Digi Int’l. Inc.v.ControlNet, Inc.

Trademark Trial and Appeal Board

Nov 2, 2000

No. 91111240 (T.T.A.B. Nov. 2, 2000)

10/31/00
Paper No. 12
ejs
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Digi International Inc.
v.
ControlNet, Incorporated
_____
Opposition No. 111,240
to application Serial Nos. 75/185,410 and 75/185,625
filed on October 22, 1996
_____
Marsha Stolt, Jana L. France, Stephen R. Baird and
Stephen C. Lee of Fish & Richardson P.C. for Digi
International Inc.
Jonathan O. Scott of Hickman Beyer & Weaver LLP for
ControlNet, Incorporated
______
Before Seeherman, Quinn and Walters, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Digi International Inc. has opposed Controlnet,
Incorporated's applications to register DIGIHOME1 and
DIGIWIRE,2 both filed on October 22, 1996 on the basis of

1 Application Serial No. 75/185,410.
2 Application Serial No. 75/185,625.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Opposition No. 111,240
2
a bona fide intention to use the mark in commerce, for
"computer software for the development, design and
manufacture of semiconductor cores and integrated
circuits; semiconductor cores, integrated circuits and
integrated circuit subassemblies for use with computer
network protocols" in Class 9, and "design of
semiconductor cores, integrated circuits and computer
software for use by the computer communications and
computer networking industries."
As grounds for opposition opposer has alleged that
it manufactures and sells, under the housemark DIGI,
computer connectivity hardware and software, and
provides, under the DIGI mark, various services connected
with such goods, including installation, maintenance,
repair, training, technical support and design. Opposer
has further alleged that it owns registrations for the
marks DIGIBOARD, DIGI and design and DIGI INTERNATIONAL,
all for use in connection with various types of computer
connectivity hardware and software; that it has been
using the formative DIGI in connection with computer
connectivity hardware and software and associated
services since 1985, and has applied to register the mark
DIGIFAX, DIGI BOARD CLASSIC, DIGI and DIGI (stylized)

Opposition No. 111,240
3
prior to the filing date of applicant's applications;
that opposer owns a family of DIGI marks; and that
applicant's use of DIGIHOME and DIGIWIRE for its
identified goods and services, particularly because they
are used with computer network protocols, is likely to
cause confusion or mistake or to deceive.
In its answer applicant denied all the salient
allegations of the notice of opposition, admitting only
that the pleaded registrations issued, and that the
applications were filed.
The record includes the pleadings and evidence
submitted by opposer under a notice of reliance. The
evidence consists of certified status and title copies of
opposer's pleaded registrations and of the registrations
issuing from its pleaded application for DIGI
CLASSICBOARD and an unpleaded application for DIGI
CONNECTS and design,3 as follows:
DIGIBOARD microcomputer hardware and
computer programs for use in
communications4;

3 Although opposer made no mention of a pending application for
this mark in its notice of opposition, in its requests for
admission it made specific requests relating to likelihood of
confusion with this mark and pending application. Accordingly,
we deem that the issue of likelihood of confusion with respect
to this mark was tried, and therefore deem the pleadings to be
amended pursuant to Rule 15(b) of the Federal Rules of Civil
Procedure.
4 Registration No. 1,666,495, issued December 3, 1991; Sections
8 and 15 affidavit filed.
Opposition No. 111,240
4
microcomputer circuit boards and
peripherals for use in connection
with multi-user systems and local
area networks; and microcomputer
software, namely, software for
operating such microcomputer
hardware, software for terminal
emulation, software for data
communications in multi-user
systems, software for data
communications in local area
networks and software for remote
local area network access5;
DIGI INTERNATIONAL microcomputer hardware, circuit
(INTERNATIONAL boards, microcomputer
peripherals,
disclaimed) and software, namely, software
for
operating such microcomputer
hardware, software for terminal
emulation, software for data
communications in multi-user
systems, software for data
communications in local area
networks, and software for remote
local area network access, all
for use in data communications6;
DIGI CLASSICBOARD computer network connectivity
hardware and software7; and
computer hardware and software
for data communications and
hardware and software designed to
operate with data communications
products.8

5 Registration No. 2,019,613, issued November 26, 1996.
6 Registration No. 2,132,925, issued January 27, 1998.
7 Registration No. 2,176,760, issued July 28, 1998.
8 Registration No. 2,193,984, issued October 6, 1998.
Opposition No. 111,240
5
Opposer has also submitted, under a notice of
reliance, copies of the interrogatories, document
production requests and requests for admission that it
served on applicant, along with a declaration by its
attorney attesting to applicant's failure to respond
thereto. The interrogatories and requests for production
of documents have no evidentiary value. (Opposer never
made a motion to compel; further, even if applicant had
provided responses to the document production requests,
such responses cannot be made of record by notice of
reliance. See Trademark Rule 2.120(j)(3)(ii).) However,
Rule 36(a) of the Federal Rules of Civil Procedure (made
applicable to Board proceedings by Trademark Rule
2.116(a)) provides that the matter of which an admission
is requested is deemed admitted unless, within 30 days
after service of the request, the party to whom the
request is directed serves upon the requesting party a
written answer or objection. Because applicant made no
response whatsoever to the requests for admission, we
deem all the matters contained therein to be admitted.
Applicant did not submit any evidence. Only opposer
filed a brief. An oral hearing was not requested.
Priority is not in issue in view of opposer's
submission of its pleaded registrations and the
Opposition No. 111,240
6
registrations which issued from its applications, as set
forth above. King Candy Company v. Eunice King’s
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
Because opposer did not submit any evidence with
respect to its alleged family of DIGI marks, we must
consider the question of likelihood of confusion with
respect to the individual marks. Our determination of
likelihood of confusion is based on an analysis of all of
the probative facts in evidence that are relevant to the
factors set forth in In re E.I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
Applicant has admitted that its goods and services
are closely related to the goods identified in each of
opposer's registrations; that applicant's goods and
services are in the same field, and that its DIGIWIRE and
DIGIHOME products will be sold in the same or similar
channels of trade as are opposer's computer network
connectivity hardware and software products provided
under its various DIGI marks; and that there is overlap
of the potential purchasers of opposer's identified
products provided under its DIGI marks and the potential
purchasers of applicant's products and services offered
under the marks DIGIWIRE and DIGIHOME. Essentially,
then, we are dealing with closely related goods and/or
Opposition No. 111,240
7
services, sold through the same or similar channels of
trade, and to the same purchasers.
We further find that applicant's marks are very
similar to opposer's various DIGI marks. DIGI is clearly
the dominant part of each of opposer's marks. It is the
sole verbal element of DIGI and design, and therefore the
portion that consumers are more likely to note and
remember. See In re Appetito Provisions Co., 3 USPQ2d
1553 (TTAB 1987). In the other marks, the additional
words have a suggestive or descriptive connotation, such
that DIGI would have the stronger source-identifying
role.
DIGI is also the dominant portion of applicant's
marks; it is the beginning element, and it is followed by
words with a descriptive or suggestive connotation in
connection with applicant's identified goods and
services. Moreover, applicant has admitted that it is
not aware of any third-party uses of a DIGI-containing
mark in connection with computer network connectivity
hardware and software, nor is there any evidence of such
use or registrations in the record.
For the foregoing reasons, we find that applicant's
use of the marks DIGIWIRE and DIGIHOME in connection with
its identified goods and services would be likely to
Opposition No. 111,240
8
cause confusion with opposer's registered marks DIGI and
design, DIGI INTERNATONAL, DIGIBOARD, DIGICLASSICBOARD
and DIGI CONNECTS and design.9
We would also point out that applicant has admitted
that "[o]pposer's DIGI mark is well known in connection
with computer network connectivity hardware and software"
(Admission No. 30) and that it is a strong mark when used
in connection with such goods.10 Admission No. 32.
Giving the appropriate weight to this factor in the
likelihood of confusion analysis, the case for finding
likelihood of confusion is even stronger with respect to
opposer's DIGI and design mark.
Decision: The opposition is sustained.
E. J. Seeherman
T. J. Quinn

9 In reaching this decision we have noted applicant's admission
that applicant's use of the marks DIGIWIRE and DIGIHOME would be
likely to cause confusion with "Opposer's above identified Digi
marks." Requests for Admission Nos. 25 and 26. We point out
that the issue of likelihood of confusion is a matter of law,
and must be determined by the Court; thus, although admissions
by a party may be considered in reaching this determination, the
ultimate decision must rest with the trier of fact.
10 We have assumed that the reference in the requests for
admission is to opposer's mark DIGI and design, since the other
pleaded marks include other wording.
Opposition No. 111,240
9
C. E. Walters
Administrative Trademark Judges
Trademark Trial and Appeal Board