Tangent Computer, Inc.v.Tangent Systems, Inc.

Trademark Trial and Appeal Board

Jul 23, 2002

No. 92026666 (T.T.A.B. Jul. 23, 2002)

7/23/02
Paper No. 51
RFC

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Tangent Computer, Inc.
v.
Tangent Systems, Inc.

_____

Cancellation No. 26,666
_____

Stuart Kaufman for Tangent Computer, Inc.

Thomas P. Arden of McBride Baker & Coles for Tangent
Systems, Inc.
_____

Before Cissel, Quinn and Drost, Administrative Trademark
Judges.

Opinion by Cissel, Administrative Trademark Judge:
On June 3, 1997, Registration No. 2,066,916 issued
on the Principal Register to Tangent Systems, Inc., an
Illinois corporation. This registration is for the mark
“TANGENT SYSTEMS” for “computer hardware, computer
software in the area of document processing, document
imaging, and data-processing,” in Class 9; and “computer
manuals for use with computer hardware and computer
software in the area of document processing, document
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Cancellation No. 26,666
2
imaging and data processing,” in Class 16. The word
“SYSTEMS” is disclaimed apart from the mark as shown.
The registration claims first use of the mark and first
use of the mark in commerce in connection with the
identified goods on February 4, 1984.
On July 24, 1997, Tangent Computer, Inc. filed a
petition for cancellation of this registration. As
grounds for cancellation, petitioner pleaded that it had
standing and that the registration was obtained by fraud.
Petitioner alleged that its own application to register
its “TANGENT COMPUTER” mark for, “inter alia, computers
and pre-programmed computer software” had been refused
based on the registration it seeks to cancel. Further,
petitioner alleged that respondent does not use its mark
on “computer hardware” in the broad sense of this term,
but rather only in connection with “goods occupying only
the smallest niches within the market for all ‘computer
hardware,’” and that by failing to qualify the type,
purpose, or intended market for its goods, respondent
perpetuated a fraud.
Respondent filed a motion to dismiss the petition
for cancellation on the grounds that the petition failed
to state a claim upon which relief could be granted. The
Board granted respondent’s motion to dismiss, but noted
Cancellation No. 26,666
3
that under Section 18 of the Lanham Act, 15 U.S.C.
Section 1068, the Board has the authority to limit or
otherwise modify the way the goods or services are
identified in a registration or application. The Board
explained that in order to prevail on a claim made under
Section 18 of the Act, a party must plead and prove that
a finding of likelihood of confusion would be avoided by
the entry of the restriction specified in the petition to
cancel, and that the respondent is not using its mark on
any goods sought to be excluded by the proposed
restriction.
Noting that petitioner had failed to state a legally
sufficient claim for restriction of the registration
under Section 18, the Board allowed petitioner to file an
amended petition for partial cancellation of the
registration in accordance with that section of the Act.
On July 6, 1998, petitioner filed an amended
petition for partial cancellation of the registration.
The petition alleged that respondent did not use its
registered mark on “computer hardware” in general, but
rather only in connection with document or image scanning
computer software which is loaded into scanning hardware
for sale to customers. Similarly, petitioner alleged
that the terminology used in the identification-of-goods
Cancellation No. 26,666
4
clause for Class 16 “is ambiguous insofar as it may be
understood as encompassing all ‘computer manuals for use
with computer hardware,’ when in fact respondent’s use is
in connection with only manuals used in connection with
the equipment actually sold by respondent under the mark,
as described above.” The amended petition for
cancellation requested that the goods specified in Class
9 of the registration be restricted to “computer hardware
and software, but strictly limited to computer hardware
and software used exclusively for reading, storing in
digital form, and processing documents and graphic
designs.” The petition requested restriction of the
identification of respondent’s Class 16 goods to
“instruction and maintenance manuals for users of
computer hardware and software used exclusively for
reading, storing in digital form, and processing
documents and graphic designs.”
Respondent answered the amended petition for partial
cancellation by denying the essential allegations
therein.
A trial was conducted in accordance with the
Trademark Rules of Practice, and both petitioner and
respondent filed briefs, but an oral hearing before the
Board was not requested. In its brief, petitioner
Cancellation No. 26,666
5
limited the issue before the Board to the identification
of the computer hardware in Class 9, specifically
excluding the software and manuals which also are listed
in the registration petitioner seeks to have amended. We
agree with respondent that petitioner’s failure to argue
or even mention the restrictions to the software and
manuals which were pleaded in the amended petition for
cancellation constitutes a waiver of those claims.
Accordingly, the sole issue before us in this proceeding
is whether the registration should be amended to identify
the computer hardware in Class 9 as “computer hardware
used exclusively for reading, storing in digital form,
and processing documents and graphic designs.” For the
record, however, we note that even if petitioner had
maintained its position that the pleaded restrictions
with regard to the software in Class 9 and the manuals in
Class 16 should be adopted, the restriction would not
have been justified by this record because the proposed
amended identification-of-goods clauses exclude products
on which respondent uses the mark and which were
encompassed within the original language in the
registration as it issued. In any event, the proposed
changes would not avoid the likelihood of confusion.
Cancellation No. 26,666
6
After the close of the trial, petitioner filed
concurrently with its brief a request that the pleadings
be amended to adopt the language used in respondent’s
Canadian registration for computer products. Petitioner
argues that this language is a more accurate indication
of the precise nature of the goods on which respondent
uses its registered mark in the United States than either
the identification-of-goods clause in the registration,
as issued, or the proposed identification-of-goods clause
pleaded by petitioner in the amended petition for
cancellation. Respondent disagrees, however, and points
out that the Canadian registration which petitioner would
have serve as the model for the amendment petitioner
seeks in this case is not even properly of record. In
any event, respondent contends, the proposal to amend the
pleadings was neither timely made nor is supported by
evidence properly of record.
We agree with respondent that amending the pleadings
at this juncture would be improper. Even if the Canadian
registration had been properly made of record,1 petitioner
did not timely proffer the motion to amend specifying the
wording that petitioner seeks to adopt, and the issue of

1 The first Notice of Reliance with which the registration was
submitted was stricken, and as explained below, the second such
Cancellation No. 26,666
7
whether respondent’s goods sold bearing the registered
mark in interstate commerce in the United States are
accurately limited to the goods identified in the
Canadian registration was neither pleaded nor tried with
the consent or knowledge of respondent.
In any event, even if the pleadings were amended to
adopt the language used in respondent’s Canadian
registration, the result in this proceeding would not be
different. The evidence, as discussed below, would still
support the same conclusions with regard to the goods on
which respondent uses its mark in the United States and
whether the proposed restriction excludes any products on
which respondent actually uses its mark here.
Also filed concurrently with petitioner’s brief was
a “motion for post-trial review of certain interlocutory
orders,” namely, the January 24, 2000 ruling denying
petitioner’s motion for a continuance; the February 1,
2000 ruling denying petitioner’s request for
reconsideration of the January 24, 2000 ruling; and the
April 14, 2000 ruling denying petitioner’s motion for
enlargement of the testimony period and for a stay of
proceedings, and granting respondent’s motion to strike
petitioner’s notices of

notice attempted to introduce it for another purpose, one for
Cancellation No. 26,666
8
reliance on the Canadian registration owned by respondent
and on pages 83-98 of the discovery deposition of Steven
Mack, respondent’s president. The Board has reconsidered
these rulings, but can find no error in them, so they
stand as issued.
The record before us in this proceeding therefore
consists of the registration sought to be amended by
petitioner; the testimonial deposition, with exhibits, of
respondent’s president, Stephen Mack; and the testimonial
deposition of Jerry Klein, petitioner’s expert in
computer-related technology and business.
Not of record is the discovery deposition of Mr.
Mack, although petitioner makes a number of arguments as
if this deposition were part of the record before us. As
noted above, petitioner’s first attempt to make 15 pages
of Mr. Mack’s discovery deposition of record was
unsuccessful. On the last day of its rebuttal testimony,
petitioner filed two notices of reliance, one stating
that petitioner would rely upon Mr. Mack’s discovery
deposition, but noting that the deposition was not
attached to the notice because it had already been filed
with the Board in connection with the previously stricken
Notice of Reliance. As noted by respondent, this second

which it could not be used.
Cancellation No. 26,666
9
notice acknowledged the fact that the previous Notice of
Reliance on certain pages of the discovery deposition had
been stricken from the record, but did not acknowledge
that the previous notice had been accompanied by only
pages 83-98 of that deposition. Many of the references
in petitioner’s brief are to pages of the transcript that
were not attached to the stricken Notice of Reliance, and
neither the previously-stricken portions of the
transcript nor the entire transcript was submitted with
the second Notice of Reliance on the final day of
petitioner’s rebuttal testimony period.
Petitioner finally submitted to the Board,
apparently without notice to respondent, a complete
transcript of Mr. Mack’s deposition on February 22, 2000,
after petitioner’s testimony period had long since
closed. This was in spite of the fact that the Board had
previously warned the parties that strict compliance with
the Trademark Rules of Practice would be required, and
that any papers filed with the Board in violation of
these rules would be given no consideration.
In essence, petitioner now asks us to consider the
complete 1998 discovery deposition of Mr. Mack, even
though petitioner’s previous Notice of Reliance on
portions of it were stricken and respondent was never
Cancellation No. 26,666
10
given notice that the transcript of the entire deposition
was being submitted to the Board at the end of February,
2000, on the final day of petitioner’s rebuttal testimony
period. Because petitioner did not give timely notice of
the filing of this discovery deposition and properly file
a copy of the transcript with the Notice of Reliance, it
has not been considered by the Board.
As noted above, the Canadian registration is not of
record either. Petitioner’s earlier Notice of Reliance
on this registration had been stricken by the Board's
order of April 14, 2000. Contrary to the situation with
regard to the Mack discovery deposition, the Canadian
registration was actually attached to the second Notice
of Reliance, so that does not present a problem, but the
second Notice of Reliance on the Canadian registration
states that said registration is relevant because it is
evidence of respondent’s use of its mark in commerce in
the United States, which petitioner contends is in a
manner contrary to the manner described by Mr. Mack in
his testimonial deposition.
As respondent points out, however, a foreign
registration is irrelevant to the use of a mark in this
country. See TMBP Section 703.02(a); Societe Anonyme
Cancellation No. 26,666
11
Marne et Campagne v. Meyers, 250 F.2d 734, 116 USPQ 153
(CCPA 1957).
Accordingly, petitioner’s motion for the Board to
reverse its rulings that the Canadian registration and
the discovery deposition of Mr. Mack are not properly of
record is denied. Petitioner has not demonstrated that
the rulings excluding this evidence were in error.
Neither of them has been considered by the Board in
determining the outcome of this proceeding.
We note for the record, however, that even if these
items had been considered, the outcome of this proceeding
would not have changed. Mr. Mack’s discovery deposition
is not fundamentally inconsistent with his testimonial
deposition, and the Canadian registration has no bearing
on respondent’s claim of rights in the United States.
Based on careful consideration of the record before
us and the written arguments presented by the parties in
their briefs, we hold that petitioner has not met its
burden of establishing that the restriction it seeks in
the amended petition for cancellation does not exclude
products, encompassed within the identification-of-goods
clause in the registration as issued, on which respondent
actually uses the registered mark, nor has petitioner
demonstrated that confusion would be avoided if the
Cancellation No. 26,666
12
language it proposes for respondent’s registration were
adopted.
The testimony of Mr. Mack on the issue regarding the
goods on which respondent uses its mark in this country
is clear, specific and convincing. When asked, he
identified a variety of computer hardware products
respondent sells under its registered mark which do not
fall within the description petitioner urges the Board to
adopt, “computer hardware used exclusively for reading,
storing in digital form, and processing documents and
graphic designs.” Examples include the following:
software protection keys, which are devices that are used
with personal computers to prevent copying and to enable
control and identification of licensees; personal
computers; file servers; telephone equipment; computer
peripherals; modems; network adapters; hubs; network
cabling; terminal emulation hardware; EPROM chips; memory
chips; disk packs; disk drives; industrial inkjet
printers; printed circuit boards; tape drives; optical
character recognition hardware; disk drive interface
boards; controller boards; uninterruptible power
supplies; industrial static suppression systems; and
computer furniture.
Cancellation No. 26,666
13
Mr. Klein’s testimony regarding the goods of the
parties is not persuasive of petitioner’s contention that
the proposed restriction would not exclude goods on which
respondent uses its mark. As respondent points out,
although Mr. Klein apparently has a great deal of
experience in some areas of the computer business, his
conclusions as to the nature of both petitioner’s and
respondent’s business activities and the products on
which they use their respective marks were based on
information he discovered when he attempted to learn
about these facts from others. His testimony as to the
products sold by respondent under its mark was not based
on first-hand knowledge or personal experience. He had
never bought, sold or used any of the products marketed
by respondent under the registered mark. He admitted
that he does not consider himself an expert in the image-
processing equipment industry, confessing that he began
his investigation “without knowing anything about the
industry.” (p. 125 of his testimony). He stated that his
“task was to investigate the Tangent Systems’ and Tangent
Computers’ product lines, their customers, their
applications, distribution channels, distribution means
and to gain an understanding and do research into their
businesses and their markets and to be able to form an
Cancellation No. 26,666
14
opinion on the potential for likelihood of confusion.”
(at p. 37). In order to accomplish this task, he
apparently conducted some research and asked a number of
individuals about respondent’s business, but none of
these people was employed by respondent.
Simply put, we find that Mr. Mack’s uncontroverted
testimony as to his firsthand knowledge regarding the
products on which the company he runs uses its registered
mark is more persuasive than the conclusions reached by
Mr. Klein based on his independent investigation into
this issue.
Mr. Klein’s own testimony shows that he is not an
expert on respondent’s use of its mark, on petitioner’s
use of its mark, or, for that matter, on survey
techniques. His conclusions based on his “survey” of
individuals he thought represented respondent’s customers
and business partners, accordingly, have not persuaded us
to disregard Mr. Mack’s direct, clear testimony as to the
products on which respondent uses its mark.
In summary, the testimony of Mr. Klein does not
persuade us that the restriction sought by petitioner
would not exclude goods on which respondent actually uses
its mark.
Cancellation No. 26,666
15
We therefore need not even get to the question of
whether confusion with petitioner’s trademark would be
avoided if respondent’s registration were limited to the
goods specified in petitioner’s proposed amendment to
respondent’s identification-of-goods clause. If we were
to have reached that question, however, we would have
concluded that the proposed limitation would not have
avoided the likelihood of confusion. By petitioner’s own
account, its application identifies its products as,
among other things, “computers and pre-programmed
computer software.” Based on the evidence before us in
this proceeding, this language encompasses the products
respondent sells under its registered mark. Although Mr.
Klein testified as to the nature of the goods on which he
had learned petitioner uses its mark, and certainly
petitioner might subsequently seek to amend its
application to specify precisely the kinds of computers
and software on which it uses its mark, neither
petitioner’s current application nor the evidence in this
record limits this broad identification, and no one from
petitioner’s business has provided testimony or evidence
regarding the precise nature of the computers on which
petitioner uses the mark it seeks to register. We
therefore have no proper basis upon which to conclude
Cancellation No. 26,666
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that petitioner’s goods sold under its mark are so
different from those sold by respondent under its very
similar registered mark that confusion would not be
likely, even if the restriction to respondent’s
registration urged by petitioner were to be adopted.
On this record, petitioner has failed to meet its
burden of establishing that the amendment it proposes for
respondent’s registration does not exclude any goods that
are covered by the original identification-of-goods
clause and on which respondent actually uses its mark,
nor has petitioner established that confusion would be
avoided if the proposed language were adopted. As
respondent points out, because respondent is the prior
user and registrant, any doubts would necessarily be
resolved in its favor. TBC Corp. V. Holsa, Inc., 126
F.3d 1470, 44 USPQ2d 1315 (Fed. Cir. 1997).
Accordingly, the petition for cancellation under
Section 18 of the Lanham Act is denied.