Panda Security, S.L.v.Panda Core Technology, Inc.

Trademark Trial and Appeal Board

May 18, 2011

No. 91191921 (T.T.A.B. May. 18, 2011)

Goodman Mailed: May 18, 2011 Opposition No. 91191921 Panda Security, S.L. v. PANDA CORE TECHNOLOGY, INC., Before Walters, Zervas and Wellington, Administrative Trademark Judges. By the Board: Panda Core Technology (“applicant,” which is proceeding pro se in this case) has filed an application to register the mark PANDA CORE TECHNOLOGY in standard character form for goods and services in International Classes 9 and 42.1 1 Application Serial No. 77638609, filed December 23, 2008 asserting intent to use the mark under Section 1(b) of the Trademark Act (CORE TECHNOLOGY disclaimed) for the following goods and services: Class 9: “Computer software for creating searchable databases of information and data; Computer software for use in the encryption and decryption of digital files, including audio, video, text, binary, still images, graphics and multimedia files; Communication software for accessing data stored on digital communication networks and transferring the data to another digital communication channel; Computer software for use in safeguarding digital data transmitted over digital communication channels; Computer software for implementation of Error Correction Codes (ECC); Computer software for data recovery after digital media errors, hardware failures and communication channel errors; Computer software for use in data backup systems, data replication and disaster recovery systems; Computer software for implementation of distributed and local storage systems; Computer software for implementation of distributed computing systems; Computer software for memory management and task scheduling; Software tools for use in software development; Computer utility programs for performing computer maintenance work.” 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 T.T.A.B. Opposition No. 91191921 2 Panda Security, S.L., (“opposer”) has opposed registration in Classes 9 and 42 on the ground of priority and likelihood of confusion. Opposer alleges use of the mark PANDA in commerce, since at least as early as 1997, in connection with “the business of concept creation, development, manufacture and sale of technologies, products and services for keeping information technology resources free from viruses and computer threats.” Opposer has also pleaded ownership of Registration No. 2921210 for the mark PANDA.2 In its answer, applicant has denied the salient allegations in the notice of opposition. Applicant has also filed a counterclaim to cancel opposer’s pleaded Registration No. 2921210 on the grounds of invalidity due to an assignment “in gross” of the registration to opposer and licensing of the mark by opposer’s predecessor-in-interest (the assignor) without the required control, i.e., “naked licensing.”3 Class 42: “Computer software design, computer programming, and maintenance of computer software; Development of software for transfer of data over computer networks; Development of computer software technology in the field of Error Correction Codes (ECC); Development of computer software technology in the field of distributed and local storage systems; Development of computer software technology in the field of distributed computing systems and databases.” 2 Issued January 25, 2005 for Class 9 “anti-virus computer software.” Section 8 accepted January 29, 2011. 3 Assignment of Registration No. 2921210 from WWF-World Wide Fund for Nature to opposer executed on May 6, 2009 and recorded in the Office’s Assignment Branch at Reel/Frame 3988/0042. Opposition No. 91191921 3 This case now comes up on opposer’s motion, filed August 27, 2010, for summary judgment on the priority and likelihood of confusion ground. In addition, opposer, on January 31, 2011, sought to strike applicant’s response to the motion for summary judgment. We turn first to the motion to strike. Opposer seeks to strike applicant’s response to the motion for summary judgment as untimely. Applicant’s response was due, as reset by the Board, on January 14, 2011, but applicant filed its response on January 17, 2011. Applicant has opposed the motion to strike and included a declaration indicating its belief that it was entitled to an additional 5 days to file its response, under Trademark Rule 2.119(c), beyond the thirty days granted by the Board’s order of December 15, 2011. Applicant submits that if this was incorrect it was due to “insufficient knowledge” and if incorrect, it was an “insignificant mistake in the procedure.” Trademark Rule 2.119(c) applies only when a party has to take some action within a prescribed period after the service of a paper upon it by another party, and service of the paper was made in one of three specified ways. It does not apply to an action that must be taken by a party within a time set in a communication from the Board. TBMP Section 113.05 (3d ed. 2011). Opposition No. 91191921 4 To the extent that applicant is arguing that its failure to timely file its response to the motion for summary judgment was excusable neglect, we find that applicant’s misunderstanding of an unambiguous rule, Trademark Rule 2.119(c), does not constitute excusable neglect. See Baron Philippe de Rothschild S.A. v. Styl-Rite Optical Mfg. Co., 55 USPQ2d 1848 (TTAB 2000). Because applicant’s misunderstanding does not constitute excusable neglect, to the extent that applicant seeks for its response period to be reopened by three days so that its opposition to the motion for summary judgment is deemed timely, the request is denied. Accordingly, opposer's motion to strike applicant’s response is granted and no further consideration will be given thereto.4 However, because of applicant's continued interest in this case, as evidenced by his submission of a late response and response to the motion to strike, the Board will not grant opposer's motion for summary judgment as conceded but will consider the motion on its merits. We now turn to the motion for summary judgment. A party is entitled to summary judgment when it has demonstrated that there is no genuine dispute as to any 4 We note that consideration of the merits of applicant’s response would not have altered the determinations made herein. Applicant’s response is accompanied by no supporting declarations or exhibits. Opposition No. 91191921 5 material fact and that it is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(a). Admissions obtained by Fed. R. Civ. P. 36 may form a proper basis for summary judgment if there is no genuine dispute as to any material fact. 8A C. Wright, A. Miller & R. Marcus, Federal Practice and Procedure Section 2264 (3d ed. 2009). In order for admissions to form the basis for summary judgment, those facts deemed admitted must be directed to the essential allegations of the case. See e.g., M.L.E. Music v. Kimble, Inc., 109 F.Supp.2d 469, 472 (S.D.W.Va. 2000) (when essential allegations in a case have been admitted, summary judgment is proper). Opposer’s evidence on summary judgment consists of the declarations, with related exhibits, of opposer’s Senior Research Advisor, Pedro Bustamante, (“Bustamante declaration”) and opposer’s counsel, Laura A. Chubb (“Chubb declaration”). The exhibits accompanying the Chubb declaration include copies of opposer’s requests for admissions served on applicant on July 1, 2010, for which applicant, to date, has failed to respond. These requests for admissions were deemed admitted by operation of Fed. R. Civ. P. 36(a)(3).5 Applicant did not move to withdraw or 5 Under Fed. R. Civ. P. 36(a)(3), a matter is admitted unless, within 30 days after being served with a request for admission, the party to whom the request is directed serves on the requesting party a written answer or objection addressed to the matter and signed by the party or by the party's attorney. Opposition No. 91191921 6 amend its admissions under Fed. R. Civ. P. 36(b) nor has it established excusable neglect for its failure to respond under Fed. R. Civ. P. 6(b)(1)(B). Accordingly, opposer’s requests for admissions stand admitted, and the facts in the requests for admissions are conclusively established and binding on applicant. Fed. R. Civ. 36(b); TBMP Section 407.04. Through the request for admissions being deemed admitted, the following pertinent facts are considered conclusively established: 1) “[T]he anti-virus computer software sold by Opposer and the goods and services of Applicant are related.” (Opposer’s Request to admit no.8). 2) “[T]he anti-virus computer software sold by Opposer is sold in similar, if not the same, channels of trade as the goods and services of Applicant.” (Opposer’s Request to admit no.9). 3) “[T]he anti-virus computer software sold by Opposer is sold to similar, if not the same, types of consumers as the goods and services of Applicant.” (Opposer’s Request to admit no. 10). 4) “[T]hat the goods ‘Computer software for use in safeguarding digital data transmitted over digital communication channels’ includes ensuring that such transmissions are free from viruses.” (Opposer’s Request to admit no. 11). 5) “[T]hat Applicant has not used in commerce the PANDA CORE TECHNOLOGY mark prior to December 23, 2008.” (Opposer’s Request to admit no. 12). 6) “[T]hat applicant has not used in commerce the PANDA CORE TECHNOLOGY mark prior to January 25, 2005.” (Opposer’s Request to admit no. 13). Opposition No. 91191921 7 7) “Applicant and Opposer are working in the common industry of Information Technology (IT) . . . . ” (Opposer’s request to admit no. 4). The following facts asserted in the Bustamante declaration are also undisputed. 7) “The trade mark Panda has been used continuously by Panda Security S.L. . . . in the U.S.A. to distinguish antivirus software and other computer security products since at least 1997.” (Paragraph b). 8) Goods bearing the Panda mark have been “sold at “appropriate stores” “and at least since 2003, can also be purchased through the website (www.pandasecurity.com . . . .”(Paragraph d). 9) “The trade mark PANDA has always been prominently shown at the web site www.pandasecurity.com . . . and also on the package of the relevant goods . . . . “ (Paragraph e). Standing Before we consider the merits of the motion for summary judgment, we must first determine opposer’s standing to bring this opposition proceeding. Standing is a threshold issue that must be proven by a plaintiff in every inter partes case. Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999). We find that opposer’s standing to bring this opposition proceeding is undisputed by applicant in view of applicant’s statement in its counterclaim (paragraph 8), such statement admitted via Opposer’s request to admit no. 4, that “Applicant and Opposer are working in the common industry of Information Technology (IT) that gives Opposer the possibility to dispute over the confusion between their marks . . . .” See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000) (direct Opposition No. 91191921 8 commercial interest satisfies the “real interest” test). Accordingly, we find that no genuine dispute of material fact exists regarding opposer’s standing. We will now turn to the merits of the likelihood of confusion claim. Priority We consider first the issue of priority. A party may establish its own prior proprietary rights in a mark through actual or technical trademark use or by use analogous to trademark use. Westrex Corp. v. New Sensor Corp., 83 USPQ2d 1215 (TTAB 2007). An applicant may rely on the filing date of its application as its constructive use date for purposes of priority. See Larami Corp. v. Talk To Me Programs Inc., 36 USPQ2d 1840, 1844-1845 (TTAB 1995). We find there is no genuine dispute of material fact that the earliest date on which applicant can rely for purposes of priority is the December 23, 2008 filing date of its intent to use application, Serial No. 77638609. Applicant has not shown use as of any earlier date, and applicant admits that it has no use in commerce of the PANDA CORE TECHNOLOGY mark prior to December 23, 2008. (Opposer’s Request to admit no. 12). Thus, in order for opposer to prevail on its priority claim, opposer must prove that it has a proprietary right in PANDA and that the interest was obtained prior to December Opposition No. 91191921 9 23, 2008. Because its pleaded registration (Registration No. 2921210) is subject to a counterclaim, opposer must rely on its common law rights to prove its priority. See, e.g., Massey Junior College, Inc. v. Fashion Institute of Technology, 492 F.2d 1399, 181 USPQ 272, n.6 (CCPA 1974) (“prior use need not be shown by an opposer relying on a registered mark unless the applicant counterclaims for cancellation). Opposer has submitted, as evidence of its prior rights, the Bustamante affidavit which states that opposer has been continuously using “the trade mark PANDA . . . in the U.S.A. to distinguish antivirus software and other computer security products since at least 1997” and that the “goods are sold at appropriate stores, and at least since 2003 . . . through the website.” The Bustamante affidavit also avers that “The trade mark PANDA has been prominently shown at the web site www.pandasecurity.com and other related web sites, and also on the package of the relevant goods . . . .” In addition, the Chubb declaration’s Exhibit E, shows a limited number of clear examples (archived web pages) of opposer’s use of PANDA in connection with antivirus and computer security products. We find from the totality of this evidence that there is no genuine dispute that opposer has proven use of PANDA prior to December 23, 2008 in connection with anti-virus software and computer security products. Weatherford/Lamb Opposition No. 91191921 10 Inc. v. C&J Energy Services Inc., 96 USPQ2d 1834 (TTAB 2010) (although limited examples of use provided, cumulative effect of declarations and exhibits establishes claim of priority use in connection with the services). Likelihood of confusion We now turn to the issue of likelihood of confusion. "We determine likelihood of confusion by focusing on ... whether the purchasing public would mistakenly assume that the [applicant’s goods and services] originate from the same source as, or are associated with," opposer’s goods and services. In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). Our likelihood of confusion 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 likelihood of confusion issue. See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). Each of the factors may, from case to case, play a dominant role. Id. at 567. In this case, opposer has introduced evidence relating to the similarities between the parties’ marks, the relatedness of the parties’ goods and services and the similarity of the parties’ channels of trade and classes of consumers. We must decide, for purposes of the present motion, Opposition No. 91191921 11 if there are any genuine factual issues in dispute regarding the DuPont factors that would need to be resolved at trial. Similarity of the Marks In comparing the marks PANDA and PANDA CORE TECHNOLOGY, we must consider the marks in their entireties in terms of appearance, sound, connotation and commercial impression. Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). The test is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression that confusion as to the source of the goods offered under the respective marks is likely to result. Furthermore, the focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975). Nevertheless, it is well settled that one feature of a mark may be more significant than another, and it is not improper to give more weight to this dominant feature in determining the commercial impression created by the mark, In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). Descriptive matter in a mark may have less significance in likelihood of confusion determinations. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d Opposition No. 91191921 12 1842, 1846 (Fed. Cir. 2000), (citations omitted). Where the entirety of one mark is incorporated within another, likelihood of confusion is often found. Johnson Publishing Co. v. International Development Ltd., 221 USPQ 155, 156 (TTAB 1982)(EBONY for cosmetics and EBONY DRUM for hairdressing and conditioner); In re Denisi, 225 USPQ 624, 626 (TTAB 1985) (PERRY'S PIZZA for restaurant services specializing in pizza and PERRY'S for restaurant and bar services). In this case we find there is no genuine dispute that opposer’s PANDA mark is incorporated in its entirety in applicant’s mark. We also find there is no genuine dispute that the word PANDA in applicant's PANDA CORE TECHNOLOGY mark is the dominant word portion of applicant’s mark. There is also no dispute that the terms CORE TECHNOLOGY are descriptive of applicant’s goods and services, namely, the “core” or central part of applicant’s goods and services are technologically based i.e., relating to or involving computer technology. Thus, given the undisputed descriptive nature of the terms CORE TECHNOLOGY, there is no genuine dispute that the parties’ marks are similar in sound, appearance and connotation to the extent they both contain the term PANDA. In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997) (DELTA CAFÉ similar in appearance sound and meaning to registered mark DELTA since Opposition No. 91191921 13 dominant portion is DELTA, café is disclaimed and design element is non-distinctive). Considering the marks in their entireties, and giving appropriate weight to the dominant features thereof, we find there is no genuine dispute that the parties’ marks are substantially similar in appearance, sound, meaning and commercial impression. Relatedness of the Goods and Services With respect to the relatedness of the parties' goods and services, it is undisputed and conclusively established that applicant's goods and services are related to opposer’s goods and services. See Opposer’s Requests to admit nos. 8 and 11. Therefore, we find no genuine dispute that the parties’ goods and services are related. Channels of Trade/Class of Purchasers With respect the channels of trade and class of purchasers, it is undisputed and conclusively established that both parties offer their goods and services in similar channels of trade and to similar consumers. Opposer’s Requests to admit nos. 9 and 10. Therefore, we find there is no genuine dispute of material fact that the channels of trade and the classes of consumers of the parties’ goods and services are similar. Opposition No. 91191921 14 Decision We find based on the record herein and the applicable law, that there is no genuine dispute of material fact that opposer has established its standing, priority, and likelihood of confusion as a matter of law. Opposer’s motion for summary judgment is granted, the opposition is sustained on the likelihood of confusion ground, and registration of applicant's mark (Serial no. 77638609) is refused. Proceedings are resumed. Applicant’s counterclaim to cancel opposer’s pleaded Registration No. 2921210 remains pending and the trial will proceed only on, and only involves, the pleaded ground set forth in the counterclaim to cancel Registration No. 2921210. Dates are reset as follows: Counterclaim Plaintiff's [that is, applicant’s] Pretrial Disclosures 6/13/11 Counterclaim Plaintiff's (applicant’s) 30-day Trial Period Ends 7/18/11 Counterclaim Defendant's (opposer’s) Pretrial Disclosures 8/2/11 Counterclaim Defendant's (opposer’s) 30-day Trial Period Ends 9/16/11 Counterclaim Plaintiff's (applicant’s) Rebuttal Disclosures 10/01/11 Counterclaim Plaintiff's (applicant’s) 15-day Rebuttal Period Ends 10/31/11 In each instance, a copy of the transcript of testimony together with copies of documentary exhibits, must be served on the adverse party within thirty days after completion of the taking of testimony. Trademark Rule 2.l25. Opposition No. 91191921 15 Briefs shall be filed in accordance with Trademark Rules 2.128(a) and (b). An oral hearing will be set only upon request filed as provided by Trademark Rule 2.l29.