The PNC Financial Services Group, Inc.v.Keith Alexander Ashe dba Spendology and Spendology LLC joined as party defendant

Trademark Trial and Appeal Board

Oct 15, 2013

No. 91207409 (T.T.A.B. Oct. 15, 2013)

Goodman

Mailed: October 15, 2013

Opposition No. 91207409

The PNC Financial Services
Group, Inc.

v.

Keith Alexander Ashe dba
Spendology and Spendology LLC
joined as party defendant

Before Quinn, Cataldo and Masiello, Administrative
Trademark Judges.

By the Board:

Spendology LLC (hereinafter “applicant”)1 seeks to
register in standard character form the mark SPENDOLOGY for
the following services in International Class 36: “Web-
based personal finance tools, namely, providing a website
featuring non-downloadable instructional videos in the
field of finance, online financial calculators, and online
information in the field of finance.” 2 The PNC Financial

1 Although Keith Alexander Ashe remains joined to this
proceeding, see Board’s order of April 17, 2013, the involved
application was assigned to Spendology LLC as of January 30,
2013, and recorded in the Office’s Assignment Branch at Reel
4950, Frame 0611.
2 Application Serial No. 85456136, filed October 25, 2011, under
Section 1(a), amended to Section 1(b) by response to Office
Action, April 9, 2012.

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
Opposition No. 91207409

2
Services Group, Inc., (hereinafter “opposer”) has opposed
registration on the grounds of priority and likelihood of
confusion. Opposer alleges ownership of an application for
the mark SPENDOLOGY for Class 36: “an online money
management tool that allows account holders to track
balances, budgets, and expenses, by category and time
period.”3 Opposer also relies on its common-law rights
through use of the mark SPENDOLOGY.
Applicant, in its answer, has denied the salient
allegations of the notice of opposition and asserted
affirmative defenses.4
Now before the Board are the parties’ cross-motions
for summary judgment on the priority and Section 2(d)
ground, filed May 14, 2013, (applicant) and June 18, 2013,
(opposer), respectively. In essence, each party argues
that it has priority based on either actual trademark use
or use analogous to trademark use. Although applicant did
not respond to opposer’s cross-motion for summary judgment,

3 Application Serial No. 85650817, filed June 13, 2012, under
Section 1(a), claiming a date of first use and first use in
commerce of August 2010.
4 Applicant’s affirmative defenses nos. 1-3 and 5-8 are not true
affirmative defenses but amplifications of its denial to
opposer’s priority and likelihood of confusion claim.
Applicant’s affirmative defense no. 4 which asserts “res
judicata” based on the examining attorney’s Office action is
insufficient. It is well-settled that actions by examining
attorneys are not binding on the Board and have no precedential
value. See In re Medical Disposables Co., 25 USPQ2d 1801, 1805
(TTAB 1992).
Opposition No. 91207409

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due to the dispositive nature of the motion, we exercise
our discretion and will consider both cross-motions on
their merits. SFW Licensing Corp. v. Di Pardo Packing
Ltd., 60 USPQ2d 1372, 1375 (TTAB 2001).
A party is entitled to summary judgment when it has
demonstrated that there is no genuine dispute as to any
material fact and that it is entitled to judgment as a
matter of law. Fed. R. Civ. P. 56(a). In reviewing a
motion for summary judgment, the evidentiary record and all
reasonable inferences to be drawn from the undisputed facts
must be viewed in the light most favorable to the nonmoving
party. Olde Tyme Foods Inc. v. Roundy's Inc., 961 F.2d
200, 22 USPQ2d 1542, 1544 (Fed. Cir. 1992). The Board may
not resolve issues of material fact; it may only ascertain
whether such issues are present. See Lloyd's Food Products
Inc. v. Eli's Inc., 987 F.2d 766, 25 USPQ2d 2027 (Fed. Cir.
1993). When cross-motions for summary judgment are
presented, the Board evaluates each motion on its own
merits and resolves all doubts and inferences against the
party whose motion is being considered. Mingus
Constructors, Inc. v. United States, 812 F.2d 1387, 1390–91
(Fed. Cir. 1987)).
Opposer's motion for summary judgment is supported by
the declaration of Bryan L. Mackrell, Product Manager of
Opposition No. 91207409

4
Payments & eBusiness, PNC Financial Group, Inc. (Mackrell
declaration), and accompanying exhibit; and applicant’s
interrogatory responses.
Applicant's motion for summary judgment is supported
by exhibits and applicant’s and opposer’s discovery
responses.5
Standing

Before we consider the merits of the cross-motions for
summary judgment, we must first consider whether opposer
has demonstrated that there is no genuine dispute of
material fact as to its standing to bring this opposition
proceeding. Standing is a threshold issue that must be
proven by a plaintiff in every inter partes case. Ritchie
v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999);
Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d
1024, 213 USPQ 185 (CCPA 1982).

5 Applicant’s exhibits are not accompanied by any authenticating
affidavit or declaration. However, the 2010 amendments to Fed.
R. Civ. P. 56(c)(2), “‘eliminated the unequivocal requirement
that documents submitted in support of a summary judgment motion
must be authenticated.’” Akers v. Beal Bank, 845 F.Supp.2d 238,
243 (D.D.C. 2012)). The lack of authentication is now grounds
for objection, but only on the basis that the evidence cannot be
admissible. Rule 56(c)(2); Foreword Magazine, Inc. v. Overdrive,
Inc., No. 1:10–cv–1144, 2011 WL 5169384, at *2 (W.D. Mich. Oct.
31, 2011). Here, opposer has not raised any objection to
applicant's exhibits. Accordingly, the exhibits will be
considered as being what they purport to be. See e.g., Slate v.
Byrd, No. 1:09CV852, 2013 WL 1103275, at * 2 (M.D.N.C. 2013)
(“Because [defendant] has not filed an objection contending that
the cited material ‘cannot be presented in a form that would be
admissible in evidence,’ no basis exists for the Court to decline
consideration of the material at issue.”).
Opposition No. 91207409

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The Mackrell declaration states that opposer has been
offering SPENDOLOGY money management tools to the general
public since August 26, 2010. The Mackrell declaration,
which declares opposer's use of SPENDOLOGY in connection
with online money management tools, is sufficient to
establish opposer's standing to bring this opposition
proceeding. See Cunningham v. Laser Golf Corp., 222 F.3d
943, 55 USPQ2d 1842 (Fed. Cir. 2000) (direct commercial
interest satisfies the “real interest” test). Moreover,
applicant does not contend otherwise. Accordingly, we find
no genuine dispute of material fact exists regarding
opposer's standing.
Likelihood of confusion
In determining likelihood of confusion, we are guided
by the factors set out in In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
For purposes of their motions, the parties are
essentially in agreement that likelihood of confusion is
not in dispute in this case because the parties’ marks are
identical and the services are related. Opposer’s notice
of opposition, paragraph 10; opposer’s response to
applicant’s interrogatory no. 6; applicant’s response to
opposer’s interrogatory no. 8. Applicant’s summary
judgment brief, p. 3; Opposer’s summary judgment response
Opposition No. 91207409

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and brief p. 10. Apple Computer v. TVNET.net Inc., 90
USPQ2d 1393, 1395 (TTAB 2007) (considering certain facts
undisputed based on discovery responses and on concessions
made in the brief in response to a motion for summary
judgment).
Accordingly, we find there is no genuine dispute of
material fact that the parties’ contemporaneous use of the
mark at issue is likely to cause confusion.
Priority

To establish priority on a likelihood of confusion
claim brought under Trademark Act Section 2(d), a party
must prove that, vis-à-vis the other party, it owns “a mark
or trade name previously used in the United States ... and
not abandoned....” Trademark Act § 2, 15 U.S.C. § 1052.
Opposer does not own an existing registration upon which it
can rely for purposes of priority. King Candy Co., Inc. v.
Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108
(CCPA 1974). In addition, opposer cannot rely on the
filing date of its pleaded application as a constructive
use date for purposes of priority because its pleaded
application has a later filing date (June 13, 2012) than
applicant’s Section 1(b) application, which has a filing
and constructive use date of October 25, 2011.
Opposition No. 91207409

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Therefore, in order for opposer to prevail on its
priority claim, opposer must prove that it has a
proprietary interest in the mark SPENDOLOGY and that the
interest was obtained prior to the filing date of
applicant’s application, October 25, 2011, or prior to any
date of use on which applicant may rely, including any use
analogous to trademark use. Herbko International Inc. v.
Kappa Books Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1378 (Fed.
Cir. 2002); Otto Roth & Co., Inc. v. Universal Corp., 640
F.2d 1317, 209 USPQ 40, 43 (CCPA 1981); L.& J.G. Stickley
Inc. v. Cosser, 81 USPQ2d 1956, 1966 (TTAB 2007); Dyneer
Corp. v. Automotive Products plc, 37 USPQ2d 1251, 1254
(TTAB 1995).
In support of its motion, applicant has submitted
evidence so as to establish an earlier priority date than
its constructive use date of October 25, 2011, based on use
analogous to trademark use. Applicant does not claim, nor
does any evidence support any other use, e.g., trade name
use6, that might give it priority.

6Prior use of a trade name in connection with the sale or
advertising of goods or services, if of such a nature and extent
to create an association by the purchasing public of the goods or
services with the user, is sufficient to establish priority in an
inter partes dispute. TuTorTape Laboratories, Inc. v. Halvorson,
155 USPQ 268, 270 (TTAB 1967).

Opposition No. 91207409

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In order to demonstrate that use analogous to
trademark use has given rise to proprietary rights, a party
must show that such prior use was sufficient to create an
association in the minds of the purchasing public between
the mark and the goods. Malcolm Nicol & Co. v. Witco
Corp., 881 F.2d 1063, 11 USPQ2d 1638, 1639 (Fed. Cir.
1989). We may infer the fact of identification of the mark
with the party on the basis of indirect evidence regarding
the party's use of the word or phrase in advertising
brochures, catalogs, newspaper ads, articles in newspapers,
trade publications and Internet websites which create a
public awareness of the designation as a trademark
identifying the party as a source. T.A.B. Systems v.
PacTel Teletrac, 77 F.3d 1372, 37 USPQ2d 1879, 1882 (Fed.
Cir. 1996) vacating Pactel Teletrac v. T.A.B. Systems, 32
USPQ2d 1668 (TTAB 1994); Giersch v. Scripps Networks Inc.,
90 USPQ2d 1020, 1023 (TTAB 2009).
We find that taken as a whole, applicant’s exhibits do
not establish proprietary rights arising before its October
25, 2011 constructive use date. West Florida Seafood, Inc.
v. Jet Restaurants, 31 F.3d 1122, 31 USPQ2d 1660, 1663
(Fed. Cir. 1994).
The personal budgeting survey created on June 15,
2010, and an undated budget presentation are not evidence
Opposition No. 91207409

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of use analogous to trademark use as neither document
references the mark SPENDOLOGY.7
Applicant’s securing of the spendology.net web domain
from hostgator.com on July 24, 2010 does not by itself
establish use analogous to trademark use in connection with
the services. Brookfield Communications, Inc. v. West
Coast Entertainment Corp., 174 F.3d 1036, 50 USPQ2d 1545,
1556 (9th Cir. 1999) (registration of a domain name does
not by itself constitute use for purposes of establishing
priority of use).
With regard to the SPENDOLOGY website itself,
applicant has provided two SPENDOLOGY “beta” website pages
which are not self-authenticating as they do not include
the date and URL on the printout, although one page
includes a copyright notice dated 2010. Neither page
references the services identified in the involved
application.8 We note that even if the pages had been
authenticated, they could only be considered for what they
show on their face and not for the truth of matters

7 The survey was sent to six individuals; the presentation was
not sent to any customers. Applicant’s interrogatory responses,
5 and 6.
8 The page www.spendology.net/archiveindex.php states that
“Spendology is a web app that combines event planning and
budgeting to help you plan and prioritize your expenses.”
Applicant has submitted the web pages under a confidential
filing. If applicant regards the beta website as a secret, it
implies that applicant has not yet made the website public.
Opposition No. 91207409

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asserted therein, as no declaration testimony has been
provided regarding how many persons viewed or were exposed
to the website. Therefore, the website evidence fails to
establish use analogous to trademark use in connection with
applicant’s services.
As to applicant’s use of social media, the act of
joining Twitter on April 25, 2011, or Facebook on May 21,
2011, (applicant’s interrogatory response no. 7) does not
by itself establish use analogous to trademark use. Cf.
Brookfield Commc'ns, Inc., 50 USPQ2d at 1556 (registration
of domain name does not by itself constitute use for
purposes of priority). With regard to the social media
evidence, which includes URL and dates of publication,
there is no declaration testimony as to consumer exposure
to applicant’s blog posts, twitter page, tweets, or
Facebook page. None of this evidence shows use in
connection with applicant’s identified services. In
particular, the blog postings at spendology.wordpress.com,
“a discussion at the intersection of behavior economics,
innovation, and personal finance” published on July 21,
2010, July 26, 2010, August 3, 2010, and August 25, 2010,
do not reference applicant’s services. Although the
“About” page on the blog identifies SPENDOLOGY as “a
software company that is making budgeting super easy” this
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reference does not relate to the services as identified in
the involved application. Applicant’s printout of its
SPENDOLOGY TWITTER page shows a “tweet” asking “Are you a
smart spender?” on April 25, 2011, which makes no reference
to opposer’s services. The SPENDOLOGY Facebook cover page
makes no reference to applicant’s services, and the June 2,
2011 Facebook posting shares links to articles by NPR and
Vanguard, but provides no information in connection with
applicant’s services. Thus, this evidence fails to
establish use analogous to trademark use.
With regard to the remaining exhibits, the e-mail
reminder dated August 31, 2010, for the “Spendology
kickoff” on September 1, 2010, is not in the nature of
advertising and does not reference the services identified
in the application. The June 27, 2011 press release does
not show use in connection with the identified services as
it discusses Spendology in connection with a web
application for budgeting. Applicant’s receipt, dated
October 18, 2011, evidencing its attendance at the
Bloomberg Empowered Entrepreneur conference under the
company name of “Spendology” is not evidence of services
being offered to the public. Applicant also has submitted
evidence dated after applicant’s constructive use date of
October 25, 2011: Google Adwords campaigns for the dates
Opposition No. 91207409

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of November 1, 2011-December 31, 2011 and May 1, 2012-June
2012, which do not identify the Adwords purchased9, a
January 2, 2012 press release regarding the Spendology
Budgetizer which web application relates to services other
than those identified in the involved application, and an
e-mail for an event on March 15, 2012, regarding “How the
Ideas Economy are Fueling the Global Economy” with a bcc:
to keithashe@spendology.net, but otherwise containing no
reference to applicant or its services.
We find that applicant’s indirect evidence fails to
establish use analogous to trademark use as it does not
support an inference of identification in the mind of the
consuming public. See T.A.B. Systems, 37 USPQ2d at 1881
(analogous use must be “of such a nature and extent as to
create public identification of the target term with the
. . . product or service”).

9 Applicant’s interrogatory response no. 7 also indicates a
Google Adword campaign for the dates of June 14, 2011-June 19,
2011, which is not supported by an exhibit. While purchase or
use of keywords to trigger pop-up or banner advertisements may
amount to use in commerce, these purchases are not supported by
declaration testimony as to the nature of the “Adwords” purchased
and, as noted above, two of the Adword campaigns are subsequent
to applicant’s filing date. See, e.g., Rescuecom Corp. v.
Google, Inc., 562 F.3d 123, 130 (2d Cir. 2009) (holding that use
of trademarks as keywords constitutes use in commerce); Hearts on
Fire Co., LLC v. Blue Nile, Inc., 603 F. Supp.2d 274, 282
(D.Mass. 2009) (finding the purchase of trademarks to trigger
pop-up or banner advertisements is use in commerce).

Opposition No. 91207409

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Accordingly, we find that the earliest date upon which
applicant is entitled to rely for priority purposes is the
filing date of its application, October 25, 2011,
contingent upon its registration.
Opposer, in its cross-motion, is relying on its common
law rights to prove its priority and a use date of August
26, 2010. Opposer has submitted, as evidence of its prior
rights, the Mackrell declaration in which Mr. Mackrell
declares that opposer's first use of SPENDOLOGY in the
United States was August 26, 2010, in connection with money
management tools for tracking and managing expenses located
at the website www.pncvirtualwallet.com. Mr. Mackrell
further declares that opposer has used the SPENDOLOGY mark
continuously in commerce since that time. To corroborate
this statement in his declaration, Mr. Mackrell has
included website printouts showing use of the mark in
connection with the services. Mr. Mackrell declares that
opposer used the mark in “substantially the same” form in
2010 as its current use, as reflected on the website
printout. The website printout exhibit on the first page
states: “Spending Zones SpendologySM tools provide a simple
way to see exactly what you’re spending your money on each
month . . . Broken down into categories . . . it allows you
to set a budget for each.” The second page of the exhibit
Opposition No. 91207409

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shows a user’s budget graph and expenses with “SpendologySM
Tools” and “Track Budget” displayed in the upper left hand
corner of the page.
We find therefore, that based on the Mackrell
declaration and accompanying exhibit, the earliest date on
which opposer is entitled to rely for purposes of priority
is August 26, 2010. See National Bank Book Co. v. Leather
Crafted Products, Inc., 218 USPQ 826, 828 (TTAB 1983) (oral
testimony may be sufficient to prove the first use of a
party's mark when it is based on personal knowledge, it is
clear and convincing, and it has not be contradicted);
Liqwacon Corp. v. Browning-Ferris Industries, Inc., 203
USPQ 305, 316 (TTAB 1979) (oral testimony may be sufficient
to establish both prior use and continuous use when the
testimony is proffered by a witness with knowledge of the
facts and the testimony is clear, convincing, consistent,
and sufficiently circumstantial to convince the Board of
its probative value); GAF Corp. v. Anatox Analytical
Services, Inc., 192 USPQ 576, 577 (TTAB 1976) (oral
testimony may establish prior use when the testimony is
clear, consistent, convincing, and uncontradicted).
As we stated supra, applicant failed to respond to
opposer’s cross-motion. The documents attached to
applicant's brief in support of applicant's motion for
Opposition No. 91207409

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summary judgment do not reveal the existence of any genuine
dispute of material fact with regard to priority.
Inasmuch as opposer is entitled to rely on August 26,
2010, as its priority date which is a date earlier than
applicant’s October 25, 2011 constructive use date, we find
there is no genuine dispute of material fact that opposer
has established its prior use of the mark SPENDOLOGY for an
“online money management tool that allows account holders
to track balances, budgets, and expenses, by category and
time period” over applicant.
Decision

We find, based on the record herein and the applicable
law, that there is no genuine dispute of material fact that
opposer has established its standing, priority, and
likelihood of confusion as a matter of law. Opposer's
motion for summary judgment is granted and applicant’s
motion for summary judgment is denied.
The opposition is sustained, and registration to
applicant is refused.