NetCloud, LLCv.East Coast Network Services, LLC

Trademark Trial and Appeal Board

Mar 11, 2015

No. 91210559 (T.T.A.B. Mar. 11, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: March 11, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

NetCloud, LLC
v.
East Coast Network Services, LLC
_____

Opposition No. 91210559
against Serial No. 85777557
_____

Morris E. Turek of YourTrademarkAttorney.com,
for NetCloud, LLC.
Russell Logan, for East Coast Network Services, LLC.
_____

Before Bucher, Zervas and Shaw,
Administrative Trademark Judges.

Opinion by Bucher, Administrative Trademark Judge:
East Coast Network Services, LLC (hereinafter “Applicant”) seeks registration on
the Principal Register of the mark NETCLOUD (in standard character format) for the
following services:
computer monitoring service which tracks application software
performance, performs periodic maintenance and provides
reports and alerts concerning such performance; computer
services, namely, cloud hosting provider services; computer
services, namely, computer system administration for others;
computer services, namely, filtering of unwanted e-mails;
computer services, namely, integration of private and public
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cloud computing environments; computer services, namely, on-
line scanning, detecting, quarantining and eliminating of viruses,
worms, [T]rojans, spyware, adware, malware and unauthorized
data and programs on computers and electronic devices;
computer services, namely, remote and on-site management of
the information technology (IT) systems of others; hosting the
software, websites and other computer applications of others on a
virtual private server; providing virtual computer systems and
virtual computer environments through cloud computing, in
International Class 42.1
NetCloud, LLC (hereinafter “Opposer”) pleaded that it has prior, common law use
of the identical mark NETCLOUD for many of the same services, such as web
hosting, cloud hosting, and email services as well as system backups, monitoring, and
administration support, and should prevail herein on the ground of priority and
likelihood of confusion under Section 2(d) of the Trademark Act of 1946, 15 U.S.C.
§ 1052(d).
I. Evidentiary Issues
Before proceeding to the merits of the refusal, we address the following evidentiary
matters.
Opposer submitted business records to show that its predecessors-in-interest had
continuously provided cloud hosting and email service under the NetCloud trademark.
In its brief, Applicant objects to the admission by Opposer of invoices that were
addressed to “NetCloud” and marked “paid” by third party providers, received by
Opposer’s predecessor-in-interest in the course of rendering his services2 on the basis

1 Application Serial No. 85777557 was filed on November 12, 2012, and claims first use
anywhere and use in commerce since at least as early as November 10, 2012.
2 The invoices at issue were introduced as Exhibits 14-23 of Mehul Satasia’s testimony
deposition. 9 TTABVue 79-88 of 88. Mr. Satasia bought his web hosting business from Raj

Opposition No. 91210559
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that they are inadmissible hearsay. Applicant’s Brief at 5. It appears as if Applicant is
arguing that Opposer cannot authenticate the invoices, for example, because Mr.
Satasia, as a sole proprietor and an immediate predecessor-in-interest to Opposer, and
later, Opposer, merely received these invoices from third parties such as WebProSys,
HostRocket.com, NetDepot and FDCservers.NET LLC. Applicant asserts that these
exhibits have not been property authenticated or certified under Rule 803(6)(D) of the
Federal Rules of Evidence. Id. However, the business records hearsay exception of
Rule 803(6) includes third-party business records of regularly conducted activities
received during ordinary course of the witness’ business. The fact that the invoices
were pieces of paper which had earlier been the records of different businesses, namely
WebProSys, HostRocket.com, NetDepot and FDCservers.NET LLC, is irrelevant.
Because they were relied upon by Satasia, these invoices were integrated into
Satasia’s own records, especially having the additional notations showing they had
been “Paid.” See also United States v. Mendel, 746 F.2d 155, 166 (2d Cir.1984), cert.
denied, 469 U.S. 1213, 105 S.Ct. 1184, 84 L.Ed.2d 331 (1985); United States v. Ullrich,
580 F.2d 765, 771-72 (5th Cir.1978); United States v. Pfeiffer, 539 F.2d 668, 671 (8th
Cir.1976); and U.S. v. Doe, 960 F.2d 221 (D.C. Mass. 1992). Moreover, subsection (D)
permits the requisite foundation testimony to be provided by the “custodian or another
qualified witness.” In this regard, Mr. Satasia testified as to the company from which
he had received the invoices, the dates of the various invoices, exactly what services
were covered thereby, and a demonstration that payment of the invoices was made by

Viradia (both of whom functioned as sole proprietors), Satasia was an immediate
predecessor-in-interest to Opposer, and now serves as Opposer’s managing member.
Opposition No. 91210559
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Opposer’s predecessor-in-interest. With invoices stamped as “PAID” or machine
generated receipts showing electronic payments, and Applicant has not otherwise
demonstrated that they lack trustworthiness, we find that Exhibits 14-23 of Mehul
Satasia’s testimony deposition are admissible under the business records hearsay
exception of the Federal Rules of Evidence to the extent that they were received and
paid by Mr. Satasia for the services identified.3
Applicant also objects to the admission of all of Opposer’s evidence purporting to
show use of the term NETCLOUD by any entity or individual other than Opposer on
the basis that all such evidence is beyond the scope of the pleadings and, therefore,
irrelevant.4 Applicant’s Brief at 5-6. Specifically, Applicant argues that the Notice of
Opposition failed to provide any notice that Opposer intended to rely on use of
NETCLOUD by Opposer’s predecessors-in-interest, and that Applicant “was not
provided any notice that would prompt Applicant to investigate, take discovery, and
explore affirmative defenses such as abandonment regarding any usage of the
NETCLOUD mark by Opposer’s multiple purported predecessors-in-interest.”
Applicant’s Brief at 6.
However, Opposer’s Initial Disclosures specifically listed Raj Viradia and Mehul
Satasia as potential witnesses. Opposer’s discovery responses served on Opposer early
in the discovery period revealed the purported transfer of the NETCLOUD name from
Raj Viradia to Mehul Satasia, the formation of Opposer as an entity, and then the

3 See especially Satasia Exs. 19-23 at 9 TTABVue 84-88 of 88.
4 Applicant objects to Satasia Depo. at 18-22, 25-43, as well as Satasia Exs. 6, 10-17, and 19-21, 9
TTABVue 18-23, 26-44, 63-67, 72-88. Applicant also objects to the Viradia deposition in its entirety
including all exhibits attached thereto. Viradia Depo. and Exs., 10 TTABVue 2-59 of 59.
Opposition No. 91210559
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purported transfer from Mehul Satasia to Opposer. Accordingly, we find that
Applicant was on notice of trademark use by Opposer’s predecessors-in-interest and
that it was not deprived of an opportunity to meet Opposer’s evidence at trial. As to
the overall relevance of the claimed usage by Opposer’s predecessors-in-interest, this
continuous chain of ownership is most relevant to the hotly-contested question of
priority of use between the parties to this litigation.
Finally, Applicant objects to all of the deposition testimony evidence and associated
exhibits proffered by Opposer to establish priority through use analogous to service
mark use on the basis that analogous use was not pleaded in the Notice of Opposition.
Applicant’s Brief at 6. Applicant is correct that the elements of each claim should be
stated concisely and directly, and include enough detail to give the defendant fair
notice. Fair Indigo LLC v. Style Conscience, 85 USPQ2d 1536, 1538 (TTAB 2007).
Under the standards applied to “notice pleadings,” it seems to us that the Notice of
Opposition, in alleging use “[s]ince long before any date on which Applicant could
reasonably rely …,” did not need explicitly in such pleading to name either use
through its predecessors-in-interest or analogous use in order to preserve these proofs
at trial. In any case, as stated in its final briefs, Opposer appears to be relying on
actual service mark usage of the term NETCLOUD in commerce by Opposer’s
predecessors-in-interest, not use analogous, dating back to a date prior to Applicant’s
filing date of November 12, 2012. Accordingly, we do not rely upon non-technical
service mark usage to establish Opposer’s priority date. On the other hand, we do find
that Opposer’s alleged analogous use is consistent with the follow-on dates that
Opposition No. 91210559
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Opposer alleges for actual, technical service mark use. Accordingly, we overrule this
objection.
Applicant moved to strike Exhibits A, B, and C attached to Opposer’s Reply Brief.
See TBMP § 539 (2014). Applicant’s motion is granted for two reasons: (1) all evidence
must be entered into the record during the trial period. As a result, any evidentiary
matter not made of record during Opposer’s trial period constitutes untimely evidence
when submitted for the first time with Opposer’s reply brief. 37 C.F.R. § 2.121; See
also Angelica Corp. v. Collins & Aikman Corp., 192 USPQ 387, 391 n.10 (TTAB 1976)
(“Evidence submitted by opposer for the first time with its brief has not been
considered because it was not regularly made of record during its testimony period in
chief or rebuttal testimony period.”); L. Leichner (London) Ltd. v. Robbins, 189 USPQ
254, 255 (TTAB 1975) (same); Tektronix, Inc. v. Daktronics, Inc., 187 USPQ 588, 589
n.1 (TTAB 1975), aff’d, 534 F.2d 915, 189 USPQ 693 (CCPA 1976); Ortho
Pharmaceutical Corp. v. Hudson Pharmaceutical Corp., 178 USPQ 429, 430 n.3 (TTAB
1973); and (2) Opposer cannot make of record its own Responses to Interrogatories
(except under limited circumstances not applicable here), Responses to Requests for
Documents, and Initial Disclosures. 37 C.F.R § 2.120(j)(5), TBMP §§ 704.10, 704.14
(2014). Finally, requests for discovery, responses thereto, and disclosed documents
should only be filed with the Board in five circumstances not applicable here. See 37
C.F.R. § 2.120(j)(8); TBMP § 704.10 (2014). Accordingly, we have not taken into
consideration Exhibits A, B, and C attached to Opposer’s Reply Brief.
Opposition No. 91210559
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II. The record
The record includes the pleadings and the file of the opposed application.
Trademark Rule 2.122(b). In addition, Opposer proffered the testimony depositions of
Raj Viradia, the former owner of the NETCLOUD mark, and Mehul Satasia, also a
former owner of the NETCLOUD mark and the founder and managing member of
Opposer, along with the exhibits thereto.5
III. Standing
Section 13(a) of the Trademark Act, 15 U.S.C. § 1063(a), allows for opposition to the
registration of a mark by anyone “who believes that they would be damaged by the
registration of a mark … .” The party seeking to oppose the registration of the mark
must prove two elements: (1) that it has standing and (2) that there is a valid ground
to prevent the registration of the opposed mark. Young v. AGB Corp., 152 F.3d 1377,
47 USPQ2d 1752, 1755 (Fed. Cir. 1998).
Standing is a threshold issue that the plaintiff in a Board inter partes proceeding
must prove. Hence, Opposer must show that it is not a mere intermeddler, i.e., that it
has a real interest in the outcome of the proceeding and a reasonable basis for its
belief that it would be damaged by issuance or maintenance of the defendant’s
registration. See Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999).
To establish standing in this case, Opposer must prove it has a “direct and personal
stake” in the outcome and is more than a “mere intermeddler.” See Ritchie v. Simpson,

5 Although Opposer filed a Notice of Reliance (8 TTABVue), given that Applicant submitted no
evidence during its trial period, Opposer decided that it has no need to rely upon this
document, namely “Applicant’s responses to Opposer’s first set of interrogatories,” dated
September 26, 2013.
Opposition No. 91210559
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50 USPQ2d at 1026-27. In the present case, the marks are identical, and Opposer’s
testimony and exhibits demonstrate that it is involved in many of the same services
recited by Applicant in its involved application, such as web hosting, cloud hosting,
and email services as well as system backups, monitoring, and administration support.
Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1727
(Fed. Cir. 2012); Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ
185, 189 (CCPA 1982); and Time Warner Entm’t Co. v. Jones, 65 USPQ2d 1650, 1657
(TTAB 2002). Hence, Opposer has shown it has standing to bring this cause of action.
IV. Priority
Opposer’s priority is in issue with respect to Opposer’s claimed mark NETCLOUD
because it is unregistered.6 Hence, Opposer bears the burden of establishing priority
with respect to this mark for which it has alleged prior common law rights.7 The
following background information is necessary to determine priority.
Around November 2009, Raj Viradia, a sole proprietor, began use of the name
“Netcloud” in the Atlanta metro area in connection with the advertising and sale of his
web hosting services, cloud hosting services, data backup, email service and support,
and technical support.8 His clients were individuals and small businesses in Georgia

6 For purposes of this decision, we make no legal distinction among Opposer’s / Opposer’s
predecessor’s usage of “NETCLOUD,” “NetCloud” and “Netcloud.”
7 Inasmuch as neither party has questioned whether this term – upon adoption and use in
connection with these services – is inherently distinctive, that question is not before us.
8 Viradia Depo. at 6–10, 10 TTABVue at 7-11 of 59.
Opposition No. 91210559
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and Tennessee, who usually ordered Mr. Viradia’s services over the telephone and
would pay for his services with cash or check.9
Initially, in November 2009, Mr. Viradia
relied primarily upon word-of-mouth
recommendations, flyers, and business cards to
market his business. In November 2009, Viradia
hired WebProSys to create the marketing flyer
shown at right in order to advertise his web
hosting services.10 Viradia handed out this flyer
to individuals in the Indian community during
frequent social functions in order to promote his services.
Similarly, in November 2011, Mr. Viradia designed business cards to hand

out to prospective
clients in need of a
web presence,
which card (shown
at left) promoted
his NetCloud service
Card, Viradia Ex. 2 Flyer, Viradia Ex. 3
mark in connection with the offering of three different web hosting plans, as well as a
second marketing flyer (above, at right).11

9 Id. at 9, 10 TTABVue at 10 of 59.
10 Id. at 9-11, and Viradia Ex. 1, 10 TTABVue at 10-12, 43 of 59.
11 Id. at 12-16, 10 TTABVue at 13-17 of 59.
Opposition No. 91210559
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In support of Mr. Viradia’s having offered web hosting services during this period,
Opposer submitted into evidence nine separate invoices, all dated between 2009 and
2011, eight of which listed “NetCloud Hosting” in the description of services rendered

(see invoice at left), and
the ninth of which
prominently displays
the NetCloud name on
the very top as a
service mark or trade
name (at right).12
Invoice, Viradia Ex. 4,
dated 12/01/2009
Invoice, Viradia Ex. 12,
dated 11/15/2011
Having decided in late 2011 that he wanted to also use the name NetCloud as the
brand name for his business, in January 2012 Mr. Viradia purchased the
domain name for $25,000 from a company in the business of reselling
domain names.13 Then, facing an ultimatum from his partners in their construction
company to divest himself of this business, Mr. Viradia sold his NetCloud web hosting
business to Mehul Satasia, a resident of Texas, in February 2012.14 Mr. Satasia paid
$26,656 for the assets of the business, the majority of which was essentially a
reimbursement for the domain name that Mr. Viradia had just purchased for $25,000.

12 Id. at 16-26, 10 TTABVue at 18-27 of 59.
13 Id. at 10-13, 10 TTABVue at 11-14 of 59.
14 Id. at 26-27, 10 TTABVue at 27-28 of 59.
Opposition No. 91210559
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The Asset Purchase Agreement executed February 9, 2012, confirms that the sale
of the NetCloud business included all accounts, customer lists, customer records,
domain names, trademarks, service marks, and associated goodwill.15 All the listed
assets in this Agreement were transferred to Mr. Satasia, and Mr. Viradia did not
retain any rights whatsoever in the NetCloud business, service mark or domain
names.16
Upon purchasing the business from Mr. Viradia, Mr. Satasia continuously provided
cloud hosting and email service under the NetCloud trademark.17

Flyer, Satasia Ex. 11
Similar to Mr. Viradia,
Mr. Satasia initially relied
upon an advertising flyer
distributed at business
networking and Meetup

Invoice, Satasia Ex. 12
events, and his invoices show a continuing relationship
with some of Mr. Viradia’s clients, such as Days Inn Atlanta.18 Throughout 2012, Mr.
Satasia rented servers from Linode.com for hosting his clients’ websites as well as his own
business operations.19 Until such time as he was able to acquire his own server resources,
Mr. Satasia also maintained the web hosting account with HostRocket.com that was

15 Id. at 27, Viradia Ex. 13, 10 TTABVue at 28, 55-59 of 59; Satasia Depo. at 19-20, Satasia
Ex. 6, 9 TTABVue at 20-21, 63-66 of 88.
16 Viradia Depo. at 29-30, 10 TTABVue at 30-31 of 59; Satasia Depo. at 20-21, 9 TTABVue at
21-22 of 88.
17 Satasia Depo. at 27-31, 9 TTABVue at 28-32 of 88.
18 Id. at 27-30, 9 TTABVue at 28-31 of 88.
19 Id. at 31-36, Satasia Exs. 14-18, 9 TTABVue at 32-37, 79-88 of 88.
Opposition No. 91210559
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transferred to him by Mr. Viradia as part of the Asset Purchase Agreement.20 Thereafter,
Mr. Satasia started developing his own website by contracting with
WebProSys.21 Mr. Satasia’s new website was launched towards the end of 2012.22 In
December 2012, Mr. Satasia formed Opposer, NetCloud, LLC, an active limited
liability company in the State of Texas, having an
effective date of December 28, 2012.23 Then on
December 31, 2012, Mr. Satasia transferred all the
assets of his web hosting business – all tangible and
intangible assets, including the service mark NetCloud
and associated goodwill – to Opposer.24
The record shows that, as contended by Opposer, NetCloud, LLC has always used
the NetCloud service mark to advertise and sell its services, has never done business
under any other name, and continues to provide cloud hosting services, backups,
systems monitoring, and system administration support.25 Opposer currently
advertises its services on its publicly accessible website located at

20 Satasia Depo. at 40-41, Satasia Ex. 21, 9 TTABVue at 41-42, 86 of 88.
21 Satasia Depo. at 36-39, Satasia Exs. 19-20, 9 TTABVue at 37-427, 86 of 88.
22 Satasia Depo. at 40, 9 TTABVue at 41 of 88.
23 Id. at 22-24, Satasia Exs. 7-9, 9 TTABVue at 23-25, 68-73 of 88. Mr. Satasia filed with the
Secretary of State of Texas, on December 11, 2012, a Certificate of Formation for “NetCloud,
LLC” a Domestic Limited Liability Company (LLC). Satasia Ex. 7. This document set the
effective date of the LLC formation as January 1, 2013, but that did not fit with Satasia’s tax
planning. Accordingly, he filed a Certificate of Correction, Satasia Ex. 8, 9 TTABVue at 69-71
of 88, resulting in an effective filing date of December 28, 2012. Satasia Depo. at 22-25,
Satasia Ex. 9, 9 TTABVue at23-26, 72 of 88.
24 Satasia Depo. at 25-27; Satasia Ex. 10, 9 TTABVue at 26-28, 74-75 of 88.
25 Satasia Depo. at 8, 9 TTABVue at 9 of 88.
Opposition No. 91210559
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where members of the public can order and pay for Opposer’s
services electronically through its website. Opposer also uses Facebook and Twitter to
publicly promote its services under the NetCloud name. At the time of Mr. Satasia’s
trial testimony, he testified that Opposer served more than 170 clients located
throughout the United States and in a number of foreign countries.26 This is
substantially more than the four clients Mr. Satasia, as a sole proprietor, had
inherited in February 2012. However, we cannot be sure from this record how many
more clients Mr. Satasia had on November 12, 2012.
Applicant is correct that it may rely without any proof upon the filing date of its
application, November 12, 2012, as a “constructive use” date for purposes of priority.”
Syngenta Crop Prot. Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1119 (TTAB 2009). Given
the totality of Applicant’s evidentiary objections and legal arguments, and inasmuch
as Opposer’s formation date was December 28, 2012, Applicant argues that
“Applicant's first use of its NETCLOUD mark ipso facto precedes Opposer’s usage of
any similar mark.”
Of course, Opposer acknowledges that NetCloud, LLC was not legally formed until
after Applicant’s application was filed. However, as outlined above, Opposer contends
that it acquired all rights in the NetCloud name and associated goodwill from Mehul

26 Id. at 11-18, 9 TTABVue at 12-19 of 88. Mr. Satasia testified that the top states for
customers, as he remembered them, were California, New York, New Jersey, and Utah. Id. at
11-12, 9 TTABVue at 12-13 of 88. He also enumerated “[a] lot of European countries,
Mexico, Brazil, India, Philippines, Russia.” Id. at 12, 9 TTABVue at 13 of 88. However, of
the 170 customers, he did not provide a total number for those in the United States. Finally,
we note that Mr. Satasia’s testified to the 170 number on April 16, 2014, almost eighteen
months after Applicant’s constructive use date is November 12, 2012.
Opposition No. 91210559
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Satasia, who had previously acquired all rights in the NetCloud name and associated
goodwill from Raj Viradia back in February 2012. As such, Opposer argues that
Applicant’s argument has no merit.
Having determined above that Opposer’s testimony and exhibits are included in
the record, we proceed to discuss Applicant’s legal arguments against Opposer’s claims
of priority.
Applicant argues that all the alleged trade name usage of NetCloud by Messrs.
Viradia and Satasia prior to NetCloud, LLC’s Formation was illegal under Georgia’s
fictitious names law and Texas’ assumed name state law.27
Applicant is correct that the Lanham Act’s “use in commerce” language means
“lawful” use. See 37 C.F.R. § 2.69: “Compliance with other laws.” However, by the
terms of this regulation, the reference is to statutes and regulations issued pursuant
to Acts of Congress. Western Worldwide Enters. Group Inc. v. Qinqdao Brewery, 17
USPQ2d 1137, 1141 (TTAB 1990).
Moreover, in determining whether use of a mark is lawful, we hold a use in
commerce unlawful only when the issue of compliance has previously been determined
(with a finding of non-compliance) by a court or government agency having competent
jurisdiction under the statute involved, or where there has been a per se violation of a
statute regulating the sale of a party’s goods. Kellogg Co. v. New Generation Foods
Inc., 6 USPQ2d 2045 (TTAB 1988). We are reminded that “a rigid approach serves the

27 As noted by Opposer, Applicant has not submitted into evidence copies of these respective
state laws alleged to have been violated by Mr. Satasia and Mr. Viradia. We cannot be sure
that lack of compliance with the statutes would result in all subsequent commerce being
considered per se illegal.
Opposition No. 91210559
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interests of neither justice nor common sense and such an approach is not mandated
by the case law on this matter.” General Mills, Inc. v. Health Valley Foods, 24 USPQ2d
1270, 1274 (TTAB 1992) (“[W]e decline to find that the omission of nutritional
information on opposer’s initial packages was of such gravity and significance that the
October 1984 shipment affords no basis for opposer’s registration.”). Id. at 1275.
Applicant also alleges that Opposer has failed to demonstrate sufficient usage to
create prior common law trademark rights. Certainly under Section 45 of the
Trademark Act, 15 U.S.C. § 1127, the term “use in commerce” means “the bona fide
use of a mark in the ordinary course of trade, and not made merely to reserve a right
in a mark.” As to a mark for services, a service mark shall be deemed to be in use in
commerce “when it is used or displayed in the sale or advertising of services.” This
requirement of “ordinary course of trade” is the result of the amendments to the Act
made by the Trademark Law Revision Act of 1988, Pub.L. 100-667, 102 Stat. 3935
(1988) (“Revision Act”), which provided for a higher quantum and nature of use than
that which had been required in the past under so-called “token use.” A quantum of
use that is “sporadic, casual and nominal” or a pattern of use that does not reflect a
“continual effort to create a viable business” in the products so marked could not
qualify as a use in a volume which is typical in the affected industry. See James E.
White, d/b/a R.I. Prods. v. Paramount Pictures Corp., 108 F.3d 1392, 1997 WL 76957
(Fed. Cir. 1997).
Specifically, Applicant argues that Opposer has failed to show more than nominal,
de minimis usage of the NetCloud mark prior to Applicant’s date of first use. Referring
to Mr. Viradia’s description of his cloud hosting business as being a “personal hobby”
Opposition No. 91210559
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and his four clients with whom he had a personal relationship who were “left over”
from his spinning off an earlier web hosting business, Applicant argues that together
these four clients generated de minimis revenue for Mr. Viradia, actually totaling $250
annually. Applicant argues that from Mr. Viradia’s commencement of his “hobby” in
2009 through November 2012, Opposer’s evidence of use of the NETCLOUD mark
displayed to the purchasing public consists of “three flyers and a business card.”
Applicant argues that based on their own testimony, neither Mr. Viradia nor Mr.
Satasia was able to name a single additional client that either of them gained through
their promotional efforts prior to Applicant’s priority date of November 12, 2012.
Given a failure by Opposer to proffer any evidence showing a level of recognition of
Opposer’s trademark by any segment of the purchasing public, and with such de
minimis sales and promotional efforts, Applicant concludes that Opposer’s
accumulated evidence is clearly insufficient to establish prior common law trademark
rights in the NetCloud mark, and that Opposer has therefore failed to establish
priority over Applicant in this mark.
We disagree with Applicant’s theory of the case, and find for Opposer. In
summarizing the record, we make the following conclusions as to the relevant facts
supporting our conclusion that Opposer has established its priority in the NetCloud
trademark by a preponderance of the evidence:
Opposition No. 91210559
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Raj Viradia used the NetCloud mark in connection with his web hosting services,
from 2009 to 2012, serving ongoing, paying clients.28 While his business remained
small, it did not have a hint of being a casual, sporadic, illegitimate, or transitory
commercial enterprise. It was more than a “hobby” (Applicant’s claim) but rather
involved “the bona fide use of a mark in the ordinary course of trade, and not made
merely to reserve a right in a mark.” Trademark Act, Section 45. Viradia even
purchased a domain name () for $25,000 at the beginning of 2012 in
anticipation of “getting more serious” about growing the NetCloud business. Inasmuch
as Mr. Viradia previously owned and sold two other web hosting businesses, we find
him to be a legitimate entrepreneur in this field.
In February 2012, Mr. Viradia sold his business in an arms-length transaction to
Mehul Satasia via an Asset Purchase Agreement. Satasia paid Viradia $26,656.50 for
the business included all accounts, customer lists, customer records, domain names,
trademarks, service marks, and associated goodwill. The three or four clients Viradia
had been servicing were transferred to Satasia. He continued to provide cloud hosting
and email service under the NetCloud trademark after purchasing the business from
Viradia. He also continued to actively advertise his business under the NetCloud mark
through the distribution of flyers at business networking events and Meetup events.
All of this was done prior to the filing date of Applicant’s involved application for
NETCLOUD.

28 For example, Viradia rendered web hosting services to Hilltop Hospitality (a.k.a. Days
Inn of Atlanta), Ohmshiv Construction, and Schematic Design. Viradia Depo. 16-26, Viradia
Exs. 4-12, 10 TTABVue at 17-27, 46-54 of 59.
Opposition No. 91210559
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On December 31, 2012, Satasia transferred all assets of his web hosting business to
Opposer. This included all tangible and intangible assets, including the service mark
NetCloud and its associated goodwill. Satasia retained no ownership interest in any of
the assets transferred to Opposer, including the NetCloud service mark. Opposer
continues to provide cloud hosting services, backups, systems monitoring, and system
administration support, along with other unadvertised services that go along with
these services.
Looking then to the claims of priority set out in Opposer’s Notice of Opposition, we
conclude that Opposer (though its predecessors-in-interest) commenced use of
NetCloud at least three years prior to the filing of Applicant’s application for
NETCLOUD, and that such use continued uninterrupted for approximately four and a
half years to the point that Opposer’s testimony period closed in the case at bar.
V. Likelihood of Confusion
Applicant’s brief includes substantially no discussion of the du Pont factors upon
which we make a final determination as to whether there is a likelihood of confusion.
Perhaps this is not surprising inasmuch as both parties seem to agree that the
outcome of this case turns solely upon our determination of priority of use.
Nonetheless, we note that both the recited services and the claimed marks are
identical, and hence find a clear likelihood of confusion in the case at bar.
Decision: The opposition is hereby sustained and registration of Applicant’s
NETCLOUD mark is refused under Section 2(d) of the Lanham Act.