Octopv.Aleksandar Vujovic

Trademark Trial and Appeal Board

Sep 29, 2015

No. 92058642 (T.T.A.B. Sep. 29, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: September 29, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Aleksandar Vujovic
v.
Octop
_____

Opposition No. 91210908
against Serial No. 85727622

Cancellation No. 92058642
against Registration No. 4462654
_____

Todd Winter of Winter LLP,
for Aleksandar Vujovic.
Luke Brean of Breanlaw LLC,
for Octop.
_____

Before Bucher, Lykos and Goodman,
Administrative Trademark Judges.

Opinion by Bucher, Administrative Trademark Judge:
Octop (hereinafter “Applicant” or “Octop”), a California corporation, seeks
registration on the Principal Register of the mark OCTOP (in standard
character format) for
Opposition No. 91210908 and Cancellation No. 92058642
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“computer software and hardware design for others;
development of computer software applications for
others for use in connection with mobile wireless
devices, cellular and mobile phones, and other
handheld computers and tablets; research,
development, design and upgrading of computer
software; research and development of new products for
others; design and testing of new products for others;
design, development, and consulting services related
thereto in the fields of digital media, graphic designs
and computer graphics and special effects;
programming of multimedia applications; development
of computer software applications for dedicated gaming
consoles,” in International Class 42.1
Aleksandar Vujovic (hereinafter “Opposer” or “Vujovic”), a California resident,
alleges that Applicant’s mark so resembles Opposer’s previously used mark
OCTOP for a listing of services including design, development and consulting
services in the fields of digital media, graphic designs and computer graphics and
special effects, that when used in connection with Applicant’s recited services, it
is likely to cause confusion, to cause mistake, or to deceive, under Section 2(d) of
the Trademark Act, 15 U.S.C. § 1052(d).2 In its answer, Applicant denies the
salient allegations of priority and likelihood of confusion in the Notice of
Opposition. Applicant also asserts, as affirmative defenses, that Opposer
abandoned common law trademark rights when leaving the partnership formed
between Opposer and Applicant’s principal, Ramona LaFountain, and that as a

1 Application Serial No. 85727622 was filed on September 12, 2012, based upon
Applicant’s claim of first use anywhere at least as early as June 7, 2004, and use in
commerce since at least as early as September 1, 2009.
2 Although the Notice of Opposition made various references to fraud on Applicant’s part,
this ground was not appropriately pleaded and has not been tried, so we deem it waived.
Opposition No. 91210908 and Cancellation No. 92058642
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result, Opposer lacks standing to even bring this action; that Opposer’s claims are
barred by the doctrine of estoppel by acquiescence; and that with the submission
his trademark application, Mr. Vujovic committed fraud on the United States
Patent and Trademark Office.
Immediately before filing the opposition proceeding at bar, Vujovic also sought
registration on the Principal Register of the identical mark OCTOP (also in
standard character format) for the following services:
“book and review publishing; book publishing; desktop
publishing for others; digital video, audio, and
multimedia publishing services; electronic desktop
publishing; multimedia publishing of books, magazines,
journals, software, games, music, and electronic
publications; online electronic publishing of books and
periodicals; provision of information relating to
multimedia publishing; publishing of books, e-books,
audio books, music and illustrations; publishing of
books, magazines; publishing of electronic
publications,” in International Class 41; and
“commercial art design; computer graphics design
services; computer services, namely, interactive hosting
services which allow the user to publish and share
their own content and images on-line; consulting in the
field of designing games, websites, software
applications; design, development, and consulting
services related thereto in the field of digital media,
graphic design, computer graphics and special effects;
graphic illustration services for others; web publishing,
namely, creating a website and uploading it onto an
Internet server,” in International Class 42.3

3 Application Serial No. 85945193 was filed on May 29, 2013, based upon Applicant’s
claim of first use anywhere at least as early as September 28, 2004, and use in commerce
since at least as early as October 12, 2004. Vujovic/Opposer pleaded ownership of this
pending application in his notice of opposition.
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Despite Octop’s/Applicant’s earlier-filed Application Serial No. 85727622,
Vujovic’s/Opposer’s Application Serial No. 85945193 matured into Registration
No. 4462654 on January 7, 2014.4 Octop (also “Petitioner”) timely filed
Cancellation No. 92058642 against Vujovic’s registration on February 6, 2014,
charging that Vujovic (also “Respondent”) committed fraud on the United States
Patent and Trademark Office in obtaining this registration, and that he is not
the rightful owner of the OCTOP mark. Inasmuch as the Petition to Cancel filed
in the ’642 cancellation is effectively a compulsory counterclaim in the ’908
opposition, the Board consolidated these two proceedings under the ’908
opposition for purposes of briefing both matters for a final determination. TBMP
§ 313.04 (2015). This panel of the Board, in reaching our determinations herein,
has considered the evidentiary records in each proceeding. We therefore will
consider each case in turn, commencing first with the cancellation proceeding.
I. Cancellation No. 92058642
A. The record
The record in the cancellation proceeding includes the pleadings, and
pursuant to Trademark Rule 2.122, 37 C.F.R. § 2.122, the file for the involved

4 If a pleaded application matures into a registration prior to trial, amendment of the
notice of opposition is not necessary as the pleading of the application would be viewed
as having provided sufficient notice to applicant. UMG Recordings Inc. v. O’Rourke, 92
USPQ2d 1042, 1045 n.12 (TTAB 2009). Once the registration issues, an applicant on
notice of opposer’s reliance on a pending application may counterclaim to cancel the
registration. Standard Knitting Ltd. v. Toyota Jidosha Kabushiki Kaisha, 77 USPQ2d
1917, 1919 (TTAB 2006).
Opposition No. 91210908 and Cancellation No. 92058642
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registration for the mark OCTOP. During its testimony period, Petitioner/Octop
filed under notices of reliance the following:
• Respondent’s/Vujovic’s objections and responses to Petitioner’s
Interrogatories Nos. 4, 5, 9, 17, 18, including as an attachment
Opposer/Respondent’s/Vujovic’s Exhibit H;
• A copy of Petitioner/Octop’s Requests for Admission of October 15, 2014,
along with claims of Respondent/Vujovic’s failure to respond to these
requests for admission.
Neither Octop nor Vujovic took any testimony depositions. Although
Respondent/Vujovic submitted 290 pages of documents entitled “Registrant’s
Responses to Petitioner’s First Set of Interrogatories,” along with his Exhibits A-
K (7 TTABVue), we have not considered any of this matter as being of record.
Vujovic’s submission was filed prior to his trial period (see Trademark Rule
2.120(j)(8), 37 C.F.R. § 2.120(j)(8)), and Vujovic as Respondent/defendant cannot
place into the record his own responses to Petitioner’s/plaintiff’s interrogatories.
Trademark Rule 2.120(j)(2), 37 C.F.R. § 2.120(j)(2). Although Petitioner/Plaintiff
later placed Respondent’s answers to five of its interrogatories (Interrogatories
Nos. 4, 5, 9, 17 and 18) into the record, this submission was correctly filed during
Petitioner’s/Octop’s testimony period, but at least six weeks after
Vujovic’s/Respondent’s submission (of responses to all twenty-four
interrogatories). Hence, the exception in Trademark Rule 2.120(j)(5), 37 C.F.R.
§ 2.120(j)(5), permitting Respondent/defendant to provide answers in full does not
apply herein. Finally, except for his Exhibit H, none of the extensive exhibits
Vujovic submitted are attached to LaFountain’s later redacted submission; they
Opposition No. 91210908 and Cancellation No. 92058642
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were submitted in a most untimely manner (e.g., prior to his trial period), and
are unacceptable under the requirements of Trademark Rule 2.122(e), 37 C.F.R.
§ 2.122(e) for entry of evidentiary documents under a Notice of Reliance.
As noted above, Octop made Vujovic’s answers to five of its interrogatories part
of the record. These answers appear similar in both the cancellation and opposition
proceedings, although curiously it seems that the actual interrogatory questions
were never made part of the record in either proceeding. In these answers,
“Registrant” is a reference to Vujovic and “Applicant” is a reference to
LaFountain/Octop:
Answer to Interrogatory No. 4
Currently the Registrant isn’t actively advertising due to the potentially
irreparable damage sustained at the Applicant’s use of the mark and has no
intentions of actively advertising until the active proceedings are over.
Registrant is currently actively developing projects pertaining to both 041 and
042 classes, Visual consulting services with specific area in book and
multimedia publishing, including but not limited to These projects contain
proprietary ideas and as such are confidential materials of the Registrant’s
use of the OCTOP mark.
Answer to Interrogatory No. 5
Currently, Frankentown, a science fiction novel released under the ISBN 978-
0989134316, is currently sold on Amazon in both physical and digital-delivery
forms. Although the Registrant published the book under his own name to
prevent any legal entanglements with this case, the name OCTOP appears as
the licensing contact the Edition Notice on page 247 of the publication. The
contact email listed is frankentown@octop.com This novel was in
development since 01/06/2009, is the first ‘valid publication’ (with ISBN) and
second publication under the OCTOP mark overall. The first publication was
published in November 2011 online. The channel of trade of this and
upcoming projects will be published include but are not limited to
amazon.com, where the projects will be available to purchase in 13 countries
(US, IN, UK, DE, FR, ES, IT, NL, JP, BR, CA, MX, AU), octop.com, and through
clients’ online media delivery services such as iTunes and iBooks, which may
be accessible globally.
Exhibit D - Frankentown Amazon page capture,
Exhibit E - Frankentown in PDF form (book proof included in hardcopy)
Opposition No. 91210908 and Cancellation No. 92058642
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Exhibit F - Because ESTTA allows 6MB maximum file size, the exhibit can be viewed
online at: http://www.octop.com/etc/octopdesign.pdf
Answer to Interrogatory No. 9
The only party who may yet hold discoverable knowledge is Mike Bailey who
attended college along with the Registrant and Applicant, who was lured by
Applicant into the production of art under the pretense of a contest to acquire
a position with OCTOP (Exhibit H). It was at that time that the Applicant
informally notified me during a visit to the Applicant’s residence, that the
assets delivered by the winner of said ‘contest’ would be printed on a denim
jacket and gifted to the Applicant’s alleged son for his birthday.
(undocumented) This is the same event that lead [sic] to the Registrant’s
decision to cease professional and any other affiliation with Applicant on the
basis of unprofessional conduct and potentially damaging behavior to the
OCTOP mark’s reputation.
Exhibit H - Facebook conversation, initiated by Mike Bailey Re: Applicant’s use of
OCTOP mark
Answer to Interrogatory No. 17
At the time, The Registrant, acting on his own and naivety could no longer
sustain hosting development meetings during the only project ever in active
development. There was no income from the project, nor was there supposed
to be for a long time. Everyone involved had knowledge of this. At the time I
had felt that the work I put into this ‘passion-project’ was significant enough
to consider a working experience, and since a large part of my portfolio the
Applicant refers to in this interrogatory had included work from this particular
project and I was seeking an art job, I wanted to highlight my game-
development experience to at least get a job in a related field.
Answer to Interrogatory No. 18
The Registrant referred to himself as an employee of OCTOP in the
aforementioned email to embellish his working experience, in an attempt to
get a full-time job, so as to be able to continue development on OCTOP
projects. The email could be equated to asking someone you worked with for
a good reference. Applicant purposely attempts to throw this out of context to
make it appear as though I had understood or agreed that the Applicant was,
in company rankings, my superior at the time, contrary to Registrant’s
conduct since the mark’s conception.
As to Petitioner/Octop’s Requests for Admission of October 15, 2014, it appears
from the record that Respondent/Vujovic failed to respond to these requests.
Hence, these admissions are conclusively established under Fed. R. Civ. P
36(a)(3) for failure to respond and could be used to support factual findings as
appropriate.
Opposition No. 91210908 and Cancellation No. 92058642
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Octop’s Request for Admission #1 refers to a copy of some portion of Mr.
Vujovic’s portfolio (“Exhibit A”) containing a graphically-illustrated copy of his
work resume, including an entry as “Lead Artist” at Octop Studios:

and then detailing the nature of his work during this five-month period for a
client/project labeled “House of Apocalypse” for Facebook.
Octop’s Request for Admission #2 refers to a copy of an email from Vujovic to
Octop (“Exhibit B”):
----- Original Message -----

From: "Aleksandar Vujovic"
To: “Ramona LaFountain”
Sent: Saturday, February 06, 2010 6:45 AM
Subject: 3-Day Walk T-Shirt Designs A+B

Good Morning Ramona,
…
… That firm [Progressive Auto Insurance] is huge! I’m really glad to get someone like
them behind us for support.

Big props for joining with them.

Btw, got a phone interview on Wednesday for Sr. Graphic Designer position, most
likely for a facebook game. They really liked the HOA stuff. I said that I could only
show them certain things that I told them were pre-release, and a few promo pics. I
told them I can't tell them anything about the promo pics. If they ask for a reference,
can I give them your number and you hype me up as a great employee? :D

Thanks
Aleks

Octop’s Request for Admission #3 refers to a copy of Vujovic’s LinkedIn.com
profile (“Exhibit 2”):
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Opposition No. 91210908 and Cancellation No. 92058642
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Octop’s Requests for Admission ##4 and 5 are deemed admissions that, for the
services as identified in Vujovic’s application, at least as of October 2004,5 no
services were being offered commercially under this mark.6
B. Petitioner’s Standing
Turning now to the merits of the cancellation proceeding, we begin our
analysis with standing. Petitioner/plaintiff/Octop has relied upon its ownership of
Application Serial No. 85727622 as defendant in the ’908 opposition. As a
counterclaim-plaintiff in the cancellation proceeding, Petitioner/Octop need not
prove its standing to challenge Respondent’s registration because its standing is
inherent. Carefirst of Maryland, Inc. v. FirstHealth of the Carolinas Inc., 77
USPQ2d 1492 (TTAB 2005) (“Applicant, by virtue of its position as defendant in
the opposition, has standing to seek cancellation of the pleaded registrations,”)
(citing Ohio State University v. Ohio University, 51 USPQ2d 1289, 1293 (TTAB
1999)); Bankamerica Corp. v. Invest America, 5 USPQ2d 1076, 1078 (TTAB 1987)
(defendant seeking to cancel the pleaded registration on ground of
descriptiveness or genericness in an opposition based on likelihood of confusion
need not allege that it has an interest in using the term sought to be cancelled);

5 October 2004 is the date Vujovic claimed as his first use of the OCTOP mark in
commerce in connection with claimed services in International Classes 41 and 42.
6 Although as drafted, the passive tense contained in the preamble to both requests
leaves some question as to who was or was not offering the services commercially:
“Admit that in October 2004 that there were no services being offered commercially
under the OCTOP brand … ” The requests for admissions do not reference Vujovic’s
application in particular, but quote the services as identified by the application in
Classes 41 and 42.
Opposition No. 91210908 and Cancellation No. 92058642
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M. Aron Corporation v. Remington Products, Inc., 222 USPQ 93, 95 (TTAB 1984)
(counterclaimant clearly has personal stake in the controversy); Marcal Paper
Mills, Inc. v. American Can Co., 212 USPQ 852, 856 (TTAB 1981) (damage
assumed, and with properly pleaded ground is sufficient to place validity of
registration in issue); and General Mills, Inc. v. Nature’s Way Products, 202
USPQ 840, 841 (TTAB 1979) (counterclaimant’s position as defendant in the
opposition gives him a personal stake in the controversy); see also TBMP § 313.03
(2015). In view thereof, Petitioner/Octop clearly has standing to bring this
cancellation proceeding.
C. Merits of the Cancellation Petition
We turn then to Petitioner/Octop’s evidence of record to determine if it has
demonstrated by a preponderance of the evidence that Respondent/Vujovic is not
the rightful owner of the OCTOP mark, and whether he committed fraud on the
United States Patent and Trademark Office in obtaining this registration.
1. Cancellation claim: Vujovic was not the rightful owner
Both of these proceedings basically boil down to an ownership dispute
between Ramona LaFountain and Aleksandar Vujovic. Yet, the evidentiary
record is fairly thin gruel. Momentarily setting aside any strict evidentiary
standards, the parties’ respective counsel, in their briefs, may well agree that Mr.
Vujovic coined the “Octop” term and created significant artwork while still in
high school in 2004, and then provided much of the original creativity at the core
of the Octop imagery. Vujovic and LaFountain began working together in 2008.
Opposition No. 91210908 and Cancellation No. 92058642
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After a brief working partnership, Vujovic concluded he could not continue this
affiliation with LaFountain, and walked away from their shared enterprise. Since
2010, the continuing business that is the Octop corporation was the work of Ms.
LaFountain, although Mr. Vujovic continued to claim source-identification rights
in the Octop designation that he had coined. In various online publications, such
as LinkedIn, each party claims to have been the “founder” of Octop.
Ms. LaFountain filed the Octop trademark application with the United States
Patent and Trademark Office on September 12, 2012. Mr. Vujovic filed his
trademark application almost nine months later – on June 3, 2013.
At the point of final decision in the cases at bar, with so little factual evidence
of record, one most critical fact is that although the Vujovic later-filed application
should have been held up pending a determination on the conflicting, earlier-filed
Octop application, it was sent to publication and then issue. As noted recently in
the case of In re House Beer, LLC, 114 USPQ2d 1072, 1075 (TTAB 2015):
When the marks in two or more pending applications
filed by different applicants appear to be sufficiently
similar that they may ultimately require a refusal of
registration under § 2(d), they are considered
“conflicting applications.” It is USPTO policy to process
conflicting applications in the order of their filing dates
(or effective filing dates), such that the application
having the earliest effective filing date will be the first
to proceed toward publication for opposition (if it is
eligible for registration on the Principal Register) or
toward registration if it is eligible for registration on
the Supplemental Register. Trademark Rule 2.83(a),
37 C.F.R. § 2.83(a); TMEP § 1208.01. As for the
conflicting applications that have later effective filing
dates, the assigned examining attorneys will suspend
Opposition No. 91210908 and Cancellation No. 92058642
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action until the earlier-filed application either matures
into a registration or is abandoned. 37 C.F.R. § 2.83(c);
TMEP § 1208.01.
Despite this serious procedural mishap, § 2(d) of the Trademark Act makes no
allowance for the filing date of the application underlying Vujovic’s claimed
registration. Having his federal trademark registration in hand, Vujovic is
entitled to the presumptions of Section 7(b) of the Act, including the validity of
his registered mark and of the registration of the mark, of his ownership of the
mark, and of his exclusive right to use the registered mark in commerce on or in
connection with the services specified in the certificate.7
Against this prima facie evidence, we must examine the probative evidence
put forward by Petitioner demonstrating that Vujovic is not the rightful owner of
the OCTOP mark.
We read the deemed admissions as providing authentication as to the
genuineness of website printouts and an email between the parties. However,
none of this material was ever introduced in connection with the testimony of a
competent witness. With this tenuous degree of probity, we cannot consider the
content of those documents as going to the truth of the matter asserted.
Furthermore, even if we were to consider the authenticated documents for the
truth of the matter asserted, we find no admissions which go to material facts
relating to ownership by either party. Hence, despite the arguments made in

7 As discussed in the House Beer case, even if sympathetic to Octop’s appeal for us to
resort to a general sense of “equity,” we are in this instance unable to disregard the
statutory presumptions attached to this registration.
Opposition No. 91210908 and Cancellation No. 92058642
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Petitioner’s brief in support of cancellation, in the face of Vujovic’s Section 7(b)
presumptions as to his ownership of the mark, this evidence of record is
insufficient to establish Petitioner’s case that Vujovic is not the rightful owner of
the OCTOP mark.
2. Cancellation claim: Fraud by Vujovic in procuring Registration
Again, even if we were to consider the authenticated documents for the truth
of the matter asserted, that is not enough to establish fraud. “Fraud in procuring
a trademark registration occurs when an applicant knowingly makes false,
material representations of fact in connection with its application with intent to
deceive the USPTO.” Nationstar Mortgage LLC v. Ahmad, 112 USPQ2d 1361,
1365 (TTAB 2014) (citing In re Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938 (Fed.
Cir. 2009)) (emphasis added). Here, Petitioner has not presented any evidence,
direct, indirect or circumstantial, let alone the requisite “clear and convincing”
evidence, In re Bose, 91 USPQ2d at 1939, that Respondent made any statements
with the requisite intent to deceive the United States Patent and Trademark
Office. Even if Respondent should have known in 2013 that he was not using his
mark in 2004 on all of the services recited in his application, those facts, without
more, do not reflect an intent to deceive much less prove such an intent “to the
hilt” as required by Bose. Id. In the absence of evidence of an intent to deceive,
Petitioner’s fraud claim must fail, and is accordingly dismissed.
In view of the foregoing, the Petition for Cancellation is denied.
Opposition No. 91210908 and Cancellation No. 92058642
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II. Opposition No. 91210908
We turn now to the opposition. As noted earlier, Opposer bases the opposition
on priority and likelihood of confusion. Applicant denies these allegations, and
asserts as affirmative defenses Opposer’s abandonment and lack of standing,
estoppel by acquiescence; unclean hands predicated on fraud, and that Mr.
Vujovic committed fraud on the United States Patent and Trademark Office.8
A. The record
The record in the opposition includes the pleadings, and pursuant to
Trademark Rule 2.122, 37 C.F.R. § 2.122, Applicant’s application file for Serial
No. 85727622. Neither Opposer nor Applicant took any testimony.
Although Opposer attached several exhibits to his Notice of Opposition, these
documents cannot serve as evidence on his behalf inasmuch as they were not
thereafter introduced in evidence during his time for taking testimony. Baseball
America Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1846 n.6 (TTAB 2004)
(exhibits to pleading not evidence of record).
As to his pretrial discovery, Opposer was not required to file a copy of his
disclosure with the Board. Furthermore, again we find that materials submitted
outside of Opposer’s assigned testimony period and which failed to comply with
the Board’s evidentiary rules should be given no consideration. Id.

8 The fraud claims were based on the filing and prosecution of Opposer’s/Vujovic’s
pleaded application Serial No. 85945193. Once the registration issued, the alleged fraud
could only be considered in connection with a counterclaim, addressed supra. Baroid
Drilling Fluids Inc. v. Sun Drilling Products, 24 USPQ2d 1048, 1050 n.4 (TTAB 1992).
Opposition No. 91210908 and Cancellation No. 92058642
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In paragraph 12 of his Notice of Opposition, Opposer claimed ownership of
Application Serial No. 85945193 filed with the PTO on May 29, 2013, and
attached a TEAS copy of his filing receipt as an attachment to his Notice of
Opposition. The pleaded application which matured into Registration No.
4462654 was made of record via the cancellation proceeding inasmuch as the
cancellation is effectively a compulsory counterclaim.9
Applicant filed a Notice of Reliance on the following:
• Opposer’s Objections and Responses to Applicant’s Request for Admission
Nos. 1 and 2 and related documents;
• Applicant’s Objections and Responses to Opposer’s Request for Documents
No. 26;
• Applicant’s Objections and Responses to Opposer’s Interrogatories Nos. 2,
4, 5, 6 and 7; and
• 2008 email between Applicant and Opposer creating email account on the
Octop.com domain, 2009 email between Applicant and Opposer asking
Applicant to pay for Octop.com hosting, 2010 Fictitious Business Name
Registration by Applicant for OCTOP, and 2012 Incorporation record from
California Secretary of State for OCTOP.

9 See Trademark Rule 2.106(b)(2)(i), 37 C.F.R. § 2.106(b)(2)(i): “A defense attacking the
validity of any one or more of the registrations pleaded in the opposition shall be a
compulsory counterclaim ... . If grounds for a counterclaim are learned during the course
of the opposition proceeding, the counterclaim shall be pleaded promptly after the
grounds therefor are learned. A counterclaim need not be filed if it is the subject of
another proceeding between the same parties or anyone in privity therewith.” See also
Trademark Rule 2.121(b)(1), 37 C.F.R. § 2.121(b)(1): (1) The file of each application or
registration specified in a notice of interference, of each application or registration
specified in the notice of a concurrent use registration proceeding, of the application
against which a notice of opposition is filed, or of each registration against which a
petition or counterclaim for cancellation is filed forms part of the record of the proceeding
without any action by the parties and reference may be made to the file for any relevant
and competent purpose … .”; TBMP § 704.03(a) (2015): “The file of an application or
registration that is the subject of a Board inter partes proceeding forms part of the record
of the proceeding without any action by the parties, and reference may be made to the
file by any party for any relevant and competent purpose.”
Opposition No. 91210908 and Cancellation No. 92058642
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In our discussion above in the cancellation proceeding, we have accepted as
authenticated Opposer’s resume and email with his failure to respond to
Applicant’s Request for Admission Nos. 1 and 2. However, as to Applicant’s
objections and responses to Opposer’s interrogatories, and the written disclosure
of emails dated September 2008 and April 2009, Applicant cannot place into the
record its own responses to Opposer’s interrogatories. Any possible exception in
Trademark Rule 2.120 permitting Applicant to provide answers in full under
Trademark Rule 2.120(j)(5) does not apply herein, and this rationale was not
explicitly claimed. Additionally, emails do not fit the requirements of Trademark
Rule 2.122(e) as to printed publications and official records. Accordingly, we have
given no consideration to Applicant’s Objections and Responses to Opposer’s
Request for Documents No. 26, Applicant’s Objections and Responses to
Opposer’s Interrogatories Nos. 2, 4, 5, 6 and 7, the 2008 email between Applicant
and Opposer allegedly creating email account on the Octop.com domain or the
2009 email between Applicant and Opposer allegedly asking Applicant to pay for
Octop.com hosting.
The only documents that comply with the Trademark Rules are the following:
County of Alameda Clerk-Recorder’s Office Fictitious Business Names and
California Secretary of State Incorporation records as they appeared in 2013 and
2012, respectively:
Opposition No. 91210908 and Cancellation No. 92058642
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10
11

10 http://rechart1.acgov.org/results.asp as accessed by Applicant on June 4, 2013,
showing the “Octop” business name as “Active.”
Opposition No. 91210908 and Cancellation No. 92058642
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B. Opposer’s standing
As noted above, Applicant/Petitioner’s counterclaim against Opposer’s/
Respondent’s registration failed, so we are faced with the Section 7(b)
presumptions that attach to Opposer’s extant registration.12 As a result, this
provides Opposer with standing to bring this Opposition proceeding.
C. Opposition Claim: Priority and Likelihood of Confusion
Because Opposer’s pleaded registration for its OCTOP mark on the Principal
Register is of record, § 2(d) priority is not an issue in this case as to this mark
and the services covered by the registration. See King Candy Co. v. Eunice King’s
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974).
In determining likelihood of confusion, we must analyze all of the probative
facts in evidence that are relevant to the likelihood of confusion factors. 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,
1203 (Fed. Cir. 2003). Two key considerations are the similarities between the
marks and the similarities between the goods and/or services. See Federated
Foods, Inc. v. Fort Howard Paper Co. 544 F.2d 1098, 192 USPQ 24, 29 (CCPA

11 http://kepler.sos.ca.gov/ as accessed by Applicant on December 6, 2012, showing the
“Octop” corporation as “Active.”
12 As noted earlier, Vujovic/Opposer pleaded ownership of his pending Application Serial
No. 85945193, which was filed with the United States Patent and Trademark Office on
May 29, 2013. Vujovic’s pleading of the pending application provides sufficient notice to
Applicant without necessitating an amendment of the Notice of Opposition when the ’193
applications matured into Registration No. 4462654 on January 7, 2014.
Opposition No. 91210908 and Cancellation No. 92058642
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1976). We have considered these and any other du Pont factors on which the
parties have submitted evidence and argument.
1. The Marks
We begin our analysis with the first du Pont factor, a comparison of the
parties’ marks. Without any doubt, the parties are disputing ownership of the
identical, mark – a coined and hence strong source identifier. Accordingly, their
respective marks are identical as to sound, appearance, meaning and overall
commercial impression, see Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005), and
this critical du Pont factor weighs heavily in favor of finding a likelihood of
confusion herein.
2. The Services
Next, we turn to an examination of the relationship of the parties’ respective
services, keeping in mind that where identical marks are involved, as is the case
here, the closeness of the relationship between Applicant’s and Opposer’s services
that is required to support a finding of likelihood of confusion declines. See In re
Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688-89 (Fed. Cir. 1993).
Applicant’s recited services include design, development, and consulting
services in the fields of digital media, graphic designs and computer graphics and
special effects. This is substantially identical to recited services in International
Class 42 in Opposer’s registration. The remaining services as recited in the
application are identical, overlapping or closely related to the services recited in
Opposition No. 91210908 and Cancellation No. 92058642
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both classes of Opposer’s registration. Hence, this critical du Pont factor also
weighs heavily in favor of finding a likelihood of confusion herein.
Accordingly, with identical marks as well as identical, overlapping or closely
related services, we find an obvious likelihood of confusion. 13
D. Applicant’s Affirmative Defenses
1. Estoppel by Acquiescence
We now consider Applicant’s affirmative defense of acquiescence.
“Acquiescence is a type of estoppel that is based upon the plaintiff’s conduct that
expressly or by clear implication consents to, encourages, or furthers the
activities of the defendant, that is not objected to.” The Christian Broadcasting
Network, Inc. v. ABS-CBN International, 84 USPQ2d 1560 (TTAB 2007). To
establish the defense of acquiescence, defendant/Applicant must prove that
plaintiff’s/Opposer’s conduct amounted to “an assurance by the plaintiff to the
defendant, either express or implied that plaintiff will not assert his trademark
rights against the defendant.” CBS, Inc. v. Man’s Day Publishing Company, Inc.,
205 USPQ 470 (TTAB 1980). Acquiescence “limits a party’s right to bring suit
following an affirmative act by word or deed by the party that conveys implied

13 Not surprisingly, an analysis of the du Pont likelihood of confusion factors – designed
for cases in which the litigation is usually between two unrelated entities that may
happen to be using similar marks in connection with related goods or services – is ill-
suited for situations in which two parties are disputing ownership of the same
trademark once shared. See Pamela S. Chestek, “Who Owns the Mark? A Single
Framework for Resolving Trademark Ownership Disputes,” 96 TRADEMARK REPORTER
681 (2006).
Opposition No. 91210908 and Cancellation No. 92058642
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consent to another.” Seller Agency Council, Inc. v. Kennedy Center for Real Estate
Educ., Inc., 621 F.3d 981, 96 USPQ2d 1568 (9th Cir. 2010).
As noted by Applicant, acquiescence requires proof of three elements: (1) that
plaintiff actively represented that it would not assert a right or a claim; (2) that
the delay between the active representation and assertion of the right or claim
was not excusable; and (3) that the delay caused defendant undue prejudice.
Coach House Restaurant Inc. v. Coach and Six Restaurants, Inc., 934 F.2d 1551,
19 USPQ2d 1401, 1409 (11th Cir. 1991) (acquiescence requires active consent).
See also Hitachi Metals International, Ltd. v. Yamakyu Chain Kabushiki Kaisha,
209 USPQ 1057 (TTAB 1981).
As to Opposer’s actively represented that he would not assert his rights in this
mark, Applicant points to Vujovic’s quitting the partnership and seeking other
employment as an individual, “Aleks Vujovic”; on his resume, referring in the
past tense to his activities as “Lead Artist” at OCTOP between August and
December of 2009; his knowledge that Applicant was continuing to operate
OCTOP as an ongoing business without Opposer; Applicant openly advertising
and using the OCTOP trade name and service mark; Opposer watching as
Applicant grew her client base; Opposer enabling Applicant continued,
uninterrupted access to the octop.com email account; Opposer requesting a job
reference from Ms. LaFountain in which she would “hype me up as a great
employee.” Moreover, as seen above, Applicant did take affirmative steps by filing
a Fictitious Business Name for OCTOP with the Alameda County Clerk (on
Opposition No. 91210908 and Cancellation No. 92058642
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August 30, 2010), and by filing to incorporate OCTOP in the State of California
(on February 21, 2012).
On the other hand, Opposer alludes to his reluctance to continue promoting
the OCTOP mark in the face of their disputes, including these inter partes
proceedings. This seems entirely reasonable under the circumstances. In seeking
other employment in his field, Opposer reasoned that it was appropriate for him
to refer to his legitimate work as an artist for the “House of Apocalypse” game
app for Facebook. We concur with this judgment. Accordingly, taking into
consideration all the facts of this dispute as we know them, we do not find these
actions by Opposer to support a finding that he “actively represented” that he
acquiesced to Applicant’s registration of this mark.
Even if we construed Opposer’s actions as actively representing that
Applicant could use the OCTOP marks, these actions cannot be viewed as
actively representing that Opposer did not object to Applicant’s registration of
these marks:
“ … We conclude that the TTAB abused its discretion by
failing to observe the distinction in this case between
acquiescence as to use and acquiescence as to registration.
Although petitioner actively represented that the registrant
could use its logo, petitioner did not represent or imply that it
would allow registrant to register the petitioner’s service mark
on the federal Principal Register. Therefore, no period of delay
could have begun running as to registration, until petitioner
had notice that registrant was doing something that would
generate a claim or right of petitioner.”
See Coach House, 19 USPQ2d at 1404.
Opposition No. 91210908 and Cancellation No. 92058642
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As to whether or not Opposer should be charged with inexcusable delay, in an
opposition proceeding, the earliest date the equitable defense of acquiescence
may begin to run is the date the mark is published for opposition. See Krause v.
Krause Publications Inc., 76 USPQ2d 1904 (TTAB 2005). Application Serial No.
85727622 was published for Opposition in the Trademark Official Gazette on
April 9, 2013, and Opposer timely filed his Notice of Opposition on June 3, 2013.
In view of the foregoing, Applicant’s assertion of this equitable defense fails.
2. Opposer’s abandonment of his mark; unclean hands
As noted above, Applicant/Petitioner’s counterclaim against Opposer’s/
Respondent’s registration failed, so we are faced with all of the Section 7(b)
presumptions that attach to Opposer’s extant registration. In addition to
providing Opposer with standing, Applicant’s affirmative defense based upon
Opposer’s alleged abandonment also fails. Similarly, Applicant’s defense of
Opposer’s unclean hands predicated on fraud also fails in light of our finding of no
fraud in our dismissing Applicant’s/Petitioner’s Cancellation proceeding.
In view of all the foregoing, the opposition is sustained.
III. Decisions
Decisions: As to Ramona LaFountain’s/Octop’s Petition to Cancel Aleksandar
Vujovic’s Registration No. 4462654, that petition is hereby denied.
As to Mr. Vujovic’s opposition to the Octop Application Serial No. 85727622,
that opposition is hereby sustained on the basis of priority and likelihood of
confusion under § 2(d) of the Lanham Act. Octop’s affirmative defenses that
Opposition No. 91210908 and Cancellation No. 92058642
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Vujovic should be estopped through acquiescence, that Vujovic abandoned the
Octop mark such that Vujovic lacked standing to bring this opposition, and that
Vujovic claims are barred by unclean hands, are all dismissed. Hence, the Octop
application will be abandoned in due course.