Skywire Software, LLCv.Asta Technology Group, Inc.

Trademark Trial and Appeal Board

Sep 2, 2004

No. 91153532 (T.T.A.B. Sep. 2, 2004)

Mailed: 9/2/04
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Skywire Software, LLC
v.
Asta Technology Group, Inc.
_____
Opposition No. 91153532
to application Serial No. 76336774
filed on November 13, 2001
_____
Sanford E. Warren, Jr. and R. Scott Rhoades of Winstead
Sechrest & Minick for Skywire Software, LLC.
Inga Regenass of Holland & Hart for Asta Technology Group,
Inc.
______
Before Simms, Quinn and Rogers, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application was filed by Asta Technology Group, Inc.
to register the mark SKYWIRE for “computer software used to
develop a group of applications and libraries designed to
allow you to manipulate and receive data on wired and
wireless devices.”1
1 Application Serial No. 76336774, filed November 13, 2001,
alleging a date of first use anywhere and a date of first use in
commerce of October 1, 2001.
THIS DECISION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Opposition No. 91153532
2
Skywire Software, LLC opposed registration under
Section 2(d) of the Trademark Act on the ground that
applicant’s mark, when used on applicant’s goods, so
resembles opposer’s previously used and registered mark
SKYWIRE for “business consulting in the fields of high-end
application development, business process re-engineering,
supply chain management and business incubation services,”2
and SKYWIRE for other goods and services such as computer
software for business use and computer software development
and integration services, as to be likely to cause
confusion.
Applicant, in its answer, admitted that the parties’
marks are similar, but otherwise denied the salient
allegations in the notice of opposition. Applicant also set
forth several allegations captioned as “affirmative
defenses.”
The record consists of the pleadings; the file of the
involved application; trial testimony, with related
exhibits, taken by opposer; a certified copy of opposer’s
Registration No. 2683037, and copies of two applications
owned by opposer to register the mark SKYWIRE wherein
applicant’s application has been raised as a potential bar
under Section 2(d) to the registrations sought by opposer,
all made of record by way of opposer’s notice of reliance.
2 Registration No. 2683037, issued February 4, 2003.
Opposition No. 91153532
3
Applicant neither took testimony nor offered any other
evidence. Only opposer filed a brief. An oral hearing was
not requested.
There is no issue as to opposer’s priority in view of
opposer’s registration of the mark SKYWIRE which opposer has
made of record. King Candy, Inc. v. Eunice King’s Kitchen,
Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974). Further,
opposer has established common law rights in its mark
SKYWIRE for computer software for business use and related
services. Opposer’s use, both as a trade name and as a
trademark/service mark, dates back to at least as early as
December 2000, a date prior to the filing date of the
involved application which, in the absence of evidence, is
the earliest date upon which applicant is entitled to rely.
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence that are relevant
to the factors bearing on the likelihood of confusion issue.
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973). In any likelihood of confusion
analysis, two key considerations are the similarities or
dissimilarities between the marks and the similarities or
dissimilarities between the goods and/or services.
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976).
Opposition No. 91153532
4
The marks involved herein are identical. The identity
of the marks in sound, appearance, meaning and overall
commercial impression weighs in favor of a finding of
likelihood of confusion in this case.
We turn next to the second du Pont factor, that is, the
similarity or dissimilarity of the parties’ respective goods
and/or services. As has been often stated, it is not
necessary that the goods and/or services of the parties be
similar or competitive, or even that they move in the same
channels of trade to support a holding of likelihood of
confusion. It is sufficient that the respective goods
and/or services of the parties are related in some manner,
and/or that the conditions and activities surrounding the
marketing of the goods and/or services are such that they
would or could be encountered by the same persons under
circumstances that could, because of the similarity of the
marks, give rise to the mistaken belief that they originate
from the same producer. In re Martin’s Famous Pastry
Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984);
and In re International Telephone & Telegraph Corp., 197
USPQ2d 910 (TTAB 1978). Moreover, the greater the degree of
similarity between the parties’ marks, the lesser the degree
of similarity between the parties’ goods and/or services
that is required to support a finding of likelihood of
confusion. In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d
Opposition No. 91153532
5
1687 (Fed. Cir. 1993); and In re Opus One Inc., 60 USPQ2d
1812 (TTAB 2001).
The testimony of Patrick Brandt, opposer’s founder and
chief executive officer, together with the exhibits, details
opposer’s use of its SKYWIRE mark in connection with a
variety of computer software products and related services
for business use. Opposer’s software and related services
have been directed to the development and integration of
applications for customers in the insurance, financial,
healthcare, wireless and Internet fields. The evidence
shows that opposer’s revenues have increased, along with the
number of new customers, and that opposer has partnered its
efforts with entities such as IBM.
It is clear that opposer’s computer software for
various business uses, including use in developing
applications, and applicant’s “computer software used to
develop a group of applications and libraries designed to
allow you to manipulate and receive data on wire and
wireless devices” are closely related. In addition,
opposer’s computer software development and application
integration services, and consulting services in the field
of computer software for business use are also closely
related to applicant’s goods.
As identified in the involved application, applicant’s
computer software is presumed to travel in all normal trade
Opposition No. 91153532
6
channels for such goods to all of the usual purchasers for
goods of the type identified. Canadian Imperial Bank v.
Wells Fargo, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987).
Given that applicant’s computer software is so closely
related to opposer’s computer software and services, it is
likely that the parties’ goods and services would travel in
the same trade channels and would be purchased by the same
classes of customers.
In conclusion, in view of the identity of the marks,
their contemporaneous use on the parties’ closely related
goods and services is likely to cause confusion as to the
source or sponsorship of such goods and services.
Inasmuch as applicant neither took testimony nor
introduced any evidence at trial, the allegations set forth
as “affirmative defenses” in the answer are entirely
unsupported and, therefore, must fail.
Decision: The opposition is sustained, and
registration to applicant is refused.