Dynamark Security Centers, Inc.v.Intruder Alert Systems of San Antonio, Inc.

Trademark Trial and Appeal Board

Nov 6, 1997

No. 94001012 (T.T.A.B. Nov. 6, 1997)

Paper No. 13
GDH/gdh
THIS DISPOSITION IS NOT CITABLE AS PRECEDENT OF
THE TTAB NOV. 6, 97
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
Dynamark Security Centers, Inc.
v.
Intruder Alert Systems of San Antonio, Inc.1
_____
Concurrent Use No. 1,012
_____
Barth X. deRosa of Watson Cole Stevens Davis PLLC for Dynamark
Security Centers, Inc.
Michael H. Samulin for Intruder Alert Systems of San Antonio,
Inc.
_____
Before Simms, Hohein and Walters, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Dynamark Security Centers, Inc. has filed an
application for concurrent use registration of the mark "S.A.F.E.
SECURITY AFFORDABLE FOR EVERYONE" for "leasing of security

1 Inasmuch as it is noted that Michael H. Samulin, who was named by
Dynamark Security Centers, Inc. as the user in its application, filed
an answer on behalf of Intruder Alert Systems of San Antonio, Inc. in
which he indicated that he is the "President" thereof, Intruder Alert
Systems of San Antonio, Inc. is hereby substituted for Michael H.
Samulin as the user and party defendant in this proceeding. Cf. Fed.
R. Civ. P. 25(c).
Concurrent Use No. 1,012
2
systems for residential and commercial use".2 The application,
which seeks registration for the territory consisting of all of
the United States except for the City of San Antonio, Texas, sets
forth Intruder Alert Systems of San Antonio, Inc., in light of
the substitution thereof for Michael H. Samulin, as the user of
the mark "SAFE/SECURITY ALARMS FOR EVERYONE" for "burglar alarms"
in the area covering the City of San Antonio, Texas.
User, in its answer, "request[s] that concurrent use be
completely and entirely denied," asserting that it is in "the
same business that Dynamark Security Centers is involved in";
that it currently uses the mark "S.A.F.E SECURITY ALARMS FOR
EVERYONE" in connection with the sale and lease of residential
and commercial security systems "in many areas of Texas, as well
as Colorado"; that it regards its territory as the States of
"Texas, Colorado, [and] Oklahoma, with future acquisition /
expansion plans"; and that granting the concurrent use
registration sought by applicant "would eliminate the possibility
of growth ... to any other markets."
The record consists of the answer; the application
file; and, as applicant's case-in-chief, the testimony, with
exhibits, of Maxie R. Putnam, who is the chief operating officer
and executive vice president of applicant. User did not take

2 Ser. No. 74/389,547, filed on May 12, 1993, which alleges dates of
first use of May 7, 1993.
Concurrent Use No. 1,012
3
testimony or otherwise present any evidence.3 Only applicant
submitted a brief. An oral hearing was not requested.
In its brief, applicant has modified its request for a
concurrent use registration by conceding that user, in addition
to the previously acknowledged area of the City of San Antonio,
Texas, is also entitled to use its mark in the territory
consisting of the four surrounding counties of Bexar, Comal,
Guadalupe and Medina. The sole issue to be determined in this
proceeding, therefore, is whether applicant has satisfied its
burden of showing that there will be no likelihood of confusion

3 Notwithstanding user's inaction, applicant filed a notice of
reliance during the rebuttal testimony period on its requests for
admissions, its first set of interrogatories and its first request
for production of documents and things. Applicant asserts in its
notice that it "introduces into evidence and relies upon" such
documents "[i]n rebuttal of defendant's ... Answer". In particular,
applicant states in its notice that:
These discovery requests were served on defendant ...
on November 15, 1995 by first class mail, postage prepaid.
Plaintiff never received defendant's responses to these
discovery requests, nor a request for an extension of
time. Under Rule 36 of the Federal Rules of Civil
Procedure, each Request for Admission is deemed admitted,
and plaintiff moves that by failing to respond to
Plaintiff's First Set of Interrogatories ... and First
Request for Production of Documents and Things, that
defendant be prohibited from introducing evidence on any
matter covered by said discovery.
Aside from the fact that such request, which constitutes a
motion for sanctions under Trademark Rule 2.120(g)(2), is considered
to be untimely, we note that since user, in any event, did not
introduce any evidence during its testimony period, there is nothing
for applicant to rebut. The request for sanctions is accordingly
denied as moot. Furthermore, we have given no consideration to
user's admissions since such evidence properly constitutes part of
applicant's case-in-chief and therefore may not be submitted as
"rebuttal". We hasten to point out, however, that irrespective of
whether user's admissions form part of the record, we would reach the
same result in this proceeding.
Concurrent Use No. 1,012
4
from contemporaneous use by the parties of their respective marks
for their respective services and goods in their respective
geographical areas.
According to the record, applicant's business is to
"sell, install, service and monitor security systems for homes
[and] ... businesses and other related products," including
intercoms and cable computer wiring. (Dep. at 9.) Applicant,
since 1984, has been a franchisor of such services, which are
offered by its franchisees under the licensed mark "S.A.F.E.
SECURITY AFFORDABLE FOR EVERYONE". Basically, applicant's
franchisees, who are independent business owners, lease security
systems, including burglar alarm products, for residential and
commercial use. The actual monitoring of the security systems
leased through applicant's franchisees is done by Dynawatch, a
company which is owned by applicant and which also provides
monitoring services for alarm dealers who are not applicant's
franchisees.
Applicant provides two basic types of franchises. Its
"standard" franchise, according to Mr. Putnam, is for "someone
who has no prior experience in the electronic alarm industry,"
while its "conversion" franchise is for "an alarm dealer [who] is
already in the business but wants some of the things that
Dynamark offers, particularly our marketing." (Id. at 10-11.)
Applicant supports its franchisees by offering them training
programs, marketing materials and business advice. Among other
Concurrent Use No. 1,012
5
things, applicant provides training manuals, presentation
booklets, selling workbooks, custom brochures, direct mail
pieces, camera ready artwork for newspaper ads, magazine ads,
real estate brochures, television and radio commercials, door
fliers, and home show displays. Applicant's franchisees pay one
percent of their gross monthly volume to applicant's national
advertising fund,4 which it uses "to promote the name, the image
and the trademarks" of applicant through such activities as
sponsoring the U.S. Bobsled Team. Applicant also uses such fund
to run national television commercials on CNN and Headline News,
and has offered its security systems as prizes on the following
television game shows: Price Is Right, Wheel of Fortune,
Jeopardy and Concentration. In addition, applicant has run
nationwide ads in USA Today, Better Homes & Gardens, Southern
Living and other publications.
Apart from its national advertising fund, applicant
does its own advertising to sell its franchises, including
running twice yearly ads in such magazines as Success and
Entrepreneur, in order to attract "standard" franchisees, and
advertising in trade journals directed to security alarm dealers,
which is geared to finding "conversion" franchisees. Applicant
also attends the International Security Franchise Association
trade show, which is usually held in New York City, and the

4 Such contributions range from a minimum of $100 to a maximum of $500
per month.
Concurrent Use No. 1,012
6
International Security Conference trade show, which meets in Las
Vegas.
As of the May 15, 1996 date of Mr. Putnam's deposition,
applicant had 135 franchises in 44 states, including five in
Texas, which serve the metropolitan areas of El Paso, Corpus
Christi, Houston, Luflin and Dallas;5 three in Colorado, which
cover the communities of Broomfield, Aurora and Brighton;6 and
one in Oklahoma, which spans the entire state.7 Applicant
currently does not have a franchise in the States of Maine, North
Dakota, Alaska, Hawaii, Nevada and Minnesota.8 When applicant
awards a franchise, it segregates the geographical area awarded
by giving each new franchise "an exclusive territory of
approximately 100 to 150,000 people." (Id. at 19.) Franchise
areas are sometimes divided by county and, in large cities, are
broken down by zip codes where there are more than one franchise
area. Territory is also allotted, according to Mr. Putnam, by
"the volume that a franchisee produces. The more volume they

5 As shown by the state map introduced as applicant's Exhibit 22, its
five Texas franchises are located so that they roughly form an arc or
semicircle around, but clearly separated from, the San Antonio
metropolitan area.
6 Applicant's Broomfield franchise serves the west side of Denver and
extends northwest up to Fort Collins and Greeley; its Aurora
franchise covers the east side of Denver over to and including
Aurora; and its Brighton franchise, while touching on a portion of
Denver, basically serves the Brighton area. Collectively,
applicant's three Colorado franchises are using its mark "[p]retty
much" throughout such state. (Dep. at 43.)
7 Applicant additionally has a franchise in Bermuda and a company
owned location in Pittsburgh, Pennsylvania.
8 At one time, however, applicant did have a franchise in Minnesota.
Concurrent Use No. 1,012
7
produce, the more territory we award them to give them protection
for building up the name and the mark." (Id. at 22.) Thus, if a
franchisee does what applicant deems to be a reasonable job of
increasing its business, applicant expands the franchisee's
territory.
In the case of the State of Texas, each of applicant's
franchisees services their respective metropolitan areas and some
territory beyond such areas. Specifically, as testified to by
applicant's witness, "they're not limited to ... just their
marketing territory. They can market outside of their
[franchise] territory as long as it doesn't interfere with
another franchisee's territory." (Id. at 20.) Such
interference, Mr. Putnam further noted, is avoided as a practical
matter since franchisees "understand pretty much what their
primary market territory is, and the franchise agreement also
spells out by contract that they are not to direct market in
another franchisee's area." (Id. at 20-21.)
Moreover, while conceding that "it's possible" that,
for instance, applicant's Corpus Christi franchise could have
customers in San Antonio, where user does business, Mr. Putnam
indicated that, to his knowledge, such franchise does not. (Id.
at 41.) Furthermore, Mr. Putnam noted that San Antonio would
"[p]robably not" be an area of direct marketing by any of
applicant's franchisees in Texas because "[i]t's quite a ways
away. It's about 150 miles from the nearest franchisee, and

Concurrent Use No. 1,012
8
probably the only reason that they would go there would be
referral from another customer, or something of that nature."
(Id.) Consequently, in terms of direct marketing by applicant or
its franchisees, "[t]here will not be any newspaper ads or door
fliers or any of that sort of thing done in San Antonio at this
point," nor would any television advertising be directed to the
San Antonio market. (Id.)
Thus, while applicant's Corpus Christi franchisee, in
particular, knows through applicant of user's mark and activities
in San Antonio, applicant has not given instructions to any of
its franchisees in Texas not to direct market in such area,
although instructions to that effect are something which,
according to Mr. Putnam, applicant would be willing to consider
doing in order to avoid a likelihood of confusion with user.
Other steps which applicant would be "willing to take to assure
that the S.A.F.E. mark is not used in the San Antonio
Metropolitan area" (id. at 43) by its franchisees include the
following:
If we were ever to award a franchise in San
Antonio, we would include in our agreement
and contract with that franchisee that they
could not use the S.A.F.E. materials in San
Antonio. They could market under Dynamark
Security Centers the same type of system and
just not call it S.A.F.E.
(Id. at 43-44.)
It is our view that applicant has sufficiently
established that concurrent use by the parties of their
Concurrent Use No. 1,012
9
respective marks for their respective services and goods in their
respective geographical areas is not likely to cause confusion,
mistake or deception. See, e.g., Weiner King, Inc. v. Wiener
King Corp., 615 F.2d 512, 204 USPQ 820, 830-31 (CCPA 1980); In re
Beatrice Foods Co., 429 F.2d 466, 166 USPQ 431, 436-37 (CCPA
1970); and Meijer, Inc. v. Purple Cow Pancake House, 226 USPQ
280, 282 (TTAB 1985). In particular, we have taken into account
that it would be against applicant's business interest to cause
confusion of the public by franchising its services under its
mark in the San Antonio, Texas metropolitan area in which user
operates. See Amalgamated Bank of New York v. Amalgamated Trust
& Savings Bank, 842 F.2d 1270, 6 USPQ2d 1305, 1307 (Fed. Cir.
1988). Applicant, in this regard, has shown among other things
that, as a practical matter, the San Antonio metropolitan area is
unlikely be an area of direct marketing, whether through
newspaper ads, door fliers, television advertising or the like,
by any of its franchisees inasmuch as such area is approximately
150 miles from its nearest franchisee. Moreover, applicant has
indicated that, not only is it willing to instruct its
franchisees in Texas not to direct market in the San Antonio
metropolitan area, but in any event it is also willing to avoid
use of its "S.A.F.E. SECURITY AFFORDABLE TO EVERYONE" mark in
such area if it should ever award a franchise there. Under such
circumstances, and given the absence of any evidence that user
Concurrent Use No. 1,012
10
intends to expand its burglar alarm business beyond its present
confines, confusion is simply not likely to occur.
Decision: Applicant, Dynamark Security Centers, Inc.,
is entitled to a concurrent use registration of the mark
"S.A.F.E. SECURITY AFFORDABLE FOR EVERYONE" for "leasing of
security systems for residential and commercial use" for the area
consisting of all of the United States with the exception of the
City of San Antonio, Texas and its four surrounding counties of
Bexar, Comal, Guadalupe and Medina.
R. L. Simms
G. D. Hohein
C. E. Walters
Administrative Trademark Judges,
Trademark Trial and Appeal Board