NetSpeak Corp.v.Columbia Telecom-munications Group, Inc.

Trademark Trial and Appeal Board

May 13, 2004

No. 91110328 (T.T.A.B. May. 13, 2004)

Mailed: May 13, 2004
Paper No. 42
BAC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
NetSpeak Corporation
v.
Columbia Telecommunications Group, Inc.
________
Opposition No. 91110328
to application Serial No. 75215850
filed on December 19, 1996
_______
Jeffrey S. Ginsberg and Daniel H. Solomon of Kenyon & Kenyon
for NetSpeak Corporation.
William J. Thomashower of Kaplan, Thomashower & Landau LLP
for Columbia Telecommunications Group, Inc.
_______
Before Seeherman, Walters and Chapman, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
Columbia Telecommunications Group, Inc. (a New York
corporation) has applied to register on the Principal
Register the mark WEBNETPHONE for goods amended to read as
“telephones and telephone accessories, namely, sound cards,
integrated circuits, and modems for data and voice
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Opposition No. 91110328
2
communication via interconnected computer networks” in
International Class 9.1
NetSpeak Corporation (a Florida corporation) has
opposed the application asserting as grounds therefor that
it is the owner of Registration No. 2001102 for the mark
WEBPHONE for “computer software and computer hardware that
enable real-time audio communication over computer
networks”;2 that opposer has priority because of the July
20, 1995 filing date of the application that matured into
opposer’s Registration No. 2001102; that opposer owns four
pending applications, all for the mark WEBPHONE, all filed
on November 20, 1997 based on claimed dates of first use
(and all under Section 2(f) of the Trademark Act, 15 U.S.C.
§1052(f)) -– (i) application Serial No. 75393535 for
“computer software and computer hardware that enable
multimedia data communications and conferencing over
computer networks and telecommunications networks”
(International Class 9), (ii) application Serial No.
75393831 for “computer software and computer hardware that
enable real-time audio communication over computer networks”
(International Class 9), (iii) application Serial No.
1 Application Serial No. 75215850, filed December 19, 1996, is
based on applicant’s assertion of a bona fide intention to use
the mark in commerce on the identified goods.
2 Reg. No. 2001102 issued on the Principal Register on September
17, 1996; Section 8 affidavit accepted. The application was
originally filed by The Internet Telephone Company (a Florida
corporation), which assigned it to NetSpeak Corporation. See
Reel 1494, Frame 0889.
Opposition No. 91110328
3
75393536 for a variety of goods in International Class 9 and
a variety of services in International Class 42, and (iv)
application Serial No. 75393753 for “information, directory
and call processing services over computer networks and
telecommunications networks” (International Class 38); that
from a time prior to applicant’s filing date (December 19,
1996), opposer has continuously used the mark WEBPHONE on or
in connection with its goods and services; that “Opposer’s
mark WEBPHONE is symbolic of extensive good will and
consumer recognition built up by Opposer through substantial
amounts of time and effort in advertising, promotion and
sales of the goods and services in connection with the mark
WEBPHONE” (paragraph 7); and that applicant’s mark, when
used on or in connection with its goods, so resembles
opposer’s previously used and registered mark, as to be
likely to cause confusion, mistake, or deception.
Applicant/counterclaim petitioner (hereinafter
applicant) filed an answer with a counterclaim to cancel
opposer’s pleaded Registration No. 2001102. In its answer
applicant denies the salient allegations of the notice of
opposition. In its counterclaim, applicant alleges that
opposer/counterclaim respondent’s (hereinafter opposer)
Opposition No. 91110328
4
asserted mark, WEBPHONE, “is generic, functional or merely
descriptive … and … has no secondary meaning.”3
In its answer to the counterclaim, opposer denies the
salient allegations of applicant’s counterclaim.
Pending Motions Decided / Pleadings
Briefs on the opposition and counterclaim were filed,
and both parties included motions in their trial briefs.4
The Board notes that this case (first instituted in May
1998) is unusual in that there are several motions which are
pending at this final stage of the proceeding. We shall now
determine the pending motions.
The motions now pending before the Board are the
following:
3 The counterclaim to cancel was filed prior to the subject
registration being five years old. Therefore, all grounds for
cancellation, including mere descriptiveness, were available to
applicant. See Section 14(1) of the Trademark Act, 15 U.S.C.
§1064(1).
Applicant submitted neither evidence nor argument in support of
its pleaded counterclaim ground of “functional.” Thus, this
ground will not be further considered by the Board.
4 Opposer’s March 13, 2003 consented motion to extend its
testimony period as rebuttal in the opposition and as defendant
in the counterclaim for a few days to March 26, 2003 is granted.
Opposer’s amended consented motion (filed August 25, 2003, via
certificate of mailing) to extend its time to file a reply brief
to applicant’s motion to dismiss under Trademark Rule 2.132, as
well as applicant’s consented motion (filed September 8, 2003,
via certificate of mailing) to extend its time to file a reply
brief on the counterclaim and a reply brief in support of its
motion to dismiss under Trademark Rule 2.132 are each granted.
Opposer’s original consented motion (filed August 18, 2003, via
certificate of mailing) to extend time is considered moot as it
was superseded by the amended motion.
Opposition No. 91110328
5
(1) applicant’s motion to dismiss under
Trademark Rule 2.132;
(2) applicant’s motion to strike the
affidavit testimony of Martin
Rothberg, opposer’s CEO;
(3) opposer’s motion to reopen its
testimony period to allow newly
discovered evidence; and
(4) opposer’s motion to amend its
notice of opposition.
We consider first applicant’s motion to dismiss under
Trademark Rule 2.132. Opposer did not submit any testimony
or other evidence during its testimony period. Applicant
did not specify whether it seeks judgment under Trademark
Rule 2.132(a) or (b), but that is immaterial as applicant
stated the following in the introductory remarks to its
cross-examination deposition of opposer’s CEO, Martin
Rothberg:
This is in effect the cross-examination
testimony or deposition of [opposer]
because we have agreed that [opposer’s]
direct evidence which was submitted as
part of its rebuttal time, [opposer] did
not submit evidence during the testimony
period, but is submitting in rebuttal an
affidavit of Martin Rothberg which we
have with us.
We find this statement to indicate applicant’s consent
to continue trial of this case on the merits despite
opposer’s failure to submit evidence during its main
testimony period. Moreover, applicant did not move to
dismiss under Trademark Rule 2.132 prior to the opening of
Opposition No. 91110328
6
its own testimony period as required by Trademark Rule
2.132(c). The parties continued with trial after the close
of opposer’s testimony period, so there would be no saving
or judicial economy for the parties or the Board in
dismissing the case under Trademark Rule 2.132 at this stage
and in these circumstances rather than deciding it on the
merits. Applicant’s motion to dismiss under Trademark Rule
2.132 is denied.
Turning next to applicant’s motion to strike the
affidavit testimony of Martin Rothberg (submitted by opposer
on March 13, 2003, via certificate of mailing), it is clear
that the affidavit does not include and is not accompanied
by the written agreement of the adverse party as required by
Trademark Rule 2.123(b). However, both parties have treated
the affidavit as if it were of record, noting in particular,
applicant’s deposition of Mr. Rothberg, which is
characterized as cross-examination. Thus, the Board
considers Mr. Rothberg’s affidavit to have been stipulated
into the record. Applicant’s arguments in support of its
motion to strike relate to the weight to be accorded this
evidence, not its admissibility. Applicant’s motion to
strike the affidavit of Martin Rothberg is denied.
Next, we turn to opposer’s motion to reopen its
testimony period for newly discovered evidence. The
evidence opposer seeks to introduce as newly discovered
Opposition No. 91110328
7
consists of two exhibits to the declaration of Daniel
Solomon, which was submitted with opposer’s reply brief as
plaintiff in the opposition and its trial brief as defendant
in the counterclaim. Specifically, these are (1) Exhibit C
-- a (heavily) redacted copy of a document titled “Trademark
License Agreement,” dated May 15, 2003, between opposer and
Sprewell-Consultadorio e Projectos, LDA (located in
Portugal)(Sprewell); and (ii) Exhibit B -- a printout of one
page from a www.webphone.com web site, showing a copyright
in the name of Sprewell thereon.
This evidence essentially relates to applicant’s claim
that opposer abandoned the mark WEBPHONE. Although the
ground of abandonment was not pleaded, we find that it was
tried by consent of the parties. Thus, we treat the
pleadings to be amended to assert this ground. Applicant’s
ground of abandonment is added as a pleaded ground in the
counterclaim pursuant to Fed. R. Civ. P. 15(b). However, as
explained later in this opinion, we are denying applicant’s
abandonment counterclaim. Accordingly, no purpose would be
served in reopening opposer’s testimony period for the
admission of additional evidence to prove opposer has not
abandoned its mark. Therefore, opposer’s motion to reopen
is denied as moot.
Opposer’s motion to amend its notice of opposition was
offered in the alternative to applicant’s motion to dismiss
Opposition No. 91110328
8
under Trademark Rule 2.132. Inasmuch as we have denied
applicant’s motion to dismiss, we do not have to reach
opposer’s motion to file an amended notice of opposition.
However, to ensure the scope of the pleadings is clear, we
will determine opposer’s alternative motion to amend its
pleading. Opposer seeks to amend the pleadings to include a
claim of likelihood of confusion with respect to its
Registration No. 2094102.5 This registration was not
pleaded in the original notice of opposition, and opposer
has not provided any reason why leave should be granted to
amend the pleadings at this stage of the proceeding. See
Long John Silver’s, Inc. v. Lou Scharf, Inc., 213 USPQ 263
(TTAB 1982). Moreover, it is clear that the issue of
likelihood of confusion with respect to the additional
registration was not tried. Accordingly, opposer’s motion
to amend the pleadings under either Fed. R. Civ. P. 15(a) or
(b) is denied.6
5 Registration No. 2094102 issued on the Principal Register on
September 9, 1997, for the mark WEB PHONE (“phone” disclaimed)
for “providing telephone directory information over a global
computer information network.” A Section 8 affidavit has been
filed.
6 We note that opposer’s originally pleaded Registration No.
2001102 and opposer’s second Registration No. 2094102 are the
subject of separate petitions to cancel filed by a third-party,
Samsung Telecommunications America, Inc. (Cancellation No.
92028616 involves Registration No. 2100102 and Cancellation No.
92028617 involves Registration No. 2094102. These cancellation
petitions are currently consolidated and pending at the Board.)
Opposition No. 91110328
9
The Record
The record consists of the pleadings; the file of the
opposed application; the file of the registration which is
the subject of applicant’s counterclaim; and the affidavit
testimony of Martin Rothberg, and applicant’s cross-
examination of this witness. Applicant has submitted, under
a notice of reliance, (i) printouts from the USPTO’s
Trademark Electronic Search System (TESS) of four
applications as well as copies of four Board decisions
thereon, all marked “not citable as precedent,”7 (ii)
printouts of additional records from the USPTO’s Trademark
Electronic Search System (TESS) for 11 applications for
marks which include the words “web” and “phone,” (iii) a
printout of a listing from the USPTO’s Trademark Electronic
Search System (TESS) showing the first 100 “hits” in a
listing format of the 1067 records for applications and
registrations in which the term “web” has been disclaimed,
and (iv) printouts of stories retrieved from the Westlaw
database. Applicant also submitted printouts of pages from
opposer’s web site and Adir Technologies, Inc.’s web site.
Printouts of Internet pages do not constitute printed
7 While the copies of non-precedential Board decisions are
admissible under Trademark Rule 2.122(e), nonetheless, these
decisions, each marked “not citable as precedent,” are of no
precedential value and, thus, have not been considered. See
Opposition No. 91110328
10
publications within the meaning of Trademark Rule 2.122(e),
and thus may not be made of record by way of notice of
reliance. See TBMP §704.08 (2d ed. June 2003). However,
because both parties have treated this material as if it
were of record, we consider it to have been stipulated into
the record.
Opposer has submitted, under a notice of reliance, (i)
printouts of stories retrieved from the Westlaw database and
the Nexis database, (ii) printouts of several third-party
registrations from the USPTO’s Trademark Electronic Search
System (TESS) wherein the term “web” is not disclaimed, and
(iii) copies of four Board decisions, all marked “not
citable as precedent”8; and opposer’s affidavit testimony of
Martin Rothberg, CEO of both Adir Technologies, Inc. and
opposer. Finally, applicant submitted the cross-examination
testimony of Martin Rothberg;9 and applicant’s notice of
reliance on the assignment abstract for opposer’s pleaded
Registration No. 2001102, showing opposer, NetSpeak
Corporation, as the owner thereof.
We note two final matters regarding the record as
argued in the parties’ briefs, the first being the parties’
General Mills Inc. v. Health Valley Foods, 24 USPQ2d 1270,
footnote 9 (TTAB 1992).
8 These decisions have not been considered as explained in
footnote 6, infra.
9 The cross-examination deposition transcript was originally
taken as “confidential,” but when submitted by applicant, the
cover letter explained that opposer withdrew its preliminary
confidential designation.
Opposition No. 91110328
11
various requests for judicial notice and the second being
applicant’s request that the Board draw adverse inferences
from opposer’s witness’s refusal to answer various
questions.
Applicant requests that the Board take judicial notice
of dictionary definitions of “web” as the “world wide web”
and “phone” as “a shorthand reference of telephone.”
(Applicant’s opening brief, p. 10). Although applicant did
not provide copies of any dictionary definitions, we hereby
grant applicant’s request for judicial notice, and we
specifically take judicial notice of The American Heritage
Dictionary of the English Language (Fourth Edition 2000)
definitions of “phone” as “n. A telephone,” and “web” as “n.
… 6. often Web, The World Wide Web. … .”
In its brief as defendant in the counterclaim and reply
brief as plaintiff in the opposition, opposer requests that
the Board take judicial notice of third-party applications
and registrations which are the results of opposer’s search
of the Internet website www.saegis.com, as “these searches
[contain] information from the U.S. Patent and Trademark
Office’s federal trademark database.”
The cases are legion that the Board does not take
judicial notice of third-party applications or
registrations, or of search reports taken from private
company’s databases. See In re Carolina Apparel, 48 USPQ2d
Opposition No. 91110328
12
1542, footnote 2 (TTAB 1998); and In re Smith & Mehaffey, 31
USPQ2d 1531, footnote 3 (TTAB 1994). See also, TBMP
§704.03(b)(1)(B) (2d ed. June 2003), and cases cited
therein. Opposer’s request for judicial notice of the
search report results is denied.
On page 15 of that same brief, opposer referred to the
USPTO’s acceptance of opposer’s Section 8 affidavit filed in
connection with its Registration No. 2001102. Opposer
asserts that the affidavit, and the specimen submitted with
the affidavit, is evidence that the mark is being used in
commerce for the goods identified in the registration; and
opposer then simply makes reference to its previous request
for judicial notice. To the extent opposer seeks judicial
notice that it is using its mark in commerce, that is not a
matter appropriate for judicial notice. See Fed. R. Evid.
201(b); and TBMP §704.12 (2d ed. June 2003). Opposer’s
request for such judicial notice is denied.
In applicant’s opening brief, it specifically requests
that the Board draw adverse inferences from the refusal (on
instruction of counsel) of Martin Rothberg, opposer’s CEO,
to answer questions on asserted generic uses of the term
“WEBPHONE.” See pp. 70-77 of the deposition. Having
carefully reviewed this testimony and the reasons for the
refusal to answer, we conclude that the questions propounded
by applicant on cross-examination did exceed the scope of
Opposition No. 91110328
13
Mr. Rothberg’s affidavit testimony. Thus, we will not draw
adverse inferences against opposer. However, the testimony
and exhibits remain of record for whatever probative value
they have. We disagree, though, with applicant’s argument
that because Exhibit Nos. 5 and 6 are of record as part of
Exhibit E to applicant’s notice of reliance, they are proper
subject matter for cross-examination. We also disagree with
applicant’s argument that opposer’s attorney’s instruction
to the witness not to answer certain questions is grounds to
strike the Rothberg affidavit.10
As explained above, both parties filed briefs on the
case.11 Neither party requested an oral hearing.
The Parties
Opposer NetSpeak Corporation was acquired for
approximately $48 million by and became a wholly-owned
subsidiary of Adir Technologies, Inc. in the summer of 2001.
(Dep., pp. 9, 13 and 48). As stated by Mr. Rothberg in his
10 Opposer’s attorney, Mr. Solomon, submitted a declaration with
opposer’s brief as defendant in the counterclaim and its reply as
plaintiff in the opposition. This is an untimely submission, and
has not been considered by the Board. Moreover, Exhibits B and C
are not part of the record in view of our denial of opposer’s
motion to reopen testimony for newly discovered evidence. Even
if considered, these materials are of limited probative value and
would not alter our decision herein.
11 Neither party’s brief included a description of the record or a
statement of the issues. Such information is generally helpful
to the Board. Both parties’ attorneys are strongly urged to
supply such information in future briefs in inter partes Board
cases. See Trademark Rule 2.128(b); and TBMP §801.03 (2d ed.
June 2003).
Opposition No. 91110328
14
affidavit, NetSpeak Corporation first used the mark WEBPHONE
for Internet telephony12 services on September 25, 1995;
that “[F]ollowing the acquisition, the WebPhone service was
placed on hold while the businesses were being
integrated.…”; and that while the service was on hold,
opposer never intended to abandon use of the mark WEBPHONE
and in fact, it plans to license the mark to Adir’s parent
company, Net2Phone, Inc. (Aff. Paragraphs 3, 5 and 7.)
Mr. Rothberg later testified (during the cross-
examination deposition) regarding the products offered by
NetSpeak Corporation under the mark WEBPHONE as follows
(dep., pp. 18-20):
Q. Did they show you any products using
their Webphone name?
A. They showed us their Webphone
products.
Q. What did that consist of at that
time? This is prior to the acquisition
sometime.
A. They have a PC to phone offering.
Excuse me. PC to PC offering, PC to
phone offering as well as Internet call
waiting product which they utilized
their Webphone client for that offering.
Q. Now, were there plans made to
terminate those products in connection
with the acquisition?
A. No.
…
12 The Board takes judicial notice of the Computer Desktop
Encyclopedia (Ninth Edition 2001) definition of Internet
telephony as “Using the Internet for a voice call.” See TBMP
§704.12(a) (2d ed. June 2003).
Opposition No. 91110328
15
A. NetSpeak had a service component
that they were marketing to
consumers. That was put on hold
after the acquisition, but the
product, the Webphone product that
they offered to service providers
was utilized before the acquisition,
during the acquisition and to this
day [is] being utilized.
Mr. Rothberg explained that Adir Technologies, Inc.
provides its product to the service providers to enable them
to offer PC to PC, PC to phone and Internet call waiting
solutions to their customers. (Dep., p. 22.) Mr. Rothberg
testified that his companies get customers through
“resellers”; that documentation is sent out to customers who
inquire about the WEBPHONE product. It is clear from his
testimony that he had not seen the packaging, the CDs or
advertising carrying the mark; and that he was not familiar
with the service offered by NetSpeak Corporation prior to
its acquisition by Adir Technologies, Inc. (Dep., pp. 28-
30.) Prior to the acquisition of NetSpeak Corporation by
Adir, he was aware of opposer through trade shows, and he
had seen the software box that had a WEBPHONE product in it,
but he never had used the product. (Dep., p. 35.)
Mr. Rothberg was unaware of who put the notice up on
opposer’s web site that “… the NetSpeak Webphone service has
been discontinued. …” (Applicant’s Exhibit No. 2 --
www.webphone.com), or when it was put up. (Dep., pp. 43-
44.) But to his knowledge the WEBPHONE service that was
Opposition No. 91110328
16
placed on hold has not been restored, and he was not aware
of any business plans to do so. (Dep., pp. 55-56.)
Mr. Rothberg was aware that Adir Technologies, Inc. has
participated in discussions regarding the licensing of the
WEBPHONE mark for Internet telephony services, but he was
not aware of whether or not an actual licensing contract had
been drawn up yet. (Dep., pp. 58-60.)
What limited information we have about applicant comes
from its application. Applicant is a corporation of New
York originally located in Port Washington, New York, now in
Farmingdale, New York; and that it asserts a bona fide
intention to use the mark WEBNETPHONE in commerce on the
identified goods.
Burden of Proof
In Board proceedings regarding the registrability of
marks, our primary reviewing Court has held that the
plaintiff must establish its pleaded case (e.g., likelihood
of confusion, genericness, descriptiveness), as well as its
standing, and must generally do so by a preponderance of the
evidence. See Cunningham v. Laser Golf Corp., 222 F.3d 943,
55 USPQ2d 1842, 1848 (Fed. Cir. 2000); Martahus v. Video
Duplication Services Inc., 3 F.3d 417, 27 USPQ2d 1846, 1850
(Fed. Cir. 1993); Magic Wand Inc. v. RDB Inc., 940 F.2d 638,
19 USPQ2d 1551, 1554 (Fed. Cir. 1991); and Cerveceria
Opposition No. 91110328
17
Centroamericana, S.A. v. Cerveceria India Inc., 892 F.2d
1021, 13 USPQ2d 1307, 1309 (Fed. Cir. 1989).
Thus, opposer bears the burden of proving by a
preponderance of the evidence its standing, and its claim of
priority and likelihood of confusion, and applicant (as
plaintiff in the counterclaim) bears the same burden of
proof as to its claims of abandonment, genericness and mere
descriptiveness.13
We now turn to the merits of the claims of the parties,
starting with applicant’s counterclaim.
Counterclaim
Abandonment
The Trademark Act provides for the cancellation of
registrations if use of the registered mark has been
abandoned. See Section 14 of the Trademark Act, 15 U.S.C.
§1064. The Trademark Act defines abandonment as
discontinued use with intent not to resume use. See Section
45 of the Trademark Act, 15 U.S.C. §1127. Because
registrations are presumed valid under the law, the party
seeking cancellation must rebut this presumption by a
preponderance of the evidence. See On-Line Careline Inc. v.
13 Applicant’s standing to maintain the counterclaim is inherent
in its position as defendant in the opposition proceeding in
which opposer asserted the registration against applicant. See
Ceccato v. Manifattura Lane, 32 USPQ2d 1192, footnote 7 (TTAB
Opposition No. 91110328
18
America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471, 1476
(Fed. Cir. 2000).
The evidence relating to opposer’s asserted abandonment
of its mark WEBPHONE consists of Exhibit A to applicant’s
notice of reliance, consisting of printouts of four web
pages from three web sites; the affidavit of Martin
Rothberg, CEO of opposer and CEO of Adir Technologies, Inc.;
and applicant’s cross-examination deposition of Mr.
Rothberg, with exhibits (including two of the four pages
from web site printouts--Exhibit Nos. 2 and 3).
What evidence there is about non-use refers to non-use
of the mark WEBPHONE for a service. The web site page so
heavily relied on by applicant reads as follows:
NetSpeak, Inc. no longer exists as a
public corporation. As a result, the
NetSpeak Webphone service has been
discontinued. We apologize for any
confusion or inconvenience. Thank you
for your patronage. www.webphone.com
(Applicant’s Exhibit No. 2.)
However, the registration sought to be cancelled is for
goods, not services. There is no specific evidence relating
to opposer ceasing use of the mark on goods, and
particularly to the goods identified in the registration
which is sought to be cancelled. To the contrary, in Mr.
Rothberg’s affidavit he avers only that the WEBPHONE service
was temporarily placed on hold. (Paragraphs 5-7.) And, in
1994); and Syntex (U.S.A.) Inc. v. E.R. Squibb & Sons Inc., 14
Opposition No. 91110328
19
his cross-examination testimony, he testified that opposer’s
“service component” was put on hold after the acquisition;
that there were no plans to terminate the products in
connection with the acquisition of opposer by Adir; that the
WEBPHONE product was utilized before, during and after the
acquisition; and that opposer uses the mark WEBPHONE in its
literature when it is selling the product to service
providers. (Dep., pp. 18-21).
Applicant has not proven either that opposer ceased use
of the mark WEBPHONE for “computer software and computer
hardware that enable real-time audio communication over
computer networks,” or that, if there had been nonuse,
opposer had no intent to resume use of the mark. Therefore,
applicant has not established abandonment.
Genericness
Section 14(3) of the Trademark Act, 15 USC §1064(3),
permits cancellation of a registration if the “registered
mark becomes the generic name for the goods or services, or
a portion thereof, for which it is registered….”
The critical issue in determining genericness is
whether members of the relevant public primarily use or
understand the designation to refer to the genus or category
of goods or services in question. See H. Marvin Ginn Corp.
v. International Association of Fire Chiefs, Inc., 782 F.2d
USPQ2d 1879 (TTAB 1990).
Opposition No. 91110328
20
987, 228 USPQ 528 (Fed. Cir. 1986). In making our
determination, we follow the two-step inquiry set forth in
that case and reaffirmed in In re American Fertility
Society, 188 F.3d 1341, 51 USPQ2d 1832 (Fed. Cir. 1999),
namely:
(1) What is the genus or category of goods at
issue?, and
(2) Is the designation sought to be registered
understood by the relevant public primarily to
refer to that genus or category of goods?
“The correct legal test for genericness, as set forth
in Marvin Ginn, requires evidence of ‘the genus of goods or
services at issue’ and the understanding by the general
public that the mark refers primarily to ‘that genus of
goods or services.’” American Fertility Society, 51 USPQ2d
at 1836. That is, do the members of the relevant public
understand or use the term sought to be registered to refer
to the genus of the goods and/or services in question?
The genus or category of goods involved in this case is
“computer software and computer hardware that enable real-
time audio communication over computer networks”--the goods
identified in opposer’s registration.
In support of applicant’s contention that opposer’s
registered mark is generic, applicant points to (i) the
common dictionary meanings of the two individually
assertedly generic terms, each having a commonly understood
meaning; (ii) precedent, both citable -– e.g., In re Web
Opposition No. 91110328
21
Communications, 49 USPQ2d 1478) (TTAB 1998) and not citable;
(iii) evidence from the USPTO’s Trademark Electronic Search
System (TESS) of several applications and registrations in
which the term “web” is part of the marks and was
disclaimed; and (iv) copies of printed publications wherein
the term “webphone” is used.
Opposer argues that its mark is a coined term
consisting of two common words; that its goods are not
telephones used to access the World Wide Web, but rather are
computer hardware and software that enable people to use the
Internet for making a voice call; that applicant’s
“dictionary” approach is not sufficient to prove genericness
in this case; that opposer has made of record information
from the USPTO’s Trademark Electronic Search System (TESS)
showing that there are many registrations for marks which
include the word “web,” in which the term has not been
disclaimed (opposer’s Exhibit C to its notice of reliance);
that there are several instances in which WEBPHONE appears
as opposer’s trademark in printed publications (opposer’s
Exhibit A to its notice of reliance); and that applicant’s
references to uses of the term WEBPHONE in printed
publications are generally inapposite because several of the
publications are foreign and thus do not reflect the
significance of the mark to consumers in the United States,
while others refer to telephones that can access or browse
Opposition No. 91110328
22
the World Wide Web, which are not the same as opposer’s
goods.
In considering the understanding of the relevant
public, we must first determine who comprises the public for
the identified goods. See Magic Wand Inc. v. RDB Inc.,
supra; and Stocker v. General Conference Corp. of Seventh-
day Adventists, 39 USPQ2d 1385, at 1394 (TTAB 1996). In
this case, we find the relevant public is general consumers
in the United States.
As previously stated, it is applicant’s burden (as
plaintiff in the counterclaim) to establish, by a
preponderance of evidence, that the registered mark is
generic. Aside from the dictionary definitions, applicant’s
evidence essentially consists of copies of 11 stories
retrieved from Westlaw’s “ALLNEWS” database. Of these 11
stories, 2 are from foreign publications. Opposer is
correct that some of the remaining 9 stories do not relate
to opposer’s goods, but rather they relate to uses of “Web
phone” or “Webphone” for a telephone that can access or
browse the World Wide Web.
Only a few of the excerpts from publications
distributed in the United States utilize the term “Web
phone” or “Webphone” for computer hardware or software that
is for audio communication over computer networks. See
Opposition No. 91110328
23
e.g., Rothberg, dep., applicant’s Exhibits Nos. 5 (“Forbes,”
July 9, 2001) and 6 (“BusinessWeek,” July 9, 2001).14
There is a high standard to find a term generic. See
Marvin Ginn v. International Association, supra; and Magic
Wand v. RDB, supra. In the case now before us, applicant
asks that we cancel opposer’s registration for the mark
WEBPHONE based on dictionary definitions of the separate
words, a few articles from printed publications, and records
of the USPTO showing disclaimers of the term “web.”
Applicant’s evidence is weak or ambiguous. For example,
evidence showing the descriptiveness of “web” is not
sufficient to show that “web phone” is generic. Nor do we
agree with applicant that the circumstances of this inter
partes case involving opposer’s use of WEBPHONE fit squarely
within the circumstances of the case of In re Gould Paper,
834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987) (involving the
mark SCREENWIPE), which was subsequently discussed and
limited by the Court in American Fertility, supra. While
opposer’s goods enable people to use their computers as they
would use a telephone, clearly the computer hardware and
computer software are not really a “telephone.”
14 As mentioned previously, the witness was instructed to not
answer questions regarding these exhibits, but as decided
previously herein, we do not draw an adverse inference against
opposer based thereon. The articles (Exhibit Nos. 5 and 6) were
also part of applicant’s Exhibit E to its notice of reliance.
They are in the record for whatever probative value they have,
and even if negative inferences were drawn against opposer, it
would not alter our decision herein.
Opposition No. 91110328
24
Although there are a few excerpted articles in which
“webphone” is used in a generic manner, there are also
printed publications showing use of WEBPHONE as opposer’s
trademark.
In view of the limited and conflicting evidence of
generic use, and the lack of direct evidence of consumer
understanding of this mark as a generic term for opposer’s
goods, we find that applicant has not established, by a
preponderance of the evidence, that the mark WEBPHONE is
generic for “computer software and computer hardware that
enable real-time audio communication over computer
networks.”
Mere Descriptiveness
Once again, applicant (as plaintiff in the
counterclaim) bears the burden of proving, by a
preponderance of the evidence, its asserted ground of mere
descriptiveness.
The test for determining whether a mark is merely
descriptive is whether the mark immediately conveys
information concerning a quality, characteristic, function,
ingredient, attribute or feature of the product or service
in connection with which it is used. See In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978).
Moreover, in order to be merely descriptive, the mark must
Opposition No. 91110328
25
immediately convey information about the goods or services
with a “degree of particularity.” In re TMS Corporation of
the Americas, 200 USPQ 57, 59 (TTAB 1978); and In re
Entenmann’s Inc., 15 USPQ2d 1750, 1751 (TTAB 1990), aff’d,
unpub’d, Fed. Cir. February 13, 1991. Whereas a mark is
suggestive if imagination, thought or perception is required
to reach a conclusion on the nature of the goods or
services. See In re Quik-Print Copy Shop, Inc., 616 F.2d
523, 205 USPQ2d 505 (CCPA 1980).
Of course, whether a mark is merely descriptive is
determined not in the abstract, but in relation to the goods
or services for which the mark is registered, the context in
which it is being used on or in connection with those goods
or services, and the possible significance that the term or
phrase would have to the average purchaser of the goods or
services because of the manner of its use. See In re
Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); and
In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979).
While the test for mere descriptiveness is different
from that for genericness, we find, on this sparse record,
that applicant has not established the mark WEBPHONE is
merely descriptive of opposer’s identified goods. Opposer’s
goods are not telephones or “phones” per se; rather,
opposer’s goods enable the purchasers and users thereof to
engage in audio communication over the Internet.
Opposition No. 91110328
26
Based on the record before us and the limited evidence
that has been submitted, we find that applicant has not
established, by a preponderance of evidence, that the mark
WEBPHONE is merely descriptive of opposer’s identified
goods.
Applicant’s counterclaim petition to cancel opposer’s
Registration No. 2001102 is denied.15
Opposition
Standing and Priority
Applicant makes much of opposer’s failure to submit a
proper status and title copy of its pleaded Registration No.
2001102, or otherwise properly make the registration of
record under Trademark Rule 2.122(d). However, opposer’s
registration is of record by virtue of the counterclaim
brought by applicant. See Trademark Rule 2.122(b).16
Because opposer’s pleaded Registration No. 2001102 is of
15 Of course, on a different record, we might reach a different
result. (We note that opposer’s involved registration remains
the subject of Cancellation No. 28616, consolidated with
Cancellation No. 28617.)
16 If a registration owned by a party has been properly made of
record in an inter partes case (as is the case here), and there
are changes in the status of the registration between the time it
was made of record (when applicant filed its counterclaim) and
the time the case is decided, the Board will take judicial notice
of, and rely upon, the current status of the registration as
shown by the records of the United States Patent and Trademark
Office. See TBMP §704.03(b)(1)(A) (2d ed. June 2003), and the
cases cited therein. The Board hereby takes judicial notice of
the current status of opposer’s Registration No. 2001102,
specifically, opposer’s Section 8 affidavit has been accepted by
the USPTO.
Opposition No. 91110328
27
record, we find that opposer has established its standing.
In addition, in view of opposer’s ownership of a valid and
subsisting registration for its WEBPHONE mark, the issue of
priority does not arise in this opposition proceeding. See
King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d
1400, 182 USPQ 108, 110 (CCPA 1974); Massey Junior College,
Inc. v. Fashion Institute of Technology, 492 F.2d 1399, 181
USPQ 272, at footnote 6 (CCPA 1972); and Carl Karcher
Enterprises, Inc. v. Stars Restaurants Corp., 35 USPQ2d 1125
(TTAB 1995).
Likelihood of Confusion
We turn now to a consideration of the issue of
likelihood of confusion. Our determination of likelihood of
confusion is based on an analysis of all of the facts in
evidence that are relevant to the factors bearing on the
issue of likelihood of confusion. See In re E. I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
See also, In re Majestic Distilling Company, Inc., 315 F.3d
1311, 65 USPQ2d 1201 (Fed. Cir. 2003).
In any likelihood of confusion analysis, two key
considerations are the similarities of the marks and the
similarities of the goods and/or services. See Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated
Opposition No. 91110328
28
by §2(d) goes to the cumulative effect of differences in the
essential characteristics of the goods [and services] and
differences in the marks.”). See also, In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997). In fact, in this case, as explained previously
herein, opposer submitted no evidence on the issue of
likelihood of confusion. Therefore, we are essentially left
with the marks and the goods as set forth in applicant’s
application and opposer’s registration.
Turning first to a consideration of the parties’
respective goods, in Board proceedings the issue of
likelihood of confusion must be determined in light of the
goods as identified in the involved application and
registration and, in the absence of any specific limitations
therein, on the presumption that all normal and usual
channels of trade and methods of distribution are or may be
utilized for such goods. See Octocom Systems Inc. v.
Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d
1783 (Fed. Cir. 1990); Canadian Imperial Bank of Commerce,
N. A. v. Wells Fargo Bank, 811 F.2d 490, 1 USPQ2d 1813, 1815
(Fed. Cir. 1987); and CBS Inc. v. Morrow, 708 F.2d 1579, 218
USPQ 198 (Fed. Cir. 1983).
The goods involved herein are opposer’s “computer
software and computer hardware that enable real-time audio
communication over computer networks” and applicant’s
Opposition No. 91110328
29
“telephones and telephone accessories, namely, sound cards,
integrated circuits, and modems for data and voice
communication via interconnected computer networks.” As
identified, opposer’s goods are computer hardware and
software which allow audio communication over computer
networks, while applicant’s goods are telephones and
telephone accessories allowing data and audio communication
over computer networks. These identifications of goods are
not the same on their face -- computer hardware and software
vis-a-vis telephones and telephone accessories. While both
have an audio component, there is no evidence that these
goods are made or sold by the same entities. Opposer’s
statement in its brief (p. 4) that “it is likely that the
products of the two companies will be in direct competition”
is completely unsupported in the record.
Opposer has failed to establish that the parties’
respective goods are related within the meaning of the
Trademark Act. That is, opposer has not proven that the
relevant consumers are likely to believe that goods of this
type would emanate from the same source. See Hewlett-
Packard Company v. Packard Press, Inc., 281 F.3d 1261, 62
USPQ2d 1001, 1004 (Fed. Cir. 2002); and Recot Inc. v. M.C.
Becton, 214 F.3d 1332, 54 USPQ2d 1894 (Fed. Cir. 2000).
While there are no limitations in either party’s
identification of goods as to channels of trade and/or
Opposition No. 91110328
30
conditions of sale, nonetheless there is likewise no
evidence regarding these du Pont factors. Thus, we cannot
find that these respective goods are likely to be sold
through the same channels of trade.
Turning next to a consideration of the similarities or
dissimilarities of the marks, we first address opposer’s
assertion in its opening brief (p. 1) that “Opposer has
developed protectable rights in a family of WEBPHONE marks
(both as one and two words)… .” It is an understatement to
say that opposer has not proven (or even pleaded) a family
of WEBPHONE marks. Opposer’s claim of a family of WEBPHONE
marks will not be further addressed herein.
In this case, we must determine the similarities and
dissimilarities of the marks WEBPHONE and WEBNETPHONE.
Earlier in this decision, we took judicial notice of the
dictionary definition of “web” as “World Wide Web” and
“phone” as “telephone.” We also take judicial notice from
the same dictionary (The American Heritage Dictionary of the
English Language (Fourth Edition 2000)), of the definition
of the term “Net” as “n. The Internet.” Clearly the two
elements comprising opposer’s mark are weak, highly
suggestive or descriptive words, and when these elements are
combined as WEBPHONE, we find that opposer’s mark is highly
suggestive and is not entitled to a broad scope of
Opposition No. 91110328
31
protection.17 See General Mills Inc. v. Health Valley
Foods, supra; Local Trademarks Inc. v. The Handy Boys Inc.,
16 USPQ2d 1156 (TTAB 1990); Wooster Brush Co. v. Prager
Brush Co., 231 USPQ 316 (TTAB 1986); Color Key Corp. v.
Color Associates, Inc., 219 USPQ 936 (TTAB 1983); and
Industrial Adhesive Co. v. Borden, Inc., 218 USPQ 945 (TTAB
1983).
In the context of opposer’s goods (computer software
and computer hardware used for audio communication over
computer networks), the term “phone” has a different nuance
or connotation with regard to computer hardware and computer
software than it does for telephones. While in the context
of applicant’s goods (telephones and telephone accessories
including modems for data and voice communication via
computer networks), the term “phone” is generic.
Further, applicant’s mark, which combines the similar
terms “web” and “net,” creates a repetitive, incongruous
impression. Thus, the overall connotations of the parties’
respective marks, WEBPHONE and WEBNETPHONE, in the context
of the parties’ respective goods, are somewhat different.
In addition, because of this incongruity in applicant’s
mark, the presence of the word “NET” is likely to make an
impression on consumers, thus emphasizing the differences in
appearance and sound in the marks.
17 As indicated previously, we cannot find on this record that
Opposition No. 91110328
32
As the Court of Customs and Patent Appeals (the
predecessor Court to our primary reviewing Court) stated in
Sure-Fit Products Co. v. Saltzson Drapery Co., 254 F.2d 158,
117 USPQ 295 (CCPA 1958): “Where a party chooses a weak
mark, his competitors may come closer to his mark than would
be the case with a strong mark without violating his rights.
The essence of what we have said is that in the former case
there is not the possibility of confusion that exists in the
latter case.” See also, In re National Data Corporation,
753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985); and 2 J.
Thomas McCarthy, McCarthy on Trademarks and Unfair
Competition, §11:73 (4th ed. 2001).
In view of the differences in the marks and the goods,
and the weakness of opposer’s mark, we find that confusion
from applicant’s use of its mark is unlikely.18
Decision: The counterclaim petition to cancel
opposer’s Registration No. 2001102 is denied, and the
opposition is dismissed.
opposer’s mark is merely descriptive.
18 Applicant argued, inter alia, that “there are a large number of
other similar marks in use for similar goods,” referring to
evidence of applications and registrations from USPTO’s Trademark
Electronic Search System (TESS). (Applicant’s opening brief, pp.
6-7.) Suffice it to say that we find there is no evidence of use
of similar marks in this record.