Information Superbrand, Inc.v.Argentum Medical, LLC

Trademark Trial and Appeal Board

Feb 24, 2010

No. 91177245 (T.T.A.B. Feb. 24, 2010)

Mailed: February 24, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board

______

Information Superbrand, Inc.
v.
Argentum Medical, LLC
_____

Opposition No. 91177245
to application Serial No. 78786247
filed on January 6, 2006
_____

Robert L. Brooke of Troutman Sanders LLP for Information
Superbrand, Inc.

Charles Vorndran of Pabst Patent Group LLP for Argentum
Medical, LLC.
______

Before Holtzman, Kuhlke and Ritchie, Administrative
Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Applicant, Argentum Medical, LLC, seeks registration of
the standard character mark SILVERPEDIA for services
identified in the application as “[p]roviding an on-line
computer database in the field of using silver in the health
and medical field,” in International Class 44. The
application was filed on January 6, 2006, based on an
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91177245
2
allegation of a bona fide intent to use the mark in commerce
under Section 1(b) of the Trademark Act, 15 U.S.C. §1051(b).
Opposer, Information Superbrand, Inc., opposed
registration of applicant’s mark on the ground that, as used
in connection with applicant’s services, the mark so
resembles opposer’s previously used and registered family of
PEDIA-formative marks, including the previously used mark
SILVERPEDIA, in connection with a variety of computer and
online services, including “computer services, namely
creating indexes of information, sites and other resources
available on computer networks,” as to be likely to cause
confusion, to cause mistake, or to deceive under Trademark
Act Section 2(d), 15 U.S.C. §1052(d).
By its answer applicant denies the salient
allegations.1
EVIDENTIARY ISSUES
As a preliminary matter, opposer objects to all matter
referenced by applicant in its brief that pertains to
documents submitted in response to an earlier motion for
summary judgment. Applicant did not take any testimony or
submit evidence during its trial period. Matter submitted
in support of or in response to a motion for summary

1 The equitable defenses of laches, estoppel and acquiescence
were not adequately pleaded and, moreover, applicant did not
submit evidence or argument on these defenses. In view thereof,
we have not considered them.

Opposition No. 91177245
3
judgment is not part of the trial record and may not be
relied upon by either party.2 In view thereof, opposer’s
objection is sustained and we have given no consideration to
the evidence and argument pertaining to the documents
submitted in response to the motion for summary judgment.
EVIDENCE OF RECORD
The evidence of record consists of the pleadings
herein; the file of the opposed application; opposer’s
notice of reliance on its status and title copies of its
various PEDIA-formative marks; and opposer’s testimony
deposition, with exhibits, of Eric J. Park, opposer’s chief
executive officer.
PRIORITY/STANDING
Because opposer has made its pleaded registrations of
record and has shown that the registrations are valid and
subsisting and owned by opposer, opposer has established its
standing to oppose registration of applicant’s mark. See
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842
(Fed. Cir. 2000).
PRIORITY

2 Applicant was well aware of this inasmuch as the April 30, 2008
Board order denying summary judgment expressly provides:

The parties should also note that all evidence
submitted in support of and in opposition to the
motion for summary judgment is of record only for
consideration of said motion. Any such evidence to be
considered in final hearing must be properly
Opposition No. 91177245
4
Opposer’s priority is not in issue as to the marks in
the above-referenced registrations. See King Candy Co.,
Inc. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ
108 (CCPA 1974). With regard to opposer’s common law mark
SILVERPEDIA, opposer has submitted Eric Park’s testimony and
documentary evidence to support its assertion of prior use
discussed below. Applicant has not asserted use and relies
on the filing date of its application for its prior use
date. Levi Strauss & Co. v. R. Josephs Sportswear Inc., 36
USPQ2d 1328, 1332 (TTAB 1998), quoting Alliance
Manufacturing Co., Inc. v. ABH Diversified Products, Inc.,
226 USPQ 348, 351 (TTAB 1985); and Zirco Corp. v. American
Telephone and Telegraph Co., 21 USPQ2d 1542 (TTAB 1991).
Based on Mr. Park’s testimony and documentary evidence
we make the following factual findings. Powermatics, Inc.
v. Globe Roofing Products Co., 341 F.2d 127, 144 USPQ 430,
432 (CCPA 1965) (testimony of single witness may be
sufficient to prove priority if not characterized by
contradictions, inconsistencies and indefiniteness). See
also Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d 1100,
(TTAB 2007).

introduced in evidence during the appropriate trial
periods.
Opposition No. 91177245
5
Opposer began use of its PEDIA-formative marks in
approximately 1995-96 when it launched its AUTOPEDIA online
information website.3
Opposer has owned the domain silverpedia.com since
approximately 2000.4
Opposer changed to using child domains based on the
root pedia.com, including silver.pedia.com and currently
also owns the domain silverpedia.com.5
The content on opposer’s silverpedia website has been
available through the Internet since approximately 2001.6
Opposer’s website is “a consumer-facing site that
supplies consumers with the information they use to make
transaction decisions.”7
Since 2001, Opposer’s website has displayed information
about silver, including the following:
Silver has certain antimicrobial activity. In the
past dilute solutions of silver nitrate were used
as disinfectants ... Prior to 1938 Colloidal
Silver was used by physicians as a mainstream
antibiotic treatment and was considered quite
high-tech ... Make your own colloidal silver the
antibiotic of the future! Antibiotic-resistant
germs are now considered epidemic in the United
States accounting for a growing number of serious
infections disorders ...8

3 Park Test. pp. 14-15, Exh. No. 3.
4 Park Test. pp. 22-23, Exh. No. 5.
5 Park Test. pp. 24-30, 38.
6 Park Test. pp. 46, 66-67, Exh. No. 9.
7 Park Test. p. 34.
8 Park Test. p. 46, Exh. No. 9. The webpage contains a copyright
notice at the bottom dated 1999-2001. This exhibit is a back up
of the website kept on a CD-ROM, created in January of 2001.
Park Test. p. 48.
Opposition No. 91177245
6
The following display of the service mark SILVERPEDIA
has been on the website since 2001.9

Applicant attempts to challenge the weight of this
testimony by characterizing it as biased inasmuch as Mr.
Park is a majority stockholder in opposer and has a
significant financial interest in the outcome of this
opposition. Br. p. 6. Applicant further argues that
opposer has not provided any objective evidence to
substantiate the testimony of Mr. Park. Applicant cites as
one example the failure of Mr. Park to provide any evidence
of receiving any revenue from the silverpedia.com web site
and, in fact, testifying that it generates no revenue. Id.
We recognize the self-serving nature of such testimony
and accord it appropriate weight. That being said, there
are no inconsistencies or contradictions in Mr. Park’s
testimony and applicant has not rebutted it in any way.
As to the lack of documentary evidence regarding the
revenue stream attached to the SILVERPEDIA mark, Mr. Park
testified that its various websites generate revenue by

9 Park Test. pp. 58-59.
Opposition No. 91177245
7
advertising placements, affiliate links, text links and
transactions.10
Regarding the revenue issue, Mr. Park describes
opposer’s business model as follows:
Creating consumer sites with the pedia suffix and
a descriptive term prefix across the entire
spectrum of consumer interest.

Park Test. p. 76.

In explanation of Silverpedia’s low revenue stream Mr.
Park testifies:
Q. How much revenue does ISI receive from the
silverpedia.com website?

A. Probably very little or none right now.

Q. Okay. Why is that?

A. Because we’re in the process of expanding all
of our stuff. And as I said, SilverPedia really
wasn’t one of our main concerns. We’re kind of an
entrepreneurial company. So with the size of
sports, automotive, these little city cites that
we’re doing in groceries and things like that,
it’s not that high on our radar screen in terms of

10 Mr. Park testifies as follows:

Q. I’m not a very savvy IT person, so I apologize in
advance. So I want to – I would like for you to
explain the process of how a website of ISI’s
generates revenue. Is it solely from the ads that are
placed on the page?
A. No. It’s also from affiliate links, for instance,
if you refer people to someplace, they put a little
code on your thing, or whatever it is, and you get
paid for that. There’s also transactions. There’s
also just pre CPM and CPC, which are the ads, but then
there’s text links, and – I guess that’s about it for
most sites. But in our – for instance, in
SportsMedia, we sell travel packages, we sell
memorabilia, T-shirts, tickets to games, you name it.

Park Test. pp. 92-93.
Opposition No. 91177245
8
the amount of interest or revenues that it can
create. We don’t have a lot of people that we can
devote to being able to fully exploit all of the
revenue capabilities of each one of our brands.

Park Test. p. 88.

This testimony only refers to a snapshot of the present
revenue stream and does not provide information as to the
revenue stream over time. Moreover, opposer’s lack of a
steady revenue stream does not obviate per se a finding of
service mark use. We acknowledge that registration of a
domain name by itself is not enough to establish use in
commerce. Further, merely placing an advertisement for
services on a website without more may not be sufficient.
However, here the website itself is the service in that it
provides information to the general public on the topic of
silver. While we agree the record would have been better if
opposer had included information as to how often the site
had been viewed, the testimony taken as a whole and standing
unrebutted is sufficient to establish opposer’s use of this
mark. West Fla. Seafood v. Jet Restaurants, 31 F.3d 1122,
31 USPQ2d 1660 (Fed. Cir. 1994).
We find that opposer has established that it has
trademark rights in the mark SILVERPEDIA for use in
connection with providing information on topics related to
silver available on computer networks.
Accordingly, we turn to the question of likelihood of
confusion.
Opposition No. 91177245
9
LIKELIHOOD OF CONFUSION
Our likelihood of confusion determination under Section
2(d) 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 and 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).
With respect to the involved marks, we examine the
similarities and dissimilarities of the marks in their
appearance, sound, meaning, and commercial impression. Palm
Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir.
2005). The test is not whether the marks can be
distinguished when subjected to a side-by-side comparison,
but rather whether the marks are sufficiently similar in
their entireties that confusion as to the source of the
services offered under the respective marks is likely to
result.
While opposer pleaded a family of marks based on the
suffix pedia and entered into the record several
registrations in support of that allegation, opposer limited
its argument in its brief to its common law mark SILVERPEDIA
and we will limit the decision to consideration of this
mark.
Opposition No. 91177245
10
Opposer’s mark SILVERPEDIA and applicant’s mark
SILVERPEDIA are identical in sound, meaning and commercial
impression. Moreover, they are nearly identical in
appearance. The only difference is the stylization in
opposer's mark as it is displayed on its website. However,
this slight difference has no significance, particularly
because applicant’s mark is in standard character form.
Therefore, we must consider all reasonable displays,
including opposer’s stylization. In re RSI Systems, LLC, 88
USPQ2d 1445 (TTAB 2008). In view thereof, we find the marks
to be effectively identical.
We turn then to an analysis of the services, channels
of trade and classes of purchasers, keeping in mind that
when marks are identical there only needs to be a viable
relationship between the respective services. In re Shell
Oil Co., 992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir. 1993). We
must make our determinations under these factors based on
the services as they are recited in the application. See
Octocom Systems Inc. v. Houston Computers Services, Inc.,
918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The
authority is legion that the question of registrability of
an applicant’s mark must be decided on the basis of the
identification of goods set forth in the application
regardless of what the record may reveal as to the
particular nature of an applicant’s goods, the particular
Opposition No. 91177245
11
channels of trade or the class of purchasers to which sales
of the goods are directed.”); In re Elbaum, 211 USPQ 636
(TTAB 1981).
Applicant’s services in International Class 44 are
listed as “providing an on-line computer database in the
field of using silver in the health and medical field.”
Opposer uses its SILVERPEDIA mark in connection with
“providing indexes of information, sites and other resources
on the Internet relating to silver and its use in the health
and medical field.” As demonstrated by opposer’s evidence,
its website includes information about the use of silver in
the health and medical fields. Based on applicant’s
identification of its services and opposer’s demonstrated
use, we find the parties’ services to be highly related.
Applicant states that the identical services in
opposer’s registrations for other marks are classified in
International Class 42 and argues that “To the extent that
Opposer has trademark rights in SILVERPEDIA, they are for
goods and services in a different class than Applicant’s
mark. Therefore, there is no likelihood of confusion
between the two marks.” Br. pp. 10-11. This argument is
misplaced. Classification has no bearing on the question of
likelihood of confusion. Jean Patou Inc. v. Theon Inc., 9
F.3d 971, 29 USPQ2d 1771 (Fed. Cir. 1993).
Opposition No. 91177245
12
Opposer offers its services over the Internet to the
general public.11 Applicant also offers its services over
the Internet, and because applicant’s identification is
unlimited we must presume its services are offered to all
relevant consumers, which would include the general public.
Moreover, because the services are closely related, if not
identical in part, we must presume that they travel in the
same channels of trade and are offered to some of the same
purchasers. Hewlett-Packard Co. v. Packard Press Inc., 281
F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002).
On balance, the relevant du Pont factors weigh in favor
of a likelihood of confusion. In view of the effectively
identical marks, the closely related nature of the services,
and the overlap in the channels of trade and classes of
customers, we conclude that there is a likelihood of
confusion between applicant’s standard character mark
SILVERPEDIA and opposer’s mark SILVERPEDIA.
In view of the above, the opposer has proven its claim
of likelihood of confusion under Section 2(d) of the
Trademark Act.
Decision: The opposition is sustained, and
registration to applicant is refused.

11 Park Test. p. 71.