Software Development Solutions, Inc.v.Aircast Mobile, Inc.

Trademark Trial and Appeal Board

Oct 30, 2013

No. 92055910 (T.T.A.B. Oct. 30, 2013)

CME Mailed: October 30, 2013

Cancellation No. 92055910
Software Development
Solutions, Inc.

v.
Aircast Mobile, Inc.
Before Bucher, Ritchie and Adlin,
Administrative Trademark Judges

By the Board:
This case now comes up on petitioner’s motion to
strike respondent’s affirmative defenses and its motion for
summary judgment, both filed on June 14, 2013. Respondent
opposes the motions.
Background
Petitioner has filed a petition for cancellation of
respondent’s Registration No. 4138501 for the mark JAMCAST,
in standard characters, for “Computer application software
for mobile phones, namely, software for recording,
streaming, distributing, and listening to music and live
concerts.”1 In its petition for cancellation, petitioner

1 Registration No. 4138501, issued on May 8, 2012, from an
application filed on September 7, 2011 and claiming first use
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451

THIS OPINION
IS NOT A PRECEDENT
OF THE TTAB

Cancellation No. 92055910

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pleads prior common law use and a later-filed trademark
application for the mark JAMCAST for “Computer application
software for electronic devices, namely, software for
sending and receiving music, pictures and video across a
computer network.”2 As grounds for cancellation, petitioner
alleges that respondent’s mark is likely to cause confusion
with petitioner’s previously-used pleaded mark pursuant to
Trademark Act Section 2(d), 15 U.S.C. Section 1052(d). In
its answer, respondent denies the salient allegations in
the petition for cancellation and asserts eight
“affirmative defenses,” a number of which are merely
amplifications of respondent’s denials, namely: (1) failure
to state a claim upon which relief may be granted; (2)
estoppel, waiver and acquiescence; (3) laches; (4) that
respondent’s involved mark is inherently distinctive; (5)
that petitioner’s mark is not famous; (6) that respondent
adopted the involved mark in good faith; (7) that
petitioner does not have priority in the mark JAMCAST; and
(8) that respondent “reserves its right to add, amend or
withdraw its affirmative defenses.” Answer, ¶¶ 7-14.

anywhere on January 1, 2011 and first use in commerce on August
19, 2011.

2 Filed on July 17, 2012, based on a claim of first use
anywhere on June 11, 2006 and first use in commerce on March 27,
2010.
Cancellation No. 92055910

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Motion to Strike
A motion to strike should be filed within 21 days of
service of an answer upon a party. See Fed. R. Civ. P.
12(f); See also TBMP § 506.02 (3d ed. rev.2 2013). As
respondent argues, petitioner’s motion to strike is
untimely because it was filed more than nine months after
respondent filed its answer to the petition for
cancellation. Accordingly, petitioner’s motion to strike
will be given no consideration.
Motion for Summary Judgment
The Parties’ Arguments
Petitioner argues that its “open and notorious use of
the JAMCAST mark since 2006” constitutes “use analogous to
trademark use” and that this analogous use predates both
the filing date of respondent’s involved registration and
respondent’s claimed first use date of January 1, 2011.
Motion for Summary Judgment, p. 5-7. Petitioner further
argues that consumer confusion is inevitable because the
parties’ marks are identical, the parties’ goods are
“highly-related, if not identical,” and the parties’ trade
channels are the same. Motion for Summary Judgment, pp. 7-
11.
In support of its motion, petitioner has submitted an
affidavit from its Chief Executive Officer, Scott Streaker
Cancellation No. 92055910

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(the “Streaker Affidavit”), stating that (i) petitioner
“first used the mark JAMCAST anywhere, at least as early as
June 11, 2006 and first used the JAMCAST mark in commerce
at least as early as March 27, 2010,” id. at ¶ 5; (ii)
“[b]eginning in 2010, and continuously since then, the non-
beta version of the JAMCAST media software solution that
enables consumers to effortlessly send digital audio from a
specific source to a specific device has been available for
purchase and download to the public,” id. at ¶ 4; and (iii)
“[b]y January 1, 2011, the JAMCAST product had been
downloaded over 48,000 times by more than 23,000 users and
the numbers ballooned to over 106,000 downloads by over
60,000 users by the end of 2012,” id. at ¶ 6. In addition,
petitioner has submitted two press releases from third-
party websites,3 dated June 29, 2010, showing full and
partial screen shots of petitioner’s software product
bearing the JAMCAST mark and a March 27, 2010 blog entry
from getjamcast.com/Blog/post/Stream-Jamcast-To-Your-
iPhone.aspx showing the JAMCAST mark displayed on two
mobile phone devices. Petitioner has also submitted
excerpts from the discovery deposition of respondent’s
chief executive officer, Michael Linhardt (the “Linhardt

3 “eHomeUpgrade.com” and “WeGotServed.com.”

Cancellation No. 92055910

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Deposition”),4 testifying that (i) respondent first used the
JAMCAST mark on January 1, 2011, Linhardt Deposition, p.
34; (ii) he believes there “could be” confusion between the
parties’ marks, id. at p. 62; and (iii) he would change his
response to petitioner’s Request for Admission No. 20 to
admit that “[r]egistrant’s mark is confusingly similar to
[p]etitioner’s mark.” Id. at pp. 66-67.
In opposition to the motion, respondent argues that
petitioner does not have standing to bring the petition for
cancellation. Specifically, respondent contends that
petitioner cannot claim “present or future damage” because
its pleaded application has been abandoned5 and petitioner
“asserts growth in users” of its product. Summary Judgment
Response, pp. 7-8.
Respondent further “disputes the priority of use
claimed by [petitioner]” arguing that press releases “do
not meet the criteria for evidence of prior use” because
they are advertising “and not acceptable for specimens of
use on goods in commerce” and they do not demonstrate use
“analogous to trademark use.” Id. at p. 4. Respondent

4 Neither party submitted pages from the Linhardt Deposition
that reflect Mr. Linhardt’s title, but he signed the underlying
application, which is automatically of record in this case, as
respondent’s chief executive officer.

5 Petitioner’s application is in fact suspended, not
abandoned.
Cancellation No. 92055910

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also relies on purported discrepancies between petitioner’s
summary judgment evidence and its discovery responses to
argue that petitioner’s first use in commerce of the
JAMCAST mark “has not been confirmed.” Id. at pp. 1-2.
With respect to likelihood of confusion, respondent
concedes that the parties’ marks have “the same spelling,”
but argues that it conducted a “search of trademarks and
did not find any alleged mark of [petitioner].” Id. at p.
6 and Linhardt Deposition, pp. 10-11. Respondent also
argues that petitioner’s “announcement of its UPnP
compliant network audio server for Windows code named
‘JAMCAST’” and its claims of “public exposure [of the
JAMCAST product] on or after 2010 … appear contrary to
Interrogatory No. 13, to which petitioner responded “that
it used the JAMCAST mark on its Jamcast Server (Beta) at
least as early as June 11, 2006 … .” Response to Summary
Judgment, p. 6 and Exhibit 1, p. 10. Lastly, respondent
argues that any doubt regarding a likelihood of confusion
should be resolved in its favor as registrant. See id. at
pp. 5 and 7.
Summary Judgment Standard
Summary judgment is only appropriate where there are
no genuine disputes as to any material facts, thus allowing
the case to be resolved as a matter of law. Fed. R. Civ.
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P. 56(a). The party seeking summary judgment bears the
burden of demonstrating the absence of any genuine dispute
of material fact, and that it is entitled to judgment under
the applicable law. See Celotex Corp. v. Catrett, 477 U.S.
317, 323 (1986); Sweats Fashions, Inc. v. Pannill Knitting
Co. Inc., 833 F.2d 1560, 4 USPQ2d 1793, 1796 (Fed. Cir.
1987). A factual dispute is genuine if, on the evidence of
record, a reasonable fact finder could resolve the matter
in favor of the non-moving party. See Opryland USA Inc. v.
Great Am. Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471,
1472 (Fed. Cir. 1992); Olde Tyme Foods, Inc. v. Roundy’s,
Inc., 961 F.2d 200, 22 USPQ2d 1542, 1544 (Fed. Cir. 1992).
Evidence on summary judgment must be viewed in a light most
favorable to the non-movant, and all justifiable inferences
are to be drawn in the non-movant’s favor. Lloyd’s Food
Prods., Inc. v. Eli’s, Inc., 987 F.2d 766, 25 USPQ2d 2027,
2029 (Fed. Cir. 1993); Opryland USA, 23 USPQ2d at 1472.
The Board may not resolve genuine disputes as to material
facts; it may only ascertain whether genuine disputes as to
material facts exist. See Lloyd’s Food Prods., 25 USPQ2d
at 2029; Olde Tyme Foods, 22 USPQ2d at 1544.
Evidentiary Issue
As an initial matter, both parties submitted documents
that they purportedly produced to one another during
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discovery. However, neither party submitted the
corresponding document requests as required by Trademark
Rule 2.127(e)(2), and as such, we have considered these
documents only to the extent that they have been
authenticated or comply with Board rules. Many of the
produced documents are website printouts, which we have
considered to the extent that they identify either their
dates of publication or the dates they were accessed and
printed, and their URL address.6 See Safer, Inc. v. OMS
Investments, Inc., 94 USPQ2d 1031, 1039 (TTAB 2010); TBMP
§ 528.05(e). We hasten to add, however, that even if we
had considered unauthenticated documents or those not
submitted in compliance with Board rules, it would not
change our decision herein.
Standing and Priority
There are no genuine disputes as to any material fact
regarding petitioner’s standing, which is established by
its common law rights in the JAMCAST mark for software for
sending digital audio content, as discussed more fully
below.7 Respondent’s erroneous assertion that petitioner

6 However, we have not considered pages from foreign websites
as use outside the United States is not relevant to this
proceeding, which concerns only registration of the JAMCAST mark
in the United States.

7 In its petition to cancel, petitioner expressly alleged
damage based on “confusion in the marketplace” as well as
Cancellation No. 92055910

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has abandoned its pleaded application, even if true, would
not change this conclusion, as standing may be established
based solely on common law rights in a mark, as petitioner
has established here. See Giersch v. Scripps Networks
Inc., 90 USPQ2d 1020, 1022 (TTAB 2009) (standing
established by a showing of common law rights); Green Spot
(Thailand) Ltd. v. Vitasoy International Holdings Ltd., 86
USPQ2d 1283, 1285 (TTAB 2008) (prior use ...); Kohler Co.
v. Baldwin Hardware Corp., 82 USPQ2d 1100, 1106 (TTAB 2007)
(prior use ...). Respondent’s arguments notwithstanding,
“there is no requirement that actual damage be pleaded and
proved” to establish standing and prevail in a cancellation
action. TBMP § 309.03(b) and cases cited in footnote 6
therein.
For petitioner to prevail on its claim of likelihood
of confusion based on common law rights in the JAMCAST
mark, “the mark must be distinctive, inherently or
otherwise, and [petitioner] must show priority of use.”
Wet Seal Inc. v. FD Management Inc., 82 USPQ2d 1629, 1634
(TTAB 2007) (citing Otto Roth & Co. v. Universal Foods
Corp., 640 F.2d 1317, 209 USPQ 40 (CCPA 1981)). Respondent
has not raised any issue regarding the distinctiveness of

respondent’s registration “preventing [p]etitioner’s [m]ark from
being registered.” Petition for Cancellation, ¶ 4.
Cancellation No. 92055910

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the mark JAMCAST in its response to petitioner’s motion for
summary judgment or in its answer to the petition for
cancellation. In fact, in its answer, respondent maintains
that its identical mark JAMCAST “is inherently
distinctive.” Answer, Fourth Affirmative Defense, ¶ 10.
Accordingly, and because there is no evidence that JAMCAST
is merely descriptive or generic, we find that there are no
genuine disputes of material fact regarding the
distinctiveness of the JAMCAST mark, which is inherently
distinctive.
Upon careful consideration of all of the admissible
evidence, we also find that there are no genuine disputes
of material fact regarding petitioner’s priority in the
JAMCAST mark. We need not consider whether petitioner has
established use of the JAMCAST mark analogous to trademark
use8 because the evidence of record, consisting of the
Streaker Affidavit and website printouts of March 27, 2010
and June 29, 2010, is sufficient to establish petitioner’s
prior and continuous use in commerce of the mark JAMCAST

8 “[A] party may establish priority in a proceeding based on
‘analogous use,’ i.e., any non-technical use of a mark which is
sufficient to create in the mind of the relevant public an
association between the goods and their source. Thus, even
before proper trademark use commences, advertising or similar
pre-sale activities may establish priority if they create the
necessary association in the mind of the consumer.” Central
Garden & Pet Company v. Doskocil Manufacturing Company, Inc., 108
USPQ2d 1134, 1142 (TTAB 2013) (internal citation omitted).

Cancellation No. 92055910

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since 2010 for software for sending digital audio content.9
Respondent did not submit any evidence or even attempt to
argue that it commenced use of the JAMCAST mark prior to
this date, and its constructive first use date of September
7, 2011 is after petitioner commenced use of its JAMCAST
mark in commerce.10 Moreover, we find that the alleged
discrepancies between petitioner’s summary judgment
evidence and discovery responses do not create any genuine
disputes of material fact regarding petitioner’s prior use
in commerce of the JAMCAST mark.11 In fact, the evidence is
consistent that petitioner used the mark JAMCAST before

9 To be clear, we do not conclude that the press releases
themselves demonstrate petitioner’s use of the JAMCAST mark.
Instead, we have considered the press releases for what they show
on their face, namely, recognition of petitioner’s actual use of
the JAMCAST mark on computer software, including software for
mobile phones. This evidence sufficiently corroborates the
Streaker Affidavit.

10 Respondent submitted evidence that its Google and domain
name searches for the mark JAMCAST in early 2011 did not yield
any results. However, there is no requirement that a party’s
mark be discoverable by particular search engines or similar to
registered domain names. Accordingly, this evidence is not
sufficient to rebut petitioner’s evidence establishing its use of
the JAMCAST mark as early as 2010.

11 The fact that petitioner indicated that it had no documents
responsive to respondent’s Document Request No. 8 does not
disprove that petitioner commenced use of its mark before
respondent’s filing date. Document Request No. 8 sought
documents in a specific format, namely, documents referring or
relating “to the amount of sales (actual and/or projected) by
calendar quarter of goods and/or services sold by or for
[petitioner] using JAMCAST from 2006 to the present.” It is
conceivable that petitioner does not keep records of sales by
calendar quarter. Moreover, sales are not necessarily required
to establish use in commerce. See 15 U.S.C. § 1127.

Cancellation No. 92055910

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respondent’s filing date, which is the earliest date upon
which respondent may rely. See 15 USC § 1057(c); see also
Larami Corp. v. Talk to Me Programs, Inc., 36 USPQ2d 1840
(TTAB 1995).
Likelihood of Confusion
“We determine likelihood of confusion by focusing on …
whether the purchasing public would mistakenly assume that
the [respondent’s] goods originate from the same source as,
or are associated with,” petitioner’s goods. In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1203 (Fed. Cir. 2003). In considering the question
on a motion for summary judgment, we analyze all probative
facts in evidence which are relevant to the thirteen
likelihood of confusion factors set forth in In re E.I.
du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973), as well as whether there are genuine disputes as to
any of these factors which would be material to a decision
on the merits. In this case, the parties have introduced
evidence concerning the similarities of the marks, goods,
and trade channels, and respondent’s intent in adopting the
JAMCAST mark.
We turn first to the similarity of the marks. The
involved registration is for the mark JAMCAST in standard
characters, meaning that the mark is not limited to any
Cancellation No. 92055910

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specific form of display. Accordingly, the Board must
assume that respondent’s mark could be displayed in the
same style as petitioner’s mark. See In re RSI Systems
LLC, 88 USPQ2d 1445, 1448 (TTAB 2008). For this reason,
there is no genuine dispute of material fact that the
parties’ marks are essentially identical. This factor
weighs heavily in favor of a finding of likelihood of
confusion. See Kohler, 82 USPQ2d at 1106; Hornblower &
Weeks Inc. v. Hornblower & Weeks Inc., 60 USPQ2d 1733, 1735
(TTAB 2001).
With respect to the similarity of the parties’ goods,
we must compare the goods identified in the involved
registration to those petitioner offers under its mark.
Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261,
62 USPQ2d 1001, 1004 (Fed. Cir. 2002). Here, respondent
has registered the mark JAMCAST for “Computer application
software for mobile phones, namely, software for recording,
streaming, distributing, and listening to music and live
concerts” and petitioner has proven use of its mark for
software that enables users to send digital audio content
from a specific source to a specific device, including
mobile phones. Therefore, we find that there is no genuine
dispute of material fact that the parties’ goods are highly
Cancellation No. 92055910

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similar, and as such, this fact also weighs heavily in
favor of a finding of likelihood of confusion.
There also is no genuine dispute of material fact
regarding the channels of trade for the parties’ goods or
the classes of consumers. Where, as here, “there is no
limitation on the channels of trade” in the identification
in the involved registration, it is presumed that
respondent’s goods move in all normal channels of trade for
the goods. Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268
(TTAB 2003) (“Given the in-part identical and in-part
related nature of the parties’ goods, and the lack of any
restrictions in the identification[] of [the involved
registration as] to trade channels and purchasers,” the
parties’ goods “could be offered and sold to the same
classes of purchasers through the same channels of trade”);
See also, e.g., Octocom Systems, Inc. v. Houston Computers
Services, Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed.
Cir. 1990); Venture Out Properties LLC v. Wynn Resorts
Holdings, LLC, 81 USPQ2d 1887, 1893 (TTAB 2007).
Furthermore, even if we construed the words “for mobile
phones,” “recording,” “streaming,” “distributing,” and
“listening” in the involved registration as limitations on
respondent’s channels of trade, petitioner’s evidence
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establishes that petitioner’s channels of trade include
mobile phones and the distribution of audio content.
In addition, while there is no evidence that
respondent adopted the JAMCAST mark in bad faith,
respondent’s apparent good faith does not create a genuine
dispute of material fact regarding a likelihood of
confusion between the parties’ marks, because respondent’s
apparent good faith is easily outweighed by the similarity
of the marks, goods and channels of trade.12 See Lebanon
Seaboard Corp. v. R&R Turf Supply, Inc., 101 USPQ2d 1826,
1834 (TTAB 2012) (“Good faith adoption of a mark will not
prevent a finding of likelihood of confusion.”); see also
Mag Instrument Inc. v. Brinkmann Corp., 96 USPQ2d 1701,
1713 (TTAB 2010) (that defendant adopted its mark in good
faith “does very little to obviate a finding of a
likelihood of confusion because it is expected that
[defendant] is acting in good faith.”) aff’d mem., No.
2011-1052, 2011 WL 5400095 (Fed. Cir. 2011).

12 Respondent also argues that the trademark examining
attorney did not uncover petitioner’s common law use of the
JAMCAST mark when he/she examined respondent’s underlying
application. However, “[r]efusal [of a trademark application] on
the basis of an unregistered mark … is not applied in ex parte
examination because of the practical difficulties with which an
examining attorney is faced in locating ‘previously used’ marks,
and determining whether anyone has rights in them and whether
they are ‘not abandoned.’” TMEP § 1207.03 (April 2013).

Cancellation No. 92055910

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Lastly, in its response to petitioner’s motion,
respondent has not asserted, much less established, any of
the affirmative defenses raised in its answer to the
petition for cancellation. Accordingly, such defenses, to
the extent they are viable affirmative defenses, are deemed
waived.13 See Miller v. Miller, 105 USPQ2d 1615, 1616 n.3
(TTAB 2013); Baroness Small Estates Inc. v. American Wine
Trade Inc., 104 USPQ2d 1224, 1225 n.2 (TTAB 2012).
Conclusion
Based on the record herein and the applicable law, we
find that there are no genuine disputes as to any material

13 “Affirmative defenses” 4-7 are not proper affirmative
defenses, but mere amplifications of respondent’s denials.
Similarly, “affirmative defense” 8 merely paraphrases Fed. R.
Civ. P. 15, and does not include any affirmative defense. To the
extent that respondent may have attempted to argue acquiescence
by asserting that it “has expanded its presence with the public,”
Response, p. 7, it has not argued or submitted any evidence that
petitioner affirmatively acted in a way that led respondent to
reasonably believe that petitioner would not assert its rights in
the JAMCAST mark against respondent, which is required to prove
the defense of acquiescence. See CBS, Inc. v. Man’s Day
Publishing Company, Inc., 205 USPQ 470, 473-474 (TTAB 1980) (to
establish the defense of acquiescence a defendant must prove that
the plaintiff's conduct amounted to “an assurance by the
plaintiff to the defendant, either express or implied that the
plaintiff will not assert his trademark rights against the
defendant.”). Moreover, respondent’s assertion that petitioner’s
delay in seeking registration of its mark for four and one half
years, see Response, p. 7, does not support a claim for laches
because laches arises out of a plaintiff’s failure to challenge a
defendant’s application or registration, not a plaintiff’s delay
in seeking to register its own mark. See National Cable
Television Association, Inc. v. American Cinema Editors, Inc.,
937 F.2d 1572, 1581, 19 USPQ2d 1424, 1432 (Fed. Cir. 1991); see
also Jansen Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1114 (TTAB
2007).
Cancellation No. 92055910

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facts and that petitioner has established its standing and
priority and likelihood of confusion as a matter of law.
Moreover, respondent has waived its affirmative defenses.
Accordingly, petitioner’s motion for summary judgment is
hereby GRANTED. Judgment is hereby entered against
respondent, the petition to cancel is granted, and
Registration No. 4138501 will be cancelled in due course.
***