CourtCall, LLCv.Appearby, LLC

Trademark Trial and Appeal Board

Apr 13, 2015

No. 92058484 (T.T.A.B. Apr. 13, 2015)

Goodman/ice Mailed: April 13, 2015

Cancellation No. 92058484
CourtCall, LLC
v.
Appearby, LLC

Before Taylor, Ritchie and Goodman,
Administrative Trademark Judges.

By the Board:

Appearby, LLC, (hereinafter “Respondent”), owns a registration for the
mark APPEARBYPHONE for “Teleconferencing services, namely, audio
conferencing, video conferencing, and data conferencing” in International
Class 38.1 On January 8, 2014, CourtCall, LLC, (hereinafter “Petitioner”),
filed a petition to cancel the registration on grounds of priority and likelihood
of confusion; descriptiveness; and genericness. With particular regard to the
priority and likelihood of confusion ground, Petitioner has alleged prior use of
and likelihood of confusion with its CourtCall name and has pleaded
ownership of Registration No. 3200664 for the mark, COURTCALL, for

1 Registration No. 4437681 issued on the Supplemental Register on November 19,
2013, claiming August 1, 2012 as the date of first use anywhere and date of first use
in commerce.

United States Patent And Trademark Office
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
General Contact Number: 571-272-8500
THIS OPINION IS NOT A
PRECEDENT OF THE
TTAB
Cancellation No. 92058484

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“Providing telephone conferencing services for judicial and administrative
tribunals” in International Class 38.2
In its answer to the petition to cancel, Respondent has admitted that its
APPPEARBYPHONE mark is registered on the Supplemental Register3 but
otherwise has denied the remaining salient allegations of the petition to
cancel.4
This case now comes up on Respondent’s motion, filed October 9, 2014, for
summary judgment on all three claims asserted in the petition to cancel.
Petitioner has opposed the motion on its merits and has filed a motion for
Fed. R. Civ. P. 56(d) discovery, which Respondent opposed.
The motion for summary judgment is fully briefed.

2 Issued January 23, 2007; Section 8 affidavit accepted, Section 15 affidavit
acknowledged. To the extent Petitioner also is alleging prior ownership of a now
cancelled registration, Registration No. 2124816, for the identical term, we point out
that a cancelled or expired registration has no probative value other than to show
that it once issued and it is not entitled to any of the statutory presumptions of
Section 7(b) of the Trademark Act. In Re Ginc UK Limited, 90 USPQ2d 1472, 1480
(TTAB 2007). See also Action Temporary Services Inc. v. Labor Force Inc., 870 F.2d
1563, 10 USPQ2d 1307, 1309 (Fed. Cir. 1989) (“a cancelled registration does not
provide constructive notice of anything.”); In re Hunter Publishing Company, 204
USPQ 957, 963 (TTAB 1979) (cancellation “destroys the Section [7(b)] presumptions
and makes the question of registrability ‘a new ball game’ which must be predicated
on current thought.”).
3 In paragraph 5 of its answer, Respondent asserts that Petitioner’s allegation of
descriptiveness in Paragraph 5 of the petition to cancel is “irrelevant,” because its
mark is registered on the Supplemental Register, and therefore, “a responsive
pleading to the allegations in Paragraph 5 is not required.”
4 In addition to denying the allegations of the petition, Respondent also asserted a
counterclaim against Petitioner’s pleaded registration alleging that Petitioner’s
mark COURTCALL is generic.
Cancellation No. 92058484

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Turning first to Petitioner’s motion for Fed. R. Civ. P. 56(d) discovery, we
find the motion moot, because Petitioner has responded to the motion for
summary judgment on its merits.
We now turn to the motion for summary judgment.
Standard
Summary judgment is only appropriate where there are no genuine
disputes of material fact, thus allowing the case to be resolved as a matter of
law. See Fed. R. Civ. P. 56(a). A genuine dispute is shown to exist, if, on the
evidence of record, a reasonable fact finder could resolve the matter in favor
of the non-moving party. See Opryland USA Inc. v. Great American Music
Show Inc., 970 F.2d 847, 850, 23 USPQ2d 1471, 1472 (Fed. Cir. 1992). If
factual disputes exist that are not material to the resolution of the case under
governing law, summary judgment can be granted. Anderson v. Liberty
Lobby, Inc., 477 U.S. 242, 248, (1986) (“Factual disputes that are irrelevant
or unnecessary will not be counted.”).
On summary judgment, the moving party has the burden of
demonstrating the absence of any genuine dispute of material fact and that it
is entitled to judgment as a matter of law. See Celotex Corp. v. Catrett, 477
U.S. 317, 323 (1986). The Board may not resolve issues of material fact on
summary judgment; it may only ascertain whether such issues are present.
See Lloyd’s Food Products, Inc. v. Eli’s, Inc., 987 F.2d 766, 766, 25 USPQ2d
2027, 2029 (Fed. Cir. 1993); Olde Tyme Foods, Inc. v. Roundy’s Inc., 961 F.2d
Cancellation No. 92058484

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200, 202, 22 USPQ2d 1542, 1544 (Fed. Cir. 1992). The evidence must be
viewed in a light most favorable to the non-moving party and all justifiable
inferences are to be drawn in its favor. Lloyd’s Food Products, 25 USPQ2d at
2029.
Respondent’s evidence in support of summary judgment consists of the
declaration of its counsel, Thomas Wilentz, (“Wilentz declaration”) and
accompanying exhibits, and the declaration of Respondent’s managing
member, Kent Charugundla (“Charugundla declaration”).
Petitioner’s evidence in response to the motion for summary judgment
consists of the declaration of Robert Alvarado, Chief Executive Officer of
Petitioner, and accompanying exhibit (“Alvarado declaration”), and the
declaration of Robert P. Beckham, counsel for Petitioner, and accompanying
exhibits.
Descriptiveness Claim
We turn first to the descriptiveness claim. The involved registration is
registered on the Supplemental Register, which is an admission by
Respondent that the mark is merely descriptive. Quaker State Oil Refining
Corp. v. Quaker Oil Corp., 453 F.2d 1296, 1299, 172 USPQ 361, 363 (CCPA
1972). Respondent argues that Petitioner’s claim that “Registrant’s Mark is
merely descriptive is moot on its face.” Respondent’s brief, p. 21. By seeking
registration on the Supplemental Register, Respondent has admitted the
Cancellation No. 92058484

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descriptiveness of APPEARBYPHONE. Accordingly, we dismiss the
descriptiveness claim as moot.
Likelihood of Confusion
We turn next to the likelihood of confusion ground.
The question of likelihood of confusion between the parties’ marks is
resolved based on evidentiary factors enumerated in In re E.I du Pont de
Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (CCPA 1973). Any
of those elements “may from case to case play a dominant role.” Id. It is
well-established that a single du Pont factor may be dispositive in a
likelihood of confusion analysis, and that where the marks are sufficiently
dissimilar, there may be no likelihood of confusion despite the presence of
overlapping goods or services and trade channels. See Champagne Louis
Roederer S.A. v. Delicato Vineyards, 148 F.3d 1373, 1375, 47 USPQ2d 1459,
1460-61 (Fed. Cir. 1998); Kellogg Co. v. Pack'em Enterprises Inc., 951 F.2d
330, 333, 21 USPQ2d 1142, 1145 (Fed. Cir. 1991) (“We know of no reason
why, in a particular case, a single du Pont factor may not be dispositive.”).
Respondent maintains that, in this instance, a single du Pont factor is
dispositive, namely that the marks are “entirely dissimilar” in appearance,
sound, meaning and overall commercial impression and that the undisputed
material facts show that its APPEARBYPHONE mark and Petitioner’s
pleaded COURTCALL mark are not confusingly similar. In particular,
Respondent points to Petitioner’s admissions and argues, with regard to
Cancellation No. 92058484

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sound and appearance, that “Petitioner has admitted that the marks
COURTCALL and APPEARBYPHONE are completely dissimilar in sound,”
“completely dissimilar in appearance,” and that “none of the words that
appear in Registrant’s APPEARBYPHONE mark appear in Petitioner’s
COURTCALL mark.”5 Respondent’s brief p. 18. With regard to the meanings
of the parties’ marks, Respondent argues the meanings are different and
points to dictionary definitions for the terms “COURT,” “CALL,” and
“APPEAR.”6 Respondent argues that “Registrant’s Mark has no connotation
of ‘a place where legal cases are heard,’ and Petitioner’s Mark has no
connotation of ‘to be or come in sight;’ ‘to show up;’ ‘to come formally before
an authoritative body;’ ‘to have an outward aspect: seem;’ ‘to become evident
or manifest;’ ‘to come into public view;’ or ‘to come into existence.’”
Respondent’s brief p. 19.
In response, Petitioner while agreeing that the parties’ marks are
“dissimilar in sound and physical appearance,” and without presenting
argument as to their meaning, nonetheless argues that the similarity of the

5 In response to Respondent’s Requests for Admissions Nos. 2, 3, 13, and 14,
Petitioner admitted the following: that COURTCALL and APPEARBYPHONE are
completely dissimilar in sound; that COURTCALL and APPEARBYPHONE are
completely dissimilar in appearance; that none of the words in Respondent’s mark
appear in Petitioner’s mark; and that none of the sounds in Respondent’s mark are
included in Petitioner’s mark. Wilentz Declaration, Paragraph 9 & Exhibit 7.
6 Respondent submits that “‘Court’ means ‘a place where legal cases are heard’ or
‘an official group of people (such as a judge and jury) who listen to evidence and
make decisions about legal cases,’” “‘Call’ has many meanings, one of which is ‘an act
of using the telephone: an act of calling someone on the telephone,” while “‘Appear’
means ‘to be or come in sight;’ ‘to show up;’ ‘to come formally before an authoritative
body;’ ‘to have an outward aspect: seem;’ ‘to become evident or manifest;’ ‘to come
into public view;’ or ‘to come into existence.’”
Cancellation No. 92058484

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parties’ services is “undisputed since both Registrant and Petitioner provide
services for remote telephonic court appearances,” that “[t]he trade channels
are practically identical,7 and that genuine disputes exist as to the du Pont
factors of actual and potential confusion and the conditions in which buyers
purchase the parties’ respective services.
As to any actual and/or potential confusion, Petitioner does not point to
any evidence, but merely states that it has not had an opportunity to
determine through discovery whether Respondent has had members of the
legal community seeking Petitioner’s services, who inadvertently contacted
Respondent. The conclusory assertions of counsel are insufficient to raise a
genuine dispute as to actual or potential confusion. Nature's Way Products
Inc. v. Nature's Herbs Inc., 9 USPQ2d 2077, 2080 (TTAB 1989) (where the
moving party presents evidence which demonstrates the absence of material
factual issues in dispute, more is required in countering a motion than mere
assertions of counsel). Further, Respondent has stated that it is unaware of
any instances of actual confusion, infra, note 9.
With respect to the conditions of purchase, Petitioner argues that
purchasers of the services, which it identifies in its statement of undisputed
facts as the “legal community,” may be purchasing the services “in a very
short time frame” and “do not have time to weigh the pros and cons of the
services available . . . .” Petitioner’s brief, p. 13. To support this contention,

7 Petitioner’s brief, p. 13.
Cancellation No. 92058484

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Petitioner has presented the Alvarado declaration which declares at
Paragraph 18 :
18. CourtCall has received calls from attorneys who indicated that
they were scheduling at the “last second.” These calls often were
as a result of a miscalendar [sic] hearing in the office or the
Court scheduling an ex parte hearing without adequate notice
for an in-person appearance.

Although there is little evidence to support the fact that Petitioner’s
purchasers are discriminating purchasers, i.e., attorneys, who would exercise
greater care, this would favor Respondent. On the other hand, the fact that
these services may be subject to impulse purchase on occasion would favor
Petitioner. We find that Petitioner has not submitted evidence sufficient to
raise a genuine dispute as to this du Pont factor.
In bringing its motion for summary judgment based solely on the
dissimilarities of the parties’ respective marks, Respondent has effectively
conceded all other relevant du Pont factors in Petitioner’s favor for purposes
of Respondent’s motion,8 and we have treated the relevant factors as either
favoring Petitioner or neutral. With regard to the marks, Petitioner has
admitted their dissimilarity with respect to sound and appearance. As
regards meaning, we find that given the different terms in each, they differ
somewhat in meaning, i.e., the inclusion of “Court” in Petitioner’s CourtCall
mark gives the impression of being a call specific to the Courts while

8 However, Respondent included in its statement of undisputed facts that there are
no instances of actual confusion, referencing the Charugundla declaration which
declares: “Respondent is not aware of any instances of consumer confusion arising
from the contemporaneous use of Registrant’s APPEARBYPHONE mark and
Petitioner’s COURTCALL mark.” Charugundla Declaration, paragraph 10.
Cancellation No. 92058484

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Respondent’s mark, APPEARBYPHONE, imparts a broader meaning that
encompasses anyone appearing by phone for any purpose. Considering the
marks in their entireties, we are of the opinion that given the substantial
differences in sound and appearance, and the somewhat different
connotations, the marks have distinctly different commercial impressions.
In conclusion, we believe the substantial dissimilarities of the marks
are so great as to avoid confusion, notwithstanding the identity of services
and trade channels therefor, and that the dissimilarity of the marks is
dispositive of the issue of likelihood of confusion. See Champagne Louis
Roederer S.A. v. Delicato Vineyards, 47 USPQ2d at 1460-61; Kellogg Co., 21
USPQ2d at 1142.
Accordingly, Respondent’s motion for summary judgment is granted on
the likelihood of confusion ground. Judgment is entered in Respondent’s
favor, and the likelihood of confusion claim is dismissed with prejudice.
Genericness
We now turn to the genericness ground.
A mark is generic if it refers to the class, genus or category of goods
and/or services on or in connection with which it is used. See In re Dial-A-
Mattress Operating Corp., 240 F.3d 1341, 1344, 57 USPQ2d 1807, 1811 (Fed.
Cir. 2001). The test for determining whether a mark is generic involves a
two-step inquiry. First, what is the genus (category or class) of the goods or
services at issue? H. Marvin Ginn Corp. v. International Ass’n of Fire Chiefs,
Cancellation No. 92058484

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Inc., 782 F. 2d 987, 990, 228 USPQ 528, 530 (Fed. Cir. 1986). Second, is the
term sought to be registered understood by the relevant public primarily to
refer to that genus (category or class) of goods or services? Id.
Regarding the first part of the test, we look to the identification of
services in the registration for purposes of defining the genus, which in this
case is “Teleconferencing services, namely, audio conferencing, video
conferencing, and data conferencing.” Magic Wand Inc. v. RDB, Inc., 940
F.2d. 638, 640, 19 USPQ2d 1551, 1552 (Fed. Cir. 1991) (a proper genericness
inquiry focuses on the description of services set forth in the certificate of
registration); Alcatraz Media, Inc. v. Chesapeake Marine Tours Inc. DBA
Watermark Cruises, 107 USPQ2d 1750, 1761 (TTAB 2013) (“We see no reason
in this case to depart from the guidance provided by our primary reviewing
court, . . . that “a proper genericness inquiry focuses on the description of
[goods or] services set forth in the [application or] certificate of registration.”)
(citations omitted).
With regard to the second part of the test, the relevant public is the
purchasing or consuming public for the identified services. Magic Wand, 19
USPQ2d at 1553; See also Stocker v. General Conference Corp. of Seventh-day
Adventists, 39 USPQ2d 1385, 1394 (TTAB 1996) (the primary significance of
the mark to the relevant public is limited to actual or potential purchasers of
the goods or services). The parties maintain two different positions as to who
constitutes the relevant public. Respondent submits that the relevant public
Cancellation No. 92058484

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“includes all adults in the population” “who may have to appear before a
judge or magistrate in a legal proceeding. This would include all adults in the
population.” Respondent’s brief p. 13. Petitioner, on the other hand, contends
that there is a genuine dispute as to the relevant public which it submits
consists of “attorneys, their clients and person [sic] who may be parties to
active litigation . . .” and not ‘“all adults in the population’ whether they have
an active case or not. . . .” (emphasis in original).9 Petitioner’s brief, p. 8.
Although Respondent argues in its reply that the parties’ disagreement
as to the relevant public is “not material” such that we can grant its motion
for summary judgment on the genericness ground, we disagree. The issue of
what constitutes the relevant public, which is the second part of the
genericness test, is material to our determination of the genericness ground
and not tangential. Thus, the parties’ disagreement as to whether the
consuming public consists of all adults in the general population or attorneys,
their clients, and other persons involved in active ligation, raises a genuine
dispute of material fact.
After reviewing the arguments and supporting papers of the parties, we
find that Respondent has not established that no genuine disputes of

9 Although not in agreement as to the relevant public, the parties have limited the
relevant public to either those involved in “active litigation” or those “who may
become involved in litigation or have a need to appear before a court.” We note,
however, that the identification of services of the involved registration is not so
restricted as to channels of trade or classes of consumers and may be read broadly.
See e.g., Frito-Lay N. Am., Inc. v. Princeton Vanguard, LLC, 109 USPQ2d 1949, 1952
(TTAB 2014) (as there is no restriction or limitations as to channels of trade or
classes of consumers for pretzel crackers, the relevant consuming public comprises
ordinary consumers who purchase and eat pretzel crackers).
Cancellation No. 92058484

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material fact exist as to Petitioner's claim of genericness. At a minimum,
genuine disputes of material fact remain as to who constitutes the relevant
public for Respondent’s teleconferencing services and whether the relevant
public would perceive APPEARBYPHONE as identifying Respondent’s
services.10
Accordingly, Respondent’s motion for summary judgment is denied on the
genericness ground.
Conclusion
In summary, Respondent’s motion for summary judgment on the ground
of likelihood of confusion is granted, and Respondent’s motion for summary
judgment on the genericness claim is denied. The descriptiveness claim is
dismissed as moot.
Proceedings are resumed. The parties are allowed until thirty days from
the mailing date of this order to respond to any outstanding discovery
requests.
Dates are reset as follows:

10 The parties should note that the evidence submitted in connection with the
motion for summary judgment is of record only for consideration of the motion. To be
considered at final hearing, any such evidence must be properly introduced in
evidence during the appropriate trial period. See Levi Strauss & Co. v. R. Josephs
Sportswear Inc., 28 USPQ2d 1464 (TTAB 1993). Furthermore, the fact that we have
identified certain genuine disputes of material fact sufficient to deny Respondent’s
motion should not be construed as a finding that these necessarily are the only
issues which remain for trial.
Cancellation No. 92058484

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Expert Disclosures Due April 23, 201511
Discovery Closes May 10, 2015
Plaintiff's Pretrial Disclosures June 24, 2015
30-day testimony period for plaintiff's testimony to
close
August 8, 2015
Defendant/Counterclaim Plaintiff's Pretrial
Disclosures
August 23, 2015
30-day testimony period for defendant and plaintiff
in the counterclaim to close
October 7, 2015
Counterclaim Defendant's and Plaintiff's Rebuttal
Disclosures Due
October 22, 2015
30-day testimony period for defendant in the
counterclaim and rebuttal testimony for plaintiff to
close
December 6, 2015
Counterclaim Plaintiff's Rebuttal Disclosures Due December 21, 2015
15-day rebuttal period for plaintiff in the
counterclaim to close
January 20, 2016
Brief for plaintiff due March 20, 2016
Brief for defendant and plaintiff in the
counterclaim due
April 19, 2016
Brief for defendant in the counterclaim and reply
brief, if any, for plaintiff due
May 19, 2016
Reply brief, if any, for plaintiff in the counterclaim
due
June 3, 2016

In each instance, a copy of the transcript of testimony, together with
copies of documentary exhibits, must be served on the adverse party within
thirty days after completion of the taking of testimony. Trademark Rule
2.l25.

11 Because the expert disclosure deadline had passed at the time the motion for
summary judgment was filed, we are providing time for the parties to serve expert
disclosures. TBMP Section 403.04 (2014).
Cancellation No. 92058484

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An oral hearing will be set only upon request filed as provided by
Trademark Rule 2.l29.