Computer Geeks, Inc.v.Compgeeks.com

Trademark Trial and Appeal Board

Mar 4, 2010

No. 91170726 (T.T.A.B. Mar. 4, 2010)

Mailed: March 4, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Computer Geeks, Inc.
v.
Compgeeks.com
_____

Opposition No. 91167886
Opposition No. 91170726
Cancellation No. 92046567
_____

Jane Shay Wald of Irell & Manella, LLP, for Computer Geeks,
Inc.

Lisa Greenwald-Swire of Fish & Richardson P.C., for
Compgeeks.com.
_____

Before Hairston, Zervas and Ritchie, Administrative
Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:

The opposer and petitioner in this case is Computer
Geeks, Inc. (“Plaintiff”). The applicant and respondent is
Compgeeks.com (“Defendant”). Defendant’s mark at issue in
the opposition proceedings is COMPUTER GEEKS for:
1. “Retail store services featuring computer-
related items, including hardware, software
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Opposition No. 91167886
Opposition No. 91170726
Cancellation No. 92046567

2
and computer peripherals”, in International
Class 35;1
2. “Computer consulting services primarily
focusing on computer repairs, teaching
individuals and small businesses to
effectively utilize computer resources at
hand,” in International Class 42;2
3. “Computer hardware, computer software for
making computer hardware, namely, drivers,
mouseports, printer drivers compatible with
computer applications,” in International Class
9,3 and
4. “On-line retail and wholesale store services
featuring computer hardware, computer software
and computer peripherals,” in International
Class 35.4
Defendant’s mark at issue in the cancellation
proceeding is COMPGEEKS.COM for:

1 Application Serial No. 78380877, filed March 9, 2004, claiming
a date of first use anywhere and first use in commerce on April
8, 1995, in both classes, and disclaiming the exclusive right to
the term “COMPUTER” apart from the mark as shown.
2 Id.
3 Application Serial No. 78258431, filed June 4, 2003, claiming
first use anywhere and first use in commerce on February 1, 1996
for both classes, and claiming Section 2(f) acquired
distinctiveness as to the entire mark.
4 Id.
Opposition No. 91167886
Opposition No. 91170726
Cancellation No. 92046567

3
1. “Computerized on-line ordering services in the
field of computer software, computer hardware,
computer peripherals and accessories,” in
International Class 35, and
2. “Computer services, namely, providing search
engines for obtaining data on global computer
network,” in International Class 42.5
The cases involve the same parties and common questions
of law and fact. Upon consented motion by the parties, the
three cases were consolidated via an order of the Board
dated August 3, 2006. However, as the order noted, each
case maintains its independent identity.
In its notices of opposition, Plaintiff asserts
priority based on continuous use of the mark COMPUTER GEEKS
in commerce in connection with the services listed in its
pending trademark application “for a wide variety of
computer-related goods and services” and likelihood of
confusion. (Notices at Para. 1, 5 - 7). Defendant denied
the salient allegations in its answers and set forth various
affirmative defenses.6
In its petition for cancellation, Plaintiff alleges
priority based on its common law use of the mark COMPUTER

5 Registration No. 2499396, issued October 23, 2001, claiming
first use anywhere and first use in commerce on February 1, 1996
for both classes. Section 8 affidavit accepted.
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GEEKS for various computer goods and services since prior to
Defendant’s alleged date of first use of its mark (para. 7);
and the following: “Insofar as the subject Reg. No. 2499396
is asserted by the Registrant (who is also the owner of
Applications Ser. No. 78/380,877 and 78/258,431) as a
defense to the pending Consolidated Opposition, then
Petitioner believes it will be damaged by the continued
registration of the mark of 2499396.” (Petition at Para. 6).
(Id. at Para. 7). We do not recognize this allegation as
raising a legally sufficient claim, and likelihood of
confusion is neither mentioned in the petition itself nor in
Plaintiff’s trial brief (with regard to the registration).
Defendant denied the salient allegations in its answer to
the petition and set forth various affirmative defenses,
including that Plaintiff “fails to state a claim on which
relief can be granted.” We agree.
In its brief, Plaintiff argues that Defendant’s
registration for the COMPGEEKS.COM mark should be cancelled
on the grounds of genericness and mere descriptiveness.
Defendant timely objected to these grounds as unpleaded.
Plaintiff in reply urges us to consider the pleadings
amended under the provisions of Section 15(b) of the Federal
Rules of Civil Procedure. In support of its argument for

6 Defendant did not pursue its Morehouse affirmative defense to
the oppositions on brief. Thus we deem it to be waived.
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Opposition No. 91170726
Cancellation No. 92046567

5
adding the grounds, Plaintiff referenced the following
testimony by Mr. Kusel, Defendant’s witness (Plaintiff’s
brief at 13-15):
Q: Would you explain to us what Computer Geeks means to
you?

A: People that play with computers, live with
computers, their life is computers; are computers
geeks. So it’s a – a geek.
(Id. at 14, citing Kusel May 23 Depo at 159).

However, Mr. Kusel’s testimony arose in the course of
discussing Defendant’s policing efforts. Furthermore, the
testimony referenced the mark COMPUTER GEEKS, not
COMPGEEKS.COM. At no point during trial were Defendant or
its counsel put on notice that Plaintiff intended to argue
that Defendant’s COMPGEEKS.COM mark is generic or merely
descriptive. Accordingly, Defendant’s objection is
sustained.7
We find that Plaintiff has not coupled its claim of
priority with one of likelihood of confusion in its petition
to cancel. We find further that the issue of likelihood of
confusion regarding Defendant’s registered mark has not been
tried by the consent of the parties. Accordingly, we find
that there is no legally recognizable claim in Plaintiff’s

7 The objection is sustained as to the oppositions as well, to
the extent that Plaintiff asserted genericness and mere
descriptiveness in the brief. We consider the oppositions only
on the claims of priority and likelihood of confusion. Since
there are no counterclaims pending, and no other claims beyond
priority and likelihood of confusion, we will only consider those
Opposition No. 91167886
Opposition No. 91170726
Cancellation No. 92046567

6
petition for cancellation. Therefore, the cancellation is
dismissed.
We turn then to the single ground pleaded and argued in
the oppositions, namely, that of priority and likelihood of
confusion.
The Record and Evidentiary Issues
The record in the oppositions includes the pleadings
and the file of the involved applications. In addition,
both parties filed Notices of Reliance during their assigned
testimony periods, submitting, among other things, various
discovery depositions which were stipulated into the
record.8 Additionally, the record includes the following
testimonial depositions:
1. Stephen A. Lonn, President of Computer Geeks,
Inc., by Plaintiff, on September 11, 2008.
2. Compgeeks.com, Genica Corporation, and Scott
E. Kusel, by Plaintiff, on January 30, 2009.9

claims and defenses to priority and likelihood of confusion that
were validly pleaded and argued, as discussed in this decision.
8 Although the record only contains a reference to a stipulation
by the parties to the entry of the discovery deposition of
witnesses Scott E. Kusel and Frank Segler (as read into the Lonn
September 11 Depo. at 8), it is clear that both parties acceded
to the entry of the discovery depositions via Notice of Reliance
and waived any objections thereto by treating them in their
briefs as being of record and by referencing them as well.
9 Mr. Kusel had been the Fed. R. Civ. P. 30(b)(6) witness for
Defendant. The parties then agreed by stipulation for him to
continue to testify both in his individual capacity as well as on
behalf of the corporations at trial. (Kusel January 30 Depo. at
7-8 and Exs. 1 and 2.)
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Cancellation No. 92046567

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3. Scott E. Kusel, President of Compgeeks.com, by
Defendant, on March 26, 2009.
Plaintiff objected to Exhibits 3 and 4 of Defendant’s
Notice of Reliance, stating in its brief that they appear to
“rely only on documents ‘produced in discovery by Applicant’
as their evidentiary basis.” (Plaintiff’s brief at 4). The
exhibits referred to by Plaintiff are indeed referred to by
Defendant as its own “Documents Numbers AP 644-660” and “AP
694-717,” respectively. Plaintiff is correct that this is
not a basis for submitting documents under a Notice of
Reliance. See Trademark Rule 2.120(j)((3)(ii) and TBMP §
704.11 (2d ed. rev. 2004). However, they are all admissible
under Trademark Rule 2.122(e) as official records of the
USPTO, except for Document No. 644, which is Defendant’s own
Registration No. 2087121 for the mark COMPUTER GEEKS.10 As
a registration owned by a party, this registration must be
submitted in accordance with Trademark Rule 2.122(d)(2).
Thus, with the exception of Doc. no. 644, Plaintiff’s
objection to these documents is overruled. As for Document
No. 644, this document was not properly submitted into
evidence as a status and title copy as required by Rule
2.122(d)(2).

10 Our decision in this case would not be any different if we
sustained Plaintiff’s objection because a different version of
the same registration was entered into the record as Exhibit 3 to
Opposition No. 91167886
Opposition No. 91170726
Cancellation No. 92046567

8
For its part, Defendant objected to Plaintiff’s
testimonial depositions as not having been properly made of
record in a timely fashion. Defendant did not complain of
prejudice, nor that it had not received the deposition
transcripts in a timely manner, but only that they had not
been properly made of record. The relevant rule states:
All depositions which are taken must be duly filed
in the Patent and Trademark Office. On refusal to
file, the Office at its discretion will not
further hear or consider the contestant with whom
the refusal lies; and the Office may, at its
discretion, receive and consider a copy of the
withheld deposition, attested by such evidence as
is procurable.
37 C.F.R. §2.123(h)
Since Plaintiff did ultimately file the depositions with the
Board, and since Defendant did not apparently suffer any
cognizable prejudice, Defendant’s objection is overruled.
Finally, we note that a good portion of the record,
including entire depositions, Defendant’s entire Notice of
Reliance with six exhibits, and the trial briefs (as a
result), were designated “Confidential.” In rendering a
decision in this proceeding, we will not be hamstrung by the
parties’ designation of testimony and evidence as
“Confidential.” We will treat only testimony and evidence
that is truly confidential and commercially sensitive as
confidential. In short, where necessary and useful to our

the Kusel March 26 Deposition, and the assignment of the Pagano
registration to Defendant was discussed therein.
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Opposition No. 91170726
Cancellation No. 92046567

9
decision, we quote passages from the depositions or briefs
(almost all of which were designated “CONFIDENTIAL,” in
their entireties) although, of course, in doing so, we are
careful not to reveal any truly confidential or commercially
sensitive information.
Standing
A party has standing to oppose a registration under
Section 13 of the Trademark Act of 1946, 15 U.S.C. §1063 if
that party can demonstrate that it has a real interest in
the proceeding (i.e., a direct and personal stake in the
outcome of the proceeding). Ritchie v. Simpson, 170 F.3d
1092, 50 USPQ2d 1023, 1025-1026 (Fed. Cir. 1999); Lipton
Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185, 189 (CCPA 1982). As discussed below in the
section headed “Priority,” we find that Plaintiff has used
the mark COMPUTER GEEKS in connection with its own business.
Furthermore, Plaintiff has attempted to register the mark
COMPUTER GEEKS for computer-related goods and services,
which has been suspended, with an advisement that when the
applications mature into registrations, a refusal would be
forthcoming. Finally, Defendant has sent Plaintiff cease
and desist letters on two occasions, in 2000 and 2005,
demanding that Plaintiff cease its use of the mark COMPUTER
GEEKS in its business. See Ipco. Corp. v. Blessings Corp.,
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Cancellation No. 92046567

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5 USPQ2d 1974 (TTAB 1988) (standing found where applicant
had sent opposer cease and desist letters). Accordingly,
we find that Plaintiff has established its standing to bring
this action.
Priority
Each party claims that it has priority over the other,
with each claiming use as early as approximately November
1995. To establish priority on a likelihood of confusion
claim brought under Trademark Act §2(d), a party must prove
that, vis-à-vis the other party, it owns “a mark or trade
name previously used in the United States . . . . and not
abandoned. . . .” Trademark Act Section 2, 15 U.S.C.
§1052. A party may establish its own prior proprietary
rights in a mark through ownership of a prior registration,
actual use or through use analogous to trademark use, such
as use in advertising brochures, trade publications,
catalogues, newspaper advertisements and Internet websites
which create a public awareness of the designation as a
trademark identifying the party as a source. See Trademark
Act §§2(d) and 45, 15 U.S.C. §§1052(d) and 1127. See also
T.A.B. Systems v. PacTel Teletrac, 77 F.3d 1372, 37 USPQ2d
1879 (Fed. Cir. 1996). There must be “regular or recurring
activity” such as to constitute source identification in the
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Opposition No. 91170726
Cancellation No. 92046567

11
eyes of consumers. Giersch v. Scripps, 90 USPQ2d 1020, 1023
(TTAB 2009).
Plaintiff’s Earliest Use Date
Inasmuch as Plaintiff has not pleaded ownership of any
registered trademark, Plaintiff must rely on its common-law
use of COMPUTER GEEKS as a trademark to prove priority. In
order for a Plaintiff to prevail on a claim of likelihood of
confusion based on its ownership of common-law rights in a
mark, the mark must be distinctive, inherently or otherwise,
and Plaintiff must show priority of use. Id; see also Otto
Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 209 USPQ
40 (CCPA 1981). Defendant has not challenged the
distinctiveness of Plaintiff's mark or otherwise put
Plaintiff on notice of this defense, and therefore we deem
the mark distinctive. See Wet Seal Inc. v. FD Management
Inc., 82 USPQ2d 1629, 1634 (TTAB 2007) (absent argument or
evidence from applicant, opposer’s mark deemed distinctive).
In a case involving common-law rights, “the decision as
to priority is made in accordance with the preponderance of
the evidence.” Hydro-Dynamics Inc. v. George Putnam &
Company Inc., 811 F.2d 1470, 1 USPQ2d 1772, 1773 (Fed. Cir.
1987). To establish its first use date, Plaintiff offered
the testimony of its founder and president, Stephen A. Lonn:
Q: When did you start using the name Computer
Geeks in your business?
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A: It was around 1995 that I can recall. It might
have been a little before but I think I’ve got
documented use of the name as early as ’95.
(Lonn September 11 Depo. at 11).

Plaintiff seeks through Mr. Lonn’s testimony to capture
at least a November 1995 priority date for use of the mark
COMPUTER GEEKS. As Mr. Lonn explained, as of mid to late
1995, he worked out of his home, and of the homes and
businesses of clients, performing computer-related services
(as more fully described below) under the COMPUTER GEEKS
name and mark. (Id. at 13-14).
Q: What is the earliest date that you believe that
you conducted business, the computer business in
connection with the Computer Geeks name?

A: Well, I’m certain that I was doing business
before acquiring all the paperwork by probably at
least three to four months.11 The paperwork
certainly came after my first course of business.
I was doing business prior to some of this
paperwork, like the fictitious business statement
and the business license. The documentation that
we have available here came a little bit
afterwards.”
(Id. at 140).
Mr. Lonn described the services that he offered under
the COMPUTER GEEKS name and mark as of 1995:
Q: Would you describe the services that you
offered under the name when you first commenced
your business?

11 Although not establishing trademark use, Mr. Lonn attested to
having obtained a fictitious business name statement with the
County of Los Angeles, California, for the name “COMPUTER GEEKS,”
filed on September 11, 1995, and published soon thereafter. (Id.
at 37 and Ex. 7).
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A: Services included but weren’t limited to
computer consulting, computer repair, computer
building. I sold computers at the time as well.

Q: When you say computer building, would you
describe what you mean by that?

A: Custom-building computers means that people had
different needs for computers at the time, as they
still do today, so we would build computers to the
custom-tailored needs of the customer.

Q: And this was the case in 1995?

A: Yes.

Q: Where did you get the parts that you built the
computers from?

A: Different vendors. It could be retail stores such
as Fry’s Electronics, it could be off the Internet,
just wholesalers.

Q: Did you resell part?

A: Yes, there were times that we resold parts as a
service.
(Id. at 13-14).
Plaintiff’s testimony was confirmed by advertisements
and invoices dating from the fall of 1995. In particular,
Exhibit 9 to Mr. Lonn’s September 11 deposition was
authenticated as the earliest of several sales order books
produced by Plaintiff in this proceeding. Although Mr. Lonn
testified that he may even have made sales before those, it
is clear from the book he produced that at least as early as
November 28, 1995, he provided services regularly and
continuously under the mark COMPUTER GEEKS. Indeed, the
records themselves show sales slips, all labeled with the
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Cancellation No. 92046567

14
COMPUTER GEEKS name, and showing the services rendered. The
services themselves range from “diagnostics” and
“consulting” to “assembly.” Accordingly, we find that
Plaintiff has established a first use date of November 28,
1995 for “computer services in the nature of diagnostics,
consulting, and custom assembly of computers.” We note that
this is not the full identification of goods and services
for which Plaintiff seeks registration currently via its
pending application. However, it is the identification of
services for which we find Plaintiff has established use as
of November 28, 1995.
Defendant’s Earliest Use Date
Since Plaintiff has established a first use date of
November 28, 1995 for the mark COMPUTER GEEKS for “computer
services in the nature of diagnostics, consulting, and
custom assembly of computers,” Defendant must show that it
was using COMPUTER GEEKS prior to that date for its goods
and services in order to establish priority in this
proceeding.
Defendant has two applications at issue in this
proceeding. For Serial No. 78380877, Defendant asserted a
first use date for both classes of April 8, 1995. This date
is earlier than the November 1995 date that Defendant seeks
to establish in this proceeding. (Defendant’s brief at 6).
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Cancellation No. 92046567

15
Accordingly, for the goods and services identified in Serial
No. 78380877, Defendant need only establish its November
1995 date by a preponderance of the evidence standard.
Hydro-Dynamics, Inc. v. George Putnam & Co., 811 F.2d 1470,
1473 (Fed. Cir. 1987), 1 USPQ2d 1772, 1773 (Fed Cir. 1987).
For Serial No. 78258431, however, Defendant asserted a
first use date for both classes of February 1, 1996. Since
this post-dates the November 1995 date, for Defendant to
succeed, it would have to establish prior use for that
application by clear and convincing evidence. Id. “Where an
applicant seeks to prove a date earlier than the date
alleged in its application, a heavier burden has been
imposed on the applicant than the common-law burden of
preponderance of the evidence.” [citations omitted]).12
In order to establish a priority date, Defendant
offered the testimony of Scott E. Kusel, President of Genica
Corp., Computer Geeks, and Evertek. With regard to
Defendant’s corporate structure, he testified “Genica is the

12 We note again that Defendant filed its application Serial No.
78258431 under Section 2(f) of the Trademark Act, alleging that
it had “acquired distinctiveness.” Accordingly, “the mark’s
descriptiveness is a nonissue.” Cold War Museum Inc. v. Cold War
Air Museum Inc., 586 F.3d 1352, 92 USPQ2d 1626, 1629 (Fed. Cir.
2009). Nevertheless, Plaintiff has not argued the
descriptiveness of this mark. Because “[i]f [an] opposer does
not provide sufficient grounds to at least place the matter in
issue, the situation is indistinguishable from one in which no
opposition was filed,” Yamaha Int’l Corp. v. Hoshino Gakki Co.
Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988). Thus,
mere descriptiveness of Defendant’s mark is outside the scope of
this procceding.
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Cancellation No. 92046567

16
parent company that owns and operates Compgeeks.” (Kusel
March 26 Depo. at 9)
Q: Could you walk me through this, either with or
without the organizational chart, whichever is
easier for you?

A: Genica is the parent company. We operate two
divisions: A wholesale and a resale side.
Computer Geeks is the resale division. Evertek is
our wholesale division, which also operates an
auction site called Wholesale Auction.”

Q: Is Computer Geeks a corporation as well as a
division?

A: Yes.

Q: What’s the name of the corporation?

A: Compgeeks.com.

Q: What is Computer Geeks relative to
Compgeeks.com?

A: It’s the name that we associate with it.
Compgeeks.com was the URL. Computer Geeks was the
company name.

Q: Was Computer Geeks called Computer Geeks in 2000?

A: We were always Computer Geeks.

Q: Were you Computer Geeks Discount Outlet?

A: That’s a permutation of the name, yes.
(Id. at 15)
Mr. Kusel further described Compgeeks.com/Computer
Geeks as “primarily an online retailer of excess
liquidation, new, used, refurbished, hard-to-find, high-
demand computer equipment, peripherals, consumer
electronics.” (Id. at 10). According to Mr. Kusel, back in
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1995, Computer Geeks Discount Outlet was a dba of Evertek
Discount Trading (Kusel March 26 Depo. at 10). He testified
that the founder, Frank Segler, started a second company
“for a retail division. Evertek was a wholesale-only
division, and he wanted to have a retail side only, and that
was his idea to form Computer Geeks.” (Id. at 11).
When asked directly about Defendant’s first use of
the mark COMPUTER GEEKS, Mr. Kusel testified:
Q: “When did your company first directly, not
through a license, use the Computer Geeks mark in
commerce?”

A: Well, there is a dba that states that it was
used in September of 1995; marketingwise, I used
it in November of 1995.”
(Id. at 19).
In the 1995-1996 timeframe, the sole use of the mark
COMPUTER GEEKS was as the retail arm of the company Evertek,
another division of parent Genica. (Kusel January 30 Depo.
at 60). Mr. Kusel’s testimony regarding that use of the
COMPUTER GEEKS mark in the 1995-1996 timeframe clarified
that “Yes, it would be on the boxes. On the actual shipping
boxes, yes. We would ship it back with Computer Geeks’
material around it, but the actual product is not branded.
The products going out, yes, would be packaged in Computer
Geeks paraphernalia.” (Kusel March 26 Depo. at 24).
However, he was not able to point to any documentary
evidence to back up that testimony.
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18
Mr. Kusel further testified, upon questioning, that the
mark “would have been on advertisements” in 1995, “Probably
November of ’95, the end of the year.” (Id. at 29).
However, again he was not able to point to any documentary
evidence to back up that testimony either.
The only document in the record from late 1995
containing the term “computer geeks” is the fictitious
business name statement filed with the County Recorder’s
Office in San Diego California, on September 18, 1995,
registering “Evertek I.C. Trading Computer Geeks Discount
Outlet” as a dba for Evertek Computer Corp. (Kusel March 26
Depo., Ex. 9). However, this fictitous business name
registration is not trademark use.
Defendant further points to testimony regarding its tax
filings as evidence of use of the mark COMPUTER GEEKS in the
1995-1996 timeframe. Specifically, Mr. Kusel testified that
Defendant reported $1 million in total sales in the
timeframe between “July of ’95 through June of ‘96” for
sales made by Defendant. The 1995 – 1996 tax return was
introduced as Exhibit 6 to Mr. Kusel’s deposition testimony.
However, the tax return itself does not contain mention of
the name or mark “Computer Geeks.” Rather, Mr. Kusel
testified:
Q: And in 1995, what name would all retail sales
have been under?

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19
A: Computer Geeks, Computer Geeks Discount Outlet,
d.b.a. of Evertek.

Q: Why is that?

A: Evertek was purely a wholesale company, so any
transactions that took place that had retail tax
would have been only on the Computer Geeks d.b.a.
side.
(Kusel March 26 Depo. at 23-25 and Exhibit 6).

As Mr. Kusel testified, the tax return covered a one
year period ending June 30, 1996. Yet, within that one year
period, Mr. Kusel was not able to identify a particular date
when Defendant had begun use of the mark COMPUTER GEEKS.
Instead, he testified to a general recollection that it was
in or around November 1995:
Q: Well, for the moment, let’s talk about Genica.
In what way was the Computer Geeks term used in
1995 by Genica?

A: It would have been on advertisements.

Q: Do you know the month in 1995?

A: Probably November of ’95, the end of the year.

Q: Why does that stick in your head?

A: Because that was – it was right before I
remember the year ending and probably a month
prior to it. So I’m saying November.
(Kusel May 23 Depo. at 29).
However, due to the lack of any other documentary
evidence, and the unconvincing nature of the oral testimony
(Mr. Kusel himself could not be certain of at what point in
the 1995-1996 timeframe Defendant began use of the mark
COMPUTER GEEKS), for the mark of Serial No. 78258431,
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20
Defendant has not met its burden of proving by clear and
convincing evidence a date earlier than November 28, 1995,
the date of priority established by Plaintiff.
Our consideration of Defendant’s evidence is consistent
with the Board’s consideration of respondent’s evidence in
Bass Pro Trademarks LLC v. Sportsman’s Warehouse Inc., 89
USPQ2d 1844 (TTAB 2008), which stated:
Respondent's June 15, 1995 date of first use is
clearly subsequent to March 1, 1995, petitioner's
date of first use. Moreover, even if we used the
February/March, 1995 date of respondent's first
use of the term “Sportsman's Warehouse,” we would
still find that petitioner had priority because
respondent's testimony is not clear and
convincing. See National Bank Book Co. v. Leather
Crafted Products, Inc., 218 USPQ 826, 828 (TTAB
1993) (oral testimony may be sufficient to prove
the first use of a party's mark when it is based
on personal knowledge, it is clear and convincing,
and it has not been contradicted); Liqwacon Corp.
v. Browning-Ferris Industries, Inc., 203 USPQ 305,
316 (TTAB 1979) (oral testimony may be sufficient
to establish both prior use and continuous use
when the testimony is proffered by a witness with
knowledge of the facts and the testimony is clear,
convincing, consistent, and sufficiently
circumstantial to convince the Board of its
probative value); GAF Corp. v. Anatox Analytical
Services, Inc., 192 USPQ 576, 577 (TTAB 1976)
(oral testimony may establish prior use when the
testimony is clear, consistent, convincing, and
uncontradicted). In view of the uncertainty of
respondent's testimony and lack of documentation,
we conclude that respondent's date of first use
can be no earlier than March 31, 1995, the last
day of the specified time period identified in Mr.
Utgaard's testimony. EZ Loader Boat Trailers,
Inc. v. Cox Trailers, Inc., 213 USPQ 597, 598 n.5
(TTAB 1982) (documentary evidence showed first use
in 1977, the month and day were unknown,
therefore, the Board could not presume any date
earlier than the last day of the proved period).
See also Osage Oil & Transportation, Inc. v.
Standard Oil Co., 226 USPQ 905, 911 n.22 (TTAB
Opposition No. 91167886
Opposition No. 91170726
Cancellation No. 92046567

21
1985) (evidence established first use in 1968-
1969, therefore December 31, 1969 is date of first
use).
Id. at 1856.

Accordingly, here, as well, due to the uncertainty of
the Defendant’s testimony on exact dates, as well as the
lack of documentary evidence attesting to use of the mark in
1995, we conclude that Defendant cannot prove by “clear and
convincing evidence” first use of the mark for Serial No.
78258431 prior to November 28, 1996, Plaintiff’s priority
date. Therefore, Defendant does not beat Plaintiff’s
earliest use date.13
Defendant is not held to the “clear and convincing”
evidence standard to prove a priority date in 1995 for
Application No. 78380877, but rather is held to a
“preponderance of the evidence” standard. However,
Defendant has simply not offered sufficient proof of its use
as of the date claimed on that application either. We find
that Defendant has not sufficiently established a first use
date of the “November 1995” that it argues on brief, for the
goods and services listed in either application.
Next, Defendant attempts to claim priority based on an
assignment of rights from an individual named Timothy J.

13 Were we to find under an argument of 2(f) that Defendant is
indeed entitled to a priority date no earlier than its
application filing date for the goods and services covered by
Serial No. 78258431, that still would not change our decision,
since in either case, Plaintiff has the earlier priority date.
Opposition No. 91167886
Opposition No. 91170726
Cancellation No. 92046567

22
Pagano. (Kusel March 26 Depo. at 11-12 and Ex. 1). The
assigned registration has been cancelled on the Principal
Register and cannot be relied upon for priority. (Id. at
75-78). As testified by Mr. Kusel and demonstrated by the
assignment itself, the document does assign “the goodwill of
the business in which the mark is used” as well as the (now
cancelled) trademark registration (Id., Ex. 1). However,
although Mr. Kusel testified that Mr. Pagano has been the
owner of the Computer Geeks’ trademark “Since October 10,
1989,” (Id., at 12), there is nothing in the assignment, the
registration, or otherwise of record to corroborate his
testimony. Indeed, Mr. Kusel himself admitted on cross-
examination that his sole knowledge of Mr. Pagano’s
business, including of any goodwill that may have been
transferred via the assignment, was as stated in the “the
trademark office filings or the license agreement.” (Id. at
44). Accordingly, with only a cancelled registration to
rely upon, and without any documentary evidence of goodwill,
Defendant cannot rely on the Pagano assignment for priority
of use.
Finally, Defendant attempts to claim priority based on
an assignment of rights from an individual named Joseph
Kissell. (Id. at 26-29 and Ex. 7). However, Ex. 7, the
assignment, appears to be no more than an assignment of a
Opposition No. 91167886
Opposition No. 91170726
Cancellation No. 92046567

23
domain name registration. Furthermore, Mr. Kusel was unable
in this instance again to attest to any proof of actual
goodwill transferred with the assignment. Accordingly,
again without any documentary evidence of goodwill,
Defendant cannot rely on the Kissell assignment for priority
of use.
Accordingly, we find that Defendant is not able to
predate in either application Plaintiff’s established first
use date of November 28, 1995. Thus, we award priority to
Plaintiff and proceed with an analysis of the likelihood of
confusion.
Likelihood of Confusion
This case is a bit unusual in that neither party in its
brief actually points to evidence or presents arguments
regarding the du Pont factors. See In re E. I. du Pont de
Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
Rather both parties urge that we are bound by the other’s
admissions. Plaintiff essentially argues that once we have
determined priority for Plaintiff, Defendant is bound to
accept a likelihood of confusion, since (1) the examining
attorney for Plaintiff’s pending application thinks there is
a likelihood of confusion; and (2) Defendant sent Plaintiff
two cease and desist letters. Specifically, Plaintiff’s
brief states the following:
Opposition No. 91167886
Opposition No. 91170726
Cancellation No. 92046567

24
Opposer has made no allegation of similarities of
the marks, relatedness of the goods and services,
or likelihood of confusion. Instead, this key
element to the Opposition [sic] was supplied by
the Examining Attorney, which is a proper basis
for Opposition [sic]. T.M.B.P. [sic] §309.03
(c)B. It was confirmed by the cease and desist
letters sent by an entity under which Applicant
now purports to claim rights. These letters are
admissions that Applicant perceives a likelihood
of confusion, since Applicant twice threatened to
sue Oposer over the mark. Ultra Electronics, Inc.
v. Workman Electronics Products, Inc., 192
U.S.P.Q. 497 (T.T.A.B. 1976).
(Plaintiff’s Brief at 17-18).

We must disagree with Plaintiff’s legal conclusions.
First, Defendant does dispute likelihood of confusion in its
pleadings as well as its trial brief. Second, we are not
bound by the determinations of examining attorneys in
pending applications (and indeed, we note that the
application is merely suspended; there has not yet been a
final refusal on the merits). In re Nett Designs, 236 F.3d
1339, 57 USPQ2d 1564 (Fed. Cir. 2001). Accordingly, as we
have often stated in response to such arguments, the office
action in question has no bearing on our decision. Finally,
the decision in Ultra Electronics does not state that cease
and desist letters are admissions of likelihood of
confusion. Rather, the Board in that case specifically
stated the following:
As urged by respondent, a letter of infringement
in which one party expresses the view that there
is likelihood of confusion between its mark and
that of the adverse party is not necessarily
controlling on the question of likelihood of
confusion. However, the admission contained in
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Opposition No. 91170726
Cancellation No. 92046567

25
the letter may be a persuasive factor in resolving
any doubts which may exist concerning the
likelihood of confusion.
Ultra Electronics, at 498.

Defendant, for its part, urges us to accept Mr. Lonn’s
testimony as determinative that there is no likelihood of
confusion between the businesses of Plaintiff and Defendant.
Defendant cites the following testimony from Mr. Lonn’s
deposition:
Q: Do you believe that compgeeks.com has the right
to sue Computer Geeks for trademark infringement?

A: No.

Q: Why not?

A: Because it’s my understanding that
Compgeeks.com and Computer Geeks are different as
far as the names go. The branding of the names
are different to me.
(Lonn September 11 Depo. at 105)
As well as the following excerpts:
Q: Is it your belief now that your business and
the business of Mr. Kusel are more similar than
they were back in 1997?

A: No.
. . .
There are some things that we may share, but on
a whole, I think our business models are
different.
. . .
I think we share the opinion that we each have
rights to the name.

Q: What else is it – or what else is there that
you believe you now share with Mr. Kusel’s
business that you did not share with his
business in 1997?

A: Nothing.
Opposition No. 91167886
Opposition No. 91170726
Cancellation No. 92046567

26

Q: Would it be fair to say, then, that in all
other respects, you believe your business is
different from Mr. Kusel’s business?

A: Yes.
(Defendant’s brief at 10-11, quoting Lonn March
17 Depo. at 135-136).

We do not consider Mr. Lonn’s comments to be admissions
of a lack of a likelihood of confusion between all goods and
services offered between Plaintiff and Defendant under the
COMPUTER GEEKS mark. However, we do consider his testimony
to be a statement against interest. Accordingly, the cease
and desist letters on the one hand, and the testimony of Mr.
Lonn on the other, somewhat balance each other out in our
analysis.
Overall, our determination under Section 2(d) must be
based on an analysis of all of the facts in evidence that
are relevant to a likelihood of confusion. See In re E. I.
du Pont de Nemours & Co., supra, 177 USPQ 563; See also Palm
Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In
re Majestic Distilling Company, Inc., 315 F.3d 1311, 65
USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie Restaurants
Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). In
any likelihood of confusion analysis, two key considerations
are the similarities between the marks and the similarities
between the goods or services. See Federated Foods, Inc. v.
Opposition No. 91167886
Opposition No. 91170726
Cancellation No. 92046567

27
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”).
The Marks
The first du Pont factor asks us to consider whether
Plaintiff’s and Defendant’s marks are similar or dissimilar
when viewed in their entireties in terms of appearance,
sound, connotation and overall commercial impression. See
Palm Bay Imports, Inc. v. Veuve Clicquot, supra.
Plaintiff’s and Defendant’s COMPUTER GEEKS marks are
identical is all respects. Accordingly, this du Pont factor
favors Plaintiff.
The Goods and Services and the Channels of Trade
With respect to the goods and services, it is well-
established that the goods or services of the parties need
not be similar or competitive, or even offered through the
same channels of trade, to support a holding of likelihood
of confusion. It is sufficient that the respective goods or
services of the parties are related in some manner. The
issue, of course, is not whether purchasers would confuse
the goods or services, but rather whether there is a
likelihood of confusion as to the source thereof.
Furthermore, where, as here, the marks are identical, there
Opposition No. 91167886
Opposition No. 91170726
Cancellation No. 92046567

28
need only be a viable relationship between the respective
goods and services for a likelihood of confusion to result.
In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687 (Fed.
Cir. 1993); In re Opus One Inc., 60 USPQ2d 1812 (TTAB 2001).
It also bears mentioning that if we find one service or good
in the identifications to be related, the whole class falls.
We have found that Plaintiff has established priority
for “computer services in the nature of diagnostics,
consulting, and custom assembly of computers.” Meanwhile
Defendant seeks to register the same mark for various
computer-related goods and services, specifically:
1. “Retail store services featuring computer-related
items, including hardware, software and computer
peripherals”, in International Class 35,
2. “Computer consulting services primarily focusing
on computer repairs, teaching individuals and small
businesses to effectively utilize computer resources at
hand,” in International Class 42;
3. “Computer hardware, computer software for making
computer hardware, namely, drivers, mouseports, printer
drivers compatible with computer applications,” in
International Class 9, and
Opposition No. 91167886
Opposition No. 91170726
Cancellation No. 92046567

29
4. “On-line retail and wholesale store services
featuring computer hardware, computer software and
computer peripherals,” in International Class 35.
Due to the scant evidence of record, we are effectively
left to examine the individual identifications to determine
the similarity or dissimilarity of each of the goods or
services and the resulting channels of trade.
It is clear that there is an overlap in the services
offered by Plaintiff and Defendant as to the consulting
services in Class 42 (Application No. 78380877).
Similarly, we find that Plaintiff’s “computer
services in the nature of diagnostics, consulting, and
custom assembly of computers” and Defendant’s “computer
hardware, computer software for making computer hardware,
namely, drivers, mouseports, printer drivers compatible with
computer applications,” in Class 9 (Application No.
78258431), are related as the computer components used in
the custom assembly of computers services are likely the
same components identified in Defendant’s identification and
would likely move in the same channels of trade. See In re
Hyper Shoppes (Ohio) Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed.
Cir. 1988) (BIGGS (stylized) for retail grocery and general
merchandise store services held to be likely to be confused
with BIGGS and design for furniture); In re United Service
Opposition No. 91167886
Opposition No. 91170726
Cancellation No. 92046567

30
Distributors, Inc., 229 USPQ 237 (TTAB 1986) (design for
distributorship services in the field of health and beauty
aids held likely to be confused with design for skin cream);
and Steelcase inc. v. Steelcare Inc., 219 USPQ 433 (TTAB
1983) (STEELCARE INC. for refinishing furniture, office
furniture, and machinery held likely to be confused with
STEELCASE for office furniture and accessories).
However, we have no basis from which we can conclude
that Plaintiff’s services are related to any of the
International Class 35 services. Although we understand
that both Plaintiff and Defendant engage in computer-related
businesses, that alone does not create a likelihood of
confusion. The burden was on Plaintiff to prove by a
preponderance of the evidence that the services and channels
of trade are similar. We find that as to the “retail store
services” in Class 35 (Application No. 78380877) and the
“on-line retail and wholesale store services” in Class 35
(Application No. 78258431), Plaintiff has failed to satisfy
that burden.
Actual Confusion
The final du Pont factor discussed by the parties is
the lack of verifiable instances of actual confusion.
Although Defendant asserts that the absence of actual
confusion suggests no likelihood of confusion, it is not
Opposition No. 91167886
Opposition No. 91170726
Cancellation No. 92046567

31
necessary to show actual confusion in order to establish
likelihood of confusion. See Weiss Associates Inc. v. HRL
Associates Inc. 902 F.2d 1546, 223 USPQ 1025 (Fed. Cir.
1990). Thus, while evidence of actual confusion, if it
exists, would strongly support a finding of likelihood of
confusion, the absence thereof does not necessarily overcome
a finding of likelihood of confusion.
On the other hand, the parties have coexisted in close
proximity, both in Southern California, for well over a
decade. This was attested to by Mr. Lonn in his discovery
deposition: “I felt we could coexist.” (Lonn March 12 Depo.
at 37). Accordingly, we find this eighth du Pont factor to
slightly favor Defendant.
Balancing the Factors
We have carefully considered all of the arguments as
well as the evidence of record. We conclude that Plaintiff
has established priority of use of an identical mark, but
that Plaintiff has not established that applicant's goods
and services in International Class 35 are related to
Plaintiff’s services. Finally, we note that the record does
not contain any instances of actual confusion, despite over
a decade of coexistence in close proximity in Southern
California.
Opposition No. 91167886
Opposition No. 91170726
Cancellation No. 92046567

32
Plaintiff has not submitted documentary or testimonial
evidence to demonstrate a similarity of its “computer
services in the nature of diagnostics, consulting, and
custom assembly of computers” to Defendant’s “retail store
services featuring computer-related items, including
hardware, software and computer peripherals”, services in
Class 35 (Application No. 78380877) or “on-line retail and
wholesale store services featuring computer hardware,
computer software and computer peripherals,” in Class 35
(Application No. 78258431) such that consumers would be
likely to mistakenly believe that they originate from the
same source. Accordingly, and because it is Plaintiff’s
burden to do so, we find no likelihood of confusion as to
the Class 35 services.
We do, however, find a likelihood of confusion as to
Plaintiff’s “computer services in the nature of diagnostics,
consulting, and custom assembly of computers” and
Defendant’s “computer consulting services primarily focusing
on computer repairs, teaching individuals and small
businesses to effectively utilize computer resources at
hand,” in Class 42 (Application No. 78380877) as well as
“computer hardware, computer software for making computer
hardware, namely, drivers, mouseports, printer drivers
compatible with computer applications,” in Class 9
(Application No. 78258431) such that consumers would be
Opposition No. 91167886
Opposition No. 91170726
Cancellation No. 92046567

33
likely to mistakenly believe that the Class 9 and 42
originate from the same source.

DECISION:
1. Application Serial No. 78380877: The Opposition No.
91167886 is sustained as to Class 42 and dismissed as to
Class 35. Accordingly, Registration is refused in
Application Serial No. 78380877 with respect to the services
in International Class 42. The International Class 35
services will proceed to registration.
2. Application Serial No. 78258431: The Opposition No.
91170726 is sustained as to Class 9 and dismissed as to
Class 35. Accordingly, Registration is refused in
Application Serial No. 78258431 with respect to the services
in International Class 9. The International Class 35
services will proceed to registration.
3. Registration No. 2499396: The Petition to Cancel No.
92046567 is dismissed.