United States Postal Servicev.RPost Communication Limited

Trademark Trial and Appeal Board

Nov 2, 2015

No. 91210479 (T.T.A.B. Nov. 2, 2015)

DUNN Mailed: November 2, 2015

Opposition No. 91210479
United States Postal Service
v.
RPost Communication Limited

Before Cataldo, Taylor, and Mermelstein, Administrative Trademark
Judges:

By the Board:
This case comes up on Opposer’s motion, filed June 16, 2015, for
summary judgment on the claim of likelihood of confusion and the affirmative
defenses of acquiescence, estoppel, and unclean hands. The motion has been
fully briefed.
On June 27, 2011, RPost Communication Limited (Applicant or RPost)
filed an application to register the mark CERTIFIED EMAIL for “electronic
mail and messaging services, namely, that provide the recipient with a
means of authentication” pursuant to Trademark Act Section 2(f) of the
Trademark Act, 15 U.S.C. § 1052(f), and with a disclaimer of EMAIL.1

1 Application Serial No. 85357508 filed June 27, 2011, and alleging May 23, 2005 as
the date of first use of the mark anywhere and 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
Opposition No. 91210479
2
On May 1, 2013, the United States Postal Service (Opposer or USPS)
filed a notice of opposition pleading ownership of its mark CERTIFIED
MAIL, the subject of common law use and Registration No. 3898915, which
issued under Trademark Act Section 2(f) with a disclaimer of MAIL, for
“mailing services, namely, sorting, handling and receiving packages and
letters” and “delivery services, namely, pickup, transportation and delivery of
packages and letters by various modes of transportation,”2 and claims of false
suggestion of a connection and priority of use and likelihood of confusion.
Applicant’s answer denied the salient allegations of the notice of
opposition, and pleaded the affirmative defenses of acquiescence, estoppel,
and unclean hands. Pursuant to the Board’s October 3, 2014 order granting
the parties’ consented motion, discovery closed December 12, 2014.
On June 17, 2013, in a related consolidated opposition and cancellation
proceeding, parent proceeding Opposition No. 91158431 (United States Postal
Service v. RPost Communication Limited), the Board issued its final decision
which, inter alia, granted cancellation of Applicant’s registered marks
REGISTERED EMAIL and (R)EGISTERED E-MAIL for “delivery of
messages by electronic transmission to a designated recipient on a basis
equivalent to registered mail” on the ground of likelihood of confusion with
USPS’ common law mark REGISTERED MAIL for mail delivery services. On

2 Issued January 4, 2011.
Opposition No. 91210479
3
April 10, 2015, the Court of Appeals for the Federal Circuit affirmed the
Board’s decision pursuant to Fed. Cir. R. 36.
A motion for summary judgment is a pretrial device intended to save
the time and expense of a full trial when the moving party is able to
demonstrate, prior to trial, that there is no genuine dispute of material fact,
and that it is entitled to judgment as a matter of law. See Fed. R. Civ. P.
56(a); Celotex Corp. v. Catrett, 477 U.S. 317 (1986). 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
disputes of material fact; it may only ascertain whether such disputes are
present. See Lloyd’s Food Prods. Inc. v. Eli’s Inc., 987 F.2d 766, 25 USPQ2d
2027 (Fed. Cir. 1993).
Standing is a threshold issue that must be proven by a plaintiff in
every inter partes case. See Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d
1023, 1025-26 (Fed. Cir. 1999). Here, Opposer proved ownership of a valid
and subsisting registration for its pleaded mark by submitting a status and
title copy of the registration with its motion. Accordingly, there is no issue
with respect to standing. See King Candy Co., Inc. v. Eunice King's Kitchen,
Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974).3

3 Under the circumstances, there is no reason for the parties to submit further
evidence or argument on the issue of standing at trial. However, if Opposer's
Opposition No. 91210479
4
MOTION FOR SUMMARY JUDGMENT ON CLAIM OF LIKELIHOOD OF
CONFUSION IS DENIED

Likelihood of confusion depends on an analysis of all of the probative
facts in evidence that are relevant to the thirteen factors set forth in In re E.
I. du Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973),
and we must deny summary judgment if there are genuine disputes as to any
of these factors which would be material to a decision on the merits.4 Opposer
contends that the marks CERTIFIED MAIL and CERTIFIED EMAIL are
virtually identical; that Opposer’s CERTIFIED MAIL services are related to
Applicant’s CERTIFIED EMAIL services; and that Opposer’s CERTIFIED
MAIL services are a feature of its REGISTERED MAIL services, that
Applicant’s CERTIFIED EMAIL services are a feature of Applicant’s
REGISTERED EMAIL services, and that in Opposition No. 91158431, the
Board found Applicant’s REGISTERED EMAIL services sufficiently related
to Opposer’s REGISTERED MAIL services to create a likelihood of confusion,
and, under the doctrine of collateral estoppel, Applicant may not contest the
Board’s findings in Opposition No. 91158431 that its services are related to
the mailing and delivery services of Opposer.

pleaded registration is cancelled or transferred prior to final decision, Applicant may
raise that issue by motion.
4 To the extent Opposer relies on its pleaded registration, priority is not in
issue due to the submission of the status and title copy of Opposer’s pleaded
registration, and the absence of a counterclaim against that registration. See
King Candy Co., 182 USPQ at 110. To the extent Opposer relies on common
law use, its priority remains an issue for trial.
Opposition No. 91210479
5
Applicant contests entry of summary judgment on the issue of
likelihood of confusion and maintains that there are genuine factual disputes
inasmuch as the marks are not identical, the services are different, there is
no overlap in trade channels, and collateral estoppel does not apply here.
Because Opposer’s services in the pleaded registration differ from
Opposer’s services offered under the common law mark pleaded in Opposition
No. 91158431, and Applicant’s services in the opposed CERTIFIED EMAIL
application differ from Applicant’s services in its REGISTERED EMAIL
application opposed in Opposition No. 91158431, the Board agrees with
Applicant that even the limited application of collateral estoppel, or issue
preclusion, which Opposer urges here is unavailable. Collateral estoppel
requires the identical issue to be litigated, and Opposer’s arguments that the
relationship between the parties’ services in this proceeding is analogous to
the relationship between the parties’ services in the prior proceeding does not
meet the legal standard. See Jet, Inc. v. Sewage Aeration Systems, 223 F.3d
1360, 55 USPQ2d 1854, 1858-59 (Fed. Cir. 2000) (Issue preclusion requires:
1) identity of an issue in a prior proceeding; 2) that the identical issue was
actually litigated; 3) that determination of the issue was necessary to the
judgment in the prior proceedings; and 4) the party defending against
preclusion had a full and fair opportunity to litigate the issue in the prior
proceeding.). Compare Vaughan v. International Star Registry of Illinois,
Ltd., 2011 WL 165459 (TTAB 2011) (“in view of the finding in the previous
Opposition No. 91210479
6
consolidated proceeding that NAME A STAR is a generic designation for
Vaughan's star-registration goods and services and since Vaughan is
claiming in her complaint trade name rights for the same goods and services
as were the subject of her prior applications, there is no genuine issue of
material fact concerning Vaughan's lack of a proprietary right to NAME A
STAR either as a mark or as a trade name for her goods and services”)
(emphasis added).
The Board presumes that the parties are familiar with the record, and
will not list all of the evidence submitted in connection with this motion.
Based on our careful review of the evidence and arguments, and drawing all
inferences in favor of the non-movant, we find that Opposer has not carried
its burden of demonstrating an absence of genuine disputes of material fact
with respect to likelihood of confusion. At a minimum, a genuine dispute of
material fact remains with respect to the relatedness of Opposer’s
CERTIFIED MAIL “mailing services, namely, sorting, handling and receiving
packages and letters, delivery services, namely, pickup, transportation and
delivery of packages and letters by various modes of transportation,” and
Applicant’s CERTIFIED EMAIL “electronic mail and messaging services,
namely, that provide the recipient with a means of authentication.” In view
thereof, the motion for summary judgment is DENIED on the likelihood of
confusion ground.5

5 The fact that we identify one certain material fact that is genuinely in dispute
should not be construed as a finding that this is necessarily the only issue that
Opposition No. 91210479
7
In denying this motion, we note that the standard of proof for
summary judgment, the absence of a genuine dispute of material facts, is
more stringent than the preponderance of evidence standard for trial.
Evidence that may be sufficient to raise a genuine issue, may not be
sufficient to rebut a prima facie case. See Trademark Trial and Appeal Board
Manual of Procedure (TBMP) §528.01 (July 2015). Moreover, evidence not
obtained and filed in compliance with the Board’s rules will not be
considered. See Trademark Rule 2.123(l).6
MOTION FOR SUMMARY JUDGMENT ON AFFIRMATIVE DEFENSES
OF ACQUIESCENCE, ESTOPPEL, AND UNCLEAN HANDS IS GRANTED

An affirmative defense is “[a] defendant’s assertion raising new facts
and arguments that, if true, will defeat the plaintiff’s or prosecution’s claim,
even if all allegations in the complaint are true.” H.D. Lee Co. v. Maidenform
Inc., 87 USPQ2d 1715, 1720 (TTAB 2008) citing Black's Law Dictionary, p.
430 (7th ed. 1999). “Acquiescence and estoppel require some affirmative act
by opposer which led applicant to reasonably believe that opposer would not

remains for trial. In addition, evidence submitted in support of or in opposition to a
motion for summary judgment is of record only for consideration of that motion. Any
such evidence to be considered at final hearing must be properly introduced in
evidence during the appropriate trial period. See Levi Strauss & Co. v. R. Joseph
Sportswear Inc., 28 USPQ2d 1464 (TTAB 1993).
6 For example, Applicant requests the Board to admit testimony from the earlier
proceeding (Opposition to Summary Judgment, p.2 n.1), but the request is
accompanied by neither Opposer’s consent nor a brief in support of the “motion.” See
Trademark Rule 2.122(f) and TBMP § 530 (July 2015). As another example,
Opposer’s reply brief contends that several exhibits submitted with Applicant’s
response are responsive to Opposer’s discovery requests, but were not produced. See
Panda Travel, Inc. v. Resort Option Enterprises, Inc., 94 USPQ2d 1789, 1792-93
(TTAB 2009) (documents not produced until after the start of trial stricken).
Opposition No. 91210479
8
oppose applicant’s registration of its mark.” See DAK Indus. Inc. v. Daiichi
Kosho Co. Ltd., 25 USPQ2d 1622, 1625 (TTAB 1993). The unclean hands
defense requires plaintiff misconduct which causes the defendant to take
action. See Phonak Holding AG v. ReSound GmbH, 56 USPQ2d 1057, 1059
(TTAB 2000).
In support of its motion for summary judgment on Applicant’s
affirmative defenses, Opposer submits a copy of the application for the mark
CERTIFIED EMAIL filed by Applicant’s predecessor, and excerpts from
Applicant’s discovery responses. Applicant’s discovery responses state that
Applicant first used the CERTIFIED MAIL mark in commerce with the
services listed in the opposed application in 2011, and that the mark and
associated goodwill was purchased through the liquidation process of
Goodmail Systems Inc. The responses also state, in answer to a request for
“all facts” relating to acquiescence and estoppel, that Applicant “is informed
and believes that USPS entered into agreements and/or arrangements with
Goodmail Services Inc. and/or Epostmark, Inc. for their use of the
CERTIFIED EMAIL mark”, and that there are no responsive documents
related to the defenses of acquiescence and estoppel other than the
trademark applications made by Goodmail and Applicant.
In opposition, Applicant submits the declaration of its CEO Zafar Khan
averring that Opposer produced in discovery three online articles, one
published in 2005 and two published in 2008, describing Goodmail Services
Opposition No. 91210479
9
Inc.’s CERTIFIEDEMAIL services; that he “was aware” of a license
agreement between Opposer and third party ePostmarks, Inc. to offer
Opposer’s date and time validation product; that he was aware, through the
wide publicity that the agreement received at the time, that in 2009
Goodmail entered an agreement with third party ePostmarks, Inc. to use
Opposer’s product; that “it is inconceivable that USPS was not aware of the
Goodmail-ePostmarks agreement concerning the marriage of USPS’s
[product] with Goodmail’s CERTIFIEDEMAIL product”; and that:
Because of USPS’s clear and longstanding knowledge of
Goodmail’s use of CERTIFIEDEMAIL, and its approval of the
use of that mark, I had no expectation that USPS would object
to Rcomm’s acquisition of that mark from Goodmail when it
went out of business and Rcomm’s subsequent use of the mark,
including Rcomm’s filing to register the mark. Rcomm relied on
USPS’ conduct in agreeing to acquire the mark from Goodmail.

We agree with Opposer that there is no genuine factual dispute here.
As set forth in the answer, each defense is based on Opposer’s alleged
knowledge of earlier use of the CERTIFIEDEMAIL mark by Applicant’s
predecessor, but the record is devoid of material evidence of such knowledge.
The evidence that on May 3, 2010 Applicant’s predecessor filed application
Serial No. 85028320 to register CERTIFIEDEMAIL for “electronic mail and
messaging services” also shows that on February 15, 2011, the application
was abandoned without having been approved for publication. The evidence
that Applicant’s predecessor used the CERTIFIEDEMAIL mark in commerce
with electronic messaging services comprises three advertisements of the
Opposition No. 91210479
10
services over three years which are not corroborated by any evidence that the
services ever were rendered. Applicant’s discovery responses indicate that it
possesses no other documentary evidence to support its affirmative defenses.
Because the unsupported speculation of Mr. Khan is not evidence, nothing in
the record is sufficient to raise a genuine issue of fact that Opposer was
aware of the alleged use.
In these circumstances, we find that Opposer has demonstrated that
there are no genuine factual disputes with respect to the affirmative defenses
of acquiescence, estoppel, and unclean hands, and Opposer's motion for
summary judgment on the defenses is GRANTED.
In conclusion, Opposer’s motion for summary judgment is denied as to
its likelihood of confusion claim and granted as to Applicant’s affirmative
defenses.7
The Board finds that this case is not suitable for disposition by
summary judgment, and the parties are barred from filing further motions
for summary judgment.
Proceedings are resumed, and dates are reset as follows:
Discovery CLOSED
Plaintiff’s Pretrial Disclosures 12/22/2015
Plaintiff’s 30-day Trial Period Ends 2/5/2016
Defendant’s Pretrial Disclosures 2/20/2016
Defendant’s 30-day Trial Period Ends 4/5/2016
Plaintiff’s Rebuttal Disclosures 4/20/2016
Plaintiff’s 15-day Rebuttal Period Ends 5/20/2016

7 This ruling does not end litigation on the merits of the notice of opposition, is interlocutory, and
may not be appealed pursuant to Trademark Rule 2.145 at this time.
Opposition No. 91210479
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In each instance, a copy of the transcript of testimony, together with copies of
documentary exhibits, must be served on the adverse party within thirty
days after completion of the taking of testimony. Trademark Rule 2.l25.
Briefs shall be filed in accordance with Trademark Rules 2.128(a) and
(b). An oral hearing will be set only upon request filed as provided by
Trademark Rule 2.l29.