Rubicon Communications LLCv.Netigate AB

Trademark Trial and Appeal Board

Mar 14, 2017

No. 91222206 (T.T.A.B. Mar. 14, 2017)

This Opinion is Not a
Precedent of the TTAB

Mailed: March 14, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Rubicon Communications LLC
v.
Netigate AB
________

Opposition No. 91222206
_______

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

Shawn M. Dellegar of Crowe & Dunlevy, P.C., for
Netigate AB.
_____

Before Zervas, Kuczma and Gorowitz,
Administrative Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:
Netigate AB (“Applicant”) seeks to register two marks, namely,
(i) 1 for the following services:

1 Application Serial No. 86232226, filed March 26, 2014 pursuant to Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), claiming a bona fide intent to use the mark in commerce.
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“business inquiries; market research services; opinion
polling; computerized database management;
compiling, input and systematic ordering of information
in databases” in International Class 35, and
“design and development of computer software; design
and development of online computer software systems;
computer software development in the field of mobile
applications for conducting online surveys; design,
development, and implementation of software for
conducting online surveys” in International Class 42.
(ii) NETIGATE2 in standard characters for the above-recited International Class
35 services.
Rubicon Communications LLC (“Opposer”) asserts confusion is likely under
Trademark Act Section 2(d), 15 U.S.C. § 1052(d), with its mark NETGATE which is
the subject of the following two registrations:
● Registration No. 3161285 (issued October 24, 2006 and
renewed January 11, 2016) in standard character form
claiming first use on November 10, 1992 and first use in
commerce on April 15, 1993 for:
“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

The mark is described in the application record as consisting of “Netigate” followed by the
image of an “N” in white inside a darker box.
2 Application Serial No. 86231122, filed March 25, 2014 pursuant to Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), claiming a bona fide intent to use the mark in commerce,
as well as pursuant to Section 44(e) of the Trademark Act, 15 U.S.C. § 1126, based on Swedish
Registration No. 374028, registered August 5, 2005. Applicant cancelled its intent to use
claim on January 30, 2015.
Opposition No. 91222206
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for protecting networks from unauthorized
access” in International Class 9.
● Registration No. 3146119 (issued September 19, 2006,
renewed April 16, 2016) in typed form3 claiming first use
and first use in commerce on January 1, 1999 for:
“telecommunications products, namely,
encryption devices to enable a virtual private
telecommunications network” in
International Class 9.
In its answer, Applicant denied the salient allegations of the amended notice of
opposition. Applicant also pleaded certain affirmative defenses, which it did not
discuss in its briefs and therefore has waived.
Both parties filed main briefs.
The Record
In addition to the pleadings and Applicant’s opposed application, which is
automatically of record pursuant to Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b),
the evidence of record consists of the following:
● Opposer’s notice of reliance submitting:
- Printouts from the USPTO’s TESS database for
Opposer’s pleaded registrations and application
demonstrating their status and ownership by Opposer;
- Papers from Applicant’s involved applications;
- Applicant’s responses to certain interrogatories,
requests for admissions and requests for production
propounded by Opposer; and

3 Prior to November 2, 2003, “standard character” marks were known as “typed” drawings. A
typed mark is the legal equivalent of a standard character mark. In re Viterra Inc., 671 F.3d
1358, 101 USPQ2d 1905, 1909 n.2 (Fed. Cir. 2012) (“until 2003, ‘standard character’ marks
formerly were known as ‘typed’ marks.”)
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- Webpage printouts.
● Applicant’s notice of reliance submitting:
- Papers from Applicant’s involved applications;
- USPTO records for Opposer’s pleaded registrations and
pleaded application;
- Opposer’s responses to certain interrogatories, requests
for admissions and document requests propounded by
Applicant; and
- Webpage printouts.

Preliminary Issue
In addition to its two registrations, Opposer asserted in its notice of opposition,
and discusses in its brief, an application for the mark NETGATE (application Serial
No. 86375940, filed August 25, 2014) filed pursuant to Section 1(a) of the Trademark
Act, claiming first use on November 10, 1992 and first use in commerce on April 15,
1993. Because the filing date of this application is after the filing date of Applicant’s
application, Opposer may not properly rely on its application Serial No. 86375940 as
a basis for establishing any priority or opposing registration of Applicant’s mark. See
Trademark Act Section 2(d).4 We give no further consideration to this application or
the arguments set forth in Opposer’s and Applicant’s briefs regarding this
application.

4 Opposer is advised that the date of use must be established by competent evidence, properly
adduced at trial and the specimen in an application or registration file is not evidence in an
inter partes proceeding on behalf of the registrant unless it has been identified and introduced
in evidence as an exhibit during the testimony period. UMG Recordings, Inc. v. Charles
O’Rourke, 92 USPQ2d 1042, 1047 (TTAB 2009); Osage Oil & Transportation, Inc. v. Standard
Oil Co., 226 USPQ 905, 906 n. 4 (TTAB 1985); Eikonix Corp. v. CGR Medical Corp., 209
USPQ 607, 613 n.7 (TTAB 1981). See also TBMP § 704.04 (Jan. 2017).
Opposition No. 91222206
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While not clear, Opposer may contend that it alleged common law rights in the
NETGATE mark in its notice of opposition; at paragraph 8 of the notice of opposition
Opposer asserts that prior to the filing dates of Applicant’s applications, NETGATE
“was in use in commerce … [and] Opposer claims first use of Opposer’s Mark in
application Ser. No. 86375940 back to at least as early as April 15, 1993. Opposer
therefore has priority of rights to Applicant.”5 However, Opposer introduced no
evidence that we may consider which establishes a priority date for any of the services
set forth in application Serial No. 86375940. At best, it has submitted with its notice
of reliance a copy of a webpage from networksolutions.com that lists “Creation Date:
1997-07 … ”6 Without more, this date is hearsay, and the webpage does not indicate
for what services, if any, the NETGATE mark was used in 1997. Further, Opposer’s
answer to Interrogatory No. 5, set forth below, which Applicant introduced into the
record, is not probative because it does not identify the date of first use for each
service and does not identify the service or good corresponding to each mark so as to
be of help to Opposer in establishing a prior first use date for any of the services listed
in application Serial No. 86375940. The interrogatory and answer state:
Interrogatory No. 5
For each NETGATE Mark identified in Interrogatory
No. 4,7 identify the date on which Opposer or any
predecessor(s) first used each mark.

5 Applicant denied the allegations of paragraph 8 in its answer.
6 Opposer’s Not. of Rel., Exh. 4, 7 TTABVUE 148.
7 Opposer’s answer to Interrogatory no. 4, which asked for the identification of any mark ever
used by Opposer, was “U.S. Reg. Nos. 3161285 and 3146119, prior U.S. Reg. No. 2038157,
U.S. Appl. Ser. No. 86375940, and on www.netgate.com.”
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Response:
With respect to Reg. No. 3146119, the first use date alleged
by Opposer’s predecessor was in 1999; with respect to the
remaining marks, the first use date was in 1992.8
Thus, considering the trial record as a whole, as well as the notice of opposition,
we find that Opposer did not pursue a claim of common law priority based on the
services set forth in application Serial No. 86375940, and even if the trial record can
be construed in Opposer’s favor as pursuing such a claim, that Opposer did not
establish it used NETGATE in connection with such services prior to the filing date
of Applicant’s applications.
Standing
Standing is a threshold issue that must be proven by a plaintiff in every inter
partes case. To establish standing in an opposition or cancellation proceeding, a
plaintiff must show “both a ‘real interest’ in the proceedings as well as a ‘reasonable
basis’ for its belief of damage.” Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753
F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014) (quoting ShutEmDown Sports,
Inc., v. Lacy, 102 USPQ2d 1036, 1041 (TTAB 2012)); Ritchie v. Simpson, 170 F.3d
1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999); Lipton Industries, Inc. v. Ralston
Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982).
Opposer has established its standing through its submission of TESS printouts
regarding its pleaded registrations, which demonstrate that the registrations are
valid and subsisting, and owned by Opposer. See, e.g., Cunningham v. Laser Golf

8 Applicant’s Not. of Rel., Exh. 2, 8 TTABVUE 460.
Opposition No. 91222206
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Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000) (party’s ownership of
pleaded registration establishes standing).
Priority and Likelihood of Confusion
Regarding priority, because Opposer’s pleaded registrations are of record, and
because Applicant has not filed a counterclaim to cancel Opposer’s pleaded
registrations, priority is not an issue with respect to the goods covered by Opposer’s
extant, 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)).
Turning now to the question of likelihood of confusion, we note that our
determination is based on an analysis of all of the facts in evidence that are relevant
to the factors bearing on the issue of likelihood of confusion. M2 Software, Inc. v. M2
Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006); 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., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In
considering the evidence of record on these factors, we keep in mind that “[t]he
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.” Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
The Marks
We first consider the du Pont factor concerning the marks, and consider them in
their entireties as to appearance, sound, connotation and commercial impression, to
determine the similarity or dissimilarity between them. In re Viterra, 671 F.3d 1358,
Opposition No. 91222206
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101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting du Pont); Palm Bay Imp., 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 Services Inc. v. Triumph Learning LLC, 668
F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (citing Leading Jewelers Guild,
Inc. v. LJOW Holdings, LLC, 82 USPQ2d 1901, 1905 (TTAB 2007)).
Because the similarity or dissimilarity of the marks is determined based on the
marks in their entireties, the analysis cannot be predicated on dissecting the marks
into their various components. In re National Data Corp., 753 F.2d 1056, 224 USPQ
749, 751 (Fed. Cir. 1985). However, different features may be analyzed to determine
whether the marks are similar. Id. (nothing improper in giving more or less weight
to a particular feature of a mark, provided the ultimate conclusion rests on a
consideration of the marks in their entireties). The average purchaser normally
retains a general rather than a specific impression of trademarks. See Inter IKEA
Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1740 (TTAB 2014); L’Oreal S.A. v. Marcon,
102 USPQ2d 1434, 1438 (TTAB 2012).
Opposer’s mark is a combination of the terms NET and GATE. Applicant agrees
that the terms “NET” and “GATE” are within Applicant’s marks9, but adds “[t]he

9 Applicant’s brief at 7, 11 TTABVUE 12 (“The letter ‘I’ in the middle of Applicant’s
NETIGATE Marks creates an important visual separation between the terms ‘NET’ and
‘GATE’”).
Opposition No. 91222206
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letter ‘I’ in the middle of Applicant’s NETIGATE Marks creates an important visual
separation between the terms ‘NET’ and ‘GATE’”; “[t]he common term ‘NET’ in the
respective marks is descriptive of the Internet or networking and would not be the
focus of the consumer”; and “the portion of the mark following the letters ‘NET’ is the
predominant, and distinguishing, portion of the marks.”10 Applicant adds that the
“term ‘IGATE’ connote[s] ‘investigate,’ which relates to its investigative and research
services, business inquiries, polling, and surveys”; and “Opposer’s mark includes the
visual term ‘GATE’ suggesting internet or network access.”11
The word “net” is defined, inter alia, as “the Internet” and the word “gate” is
defined, inter alia, as “a device (as in a computer) that outputs a signal when specified
input conditions are met • logic gate.”12 Even if there is some inherent weakness to
Opposer’s marks in connection with its goods, we are not persuaded by Applicant’s
argument that consumers would perceive differences between the marks in view of
the inclusion of the letter “I” between the defined terms “net” and “gate.” There is

10 Id.
11 Id. Applicant’s webpage states:
Netigate (Net = Internet, Igate = Investigate) is the leading
European provider of cloud-based services for online surveys
that are primarily used for voice of customer, employee
performance and market research.
Applicant’s Not. of Rel., 8 TTABVUE 501.
12 Definitions from http://www.dictionary.com/browse/net?s=t and https://www.merriam-
webster.com/dictionary/gate. We take judicial notice of these definitions. The Board may take
judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food
Imp. Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983),
including online dictionaries that exist in printed format or have regular fixed editions. In re
Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).
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insufficient evidence in the record for us to conclude that consumers would view
“igate” as a reference to “investigate,” as stated on Applicant’s website. There is no
information about the extent of exposure of Applicant’s webpage to consumers, and
Applicant’s webpage is the only place where this reference is made. Applicant has not
introduced any instances of third party use of similar marks for similar goods. Rather,
we find that the marks are highly similar in view of their shared terms NET and
GATE, in the same order, only separated by the letter “I” which minimally changes
Applicant’s mark. We therefore find the marks similar in sound, appearance, and
commercial impression. “Two marks may be found to be confusingly similar if there
are sufficient similarities in terms of sound or visual appearance or connotation.”
Kabushiki Kaisha Hattori Seiko v. Satellite Int’l, Ltd., 29 USPQ2d 1317, 1318 (TTAB
1991), aff’d mem., 979 F.2d 216 (Fed. Cir. 1992); In re Mr. Recipe, LLC, 118 USPQ2d
1084, 1089 (TTAB 2016).
The Goods and Services
The next du Pont factor we consider is the factor regarding the similarities or
dissimilarities between Opposer’s and Applicant’s goods and services. Opposer
argues:
Applicant lists very broad items such as “computerized
database management” and “compiling, input and
systematic ordering of information in databases.” Opposer,
on the other hand, includes goods … such as computer
hardware for data communications, and computer software
for controlling, operating and interfacing with wireless
communication systems. Consumers could easily believe,
for example, that Opposer’s software for data
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communications could be used in connection with services
for data management.13
Opposer also cites to Applicant’s responses to certain requests for admission in
which Applicant admits to use, or intent to use, of its mark in connection with various
recited services, and refers us to various third-party registrations, not in the record,
which include goods in International Class 9 and services in International Classes 35
and 42.14 The requests for admission add little to the evidentiary record because our
decision must be based on the goods and services described in the identifications of
goods and services, and the requests closely parrot those identifications. The third-
party registrations are not of record and the Board does not take judicial notice of
third-party registrations; they hence are not further considered. Even if these
registrations could be considered, they would not be probative because they do not
necessarily concern the same goods and services which are the subject of this
opposition; Applicant only notes that the goods and services of the registrations are
in the same International Classes as Opposer’s and Applicant’s goods and services.
Opposer is left with no evidence to support its contention that its goods and
Applicant’s services are related. With regard to the International Class 35 services,
we see no natural relationship between Opposer’s goods set forth in both asserted
registrations, and Applicant’s International Class 35 services. Even Opposer’s
computer hardware and software for communications purposes and access to
information networks have no natural relationship to Applicant’s services, including

13 Opposer’s brief at 14, 10 TTABVUE 15.
14 Opposer’s brief at 14-15, 10 TTABVUE 15-16.
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Applicant’s “compiling, input and systematic ordering of information in databases,”
as argued by Opposer (“Consumers could easily believe, for example, that Opposer’s
software for data communications could be used in connection with services for data
management.”)15
However, with regard to Applicant’s Class 42 services and Opposer’s computer
software for controlling, operating, and interfacing with wireless communications
systems, for enabling wireless access to a computer-based information network, and
for protecting networks from unauthorized access (hereinafter “Opposer’s Computer
Software”) set forth in Registration No. 3161285, we find such software may be the
end product of Applicant’s services entailing the broadly-worded “design and
development of computer software.” A consumer considering software for the
purposes noted in Opposer’s identification may opt either to purchase Opposer’s
Computer Software or use Applicant for the design and development of the same
software.
We therefore find that there is a natural relationship between Opposer’s
Computer Software and Applicant’s International Class 42 services, but that Opposer
has not established a relationship among any of its goods and Applicant’s
International Class 35 services.16

15 Opposer’s brief at 14, 10 TTABVUE 15.
16 Because we find that Opposer’s goods are related to certain International Class 42 services
of Applicant, we need not determine whether there is a relationship with the remaining
International Class 42 services. See, Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648
F.2d 1335, 209 USPQ 986, 988 (CCPA 1981).
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Trade Channels and Classes of Consumers
Turning to the trade channels and classes of consumers, Applicant’s identified
International Class 42 services and Opposer’s identified goods do not include any
channels of trade or classes of purchaser restrictions. The Board therefore must
assume that the parties’ identified goods and services are available in all the normal
channels of trade to all the usual purchasers for such goods and services. See Octocom
Sys., Inc. v. Houston Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990); Paula Payne Prods. v. Johnson Publ’g Co., 473 F.2d 901, 177 USPQ
76, 77-78 (CCPA 1973). Because of this assumption, and because of the relationship
discussed above between Opposer’s Computer Software and Applicant’s design and
development of computer software (which is not restricted to any particular software),
the classes of consumers and the trade channels are identical for such goods and
services. We consequently are not persuaded by Applicant’s argument that
“Applicant’s services are oriented toward business individuals, such as HR
management and marketing departments, who are seeking to determine market and
satisfaction data from employees and customers [while] … Opponent’s [sic] goods …
are clearly targeted at unique, but different purchasers, including IT personnel and
consumers wishing to protect their networks.”17
As for Opposer’s goods and Applicant’s remaining International Class 35 services,
Opposer relies on the fact that both parties use the Internet, Facebook, Twitter and
LinkedIn to offer their goods and services. Opposer, however, provides no information

17 Applicant’s brief at 14, 11 TTABVUE 19.
Opposition No. 91222206
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on how such uses are made, i.e., whether the same consumers would be exposed to
both of the marks in or through the Internet, Facebook, Twitter and LinkedIn. In
addition, advertising on the Internet is ubiquitous and proves little, if anything, about
the likelihood that consumers will confuse similar marks used on such goods or
services. Cf. Squirtco v. Tomy Corp., 212 USPQ 304, 307 (TTAB 1981) (“The fact that
opposer's and applicant's goods may be found in some of the same stores is not
controlling on this question. It is well recognized that there are a number of
commercial establishments where one can find a myriad of different items.”);
Faultless Starch Co. v. Sales Producers Assoc’s, Inc., 185 USPQ 824, 825 (TTAB 1975),
aff'd, 530 F.2d 1400, 189 USPQ 141, 143 (CCPA 1976).
Thus, the factors regarding purchasers and trade channels favor a finding of
likelihood of confusion for Applicant’s International Class 42 services, but are neutral
for Applicant’s International Class 35 services.
Conditions of Purchase/Purchaser Sophistication
In light of the fact that Opposer has not established that its goods are related to
Applicant’s International Class 35 services, we consider Applicant’s arguments
regarding conditions of purchase and purchaser sophistication only in connection
with Opposer’s goods and Applicant’s International Class 42 services. Based on the
identifications, we find that the goods and services, undoubtedly, are purchased with
some care and by persons with some sophistication. However, it is settled that even
sophisticated purchasers are not immune from source confusion, especially in cases
such as the instant one involving similar marks and related goods and services. See
In re Research Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986), citing
Opposition No. 91222206
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Carlisle Chemical Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ
110, 112 (CCPA 1970) (“Human memories even of discriminating purchasers ... are
not infallible.”). See also In re Decombe, 9 USPQ2d 1812 (TTAB 1988). We find that
the similarity between the marks and the relatedness of the goods and services
outweigh any presumed sophisticated purchasing decision. See HRL Assoc’s, Inc. v.
Weiss Assoc’s, Inc., 12 USPQ2d 1819 (TTAB 1989), aff’d, Weiss Assoc’s, Inc. v. HRL
Assoc’s, Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990) (similarities of goods
and marks outweigh sophisticated purchasers, careful purchasing decision, and
expensive goods).
Balancing the Factors
As explained above, Opposer has established that the marks are similar, there is
a relationship between Opposer’s Computer Software and Applicant’s International
Class 42 services, and the classes of consumers and the trade channels are identical
for such goods and services. We therefore find that Opposer has established a
likelihood of confusion between the Opposer’s mark NETGATE, which is the subject
of Registration No. 3161285, for its goods and Applicant’s International Class 42
services.
With regard to Applicant’s International Class 35 services, although the marks
are similar, Opposer has not established that any of the goods and services, trade
channels or purchasers are similar or related. We therefore conclude that Opposer
has not established a likelihood of confusion between its mark and goods which are
the subject of its asserted registrations and Applicant’s mark for its International
Class 35 services. Thus, the opposition is sustained with respect to Applicant’s
Opposition No. 91222206
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International Class 42 services but is denied with respect to Applicant’s International
Class 35 services.
Decision: Opposer’s claim of likelihood of confusion is sustained only for the
International Class 42 services in application Serial No. 86232226. The opposition is
otherwise dismissed.