Shadi.com division of Ampak Billing Corp.v.People Interactive (India) Private Limited

Trademark Trial and Appeal Board

Jun 16, 2020

91225201RE (T.T.A.B. Jun. 16, 2020)

This Opinion is Not a Precedent of the TTAB Mailed: June 16, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ Shadi.com division of Ampak Billing Corp. v. People Interactive (India) Private Limited _____ Opposition No. 91225201 _____ People Interactive (India) Private Limited v. Shadi.com division of Ampak Billing Corp. _____ Cancellation No. 92062719 On Request for Reconsideration Peter W. Peterson of Delio Peterson & Curcio LLC for Shadi.com division of Ampak Billing Corp Naresh Kilaru of Finnegan Henderson Farabow Garrett & Dunner LLP for People Interactive (India) Private Limited _____ Before Cataldo, Mermelstein and Lynch, Administrative Trademark Judges. Opinion by Lynch, Administrative Trademark Judge: Opposition No. 91225201 & Cancellation No. 92062719 - 2 - I. Background This consolidated proceeding1 consists of an opposition filed by Shadi.com division of Ampak Billing Corp. (“Ampak”) to the application of People Interactive (India) Private Limited (“People Interactive”) and a cancellation filed by People Interactive against Ampak’s pleaded registrations. In a final decision dated March 3, 2020, we denied the cancellation and sustained the opposition.2 People Interactive moved for reconsideration on May 11, 2020,3 and included an unopposed motion to reopen the time for requesting reconsideration.4 See Trademark Rule 2.129(c), 37 C.F.R. § 2.129(c). Ampak submitted an opposition to reconsideration on May 29, 2020.5 As an initial matter, we grant the unopposed motion to reopen People Interactive’s time to request reconsideration. The motion included a supporting declaration from its in-house attorney regarding the impact on its offices in Mumbai, India of the suddenly-announced March 24, 2020 lockdown of India due to the COVID-19 pandemic.6 The motion and declaration establish excusable neglect. See USPTO Notice of Waiver of Trademark-Related Timing Deadlines under the Coronavirus Aid, Relief, and Economic Security Act, March 31, 2020, 1 The Board consolidated these proceedings on May 5, 2016, and designated Opposition No. 91225201 as the parent case. TTAB citations in this decision are to the record in the parent case unless otherwise indicated. 2 59 TTABVUE. 3 60 TTABVUE. 4 Ampak explicitly states in its response that it “does not oppose the motion to reopen time.” 61 TTABVUE 2. 5 61 TTABVUE. 6 60 TTABVUE 17-18. Opposition No. 91225201 & Cancellation No. 92062719 - 3 - https://www.uspto.gov/sites/default/files/documents/TM-Notice-CARES-Act.pdf (“For all other situations where the COVID-19 outbreak has prevented or interfered with a filing before the Board, a request (in ex parte appeals) or motion (for trial cases) for an extension or reopening of time, as appropriate, can be made”); Pumpkin Ltd. v. Seed Corps, 43 USPQ2d 1582 (TTAB 1997); Fed. R. Civ. P. 6(b)(1)(B); TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 509.01(b) (June 2019). II. Reconsideration Turning to People Interactive’s request that we reconsider our decision both in the cancellation and the opposition, “the premise underlying a request for … reconsideration … is that, based on the evidence of record and the prevailing authorities, the Board erred in reaching the decision it issued. The request may not be used to introduce additional evidence, nor should it be devoted simply to a reargument of the points presented in the requesting party’s brief on the case.” TBMP § 543; see also TBMP § 1219.01. A. The Cancellation People Interactive seeks reconsideration in the cancellation proceeding based on its allegations of fraud on the USPTO in obtaining and maintaining Ampak’s registrations. People Interactive acknowledges the Board’s finding of no direct evidence of an intent by Ampak to deceive the USPTO and no clear and convincing evidence to warrant an inference of intent to deceive, but contends that “the Board did not consider People Interactive’s argument that Ampak acted with a reckless Opposition No. 91225201 & Cancellation No. 92062719 - 4 - disregard of the truth or falsity of the statements made in its declarations of use.”7 As People Interactive concedes, the Federal Circuit decision in In re Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938, 1941 n.2 (Fed. Cir. 2009) explicitly left open whether “making a submission to the PTO with reckless disregard of its truth or falsity satisfies the intent to deceive requirement.” People Interactive devoted a sentence in its opening trial brief and another sentence in its reply brief to its reckless disregard argument.8 Our decision made clear findings that the record does not support the requisite intent to deceive necessary to establish fraud. We found no deceptive intent in Ampak’s use declarations because “[n]one of Ampak’s interpretations [of its identified services] are so insupportable as to give rise to an inference of deceptive intent.”9 Just as in Bose, we noted that Ampak’s use declarant testified to his belief in the truthfulness of his statements in the declaration both at the time they were made and as of the time of his later testimony.10 We also found that the he “explained the basis of his belief,”11 and that “considering the testimony in its entirety, we do not find that it supports an inference of deceptive intent regarding the use allegations at issue.”12 Thus, although we did not specifically refer to reckless disregard, our 7 60 TTABVUE 8. 8 54 TTABVUE 26; 57 TTABVUE 12. 9 59 TTABVUE 14. 10 Id. at 13. 11 Id. at 14. 12 Id. at 15. Opposition No. 91225201 & Cancellation No. 92062719 - 5 - findings as to the lack of deceptive intent - and the absence of evidence from which to infer deceptive intent - suffice. Just as in Bose, we saw no need to explicitly address reckless disregard, because “[t]he evidence does ‘not indicate sufficient culpability.’”13 We therefore decline to reconsider the decision in the cancellation proceeding. B. The Opposition Turning next to the opposition based on likelihood of confusion, People Interactive seeks reconsideration of the decision, arguing that we failed to give appropriate weight to the conceptual weakness of Ampak’s registered marks and to the alleged absence of actual confusion. We focused on Ampak’s registered mark, SHADI in standard characters, and People Interactive’s SHAADI.COM mark. As to the strength of Ampak’s mark, People Interactive incorrectly states that we failed to conduct an independent analysis of the degree of conceptual strength, when our decision states that because of the meaning of the Hindi word in relation to the services, we “agree that SHADI has some degree of conceptual weakness, reflected in its registration with a claim of acquired distinctiveness.”14 Although we found that the registered mark “must be accorded the normal scope of protection for a distinctive mark,” which provides “appropriate protection against the registration of confusingly similar marks,”15 our conclusion summarizing the balancing of DuPont factors again emphasized that conceptual weakness was appropriately considered: 13 Id. at 14 (citation omitted). 14 Id. at 18. 15 Id. Opposition No. 91225201 & Cancellation No. 92062719 - 6 - Regardless of any conceptual weakness, based on the close similarity between SHADI and SHAADI.COM for in- part legally identical services that travel in the same channels of trade to at least some of the same classes of purchasers, we conclude that a likelihood of confusion exists.16 The conceptual weakness of SHADI was simply overshadowed by the legally identical services, overlapping trade channels and customers, and highly similar marks. Next, People Interactive contends that the DuPont factor regarding lack of actual confusion should have weighed in its favor, rather than being deemed neutral. Our final decision noted that neither party submitted probative evidence regarding the presence or absence of actual confusion, and because we found the record inconclusive on this issue, we treated the actual confusion factors as neutral.17 People Interactive does not dispute that it offered no evidence of the absence of actual confusion,18 and points to no evidence of the “conditions under which there has been concurrent use without evidence of actual confusion,” as set forth in DuPont. DuPont, 177 USPQ at 567. The “probative value of the absence of actual confusion depends on there being a significant opportunity for actual confusion to occur.” In re Guild Mortg., 2020 USPQ2d 10279, *14 (TTAB 2020) (citing Barbara’s Bakery Inc. v. Landesman, 82 USPQ2d 1283, 1287 (TTAB 2007)). Given People Interactive’s failure to point to evidence from which to assess whether such an opportunity for actual confusion 16 Id. at 22 (emphasis added). 17 Id. at 21-22. 18 In fact, ironically, as we noted in our decision, People Interactive’s own assertion of actual confusion in a cease-and-desist letter, 36 TTABVUE 6-7, was prominent among the minimal support Ampak offered to show that actual confusion had occurred. Opposition No. 91225201 & Cancellation No. 92062719 - 7 - existed, we disagree that the eighth DuPont factor should have weighed in People Interactive’s favor. See Citigroup Inc. v. Capital City Bank Grp., Inc., 94 USPQ2d 1645, 1660 (TTAB 2010), aff’d, 637 F.3d 1344, 98 USPQ2d 1253 (Fed. Cir. 2011) (“The absence of any reported instances of confusion is meaningful only if the record indicates appreciable and continuous use [of the marks] for a significant period of time in the same markets.”). We properly deemed the actual confusion factors neutral. Finally, we note that even assuming, arguendo, that either the conceptual weakness of Ampak’s mark or the absence of actual confusion factors were weighted more favorably to People Interactive, this would not have changed the outcome of the likelihood of confusion decision, regardless. Other relevant DuPont factors, namely, the legal identity of the services, the strong similarities between the marks, and the overlapping trade channels and customers, weigh so heavily in favor of the likelihood of confusion, that we still would have sustained the opposition. Based upon the foregoing, we find that People Interactive has failed to establish any error in our final decision. Rather, People Interactive disagrees with the result. We thus remain of the opinion that our final decision is correct. For the foregoing reasons, we decline to reconsider the decision in the opposition proceeding.19 19 The parties will note that neither Trademark Rule 2.129(c) nor any of the other rules of practice applicable to Board proceedings contemplate a second request for reconsideration of a final decision in a Board inter partes case.