Environmental Dynamics, Inc.v.Stamford Scientific Int’l., Inc.Download PDFTrademark Trial and Appeal BoardMar 16, 2009No. 92045054re (T.T.A.B. Mar. 16, 2009) Copy Citation Mailed: March 16, 2009 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ Environmental Dynamics, Inc. v. Stamford Scientific International, Inc. _____ Cancellation No. 92045054 _____ Richard R. Johnson and David L. Rein Jr. of Husch Blackwell Sanders LLP, for Environmental Dynamics, Inc. Albert Robin of Cowan, Liebowitz & Latman, P.C. for Stamford Scientific International, Inc. _____ Before Holtzman, Mermelstein, and Ritchie,1 Administrative Trademark Judges. Opinion by Holtzman, Administrative Trademark Judge: Request for Reconsideration The Board, on September 30, 2008, issued a final decision granting the petition to cancel Registration No. 2819700 on the ground of priority and likelihood of confusion.2 The Board found 1 Judge Hohein, now deceased, authored the original opinion in this case. Judge Ritchie is substituted for the purpose of the request for reconsideration. 2 The petition to cancel was denied as to the ground of fraud. THIS OPINION IS NOT A PRECEDENT OF THE TTAB Cancellation No. 92045054 2 that contemporaneous use by respondent of its AIRFLEX mark in connection with "water cleaning equipment, namely diffusing units for aerating sewage and industrial wastewater" is likely to cause confusion with petitioner's previously used mark "FLEXAIR" for the legally identical goods of "air diffusers for aerating water and wastewater." In addition, the Board found that respondent did not prove its equitable defenses of laches and acquiescence. Respondent timely filed a request for reconsideration of this decision on October 29, 2008. The motion has been fully briefed. We have carefully reviewed respondent's arguments, but are not persuaded that there is any error in the decision, and certainly no error that would affect the outcome of this case. Respondent reiterates its argument that the Board improperly treated the substantive corrections to the testimony of petitioner's witness, Mr. Tharp, "as a nullity, thereby permitting petitioner to rely upon admittedly false testimony." Respondent argues that Mr. Tharp's "contradictory" testimony "goes to the heart of the issues in this proceeding, namely, when Mr. Tharp knew about [respondent's] use of Airflex in the United States."3 Respondent once again contends that the only appropriate remedy would be "to ignore all of Mr. Tharp's testimony on the subject of 3 Respondent essentially asserted unreasonable delay between petitioner's alleged knowledge about respondent's use of Airflex on diffusers in the United States since 1999 and the September 27, 2005 filing of the petition to cancel. Cancellation No. 92045054 3 his first awareness of registrant's use of Airflex in the United States." The Board does not permit substantive changes to testimony after the fact. The remedy, however, as fully explained in the decision, is to disregard the changes, not to strike the testimony. See TBMP §703.01(n) (2d ed. rev. 2004). See also Marshall Field & Co. v. Mrs. Fields Cookies, 25 USPQ2d 1321, 1325 (TTAB 1992) (any substantive changes made to testimony deposition on written questions would not be considered); Entex Industries, Inc. v. Milton Bradley Co., 213 USPQ 1116, 1117 n.2 (TTAB 1982). Furthermore, as stated by the Federal Circuit in National Cable Television Ass'n, Inc. v. American Cinema Editors, Inc., 937 F.2d 1572, 19 USPQ2d 1424, 1431 (Fed. Cir. 1991), "our predecessor court rejected the rationale that laches runs against a party from the date that party knew of the use of the mark by the applicant or registrant." Thus, respondent's claimed defenses of laches and acquiescence "could not possibly start to run" prior to December 9, 2003, the date on which the mark which is the subject of respondent's underlying application for registration was published for opposition. National Cable, supra at 1427. Moreover, respondent failed to prove, or even argue, that the delay between the publication date and the filing of the petition was unreasonable, and in any event failed to prove material prejudice for any time period. Finally, the Board determined that any Cancellation No. 92045054 4 earlier knowledge by petitioner was not only as to use outside of the United States (which was not shown by respondent to be an "artificial distinction" or one which was "contrived" by petitioner), but also was prior to the December 9, 2003, date of publication. We also point out that Mr. Tharp's testimony in either its original or changed form is not inconsistent with nor in conflict with any of Mr. Tharp's other testimony on the subject.4 See, e.g., Tharp Dep., pp. 58-60, Exh. 11. Respondent contends that Exhibits L, M, N, O, P, Q, R, S, T, V and the testimony related thereto, were improperly excluded by the Board. Respondent argues that the Board ignored respondent's point that the documents, described by respondent as advertising and 4 In a related assertion of error, respondent argues that "The Decision does not seem to treat both sides' evidence and arguments evenly" in that it "accepts" Mr. Tharp's testimony "even though Tharp has admitted that some of his original testimony was false while rejecting Mr. Frankel's [respondent's witness] testimony even though there has been no attack on his credibility." Respondent's "example" of "uneven" treatment concerns the Board's statement on p. 11, "Starting with a letter dated February 6, 1998, respondent wrote petitioner requesting the right to sell abroad diffuser units purchased from petitioner." While respondent claims that nothing in the letter requests the right to sell abroad, it was clearly Mr. Tharp's understanding that respondent was requesting the right to sell abroad, and he consistently testified to that effect. See, e.g., Tharp Dep., pp. 39-43 ("[SSI was] looking for product to sell internationally as they have indicated here in their letter to me."; "I was not interested in creating a competitor in the US."; "[SSI was] concerned that they would not be able to deliver and support their representatives overseas."). Contrary to respondent's contention, Mr. Frankel's testimony at p. 61, line 24, and p. 62, line 11 does not contradict Mr. Tharp's testimony. In any event, we point out once again that any alleged knowledge by petitioner of respondent's use in 1998 or at any time prior to December 9, 2003 is irrelevant to respondent's defense. Cancellation No. 92045054 5 promotional materials, were not called for by petitioner's identified Document Requests Nos. 18, 20 or 27. Respondent also argues that "the Decision refuses to consider Registrant's testimony as to its sales even though Petitioner never served...a proper document request seeking documents from which the amount of Registrant's sales could be determined." In addition, while respondent admits that excluded Exhibit AA "was responsive to...the [identified] discovery requests," respondent argues that when respondent was responding to petitioner's document request, "it no longer had in its files any documents relating to the instance in 1999 when it received a Proposal Bid Form from Altamonte Springs, California specifying 'Airflex Disc Fine Bubble Diffuser 9.'" Respondent maintains that the document "was only obtained by Registrant on March 15, 2007, shortly before the testimony at which it was offered in evidence." Moreover, respondent suggests, pointing to H.D. Lee Co. v. Maidenform Inc., 87 USPQ2d 1715 (TTAB 2008), that the documents should not have been excluded in the absence of the filing of a motion to compel. To begin with, a party need not necessarily file a motion to compel before it can seek to preclude the introduction at trial of requested, but unproduced, documents. See TBMP §527.01(e) (2d ed. rev. 2004) ("A party that responds to a request for discovery...by stating objections thereto, may be barred by its own action from later introducing the information sought in the request as part of Cancellation No. 92045054 6 its evidence on the case"). Respondent's reliance on the Lee case is misplaced. This is not a situation, as in Lee, where respondent did not respond at all to the discovery requests. Nor is this a situation where respondent responded to discovery with representative samples of requested documents. See British Seagull Ltd. v. Brunswick Corp., 28 USPQ2d 1197, 1201 (TTAB 1993), aff'd, 35 F.3d 1527, 32 USPQ2d 1120 (Fed. Cir. 1994). In this case, respondent refused to produce any documents called for by the identified requests, citing irrelevance and confidentiality. Under these circumstances, and for the reasons fully explained in the decision, respondent should not be permitted to turn around and introduce evidence of such matters at trial. Respondent argues that any representative samples "would not have provided any insight as to Registrant's total sales." We need not speculate as to what documents respondent may or may not have actually produced in response to the requests. The point is that petitioner's broadly worded requests sought, for example, "all documents...involving the sale" of respondent's AIRFLEX diffusers for each project in the United States (Request No. 18). This request, as with the others, clearly contemplated the information that respondent refused to produce during discovery as irrelevant, but then sought to introduce at trial. Furthermore, the Board did not ignore respondent's arguments that the excluded documents were not covered by the identified Cancellation No. 92045054 7 document requests. The Board simply found respondent's arguments unpersuasive. All of the excluded documents (and related testimony) were encompassed by petitioner's broadly worded document requests. We note, for example, that Exhibit N (catalog, Frankel testimony at pp. 35-36) contains information about respondent's customers which information respondent refused to produce during discovery as confidential. Moreover, respondent admits that Exhibit AA was relevant to the document requests, yet respondent now argues that "Registrant did not know it needed to obtain such documentation." Although respondent may not have had the document "in its files" during discovery, respondent clearly had the ability to obtain the document, and indeed it ultimately did so. Respondent had the obligation to obtain this admittedly relevant document and provide it to petitioner when originally requested or in a seasonably amended response.5 See Fed. R. Civ. P. 26(e)(1)(A). Having not done so, respondent may not use this evidence at trial. The Board did not commit error in finding credible evidence of two instances of actual confusion. Although one of the reported instances involved a foreign entity's inquiry to petitioner in the 5 Respondent did not object to production on the ground that it did not possess the document. Nor would this have been a valid basis for objection if the document "remains in its 'control' such that the party has the right, authority, or ability to obtain the documents upon demand." Glaxo Inc. v. Boehringer Ingelheim Corp., (not reported in F.Supp.), 40 USPQ2d 1848 (D. Conn. 1996). Cancellation No. 92045054 8 United States, this evidence is still entitled to some probative weight, since commerce between the United States and a foreign country is clearly relevant under the Trademark Act. As to the second instance (involving an email inquiry by a potential customer), we note that respondent did not object to this evidence during the deposition as lacking foundation, nor did respondent cross-examine the witness on the matter, so any objection on such grounds was waived. See Trademark Rule 2.123(k). Moreover, we agree with petitioner, as stated in its reply brief on the case, that it was not hearsay for petitioner's representative, Mr. Tharp to testify that petitioner received an inquiry from a potential customer and, furthermore, although the inquiry itself was in a foreign language, Mr. Tharp explained the nature of the inquiry and the follow-up discussions with the customer. In any event, while evidence of actual confusion is a factor to consider in the DuPont analysis, the test under Section 2(d) is likelihood of confusion, not actual confusion. Thus, a showing of actual confusion is not necessary to establish a likelihood of confusion. Herbko International Inc. v. Kappa Books Inc., 308 F.3d 1156, 64 USPQ2d 1375 (Fed. Cir. 2002); and Weiss Associates, Inc. v. HRL Associates, Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990). Respondent argues that the differences in the ways in which the parties display their marks is material to the determination of likelihood of confusion. In particular, respondent argues that Cancellation No. 92045054 9 "Petitioner displays its mark as FlexAir while registrant displays its mark as AIRFLEX or Airflex," and that petitioner's trademark rights "should be limited to the form of the mark in which Petitioner had used the mark prior to the filing of the petition," presumably referring to petitioner's actual display of the mark as "FlexAir." This argument is unavailing. The relevant point is that respondent's mark is registered in typed form, and as stated by the Court in Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847 (Fed. Cir. 2000), "[r]egistrations with typed drawings are not limited to any particular rendition of the mark and, in particular, are not limited to the mark as it is used in commerce." This means, as the Board plainly stated in the decision, that respondent is "at liberty to depict its mark as 'AirFlex,'" that is, in the same format used by petitioner. See Phillips Petroleum v. C.J. Webb, 442 F.2d 1376, 170 USPQ 35 (CCPA 1971). Respondent argues that "[a]s contrasted with opposition proceedings, cancellation proceedings are more adversary and more closely akin to judicial proceedings in a court" and that cancellation of a registration "should be granted only with 'due caution and after a most careful study of all the facts." Respondent claims that the Board "ignor[ed] the presumptions to which Registrant is entitled as a result of its registration." Cancellation No. 92045054 10 This argument is misplaced. The burden of proof in a cancellation proceeding is no different than that in an opposition proceeding. See Department of Justice, Federal Bureau of Investigation v. Calspan Corp., 578 F.2d 295, 198 USPQ 147, 149 (CCPA 1978) (rejecting the proposition that the petitioner in a cancellation proceeding bears a heavier burden of proof than the opposer in an opposition proceeding). In either case, the burden of proof is a preponderance of the evidence, which the Board applied in its decision. Eastman Kodak Co. v. Bell & Howell Document Management Products Co., 994 F.2d 1569, 26 USPQ2d 1912, 1918 (Fed. Cir. 1993); and Dan Robbins & Assocs., Inc. v. Questor Corp., 599 F.2d 1009, 202 USPQ 100, 105, n.8 (CCPA 1979) ("The board's indication that 'due caution' and 'most careful consideration of all the facts and circumstances' are required in cancellation proceedings 'as distinguished from an opposition...' was inaccurate."). Finally, respondent's claim that petitioner's motive for bringing the petition was to eliminate competition is speculative and, in any event, beside the point and irrelevant to the issues in this case which concern the question of likelihood of confusion, not competition between the parties. Conclusion Respondent has failed to establish any error in the Board's finding of likelihood of confusion or in its rejection of Cancellation No. 92045054 11 respondent's defenses of laches and acquiescence. The Board adheres to its finding that the marks "FLEXAIR" and "AIRFLEX" are "substantially similar"; and that the contemporaneous use of these "substantially similar" marks on legally identical goods, namely air diffusers, is likely to cause confusion. These factors played a dominant role in this case. The Board nonetheless also found probative evidence of actual confusion as well as evidence sufficient to infer bad faith adoption of respondent's mark, further supporting the finding of likelihood of confusion. The request for reconsideration is accordingly denied, and the Board's December 30, 2008 decision stands as issued. Copy with citationCopy as parenthetical citation