Digi International Inc.v.Universal Design, Inc.

Trademark Trial and Appeal Board

Oct 11, 2000

No. 92027183 (T.T.A.B. Oct. 11, 2000)

Paper No. 13
TEH
10/11/00
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
Digi International Inc.
v.
Universal Design, Inc.
_____
Cancellation No. 27,183
_____
Marsha Stolt of Fish & Richardson P.C. for Digi International
Inc.
John S. Hale of Gipple & Hale for Universal Design, Inc.
_____
Before Hairston, Wendel and Holtzman, Administrative Trademark
Judges.
Opinion by Holtzman, Administrative Trademark Judge:
Digi International, Inc. has filed a petition to cancel a
registration owned by Universal Design, Inc. for the mark
DIGI-FAX for "digital facsimile transmission machines."1
As its ground for cancellation, petitioner asserts
priority and likelihood of confusion under Section 2(d) of the
Trademark Act, contending that respondent's mark when applied
to respondent's goods so resembles petitioner's previously
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Cancellation No. 27,183
2
used mark DIGIFAX for its "computer network connectivity
hardware and software" as to be likely to cause confusion.
Petitioner alleges that respondent did not begin use of its
DIGI-FAX mark until February 19, 1992, long after petitioner's
February 26, 1991 claimed date of first use.
Respondent, in its answer, denied the salient allegations
in the petition to cancel.2
The record includes the pleadings; the file of the
involved registration; evidence made of record by notice of
reliance; and the testimony with exhibits of John Gaylord,
petitioner's Director of Corporate Strategy and Susan Marie
Chapman, petitioner's Financial Analyst. Respondent did not
take testimony or offer any other evidence. Only petitioner
filed a brief. An oral hearing was not requested.
Petitioner claims, and the evidence shows, that its mark
DIGIFAX is used on facsimile systems comprised of menu-driven
software and single or double modem facsimile boards used to
transmit facsimile messages from a desktop PC. The invoices
and packing slips identified by Ms. Chapman demonstrate that
petitioner has continuously used DIGIFAX to identify these

1 Registration No. 1,894,861, issued May 23, 1995, claiming dates of
first use and first use in commerce on February 19, 1992 and May 13,
1992, respectively.
2 Respondent also affirmatively asserted defenses of laches, estoppel
and abandonment of petitioner's mark but did not pursue these
defenses. Accordingly, we deem those defenses to have been waived.
Cancellation No. 27,183
3
products since at least as early as February 26, 1991. In
responses to admission requests, respondent admitted that it
did not use its DIGI-FAX mark on the identified goods prior to
that date. In any event, petitioner has demonstrated use of
its mark prior to the September 2, 1993 filing date of
respondent's underlying application, which, in view of the
absence of other evidence, is the earliest date on which
respondent is entitled to rely.
We turn then to a consideration of 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 the likelihood of confusion
issue. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357,
177 USPQ 563 (CCPA 1973). The factors deemed pertinent in
this proceeding are discussed below.
With respect to the marks, respondent has admitted in its
responses to admission requests that the respective marks are
identical in sound, and virtually identical in appearance. We
agree, and it is also clear that the marks have the same
meaning. Petitioner's mark is the two-syllable word DIGIFAX.
Respondent's mark DIGI-FAX is the same two-syllable word
either joined or separated by a hyphen. Whatever its
function, the hyphen is an insignificant feature of
respondent's mark which does nothing to distinguish its mark
Cancellation No. 27,183
4
from petitioner's mark or to alter the meaning conveyed by
both marks.
Turning our attention to the goods, we note that it is not
necessary that the goods of the parties be similar or even
competitive to support a holding of likelihood of confusion.
It is sufficient if the respective goods are related in some
manner and/or that the conditions surrounding their marketing
are such that they would be encountered by the same persons
under circumstances that could, because of the similarity of
the marks used thereon, give rise to the mistaken belief that
they emanate from or are associated with the same source. See
In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993).
Based on the record, it is clear that respondent's fax
machines and petitioner's hardware (fax modem boards) and
menu-driven software which enables users to send and receive
faxes from a desktop PC (without printing out a hard copy),
are closely related, if not competitive, products. The
essential purpose of these products is identical; both are
used to allow fax receipt and transmission of printed or
graphic matter. In view of the unrestricted nature of
respondent's identification of goods, we must presume that the
respective products travel in the same channels of trade to
the same classes of purchasers. See Canadian Imperial Bank of
Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813
Cancellation No. 27,183
5
(Fed. Cir. 1987) and CBS, Inc. v. Morrow, 708 F.2d 1579, 218
USPQ 198 (Fed. Cir. 1983).
Moreover, the fact that the purchasers of the parties'
goods would include those who are, for the most part,
discriminating and knowledgeable in the field, such as value-
added resellers and systems integrators, would not preclude
the likelihood of confusion. The respective marks and
products in this case are so similar that even knowledgeable
purchasers are likely to believe the goods come from the same
source.
Finally, we note that respondent, in at least two written
communications, has charged petitioner with infringement of
respondent's DIGI-FAX mark. If we had any doubt as to the
likelihood of confusion in this case, which we do not, those
doubts would be resolved by the admissions of likelihood of
confusion contained in those communications. See, for
example, Ultra Electronics, Inc. v. Workman Electronic
Products, Inc., 192 USPQ 497 (TTAB 1976).
Decision: The petition to cancel is granted, and
Registration No. 1,894,861 will be cancelled in due course.
P. T. Hairston
H. R. Wendel
Cancellation No. 27,183
6
T. E. Holtzman
Administrative Trademark
Judges, Trademark Trial
and Appeal Board