Invesco Powershares Capital Management LLCv.Pureshares LLC

Trademark Trial and Appeal Board

Oct 16, 2012

No. 91201464 (T.T.A.B. Oct. 16, 2012)

Goodman

Mailed: October 16, 2012

Opposition No. 91201464

Invesco Powershares Capital
Management LLC

v.

Pureshares LLC

Before Bucher, Taylor and Mermelstein, Administrative
Trademark Judges.

By the Board:

Pureshares LLC (“applicant”), which is proceeding
pro se in this case, has filed an application to register
the mark PURESHARES in standard character form for
“Strategic financial advisory services” in International
Class 36.1 Invesco Powershares Capital Management LLC,
(“opposer”) has opposed registration on the ground of
priority and likelihood of confusion. Opposer alleges use
of the mark POWERSHARES since at least as early as February
2001 “in conjunction with investment services and related
financial services.” Opposer has also pleaded ownership of
POWERSHARES, Registration No. 2863402, for “Investment
services, namely, offering exchange traded fund products

1 Application Serial No. 85277725, filed March 26, 2011,
asserting intent-to-use the mark under Section 1(b) of the
Trademark Act.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS OPINION IS NOT
A PRECEDENT OF
THE TTAB
Opposition No. 91201464

2
based on a mutual fund index,” as well as other registered
POWERSHARES formative marks.
In its answer, applicant has denied the salient
allegations in the notice of opposition and asserted
affirmative defenses.
This case now comes up on opposer’s motion, filed June
14, 2012, for partial summary judgment on the issues of
standing, priority and two likelihood of confusion du Pont2
factors, namely (i) similarity of the parties’ services and
(ii) similarity of channels of trade and classes of
purchasers.
As filed, opposer’s motion for partial summary judgment
was based in part on applicant’s admissions deemed admitted
for failure of applicant to answer opposer’s requests for
admissions. On August 14, 2012, the Board allowed applicant
to withdraw those admissions and provide amended admissions,
which amended admissions were filed with the Board on August
30, 2012. The Board will now consider the motion for
summary judgment based on applicant’s amended admissions.
A party is entitled to summary judgment when it has
demonstrated that there is no genuine dispute as to any
material fact and that it is entitled to judgment as a
matter of law. Fed. R. Civ. P. 56(a). In reviewing a

2 In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563, 567 (CCPA 1973).

Opposition No. 91201464

3
motion for summary judgment, the evidentiary record and all
reasonable inferences to be drawn from the undisputed facts
must be viewed in the light most favorable to the nonmoving
party. Olde Tyme Foods Inc. v. Roundy's Inc., 961 F.2d 200,
22 USPQ2d 1542, 1544 (Fed. Cir. 1992).
Admissions obtained by Fed. R. Civ. P. 36 may form a
proper basis for summary judgment if there is no genuine
dispute as to any material fact. 8A C. Wright, A. Miller &
R. Marcus, Federal Practice and Procedure Section 2264 (3d
ed. 2012). In order for admissions to form the basis for
summary judgment, those facts deemed admitted must be
directed to the essential allegations of the case. See
e.g., M.L.E. Music v. Kimble, Inc., 109 F. Supp. 2d 469, 472
(S.D.W. Va. 2000) (when essential allegations in a case have
been admitted, summary judgment is proper).
The evidence on summary judgment consists of
applicant’s amended admissions and opposer’s submission of
the electronic TARR and TESS reports from the USPTO website
for POWERSHARES Registration No. 2863402. Applicant’s
amended admissions admit requests nos. 1, 2, 4, 5, 6, 7, 8,
10, 11, 12 and 14. These admissions conclusively establish
the matter that is the subject of the request for admission.
Texas Department of Transportation v. Tucker, 95 USPQ2d 1241
(TTAB 2010). Thus, the facts in admitted requests for
admissions nos. 1, 2, 4, 5, 6, 7, 8, 10, 11, 12 and 14 are
Opposition No. 91201464

4
conclusively established and binding on applicant. Fed. R.
Civ. 36(b); TBMP Section 407.04 (3d ed. rev. 2012).
Through these admissions to the requests to admit, the
following pertinent facts are considered conclusively
established:
1) “The strategic financial advisory services which
Applicant presently intends to market under the PURESHARES
designation are exchange-traded funds and services related
to such exchange-traded funds.” (Opposer’s Request to Admit
no. 1)

2) “Applicant presently intends to issue and market
exchange-traded funds, which funds Applicant presently plans
to identify as PURESHARES funds.”(Opposer’s Request to Admit
no. 2).

3) “The document attached hereto and bearing Control Nos.
INV0001-INV0005 is a true and correct copy of Applicant’s
December 2012 ‘Initial Marketing Plan.’” (Opposer’s Request
to Admit no. 6).

4) “Applicant presently intends to issue and market
PURESHARES EFTs.” (Opposer’s Request to Admit no. 7).

5) “Applicant presently intends to market its PURESHARES
ETFs to, inter alia, anyone with access to trade equities on
domestic equity exchanges.” (Opposer’s Request to Admit no.
8).

6) “Applicant presently intends to market its PURESHARES
ETFs to, inter alia, retail investors.” (Opposer’s Request
to Admit no. 10).

7) “Applicant presently intends to market its PURESHARES
ETFs to, inter alia, members of the public who determine
what investment products they will purchase and who executes
their investment purchases without assistance from
professional investment advisors.” (Opposer’s Request to
Admit no. 11).

8) “Applicant anticipates that competition with Applicant’s
PURESHARES ETFs will come from, inter alia, well established
companies and well established asset management
institutions.” (Opposer’s Request to Admit no. 12).

Opposition No. 91201464

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Standing
Turning to the merits of the motion for partial summary
judgment, we first determine opposer’s standing to bring
this opposition proceeding. Standing is a threshold issue
that must be proven by a plaintiff in every inter partes
case. Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023
(Fed. Cir. 1999). We find that opposer’s standing to bring
this opposition proceeding is undisputed by applicant and is
established by the TARR and TESS printouts of the
POWERSHARES Registration No. 2863402. Edwards Lifesciences
Corp. v. VigiLanz Corp., 94 USPQ2d 1399, 1408 (TTAB 2010)
(pleaded registration made of record establishes standing).
Accordingly, we find no genuine dispute of material
fact exists regarding opposer’s standing.
Priority
We will now turn to the question of priority.
Because opposer's pleaded Registration No. 2863402 is of
record by submission of the TARR and TESS printouts,
opposer’s priority is not an issue as to the mark and
services covered by that registration. King Candy Co. v.
Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108,
110 (CCPA 1974).
Accordingly, we find that priority is not an issue in
this proceeding.

Opposition No. 91201464

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Likelihood of confusion
We now turn to the issue of likelihood of confusion
with respect to du Pont factors, two and three, similarity
or dissimilarity and nature of the goods or services and
similarity or dissimilarity of established or likely to
continue trade channels. In re E. I. du Pont de
Nemours & Co., 177 USPQ at 567. Consideration of these
factors is based on the services recited in applicant’s
application vis-à-vis the services identified in opposer’s
pleaded registration. Canadian Imperial Bank v. Wells Fargo
Bank, 811 F.2d 1490, 1 USPQ2d 1783, 1815 (Fed. Cir. 1992).
We must decide, for purposes of the present motion, whether
there are any genuine disputes of material fact regarding
du Pont factors numbers two and three that need to be
resolved at trial.
Opposer argues that while applicant’s services are
broadly identified, applicant has admitted that it will
market exchange-traded funds and provide exchange-traded
fund services. Opposer also argues that the parties’
channels of trade overlap because applicant’s channels of
trade are unrestricted in the recitation of services and
applicant has admitted that it plans to market its services
to retail investors or to anyone with access to trade
equities on domestic equity exchanges in the United States.
Opposition No. 91201464

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Applicant, on the other hand, argues that it does not
intend to market exchange traded funds on mutual fund
indices or “on the Area market.”
Similarity or Dissimilarity of the Services
In addition to considering the services as recited in
applicant’s application with the services as recited in
opposer’s registration, we may consider applicant’s amended
responses to opposer’s requests for admissions. Hewlett-
Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d
1001, 1004 (Fed. Cir. 2002) (Board may consider relevant
evidence with respect to relatedness of the services).
In this case, we cannot say that the services
identified in opposer’s registration and the subject
application are legally identical such that applicant’s
strategic financial advisory services are encompassed by
opposer’s investment services, namely, offering exchange-
traded fund products based on a mutual fund index. That is,
the registration submitted by opposer in and of itself is
not sufficient evidence of the relatedness of the parties’
services when considered in connection with the recitation
of services in applicant’s application. While applicant has
admitted that it intends to issue and market exchange-traded
funds under the PURESHARES designation and that the
strategic financial advisory services applicant intends to
market are exchange-traded funds and services related to
Opposition No. 91201464

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exchange-traded funds, there are no admissions from
applicant that offering exchange-traded fund products based
on a mutual fund index is identical or related to strategic
financial advisory services. See applicant’s responses to
opposer’s requests to admit nos. 1, 2, and 3.
We acknowledge applicant’s “admission” that “the
strategic financial advisory services which Applicant
presently intends to market ... are exchange-traded funds
and services....” Admission no. 1. Nonetheless, the
services at issue in this proceeding are applicant’s
provision of financial advice (the services recited in the
subject application), and under any reasonable construction,
providing financial advice does not include the marketing of
securities. It may well be the case that applicant intends
to market exchange-traded funds in addition to providing
financial advice, but if so, such activities would not be
covered by the registration which applicant seeks. And
while it is possible that applicant’s financial advisory
services are related to opposer’s offering exchange-traded
fund products, opposer has submitted no evidence that they
are in fact related, and if so, to what degree. Finally, it
is also possible that applicant’s financial advisory
services are identical or related to services which opposer
offers beyond the services recited in opposer’s
registration. But we cannot make that determination on this
Opposition No. 91201464

9
record because opposer has submitted no evidence of its
prior use of the mark in connection with such services.
Accordingly, we find, on the basis of this record, that
the relatedness of the parties’ services has not been
clearly established and that genuine disputes of material
fact remain regarding the similarity or dissimilarity of the
parties’ services.
Channels of Trade/Class of Purchasers
With respect to channels of trade, an opposer must
prove that its services are rendered in the same type of
distribution channel as encompassed by applicant’s
description of services. Panda Travel Inc. v. Resort Option
Enterprises Inc., 94 USPQ2d 1789, 1795 (TTAB 2009).
Inasmuch as there are no restrictions in applicant’s
recitation of services in its application and the recitation
of services in opposer’s registration, it is presumed that
the recitations encompass all services of the type
described, that they move in all normal trade channels for
such services, and that they are available to all potential
consumers for such services. Paula Payne Products Co. v.
Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA
1973).
On the face of applicant’s application and opposer’s
registration, which is what we must consider, the parties’
services are not legally identical and opposer is not
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entitled to a presumption that the parties services travel
in the same channels of trade and to the same classes of
purchasers. Cf. Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268
(TTAB 2003) (Where goods in applicant’s application were in-
part identical to those in registrant’s registration, lack
of restrictions as to trade channels or purchasers gives
rise to presumption that goods “could be offered and sold to
the same classes of purchasers through the same channels of
trade”).
Additionally, while applicant’s responses to opposer’s
requests for admissions identify the potential channels of
trade for its services and classes of consumers, opposer has
submitted no evidence as to its channels of trade to support
its assertion that the parties’ services are available in
the same channels of trade and to the same classes of
customers. There are no admissions from applicant that the
parties’ channels of trade or classes of purchasers are
identical.
Accordingly, on this record, we find that opposer has
not met its burden on summary judgment with respect to the
similarity of the parties’ channels of trade and classes of
customers, and therefore, genuine disputes of material fact
remain.

Opposition No. 91201464

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Decision
We find based on the record herein and the applicable
law, that there is no genuine dispute of material fact that
opposer has established its standing and priority.
Opposer’s motion for partial summary judgment is granted, as
to standing and priority. Opposer need not make any further
evidentiary submissions regarding standing and priority at
trial.
Opposer’s motion for partial summary judgment is denied
with respect to the similarity of the parties’ services, the
channels of trade and classes of purchasers.3
Proceedings are resumed.
Dates are reset as follows:
Plaintiff's Pretrial Disclosures Due 10/31/2012
Plaintiff's 30-day Trial Period Ends 12/15/2012
Defendant's Pretrial Disclosures Due 12/30/2012
Defendant's 30-day Trial Period Ends 2/13/2013
Plaintiff's Rebuttal Disclosures Due 2/28/2013
Plaintiff's 15-day Rebuttal Period Ends 3/30/2013

In each instance, a copy of the transcript of
testimony, together with copies of documentary exhibits,
must be served on the adverse party within thirty days after
completion of the taking of testimony. Trademark Rule
2.l25.

3 The parties should note that the evidence submitted in
connection with the motion for summary judgment is of record only
for consideration of the motion. See Levi Strauss & Co. v. R.
Josephs Sportswear Inc., 28 USPQ2d 1464 (TTAB 1993).
Opposition No. 91201464

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Briefs shall be filed in accordance with Trademark
Rules 2.128(a) and (b). An oral hearing will be set only
upon request filed as provided by Trademark Rule 2.l29.