Starfish Software, Inc.v.FileTrak Software, Inc.

Trademark Trial and Appeal Board

Sep 30, 1999

No. 91105884 (T.T.A.B. Sep. 30, 1999)

Paper No. 24
cmb
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB SEPT. 30,99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Starfish Software, Inc.
v.
FileTrak Software, Inc.
_____
Opposition No. 105,884
to application Serial No. 75/014,889
filed on November 6, 1995
_____
Martin R. Greenstein of Techmark for Starfish Software, Inc.
FileTrak Software, Inc., pro se.
______
Before Quinn, Walters and Bottorff, Administrative Trademark
Judges.
Opinion by Bottorff, Administrative Trademark Judge:
Applicant FileTrak Software, Inc. has applied to
register the mark FILEKICK on the Principal Register for
goods identified as "computer software for file
management."1 Opposer Starfish Software, Inc. has opposed
registration on the ground that applicant’s mark, as applied

1 Serial No. 75/014,889, filed November 6, 1995, based on use in
commerce. January 21, 1992 is alleged as the date of first use
of the mark anywhere, and November 4, 1995 is alleged as the date
of first use in commerce.
Opposition No. 105,884
2
to applicant’s goods, so resembles opposer’s registered mark
SIDEKICK,2 previously used by opposer in connection with
various computer software products, as to be likely to cause
confusion, to cause mistake, or to deceive. See Trademark
Act Section 2(d), 15 U.S.C. §1052(d).3 Applicant has denied
the allegations of the notice of opposition which are
essential to opposer's claim. Opposer and applicant filed

2 Opposer has pleaded ownership of two Principal Register
registrations:
Registration No. 1,334,110, of the mark SIDEKICK for "computer
programs"; issued May 7, 1985, Section 8 and 15 affidavit
accepted.
Registration No. 2,110,295, of the mark SIDEKICK for "computer
software, namely, personal information managers; electronic
organizers; desktop organizers; finance and accounting; file
transfer; file conversion; databases; database searching and
reporting; cardfiles; contact managers; voice data and
wireless communication software, namely, e-mail, voice mail,
voice messaging, and telephone and facsimile software; word
processing; fax processing; database access; data retrieval
and processing; remote access; alarms and reminders;
multimedia applications software; text and program editing;
calendars; time management; schedulers; appointment calendars;
notepads and note taking; outlining; windowing; printing and
forms management; software for use in the transfer of data by
modem; calculators; address books; reference works and
information guides; user interface software for accessing and
browsing wide area networks; mail merge utilities; import and
export utilities; data backup and restore utilities; telephone
dialers and directories; and instructional manuals sold as a
unit therewith." Issued November 4, 1997.
3 In the notice of opposition, opposer alleged additional grounds
of opposition, i.e., that applicant’s declaration in the
application of ownership of the mark was made in bad faith, and
that applicant had not used the mark prior to the application
filing date. Applicant denied those allegations in its answer.
Opposer has presented no evidence in support of these claims, nor
has opposer mentioned these claims in its brief. In view of
opposer’s failure to prove these additional pleaded claims, they
are dismissed with prejudice.
Opposition No. 105,884
3
main briefs on the case, and opposer filed a reply brief.
No oral hearing was requested.
The evidence of record in this case consists of the
file of applicant’s application; the pleadings; and the
following materials submitted by opposer under notice of
reliance: status and title copies of opposer’s pleaded
registrations which show that the registrations are in
effect and are owned by opposer; excerpts from two computer
dictionaries; a copy of an advertisement for opposer’s
"Sidekick Plus" product, asserted to be from the May 16,
1988 issue of Info World magazine; a printout of a product
review of opposer’s "Sidekick 95 Deluxe" product from the
April 23, 1996 issue of PC Magazine Online; and a printout
from ZDNet of an undated product review of opposer’s
"Sidekick 95" product. Applicant has raised no substantive
or procedural objections to consideration of any of
opposer’s evidence.
Opposer’s notice of reliance also includes a printout,
from what appears to be opposer’s web page, of advertising
for opposer’s "Sidekick 97" product. This printout is not a
"printed publication" which may be introduced by means of
notice of reliance. Cf. Raccioppi v. Apogee, Inc., 47
USPQ2d 1368 (TTAB 1998). However, inasmuch as this printout
also was submitted by applicant with its answer to the
notice of opposition and with its brief on the case, see
Opposition No. 105,884
4
infra, we deem the parties to have stipulated to the
introduction of the printout, and accordingly shall consider
it.
Applicant submitted no testimony or other evidence
during its assigned testimony period. However, applicant
had attached numerous exhibits to its answer to the notice
of opposition.4 Those exhibits were also attached to
applicant’s brief on the case, along with one additional
exhibit consisting of a February 9, 1999 printout of
opposer’s web page. Opposer has objected to and moved to
strike the evidence attached to applicant’s answer and
brief, on the grounds that the exhibits were not timely
submitted and have not been properly made of record. We
agree. Accordingly, we grant opposer’s motion to strike,
and have given no consideration to the exhibits attached to
applicant's answer and brief. See TBMP §705.
However, two of the exhibits to applicant's answer and
brief also were submitted as evidence by opposer under
notice of reliance, i.e., the printout of a product review
of opposer's "Sidekick 95 Deluxe" product from the April 23,

4 Those exhibits are identified in applicant’s answer’s "List of
Exhibits" as: "Opposer’s Sidekick 97 program description"; "PIM
PC Magazine review"; "Applicant’s program description";
"Applicant’s program listing in SoftSeek Web page"; "Applicant’s
program listing in C/Net download.com"; "PC Magazine’s File
Utilities Finalists"; "Applicant’s Installation program screen";
"Applicant’s press release"; "Opposer’s mission statement";
"Opposer’s on-line product catalog"; and "DropKick program
description."
Opposition No. 105,884
5
1996 issue of PC Magazine Online, and the printout, from
what appears to be opposer’s web page, of advertising for
opposer’s "Sidekick 97" product. In view thereof, we deem
the parties to have stipulated to the introduction of these
materials, and have considered them as evidence of record.
Priority is not at issue in this case, in view of
opposer’s submission of status and title copies of its
pleaded registrations. See King Candy Co. v. Eunice King’s
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974).
Our likelihood of confusion determination under
Section 2(d) is based on an analysis of all of the probative
facts in evidence that are relevant to the factors bearing
on the likelihood of confusion issue. See In re E.I. du
Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and
the similarities between the goods and/or services. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976).
The parties’ respective goods are legally identical,
for purposes of our likelihood of confusion determination.
Applicant’s goods are "computer software for file
management." Applicant’s goods are encompassed by the goods
identified in opposer’s Registration No. 1,334,110, i.e.,
"computer programs," and they appear to be sufficiently
Opposition No. 105,884
6
related to certain of the goods identified in opposer’s
Registration No. 2,110,295, e.g., to "computer software" for
"file transfer," "file conversion," "database searching and
reporting," "data retrieval and processing," and "data
backup and restore utilities," that confusion would be
likely to result if the products were to be marketed under
confusingly similar marks.
Applicant has argued, and it appears from the record,
that opposer’s actual SIDEKICK product is a "personal
information manager" (PIM). On its web page (Item 6 above),
opposer advertises its product as "The Best Way to Manage
Calendars, Contacts, and Communications," and states that
"Sidekick 97 is the #1 best-selling organizer of all time!
With full-featured calendars, flexible contact files, and
powerful communications capabilities, you’ll be able to
manage all your activities with ease." Applicant argues
that personal information managers such as opposer’s are not
the same as or related to file management software such as
applicant’s. However, even if that were true, our
likelihood of confusion determination must be made on the
basis of the goods as set forth in opposer’s registrations,
rather than on the basis of what the record might show to be
the actual goods upon which opposer uses the mark. See
Canadian Imperial Bank of Commerce, N.A. v. Wells Fargo
Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987); In re
Opposition No. 105,884
7
Trackmobile Inc., 15 USPQ2d 1152 (TTAB 1990). As discussed
above, applicant’s goods are legally identical and/or
closely related to the opposer’s goods as identified in
opposer’s registrations.
However, we find that the parties’ respective marks,
when viewed in their entireties in terms of appearance,
sound, connotation and overall commercial impression, are so
dissimilar that confusion is not likely to result from the
parties’ contemporaneous use of their marks on their
respective goods. This is so, notwithstanding the legal
identity and/or relatedness of the parties’ respective
goods. See Kellogg Co. v. Pack’Em Enterprises Inc., 951
F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991).
Opposer’s mark SIDEKICK is comprised of a well-
understood and commonly-used word, i.e., "sidekick." We
take judicial notice that Webster’s Ninth New Collegiate
Dictionary (1990), at page 1094, defines "sidekick" as "a
person closely associated with another as subordinate or
partner." The commercial impression created by opposer’s
mark is consistent with the normal meaning and connotation
of the word "sidekick," and would be immediately understood
as such. The April 23, 1996 product review from PC Magazine
Online, made of record by opposer under notice of reliance,
further corroborates our conclusion regarding the
connotation of and commercial impression created by
Opposition No. 105,884
8
opposer’s mark. The author states: "Just as every movie
hero relies on a trusty sidekick, Starfish Software’s $79.95
Sidekick 95 Deluxe stands ready to serve . . .," and ". . .
if you’re looking for an information manager without remote
access but with flexibility, good looks, and great features,
Sidekick is the digital Tonto for you Lone Rangers."
Applicant’s mark FILEKICK, unlike opposer’s mark
SIDEKICK, appears to be a coined term rather than a
recognizable common word. The marks are visually and
aurally dissimilar, and they have different connotations.
The connotation of applicant’s mark, as applied to
applicant’s file management software, is not immediately
apparent, but it certainly does not have the same
connotation as opposer’s mark SIDEKICK. These differences
between the marks in terms of sight, sound and meaning
suffice to make the marks dissimilar in terms of their
overall commercial impression.
Opposer argues that applicant’s mark and opposer’s mark
both include the word KICK; that there is no evidence of any
use by third parties of marks which include the word KICK on
the relevant goods; and that purchasers may erroneously
conclude that FILEKICK and SIDEKICK are part of a family of
"KICK" marks for computer software products and/or that the
products sold under "KICK" marks originate from a single
source. However, opposer’s mark is comprised of the unitary
Opposition No. 105,884
9
word SIDEKICK, and opposer’s trademark rights are in that
unitary word, not necessarily in the components SIDE and/or
KICK. We find that opposer’s rights in its mark do not
extend so far as to preclude applicant from registering the
otherwise completely dissimilar mark FILEKICK. We find
opposer’s contentions regarding the possibility that
purchasers will assume the existence of a family of "KICK"
marks to be purely speculative and theoretical. "[W]e are
not concerned with mere theoretical possibilities of
confusion, deception, or mistake or with de minimis
situations but with the practicalities of the commercial
world, with which the trademark laws deal." Electronic
Design & Sales Inc. v. Electronic Data Systems Corp., 954
F.2d 713, 21 USPQ 1388, 1391 (Fed. Cir. 1992), quoting from
Witco Chem. Co. v. Whitfield Chem. Co., 418 F.2d 1403, 1405,
164 USPQ 43, 44-45 (CCPA 1969).
In short, having considered and balanced the evidence
of record pertaining to the relevant du Pont factors, we
Opposition No. 105,884
10
conclude that there is no likelihood of confusion in this
case.
Decision: The opposition is dismissed.
T. J. Quinn
C. E. Walters
C. M. Bottorff
Administrative Trademark Judges
Trademark Trial and Appeal Board