Backtrack Reports, Inc.v.Backtrack, Inc.

Trademark Trial and Appeal Board

Jan 31, 2001

No. 92028996 (T.T.A.B. Jan. 31, 2001)

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UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
2900 Crystal Drive
Arlington, Virginia 22202-3513IS NOTTHIS DISPOSITION
CITABLE AS PRECEDENT
OF THE T.T.A.B.Cancellation No. 28,996
Backtrack Reports, Inc.
v.
Backtrack, Inc.,
substituted for
Robert L. Gandee
anak, Quinn and Rogers,
rative Trademark Judges.
oard:
ktrack Reports, Inc. (“petitioner”) seeks to cancel
stration of Backtrack, Inc. (“respondent”) for the
KTRACK for “employment screening and background
ation services.”1 As grounds set forth in its
to cancel, petitioner asserts that before the
7, 1994 filing date2 of application Ser. No.
52, (the underlying application for the involved
tion),3 petitioner has used BACKTRACK in connection
ation No. 1,880,015 issued on February 21, 1995.
ent on registration on the principal register, the
te of an application to register constitutes
ive use of the mark in connection with the services
. See Section 7(c) of the Trademark Act.
plication was based on respondent’s bona fide intention
e mark in commerce in connection with the specified
See Section 1(b) of the Trademark Act. Prior to
on of the mark for opposition, respondent filed an
n of use of the mark BACKTRACK in commerce in connection
oyment screening and background investigation services,
ing dates of first use and first use in interstate
on April 15, 1994.
Cancellation No. 28,996
2
with background investigation services; and that
respondent’s mark, when used on its identical services, so
resembles petitioner’s mark, as to be likely to cause
confusion, mistake or deception.
Respondent, in its answer, denies the salient
allegations of the petition to cancel.
This case now comes before the Board for consideration
of petitioner’s motion for summary judgment on the grounds
of priority and likelihood of confusion under Section 2(d)
of the Trademark Act. The motion is fully briefed.
In support of its motion for summary judgment,
petitioner essentially argues that respondent is relying on
the February 7, 1994 application filing date for purposes of
priority; that petitioner began using the BACKTRACK mark in
connection with the solicitation of background investigation
services in October 1993, and entered into a contract for
providing such services on November 23, 1993; that
petitioner entered into twelve additional contracts to
provide background investigation services between November
23, 1993 and January 7, 1994; that petitioner’s background
investigation services include employment screening; that
petitioner’s use of the mark in connection with providing
background investigation services has been continuous since
at least as early as November 23, 1993; that petitioner has
spent in excess of $50,000 for advertising and promotion of
Cancellation No. 28,996
3
its mark; that petitioner’s president has authored various
articles which included references to petitioner and its
mark; and petitioner’s mark is identical to the mark in the
involved registration and petitioner’s services are
identical to the services set forth in the involved
registration.
Petitioner has submitted the declaration of Randy
Shain, president of petitioner since its inception. The
pertinent paragraphs of the declaration read as follows:
2 If called as a witness, I could testify to the facts
set forth herein from personal knowledge or my review
of our company records kept in the ordinary course of
business.
3 Reports, Inc. . . .has been using the BACKTRACK mark in
connection with background investigation services,
including employment screening, since prior to February
7, 1994, the filing date of the application which
issued as Registration No. 1,880,015.
4 Backtrack Reports, Inc. was incorporated in the State
of New York on October 20, 1993. . . .
5 Our company. . .originally set up offices. . .in
November 1993. . . . We immediately commenced
solicitation of background investigation
services. . . .
6 Due to New York State regulations, a signed contract
between our company and the client is required prior to
commencement of our services. Our earliest contract
with a client which we were able to locate is dated
November 23, 1993.
7 It is the practice of Petitioner to proceed with the
requested background investigation immediately after
receiving the signed contract, with an oral report
furnished in less than one week.
8 Our background investigation generally includes
computerized on-line research as well as news source
searches, court and public records searches and
personal interviews.
9 Background Reports, Inc. continuously employed the
BACKTRACK mark in soliciting business since October
1993 and in connection with actually providing
Cancellation No. 28,996
4
background investigation services since at least as
early as November 23, 1993 to the present date.
In addition, petitioner has submitted a copy of the
involved registration certificate; a copy of its New York
Department of State corporate filing receipt, dated October
20, 1993; copies of contracts on company letterhead with the
BACKTRACK mark appearing thereon, (Exhibit C shows the
earliest date of November 23, 1993); a copy of promotional
literature entitled “THE VALUE OF BACKTRACK” which includes
“information on the different resources utilized in
[petitioner’s] background investigation searches”; a copy of
promotional literature entitled “WHAT BACKTRACK CAN DO FOR
YOU”; a copy of a previous advertising brochure; a copy of a
recent advertisement; and copies of articles authored by
Randy Shain in Mergers & Acquisitions Report and The Secured
Lender.
In response to the motion for summary judgment,
respondent concedes that the marks are similar, but
essentially maintains that there are disputed material facts
relative to petitioner’s alleged priority of use and the
likelihood of confusion between petitioner’s and
respondent’s marks. “Specifically, issues of fact remain
regarding the exact nature of the services offered by
petitioner under the mark BACKTRACK, the channels of trade
through which those services are offered, and whether
petitioner offered services similar to those of respondent
Cancellation No. 28,996
5
prior to respondent’s filing for registration of the mark
BACKTRACK.” (Respondent’s brief at page 1.)
In support of its position, respondent has submitted
the declaration of Robert L. Gandee, the president and
founder of respondent. The pertinent paragraphs of the
declaration read as follows:
9 Based on evidence provided in the documents produced by
Petitioner, it is my belief that the reason no actual
confusion has occurred and the respective parties were
unaware of each other’s existence, is due to the fact
that the services provided by Petitioner are different
than the services provided by Respondent.
10 . . . . Respondent’s customers are typically human
resource personnel or employees of personnel
departments. Services provided by the Petitioner
appear to be directed at investigations made in
connection with mergers and acquisitions or services
provided in connection with due diligence conducted
prior to acquisition. . . .
In addition, respondent has submitted petitioner’s
responses to several of respondent’s interrogatories; a copy
of the involved registration; and a “service sheet” and a
promotional folder representative of promotional literature
used by respondent in promoting its services since April 15,
1994.
Respondent argues that, with respect to priority of
use, “[p]etitioner has not produced an exhibit which
conclusively defines the nature of its services prior to
February 7, 1994.” (Respondent’s brief at page 3.)
In addition, respondent argues that the respective
services are different because “[p]etitioner provides
Cancellation No. 28,996
6
background investigation services on upper management of
corporations which are the target of merger or acquisition.
. . .The background investigation searches performed by
Respondent are routine background checks on candidates for
employment used in screening of those candidates, not for
use in determining whether the candidate’s present employer
is a good target for an acquisition or merger.”
Furthermore, respondent contends, the price of the services
of respondent are $70, as compared to the over $1000 cost of
petitioner’s services. (Respondent’s brief at page 7.)
Respondent also argues that the respective channels of
trade are different because “[p]etitioner appears to target
financial institutions and venture capitalists interested in
completing mergers and takeovers. Respondent targets
personnel departments of companies in the process of
screening employment candidates.” (Respondent’s brief at
page 7.)
Finally, respondent argues that there has been no
actual confusion between the marks.
Respondent concludes that summary judgment is not
appropriate because petitioner has not met its burden of
showing that no genuine issues of fact remain to be
determined.
In reply, petitioner essentially argues that
“Respondent’s arguments are premised upon apparent
Cancellation No. 28,996
7
differences between the nature of Petitioner’s services, its
distribution channels, and pricing of the services vis-à-vis
Respondent’s actual services, distribution channels and
pricing.” (emphasis in original) Secondly, with regard to
priority of use, petitioner notes that the nature of
petitioner’s services and priority of first use are set
forth in the Shain declaration and are documented in the
supporting exhibits attached thereto.
Summary judgment is an appropriate method of disposing
of cases in which there are no genuine issues of material
fact in dispute, thus leaving the case to be resolved as a
matter of law. See Fed. R. Civ. P. 56(c). The party moving
for summary judgment has the initial burden of demonstrating
the absence of any genuine issue of material fact. See
Celotex Corp. v. Catrett, 477 U.S. 317 (1986), and Sweats
Fashions Inc. v. Pannill Knitting Co., 833 F.2d 1560, 4
USPQ2d 1793 (Fed. Cir. 1987). A factual dispute is genuine,
if, on the evidence of record, a reasonable finder of fact
could resolve the matter in favor of the non-moving party.
See Opryland USA Inc. v. Great American Music Show Inc., 970
F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992), and Olde Tyme
Foods Inc. v. Roundy's Inc., 961 F.2d 200, 22 USPQ2d 1542
(Fed. Cir. 1992). The evidence must be viewed in a light
most favorable to the non-movant, and all justifiable
inferences are to be drawn in the non-movant’s favor. See
Cancellation No. 28,996
8
Lloyd's Food Products Inc. v. Eli's Inc., 987 F.2d 766, 25
USPQ2d 2027 (Fed. Cir. 1993), and Opryland USA, supra.
After a careful review of the record in this case, we
find that there are no genuine issues of material fact and
that petitioner is entitled to judgment as a matter of law.
We will first dispense with respondent’s claim
that summary judgment is not appropriate here. In support
of this statement, respondent argues:
Petitioner has not demonstrated, based on
undisputed facts, that it has priority of use and that
a likelihood of confusion between the marks exists.
Additional facts such as the specific nature of
Petitioner’s alleged prior use of the mark,
Petitioner’s services under the mark and the channels
of trade in which Petitioner’s mark is used along with
facts pertinent to the other du Pont4 factors on the
issue of likelihood of [confusion] need to be made of
record. Petitioner must provide these facts either
through the production of additional evidence or
through testimony. Because additional facts are
necessary for Petitioner to complete its case as a
matter of law, summary judgment is not appropriate.
(citation omitted)
It appears that respondent is claiming that petitioner
has not met its burden of proving that there are no genuine
issues of material fact remaining.
As to the question of priority, we note that petitioner
has submitted evidence by declaration that it has been using
the BACKTRACK mark in connection with background
investigation services, including employment screening
services, since prior to the February 7, 1994 filing date of
Cancellation No. 28,996
9
the application which matured into the involved Registration
No. 1,880,015. Petitioner has supported its declaration
with, among other things, copies of contracts showing dates
prior to respondent’s constructive first use date.
Respondent has not submitted any evidence to contradict
petitioner’s declaration that it has been using the
BACKTRACK mark in connection with background investigation
services, including employment screening, i.e., the services
identified in respondent’s registration, since prior to
respondent’s filing date. See Sweats Fashions, supra, at
1795 (“Where a movant has supported its motion with
affidavits or other evidence which unopposed, would
establish its right to judgment, the non-movant. . .must
proffer countering evidence sufficient to create a genuine
factual dispute.”).
Respondent’s argument that “[p]etitioner has not
produced an exhibit which conclusively defines the nature of
its services prior to February 7, 1994” is without merit.
An affidavit or declaration may be submitted in support of a
motion for summary judgment provided that it (1) is made of
personal knowledge; (2) sets forth such facts as would be
admissible in evidence; and (3) shows affirmatively that the
affiant is competent to testify to the matters stated
4 See In re E.I. du Pont de Nemours & Co., 177 USPQ 563 (CCPA
1973).
Cancellation No. 28,996
10
therein. This is so even though affidavits and
declarations are self-serving in nature, and even though
there is no opportunity for cross-examination of the
affiant. See GAF Corp. v. Anatox Analytical Services, Inc.,
192 USPQ 576, 577 (TTAB 1976); see also Clubman’s Club Corp.
v. Martin, 188 USPQ 455, 458 (TTAB 1975) (“It has been
consistently held that the oral testimony of a witness may
be competent in and of itself to establish. . .prior. . .use
of a mark.”) Mr. Shain’s declaration is in compliance and
respondent has not submitted any evidence to contradict Mr.
Shain’s declaration. Petitioner has met its burden of proof
and we find no genuine issue as to petitioner’s priority of
use of the mark BACKTRACK.
As to the question of likelihood of confusion, we find
that there is no genuine issue of material fact for trial.
The services identified by the mark in respondent’s
Registration No. 1,880,015 are “employment screening
services and background investigation services.” Petitioner
has declared that it provides “background investigation
services, including employee screening services,” under a
virtually identical mark. Though respondent contends the
respective channels of trade and the class of purchasers may
be different for respondent and petitioner, the Board must
look to the services as described in the involved
registration. The services set forth in the involved
Cancellation No. 28,996
11
registration contain no limitations as to the scope of the
services or any restrictions as to marketing channels or
classes of customers. See Octocom Systems Inc. v. Houston
Computers Services Inc., 16 USPQ2d 1783 (CAFC 1990).
Finally, respondent’s argument that there has been no
evidence of actual confusion is not persuasive. The
criterion for cancellation under Section 2(d) of the
Trademark Act is likelihood of confusion, not actual
confusion. Whether there has been actual confusion is only
one factor when considering the question of likelihood of
confusion. See On-line Careline Inc. v. America Online Inc.
56 USPQ2d 1471 (Fed. Cir. 2000). Petitioner has met its
burden of proof and we find no genuine issue as to
likelihood of confusion between petitioner’s mark and
respondent’s mark.
We find that there are no genuine issues of material
fact as to priority or likelihood of confusion, and that
petitioner is entitled to judgment as a matter of law. In
view thereof, petitioner's motion for summary judgment is
granted, judgment is entered against respondent, and
Registration No. 1,880,015 will be cancelled in due course.