connection with applicant’s goods, is likely to cause
confusion with opposer’s use of SCDS, in connection with
opposer’s goods.1
In its answer, applicant admitted that the marks of the
parties are identical, that the goods of the parties are
identical or closely related, and that the prospective
purchasers of the parties’ goods are the same, but denied
the remaining allegations in the notice of opposition.
The parties stipulated that testimony could be
introduced through affidavits.
Only opposer introduced testimony and filed a brief.
The Record
By operation of Trademark Rule 2.122, 37 CFR §2.122,
the record includes the pleadings and the application file
for applicant’s mark. The record also includes the
affidavit of Richard Petcher, opposer’s CEO, with attached
exhibits.
Standing
Richard Petcher testified that opposer first licensed
its “distribution system for unit by unit distribution of
newspapers, magazines, and periodicals in the newspaper,

1 Opposer also alleged fraud, a false suggestion of a connection
under Section 2(a) of the Trademark Act of 1946, 15 U.S.C.
§1052(a), and dilution. In its brief, opposer only argued its
likelihood of confusion claim, and therefore we deem opposer to
have waived its other claims, and we have given them no
consideration.
Opposition No. 91171739
4
magazine, and publications fields which is composed of
computer hardware, networking and telecommunications
devices, namely, computer servers, desktop computers,
handheld computers, bar code scanners and readers, dial-up
modems, LAN cards, mobile printers, and associated computer
software for operating the distribution system” under the
SCDS mark to the Chicago Tribune on August 21, 2001.2 This
is sufficient to demonstrate that opposer has a real
interest in this proceeding, and therefore has standing.
Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d
1024, 213 USPQ 185, 189 (CCPA 1982).
Priority
The earliest date on which applicant can rely is the
filing date of its application, February 10, 2005. As
indicated above, Mr. Petcher testified that opposer first
licensed its distribution system and software displaying the
SCDS mark on August 21, 2001. Mr. Petcher’s testimony was
clear, convincing, consistent and uncontradicted. See
Powermatics, Inc. v. Globe Roofing Products Co., 341 F.2d
127, 144 USPQ 430, 432 (CCPA 1965) (“Oral testimony, if
sufficiently probative, is normally satisfactory to
establish priority of use in a trademark proceeding”). See

2 Petcher Affidavit, ¶6 and 8. Mr. Petcher testified that
opposer first began advertising and marketing the SCDS
distribution system and hardware on March 21, 2000, and has
continuously used the mark since that date. Petcher Affidavit,
¶¶6 and 10.
Opposition No. 91171739
5
also National Bank Book Co. v. Leather Crafted Products,
Inc., 218 USPQ 826, 828 (TTAB 1993) (oral testimony may be
sufficient to prove the first use of a party’s mark when it
is based on personal knowledge, it is clear and convincing,
and it has not be contradicted); Liqwacon Corp. v. Browning-
Ferris Industries, Inc., 203 USPQ 305, 316 (TTAB 1979) (oral
testimony may be sufficient to establish both prior use and
continuous use when the testimony is proffered by a witness
with knowledge of the facts and the testimony is clear,
convincing, consistent, and sufficiently circumstantial to
convince the Board of its probative value); GAF Corp. v.
Anatox Analytical Services, Inc., 192 USPQ 576, 577 (TTAB
1976) (oral testimony may establish prior use when the
testimony is clear, consistent, convincing, and
uncontradicted). In view of the foregoing, we find that
opposer has established priority of use.
Likelihood of Confusion
Our determination under Section 2(d) is based on an
analysis of all of the 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 Company, Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities or
Opposition No. 91171739
6
dissimilarities between the marks and the similarities or
dissimilarities between the goods. 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”).
A. The similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression.

The marks are identical.
B. The similarity or dissimilarity and nature of the
services.

Applicant is seeking to register the mark SCDS for a
“distribution system for unit by unit distribution and
composed of computer hardware, barcode scanners, bar code
readers, and other indicia marking devices, namely, laser
writers, and the associated computer software for operating
the distribution system.” Opposer is using the mark SCDS
for a “distribution system for unit by unit distribution of
newspapers, magazines, and periodicals in the newspaper,
magazine, and publications fields which is composed of
computer hardware, networking and telecommunications
devices, namely, computer servers, desktop computers,
handheld computers, bar code scanners and readers, dial-up
modems, LAN cards, mobile printers, and associated computer
Opposition No. 91171739
7
software for operating the distribution system.”3 There are
no restrictions in applicant’s description of goods;
therefore, we must consider applicant’s distribution system
as if it incorporates opposer’s distribution system in the
field of newspapers, magazines and publications. Canadian
Imperial Bank of Commerce v. Wells Fargo Bank, 811 F.2d
1490, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987); Toys R Us v.
Lamps R Us, 219 USPQ 340, 343 (TTAB 1983). Moreover,
applicant has admitted the goods of the parties are
identical or closely related.4 Accordingly, we find that
the goods are essentially identical.
C. The similarity or dissimilarity of established, likely-
to-continue trade channels and classes of consumers.

Because we have found that the distribution systems and
associated software of the parties are essentially
identical, we must presume that the channels of trade and
classes of purchasers are the same. Genesco Inc. v. Martz,
66 USPQ2d 1260, 1268 (TTAB 2003) (“Given the in-part (sic)
identical and in-part (sic) related nature of the parties’
goods, and the lack of any restrictions in the
identifications thereof as to trade channels and purchasers,
these clothing items could be offered and sold to the same
classes of purchasers through the same channels of trade”);
In re Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994)

3 Petcher Affidavit, ¶6.
4 Answer ¶19.
Opposition No. 91171739
8
(“Because the goods are legally identical, they must be
presumed to travel in the same channels of trade, and be
sold to the same class of purchasers”). Moreover, we note
that applicant has admitted that the prospective purchasers
of the parties’ goods are the same.5 Accordingly, we find
that the channels of trade and classes of consumers are the
same.
D. Balancing the factors.
Having found that the marks are identical, that
applicant’s goods are essentially identical to opposer’s
goods, and that the goods of the parties move in the same
channels of trade and are sold to the same classes of
consumers, we conclude that applicant’s mark SCDS for the
goods set forth in its application, is likely to cause
confusion with opposer’s mark SCDS used in connection with
opposer’s distribution system and associated software.
Decision: The opposition is sustained and registration
to applicant is refused.

5 Answer ¶21.