Chicago Mercantile Exchange, Inc.v.Globix Corp.

Trademark Trial and Appeal Board

Apr 8, 2004

No. 91117620 (T.T.A.B. Apr. 8, 2004)

Hearing: Mailed: April 8, 2004
October 9, 2003 Paper No. 33
BAC
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Chicago Mercantile Exchange, Inc., successor in interest to
P-M-T Limited Partnership1
v.
Globix Corporation, by change of name from Bell Technology
Group, Ltd.2
________
Opposition Nos. 91117543, 91117620 and 91123117
_______
John T. Gabrielides and Christopher N. Bolinger of Brinks
Hofer Gilson & Lione PC for Chicago Mercantile Exchange,
Inc.
Amy J. Benjamin of Darby & Darby PC for Globix Corporation.
_______
Before Simms, Chapman and Bottorff, Administrative Trademark
Judges.
Opinion by Chapman, Administrative Trademark Judge:
Chicago Mercantile Exchange, Inc. (a Delaware
corporation), successor in interest to P-M-T Limited
1 The records of the Assignment Branch of the USPTO show that
opposer’s pleaded registrations are now owned by Chicago
Mercantile Exchange, Inc. (See Reel 2410, Frame 0641.)
Accordingly, Chicago Mercantile Exchange, Inc. is added to the
plaintiff portion of the caption of this proceeding.
2 Applicant’s change of name was noted in the Board order dated
May 30, 2002.
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Opposition Nos. 91117543, 91117620 & 91123117
2
Partnership (hereinafter opposer or CME) has opposed three
applications filed on April 28, 1998, all seeking
registration on the Principal Register; all owned by Globix
Corporation (a Delaware corporation) (by change of name from
Bell Technology Group, Ltd.) (hereinafter applicant); and
all based on applicant’s assertion of a bona fide intention
to use the mark in commerce in connection with the
identified services.
Application Serial No. 75475753 (the subject of
Opposition No. 91117543) is for the mark GLOBIX
COMMUNICATIONS. Applicant disclaimed the word
“communications.”
Application Serial No. 75475505 (the subject of
Opposition No. 91117620) is for the mark GLOBIX CORPORATION.
Applicant disclaimed the word “corporation.”
Application Serial No. 75476115 (the subject of
Opposition No. 91123117) is for the mark GLOBIX.
All three applications are for the following services:
“wholesale distributorships, retail
store services and on-line retail store
services featuring computer hardware” in
International Class 35;
“leasing of office space, namely,
leasing space for computer hardware used
by others in hosting websites” in
International Class 36;
“training in the use of computer
hardware and software in connection with
global computer network access” in
International Class 41; and
Opposition Nos. 91117543, 91117620 & 91123117
3
“providing multiple user access to a
global computer information network for
the transfer and dissemination of a wide
range of information; hosting the
websites of server for a global computer
network; leasing computer facilities,
namely, leasing space for computer
hardware used by others in hosting
websites; and support services in
connection with computer hardware,
software and global computer network
access, namely, computer consulting,
installation of computer software and
technical support services, namely,
troubleshooting of computer hardware and
software problems via telephone, e-mail
and in person” in International Class
42.
Application Serial No. 75476115, for the mark GLOBIX,
includes the above four classes of services plus one
additional class of services identified as follows:
“support services in connection with
computer hardware, software and global
computer network access, namely,
computer installation and repair,
installation of computer networks and
installation of computer systems” in
International Class 37.
As grounds for opposition, opposer made essentially the
same allegations in its three notices of opposition, namely,
that it owns Registration Nos. 1,576,888 and 2,448,961, both
for the mark GLOBEX, for “conducting courses, seminars and
computerized training in trading contracts for securities,
commodities, and monetary and financial instruments on a
Opposition Nos. 91117543, 91117620 & 91123117
4
futures exchange” in International Class 41,3 and
“conducting commodities, securities, monetary and financial
instruments futures and options exchange services” in
International Class 364; that opposer and its predecessors
in interest have continuously used the GLOBEX mark for the
educational services since June 1988 and for the exchange
services since 1992; and that applicant’s mark, when used in
connection with its services, so resembles opposer’s
previously used and registered mark GLOBEX, as to be likely
to cause confusion, mistake, or deception in contravention
of Section 2(d) of the Trademark Act.5
Opposer specifically describes its business in the
notices of opposition (paragraphs 7-8) as follows:
7. In 1988, [CME] began offering the
Educational Services in preparation for
the launch of the GLOBEX Exchange
Services. [CME] operates a futures and
options exchange offering inter alia
currency, interest rate and equity
index-based futures and options
contracts traded on the floor of the
[CME] by open outcry during defined
trading hours. The Opposer offers
3 Registration No. 1,576,888, issued January 9, 1990, Section 8
affidavit accepted, Section 15 affidavit acknowledged, renewed.
4 Registration No. 2,448,961, issued May 8, 2001. (Opposer pled
this as the application it was at the time opposer filed the
notices of opposition.)
5 Opposer also pled a claim of dilution under Section 43(c) of
the Trademark Act, 15 U.S.C. §1125(c), in each of the
oppositions. These three opposition proceedings were
consolidated by the Board in its order dated May 30, 2002. In
opposer’s brief on the consolidated case, opposer stated that it
is “no longer relying on dilution as a basis for opposing to
[sic] the applications.” (Brief, footnote 1.) Accordingly, the
Board will not further consider opposer’s claim of dilution under
Section 43(c) of the Trademark Act.
Opposition Nos. 91117543, 91117620 & 91123117
5
GLOBEX Exchange Services for trading
futures and options electronically
during hours when the [CME] trading
floor is closed and during other defined
hours creating a “virtual trading
floor.”
8. GLOBEX Educational Services provide
training in the use of software and
hardware to trade electronically on the
GLOBEX exchange. GLOBEX Exchange
Services may be accessed by users
through a choice of software interfaces
provided by the [CME] which link
proprietary software of member firms or
the software of independent vendors to
an electronic trading system.
In applicant’s answers filed in each of the three
oppositions, applicant denies the salient allegations of the
notices of opposition. There is one exception. Opposer
pled in paragraph 5 of each notice of opposition, inter
alia, that its mark is inherently distinctive; and that each
of applicant’s marks are “similar visually, phonetically and
connotatively insofar as it is believed that the Applicant’s
mark is derived from the phrase ‘Global Internet Exchange’
just as Opposer’s mark is derived from ‘Global Exchange.’”
Applicant denied the allegations of this paragraph in
Opposition Nos. 91117543 (GLOBIX COMMUNICATIONS) and
91123117 (GLOBIX). However, in Opposition No. 91117620
(GLOBIX CORPORATION) applicant “admits that in creating the
trademark GLOBIX, Globix considered the words ‘global
internet exchange’ because of its significance as a forum
whereby parties ‘peer’ or undertake to share their
Opposition Nos. 91117543, 91117620 & 91123117
6
respective networks with one another,” and applicant
otherwise denied the remaining allegations of that
paragraph.6
As noted above, opposer’s consented motion to
consolidate the three oppositions was granted, and the Board
consolidated the three oppositions in a May 30, 2002 order.
Both parties filed briefs on the consolidated case, and both
parties were represented at an oral hearing held before the
Board on October 9, 2003.7
The record consists of the pleadings (in all three
oppositions); the files of the three opposed applications;
opposer’s notice of reliance under Trademark Rule 2.122(e)
on (i) status and title copies of its pleaded registrations
6 Applicant pled certain “affirmative defenses.” However, these
“defenses” are generally more in the nature of further
explanation of applicant’s denials of opposer’s likelihood of
confusion and dilution claims.
However, the Board notes that applicant alleged mere
descriptiveness as an affirmative defense. Specifically, in
paragraph 13 of each of its three answers applicant stated that
“Opposer’s GLOBEX mark is merely descriptive of Opposer’s
services, has not acquired secondary meaning and, therefore, is
not entitled to protection.” Inasmuch as such an allegation
constitutes a collateral attack on the validity of opposer’s
pleaded registrations, it is required to be raised by way of a
counterclaim petition to cancel, which applicant has not done.
See Trademark Rule 2.106(b)(2)(ii), and TBMP §313 (2d ed. June
2003). In the present case, we note that opposer’s Registration
No. 1,576,888 is over five years old and, thus, mere
descriptiveness is not available as a ground for cancellation.
See Section 14(1) of the Trademark Act, 15 U.S.C. §1064(1).
Applicant’s allegations, when viewed in the context of the other
“affirmative defenses” in the answers, are being construed as an
assertion that opposer’s registered mark, GLOBEX, is highly
suggestive and hence is a weak mark.
7 The oral hearing included not only these three consolidated
oppositions, but also a fourth related opposition between these
Opposition Nos. 91117543, 91117620 & 91123117
7
parties (No. 91122818). That case was separately briefed and a
separate decision is being issued therein.
Opposition Nos. 91117543, 91117620 & 91123117
8
under Trademark Rule 2.122(d), and (ii) photocopies of
excerpted articles retrieved from the Nexis database;
applicant’s notice of reliance under Trademark Rule 2.122(e)
on (i) photocopies of articles from magazines and printouts
of excerpted stories retrieved from the Nexis database, and
(ii) photocopies of dictionary definitions of the word
“exchange”; and the testimonies, with exhibits, of the
following two witnesses:
(1) Ms. Arman Falsafi, opposer’s managing director of
global electronic trading and data (one deposition
taken by opposer on September 4, 2002 and one taken by
applicant on November 1, 2002); and
(2) Mr. Mitchell S. Moore, applicant’s director of
marketing (one deposition taken by opposer on October
9, 2002 and one taken by applicant on December 11,
2002).8
Preliminary Matter
In the briefs on the case (and at the oral hearing) the
parties disagreed as to whether opposer pled and/or proved
common law rights in its mark GLOBEX for services in
addition to those recited in opposer’s two pleaded
registrations. This issue arose through opposer referring
8 Both testimonies of Mr. Moore were submitted as “confidential.”
Opposition Nos. 91117543, 91117620 & 91123117
9
in its brief to providing various means of access to the
GLOBEX electronic trading exchange system and providing
“additional support services to its GLOBEX customers”
(opposer’s brief, p. 6, see also, p. 12), to which applicant
countered that the Board could consider only the
identifications of services set forth in opposer’s two
pleaded registrations, and that even if opposer does provide
various means of access to its electronic trading exchange
system as well as “additional support services,” they are
all merely incidental to opposer’s GLOBEX futures trading
service, and are not separate services subject to trademark
protection (applicant’s brief, pp. 4-7). Finally, in its
reply brief, opposer specifically asserted that it is
entitled to rely on any unregistered usage of the mark
GLOBEX which it can prove (opposer’s reply brief, pp. 3-4).
In our review of the notices of opposititon, it is
clear that opposer did not plead common law rights in the
mark GLOBEX for any additional services. However, it is
also clear that this issue was tried with the implied
consent of applicant, as applicant made no objection to Ms.
Arman Falsafi’s testimony or exhibits insofar as the
testimony addresses opposer’s additional services. See
Fossil Inc. v. Fossil Group, 49 USPQ2d 1451 (TTAB 1998).
Accordingly, we hold that the notices of opposition are
considered amended under Fed. R. Civ. P. 15(b) to conform to
Opposition Nos. 91117543, 91117620 & 91123117
10
the evidence, specifically, to include a claim of common law
rights in the mark GLOBEX for additional services.
Whether opposer proved any common law rights in the
mark GLOBEX for services other than those set forth in its
two pleaded registrations is fully discussed later herein.
Parties
The Chicago Mercantile Exchange was founded in 1898,
and is currently the largest futures exchange in the United
States. The products opposer trades are futures and options
on interest rates, equities, equity index products,
commodities, and foreign exchange.
In 1987, CME announced plans to develop a worldwide
after-hours electronic trading system; and in 1992 that
system was launched as the GLOBEX system. In its first
year, trading volume averaged under 1000 contracts per day,
and by 2002 the average daily volume was over 500,000
contracts per day.
Opposer’s customers include institutional groups such
as banks, pension funds and hedge funds, as well as
individuals. An individual customer must have an account
with a futures brokerage firm in order to trade on opposer’s
GLOBEX system. The majority of opposer’s top customers are
institutional.
Opposition Nos. 91117543, 91117620 & 91123117
11
CME advertises its GLOBEX services on billboards, in
newspapers and magazines (e.g., The Wall Street Journal,
Financial Times, Investor’s Business Daily, Barron’s), and
through direct mailings as well as seminars and conferences.
Opposer also participates in commodities and financial
industry trade shows such as Futures and Options World (FOW)
and Futures Industry Association (FIA).
Opposer’s worldwide marketing and advertising expenses
have totaled about $15.6 million for the years 1995-2002,
about 90% of which was for the United States. The worldwide
electronic trading direct revenues for 1995 to 2001 totaled
about $139 million, about 80-90% of which is for the United
States.9
Opposer has in the past provided space for computer
equipment for one customer as a special service. Opposer
does not provide Internet services such as hosting services
for third-party web sites, or retail store services for the
sale or leasing of computers. (First Falsafi dep., pp. 43-
45.) The Chicago Mercantile Exchange provides “side-by-side
trading” by which opposer means that there are computer
terminals around the pit that enable customers to trade
9 Opposer’s witness, Ms. Falsafi, did not define or explain
exactly what the term “revenue” means. (That is, are these
“revenue” figures opposer’s general profit, or trading fees paid
to opposer, or the total dollar value of the commodities and
securities traded?)
Opposition Nos. 91117543, 91117620 & 91123117
12
products both electronically and in the traditional manner
in the pit. (First Falsafi dep., p. 48). Opposer owns all
of the computer terminals in the pit, but some are assigned
to members who can then trade on the floor by accessing
computer terminals around any given pit and they can trade
on that terminal using the GLOBEX system or they can execute
paper orders in the pit. Some of these computer terminals
are assigned to individuals who pay a monthly fee therefor
and other computer terminals can be used by any members on
the floor on a first-come, first-serve basis.
Opposer is not aware of any instances of actual
confusion.
Opposer’s witness, Ms. Arman Falsafi, as Chicago
Mercantile Exchange, Inc.’s managing director of global
electronic trading and data, testified that she is
responsible for CME’s electronic trading business (that is,
GLOBEX), its information products business, and its
international offices. As she explained, GLOBEX from the
functional perspective is a fully electronic marketplace
where buyers and sellers interested in CME’s trading
products are able to execute orders and take positions in
those products through an all electronic processing
exchange; and from a practical perspective GLOBEX is a
“whole slew of software and hardware and networks and
servers and routers and all sorts of technology that has to
Opposition Nos. 91117543, 91117620 & 91123117
13
kind of come together to enable market participants to come
together and transact electronically.” (First Falsafi dep.,
pp. 8-9.)
The GLOBEX electronic trading system consists of a host
computer (mainframe), a network (communication lines and a
series of “concentrator” computers linking the host to all
users, and terminals (workstations through which users
access the GLOBEX system to trade and perform related
functions). (See e.g., First Falsafi dep., Exhibit Nos. 4,
p. 3 and 6, p. 5) Opposer will directly provide software,
called GLOBEX Trader software or they will provide a tool
kit, called API (application programming interface) to
connect through one’s own system to the GLOBEX system. Some
customers use both. Most of opposer’s GLOBEX trading
business comes through the use of the API program which is
used to build front-ends that talk to GLOBEX. (First
Falsafi dep., p. 38-39, second Falsafi dep., p. 7 and 11.)10
Opposer also provides a GLOBEX Control Center which is
“our customer support, help desk function that provides
market support for our customers” (e.g., status of an order,
10 Opposer’s registrations for the mark GLOBEX for exchange
services and for conducting courses thereon are not limited to
electronic exchange services or training thereon. However, with
regard to opposer’s assertion of common law rights in the mark
GLOBEX for additional services, the record is clear that GLOBEX
refers only to an electronic trading exchange service (and the
training therefor).
Opposition Nos. 91117543, 91117620 & 91123117
14
status of the network, report systems issues). (First
Falsafi dep., p. 10.)
Opposer interacts with a customer’s IT staff in order
to have opposer’s contractors (e.g., AT&T) install the lines
and telecommunications equipment necessary for use of the
GLOBEX trading software. (First Falsafi dep., pp. 50-51.)
Customers can use the GLOBEX Trading software on a
workstation provided by opposer or on their own workstation.
However, customers (i.e., Morgan Stanley) can also
access opposer’s GLOBEX system through their own software
that speaks to the GLOBEX system via opposer’s tool kit
(API--application programming interface).
During the second deposition of Ms. Falsafi (second
Falsafi dep., pp. 28-39) the witness was asked by
applicant’s attorney to look at seven of applicant’s
brochures, each on a different service offered by applicant,
and the witness was asked if opposer provided such a
service. Her responses were as follows: (1) with regard to
applicant’s “complex hosting solutions” (providing a
facility for customers to run their Internet applications
and provide access to them from the Internet), she stated
“no”; (2) with regard to “dedicated connectivity” (managing
a company’s connection to the Internet), she stated “no”;
(3) with regard to “data centers” (physical facilities that
house, inter alia, technical, executive and administrative
Opposition Nos. 91117543, 91117620 & 91123117
15
staff), she stated that opposer does provide some of the
services such as call management, incident tracking,
electricity and air conditioning, storing third-party
equipment, secure facility11; (4) with regard to “streaming
media,” she stated that opposer does stream GLOBEX seminars
and GLOBEX data to customers; (5) with regard to “Earth
Cache CDN service” (a content management service that
enhances delivery of web content to end users), she stated
that opposer offers web content to its customers, but not a
service that provides third-party delivery of web content;
(6) with regard to “hosted exchange” (hosting services for
things such as e-mail), she stated “no”; and (7) with regard
to “managed services” (monitoring, reporting and technical
care “to keep your hosting environment running at peak
performance”), she responded that she had difficulty
understanding what this one is, but she guesses it would be
hosting services on top of the hosting service already
discussed.
Applicant, Globix Corporation, is a provider of managed
Internet services (ISP), and thus, it offers services such
as complex Internet hosting, network services, advanced
Internet applications, web conferencing, e-mail and
messaging services, Internet security, computer facility
11 Ms. Falsafi testified that these services were provided to
European customers through opposer’s GLOBEX London hub (second
Opposition Nos. 91117543, 91117620 & 91123117
16
leasing to third parties. Applicant has offered its
services since July 1998. (Applicant’s Exhibit No. 46.)
Generally applicant’s customers are entities of all
types and sizes who want to be present on the Internet, but
cannot or do not want to do it themselves. One of
applicant’s customers is an online brokerage firm. (First
Moore dep., p. 13, applicant’s Exhibit No. 2.) Applicant
has attended Internet industry trade shows such as ComNet
and Internet World. Applicant advertises in newspapers and
magazines (e.g., The Wall Street Journal, The New York
Times, Internet World, Information Week); and it sends
direct mailings focused on specific product campaigns.
Applicant has a web site advertising its services thereon,
but it does not otherwise place advertisements on the
Internet. However, if a customer wishes it be known that
they are on the GLOBIX network or they are hosted at a
GLOBIX facility, they are permitted to use a “Powered by
GLOBIX” identifier.
Applicant conducts case studies (descriptions of
customer successes) and applicant puts out a newsletter
approximately monthly.
Applicant’s recent monthly marketing expenses are
generally in the six figures and its recent monthly revenues
are in the seven figures.
Falsafi dep., p. 32-33, and opposer’s Exhibit No. 19); and that
Opposition Nos. 91117543, 91117620 & 91123117
17
Standing
Opposer’s two pleaded registrations have been properly
made of record; and applicant did not contest opposer’s
standing. We find that opposer has established its
standing.
Priority
With regard to the issue of priority in relation to the
services set forth in opposer’s pleaded registrations, to
the extent that opposer owns valid and subsisting
registrations of its pleaded mark, the issue of priority
does not arise. See King Candy Company v. Eunice King’s
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974); and
Carl Karcher Enterprises Inc. v. Stars Restaurants Corp., 35
USPQ2d 1125 (TTAB 1995).
In these consolidated proceedings, opposer also asserts
common law rights in the mark GLOBEX for “additional support
services” (brief, pp. 5-6 and the chart p. 12). Opposer
specified these services as follows (reply brief, p. 4):
(1) providing GLOBEX Trading software to
access the GLOBEX electronic trading
system via the Internet or direct
access;
(2) providing access to the GLOBEX
system via direct connection to CME’s
trading floors;
opposer is discussing plans to do so in Chicago in 2003.
Opposition Nos. 91117543, 91117620 & 91123117
18
(3) providing a computer network
connection and telecommunications
equipment, together with requisite
computer hardware and software,
including dedicated PC workstations, to
enable access to the GLOBEX system from
a customer’s site;
(4) providing access to the GLOBEX
system through leased computer terminals
on CME’s trading floors;
(5) storage of customers’
telecommunications hardware and network
equipment at opposer’s facilities (under
development in the United States);
(6) providing system support and
workstation assistance via CME’s GLOBEX
Control Center; and
(7) computerized training in the use of
software and hardware to electronically
trade on the GLOBEX system.12
A party asserting a claim under Section 2(d) of the
Trademark Act must establish prior use of a trademark or
service mark, or trade name or other indication of origin.
As stated by the Court of Appeals for the Federal Circuit in
the case of Towers v. Advent Software Inc., 913 F.2d 942, 16
USPQ2d 1039, 1041 (Fed. Cir. 1990):
Under the rule of Otto Roth [Otto Roth & Co. v.
Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40 (CCPA
12 Opposer’s claim of common law rights in the mark GLOBEX for
this particular “additional” service, is unnecessary because
opposer pled and proved ownership of a registration for the mark
GLOBEX for “conducting courses, seminars and computerized
training in trading contracts for securities, commodities, and
monetary and financial instruments on a futures exchange.” Thus,
opposer need not rely on common law rights therein, and the Board
will not further consider this particular “additional” service in
the context of common law rights.
Opposition Nos. 91117543, 91117620 & 91123117
19
1981)], a party opposing registration of a trademark
due to a likelihood of confusion with his own
unregistered term cannot prevail unless he shows that
his term is distinctive of his goods, whether
inherently, or through the acquisition of secondary
meaning or through “whatever other type of use may have
developed a trade identity.” Otto Roth, 640 F.2d at
1320, 209 USPQ at 43.
That is, with regard to priority as to opposer’s common law
rights in the mark GLOBEX, opposer must show that its mark
is distinctive of its services, either inherently, or
through acquired distinctiveness, and opposer must then
prove prior use of the mark with regard to the additional
services.
We find opposer’s mark GLOBEX to be inherently
distinctive, albeit suggestive of a trading exchange which
can be carried out worldwide. In the context of the
specific additional services for which opposer asserts
common law rights, we also find the mark GLOBEX to be
inherently distinctive.
However, the record is very ambiguous and vague about
opposer’s additional services relating to access of
opposer’s GLOBEX electronic trading exchange system (as set
forth above), both as to (i) whether these are actually
separate services or whether they are ancillary or
incidental to opposer’s electronic trading exchange
services, and (ii) the specific dates of first use of the
mark in connection with the access services. See Martahus
v. Video Duplication Services Inc., 3 F.3d 417, 27 USPQ2d
Opposition Nos. 91117543, 91117620 & 91123117
20
1846 (Fed. Cir. 1993). See also, 3 J. Thomas McCarthy,
McCarthy on Trademarks and Unfair Competition §§20:17 and
20:18 (4th ed. 2001).
Simply stated, the evidence does not establish common
law rights for opposer in its GLOBEX mark for these various
access methods. That is, aside from its common law rights
in the mark GLOBEX for “help desk” services, opposer has
failed to prove common law rights in its mark for any of the
access services. Opposer explains in its brief (p. 5) that
“customers have a number of different ways of accessing
CME’s GLOBEX electronic trading services, depending on the
customers’ hardware and circuitry needs and capabilities.”
And opposer refers to these as “access options” or “access
alternatives.” Opposer then sets forth five different ways
of accessing its electronic trading services, specifically
(i) through the Internet or direct data connection, (ii)
through direct connection to opposer’s trading floor, (iii)
through opposer’s installing a computer network connection
and telecommunications equipment (with the required hardware
and software) enabling access from a customer’s site, (iv)
through leased computer terminals on opposer’s trading
floors, and (v) an access option available in Europe is
opposer’s storage of customers’ telecommunications hardware
and network equipment at opposer’s facilities, with direct
connections to opposer’s trading floors.
Opposition Nos. 91117543, 91117620 & 91123117
21
The record does not establish that these various ways
to access opposer’s GLOBEX trading system are separate
services offered by opposer under the mark GLOBEX, nor that
they would be recognized as such by purchasers. In fact, to
the contrary, opposer’s own marketing brochures (e.g.,
Exhibit Nos. 3 at page 3, 4 at page 3, and 6 at page 5 --
dated 1994, 1995 and 1992, respectively) refer to these
various features or methods of access as “the GLOBEX
system’s primary components.” Opposer uses a contractor
(AT&T) for its wide area network connection installations
(First Falsafi dep., p. 50; Second Falsafi dep., p. 21); and
opposer is not responsible for the Internet connections of
its customers (First Falsafi dep., p. 38). The fifth listed
method of access (storage of the customers’
telecommunication hardware and network equipment at
opposer’s facilities) is not offered in the United States.
(Second Falsafi dep., pp. 32-33).
The record falls far short of establishing that the
various (5) methods of accessing opposer’s GLOBEX electronic
trading system are separate services offered to customers
and that customers understand that they could purchase not
only use of opposer’s electronic trading exchange system,
but, in addition and as a separate service, the method of
access thereto.
Opposition Nos. 91117543, 91117620 & 91123117
22
In any event, all of the various methods of access are
not “related services” as argued by opposer, but rather are
incidental to opposer’s GLOBEX electronic trading exchange
system. Customers could not electronically trade in an
exchange environment without some type of access to the
electronic system. See In re Dr Pepper Co., 836 F.2d 508, 5
USPQ2d 1207 (Fed. Cir. 1987).
Even if these access methods were in fact separate
services and so perceived by consumers (which has not been
established herein), the record is vague as to specific
dates of first use for any of these asserted separate access
methods.
Based on the foregoing, opposer has not established
common law rights in its mark for these five asserted access
services.
Turning to opposer’s claim of common law rights in the
mark GLOBEX for the service of providing system support and
workstation assistance through its GLOBEX Control Center, we
find that opposer has established common law rights in the
mark for this service. Ms. Falsafi testified that the
GLOBEX Control Center is “our customer support, help desk
function that provides market support for our customers”;
and that this is “a help desk facility that customers call
into for anything from wanting to know the status of an
order to the status of the system, if there are any systems
Opposition Nos. 91117543, 91117620 & 91123117
23
issues, to the status of the network, so anything and
everything to do with GLOBEX production support they would
call into the GLOBEX Control Center.” (First Falsafi dep.,
p. 10.)
Opposer’s first use of the mark GLOBEX in connection
with these services is 1992. Opposer’s marketing brochure,
published and distributed in 1992, refers to “GLOBEX CONTROL
CENTER/INFORMATION & ASSISTANCE … GCC staff also assists
users with technical difficulties and in the operation of
terminals and with trading inquiries.” (Exhibit No. 6, at
page 15.)
In sum, we find that priority does not arise as an
issue with regard to the services identified in opposer’s
two registrations; that opposer has established common law
rights in its mark only in connection with its “help desk”
GLOBEX Control Center functions; and that opposer has proven
common law rights in its GLOBEX mark for this service prior
to the earliest date on which applicant can rely for its
marks, GLOBIX COMMUNICATIONS, GLOBIX CORPORATION and GLOBIX,
which is the filing date of its applications, April 28,
1998. (The record shows that applicant’s earliest first use
of its three GLOBIX marks in connection with its various
services is July 20, 1998. See second Mitchell Moore dep.,
p. 39; Exhibit No. 46, applicant’s advertisement in Crain’s
New York Business, July 20, 1998.)
Opposition Nos. 91117543, 91117620 & 91123117
24
Likelihood of Confusion
Our determination of likelihood of confusion is based
on an analysis of all of the 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 (CCPA 1973). See also, In re
Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d
1201 (Fed. Cir. 2003). Based on the record before us, we
find that confusion is not likely.
Opposer argues the following du Pont factors:
the marks are similar in sound, appearance,
connotation and commercial impression;
opposer’s mark is a strong, well-known mark as
used in connection with opposer’s trading
services, and is entitled to a broad scope of
protection;13
the parties’ respective services are closely
related as applicant’s identifications of services
are broad and encompass services that opposer
performs in connection with its electronic trading
services, or that are related to those services;
the parties’ respective services are offered
through similar channels of trade;
applicant markets its services to a broad range of
consumers including consumers in the finance and
banking industries and even in the online
financial trading industry;
applicant exaggerates the sophistication of the
relevant consumers; and
13 Opposer does not contend that its mark is famous under the du
Pont factors.
Opposition Nos. 91117543, 91117620 & 91123117
25
the absence of instances of actual confusion is
entitled to little, if any, weight as the test is
likelihood of confusion, not actual confusion.14
Applicant argues the following du Pont factors:
the parties’ respective services differ
significantly and are not related;
the parties’ respective services are marketed
through different trade channels to different
purchasers;
the relevant consumers are highly sophisticated,
and the parties’ respective services are not
purchased on impulse;
the marks are dissimilar;
there is no evidence of actual confusion despite
over five years of co-existence; and
there is only a de minimis possibility of
confusion.
The first du Pont factor we consider is the similarity
or dissimilarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression.
Opposer contends that its mark GLOBEX and applicant’s
mark GLOBIX are similar varying by only one letter; that the
differing letters are both vowels; and that the addition of
the descriptive, if not generic, words COMMUNICATIONS and
CORPORATION to two of applicant’s marks, does not
distinguish those marks from opposer’s mark.
14 Opposer also argues the legal principles that (i) applicant did
not meet its duty to select a mark that avoids the likelihood of
confusion; and (ii) any doubt on the issue of likelihood of
confusion is resolved in favor of opposer, the senior user.
Opposition Nos. 91117543, 91117620 & 91123117
26
Applicant contends that each of applicant’s marks must
be compared to opposer’s mark; that the marks must be
considered in their entities and not dissected; that there
is no evidence that the suffix “ix” is pronounced the same
as the suffix “ex”; and that the parties’ marks, when each
is considered as a whole, are not similar.
It is well settled that marks must be considered in
their entireties because the commercial impression of a mark
on an ordinary consumer is created by the mark as a whole,
not by its component parts. This principle is based on the
common sense observation that the overall impression is
created by the purchaser’s cursory reaction to a mark in the
marketplace, not from a meticulous comparison of one mark to
another to assess possible legal differences or
similarities. See 3 J. Thomas McCarthy, McCarthy on
Trademarks and Unfair Competition, §23:41 (4th ed. 2001).
See also, Puma-Sportschuhfabriken Rudolf Dassler KG v.
Roller Derby Skate Corporation, 206 USPQ 255 (TTAB 1980).
Applicant acknowledges that the terms GLOBEX and GLOBIX
are the dominant elements of both party’s mark(s). (Brief,
p. 14.) See In re National Data Corp., 753 F.2d 1056, 224
USPQ 749 (Fed. Cir. 1985). However, as the Board stated in
the case of Sports Authority Michigan Inc. v. PC Authority
Inc., 63 USPQ2d 1782, at 1792 (TTAB 2002):
It need not automatically follow,
however, that, merely because marks
Opposition Nos. 91117543, 91117620 & 91123117
27
have the same dominant element,
they are pronounced the same, look
the same or present the same
overall commercial impression.
In this case, we acknowledge that, when spoken, the
marks sound similar. However, when considered in their
entireties, opposer’s mark and each of applicant’s marks do
not look the same. While they share the first four letters
in common, the suffix is not the same, and two of
applicant’s marks also include additional words
(“communications” and “corporation”). We find the marks are
dissimilar in appearance.
In terms of connotation, opposer’s mark ends in “ex”
and relates to the term “globe,” whereas applicant’s marks
(consisting of or including the word GLOBIX) could relate to
the idea of “glo” in the sense of “glow” with a suffix of
“bix.” Even if one assumes that the public will perceive
applicant’s GLOBIX mark as consisting of the syllable “glob”
in the sense of “globe” and the suffix “ix,” the record does
not include evidence that the suffixes “ex” and “ix” share
the same or similar meaning. Applicant put into the record
the Merriam-Webster’s Collegiate Dictionary definition of
“exchange” as “…5: a place where things or services are
exchanged: as a: an organized market or center for trading
in securities or commodities.” The suffix “ex” would be
perceived by purchasers in relation to opposer’s trading
exchange services as exactly that, a trading exchange,
Opposition Nos. 91117543, 91117620 & 91123117
28
presumably either available from or involving securities and
commodities from around the world. As pleaded by opposer
and admitted by applicant in one of the three opposition
proceedings, the suffix “ix” in applicant’s mark relates to
“Internet exchange” in the context of applicant’s services.
In fact, applicant almost universally uses the words “The
Global Internet Exchange” with the mark GLOBIX. Thus,
purchasers would perceive applicant’s mark as relating to
the Internet.
We find that opposer’s mark GLOBEX and applicant’s
three marks GLOBIX, GLOBIX COMMUNICATIONS and GLOBIX
CORPORATION are not similar in appearance, connotation or
overall commercial impression. See In re Hearst Corp., 982
F.2d 493, 25 USPQ2d 1238 (Fed. Cir. 1992); Swatch Watch,
S.A. v. Taxor Inc., 785 F.2d 956, 229 USPQ 391 (11th Cir.
1986); In re Digirad Corp., 45 USPQ2d 1841 (TTAB 1998); and
Burns Philip Food Inc. v. Modern Products Inc., 24 USPQ2d
1157 (TTAB 1992), aff’d unpub’d, but appearing at 1 F.3d
1252, 28 USPQ2d 1687 (Fed. Cir. 1993).
Opposer contends that its mark is “strong and entitled
to broad legal protection” (brief, p. 10), deriving its
strength from both its inherent distinctiveness and
opposer’s extensive use and promotion of its mark in the
marketplace.
Opposition Nos. 91117543, 91117620 & 91123117
29
Applicant contends that even if opposer has a strong
mark (which applicant does not concede has been proven by
opposer -- applicant’s brief, p. 15), the strength of
opposer’s mark in these consolidated oppositions does not
reach the same level as the fame found for the mark PLAY-DOH
in the case of Kenner Parker Toys, Inc. Rose Art Industries
Inc., 963 F.2d 350, 22 USPQ2d 1453 (Fed. Cir. 1992); and
that, in any event, here the alleged strength of opposer’s
mark should not be a single dispositive factor.
While the Chicago Mercantile Exchange was founded over
100 years ago and opposer, CME, is currently the largest
futures exchange in the United States, that does not
establish that its mark for its electronic trading exchange
system, GLOBEX, is well-known to purchasers or potential
purchasers. Opposer has used its GLOBEX mark for its
electronic trading exchange services since 1992, and has
spent approximately $1.8 million per year from January 1995
to August 2002 on advertising and promotion in the United
States, receiving revenues of approximately $119,000,000
total from 1995-2001 in the United States. (As explained
previously, the term “revenue” is not defined or explained
by opposer, i.e., whether it refers to the total value of
the commodities, securities, options and the like which are
traded, or if it refers to fees paid to opposer, or if it
refers to opposer’s general profit.)
Opposition Nos. 91117543, 91117620 & 91123117
30
Opposer submitted a notice of reliance on the entire
set of excerpted stories retrieved from the Nexis database
from opposer’s search of “globex w/25 chicago mercantile
exchange or cme and date aft 1991,” resulting in 876
excerpted stories. A review of these stories shows that
many are from foreign publications, many are repeats of the
same story, some are too cursory to understand the context,
and many are not particularly convincing uses of GLOBEX as
opposer’s service mark. While we acknowledge that there are
clearly many uses within these 876 excepted stories which
are in U.S. publications and which clearly refer to
opposer’s electronic trading exchange system, nonetheless,
we do not find that this type of evidence is particularly
convincing that there is widespread attention to and fame of
opposer’s GLOBEX mark for its services. As the Court of
Appeals for the Federal Circuit said in a slightly different
context, in In re Societe Generale des Eaux Minerales de
Vittel S.A., 824 F.2d 957, 3 USPQ2d 1450, 1451 (Fed. Cir.
1987), “It is indeed remarkable to see the thoroughness with
which NEXIS can regurgitate a placename casually mentioned
in the news.”
Based on the record before us, we find that opposer’s
mark has achieved at least some renown, but the renown of
marks is relative, not absolute, and opposer’s mark GLOBEX
is not on a par with marks such as PLAY-DOH. See Sports
Opposition Nos. 91117543, 91117620 & 91123117
31
Authority v. PC Authority, supra, 63 USPQ2d at 1796.
Opposer has not established that its mark is entitled to a
broad scope of protection.
Turning to the du Pont factor of the similarity or
dissimilarity and nature of the services, we first consider
each of applicant’s services (in International Classes 35,
36, 37, 41 and 42) and opposer’s registered services
(International Classes 36 and 41). With regard to these
services, in Board proceedings, the issue of likelihood of
confusion must be determined in light of the goods or
services as identified in the involved application(s) and
registration(s). See Octocom Systems Inc. v. Houston
Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed.
Cir. 1990); and Canadian Imperial Bank of Commerce, N. A. v.
Wells Fargo Bank, 811 F.2d 490, 1 USPQ2d 1813, 1815 (Fed.
Cir. 1987). It is not necessary that the goods or services
be identical or even competitive; rather, it is sufficient
that the goods or services are related in some manner and
that the circumstances surrounding their marketing are such
that they would likely be encountered by the same persons
under circumstances that could give rise to the mistaken
belief that the goods or services emanate from or are
associated with the same source. See In re Peebles Inc., 23
USPQ2d 1795, 1796 (TTAB 1992); and In re International
Opposition Nos. 91117543, 91117620 & 91123117
32
Telephone and Telegraph Corporation, 197 USPQ 910 (TTAB
1978).
As previously stated applicant’s services are
identified as follows:
“wholesale distributorships, retail
store services and on-line retail store
services featuring computer hardware” in
International Class 35;
“leasing of office space, namely,
leasing space for computer hardware used
by others in hosting websites” in
International Class 36;
“support services in connection with
computer hardware, software and global
computer network access, namely,
computer installation and repair,
installation of computer networks and
installation of computer systems” in
International Class 37.
“training in the use of computer
hardware and software in connection with
global computer network access” in
International Class 41; and
“providing multiple user access to a
global computer information network for
the transfer and dissemination of a wide
range of information; hosting the
websites of server for a global computer
network; leasing computer facilities,
namely, leasing space for computer
hardware used by others in hosting
websites; and support services in
connection with computer hardware,
software and global computer network
access, namely, computer consulting,
installation of computer software and
technical support services, namely,
troubleshooting of computer hardware and
software problems via telephone, e-mail
and in person” in International Class
42.
Opposition Nos. 91117543, 91117620 & 91123117
33
Opposer’s services, as identified in its registrations,
are as follows:
“conducting commodities, securities,
monetary and financial instruments
futures and options exchange services”
in International Class 36; and
“conducting courses, seminars and
computerized training in trading
contracts for securities, commodities,
and monetary and financial instruments
on a futures exchange” in International
Class 41.
Upon careful analysis of the parties’ respective
identified services, we disagree with opposer’s argument
that applicant’s identifications of services are so broadly
worded as to encompass opposer’s educational services and
trading exchange services. To the contrary, applicant
offers the services such as selling wholesale
distributorships and retail store services featuring
computer hardware; leasing space for computer hardware used
by others in hosting websites; installing computer network
and systems in relation to Internet access; training in the
use of computer hardware and software for gaining Internet
access; and providing multiple user access to the Internet,
hosting websites of servers for the Internet, and support
services in connection with computer software and hardware
and Internet access. Opposer, on the other hand, offers a
trading exchange service specifically involving trading of
commodities, futures, options, securities, and monetary and
Opposition Nos. 91117543, 91117620 & 91123117
34
financial instruments; and courses in conducting such
trades.
In our view, giving a reasonable reading of these
identifications of services, applicant’s services simply do
not encompass opposer’s services. The relationship of
opposer’s and applicant’s respective identified services is
extremely tangential at best. Ms. Falsafi testified that
opposer does not provide Internet access or support
therefor; lease space for customers’ computer hardware;
provide hosting services such as e-mail; provide hosting
services for customers’ web sites; provide retail store
services for computer products; train others in third-party
computer hardware or software. (Second Falsafi dep., pp.
29, 30, 33, 38, 39.) Moreover, the record does not include
evidence that the parties’ respective services are offered
by the same entity, which could make consumers more likely
to assume the same source.
Of course, opposer is correct that it is entitled to
rely on common law rights in its mark for additional
services in connection with which it has established
priority. As explained previously herein, the only
additional service in connection with which opposer has
established common law rights in its mark is its “help desk”
functions offered through its GLOBEX Control Center.
Opposer contends that these services are similar to
Opposition Nos. 91117543, 91117620 & 91123117
35
applicant’s “support services in connection with computer
hardware and software.” (Brief, p. 12.) However, opposer
did not include applicant’s entire identification, which is
“support services in connection with computer hardware,
software and global computer network access, namely [e.g.,
installation and repair]. (Emphasis added.) Opposer
neglects the fact that applicant’s identified services
relate to Internet access, whereas opposer’s own services
(both as registered and its common law rights in its mark
for opposer’s “help desk” functions), relate to trading
exchange services and teaching customers regarding such
trading, and answering questions customers have regarding
opposer’s electronic trading exchange system. Inasmuch as
computers are ubiquitous in virtually all fields of commerce
and business, the mere fact that all of the parties’
respective services may in some manner involve or relate to
computers, does not make them related such that consumers
would believe they emanate from the same source. See
Electronic Data Systems Corp. v. EDSA Micro Corp., 23 USPQ2d
1460, 1463 (TTAB 1992); and Reynolds & Reynolds Co. v. I.E.
Systems Inc., 5 USPQ2d 1749, 1751 (TTAB 1985).
Opposer has not established that applicant’s services
and opposer’s services (registered and common law) are
related within the meaning of the Trademark Act.
Opposition Nos. 91117543, 91117620 & 91123117
36
With regard to the channels of trade, applicant and
opposer generally advertise and market through different
trade shows, different printed publications and direct
mailings to specific groups. However, opposer is correct
that there are no limitations in either party’s
identifications of services as to trade channels and/or
purchasers. Thus, we must assume that the parties’
respective services could be offered through at least
overlapping channels of trade.
We turn then to the du Pont factors involving the
conditions of sale, the purchasers of these services, and
their sophistication. Opposer contends that applicant sells
its services to a broad range of consumers including those
in the finance and banking industry, and even to those in
the trading industry; that consumers could encounter both
opposer’s mark and applicant’s marks in a “single Internet
session” (brief, p. 13); and that “applicant improperly
relies on extrinsic evidence” (reply brief, p. 5) regarding
the “specialized technical services” directed to
“sophisticated consumers” when the identifications are not
so limited.15
15 The parties’ respective identifications of services
intrinsically indicate that these are not simple general consumer
services (e.g., dry cleaners, grocery stores), but involve
complex services involving consumers’ money and businesses.
Moreover, both witnesses testified as to such matters.
Opposition Nos. 91117543, 91117620 & 91123117
37
Applicant contends that the parties’ services are
marketed in different ways to different consumers; that the
consumers of the parties’ respective services are
sophisticated and knowledgeable regarding what they are
purchasing; and that opposer’s speculation that both
parties’ marks could be encountered in a single Internet
session is just that--speculation, with no evidence thereof,
and even if true, it would not make all goods and services
available through the Internet related. Specifically,
applicant points out that it attends only trade shows in its
Internet industry, such as ComNet and Internet World, while
opposer attends the Futures and Options World (FOW) and
Futures Industry Association (FIA) trade shows; applicant
advertises in Internet World, Information Week, while
opposer advertises in Barron’s, Financial Times, Investor’s
Business Daily;16 and applicant generally sends direct
mailings to medium-sized companies while opposer engages in
direct mailings to banks, hedge funds, pension funds, and
individual traders.
Inasmuch as applicant’s services are not limited as to
purchasers, we find that there are at least overlapping
classes of purchasers.
However, key du Pont factors in this case, and which
favor applicant, are the sophistication of the purchasers
16 Both parties advertise in The Wall Street Journal.
Opposition Nos. 91117543, 91117620 & 91123117
38
and the conditions of sale of the services. Opposer must
prove that there is a likelihood of confusion among the
purchasers for the parties’ respective services. See
Electronic Design & Sales v. Electronic Data Systems, 954
F.2d 713, 21 USPQ2d 1388, 1391 (Fed. Cir. 1992). As the
Court stated in the Electronic Design & Sales case, 21
USPQ2d at 1392: “Where the purchasers are the same, their
sophistication is important and often dispositive because
‘[s]ophisticated consumers may be expected to exercise
greater care.’”
The purchasers here are sophisticated and
knowledgeable. Opposer’s purchasers are either the
personnel at institutions such as banks, hedge funds and
pension funds, or the individual customers (who are required
to have an account with a firm that provides futures
brokerage services in order to obtain opposer’s GLOBEX
trading exchange service), all of whom desire to engage in
the trading exchange at the CME on its GLOBEX system. Even
opposer’s witness Ms. Falsafi testified that it is in the
best interest of their customers to be educated if they want
to engage in such trading. (First Falsafi dep., p. 43.)
Likewise, purchasers of applicant’s various services (e.g.,
wholesale distributorships; hosting the web sites of
servers; leasing space for computer hardware used by others
for hosting web sites; and support services in connection
Opposition Nos. 91117543, 91117620 & 91123117
39
with Internet access) are customers who need web site
hosting, data servers, and other Internet related
capabilities. Applicant generally deals with the customer’s
IT (information technology) personnel.
We find the sophistication of the purchasers, and the
complex nature of the respective services and the differing
conditions of sale to be important factors in this
consolidated case.
With regard to the du Pont factor relating to actual
confusion, the parties have co-existed since 1998, with
advertisements in media nationwide in scope (including in
The Wall Street Journal), and with significant respective
revenues indicating high sales volumes. Yet opposer is not
aware of any instances of actual confusion. (First Falsafi
dep., p. 43.) Considering the length of contemporaneous use
and the relative success of the parties’ sales of their
respective services sold under their respective marks, it is
noteworthy that there have been no reported instances of
actual confusion involving potential purchasers or
purchasers of the involved services. See Sports Authority
Michigan Inc. v. PC Authority Inc., supra.
Although proof of actual confusion is not required to
prove likelihood of confusion, in the circumstances of this
consolidated case, we find that the lack of any instances of
actual confusion favors applicant.
Opposition Nos. 91117543, 91117620 & 91123117
40
Finally, we consider the du Pont factor on the extent
of potential confusion, i.e., whether de minimis or
substantial. The record before us shows that there is at
most a de minimis chance that consumers would confuse the
source of opposer’s and applicant’s respective services.
There must be shown more than a mere possibility of
confusion; instead, there must be demonstrated a probability
or likelihood of confusion. See Electronic Design & Sales
v. Electronic Data Systems, supra, 21 USPQ2d at 1391,
quoting from Witco Chemical Co. v. Whitfield Chemical Co.,
418 F.2d 1403, 164 USPQ 43, 44-45 (CCPA 1969) as follows:
“We are not concerned with mere theoretical possibilities of
confusion, deception, or mistake or with de minimis
situations but with the practicalities of the commercial
world, with which the trademark laws deal." See also,
Triumph Machinery Company v. Kentmaster Manufacturing
Company Inc., 1 USPQ2d 1826 (TTAB 1987). The Trademark Act
does not speak in terms of remote possibilities of
confusion, but rather, the likelihood of such confusion
occurring in the marketplace. In this consolidated case, we
find that the likelihood (or even the possibility) of
confusion is remote.
Upon balancing all of the relevant du Pont factors in
this consolidated case, and giving each relevant factor the
appropriate weight, we hold that confusion is unlikely.
Opposition Nos. 91117543, 91117620 & 91123117
41
Decision: The three oppositions are each dismissed.