Daniel L. Keganv.Marc S. Lane

Trademark Trial and Appeal Board

Oct 27, 1999

No. 91102966 (T.T.A.B. Oct. 27, 1999)

Paper No. 35
SIMMS/md/cv
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB OCT. 27, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Daniel L. Kegan doing business as Elan Associates
v.
Marc S. Lane
_____
Opposition No. 102,966
to application Serial No. 74/678,682
filed on May 22, 1995
_____
Daniel L. Kegan of Kegan & Kegan for Daniel L. Kegan d/b/a
Elan Associates.
Mark S. Lane, pro se.
______
Before Simms, Cissel and Bottorff, Administrative Trademark
Judges.
Opinion by Simms, Administrative Trademark Judge:
Daniel L. Kegan (opposer), doing business as Elan
Associates, has opposed the application of Marc S. Lane to
register the mark LINEGUIDE for computer services, namely,
providing access to a computer bulletin board service
providing a wide range of information over a global online
information network.1 In the notice of opposition, opposer

1 Application Serial No. 74/678,682, filed May 22, 1995, claiming
use in commerce since May 1, 1995.
Opposition No. 102,966
2
asserts ownership of the registered mark MACGUIDE
(Registration No. 1,522,579, issued January 31, 1989) for
magazines directed to the computer community, as well as
ownership of a number of GUIDE-suffixed marks such as
PCGUIDE, CD-ROMGUIDE, POWERGUIDE, WINGUIDE and OPENGUIDE for
computer-oriented products and services; that opposer is in
fact the owner of a –GUIDE family of marks with the first
word “evocative” of a “computer issue”; that opposer’s
MACGUIDE magazine pioneered independent online computerized
information with opposer’s MacGuide online information
service; that opposer’s magazine has marketed software under
the MacGuide trademark; that opposer has spent several
millions of dollars in connection with the advertising and
promotion of goods and services under the mark MacGuide;
that opposer’s goods and services and applicant’s services
are closely related information services oriented to
computers and to high technology; and that applicant’s mark
used in connection with applicant’s services so resembles
opposer’s previously used marks as to be likely to cause
confusion, to cause mistake or to deceive.
In his answer, applicant has denied the essential
allegations of the notice of opposition. However, applicant
has admitted that his services are offered at no or low cost
(one of opposer’s allegations). Further, applicant asserts
that opposer does not have exclusive rights in the –GUIDE
Opposition No. 102,966
3
suffix, which applicant claims is frequently used with
various prefixes in the computer and business industries.
Applicant also asserts that opposer’s marks are not
suggestive of online or network services, whereas
applicant’s prefix (“LINE-”) does connote online services.
Finally, applicant alleges that opposer’s goods are directed
to Apple and Macintosh computer users, who are sophisticated
consumers.
The record of this case consists of testimony (and
exhibits) taken by both parties, and notices of reliance
submitted by both parties, as well as the application file.
The parties have submitted briefs but no oral hearing was
requested.
Opposer and Opposer’s Record
Opposer, Mr. Daniel Kegan, testified that MacGuide
Magazine, Inc. began publishing the MACGUIDE magazine in
1985 (dep., 168). This magazine has been distributed in a
number of ways including being sold at newsstands, on CD-
ROMs and more recently being available online and on the
Internet computer network. The MacGuide mark has also been
used in connection with software, credit card services and
hotel and travel services (Kegan dep., 39), although opposer
has apparently discontinued use of the mark in connection
with credit card, hotel and travel services. Opposer's
predecessor spent over $4 million promoting this and other
Opposition No. 102,966
4
marks which end in the suffix GUIDE. Dep. 186. Mr. Kegan
testified that, in March 1994, he obtained the mark MACGUIDE
as well as such other marks for publications as HYPERGUIDE,
PCGUIDE and CD-ROMGUIDE as a result of the bankruptcy of
opposer’s predecessor. Opposer has continued to publish a
magazine and/or newsletter under the mark MACGUIDE and has
begun use of other -GUIDE marks such as OPENGUIDE, WINGUIDE
and POWERGUIDE. According to the testimony, over 100,000
MACGUIDE magazines and other MACGUIDE products have been
distributed over the years by a licensee of opposer.
Although at one time opposer’s publications (and
services) were directed primarily to Apple and Macintosh
computer users, opposer’s focus has recently expanded.
Also, since this proceeding commenced, opposer’s pleaded
OPENGUIDE, WINGUIDE and POWERGUIDE marks have now become
registered. Opposer has also applied to register the marks
WEBGUIDE, NEXGUIDE and HYPERGUIDE. Opposer’s trademarks
have appeared together on computer disks and on opposer’s
Web site. Opposer does not currently conduct paid
advertising under its marks.
According to Mr. Kegan's testimony, opposer's -GUIDE
marks have also been used together at trade shows. Mr.
Kegan also testified that recipients of its publications
have received several of these magazines together, such as
publications identified under the marks MACGUIDE, OPENGUIDE,
Opposition No. 102,966
5
POWERGUIDE, WINGUIDE and HYPERGUIDE. Kegan dep., 39, 110,
115. Opposer stated that he has continued to publish the
MACGUIDE magazine since the mark was acquired in 1994. The
magazine is not sold on newsstands (dep., 239-240), but is
available in computer retail stores and has been distributed
at conferences and trade shows. The magazine is also
available on computer disks, can be accessed by bulletin
board systems (BBS), and is available on the Internet. Mr.
Kegan did not know how many times the magazine had been
published in the last year (dep., 295), but there are no
paying subscribers (dep., 300). Mr. Kegan also testified
that opposer has sold no clothing under the mark MacGuide
and that no credit card services under the mark are being
offered. Dep., 245.
Opposer’s record also includes reference to a
settlement agreement with Apple Computer, Inc. in 1992.
That agreement resulted from a cancellation proceeding
brought by Apple Computer against opposer's predecessor’s
MACGUIDE registration. In this agreement, Apple Computer
recognized the right of opposer's predecessor to use the
mark MACGUIDE in connection with the magazine as well as the
predecessor’s right to an asserted family of –GUIDE marks.
The record also contains testimony and exhibits
concerning opposer's policing of its mark, including a
number of oppositions brought against third parties seeking
Opposition No. 102,966
6
to register marks terminating in the suffix GUIDE. These
marks included TOURGUIDE for information services,
SUPERGUIDE for television accessories, DIRECTGUIDE for
satellite television services, IGUIDE for online computer
services, and a number of other marks such as TECHGUIDE,
CYBERGUIDE, KEY:GUIDE, FLURAGUIDE, UNIGUIDE and NETGUIDE.
These cases were settled by abandonments of or amendments to
the applications involved. Opposer’s testimony also
includes reference to another entity that has apparently
tried to develop a family of –GUIDE marks. Kegan dep., 364.
Mr. Kegan testified that opposer sued Apple Computer
for failure to honor the 1992 settlement agreement entered
into by opposer's predecessor. See Kegan v. Apple Computer,
Inc., 42 USPQ2d 1053 (N.D. Ill. 1996). In that case, Mr.
Kegan complained about the use by Apple Computer of the
marks APPLE GUIDE and MACINTOSH GUIDE for computer software.
In the decision, the District Court, after summarizing the
background of opposer’s dispute with Apple Computer, noted
that Apple had begun to use APPLE GUIDE and MACINTOSH GUIDE
for active-assistance software, and stated that the 1992
agreement between opposer’s predecessor and Apple Computer
was not a bar to consideration of the question of the
genericness of –GUIDE. The Court noted that Apple argued
that –GUIDE is a generic term and that this word thus could
Opposition No. 102,966
7
not serve as the basis for a family of trademarks. The
Court concluded, at 1058-59:
…-GUIDE is used by both parties to describe
a product that provides information and/or
assistance to users of Macintosh computers.
Therefore, the term –GUIDE defines a product
category of which both MACGUIDE, APPLE GUIDE,
and MACINTOSH GUIDE are a part and can therefore
be seen as generic...[I]t appears that no commonly
used alternative to the word “guide” would
effectively communicate the same information
because “guide” is integrally related to a
distinctive characteristic of the services being
provided…
In light of the relevant factors identified
above, this court finds that the term –GUIDE as
contained in MACGUIDE, APPLE GUIDE, and MACINTOSH
GUIDE is so commonly descriptive of the name of
the kind of product that the court finds that the
term should be considered generic. Elan itself
has admitted that it has no claim to the exclusive
use of “the plain word GUIDE standing alone as to
computer programs which instruct, direct, or
guide”… Elan has also admitted that it is not the
exclusive user of –GUIDE in the title of magazines
that instruct, direct, or guide.
The court went on to say that, because the generic term
–GUIDE could not be appropriated by opposer for its
exclusive use, any likelihood of confusion between opposer’s
marks and Apple’s marks must be based on the similarities
between the prefixes. The Court noted opposer’s single-
word, internal-capital style (e.g., MacGuide) and that the
marks of the parties were seen by consumers in different
contexts (a publication vs. an on-screen help function).
The Court concluded that Apple’s use of MACINTOSH GUIDE did
not infringe opposer’s trademarks.
Opposition No. 102,966
8
Mr. Kegan testified herein, at 307, that Apple Computer
has agreed not to use APPLE GUIDE as one word.
When asked on cross-examination whether opposer
believed that it has exclusive rights to use "GUIDE" as a
suffix in trademarks, Mr. Kegan responded, at 274:
A. No, I’ve never said that. The question is
likelihood of confusion.
See also Kegan v. Apple Computer, supra, at 1060.
Opposer is not aware of any instances of actual
confusion involving the marks of the parties.
Applicant’s Record
Mr. Marc Lane testified that he first used the mark
LINEGUIDE on or before May 1995 in connection with his
bulletin board system (dep., 30). At the time, the mark was
used in connection with providing information concerning
online information providers and other online BBS services
(dep., 36). In March of 1996, applicant created his
Internet Web site (dep., 136), which provides information,
according to Mr. Lane, concerning how one accesses the
Internet, information concerning other Internet service
providers and a glossary. Mr. Lane testified that his
services do not target Apple or Macintosh computer users;
nor does applicant provide software, sell computer disks or
CD-ROMs, or render credit card services or sell clothing
under the mark LINEGUIDE. Applicant has not advertised his
Opposition No. 102,966
9
computer information services, and his services are rendered
free of charge.
With respect to his mark, Mr. Lane testified that it is
used without internal capitalization (i.e., the word “guide”
does not begin with a capital "G"), that his mark was
selected without opposer's marks in mind, nor any trademarks
of Apple Computer. In his testimony, Mr. Lane indicates
that the mark NETGUIDE was considered by applicant for use
in connection with his services, but that he discovered that
that mark was already in use (dep., 27). While applicant's
mark is displayed with multicolor underlining, the word
"LINE" is not displayed in rainbow colors, as are opposer's
prefixes. According to Mr. Lane, applicant's mark may
connote an online guide.
Mr. Lane testified that the services of the parties are
different in that opposer provides general information
concerning computers while applicant's services involve how
to find Internet services providers (dep., 61). Mr. Lane
testified that a recent trademark search produced over 800
trademarks and service marks which contained the term
"GUIDE." Finally, Mr. Lane indicated that there have been
no instances of actual confusion involving the parties'
marks. Applicant's mark as used in connection with his
bulletin board service and in connection with his Internet
Web site are reproduced below.
Opposition No. 102,966
10
The third-party registrations made of record by
applicant include such marks as DATAGUIDE for computer
programs, COMPU-GUIDE for computer services and CYBERGUIDE
for a section of a magazine. Applicant contends that these
marks as well as others have computer- or online-related
meanings.
Arguments of the Parties
In arguing its case, opposer contends:
At least by August 1992, the diverse MacGuide
products and services were so strongly marketed
under a series of –Guide trademarks that the
distinctive –Guide trademark family was created…
Opposition No. 102,966
11
Elan’s –Guide trademark family consists of "one-
word trademarks composed of two root phrases,
with the second root phrase beginning with a
capital letter (intercap), with the second root
phrase being GUIDE, and with the first root
phrase evocative of a computer issue." ..
MacGuide evokes the Macintosh computer;
OpenGuide evokes non-proprietary, open standards
and open clarity to lay computer users; WinGuide
evokes Windows programs and being a winner;
PowerGuide evokes the PowerPC microchip (Made by
Motorola and IBM) and computer–power-users;
HyperGuide evokes hypertext and the Internet;
NexGuide evokes computer technical perspectives…
and the NextStep computer operating system Apple
Computer purchased to incorporate into its
Macintosh operating system software… Members of
the MacGuide family are often promoted together,
reinforcing mutual associations to one another
and to computers…
Brief, 6. Further, opposer argues that others in the
computer industry have recognized opposer's trademark rights
(in settlements of the trademark disputes).
It is opposer's position that its printed publications,
online information service, computer software on floppy
disks and on CD-ROMs, credit card services, hotel and travel
services are related to applicant's computer services.
Although it is not clear when opposer last distributed any
issues of the MACGUIDE magazine, opposer contends that the
information in previous issues remains available on the
Internet.
Years after that major multi-million dollar
effort [$4 million promoting magazines and
online information services] at promoting
MacGuide had stopped, people still refer to
MacGuide in quite favorable ways… For example,
MacGuide columnist Steven Bobker is credited
Opposition No. 102,966
12
with his MacGuide role and Bobbing Gradebook
promotes its earlier MacGuide rating. Elan[′s]
recent Angels for Apple promotion receive [sic]
extensive publicity in the computer community.
Helping beleaguered Macintosh computer users,
Elan continues to receive national attention via
adroit public relations and guerrilla marketing.
Brief, 26. Further, it is opposer’s position that, since it
has recently acquired the “macguide” domain name and Web
site, the parties’ services are offered in the same channels
of trade. Opposer contends that lay computer users and
surfing Internet users are likely to be confused when they
encounter applicant's LINEGUIDE mark used in connection with
applicant's computer information service. Finally, opposer,
argues that applicant's actual use of its service mark is
more narrow than that set forth in the application and that
applicant's use was not a bona fide use of the mark in the
ordinary course of trade.2
Applicant, on the other hand, argues that the only
similarity in the marks is the use of the descriptive term
"GUIDE," a term which third parties have used and registered
in a number of other marks. Applicant notes the federal
litigation in which it was determined that the term "GUIDE"
in opposer's marks is generic. Applicant also points out

2 With respect to the ground of lack of bona fide use of the
mark in the ordinary course of trade, we note that this issue was
not pleaded, nor do we believe that this issue was tried.
Applicant was not, therefore, placed on notice that this was an
issue to be determined by the Board. Accordingly, we have given
no consideration to this purported issue.
Opposition No. 102,966
13
that, as used, his mark has no internal capital, as does
opposer’s marks, and that, while applicant’s mark may be
underlined with colored lines, his mark does not have a
prefix in different colors as does opposer’s.
Opposer himself puts little effort or
capital into his "family of –GUIDE
trademarks". The goodwill of opposer's
marks comes almost entirely from his
predecessor (MacGuide Magazine) from whom he
purchased the entire MACGUIDE trademark
"family" in bankruptcy court, long past it's
[sic] heyday, for the small sum of $3,000….
Since then, Opposer has apparently added
-GUIDE trademark registrations by writing
small (several paragraph) essays under the
new trademark names. Opposer does not
receive payment for the material he
publishes… Opposer benefits primarily from
occasionally licensing use of –GUIDE
trademarks to other parties… It appears
that Opposer essentially is attempting to
manufacture a strong family of trademarks to
obtain licensing fees from others wishing to
use a –GUIDE brand. When he does gain
agreement to either stop using a –GUIDE
trademark or to license one of his,
obviously under threat of a prolonged legal
battle, Opposer terms it "recognition" of
his –GUIDE family.
Brief, 7. Finally, concerning applicant's limited use of
his mark, applicant contends:
Applicant has worked hard on his public web
site. Opposer is well aware that this
opposition has left Applicant in doubt for
almost three years as to the ultimate
registrability of his LINEGUIDE service mark
and has caused Applicant to be hesitant to
invest in this mark during that time.
Applicant's use is bona fide.
Brief, 7.
Opposition No. 102,966
14
Applicant also contends that opposer’s rights have not
been the subject of a final Board decision on the merits.
Discussion and Opinion
Upon careful consideration of this record and the
arguments of the parties, we agree with applicant that
confusion is unlikely. While applicant's services listed in
his application include the providing of a wide range of
information over the Internet, and while this description
may encompass the activities opposer performs, we believe
that the differences in the marks and the existence of
third-party marks makes confusion unlikely.
In this regard, we have given some weight to the
conclusions of the District Court in the litigation between
opposer and Apple Computer. The issue concerning the
genericness of a component of opposer's asserted family of
marks is identical to one of the issues before us. Under
the doctrine of collateral estoppel, or issue preclusion, if
an issue is actually and necessarily determined by a court
of competent jurisdiction, that determination may be
conclusive in a subsequent suit involving the same issue. A
non-party to the prior action may invoke this doctrine
against one who was a party to that action unless it appears
that the party against whom the doctrine is asserted did not
have a full and fair opportunity to litigate the issues or
unless the court finds that it is otherwise unfair to permit
Opposition No. 102,966
15
the use of this doctrine. See Perma Ceram Enterprises Inc.
v. Preco Industries Ltd., 23 USPQ2d 1134, 1139 (TTAB 1993).
See also J. Thomas McCarthy, McCarthy on Trademarks and
Unfair Competition, Sections 32:83 and 32:84 (4th Ed. 1999)
("---the modern view of collateral estoppel--- rejects the
mutuality requirement"). We believe that applicant is a
party who may assert collateral estoppel. We have reviewed
opposer’s arguments concerning the inapplicability of the
doctrine to this case, including that opposer now owns
additional registrations, but find them unpersuasive.
Accordingly, we have given appropriate weight to the
finding of the court that "GUIDE" is generic for magazines.
Therefore, this term cannot form the basis of a family of
marks. Marion Laboratories Inc. v. Biochemical/Diagnostics
Inc., 6 USPQ2d 1215, 1219 (TTAB 1988) and McCarthy on
Trademarks and Unfair Competition, Sections 12:1 and 22:61.
While the marks of the parties must, of course, be
compared in their entireties, it is not improper to afford
more or less weight to a particular feature of a mark as
long as the ultimate conclusion as to whether the marks in
question are similar rests on a consideration of the marks
in their entireties. In re National Data Corporation, 753
F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985).
In considering the marks in their entireties, we
believe that applicant's mark LINEGUIDE and opposer's marks
Opposition No. 102,966
16
MACGUIDE, HYPERGUIDE, OPENGUIDE, POWERGUIDE, WINGUIDE,
NEXGUIDE and WEBGUIDE are sufficiently different in sound,
appearance and connotation that there is no likelihood of
confusion when these marks are encountered by computer
users. Not only is applicant’s mark specifically different
from each of opposer’s marks, but also this record
adequately establishes that the relevant public may be
confronted with various other third-party marks also
terminating in the suffix –GUIDE. All of these facts lead
us to conclude that the relevant public is not likely to
believe that applicant’s LINEGUIDE computer information
services emanate from or are sponsored by opposer.
Decision: The opposition is dismissed.
R. L. Simms
R. F. Cissel
C. M. Bottorff
Administrative Trademark
Judges, Trademark Trial and
Appeal Board