ICL, Ltd.v.Podango, LLC

Trademark Trial and Appeal Board

Apr 8, 2009

No. 91178334 (T.T.A.B. Apr. 8, 2009)

Mailed:
April 8, 2009
jtw

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

ICL, Ltd.
v.
Podango, LLC
_____

Opposition No. 91178334
to Application Serial No. 78873796
filed on 5/1/2006
_____

George Chakmakis of Chakmakis & Associates for ICL, Ltd.

Bradley D. Smith of Franchisesmith, LLC for Podango, LLC.
______

Before Zervas, Walsh and Cataldo, Administrative Trademark
Judges.

Opinion by Walsh, Administrative Trademark Judge:

ICL, Ltd. (opposer) has opposed the application by
Podango, LLC to register the mark PODANGO in standard
characters on the Principal Register for services identified
as “electronic exchange of data stored in databases
accessible via telecommunication networks; providing
telecommunications connections to a global computer network,
all of the foregoing limited to video and audio podcasting
and blogs and community feedback functions relating to
podcasting” in International Class 38 and “computer
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Opposition No. 91178334
2
services, namely creating indexes of information, sites and
other resources available on computer networks; hosting of
digital content on the Internet, all of the foregoing
limited to websites featuring podcasting and articles,
downloads, links, and discussion blogs related to such
podcasting” in International Class 42.1
Opposer asserts priority and likelihood of confusion
under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), as
the grounds for the opposition.2 Specifically, opposer
asserts priority and likelihood of confusion between
applicant’s PODANGO mark for the services identified above
and opposer’s BADONGO mark. Opposer asserts its prior
rights (1) based on Registration No. 3193826 on the
Principal Register for BADONGO in standard characters for
services identified as “providing electronic transmission
and distribution of data, documents, and messages for
others; providing Internet bandwidth connectivity services
for the files and data of others” in International Class 38,
“electronic storage of data, text, images, video, audio, and

1 Notice of Opposition, filed July 11, 2007, against Application Serial
No. 78873796, filed May 1, 2006, claiming first use of the mark anywhere
on January 15, 2006 and first use of the mark in commerce on February 2,
2006 in both classes.
2 The Notice of Opposition also refers to a false suggestion of a
connection claim under Section 2(a) and a dilution claim under Section
44(c). However, opposer failed to plead these claims sufficiently and
opposer offered no evidence or argument in support of either of these
claims. Accordingly, we deem these claims waived.
Opposition No. 91178334
3
other data, which may be accessed over a global computer
network via a user's personal computer” in International
Class 39, and “providing high capacity file hosting for the
websites of others on the Internet” in International Class
42,3 and (2) based on opposer’s earlier common law use of
BADONGO at least as early as July 26, 2005, with respect to
the services identified above in all three classes.
In its answer, applicant has denied most allegations in
the notice of opposition. However, we note the following
paragraphs in applicant’s answer which include partial
admissions:
7) Defendant admits that the information in the
“Mark Cited by Opposer as Basis for Opposition” is
correct.4

8) Defendant admits that Plaintiff owns the
federally registered trademark, BADONGO.
Defendant denies that Plaintiff uses the BADONGO
mark for the same services described in
defendant’s registration application.

Applicant’s Answer at ¶¶ 7 and 8.

Opposer filed a brief. In fact, opposer filed its
brief, which is two paragraphs in length, only after the
Board issued an order under Trademark Rule 2.128(a)(3), 37
C.F.R. § 2.128(a)(3), requiring opposer to show cause why

3 The application resulting in this registration was filed on March 6,
2006, and the registration issued on January 2, 2007.
4 This language appears to refer to the particulars of opposer’s
Registration No. 3193826 referenced in the electronic cover sheet for
the notice of opposition. The information does not include the status
of the registration.

Opposition No. 91178334
4
the Board should not dismiss the opposition as conceded by
opposer due to opposer’s failure to file a brief within the
time allowed. In an order mailed on January 6, 2009, the
Board discharged the show-cause order and accepted opposer's
brief. In an opposition proceeding, the opposer bears the
burden of proving its claim by a preponderance of the
evidence. See Life Zone Inc. v. Middleman Group Inc., 87
USPQ2d 1953, 1957-1958 (TTAB 2008). Applicant did not file
a brief. For the reasons stated below, we dismiss the
opposition.
By rule the record includes the pleadings and the USPTO
file for the opposed application. Trademark Rule 2.122, 37
C.F.R. § 2.122. Neither opposer nor applicant submitted any
evidence during the trial phase of this proceeding.
Before proceeding further we clarify that opposer’s
attempt to make a copy of its pleaded registration of record
was not successful. Apparently opposer attempted to attach
an electronic copy of its pleaded registration from USPTO
electronic records to its notice of opposition, but opposer
failed to do so in accordance with the governing procedures.
We will address the circumstances attendant to that attempt
here because opposer’s ultimate failure to make a status and
title copy of its pleaded registration of record ultimately
dictates the dismissal of the proceeding. In sum, the rules
which were operative at the time opposer filed this
Opposition No. 91178334
5
proceeding did not permit an opposer to make a pleaded
registration properly of record by filing an electronic copy
with the notice of opposition. However, amendments to the
rules which govern proceedings filed on or after August 31,
2007, do permit an opposer to do so. Even if the current
rules were in effect when applicant filed this proceeding,
applicant’s attempt to make its pleaded registration of
record would still be of no avail because opposer failed to
comply with the USPTO procedures for attaching electronic
records to the notice of opposition.
Applicant filed this proceeding on July 11, 2007. The
rules then in effect at that time specified the requirements
for introducing evidence of a pleaded registration, and
provided, in relevant part, as follows:
(1) A registration of the opposer … pleaded in an
opposition … will be received in evidence and made
part of the record if the opposition … is
accompanied by two copies … of the registration
prepared and issued by the [USPTO] showing both
the current status of and current title to the
registration.

(2) A registration owned by any party to a
proceeding may be made of record … by that party
by appropriate identification and introduction
during the taking of testimony or by filing a
notice of reliance, which shall be accompanied by
a copy … of the registration prepared and issued
by the [USPTO] showing both the current status of
and current title to the registration. The notice
of reliance shall be filed during the testimony
period of the party that files the notice.

Trademark Rule 2.122(d), 37 C.F.R. § 2.122(d). Thus, the
rules governing this proceeding did not permit an opposer to
Opposition No. 91178334
6
file a copy of a registration from USPTO electronic records,
only status and title copies prepared by the USPTO. In this
case opposer did not file such a copy. Also, as we
indicated above, opposer filed no evidence related to its
pleaded registration later in the proceeding under
subsection (2) of the rule to remedy this omission. Nor did
opposer submit any other evidence.
As we noted, the USPTO subsequently amended the
Trademark Rules, including Trademark Rule 2.122(d). See
Miscellaneous Changes to Trademark Trial and Appeal Board
Rules, 72 Fed. Reg. 42,242 (Aug. 1, 2007). The amendment to
Rule 2.122(d) only applies to proceedings commenced on or
after August 31, 2007 and not to this proceeding. Id. at
42,242. The amendment changed subsection 2.122(d)(1) only,
the subsection which is relevant here. That subsection now
provides:
(1) A registration of the opposer or petitioner
pleaded in an opposition or petition to cancel
will be received in evidence and made part of the
record if the opposition or cancellation is
accompanied by an original or photocopy of the
registration prepared and issued by the United
States Patent and Trademark Office showing both
the current status of and current title to the
registration, or by a current printout of
information from the electronic database records
of the USPTO showing the current status and title
of the registration.

Trademark Rule 2.122(d).
Opposition No. 91178334
7
Opposer filed its Notice of Opposition electronically
through the Trademark Trial and Appeal Board’s ESSTA system.
In the electronic cover sheet submitted with its Notice of
Opposition, under “Attachments,” opposer refers to
“78830611#TMSN.jpeg ( 1 page )( bytes ).”5 The
instructions for filing a Notice of Opposition in electronic
form through the ESSTA system state the following under the
heading “Requirements For Electronic Filing”:
Your pleading must be in a file stored on your
computer in PDF (preferred), TIFF or TXT format.
The pleading should be formatted for 8.5" x 11"
paper in black and white text or graphics. TIFF or
PDF filings should be in 300 dpi resolution.
There is a limit of approximately 10 megabytes per
file.

If applicant attempted to submit a copy of its registration
in jpeg format, the format referenced in its filing, it was
not received, either because it was not attached at all or
because the jpeg format is not one of the acceptable
formats. Consequently, even if this proceeding were
governed by the amended rules, and it is not, opposer still
did not provide any acceptable record related to its pleaded
registration with its notice of opposition.
With that clarification of the content of the record,
we will proceed with our analysis of the case. As we noted

5 The number 78830611 is the application serial number corresponding to
opposer’s pleaded Registration No. 3193826. However, because no
document was received, we do not know what document opposer may have
attempted to attach.

Opposition No. 91178334
8
above, opposer bears the burden of proving its claim by a
preponderance of the evidence. Life Zone Inc. v. Middleman
Group Inc., 87 USPQ2d at 1959.
The Board must consider an opposer’s standing as a
threshold issue in every case. In Ritchie v. Simpson, 170
F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999), the Federal
Circuit has enunciated a liberal threshold for determining
standing, i.e., whether one’s belief that one will be
damaged by the registration is reasonable and reflects a
real interest in the case. See also Jewelers Vigilance
Committee Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d
2021, 2023 (Fed. Cir. 1987). In the notice of opposition
opposer has adequately asserted its standing by claiming
ownership of the referenced registration and prior common
law rights in its BADONGO mark. The only issue is whether
opposer has proven its standing. If opposer had introduced
acceptable evidence of its ownership of the pleaded BADONGO
registrations, that would have been adequate to show
standing. As we noted, opposer failed to introduce any
evidence bearing on its alleged standing.
In the alternative, we may look to the admissions in
applicant’s answer for this purpose. We have referenced the
relevant admissions above. Even under the liberal standard
for standing, we construe the language in applicant’s
admissions in paragraphs 7 and 8 as insufficient to show
Opposition No. 91178334
9
that the registration for the BADONGO mark is valid and
subsisting. Thus, the admissions do not extend to the
status of the registration. That is, applicant did not
admit that opposer’s registration is valid and subsisting.
Accordingly, we conclude that opposer has failed to make the
showing necessary to prove its standing. Our conclusion
that opposer failed to prove standing is a sufficient basis,
by itself, to dismiss the proceeding.
Next, for completeness sake, we will proceed to
consider the issue of priority. An opposer must first show
priority to prevail on a claim of likelihood of confusion.
Here too, if opposer had introduced acceptable evidence of
its ownership of, and the status of, the pleaded
registrations, priority would not be an issue. See King
Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182
USPQ 108, 110 (CCPA 1974). We would proceed on the basis
that opposer had priority. However, again as we discussed
above, opposer failed to introduce acceptable evidence of
its pleaded registrations. Accordingly, we must look for
other evidence of opposer’s priority.
We have no testimony or other evidence of opposer’s use
of its mark which opposer may rely on to show its priority.
Therefore, here again, the admissions in applicant’s answer
are the only other available, potential “evidence” to show
priority. The admissions relate specifically to opposer’s
Opposition No. 91178334
10
pleaded registration. However, as we noted above, neither
admission addresses the status of opposer’s pleaded
registration. That is, we have no admission or other
evidence that the pleaded registration is valid and
subsisting. Accordingly, in this instance, the admissions
fail to establish opposer’s priority. Accordingly, because
opposer has failed to establish its priority its likelihood-
of-confusion claim fails. Here again, our conclusion that
opposer failed to show priority to support its likelihood-
of-confusion claim, by itself, is a sufficient basis to
dismiss the opposition.
However, even if we proceeded to consider opposer’s
likelihood-of-confusion claim on the merits, we would
conclude that there is no likelihood of confusion. The
differences between the marks alone dictate that conclusion.
The opinion in In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1977) sets forth the
factors to consider in determining likelihood of confusion.
Here, as is often the case, the crucial factors are the
similarity of the marks and the similarity of the goods and
services in the application and the cited registration.
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
Opposition No. 91178334
11
[and services] and differences in the marks.”). Also, as
the du Pont decision notes, each case must be decided on its
particular facts, and each of the factors may play a
dominant role in a particular case. In re E. I. du Pont de
Nemours & Co., 177 USPQ at 567.
Here, based on the respective identifications of
services, we conclude that the services are related, if not
overlapping. Thus, the critical issue is the similarity or
dissimilarity of the marks. In comparing the marks we must
consider the appearance, sound, connotation and commercial
impression of the marks at issue. Palm Bay Imports Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005).
Applicant’s entire argument regarding the marks states:
“PODANGO is confusingly similar because it sounds and
appears virtually the same as BADONGO. There is strong
likelihood of confusion to consumers based on the
substantial similarity of the marks, their sound, and
appearance. A confusingly similar mark should not be
granted registration.” Opposer’s Brief at 2.
While the marks may be similar in some superficial
respects, for example, both end in NGO and each has seven
letters, we find the differences between the marks to be
more significant. The marks begin differently – BAD versus
POD. Presto Products, Inc. v. Nice-Pak Products Inc., 9
Opposition No. 91178334
12
USPQ2d 1895, 1897 (TTAB 1988) (“…[it is] a matter of some
importance since it is often the first part of a mark which
is most likely to be impressed upon the mind of a purchaser
and remembered.”). More broadly, contrary to opposer’s
arguments, the marks differ significantly in both appearance
and sound. The marks also differ in connotation and
commercial impression. Applicant’s mark begins with POD,
and all of the services identified in the application relate
to podcasting. Therefore, applicant’s PODANGO mark connotes
a connection to podcasting. This likewise affects the
commercial impression of applicant’s mark. We find no such
connotation or commercial impression in opposer’s BADONGO
mark.
Accordingly, based on this sparse record, even if we
had not dismissed the proceeding because opposer failed to
prove either its standing or its priority, on the merits we
would conclude that the marks are not similar, and
furthermore, that there is no likelihood of confusion
between the marks as applied to the identified services.
Decision: We dismiss the opposition.