Mobilogic, Inc.v.Netcore Technology, Inc.

Trademark Trial and Appeal Board

Aug 24, 1999

No. 91100989 (T.T.A.B. Aug. 24, 1999)

Paper No. 26
DEB
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Mobilogic, Inc.
v.
Netcore Technology, Inc.
_____
Opposition No. 100,989
to application Serial No. 74/613,435
filed on December 20, 1994
_____
Penny R. Slicer, Andrea K. Falk and Joseph A. Mahoney of
Stinson Mag & Fizzell, P.C. for Mobilogic, Inc.
Martin Korn of Locke Purnell Rain Harrell for Netcore
Technology, Inc.
______
Before Hanak, Wendel and Bucher, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Netcore Technology, Inc., a Texas corporation, has
filed an application for registration of the mark “PAGE
RUNNER” for “computer software to facilitate communication
of paging messages between a sender and a receiver.”1

1 Serial No. 74/613,435, in International Class 9, filed
December 20, 1994, based upon an allegation of a bona fide
intention to use the mark in commerce. On May 5, 1995, an
amendment to allege use under 37 C.F.R. 2.76 was filed with the
Opposition No. 100,989
2
Mobilogic, Inc., a Kansas Corporation, filed a timely notice
of opposition on February 22, 1996. As grounds for
opposition, opposer asserts prior use of the trademark
“PAGERUNNER” for computer software to facilitate
communication of paging messages between a sender and a
receiver. Opposer asserts that these marks are identical
and that the goods are most similar in function, and for
purposes of trademark law, are considered identical. As a
result, opposer alleges that applicant's mark, as applied to
applicant's goods, so resembles opposer's mark as to be
likely to cause confusion within the meaning of Section 2(d)
of the Lanham Act.
Applicant, in its answer, has admitted that it filed
the instant application under the intent-to-use provisions
of the Trademark Act, but has otherwise denied the salient
allegations of the opposition.
A trial was conducted and legal briefs have been filed,
but neither party requested an oral hearing.
In evidence are the pleadings; the file of the opposed
application; a copy of applicant’s responses to opposer’s
first set of interrogatories introduced by opposer under a
notice of reliance pursuant to 37 C.F.R. 2.120(j); and the
deposition transcript of Susan Sarno, vice president and

Office, alleging use on January 4, 1995 and use in interstate
commerce on January 7, 1995.
Opposition No. 100,989
3
partial owner of opposer, along with nineteen deposition
exhibits.
The marks herein are substantially identical -- “PAGE
RUNNER” (having a space in mark as presented on applicant’s
drawing page) and “PAGERUNNER” (without a space whenever
mark appears in typed form in the opposition record, from
the time of the Notice of Opposition through final reply
brief)2 –- and the goods are recited as being identical.
Interestingly, applicant in its brief does not even address
the issue of likelihood of confusion, so this case turns
solely on the question of priority of use.
Applicant takes the position that opposer has not shown
actual use in commerce prior to applicant’s constructive use
date or its actual date of first use in commerce.
Specifically, applicant argues that opposer’s reliance on an
advertising brochure mailed to hundreds of prospective
buyers is insufficient to show use of the mark in commerce
under Section 45 of the Trademark Act. Secondly, applicant
charges that the mark was not properly used in conjunction
with the software in an alleged sale to a specific customer

2 In the reality of the marketplace, both parties present
their marks in ways that create an identical commercial
impression, i.e., as a single, run-together word but creating
separation with an upper-case (or larger) letter “P” and upper-
case (or larger) letter “R” (viz., PageRunner or PAGERUNNER).
Applicant has created additional separation (not suggested in its
typed drawing or specimens of record) by used contrasting colors
(i.e., the word “Page” being in red or burgundy and the word
“Runner” being in black or blue). See deposition exhibits 17 and
19 accompanying deposition transcript of Susan Sarno.
Opposition No. 100,989
4
in Monroe, Louisiana, Mr. Randy Gilley of Gilley’s Heating
and Cooling. Hence, we turn to the evidence of record to
determine if opposer has sufficiently proven prior use in
commerce.
According to uncontested testimony, during the summer
of 1994, opposer developed a new software product to
facilitate paging massages, and adopted the coined name
“PAGERUNNER” for this new product.3 Opposer completed the
first commercial installation of its “PAGERUNNER” software
in July 1994.4 It continued to demonstrate, promote,
market, sell, and deliver its “PAGERUNNER” software to
potential customers and resellers that fall.5 On October
15, 1994, opposer mailed hundreds of brochures with a letter
and order form.6 Contrary to applicant’s assertions, this
mailing solicited orders and touted a special introductory,
limited-time price of $995.00, expiring on December 31,
1994.7 Between October and December 1994, opposer followed
up these letters with telephone calls to most of the five
hundred companies who had been sent the brochures.8 On
October 31, 1994, opposer sent the same brochure and order

3 Deposition transcript of Susan Sarno, p. 12.
4 Deposition transcript of Susan Sarno, p. 16.
5 Deposition transcript of Susan Sarno, p. 16.
6 Deposition transcript of Susan Sarno, p. 17.
7 Deposition transcript of Susan Sarno, pp. 17 – 19.
8 Deposition transcript of Susan Sarno, p. 20.
Opposition No. 100,989
5
form to thirty resellers of such products.9 Documents from
mid-November 1994 include an airbill reflecting the shipment
via Federal Express of a package to Randy Gilley. The
record reflects a later charge of $999.95 ($995.00 for the
software plus $4.95 for shipping and handling) to Randy
Gilley’s VISA credit card. 10 Over the next six-weeks, this
sale was followed by at least five other documented sales of
the software directly to specific end-users and many more
units sold to resellers.11
We turn first to an examination of the letter, sales
brochure, and order form sent to five hundred potential
customers in mid-October 1994.12 The record contains
exhibits showing that on October 13, 1994, Modern Business
Systems of Jefferson City, MO, printed up five-hundred
letters on Mobilogic letterhead and five-hundred color
copies of the PageRunner solicitation having an order form
printed on the back thereof.13 The letter is dated October
14, 1994, and a packet of envelopes marked “return-to-
sender” (i.e., undeliverable solicitations sent to some of

9 Deposition transcript of Susan Sarno, pp. 20 – 21.
10 Deposition transcript of Susan Sarno, pp. 25 – 28, and
deposition exhibits 8, 9 and 10.
11 Deposition transcript of Susan Sarno, pp. 30 – 41, and
deposition exhibits 13, 14, 15 and 16.
12 Deposition exhibit 4 accompanying deposition transcript of
Susan Sarno.
13 Id.
Opposition No. 100,989
6
these potential customers) show the same post-mark, namely,
“Shawnee Mission, Kansas, October 15, 1994.”14
We find that these solicitations were certainly more
than mere advertising. cf. In re MediaShare Corp., 43
USPQ2d 1304 (TTAB 1997). Whether these two-sided, color
papers qualify as a “display associated” with goods is a
factual question. Accordingly, we find that, like the use
of a mark in a mail order catalog, this is a point of sale
display associated with the goods, constituting valid
trademark usage. See Lands’ End Inc. v. Manbeck, 24 USPQ2d
1314 (DC E.Va. 1992). As the court noted in the Lands’ End
case, supra, “A customer can identify a listing and make a
decision to purchase by filling out the sales form and
sending it in or by calling in a purchase by phone.” We
find the facts of this case to be totally analogous. The
discussion in the Lands’ End case about “pictures” of the
purse featured in the mail-order catalogue are
understandable given the importance to the mail-order
purchaser of the visual appeal of this particular accessory,
and the fact that the purse was only one of several items
featured on that same page of the Lands’ End catalogue.
Where, as is the case herein, the goods themselves are
floppy diskettes, and the solicitation is for a single item,

14 Deposition exhibit 6 accompanying deposition transcript of
Susan Sarno.
Opposition No. 100,989
7
the absence of a picture of a diskette on this flier, for
example, is meaningless.
Most importantly, the back of this flier is an order
form. A customer who received this solicitation/brochure
could fill out this half-page order form, indicating the
preferred media specification of the diskette and charging
the purchase to a credit card, before faxing or mailing the
order to opposer. Accordingly, we find that as of mid-
October 1994, opposer’s hundreds of solicitations
constituted valid trademark usage of its mark.
Finally, as to the usage during the fall 1994 of the
trademark on the actual computer software (i.e., diskettes
distributed to the ultimate users as well as those marketed
to customers through resellers), we do have copies of
computer screen prints which show the mark prominently
displayed on several successive screens, as well as on the
labels affixed to the diskettes themselves.15 Diskette
labels are routinely submitted to the Patent and Trademark
Office as trademark specimens for software in International
Class 9. Furthermore, screen prints are also consistent
with Office practice during the ex parte examination of
specimens for computer program. See TMEP 905.04(d) –

15 Deposition transcript of Susan Sarno, pp. 13 – 14, and
deposition exhibit 3.
Opposition No. 100,989
8
“Specimens for Trademarks Identifying Computer Programs,
Movies or Video Tapes.”16
Decision: Inasmuch as there is clearly a likelihood of
confusion herein, and opposer has established priority of
usage, this opposition is sustained.
E. W. Hanak
H. R. Wendel
D. E. Bucher
Administrative Trademark
Judges, Trademark Trial
and Appeal Board

16 The computer program, video tape and movie
industries have adopted the practice of applying
trademarks to their goods in such a manner that the
marks are visible only when the programs or movies are
displayed on a screen (perhaps, for example, on the
first several frames of a movie).
A photograph of a display screen projecting the
identifying trademark of a computer program or a
photograph of a frame or frames of a movie or video
tape bearing the mark sought to be registered should
be acceptable as evidence of trademark use. It is not
a prerequisite to acceptability of specimens that
purchasers be able to see the mark prior to purchase
of the goods. In re Brown Jordan Co., 219 USPQ 375
(TTAB 1983) (stamping the mark after purchase of the
goods, on a tag attached to the goods, which
thereafter are transported in commerce, held
sufficient).