Inspiration Software, Inc.v.Siemens Aktiengesellschaft

Trademark Trial and Appeal Board

Jun 20, 2007

No. 91155251 (T.T.A.B. Jun. 20, 2007)

Mailed: June 20, 2007
GDH/gdh

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

Inspiration Software, Inc.
v.
Siemens Aktiengesellschaft
_____

Opposition No. 91155251 to application Serial No. 76228781
filed on March 22, 2001
_____

David P. Cooper of Kolisch, Hartwell, Dickinson, McCormack for
Inspiration Software, Inc.

Julie B. Seyler, Marie-Anne Mastrovito and Lawrence E. Abelman of
Abelman, Frayne & Schwab for Siemens Aktiengesellschaft.
______

Before Hohein, Rogers and Bergsman, Administrative Trademark
Judges.

Opinion by Hohein, Administrative Trademark Judge:

Siemens Aktiengesellschaft has filed an application to
register the mark "be inspired" in standard character form on the
Principal Register for the following goods and services:
"telephones, mobile phones, videophones,
telephone answering machines, telephone
answering sets, telephone dialing devices,
private automatic branch exchanges,
photocopiers, facsimile machines and computer
hardware for reading, recording and
transmitting data from magnetic and optical
media such as data encoded on users cards,
communications computers, computers, data
processing programs; computer incorporating
wireless telephones[,] videophones, telephone
answering machines, telephone answering sets,
telephone dialing devices, private automatic
THIS OPINION IS
NOT A PRECEDENT
OF THE TTAB
Opposition No. 91155251
2
branch exchanges, photocopiers, facsimile
machines and computer hardware for reading,
recording and transmitting data from magnetic
and optical media such as data encoded on
user cards; computer hardware and software
for use in accessing global computer
networks; power supply units for
communications computers and
telecommunication exchange and transmission
equipment; telecommunication cables and
optical fibers, fiber optic connectors and
electrical and electronic connectors" in
International Class 9;

"operation of telecommunication systems
and telecommunication networks for others" in
International Class 38; and

"consultancy in the setting-up and
operation of data processing systems, data
bases and telecommunication networks;
planning development and project design of
telecommunication and information processing
services and facilities, and
telecommunication networks; consultancy,
testing and technical monitoring in the field
of system integration and product integration
of telecommunication networks and data
processing in the field of electronic
services, especially collecting, storing,
translating, transmitting or distributing of
data, information, images, video and audio
sequences, and in the field of providing and
communicating information stored on a data
base by means of interactively communicating
computer systems; development and generation
of data processing programs, namely, computer
programming for others; [and] renting of data
processing programs" in International Class
42.1

Inspiration Software, Inc. has opposed registration on
the ground that opposer, "through its predecessors and itself,
has been engaged in the business of marketing computer programs
in the field of idea development and offering computer education

1 Ser. No. 76228781, filed on March 22, 2001, which is based on
ownership of German Reg. No. 30090786, which issued on February 14,
2001 and expires on December 31, 2010.

Opposition No. 91155251
3
training and other goods/services ... throughout the United
States under the mark INSPIRATION"; that opposer "has used in
interstate commerce the mark INSPIRATION for computer programs in
the field of idea development and other goods since February 4,
1988 and has used in interstate commerce the mark INSPIRATION for
computer education training and other services since August,
1991"; that opposer "owns Reg. No. 1,768,514, registered on the
Principal Register in the United States Patent and Trademark
Office on May 4, 1993 for [the mark] INSPIRATION for computer
programs in the field of idea development through visual
diagramming, outlining and text creation"; that such registration
"is valid and subsisting, and a copy of the registration is
attached ... as Exhibit 1"; that opposer also "owns Reg. No.
1,864,117, registered on the Principal Register in the United
States Patent and Trademark Office on November 22, 1994 for [the
mark] INSPIRATION for computer education training"; that such
registration "is valid and subsisting, and a copy of the
registration is attached ... as Exhibit 2"; that "[a]pplicant's
mark 'be inspired' when used in connection with the goods [and
services] set forth in its application, is confusingly similar to
opposer's use of its INSPIRATION mark" for its goods and
services; and that "registration of applicant's mark and
continued use by it with its goods [and services] is likely to
cause confusion, mistake and deception."
Applicant, in its answer, has denied the salient
allegations of the opposition.
Opposition No. 91155251
4
The record consists solely of the pleadings and the
file of the involved application. The copies which opposer
attached as Exhibits 1 and 2 to the opposition when it was filed
are only plain copies, rather than copies prepared by the U.S.
Patent and Trademark Office ("USPTO") showing the current status
of and title to such registrations,2 and thus fail to form part
of the record in this proceeding.3 Trial dates have expired
without either party having taken testimony or filed a notice of
reliance, and neither party has filed a brief on the case.4

2 The Board, in its August 18, 2005 order denying applicant's motion
for judgment under Trademark Rule 2.134(a), erroneously stated with
respect to the copies attached to the opposition that "opposer has
properly offered and made of record the status and title copies of its
pleaded registrations as evidence on opposer's behalf." The record,
however, does not contain any certified or other copies, as prepared
by the USPTO, which set forth the status of and title to opposer's
pleaded registrations.

3 Under Trademark Rule 2.122(c), exhibits attached to a pleading are
generally not evidence on behalf of the party to whose pleading such
are attached unless thereafter, during the party's time for taking
testimony, they are properly identified and introduced in evidence as
exhibits. See TBMP §§317 and 704.05(a) (2d ed. rev. 2004). The sole
exception, which is not present here, is that when a current status
and title copy, prepared by the USPTO, of a plaintiff's pleaded
registration is filed with the notice of opposition, the registration
will be received in evidence and forms part of the record. See
Trademark Rule 2.122(d)(1); and TBMP §§317, 704.03(b)(1)(A) and
704.05(a) (2d ed. rev. 2004).

4 In view of opposer's indication that the parties were engaged in
negotiating a settlement of this matter, the Board in an order issued
on May 3, 2006 found that opposer had discharged the order under
Trademark Rule 2.128(a)(3) to show cause for its failure to file a
brief on the case and suspended proceedings for sixty days pending
word from the parties as to the progress of their negotiations. No
word having been received, however, the Board on August 3, 2006
resumed proceedings and, noting in particular that opposer had neither
taken testimony nor filed a notice of reliance in support of its case,
reset the times for the parties to file briefs. Although such order
specifically stated that the Board's "patience has now been exhausted"
and that "[n]o further suspensions or extensions of time will be
granted," opposer--while acknowledging such--subsequently filed a
motion to suspend proceedings pending settlement negotiations. The
motion was denied in an order issued by the Board on October 31, 2006.

Opposition No. 91155251
5
Accordingly, because opposer, as the party bearing the
burden of proof in this proceeding,5 has not presented testimony
or properly introduced any other evidence during its initial
testimony period as proof of the allegations of the opposition
which have been denied by applicant, it is adjudged that opposer
cannot prevail on its claim of priority of use and likelihood of
confusion and that the opposition must fail.
Decision: The opposition is dismissed.

5 It is settled that opposer, as the plaintiff in this proceeding,
bears the burden of proof with respect to its claim of priority of use
and likelihood of confusion. See, e.g., Bose Corp. v. QSC Audio
Products Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002)
["[t]he burden of proof rests with the opposer ... to produce
sufficient evidence to support the ultimate conclusion of [priority of
use] and likelihood of confusion"]; Hoover Co. v. Royal Appliance Mfg.
Co., 238 F.3d 1357, 57 USPQ2d 1720, 1722 (Fed. Cir. 2001) ["[i]n
opposition proceedings, the opposer bears the burden of establishing
that the applicant does not have the right to register its mark"];
Champagne Louis Roederer S.A. v. Delicato Vineyards, 143 F.3d 1373, 47
USPQ2d 1459, 1464 (Fed. Cir. 1998) (Michel, J. concurring); Sanyo
Watch Co., Inc. v. Sanyo Elec. Co., Ltd., 691 F.2d 1019, 215 USPQ 833,
834 (Fed. Cir. 1982) ["[a]s the opposer in this proceeding, appellant
bears the burden of proof which encompasses not only the ultimate
burden of persuasion, but also the obligation of going forward with
sufficient proof of the material allegations of the Notice of
Opposition, which, if not countered, negates appellee's right to a
registration"]; and Clinton Detergent Co. v. Proctor & Gamble Co., 302
F.2d 745, 133 USPQ 520, 522 (CCPA 1962) ["[o]pposer ... has the burden
of proof to establish that applicant does not have the right to
register its mark."]. It remains opposer's obligation to satisfy its
burden of proof, irrespective of whether applicant offers any
evidence.