Pure Storage, Inc.v.Insight Energy Ventures LLC DBA Powerley

Trademark Trial and Appeal Board

Dec 3, 2019

92068068 (T.T.A.B. Dec. 3, 2019)

December 3, 2019

Cancellation No. 92068068

Pure Storage, Inc.

v.
Insight Energy Ventures LLC DBA Powerley

Before Lykos, Shaw and Kuczma,
Administrative Trademark Judges.

By the Board:

Pure Storage, Inc. (“Petitioner”) seeks cancellation of the design mark
registered by Insight Energy Ventures LLC dba Powerley (“Respondent”) for the
following goods and services:
Computer application software for mobile phones, desk and laptop
computers, handheld computers, devices and tablets, namely, software
for tracking, monitoring, reporting on, evaluating, analyzing, managing,
and providing feedback, insights, and suggestions on home energy
consumption and conservation; Computer hardware and peripheral
devices, in International Class 9; and

Design and development of software and hardware for for [sic] home and
commercial energy management for tracking, monitoring, reporting on,
evaluating, analyzing, managing, and providing feedback, insights,
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
General Contact Number: 571-272-8500
General Email: TTABInfo@uspto.gov
THIS ORDER IS NOT A
PRECEDENT OF THE
TTAB
Cancellation No. 92068068

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suggestions, advice, and guidance on home energy consumption and
conservation, in International Class 42.1
As grounds for cancellation, Petitioner claims likelihood of confusion based on prior
common law use and ownership of two registrations for the design mark for
“flash memory array” in International Class 9;2 and “Installation, maintenance and
repair of computer hardware; technical support services, namely troubleshooting in
the nature of the repair of computer hardware” in International Class 37.3
Respondent denies the salient allegations in the petition for cancellation and asserts
affirmative defenses.
This proceeding now comes before the Board for consideration of Petitioner’s
motion (filed April 30, 2019) for partial summary judgment on the issues of (1)
standing; (2) priority; (3) the similarity or overlap of the parties’ goods and services;
and (4) the overlap in the channels of trade and classes of purchasers. In conjunction
with its brief in response to the motion for partial summary judgment, Respondent
filed a motion to exclude the declaration submitted in support of Petitioner’s motion
for partial summary judgment. The motion for partial summary judgment and motion

1 Registration No. 5156080 issued on March 7, 2017 based on an application for registration
filed on August 2, 2016. The color claim and mark description in the registration states: “The
color(s) orange is/are claimed as a feature of the mark. The mark consists of stylized symbol
geometrically shaped like the letter ‘P’, the color of which is three different shades of orange.”
Registrant claims April 11, 2016 as its date of first use and date of first use in commerce for
both classes of goods and services.
2 Registration No. 4165143 issued on June 26, 2012 based on an application filed on August
19, 2010. The registration includes the following description of the mark: “The mark consists
of stylized Hexagon ‘P’.”
3 Registration No. 4436830 issued on November 19, 2013 based on an application filed on
August 19, 2010. The description of the mark states: “The mark consists of Stylized Hexagon
P.”
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to exclude are fully briefed. Petitioner, however, filed a motion to strike Respondent’s
reply in support of its motion to exclude because the reply was filed three days late
and is over ten pages. Petitioner’s motion to strike the reply brief is granted.
Trademark Rule 2.127(a), 37 C.F.R. § 2.127(a) (“The time for filing a reply brief will
not be extended or reopened.”); see also Mattel Inc. v. Brainy Baby Co., 101 USPQ2d
1140, 1141 (TTAB 2011) (reply brief not considered because it exceeded the page
limit). Thus, we have not considered Respondent’s reply.
I. Respondent’s Motion to Exclude Declaration and Petitioner’s
Motion to Strike Reply Brief

We turn first to Respondent’s motion to exclude the declaration submitted in
support of Petitioner’s motion for partial summary judgment. With its motion,
Petitioner submitted the declaration of Eric J. Ball, counsel of record for Petitioner,
and ten exhibits introduced by Mr. Ball in the declaration. Respondent seeks to
exclude the declaration of Mr. Ball because Mr. Ball was not identified as a fact
witness or an expert witness on Petitioner’s initial disclosures and Petitioner never
supplemented its initial disclosures to add Mr. Ball as a fact witness. 17 TTABVUE
4. Respondent argues that Petitioner’s failure to disclose Mr. Ball on its initial
disclosures violates Fed. R. Civ. P. 37(c)(1) and was not substantially justified or
harmless. In addition, Respondent argues that because Petitioner did not produce
any documents in response to discovery requests, “Petitioner cannot rely on any
documents as evidence in the Declaration of Eric J. Ball.” Id.
In response, Petitioner argues that the motion to exclude should be denied
because: “(1) every exhibit attached to the Ball Declaration is admissible even without
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a declaration; (2) [Petitioner] gave [Respondent] notice that responsive documents to
its discovery requests were available and [Respondent] did not file a motion to compel;
and (3) [Petitioner’s] actions were substantially justified and harmless.” 19
TTABVUE 4.
Respondent’s motion to exclude the Ball declaration is denied. A party may
submit materials in support of a motion for summary judgment as attachments to its
brief or an affidavit or declaration in support of the motion. See TRADEMARK TRIAL
AND APPEAL BOARD MANUAL OF PROCEDURE (“TBMP”) § 528.05 (June 2019). Here, the
Ball declaration was submitted for the purpose of introducing and authenticating the
attached exhibits, not for the purpose of testifying to facts in support of the motion.
Moreover, even if we excluded the declaration, each of the attached exhibits is self-
authenticating and may be submitted with a summary judgment motion without
further evidence of authenticity. See TBMP § 528.05(e). Opposer’s Exhibits A, D, E,
F, G, I, and J comprise publicly available materials from Opposer’s Internet website
and include (1) the date they were accessed, and (2) their source (e.g., URL) in
accordance with Trademark Rule 2.122(e)(2), 37 C.F.R. § 2.122(e)(2). See also Safer,
Inc. v. OMS Inv. Inc., 94 USPQ2d 1031, 1039 (TTAB 2010). Petitioner’s Exhibits B
and C consist of status and title copies of Opposer’s pleaded registrations from the
USPTO’s TSDR database.4 Registrations printed from the TSDR database may be

4 The TSDR database can be accessed through the USPTO website at http://tsdr.uspto.gov/.
Cancellation No. 92068068

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received into the summary judgment record if submitted with the summary judgment
motion. See Trademark Rule 2.122(d)(2) and TBMP § 528.05(d).5
With respect to Respondent’s argument that Petitioner is precluded from relying
on the above materials because it did not produce them in response to requests for
production, the argument is without merit. The Board has held that where a party
does not unequivocally refuse to provide the requested information, imposing the
preclusion sanction under Fed. R. Civ. P. 37(c)(1) on summary judgment would be
unduly harsh, particularly given that discovery responses may be supplemented at
any time. Vignette Corp. v. Marino, 77 USPQ2d 1408, 1411 (TTAB 2005); cf. Presto
Prods., Inc. Nice Pak Prods., Inc., 9 USPQ2d 1895, 1896 n.5 (TTAB 1988) (party
cannot introduce evidence on summary judgment affirmatively withheld during
discovery). Here, Respondent admits that Petitioner, in response to the relevant
requests, stated that it would produce responsive, non-privileged documents at an
agreed upon time and place.6 18 TTABVUE 5. Because Respondent failed to pursue
Petitioner’s offer to produce documents, Respondent’s complaint that Petitioner did
not produce any documents in discovery carries no weight. See Midwestern Pet Foods

5 Exhibit H is a printout of Respondent’s involved registration. The exhibit is unnecessary
because the entire file of the involved registration is part of the record in a cancellation
proceeding without any action of the parties. Trademark Rule 2.122(b)(1); see Cold War
Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352, 92 USPQ2d 1626, 1628 (Fed. Cir.
2009).
6 Respondent did not submit evidence regarding Petitioner’s responses to its discovery
requests with its motion to exclude. Respondent, however, submitted copies of its discovery
requests and Petitioner’s responses with its response to the motion for summary judgment.
18 TTABVUE 56-87. Although Petitioner asserts improper unspecific, general objections to
the requests, Petitioner agrees to produce non-privileged responsive documents.
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Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 103 USPQ2d 1435, 1439 (Fed.
Cir. 2012) (Board did not abuse its discretion by refusing to strike plaintiff’s evidence
where defendant failed to follow up on plaintiff’s offer to produce the evidence at a
mutually agreeable time and place and in view of defendant’s failure to file a motion
to compel). Accordingly, Respondent’s request to preclude Petitioner’s exhibits under
Fed. R. Civ. P. 37(c)(1) is denied.7
II. Petitioner’s Motion for Partial Summary Judgment
Summary judgment is a pretrial device to dispose of cases in which “the movant
shows there is no genuine dispute as to any material fact and the movant is entitled
to judgment as a matter of law.” Fed. R. Civ. P. 56(a). In reviewing a motion for
summary judgment, the evidentiary record and all justifiable inferences to 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, 2029-30 (Fed. Cir. 1993); Olde Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200,
22 USPQ2d 1542, 1546 (Fed. Cir. 1992). We may not resolve disputes of material fact;
we may only ascertain whether a genuine dispute regarding a material fact exists.
See Lloyd’s Food Prods., 25 USPQ2d at 2029; Olde Tyme Foods, 22 USPQ2d at 1544.
A party moving for summary judgment has the burden of demonstrating a
particular fact is not disputed by citing to the record, including affidavits or
declarations, admissions or interrogatory answers; or showing that the cited

7 We note that the only evidence that we have considered in determination of the motion for
partial summary judgment are Opposer’s pleaded registrations. Because Petitioner pleaded
ownership of the registrations in the petition for cancellation, Petition for Cancellation at
¶ 4, Respondent had notice of the evidence.
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materials do not establish the absence or presence of a genuine dispute, or that the
adverse party cannot produce admissible evidence to support the fact. Fed. R. Civ. P.
56(c)(1). See generally Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). When the
moving party has supported its motion with sufficient evidence that, if unopposed,
indicates there is no genuine dispute of material fact, the burden of production shifts
to the non-moving party to demonstrate the existence of a genuine dispute of material
fact to be resolved at trial. Enbridge, Inc. v. Excelerate Energy LP, 92 USPQ2d 1537,
1540 (TTAB 2009).
In this case, Petitioner does not seek to dispose of the case by its summary
judgment motion. Instead, Petitioner seeks partial summary judgment on standing
and certain elements of its likelihood of confusion claim, namely, priority, the
similarity of the goods and services, and the overlap in the channels of trade and
classes of purchasers.
We find that a determination on summary judgment of only select elements of the
likelihood of confusion claim is inappropriate at this time. The purpose of a motion
for summary judgment is judicial economy, namely, to avoid unnecessary trial where
there is no genuine dispute of any material facts. See Larami Corp. v. Talk To Me
Programs Inc., 36 USPQ2d 1840, 1843 (TTAB 1995).8 Here, Petitioner filed its motion
the day before its pretrial disclosure deadline and, even if granted, would not dispose
of the Section 2(d) claim and avoid trial. Petitioner’s piecemeal prosecution of
individual likelihood of confusion factors that are not separately or collectively

8 See also Fed. R. Civ. P. 56 advisory committee’s note to 1937 amendment (“Summary
judgment procedure is a method for promptly disposing of actions …”).
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determinative of the Section 2(d) claim does little to promote judicial economy or
narrow the scope of the trial.
With respect to the question of Petitioner’s standing to bring the proceeding, we
find no genuine dispute of material fact that Petitioner has standing to pursue this
cancellation proceeding. Standing requires only that a plaintiff have a reasonable
belief that it is likely to be damaged by Respondent’s registration. See Empresa
Cubana del Tabaco v. General Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062
(Fed. Cir. 2014); Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir.
1999). A belief in likely damage may be shown be establishing a direct commercial
interest in the proceeding. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55
USPQ2d 1842, 1844 (Fed. Cir. 2000).
In this case, Petitioner alleges it will be damaged by the continued registration of
Respondent’s mark due to a likelihood of confusion with its pleaded marks.9 As
discussed above, Petitioner has submitted status and title copies of its pleaded
registrations with its motion.10 Petitioner’s reasonable belief that it will be damaged
and the status and title copies of its registrations showing ownership in its pleaded
mark are sufficient to establish Petitioner’s standing to petition to cancel the involved
registration.11 Id.; see also Vital Pharm. Inc. v. Kronholm, 99 USPQ2d 1708, 1712
(TTAB 2011) (standing established because pleaded registrations are of record);

9 Petition for Cancellation at ¶¶ 7-17 (1 TTABVUE 6-7).
10 Exhibits B and C, 14 TTABVUE 21-30.
11 As further explained below, Petitioner’s standing must be maintained throughout the
proceeding.
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Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581, 1586 (TTAB 2008)
(standing established by making of record copies of its pleaded registrations showing
the current status of the registrations and their ownership in opposer).
III. Decision
In view of the foregoing, Petitioner’s motion for partial summary judgment is
denied with respect to the issues of priority, the similarity of the goods and services,
and the overlap of the channels of trade and class of purchasers. The motion is
granted, in part, with respect to the Petitioner’s standing.12 We note, however, that
standing is not at issue so long as Petitioner’s pleaded registrations remain extant.
Should the registrations expire or be cancelled prior to final hearing, Petitioner’s
standing would be an issue to be proven at trial.
Proceedings are resumed. Trial dates are reset as follows:
Plaintiff's Pretrial Disclosures Due 12/6/2019
Plaintiff's 30-day Trial Period Ends 1/20/2020
Defendant's Pretrial Disclosures Due 2/4/2020
Defendant's 30-day Trial Period Ends 3/20/2020
Plaintiff's Rebuttal Disclosures Due 4/4/2020
Plaintiff's 15-day Rebuttal Period Ends 5/4/2020
Plaintiff's Opening Brief Due 7/3/2020
Defendant's Brief Due 8/2/2020
Plaintiff's Reply Brief Due 8/17/2020
Request for Oral Hearing (optional) Due 8/27/2020

12 The parties should note that, absent an agreement between the parties, evidence submitted
in connection with a motion for summary judgment or opposition thereto is of record only for
consideration of that motion. Any such evidence to be considered at final hearing must be
properly introduced in evidence during the appropriate trial period. See Levi Strauss & Co.
v. R. Joseph Sportswear Inc., 28 USPQ2d 1464 (TTAB 1993).
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Generally, the Federal Rules of Evidence apply to Board trials. Trial testimony is
taken and introduced out of the presence of the Board during the assigned testimony
periods. The parties may stipulate to a wide variety of matters, and many
requirements relevant to the trial phase of Board proceedings are set forth in
Trademark Rules 2.121 through 2.125. These include pretrial disclosures, matters in
evidence, the manner and timing of taking testimony, and the procedures for
submitting and serving testimony and other evidence, including affidavits,
declarations, deposition transcripts and stipulated evidence. Trial briefs shall be
submitted in accordance with Trademark Rules 2.128(a) and (b). Oral argument at
final hearing will be scheduled only upon the timely submission of a separate notice
as allowed by Trademark Rule 2.129(a).