Imasco Enterprises Inc.v.Genesis Integrated Systems, Inc.

Trademark Trial and Appeal Board

Jul 28, 1998

No. 92022092 (T.T.A.B. Jul. 28, 1998)

Bottorff
Cancellation No. 22,092
Imasco Enterprises Inc.
v.
Genesis Integrated
Systems, Inc.
Before Cissel, Hanak and Quinn, Administrative Trademark
Judges. By the Board.
INTRODUCTION AND BACKGROUND
This case now comes up on the parties’ contested cross-
motions for summary judgment. Petitioner has moved for
summary judgment in its favor on its pleaded Section 2(d)
ground for cancellation. Respondent has cross-moved for
summary judgment in its favor on petitioner’s Section 2(d)
ground for cancellation, and also has moved for entry of
summary judgment in its favor on the unpleaded defenses of
laches, estoppel and acquiescence. For the reasons
discussed below, we grant petitioner’s motion for summary
judgment and deny respondent’s cross-motion for summary
judgment. See Fed. R. Civ. P. 56(c).
UNITED STATES DEPARTMENT OF COMMERCE
Patent and Trademark Office
Trademark Trial and Appeal Board
2900 Crystal Drive
Arlington, Virginia 22202-3513
Cancellation No. 22,092
2
Respondent is the owner of Registration No. 1,670,749,
which is of the mark GENSTAR for goods identified as
"computer hardware; namely, CD-ROM drives and CD-ROM
players; computer software; namely, CD-ROM titles for
educational and training purposes," in International Class
9. The registration, which issued on December 31, 1991,
arose from an intent-to-use application filed by respondent
on April 16, 1990. In the Statement of Use filed in
connection with the application, respondent alleged first
use of the mark anywhere on April 27, 1990 and first use of
the mark in commerce on August 13, 1990. An affidavit under
Trademark Act Section 8, 15 U.S.C. §1058, has been filed by
respondent and accepted by the Office.
On August 2, 1993, petitioner filed a petition to
cancel respondent's Registration No. 1,670,749, alleging as
grounds therefor that petitioner is the prior user of the
trademark, service mark and trade name GENSTAR in connection
with a variety of goods and services, including services
which are substantially similar and generally related to the
goods identified in respondent's registration; that
petitioner owns several registrations of the GENSTAR mark,
including incontestable Registration No. 1,328,5221

1 Issued April 2, 1985, from application Serial No. 73/371,235,
filed June 21, 1982. It appears from the Office’s records that
Registration No. 1,328,522, as issued, originally identified
goods and services in Classes 19, 36, 37, 39, 40 and 42.
Currently, the registration is active in three classes, covering
Cancellation No. 22,092
3
covering, inter alia, services recited as "rental of
electronic instrumentation, test and measurement equipment,
microprocessors and computer peripheral products" in Class
42; that petitioner has filed a new application by which it
seeks to obtain a separate registration of its GENSTAR mark
for "rental of electronic instrumentation, test and
measurement equipment, microprocessors and computer
peripheral products" in Class 42,2 and that the Trademark
Examining Attorney has refused registration to petitioner
under Trademark Act Section 2(d), citing respondent’s
intervening Registration No. 1,670,749; and that, because
petitioner has priority and because confusion is likely
given the identity of the parties’ marks and the close

the following services: "mortgage banking; arranging real estate
joint venture financing; real estate and mortgage financing
services; capital equipment leverage-lease brokerage; and
providing a rental purchase program for all electronic
instrumentation, testing and measuring equipment," in Class 36;
"real estate planning services," in Class 37; and
"distributorship services in the field of construction materials,
recycled gas and landfill; distributorship services in the field
of sludge and sludge disposal equipment; sludge management,
consulting and engineering services in the field of sludge
disposal; rental of electronic instrumentation, test and
measurement equipment, microprocessors and computer peripheral
products," in Class 42.
2 The services recited in petitioner’s new application Serial No.
74/250,934 are identical, in part, to the services recited in
petitioner’s multi-class Registration No. 1,328,522. Petitioner
asserts in its application file that it seeks to obtain a
separate registration for the specified Class 42 services because
it wants to be able to assign its registration rights in those
services to a third party while retaining its registration rights
as to the other services recited in the registration. Petitioner
is precluded, under Office policy, from dividing the specified
services out from Registration No. 1,328,522 into a separate
registration. See TMEP section 1105.06(b).
Cancellation No. 22,092
4
relationship between the parties’ respective goods and
services, respondent’s Registration No. 1,670,749 should be
cancelled under Trademark Act Section 2(d).
In its answer to the petition for cancellation,
respondent admits that petitioner has filed a new
application to register the mark GENSTAR, but denies all of
the other allegations in the petition for cancellation on
the basis of insufficient knowledge and information.
Respondent has not pleaded any affirmative defenses.
THE PARTIES’ SUMMARY JUDGMENT ARGUMENTS AND EVIDENCE
In support of its motion for summary judgment on its
Section 2(d) claim, petitioner argues that there is no
genuine issue of material fact as to its priority, inasmuch
as the filing date of the application which matured into its
Registration No. 1,328,522 predates the filing date of the
application which matured into respondent’s Registration No.
1,670,749. Petitioner also argues that there is no genuine
issue of material fact as to any of the relevant du Pont3
likelihood of confusion evidentiary factors and that, when
the evidence pertaining to those factors is weighed,
confusion is likely as a matter of law.

3 In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973).
Cancellation No. 22,092
5
Specifically with respect to the likelihood of
confusion evidentiary factors, petitioner argues that the
parties’ marks are identical; that respondent’s GENSTAR
computer products are legally identical to the computer
products offered for rental by petitioner under its GENSTAR
mark; that consumers in the market for such computer
products have the option of either purchasing such goods or
renting them, such that respondent and petitioner
essentially are competitors in the computer products field;
that the identification of goods in respondent’s
registration does not include any limitation as to the trade
channels or classes of customers for respondent’s goods, and
that those goods accordingly are presumed to move in all
normal trade channels for such goods, including rental trade
channels, and to be marketed to all normal classes of
customers for such goods, including renters; that the
computer resellers and retailers who carry computer products
like respondent’s, e.g., CompUSA, also commonly offer rental
services for such products; and that the absence of any
evidence of actual confusion is not dispositive, nor is it
sufficient to outweigh the other factors which warrant a
finding of likelihood of confusion in this case.
As evidence in support of its summary judgment motion,
and in opposition to respondent’s cross-motion, petitioner
has submitted a status and title copy of its pleaded
Cancellation No. 22,092
6
Registration No. 1,328,522, as well as copies of certain
documents from the file of petitioner’s application Serial
No. 73/250,934, namely, the application paper, the Trademark
Examining Attorney’s final action refusing registration to
petitioner under Section 2(d) based on respondent’s
Registration No. 1,670,749, and the Trademark Examining
Attorney’s action suspending the application pending the
outcome of this cancellation proceeding.
Petitioner also has submitted copies of respondent’s
answers to petitioner’s interrogatories. Petitioner
specifically relies on those answers which demonstrate that
on March 1, 1990, prior to filing the application which
matured into the registration sought to be cancelled herein,
respondent obtained a trademark search report which
disclosed petitioner’s Registration No. 1,328,522; that
respondent advertises its goods in computer publications;
that the trade channels through which respondent distributes
its goods include computer resellers (including systems
integrators), value-added resellers and computer catalogs;
that respondent’s customers include a wide range of
suppliers of computers and related goods; that respondent’s
goods are directed to anyone interested in CD-ROM drives;
and that respondent’s reseller customers are authorized to
use respondent’s GENSTAR mark in their advertising.
Cancellation No. 22,092
7
Petitioner also has submitted copies of certain of
respondent’s marketing brochures, offered to show that
respondent sells its goods to computer resellers for resale
to the general public; a copy of a CompUSA advertisement
which appeared in the May 19, 1991 Philadelphia Inquirer,
offered to show that respondent’s GENSTAR external CD-ROM
drive is offered at CompUSA for resale to consumers, and
also to show that CompUSA leases, as well as sells,
computers and computer peripheral products; a copy of a
commercial search report purporting to show that it is
common for a single source to use a single mark as a
trademark for computers and computer peripheral products and
as a service mark for rental services for those products;4
copies of excerpts from the November 14, 1995, November 21,
1995, November 28, 1995 and December 5, 1995 issues of the
Official Gazette, depicting various marks that were
published for opposition and purportedly offered to show
that it is common for an applicant to apply to register a

4 We have given little or no consideration to this search report
evidence. Search reports generally are not proper evidence when
offered in support of a motion for summary judgment. See TBMP
section 528.05(d). In any event, petitioner’s search report
printout consists of references to seven applications and one
registration, all of which were filed either on the basis of
intent-to-use under Trademark Act Section 1(b) or on the basis of
a foreign registration or application under Trademark Act Section
44. Because these applications and registrations are not based
on use in commerce, they are of little probative value on the
issue of whether the listed goods and services are of a type
which may emanate from a single source. See In re Albert Trostel
& Sons Co., 29 USPQ2d 1783 (TTAB 1993).
Cancellation No. 22,092
8
single mark both for "computers" and for "computer related
services";5 and copies of excerpts from the "Computers"
section of the April 1995 to March 1996 edition of the
Nynex Business to Business Directory, in which appear
advertisements for companies that both sell computers and
computer-related products and also rent and lease computers
and computer-related products.
In opposition to petitioner’s motion for summary
judgment, and in support of its own cross-motion for summary
judgment, respondent makes two primary arguments. First,
respondent argues that petitioner’s claim is barred by
laches, estoppel and acquiescence, which are valid defenses
in a cancellation proceeding pursuant to Trademark Act
Section 19, 15 U.S.C. §1069. Respondent contends that when
respondent's mark was published for opposition, petitioner
carefully considered whether or not to file a notice of
opposition and elected not to do so, evidently concluding
that confusion was unlikely and that it would not be damaged
by registration of respondent's mark; that respondent relied
to its detriment on petitioner's decision not to oppose
registration of respondent's mark and on petitioner's

5 The "computer-related services" covered by these Official
Gazette excerpts are primarily computer programming, design, and
consulting services. None of the excerpts identify the type of
computer product rental services offered by petitioner.
Accordingly, this evidence is of little probative value on the
issue of whether the goods identified in respondent’s
registration and the rental services recited in petitioner’s
registration commonly emanate from a single source.
Cancellation No. 22,092
9
failure to otherwise object to respondent’s use of the mark,
in that respondent proceeded to carry on its business under
the mark and to develop valuable goodwill therein; and that
respondent is entitled to continued reliance on petitioner’s
previous "conscious inaction" and "manifest acquiescence,"
inasmuch as there has been no change of circumstances with
respect to the likelihood of confusion evidentiary factors
which would provide a basis for allowing petitioner to avoid
its previous determination that confusion is unlikely.
Second, respondent argues that petitioner’s previous
determination that confusion is unlikely was correct on its
merits. In this respect, respondent contends that there
have been no instances of actual confusion despite the
parties’ concurrent use of their marks for the past five
years. Respondent also argues that confusion is unlikely
because consumers encounter the parties’ respective marks in
different contexts. Specifically, respondent argues,
respondent uses GENSTAR as a trademark applied to tangible
goods, in contrast to petitioner, who does not use GENSTAR
as a trademark applied to goods but rather as a service mark
in connection with the rental of goods. The computer
products petitioner rents do not bear the GENSTAR mark,
respondent contends, but rather the marks of their
respective manufacturers. Furthermore, respondent argues,
confusion is unlikely because the parties’ respective goods
Cancellation No. 22,092
10
and services are marketed to different types of consumers,
in that respondent’s goods are marketed to persons
interested in purchasing computer products, while
petitioner’s services are directed to persons interested in
renting computer products. Finally, respondent argues that
confusion is unlikely because consumers of respondent’s
goods and petitioner’s services are relatively sophisticated
and are not likely to make impulsive purchasing decisions
based primarily on the presence of either party’s mark.
As evidence in support of its summary judgment
arguments, respondent has submitted copies of three requests
for extension of time to oppose that were filed by
petitioner in late 1990 and early 1991, after publication of
respondent’s mark for opposition. In those extension
requests, petitioner asserted, as its good cause showing,
that it required additional time to review respondent’s
application and to consider whether a notice of opposition
to registration of applicant’s mark should be filed.
Respondent also has submitted the declaration of Thomas
W. Kenyon, respondent’s co-founder and Chief Financial
Officer. Mr. Kenyon avers that he prepared and filed the
application which matured into the registration involved
herein; that, at the time respondent’s mark was published
for opposition, respondent had not yet invested
substantially in the GENSTAR mark and would have been
Cancellation No. 22,092
11
willing to adopt a different mark if petitioner had
proceeded with its contemplated opposition to respondent’s
registration of the GENSTAR mark; that when petitioner did
not file a notice of opposition, and did not object in any
manner to respondent’s continued use of the mark, respondent
interpreted petitioner’s "conscious inaction" as
petitioner’s acquiescence to respondent’s use and
registration of the GENSTAR mark; that respondent now has
been using the mark for five years and has established
valuable goodwill therein; and that respondent has sold its
goods under the GENSTAR mark in all fifty states and in the
District of Columbia and is unaware of any consumer
confusion as to the source of either party’s goods or
services.
Finally, respondent has submitted a copy of the
specimen of use from petitioner’s pending service mark
application. The specimen is a copy of an advertisement
appearing in the March 21, 1989 issue of Data Communications
which establishes, according to respondent, that the
computer products petitioner rents do not bear petitioner’s
GENSTAR mark, but rather bear the marks of their respective
manufacturers.
In opposition to respondent’s cross-motion for summary
judgment on the issues of laches, estoppel and acquiescence,
petitioner argues that respondent cannot obtain summary
Cancellation No. 22,092
12
judgment on such defenses because respondent failed to plead
them in its answer to the petition for cancellation and has
not moved to amend its answer to assert such defenses; that,
in any event, laches is not a sufficient defense in this
case because likelihood of confusion is inevitable or not in
reasonable doubt; that respondent has not established and
cannot establish the elements of a laches defense, inasmuch
as petitioner did not unreasonably delay in filing the
petition for cancellation, nor did petitioner commit any
affirmative act which might reasonably have induced
respondent to believe that petitioner had abandoned its
claim, nor did petitioner commit any affirmative act upon
which respondent could have relied to its detriment; and
that respondent’s assertion of laches is disingenuous
because respondent, at the time it adopted its GENSTAR mark
and filed its application for registration thereof, had
actual knowledge of petitioner’s prior use of and rights in
the mark and therefore acted at its own risk in continuing
to use the mark and develop its business thereunder.
DISCUSSION
Summary judgment is appropriate in cases where the
moving party establishes that there are no genuine issues of
material fact which require resolution at trial and that it
is entitled to judgment as a matter of law on its pleaded
Cancellation No. 22,092
13
claim or defense. Fed. R. Civ. P. 56(c). An issue is
material when its resolution would affect the outcome of the
proceeding under governing law. Anderson v. Liberty Lobby,
Inc., 477 U.S. 242, 248 (1986). A fact is genuinely in
dispute if the evidence of record is such that a reasonable
factfinder could return a verdict in favor of the nonmoving
party. Id. The nonmoving party must be given the benefit
of all reasonable doubt as to whether genuine issues of
material fact exist, and the evidentiary record on summary
judgment, and all inferences to be drawn from the undisputed
facts, must be viewed in the light most favorable to the
nonmoving party. See Opryland USA, Inc. v. Great American
Music Show, Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir.
1992); Olde Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200,
22 USPQ2d 1542 (Fed. Cir. 1992).
We turn first to respondent’s motion for summary
judgment in its favor as to the defenses of laches, estoppel
and acquiescence. It is well-settled that a party may not
obtain summary judgment on an issue which has not been
pleaded, nor may a party defend against a motion for summary
judgment by asserting the existence of genuine issues of
material fact as to an unpleaded defense. See Paramount
Pictures Corp. v. White, 31 USPQ2d 1768 (TTAB 1994);
Blansett Pharmaceutical Co. Inc. v. Carmrick Laboratories,
Inc., 25 USPQ2d 1473 (TTAB 1992); Perma Ceram Enterprises
Cancellation No. 22,092
14
Inc. v. Preco Industries Ltd., 23 USPQ3d 1134 (TTAB 1992);
see also TBMP sections 528.07(a) and (b). In the present
case, respondent did not plead laches, estoppel and
acquiescence as affirmative defenses in its answer to the
petition for cancellation. Nor has respondent moved under
Fed. R. Civ. P. 15(a) for leave to amend its answer to
assert these affirmative defenses. In view thereof, and in
view of the fact that petitioner has expressly objected to
respondent’s motion for summary judgment to the extent that
the motion is based on these unpleaded defenses, we deny
respondent’s motion for summary judgment on the issues of
laches, estoppel and acquiescence.6
We turn next to the parties’ cross-motions for summary
judgment with respect to petitioner’s pleaded Section 2(d)
ground for cancellation. There is no genuine issue of
material fact as to petitioner’s priority. In the absence

6 Even if respondent had properly pleaded the affirmative
defenses of laches, estoppel and acquiescence, we still would
conclude, on the present record, that it is petitioner, not
respondent, who is entitled to summary judgment as to those
defenses. In essence, respondent’s asserted defense is that
because petitioner previously sought and obtained three
extensions of time to oppose registration of respondent’s mark
and then failed to file a notice of opposition, petitioner now is
estopped to petition to cancel respondent’s registration.
However, simply by itself, petitioner’s failure to file a notice
of opposition to registration of respondent’s mark does not
affect petitioner’s right to petition to cancel respondent’s
registration. See Keebler Company v. Rovira Biscuit Corporation,
624 F.2d 366, 207 USPQ 465, 471 at footnote 5 (1st Cir. 1980);
Charles of the Ritz, Inc. v. Elizabeth Arden Sales Corporation,
161 F.2d 234, 73 USPQ 413 (CCPA 1947). Thus, respondent’s
purported affirmative defenses are without substantive merit in
this case.
Cancellation No. 22,092
15
of any contradictory evidence pertaining to the parties’
dates of first use of their respective marks, the earliest
date of use upon which either party can rely is the filing
date of the application which matured into its registration.
See American Standard Inc. v. AQM Corporation, 208 USPQ 840
(TTAB 1980). The application which matured into
petitioner’s pleaded Registration No. 1,328,522 was filed on
June 21, 1982, and the application which matured into
respondent’s involved Registration No. 1,670,749 was filed
on April 27, 1990. Accordingly, petitioner has priority in
this case.
Furthermore, for the reasons discussed below, we find
that there is no genuine issue of material fact as to any of
the du Pont likelihood of confusion factors for which there
is evidence in the record. Balancing those undisputed facts
which support (or which might reasonably be construed to
support) respondent’s contention that confusion is unlikely
against those undisputed facts which support petitioner’s
contrary contention that confusion is likely, we conclude
that, as a matter of law, confusion is likely in this case.
First, we note that the parties’ marks, as they appear
in their respective registrations, are identical.
Accordingly, we find that there is no genuine issue of
material fact with respect to the first du Pont likelihood
of confusion evidentiary factor, i.e., the similarity or
Cancellation No. 22,092
16
dissimilarity of the parties’ marks in their entireties in
terms of appearance, sound, connotation and commercial
impression.
Likewise, there is no genuine dispute that the parties’
respective goods and services, as identified in their
registrations, bear a close commercial relationship to each
other, under the second du Pont evidentiary factor. Where
the parties’ marks are identical, as they are in this case,
it is only necessary that there be a viable relationship
between the goods or services in order to support a holding
of likelihood of confusion. See In re Concordia
International Forwarding Corp., 222 USPQ 355, 356 (TTAB
1983). Such a viable relationship exists in this case.
Respondent uses its GENSTAR mark on "computer hardware;
namely, CD-ROM drives and CD-ROM players." Those goods are
legally identical to and encompassed within the "computer
peripherals" that petitioner rents under its own GENSTAR
mark. It is well settled that confusion may result from the
use of the same mark for goods, on the one hand, and for
services involving those goods, on the other. See generally
TMEP section 1207.01(a)(ii) and cases cited therein.
Nor can it be genuinely disputed that the parties’
respective goods and services move in the same trade
channels, under the third du Pont evidentiary factor, or
that they are marketed to the same classes of customers, see
Cancellation No. 22,092
17
MRI Systems Corp. v. Wesley-Jessen Inc., 189 USPQ 214 (TTAB
1975). The identification of goods in respondent’s
registration contains no limitations as to the trade
channels for respondent’s goods nor as to the classes of
customers for respondent’s goods. Accordingly, respondent’s
goods must be presumed to move in all normal trade channels
for such goods and to be marketed to all normal classes of
customers for such goods. See Canadian Imperial Bank of
Commerce, N.A. v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d
1813 (Fed. Cir. 1987); CBS, Inc. v. Morrow, 708 F.2d 1579,
218 USPQ 198 (Fed. Cir. 1983).
Respondent has submitted no evidence to support its
claims that the trade channels through which computer
products are offered for sale are distinct from the trade
channels through which computer products are offered for
lease, and that persons interested in purchasing computer
products comprise a distinct class of customers vis-à-vis
persons interested in renting computer products.
Petitioner, on the other hand, has submitted persuasive,
unrebutted evidence establishing that it is common for
computer retailers to offer computer products such as those
identified in respondent's registration to their customers
both for sale and for lease. See, e.g., the Nynex Business
to Business Directory listings attached to petitioner's
Cancellation No. 22,092
18
reply brief as Exhibit 6, and the CompUSA advertisement
attached to petitioner’s reply brief as Exhibit 3.
In view of petitioner’s evidence establishing that the
trade channels and classes of customers for the parties’
respective goods and services are the same, and in the
absence of any evidence from respondent upon which we might
reasonably base a contrary conclusion, we find that there
are no genuine issues of material fact as to these
likelihood of confusion factors.
Respondent also argues that the consumers of
respondent’s goods and petitioner’s services are relatively
sophisticated purchasers and are unlikely to make impulsive
purchasing decisions based primarily on the parties’
respective marks.7 However, respondent has presented no
evidence in support of this contention, nor is there any
evidence in the record from which the accuracy of that
contention might reasonably be inferred. The conclusions
and suppositions of respondent’s counsel do not suffice to
create a genuine issue of material fact on this question.
In short, we find that there are no genuine issues of
material fact as to the identity of the parties’ marks, nor
as to the similarity of and close commercial relationship
between the parties’ respective goods and services, as

7 The fourth du Pont likelihood of confusion evidentiary factor
is "the conditions under which and buyers to whom sales are made,
i.e. ’impulse’ vs. careful, sophisticated purchasing."
Cancellation No. 22,092
19
identified in their respective registrations, nor as to the
essential identity of the trade channels and classes of
customers for those goods and services. The undisputed
evidence on these likelihood of confusion factors weighs
heavily in favor of a finding that confusion is likely in
this case.
The record, viewed in its entirety, also contains
evidence with respect to certain other of the du Pont
evidentiary factors which, for purposes of deciding
petitioner’s summary judgment motion, we find to be
undisputed and to weigh in favor of respondent’s position
that there is no likelihood of confusion in this case.
First, it is undisputed that there have been no known
instances of actual confusion despite the parties’
concurrent use of their respective marks for over five
years. Construing the evidence of record on this issue in
respondent’s favor, we will presume that an opportunity for
actual confusion, commensurate with the evidence of the
nature and extent of the parties’ actual use of their
respective marks, has existed.8 The absence of actual

8 It appears from respondent’s answers to petitioner’s
interrogatories, attached to petitioner’s motion for summary
judgment as Exhibit 3, that respondent has used its mark in all
fifty states and the District of Columbia; that in 1991
respondent had gross sales of $2,085,000 and spent $38,000 on
advertising; that in 1992 respondent had gross sales of
$3,135,000 and spent $57,000 on advertising; and that in 1993
respondent had gross sales of $2,150,000 and spent $54,000 on
advertising. However, the record is silent with respect to the
Cancellation No. 22,092
20
confusion, under the seventh and eight du Pont evidentiary
factors,9 tends to support respondent’s contention that
there is no likelihood of confusion.
Second, construing the evidence of record in
respondent’s favor for purposes of deciding petitioner’s
summary judgment motion, we find that the evidence
pertaining to du Pont evidentiary factor number 10(d)10
tends to weigh in respondent’s favor in this case. As
discussed above in connection with our rejection of
respondent’s unpleaded laches defense, petitioner’s failure
in 1991 to oppose registration of applicant’s mark does not
operate as an estoppel to petitioner’s right to bring this
cancellation proceeding against respondent’s registration.
However, we reasonably construe petitioner’s previous
failure to oppose to be evidence which is "indicative of
lack of confusion," under du Pont factor 10(d), and thus as

nature and extent of petitioner’s sales and advertising of its
computer product rental services under its GENSTAR mark.
9 The seventh and eighth du Pont evidentiary factors are "the
nature and extent of any actual confusion," and "the length of
time during which and conditions under which there has been
concurrent use without evidence of actual confusion." In re du
Pont, supra, 177 USPQ at 567.
10 du Pont factor 10(d) is "the market interface between applicant
and the owner of a prior mark: . . . laches and estoppel
attributable to owner of prior mark and indicative of lack of
confusion."
Cancellation No. 22,092
21
evidence which tends to support respondent’s contention that
confusion is unlikely.11
However, upon careful consideration and balancing of
all of the likelihood of confusion evidentiary factors for
which there is evidence in the record, we find that, in the
circumstances of this case, the evidence on those factors
which favor respondent, i.e., the absence of actual
confusion and the previous conduct of petitioner’s which can
be construed as being indicative of a lack of confusion,
simply is outweighed by the undisputed evidence on the other
evidentiary factors which strongly supports a finding of
likelihood of confusion, i.e., the identity of the parties’
marks, the close commercial relationship between the
parties’ respective goods and services, and the substantial
similarity of the trade channels and classes of customers
for the parties’ respective goods and services.

11 In the same vein, we will presume from the evidence of record
that petitioner, when it decided in 1991 not to oppose
registration of respondent’s mark, was of the opinion, at that
time, that confusion was unlikely. The fact that petitioner
previously held an opinion regarding the existence of likelihood
of confusion which is contrary to its current opinion on that
issue is a fact which "may be received in evidence as merely
illuminative of shade and tone in the total picture" confronting
the Board as it decides the likelihood of confusion issue in this
case. See Interstate Brands Corporation v. Celestial Seasonings,
Inc., 576 F.2d 926, 198 USPQ 151, 154 (CCPA 1978). However,
petitioner’s previous contrary opinion that confusion was
unlikely is not controlling or determinative in this case, nor
does it relieve the Board of its burden of evaluating and
weighing all of the evidence of record pertaining to the du Pont
evidentiary factors and reaching its own ultimate conclusion on
the issue of likelihood of confusion. Id.
Cancellation No. 22,092
22
Because there are no genuinely disputed factual issues
which require trial for their resolution, because the
undisputed facts of record establish, as a matter of law,
that petitioner is entitled to judgment on its Section 2(d)
claim, and because respondent has neither pleaded nor
established the existence of any defense to that claim, we
grant petitioner’s motion for summary judgment, and deny
respondent’s cross-motion for summary judgment. See Fed. R.
Civ. P. 56(c). The petition for cancellation is granted,
and respondent’s Registration No. 1,670,749 shall be
cancelled in due course.
R. F. Cissel
E. W. Hanak
T. J. Quinn
Administrative Trademark Judges
Trademark Trial and Appeal Board