ObjectVideo, Inc.v.Neo IT Solutions Ltd.

Trademark Trial and Appeal Board

Apr 24, 2013

No. 91199904 (T.T.A.B. Apr. 24, 2013)

coggins Mailed: April 24, 2013

Opposition No. 91199904
ObjectVideo, Inc.
v.
Neo IT Solutions Ltd.

Before Holtzman, Bergsman, and Shaw,
Administrative Trademark Judges.

By the Board:

This case comes up for consideration of opposer’s fully
briefed motion (filed April 18, 2012) for summary judgment
on the ground of priority and likelihood of confusion under
Trademark Act § 2(d), 15 U.S.C. § 1052(d); and opposer’s
motion (filed May 29, 2012, with its reply brief) to strike
applicant’s brief in opposition to the motion for summary
judgment.
Background
Neo IT Solutions Ltd. (“applicant”), which is a foreign
entity and is proceeding pro se in this matter, seeks
registration of the mark OVS in standard character form for
use in connection with “building security systems comprising
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91199904

2
software and hardware for providing picture, video, alarm
status, building plans, and other information to a remote
station; digital media servers; digital media streaming
devices; digital video recorders; electric and electronic
video surveillance installations; Internet digital video
recorders; PC digital video recorders” in International
Class 9.1 Object Video, Inc. (“opposer”) opposes
registration on the ground of priority and likelihood of
confusion under Trademark Act § 2(d). In its notice of
opposition, opposer pleaded ownership of Registration No.
3117526 for the mark OV in typed form for, inter alia,
“computer software for video surveillance and for monitoring
video streams to determine activities, events, and/or
behaviors relating to the safety and security of structures,
areas, people, or things” in International Class 9.2 See
Notice of Opposition, para. 3.
In its answer, applicant denied most of the salient
allegations in the notice of opposition, except that
applicant admitted, inter alia, that it had not used its
mark in the United States for the goods described in the

1 Application Serial No. 77849234, filed October 15, 2009,
asserting a date of first use and use in commerce as of
October 1, 2009.

2 Registration issued July 18, 2006; Sections 8 and 15
declaration accepted and acknowledged. The registration also
includes video surveillance-related services in International
Classes 42 and 45, but opposer does not rely on those classes in
the motion for summary judgment.

Opposition No. 91199904

3
subject application prior to February 21, 2003, which is the
filing date of the underlying application which issued into
opposer’s pleaded registration. See Amended Answer, para.
7.3
Motion to Strike
Opposer moves to strike applicant’s brief in opposition
to the motion for summary judgment as untimely and as signed
by an attorney not authorized to represent applicant in this
proceeding. Applicant did not address either of these
issues in its May 31, 2012 filing; instead, applicant
appears to argue for a second time against summary judgment.
In view thereof, applicant’s May 31, 2012 filing is merely a
sur-reply to the motion for summary judgment, and, as such,
it will be given no consideration.4 Trademark Rule
2.127(e)(1) (“The Board will consider no further papers in
support of or in opposition to a motion for summary
judgment.”).
Applicant’s brief in opposition to the motion for
summary judgment was filed on May 19, 2012. The brief was
signed by “Tal Sahar, Adv,” of applicant’s legal department,

3 The allegation was also admitted in the original answer. See
original Answer, para. 7.

4 Consideration of the sur-reply would not alter our decision on
the motion for summary judgment, discussed infra. The sur-reply
is only two pages, provides no substantive arguments, and is not
accompanied by any affidavits, exhibits, or other evidence.

Opposition No. 91199904

4
and contains a combined certificate of transmission5 and
service dated May 18, 2012. Applicant’s brief does not
appear to have been actually filed (i.e., successfully
transmitted) until May 19, 2012. Applicant is reminded that
Eastern time (in the United States) controls the filing date
accorded by ESTTA. See TBMP § 108 (3d ed. rev. 2012).
Opposer’s motion for summary judgment was filed on
April 18, 2012, and contains a certificate of service
showing electronic service upon applicant that same day.
Inasmuch as the parties agreed to service by email (see p. 2
of the Board order dated July 25, 2011, memorializing the
agreement reached during the discovery conference),
applicant’s brief was due on May 18, 2012. See Trademark
Rule 2.127(e)(1). See also, McDonald’s Corp. v. Cambrige
Overseas Dev. Inc., ___ USPQ2d ___ (TTAB 2013)(Opposition
No. 91208437)(parties may not obtain additional five days
for service under Trademark Rule 2.119(c) when they have
agreed to electronic service).
In the Board’s April 27, 2012 order suspending
proceedings pending disposition of the motion for summary
judgment, the Board noted applicant’s earlier change of
correspondent to “Tal Sahar, Adv,” who identified

5 Although the brief includes a certificate of transmission, such
certificates are appropriate only for filings by electronic mail
or facsimile -neither of which is available in Board inter partes
proceedings. See TBMP § 107 (3d ed. rev. 2012), and TMEP §§
303.01, 304.05 and 306.05(c).
Opposition No. 91199904

5
him/herself as applicant’s “legal counsel,” and informed
applicant that it was unclear whether Tal Sahar was a
member, officer, or partner of applicant, or a member in
good standing of the bar of the highest court of any State
in the United States.6 By way of its response (filed May
19, 2012), applicant stated that Eli Sahar is applicant’s
CEO. Applicant did not provide any information on Tal
Sahar. In view thereof, we cannot determine whether Tal
Sahar is –or is not- an appropriate signatory to applicant’s
brief in opposition to the motion for summary judgment.
Given the minimal (i.e., one-day) delay and the
dispositive nature of the motion for summary judgment, we
exercise our discretion and will consider applicant’s late
brief in opposition to the motion for summary judgment. In
view thereof, opposer’s motion to strike is denied.
Motion for Summary Judgment
Summary judgment is an appropriate method of disposing
of cases in which there is no genuine dispute with respect
to any material fact, thus leaving the case to be resolved
as a matter of law. See Fed. R. Civ. P. 56(c)(1). A party
moving for summary judgment has the burden of demonstrating
the absence of any genuine dispute as to a material fact,
and that it is entitled to judgment as a matter of law. See

6 See Patent and Trademark Rule 11.14, 37 C.F.R. § 11.14
(Individuals who may practice before the Office in trademark and
other non-patent matters).
Opposition No. 91199904

6
Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986); Sweats
Fashions, Inc. v. Pannill Knitting Co. Inc., 833 F.2d 1560,
4 USPQ2d 1793, 1796 (Fed. Cir. 1987). A factual dispute is
genuine if, on the evidence of record, a reasonable fact
finder could resolve the matter in favor of the non-moving
party. See Opryland USA Inc. v. Great Am. Music Show Inc.,
970 F.2d 847, 23 USPQ2d 1471, 1472 (Fed. Cir. 1992); Olde
Tyme Foods, Inc. v. Roundy’s, Inc., 961 F.2d 200, 22 USPQ2d
1542, 1544 (Fed. Cir. 1992).
The evidence of record and all justifiable inferences
that may be drawn from the undisputed facts must be viewed
in the light most favorable to the non-moving party. See
Lloyd’s Food Prods. Inc. v. Eli’s Inc., 987 F.2d 766, 25
USPQ2d 2027 (Fed. Cir. 1993); and Opryland USA, 23 USPQ2d at
1472. In considering whether summary judgment is
appropriate, the Board may not resolve genuine disputes as
to material facts and, based thereon, decide the merits of
the opposition. Rather, the Board may only ascertain
whether any material fact cannot be disputed or is genuinely
disputed. See Lloyd’s Food Prods., 25 USPQ2d at 2029; and
Olde Tyme Foods, 22 USPQ2d at 1542.
When a moving party’s motion for summary judgment is
supported by evidence sufficient to indicate that there can
be no genuine dispute as to any material fact and that the
moving party is entitled to judgment, the burden shifts to
Opposition No. 91199904

7
the nonmoving party to demonstrate the existence of at least
one genuine dispute as to a material fact that requires
resolution at trial. The nonmoving party, however, may not
rest on the mere allegations of its pleadings and
assertions, but must designate specific portions of the
record or produce additional evidence showing the existence
of a genuine dispute as to a material fact for trial.
Consequently, factual assertions without evidentiary support
are insufficient to defend against a motion for summary
judgment. See Hornblower & Weeks Inc. v. Hornblower & Weeks
Inc., 60 USPQ2d 1733, 1739 (TTAB 2001) (“applicant has
produced no evidence, or raised any expectation that at
trial it could produce evidence”); and S & L Acquisition Co.
v. Helene Arpels Inc., 9 USPQ2d 1221, 1225 (TTAB 1987).
To prevail on summary judgment on its claim of priority
and likelihood of confusion, opposer must establish that
there is no genuine dispute that it has standing to maintain
this proceeding; that it has priority of use; and that
contemporaneous use of the parties’ respective marks on
their respective goods would be likely to cause confusion,
mistake, or to deceive consumers. See 15 U.S.C. § 1052(d);
and Hornblower & Weeks, 60 USPQ2d at 1735. In support of
its motion, opposer has submitted copies of the electronic
TARR and assignment reports from the USPTO website for
Registration No. 3117526 confirming opposer’s ownership and
Opposition No. 91199904

8
the current status of the registration. Opposer also
submitted a copy of applicant’s answers to opposer’s first
request for admissions.7 The subject application is of
record by operation of Trademark Rule 2.122(b).
Standing
We turn first to the question of whether opposer has
standing to bring this opposition proceeding. Standing is a
threshold issue that must be proven by a plaintiff in every
inter partes case. See Ritchie v. Simpson, 170 F.3d 1092,
50 USPQ2d 1023 (Fed. Cir. 1999); Jewelers Vigilance
Committee, Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d
2021 (Fed. Cir. 1987); and Lipton Industries, Inc. v.
Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
The purpose of the standing requirement, which is directed
solely to the interest of the plaintiff, is to prevent
litigation when there is no real controversy between the
parties. Lipton Indus., 213 USPQ2d at 189.
Opposer’s standing to bring this opposition proceeding
is established by the TARR and assignment printouts of
opposer’s Registration No. 3117526 for its OV mark. Edwards
Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399, 1408
(TTAB 2010) (pleaded registration made of record establishes

7 Applicant’s responses to the request for admissions are not
helpful. Although opposer submitted applicant’s responses, the
requests themselves were not provided, and not all of applicant’s
responses are written in perfect English.

Opposition No. 91199904

9
standing). Moreover, opposer’s standing is not disputed by
applicant in the brief in opposition to the motion.
Accordingly, there is no genuine dispute of material fact as
to opposer’s standing.
Priority
Turning to the question of priority, we find that
inasmuch as opposer’s pleaded Registration No. 3117526 is of
record by submission of the TARR and assignment printouts,
opposer’s priority is not an issue as to the mark and goods
covered by that registration. King Candy Co. v. Eunice
King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA
1974). Moreover, opposer’s priority is not disputed by
applicant. Accordingly, there is no genuine dispute of
material fact as to opposer’s priority.
Likelihood of confusion
Turning to the issue of likelihood of confusion, our
determination under Section 2(d) is based on an analysis of
all of the probative facts in evidence that are relevant to
the factors bearing on the issue of likelihood of confusion.
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973). See also, In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203
(Fed. Cir. 2003). Our primary reviewing court has held that
only those du Pont factors shown to be material or relevant
in the particular case and which have evidence submitted
Opposition No. 91199904

10
thereon are to be considered. Olde Tyme Foods, 22 USPQ2d at
1544. Further, in any likelihood of confusion analysis, two
key considerations are the similarities between the marks
and the similarities between the goods. See Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated
by §2(d) goes to the cumulative effect of differences in the
essential characteristics of the goods and differences in
the marks”). In this case, the key factors are the degree
of similarity between the marks OV and OVS, the relatedness
of the parties’ goods, the channels of trade, and the class
of consumers. Han Beauty, Inc. v. Alberto-Culver Co., 57
USPQ2d 1557, 1559-1560 (Fed. Cir. 2001).
1. Similarity between the marks
There is no genuine dispute of material fact that the
marks are nearly identical in appearance and commercial
impression. Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 73 USPQ2d 1689, 1692 (Fed.
Cir. 2005). In this case, applicant’s applied-for mark is
OVS, and opposer’s registered mark is OV. Applicant’s OVS
mark contains the two OV letters of opposer’s mark and they
are in the same sequence. The only difference between the
OV and OVS marks is the addition of an “S” by applicant to
opposer’s mark. Such a minor difference is not sufficient
to create a genuine dispute as to the similarity or
Opposition No. 91199904

11
dissimilarity between the marks. Marks may be confusingly
similar in appearance, sound, meaning and commercial
impression despite the addition of an “S.” See, e.g.,
Calvin Klein Industries Inc. v. Calvins Pharmaceuticals
Inc., 8 USPQ2d 1269, 1271 (TTAB 1988) (addition of the
letter “S” at the end of applicant’s mark CALVINS does
little distinguish it from opposer’s mark CALVIN); Edison
Brothers Stores, Inc. v. Brutting E.B. Sport-International
GmbH, 230 USPQ 530 (TTAB 1986)(EBS likely to be confused
with stylized EB and diamond design); and In re Pix of
America, Inc., 225 USPQ 691 (TTAB 1985)(NEWPORTS likely to
be confused with NEWPORT).
Neither the OV nor OVS letter combination has been
shown to have any special meaning to consumers. Although
applicant argues that there is no “confusion ... in overall
meaning” or “in [the] parts” of the parties’ marks because
“OVS is created from ... [the term] Online Video
Surveillance” (Brief in Opp., unnumbered pp. 1-2), applicant
did not provide any evidence on these issues –only argument.
There is no evidence of record regarding whether OV or OVS
has any meaning or whether the individual letters making up
those marks have any meaning. In view thereof, the marks
may be perceived as merely a combination of arbitrary
letters having no inherent meaning. “[I]t is more difficult
to remember a series of arbitrarily arranged letters than it
Opposition No. 91199904

12
is to remember figures, syllables, or phrases, and [] the
difficulty of remembering such multiple-letter marks makes
the likelihood of confusion between such marks, when
similar, more probable.” Dere v. Institute for Scientific
Information, Inc., 420 F.2d 1068, 164 USPQ 347, 348 (CCPA
1970). See also, Weiss Assocs. Inc. v. HRL Assocs. Inc., 902
F.2d 1546, 14 USPQ2d 1840, 1841 (Fed. Cir. 1990).
2. Relatedness of the goods
Our comparison of the parties’ goods must be based on
the goods as identified in the subject application and in
the pleaded registration, regardless of what the evidence
might show the actual goods of the parties to be as
currently marketed or intended to be marketed. See Octocom
Sys., Inc. v. Houston Computers Svcs., Inc., 918 F.2d 937,
16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority is
legion that the question of registrability of an applicant’s
mark must be decided on the basis of the identification of
goods set forth in the application regardless of what the
record may reveal as to the particular nature of an
applicant’s goods, the particular channels of trade or the
class of purchasers to which the sales of goods are
directed.”) See also Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000). We may
find that there is a likelihood of confusion when only one
item in a class of goods is commercially similar to a
Opposition No. 91199904

13
party’s goods. See Tuxedo Monopoly, Inc. v. General Mills
Fun Group, Inc., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA
1981). See also Research in Motion Ltd. v. Defining
Presence Mktg. Group, Inc. et al., 102 USPQ2d 1187 (TTAB
2012) (“Likelihood of confusion must be found if there is
likely to be confusion with respect to any item that comes
within the identification of goods in the application.”).
As noted earlier, the goods listed in opposer’s
registration are “computer software for video surveillance
and for monitoring video streams to determine activities,
events, and/or behaviors relating to the safety and security
of structures, areas, people, or things”; and the goods
listed in applicant’s application are “building security
systems comprising software and hardware for providing
picture, video, alarm status, building plans, and other
information to a remote station; digital media servers;
digital media streaming devices; digital video recorders;
electric and electronic video surveillance installations;
Internet digital video recorders; PC digital video
recorders.” Opposer’s goods include video surveillance
software, and applicant’s goods include systems comprised,
in part, of video surveillance software. These goods are
legally identical.
Opposition No. 91199904

14
3. Channels of trade and class of consumers
Because the goods are, in part, identical, and because
neither identification of goods contains a limitation of any
kind with respect to consumers or channels of trade, we
presume that the goods move in the same channels of trade
and are sold to the same classes of consumers. See American
Lebanese Syrian Associated Charities Inc. v. Child Health
Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011). See also
In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908
(Fed. Cir. 2012) (even though no evidence regarding channels
of trade and classes of consumers, Board was entitled to
rely on this legal presumption in determining likelihood of
confusion). Therefore, applicant’s argument that the
parties “operate in completely different markets” (Brief in
Opp., unnumbered p. 1) is unpersuasive and, in any event,
unsupported by any evidence.
Accordingly, considering the evidentiary factors set
forth in du Pont for which there is evidence in the record,
we find that there is no genuine dispute as to the material
facts relating to the issue of likelihood of confusion. In
view thereof, we find as a matter of law that applicant’s
mark OVS for “building security systems comprising software
and hardware for providing picture, video, alarm status,
building plans, and other information to a remote station;
digital media servers; digital media streaming devices;
Opposition No. 91199904

15
digital video recorders; electric and electronic video
surveillance installations; Internet digital video
recorders; PC digital video recorders” is likely to cause
confusion with opposer’s mark OV for “computer software for
video surveillance and for monitoring video streams to
determine activities, events, and/or behaviors relating to
the safety and security of structures, areas, people, or
things.”
Summary
Based on the record on summary judgment, after
consideration of the parties’ arguments and evidence, and
having drawn all justifiable inferences in a light most
favorable to applicant, we find that opposer has met its
burden of demonstrating that there is no genuine dispute
that it has standing, that there is no genuine dispute that
it has priority, and that no genuine dispute exists as to
whether there is likelihood of confusion. Thus, opposer has
demonstrated that it is entitled to judgment as a matter of
law on its claim of priority and likelihood of confusion.
In view thereof, opposer’s motion for summary judgment is
granted.
Order
In view of the grant of summary judgment in favor of
opposer, the opposition is sustained and registration to
applicant is refused.