Paul C. Davidson and Dennis R. Steedv.Glucotec, Inc.Download PDFTrademark Trial and Appeal BoardMay 12, 2010No. 91175042 (T.T.A.B. May. 12, 2010) Copy Citation 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. Copy with citationCopy as parenthetical citation