Sora Technologies, LLCv.Harpco Systems, Inc.

Trademark Trial and Appeal Board

Dec 21, 2017

No. 91230235 (T.T.A.B. Dec. 21, 2017)

Baxley Mailed: December 21, 2017

Opposition No. 91230235
Sora Technologies, LLC

v.
Harpco Systems, Inc.

Before Cataldo, Kuczma, and Masiello,
Administrative Trademark Judges.

By the Board:

Harpco Systems, Inc. (“Applicant”) seeks to register the mark SORA in standard
characters for “Computer software for managing risk due to improperly or
incompletely defined required service outputs” in International Class 9 and services
in International Classes 35 and 41.1 Sora Technologies, LLC (“Opposer”) opposes
registration of Applicant’s mark in International Class 9 only on the ground of
likelihood of confusion under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), with
its previously used and registered marks SORA TECHNOLOGIES and design in the

1 Application Serial No. 86973192, filed April 12, 2016, based on an assertion of use in
commerce under Trademark Act Section 1(a), 15 U.S.C. § 1051(a), and alleging April 12, 2016
as the date of first use anywhere and as the date of first use in commerce.

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
General Contact Number: 571-272-8500
This decision is not a
precedent of the TTAB.
Opposition No. 91230235

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following form, ,2 and SORA in standard characters,3 both reciting “Computer
hardware and software consulting services; Computer monitoring service which
tracks hardware performance and processes and sends out historical reports and
alerts; Computer network design for others; Computer programming and software
design; Computer security consultancy; Computer services, namely, computer system
administration for others; Computer services, namely, data recovery services;
Computer services, namely, remote and on-site management of information
technology systems of others; Computer systems analysis; Computer technical
support services, namely, 24/7 service desk/help desk services for IT infrastructure,
operating systems, database systems, and web applications; Computer virus
protection services; Consulting services in the field of design, selection,
implementation and use of computer hardware and software systems for others;
Online computer services, namely, providing spam filtering services to protect
websites and online applications from receiving unsolicited messages; Recovery of
computer data; Remote computer backup services; Technical advice relating to
operation of computers; Technical support services, namely, troubleshooting in the
nature of diagnosing computer hardware and software problems; Technological
planning and consulting services in the field of computer hardware systems” in

2 Registration No. 4105178, issued February 28, 2012, Section 8 affidavit accepted, Section
15 affidavit acknowledged.

3 Registration No. 4882484, issued January 5, 2016.

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International Class 42. 1 TTABVUE. Applicant, in its answer, admits that
Applicant’s mark “sounds phonetically identical to one of Opposer’s Registered
Marks, and identical to the dominant portion of another” (paragraph 12) and that the
term SORA “appears and is spelled identical to one of Opposer’s Registered Marks,
and is identical to the dominant portion of another of its Registered Mark[s]”
(paragraph 13), but otherwise denies the salient allegations of the notice of
opposition. 4 TTABVUE.
This case now comes up for consideration of Opposer’s motion (filed July 19, 2017)
for summary judgment on its pleaded Section 2(d) claim. 13-14 TTABVUE. That
motion has been fully briefed.
Summary judgment is an appropriate method of disposing of cases in which there
are no genuine disputes as to any material fact, thus leaving the case to be resolved
as a matter of law. See Fed. R. Civ. P. 56(a). The party moving for summary judgment
has the initial burden of demonstrating that there is no genuine issue of material fact
remaining for trial and that it is entitled to judgment as a matter of law. See Celotex
Corp. v. Catrett, 477 U.S. 317 (1987); Sweats Fashions Inc. v. Pannill Knitting Co.
Inc., 833 F.2d 1560, 4 USPQ2d 1793 (Fed. Cir. 1987). The nonmoving party must be
given the benefit of all reasonable doubt as to whether genuine issues of material fact
exist, and the evidentiary record on summary judgment, and all inferences to be
drawn from the undisputed facts, must be viewed in the light most favorable to the
nonmoving party. See Opryland USA, Inc. v. Great American Music Show, Inc., 970
F. 2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992).
Opposition No. 91230235

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When the moving party’s motion is supported by evidence sufficient to indicate
that there is no genuine issue of material fact, and that the moving party is entitled
to judgment, the burden shifts to the nonmoving party to demonstrate the existence
of specific genuinely-disputed facts that must be resolved at trial. The nonmoving
party may not rest on the mere allegations of its pleadings and assertions of counsel,
but must designate specific portions of the record or produce additional evidence
showing the existence of a genuine issue of material fact for trial. In general, to
establish the existence of disputed facts requiring trial, the nonmoving party “must
point to an evidentiary conflict created on the record at least by a counterstatement
of facts set forth in detail in an affidavit by a knowledgeable affiant.” Octocom Sys.
Inc. v. Houston Computers Servs. Inc., 918 F.2d 937, 941, 16 USPQ2d 1783, 1786 (Fed.
Cir. 1990).
As a party moving for summary judgment on its Section 2(d) claim, Opposer must
establish that there is no genuine dispute that (1) it has standing to maintain this
proceeding; (2) that it owns registrations for, or is the prior user of, its pleaded marks;
and (3) that contemporaneous use of the parties’ respective marks on their respective
goods and services would be likely to cause confusion or mistake or to deceive
consumers. See Trademark Act Section 2(d), 15 U.S.C. § 1052(d); Fram Trak Indus.
Inc. v. WireTracks LLC, 77 USPQ2d 2000, 2004 (TTAB 2006). If the nonmoving party
fails to make a sufficient showing on an essential element of its case with respect to
which it would have the burden of proof at trial, judgment as a matter of law may be
Opposition No. 91230235

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entered in favor of the moving party. See Fed. R. Civ. P. 56(a); Celotex Corp. v. Catrett,
477 U.S. at 322-23.
Regarding Opposer’s standing to maintain this proceeding, Opposer has
submitted status and title copies of its pleaded registrations obtained from USPTO
records. 13-14 TTABVUE 23-24 and 28-29. These registrations establish Opposer’s
direct commercial interest and its standing to oppose registration of Applicant’s
involved mark. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842,
1844 (Fed. Cir. 2000); Primrose Ret. Cmtys., LLC v. Edward Rose Senior Living, LLC,
122 USPQ2d 1030, 1032 (TTAB 2016). Thus, there is no genuine dispute as to
Opposer’s standing to oppose registration of Applicant’s mark.
As a result of Opposer’s ownership of valid and subsisting registrations on the
Principal Register for its pleaded marks, priority is not at issue with respect to the
marks and services shown on Opposer’s pleaded registrations vis-à-vis Applicant’s
goods recited in the present application. See King Candy, Co. v. Eunice King’s
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
Turning to the issue of likelihood of confusion (see In re E. I. Du Pont De Nemours
& Co., 177 USPQ 563 (CCPA 1973)),4 a determination of the similarity of the marks
is based on the marks at issue as they appear in Applicant’s involved application and
Opposer’s pleaded registrations. See Mini Melts, Inc. v. Reckitt Benckiser LLC, 118
USPQ2d 1464, 1470-71 (TTAB 2016). There is no genuine dispute that Applicant’s

4 Two key factors in deciding whether there is a likelihood of confusion are the degree of
similarity of the parties’ marks and the degree of relatedness of their respective goods and
services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24,
29 (CCPA 1976).
Opposition No. 91230235

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involved mark SORA in standard characters and one of Opposer’s pleaded marks,
SORA in standard characters,5 are identical.6 Indeed, as noted supra, Applicant, in
its answer, admits that its mark “sounds phonetically identical to one of Opposer’s
Registered Marks” (paragraph 12), and that the term SORA “appears and is spelled
identical to one of Opposer’s Registered Marks” (paragraph 13). 4 TTABVUE 3.
Where identical marks are involved, as is the case here, the degree of similarity
between the goods and services at issue that is required to support a finding of
likelihood of confusion declines. See In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d
1687, 1688-89 (Fed. Cir. 1993); Philip Morris Inc. v. K2 Corp., 555 F.2d 815, 194
USPQ 81, 82 (CCPA 1977) (likelihood of confusion when the same mark, K2, is used
on cigarettes and snow skis).
Opposer contends that “Opposer’s registrations cover the creation of computer
software for its customers,” including Applicant’s identified goods (13-14 TTABVUE
12); and that, by admitting in written responses to Opposer’s requests for admissions
that: (1) “software consulting can involve the creation of computer software;” (2)
“computer programming and software design can include the creation of computer
software;” (3) software consulting, computer programming, and software design “can
involve the creation of computer software for managing risk due to improperly or

5 A standard character drawing of a mark encompasses any presentation of that mark. See
Citigroup Inc. v. Capital City Bank Group Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1256 (Fed.
Cir. 2011).

6 Inasmuch as Opposer’s pleaded registrations have identical recitations of services, we need
not consider Opposer’s mark SORA TECHNOLOGIES and design in our analysis.
Opposition No. 91230235

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incompletely defined services outputs” (13-14 TTABVUE 12 and 47), Applicant has
admitted that the services recited in Opposer’s registrations “cover the creation of the
exact type of software that Applicant seeks to register the exact mark for” (13-14
TTABVUE 13). Opposer further contends that, by stating in its response to Opposer’s
interrogatory no. 10 that its potential clients are “[a]ny company who designs
products, manufactures products or provides any type of service,” Applicant admitted
that the parties share the same trade channels (13-14 TTABVUE 38). Accordingly,
Opposer contends that disposition of this proceeding by summary judgment is
appropriate.
Opposer’s evidence includes a declaration of its owner and officer Jacob Adams
(“the Adams declaration”), who avers, among other things, that its “software
development clients range from agribusiness companies, medical providers, and
trucking logistics companies ... [ranging] from small operations to those with large
numbers of employees.”7
In response, Applicant contends that there are genuine disputes as to whether
Opposer’s services are sufficiently similar to Applicant’s goods as to cause likelihood
of confusion, as to whether the parties have overlapping customers,8 and as to the

7 Through the Adams declaration, Opposer submits status and title copies of its pleaded
registrations. In addition, Opposer submits Applicant’s interrogatory responses (13-14
TTABVUE 31-44), Applicant’s written responses to requests for admissions (13-14
TTABVUE 46-48) and Applicant’s responses to document requests and documents produced
in discovery (13-14 TTABVUE 62-83).

8 Nonetheless, Applicant states that it “is a recognized expert in risk based management.
Because all companies are exposed to risks and the Applicant’s training, consulting and
software are designed to be product and/or service type and company size independent, any
Opposition No. 91230235

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level of sophistication of the respective purchasers. In particular, Applicant contends
that it developed its SORA software “to assist service companies in complying with
ISO 9001:20159 by managing risk from the selection of potential customers and
definition of Customer requirements for the service through to (sic) the release of the
Service Outputs requirements for use in the design of the service to meet them” (16
TTABVUE 7); that, pursuant to contractual agreements between Opposer and its
customers, any software designed by Opposer is a work for hire owned by the
customers; that Opposer’s agreements with its customers are silent with regard to
usage “of the SORA mark for possible marketplace recognition of the Opposer’s
software” (16 TTABVUE 9); that Opposer’s pleaded registrations were registered
notwithstanding the USPTO’s prior issuance of Registration No. 4043681, owned by
Nintendo of America Inc. for the mark PROJECT SORA in standard characters for
computer-related services in International Class 42 (16 TTABVUE 5, 9-10, and 14-
15);10 that Opposer is effectively asserting that its registrations encompass all forms

company that provides a product or service is a potential customer of the Applicant.” 16
TTABVUE 6.

9 Applicant states that it “specializes in providing companies with software, training and
consulting to assist them in implementing risk optimized, integrated business management
systems that cover the entire product life cycle from definition of customer needs through
delivery and maintenance of the product or service;” that “[t]he recently released version ISO
9001 ‘Quality management systems – requirements’ ISO 9001:2015 requires companies to
use ‘Risk Based Thinking’ in the management of their businesses” and that Applicant’s
president, Richard Harpster, “has provided multiple seminars, tutorials and papers at local
and international conferences on implementing “Risk Based Thinking” as required by ISO
9001:2015.” 16 TTABVUE 6.

10 The recited services in that registration are “‘Design of computer hardware for computer
games; design, programming, and maintenance of software for consumer video games for
others; information and consultancy services relating to the design, programming, or
maintenance of software for consumer video games; design, programming and maintenance
Opposition No. 91230235

9
of computer software (16 TTABVUE 13); that there is no per se rule that all computer
products and services are related (16 TTABVUE 13); that there are 172 types of
computer software listed in the USPTO’s trademark identification manual (16
TTABVUE 14); that purchasers of software sold under Applicant’s mark SORA “are
looking for guidance on what is required of a service company to be compliant with
ISO 9001:2015 Standard, as well as, tools that will help them achieve and maintain
compliance,” while purchasers of Opposer’s services “have a need for services for the
design and programming of a computer software program that will meet their
requirements” (16 TTABVUE 16-17); and that Opposer filed its motion for summary
judgment after refusing to respond to discovery related to the design and
programming of software to manage risk. Accordingly, Applicant asks that the Board
deny Opposer’s motion.
Applicant’s evidence in support of its opposition to Opposer’s motion includes: (1)
excerpts from Applicant’s website (16 TTABVUE 20-22); status and title copies of

of software for handheld games with liquid crystal displays for others; information and
consultancy services relating to design, programming or maintenance of software for
handheld games with liquid crystal displays; design, programming or maintenance of
software for arcade game machines for others; information and consultancy services relating
to design, programming or maintenance of software for arcade game machines; creating or
maintaining web sites for others; design, programming, and maintenance of other computer
software for others; computer consultation rendered through technical advice relating to
performance or operation of computers and other machines that require high levels of
personal knowledge, skill or experience of the operators to meet the required accuracy in
operating them; providing online non-downloadable computer programs for processing
images; providing information relating to online non-downloadable computer programs for
processing images; providing online non-downloadable computer programs for designing,
editing, and processing images, illustrations, texts, and graphics; providing online non-
downloadable computer programs for use in accessing internet electronic bulletin boards.”
This registration issued on October 25, 2011, based on an application filed on July 24, 2009
under Trademark Act Section 44(d), 15 U.S.C. § 1126(d). 16 TTABVUE 50-53.
Opposition No. 91230235

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registrations in which Applicant is identified as the registrant (16 TTABVUE 25-49);
(3) a status and title copy of third-party Registration No. 4043681 discussed above
(16 TTABVUE 50-53); (4) status and title copies of Opposer’s pleaded registrations
(16 TTABVUE 54-63); (5) an undated excerpt from Opposer’s website (16 TTABVUE
64); (6) results of a USPTO trademark ID manual search of the term “computer
software” (16 TTABVUE 79-85); (7) a copy of Applicant’s responses to Opposer’s
document requests and documents produced in discovery (16 TTABVUE 86-93); (8) a
copy of Opposer’s responses to Applicant’s document requests, including a blank copy
of a form for the software development agreement that Opposer enters into with its
customers (16 TTABVUE 94-110); and (9) copies of Opposer’s interrogatory responses
and a July 17, 2017 e-mail from Applicant’s president to Opposer’s attorney with
regard thereto.
In reply, Opposer contends that its trade channels are not limited in its recitation
of services and therefore must be treated as encompassing all normal trade channels
and purchasers of its recited services; that, while it acknowledges that there is no per
se rule that all computer products and services are related, Applicant is seeking an
opposite per se rule that different computer products and services are unrelated; and
that the existence of Registration No. 4043681 is insufficient to avoid entry of
summary judgment herein.
A determination of whether the goods and services at issue are related in a
manner that is likely to give rise to source confusion is determined on the basis of the
goods as identified in Applicant’s involved application and the services as identified
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in Opposer’s pleaded registrations, regardless of what the record may reveal as to the
particular nature of those goods and services, their particular trade channels, or their
class of purchasers. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746
F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014); Paula Payne Products Co. v.
Johnson Publishing Co., Inc., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973). Where
the goods and/or services in an application or registration are broadly described and
there are no limitations set forth as to their nature, type, channels of trade or classes
of purchasers, the Board must presume that the scope of the application or
registration encompasses all goods and/or services of the nature and type described,
that the identified goods and/or services move in all channels of trade that would be
normal for such goods and/or services, and that the goods and/or services would be
purchased by all potential customers. See In re Elbaum, 211 USPQ 639, 640 (TTAB
1981).
We note initially that Applicant’s arguments that its goods and Opposer’s services
are not related in a manner that is likely to give rise to source confusion are based on
the particular nature of the goods and services at issue as allegedly shown by
extrinsic evidence. Moreover, those arguments ignore that Applicant, during
discovery, admitted that software consulting, computer programming, and software
design “can involve the creation of computer software for managing risk due to
improperly or incompletely defined services outputs.” 13-14 TTABVUE 47. This
admission “conclusively establish[es]” that Opposer’s computer software design
services encompass the design of software for managing risk due to improperly or
Opposition No. 91230235

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incompletely defined required service outputs, such as that sold by Applicant. See
Fed. R. Civ. P. 36(b). That is, we must presume that the same prospective purchasers
could have the option of purchasing ready-made Applicant’s “Computer software for
managing risk due to improperly or incompletely defined required service outputs”
sold under the mark SORA or having the same software custom designed by Opposer
under the same mark. Thus, we find that there are no genuine disputes that
Opposer’s services and Applicant’s goods are related in a manner that is likely to give
rise to source confusion and that the parties’ goods and services at issue are marketed
to overlapping purchasers.
Although Applicant makes vague representations about the nature of Opposer’s
customers, Applicant fails to point to any evidence which provides a basis therefor.
“The likelihood of confusion analysis considers all DuPont factors for which there is
evidence of record.’” Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62
USPQ2d 1001, 1003 (Fed. Cir. 2002). Accordingly, we find that these unsupported
representations fail to create a genuine dispute of material fact that warrants trial
on this issue.
Regarding Applicant’s reliance upon third-party Registration No. 4043681, we
note that this registration was issued under Trademark Act Section 44, i.e., without
any evidence that the mark PROJECT SORA was in use in commerce, and that
Applicant has not provided any evidence that the public is familiar with that mark
PROJECT SORA. Third-party registrations issued under Section 44 without any use
in commerce have very little persuasive value. See In re Albert Trostel & Sons Co., 29
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USPQ2d 1783, 1786 (TTAB 1993). Further, Opposer’s likelihood of confusion claim in
this case is between Opposer and Applicant, and not between Opposer and any
unrelated third party. Opposer need not be the exclusive user of the term SORA or
be the prior user with respect to the whole world; Opposer need only be the prior
registrant and/or user as to Applicant. See BAF Indus. v. Pro-Specialties, Inc., 206
USPQ 166, 174 (TTAB 1980). Accordingly, the existence of Registration No. 4043681
fails to create a genuine dispute as the “number and nature of similar marks in use
on similar goods.” In re E. I. Du Pont De Nemours & Co., 177 USPQ at 567.
Furthermore, unlike cases in which voluminous evidence showing that “a
considerable number of third parties use similar marks” was found to be “powerful
on its face,” Applicant has presented only one such use, well short of the volume of
evidence found convincing in Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334,
115 USPQ2d 1671, 1674 (Fed. Cir. 2015), and Jack Wolfskin Ausrustung Fur
Draussen GmbH & Co. KGAA v. New Millenium Sports, S.L.U., 797 F.3d 1363, 116
USPQ2d 1129, 1136 (Fed. Cir. 2015).
Although Applicant alleges that Opposer failed to respond adequately to its
discovery requests, Applicant failed to file a motion to compel in which it challenged
the sufficiency of Opposer’s discovery responses. Accordingly, Applicant will not now
be heard to complain about Opposer’s discovery responses. See H.D. Lee Co. v.
Maidenform Inc., 87 USPQ2d1715, 1719 (TTAB 2008).
Based on the foregoing, we find that Opposer has met its initial burden of showing
that there is no genuine dispute of material fact remaining for trial on its pleaded
Opposition No. 91230235

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likelihood of confusion claim and that it is entitled to entry of judgment as a matter
of law; and that Applicant has failed to rebut that showing. In view thereof, Opposer’s
motion for summary judgment is hereby granted. Judgment is hereby entered against
Applicant, the opposition is sustained, and registration of Applicant’s mark is
refused.