Haverly Systems, Inc.v.Omni Flow Computers, Inc.

Trademark Trial and Appeal Board

Dec 12, 2001

OPP (T.T.A.B. Dec. 12, 2001)

8/17/01

Hearing: Paper No. 71
July 10, 2001 RFC

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Haverly Systems, Inc.
v.
Omni Flow Computers, Inc.
_____

Opposition No. 99,915
to application Serial No. 74/387,681
filed on May 6, 1993.
_____

John Rannells of Baker & Friedman for Haverly Systems,
Inc.

Wayne Risoli of Chamberlain, Hrdlicka, White, Williams &
Martin, and Douglas Rommelmann and Gregory Hasley of
Akin, Gump, Strauss, Hauer & Feld, L.L.P. for Omni Flow
Computers, Inc.
______

Before Cissel, Rogers and Drost, Administrative Trademark
Judges.

Opinion by Cissel, Administrative Trademark Judge:
Applicant filed the above-referenced application to
register the mark “OMNI” on the Principal Register for
what were subsequently identified by amendment as “flow
measurement and control computers featuring integrally
attached keypads for the measurement and control of
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Opposition No. 99,915
2
liquid hydrocarbon and gas flows,” in Class 9; and for
“printed matter, namely user manuals for measurement and
control computers and controllers for use in the
measurement and control of hydrocarbon liquid and gas
flows,” in Class 16. The basis for the application was
applicant’s claim of use of the mark on these products
since December 7, 1990, and use of the mark on them in
interstate commerce since May 2, 1991.
After the application was published for opposition,
a Notice of Opposition was timely filed by Haverly
Systems, Inc. As grounds for opposition, opposer alleged
prior use and registration1 of the same mark, “OMNI,” for
computer software, and that because the marks are
identical and the goods are closely related, confusion is
likely within the meaning of Section 2(d) of the Lanham
Act. Applicant denied the essential allegations set
forth in the Notice of Opposition.
A trial was conducted in accordance with the
Trademark Rules of Practice, the parties filed briefs2,
and an oral hearing was conducted before the Board on the
date indicated above.

1 Reg. No. 1,691,194, covering “pre-recorded computer programs,”
issued on the Principal Register on June 9, 1992; affidavit
under Sections 8 and 15 of the Act accepted and acknowledged.
2 Opposer’s reply brief was not considered because opposer
failed to comply with Trademark Rule 2.128(b).
Opposition No. 99,915
3
The record created by the parties in this proceeding
is substantial. It includes the transcripts (with
exhibits) of four separate depositions of Larry Haverly,
opposer’s
Opposition No. 99,915
4
founder and president; the transcripts (with exhibits) of
two depositions of Dr. Michael Rappeport, a founder and
partner in a New Jersey firm which does market research
and marketing surveys; the transcript (with exhibits
including a survey and its documentation) of the
testimonial deposition of Dr. Gerald L. Ford, a market
research expert who designed and caused to be conducted
the survey for applicant with regard to the issue of
likelihood of confusion presented by this case; and the
transcript and exhibits from the testimonial deposition
of Dr. Walter Murray, a Stanford University professor and
a partner in a firm which specializes in consulting with
regard to optimization, particularly non-linear
optimization, in such fields as oil refining3. Opposer
filed ten Notices of Reliance4, thereby making of record
opposer's pleaded registration; opposer’s Registration
No. 1,506,920 for “OMNI PC/FE” for business computer
software programs; applicant’s responses to a great many
of opposer’s requests for admissions and interrogatories;
and a number of excerpts from various publications.

3 Opposer objected to Dr. Murray’s testimony, alleging that he
is not an expert in products of the type involved in this
proceeding. Opposer’s objection is overruled. We have
considered this testimony in view of Dr. Murray’s expertise in
optimization and operations research.
4 The tenth Notice of Reliance was stricken by the Board on July
10, 2000.
Opposition No. 99,915
5
The issues before us in this proceeding are priority
Opposition No. 99,915
6
and likelihood of confusion. Opposer, as plaintiff, had
the
burden of establishing that it has priority and that
confusion is likely as a result of applicant’s use of the
mark it seeks to register in connection with the goods
set forth in the application. Fossil, Inc. v. Fossil
Group, 49 USPQ2d 1452 (TTAB 1998).
After careful consideration of this record, the
arguments of the parties and the relevant legal
precedent, we conclude that although opposer clearly has
established that it has priority over applicant with
respect to the use of the mark “OMNI” and that it
registered the mark prior to when applicant applied to
register it, opposer has not met its burden of proving
that either the software for which it uses its mark, or
the software encompassed within the registration for the
mark is related so closely to the products specified in
the opposed application that the use of “OMNI” as the
trademark on the goods of both parties is likely to cause
confusion, mistake or deception.
In the case of In re E. I. DuPont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973), the predecessor
to our primary reviewing court set out the factors to be
considered in determining whether confusion is likely.
Opposition No. 99,915
7
Chief among these factors are the similarity of the marks
and the similarity of the goods set forth in the
application and any involved registration, respectively.
In the instant case, the marks are the same, so we must
direct our attention to the remaining factors listed by
the Court in the DuPont case.
Dr. Ford’s survey is the centerpiece of applicant’s
argument that confusion is not likely, and conversely, it
is the principal focus of much of opposer’s testimony and
argument that confusion is likely. Dr. Ford surveyed
individuals in refineries who are responsible for making
decisions or recommendations regarding the purchase of
devices for metering the flow of liquids and gases.
Applicant contends that the survey shows that confusion
is not likely because none of the survey respondents
named opposer when they were shown the mark “OMNI” and
asked what is the source of “flow measurement and control
computers for the measurement and control of liquid
hydrocarbon and gas flows” bearing the “OMNI” trademark.
Applicant argues that its position is further bolstered
by the fact that when respondents were asked to name
other products they would expect to come from the same
source as “OMNI” flow measurement and control computers,
Opposition No. 99,915
8
none of the respondents named the type of products
opposer makes.
Opposer, on the other hand, contends that the survey
is not probative on the issue of whether confusion is
likely because the respondents were selected from the
wrong statistical universe. This argument is based on
distinctions opposer draws between “devices for metering
the flow of liquids and gases,” which is the language
used to qualify respondents to take part in this survey,
and “flow measurement and control computers for the
measurement and control of liquid hydrocarbon and gas
flows,” which is the precise wording used in the
application to identify applicant’s products. Opposer
argues that by surveying the prospective purchasers of
“devices for metering the flow of liquids and gases,”
applicant made its inquiries to the wrong people.
Opposer goes on to argue that if the survey does
show anything, it shows that the relevant purchasers in
the refinery business expect software and computer
hardware sold under one mark to come from one source and
therefore that confusion is likely in the case at hand
because purchasers would expect applicant’s computers and
opposer’s software, both sold under the same mark, to be
the products of a single business entity. Opposer points
Opposition No. 99,915
9
to the fact that the majority of respondents, when asked
who they thought was the source of “OMNI” flow
measurement and control computers, answered simply,
“OMNI.” Opposer interprets this as a reference to
opposer, rather than applicant, in view of the fact that
“OMNI” is opposer’s primary trademark.
We have considered the testimony of Dr. Ford, Dr.
Murray and Dr. Rappeport in determining what effect to
give applicant’s survey, but we cannot adopt completely
the position of either party. We cannot conclude that
the survey establishes either that confusion is likely,
or that it is not likely. We are not persuaded that the
survey universe was inappropriate, in that the actual
products with which applicant uses the mark it seeks to
register, “flow measurement and control computers
featuring integrally attached keypads for the measurement
and control of liquid hydrocarbons and gas flows,” would
appear to be a subset of the broader category of “devices
for metering the flow of liquids or gases,” which was the
language used to qualify the survey respondents. In
other words, the people who purchase devices for metering
the flow of liquids and gases are the same people who
purchase flow measurement and control computers.
Opposition No. 99,915
10
Nonetheless, these respondents were shown the mark
applicant seeks to register and shown the identification-
of-goods clause from the application, and then they were
asked who puts out the identified products under the mark
“OMNI.” No respondent named opposer, and very few named
applicant. The majority, over half, simply responded
with the word “OMNI.” Notwithstanding Dr. Ford’s
contentions to the contrary, we agree with opposer that
in view of the fact that opposer’s primary mark is
“OMNI,” these responses could very well have been
references to opposer. For that matter, they just as
well could have been references to applicant, the actual
source of “OMNI” for flow measurement and control
computers for measuring and controlling liquids and gases
which have been sold in the refinery industry. We simply
do not have a sufficient basis upon which to determine to
whom these respondents were referring when they used the
word “OMNI.”
The record shows that opposer has used the mark
“OMNI” on specialized computer programs since well before
applicant went into business. Such software is used in a
variety of industries, including the petroleum, refining,
chemical and pipeline industries. The software can be
used to create a model of a particular refinery. Such a
Opposition No. 99,915
11
model is then made the subject of maximization
programming, which considers all the possible ways of
running that particular refinery and provides the
refinery managers with data and reports which allow them
to make the most of the available options with respect to
the use of raw materials, production facilities,
transportation and scheduling. The goal, of course, is
to maximize profits. The purchasers and users of
opposer’s software are the management officials who are
in charge of the refinery’s overall operation. They are
the ones who need to know how best to utilize their
manufacturing facilities and the materials available to
them in ways that maximize the profit that their plants
can generate.
As noted above, however, opposer’s registration,
properly made of record, incorporates the broad
terminology “pre-recorded computer programs.” Thus, our
analysis of the issue of whether confusion is likely is
based on this broad identification of goods as set forth
in the pleaded registration, not merely on opposer’s
proof of prior common law rights derived from prior use
of the mark in connection with the specific optimization
software discussed above. Our reviewing court has made
it clear that we are to resolve the issue of likelihood
Opposition No. 99,915
12
of confusion in view of the unrestricted identification
of goods in the registration, presuming that they travel
in all the usual trade channels for such goods and to all
the customary classes of purchasers of them. Cunningham
v. Laser Golf Corp., 55 USPQ2d 1846 (Fed. Cir. 2000).
(“Proceedings before the Board are concerned with
registrability and not use of the mark. Accordingly, the
identification of goods/services statement in the
registration, not the goods/services actually used by the
registrant, frames the issue.") Nonetheless, opposer had
the burden of showing what its “pre-recorded computer
programs” are, the “established, likely-to-continue trade
channels” for its programs, and that these are related to
the products applicant markets under the same mark.
Opposer did not establish this, however. Instead, the
evidence and testimony of record in this proceeding shows
no identity in the usual channels of trade or customary
purchasers for applicant’s products and the goods
identified in opposer’s pleaded registration.
Although the products sold under the “OMNI” mark by
applicant are technically computers, in the sense that
they are digitally operated and controlled machines that
do incorporate microchips and can be programmed,
applicant’s goods are used for the very limited and
Opposition No. 99,915
13
specialized purpose of monitoring and controlling the
flow of liquids and gases through pipes. As applicant
puts it, its flow measurement and control computers may
be thought of as cash registers, used at various points
along pipelines where custody of the materials moving
through the lines changes hands, in order to quantify and
make records of such transfers as they occur.
Applicant’s products sold under the mark “OMNI” do
not appear to be more than very sophisticated digital
meters and valve controls that can record, report and
store the information they generate. Applicant’s devices
make continuous and instantaneous real-time measurements
for the purpose of controlling and documenting the
transfer of custody of liquids and gases. There is no
evidence establishing that channels of trade and classes
of customers for such goods are the same as for opposer’s
software.
The record shows that the goods of the parties are
expensive, technically complex products bought and used
by technically sophisticated professionals. It does not,
however, support the conclusion that applicant’s products
are purchased or used by the same people in refineries
who purchase and use opposer’s modeling software for
optimization of the overall refinery activities and
Opposition No. 99,915
14
profits, or any software opposer may market. In a
similar sense, the record does not support opposer’s
claim that the data applicant’s flow computers generate
is used in conjunction with any programs of opposer.
There is no evidence of anyone ever using the parties’
products together, nor is there any evidence of these
goods being promoted together.
It is particularly telling that we have no evidence
that they have ever been purchased by the same individual
within a particular refining business. Mr. Haverly did
not even know if his company’s software could be run on
applicant’s flow computers. None of the other testimony
or evidence indicates that it can. Although the lack of
evidence of any incidents of actual confusion is not
determinative of the issue of whether confusion is
likely, we are not surprised that there is no testimony
or evidence in this record that any actual confusion has
ever occurred.
It is well settled that even though a single large
business entity may purchase two particular products,
this does not necessarily establish that such goods move
in the same channels of trade or that there is an overlap
in customers. Electronic Design & Sales, Inc. v.
Opposition No. 99,915
15
Electronic Data Systems Corp., 954 F.2d 713, 21 USPQ2d
1388 (Fed. Cir. 1992).
Simply put, confusion is unlikely in the case at
hand because even though the applicant and opposer use
the same mark and the goods of both parties are sold to
refining companies, the record does not establish that
the technically sophisticated professionals who use or
make the purchasing decisions with respect to applicant’s
products are the same technically sophisticated
professionals who use or make the decisions to purchase
opposer’s products. We cannot identify who would be
likely to be confused by applicant’s mark, nor can we
determine why they would be confused in view of the
fundamental differences between applicant’s computers for
the measurement and control of the flow of liquid
hydrocarbon and gas flows, on the one hand, and opposer’s
software, on the other. There is no evidence that a
single source supplies both flow measurement and control
computers like the ones applicant sells and software like
that sold by opposer, much less that one entity does this
under a single trademark.
In addition to failing to meet its burden with
respect to proving the relatedness of its goods to those
of applicant’s flow measurement and control computers,
Opposition No. 99,915
16
opposer has also plainly not met its burden of
establishing the relatedness of its goods to the printed
user manuals for flow measurement and control computers.
In fact, opposer presented neither evidence nor arguments
on this issue. Under these circumstances, the opposition
must fail as to the goods in Class 16 as well.
In summary, opposer has failed to meet its burden of
proving that its goods are related in such a way to those
specified in the opposed application that the use of the
same trademark on both is likely to cause confusion,
mistake or deception. While our primary reviewing court
stated in J & J Snack Foods v. McDonald’s Corp., 932 F.2d
1460, 18 USPQ 1889 (Fed. Cir. 1991), that doubts with
regard to whether confusion is likely must be resolved in
favor of the opposer if it is the prior user, in the
instant case, we have no doubt that confusion is
unlikely. As noted above, the record simply does not
establish that there is anyone who is likely to be
confused, or, for that matter, what basis anyone would
have for assuming that the goods specified in the opposed
application emanate from the same source as software of
the type opposer markets.
DECISION: The opposition is dismissed.