Rubicon Communica-tions, LLCv.Nexgate, Inc. fka Social iQ Networks Inc. and Proofpoint, Inc.

Trademark Trial and Appeal Board

Dec 30, 2016

No. 91218371 (T.T.A.B. Dec. 30, 2016)

This Opinion is Not a
Precedent of the TTAB

Mailed: December 30, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Rubicon Communications, LLC
v.
Nexgate, Inc. fka Social iQ Networks Inc. and Proofpoint, Inc.
_____

Opposition No. 91218371
_____

Dwayne K. Goetzel of Meyertons, Hood, Kivlin, Kowert & Goetzel, P.C.,
for Rubicon Communications, LLC.

Michael S. Lemley of Nexgate, Inc. and Proofpoint, Inc.,
for Nexgate, Inc. fka Social iQ Networks Inc.
_____

Before Lykos, Kuczma, and Hightower,
Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:
Nexgate, Inc., formerly known as Social iQ Networks Inc., and Proofpoint, Inc.
(“Applicants”) seek to register the mark NEXGATE (in standard characters) on the
Principal Register for the following services in International Class 42:1

1 Application Serial No. 86155724, filed January 1, 2014, based on Applicant Nexgate, Inc.’s
claim of first use anywhere on April 10, 2013 and use in commerce since April 30, 2013 under
Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a). Assignment of the application to
Applicant’s successor Proofpoint, Inc. was recorded with the U.S. Patent and Trademark
Office (PTO) Assignment Recordation Branch on June 2, 2015, at Reel/Frame 5540/0262,
after commencement of this proceeding. As such, Proofpoint, Inc. is joined as a party
Opposition No. 91218371
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Providing a secured-access, members only website
featuring technology that gives members the ability to find,
audit, monitor and secure the user access and content
shared on social media network accounts, pages or sites.
Rubicon Communications, LLC (“Opposer”) opposes registration under Section
2(d) of the Trademark Act, 15 U.S.C. § 1052(d), asserting priority and a likelihood of
confusion with its mark NETGATE, registered (in standard characters) on the
Principal Register for the following goods in International Class 9:
• “Telecommunications products, namely, encryption devices to enable a
virtual private telecommunications network,”2 and
• “Computer hardware, namely, computer chips and modules for wireless
communications, data communications, and voice communications;
computer software for controlling, operating, and interfacing with wireless
communications systems; computer hardware and software enabling
wireless access to a computer-based information network; computer
network security software for protecting networks from unauthorized
access.”3
Opposer filed its brief on September 22, 2016. Applicants filed an answer denying
the allegations in the Notice of Opposition, but submitted neither evidence nor a brief.
Nonetheless, Opposer bears the burden of proving its claim of likelihood of confusion
by a preponderance of the evidence. Cunningham v. Laser Golf Corp., 222 F.3d 943,
55 USPQ2d 1842, 1848 (Fed. Cir. 2000).
We sustain the opposition pursuant to Trademark Act Section 2(d).

defendant. See Interstate Brands Corp. v. McKee Foods Corp., 53 USPQ2d 1910, 1911 n.1
(TTAB 2000) (adding assignee as a party at final decision); see also TBMP § 512.01 (2016).
2 Registration No. 3146119, issued September 19, 2006 from an application filed May 14,
2001; renewed. The mark is a typed drawing, as standard character drawings were known
before November 2, 2003. A typed mark is the legal equivalent of a standard character mark.
Trademark Manual of Examining Procedure (TMEP) § 807.03(i) (October 2016).
3 Registration No. 3161285, issued October 24, 2006 from an application filed March 10, 2004;
renewed.
Opposition No. 91218371
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I. Record
The record in this case consists of the pleadings and, without any action by the
parties, the file of the involved application. Trademark Rule 2.122(b)(1), 37 C.F.R.
§ 2.122(b)(1).
In addition, Opposer made of record by Notice of Reliance the following evidence:
• Copies of Opposer’s two pleaded registrations and pending application to
register the mark NETGATE (in standard characters), printed from the
PTO’s Trademark Electronic Search System (TESS) database;4
• Opposer’s requests for admission to Applicants, along with a statement that
Applicants failed to respond to the requests, such that the requests are
deemed admitted under FED. R. CIV. P. 36(a)(3);5 and
• Internet printouts from or concerning Opposer’s and Applicants’ websites
and social media presence.6
II. Opposer’s Standing and Priority
Standing is a threshold issue that must be proven by the plaintiff in every
inter partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270,
111 USPQ2d 1058, 1062 (Fed. Cir. 2014), cert. denied, 135 S. Ct. 1401 (2015); John

4 Notice of Reliance, Exhibit 1, 9 TTABVUE 6-14. Application Serial No. 86375940 recites the
following services in International Class 42: “Support services, namely, troubleshooting of
computer software problems; providing software updates and bug fixes; consulting services
regarding VPN and firewall configuration, and best practices for the use and installation of
software; maintenance of computer software; computer software development; computer
software consulting; consulting services in the field of design, selection, implementation and
use of computer hardware and software systems for others; technological consultation in the
technology field of computer hardware systems; consulting in the field of configuration
management for computer hardware and software.” The application was filed August 25,
2014, based on Opposer’s claim of first use anywhere on November 10, 1992 and use in
commerce since April 15, 1993, under Section 1(a) of the Trademark Act.
5 Notice of Reliance, Exhibit 3, 9 TTABVUE 2, 23-37. Opposer also submitted copies of its
interrogatories and requests for production to Applicants, but they are not properly of record
and have been given no consideration in this decision. See Trademark Rule 2.120(j)(3)(i).
6 Notice of Reliance, Exhibit 4, 9 TTABVUE 65-184.
Opposition No. 91218371
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W. Carson Found. v. Toilets.com Inc., 94 USPQ2d 1942, 1945 (TTAB 2010). Opposer’s
standing to oppose registration of Applicants’ mark is established by its pleaded
registrations, which the record shows to be valid and subsisting, and owned by
Opposer. See, e.g., Cunningham, 55 USPQ2d at 1844; Otter Prods. LLC v.
BaseOneLabs LLC, 105 USPQ2d 1252, 1254 (TTAB 2012). In addition, because
Opposer’s pleaded registrations are of record and Applicants did not counterclaim to
cancel them, priority is not an issue with respect to the goods covered by Opposer’s
pleaded registrations. Penguin Books Ltd. v. Eberhard, 48 USPQ2d 1280, 1286 (TTAB
1998) (citing King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ
108, 110 (CCPA 1974)).
III. Likelihood of Confusion
Our determination under Trademark Act Section 2(d) is based on an analysis of
all probative facts in evidence that are relevant to the factors bearing on the issue of
likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973); see also In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, however,
key considerations are the similarities between the marks and the similarities
between the goods or services, the first two du Pont factors. See Federated Foods, Inc.
v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The
fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences
in the essential characteristics of the goods and differences in the marks.”).
We address in turn the du Pont factors on which our decision rests.
Opposition No. 91218371
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A. Similarity of the Marks
We begin with consideration of the first du Pont factor, the similarity of the
parties’ marks. In a likelihood of confusion analysis, we compare the marks in their
entireties for similarities and dissimilarities in appearance, sound, connotation and
commercial impression. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). “The proper
test is not a side-by-side comparison of the marks, but instead whether the marks are
sufficiently similar in terms of their commercial impression such that persons who
encounter the marks would be likely to assume a connection between the parties.”
Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721
(Fed. Cir. 2012) (citation omitted).
Applicants’ mark is NEXGATE. Opposer’s mark is NETGATE. The marks differ
by only one letter, with Applicants’ mark incorporating an “X” instead of a “T” before
the suffix GATE. By way of their deemed admissions, Applicants admitted certain
similarities between the marks, including that their mark “sounds similar” and “is
visually similar” to Opposer’s mark.7 There is a slight difference in connotation
between the marks, with Opposer’s mark suggesting a gate to the Internet and
Applicants’ mark perhaps implying that it offers the “next” gate. Nonetheless, we find
these two nearly identical marks to be similar in appearance, sound, and overall
commercial impression. The first du Pont factor weighs in favor of a finding that
confusion is likely.

7 Requests for Admission 25 and 26, 9 TTABVUE 33.
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B. Similarity of the Goods and Services
The second du Pont factor assesses the similarity or dissimilarity of the parties’
goods and services. In comparing the goods and services, the issue to be determined
“is not whether the goods [and services] of plaintiff and defendant are likely to be
confused but rather whether there is a likelihood that purchasers will be misled into
the belief that they emanate from a common source.” Helene Curtis Indus. Inc. v.
Suave Shoe Corp., 13 USPQ2d 1618, 1624 (TTAB 1989). The parties’ goods and
services need not be similar or even competitive to support a finding of likelihood of
confusion. It is sufficient that the respective goods and services are related in some
manner, or that the conditions surrounding their marketing are such that they would
be encountered by the same consumers under circumstances that could, in light of
the similarity of the marks, give rise to the mistaken belief that they originate from
or are associated with the same source. See In re Albert Trostel & Sons Co., 29
USPQ2d 1783, 1785 (TTAB 1993).
As noted supra, Applicants’ services are “Providing a secured-access, members
only website featuring technology that gives members the ability to find, audit,
monitor and secure the user access and content shared on social media network
accounts, pages or sites.” Goods identified in Opposer’s pleaded Registration
No. 3161285 include “computer network security software for protecting networks
from unauthorized access.”
It is apparent from the identifications that Opposer’s goods and Applicants’
services offer means of securing access to computer networks on the one hand and
social media network accounts, pages, or sites on the other. Through their deemed
Opposition No. 91218371
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admissions, moreover, Applicants admitted that both parties’ marks are or will be
used in connection with “security issues relating to computer use” and “security for
information technology,” and that Opposer’s mark “can be used in connection with
security for issues relating to social media.”8
Therefore, we find that Applicants’ services are inherently related to the
“computer network security software for protecting networks from unauthorized
access” identified in Opposer’s Registration No. 3161285. The second du Pont factor
also weighs in favor of a likelihood of confusion.
IV. Conclusion
We have found that the critical first and second du Pont factors weigh in favor of
a likelihood of confusion, while no factors weigh against such a finding. Considering
the record evidence as a whole, we find that Opposer has carried its burden to
establish by a preponderance of the evidence that Applicants’ mark NEXGATE is
likely to cause consumer confusion with Opposer’s mark NETGATE when used in
association with the parties’ respective goods and services.
Decision: The opposition to registration of Applicants’ mark is sustained
pursuant to Section 2(d) as to Opposer’s Registration No. 3161285.

8 Requests for Admission 28-33, 9 TTABVUE 33-34.