Research in Motion Limitedv.Sensors in Motion Inc.

Trademark Trial and Appeal Board

Mar 26, 2012

No. 91188320 (T.T.A.B. Mar. 26, 2012)

Mailed:
March 26, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Research in Motion Limited

v.

Sensors in Motion Inc.
_____

Opposition No. 91188320
to application Serial No. 77368723
filed on January 10, 2008
_____

William R. Towns, Jeffrey J. Morgan and Monica M. Moussighi
of Novak Druce + Quigg LLP for Research in Motion Limited.

Sensors in Motion Inc., pro se.
______

Before Seeherman, Taylor and Bergsman, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Research in Motion, Limited has opposed the application
of Sensors in Motion, Inc. to register SENSORS IN MOTION, in
standard characters, and with SENSORS disclaimed, for the
following goods:
Automated process control system, namely, micro-
processor based hardware and software used to
monitor the status of industrial machinery,
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91188320
2
namely, turbines, generators and compressors;
Automated process control system, namely, micro-
processor based hardware and software used to
monitor the status of industrial processes,
namely, power generation, electrical distribution
and oil and gas processing; Automated self
contained electronic surveillance devices that can
be deployed to gather evidence or intelligence in
remote locations; Automated systems, namely,
software, hardware and communications devices for
planning, scheduling, controlling, monitoring and
providing information on transportation assets and
parts thereof; Avionic sensor systems, namely,
navigation systems; Brake controllers; Car
navigation computers; Computer cursor control
devices, namely, computer mouse; Computer hardware
and software system for remotely monitoring
environmental conditions and controlling devices
within a building, facility, grounds, or
designated spatial area; Computers for managing
control devices for aircraft; Electric and
electronic circuits; Electric navigational
instruments; Electric or electronic sensors for
robots, automobiles, aircraft, boats, people,
munitions, missiles, range finders, motorcycles,
scooters; Electrical controllers; Electrical
controlling devices; Electronic and electro-
mechanical gaming tables with video output;
Electronic and video game controllers incorporated
into exercise machines; Electronic apparatus for
the remote control of industrial operations;
Electronic control systems for machines;
Electronic controller to manage the power,
movement and functions of an elevator; Electronic
equipment for mine detection; Electronic motion
sensitive switches; Electronic navigational and
positioning apparatus and instruments; Game
controllers for computer games; Gyroscopes; Hand-
held units for playing electronic games for use
with external display screen or monitor;
Mechanical and electronic measuring machines for
identifying and analyzing structural damage to
vehicles; Navigation apparatus for vehicles;
Navigation apparatus for vehicles in the nature of
on-board computers; Remote controls for robots,
games, aircraft, vehicles and boats; Remote cursor
controls for computers; Satellite navigational
system, namely, a global positioning system (GPS);
Sensors and detector units for use in controlling
the actuation and operation of automotive safety
Opposition No. 91188320
3
apparatus and equipment; Video game interactive
hand held remote controls for playing electronic
games; Video game interactive remote control
units.

The application, Serial No. 77368723, was filed on
January 10, 2008, based on Section 1(b) of the Trademark Act
(intent-to-use).
Opposer has brought the opposition on the ground of
likelihood of confusion. Specifically, it alleges that
since prior to applicant’s actual or constructive first use
of its mark, opposer has been making, selling and/or
offering smartphones and related goods and services under
the mark RESEARCH IN MOTION; that it owns two registrations
for this mark; that its mark is famous; that applicant’s
mark SENSORS IN MOTION is confusingly similar to opposer’s
previously used and famous mark RESEARCH IN MOTION; that
applicant’s identified goods are identical to, overlap with,
or are highly related to goods and services for which
opposer has registered and is using the RESEARCH IN MOTION
mark; and that applicant’s mark, when used in connection
with its identified goods, is likely to cause confusion with
opposer’s previously used and registered mark RESEARCH IN
MOTION.
In its answer applicant denied the salient allegations
in the notice of opposition, although in its denial of the
allegation in paragraph 12, that applicant knew or had
reason to know of opposer’s prior rights in the mark
Opposition No. 91188320
4
RESEARCH IN MOTION when applicant filed its application,
applicant stated that “RESEARCH IN MOTION is and was a
relatively unknown Canadian company, famous for its heavily
advertised cell phones (Blackberry and CURVE), not for the
manufacturer.”
The record includes the pleadings and the file of the
opposed application. All of the evidence in this proceeding
has been submitted by notice of reliance. Opposer has
submitted copies of its pleaded registrations, taken from
the USPTO’s TARR (Trademark Application and Registration
Retrieval) database, as follows:
Registration No. 2036380 for RESEARCH IN MOTION
(typed drawing), for “computer software and
computer hardware and radio based devices and
parts therefore [sic], used in the fields of
business, science, medicine, education, defense,
entertainment and personal computing, to
facilitate the receipt and transmission of
computer information and data via a wireless
remote access to computer applications and network
environments with no requirement for a direct,
real-time interface” (Class 9);1 and

Registration No. 2833837 for RESEARCH IN MOTION
(typed drawing) for “electronic handheld units for
the wireless receipt and/or transmission of data
that enable the user to keep track of or manage
personal information and which may also have the
capacity to transmit and receive voice
communications; software for the redirection of
messages, global computer network e-mail, and
other data to one or more electronic handheld
units from a data store on or associated with a
personal computer or a server; software for the
synchronization of data between a remote station
or unit and a fixed or remote station or unit and

1 Issued February 11, 1997; Section 8 & 15 affidavits accepted
and acknowledged; renewed.
Opposition No. 91188320
5
software which enables and provides one-way and
two-way wireless connectivity to data, including
corporate data” (Class 9);
e-mail service; wireless data messaging services,
particularly services that enable a user to send
and/or receive messages through a wireless data
network; one-way and two-way paging services;
transmission and reception of voice communication
services; consultation on the topics of developing
and integrating one-way or two-way wireless
connectivity to data, including corporate data,
and/or communications” (Class 38); and
“educational services, namely, classes, seminars
and conferences for the purpose of providing
information to third parties to assist them in
developing and integrating one-way or two-way
wireless connectivity to data, including corporate
data, and voice communications” (Class 41).2

Opposer has also submitted applicant’s answers to
opposer’s interrogatories, requests for production of
documents and requests for admission. We point out that
responses to document production requests cannot be made of
record by notice of reliance. See Trademark Rule
2.120(j)(3)(ii). However, because applicant stated in its
brief that “Sensors in Motion has no objection to the
admissibility of evidence submitted,” we deem applicant to
have stipulated this material into the record. Applicant
has also admitted to the authenticity of the documents
provided by applicant in response to the document production
request. Response to Request for Admission 29. However,
even though many of applicant’s responses to the document

2 Issued April 20, 2004. At the time opposer filed its notice
of reliance a Section 8 affidavit had not been filed; in
accordance with Board policy, we have ascertained that a Section
8 affidavit was accepted on November 5, 2010.
Opposition No. 91188320
6
production requests state a document is attached, no actual
documents were submitted by opposer, and therefore
applicant’s responses to the document production request
have no probative value. Finally, opposer submitted a copy
of its annual report for 2010, taken from its own website.
Applicant has submitted a copy of the application
information, taken from the USPTO TARR database, for the
application that is the subject of this proceeding.
Applicant also submitted a copy of search results obtained
through the USPTO’s TESS (Trademark Electronic Search
System) database. Opposer has objected to this list of
marks (Exhibit 3), and we agree that it is not admissible
under a notice of reliance because it is not an official
record within the meaning of Trademark Rule 2.122(e). See
Calypso Technology, Inc. v. Calypso Capital Management, LP,
100 USPQ2d 1213, 1219 (TTAB 2011). We also point out that
even if the document had been submitted through a testimony
deposition, it would have very little probative value,
because the list does not include the goods or services for
which the various marks have been registered. We do
consider Exhibits 4 through 7, which are third-party
registrations for IN MOTION for magazines and directories
for the video production industry (Reg. No. 1580056); MUSIC
IN MOTION for dance presentation services (Reg. No.
1199928); and QUALITY IN MOTION for custom design of motors,
Opposition No. 91188320
7
gear motors and electronic controls therefore (Reg. No.
1424590); as well as opposer’s pleaded registration No.
2833837. All of these documents were obtained from the
USPTO’s TARR database.
Applicant’s second notice of reliance is its responses
to opposer’s discovery requests. A party cannot make its
own responses to discovery of record through a notice of
reliance, with one exception that is not relevant here.
However, because opposer submitted all of applicant’s
discovery responses under its own notice of reliance, they
are of record, and applicant may rely on them as well. We
note that, as part of this notice of reliance applicant has
submitted Exhibits 8 and 9, which appear to be screen shots
of a webpage. These exhibits were not made of record by
opposer as part of applicant’s discovery responses, and
opposer has objected to them as having not been previously
produced in discovery, and not meeting the requirements of
Safer Inc. v. OMS Investments Inc., 94 USPQ2d 1031 (TTAB
2010), for submitting under a notice of reliance material
printed from the Internet. The objection is well taken, and
these exhibits have not been considered.
Applicant’s third notice of reliance seeks to make of
record exhibits 14 though 17, consisting of Internet screen
shots. Opposer has objected to these exhibits as not
meeting the requirements of Safer. We sustain the
Opposition No. 91188320
8
objection. Safer is very clear that, in order for a
document obtained from the Internet to be made of record by
notice of reliance, the document must display its date of
publication or date that it was accessed and printed, and
its source (e.g., the URL). See also Calypso Technology
Inc. v. Calypso Capital Management LP, 100 USPQ2d at 1218.
Further, the propounding party must indicate generally the
relevance of the material being offered. None of these
exhibits bears the URL or the date they were printed on the
documents, and in addition, applicant has not stated the
relevance of the material in Exhibit 17.
Both parties filed briefs, and opposer filed a reply
brief.
Because opposer has made of record its registrations
for RESEARCH IN MOTION, it has established its standing.
See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842 (Fed. Cir. 2000); Lipton Industries, Inc. v. Ralston
Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
Further, in view of these registrations, priority is
not in issue with respect to the goods and services
identified in the registrations. King Candy Company v.
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108
(CCPA 1974).3

3 We note opposer’s assertion, in its brief, that it has used
its marks as early as 1991. It appears that opposer is relying
on the first use date claimed in its registrations as the support
Opposition No. 91188320
9
We turn now to the substantive issue before us, that of
likelihood of confusion. Our determination of this issue is
based on an analysis of all of the probative facts in
evidence that are relevant to the factors set forth in In re
E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973). See also, In re Majestic Distilling Co., Inc.,
315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003).
The first du Pont factor that we examine is whether
opposer’s mark is famous, since the factor of fame of the
prior mark, “when present, plays a ‘dominant’ role in the
process of balancing the DuPont factors.” Recot Inc., v.
Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir.
2000). To prove the fame of its mark opposer relies on the
information provided in its 2010 annual report. However,
the annual report, printed from opposer’s own website, is
not evidence of the truth of the information contained on
the webpages. Rather, as stated in Safer, the Internet
pages are of record for “the limited purpose of
demonstrating what the documents show on their face.”
Safer, 94 USPQ2d at 1039. We also point out that even if
the information in the annual report could be taken as true,
it does not provide information as to the extent of usage of
RESEARCH IN MOTION as a trademark; for example, the sales

for this statement. Opposer is advised that the use date claimed
in a registration is not evidence that the mark was in actual use
on that date. Trademark Rule 2.122(b)(2).
Opposition No. 91188320
10
figures do not list the particular brands which are
associated with the products sold. The mark RESEARCH IN
MOTION does not even appear on the cover of the annual
report, which features the letters RIM and the date 2010 at
the top of the page, below which is a very large picture of
a smartphone bearing the mark BLACKBERRY. The next page of
text again begins with “RIM,” followed by text about how
“RIM is focused on delivering rich user experiences to our
customers through the design and engineering of BLACKBERRY
smartphones….” The only mark that appears on this page is
BLACKBERRY, which is featured as prominently as the apparent
trade name RIM. RESEARCH IN MOTION does not appear at all.
In fact, it is not until page 6 of the report that RESEARCH
IN MOTION is mentioned, and it is used as a trade name, not
a trademark. The text mentions that “BLACKBERRY products
and services are used by millions of customers around the
world….” However, there is no indication about how or if
the mark RESEARCH IN MOTION is used.
We have frequently said that, given the great deference
to which a famous mark is entitled in terms of the dominant
role fame plays in the likelihood of confusion analysis, it
is the duty of a party asserting that its mark is famous to
clearly prove it. Lebanon Seaboard Corp. v. R&R Turf Supply
Inc., 101 USPQ2d 1826, 1831 (TTAB 2012); Leading Jewelers
Guild Inc. v. LJOW Holdings LLC, 82 USPQ2d 1901, 1904 (TTAB
Opposition No. 91188320
11
2007). Opposer has failed to prove that its mark RESEARCH
IN MOTION is famous.
The next du Pont factor we consider is the similarity
of the goods/services. It is a well-established principle
that it is not necessary that the goods or services be
identical or even competitive in nature in order to support
a finding of likelihood of confusion, it being sufficient
that the goods or services are related in some manner and/or
that the circumstances surrounding their marketing are such
that they would be likely to be encountered by the same
persons under circumstances that would give rise, because of
the marks employed thereon, to the mistaken belief that they
originate from or are in some way associated with the same
producer. In re Home Builders Assn. of Greenville, 18
USPQ2d 1313, 1317 (TTAB 1990).
In its brief opposer asserts this principle of law, and
then points to certain goods listed in applicant’s
identification, namely “electronic navigational and
positioning apparatus and instruments; game controllers for
computer games; gyroscopes; hand-held units for playing
electronic games for use with external display screen or
monitor,” and asserts that these are related to the Class 9
goods identified in opposer’s registrations, without any
Opposition No. 91188320
12
explanation as to how or why these goods are related.4 The
only evidence that opposer mentions is applicant’s
admissions that “handheld electronic devices may be used by
consumers to play video games” (Admission No. 14); that
“handheld electronic devices may be used by consumers to
play electronic games” (Admission No. 15); and that
“handheld electronic devices may be used for global
positioning system (GPS) navigation: (Admission No. 18).
Opposer also asserts in its brief that “modern handheld
electronic devices (including smartphones) such as those
sold under the RESEARCH IN MOTION Mark by RIM are commonly
used to play electronic games and for GPS navigation”
p. 19.
The problem with opposer’s argument is that it has not
submitted any evidence to prove its statement that handheld
electronic devices such as those it sells are used to play
electronic games and for GPS navigation. The only
information in the record about opposer’s goods is the
identification in its two registrations. And the electronic
handheld units identified in those registrations are “for
the wireless receipt and/or transmission of data that enable
the user to keep track of or manage personal information and

4 Applicant’s identification is for an extremely large number of
goods. We assume that in its brief opposer has highlighted those
goods that it considers the closest to opposer’s goods, and
therefore we have concentrated our analysis on them.

Opposition No. 91188320
13
which may also have the capacity to transmit and receive
voice communications.” There is no indication that these
units play electronic games or are used for GPS navigation.
We acknowledge that, as identified in Registration No.
2036380, opposer’s identified “computer software and
computer hardware and radio based devices and parts
therefore [sic]” are used in the field of, inter alia,
entertainment, but the further description of the purpose of
this hardware, software and radio-based devices includes the
limiting language that it is “to facilitate the receipt and
transmission of computer information and data via a wireless
remote access to computer applications and network
environments with no requirement for a direct, real-time
interface.” Even if we were to view the field of
“entertainment” as including games, in view of the further
limitation of these goods we cannot conclude that they are
related to the “hand-held units for playing electronic games
for use with external display screen or monitor” identified
in applicant’s application. We simply cannot read opposer’s
identifications so broadly as to find that they encompass a
hand-held device for playing electronic games.
Opposer may, of course, rely on its registrations, and
the goods and services identified therein, without
submitting any additional evidence that would independently
show relatedness of the goods and services. However, based
Opposition No. 91188320
14
on the goods and services as they are identified in the
respective registrations and application, we cannot conclude
from these descriptions that any of opposer’s goods and
services is related to applicant’s goods. The fact that the
parties’ identified goods and services involve computer
hardware and software is simply an insufficient basis to
find them related, given the ubiquitous nature of computers.
See Information Resources Inc. v. X*Press Information
Services, 6 USPQ2d 1034, 1038 (TTAB 1988) (“there is no ‘per
se’ rule mandating that likelihood of confusion is to be
found in all cases where the goods or services in question
involve computer software and/or hardware”).
With respect to the channels of trade, again opposer
has made some unsupported arguments. It argues that because
the parties’ goods as identified in their respective
application and registrations are not limited as to trade
channels, “there is therefore a presumption that the
respective goods and services move through the same channels
of trade for those types of goods and services to the same
classes of consumers.” Brief, p. 20. However, it is more
accurate to say that, absent restrictions in the channels of
trade, the goods and services are presumed to move through
all channels of trade appropriate for those goods.5 Opposer

5 We acknowledge that opposer took the quoted language from the
opinion in Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d
1261, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002), but that statement
Opposition No. 91188320
15
has not submitted any information about the channels of
trade for its goods, although based on the wide variety of
fields of use listed in the identification (business,
science, medicine, education, defense, entertainment and
personal computing), and the number of people in these
various fields, we think it acceptable to find that
opposer’s goods would be used by the public at large. The
only information we have about applicant’s channels of trade
is the interrogatory responses submitted by opposer. In
particular, in response to the interrogatory (No. 4) to
describe the target class of purchasers for each separate
good or line or category of goods offered or intended to be
offered under applicant’s mark, applicant listed “defense
contractors, tier one auto, industrial equipment and
electronic equipment.” And in response to the interrogatory
(No. 3) to identify the chain of distribution from applicant
to the ultimate customer or user, and to describe the
classes of consumers which ultimately do or are intended to
buy or use the good, applicant stated:
Gyroscope—from applicant to a system, or system of
systems integrator. The integrator to a system of
system integrator or end user.

IMU and INS—from applicant to a system of systems
integrator. The integrator to a system of system
integrator or end user.

was made in the context of the finding that the parties’ goods
and services were related. Opposer has not shown that the goods
and services herein are related.

Opposition No. 91188320
16

Given the lack of information about opposer’s channels of
trade, and the lack of evidence as to how applicant’s chain
of distribution would interface with whatever channels of
trade in which opposer sells its goods or renders its
services, we cannot conclude based on the evidence of record
that the goods and services identified in opposer’s
registrations and the goods identified in applicant’s
application travel in the same channels of trade.6
Because opposer has not met its burden to prove that
applicant’s identified goods are related to its identified
goods and services and that they move in the same channels
of trade, it would seem impossible for opposer to show that

6 Although opposer has not argued this in its brief, we note
that in response to the requests for admission (Nos. 24 and 25)
to “admit that the goods cited in Applicant’s [application] are
intended to be sold in the same trade channels as the goods cited
in [opposer’s two pleaded registrations],” applicant answered
“Possibly, but unlikely.” It is difficult to know what applicant
meant by this response. Applicant is acting pro se in this
matter, and may not have been aware of the manner in which a
lawyer would have responded to these requests. Certainly other
requests for admission have been answered somewhat unorthodoxly,
e.g., “do not know” (Nos. 16 and 17); “uncertain” (No. 19). We
assume that opposer viewed the responses “possibly, but unlikely”
as a denial of the request, because opposer did not point to it
in support of its position, and we regard it as a denial as well.
The purpose behind the requests for admission procedure is “to
facilitate proof with respect to issues that cannot be eliminated
from the case, and to narrow the issues by eliminating those that
can be.” Rule 36 of the Federal Rules of Civil Procedure, Notes
of Advisory Committee on Rules—1970 Amendment. It is not to play
“gotcha” because an unrepresented party uses unorthodox language
in its response. The fact that opposer did not file a motion to
test the sufficiency of the answer, under 36(a)(5), and did not
refer to the response in its brief, shows that opposer understood
this response to its two requests for admission as a denial of
them.
Opposition No. 91188320
17
applicant’s use of its mark for such goods is likely to
cause confusion. Even when marks are identical, there must
be some relatedness between the goods, or the opposer would
have a right in gross. See The University of Notre Dame du
Lac v. J.C. Gourmet Food Imports Co., Inc., 703 F.2d 1372,
217 USPQ 505, 507 (Fed. Cir. 1983), where the Court stated
that even with a famous mark “it must also be established
that there is a reasonable basis for the public to attribute
the particular product or service of another to the source
of the goods or services associated with the famous mark.
To hold otherwise would result in recognizing a right in
gross, which is contrary to the principles of trademark law
and to concepts embodied in 15 USC § 1052(d).” In this
case, of course, opposer has not shown that its mark is
famous, or that the goods and services are related, so to
find likelihood of confusion on the basis of the marks, even
if the marks were substantially the same, would result in
giving opposer a right in gross.
However, to complete our analysis, we now consider the
similarity of the marks. Obviously, both marks end with the
words IN MOTION. However, they have very different initial
words, and these differences contribute to significant
differences in the appearance and pronunciation of the
marks. The marks also have different connotations.
Applicant has explained, in the interrogatory response
Opposition No. 91188320
18
submitted by opposer, (No. 12) that it chose the mark
SENSORS IN MOTION because it defines what the company does,
which is to “make sensors that measure motion inertially,
which is by definition how navigation works.” The response
goes on to state that “Most of our competitors, suppliers
use the words inertial, sensor, sensing, and motion in the
literature and websites. Some use ‘everything in motion,’
‘sensors to measure motion,’ ‘devices (gyroscopic sensors)
that sense motion,’ etc.” Thus, as used in the mark, IN
MOTION refers to what the SENSORS do. The term IN MOTION in
opposer’s mark, on the other hand, does not have this
meaning. Opposer claims that its mark is arbitrary, brief,
p. 16, although it also asserts that RESEARCH brings to mind
a connection to technology-related goods. The connotation
of the mark RESEARCH IN MOTION suggests a company or product
that continues to make technology advances. In other words,
the phrase IN MOTION common to both marks has a different
meaning in each mark, and the marks in their entireties have
different meanings. The commercial impressions of the marks
are therefore different as well.
The only other du Pont factor discussed by the parties
is the absence of evidence of actual confusion. However,
because it appears that applicant’s use of the mark has been
limited to gyroscopes, the absence of instances of actual
confusion carries no weight in our analysis.
Opposition No. 91188320
19
The burden is on opposer to demonstrate likelihood of
confusion. It has failed to do so. On this record, we find
that opposer has not shown that its mark RESEARCH IN MOTION
is famous, that applicant’s goods and opposer’s goods and
services are related or travel in the same channels of
trade, and that the marks are confusingly similar. In view
therefore, opposer has not shown that applicant’s mark for
its identified goods are likely to cause confusion with
opposer’s registered RESEARCH IN MOTION marks.
Decision: The opposition is dismissed.