CaseCentral, Inc.v.NextPoint, Inc.

Trademark Trial and Appeal Board

Oct 17, 2013

No. 91198858 (T.T.A.B. Oct. 17, 2013)

Mailed: October 17, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

CaseCentral, Inc.
v.
NextPoint, Inc.
_____

Opposition No. 91198858
_____

William J. Frimel of Heffernan Seubert & French, LLP, for
CaseCentral.

Daliah Saper of Saper Law Offices, LLC, for NextPoint, Inc.

_____

Before Grendel, Ritchie, and Hightower, Administrative
Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:

Opposer in this case is CaseCentral, Inc. (opposer).
Applicant is NextPoint, Inc. (applicant). The mark at issue
for opposition is PRESERVATION CLOUD, in standard character
form, which was filed on an intent-to-use basis for
“Providing temporary use of a web-based software application
for use in grid computing capacity for litigation support
services and graphical presentation services, namely, image
generation, viewing and manipulation, text and metadata
extraction, batch file format converting, batch data
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Opposition No. 91198858
2
uploading and downloading, search engine and search index
generation, pdf generation and support, html file
previewing, and mobile/smartphone compatibility,” in
International Class 42 on January 28, 2010, and disclaiming
the exclusive right to use the term “cloud” apart from the
mark as shown.
Opposer initiated the opposition on March 7, 2011
alleging that PRESERVATION CLOUD is “merely descriptive” of
the service for which applicant seeks registration of
“cloud computing for the preservation of certain types of
data found on the internet.” (Notice at Para. 18, emphasis
in original). Opposer additionally brought the opposition
on the ground that applicant lacks a bona fide intent to use
the mark PRESERVATION CLOUD in association with the applied-
for services, stating that “on information and belief
obtained from Nextpoint’s own internal emails, Nextpoint has
no intention of using the Mark.” Id. at para. 6.
Applicant denied the salient allegations of the notice
of opposition in its answer, and included affirmative
defenses of failure to state a claim and unclean hands.1
Both parties submitted briefs, and opposer submitted a reply

1 The first affirmative defense was raised with regard to the
claim of lack of bona fide intent to use, and we address it
therein. The second claims that opposer “has unclean hands in
that it claims rights to a domain name for purposes of securing
standing that it does not own, and that was only acquired through
its agent for purposes of forestalling Applicant’s legitimate use
of the Preservation Cloud mark.” To the extent this is an
argument on standing, we address opposer’s standing in that
section. To the extent this is beyond that scope, applicant has
not elaborated.
Opposition No. 91198858
3
brief. For the reasons discussed herein, we sustain the
opposition on the ground of mere descriptiveness only.
The Record and Evidentiary Issues
The record in this proceeding consists of the pleadings
and the file of the PRESERVATION CLOUD application. 37
C.F.R. § 2.122(b). The record also includes the testimonial
depositions of Michael Beumer, applicant’s Director of
Marketing, and Rakesh Madhava, applicant’s founder and CEO,
both designated confidential pursuant to the parties’
protective order, dated December 3, 2012, with exhibits
attached. In addition, opposer submitted a notice of
reliance dated October 5, 2012, and applicant submitted a
notice of reliance dated December 6, 2012. Both notices of
reliance include some information designated confidential
pursuant to the parties’ protective order.
With its brief, opposer submitted a request for
judicial notice of an excerpt of a declaration of opposer’s
attorney Willam J. Frimel “filed in a litigation between
Opposer and Applicant styled Nextpoint, Inc. v. CaseCentral,
Inc., Case No. 10-CV-3515 (N.D. Ill., Jun. 8, 2010).”
Applicant objected to the request as being untimely and as
inappropriate subject matter for judicial notice. In reply,
opposer stated that applicant had suffered no prejudice, and
that courts, including the Board, have taken judicial notice
of official records, citing for example American Optical
Corp. v. American Olean Tile Co., Inc. 169 USPQ 123 (TTAB
1971) (taking judicial notice of a certificate of good
Opposition No. 91198858
4
standing from a United States District Court). It is
correct that testimony from another proceeding or from a
court action between the same parties may be offered as
evidence. 37 CFR § 2.122(f). However, that rule is “[b]y
order of the Trademark Trial and Appeal Board” where
“relevant” and “subject, however, to the right of any
adverse party to recall or demand the recall for examination
or cross-examination” of a witness. Id. Opposer’s
attorney’s declaration was not timely submitted such as to
allow any examination or cross-examination by applicant.
Accordingly, the objection is sustained and we have not
considered the testimony therein.2
Standing
Generally, an opposer must only show a “personal
interest in the outcome of the proceeding” as well as “a
reasonable basis for belief of damage.” See Books on Tape
Inc. v. The Booktape Corp., 836 F.2d 519, 5 USPQ2d 1301,
1302 (Fed. Cir. 1987) (petitioner, as a competitor of
respondent, “clearly has an interest in the outcome beyond
that of the public in general and has standing”). It is not
necessary that an opposer allege or establish its own prior
rights in the mark at issue. Id. Opposer here alleges in
its opposition as follows:

CaseCentral is an online litigation support
software provider. On August 25, 2008,

2 We hasten to add that, due to the nature of the declaration,
with regard to the claims made in this opposition, we would not
find it to change our decision.
Opposition No. 91198858
5
CaseCentral’s Chairman, Christopher, Kruse,
purchased the internet domain name
www.preservationcloud.com.
(Notice at para. 3).
Applicant responded to this allegation in its answer
with the following statement:

Upon information and belief, Paragraph No. 3 is
admitted.
(Answer at para. 3).
That applicant is also “in the online litigation support
business,” is supported by its CEO’s description of the
company:

Nextpoint develops a suite of cloud-based software
services and consulting services around those that
enable attorneys to effectively manage electronic
information in their matters.
(Madhava depo. at 3).
Applicant further describes itself as doing “litigation
support,” indeed entitling its marketing brochure
“Experience Next Generation Litigation Support.”3
Accordingly, we find that opposer is a competitor of
applicant and has standing to bring this action.
We find that opposer has established its standing in
this action.
Merely Descriptive
A term is deemed to be merely descriptive of goods or
services, within the meaning of Section 2(e)(1), if it
forthwith conveys an immediate idea of an ingredient,
quality, characteristic, feature, function, purpose or use

3 Citation from Nextpoint brochure, included with applicant’s
December 6, 2012 Notice of Reliance, at page 11 of 77.
Opposition No. 91198858
6
of the goods or services. See In re Chamber of Commerce of
the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir.
2012), citing In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009
(Fed. Cir. 1987). That a term may have other meanings in
different contexts is not controlling. In re Bright-Crest,
Ltd., 204 USPQ 591, 593 (TTAB 1979). Moreover, it is
settled that “[t]he question is not whether someone
presented with only the mark could guess what the goods or
services are. Rather, the question is whether someone who
knows what the goods or services are will understand the
mark to convey information about them.” DuoProSS Meditech
Corp. v. Inviro Medical Devices, Ltd., 695 F.3d 1247, 103
USPQ2d 1753, 1757 (Fed. Cir. 2012) (citation omitted); In re
Tower Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002). If,
on the other hand, a mark requires imagination, thought, and
perception to arrive at the qualities or characteristics of
the goods or services, then the mark is suggestive. In re
MBNA America Bank N.A., 340 F.3d 1328, 67 USPQ2d 1778, 1780
(Fed. Cir. 2003). In order for a mark to be characterized
as “merely descriptive” under Section 2(e)(1), it is not
necessary that the mark immediately convey an idea of each
and every specific feature of the applicant’s goods or
services. It is sufficient that one significant attribute,
function or property be described. See In re H.U.D.D.L.E.,
216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338
(TTAB 1973).
Opposition No. 91198858
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We consider a composite mark in its entirety. A
composite of descriptive terms is registrable only if as a
unitary mark it has a separate, non-descriptive meaning. In
re Colonial Stores, Inc., 394 F.2d 549, 157 USPQ 382 (CCPA
1968) (holding SUGAR & SPICE not merely descriptive of
bakery products). Accordingly, we look to the plain meaning
of the words. We take judicial notice4 of the following
relevant portions of the terms “preservation” and “cloud”:

Preservation: (preserve: to keep safe from injury,
harm, or destruction: protect).

Cloud: a great cloud or multitude; the computers
and connections that support cloud computing
< storing files in the cloud >.
Applicant argues that the term “cloud” is too vague and
indeed too technical to be understood by its consumers as
referring to its services. Nevertheless, applicant saw fit
to disclaim “cloud” during prosecution. This constitutes a
tacit admission by applicant of its descriptive value. See
Bass Pro Trademarks, L.L.C. v. Sportsman’s Warehouse, Inc.,
89 USPQ2d 1844, 1851 (TTAB 2008) (“Both parties disclaimed
the exclusive right to use the term ‘Sportman’s Warehouse’
in their respective registrations in response to
requirements by the Examining Attorneys during the
examination of their respective applications. Under these
circumstances, the disclaimer may be considered an admission

4 www.Merriam-Webster.com (11th ed. 2011). The Board may take
judicial notice of dictionary definitions. University of Notre
Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594, 596,
(TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
Opposition No. 91198858
8
by the parties that the term ‘Sportsman’s Warehouse’ is
merely descriptive.” [citations omitted]). Applicant also
admitted in the parties’ prior civil litigation that it
intended to disclaim the term “cloud” apart from its mark:

Request for Admission 11: Admit that Nextpoint
makes no claim to the exclusive right to use the
word “cloud,” separate or apart from the phrases
“Discovery Cloud,” “Trial Cloud,” or Preservation
Cloud.”

Response: Plaintiff [Nextpoint] admits this
Request.

Applicant has used both “cloud” and “preserve” or
“preservation” repeatedly in both testimony and marketing
materials to describe its PRESERVATION CLOUD service.
Applicant’s CEO referred to it as a “long-term storage
solution . . . to preserve that data.”5 (Madhava depo. at
5), further noting, “[a]ll of our products are deployed in
Amazon web services cloud computing environment.” Id. at 7-
8. Mr. Madhava testified further as to the descriptive
nature of the mark:

Q: You considered using the word cloud in the name
Preservation Cloud because Preservation Cloud
concerns data in the cloud, is that correct?
A: Correct.
Q: Did you choose to use the word preservation
because the archiving service we’re talking about
is intended to preserve data?
A: Yes.
Id. at 26-27.

5 Unless otherwise stated, the references are added here in bold
for ease of reference and were not emphasized in the original.
Opposition No. 91198858
9
Similarly, applicant’s Director of Marketing referred
to the descriptive nature of the term, stating, regarding
the name,

We wanted to make sure that that was something
that was going to be known in all our products,
that was coming from Nextpoint and they were cloud
based . . . and all the things that we feel like
cloud computing gets us.” (Beumer depo. at 23).

Further regarding the term “preservation” he stated:

“it’s basically a storage, you know, as I said . .
. . it will be preserved there” (Id. at 24).
“There’s a broad area of preservation . . . ” (Id.
at 25).

Applicant’s brochure, like its witnesses, describes the
PRESERVATION CLOUD product using both the words
“preservation” and “cloud”:

PRESERVATION CLOUD
Nextpoint Preservation Cloud delivers highly
secure, instantly scalable storage and processing
resources to preserve and manage large volumes of
ESI. Nextpoint leverages cloud computing
technology to realize more cost-effective
preservation of confidential data. Drastically
reduce capital and operating expenditures. [sic]

Accordingly, the testimony and documentary evidence
from applicant describes and denotes the term PRESERVATION
CLOUD in regard to the applied-for services as descriptive.
Third-party uses made of record by opposer also show the
term “preservation cloud” used in a descriptive manner:

Opposition No. 91198858
10
The A Register: Archiving and the cloud: Cloud is
everywhere. Every day we read news about new
cloud applications and new cloud providers. But
will it really solve all our problems? . . .
Specifically for cloud storage, some studies
reveal it could be up to 75 per cent [sic] less
expensive than keeping the data in internal
storage.
Cloud storage for archiving and long-term
preservation: Long-term preservation and archiving
in public clouds also involves the need for a
long-term and effective relationship with the
provider and this can lead to a number of
challengers such as the supplier going out of
business. . . .
The SNOA’s cloud Archive SIG is also working to
create a description of different profiles for
cloud archive and long-term preservation services.
This aims to simplify the classification of the
services delivered by cloud providers in different
profiles like digital cloud archive, digital cloud
preservation cloud and backup cloud.
www.theregister.co.uk.

DLF Digital Library Federation: Digital
Preservation Cloud Services for Libraries and
Archives: The amount of digital assets, whether
born digital or digitized objects from analog and
paper artifacts, is growing rapidly. Unlike
companies which are required to retain their
records for a relatively short period of time to
comply with the Sarbanes-Oxley Act, national
archives and digital libraries have to face
daunting challenges of long-term preservation.
Indeed, in order to fulfill the mission to provide
discovery and access to digital asserts over a
long period of time, institutions must develop
strategies and mechanisms to effectively
preserving [sic] these assets. . . .
Within this context, the question is whether Cloud
Computing paradigm can help digital archivists and
librarians to meet the challenges of preservation.
Diglib.org.

ITProPortal: Future Evolution of Data Protection
is Data Retention and Preservation Cloud, Says
Sepaton CEO:
The future evolution of data protection is the
cloud of data retention and preservation – a
Opposition No. 91198858
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shared services model applied to long term storage
that is implemented within the enterprise. . . .
The data preservation cloud is going to be next
big thing [sic] and data deduplication helps to
make this possible. [sic].
ITOProPortal.com

Information Playground: Global High-Tech
Innovation: Research Papers Moving to the Cloud:
Public clouds that specifically target digital
preservation have a different set of requirements
than a public cloud like Amazon EC2 for example.
The focus in a “preservation cloud” is longevity,
and the administrators of said cloud must think
like digital curators.
Stevetodd.typepad.com

Plus Ultra: Third-Party Preservation In a Cloud
Computing Paradigm: Can the nonparty loud
computing vendor be sanctioned? . . .

One of the very reasons that the Internet was
early depicted as a cloud is that, while it
creates the potential to access a wide variety of
interconnected resources, it also obscures what is
available.
Hastings Business Law Journal Vol. 8:1 p191-197.

Digital Library Federation Fall Forum 2011:
Digital Preservation Cloud Services for Libraries
and Archives: This session outlines some of the
ways in which cloud services could be a solution
for ongoing digital preservation needs among
library and archive institutions.
Dartmouthpreservation.blogpost.com/2011/11

Applicant meanwhile submitted evidence to show that the
term “cloud” is not clearly understood in the technical
world. However, that being said, it is clear from the
evidence, including the evidence submitted by applicant, as
set forth below, that although it may not be completely
agreed upon what exactly the “cloud” means, and certainly
Opposition No. 91198858
12
not everyone may understand what the technology does or
means, it is widely understood as referring to online
computing:

InfoWorld: It’s official: ‘Cloud computing’ is now
meaningless By David Linthicum I think we’ve
officially lost the war on defining the core
attributes of cloud computing so that businesses
and IT can make proper use of it. It’s now in the
hands of marketing organizations and PR firms who,
I’m sure, will take the concept on a rather wild
ride over the next few years.
www.infoworld.com; created 8-10-2011.

Wakefield: Citrix Cloud Survey Guide: August 2012:
Partly Cloudy-About Cloud Computing: While “the
cloud” may be the tech buzzword of the year, many
Americans are hazy on what the cloud actually is.
According to Wakefield Research for Citrix, there
is a significant disconnect between what Americans
know, and what they actually do, when it comes to
cloud computing. . . . . Lesson 1: the cloud is a
thing of today, and it’s intended for everyone.

The NIST Definition of Cloud Computing: Authors:
Peter Mell and Tim Grance: Version 15, 10-7-09;
National Institutes of Standards and Technology,
Information Technology Laboratory. Cloud
computing is still an evolving paradigm.
Definition of Cloud Computing: Cloud computing is
a model for enabling convenient, on-demand network
access to a shared pool of configurable computing
resources (e.g., networks, servers, storage,
applications, and services) that can be rapidly
provisioned and released with minimal management
effort or service provider interaction.
Finally, applicant submitted third-party registrations
with similar services to show that the term “cloud” is not
merely descriptive. However, we find this evidence to be
lacking. Of the registrations submitted, four are unitary
terms, where no disclaimer would be required (INVESTCLOUD,
EVENTCLOUD, CLOUDPASSAGE, and LABCLOUD); two are registered
Opposition No. 91198858
13
on the Supplemental Register (INVOICE CLOUD and IMAGECLOUD);
and one is registered with acquired distinctiveness in full
(SERVICE CLOUD). Only one where a disclaimer might have
been required has none, and is registered on the Principal
Register (CLOUD FOR COURTS). Thus we do not find that the
Office has a policy of finding the term “cloud” in this
context to be suggestive rather than descriptive.
Rather, we have no doubt that a consumer would
understand “PRESERVATION CLOUD,” used in connection with
applicant's services, as directly conveying information
about them, namely, that they are intended to preserve
information online (in the “cloud”). See In re Tower Tech
Inc., 64 USPQ2d at 1316-17; see also In re Conductive
Services, Inc., 220 USPQ 84, 86 (TTAB 1983). Therefore, we
find that the mark is merely descriptive of the recited
services, and we affirm this refusal to register.
Lack of Bona Fide Intent to Use
Opposer has the burden of demonstrating by a
preponderance of the evidence that applicant lacked a bona
fide intent to use the mark at the time it filed its
application. We base our determination on objective
evidence of all the circumstances. The Saul Zaentz Co. dba
Tolkien Enterprises v. Joseph M. Bumb, 95 USPQ2d 1723 (TTAB
2010); Swatch AG (Swatch SA)(Swatch Ltd.) v. M.Z. Berger &
Co., __ USPQ2d ___, Opposition No. 91187092 (TTAB Sept. 30,
2013); J. Thomas McCarthy, 3 McCarthy on Trademarks and
Unfair Competition § 19:14 (4th ed. updated Sept. 2013). We
Opposition No. 91198858
14
look to the filing date of the application, although
sufficiently contemporaneous evidence may be considered.
Boston Red Sox Baseball Club Limited Partnership v. Brad
Francis Sherman, 88 USPQ2d 1581, 1587 (TTAB 2008); Lane Ltd.
v. Jackson Int’l Trading Co., 33 USPQ2d 1351, 1355 (TTAB
1994) (“we find that this correspondence, which occurred in
October-December 1992, was sufficiently contemporaneous to
the application filing date in January 1992 to serve as
corroboration of the applicant’s declaration in the
application of a bona fide intention to use the mark in
commerce”).
Opposer claims that applicant lacks a bona fide intent
to use the mark PRESERVATION CLOUD for its applied-for
services because, since filing the application, applicant
has instead set up a service under the mark CLOUD
PRESERVATION. Applicant strenuously denies this allegation,
and both witnesses for applicant attested to an intent to
use the mark at the time of filing and to a continued intent
to use the mark. (Beumer depo. at 6 and Madhava depo. at
4). The record also includes brochures and webpages from
applicant’s website, both from before the filing date, and
after, promoting PRESERVATION CLOUD as identifying a service
by applicant.

Press Release Nov. 12, 2009, Nextpoint’s
Litigation Technology is now: Nextpoint
Preservation Cloud . . . Nextpoint Discovery Cloud
. . . Nextpoint Trial Cloud.
www.nextpoint.com.

Opposition No. 91198858
15
frank: The Nextpoint Blog: November 12, 2009
Our new products, Nextpoint Preservation Clouds
[sic] and Nextpoint Discovery Clouds, build upon
our industry re-defining Trial Preparation
Platform, now called Nextpoint Trial Clouds for
consistency across our product line
Nextpoint Preservation Cloud: Highly secure,
instantly scalable storage and processing resource
to preserve and manage large volumes of ESI.
http://nextpointblog.com/2009/11/12.

frank: The Nextpoint Blog: Democratizing
Litigation Technology: January 27, 2010. We are
also rolling out Preservation Cloud pricing at
$1/GB per month. You can get all of the details
here on our pricing page.
http://nextpointblog.com.

PRESERVATION DISCOVERY TRIAL ABOUT US
ABOUT US
Enter Nextpoint Cloud:
Our Discovery Cloud and Preservation Cloud have
been deployed and are being utilized by a select
group of customers.
www.nextpoint.com.

PRESERVATION DISCOVERY TRIAL ABOUT US
Breakthrough Pricing: Nextpoint leverages the
power of cloud computing to deliver next-
generation litigation technology to all our
customers – from solo practitioners to the largest
multi-national corporation – at one revolutionary
price.
PRESERVATION CLOUD
DISCOVERY CLOUD
TRIAL CLOUD
www.nextpoint.com “Archived by Cloud Preservation™
on Mon Nov 22, 2010”

Trialcloud: Offers seamless integration from
Preservation Cloud and Discovery Cloud and no
charge for native file processing with our entire
platform.
Nextpoint Trial Cloud © 2011 Nextpoint, Inc.

We find that there is sufficient documentary evidence,
showing promotional efforts by applicant with regard to the
Opposition No. 91198858
16
PRESERVATION CLOUD mark for the applied-for services
contemporaneous with the application filing date.
Accordingly, opposer has failed to make a prima facie case
of lack of bona fide intent to use the mark on the applied-
for services, and the opposition is dismissed on this
ground.
DECISION: The opposition is sustained on the ground
that the mark is merely descriptive, but denied on the
ground that applicant lacks a bona fide intent to use the
mark on the applied-for services.