Alliance Technical Services, Inc.v.Alliance Machine Systems Inter-national, Inc.

Trademark Trial and Appeal Board

Aug 16, 2006

No. 91159099 (T.T.A.B. Aug. 16, 2006)

Hearing: Mailing: 8/16/2006
January 19, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Alliance Technical Services, Inc.
v.
Alliance Machine Systems International, Inc.
_____

Opposition No. 91159099
to application Serial No. 76381608
filed on March 13, 2002
_____

Eric O. Haugen of Haugen Law Firm for Alliance Technical
Services, Inc.

J. Thomas Vitt and Andrew J. Cosgrove of Dorsey & Whitney
for Alliance Machine Systems International, Inc.
______

Before Quinn, Hairston and Kuhlke, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:

An application was filed by Alliance Machine Systems
International, Inc. to register the mark shown below

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Opposition No. 91159099
2
for “material handling products for the paperboard packaging
and corrugated industries, namely, folder/gluers, stackers,
pre-feeders, loaders, conveyors, and bundle-handlers.”1
Alliance Technical Services, Inc. opposed registration
under Section 2(d) of the Trademark Act on the ground that
applicant’s mark, as used in connection with applicant’s
goods, so resembles opposer’s previously used mark ALLIANCE
for software for use in a variety of applications in the
corrugated paper industry, and for repair and maintenance
services performed on machines in the corrugated paper
industry, as to be likely to cause confusion.
Applicant, in its answer, denied the salient
allegations of the notice of opposition.
The record consists of the pleadings; the file of the
involved application; trial testimony, with related
exhibits, taken by each party; stipulated affidavit
testimony with related exhibits; a copy of opposer’s pending
application to register the mark ALLIANCE, and applicant’s
responses to certain of opposer’s requests for admission,
all introduced in opposer’s notice of reliance; and copies
of third-party registrations made of record by way of
applicant’s notice of reliance. Both parties filed briefs,

1 Application Serial No. 76381608, filed March 13, 2002, based on
allegations of first use anywhere and first use in commerce at
least as early as February 2000.
Opposition No. 91159099
3
and both were represented by counsel at an oral hearing held
before the Board.
The Parties
Opposer is engaged in supplying software for equipment
in the corrugated paper industry (90 percent of opposer’s
revenues). Opposer also is engaged in the repair and
maintenance of equipment in the corrugated paper industry
(10 percent of opposer’s revenues). Opposer’s software
ranges in price from $5,000 to over $3 million. Daniel P.
White, opposer’s executive vice president, testified that
opposer promotes its goods and services in trade magazines,
as well as through appearances at trade shows.
Applicant manufactures and sells machinery used on the
finishing side of corrugated box plants; applicant does not
sell corrugating machines and is not involved in the
corrugating side of the business. Rick Wilkinson,
applicant’s vice president of sales and marketing, testified
that applicant’s machinery ranges in price from $30,000 to
over $1 million. The goods are promoted in advertisements
in trade publications and at trade shows.
Priority of Use
We first turn to the issue of priority. Opposer does
not own a registration, but rather is relying upon common
Opposition No. 91159099
4
law rights.2 Opposer, as noted above, pleaded rights in the
mark ALLIANCE; the notice of opposition did not include
reference to other marks that opposer has used, such as
ALLIANCE TECHNICAL SERVICES INC. or variations thereof.
Nevertheless, it is clear that the parties, at trial,
litigated the issues of priority and likelihood of confusion
with respect to opposer’s marks ALLIANCE as well as ALLIANCE
TECHNICAL SERVICES INC. (with or without a design feature).
Inasmuch as opposer’s rights in the mark ALLIANCE TECHNICAL
SERVICES INC. (with or without a design feature) were tried
by the consent of the parties, we will treat the mark as if
it had been pleaded in the notice of opposition. Fed. R.
Civ. P. 15(b). See also TBMP § 507.03(b) (2d ed. rev.
2004).
We find that opposer has established prior common law
rights in its marks ALLIANCE per se, and ALLIANCE TECHNICAL
SERVICES INC. (with or without a design).3 Mr. White’s
testimony, coupled with the exhibits, support opposer’s
priority claim. Although applicant vigorously contests
opposer’s use of ALLIANCE standing alone, exhibit nos. 2-9
show such use. Mr. White also testified that while opposer

2 Opposer’s application serial no. 76581610 to register the mark
ALLIANCE is currently suspended pending a final determination in
the present proceeding.
3 Applicant, in its brief (pp. 8-9), seems willing to concede
that opposer has rights in its logo mark.
Opposition No. 91159099
5
is disciplined about calling itself by its formal corporate
name, customers routinely refer to opposer as “Alliance.”
Further, and more specifically, the testimony and
evidence establish prior use of these marks in connection
with software for the corrugated paper industry, and with
repair and maintenance services for the corrugated paper
industry.
Likelihood of Confusion
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence that are relevant
to the factors bearing on the likelihood of confusion issue.
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973). In any likelihood of confusion
analysis, two key considerations are the similarities or
dissimilarities between the marks and the similarities or
dissimilarities between the goods and/or services.
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976). “Not all of the factors may
be relevant or of equal weight in a given case,” and “any
one of the factors may control a particular case.” In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1205 (Fed. Cir. 2003), citing In re Dixie Restaurants
Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
After reviewing the record, we conclude that the
marketplace realities make confusion unlikely to occur.
Opposition No. 91159099
6
Opposer’s goods and services and applicant’s goods are
specifically different and noncompetitive. This factor,
coupled with the detailed, lengthy and personal nature of
the purchasing process, the high cost of the involved goods,
and the sophistication of purchasers, make it unlikely for
confusion to occur. Kellogg Co. v. Pack ’em Enterprises
Inc., 951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991) [any
single factor may play a dominant role in a likelihood of
confusion analysis].
The Marks
In comparing opposer’s mark ALLIANCE with applicant’s
mark ALLIANCE and design, there is no significant difference
between the two. The marks are identical in sound and
meaning. The only difference between the marks is the
design feature in applicant’s mark. However, this design
feature is clearly subordinate to the literal portion of
applicant’s mark, and does not serve to sufficiently
distinguish the marks in terms of appearance or commercial
impression.
When comparing applicant’s mark with opposer’s mark
ALLIANCE TECHNICAL SERVICES INC. (with or without a design),
we likewise find that the marks are similar. In comparing
the marks, we have not ignored either the “TECHNICAL
SERVICES INC.” portion of opposer’s mark or, when used, the
design feature. However, while we have considered the marks
Opposition No. 91159099
7
in their entireties, it is well settled that one feature of
a mark may be more significant than another, and it is not
improper, for rational reasons, to give more weight to this
dominant feature in determining the commercial impression
created by the mark. See In re National Data Corp., 753
F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985). With opposer’s
mark ALLIANCE TECHNICAL SERVICES, INC. (with or without a
design), the arbitrary portion “ALLIANCE” dominates the
mark. This portion of the mark is most likely to be
remembered by purchasers and will be used in calling for
opposer’s goods and services. And, as shown by the record,
opposer’s mark is often shortened to just ALLIANCE.
We find that any differences between the marks are
outweighed by the similarities. In sum, the parties’ marks
are similar in sound, appearance, meaning and commercial
impression.
The similarities between the marks favor opposer.
Goods and/or Services
Mr. Wilkinson explained the industry in which both
parties operate. Corrugated material is durable cardboard
used to make boxes, packaging, and displays. Corrugated
material is composed of two sheets of cardboard with a
fluted wave between the sheets, and this material is made
into a structural package. The manufacture of corrugated
packaging, according to Mr. Wilkinson, is divided into two
Opposition No. 91159099
8
parts: 1) the manufacture of corrugated sheets from paper
on a corrugated machine, typically called a “corrugator”;
and 2) the finishing of the corrugated sheet material by
cutting, folding, gluing and printing the material to make a
finished product. Simply put, as Mr. Wilkinson explains it,
the corrugating side of the business creates the corrugated
board, and the finishing side of the business takes the
corrugated board and turns it into a box, the finished
product. According to Mr. Wilkinson, corrugating plants
take paper, put it in a machine called a “corrugator," and
the plant makes the board on the corrugator. Once the board
is made, it’s die cut into pieces that are moved down to the
finishing machines. Mr. Wilkinson states that applicant’s
“machines go in front of and behind finishing machines that
would die cut, fold and glue these boxes.” (Wilkinson dep.,
p. 11). Mr. Wilkinson further testified that some
manufacturing plants have both corrugators and finishing
line equipment, while some plants have just a corragator,
and other plants have just finishing line equipment for the
corrugated material. Opposer’s software is directed in
large part to the corrugating side of the plant, whereas
applicant’s machines are used in the finishing side of the
plant.
Mr. Wilkinson also testified that the corrugated paper
industry has two major segments. The first group, referred
Opposition No. 91159099
9
to as “integrateds,” comprise a few Fortune 500 companies
that own forestland, paper mills and corrugated
manufacturing plants. These companies include Georgia
Pacific, International Paper and Weyerhaeuser. The second
group, known as “independents,” usually are privately-owned
companies that operate one or more corrugated box plants.
Unlike the “integrateds,” the “independents” are not in the
business of making paper to turn into boxes; they simply
make boxes.
As shown by the record, opposer sells software for the
corrugated paper industry, and supplies aftermarket machine
support services. Mr. White testified that “we don’t make
the machinery, we make the software, we provide the network
services that allow the machinery to communicate back and
forth.” Mr. White went on to state, “in the machinery
service side of the business we can and do help our
customers keep specific materials handling machines
running.” (White dep., pp. 12-13). Mr. White estimates
that 90 percent of opposer’s revenues flow from the sales of
its software, while the remaining 10 percent of revenues are
from its machinery support services.
With respect to software, opposer installs the software
at the factory level for use in machines on the factory
floor. Mr. White described the software’s application as
follows: “I would say manufacturing business management
Opposition No. 91159099
10
would be the fairest general descriptor, manufacturing
business management, not accounting, not payroll, everything
else.” (White dep., p. 165). Opposer sells a variety of
software applications “enabling plants to monitor and
control virtually all resources more efficiently.” (White
dep., ex. no. 7). The applications serve a range of
functions, including monitoring corrugator production
schedules; providing inventory on a real-time basis;
maximizing corrugator productivity while minimizing trim;
preparing load tags for finished product; monitoring
machines; and scheduling deliveries. (White dep., ex. no.
9).
On the services side, Mr. White testified that opposer
has 75-100 customers; most of opposer’s customers are repeat
customers, and most of the revenues come from the large
“integrateds.” According to opposer’s “Products & Services
Summary,” opposer “specializes in providing high quality on-
site service products to the corrugated industry on Marquip
equipment, extending from detailed machinery tune-ups to
retrofits, rebuilds, installations and training.” (White
dep., ex. no. 7). Mr. White testified that opposer also has
repaired equipment of other manufacturers, specifically
naming four; the evidence suggests, however, that opposer’s
services are focused on equipment manufactured by Marquip.
In this connection, Mr. White testified that 80-90 percent
Opposition No. 91159099
11
of opposer’s services’ revenues relate to work on Marquip
equipment.
With respect to applicant’s goods, Mr. Wilkinson
testified that with the exception of its folder gluers, all
of applicant’s equipment may be characterized as “material
handling equipment.” Mr. Wilkinson defines such equipment
as “equipment that handles stacks of corrugated, delivers
them to the machines, takes the individual blanks away from
the machine and generally creates a stack to be shipped to
the end user.” (Wilkinson dep., p. 16). Mr. Wilkinson
further testified that 85% of applicant’s sales of its
material handling machines are to the seven “integrateds;”
and approximately 80% of applicant’s specialty folder gluers
are sold to “independents.”
We acknowledge that the parties’ goods and opposer’s
services are sold in the same industry, namely the
corrugated paper industry. Nevertheless, there are
significant and specific differences between opposer’s
software and applicant’s material handling equipment. The
involved goods relate to different aspects of the corrugated
paper business. Further, opposer’s services, as actually
rendered in the field, concentrate on one manufacturer’s
equipment. And, we might add, opposer’s services constitute
only 10 percent of opposer’s total revenues.
Opposition No. 91159099
12
We recognize that applicant’s machinery, not unlike
most modern manufacturing equipment, uses embedded software
for automation purposes. Given the sophistication of the
respective software and equipment, however, we do not find
this connection to be dispositive of the likelihood of
confusion issue.
In sum, opposer’s goods and services are specifically
different from and noncompetitive with applicant’s goods.
This factor favors applicant.
Third-Party Use
Applicant contends that opposer’s mark is weak based on
1) opposer’s relatively modest sales figures and modest
promotional expenditures, and 2) the fact that opposer is
just one of “dozens” of companies that use the term
ALLIANCE.
As part of its evidence relating to this factor,
applicant has relied upon exhibits accompanying the
affidavit of Andrew Cosgrove, submitted in connection with
the parties’ stipulation of facts.
The stipulation indicates that it was submitted to
provide “a savings of time and expense,” and that the
affidavit and accompanying exhibits “are properly offered
for admission and to be made of record as stipulated trial
testimony.” The stipulation lastly states that “Opposer
does not waive any objections to the Affidavit and its
Opposition No. 91159099
13
accompanying documents on any other grounds, including
relevance, admissibility, and timeliness.”
Mr. Cosgrove, in his affidavit, states that he is an
attorney with the law firm representing applicant, and that
the documents accompanying his affidavit “are printouts that
were published on the Internet and were accessed by this
Affiant at the Internet address included on the printouts on
the date included on the printouts.”
Opposer contends that the exhibits are not self-
authenticating, but rather are unauthenticated Internet
documents. Opposer has moved to strike the Internet
exhibits, stating that “such documents may be introduced
into evidence through the testimony of a person who can
properly authenticate and identify the subject materials”
and that the exhibits “are not printed publications, and are
not allowed to be made of record by a Notice of Reliance.”
(Reply Brief, p. 6).
The objection is overruled inasmuch as Mr. Cosgrove, in
his affidavit, authenticated the Internet evidence. The
evidence consists of excerpts of third-party websites. This
Internet evidence, however, is entitled to minimum probative
value. There are no corroborating facts regarding the
extent of the third-party uses of ALLIANCE. That is to say,
the record is devoid of information regarding sales, market
share, promotional efforts, and the like under the third-
Opposition No. 91159099
14
party marks. Thus, we cannot ascertain whether the marks
have made an impact in the marketplace, or that customers
are even familiar with the uses. See, e.g., Carl Karcher
Enterprises Inc. v. Stars Restaurants Corp., 35 USPQ2d 1125,
1131 (TTAB 1995).
Applicant more specifically points to two other uses of
ALLIANCE by entities in the corrugated paper industry. Mark
Duchesne, applicant’s president and chief executive officer,
testified that he was aware of two third-party uses of
ALLIANCE in the industry. He identified Alliance Packaging,
a corrugated manufacturer located in the state of Washington
that has been using that name since 2001; and Alliance
Group, an association of corrugated box manufacturers.
These two third-party uses likewise are entitled to
minimal probative value. Again, there is no evidence
regarding the extent of these uses or that customers are
familiar with them. Standing alone, the existence of these
uses does little to impact the distinctiveness of opposer’s
mark for its goods and services.
Applicant also introduced nineteen third-party
registrations for ALLIANCE or ALLIANCE formative marks. The
third-party registration evidence is of no value. Firstly,
the registrations are not evidence of use of the marks shown
therein. Thus, they are not proof that consumers are
familiar with such marks so as to be accustomed to the
Opposition No. 91159099
15
existence of similar marks in the marketplace, and as a
result are able to distinguish between the ALLIANCE marks
based on slight differences between them. Smith Bros. Mfg.
Co. v. Stone Mfg. Co., 476 F.2d 1004, 177 USPQ 462 (CCPA
1973); and Richardson-Vicks, Inc. v. Franklin Mint Corp.,
216 USPQ 989 (TTAB 1982). Secondly, none of the
registrations specifically covers goods or services in the
corrugated paper industry.
In sum, applicant’s evidence hardly establishes that
opposer’s rights to exclude others from using the term
ALLIANCE is, in applicant’s words, “necessarily very
limited.” In our du Pont analysis, this factor is neutral.
Trade Channels
Opposer’s goods and applicant’s goods travel in similar
trade channels, albeit specifically distinct. While both
parties operate in the corrugated paper industry, the goods
move in distinct trade channels within the industry.
Admittedly, both parties advertise in the same trade
publications, and attend the same trade shows. However,
with respect to the “integrateds,” to whom sales comprise
the majority of revenues flowing from sales of the parties’
goods, information technology (IT) professionals purchase
opposer’s computer software, whereas engineers buy
applicant’s equipment. See Electronic Design & Sales Inc.
v. Electronic Data Systems Corp., 954 F.2d 713, 21 USPQ2d
Opposition No. 91159099
16
1388, 1391 (Fed. Cir. 1992) [“[a]lthough the two parties
conduct business not only in the same fields but also with
some of the same companies, the mere purchase of the goods
and services of both parties by the same institution does
not, by itself, establish similarity of trade channels or
overlap of customers.”].
As for the “independents,” the parties’ goods are
bought by the plant owners. Thus, there would appear to be
an overlap in this situation. Further, with respect to
opposer’s services, there appears to be an overlap in both
the “integrateds” (where engineers would make the purchasing
decision) and the “independents” (where plant owners make
the purchasing decision).
This factor cuts both ways depending on the specific
situation.
Conditions of Sale and Classes of Purchasers
Applicant has expended significant effort to show that
the involved goods are expensive and that the purchasing
process, involving sophisticated purchasers, is lengthy,
detailed and highly personal in nature.
As will be apparent from the discussion below, this du
Pont factor weighs heavily in applicant’s favor. See In re
Shell Oil, 992 F.2d 1206, 26 USPQ2d 1687, 1688 [the various
du Pont factors “may play more or less weighty roles in any
particular determination”]. “Indeed, any one of the factors
Opposition No. 91159099
17
may control a particular case.” In re Dixie Restaurants
Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997), citing
In re du Pont, 177 USPQ at 567. Simply put, the marketplace
realities make confusion unlikely to occur.
Mr. White testified that opposer’s software could range
in price from $5,000 to over $3 million for a substantial
implementation. As in the case of applicant’s sales,
opposer engages in face-to-face meetings, and opposer
routinely makes site visits to the prospective customers’
plants. The software sales require technical analysis and
customization efforts with the customer’s information
technology department. As Mr. White stated, “Typically
you’re dealing with the IT or information technology systems
department at a corporate level.” (White dep., p. 167).
The sales process may take as little as thirty days, or as
long as a few months: “So I would say never less than 30
days, typically months, and I think a year is the extreme at
the other end, and then you’ve got those who you’re not
entirely certain are ever going to buy.” (White dep., p.
172).
Mr. Wilkinson explained that applicant sells large,
expensive and sophisticated material handling machinery used
in the finishing side of a corrugated box plant. Applicant
sells specialty folder gluers ($600,000-$1 million); load
formers ($40,000); automatic pre-feeders ($80,000-$200,000);
Opposition No. 91159099
18
stackers ($300,000-$450,000); bundle breakers ($60,000-
$80,000); and inverters and rotators ($30,000).
As noted earlier, 85 percent of applicant’s sales are
made to the “integrateds.” According to Mr. Wilkinson,
applicant stays in direct contact with the “integrateds” on
a weekly basis; these regular contacts increase if there is
a project under consideration. For the “integrateds,” the
sales process ranges from around three months to three
years. The process includes in-person visits to the plant
to meet with the customer, resulting in a detailed written
sales proposal with technical specifications and drawings.
The sales process with “independents” usually takes a
shorter period of time to complete, but the process still
involves face-to-face meetings and detailed written
proposals. That sales process may even be more personal in
nature inasmuch as it involves a major investment by the
plant owner that may transform the “independent’s” business.
Mr. Wilkinson confirms that applicant, in selling its
goods, deals with plant engineers and maintenance
supervisors. The “integrateds” generally have an
experienced team that deals with applicant in negotiating
the various terms of the sale. In selling goods to
“independents,” applicant often deals directly with the
owner of the company. In either event, Mr. Wilkinson
maintains that customers and their purchasing personnel are
Opposition No. 91159099
19
sophisticated and knowledgeable about the corrugated
equipment that is being purchased.
As previously noted, while the parties conduct business
in the same industry with some of the same companies, the
mere purchase of the goods and/or services of both parties
by the same institution does not, by itself, establish
similarity of trade channels or overlap of customers. “The
likelihood of confusion must be shown to exist not in a
purchasing institution, but in a ‘customer or purchaser.’”
Electronic Design & Sales Inc. v. Electronic Data Systems
Corp., 21 USPQ2d at 1391 (emphasis in original).
Insofar as the “integrateds” are concerned, opposer, in
selling its software, deals with the information technology
department. Applicant, in negotiating with the
“integrateds,” deals with a purchasing team that generally
includes a director of corporate purchasing who negotiates
commercial aspects of the sale, a director of manufacturing
or engineering services who handles the technical details of
the purchase, as well as plant managers and engineers.
Thus, there is no overlap.
With respect to the “independents,” both parties deal
with the owners of the companies. The owners may be a
second or third generation family member who has owned and
operated a corrugated box plant. In each instance, the
purchasers are knowledgeable about the industry. After a
Opposition No. 91159099
20
lengthy, personal sales process, these purchasers know with
whom they are dealing.
Insofar as opposer’s services are concerned, in
rendering its services to the “integrateds,” opposer’s
contacts include plant engineers and plant maintenance
supervisors. With respect to the “independents,” opposer
deals directly with the owners. Thus, there is an overlap
here with applicant’s customers. The record shows, however,
that repair and maintenance services constitute only about
10 percent of opposer’s business. Thus, any overlap is de
minimis. In any event, these plant owners are very
sophisticated customers.
Given the detailed, lengthy and personal nature of the
purchasing process, and the high cost of the involved goods,
as well as the sophistication of the purchasers, confusion
is not likely to occur. Mr. White essentially admitted as
much when he testified, in pertinent part, as follows (dep.
pp. 175-79):
Do you think that it’s even remotely
possible that somebody could go through
the [purchasing] process you’ve just
described thinking that you’re not
Alliance Technical but, instead, are
Alliance Machine Systems?

If--your--your question assumes
something that actually is the problem.
In answering your question, no. But the
real problem is could I conceivably lose
the opportunity to ever get an
opportunity to make the initial contact
with that customer because they assume
Opposition No. 91159099
21
that somehow I’m affiliated with not
just a competitor but that there is some
relationship and they can’t or won’t
buy, and, again, it’s anecdotal. I
don’t have a paper trail, but a--a
potential client in Germany, just to
illustrate, we were trying to set up a
meeting with someone who is an original
equipment manufacturer in Germany. It’s
just another supplier. He’s not even a
converter, and he would be in a position
to create opportunity for us as sort of
an add-on, our systems would complement
his systems, and we were trying to set
up the meeting, his initial reaction or
question is why on earth would I take a
meeting with a competitor, and his
assumption was that somehow we were
related to Alliance Machine Systems
International, who competes with his
concern.

Now, obviously, if I’m relaying all
this--all of this to you, we had this
conversation with this client who took
the meeting.

I don’t know how many meetings, to be
frank, that I haven’t been invited to
because people based on misinformation
or confusion never gave us the
opportunity.

The fairest answer to a fair question is
could anyone--it’s virtually impossible
that if we got to a point in the process
where we were here that anyone would be
confused. We have some anecdotal,
internal hearsay. I completely respect
that, honest face or not, if I can’t
prove it and--and, obviously, there’s
got to be a standard for that, it’s just
what I’m saying...It’s almost a
suffocating association because of the
disparity in size between the two
entities, and--and given that there
never was anyone but us as Alliance
preceding their use of the name, the
assumption for the longest time, from
2000--and I don’t even want to suggest
Opposition No. 91159099
22
that we’re past it because we still have
these episodes that would suggest some
kind of confusion at some level. There
is the assumption at Weyerhaeuser, of
all places, and any sane person at
Weyerhaeuser would know us as separate
entities. But the question was casual,
was what is the association? Did they
buy you? Did you buy them? And it
makes the smaller entity the more
nervous because you sort of disappear in
all the noise and confusion of this.

So our reality is that we won’t get
those opportunities. You know, can I--
do I have paper trails like I do with
the misdirected payments? No. I mean,
I’m not going to waste anyone’s time
saying I can prove something that I can
only relate based on anecdotal
conversations, but the issue for me is
getting that opportunity...

So I would acknowledge it’s unlikely
once we get to a certain point in the
sales process that there could be
confusion. Our concern is in what may
or may not be happening when they’re
coming up with that short list of
vendors to invite, and I’ve got too many
instances where I found out after the
fact that assumptions were made, that
I’m not going to exclusively attribute
to your client’s use of Alliance, but I
know of instances where there were near
misses, and I can only know about those
near misses because someone says so-and-
so thought there was some relationship
between your two companies or what have
you.

So it isn’t even necessarily our
competitors. It’s such a small group of
suppliers that the fact that two of us
would bother to have the same name
implies because it’s such--if our
customer base were 20 million instead of
--instead of 2,000, and it’s even less
than that when you start lumping those
Opposition No. 91159099
23
plants that are controlled by a single
buying entity...

But that would be the fairest--thank you
for allowing me the answer because it
was lengthy, but the concern of the
problem as I perceive it is before we
get to the point where there’s a lot of
contact.
(emphasis added)

Mr. White further testified (pp. 231-232):
Are you aware of any evidence of
somebody buying one of [applicant’s
machines] or any of these other pieces
of capital equipment thinking that
[applicant] was [opposer]?

I’m not aware, no.

Would you agree with me that’s pretty
unlikely?

I would grant you that.

What I’m looking for is whether there’s
any evidence that you’re aware of a
customer or potential customer seeing
[applicant’s] logo on a machine and then
being confused by that use and thinking
there’s an affiliation between the two
companies?

Well, depending on their visual acuity,
and I have--I’m nearsighted severely—

I’m not asking for speculation. I’m
asking for a real life example if you’re
aware of that ever happening?

Oh, my--no, I’m not aware of it ever
happening.

As shown by the above testimony, Mr. White essentially
concedes that in view of the lengthy negotiating process
leading up to a sale, prospective customers are not likely
Opposition No. 91159099
24
to be confused as to source. Thus, at least at the point of
purchase after a lengthy buying process, Mr. White
recognizes that confusion is not likely to occur among
purchasers. See Amalgamated Bank of New York v. Amalgamated
Trust & Savings Bank, 842 F.2d 1270, 6 USPQ2d 1305, 1308
(Fed. Cir. 1988); and Bongrain International Corp. v. Delice
de France Inc., 811 F.2d 1479, 1 USPQ2d 1775 (Fed. Cir.
1987) [Businessmen in the marketplace are in a better
position to know the real life situation than bureaucrats or
judges.].
We fully agree with Mr. White’s assessment. That is to
say, given the detailed, lengthy and personal nature of the
sales process, and the high cost of the involved goods, as
well as the sophistication of the purchasers, confusion is
not likely to occur. Sales of the parties’ specifically
different and noncompetitive goods occur only after long-
term negotiations, direct communications and on-going
contacts between the seller and the sophisticated buyer.
See Continental Plastic Containers Inc. v. Owens Brockway
Plastic Products, Inc., 141 F.3d 1073, 46 USPQ2d 1277, 1282
(Fed. Cir. 1998) [“[T]he wholesale purchasers may be
characterized as sophisticated buyers because...sales to
these parties are likely to be the culmination of long-term
negotiations, direct communications between the parties and
ongoing contact...These purchasers are very unlikely to be
Opposition No. 91159099
25
confused over the source of the bottles.”]. See also
Electronic Design & Sales, Inc. v. Electronic Data Systems
Corp., 21 USPQ2d at 1388; Dynamics Research Corp. v.
Langenau Mfg. Co., 704 F.2d 1575, 217 USPQ 649 (Fed. Cir.
1983); and Hewlett-Packard Co. v. Human Performance
Measurement, Inc., 23 USPQ2d 1390 (TTAB 1991).
On the other hand, Mr. White is concerned about what he
perceives to be initial confusion. (White dep., pp. 179).
Many courts have recognized the initial interest confusion
theory, even though no actual sale is finally completed as a
result of the confusion, as a form of likelihood of
confusion which is actionable. See HRL Associates, Inc. v.
Weiss Associates, Inc., 12 USPQ2d 1819 (TTAB 1989), aff’d on
other grounds, 902 F.2d 1546, 14 USPQ 2d 1840 (Fed. Cir.
1990) [Board found that the likelihood of initial interest,
pre-sale confusion overcame the sophisticated purchaser
defense; on appeal, the Federal Circuit expressly avoided
reaching the issue of initial interest confusion]. See
generally J. T. McCarthy, McCarthy on Trademarks and Unfair
Competition, § 23:6 (4th ed. 2004). However, as is the case
in any inter partes proceeding involving likelihood of
confusion, the plaintiff has the burden of proof to show, by
a preponderance of the evidence, that it is entitled to
prevail on its claim. Initial interest confusion, even when
the marks are similar, will not be assumed, but rather must
Opposition No. 91159099
26
be proven by the evidence. The problem with opposer’s
theory, however, is that the record falls short of proving
initial interest confusion. Mr. White’s testimony is
telling on this point (p. 180):
Are you aware, Mr. White, of a single
incident in the United States where you
didn’t get an opportunity to bid for a
software project because of this issue
with Alliance Machine?

I, myself, at the moment am not aware of
that specific consequence being the
result of what I just described to you.

As readily conceded by Mr. White, his theory is supported
not by probative evidence that has been introduced into the
record, but rather by mere anecdotal statements. The claim
of initial interest confusion is too speculative on which to
base a finding of likelihood of confusion in this case. At
most, the record in support of initial interest confusion is
de minimis and weak.
In sum, the record shows that when selling their
respective goods to the large “integrateds,” opposer and
applicant generally are dealing with different purchasing
agents of the same business: opposer negotiates with
information technology professionals while applicant deals
with engineers. We recognize that when opposer is selling
its services to the “integrateds,” it is likely to be
dealing with engineers as well. And, when the parties are
selling to the “independents,” they are likely to be dealing
Opposition No. 91159099
27
with the same purchasing agent, namely the owner of the
plant. As shown by the evidence, however, any overlap
involves only a de minimis number of individuals. Moreover,
these purchasers are very sophisticated and, after a lengthy
buying process, they certainly know with whom they are
dealing. “Where the purchasers are the same, their
sophistication is important and often dispositive because
‘[s]ophisticated consumers may be expected to exercise
greater care.’” Electronic Design & Sales Inc. v.
Electronic Data Systems Corp., 21 USPQ2d at 1392, citing
Pignons S.A. de Mecanique de Precision v. Polaroid Corp.,
657 F.2d 482, 212 USPQ 246, 252 (1st Cir. 1981).
The conditions of expensive sales and the
sophistication of purchasers is a du Pont factor that weighs
heavily in applicant’s favor. Further, as noted earlier,
the parties’ goods are specifically different and
noncompetitive. “There is always less likelihood of
confusion where goods are expensive and purchased after
careful consideration.” Electronic Design & Sales Inc. v.
Electronic Data Systems Corp., 21 USPQ2d at 1392, citing
Astra Pharmaceutical Products v. Beckman Instruments, 718
F.2d 1201, 220 USPQ 786, 790 (1st Cir. 1983). Indeed, this
factor principally controls the result in the present case.
In re Dixie Restaurants Inc., 41 USPQ2d at 1533. See
Dynamics Research Corp. v. Langenau Mfg. Co., 217 USPQ at
Opposition No. 91159099
28
649 [Court affirmed conclusion that because the marks are
used on goods that are quite different and sold to
different, discriminating customers, there is no likelihood
of confusion even though both parties used the identical
mark DRC.].
Actual Confusion
Opposer, in connection with this factor, has introduced
evidence that it characterizes as “substantial.” (Brief, p.
23). Opposer points to “misdirected payments, attempts to
put charges through on credit cards believed to be
associated with the wrong party, misdirected inquiries based
upon materials affixed to machines sold by Applicant and
serviced by Opposer, and the like.” Id. Opposer claims
that it never experienced, during a ten-year period, any
confusion-based problems until applicant began using its
ALLIANCE mark. As asserted by opposer, a showing of actual
confusion is highly probative of a likelihood of confusion.
In re Majestic Drilling Co., 65 USPQ2d at 1205.
Applicant claims that over a period of five years of
contemporaneous use, “there has not been one example of
real, relevant trademark confusion.” (Brief, p. 18).
Applicant dismisses opposer’s evidence as comprising “a few
isolated instances of misdirected payments, almost all by
the large integrated companies, and most occurring several
years ago, shortly after [applicant’s] name change.”
Opposition No. 91159099
29
(Brief, pp. 18-19). Applicant further criticizes opposer’s
evidence on the grounds that three of the purported
instances of actual confusion involve foreign entities; that
the documents in support of opposer’s claim constitute
inadmissible hearsay; and that the evidence falls short of
showing actual trademark confusion. Applicant further
contends that, to the extent opposer’s evidence shows actual
confusion, the confusion is de minimis.
Although we have considered all of the purported
instances of actual confusion, the three involving foreign
entities are entitled to less probative weight than the
others. We say this after taking into account differences
in language, and the significant point that the likelihood
of confusion analysis centers on domestic customers.
As to applicant’s hearsay objection, hearsay is an out-
of-court statement offered to prove the truth of the matter
asserted. Fed. R. Evid. 801(c). Courts have responded to
the hearsay objection in varying ways. See generally, J.T.
McCarthy, McCarthy on Trademarks and Unfair Competition, §
23:15 (4th ed. 2004).
We have not considered Mr. White’s testimony and
relevant exhibits for the truth of the matter asserted. We
have accepted the testimony and evidence to show, however,
that opposer received misdirected payments and inquiries
Opposition No. 91159099
30
that were meant for applicant. Thus, we deem the testimony
and evidence to be admissible.
As to the probative value of the testimony and
evidence, Mr. White indicated that he did not know the
identities of the specific persons making the mistakes, or
the reason why the persons made the mistakes. In the
absence of such corroborating evidence about these
misdirected payments and inquiries, we are reluctant to
place significant weight on this evidence. Had the specific
individuals who were purportedly confused been identified
and made available for cross-examination, they could have
explained their reasons for their misdirected
communications. While Mr. White testified, not
surprisingly, that the reason for the misdirected
communications was the similarity between the marks and the
goods and/or services sold thereunder, we would prefer to
hear it from the individuals themselves. See Toys “R” Us,
Inc. v. Lamps R Us, 219 USPQ 340 (TTAB 1983) [While sales
clerk’s testimony is not excluded as hearsay, the evidence
has little weight if there is no evidence to indicate
whether “the reason for the question as to affiliation was
the result of the similarity of the marks.”].
In sum, we have accorded only minimal weight to
opposer’s evidence on this factor. We also agree with
applicant that such occurrences are so few in number, over a
Opposition No. 91159099
31
period of five years of contemporaneous use, that they are
de minimis.
This factor is neutral.
Conclusion
Based on the record before us, we see opposer’s
likelihood of confusion claim as amounting to only a
speculative, theoretical possibility. Language by our
primary reviewing court is helpful in resolving the
likelihood of confusion controversy in this case:
We are not concerned with mere
theoretical possibilities of confusion,
deception, or mistake or with de minimis
situations but with the practicalities
of the commercial world, with which the
trademark laws deal.

Electronic Design & Sales Inc. v. Electronic Data Systems
Corp., 21 USPQ2d at 1391, citing Witco Chemical Co. v.
Whitfield Chemical Co., Inc., 418 F.2d 1403, 1405, 164 USPQ
43, 44-45 (CCPA 1969), aff'g 153 USPQ 412 (TTAB 1967).
We have carefully considered all of the evidence
pertaining to the relevant duPont factors, as well as all of
the parties’ arguments with respect thereto (including any
evidence and arguments not specifically discussed in this
opinion), and we conclude that opposer has not proved its
Section 2(d) claim of likelihood of confusion, as based on
its common law rights.

Decision: The opposition is dismissed.