CaseWare International Inc.v.Nxbigthing, LLC

Trademark Trial and Appeal Board

Nov 20, 2018

No. 91221613 (T.T.A.B. Nov. 20, 2018)

This Opinion is not a
Precedent of the TTAB

Mailed: November 20, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

CaseWare International Inc.
v.
Nxbigthing, LLC
_____

Opposition No. 91221613
_____

Paul Grandinetti of Levy & Grandinetti,
for CaseWare International Inc.
Nxbigthing, LLC, pro se.
_____

Before Bergsman, Lykos and Pologeorgis,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:
Nxbigthing, LLC (Applicant) filed an application on the Principal Register to
register IDEAMATCH (standard characters) for an extensive list of goods and
services in Classes 9, 35 and 42.1 The most relevant goods and services are listed
below:
• Downloadable mobile applications for use in transaction processing to
upload transactional data, provide statistical analysis, and produce
notifications and reports, in Class 9;

1 Application Serial No. 85955337, filed June 10, 2013, under Section 1(b) of the Trademark
Act, 15 U.S.C. § 1051(b), based on Applicant’s bona fide intent to use the mark in commerce.
Opposition No. 91221613
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• Providing an online database in the field of commercial transaction
processing to upload transactional data, provide statistical analysis, and
produce notifications and reports, in Class 35; and

• Application service provider (ASP) featuring software for use in transaction
processing to upload transactional data, provide statistical analysis, and
produce notifications and reports, in Class 42.

By way of its Second Amended Notice of Opposition, CaseWare International Inc.
(Opposer) opposes registration of Applicant’s mark under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark so
resembles Opposer’s registered mark IDEA (typed drawing) for “computer software
for auditing and statistical sampling and user manuals therefor,” in Class 9, as to be
likely to cause confusion.2 Opposer also alleges common law use the mark IDEA “in
association with computer software for analysis and reporting of transaction data.”3
Finally, Opposer alleges that Applicant did not have a bona fide intent to use its mark
as of the filing date of the application.4 Opposer’s Second Amended Notice of
Opposition posted at 47 TTABVUE is the operative complaint in this proceeding.5

2 Registration No. 2422582, registered January 23, 2001; renewed.
Effective November 2, 2003, Trademark Rule 2.52, 37 C.F.R. § 2.52, was amended to replace
the term “typed” drawing with “standard character” drawing. A typed mark is the legal
equivalent of a standard character mark. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d
1905, 1909 n.2 (Fed. Cir. 2012) (“until 2003, ‘standard character’ marks formerly were known
as ‘typed’ marks.”).
3 Second Amended Notice of Opposition ¶3 (47 TTABVUE 16).
4 Id. at ¶¶16-20 (47 TTABVUE 19-22). Opposer also alleged that Applicant’s mark will dilute
Opposer’s mark. Section 43(c) of the Trademark Act, 15 U.S.C. § 1125(c). Inasmuch as
Opposer did not pursue this claim in its brief, it is waived. See Alcatraz Media Inc. v.
Chesapeake Marine Tours Inc., 107 USPQ2d 1750, 1753 n.6 (TTAB 2013), aff’d, 565 Fed.
Appx. 900 (Fed. Cir. 2014).
5 August 2, 2017 Order granting Opposer’s motion to amend its Notice of Opposition
(59 TTABVUE).
Opposition No. 91221613
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Applicant, in its Amended Answer, denied the salient allegations in the Second
Amended Notice of Opposition.6
I. The Record
The record includes the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), the application file at issue. Only Opposer introduced testimony
and evidence.7 Opposer’s testimony and evidence is listed below:
1. A copy of Applicant’s application and application file for Serial No.
86454713 for the mark IDEAWATCH (standard characters) for a wide
variety of goods and services in Classes 16, 36 and 41;8
2. Applicant’s responses to Opposer’s requests for admission, interrogatories
and request for production of documents;9
3. Printouts from the website ideamatch.com;10

6 60 TTABVUE.
7 Opposer has the burden of proving by a preponderance of the evidence its standing, priority
and a likelihood of confusion regardless of whether Applicant introduces and testimony or
evidence. Cf. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1848 (Fed.
Cir. 2000) (plaintiff “had the burden of providing by a preponderance of the evidence that
there was a likelihood of confusion between the two marks.”); West Fl. Seafood Inc. v. Jet
Rests. Inc., 31 F.3d 1122, 31 USPQ2d 1660, 1665-66 (Fed. Cir. 1994) (“a petitioner always
bear the burden of proof by a preponderance of the evidence in a cancellation proceeding,
whether the argument for cancellation is based on abandonment, likelihood of confusion, or
any other ground.”).
8 63 TTABVUE 16-67. This application was filed November 14, 2014 under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), claiming first use anywhere and first use in commerce
as of January 11, 2007 for all the classes of goods and services. Action on Applicant’s
application is suspended pending the disposition of Application Serial No. 86159718 for the
mark MATCH IDEAS and design for services in Class 35, owned by a third party.
9 63 TTABVUE 115-476. Applicant admitted that all the documents produced by Applicant
in this opposition are authentic and admissible. Applicant’s response to Opposer’s requests
for admission Nos. 33-35. Id. at 118-119.
10 63 TTABVUE 478-481.
Opposition No. 91221613
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4. Testimony declaration of Carolyn J. Newman, President of Audimation
Services, Inc., a distributor of Opposer’s IDEA software;11
5. Testimony declaration of Cal Bruner, Opposer’s Chief Financial Officer;12
and
6. Testimony deposition of Chad Batterman, Applicant’s owner.13
Applicant did not introduce any testimony or evidence, nor did it file a brief.
II. Standing
Standing is a threshold issue 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);
John W. Carson Found. v. Toilets.com Inc., 94 USPQ2d 1942, 1945 (TTAB 2010). To
establish standing in an opposition or cancellation proceeding, a plaintiff must prove
that it has a “real interest” in the proceeding and a “reasonable” basis for its belief of
damage. See Empresa Cubana, 111 USPQ2d at 1062; Ritchie v. Simpson, 170 F.3d
1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999); Lipton Indus., Inc. v. Ralston Purina
Co., 670 F.2d 1024, 213 USPQ 185, 189 (TTAB 1982).
Opposer has established its standing by properly introducing into evidence its
pleaded registration.14 See, e.g., Cunningham v. Laser Golf Corp., 55 USPQ2d at

11 64 TTABVUE.
12 65 and 67 TTABVUE. The confidential exhibits attached to the Bruner declaration are
posted at 66 TTABVUE.
13 79 TTABVUE.
14 Opposer attached to its original Notice of Opposition a copy of its pleaded registration
printed from the USPTO electronic database showing the current status of and title to the
registration. (1 TTABVUE 13). See also Bruner Testimony Decl. Exhibit A (65 TTABVUE 17-
34).
Opposition No. 91221613
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1844; N.Y. Yankees P’ship v. IET Prods. & Servs., Inc., 114 USPQ2d 1497, 1501
(TTAB 2015).
III. Priority
Because Opposer’s pleaded registration is of record, priority is not at issue with
respect to the goods identified therein. Mini Melts, Inc. v. Reckitt Benckiser LLC,
118 USPQ2d 1464, 1469 (TTAB 2016) (citing King Candy Co. v. Eunice King’s
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974)). Applicant does not
contest that Opposer has priority.
With respect to Opposer’s common law use of IDEA, Cal Bruner, Opposer’s Chief
Financial Officer, testified that Opposer first used the IDEA mark in the United
States for computer software for analysis and reporting of transaction data, auditing
and statistical sampling at least as early as 1994.15 Carolyn J. Newman, President of
Audimation Services, Inc., a distributor of Opposer’s IDEA software, corroborates
Opposer’s use of IDEA as early as 1994.
5. [Opposer’s] IDEA software can be used to import
records and transactional data, analyze transactions,
including statistical analyses, and produce reports.
* * *
13. Audimation’s marketing activities in the United
States for the IDEA software have been independently
conducted from 1994 – 2011 and cooperatively conducted
with CaseWare IDEA Inc., a subsidiary and Licensee of
[Opposer] since 2012. Audimation’s marketing activities
include: (1) maintaining a presence at audit-related
conferences (20 – 50 per year), (2) speaking engagements
(10 – 15 per year), (3) webcasts (6 – 12 per year), (4) print

15 Bruner Testimony Decl. ¶5 (65 TTABVUE 4).
Opposition No. 91221613
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and/or digital and pay-per-click advertising (5 – 12 per
year), (5) success stories, articles and other content
creation for websites (ours and other organizations’
totaling 4 – 8 per year), (6) special sponsorships with
certain CPA and internal audit organizations (2 – 5 per
year), and (7) newsletters (12 per year).16
Applicant’s constructive date of first use is the filing date of its application, June
10, 2013. However, Chad Batterman, Applicant’s owner, testified that he used the
mark IDEAMATCH as early as 2007.
Because I know I have use of the mark as early as I believe
2007. So I was using the mark as early as 2007, and the
rights were transferred to me personally to the
NXTBIGTHING when I created the NXTBIGTHING, LLC
in the fall of 2013.17
We take Mr. Batterman’s testimony that Applicant used IDEAMATCH as early as
2007 at face value. Because Opposer’s first use date in 1994 precedes any date
Applicant can muster, Opposer has priority of use in connection with its IDEA mark
for computer software for analysis and reporting of transaction data, auditing and
statistical sampling.
IV. 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 likelihood
of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563,
567 (CCPA 1973) (“du Pont”) cited in B&B Hardware, Inc. v. Hargis Indus., Inc.,
135 S. Ct. 1293, 113 USPQ2d 2045, 2049 (2015); see also In re Majestic Distilling Co.,

16 Newman Testimony Decl. ¶¶5 and 13 (64 TTABVUE 3-4).
17 Batterman Testimony Dep., pp. 68-69 (79 TTABVUE 81-82).
Opposition No. 91221613
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315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We have considered each du
Pont factor that is relevant or for which there is evidence of record. See M2 Software,
Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006);
ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB 2015)
(“While we have considered each factor for which we have evidence, we focus our
analysis on those factors we find to be relevant.”). In any likelihood of confusion
analysis, two key considerations are the similarities between the marks and the
similarities between the goods or services. See In re Chatam Int’l Inc., 380 F.3d 1340,
71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004); 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.”); see also In re
i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (“The
likelihood of confusion analysis considers all DuPont factors for which there is record
evidence but ‘may focus … on dispositive factors, such as similarity of the marks and
relatedness of the goods’”) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d
1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)).
A. The similarity or dissimilarity and nature of the goods.
We must analyze the similarity or dissimilarity and nature of the goods and
services based on the descriptions of goods and services set forth in the application
and registration at issue. Also, we may not limit or restrict the descriptions of goods
and services based on extrinsic evidence. E.g., Coach Servs. Inc. v. Triumph Learning
Opposition No. 91221613
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LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012); Octocom Sys., Inc. v.
Hous. Comput. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
However, we must determine the meaning of the descriptions of goods and services
in order to analyze them. Thus, we may use dictionary definitions and other extrinsic
evidence to determine the meaning of the descriptions of goods and services. In re
C.H. Hanson Co., 116 USPQ2d 1351, 1354 (TTAB 2015) (“When identifications are
technical or vague and require clarification, it is appropriate to consider extrinsic
evidence of use to determine the meaning of the identification of goods.”); Edwards
Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399, 1410 (TTAB 2010); In re Thor
Tech Inc., 90 USPQ2d 1634, 1638 n.10 (TTAB 2009) (using dictionary definitions to
determine the meaning of the terms used in the description of goods) (citing in re
Trackmobile Inc., 15 USPQ2d 1152, 1154 (TTAB 1990) (“it is improper to simply
consider that description in a vacuum and attach all possible interpretations to it
when the applicant has presented extrinsic evidence showing that the description of
goods has a specific meaning to members of the trade.”)).
Applicant’s description of goods and in services include:
• Downloadable mobile applications for use in transaction processing to
upload transactional data, provide statistical analysis, and produce
notifications and reports, in Class 9;

• Providing an online database in the field of commercial transaction
processing to upload transactional data, provide statistical analysis, and
produce notifications and reports, in Class 35; and

Opposition No. 91221613
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• Application service provider (ASP) featuring software for use in transaction
processing to upload transactional data, provide statistical analysis, and
produce notifications and reports, in Class 42.18

Accordingly, Applicant’s IDEAMATCH is software and providing software for
processing business data, analyzing that data, and producing notices and reports
about the data.
Opposer’s description of goods is “computer software for auditing and statistical
sampling.”19 Opposer’s advertising explains that IDEA is “audit analytics software,”20
or software for the analysis and verification of organizational records.

18 “Transactional” is the adjectival form for the word “transaction.” “Transaction” is defined
as “something that is transacted, especially a business arrangement.” “Transact” is defined
as “to carry on or conduct (business, negotiations, activities, etc.) to a conclusion or
settlement.” Dictionary.com based on the RANDOM HOUSE UNABRIDGED DICTIONARY (2018);
see also Merriam-Webster.com (to carry on business).
“Statistical” is the adjectival form of the word “statistics.” “Statistics” is defined as “a
numerical fact or datum, especially one computed from a sample.” Dictionary.com based on
the RANDOM HOUSE UNABRIDGED DICTIONARY (2018); see also Merriam-Webster.com (“a
branch of mathematics dealing with the collection, analysis, interpretation, and presentation
of masses of numerical data”).
“Analysis” is defined, inter alia, as “this process as a method of studying the nature of
something or of determining its essential features and their relations.” Dictionary.com based
on the RANDOM HOUSE UNABRIDGED DICTIONARY (2018); see also Merriam-Webster.com (“a
detailed examination of anything complex in order to understand its nature or to determine
its essential features: a thorough study”).
The Board may take judicial notice of dictionary definitions, including online dictionaries
that exist in printed format. In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB
2014), aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016); Threshold.TV Inc. v.
Metronome Enters. Inc., 96 USPQ2d 1031, 1038 n.14 (TTAB 2010); In re Red Bull GmbH, 78
USPQ2d 1375, 1378 (TTAB 2006).
19 An “Audit” is defined, inter alia, as “an official examination and verification of accounts
and records, especially financial accounts.” Dictionary.com based on the RANDOM HOUSE
UNABRIDGED DICTIONARY (2018); see also Merriam-Webster.com (“a formal examination of
an organization’s or individual’s accounts or financial situation” or “a methodical
examination and review.”).
20 65 TTABVUE 264. “Analytics” is defined, inter alia, as “the analysis of data, typically large
sets of business data, by the use of mathematics, statistics, and computer software.”
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IDEA makes light work of data import, analysis, and
reporting.
IDEA provides a structured framework for performing
organized, efficient, and reliable audits that meet or exceed
professional standards. Its simple yet comprehensive
methodology accommodates every aspect of data analysis,
from importing raw data to reporting actionable results.
* * *
21
Opposer’s IDEA software for “auditing and statistical sampling” examines or
analyzes an organization’s records. Accordingly, the parties’ software will perform
some of the same functions and, therefore, the goods and services are in part identical.
Opposer’s common law IDEA mark is used for “computer software for analysis and
reporting of transaction data.” As noted above, Opposer’s distributor testified that
Opposer’s “IDEA software “can be used to import records and transactional data,
analyze transactions, including statistical analyses, and produce reports,” as well as
exploring transactional data in depth.22 Accordingly, because Applicant’s description
of goods includes software for processing business data, analyzing business data and
producing notices and reports about the data and Opposer’s common law use of its

Dictionary.com based on the RANDOM HOUSE UNABRIDGED DICTIONARY (2018); see also
Merriam-Webster.com (“the method of logical analysis.”).
21 65 TTABVUE 265.
22 Newman Testimony Decl. ¶¶5 and 6 (64 TTABVUE 3).
Opposition No. 91221613
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IDEA mark includes the analysis and reporting of business information, the goods
and services are in part identical.
Under this du Pont factor, Opposer need not prove, and we need not find,
similarity as to each and every product or activity listed in Applicant’s description of
goods and services. It is sufficient for assessing likelihood of confusion that
relatedness is established for any item encompassed by the identification of goods or
services in a particular class in the application. Tuxedo Monopoly, Inc. v. Gen. Mills
Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); In re i.am.symbolic, LLC,
116 USPQ2d 1406, 1409 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed.
Cir. 2017); In re Aquamar, Inc., 115 USPQ2d 1122, 1126 n.5 (TTAB 2015) (“it is
sufficient for finding a likelihood of confusion if relatedness is established for any
item encompassed by the identification of goods within a particular class in the
application.”); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB
2014).
Thus, the second du Pont factor favors a finding of likelihood of confusion.
B. Established, likely-to-continue channels of trade and purchasers to whom sales
are made.

Because the goods and services described in the application and Opposer’s pleaded
registration are in part identical, we presume that the channels of trade and classes
of purchasers are the same as to those goods and services. See Viterra, 101 USPQ2d
at 1908 (legally identical goods are presumed to travel in same channels of trade to
same class of purchasers); In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ
721, 723 (CCPA 1968) (where there are legally identical goods, the channels of trade
Opposition No. 91221613
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and classes of purchasers are considered to be the same); United Glob. Media Grp.,
Inc. v. Tseng, 112 USPQ2d 1039, 1049 (TTAB 2014); Am. Lebanese Syrian Associated
Charities Inc. v. Child Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011).
With respect to Opposer’s common law use, Opposer’s IDEA software is used by
corporations, state and local governments, accountants and auditors.23 It is sold or
licensed by telephone, mail or email.24 Opposer’s distributor markets the IDEA
software by
(1) maintaining a presence at audit-related conferences (20
– 50 per year), (2) speaking engagements (10 – 15 per year),
(3) webcasts (6 – 12 per year), (4) print and/or digital and
pay-per-click advertising (5 – 12 per year), (5) success
stories, articles and other content creation for websites
(ours and other organizations’ totaling 4 – 8 per year), (6)
special sponsorships with certain CPA and internal audit
organizations (2 – 5 per year), and (7) newsletters (12 per
year).25
Its sales activities include
(1) telesales and email campaigns (4 – 5 targeted by
industry per year), (2) extensive customer relations
activities to continue renewals and expand licenses within
client organizations (includes biannual user conference
that is widely promoted to CPAs and auditors in
government and corporations), and (3) certain social media
activities including tweets, LinkedIn and Facebook posts.
Over the past five years, more than 20,000 leads were
identified in the United States through these activities.26

23 Newman Testimony Decl. ¶7 (64 TTABVUE 3); see also Bruner Testimony Decl. ¶11
(65 TTABVUE 4) (Opposer’s IDEA software is uses “by major accounting firms, federal, state,
provincial and local governments, corporations in all industry sectors, and by universities as
a teaching tool.”).
24 Id. at ¶8 (64 TTABVUE 3).
25 Id. at ¶13 (64 TTABVUE 4).
26 Id. at ¶14 (64 TTABVUE 4).
Opposition No. 91221613
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Where, as here, there are no limitations or restrictions in Applicant’s description
of goods and services, we must presume that Applicant’s goods and services move in
all channels of trade that would be normal for such goods and services and that they
are available to all classes of purchasers for those goods and services. See Citigroup
Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir.
2011); CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 199 (Fed. Cir. 1983); Paula
Payne Prods. Co. v. Johnson Publ’g Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973).
Accordingly, we must presume that Applicant’s goods and services are offered in the
same channels of trade and to the same classes of consumers as Opposer’s software.
C. Fame
Opposer has pleaded and argued that its IDEA mark is strong and famous.27
Fame, if it exists, plays a dominant role in the likelihood of confusion analysis because
famous marks enjoy a broad scope of protection or exclusivity of use. A famous mark
has extensive public recognition and renown. Bose Corp. v. QSC Audio Prods. Inc.,
293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002); Recot Inc. v. M.C. Becton, 214
F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000); Kenner Parker Toys, Inc. v. Rose
Art Indus., Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992).
In the likelihood of confusion analysis, “fame ‘varies along a spectrum from very
strong to very weak.’” Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC,

27 Opposer’s Brief, pp. 17-21 (80 TTABVUE 25-29); Amended Notice of Opposition ¶¶7 and
11 (47 TTABVUE 17 and 19).
Opposition No. 91221613
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857 F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017) (quoting In re Coors Brewing
Co., 343 F.3d 1340, 68 USPQ2d 1059, 1063 (Fed. Cir. 2003)).
Fame may be measured indirectly by the volume of sales of and advertising
expenditures for the goods and services identified by the marks at issue, “the length
of time those indicia of commercial awareness have been evident,” widespread critical
assessments and through notice by independent sources of the products identified by
the marks, as well as the general reputation of the products and services. Bose Corp.,
63 USPQ2d at 1305-1306 and 1309. Raw numbers alone may be misleading, however.
Thus, some context in which to place raw statistics may be necessary, for example,
market share or sales or advertising figures for comparable types of goods. Id. at 1309.
Finally, because of the extreme deference that we accord a famous mark in terms
of the wide latitude of legal protection it receives, and the dominant role fame plays
in the likelihood of confusion analysis, it is the duty of the party asserting that its
mark is famous to clearly prove it. Coach Servs., 101 USPQ2d at 1720 (citing Leading
Jewelers Guild Inc. v. LJOW Holdings LLC, 82 USPQ2d 1901, 1904 (TTAB 2007)).
Opposer contends that its IDEA mark is famous for the following reasons:28
• Opposer has used the IDEA for computer software for analysis and
reporting of transaction data, auditing and statistical sampling in the
United States since as early as 1994;29

28 Opposer’s Brief, pp. 19-21 (80 TTABVUE 27-29).
29 Bruner Testimony Decl. ¶5 (65 TTABVUE 4).
Opposition No. 91221613
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• Opposer’s distributor markets the IDEA software by (1) maintaining a
presence at audit-related conferences (20 to 50 per year), (2) speaking
engagements (10 to 15 per year), (3) webcasts (six to 12 per year), (4) print
and/or digital and pay-per-click advertising (five to 12 per year), (5) success
stories, articles and other content creation for websites (CWI’s and other
organizations’ totaling four to eight per year), (6) special sponsorships with
certain CPA and internal audit organizations (two to five per year), and (7)
newsletters (12 per year);30
• Opposer and its distributor sponsor programs with many organizations to
promote IDEA software. For example, American Accounting Association,
Edison Electric Institute, Financial Executives International, Government
Finance Officers Assoc., IIA Gaming & Hospitality, and the University of
Houston;31
• Opposer and its distributor advertise the IDEA software with many
organizations, including the American Accounting Association, business
journals, Google, LinkedIn, PR Newswire, The CPA Journal, and Thomson
Reuters;32
• Opposer contends that its advertising expenditures establish that the IDEA
mark has widespread consumer awareness.33 Opposer introduced its

30 Newman Testimony Decl, ¶13 (64 TTABVUE 3-4).
31 Newman Testimony Decl., ¶13 and Exhibit C (64 TTABVUE 4 and 30).
32 Id.
33 Opposer’s Brief, pp. 18-19 (80 TTABVUE 26-27).
Opposition No. 91221613
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advertising expenses in the United States, but those figures were
designated confidential.34
• The sales activities in the United States for the IDEA software include (1)
telesales and email campaigns (four to five targeted by industry per year),
(2) extensive customer relations activities to continue renewals and expand
licenses within client organizations (includes biannual user conference that
is widely promoted to CPAs and auditors in government and corporations),
and (3) certain social media activities including tweets, LinkedIn and
Facebook posts;35
• Opposer contends that its revenues are significant.36 Opposer introduced
its revenues in dollars and units in the United States but those figures were
designated confidential;37 and
• Opposer contends that its sales figures represent a large market share and
extensive consumer recognition.38 For example, in a 2012 AuditNet, LLC
survey, IDEA software was ranked second among software used by audit
departments (17% of the respondents who answered that question).39

34 Bruner Testimony Decl. Exhibit O (66 TTABVUE 4-24).
35 Newman Decl., ¶14 (64 TTABVUE 4).
36 Opposer’s Brief, p. 19 (80 TTABVUE 27).
37 Bruner Testimony Decl. Exhibit O (66 TTABVUE 25).
38 Opposer’s Brief, p. 29 (80 TTABVUE 28).
39 Bruner Testimony Decl. Exhibit C (65 TTABVUE 123). AuditNet, LLC is a global resource
for auditors.
Opposition No. 91221613
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This evidence falls short of proving that Opposer’s IDEA mark falls on the “very
strong” end of the spectrum of fame for likelihood of confusion purposes. Opposer’s
long use since 1994, without evidence of the extent of consumer exposure to or
recognition of the mark over the years, is not sufficient by itself to prove fame. Wet
Seal Inc. v. FD Mgt. Inc., 82 USPQ2d 1629, 1635 (TTAB 2007); compare Nina Ricci,
S.A.R.L. v. ETF Enters., Inc., 203 USPQ 947, 951 (TTAB 1979) (“Not only has opposer
enjoyed long use of its ‘RICCI’ marks, but the record shows the fame, prestige and
reputation which the name ‘NINA RICCI’ has brought to opposer as evidenced by the
numerous newspaper articles and reports of opposer’s activities in the ladies’ apparel
fields, previously referred to.”).
While Opposer contends that an independent, third party ranked Opposer’s IDEA
software second among software used by audit departments (17% of the respondents
who answered that question), the key findings from that survey established that
“audit professionals are not maximizing the use of available audit technology.”40

Fifty-nine percent of the survey respondents said that they were using data analysis
tools on an ad hoc basis (when needed) or not at all, only 21% were using data analysis

40 Bruner Testimony Decl. Exhibit B (65 TTABVUE 88).
Opposition No. 91221613
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tools on a repetitive basis, and “few” respondents indicated continuous use.41 In fact,
only 26% of the respondents in the 2014 Global Forensic Data Analytics Survey said
that they were using “forensic analytics software” such as ACL and IDEA.42 Having
the second most licensed software in a field where the majority of users have not
accepted the value of such software does not establish that the IDEA mark is famous
in that field.
Opposer’s revenues and advertising expenditures are not impressive on their face.
However, because Opposer has the second most licensed software in the field, the
revenues and advertising expenditures establish that the IDEA software is a
commercially successful product that is making inroads in the field.
Opposer’s testimony and evidence shows that Opposer’s IDEA software is a
successful and growing product, not that the IDEA trademark is “on the very strong
end” spectrum of fame. Nonetheless, the evidence establishes that IDEA is a
commercially strong mark entitled to a broad scope of protection or exclusivity of use
in connection with computer software for analysis and reporting of transaction data,
auditing and statistical sampling, but it does not have the extensive public
recognition and renown of a famous mark.
In assessing the strength of Opposer’s mark, we must also analyze its conceptual
strength or inherent strength. See In re Chippendales USA, Inc., 622 F.3d 1346, 96
USPQ2d 1681, 1686 (Fed. Cir. 2010) (“A mark’s strength is measured both by its

41 Id. at 65 TTABVUE 89.
42 Id. at Exhibit E (65 TTABVUE 138).
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conceptual strength (distinctiveness) and its marketplace strength (secondary
meaning).”); Top Tobacco, L.P. v. North Atlantic Operating Co., Inc., 101 USPQ2d
1163, 1171-72 (TTAB 2011) (the strength of a mark is determined by assessing its
inherent strength and its commercial strength); Tea Board of India v. Republic of Tea
Inc., 80 USPQ2d 1881, 1899 (TTAB 2006).
The word “Idea” is defined, inter alia, as follows:
1. any conception existing in the mind as a result of
mental understanding, awareness, or activity.
2. a thought, conception, or notion:
That is an excellent idea.
3. an impression:
He gave me a general idea of how he plans to run the
department.
4. an opinion, view, or belief:
His ideas on raising children are certainly strange.
5. a plan of action, an intention:
the idea of becoming an engineer.43
When used in connection with computer software for analysis and reporting of
transaction data, auditing and statistical sampling, the word “Idea” does not have
any descriptive or suggestive significance. Thus, IDEA is an arbitrary mark and it is
an inherently strong mark entitled to broad scope of protection or exclusivity of use.
Accordingly, the fifth du Pont factor favors Opposer.

43 Dictionary.com based on the RANDOM HOUSE UNABRIDGED DICTIONARY (2018).
Opposition No. 91221613
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D. Similarity or dissimilarity of the marks.
We now turn to the du Pont likelihood of confusion factor focusing on the similarity
or dissimilarity of the marks in their entireties as to appearance, sound, connotation
and commercial impression. du Pont, 177 USPQ at 567. In comparing the marks, we
are mindful that where, as here, the goods and services are in part identical, the
degree of similarity necessary to find likelihood of confusion need not be as great as
where there is a recognizable disparity between the goods and services. Coach Servs.,
101 USPQ2d at 1721; Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d
874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Jansen Enters. Inc. v. Rind, 85 USPQ2d
1104, 1108 (TTAB 2007); Schering-Plough HealthCare Prod. Inc. v. Ing-Jing Huang,
84 USPQ2d 1323, 1325 (TTAB 2007).
“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., 101 USPQ2d at 1721; see also Midwestern Pet
Foods, Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 103 USPQ2d 1435, 1440
(Fed. Cir. 2012); San Fernando Elec. Mfg. Co. v. JFD Elec. Components Corp., 565
F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Rests. Inc. v. Morrison Inc., 23
USPQ2d 1735, 1741 (TTAB 1991), aff’d mem., 972 F.2d 1353 (Fed. Cir. 1992).
Applicant is seeking to register the mark IDEAMATCH and Opposer’s mark is
IDEA. The marks are similar in appearance and sound because they share the word
Opposition No. 91221613
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“Idea.” As we often have said, “Idea” as the lead element in Applicant’s mark
IDEAMATCH has a position of prominence; it is likely to be noticed and remembered
by consumers and so as to play a dominant role in the mark. See Palm Bay Imps. Inc.
v. Veuve Clicquot Ponsardin Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692
(Fed. Cir. 2005) (“Veuve” is the most prominent part of the mark VEUVE CLICQUOT
because “veuve” is the first word in the mark and the first word to appear on the
label); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d
1698, 1700 (Fed. Cir. 1992) (upon encountering the marks, consumers will first notice
the identical lead word); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB
2016) (noting that the dominance of BARR in the mark BARR GROUP is reinforced
by its location as the first word in the mark); Presto Prods. Inc. v. Nice-Pak Prods.,
Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is
most likely to be impressed upon the mind of a purchaser and remembered”). There
is nothing improper in stating that, for rational reasons, more or less weight has been
given to a particular feature of a mark, such as a common dominant element, provided
the ultimate conclusion rests on a consideration of the marks in their entireties. In re
Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985); see also Viterra,
101 USPQ2d at 1908.
The marks also have similar meanings and engender similar commercial
impressions. As noted above, the word “idea” means a thought, conception, notion,
impression, opinion, view, or belief. When used in connection with computer software
for analysis and reporting of transaction data, auditing and statistical sampling,
Opposition No. 91221613
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IDEA conveys the commercial impression that the data has a meaning. IDEAMATCH
means and engenders the commercial impression of a similar, equal or corresponding
thought, conception, notion, impression, opinion, view, or belief. When used in
connection with software and providing software for transaction processing to upload
transactional data, provide statistical analysis, and produce notifications and reports,
IDEAMATCH conveys the commercial impression that Applicant’s software will
verify the user’s belief as to what the data means.
While there is no ironclad rule that marks must be found to be similar where one
incorporates the entirety of another, it often increases the similarity between the two,
and does so here. See, e.g., China Healthways Inst. Inc. v. Xiaoming Wang, 491 F.3d
1337, 83 USPQ2d 1123, 1125 (Fed. Cir. 2007) (applicant’s mark CHI PLUS is similar
to opposer’s mark CHI both for electric massagers); The Wella Corp. v. Cal. Concept
Corp., 558 F.2d 1019, 194 USPQ 419, 422 (CCPA 1977) (CALIFORNIA CONCEPT
and surfer design for men’s cologne, hair spray, conditioner and shampoo is likely to
cause confusion with the mark CONCEPT for cold permanent wave lotion and
neutralizer); Coca-Cola Bottling Co. of Memphis, Tennessee, Inc. v. Joseph E.
Seagram and Sons, Inc., 526 F.2d 556, 188 USPQ 105 (CCPA 1975) (applicant’s mark
BENGAL LANCER for club soda, quinine water and ginger ale is likely to cause
confusion with BENGAL for gin); In re West Point-Pepperell, Inc., 468 F.2d 200,
175 USPQ 558 (CCPA 1972) (WEST POINT PEPPERELL and griffin design for
fabrics is likely to cause confusion with WEST POINT for woolen piece goods); In re
Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1271 (TTAB 2009) (applicant’s mark
Opposition No. 91221613
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VANTAGE TITAN for medical magnetic resonance imaging diagnostic apparatus
confusingly similar to TITAN for medical ultrasound diagnostic apparatus);
Broadcasting Network Inc. v. ABS-CBN Int’l, 84 USPQ2d 1560, 1568 (TTAB 2007)
(respondent’s mark ABS-CBN is similar to petitioner’s mark CBN both for television
broadcasting services); In re El Torito Rests., Inc., 9 USPQ2d 2002, 2004 (TTAB 1988)
(applicant’s mark MACHO COMBOS for food items confusingly similar to MACHO
for restaurant entrees).
When considered in their entireties, we find that IDEAMATCH is similar to IDEA
in appearance, sound, connotation and commercial impression.
E. Balancing the factors.
Because the marks are similar, Opposer’s IDEA mark is both conceptually and
commercially strong, the goods and services are in part identical and presumed to be
offered in the same channels of trade to same classes of consumers, we find that
Applicant’s mark IDEAMATCH for
• Downloadable mobile applications for use in transaction processing to
upload transactional data, provide statistical analysis, and produce
notifications and reports, in Class 9;

• Providing an online database in the field of commercial transaction
processing to upload transactional data, provide statistical analysis, and
produce notifications and reports, in Class 35; and

• Application service provider (ASP) featuring software for use in transaction
processing to upload transactional data, provide statistical analysis, and
produce notifications and reports, in Class 42,

is likely to cause confusion with the registered mark IDEA for “computer software for
auditing and statistical sampling and user manuals therefor” and the unregistered
Opposition No. 91221613
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mark IDEA in association with computer software for analysis and reporting of
transaction data.
Because we have found that Applicant’s mark is likely to cause confusion with
Opposer’s mark, we need not consider whether Applicant had a bona fide intent to
use its mark as of the filing date of its application. “Like the federal courts, the Board
has generally used its discretion to decide only those claims necessary to enter
judgment and dispose of the case … . More specifically, the Board's determination of
registrability does not require, in every instance, decision on every pleaded claim.”
Multisorb Tech., Inc. v. Pactiv Corp., 109 USPQ2d 1170, 1171 (TTAB 2013).
Decision: The opposition is sustained on the Section 2(d) claim and registration
of Applicant’s mark is refused.