Microsoft Corp.v.Cetus Software, Inc.

Trademark Trial and Appeal Board

Aug 30, 2000

No. 91105324 (T.T.A.B. Aug. 30, 2000)

8/30/00
Cataldo
Opposition No. 105,324
Microsoft Corporation
v.
Cetus Software, Inc.
Before Cissel, Hanak, and McLeod,
Administrative Trademark Judges.
By the Board:
Microsoft Corporation has opposed the application of
Cetus Software, Inc. to register the mark STORMWINDOWS for
“computer security software, namely, software for hiding and
protecting a desktop configuration from unauthorized
alterations, including hiding desktop icons, preventing the
saving of desktop changes, hiding menu subfolders, settings
and control panel pages, disabling the running of various
applications, preventing the merging of files, and
preventing the addition or deletion of printers.”1 As
grounds for the notice of opposition, opposer asserts, in

1 Application Serial No. 75/106,933, filed on May 20, 1996, and
reciting April 15, 1994 as the date of first use and date of
first use in commerce on the goods.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
2900 Crystal Drive
Arlington, Virginia 22202-3513
THIS DISPOSITION
IS NOT CITABLE AS
PRECEDENT
Opposition No. 105,324
2
pertinent part of its amended notice of opposition,2 that it
is in the business of developing and marketing computer
programs, computer peripherals, multimedia products and
other computer-related products; that opposer has made prior
use of the mark WINDOWS for computer programs and related
goods; that it owns the following registrations, all for the
mark WINDOWS: Registration No. 1,872,264 for “computer
programs and manuals sold as a unit; namely, graphical
operating environment programs for microcomputers”;3
Registration No. 1,875,069 for “cartridges containing
software for operating or enhancing the operation of laser
printers, which cartridges are to be inserted into the
printers, and accompanying software for installation in
computers which communicate with the printers”;4 and
Registration No. 2,005,901 for “publications, namely user
manuals, instruction guides, reference guides, newsletters,

2 Opposer filed its amended notice of opposition prior to
applicant’s answer. A party to an inter partes proceeding before
the Board may amend its pleading once as a matter of course at
any time before a responsive pleading is served. See Fed. R. Civ.
P. 15(a).
3 Registration No. 1,872,264, issued January 10, 1995 with a
claim of acquired distinctiveness under Trademark Act Section
2(f), reciting October 18, 1983 as a date of first use in
commerce on the goods. Section 8 and Section 15 affidavits
filed.
4 Registration No. 1,875,069, issued January 24, 1995, reciting
December 30, 1992 as a date of first use in commerce on the
goods. Section 8 affidavit accepted; Section 15 affidavit
acknowledged.
Opposition No. 105,324
3
magazines, books about computer programs”;5 that opposer has
developed extensive good will and customer recognition
through substantial sales, advertising, and promotion of
goods under its WINDOWS marks; that applicant’s goods are
closely related to those of opposer; that applicant’s goods
are designed to work with those of opposer; that applicant’s
goods are marketed to users of opposer’s goods; that
applicant adopted its mark STORMWINDOWS intending that
consumers would associate applicant’s goods with those of
opposer; that opposer’s mark is famous; and that applicant’s
mark, when used on its goods, so resembles opposer’s mark as
to be likely to cause confusion, mistake or deception.
Applicant, in its answer, denies the salient
allegations of the notice of opposition.
This case now comes before the Board for consideration
of opposer’s motion for summary judgment on the ground of
priority and likelihood of confusion under Trademark Act
Section 2(d). The motion is fully briefed.6
In support of its motion for summary judgment, opposer
essentially argues there is no genuine issue of material
fact that the mark STORMWINDOWS in the application at issue

5 Registration No. 2,005,901, issued October 8, 1996 with a claim
of acquired distinctiveness under Trademark Act Section 2(f),
reciting November 1985 as a date of first use in commerce.
6 In addition, opposer has submitted a reply brief which we have
considered because it clarifies the issues. Consideration of
Opposition No. 105,324
4
includes the mark WINDOWS in opposer’s pleaded
registrations; that opposer made use of its mark prior to
the earliest date upon which applicant may rely for purposes
of priority of use; that opposer’s mark WINDOWS is famous
and, accordingly, is entitled to a broad scope of
protection; that WINDOWS is a strong mark as a result of
opposer’s 8 billion dollars in sales and 700 million dollars
spent in advertisements under the mark; that applicant’s
goods are designed specifically to work with those of
opposer by providing security to opposer’s operating
systems; and that the goods at issue herein are available in
the same channels of trade to the same classes of
purchasers.
Opposer has submitted the declarations of Rob Schoeben,
Director of Windows Marketing for opposer; and Robert G.
Woolston, one of its attorneys. In addition, opposer has
submitted printed copies of manuals, packaging, and
advertisements for its WINDOWS products; status and title
copies of its three pleaded registrations as well as
fourteen additional registrations; opposer’s first set of
interrogatory nos. 5-13; applicant’s responses to opposer’s
first set of interrogatory nos. 1-21; and computer printouts
from applicant’s internet web site.

reply briefs is discretionary on the part of the Board. See
Trademark Rule 2.127(a).
Opposition No. 105,324
5
In response to the motion for summary judgment,
applicant essentially maintains that there are disputed
material facts relative to the nature of its goods and their
relatedness to those of opposer; the marketing channels of
the respective goods; the similarity between the marks; and
the resulting likelihood of customer confusion.
In support of its position, applicant has submitted
printed copies of screen displays from its own, as well as
third-party, internet web sites offering trial copies of
applicant’s goods; printed copies of product information and
a license agreement available on applicant’s web site
concerning its goods; printed copies of screen displays that
appear during installation of applicant’s goods; printed
copies of documentation files from applicant’s goods; and
printed copies of screen displays of the help files and a
registration form regarding applicant’s goods.
In reply, opposer essentially argues that there are no
material issues in dispute regarding the fact that
applicant’s goods are designed and intended to be used with
those of opposer; that the application at issue herein
contains no limitations concerning channels of trade; that,
as a result, applicant’s arguments regarding the existence
of a genuine issue of material fact as to the differing
trade channels between the goods are without merit; and that
applicant’s arguments regarding lack of confusion as to the
Opposition No. 105,324
6
source of the goods raise no genuine issues of material
fact.
As has often been stated, summary judgment is an
appropriate method of disposing of cases in which there are
no genuine issues of material fact in dispute, thus leaving
the case to be resolved as a matter of law. See Fed. R.
Civ. P. 56(c). The party moving for summary judgment has
the initial burden of demonstrating the absence of any
genuine issue of material fact. See Celotex Corp. v.
Catrett, 477 U.S. 317 (1986), and Sweats Fashions Inc. v.
Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793 (Fed.
Cir. 1987). A factual dispute is genuine, if, on the
evidence of record, a reasonable finder of fact could
resolve the matter in favor of the non-moving party. See
Opryland USA Inc. v. Great American Music Show Inc., 970
F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992), and Olde Tyme
Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542
(Fed. Cir. 1992). The evidence must be viewed in a light
most favorable to the non-movant, and all justifiable
inferences are to be drawn in the non-movant’s favor. See
Lloyd’s Food Products Inc. v. Eli’s Inc., 987 F.2d 766, 25
USPQ2d 2027 (Fed. Cir. 1993), and Opryland USA, supra.
After a careful review of the record in this case, we
find that there are no genuine issues of material fact and
Opposition No. 105,324
7
that opposer is entitled to judgment as a matter of law.7
We note that priority of use is not at issue in this
proceeding inasmuch as opposer has pleaded ownership of
Registration Nos. 1,872,264, 1,875,069 and 2,005,901 and
introduced status and title copies thereof, and because
applicant has not filed a counterclaim for cancellation of
those registrations. See King Candy Co. v. Eunice King’s
Kitchen, Inc., 182 USPQ 108 (CCPA 1974).
Turning to the question of likelihood of confusion, we
find that there is no genuine issue of material fact for
trial.
It is well established that the test for determining
likelihood of confusion is not whether the marks are
distinguishable upon side-by-side comparison, but rather
whether they so resemble one another as to be likely to
cause confusion. See Visual Information Institute, Inc. v.
Vicon Industries Inc., 209 USPQ 179 (TTAB 1980). In the
instant case, applicant has appropriated in its entirety
opposer’s WINDOWS mark. See Philips Petroleum Company v.
Jet-Aer Corporation 157 USPQ 98 (TTAB 1968). Furthermore,
because the application for STORMWINDOWS is in typed drawing
form, applicant’s use of the STORMWINDOWS mark is "not

7 As a preliminary matter, we note that there is no genuine issue
as to opposer’s standing. Opposer attached to its notice of
opposition status and title copies of its three pleaded
registrations. See 15 U.S.C. § 1063(a). See also TBMP § 303.
Opposition No. 105,324
8
limited to the mark depicted in any special form." See
Phillips Petroleum v. C.J. Webb, 442 F.2d 1376, 170 USPQ 35,
36 (CCPA 1971). Accordingly, in any likelihood of confusion
analysis, we "must consider all reasonable manners in which
[the word STORMWINDOWS] could be depicted." See INB
National Bank v. Metrohost, 22 USPQ2d 1585, 1588 (TTAB
1992). Thus, applicant’s typed drawing of STORMWINDOWS
would, upon registration, afford applicant a scope of
protection which encompasses all reasonable manners in which
the word STORMWINDOWS could be depicted, including depicting
the STORM portion of the mark in smaller lettering than that
used for the WINDOWS portion of the mark. Moreover, in
addition to its three pleaded registrations, opposer has
introduced evidence that it owns a “family” of WINDOWS
formative marks, and asserts that, because of the nature of
applicant’s mark it would be assumed by purchasers familiar
with opposer’s marks that the defendant's mark comprised a
member of that "family". See Plus Products v. Medical
Modalities Associates, Inc., 217 USPQ 464 (TTAB 1983).
Thus, while applicant argues that there are differences in
the parties' marks, applicant has offered no evidence of a
genuine issue of material fact as to whether the public's
perception of the involved marks differ as a result thereof.
In any event, the similarities between the involved marks
Opposition No. 105,324
9
outweigh any differences between them in the likelihood of
confusion analysis.
Turning next to the relatedness of the parties’ goods,
the goods of the parties need not be identical or directly
competitive to find a likelihood of confusion. They need
only be related in some manner, or the conditions
surrounding their marketing be such, that they could be
encountered by the same purchasers under circumstances that
could give rise to the mistaken belief that the goods come
from a common source. In re Martin’s Famous Pastry Shoppe,
Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re
Corning Glass Works, 229 USPQ 65 (TTAB 1985); In re Rexel
Inc., 223 USPQ 830 (TTAB 1984).
Herein, the record reflects that applicant’s computer
security application software is designed and marketed
specifically for use with opposer’s operating system
software. For example, an informational computer text file
provided by applicant with copies of its goods indicates
that “StormWindows [TM] for Windows 95 will allow the
authorized user to add several types of protections to the
desktop and system of a Windows 95 computer.” (Applicant’s
response to motion for summary judgment, Exhibit 9).
Moreover, the record reflects that applicant provides
different versions of its goods for use with different
versions of opposer’s WINDOWS operating system software.
Opposition No. 105,324
10
(Declaration of Robert G. Woolston, Exhibit 20). As such,
it is clear that the parties’ goods are related and
complementary in nature, likely to be encountered and used
by the same classes of purchasers. We find therefore that
there is no genuine issue of material fact that the goods of
the parties are sufficiently related that when sold under
the involved marks, confusion is likely.
We note applicant’s assertions regarding both the
different marketing channels for the parties’ goods, and the
lack of potential customer confusion due to the repeated
indication of applicant as the source of the goods during
their downloading, registration, and running. However, such
assertions are unpersuasive given the lack of a genuine
issue as to (1) opposer’s priority and (2) the similarities
in the parties’ marks and goods.
In sum, applicant has failed to disclose any evidence
that points to the existence of a genuine issue of material
fact on the issue of likelihood of confusion.
We find that there are no genuine issues of material
fact and that opposer is entitled to judgment as a matter of
law. In view thereof, opposer's motion for summary judgment
is granted, the opposition is sustained, and registration to
Opposition No. 105,324
11
application Serial No. 75/106,933 is refused.
R. F. Cissel
E. W. Hanak
L. K. McLeod
Administrative Trademark
Judges, Trademark Trial
and Appeal Board