Paul C. Davidson and Dennis R. Steedv.Glucotec, Inc.

Trademark Trial and Appeal Board

May 12, 2010

No. 91175042 (T.T.A.B. May. 12, 2010)

Mailed: 5/12/10

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Paul C. Davidson and R. Dennis Steed
v.
Glucotec, Inc.
_____

Opposition No. 91175042
to application Serial No. 78873754
filed on May 1, 2006
_____

Todd Deveau of Thomas, Kayden, Horstemeyer & Risley for Paul
C. Davidson and R. Dennis Steed.

Morton J. Rosenberg of Rosenberg, Klein & Lee for Glucotec,
Inc.
______

Before Quinn, Grendel and Ritchie, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:

Glucotec, Inc. filed, on May 1, 2006, an intent-to-use
application to register the mark GLUCOMMANDER for “computer
software for use in patient glucose and metabolic management
and achieving normoglycemia.”
Paul C. Davidson and R. Dennis Steed opposed
registration under Section 2(d) of the Trademark Act, 15
U.S.C. §1052(d), on the ground of priority and likelihood of
confusion. Opposer alleged that applicant’s mark, when used
THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Opposition No. 91175042
2
in connection with applicant’s goods, so resembles opposer’s
previously used mark GLUCOMMANDER for a computer system and
software for use in patient blood glucose management as to
be likely to cause confusion.1
Applicant, in its answer, denied the salient
allegations contained in the notice of opposition.2
The record comprises the pleading; the file of the
involved application; testimony, with related exhibits,
taken by opposers; documents from a variety of sources,
including printed publications, and official records,
introduced by way of opposers’ notices of reliance.
Applicant neither took testimony nor introduced any other
evidence.3 Only opposers filed a brief at final hearing.
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). The purpose

1 Opposers also alleged in the notice of opposition that the
application is void ab initio due to an invalid assignment, and
that applicant lacked a bona fide intention to use the mark when
it filed the application. Inasmuch as these claims were not
identified in the brief, we deem the claims to be waived by
opposers.
2 The exhibits attached to the answer do not form part of the
evidentiary record. Trademark Rule 2.122(c). See TBMP §317 (2d
ed. rev. 2004).
3 Applicant, in responding to opposers’ response to a show cause
order under Trademark Rule 2.128(a)(3), submitted certain
documents. The Board, in an order dated November 9, 2009,
indicated that, to the extent applicant believed the evidence is
relevant to the merits of the opposition, the Board would not
consider the evidence because it was submitted outside of the
testimony period. Accordingly, we have not considered the
documents in making our decision.
Opposition No. 91175042
3
of the standing requirement is to prevent litigation when
there is no real controversy between the parties. Lipton
Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185 (CCPA 1982). Opposers’ testimony and evidence
establish that opposers have a real interest in the outcome
of this proceeding; that is, opposers have a direct and
personal stake in preventing the registration of applicant’s
mark for applicant’s goods.
Notwithstanding that applicant did not properly
introduce testimony or evidence in support of its position,
the burden of proof remains with opposers in this opposition
proceeding. In Board proceedings, the plaintiff must
establish its pleaded case (in this case, priority and
likelihood of confusion), and must do so by a preponderance
of the evidence. Cunningham v. Laser Golf Corp., 222 F.3d
943, 55 USPQ2d 1842, 1848 (Fed. Cir. 2000). In order for a
plaintiff to prevail on a claim of likelihood of confusion,
plaintiff must prove it has proprietary rights in the term
it relies upon to demonstrate likelihood of confusion as to
source. If a plaintiff’s claim of likelihood of confusion
is based, as in this case, on ownership of an unregistered
mark, the mark must be distinctive, inherently or otherwise,
and plaintiff must show priority of use. Otto Roth & Co. v.
Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40 (CCPA
1981).
Opposition No. 91175042
4
Opposers’ goods comprise “a computer-based system for
controlling blood glucose in hospital patients on IV or
tube-feeding.” (Steed dep. Ex. 10, Bates No. 00439). Dr.
Steed described the goods as follows:
The Glucommander system is intended to
be used for managing insulin drips, the
administration of insulin intravenously
to patients in the hospital. It
operates by requesting a blood sugar
from a nurse, and then using algorithms
incorporated in the software determines
an insulin dosage to be administered and
the time of the next blood sugar to be
checked. And it repeats the cycle again
and again. (Dep., p. 13).

Opposers’ system may be used with “any patients with a high
blood sugar that needs to be corrected.” Id. The product
is generally used in hospitals.
Thus, opposers’ goods and applicant’s goods are
identical or, at the very least, are substantially
identical. The goods would travel in the same trade
channels (e.g., medical equipment distributors) to the same
classes of purchasers (e.g., hospitals, clinics, medical
professionals). Further, the goods bear the identical mark,
GLUCOMMANDER.
It is obvious that in the present case the
contemporaneous use of the parties’ identical marks in
connection with identical goods would be likely to cause
confusion as contemplated by Section 2(d) of the Trademark
Act.
Opposition No. 91175042
5
We turn next to the question of priority of use – that
is, whether opposers have shown by competent evidence use of
their mark prior to the earliest date upon which applicant
can rely; in this case, that date is May 1, 2006, the filing
date of the involved application. See David Crystal, Inc.
v. Estee Lauder, Inc., 167 USPQ 411 (TTAB 1970), aff’d, 476
F.2d 1373, 177 USPQ 461 (CCPA 1973); and Levi Strauss & Co.
v. R. Josephs Sportswear, Inc., 36 USPQ2d 1328 (TTAB 1994).
Opposers’ testimony and evidence establishes opposers’
use of the mark GLUCOMMANDER in connection with their
software-based glucose management system since a time long
prior to May 1, 2006. More specifically, opposers adopted
their mark for these goods in 1984, and the mark has been
used continuously since that time. (Steed dep., pp. 6, 13,
16; Davidson dep., pp. 8, 12, 15-16, 19; and ex. no. 14).
Accordingly, opposers have established priority of use
and likelihood of confusion.
Decision: The opposition is sustained, and
registration to applicant is refused.