Calypso Technology, Inc.v.Calypso Capital Management, LP

Trademark Trial and Appeal Board

Aug 30, 2011

No. 91184576 (T.T.A.B. Aug. 30, 2011)

THIS OPINION IS A
PRECEDENT OF THE TTAB

Mailed:
August 29, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Calypso Technology, Inc.

v.

Calypso Capital Management, LP
_____

Opposition No. 91184576
to applications Serial No. 78797405
filed January 23, 2006
and Serial Nos. 78798953 and 78799018
filed on January 25, 2006

Cancellation No. 92049489 to Registration
Nos. 2852353, 2852354 and 2852355
_____

Jonathan P. Froemel and Hae Park-Suk of Barnes & Thornburg
LLP for Calypso Technology, Inc.

Erica D. Klein and Carole E. Klinger of Kramer Levin
Naftalis & Frankel LLP for Calypso Capital Management LP.
______

Before Seeherman, Quinn and Wolfson, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Calypso Technology, Inc. (hereafter plaintiff) has
filed a combined opposition and cancellation action. It
opposes registration by Calypso Capital Management, LP
Opposition No. 91184576 and Cancellation No. 92049489
(hereafter defendant) of the marks CALYPSO CAPITAL
MANAGEMENT,1 CALYPSO QUALIFIED PARTNERS2 and CALYPSO MASTER
FUND,3 all for “equity investment management and fund
services, with a primary focus on United Kingdom and
European securities,” and has petitioned to cancel
defendant’s registrations for CALYPSO OVERSEAS,4 CALYPSO
PARTNERS5 and CALYPSO ADVISORS,6 for the same services. For
all of these marks, defendant has disclaimed exclusive
rights to the words other than CALYPSO. As grounds for
opposition and cancellation, plaintiff has alleged that
defendant did not use any of the subject marks prior to
December 29, 1998; that plaintiff was founded in 1998 and
since that time has been a provider of computer software to
financial institutions for trading applications; that
plaintiff owns Registration No. 2769418 for CALYPSO; that
the goods for which plaintiff has prior rights are offered
in the same channels of trade to the same customers as the
services identified in defendant’s applications and
registrations; and that defendant’s marks so resemble

1 Application Serial No. 78799018, filed January 25, 2006,
asserting first use and first use in commerce on August 20, 2004.
2 Application Serial No. 78798953, filed January 25, 2006, and
asserting first use and first use in commerce on July 22, 2004.
3 Application Serial No. 78797405, filed January 23, 2006 and
asserting first use and first use in commerce on August 24, 2004.
4 Registration No. 2852355, issued June 15, 2004, from an
application filed January 8, 2001; Section 8 affidavit accepted.
5 Registration No. 2852354, issued June 15, 2004, from an
application filed January 8, 2001; Section 8 affidavit accepted.
6 Registration No. 2852353, issued June 15, 2004, from an
application filed January 8, 2001; Section 8 affidavit accepted.
2
Opposition No. 91184576 and Cancellation No. 92049489
plaintiff’s marks as to be likely, when used in connection
with the services of defendant, to cause confusion or to
cause mistake or to deceive.
In its answer defendant has denied the salient
allegations in the complaint. Defendant has also asserted
the affirmative defenses of laches, acquiescence and/or
estoppel because plaintiff “has for years been aware of use
of [defendant’s] marks comprising CALYPSO, or
registration(s) of or application(s) to register any or all
of such marks, and by its action(s) or omission(s) has
induced [defendant] to rely prejudicially thereon.” ¶ 16.
Defendant has also asserted that plaintiff’s claims with
respect to the opposed applications are barred because
defendant owns prior registrations such that the
registrations now sought by defendant would cause no added
injury to plaintiff (the so-called Morehouse defense). See
Morehouse Mfg. Corp. v. J. Strickland & Co., 407 F.2d 881,
160 USPQ 715 (CCPA 1969).
The Record and Objections
By operation of the rules, the record includes the
pleadings and the files of the opposed applications and the
registrations sought to be cancelled. With its brief,
defendant submitted a five-page list of objections to
plaintiff’s evidentiary record. Subject to defendant’s
objections about certain of the materials found therein, the
3
Opposition No. 91184576 and Cancellation No. 92049489
parties are in agreement that the following evidence is of
record:
The files of the three opposed applications,
Serial Nos. 78799018, 78798953 and 78797405;

The files of the three registrations sought to be
cancelled, Nos. 2852353, 2852354 and 2852355;

Plaintiff’s notice of reliance dated March 19,
2010, and exhibits thereto;

Plaintiff’s supplemental notice of reliance dated
May 13, 2010, and exhibits thereto;

Plaintiff’s rebuttal notice of reliance dated
August 26, 2010;

Defendant’s notice of reliance dated July 12, 2010
and exhibits thereto;

Trial testimony of defendant’s Chief Operating
Officer, Andrew J. Flinn, taken July 14, 2010, and
exhibits thereto.

Plaintiff has also listed in its brief, as part of the
description of the record, the trial testimony, with
exhibits, of plaintiff’s CEO and Chairman, Charles Hamilton
Marston, taken May 27, 2010, as being of record. However,
the Board, in an order mailed January 21, 2011 (after
plaintiff had filed its brief), granted defendant’s motion
to strike this testimony and exhibits. Accordingly, no
consideration has been given to such material.7 In

7 In defendant’s list of objections to plaintiff’s evidentiary
record, it includes specific objections to most of the exhibits
submitted with that testimony deposition. Because the Board has
stricken the testimony and exhibits in its entirety, none of the
exhibits is of record and we will not consider whether any of
those exhibits would have been acceptable if submitted under a
notice of reliance. Nor does the fact that plaintiff listed the
4
Opposition No. 91184576 and Cancellation No. 92049489
addition, the May 27, 2010 Board order stated that any
references made in plaintiff’s brief to the stricken
testimony would be disregarded.
Plaintiff has listed the rebuttal testimony deposition,
with exhibits, of Charles Marston, taken on October 12,
2010, as being of record. Defendant has objected to this
testimony as improper rebuttal, “submitted for the improper
purpose of supporting [plaintiff’s] case in chief as
purported evidence of tarnishment, rather than to rebut any
evidence placed into the record by [defendant].”
Objections, p. 3. We view this objection as going only
toward Mr. Marston’s testimony regarding his view of the
effect on plaintiff if customers were to assume a connection

testimony deposition with exhibits as item 27 in its notice of
reliance result in the exhibits to the deposition being
separately considered for whether they are acceptable for
submission under a notice of reliance. However, to the extent
that plaintiff may have separately submitted the exhibits to the
deposition as items under a notice of reliance, we have
considered their acceptability.
We note that in its reply brief plaintiff has contended that
Mr. Marston’s testimony deposition should be considered of record
because defendant “has relied on Mr. Marston’s testimony, opening
the door for [plaintiff] to rely on this testimony as well.”
Reply brief, p. 9. Plaintiff’s argument is rather convoluted.
It asserts that in defendant’s brief, in making a general
statement about the nature of plaintiff’s goods, it cited to a
page of plaintiff’s brief. Plaintiff contends that because that
page of its brief cited to Mr. Marston’s testimony, defendant
relied on that testimony and plaintiff may do so also. We note
that the particular statement on that page of plaintiff’s brief
cited to some 44 exhibits in plaintiff’s notices of reliance in
addition to citing to Mr. Marston’s testimony. We do not read
defendant’s actions as relying on Mr. Marston’s testimony or
otherwise stipulating that the testimony of Mr. Marston is of
record. On the contrary, defendant’s brief states several times
that Mr. Marston’s testimony and accompanying exhibits have been
stricken.
5
Opposition No. 91184576 and Cancellation No. 92049489
between plaintiff and hedge funds. We note that the only
testimony or evidence regarding negative publicity for hedge
funds that was submitted as part of defendant’s testimony
was elicited by plaintiff during the cross-examination of
defendant’s witness, Andrew Flinn. However, during that
cross-examination defendant’s counsel objected only to the
following question, and did so on the basis that it was
“vague and ambiguous,” not on the basis that it was outside
the scope of direct examination:
Have you, during the most recent economic crisis,
seen negative publicity related to certain hedge
funds in journals and periodicals related to the
financial industry?

Flinn, p. 45. In the circumstances, we have considered the
rebuttal testimony of Mr. Marston. We point out, though,
with respect to defendant’s contention that the rebuttal
testimony was purported evidence of tarnishment, that we do
not regard the use of the term “tarnishment” as referencing
a dilution by tarnishment ground; such a ground was neither
pleaded nor tried. In fact, in its main brief plaintiff
makes clear that “the sole issue is whether there is
likelihood of confusion.” p. 3. Further, the evidence
submitted by plaintiff regarding negative publicity or
reactions to hedge funds has limited probative value; if
defendant’s use of its marks is likely to cause confusion

6
Opposition No. 91184576 and Cancellation No. 92049489
plaintiff will succeed on its claim, whether or not the
confusion will result in a negative association.
Defendant has also objected to certain materials
submitted with plaintiff’s notice of reliance, supplemental
notice of reliance and rebuttal notice of reliance.
Plaintiff has not responded to the specific objections,
stating only that defendant has relied on “many of the same
exhibits it seeks to strike.” Reply brief, p. 17.
Plaintiff asserts that in defendant’s brief defendant has
cited to certain of plaintiff’s exhibits, specifically to
plaintiff’s supplemental notice of reliance exhibits 2 and
55 (allegedly cited at p. 4 of defendant’s brief) and to
plaintiff’s supplemental notice of reliance exhibits 10-24,
28—30 and 33-55 (allegedly cited at pp. 20 and 26 of
defendant’s brief), and also asserts that defendant relies
on the same types of evidence as submitted by plaintiff in
support of its case. Plaintiff’s position is that defendant
“cannot object to the introduction of these types of
evidence, yet also rely on such evidence.” Id. Contrary to
plaintiff’s contention, the pages of defendant’s brief
indicated by plaintiff in which it has supposedly cited to
plaintiff’s exhibits do not include cites to any exhibits
other than exhibit A to exhibit 2 of the notice of reliance,
and to that portion of exhibit 4 consisting of defendant’s
response to Interrogatory 44, and exhibits 7, 25 and 33 of
7
Opposition No. 91184576 and Cancellation No. 92049489
the supplemental notice of reliance. Defendant has not
objected to these exhibits, with the exception that
defendant has objected that plaintiff may not rely on any
evidence for the truth of the matters asserted therein, as
that would be hearsay. This objection goes to the probative
value of the exhibits, rather than their admissibility. As
for the types of evidence made of record by defendant, all
of the evidence submitted by defendant complied with the
trademark rules for making evidence of record by notice of
reliance; as detailed below, much of plaintiff’s evidence is
not of the same type, nor did it comply with the trademark
rules.
A party seeking to make evidence of record by notice of
reliance must follow the rules and case law; if material
cannot be made of record by notice of reliance it will not
be considered even if the adverse party does not
specifically object to it, as long as the adverse party does
not specifically treat it as of record such that we can say
it has been stipulated into the record. Thus, we will now
consider each of the items submitted with plaintiff’s
notices of reliance, along with defendant’s objections
thereto. With its first notice of reliance, plaintiff
submitted the affidavit of Robert D. Finnell, which had been
previously submitted in connection with plaintiff’s
memorandum in support of plaintiff’s motion for summary
8
Opposition No. 91184576 and Cancellation No. 92049489
judgment. As defendant has pointed out, there is no
stipulation between the parties permitting the submission of
testimony by affidavit. See Trademark Rule 2.123(b). Nor
did Mr. Finnell authenticate the affidavit as part of a
trial testimony deposition. Cf. Levi Strauss & Co. v. R.
Josephs Sportswear Inc., 28 USPQ2d 1464, 1465 n.2 (TTAB
1993). Accordingly, the affidavit itself (Item 1 of the
notice of reliance) is excluded. However, Exhibit A to the
affidavit (item 2 of the notice of reliance) consists of
pages downloaded from the website www.calypso.com, and they
contain both the URL and the date that they were printed.
This exhibit is proper material for a notice of reliance,
and we have therefore considered it. See Safer Inc. v. OMS
Investments Inc., 94 USPQ2d 1031 (TTAB 2010). None of the
other attachments to the Finnell affidavit may be made of
record by notice of reliance, and therefore the emails (item
3 listed in the notice of reliance) are not of record. Item
4 of the notice of reliance, defendant’s responses to
plaintiff’s interrogatories and requests for production of
documents, is properly of record. See Trademark Rule
2.120(j)(3)(i).8

8 Documents produced in response to document production requests
cannot be made of record by notice of reliance, see Trademark
Rule 2.120(j)(3)(ii); however, plaintiff did not submit any
documents with the notice of reliance, only defendant’s responses
consisting of objections or a representation that documents would
be produced. Cf. L.C. Licensing Inc. v. Berman, 86 USPQ2d 1883,
n. 5 (TTAB 2008).
9
Opposition No. 91184576 and Cancellation No. 92049489
Item 5 of the notice of reliance consists of the
affidavit of Hae Park-Suk. Again, the parties did not
stipulate to the submission of testimony by affidavit, and
therefore we will not consider the affidavit itself.
However, the exhibits to the affidavit (item 6 of the notice
of reliance) that consist of printouts of applications and
registrations, taken from the TESS database of the U.S.
Patent and Trademark Office, may be made of record by notice
of reliance pursuant to Trademark Rule 2.122(e) because they
are official records. On the other hand, the pages included
in the exhibits consisting of summaries of search results
are not official records, and they have not been considered.
Item 7 of the notice of reliance is a “soft” copy of
plaintiff’s pleaded Registration No. 2769418, issued
September 30, 2003, from an application filed December 29,
1998, for CALYPSO for “computer software for use by
financial institutions for core processing and control.”
Plaintiff has also furnished a page from the USPTO’s
assignment records database showing title in the
registration in plaintiff, as recorded on September 30,
2009. Although this submission would not be sufficient to
make this registration of record, as plaintiff did not
provide any evidence as to the current status of the
registration, with its supplemental notice of reliance
plaintiff submitted a record from the USPTO’s TARR database
10
Opposition No. 91184576 and Cancellation No. 92049489
showing that Section 8 and 15 affidavits have been accepted
and acknowledged. Accordingly, plaintiff has submitted
adequate information as to the registration’s title and
status, and the pleaded registration is of record. See
Research in Motion Ltd. v. NBOR Corp., 92 USPQ2d 1926, 1928
(TTAB 2009).
Plaintiff has submitted with its notice of reliance the
declaration of Erica D. Klein, one of defendant’s attorneys,
which had been previously submitted by defendant in
opposition to plaintiff’s summary judgment motion. However,
plaintiff has not listed the declaration itself as one of
the items in its notice of reliance. Moreover, there is no
stipulation that this declaration could be submitted as
testimony. Thus, it is not of record. Plaintiff does rely
on “the Trademark Office search results attached by
[defendant] as Exhibit B” to the Klein declaration (item 8
of the notice of reliance); they consist of summary listings
of marks retrieved from searches of the USPTO TESS database
showing the words in the mark, the application serial number
and, if registered, the registration number, and the status
of the application/registration. Although taken from the
Office’s database, such search summaries are not considered
to be official records, and therefore they (Exhibits B-1 –
B-5) are not properly made of record by notice of reliance.
Plaintiff has made no mention of Exhibits B-6 and B-7 as
11
Opposition No. 91184576 and Cancellation No. 92049489
items on which it relies, and therefore we do not consider
them to be of record.
Item 9 of the notice of reliance is a second affidavit
of Hae Park-Suk, with exhibits. Again, we cannot consider
affidavit testimony, or the attached exhibits consisting of
lists from the USPTO TESS database, but the exhibits
consisting of third-party trademark registrations are
admissible as official records.
Items 10 through 22 are described by plaintiff as its
own printed publications, but the mere fact that they are
printed materials does not make them printed publications
that can be made of record by notice of reliance pursuant to
Trademark Rule 2.122(e). They appear to be plaintiff’s
brochures, but there is no indication that they are “printed
publications, such as books and periodicals, available to
the general public in libraries or of general circulation
among members of the public or that segment of the public
which is relevant under an issue in a proceeding.” Id.
Certainly if these materials are in general circulation it
was incumbent on plaintiff to show this in response to
defendant’s objection. These materials have not been
considered.
Item 23 of the notice of reliance is what plaintiff
describes as a “press release compilation” called Cognito.
Although plaintiff states in its notice of reliance that the
12
Opposition No. 91184576 and Cancellation No. 92049489
entire compilation was published on its website, there is no
web address on this submission showing that it was
downloaded from the website. However, because this item is
a compilation of individual articles appearing either in
printed publications or online, and shows the publication
name or URL and date of issue of each article, this item is
admissible under Trademark Rule 2.122(e) and Safer Inc. v.
OMS Investments Inc., supra.
Item 24, described by plaintiff as a printed
publication published on its website in 2008-2009 is not
acceptable as a printed publication, nor can it be accepted
pursuant to Safer, since it does not bear the date the
material was either published or printed.
The final item, 25, in plaintiff’s notice of reliance
is plaintiff’s own answers to defendant’s first set of
interrogatories. Because an answer to an interrogatory may
be submitted and made part of the record only by the
inquiring party, this item would normally not be considered.
See Trademark Rule 2.120(j)(5).9 However, defendant

9 This rule also provides that, if fewer than all of the
interrogatories or other discovery responses are offered in
evidence by the inquiring party, the responding party may
introduce other answers to interrogatories, etc., which should in
fairness be considered so as to make not misleading what was
offered by the inquiring party, in which case the notice of
reliance must be supported by a written statement explaining why
the responding party had to rely upon each of the additional
discovery responses. That exception does not apply to the
instant situation. Not only did plaintiff submit its
interrogatory answers prior to defendant’s submitting any of
13
Opposition No. 91184576 and Cancellation No. 92049489
submitted the non-confidential portions of plaintiff’s
responses through its own notice of reliance. To this
extent only, they are of record.
Plaintiff also submitted a supplemental notice of
reliance during its main testimony period. The first 25
items listed in this notice of reliance were previously
submitted with plaintiff’s first notice of reliance, and
already discussed above. As a general comment with respect
to these duplicate submissions, the Board frowns on
submitting duplicate evidence; it merely adds to the bulk of
the record and wastes the time of Board staff in handling or
scanning the papers and the time of the judges in reviewing
the additional papers. We note that plaintiff has provided
certain additional information regarding item 17, stating
that the Corporate Overview was published on plaintiff’s
website in 2008-2009. However, providing the general dates
of the period when webpages might be found on a website does
not meet the requirements of Safer Inc. v. OMS Investments
Inc., 94 USPQ2d at 1039, that the webpages must show the
date of publication or the date that they were accessed and
printed. Thus, this item is not properly of record.
Item 26 of the supplemental notice of reliance states
that plaintiff “relies on the testimony and exhibits from
the testimony deposition of Robert Finnell, which may be

plaintiff’s discovery responses, but it sought to submit all of
14
Opposition No. 91184576 and Cancellation No. 92049489
taken by agreement of the parties outside of [plaintiff’s]
testimony period,” while Item 27 relies on the testimony and
exhibits from the testimony deposition of Charles Marston.
As noted in the Board’s January 21, 2001 order, at footnote
4, notices of reliance are not to be used to state a party’s
reliance on testimony depositions, and a testimony
deposition need not be submitted under a notice of reliance.
That same order granted defendant’s motion to strike the
testimony of Mr. Marston and, therefore, as previously
noted, this testimony and the exhibits thereto are not of
record. As for Mr. Finnell’s deposition, apparently such
testimony deposition was not taken, since it is not listed
as part of the record by either plaintiff or defendant in
their respective briefs, nor has it been submitted. Thus,
Items 26 and 27 are not part of the record.
Items 28, 29 and 30 are press releases taken from an
internet site called Bobsguide. The releases show their
publication date, but the URL at which the webpages can be
found does not appear on them. Safer clearly states that
the document itself must identify its source (URL). Because
these webpages do not do so, they cannot be considered.
Item 31 is an attendee list of a symposium; there is no
information as to the date the webpages were published or
printed. Accordingly, this item is not of record.

its answers.
15
Opposition No. 91184576 and Cancellation No. 92049489
Items 32 and 33 are webpages and include the URLs and
the dates the webpages appeared, while items 34 through 55
are articles taken from the NEXIS database. Items 32 and 33
are admissible under Safer, and the other items are printed
publications admissible under Trademark Rule 2.122(e). Item
56, a notice of opposition filed by defendant in connection
with a third-party application, is an official record. Item
57, webpages taken from plaintiff’s website and showing the
URL and date they were printed, are admissible under Safer.
Finally, item 58 is not admissible under Safer; it is not
clear that they are even webpages, but even if we assume
they are, they do not show the date the webpages were
published or printed. Plaintiff’s statement in the notice
of reliance that they were published in “2010” is not a
substitute; the specific date that the webpages were
published or printed must appear on the webpages themselves.
Defendant has submitted, under notice of reliance,
certain of plaintiff’s answers to defendant’s first set of
interrogatories;10 certain third-party registrations; and
one magazine, admissible as a printed publication.
Plaintiff has submitted, under a rebuttal notice of
reliance, several affidavits, with exhibits, of Hae Park
Suk. Again, the affidavits themselves are not properly of
record, since the parties have not stipulated that testimony
16
Opposition No. 91184576 and Cancellation No. 92049489
can be submitted in this manner.11 As for the exhibits
submitted with that testimony, they consist of pages taken
from the USPTO’s TESS and TARR databases and various
webpages. The summary listings of third-party applications
and registrations retrieved from searches of terms in the
USPTO’s TESS database are not official records and therefore
are not appropriate material for a notice of reliance.
However, the electronic versions of the registrations are
official records. In addition, those webpages downloaded
from websites, showing the URL and date the page was
printed, are of record under Safer. However, we note that
part of Exhibit A to the Suk affidavit regarding the term
QUALIFIED PARTNERS consists primarily of a Google search
results summary. The Safer holding allowing documents
printed from internet websites to be made of record by
notice of reliance does not apply to such search summaries,
which are more in the nature of listings of documents, i.e.,
the website pages that the summary links to, than to the
documents per se.

10 Defendant filed only the non-confidential responses to its
interrogatories.
11 It is noted that plaintiff submitted several different
affidavits of Ms. Suk in one ESTTA filing. When the parties have
agreed, or the Board has granted leave, to file testimony by
affidavit, it is preferable to submit separate filings for each
affidavit, particularly when each affidavit includes many pages
of exhibits, to insure that the separate affidavits will be
indexed in the record of the Board proceeding.

17
Opposition No. 91184576 and Cancellation No. 92049489
In summary, the items listed in plaintiff’s first and
supplemental notices of reliance that are properly of record
are Nos. 2, 4 (to the extent defendant made the discovery
responses of record), 6 (copies of applications and
registrations only), 7, 9 (copies of third-party
registrations only), 23, 25 and 32-57. All of the exhibits
(but not the affidavits) submitted under plaintiff’s
rebuttal notice of reliance are of record with the exception
of the listings retrieved from the TESS searches, and the
Google search results summary submitted with the affidavit
regarding the term “qualified partners.” All of the
exhibits submitted by defendant under notice of reliance are
of record.
We have accorded the various exhibits submitted by the
parties their appropriate weight. In particular, with
respect to articles and other material published on websites
or in publications, we have considered them only for the
fact that they have been published and may have been viewed,
but not for the truth of the statements made in them.
Standing
Plaintiff has shown, through its registration for
CALYPSO, that it has a personal stake in the outcome of this
proceeding. Therefore, plaintiff has established its
standing. See Cunningham v. Laser Golf Corp., 222 F.3d 943,
18
Opposition No. 91184576 and Cancellation No. 92049489
55 USPQ2d 1842 (Fed. Cir. 2000); Lipton Industries, Inc. v.
Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
Priority
In view of plaintiff’s registration for CALYPSO,
priority is not in issue in the opposition proceeding. See
King Candy Company v. Eunice King’s Kitchen, Inc., 496 F.2d
1400, 182 USPQ 108 (CCPA 1974). With respect to the
cancellation proceeding, because both parties have
registrations, it is plaintiff’s burden to demonstrate that
its use of its CALYPSO mark is prior to defendant’s use of
its registered marks. Brewski Beer Co. v. Brewski Brothers,
Inc., 47 USPQ2d 1281, 1284 (TTAB 1998). During its
testimony period, the only evidence regarding priority that
was properly made of record by plaintiff is its registration
for CALYPSO. Although defendant made of record plaintiff’s
answers to defendant’s interrogatories, and Interrogatory 8
requested the dates of first use of each of plaintiff’s
marks in commerce, plaintiff did not answer that part of the
interrogatory, stating only that “it commenced operations in
1998, continued to build and develop [plaintiff’s] Goods
and/or Services, provided services to prospects in
connection with identifying their capital market product
needs and installed versions of [plaintiff’s] Goods and/or
19
Opposition No. 91184576 and Cancellation No. 92049489
Services at least as early as August 1999.”12 This answer
does not provide any information as to when plaintiff began
to use CALYPSO as a trademark on goods or services. Thus,
plaintiff may only rely on the December 29, 1998 filing date
of the application which matured into its pleaded
registration. As for defendant, not having submitted any
evidence of earlier use,13 it may rely on the January 8,
2001 filing dates of the applications which matured into the
registrations sought to be cancelled. Accordingly,
plaintiff has demonstrated its priority in connection with
the cancellation proceeding.
Likelihood of confusion
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set forth
in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973). See also, In re Majestic Distilling
Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003).

12 During its rebuttal testimony period plaintiff did not submit
any evidence of its first use, but even if it had, it would not
have been acceptable rebuttal, since proving priority is part of
a plaintiff’s case in chief.

13 Plaintiff submitted defendant’s interrogatory response that it
“commenced its business in 1999, and has continued to develop and
operate its funds from at least as early as October 14, 1999 to
the present.” Response to Interrogatory No. 11, submitted as
Item 4 of plaintiff’s notice of reliance. This response does not
indicate when defendant began to use any of the trademarks at
issue in this proceeding for its identified services, and
therefore is insufficient to prove 1999 as defendant’s date of
first use of any of its marks.
20
Opposition No. 91184576 and Cancellation No. 92049489
Plaintiff’s mark is CALYPSO; defendant’s marks all
begin with CALYPSO, followed by descriptive terms for its
services, terms which defendant has acknowledged are “widely
and typically used in connection with equity investment
management and fund services,” brief, p. 10, and which it
has disclaimed. It is a well-established principle that, in
articulating reasons for reaching a conclusion on the issue
of likelihood of confusion, there is nothing improper in
stating that, for rational reasons, more or less weight has
been given to a particular feature of a mark, provided the
ultimate conclusion rests on a consideration of the marks in
their entireties. In re National Data Corp., 753 F.2d 1056,
224 USPQ 749, 751 (Fed. Cir. 1985). In this case, the
additional wording in defendant’s marks does not serve to
distinguish its marks from plaintiff’s. Instead, those
words provide information about defendant’s services or are
terms used generally for such services. Thus, consumers
will look to the arbitrary word CALYPSO in defendant’s marks
as having the source-indicating significance.
Although we have found that the parties’ marks are
similar, that does not end the inquiry. Even if marks are
identical, the goods and services must also be sufficiently
related and/or the circumstances surrounding their marketing
be such that purchasers encountering them would mistakenly

21
Opposition No. 91184576 and Cancellation No. 92049489
believe that they emanate from the same source for us to
find that confusion is likely to occur. Standard Knitting
Ltd. v. Toyota Jidosha Kabushiki Kaisha, 77 USPQ2d 1917,
1930 (TTAB 2006). In any likelihood of confusion analysis,
two key considerations are the similarities between the
marks and the similarities between the goods and/or
services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In
re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997). We therefore turn to a consideration of
the parties’ goods and services. In its pleading, plaintiff
alleges broadly that it has been a leading provider of
“computer software to financial institutions for trading
applications.” ¶ 8. However, plaintiff has not properly
made of record any evidence regarding its actual use of the
mark CALYPSO.14 Therefore, plaintiff’s rights in its mark
are limited to its registration, which identifies its goods
as “computer software for use by financial institutions for
core processing and control.” Defendant’s services, as
identified in the opposed applications and the registration
sought to be cancelled, are “equity investment management
and fund services, with a primary focus on United Kingdom

14 Although plaintiff has submitted printouts from its webpages
pursuant to a notice of reliance, the printouts are not evidence
of the statements made in the printouts.
22
Opposition No. 91184576 and Cancellation No. 92049489
and European securities.” Defendant essentially operates a
hedge fund, or actually several funds.
There is clearly some connection between plaintiff’s
goods and defendant’s services, as both are in the financial
field. Plaintiff’s software is specifically identified as
being for use by financial institutions. And defendant’s
“equity investment management and fund services,” and more
specifically, hedge fund services, involve financial
investing. However, in order to find that goods and
services are related, there must be more of a connection
than that a single term, in this case “financial field,” may
be used to generally describe them. See In re W.W. Henry
Co., 82 USPQ2d 1213, 1215 (TTAB 2007) (it is not sufficient
that a particular term may be found which may broadly
describe the goods); General Electric Co. v. Graham
Magnetics Inc., 197 USPQ 690, 694 (TTAB 1977) (it is,
however, not enough to find one term that may generically
describe the goods).
Plaintiff has attempted to show a connection between
its goods and defendant’s services by submitting third-party
registrations which include goods and services covering
financial software and financial services. Third-party
registrations which individually cover a number of different
items and which are based on use in commerce serve to
suggest that the listed goods and/or services are of a type
23
Opposition No. 91184576 and Cancellation No. 92049489
which may emanate from a single source. See In re Albert
Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993). However,
none of the registrations submitted by plaintiff is based on
use in commerce; rather, they are all based on international
registrations, and therefore there is no evidence that any
of the marks have been used in the United States for goods
and services that are the same as those of the parties
herein.15
There is simply no evidence of record that shows that
“computer software for use by financial institutions for
core processing and control” and “equity investment
management and fund services” are ever offered by a single
company. Again, while both plaintiff’s software and
defendant’s investment management and fund services are both
concerned with activities in the financial world, plaintiff
has failed to show the necessary connection that would cause
the consumers of these goods and services to believe that
they emanate from a single source if they were offered under
similar marks.
There is evidence that the same institutions that would
purchase computer software of the type sold by plaintiff
would also avail themselves of the investment management and

15 No Section 8 affidavits of continuing use have been filed for
any of these registrations; with one exception, these
registrations are less than five years old.
24
Opposition No. 91184576 and Cancellation No. 92049489
fund services offered by defendant.16 However, there is no
evidence that the same people at the financial institutions
make the decision to purchase investor services also choose
to purchase computer software for core processing and
control. See Electronic Design & Sales Inc. v. Electronic
Data Systems Corp., 954 F.2d 713, 21 USPQ2d 1388, 1391 (Fed.
Cir. 1992) (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); Electronic Data Systems Corp. v. EDSA Micro
Corp., 23 USPQ2d 1460, 1465 (TTAB 1992) (the fact that a
large company, which buys a myriad of different products and
services, may purchase opposer's and applicant's services
and goods, does not either make the services and goods
related or demonstrate that confusion is likely to occur
because of the use of similar marks). Plaintiff points out
that defendant’s CFO, Andrew Flinn, attended a meeting with
plaintiff’s representatives at defendant’s offices at which
plaintiff tried to sell defendant its software, and that Mr.
Flinn also is involved with recruiting investment customers.
From this, plaintiff concludes that “the same individuals
within the same types of financial institutions are involved
in both the hedge fund services of [defendant], and in the
decision to procure goods like [plaintiff’s].” Reply brief,

16 This evidence has been marked confidential, so we will not
25
Opposition No. 91184576 and Cancellation No. 92049489
p. 5. However, Mr. Flinn’s involvement as the purveyor of
investment management and fund services does not show that a
customer for such services would also be involved in the
purchase of computer software for core processing and
control for his or her financial institution. (In fact,
there is no evidence that defendant purchases, as opposed to
offering, investment management services at all.)
The du Pont factor of the similarity of the goods and
services favors defendant.
An additional factor favoring defendant is the
sophistication of the purchasers of the respective goods and
services. Because plaintiff’s goods are specifically
identified as “computer software for use by financial
institutions for core processing and control,” its customers
are limited to financial institutions. Therefore, the only
overlap in terms of customers for defendant’s services are
financial institutions as well. We are not dealing here
with an individual with a few dollars to invest. Mr. Flinn
testified that, due to SEC regulations, its institutional
customers must have investment assets of $25 million. It is
not clear whether the SEC requires that all financial
institutions who obtain “equity investment management and
fund services, with a primary focus on United Kingdom and
European securities” have investment assets of $25 million,

give any details about it.
26
Opposition No. 91184576 and Cancellation No. 92049489
but it is obvious that financial institutions using these
services will be investing large sums of money, and will be
extremely careful and sophisticated purchasers. As for
plaintiff’s software, Mr. Flinn stated that the software
proposed by plaintiff for defendant would cost in excess of
$1 million, and that the software that defendant actually
did purchase from a different party was in the $200,000-
$300,000 range. Thus, because of the cost and the purpose
of the software, the financial institutions purchasing
software for core processing and control will be careful and
sophisticated as well.
Such consumers are not likely to assume that such
disparate goods and services as plaintiff’s particular
computer software and defendant’s identified hedge fund
services emanate from the same source merely because they
are offered under the similar marks CALYPSO and CALYPSO with
additional descriptive wording. First, there is no evidence
that the same individuals within a financial institution
would be involved with the purchase of these different goods
and services. Even if they were, plaintiff has not shown
that they would have any reason to think that the goods and
services would come from a common source. There is simply
no evidence that computer services for core processing and
control and equity investment management and fund services
are ever rendered by a single entity. And the sophisticated
27
Opposition No. 91184576 and Cancellation No. 92049489
purchasers involved in these purchasing decisions would be
aware of the practices of the industry, and recognize that
such goods and services do not emanate from a single
source.17
Essentially plaintiff would have us find confusion
simply because of the similarity of the marks. But this is
not a sufficient basis for doing so.
As for the du Pont factor of fame, plaintiff has not
shown that its mark is famous. There is no evidence of
record regarding the extent of sales or advertising.
Although plaintiff has made of record some articles, many
are about the company rather than about the trademark
CALYPSO for the particular computer software. It is the
duty of a party asserting that its mark is famous to clearly
prove it. Leading Jewelers Guild Inc. v. LJOW Holdings LLC,
82 USPQ2d 1901, 1904 (TTAB 2007). We simply cannot
conclude, from a few articles and plaintiff’s promotion of

17 Plaintiff has argued that the parties attend similar types of
conference and events in the financial industry. However, there
is no evidence of record to support this. The evidence shows
that plaintiff has used its mark at the SIBOS Conference trade
event, see plaintiff’s response to Interrogatory 16, made of
record by defendant, while defendant has attended business
networking events at the Annual Goldman Sachs Prime Brokerage
Emerging Managers Hedge Fund Conference and the Annual U.S.
Manager Forum. Defendant’s response to Interrogatory Nos. 30 and
31, made of record by plaintiff. There is also evidence, Item 32
of plaintiff’s supplemental notice of reliance, that defendant’s
General Counsel and Chief Compliance Officer, Shawn Singh, was
listed as a panelist at something called the “3rd Annual Hedge
Fund Operations & Technology,” but there is no information about
the nature of this conference or that plaintiff attended or
participated in it.
28
Opposition No. 91184576 and Cancellation No. 92049489
its mark on its own website, that CALYPSO is a famous mark
for computer software for use by financial institutions for
core processing and control.
We do find that plaintiff’s mark is arbitrary and
strong. There is no evidence of third-party use of CALYPSO
for software used by financial institutions. Defendant has
submitted evidence of third-party registrations for CALYPSO
or marks containing the word CALYPSO, including, in the
software area, three owned by one entity for computer
software for use in connection with medical diagnostic
imaging and the like, and one owned by a different company
for measuring machines and software used in connection with
them. Such registrations are not evidence of use of the
marks in the marketplace, and they do not show that the
public is familiar with them. See Olde Tyme Foods Inc. v.
Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542, 1545 (Fed. Cir.
1992) and AMF Inc. v. American Leisure Products, Inc., 474
F.2d 1403, 177 USPQ 268, 269 (CCPA 1973). We recognize that
third-party registrations may be used in the manner of
dictionary definitions, to show that a term has a
significance in a particular industry. See Tektronix, Inc.
v. Daktronics, Inc., 187 USPQ 588 (TTAB 1975). However, the
goods in these third-party registrations are so different
from plaintiff’s goods that we can ascribe no suggestive
significance to CALYPSO for plaintiff’s identified goods.
29
Opposition No. 91184576 and Cancellation No. 92049489
There is no probative evidence of record showing actual
confusion. Defendant has made of record plaintiff’s
response to its Interrogatory 29, in which defendant
requested that plaintiff describe every instance of
confusion known to it. Plaintiff’s answer was that it
“identifies an email from an investment research company,
Morningstar, Inc., dated July 28, 2008 to [plaintiff’s]
Sales Department Email address, inquiring about
[defendant’s] funds, specifically CALYPSO GLOBAL
OPPORTUNITIES FUND, LTD., CALYPSO MASTER FUND, LTD. and
CALYPSO OVERSEAS, LTD.” In view of the fact that this
response is merely plaintiff’s report/characterization of an
email, the response has no probative value as evidencing
actual confusion.18 As for the companion du Pont factor of
the length of time during and conditions under which there
has been concurrent use without evidence of actual
confusion, there is no evidence as to the extent of either
plaintiff’s or defendant’s use and advertising such that we
can conclude that there has been an opportunity for
confusion to occur if it were likely to occur. These du
Pont factors are neutral.
Because plaintiff has not properly submitted any
evidence of its actual use of its mark, the du Pont factor

18 We are, however, puzzled as to why defendant would choose to
submit this response under its own notice of reliance when it
objected to plaintiff’s submission of the underlying email.
30
Opposition No. 91184576 and Cancellation No. 92049489
of the variety of goods on which plaintiff’s mark is used is
neutral. Further, because of the limited number of
overlapping potential purchasers of the parties’ goods and
services, and their sophistication, the extent of potential
confusion is de minimis.
There is no evidence that plaintiff has excluded others
from the use of its mark, but there is also no evidence that
plaintiff has had to take any such actions. We treat these
factors as neutral.
Neither party has argued that there is any market
interface. Therefore, we treat this factor as neutral.
Finally, plaintiff points to the fact that defendant
filed an opposition against a third party’s application to
register BLUE CALYPSO for “providing electronic
advertisement distribution via computer networks.”
Defendant has provided an explanation for its actions in its
brief, but there is no evidence of record to support it, and
therefore we have not considered it. As for defendant’s
position in that opposition, it is not an admission, but may
be considered only as illuminative of shade and tone in the
total picture. See Interstate Brands Corporation v.
Celestial Seasonings, Inc., 576 F.2d 926, 198 USPQ 151 (CCPA
1978). In the present case, because the goods in the third-
party application are substantially different from
plaintiff’s goods herein, we do not regard that opposition
31
Opposition No. 91184576 and Cancellation No. 92049489
as indicating in any way that defendant believes there is a
likelihood of confusion between use of its mark for its
services and plaintiff’s use of its mark for its goods.
Balancing the factors
Any of the du Pont factors may play a dominant role
from case to case. In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ at 567. In fact, a single factor
may be dispositive. Kellogg Co. v. Pack’em Enterprises
Inc., 951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991). In the
present case, the factors of the dissimilarity of the goods
and services and the sophistication of the customers
strongly outweigh the factors, such as similarity of the
marks and the strength of plaintiff’s mark, that would favor
a finding of likelihood of confusion. Accordingly, we find
that plaintiff has failed to prove that defendant’s use of
its marks for “equity investment management and fund
services, with a primary focus on United Kingdom and
European securities” is likely to cause confusion with
plaintiff’s mark for CALYPSO for “computer software for use
by financial institutions for core processing and control.”
Affirmative defenses
In view of our finding on likelihood of confusion, we
need not consider defendant’s affirmative defenses.
Decision
32
Opposition No. 91184576 and Cancellation No. 92049489
The opposition and the petition to cancel are dismissed
with respect to the three opposed applications and the three
registrations sought to be cancelled.
33