Xoom Corporationv.Zoom Tan, LLC

Trademark Trial and Appeal Board

Jan 22, 2015

No. 91208416 (T.T.A.B. Jan. 22, 2015)

al Mailed: January 22, 2015

Opposition No. 91208416
Xoom Corporation
v.
Zoom Tan, LLC

Before Bucher, Wolfson, and Hightower,
Administrative Trademark Judges.

By the Board:

Zoom Tan, LLC (“Applicant”) seeks to register the mark ZOOMPAY1 for
“Financial transaction services, namely, providing secure commercial
transactions through the use of biometric technology; electronic payment
services by which customers may apply money from various sources through
the use of biometric technology” in International Class 36.
Zoom Corporation (“Opposer”) opposes registration of Applicant’s mark on
the ground of likelihood of confusion with its previously used and registered
mark XOOM as well as other registered marks containing the element
XOOM (such as XOOM IT ONLINE and STOP WAITING IN LINE. XOOM

1 Application Serial No. 85578671 was filed March 23, 2012, based on Applicant’s
claim of first use anywhere and use in commerce since at least as early as January
15, 2012.
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. 91208416
2
IT ONLINE.) for a variety of goods and services, including money transfer
services and electronic processing and transmission of bill payment data.
Applicant, in its answer, denied the salient allegations in the notice of
opposition.
This case now comes up for consideration of Opposer’s motion (filed
August 28, 2014) for summary judgment in its favor on the likelihood of
confusion claim.2 The motion is fully briefed.
Summary judgment is only appropriate when there is no genuine dispute
as to any material fact and the moving party is entitled to judgment as a
matter of law. See Fed. R. Civ. P. 56(a). The Board may not resolve issues of
material fact; it may only ascertain whether a genuine dispute regarding a
material fact exists. See Lloyd’s Food Products, Inc. v. Eli’s, Inc., 987 F.2d
766, 25 USPQ2d 2027, 2029 (Fed. Cir. 1993); Olde Tyme Foods Inc. v.
Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir. 1992). A factual
dispute is genuine if, on the evidence of record, a reasonable fact finder could
resolve the matter in favor of the non-moving party. Opryland USA Inc. v.
Great American Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471, 1472 (Fed.
Cir. 1992); Olde Tyme Foods Inc., 22 USPQ2d at 1544.
We first determine Opposer’s standing to bring this opposition proceeding.
Standing is a threshold issue that must be proven by a plaintiff in every inter

2 Applicant’s December 16, 2014 filing is considered a surreply and will receive no
consideration. Trademark Rule 2.127(a). Opposer’s response of January 1, 2015 will
similarly receive no consideration.
Opposition No. 91208416
3
partes case. Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir.
1999). We find that Opposer’s standing to bring this opposition proceeding is
undisputed by Applicant and is established by the TSDR printouts for
Opposer’s pleaded registrations as well as Applicant’s admission in its
answer that Opposer owns the pleaded registrations. Lipton Industries, Inc.
v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189-90 (CCPA 1982);
see also Edwards Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399, 1408
(TTAB 2010) (pleaded registration made of record establishes standing).
Accordingly, we find no genuine dispute of material fact regarding Opposer’s
standing.
We next consider Opposer’s request to strike the declaration and other
materials submitted by Applicant in opposition to the motion because
Applicant has not served its initial disclosures. A motion to compel initial
disclosures is the available remedy when an adversary has failed to make its
initial disclosures and such motion must be filed prior to the close of the
discovery period. Trademark Rule 2.120(e)(1). See TBMP § 411.01 (2014). A
motion to compel must precede a motion for sanctions. Because Opposer did
not file a motion to compel initial disclosures before the close of the discovery
period, its motion to sanction Applicant by striking the declaration and
materials is denied. See Trademark Rule 2.120(e)(1); Luster Prods. Inc. v.
Van Zandt, 104 USPQ2d 1877, 1878-79 (TTAB 2012).
Opposition No. 91208416
4
Turning to Opposer’s motion for summary judgment, after reviewing the
parties’ arguments and supporting evidence, we conclude that disposition of
this matter by summary judgment is not appropriate because, at a minimum,
there exists a genuine dispute of material fact as to the degree of similarity
between the parties’ marks, the strength of Opposer’s mark, the similarity of
the channels of trade, and the similarity of the goods and services involved.3
In view thereof, Opposer’s motion for summary judgment is hereby
denied.4
Proceedings herein are resumed. Dates are reset as follows:
Plaintiff’s Pretrial Disclosures Due 2/27/2015
Plaintiff’s 30-day Trial Period Ends 4/13/2015
Defendant’s Pretrial Disclosures Due 4/28/2015
Defendant’s 30-day Trial Period Ends 6/12/2015
Plaintiff’s Rebuttal Disclosures Due 6/27/2015
Plaintiff’s 15-day Rebuttal Period Ends 7/27/2015
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
2.125.

3 The fact that we have identified and discussed only a few genuine disputes of
material fact as a sufficient basis for denying the motion for summary judgment
should not be construed as a finding that these are necessarily the only disputes
which remain for trial.
4 The parties should note that the evidence submitted in connection with the motion
for summary judgment is of record only for consideration of the motion. To be
considered at final hearing, any such evidence must be properly introduced in
evidence during the appropriate trial period. See Levi Strauss & Co. v. R. Josephs
Sportswear Inc., 28 USPQ2d 1464 (TTAB 1993).
Opposition No. 91208416
5
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 2.129.