Embarcadero Technologies, Inc.v.RStudio, Inc.

Trademark Trial and Appeal Board

Feb 14, 2013

No. 91193335 (T.T.A.B. Feb. 14, 2013)

Mailed:
February 14, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Embarcadero Technologies, Inc.

v.

RStudio, Inc.
_____

Opposition No. 91193335
to applications Serial Nos. 77691980, 77691984 & 77691987
all filed on March 16, 2009

_____

Martin R. Greenstein, Mariela P. Vidolova, and Leah Z.
Halpert of TechMark a Law Corporation for Embarcadero
Technologies, Inc.

Julia Huston, Charles E. Weinstein, Joshua S. Jarvis, and
Anthony E. Rufo of Foley Hoag LLP for RStudio, Inc.
______

Before Bucher, Wellington, and Ritchie,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

Embarcadero Technologies, Inc. (hereinafter,
“opposer”), has opposed three applications of RStudio, Inc.
(“applicant”), to register the mark RSTUDIO, in standard
character form, covering the following goods and services:
Computer software for statistical computing; computer
software for software applications development in
International Class 9;

THIS OPINION IS A
PRECEDENT OF THE TTAB
Opposition No. 91193335
2
Providing training in the use of computer software;
providing training in the use of statistical methods
and related computer software in International Class
41; and

Application service provider (ASP) featuring software
for statistical computing and software applications
development; computer software consultation; design and
development of computer software; technical support
services, namely, troubleshooting of problems with
computer software programs in International Class 42.1

Registration of applicant’s mark in connection with the
applied-for goods and services is opposed on the ground of
priority and likelihood of confusion. Specifically, opposer
alleges that it “is the owner of the trade name and
trademark ER/STUDIO, having used said name and mark
continuously in interstate commerce on and in connection
with computer software and related services since long prior
to the March 16, 2009 [filing date of the three opposed
applications]”; and that “[s]imultaneous use by Applicant of
the alleged mark RSTUDIO on the goods and services set forth
in [the three opposed applications], and Opposer
Embarcadero’s ER/STUDIO mark on its goods and related
services … is likely to cause confusion, mistake or
deception among purchasers, users and the public, thereby
damaging Opposer.”2 Opposer pleaded ownership of U.S.

1 Application Serial Nos. 77691980, 77691984, and 77691987, in
order respectively for each recited class of goods/ services.
The applications were filed on March 16, 2009, based on Section
1(b)(bona fide intent to use the mark in commerce).
2 In the Notice of Opposition, opposer also alleged that
“Applicant did not have the requisite bona fide intent to use the

Opposition No. 91193335
3
Registration No. 2203227 for the mark ER/STUDIO, in typed
character form, for “entity relationship modeling software
for SQL databases” in International Class 9.3
In its answer, as amended, applicant admitted certain
allegations regarding the filing of its applications, and
also admitted that opposer is the owner of the pleaded
registration. Applicant otherwise denied the other salient
allegations in the notice of opposition.

[mark] RSTUDIO … on all of the goods and services set forth [in
the applications] in commerce or otherwise at the time of filing
the [opposed applications], and the applications are thus void
ab initio.” However, opposer did not pursue this claim in its
trial briefs, and therefore we consider this claim to be waived.
Similarly, in opposer’s trial brief, opposer states that the
grounds for opposition include “a false suggestion of connection
under Section 2(a) of the Trademark Act of 1946, 15 U.S.C.
§ 1052(a).” Opposer’s Brief at 8. However, opposer later states
in that same brief that the “sole issue” to be determined by the
Board is likelihood of confusion between the applied-for marks
and opposer’s mark. Opposer’s Brief at 11. We further note that
although the terms “false suggestion of a connection” and
“Section 2(a)” are listed in the cover sheet generated by the
Office’s online filing electronic database (ESTTA) as “grounds
for opposition,” the ground was not sufficiently pleaded or
otherwise elaborated upon in the attached notice of opposition.
Although the content of the ESTTA cover sheet is read in
conjunction with the notice of opposition as an integral
component, PPG Industries Inc. v. Guardian Industries Corp., 73
USPQ2d 1926, 1928 (TTAB 2005), the mere mention of a ground
therein is insufficient. Cf. Melwani v. Allegiance Corp., 97
USPQ2d 1537 (TTAB 2010). For purposes of properly pleading a
claim of false suggestion of a connection under Section 2(a), see
Petroleos Mexicanos v. Intermix S.A., 97 USPQ2d 1403 (TTAB 2010),
and authorities cited therein. Accordingly, and in view of the
fact that opposer has not provided any arguments or evidence
regarding a Section 2(a) claim, we consider this ground also to
be waived.
3 Registered November 10, 1998, renewed.
Opposition No. 91193335
4
Applicant’s Motion to Amend the Application/Section 18
Prior to the close of discovery in this proceeding,
applicant moved to amend the descriptions of its goods and
services in the applications “in the event that the Board
deems such amendments necessary to dismiss the opposition.”4
The proposed amended goods and services read as
follows:
Application Serial No. 77691980: “Computer software
for advanced statistical computing; computer software
for software applications development using the R
computing language and the data from two dimensional
datasets” in International Class 9;

Application Serial No. 77691984: “Providing training
in the use of computer software for advanced
statistical computing using the R computing language
and data from two dimensional datasets; providing
training in the use of advanced statistical methods and
related computer software using the R computing
language and data from two dimensional datasets” in
International Class 41; and

Application Serial No. 77691987: “Application service
provider (ASP) featuring software for advanced
statistical computing and software applications
development using the R computing language and data
from two dimensional datasets; computer software
consultation regarding computer software for advanced
statistical computing using the R computing language
and data from two dimensional datasets; design and
development of computer software for advanced
statistical computing using the R computing language
and data from two dimensional datasets; technical
support services, namely, troubleshooting of problems
with computer software programs for advanced
statistical computing using the R computing language
and data from two dimensional datasets” in
International Class 42.

4 Applicant’s motion filed November 10, 2010.
Opposition No. 91193335
5
(for ease of reference, we have shown additions in
underline, and deletions in strikethrough).
Applicant’s motion was filed without the consent of
opposer, and opposer indeed filed its opposition to the
proposed amendments.5 In an order issued on November 29,
2010, the Board stated that action on the motion would be
deferred until final decision. Accordingly, we now consider
said motion.
Section 18 of the Lanham Act gives the Board the
equitable power to, inter alia, “restrict the goods or
services identified in an application or registration.” 15
U.S.C. Section 1068. Pursuant to Section 18 and in
conjunction with a motion to amend, a defendant may assert
an affirmative defense by moving to restrict its own goods
and/or services in order to avoid any likelihood of
confusion alleged by the plaintiff. Id.; Trademark Rule
2.133. See also TBMP Section 311.02(b) (2012) and cases
cited therein. In order for such an affirmative defense to
be considered, it must be promptly asserted and the proposed
restriction must be set forth in sufficient detail and with
an explanation or allegation as to how the restriction
alleviates the likelihood of confusion. Cf., ProQuest
Information and Learning Co. v. Island, 83 USPQ2d 1351,
1353-54 (TTAB 2007) (applicant failed to state with
Opposition No. 91193335
6
precision how restriction of its own application would aid
in avoidance of confusion); Tea Board of India v. Republic
of Tea Inc., 80 USPQ2d 1881, 1898 (TTAB 2006) (applicant’s
offer to amend its identification of goods given no further
consideration because it would not overcome the likelihood
of confusion); and British Seagull Ltd. v Brunswick Corp.,
28 USPQ2d 1197 (TTAB 1993), aff’d, 35 F.3d 1527, 32 USPQ2d
1120, 1125 (Fed. Cir. 1994) (Board had no duty to address
applicant’s offer to amend in final brief where applicant
failed to file a motion to amend or include proposed
amendment as an affirmative defense in pleading). Ideally,
the Section 18 affirmative defense should be asserted in the
defendant’s answer to put the plaintiff on notice and
shortly thereafter followed by a corresponding motion to
amend the application.
In its answer, applicant does not assert the Section 18
affirmative defense or otherwise raise the issue of a
restriction to its descriptions of goods and services.
Nevertheless, we find applicant’s alternative request to
restrict its descriptions of goods and services timely
inasmuch as its motion was filed before the close of
discovery. Moreover, the issue of the proposed restriction
was clearly tried by the parties and argued in their
respective trial briefs. Accordingly, we deem the answer in

5 Opposer’s brief of November 30, 2010.
Opposition No. 91193335
7
this proceeding to be amended to include the Section 18
affirmative defense. Fed. R. Civ. P. 15(b).
We further note that the Section 18 affirmative defense
is raised in the alternative; applicant did not explicitly
consent to judgment being entered against it with respect to
the original, broader descriptions of goods and services.
In its trial brief, applicant focuses the bulk of its
arguments against finding a likelihood of confusion based on
the restricted, narrower scope of applicant’s goods and
services. Nevertheless, applicant also suggests the
amendments may not be “necessary” and requests that the
Board offer applicant the option to reconsider entry of the
amendments “in the event that the Board determines that
applicant is entitled to registration of its mark even
without the proposed amendments.” Brief, p. 31.
With the above in mind, we address applicant’s Section
18 affirmative defense in this decision, as requested, in
the alternative. That is, we have considered the original,
unamended descriptions of goods in our likelihood of
confusion analysis, and upon finding a likelihood of
confusion therewith, we have also considered whether
applicant has established its Section 18 affirmative
defense, i.e., whether the proposed restrictions negate the
likelihood of confusion.
Opposition No. 91193335
8
The Record
By rule, the record includes the involved application
files. Trademark Rule 2.122(b), 37 C.F.R. 2.122(b). The
pleadings are also automatically of record.
In addition, opposer has submitted the testimony of
Jason Tiret, opposer’s Director of Modeling and Design
Solutions in the Product Management Department, with
attached exhibits.6 Opposer also filed two notices of
reliance on the following materials:
1. Printouts from applicant’s website dated February
28, 2011;

2. Rule 30(b)(6) deposition of RStudio, Inc. and of
Joseph J. Allaire, applicant’s CEO, with attached
exhibits;7

3. Excerpts from the book R in a Nutshell by Joseph
Adler;

4. Copy of an article “RinRuby: Accessing the R
Interpreter from Pure Ruby” by David B. Dahl and
Scott Crawford from the Journal of Statistical
Software;

5. Copy of an article “Collaborative Software
Development Using R-Forge” by Stefan Theuβl and
Achim Zeileis from The R Journal;

6. Copy of an online article “Calling Ruby, Perl or
Python from R”;

7. Webpage printouts from the RubyForge website
http://rubyforge.org/projects/rsruby;

6 Hereinafter cited to as “Tiret Dep. [page]:[line(s)].”
7 Hereinafter cited to as “Allaire Discov. Dep.
[page]:[line(s)].”
Opposition No. 91193335
9
8. Printouts from webpage entitled “What is R?” from
the R-Project’s website http://www.r-
project.org/about.html;

9. Printouts from the “useR! The R User Conference
2010” webpage http://user2010.org;

10. Printouts from the online blog article “Revolution
Analytics Targets R Language, Platform at Growing
Need to Handle ‘Big Data’ Crunching”;

11. Various definitions of the word “statistics”;

12. Printouts from opposer’s website;

13. Printouts from applicant’s website dated May 25,
2011;

14. White paper entitled “R: An Open Source Statistical
Environment” by Valentin Todorov;

15. Copy of the book Using R for Actuarial Science by
Shyamal Kumar;

16. Copy of the online article “Scenarios for Using R
within a Relational Database Management System
Server” by Duncan Temple Lang;

17. Excerpts from the manual R Data Import/Export;

18. The article “Improving the Analysis, Storage and
Sharing of Neuroimaging Data Using Relational
Databases and Distributed Computing” by Uri Hasson
et al.; and

19. Opposer’s website and user guides.

Applicant, during its trial period, filed the testimony
of Joseph J. Allaire, applicant’s CEO, with attached
exhibits.8 Applicant also filed a notice of reliance on the
following materials:

8 Hereinafter cited to as “Allaire Dep. [page]:[line(s)].”
Opposition No. 91193335
10
1. Rule 30(b)(6) discovery deposition of Jason Tiret,
with attached exhibits;9

2. Opposer’s response to applicant’s interrogatory No.
14;

3. Excerpts from the book R in a Nutshell by Joseph
Adler;

4. Applicant’s website dated April 18, 2011;

5. A collection of fifty (50) web pages showing use of
the word “studio”;

6. A collection of fifty (50) web pages showing use of
the term “ER”;

7. Opposer’s listings of its software from its
website;

8. Prices for opposer’s goods taken from opposer’s
website; and

9. The Wikipedia article “Comparison of Statistical
Packages.”

Background Discussion
Before we address the merits of this opposition, we
offer the following background regarding the parties and
their software products and services. In doing so, we
acknowledge from the outset that our likelihood of confusion
determination is, and must be, confined to the
identifications of goods set forth in the applications and
pleaded registration, in addition to any prior common law
rights established by opposer. See J & J Snack Foods Corp.
v. McDonald's Corp., 932 F.2d 1460, 18 USPQ2d 1889 (Fed.
Cir. 1991); Octocom Systems Inc. v. Houston Computers

9 Hereinafter cited to as “Tiret Discov. Dep. [page]:[line(s)].”
Opposition No. 91193335
11
Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir.
1990); and CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198
(Fed. Cir. 1983).
A. Applicant’s Software and Services
Applicant was founded in 2008 by its CEO, Mr. Allaire,
and the RSTUDIO software product was subsequently developed
by applicant. The descriptions of applicant’s goods and
services, as currently found in the applications and
unamended, describe the function of the RSTUDIO software
product in fairly broad terms. That is, based on a reading
of the identification of goods only, it is presumed that
applicant’s software incorporates all types of statistical
computing software, as well as computer software for
developing all types of software applications. Likewise,
the software “training” and “design and development”
services, as currently recited in their respective
applications, are broad enough to include training, design,
and development for all types of software, including the
software described in opposer’s registration.
By way of applicant’s Section 18 defense and proposed
restrictions to the descriptions of goods and services,
applicant’s software and related services are limited to the
field of “advanced” statistical software, using the “R”
computer software programming language, and data from “two
dimensional datasets.” See proposed (amended) descriptions
Opposition No. 91193335
12
above. “R” is defined as “an open source programming
language and software environment for statistical computing
and graphics,” and “an environment within which statistical
techniques are implemented.”10 By itself, R “includes very
barebones tools”11 for the analysis and visualization of
data,12 not the storage and maintenance of data. The
reference to a “two dimensional dataset” is meant to
describe data presented in a way similar to a spreadsheet,
with “a set of variables and then a set of observations of
those variables.”13 As to applicant’s use of the word
“advanced,” this is meant to “make clear what … is widely
understood,” namely, that, in the software industry,
“statistical computing” involves “more sophisticated and
advanced analysis” along the lines of “regression and
multiple regression, analysis of variance time series
forecasting, and other sophisticated analytical tools.”14
Applicant’s Section 18 defense and the import of the
proposed restrictions to its field of software and related
services are supported by the record. That is, applicant’s

10 Opposer’s Notice of Reliance, Exhibit H (R-Project, What is R?,
http://www.r-project.org/about.html).
11 Allaire Discov. Dep. 27:10-11.
12 Opposer’s Notice of Reliance, Exhibit H (R-Project, What is R?,
http://www.r-project.org/about.html).
13 Allaire Discov. Dep. 126:20-23.
14 Allaire Dep. 204:7-23. Applicant notes that the wording
“advanced statistical analysis” in the amended identification “is
simply making explicit what is implicit in statistical
computing.” Id. at 205:17-19.

Opposition No. 91193335
13
CEO, Mr. Allaire, describes the function of applicant’s
RSTUDIO software as designed to act as a set of integrated
tools that make it “easier” and “more productive” to work
with the R computing language.15 Because R is an open
source environment within which statistical techniques are
implemented, it can be easily extended via packages. It is
estimated that there are hundreds of packages that have been
created to do specialized tasks.16 By way of example,
applicant posits that a “user of RSTUDIO software might take
a two dimensional dataset with several points of data
related to patients with diabetes, such as gender,
ethnicity, average weight, average glucose reading, etc.,
and load this dataset into RSTUDIO in order to perform
statistical calculations on the data.” Brief, p. 9, citing
to Allaire Dep. 197:9-201:9. Ultimately, the function of
applicant’s software is limited to that of computer software
for statistical computing using the R computing language and
the data from two dimensional datasets.
Although the opposed applications are based on an
intent to use, there is evidence that applicant’s software
is available for download from its website.17 Applicant
also offers a “hosted” version of its software that can be

15 Id. at 206:24-207:02-07.
16 http://www.r-project.org/about.html, Opposer’s Notice of
Reliance, Exhibit H.
17 Allaire Dep. at 180:18-181:7.
Opposition No. 91193335
14
accessed using a web browser.18 Both the downloadable and
hosted versions of the software are currently in “beta
testing,” meaning applicant has not yet released a final
version of the software.19 Applicant states that consumers
currently do not pay for the software.20 Applicant also
states, “We don’t know what the pricing’s going to be [for
the software] yet.”21
The relevant consumers of applicant’s software are “R
programmers” who “use the R programming language to do
statistical computing.”22 Applicant has indicated that
“almost all” of the early adopters of its software have been
educational institutions.23 These consumers “are solving
complex problems using a complex tool”24 by “mak[ing] a
pretty careful evaluation about what tools they use” and are
considered “highly sophisticated.”25
Regarding applicant’s services, the proposed
identification restrictions limit the services to the field
of software for advanced statistical computing using the R
computing language and the data from two dimensional
datasets. In particular and with respect to applicant’s

18 Id. at 182:22-183:3.
19 Id. at 182:5-9.
20 Id. at 184:16-17.
21 Allaire Discov. Dep. 34:6-7.
22 Allaire Dep. 184:1-3.
23 Allaire Discov. Dep. 34:8-11.
24 Allaire Dep. 184:23-24.
25 Id. at 185:13-23.
Opposition No. 91193335
15
training services in International Class 41, applicant
intends to train others in the use of the R computing
language and RSTUDIO.26 Likewise, for applicant’s services
in International Class 42, applicant intends to provide
access to or use of RSTUDIO over a computer network by way
of a web browser,27 provide guidance on how to conduct
analyses of data and other questions regarding how users may
conduct their work,28 design and develop software within
RSTUDIO to assist users in performing statistical
analyses,29 and provide assistance with troubleshooting
technical problems with the RSTUDIO software.30
Again, while the applications are based on an intent to
use, the evidence shows that applicant’s services are
presently rendered directly from applicant, “typically
through an e-mail.”31 Though no actual prices have been set
for these services, applicant has indicated that it intends
to charge for these services.32 And given that applicant’s
amended identifications relate specifically to its software
product, it is presumed that the relevant consumer for
applicant’s software product is the same consumer of
applicant’s services.

26 Id. at 155:1-2, 156:3-19.
27 Id. at 158:21-23.
28 Id. at 159:5-14.
29 Id. at 160:5-6.
30 Id. at 160:9-16.
31 Id. at 187:2-6.
Opposition No. 91193335
16
When it comes to the actual advertising of applicant’s
software and related services, applicant does not engage in
any “explicit promotional activities”33 but instead relies
primarily on word-of-mouth promotion from its beta
customers.34 In addition, applicant has visited some
schools to promote its goods,35 as well as a conference
“dedicated to the use of R.”36
B. Opposer’s Software
Opposer first developed a software product being sold
under the mark ER/STUDIO in 1997.37 The pleaded
registration for said mark issued in 1998 and covers “entity
relationship modeling software for SQL databases.” The
record reveals that “entity relationship modeling software
for SQL databases” refers to software for developing a
“relational database.”38 A relational database is one that

32 Id. at 186:21-23.
33 Allaire Discov. Dep. 62:11-12.
34 Id. at 62:12-16. See also Allaire Dep. 184:4-9 (“Typically
[customers] would hear from maybe a colleague or a friend that,
hey, there’s a tool out there that makes it easier to work with
R, and so then they would come to the website, maybe look at some
of the screen shots, satisfy themselves that it’s worth their
time to download it, and then download it.”).
35 Allaire Discov. Dep. 62-63:17-6.
36 Id. at 66-67:17-8.
37 Tiret Dep. 131:01, 172:12-14. Prior to this date, Mr. Tiret
testified the product was called ER/1. Id. at 172:6-10; see also
Tiret Discov. Dep. 27:4. The product released as ER/STUDIO would
eventually become known as ER/Studio Data Architect. Tiret. Dep.
173:9-12.
38 Tiret Discov. Dep. 18:18-23, 26:19-27:16. Opposer also notes
in its explanation of its exhibits in its Rebuttal Notice of
Reliance that Exhibit E (excerpts from the manual R Data
Import/Export) consists of a manual that “shows how the R

Opposition No. 91193335
17
stores data in multiple tables, with the tables usually
having a common field that allows the data to be categorized
by a particular event.39 In such a database, the data
relationship is presented visually.40 This is distinguished
from a “two dimensional dataset,” which typically consists
of one table with different values, usually in the forms of
columns and rows.41 Accordingly, the relational database
allows for more factors to be considered than would be found
in a two dimensional database.
In addition to the software product identified in the
registration, opposer has used ER/STUDIO, either by itself
or combined with other wording, on the following
complementary software goods, which opposer refers to
generally as “design and architecture tools”:42

language is well adapted to work with relational databases, such
as ER/Studio.”
39 Tiret Discov. Dep. 17:7-19:13. We also take judicial notice of
the definition of “relational database” from The American
Heritage® Dictionary of the English Language (4th ed. 2000): “A
database system in which any database file can be a component of
more than one of the database’s tables.” The Board may take
judicial notice of definitions obtained from dictionaries that
(1) are available in a printed format, (2) are the electronic
equivalent of a print reference work, or (3) have regular fixed
editions. TBMP §704.12; see Fed. R. Evid. 201; 37 C.F.R.
§2.122(a).
40 Tiret Discov. Dep. 17:21-19:13, 26:19-27:16.
41 See Allaire Dep. 126:20-127:3; Allaire Discov. Dep. 40:17-21-
27.
42 Tiret Dep. 112:24.
Opposition No. 91193335
18
 ER/Studio Data Architect (data modeling tools for
designing and understanding databases);43
 ER/Studio Business Architect (process modeling, or the
exercise of mapping out a business process,44 and
conceptual modeling, or “a way to map out the technical
infrastructure of an organization”45);46
 ER/Studio Software Architect (application
development);47
 ER/Studio Repository (stores database development
models);48
 ER/Studio Portal (searches and reports from a browser
metadata stored in ER/Studio Repository);49
 ER/Studio Metawizard (takes metadata from the logical
or physical design and exports it to another format;50
it “helps translate the model to another format”);51
 ER/Studio Viewer (a read-only product that allows users
to see, navigate, and print databases);52

43 See id. at 115:21-22, 118:12-17, Exhibit 5; see also Tiret
Discov. Dep. 14:12-19:13.
44 Tiret Discov. Dep. 12:16-19.
45 Id. at 12-13:22-1.
46 See Tiret Dep. 115:15-17, 120:8-14-21, Exhibit 5; see also
Tiret Discov. Dep. 19:17-21:14
47 See Tiret Dep. 118:18-120:6-20; see also Tiret Discov. Dep.
21:18-22:25
48 See Tiret Dep. 121:3-25; see also Tiret Discov. Dep. 23:13-22.
49 See Tiret Dep. 121:25-123:3-22, Exhibit 5; see also Tiret
Discov. Dep. 23:13-18.
50 Tiret Discov. Dep. 23:25-25:10
51 Id. at 24:6-7.
52 Id. at 25:19-26:1.
Opposition No. 91193335
19
 ER/Studio Developer Edition (allows users to create
databases and also create software that will interact
with the databases);53
 ER/Studio Enterprise (bundles ER/Studio Business
Architect, ER/Studio Data Architect, ER/Studio Software
Architect, ER/Studio Repository, and ER/Studio
Portal);54
 ER/Studio XE (same as ER/Studio Enterprise, but adds
ER/Studio Metawizard to the bundle of software
provided);55 and
 ER/Studio Standard (“Provides complete environment for
analyzing, designing, creating, and maintaining
database applications”).56
Opposer’s aforementioned software products (or database
“design and architectural tools”) are described by Mr. Tiret
as for “anybody that needs a database, that needs to design
or develop a database,” as well as those that need to
“design and develop the application code that would sit on
top of the database.”57 The software products are offered
to consumers in a variety of ways, such as direct sales
representatives, telephone sales, third-party resellers, and

53 Id. at 26:5-13.
54 Tiret Dep. 118:5-10.
55 Id. at 115:13-15, 118:6-7.
56 Id. at Exhibit 9.
57 Id. 116:15-20.
Opposition No. 91193335
20
opposer’s own e-commerce website.58 Opposer does not,
however, offer these goods in any retail settings where
consumers could walk in off the street and purchase the
goods off the shelf.59 The products are marketed on trade
sites and in trade magazines,60 as well as at an annual
trade show.61 Opposer estimates that it spends $500,000 per
year on its various marketing activities.62 Consumers of
opposer’s goods include “self-employed consultants” building
databases for others and “some academic type of licenses
sold to schools,”63 but opposer notes that its goods are for
“general application use” and are not sold to any specific
industry.64 Within larger organizations, opposer has
identified “data modelers,” “data analysts,” “data
architects,” “database developers,” “database architects,”
“application developers,” “application architects,”
“business analysts,” “database administrators,” “software
engineers,” and “software developers” as potential end users
of the products offered under the ER/STUDIO mark.
The sales cycle for the ER/STUDIO goods ranges
“anywhere from a day to a year,”65 though opposer

58 Tiret Discov. Dep. 45:11-20.
59 Id. at 49:18-25.
60 Id. at 49:15-17.
61 Id. at 54:21-24.
62 Tiret Dep. 132:12-14.
63 Tiret Discov. Dep. 50:19-24.
64 Tiret Dep. 116:14-25.
65 Tiret Discov. Dep. 48:8.
Opposition No. 91193335
21
acknowledges that the one-day sales are “kind of rare.”66
The prices for opposer’s goods range from $500 for ER/STUDIO
VIEWER to $5,995 for ER/STUDIO XE,67 and purchasers must
also pay additional “required maintenance” fees ranging from
$180 to $1,499 at the time of purchase of opposer’s
software.68
Standing
Opposer has established its standing in this proceeding
through its pleaded registration, which applicant has
admitted opposer is the owner of and furthermore was made of
record by opposer by attaching printouts from the Office
electronic database with the Notice of Opposition showing
current status and title thereof. Trademark Rule
2.122(d)(1). See also Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); Lipton
Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185 (CCPA 1982).
Priority
Because opposer’s pleaded registration is of record,
Section 2(d) priority is not an issue in this case as to the
specific goods covered by said registration vis-à-vis
applicant’s marks and goods and services. King Candy Co. v.

66 Id. at 48:22.
67 Id. at 62:21-64:13; see also Applicant’s Notice of Reliance,
Exhibit H.
68 Applicant’s Notice of Reliance, Exhibit H.
Opposition No. 91193335
22
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108
(CCPA 1974).
In addition, opposer has pleaded and attempts to rely
on common law rights in ER/STUDIO, as well as the other
aforementioned ER/STUDIO-formative marks, used on or in
connection with software products that complement opposer’s
mainstay data modeling software tools for designing and
understanding databases. Opposer has also pleaded and
attempts to rely upon common law rights in the ER/STUDIO
mark in connection with consulting services.
In contrast to its rights acquired via its pleaded and
uncontested registration, and to the extent opposer wishes
to rely on its common law rights, it must establish priority
with respect to such rights. That is, opposer must prove by
a preponderance of the evidence that its common law rights
were acquired before any date upon which applicant may rely.
Trademark Act Section 2, 15 U.S.C. §1052; Hydro-Dynamics
Inc. v. George Putnam & Company Inc., 811 F.2d 1470, 1
USPQ2d 1772, 1773 (Fed. Cir. 1987) (The “decision as to
priority is made in accordance with the preponderance of the
evidence”). For priority purposes, applicant, at the very
least, can rely on the filing date of its trademark
applications, March 16, 2009. Zirco Corp. v. American
Telephone and Telegraph Co., 21 USPQ2d 1542, 1544 (TTAB
1991) (“[T]here can be no doubt but that the right to rely
Opposition No. 91193335
23
upon the constructive use date comes into existence with the
filing of the intent-to-use application and that an intent-
to-use applicant can rely upon this date in an opposition
brought by a third party asserting common law rights.”).
Mr. Tiret, opposer’s Director of Modeling and Design
Solutions in the Product Management Department, testified
that opposer began using the mark ER/STUDIO in 1997 in
connection with database design and construction,69 and the
evidence attached to that testimony (consisting of archived
web pages from opposer’s website) supports this assertion.70
The record also shows that opposer began using the mark
ER/STUDIO in connection with other terms on related products
that provide additional functions or extend the capability
of opposer’s flagship database and design software, as
described in the pleaded registration. Specifically,
opposer has used the mark ER/STUDIO REPOSITORY since at
least 2002,71 and the marks ER/STUDIO STANDARD, ER/STUDIO
ENTERPRISE,72 and ER/STUDIO VIEWER since at least 2008.73 In
addition, the record establishes that opposer also began

69 Tiret Dep. 131:01, 172:12-14.
70 Id. at Exhibit 9.
71 Id. at 134:18-24, Exhibits 6, 9.
72 In contrast to how these goods were described in the “Opposer’s
Software” portion of the “Background Discussion” section of this
opinion, this software is described in Exhibit 9 of the Tiret
Deposition as follows: “Includes the server-side ER/Studio
Repository for improved teamwork and enterprise collaboration and
Embarcadero’s business process and conceptual modeling tool,
EA/Studio.”
73 Tiret Dep., Exhibit 9.
Opposition No. 91193335
24
using the marks ER/STUDIO XE, ER/STUDIO DATA ARCHITECT, and
ER/STUDIO BUSINESS ARCHITECT at least as early as 2008.74
Accordingly, we find that opposer has established prior
common law rights in the aforementioned marks on software
products that generally supplement features or functions of
opposer’s entity relationship modeling software for SQL
databases by allowing for the storing of models, the viewing
of databases, and process and conceptual modeling.75
With respect to any common law rights for services, it
has not been shown that opposer has used the mark ER/STUDIO
(alone or in combination with other wording) in connection
with any software-related services prior to March 16, 2009.
In view of the above, our likelihood of confusion
analysis is limited to opposer’s ER/STUDIO registration and
the goods identified therein, as well as opposer’s prior
common law rights in ER/STUDIO-formative marks and the

74 Applicant’s Notice of Reliance, Exhibit H.
75 For a specific breakdown of which software performs what
function, see discussion thereof, supra, pp. 17-19 (“Opposer’s
Software”).
Mr. Tiret’s testimony, and related exhibits, includes
references to other trademarks and software products; however, it
has not been shown by the preponderance of the evidence, that
opposer has prior common law rights in such marks. For example,
one of opposer’s exhibits attached to Mr. Tiret’s testimony
(Exhibit 6) includes references to certain other goods sold under
the ER/Studio Software Architect mark, but there is no indication
that use of such mark on the goods began prior to March 16, 2009.
While certain exhibits display copyright dates of “2009,” this
does not establish that the marks identified in the documents
were actually in use prior to applicant’s filing date such that
prior common law rights may be claimed.

Opposition No. 91193335
25
respective goods on which they are used, vis-à-vis
applicant’s RSTUDIO mark and the goods and services
identified in the applications.
Likelihood of Confusion
Our determination of the issue 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). See also In re Majestic Distilling
Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003).
However, not all the factors are necessarily relevant or of
equal weight, and any one of the factors may control in a
given case, depending upon the evidence of record.
Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d
1344, 98 USPQ2d 1253, 1260 (Fed. Cir. 2011); In re Majestic
Distilling Co., 315 F.3d at 1315, 65 USPQ2d at 1204; see In
re E. I. du Pont de Nemours & Co., 177 USPQ at 567.
A. The similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression.

We initially address the du Pont factor involving the
similarity or dissimilarity of the marks when viewed in
their entireties in terms of appearance, sound, connotation
and commercial impression. See Palm Bay Imports, Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
Opposition No. 91193335
26
1369, 73 USPQ2d 1689 (Fed. Cir. 2005); see also In re E. I.
du Pont De Nemours & Co., 177 USPQ at 567.
Although opposer has demonstrated prior common law
rights in several ER/STUDIO-formative marks, we make a
comparison only between opposer’s ER/STUDIO mark and
applicant’s RSTUDIO mark because it is the most similar
mark, and therefore the one on which opposer is most likely
to prevail. That is, in examining the similarity, the other
ER/STUDIO-formative marks are clearly further removed
inasmuch as they possess additional terms not found in
applicant’s mark. If the opposition is to be sustained
based on opposer’s ER/STUDIO mark, then we need not consider
the other marks. If the opposition cannot be sustained on
the ER/STUDIO mark, it will not be sustained based on other
marks which are more distinguishable from applicant’s mark.
In comparing the RSTUDIO and ER/STUDIO marks, the
obvious points of similarity are that they are prefaced with
the letters “ER” or “R” and share the element “STUDIO.”
Furthermore, while “there is no correct pronunciation of a
trademark,” In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d
1905, 1912 (Fed. Cir. 2012); In re Belgrade Shoe Co., 411
F.2d 1352, 162 USPQ 227 (CCPA 1969), we find that the two
marks are likely to be verbalized in a similar manner by at
least a significant number of consumers. Cf. Interlego AG
v. Abrams/Gentile Entertainment Inc., 63 USPQ2d 1862 (TTAB
Opposition No. 91193335
27
2002) (finding that LEGO and MEGO would be pronounced
similarly). On the other hand, because opposer’s mark
begins with the letter E, there is a noticeable visual
difference in the marks as well as a reason to pronounce the
marks differently.
Our analysis concerning the similarity of the marks,
however, does not end with their appearance and sound.
Rather, we must also look at any commercial impressions or
connotations created by the marks and, in doing so, we
consider the marks in relation to the identified goods and
services. See e.g., Coach Services, Inc. v. Triumph
Learning LLC, 96 USPQ2d 1600 (TTAB 2010), aff’d, 101 USPQ2d
1713 (Fed. Cir. 2012) (COACH for educational software does
not dilute or create likelihood of confusion with COACH for
handbags, luggage, etc.); In re Sears, Roebuck & Co., 2
USPQ2d 1312 (TTAB 1987) (CROSSOVER for brassieres creates a
different commercial impression from CROSSOVER for ladies'
sportswear); In re British Bulldog, Ltd., 224 USPQ 854 (TTAB
1984) (PLAYERS for shoes engenders a different commercial
impression from PLAYERS for underwear); see also In re
Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1373
(Fed. Cir. 2004) (“The Board must, of course, determine the
commercial impression of a mark in the proper context of the
goods or services associated with that mark.”) (citation
omitted).
Opposition No. 91193335
28
In this case, the parties’ marks engender different
commercial impressions when considered in the context of
applicant’s described goods and services, as amended, and
opposer’s goods. That is, each of the letter prefixes
employed in the marks, “R” and “ER”, has a uniquely
different and specific meaning as applied to the respective
types of software being sold under each mark. First, with
respect to opposer’s mark, consumers of opposer’s entity
relationship modeling software will understand the letters
“ER” as a recognized abbreviation for “entity relationship.”
The record includes printouts from approximately fifty (50)
different websites showing the acronym “ER” as an
abbreviation or in a substantially synonymous manner as the
term “entity relationship” in connection with databases.76
The following are representative excerpts from these
websites:
http://databases.about.com/cs/specificproducts/g/er.
htm: “An entity-relationship (ER) diagram is a
specialized graphic that illustrates the
interrelationships between entities in a database.”

http://searchsqlserver.techtarget.com/definition/ent
ity-relationship-model: “The entity-relationship
model (or ER model) is a way of graphically
representing the logical relationships of entities
(or objects) in order to create a database.”

http://www.pcmag.com/encyclopedia_term/0,2542,t=enti
ty+relationship+model&i=42662,00.asp: “Definition
of: entity relationship model. A database model
that describes the attributes of entities and the

76 Applicant’s Notice of Reliance, Exhibit F.
Opposition No. 91193335
29
relationships among them. An entity is a file
(table). Today, ER models are often created
graphically, and software converts the graphical
representations of SQL code required to create the
data structures in the database.”

http://www.utexas.edu/its/archive/windows/database/d
atamodeling/index.html: “This document is an
informal introduction to data modeling using the
Entity-Relationship (ER) approach.”

http://www.aquafold.com/er-modeler.html: “Aqua Data
Studio offers an Entity Relationship (ER) Modeler
for all major RDBMSes.”

Moreover, opposer has acknowledged that most of the
users of its products, or database modeling software in
general, would understand “ER” to mean “entity
relationship.”77
Applicant’s mark, on the other hand, is prefaced with
the letter “R” and, as previously discussed, R is the name
of the software programming language that provides the
subject matter and field of use for applicant’s RSTUDIO
software and related services, as amended. Thus, the “R”
element of applicant’s mark clearly identifies the nature of
applicant’s advanced statistical computing software using
the R computing language as well as the training and
consulting services involving the R programming language.
Consumers of the described goods and services will
immediately understand the descriptive significance of R, as

77 Tiret Discov. Dep. 95:8-24.
Opposition No. 91193335
30
used in applicant’s mark in connection with the goods and
services.
As to the latter, common element, STUDIO, the record
establishes convincingly that this term is used frequently
by third parties in the names of various types of software
products. There are fifty (50) different websites using the
word “studio” in connection with or on software goods.78
The following are representative examples:
http://www.aquafold.com (“Aqua Data Studio” for
database software);

http://datafeedstudio.com (“Datafeed Studio” for
database development software);

http://www-01.ibm.com/software/data/optim/data-
studio (“IBM Data Studio” for database development
and management software);

http://www.support.sas.com/rnd/app/studio.html
(“SAS/IML Studio” for statistical programming
software);

http://www.sqlstudio.com (“SQL Studio Data Compare”
for database comparison and development software)

http://www.sqlmanager.net/products/studio/oracle
(“EMS SQL Management Studio 2010 for Oracle” for
database administration and development software)

In addition, opposer has acknowledged that STUDIO is
“sometimes used in the software industry to suggest a
collection of tools or programs in a way somewhat analogous
to what one may find in an artist’s ‘Studio’ or a music

78 Applicant’s Notice of Reliance, Exhibit E.
Opposition No. 91193335
31
‘Studio’.”79 Opposer’s witness, Mr. Tiret, characterized
“studio” as “a general term” used in connection with
software.80
Based on the record, we find that the common term,
STUDIO, is highly suggestive and commonly adopted by third
parties in connection with software. It thus lacks any
significant degree of distinctiveness so as to warrant
anything more than a narrow scope of protection. See Rocket
Trademarks Pty Ltd. v. Phard S.p.A., 98 USPQ2d 1066, 1075-77
(TTAB 2011); Knight Textile Corp. v. Jones Investment Co.,
75 USPQ2d 1313, 1315-17 (TTAB 2005). Our primary reviewing
court has long held that highly suggestive common elements
are not accorded great weight in the likelihood of confusion
calculus. See, e.g., Pioneer Hi-Bred Corn Co. v. Welp, 280
F.2d 151, 126 USPQ 398 (CCPA 1960) (“The record shows that
both parties deal in hybrid poultry, and ‘Hy’ therefore has
a suggestive significance, hence is not entitled to as great
weight in determining likelihood of confusion as an
arbitrary word or syllable.”); Lauritzen & Co. v. The Borden
Co., 239 F.2d 405, 112 USPQ 60, 62 (CCPA 1956) (“In the
instant case, the syllable ‘lac,’ which is common to the two
trademarks under consideration, has a somewhat descriptive
connotation as applied to milk products, and has been

79 Id. at Exhibit B, at p. 11 (opposer’s response to applicant’s
interrogatories).
Opposition No. 91193335
32
commonly used as a portion of trademarks for such products.
Accordingly, it should be given little weight in determining
whether those marks are confusingly similar.”); see also
Packard Press, Inc. v. Hewlett-Packard Co., 227 F.3d 1352,
56 USPQ2d 1351 (Fed. Cir. 2000) (“it is proper to give
greater weight to the PACKARD portion of the PACKARD
TECHNOLOGIES mark on the ground that the word “technology”
is highly suggestive/merely descriptive with respect to the
services at issue”); and Land-O-Nod Co. v. Paulison, 220
USPQ 61 (TTAB 1983) (CHIROPRACTIC and CHIRO-MATIC).
Accordingly, we find a degree of similarity in the
marks’ appearance and sound; however, each mark possesses a
separate and distinctively different commercial impression
and connotation. The common element STUDIO is highly
suggestive and weak and commonly adopted in the field of
software. Consumers, viewing the marks in their entireties,
will therefore focus on the initial letters, R and ER, and
when viewing these marks on or in connection with the
respective types of software and services, they will be able
to distinguish the marks.81 Accordingly, this du Pont

80 Tiret Discov. Dep. 97:13-14.
81 For sake of clarity, we do not find that the letter “R” will
necessarily have the same distinctive connotation when considered
in the context of applicant’s broadly-worded, unamended goods and
services. Without the Section 18 defense proposed amendments to
applicant’s goods and services, it stands to reason that the
letter “R” would be less likely understood as a reference to the
statistical software computing language.
Opposition No. 91193335
33
factor weighs in favor of not finding a likelihood of
confusion, despite the aural and visual similarity of the
marks.
B. The similarity or dissimilarity and nature of the
parties’ goods and services

We now turn to a consideration of the relatedness of
the goods and services at issue in this case. As previously
discussed, our likelihood of confusion determination is
confined to the identifications of goods and services set
forth in the opposed applications and the goods in the
pleaded registration, as well as those goods on which
opposer has established prior common law use.
In comparing the parties’ goods and services, we
consider whether “the respective products are related in
some manner and/or if the circumstances surrounding their
marketing are such that they could give rise to the mistaken
belief that they emanate from the same source.” Coach
Services, Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101
USPQ2d 1713, 1722 (Fed. Cir. 2012) (citing 7–Eleven Inc. v.
Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)). On the other
hand, and with particular relevance to this proceeding,
given that computer software is employed in nearly all
industries and facets of life, the fact that both parties’
goods are computer software is not sufficient, in and of
itself, to establish a relationship between the goods. See,
e.g., M2 Software, Inc. v. M2 Communications, Inc., 450 F.3d
Opposition No. 91193335
34
1378, 78 USPQ2d 1944, 1948 (Fed. Cir. 2006) (“Moreover,
given the pervasiveness of software and software-related
goods in society, it would be inappropriate to presume
relatedness on the mere basis of goods being delivered in
the same media format, especially where, as here, the goods
described in both the application and registration are
defined narrowly, along distinct industry lines.”);
Electronic Data Systems Corp. v. EDSA Micro Corp., 23 USPQ2d
1460, 1463 (TTAB 1992) (“All computer software programs
process data, but it does not necessarily follow that all
computer programs are related. Given the ubiquitous use of
computers in all aspects of business in the United States
today, this Board and its reviewing Court have rejected the
view that a relationship exists between goods and services
simply because each involves the use of computers.”).
With the above in mind, we first address applicant’s
described goods and services, as published for opposition
and without regard to the proposed amended identifications,
vis-à-vis opposer’s goods, and readily find them to be
related. Applicant’s “computer software for software
applications development” is broad enough to include
database software applications and, in which case, would
clearly be related to opposer’s database modeling software.
The unamended descriptions of services are even more broadly
termed and encompass training and consulting services in the
Opposition No. 91193335
35
particular field of opposer’s database modeling software.
Accordingly, we find applicant’s described goods and
services, without amendments thereto, are related to
opposer’s software.
This brings us to a second, separate analysis under
Section 2(d), involving applicant’s goods and services, as
described in the amended descriptions, vis-à-vis opposer’s
goods. Again, by way of the amendments, the International
Class 9 goods are identified as, “computer software for
advanced statistical computing using the R computing
language and the data from two dimensional datasets.”
Similarly, applicant has restricted its training, consulting
and application service provider (ASP) services in
International Classes 41 and 42 to the field of software
using the R computing language and data from two dimensional
datasets.
Applicant’s proposed amendments to its descriptions of
goods and services are significant; they narrow applicant’s
software goods and related services to a particular field of
use that is unrelated to opposer’s software. Applicant’s
software cannot function unless the R computing language is
part of a user’s system.82 Applicant’s software also cannot
be used to construct or maintain a relational database83 and

82 Allaire Dep. 124:16-125:3.
83 Id. at 134:3-5.
Opposition No. 91193335
36
does not have the inherent ability to interface or interact
directly with relational databases.84 Ultimately, applicant
provides software for advanced statistical analysis of
external two-dimensional data.85
Opposer points to the fact that its software performs
statistical analysis. However, the nature of the analysis
is quite different from that performed by applicant’s
software. Opposer’s software is quite removed from the R
computing language and has no native ability to perform
statistical analysis of external data in the databases
ultimately created by users of its software.86 Rather, any
statistical analyses performed by opposer’s software is
confined to “metadata,” which is defined as, “details of the
information contained in a large computer database, for
example who wrote the information and what format it is
in.”87 Thus, it appears that the statistical functions
performed by opposer’s software are merely ancillary to the
main function of the software, which is database design and
development. We consider opposer’s software statistical
feature as being akin to word processing software that also
provides statistical analysis in the form of providing the

84 Id. at 131:21-132:05.
85 Id. at 128:6-11.
86 Tiret Dep. 174:6-9.
87 We take judicial notice of the dictionary definition of
“metadata” from Macmillan Dictionary (2012), available at

Opposition No. 91193335
37
number of pages, words, paragraphs, lines, and characters in
a written document through a “word count” or similar
feature. The fact that word processing software may provide
a statistical analysis in such a manner does not make it
software for statistical analysis, and consumers would not
purchase it to perform statistical analysis. Another
example is video game software, which may provide statistics
such as number of games played, high scores, and win/loss
ratios. Again, however, the fact that video game software
may offer certain game statistics does not mean that
consumers would consider it software for statistical
analysis. In sum, it remains that opposer’s software
products, even in expanded form and including all features
for which it has shown prior common law use, cannot be
considered software for statistical analysis or otherwise
sufficiently related to applicant’s software.
Opposer argues that various third-party “plug-ins” and
“bridge” software are available that may make applicant’s
software compatible with opposer’s software. We have
considered this argument and the evidence in support
thereof. However, this does not persuade us that the
parties’ respective software products are related. Although
a consumer may conceivably use opposer’s software to develop

http://www.macmillandictionary.com/dictionary/american/metadata.
See n. 39, supra.
Opposition No. 91193335
38
a database and then, with the assistance of third-party
plug-in software, applicant’s software may be used later to
analyze the data that populates the database, this does not
necessarily translate into the parties’ software products
being related. The functions of the software products
remain very different and would be so viewed by the
respective users. That is, even if RSTUDIO users could use
third-party plug-in software so that they could access data
from an ER/STUDIO-developed (or other entity relationship)
database, the fact remains that statistical computing
software is very different from design tool software used
for designing and maintaining relational databases. In re
Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1692 (Fed.
Cir. 1993); Edwards Lifesciences Corp. v. VigiLanz Corp., 94
USPQ2d 1399 (TTAB 2010) (we are not concerned with mere
“theoretical possibilities” of likelihood of confusion).
We have also considered opposer’s argument that
relevant purchasers would think the different products
related due to opposer’s broad suite of software products:
“a customer can use ER/STUDIO to design a database or
software and then go in to build applications on top of the
database or software using [opposer’s software tools].”
Brief, p. 40. In this regard, although we have found the
evidence lacking with regard to establishing priority as to
opposer’s common law rights in ER/Studio Software Architect,
Opposition No. 91193335
39
we nevertheless consider the evidence probative to the
extent that it shows related software products and portrays
a possible natural scope for expansion. After careful
consideration of all the software products for which opposer
has established prior common law rights in the mark
ER/STUDIO, we do not find that they, individually or as a
group, are sufficiently related to applicant’s goods or
services; nor does their existence establish a relationship
between opposer’s entity relationship modeling software for
SQL databases and applicant’s goods and services, or
otherwise bring them closer. Rather, opposer’s software
products being sold under the ER/STUDIO or ER/STUDIO-
formative marks, as described above, are very much
integrated with opposer’s database modeling software
identified in the pleaded registration. Opposer’s software
products, for which it has established prior common law
rights, do not appear to have any connection to applicant’s
advanced statistical software using the R computing language
and the data from two dimensional datasets, and we do not
find them to be significantly related.
In conclusion, we find applicant’s software and related
services, identified in their broader form in the
applications as published, to be related to opposer’s
software. In contrast, taking applicant’s proposed
amendments into account, we do not find any significant
Opposition No. 91193335
40
relationship between the respective software products of the
parties other than falling under the very broad product
category of “software.” Applicant’s services are even one
step further removed inasmuch as they involve a service,
e.g., consulting, training, technical support, etc., in the
field of the R computing language software.
C. Trade channels, classes of purchasers, and conditions
under which and buyers to whom sales are made, i.e.,
“impulse” vs. careful, sophisticated purchasing.

The parties have presented contrasting arguments on the
du Pont factors involving relatedness of trade channels and
classes of purchasers, as well as the conditions under which
the parties’ software products and services are sold.
Ultimately, and for reasons explained further below, these
factors either remain neutral in our likelihood of confusion
analysis or weigh in favor of finding no likelihood of
confusion.
As to the classes of purchasers, the parties have
correctly noted that the applications and pleaded
registration do not contain any limitations in their
descriptions of the goods and services. We must therefore
presume that they travel in the normal trade channels and
are offered to the usual classes of purchasers for the
respective goods and services. Citigroup Inc., 637 F.3d
1356, 98 USPQ2d 1261; Hewlett-Packard Co. v. Packard Press
Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002).
Opposition No. 91193335
41
However, because opposer’s goods are not the same as
applicant’s goods and services, as identified in its amended
descriptions, we cannot presume these trade channels and
classes of purchasers to necessarily be the same. The
record does not establish that the normal trade channels or
classes of purchasers for opposer’s entity relationship
modeling software for SQL databases match the trade channels
and classes of purchasers for applicant’s software goods and
services. Instead, the record as a whole suggests that the
R computational language is used mostly by statisticians
while ER/STUDIO is mostly used by information architects and
database administrators responsible for the design, storing
and maintenance of large databases. That is not to say that
there is no possibility of any overlap between the two
classes of consumers. However, as seen under the fourth
du Pont factor, any overlap between the two will involve
sophisticated users in both professions.
Indeed, the nature of the parties’ respective software
products makes any potential confusion unlikely. The record
shows that consumers of both opposer’s and applicant’s
respective goods and services are likely to be very
knowledgeable of the types of products and the purpose of
what they are purchasing. Again, opposer’s own witness
testified that while it is possible for a sales cycle of
opposer’s software to be “one-day,” this would be “kind of
Opposition No. 91193335
42
rare” and typical sales cycles are more likely a question of
“maybe weeks, months....” Moreover, the pricing point of
opposer’s software varies, and the fact that it is not found
in retail stores leads us to conclude that opposer’s
products are not inexpensive and require considerable
forethought prior to purchase. As to applicant’s software,
it has been shown that the software will be sought by
consumers who are equally experienced in their specific
field, namely, advanced statistical analysis, and they will
be looking to use applicant’s software for particular
purposes which are rather different from the uses of
opposer’s software. In short, consumers of both parties’
software are likely to be sophisticated and well-informed in
seeking the respective and very different products and
services of applicant and opposer.
The fact that the parties’ goods are of a very
technical and specialized nature, not the types of software
to be purchased in retail stores, and the fact that they
will be purchased by technology professionals highly
familiar with the different nature, use and purpose of each
software product, carry great weight and diminish any
likelihood of confusion. See Electronic Design & Sales Inc.
v. Electronic Data Systems Corp., 954 F.2d 713, 21 USPQ2d
1388, 1391 (Fed. Cir. 1992) (“sophistication is important
and often dispositive because sophisticated consumers may be
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43
expected to exercise greater care;” reversing the Board and
finding no likelihood of confusion resulting from the
contemporaneous use of E.D.S. and EDS despite the fact that
“the two parties conduct business not only in the same
fields but also with some of the same companies.”). See
also J. Thomas McCarthy, McCarthy on Trademarks and Unfair
Competition § 23:101 (4th ed. 2009) (“Where the relevant
buyer class is composed solely of professional, or
commercial purchasers, it is reasonable to set a higher
standard of care than exists for consumers.”).
Based on the record and the circumstances particular to
this case, the factors involving purchasing conditions and
sophistication of consumers weigh in favor of finding no
likelihood of confusion.
E. Balancing the factors – Applicant’s Section 18 Defense
In balancing the likelihood of confusion factors based
on the unamended goods and services in the involved
applications, we find there would be a likelihood of
confusion. Accordingly, applicant’s assertion of the
Section 18 defense, alternatively raised in the event the
Board finds a likelihood of confusion, is relevant.
Applicant has established its Section 18 defense. With
the amended descriptions of goods and services in place, and
upon weighing all relevant du Pont factors, we find no
likelihood of confusion. Although the marks are similar in
Opposition No. 91193335
44
sound and appearance, they possess different connotations
and create quite different commercial impressions when
viewed and understood in the context of the parties’
respective goods and services. The shared element, STUDIO,
is extensively used by third parties in connection with
various kinds of software, and consumers are therefore less
likely to attribute source-identifying significance in this
highly suggestive term. Thus, the overall commercial
impression of and connotation created by applicant’s mark,
RSTUDIO, is dominated by the prefix R and will be readily
understood as a reference to the R programming language. By
contrast, the ER prefix in opposer’s mark informs consumers
of the function or field of use for opposer’s entity
relationship (ER) software. The respective software
products possess very different functions and purposes and
it is unlikely they will be used in conjunction with one
another in a meaningful manner whereby consumers would
mistakenly believe they emanate from a common source.
Significantly, it has also been shown that consumers of the
respective goods and services possess a degree of
sophistication. The respective consumers will seek out the
software products with a higher level of forethought and
knowledge in the distinctively different functions of the
parties’ software.
Opposition No. 91193335
45
Decision: Applicant’s motion to amend the involved
applications is granted and the descriptions of goods and
services are amended accordingly.
The opposition is dismissed and the involved
applications, as amended, will be forwarded for issuance of
notices of allowance.