ADC Legal Systems, Inc.v.United States & International Patent Drawings, Inc.

Trademark Trial and Appeal Board

Mar 28, 2008

No. 92045721 (T.T.A.B. Mar. 28, 2008)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Mailed: March 28, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_______

Trademark Trial and Appeal Board
_______

ADC Legal Systems, Inc.

v.

United States & International Patent Drawings, Inc.
_______

Cancellation No. 92045721
Registration No. 2833136
Issued April 13, 2004
_______

J. Rodman Steele, Jennifer P. Rabin of Akerman Senterfitt
for ADC Legal Systems, Inc.

United States and International Patent Drawings, Inc. (David
S. Leone, President), pro se.
_______

Before Hairston, Rogers and Mermelstein, Administrative
Trademark Judges.

Opinion by Mermelstein, Administrative Trademark Judge:
On April 13, 2004, Registration No. 2833136 issued to
respondent United States & International Patent Drawings,
Inc., for the mark DOCUTRACK (typed) for “computer software
for use in tracking and displaying documents in legal
proceedings” in International Class 9. The registration is
based upon an application filed June 13, 2002.
On April 20, 2006, ADC Legal Systems, Inc. filed a
petition to cancel respondent’s registration on the ground
that, prior to respondent’s first use of its mark,
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petitioner had adopted and used the mark DOCUTRAC “software
for document control, namely, document docketing, merging,
and storage, and control of time entries and notes.” Pet’n
¶ 2-3. Petitioner alleges that the subject registration is
likely to cause confusion, to petitioner’s detriment. Pet’n
¶ 6. Petitioner also alleges that it is further damaged
inasmuch as it has filed an application for registration of
DOCUTRAC, which has been refused in view of the subject
registration. Pet’n ¶ 9.
Respondent denied the salient allegations of the
petition to cancel, and further added that “it is Registrant
who is being injured by Petitioner’s current use of
‘DOCUTRAC.’” Answer ¶ 9.
We grant the petition to cancel.
I. Record
The record consists of the subject registration, the
pleadings, and the testimony of Monty L. Helin, President of
Petitioner ADC Legal Systems. Attached as evidence to Mr.
Helin’s testimony were the following exhibits:1
1. USPTO TESS record of petitioner’s application for
registration of DOCUTRAC for “software for document
control, namely, document docketing, merging, and
storage, and control of time entries and notes,”
alleging dates of first use and first use in

1 Petitioner variously displays its mark as DOCUTRAC or DocuTrac.
When referring to particular uses of petitioner’s mark, we have
retained the capitalization used by petitioner. When we are not
quoting from petitioner’s materials, we have retained our usual
practice of printing trademarks in capital letters.
Opposition No. 92045721

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commerce of 1989. Application No. 76598738, filed
June 21, 2004.

2. Software Purchase Agreement between petitioner and
Curry, Taylor & Carls, PA, dated August 11, 1987.
The agreement indicates that “DOCUTRAC Document
Generation system” was among the items sold as a
part of a “Practice Perfect Foreclosure Case
Management System.” Total price $3,150.00.

3. Software Purchase Agreement between petitioner and
Winderweedle, Haines, Ward & Woodman, PA, dated
December 15, 1987. “Document Generation –
DOCUTRAC” is itemized as part of the foreclosure
system sold for use in two locations. Total Price
$4,080.00, after discount.

4. Software Support Maintenance Agreement between
petitioner and George Adler, P.A. Dated June 4,
1990. Yearly Amount $549.00.

5. USPTO TESS record for respondent’s registration of
DOCUTRACK for “computer software for use in
tracking and displaying documents in legal
proceedings.” Filed June 13, 2002, and alleging
first use and use in commerce as of July 18, 2002.
Registration No. 2833136, issued April 13, 2004.

6. Screen shot from PerfectPractice website, showing a
button for access to information on “DocuTrac.”

7. PerfectPractice sales brochure, for trial lawyers.
Includes information on the DocuTrac module.

8. PerfectPractice sales brochure for foreclosure,
bankruptcy, replevin REO and timeshare
practitioners. Includes information on the
DOCUTRAC module.

9. PerfectPractice sales brochure, for consulting
engineers. Includes information on the DOCUTRAC
module.

10. Screen shot of PerfectPractice software running
with DocuTrac tab available.

11. Screen shot of PerfectPractice online help screen,
including a link to help for DocuTrac module.

Opposition No. 92045721

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Respondent did not appear at Mr. Helin’s testimonial
deposition, nor did it submit any evidence or a brief on its
own behalf.
II. Facts
Petitioner provides goods and services relating to a
suite of software case management tools particularly useful
for law firms with a document-intensive practice, such as
litigation, bankruptcy, and litigation, as well as for some
non-legal professions, such as accounting, medicine, and
consulting engineers. Helin Dep. 13-14, 16-17, Exh. 6-9.
Petitioner’s customer base is approximately “99 percent
legal.” Helin Dep. 13. Petitioner has customers nationwide
and occasionally overseas. Petitioner’s products are
typically sold after a demonstration of the software and an
assessment of the customer’s needs.
Petitioner’s DOCUTRAC software is a software module
that works as a part of petitioner’s “Perfect Practice,”
(sometimes “Practice Perfect”) case management system.
Petitioner’s President offered credible testimony about the
functions of its software:
The [DOCUTRAC] product offers document
merging. It automatically will do tracking by
inserting notes into a case management system and
appropriate follow-ups to make sure there’s been
an appropriate disposition regarding any documents
that are produced.

Also, it does track where the document is
stored. There is a feature where you can access
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the documents utilizing the “view files” feature
of the [DOCUTRAC] module.

Helin Dep. at 8.
Petitioner began using the DOCUTRAC mark in connection
with its software at least as early as 1987, and its use has
been continuous and without interruption since then. The
mark appears on the computer screen when the software is
running.
Petitioner conducts advertising for Practice Perfect
and DOCUTRAC on its own web site, Exh. 6, through
advertisements in magazines for the legal profession, such
as Trial, Law Office Computing, and Law Technology News, and
at conventions, legal seminars, and trade shows, where it
sets up booths geared to the appropriate legal sector to
demonstrate its software and provide information. Helin
Dep. 14-17. Brochures with information on the software are
circulated at trade shows and most are available for
download from petitioner’s website. Helin Dep. 19-21; Exh.
7-9. Petitioner is a member of a number of legal
professional associations, including the U.S. Foreclosure
Network, American Trial Lawyers, Florida Trial Lawyers, and
the American Bankruptcy Institute. Helin Dep. 16-17.
On June 21, 2004, petitioner filed an application to
register DOCUTRAC for “software for document control,
namely, document docketing, merging, and storage, and
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control of time entries and notes.2 Helin Dep. at 6-7; Exh.
1. The examining attorney responsible for petitioner’s
trademark application cited respondent’s trademark
registration as a bar to registration of petitioner’s mark.
III. Analysis
A. Petitioner’s Trademark Rights
In a cancellation proceeding, “petitioner, as
plaintiff, must, in the first instance establish prior
rights in the same or a similar mark....” Pamex Foods, Inc.
v. Clover Club Foods Co., 201 USPQ 308, 313 (TTAB 1978).
Thus petitioner bears the burden of showing, by a
preponderance of the evidence, that it has used its mark as
a trademark, that the mark is distinctive, and that its use
has not been abandoned.
Petitioner has established its use of the DOCUTRAC mark
as a trademark in connection with specialized software
systems for case management. Mr. Helin testified that
petitioner sold software systems including the DOCUTRAC
software in August and December 1987, and furnished purchase
agreements dated August 11 and December 15 of that year.
Helin Dep. 9-10, Exh. 2, 3. The mark appears on the screen
when the software is running. The testimony further
demonstrates that petitioner has been using its mark

2 Application No. 76598738, alleging dates of first use and first
use in commerce of 1989.

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continuously since that date and that such use has not been
abandoned.3 We also find, based on the record, that
petitioner’s DOCUTRAC mark is distinctive.
B. Standing and Priority
Petitioner’s evidence of its prior use of the DOCUTRAC
trademark demonstrates that petitioner is not a mere
intermeddler, and has a reasonable belief that it would be
damaged by the continued registration of respondent’s mark.
Further, petitioner filed a trademark application that was
refused registration in view of the subject registration.
Therefore, petitioner has established its standing.
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842
(Fed. Cir. 2000); Lipton Indus., Inc. v. Ralston Purina Co.,
670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
Respondent filed the trademark application that matured
into the subject registration on June 13, 2001. Inasmuch as
respondent has not submitted testimony or any other evidence
showing its use of the mark prior to June 13, 2001, that is
the earliest date upon which respondent may rely for
priority. Home Juice Co. v. Runglin Co. Inc., 231 USPQ 897,
899 n.5 (TTAB 1986)(“Since respondent has introduced no

3 Although Mr. Helin testified that there were earlier sales,
Helin Dep. 11-12, as evidenced by a 1990 software maintenance
agreement, Exh. 4, the testimony with regard to these sales was
vague, and the 1990 software maintenance agreement does not
indicate the date on which the software was originally sold.
Nonetheless, the agreement is evidence of this particular sale of
the software no later than 1990.
Opposition No. 92045721

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testimony or other evidence, it can claim no date of
commencement of its use of the registered mark earlier than
the filing date of the application on the basis of which the
registration was granted....”), citing Aluminum, Inc. v. Am.
Screen Prod. Co., 305 F.2d 479, 134 USPQ 376 (CCPA 1962).
Inasmuch as petitioner’s date of first use long predates
respondent’s filing date, priority is unquestionably
established on this record.
C. Likelihood of Confusion
Our determination under Trademark Act § 2(d) is based
on an analysis of all of the probative facts in evidence
that are relevant to the factors bearing on the likelihood
of confusion issue. See In re E.I. du Pont de Nemours and
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also Palm
Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In
re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d
1201 (Fed. Cir. 2003); In re Dixie Restaurants Inc., 105
F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
In considering the evidence of record on these factors,
we keep in mind that “[t]he fundamental inquiry mandated by
Section 2(d) goes to the cumulative effect of differences in
the essential characteristics of the goods and differences
in the marks.” Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); and In re
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Azteca Restaurant Enter., Inc., 50 USPQ2d 1209 (TTAB 1999),
and cases cited therein.
1. The Similarity or Dissimilarity of the Marks
In comparing petitioner’s mark to the mark in the
subject registration, we consider whether the marks, viewed
in their entireties, are similar in terms of appearance,
sound, connotation and commercial impression. The test is
not whether the marks can be distinguished when subjected to
a side-by-side comparison, but rather whether the marks are
sufficiently similar in their overall commercial impressions
that confusion as to the source of the goods or services
offered under the respective marks is likely to result. The
focus is on the recollection of the average purchaser, who
normally retains a general rather than a specific impression
of trademarks. See Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106 (TTAB 1975).
Petitioner’s mark is DOCUTRAC, while the mark in the
involved registration is DOCUTRACK. Respondent’s mark is
registered in “typed” form and is thus considered without
respect to any particular typeface or stylization.
Petitioner’s exhibits show its mark as used in advertising
and on the screen of the relevant software, depicted in
plain, upright fonts, the kind which might be commonly used
in business communications. Petitioner’s DOCUTRAC mark is
typically presented in either all capital letters or with a
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capital “D” and “T,” i.e., “DocuTrac.” Where the mark is
visible on the screen of the software as it is running, the
latter version is used. Exh. 6, 10-11. While we must judge
a common-law trademark as it is used, we find that the
examples of petitioner’s use in this record do not include
stylization or embellishments that would change the impact
of the word itself in any significant way.
We find the marks to be identical in pronunciation and
meaning, and very nearly so when compared visually. Because
the only difference between the marks is the final “K” on
respondent’s mark, the marks would be pronounced the same,
and look almost the same. Further, both marks convey the
same connotation – that of something which assists in the
tracking of documents.
We conclude that the marks are virtually identical, and
that this strongly supports petitioner’s claim for
cancellation.
2. The Similarity or Dissimilarity of the Goods

Respondent’s mark is registered for “computer software
for use in tracking and displaying documents in legal
proceedings” in International Class 9. Petitioner’s
testimony establishes that petitioner’s DOCUTRAC software is
used for tracking both the location of and deadlines
associated with a document in the system, and allows notes
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to be associated with the document, all as a part of
petitioner’s case management system.
On this record, respondent’s software appears to be
highly similar to petitioner’s in that they both provide the
function of tracking documents. Although respondent’s
software also displays documents, and petitioner’s software
provides “merging” functions, they nonetheless both share
the key function of document tracking. While we cannot find
that the goods are “indistinguishable,” as petitioner urges,
it appears that they are indeed highly similar.
The similarity of goods is thus a factor that strongly
supports petitioner’s claim for cancellation.
3. The similarity or Dissimilarity of
Established, Likely-to-Continue Trade
Channels.

The subject application identifies respondent’s goods
as “computer software for use in tracking and displaying
documents in legal proceedings” (emphasis added). The
primary customers for such goods are undoubtedly those most
closely involved in legal proceedings, namely, lawyers and
law firms.
Petitioner testified that its goods have a variety of
uses and can – and have been – adapted to a range of
professional situations. Nonetheless, the testimony was
perfectly clear that legal applications are the focus of
petitioner’s business. Indeed, Mr. Helin testified that
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petitioner’s business is “99 percent legal.” Helin Dep. 13.
Mr. Helin further testified that petitioner advertises in
legal magazines and maintains memberships in legal
organizations in furtherance of its business.
Given this evidence, we find that the parties share a
very substantial overlap in the classes of potential
purchasers for their respective goods. Indeed, the customer
base for both is nearly coextensive. Confusion is more
likely when it is shown that the parties’ goods are directed
to the same class of customers, as it is almost inevitable
that purchasers will be exposed to both marks.
This factor strongly supports petitioner’s claim.
4. Conditions of Sale and Buyers to Whom Sales
are Made

We doubt that the goods at issue here are purchased
casually; petitioner’s sales agreements indicate that its
DOCUTRAC modules are sold as part of a software system that
cost several thousand dollars in 1987. Moreover, purchase
and use of such items involves important business decisions.
As a result, purchasers might be expected to take
considerable care in selecting them. Nonetheless, the marks
at issue here are virtually indistinguishable, and they are
both used on essentially the same goods. Even the most
careful of purchasers would likely have difficulty
distinguishing these marks.
This factor is neutral in our analysis.
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5. Respondent’s “Admission” of a Likelihood of
Confusion

We finally note the argument regarding respondent’s
comment in its answer that “it is Registrant who is being
injured by Petitioner’s current use of “DOCUTRAC.” Answer
¶ 9, see Petitioner’s Br. at 13. Opposer contends that this
is a tacit admission by applicant that there is a likelihood
of confusion. We decline to construe this brief (and
nonresponsive) comment in the answer as anything more than a
denial of the corresponding allegation in the petition.4
IV. Conclusion
After consideration of the entire record, we conclude
that petitioner has demonstrated its standing, that it has
valid trademark rights in the mark DOCUTRAC, and that those
rights are prior to respondent’s. Moreover, in light of the
virtually identical marks, highly similar goods, and the
substantial overlap in the channels of trade and classes of
customers for those goods, we conclude that continuance of
respondent’s registration would give rise to a likelihood of
confusion, and that cancellation of respondent’s
registration is appropriate.

4 Paragraph 9 of the petition alleged that “Petitioner is further
being injured by the existence of Registration No. 2,833,136 in
that Petitioner has filed federal Trademark Application, Serial
No. 76/598738 to protect its mark, which protection has been
denied because of the existence of Registration No. 2,833,136.
The allegation was denied, following which respondent added the
comment quoted above.
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Decision: The petition to cancel is GRANTED.
Registration No. 2833136 will be cancelled in due course.