Bernard Murphyv.Dieter Hafner

Trademark Trial and Appeal Board

Jun 25, 1999

No. 91106556 (T.T.A.B. Jun. 25, 1999)

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB
6/25/99
Bottorff
Opposition No. 106,556
Bernard Murphy
v.
Dieter Hafner
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JUNE 25,99
Before Sams, Simms and Bottorff, Administrative Trademark
Judges.
Opinion by Bottorff, Administrative Trademark Judge:
Applicant, an individual citizen of Germany, has
applied to register the mark PATNET for services recited as
"legal services in the field of patent law; and intellectual
property and technical searching services." The
application, Serial No. 74/666,383, was filed April 27,
1995, and applicant claims priority under Trademark Act
Section 44(d), 15 U.S.C. §1126(d), based on a German
application filed on October 31, 1994.1

1 On April 26, 1995, applicant’s German application matured to
registration as No. 2905831.
UNITED STATES DEPARTMENT OF COMMERCE
Patent and Trademark Office
Trademark Trial and Appeal Board
2900 Crystal Drive
Arlington, Virginia 22202-3513
Opposition No. 106,556
2
Opposer filed a timely notice of opposition, alleging,
as the ground of opposition, priority of use and likelihood
of confusion under Trademark Act Section 2(d), 15 U.S.C.
§1052(d). In the notice of opposition, opposer alleges that
he is in the business of providing patent information,
including patent copies, patent application file histories
and pages therefrom, to others upon written, phone, fax or
electronic medium requests, and in the business of filing
papers for others in the United States Patent and Trademark
Office; that he has used the mark PATNET in connection with
such services since October 25, 1994, a date prior to
applicant's October 31, 1994 Section 44(d) priority date;
and that confusion is likely to result from applicant's use
of the PATNET mark in connection with the services recited
in applicant's application.
Applicant has filed an answer by which he denies the
allegations of opposer's notice of opposition which are
essential to opposer's Section 2(d) claim.
This case now comes up on opposer's motion for summary
judgment on his Section 2(d) claim. The parties have fully
briefed the motion. The evidence of record on summary
judgment consists of the pleadings, the file of applicant's
involved application, the declaration (and attached
Opposition No. 106,556
3
exhibits) of opposer’s witness Robert Genua,2 and the
declaration of applicant Dieter Hafner. See TBMP

2 Mr. Genua’s declaration was attached to the notice of
opposition, rather than to opposer’s motion for summary judgment,
but both parties have treated the declaration and its exhibits as
being properly of record for purposes of opposer’s summary
judgment motion, and we shall do likewise.
Opposition No. 106,556
4
§§528.05(a) and (b).
Generally, summary judgment is appropriate in cases
where the moving party establishes that there are no genuine
issues of material fact which require resolution at trial
and that it is entitled to judgment as a matter of law.
Fed. R. Civ. P. 56(c). An issue is material when its
resolution would affect the outcome of the proceeding under
governing law. Anderson v. Liberty Lobby, Inc., 477 U.S.
242, 248 (1986). A fact is genuinely in dispute if the
evidence of record is such that a reasonable factfinder
could return a verdict in favor of the nonmoving party. Id.
In deciding a motion for summary judgment, the Board may not
resolve an issue of fact; it may only determine whether a
genuine issue of material fact exists. See Meyers v. Brooks
Shoe Inc., 912 F.2d 1459, 16 USPQ2d 1055 (Fed. Cir. 1990).
The nonmoving party must be given the benefit of all
reasonable doubt as to whether genuine issues of material
fact exist, and the evidentiary record on summary judgment,
and all inferences to be drawn from the undisputed facts,
must be viewed in the light most favorable to the nonmoving
party. See Opryland USA, Inc. v. Great American Music Show,
Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992); Olde
Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d
1542 (Fed. Cir. 1992).
Opposition No. 106,556
5
As noted above, opposer’s evidence on summary judgment
consists of the declaration, with attached exhibits, of Mr.
Robert Genua, who states that he is Vice President of
Operations for FAXPAT, a corporation owned and controlled
by, and which is asserted to be an assumed business name of,
opposer Bernard Murphy, and which is authorized by Mr.
Murphy to use his marks, including the PATNET mark. Mr.
Genua states that FAXPAT uses the mark PATNET in connection
with "legal research services, namely service of papers,
filings and retrieval of legal papers and documents for
others via electronic computer networks," and that FAXPAT’s
first use of the PATNET mark for such services was on
October 25, 1994, at the AIPLA3 Annual Meeting.
Exhibit A to Mr. Genua’s declaration is a promotional
brochure which is said to have been first distributed by
opposer at the 1994 AIPLA meeting. It reads as follows, in
relevant part:
Introducing PatNetï››
Ordering and Tracking System for Windows
Now you can save time and money ordering
patent services from Faxpat with PatNet. A
computer ordering and tracking system, PatNetï››
reduces the amount of time you spend ordering
patent services. As a bonus, all 3-5 day U.S.
patents ordered during your first month’s use of
PatNetï›› are only $2 each.

3 The Board takes judicial notice that AIPLA is an acronym for
the American Intellectual Property Law Association.
Opposition No. 106,556
6
Available free of charge exclusively to
Faxpat customers, PatNet is a Windows-based
software program that’s so easy to use, you’ll be
able to start ordering patent services the moment
you install it on your PC. All you need to use
PatNetï›› is an IBM-compatible PC and modem with
Windows software.
Save yourself time ordering patent services.
Eliminate the need for telephone follow-up to
verify or check on orders. Take advantage of our
$2 patent special. Call today for your free
PatNetï›› program diskette or return the attached
reply card. 800-866-1323.

Exhibit B1 to the Genua declaration is a copy of the
program diskette referred to in the last paragraph of the
above-quoted promotional brochure. The PATNET mark appears
on the diskette’s label. Exhibit B to the Genua declaration
is a printout of the home page for opposer’s electronic
worldwide bulletin board order system (BBS) which was first
demonstrated at the 1994 AIPLA meeting. The screen appears
as follows:4

4 Both the 1994 BBS screen (Exhibit B to the Genua declaration)
and opposer’s alleged current homepage screen (Exhibit E to the
Genua declaration) reveal opposer’s use of the federal
registration symbol  in connection with the PATNET mark. Such
use is improper, inasmuch as opposer does not appear on this
record to own any registration of the PATNET mark. See TMEP
§906. Because applicant has not raised any issue in its answer
to the notice of opposition or in its summary judgment brief with
respect to opposer's improper use of the  symbol, the Board
shall give no consideration thereto in this proceeding. However,
opposer is advised that it should discontinue its improper use of
the  symbol. See TMEP §906.01.
Opposition No. 106,556
7
PatNet
HOME OF THE $2.50 COPY OF UNITED STATES
PATENTS
ANY U.S. PATENT FROM NUMBER ONE TO CURRENT
ONE LOW PRICE OF $2.50 REGARDLESS OF PAGE
COUNT OR AGE OF PATENT
Opposer argues that there is no genuine issue of
material fact as to his priority, inasmuch as the earliest
date upon which applicant may rely for priority purposes is
the October 31, 1994 filing date of his German application,
whereas opposer had made first use of his PATNET mark at the
AIPLA Annual Meeting on October 25, 1994. Opposer also
argues that there is no genuine issue of material fact as to
the existence of a likelihood of confusion, contending that
the parties’ marks are identical; that applicant’s services,
as recited in applicant’s application, overlap and encompass
opposer’s; and that the prospective customers for both
parties’ services are the same, i.e., the United States
"patent community" of persons "interested in patent
prosecution."
Applicant’s evidence in opposition to opposer’s motion
for summary judgment consists of applicant’s declaration,
wherein he states, inter alia, that he is a German and
European patent attorney; that he intends to use the PATNET
mark in connection with the provision of legal services
Opposition No. 106,556
8
"involving intellectual property matters in Europe and
Germany" to persons in the United States; and that his
services, unlike opposer’s, "do not involve receiving orders
for or procuring copies of documents from the United States
Patent and Trademark Office."
Applicant initially argues that it would be premature
to grant judgment to opposer in this case because opposer’s
motion for summary judgment was filed almost immediately
after applicant’s filing of his answer to the notice of
opposition and before applicant had undertaken any
discovery. This argument is unpersuasive, however, because
applicant has failed to avail himself of the opportunity
afforded him, under Fed. R. Civ. P. 56(f), to request leave
to conduct any necessary discovery prior to responding on
the merits to opposer’s summary judgment motion. In view of
such failure by applicant, the alleged absence of discovery
is not a valid basis for denying opposer’s summary judgment
motion. See Sweats Fashions Inc. v. Pannill Knitting Co.
Inc., 833 F.2d 1560, 4 USPQ2d 1793, 1798-99 (Fed. Cir.
1989)("A party may not simply assert in its brief that
discovery was necessary and thereby overturn summary
judgment when it failed to comply with the requirement of
Rule 56(f) to set out reasons for the need for discovery in
an affidavit.").
Opposition No. 106,556
9
On the merits, applicant argues that opposer’s motion
for summary judgment should be denied because there are
several genuine issues of material fact as to opposer’s
priority and as to the existence of a likelihood of
confusion. With respect to priority, applicant contends
that there is a genuine issue of material fact as to whether
opposer’s October 25, 1994 use of the PATNET mark at the
AIPLA Annual Meeting was actually service mark use in
connection with the document filing and retrieval services
opposer has identified in the notice of opposition or
whether, instead, opposer’s use of the PATNET mark on that
date and thereafter has been trademark use in connection
with goods, i.e., a computer program. Applicant argues as
follows:
To the extent that this use in connection with
a computer program differs from the document
retrieval and filing services covered by
opposer’s pending application, then this use
may not even support a claim of priority in
connection with the services as alleged in the
Notice of Opposition. Indeed, since opposer
has already allowed one application to
register PATNET to go abandoned due to failure
to submit specimens showing use of the mark in
connection with services identified in the
application, opposer may be going down the
same path with respect to his current
application.
(Applicant’s summary judgment brief, at pp. 7-8.)5

5 Applicant here is referring to two applications filed by
opposer for registration of the PATNET mark. Opposer alleged
Opposition No. 106,556
10
As for likelihood of confusion, applicant argues that
opposer’s summary judgment motion should be denied because
the parties’ respective services are too dissimilar to
support a finding of likelihood of confusion. At the very
least, applicant argues, there is a genuine issue of
material fact on this question. Specifically, applicant
contends that opposer is in the business of retrieving and
filing documents in the United States Patent and Trademark
Office, whereas applicant "is providing legal services in
the intellectual property field in Europe and Germany to
persons in the United States," services which "will have
nothing to do with the United States Patent and Trademark
Office and in no event will they involve the retrieval and
filing of documents in any jurisdiction." (Applicant’s
brief at p. 7.) Applicant also contends that there is a

ownership of these applications in the notice of opposition, but
the application files have not been made of record in this case.
It appears from opposer’s allegations and from the Office’s
automated records that opposer filed application Serial No.
74/706,352 on December 6, 1994, seeking registration of the
PATNET mark for services recited as "legal research services,
namely service of papers, filings, and retrieval of legal papers
and legal documents for others via electronic computer networks";
that this application includes an allegation of October 25, 1994
as the date of first use of the mark anywhere and the date of
first use of the mark in commerce; and that the application
currently is suspended in the Trademark Examining Operation,
presumably pending the outcome of this opposition proceeding
against applicant’s prior-pending application. It also appears
that, on August 15, 1990, opposer had filed a previous intent-to-
use application, Serial No. 74/088,104, to register the PATNET
mark for services recited as "providing electronic transmission
of legal documents for others". The Office declared that
application abandoned on August 23, 1994 after opposer failed to
file an acceptable statement of use with proper specimens
Opposition No. 106,556
11
genuine issue of material fact as to whether opposer’s
document retrieval and filing services are, in fact, "legal
research services," as alleged in opposer’s declaration and
in opposer’s pending application for registration.
We have carefully considered the parties’ arguments and
evidentiary submissions. For the reasons discussed below,
we find that no genuine issues of material fact exist either
as to opposer’s priority or as to the existence of a
likelihood of confusion, and that opposer is entitled to
judgment as a matter of law on his Section 2(d) claim.
There is no genuine issue of material fact as to
opposer’s priority. It is undisputed that the earliest date
upon which applicant may rely, for priority purposes, is the
October 31, 1994 filing date of his German application.
Likewise, there is no dispute that opposer first used his
PATNET mark on October 25, 1994, at the AIPLA Annual
Meeting. Applicant argues that there is an issue of fact as
to whether opposer’s use of the mark on that date and
thereafter has been service mark use in connection with
opposer’s document retrieval and filing services, or rather
trademark use on a computer program. However, assuming
arguendo that such a factual dispute exists, it is not a
material issue of fact and thus it does not preclude entry

demonstrating use of the mark in connection with the services
recited in the application.
Opposition No. 106,556
12
of summary judgment in favor of opposer in this case, for
the following reasons.
Even if we were to accept applicant’s premise that
opposer’s use of the PATNET mark since October 25, 1994 has
been as a trademark on a computer program, rather than as a
service mark in connection with opposer’s services, there is
no genuine dispute, on this record, that the computer
program is inextricably intertwined with, and an adjunct to,
opposer’s document retrieval and filing services. It is
apparent from opposer’s promotional brochure, which is the
only evidence of record on this issue, that the purpose or
function of the computer program is to allow opposer’s
customers to order opposer’s services, and to track their
previous orders of opposer’s services, via computer. Thus,
it is immaterial whether opposer has used PATNET as a
service mark for his document filing and retrieval services,
or as a trademark for a computer program used in ordering
opposer’s document filing and retrieval services. In either
case, we find that opposer, since a time prior to
applicant’s earliest priority date, has used the mark PATNET
in connection with his document filing and retrieval
services in a manner which establishes opposer’s priority as
a matter of law.6

6 We note that we need not and do not decide, in this proceeding,
whether opposer’s use of the PATNET mark, as shown by the
evidence of record, constitutes technical service mark use
Opposition No. 106,556
13
Having found that priority rests with opposer in this
case, we turn next to the determination of whether a
likelihood of confusion exists. In making that
determination, we must take into account those of the du
Pont7 evidentiary factors as to which evidence has been
submitted and which have been shown to be pertinent to this
case. See Nina Ricci S.A.R.L. v. E.T.F. Enterprises Inc.,
889 F.2d 1070, 12 USPQ2d 1901 (Fed. Cir. 1989). The
evidence of record in this case pertains only to the first
and second du Pont factors, i.e., the similarity or
dissimilarity of the parties’ marks, and the similarity or
dissimilarity of the parties’ services.
It is undisputed that PATNET, the mark applicant seeks
to register, is identical to the mark previously used by
opposer. Thus, there is no genuine issue of material fact
as to the first du Pont evidentiary factor, i.e., the
similarity or dissimilarity of the marks in terms of
appearance, sound, connotation and commercial impression.
The identity of the parties’ marks weighs heavily in favor
of a finding of likelihood of confusion in this case.

sufficient to entitle opposer to the service mark registration he
has applied for in application Serial No. 74/706,352. Opposer’s
entitlement to such registration, vel non, is immaterial to the
issue of whether opposer has established his Section 2(d)
priority in this case, vis-à-vis applicant.
7 In re E.I. du Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973).
Opposition No. 106,556
14
The second du Pont evidentiary factor is the similarity
or dissimilarity between the goods or services described in
applicant’s application and the goods or services in
connection with which opposer has previously used his mark.
To review, applicant’s services, as recited in his
application, are "legal services in the field of patent law,
and intellectual property and technical searching services";
opposer’s services, as established by opposer’s Vice-
President’s affidavit, are "legal research services, namely
service of papers, filings and retrieval of legal papers and
documents for others via electronic computer networks."
Applicant argues that there is a genuine issue of
material fact as to whether opposer’s document retrieval and
filing services are, as opposer claims, "legal research"
services. For purposes of deciding opposer’s summary
judgment motion, we will resolve that factual issue in
applicant’s favor and assume that opposer’s services, i.e.,
the filing and retrieval of documents in and from the United
States Patent and Trademark Office for others, are not
"legal research" services, within the common meaning of that
term.
Applicant further argues that applicant’s services are
distinguishable from opposer’s services because applicant’s
services are limited to consultation services in the field
of German and European intellectual property matters, and
Opposition No. 106,556
15
because applicant’s services, unlike opposer’s services,
will not involve the filing and retrieval of documents from
the U.S. Patent and Trademark Office. However, these
purported limitations to the scope of applicant’s services
are not reflected in the recitation of services in
applicant’s application, and we can give them no
consideration in our analysis under the second du Pont
factor. See, e.g., Canadian Imperial Bank of Commerce,
N.A. v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed.
Cir. 1987); The Chicago Corp. v. North American Chicago
Corp., 20 USPQ2d 1715 (TTAB 1991).
In any event, the issue is not whether applicant’s
services are distinguishable from opposer’s services, but
rather whether the parties’ respective services are
sufficiently closely related that source confusion is likely
to result from the parties’ use of their respective marks in
connection with those services. See Devries v. NCC Corp.,
227 USPQ 705 (TTAB 1985). It is well-settled that the
parties’ services do not need to be identical or even
competitive in order to determine that there is a likelihood
of confusion. Rather, it is sufficient that the parties’
services be related in some manner or that the circumstances
surrounding their marketing are such that they are likely to
be encountered by the same persons under circumstances that
would give rise, because of the marks used thereon, to the
Opposition No. 106,556
16
mistaken belief that they originate from or are in some way
associated with the same producer. See, e.g., In re
Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ
1289 (Fed. Cir. 1984); Hilson Research Inc. v. Society for
Human Resource Management, 27 USPQ2d 1423 (TTAB 1993).
Indeed, where the parties’ marks are identical, as they are
in the present case, it is only necessary that there be a
viable relationship between the parties’ goods or services
in order to support a holding of likelihood of confusion.
See, e.g., In re Concordia International Forwarding Corp.,
222 USPQ 355 (TTAB 1983).
There is no genuine dispute that the parties’
respective services are or will be marketed to the same
potential customers, i.e., U.S. patent practitioners and
other persons desiring patent information. We find that
applicant’s "legal services in the field of patent law, and
intellectual property and technical searching services,"
though not identical to and perhaps not even competitive
with opposer’s document filing and retrieval services, are
sufficiently closely related to opposer’s services that,
when they are offered under the same mark, i.e., PATNET, the
parties’ potential customers are likely to mistakenly assume
that the respective services originate from a single source
or that some sponsorship connection or other affiliation
Opposition No. 106,556
17
exists between the providers of the services. No reasonable
factfinder could conclude otherwise.
Thus, we find that there is no genuine issue of
material fact that the parties’ respective services are
similar, rather than dissimilar, under the second du Pont
evidentiary factor. This factor, like the first du Pont
factor, weighs in favor of a finding of likelihood of
confusion in this case.
In short, we find that there are no genuine issues of
material fact as to any of the relevant du Pont factors, and
that the evidence of record pertaining to those evidentiary
factors establishes that a likelihood of confusion exists in
this case. Having also found that there are no genuine
issues of material fact as to opposer’s priority, we
conclude that opposer is entitled to judgment as a matter of
law on its Section 2(d) ground of opposition. Accordingly,
opposer’s motion for summary judgment is granted. See Fed.
R. Civ. P. 56(c). The opposition is sustained, and
registration to applicant is refused.
J. D. Sams
R. L. Simms
C. M. Bottorff
Opposition No. 106,556
18
Administrative Trademark Judges
Trademark Trial and Appeal Board