AT&T Delaware Intellectual Property, Inc.v.Owl Marketing

Trademark Trial and Appeal Board

May 7, 2008

No. 91168395 (T.T.A.B. May. 7, 2008)

Mailed: May 7, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

AT&T Delaware Intellectual Property, Inc., f/k/a BellSouth
Intellectual Property Corporation
v.
Owl Marketing, Inc.
_____

Opposition No. 91168395
_____

Theodore H. Davis Jr. of Kilpatrick Stockton LLP for AT&T
Delaware Intellectual Property, Inc., f/k/a BellSouth
Intellectual Property Corporation.

Daryl Michalik, President and CEO, for Owl Marketing, Inc.
______

Before Bucher, Bergsman, and Ritchie de Larena,
Administrative Trademark Judges.

Opinion by Ritchie de Larena, Administrative Trademark
Judge:

Owl Marketing, Inc. filed an application for the mark
ADWATCH, in standard character format, for services
identified as “application service provider (ASP) featuring
software in the field of advertising effectiveness
measurement and analysis for online businesses” in
International Class 42.1

1 Application No. 78292037, filed August 25, 2003, under Section
1(a) of the Trademark Act of 1946, 15 U.S.C. §1051(a), and
subsequently amended to an intent-to-use application under
Section 1(b).
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91168395
2
AT&T Delaware Intellectual Property, Inc., f/k/a
BellSouth Intellectual Property Corporation, opposed the
registration of applicant’s mark on the ground of priority
of use and likelihood of confusion under Section 2(d) of the
Trademark Act of 1946, 15 U.S.C. §1052(d). Specifically,
opposer alleged that applicant’s mark is likely to cause
confusion with opposer’s mark ADWATCH for “business
services, namely providing telephone call frequency and
distribution information in the form of detailed reports to
advertisers” in International Class 35 and for
“telecommunications services, namely, routing telephone
calls made to a subscriber’s number based on origin of call,
time of day, day of week and percentage of distribution,
capturing caller identification, tracking distribution of
calls and providing reports to the subscribers based on such
tracking” in International Class 38.2
Applicant denied the essential allegations in the
notice of opposition, and asserted the affirmative defense
of abandonment. Applicant additionally filed a counterclaim
to cancel opposer’s pleaded registration on the ground of
abandonment. Opposer denied the essential allegations in
the counterclaim.

2 Registration No. 2079787, issued July 15, 1997. Sections 8 and
15 affidavits accepted and acknowledged.
Opposition No. 91168395
3
Opposer filed a brief in this proceeding.3 Applicant
did not. For the reasons discussed herein, we dismiss the
counterclaim for cancellation with prejudice and we sustain
the opposition.
Evidentiary Issues
A. Opposer’s Status and Title Copy of its Pleaded
Registration

Opposer submitted a plain copy of its pleaded
registration via Opposer’s Notice of Reliance, filed during
the testimony period for opposer’s case-in-chief. That copy
of the registration did not include the current status and
title information as required by Trademark Rule 2.122(d), 37
CFR §2.122(d). Opposer later submitted a proper status and
title copy of its trademark registration via Opposer’s
Second Notice of Reliance on February 20, 2007, during the
time period allotted for opposer’s rebuttal testimony as
plaintiff in the opposition and testimony period as
defendant in the counterclaim. However, in a subsequent
order dated July 5, 2007, the Board retroactively suspended
the proceedings in this case to January 11, 2007, at which
date applicant had filed a Motion to Compel. Although

3 Opposer filed its brief on May 4, 2007. Opposer then filed a
Renewed Trial Brief on December 27, 2007, noting its change of
name. The Board accepted the Renewed Trial Brief by order dated
February 18, 2008, which also noted that applicant had not
submitted a brief.

Opposition No. 91168395
4
denying Applicant’s Motion to Compel as untimely, the order
indicated that Opposer’s Second Notice of Reliance was filed
during a time that the proceedings should have been –- and
were retroactively –- suspended, and that therefore:
“Inasmuch as opposer’s testimony period had closed, this
evidence will be given no consideration.”
In this final decision on the merits, we determine that
the equities weigh in favor of accepting the status and
title copy of opposer’s pleaded registration into the
record. A pleaded registration should be submitted during
the party’s testimony period per Trademark Rule 2.122(d)(2),
37 CFR §2.122(d)(2). In this case, opposer submitted the
status and title copy during the time period of its rebuttal
testimony in the opposition proceeding, which was also
opposer’s testimony period as defendant in the cancellation
proceeding. Applicant has not objected to the evidence as
improper rebuttal. In its discretion, the Board may accept
improper rebuttal evidence if the other party does not
object and the equities otherwise dictate the propriety of
entering it into the record. See Set Products, Inc. v.
Construction Products, Inc., 208 USPQ 842, 846 (TTAB
1980)(rebuttal testimony by petitioner establishing priority
should have been offered during case-in-chief, but was
nevertheless accepted by Board since respondent did not
object).
Opposition No. 91168395
5
Applicant was clearly on notice of the pleaded
registration, particularly as it was the subject of
applicant’s counterclaim for cancellation. Furthermore,
opposer has otherwise established priority of its common law
usage via testimony and evidence. Accordingly, applicant is
not unduly prejudiced by our decision to accept the status
and title copy of opposer’s pleaded registration.
B. Other Documents Submitted with Opposer’s and
Applicant’s Notices of Reliance

Both applicant and opposer attempted to submit
improperly authenticated evidence via their various notices
of reliance. Opposer’s notices of reliance included website
printouts; samples of its marketing materials; copies of its
product plans; market research and sales reports; and other
documentation related to opposer’s ADWATCH service.
Applicant, for its part, included its own responses to
opposer’s interrogatories; website printouts; and marketing
information for services rendered by both applicant and by
opposer under the ADWATCH mark.
None of these documents are appropriately submitted via
a notice of reliance. There is no provision in the
Trademark Rules of Practice for filing websites or the
marketing materials of parties through a notice of reliance.
See Trademark Rule 2.122(e), 37 CFR §2.122(e), which
provides for the filing of printed publications and official
records through a notice of reliance.
Opposition No. 91168395
6
With respect to applicant’s responses to opposer’s
written discovery filed by applicant, only the inquiring
party may introduce responses to interrogatories through a
notice of reliance. Trademark Rule 2.120(j)(5), 37 CFR
§2.120(j)(5).
To the extent some of the documents included in the
parties’ notices of reliance were properly authenticated
during the testimony deposition of Laurel MacKenzie, we
consider them accordingly. For those that were not, we give
them no consideration. Trademark Rule 2.122(e), 37 CFR
§2.123(i)(“ Evidence not obtained and filed in compliance
with these sections will not be considered.”).
The Record
By operation of law, the record includes the pleadings
and the files for applicant’s application and opposer’s
registration. Trademark Rule 2.122(b), 37 CFR §2.122(b).
The record also includes the following testimony and
evidence:
A. Opposer’s Evidence.

1. Notice of Reliance on applicant’s responses to
opposer’s interrogatories.
2. Opposer’s Second Notice of Reliance on the status
and title copy of opposer’s pleaded trademark registration.
3. Opposer’s Third Notice of Reliance on a series of
name changes by opposer from BellSouth Intellectual Property
Opposition No. 91168395
7
Corporation to AT&T Delaware Intellectual Property, Inc. as
documented via recorded assignments at the Trademark Office.
4. The testimony deposition of Laurel Mackenzie,
Senior Product Manager at BellSouth, with attached
exhibits.4
B. Applicant’s Evidence.
Notice of Reliance on opposer’s responses to
applicant’s interrogatories.
Standing
A party has standing to oppose a registration under
Section 13 of the Trademark Act of 1946, 15 U.S.C. §1063 if
that party can demonstrate that it has a real interest in
the proceeding (i.e., a direct and personal stake in the
outcome of the proceeding). Ritchie v. Simpson, 170 F.3d
1092, 50 USPQ2d 1023, 1025-1026 (Fed. Cir. 1999); Lipton
Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185, 189 (CCPA 1982). Opposer has submitted a status
and title copy of its pleaded registration, which we accept
in accordance with the section on “Evidentiary Issues,”
supra. Opposer has also testified as to the use of its
ADWATCH mark over at least the past six years. (Mackenzie

4 The Board observes that counsel at the MacKenzie deposition
read an opening statement into the record, stating, among other
things: “We would like to designate this deposition as
confidential in its entirety.” However, since the deposition was
submitted to the TTAB without a designation of confidentiality,
it is public record, and we treat it as such.
Opposition No. 91168395
8
dep. at 21:8-15 and 23:3-4). Therefore, opposer has
established its standing to oppose applicant’s registration.
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842, 1844 (Fed. Cir. 2000); Lipton Industries, Inc. v.
Ralston Purina Co., 213 USPQ 185 at 189. Meanwhile,
applicant’s standing to counterclaim for cancellation is
established by virtue of the opposition proceeding. Finanz
St. Honore B.V. v. Johnson & Johnson, 85 USPQ2d 1478 (TTAB
2007)(applicant subject to opposition has inherent standing
to counterclaim for cancellation); Carefirst of Maryland,
Inc. v. FirstHealth of the Carolinas Inc., 77 USPQ2d 1492
(TTAB 2005) (“Applicant, by virtue of its position as
defendant in the opposition, has standing to seek
cancellation of the pleaded registrations,” citing Ohio
State University v. Ohio University, 51 USPQ2d 1289, 1293
(TTAB 1999)).
Applicant’s Counterclaim to Cancel Opposer’s
Pleaded Registration

Applicant has not provided any evidence to support its
counterclaim for cancellation. In fact, applicant
introduced evidence that opposer has used its ADWATCH mark
continuously in commerce since 1995. (Opp.’s Resp. to
Inter. No. 5). Opposer has also produced evidence of
significant revenues (Mackenzie dep. at 21:8-15) and
advertising expenses (Mackenzie dep. at 23:3-4) associated
with its ADWATCH mark over the past six years. Therefore,
Opposition No. 91168395
9
lacking proof of abandonment of opposer’s ADWATCH mark, the
counterclaim for cancellation is dismissed with prejudice.
Priority
Because opposer’s registration has been made of record,
Section 2(d) priority is not an issue with respect to the
services identified in opposer’s registration. King Candy
Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ
108, 110 (CCPA 1974); B.V.D. Licensing Corp. v. Rodriguez,
83 USPQ2d 1500, 1506 (TTAB 2007). In any event, as
indicated supra, opposer has introduced testimony regarding
its prior use of ADWATCH. (Mackenzie dep. at 21:8-15 and
23:3-4). Applicant further submitted evidence that opposer
has used the ADWATCH mark in connection with the services
indicated on the certificate of registration continuously
since 1995. (Opp.’s Resp. to Inter. No. 5).
Likelihood of Confusion
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on likelihood of confusion.
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973). See also, In re Majestic
Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities or
dissimilarities between the marks and the similarities or
Opposition No. 91168395
10
dissimilarities between the goods or services. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976).
The Similarity or Dissimilarity of the Marks
in their Entireties.

We first consider and compare the appearance, sound,
connotation and commercial impression of the marks at issue.
Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed.
Cir. 2005). In this case, the marks are identical. The
Board therefore finds that the first du Pont factor weighs
heavily in favor of finding a likelihood of consumer
confusion.
The Similarity or Dissimilarity
and Nature of the Services, Channels of Trade, and
Classes of Consumers

Preliminarily, we note that the greater the degree of
similarity between the applicant’s mark and the cited
registered mark, the lesser the degree of similarity between
the applicant’s goods or services and registrant’s goods or
services necessary to support a finding of likelihood of
confusion. In re Opus One, Inc., 60 UPSQ2d 1812, 1815 (TTAB
2001); In re Concordia International Forwarding Corp., 222
USPQ 355, 356 (TTAB 1983).
Furthermore, it is not necessary that the services at
issue be similar or competitive, or even that they move in
the same channels of trade to support a holding of
Opposition No. 91168395
11
likelihood of confusion. It is sufficient instead that the
respective services are related in some manner, and/or that
the conditions and activities surrounding the marketing of
the services are such that they would or could be
encountered by the same persons under circumstances that
could, because of the similarity of the marks, give rise to
the mistaken belief that they originate from the same
producer. See In re International Telephone & Telegraph
Corp., 197 USPQ 910, 911 (TTAB 1978).
Applicant is seeking registration for a service that
measures “advertising effectiveness” for clients. Opposer’s
registration covers a service “providing telephone call
frequency and distribution information in the form of
detailed reports to advertisers”; and “routing telephone
calls made to a subscriber’s number.” Specifically,
opposer’s ADWATCH service tracks incoming calls made by the
public to its ADWATCH subscribers in response to their
targeted advertisements. (MacKenzie dep. at 11:17-25; 12:1-
22) First, opposer provides its subscribers with a virtual
number to use in their advertising materials. (MacKenzie
dep. at 13:20-25; 14:1-5). Opposer then tracks all calls
dialed into that virtual number, and provides the ADWATCH
subscriber with information about the call, including the
time of the call; the calling party’s phone number; the
status and duration of the call; the name of the caller; and
Opposition No. 91168395
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the caller’s originating zip code. (MacKenzie dep., Exs. 3
and 7). Opposer provides this information to its ADWATCH
subscribers in a detailed tracking report. (MacKenzie dep.
at 11:17-25; 12:1-8).
In sum, opposer’s ADWATCH service provides a means for
ADWATCH subscribers to measure the demographics of potential
consumers that call in response to specific ads, thereby
allowing the subscribers to focus their advertisements on
targeted groups. (MacKenzie dep. at 30:1-7). Likewise,
applicant’s “advertising effectiveness” ADWATCH service
provides subscribers with a report on “clicks, conversions,
sales, and ROI for any online ad, and for natural search
keywords.” (MacKenzie dep., Ex. 9).
Although applicant contends that its services are
provided via the Internet while opposer’s services are
provided via telephone thereby somehow differentiating their
respective services for measuring advertising effectiveness,
opposer has produced probative evidence that it relies
heavily on the Internet both for marketing (MacKenzie dep.
at 21:1-22) and for actual services provided under its
ADWATCH mark. (MacKenzie dep. at 15:13-25; 16:1-25; 17:1-22)
Furthermore, nothing in opposer’s registration precludes it
from targeting online or other businesses for opposer’s
ADWATCH service. In the absence of specific limitations in
the registration, we must presume that both parties’
Opposition No. 91168395
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services will travel in all normal and usual channels of
trade and methods of distribution and be sold to all classes
of consumers. Squirtco v. Tomy Corporation, 697 F.2d 1038,
216 USPQ 937 (Fed. Cir. 1983). Thus, evidence that
applicant will target only certain types of businesses, or
that opposer will not, cannot be considered. In re Bercut-
Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986).
Since the parties’ respective services, channels of
trade, and classes of consumers overlap, the second, third
and fourth du Pont factors weigh in favor of finding that
there is a likelihood of consumer confusion.
Balancing the Factors
Considering all of the evidence of record as it
pertains to the du Pont factors, we conclude that a
likelihood of confusion exists because the marks are
identical, they are used on highly similar and even
overlapping services, they are likely to be sold through the
same channels, and they are likely to target the same
consumers. Accordingly, the opposition is sustained.
Decision: The counterclaim for cancellation is
dismissed with prejudice, and the opposition is sustained.
Serial No. 78292037 is refused registration.