Delphi Consulting Group, Inc.v.Borland Int’l., Inc.

Trademark Trial and Appeal Board

Sep 12, 2000

No. 91103429 (T.T.A.B. Sep. 12, 2000)

Hearing: Paper No. 47
January 18, 2000
9/12/00
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Delphi Consulting Group, Inc.
v.
Borland International, Inc.
_____
Opposition No. 103,429
to application Serial No. 74/535,376
filed on June 9, 1994
_____
Edward R. Schwartz of Christie, Parker & Hale for Delphi
Consulting Group, Inc.
Martin R. Greenstein of Techmark for Borland International,
Inc. now known as Inprise Corporation
______
Before Hanak, Holtzman and McLeod, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
Borland International, Inc. now known as Inprise
Corporation (applicant) seeks to register DELPHI in typed
drawing form for “computer programs for use in the field of
compilers, assemblers, application development tools and
utilities, database implementation, reporting and
connectivity, user interfaces, visual development tools and
utilities, and instructional manuals sold therewith.” The
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Opposition No. 103,429
2
intent-to-use application was filed on June 9, 1994.
Subsequently, applicant filed an amendment to allege use
with a first use date of October 5, 1994.
Delphi Consulting Group, Inc. (opposer) filed a notice
of opposition alleging that long prior to June 1994, it both
used and registered the identical mark DELPHI in connection
with computer and database related goods and services.
Continuing, opposer alleged that the contemporaneous use of
the identical mark DELPHI by both opposer and applicant is
likely to result in confusion, mistake and deception.
Applicant filed an answer which denied the pertinent
allegations of the notice of opposition. Both opposer and
applicant filed briefs and were present at a hearing held on
January 18, 2000.
At the outset, we note that applicant does not dispute
the fact that priority of use rests with opposer.
(Applicant’s brief page 11). In this regard, opposer has
properly made of record a copy of its Registration No.
1,651,752 for the mark DELPHI depicted in typed drawing form
for “educational services; namely, conducting classes and
seminars in the field of computer hardware and software
implementation.” This registration issued on July 23, 1991.
In view of the forgoing, we turn now to the only issue
in this proceeding, namely, whether there exists a
likelihood of confusion resulting from the contemporaneous
Opposition No. 103,429
3
use of the identical mark DELPHI by opposer for its services
and by applicant for its goods. In any likelihood of
confusion analysis, two key, although by no means exclusive,
considerations are to be similarities of the marks and the
similarities of the goods and services. Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24,
29 (CCPA 1976) (“The fundamental inquiry mandated by section
2(d) goes to the cumulative effect of differences in the
essential characteristics of the goods [and services] and
differences in the marks.”)
Considering first the marks, they are absolutely
identical. Applicant seeks to register DELPHI in typed
drawing form, and opposer owns a registration of DELPHI in
typed drawing form. In view of the foregoing, we are
utterly mystified by applicant’s statements that “the marks
in issue are not identical as stated by opposer”
(applicant’s brief page 28) and that “the evidence
establishes that the marks of the parties are not identical”
(applicant’s brief page 40). While it is true that opposer
pled and established rights in other marks such as DELPHI
REPORT and DELPHI INSTITUTE, the very first mark mentioned
in opposer’s notice of opposition and in opposer’s brief is
opposer’s DELPHI mark per se. Thus, it is utterly
disingenuous for applicant’s counsel to claim that the marks
in question are not identical. In point of fact, they are
Opposition No. 103,429
4
absolutely identical. At page 11 of its brief, applicant
acknowledges that opposer is the owner of four trademark
registrations containing the term DELPHI. In the final
sentence on page 11 of its brief, applicant enumerates by
name the marks of three of opposer’s registrations, namely,
DELPHI REPORT, DELPHI INSITUTE, and DELPHI THE INFORMATION
ADVANTAGE. In the very next sentence which appears at the
top of page 12 of applicant’s brief, applicant makes an
oblique reference to “opposer’s other [first] registration”
without noting the fact this registration is for the mark
DELPHI per se in typed drawing form.
Two comments are in order. First, this Board is not
pleased with applicant’s attempt to hide the fact that the
mark which applicant seeks to register is absolutely
identical to the mark which opposer previously used and
registered. Second, because opposer has prior rights in the
identical mark DELPHI which applicant seeks to register, we
will in our likelihood of confusion analysis focus simply
upon opposer’s rights in its DELPHI mark. We need not
consider whether there exists a likelihood of confusion
resulting from the use of DELPHI by applicant and the use by
opposer of its other registered marks, namely, DELPHI
REPORT, DELPHI INSTITUTE and DELPHI THE INFORMATION
ADVANTAGE.
Opposition No. 103,429
5
In summary, we find that the first Dupont “factor
weighs heavily against applicant, as the two word marks are
identical.” In re Martin’s Famous Pastery Shoppe Inc., 748
F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984). Moreover,
as was the case with the identical mark in the Martin’s
case, the identical mark here (DELPHI) is not suggestive of
and certainly not descriptive of either opposer’s services
or applicant’s goods. Indeed, while applicant argues that
numerous third parties have used various DELPHI marks,
applicant has never contended that as applied to either its
goods or opposer’s services the mark DELPHI is suggestive or
descriptive.
Turning to a consideration of opposer’s services and
applicant’s goods as described in the registration and
application, we note that because the marks are absolutely
identical, their contemporaneous use can lead to the
assumption that there is a common source “even when [the]
goods or services are not competitive or intrinsically
related.” In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d
1687, 1689 (Fed. Cir. 1993). However, in point of fact, we
find that opposer’s services as described in its
Registration No. 1,651,752 and applicant’s goods as
described in its application are clearly related. Canadian
Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d
1813, 1815 (Fed. Cir. 1987).
Opposition No. 103,429
6
Considering first the services of opposer’s
Registration No. 1,651,752 they are, as previously noted,
“educational services; namely, conducting classes and
seminars in the field of computer hardware and software
implementation.” This is a very broad description. There
is, for example, absolutely no restriction on the type of
computer hardware and software covered by opposer’s
registration. Indeed, even applicant concedes that
opposer’s registration is not limited to “a specific field.”
(Applicant’s brief page 12).
Considering next the goods as described in applicant’s
application, they are, as previously noted, “computer
programs for use in the field of compilers, assemblers,
application development tools and utilities, database
implementation, reporting and connectivity, user interfaces,
visual development tools and utilities, and instructional
manuals sold therewith.” Applicant itself has described its
goods as “general purpose application development
programming software tools.” (Applicant’s brief page 5).
Elaborating upon this same point, applicant’s vice president
of marketing testified that applicant’s DELPHI computer
programs are “pretty general-purpose.” (Urlocker deposition
page 11). Indeed, on cross-examination Mr. Urlocker went
even further in emphasizing the broad scope of applicant’s
DELPHI product, as demonstrated by the following series of
Opposition No. 103,429
7
questions and answers appearing at pages 71-72 of his
deposition:
Q I believe you testified that the
Delphi product which is sold by Inprise
[applicant] has a wide range of
applications; is that correct?
A Yeah.
Q What is the limitation on the range
of applications?
A There’s no limitation on the range
of applications.
Finally, Mr. Urlocker testified that applicant provided
to customers who purchased its DELPHI computer programs
educational services to educate the customers about said
programs. (Urlocker deposition pages 44-45, 69).
Given the very broad scope of opposer’s educational
services in the field of computer hardware and software and
the very broad scope of applicant’s computer programs
(software), we find that consumers who are aware of both
opposer’s educational services and applicant’s computer
programs would assume that both came from a common source,
or at the very least, that there were some relationship
between the company which provided the educational services
and the company which provided the computer programs.
Opposition No. 103,429
8
Indeed, the record demonstrates that opposer and applicant
marketed their respective DELPHI services and products at
the very same trade shows and in the very same publications,
and that furthermore, they marketed their respective DELPHI
services and products to the very same companies.
Under such circumstances, it comes as no surprise that
the record in this case contains numerous instances of
actual confusion. While we would find that there exists a
likelihood of confusion even in the absence of proof of
actual confusion, it must be remembered that “any evidence
of actual confusion is strong proof of the fact of a
likelihood of confusion.” 3 J. McCarthy, McCarthy on
Trademarks and Unfair Competition Section 23:12 at page 23-
32 (4th ed. 1999). Opposer’s chief financial officer
(Nicholas Koulopoulos) testified that he was the custodian
of records for opposer, and that he maintained in the
regular course of business a log of misdirected
correspondence sent to opposer which was intended for
applicant. Opposer introduced this misdirected
correspondence not to prove the truth of the statements
contained in said correspondence, but rather to simply show
that the correspondence was sent to opposer and not to
applicant. Thus, we find that this misdirected
correspondence does not constitute hearsay. Moreover, even
Opposition No. 103,429
9
it did, it would fall within an exception to the hearsay
rule. See Federal Rule of Evidence 803(6).
While not all of the correspondence compiled by Mr. N.
Koulopoulos identifies applicant as the intended recipient
of said correspondence, at least ten pieces of said
correspondence clearly indicate that they were intended for
applicant, but were received by opposer. In addition, Mr.
N. Koulopoulos identified a completed registration form for
one of opposer’s educational conferences which was received
by opposer. This registration form stated that current
clients of opposer could take an additional $100 off the
normal registration fee for opposer’s conference. One
registrant identified himself as Mike Hukill, a business
analyst with Intermountain Health Care of Salt Lake City,
Utah. Mr. Hukill claimed the $100 discount explaining that
he was a DELPHI customer. However, Mr. Hukill went on to
list his account with applicant Borland and went on to note
that his representative was Terry Smith, an employee of
applicant Borland. Thus, this registration form received by
opposer evidences that Mr. Hukill was of the view that
applicant Borland was the sponsor of this DELPHI conference,
which, of course, was in actuality one of opposer’s
conferences.
Before leaving the issue of actual of confusion, two
points should be clarified. Opposer’s president testified
Opposition No. 103,429
10
that when he attended trade shows, he was repeatedly
approached by individuals who stated that they thought that
opposer and applicant were affiliated. However, because
opposer’s president was unable to give any specifics about
these purported instances of actual confusion, we have
accorded his testimony on this point no weight.
Second, during the course of this proceeding applicant
took the depositions of various third-party companies whose
corporate names contained the word DELPHI. One such third-
party deposition was that of Robin Potter, a former
president of Delphi Partners, Inc. Counsel for applicant
asked Ms. Potter if she was familiar with opposer Delphi
Consulting Group, Inc. She said that she was and noted
correctly that opposer was located in Boston. (Potter
deposition page 24). Counsel for applicant then asked the
following question: ”Are you aware of any misdirected
letters, invoices, checks, communications or otherwise with
any other company with Delphi in the name?” Ms. Potter
responded as follows at page 24 of her deposition: ”There is
a company in Boston –- there is a company in Boston with
Delphi in its name that we [sic] got some checks from one of
our clients and I don’t recall which one ended up sending
our checks to that company. So we had to unwind that and
get it paid properly.” Counsel for applicant elected not to
ask any further question regarding the issue of actual
Opposition No. 103,429
11
confusion. While Ms. Potter’s testimony does not
conclusively prove that the Delphi company in Boston was
indeed opposer, it strongly suggests that this was the case.
In any event, at an absolute minimum, Ms. Potter’s testimony
-– noticed and taken by counsel for applicant –- is evidence
of actual confusion involving two companies whose names
share the word Delphi.
Two final comments are in order. First, applicant has
argued that there are numerous third-party uses of DELPHI
and therefore “DELPHI is a weak mark.” (Opposer’s brief page
18). Applicant then goes on to state that these numerous
users of DELPHI “peacefully co-exist.” (Opposer’s brief page
18). Applicant’s argument regarding third-party uses is
deficient for at least four reasons. First, the vast
majority of third-party uses of DELPHI are for goods and
services totally unrelated to those involved in this
proceeding. Second, for those uses of DELPHI which involve
goods and services at least somewhat related to those
involved in this proceeding, it should be noted that the
uses involve not DELHPHI per se, but rather they involve the
use of DELPHI as part of a name or mark containing a number
of words, such as the just aforementioned Delphi Partners,
Inc. Third, opposer has offered no proof whatsoever as to
the extent of use by third parties of marks and names
containing the word DELPHI. Indeed, it appears that the
Opposition No. 103,429
12
extent of this use is quite limited. For example, opposer’s
own witness Robin Potter –- the former president of Delphi
Partners, Inc. –- was unable to identify any other
companies using DELPHI other applicant and the “company in
Boston,” presumably opposer. (Potter deposition page 24).
Thus, the former president of a company engaged in
developing software was unable to name any other company
using DELPHI as part of its name or mark other than her
former employer, applicant and presumably opposer. Fourth,
applicant simply is incorrect in its assertion that
companies using DELPHI “peacefully co-exist.” Indeed,
applicant even concedes that “actual confusion ensued”
between opposer and a company in New York when both used the
same trade name containing DELPHI. (Applicant’s brief page
33).
Second, opposer has candidly conceded that “the
parties’ respective goods and services are expensive.”
(Opposer’s brief page 13). However, while consumers may
exercise greater care when dealing with expensive goods and
services, this extra care is of little assistance in
enabling consumers to differentiate various goods and
services when all of them bear the absolutely identical mark
DELPHI.
Finally, to the extent that there is any question
regarding the issue of likelihood of confusion, we are
Opposition No. 103,429
13
obligated to resolve doubts in favor of opposer as both the
prior user and prior registrant. Martin’s Famous Pastry,
223 USPQ at 1290.
Decision: The opposition is sustained.
E. W. Hanak
T. E. Holtzman
L. K. McLeod
Administrative
Trademark Judges,
Trademark Trial and
Appeal Board
Opposition No. 103,429
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