L-Com, Inc. v.Elecom Co., Ltd.

Trademark Trial and Appeal Board

Aug 3, 2011

No. 91192293 (T.T.A.B. Aug. 3, 2011)

THIS OPINION IS NOT A PRECEDENT
OF THE TTAB

BUTLER

Mailed: August 3, 2011

Opposition No. 91192293

L-COM, INC.

v.

ELECOM CO., LTD.

Before Bucher, Zervas and Bergsman, Administrative Trademark
Judges.

By the Board:
Applicant seeks to register the following mark

for:
data processing equipment, namely, computer mouse;
computer keyboards; remote control apparatus for
radios, televisions, stereos and pcs; game
controllers for computer games; webcams;
loudspeakers; headphones; microphones; computer
monitors; computer memories; memory cards in the
nature of computer hardware; memory cards, namely,
reading and writing devices for memory cards; hard
disk drives (hdd); optical disc drives; magneto
optical drives for computers; floppy discs drives
for computers; usb hubs; computer peripheral
devices; computer network peripherals; computer
cables; cables for computer networks; audiovisual
cables; coaxial cables; mouse pads; wrist rests
for use with computers; cases for optical discs;
cases for digital cameras; camera cases; cases for
memory cards; protective carrying cases for
portable digital audio players; cases for hard
disc drives for computers, portable cd/dvd drives,
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
Opposition No. 91192293
2
adapters, computer mouse, and other computer
peripheral devices; fitted plastic films known as
skins for covering and providing a scratch proof
barrier or protection for electronic devices,
namely, mp3 players, mobile telephones, smart
telephones, digital cameras, global positioning
systems and personal digital assistants; apparatus
for recording, transmission or reproduction of
sound and images; blank magnetic data carriers;
calculating machines, data processing equipment
and computers; modem; potable [sic] telephones;
telephone receivers; telephone transmitters;
cleaning apparatus for sound recording discs;
computer programs recorded on data media for
working computer peripherals; downloadable
computer software for working computer
peripherals; computer software recorded on data
media for working computer peripherals; navigation
apparatus for vehicles in the nature of on-board
computers; television receivers in the nature of
tv sets; television tuners; dictating machines;
sound recording apparatus; karaoke players;
notebook and laptop computers; amplifiers;
telephone wires; tripods for cameras; sound
alarms; antennas in the nature of aerials; bags
for laptop personal computers in the nature of
computer carrying cases, in Class 9; and

attaché cases; bags in the nature of envelopes and
pouches of leather for merchandise packaging;
backpacks; briefcases; suitcases; traveling bags;
traveling trunks; trunks in the nature of luggage,
in Class 18.1

As grounds for opposition, opposer alleges likelihood
of confusion with its previously used and registered L-COM
marks for "the manufacture, distribution, and sale of
computer and general electrical connectivity products."
Opposer also claims dilution. Opposer pleads ownership of

1 Application Serial No. 77658488, filed January 28, 2009,
claiming a bona fide intent to use the mark in commerce under
Trademark Act §§ 1(b) and 44(e).

Opposition No. 91192293
3
two registrations.2 One is for the word mark L-COM3 and the
other is for the following mark4

both for
computer and communication related products and
accessories-- namely, electrical cables; adapters;
connectors; enclosures; switches; network switches;
rack equipment, namely racks, rack drawers, rack
shelves, rack power distributors, rack panels for
accepting electrical connectors, rack sub-panels, rack
panel extenders, rack cable managers, and rack bases;
modular wiring aids, network interface cards; baluns,
namely, d-subminiature, coaxial, fiber, modular and
serial connectors; plastic and metal universal electric
project boxes; blue boxes comprising compact die-cast
metal housings for electrical applications; gender
changers in the nature of electric compact auto
switches and electrical adapters; data d-subminiature
coaxial, modular, ieee, fiber optic, token ring, and
multi-port adapters; coaxial transfer, modular,
data/data-transfer and video switches; wall plates;
jacks; surface mounting boxes; junction boxes; cables;
cords; plugs; and test/testing equipment, namely,
electrical cable and cord testers, fiber optic cable
testers, and electrical continuity testers.

2 Opposer asserted its pleaded registrations and applications
(discussed infra) by citing them in the ESTTA filing form as a
basis for the opposition. The ESTTA filing form and the attached
pleading comprise a single document forming the entire complaint.
See TBMP § 309.02 (3d ed. 2011). See also Schott AG v. Scott, 88
USPQ2d 1862, 1863 n.3 (TTAB 2008) (“[T]he ESTTA generated filing
form … is considered part of the plaintiff's initial pleading.”).
Accordingly, by asserting ownership of its registrations and
applications by way of the ESTTA filing form, opposer has pleaded
ownership of such registrations and applications. Opposer has
not, however, made such registrations of record with its
pleading. See Trademark Rule 2.122(d)(1); and Prakash Melwani v.
Allegiance Corp., 97 USPQ2d 1537 (TTAB 2010).

3 Registration No. 2697029.

4 Registration No. 1691214.

Opposition No. 91192293
4
Opposer also pleads ownership of several pending
applications (now registered) for the mark L-COM for "retail
services" featuring specifically named computer and
communication related products of others5; and the following
mark

for "custom manufacture of wireless telecommunication
antenna and amplifier systems for others";6 "hand tools,
namely, coaxial and modular wire strippers and wire
crimpers";7 "cable ties and straps for fastening and
securing objects such as bundles of wire together";8 and a
wide variety of specified computer and communications
related products and accessories in Class 9.9 Opposer also
pleads ownership of an application (now registered) for the
following mark

5 Registration No. 3766804.

6 Registration No. 3746280.

7 Registration No. 3733851.

8 Registration No. 3733850.

9 Registration No. 3770323.

Opposition No. 91192293
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for "retail services, namely, online retail store services
and catalog ordering services" featuring specified "computer
and communication related products of others."10
In its answer, applicant denies the essential
allegations of the notice of opposition.
The discovery period closed on January 3, 2011.
Opposer's main testimony period was set to open on March 5,
2011. This case now comes up on opposer's fully-briefed
motion for summary judgment, filed on March 3, 2011 on its
claim of likelihood of confusion only; applicant's fully-
briefed cross motion for summary judgment in its favor on
both of opposer's claims; and applicant's fully briefed
motion for discovery sanctions.11
The Board first addresses some preliminary matters.
Opposer's pleaded applications, now registered
A plaintiff which pleads ownership of an application in
its complaint does not have to amend its pleading to assert
the resultant registration, so long as it issues before the
plaintiff’s testimony period closes. The pleading of an
application is viewed as providing sufficient notice to the
defendant of the plaintiff’s intention to rely on any

10 Registration No. 3766767.

11 Both parties submitted confidential material and,
appropriately, redacted versions of such submissions. See
Trademark Rules 2.27(e) and 2.126(c); and TBMP § 412.04 (3d ed.
2011).

Opposition No. 91192293
6
registration that issues from the pleaded application. See
TBMP § 314 (3d ed. 2011).
Contrary to applicant's stated position, opposer is not
required to amend its notice of opposition to reference the
registration numbers for the registrations that issued from
the pleaded applications.
Accordingly, opposer may rely on the registrations
which matured from the pleaded applications, as well as the
registrations originally pleaded in the notice of
opposition.
Opposer's expressed reliance on its pleaded Registration No.
2697029

As observed by applicant, in its motion for summary
judgment, opposer states that, "in order to simplify
matters," it relies "almost exclusively on its word mark,
the '029 registration and additional common law rights in
the word mark with respect to a few additional goods not
listed in the '029 registration."
Opposer introduced copies of all its pleaded
registrations (including the ones that matured from the
pleaded applications) showing that the registrations are
valid and subsisting and are owned by opposer. Although the
Board understands that opposer intends to emphasize
Registration No. 2697029 in comparing the parties'
respective marks and goods, the Board is not limited to
Opposition No. 91192293
7
considering only Registration No. 2697029 in reviewing the
evidence submitted by opposer.
Opposer's allegations of common law rights in the mark L-COM
Applicant contends that, because opposer did not plead
common law rights in its L-COM mark, the Board must
disregard opposer's evidence based on any common law rights.
Applicant specifically argues that it was not put on notice
of opposer's reliance on common law rights and that opposer
did not produce evidence concerning alleged common law
rights until after the close of discovery.
At paragraph No. 2, opposer averred, among other
things, that it "has continuously used its L-com trademark …
in connection with the sale of computer and general
electrical connectivity products" without making any
reference to its pleaded registrations when it makes this
statement. This language is sufficient to state common law
rights in the mark and to provide applicant with notice of
such common law rights. Moreover, given the identifications
in the pleaded registrations and applications (now
registered) and the exchange of discovery (discussed later
in this order), applicant received additional information
and documentation concerning opposer's use of its mark in
connection with other goods and services.
Accordingly, applicant's objection is overruled;
opposer may rely on common law rights for the mark L-COM.
Opposition No. 91192293
8
Applicant's motion for discovery sanctions
Applicant seeks entry of judgment against opposer for
purported discovery violations. According to applicant,
opposer served 11,000 pages of disorganized, unlabeled
documents; a disc containing 4,500 pages with no index;
refused to authenticate its documents,12 specifically
discussing a 2010 master catalog obtained by applicant's
counsel;13 and failed to provide documents or evidence
(either in disclosures or discovery responses) critical to
opposer's summary judgment motion. Applicant argues that
opposer failed to provide discovery responses concerning its
alleged common law rights with respect to goods not
identified in the registrations and that opposer did not
produce a readable sales report. Applicant alternatively
asks that opposer be precluded from relying on this evidence
on summary judgment.
In response, opposer argues that no procedural bases
exist for applicant's request because there is no order
compelling discovery.
A motion for sanctions for failure to comply with an
order of the Board lies only when the Board has entered an

12 Applicant broadly states that opposer refused "… to
authenticate its catalogs and web pages, its electronic
production of thousands of unlabeled documents, and its
production of catalog pages buried within two document dumps."

Opposition No. 91192293
9
order relating to discovery (i.e., an order compelling
discovery or a protective order) and the order has been
violated. See Trademark Rule 2.120(g)(1); and TBMP §
527.01(a) (3d ed. rev. 2011).
In this case, because the Board has not issued an order
compelling discovery, there is no basis for applicant's
motion for discovery sanctions in the nature of entry of
judgment against opposer. Accordingly, applicant's motion
is denied.14
It is apparent, though, that opposer has complied with
the discovery requirements, including supplementing its
responses with respect to later uncovered responsive
catalogs. Accordingly, applicant's alternate request that
opposer be precluded from relying on certain evidence is
denied.
The parties' cross motions for summary judgment
In a motion for summary judgment, the moving party has
the burden of establishing that there is no genuine dispute

13 The Board notes in passing that opposer submitted a copy of its
2010 master catalog in support of its motion for summary
judgment. The submission is approximately 250 pages.
14 The Board notes, too, that applicant's combined motion to
compel and motion for 56(d) discovery (now withdrawn) was filed
two days after opposer's main testimony period was scheduled to
open and before the Board issued its order suspending
proceedings, occasioned by the filing of opposer's motion for
summary judgment. A motion to compel is untimely if filed after
the opening of the first testimony period even if such period is
later reset. Consequently, the filing of any future motion to
compel would be untimely. Trademark Rule 2.120(e)(1); and TBMP §
523.03 (3d ed. 2011).

Opposition No. 91192293
10
as to any material fact and that it is entitled to judgment
as a matter of law. See Fed. R. Civ. P. 56(a). A genuine
dispute with respect to a material fact exists if sufficient
evidence is presented such that a reasonable fact finder
could decide the question in favor of the non-moving party.
See Opryland USA Inc. v. Great American Music Show, Inc.,
970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992). Thus, all
doubts as to whether any particular factual issues are
genuinely in dispute must be resolved in the light most
favorable to the non-moving party.15 See Olde Tyme Foods
Inc. v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed.
Cir. 1992).
The mere fact that both parties have moved for summary
judgment does not necessarily mean that summary judgment is
appropriate. See University Book Store v. University of
Wisconsin Board of Regents, 33 USPQ2d 1385, 1389 (TTAB
1994). We note that the purpose of a motion for summary
judgment is to save time where a full trial is not
necessary. In this case, because of the higher standard
required to prevail on a summary judgment motion and the
late date that opposer filed its motion (two days before

15 To be clear, the burden on the party moving for summary
judgment to prove that it is entitled to judgment as a matter of
law because no genuine disputes of material fact exist is greater
burden than the burden of proof at trial, which is a
preponderance of the evidence, and which permits appropriate
inferences to be drawn from the evidence of record. See, for
Opposition No. 91192293
11
trial commenced), opposer accomplished very little except to
delay our reaching a final decision and increasing the costs
of the proceeding.
1. Dilution
Opposer did not respond to applicant's cross motion for
summary judgment as it pertained opposer's claim of
dilution. Accordingly, applicant's cross motion is granted
with respect to opposer's dilution claim as conceded and
such claim is dismissed with prejudice.16 Trademark Rule
2.1271(a).
2. Likelihood of confusion
In support of its motion, opposer argues that the
parties' marks, particularly relying on its L-COM mark, are
virtual identical in sound and are extremely similar in
appearance, commercial impression and connotation. Opposer
notes that the arbitrary "L" portion of its mark is based on
the first name of its founder, Al, and the arbitrary "ELE"
portion of applicant's mark is based on the word "elegant,"
but that the public would not perceive these references from
those elements as part of the complete marks. Opposer
argues that the parties' goods are the same in part and

example, Gasser Chair Co., Inc. v. Infanti Chair Manufacturing
Corp., 34 USPQ2d 1822 (Fed. Cir. 1995).
16 The Board notes in passing that opposer's dilution claim was
insufficiently pled. At a minimum, opposer did not plead that
its mark(s) became famous before the filing date of applicant's
application. See Citigroup, Inc. v. Capital City Bank Group,
Opposition No. 91192293
12
otherwise related by, for example, being in the same product
category, being complementary, some of opposer's products
being encompassed by a broader description in applicant's
identification, and some of applicant's identified goods
being of the same as those of third parties which opposer
sells. Opposer points out that there are no restrictions on
the parties' channels of trade or classes of purchasers.
Opposer argues that the parties' goods are low cost, often-
replaced, and mass produced such that a high degree of care
is not exercised in the purchase of the products. Opposer,
stating sales figures over 25 years, argues that its mark is
famous for purposes of the DuPont17 analysis. Opposer also
explains that both parties' marks are house marks and are
used on an extremely broad variety of goods with opposer
having used its mark on every product it sells, "which
numbers in the tens of thousands."
Opposer's motion is supported by the declarations of
its attorney and accompanying exhibits; the declaration of
its chief operating officer and accompanying exhibits; the
declaration of its president and CEO; the declaration of its
senior business analyst and accompanying exhibits; the
declaration of its senior vice president ecommerce and

Inc., 94 USPQ2d 1645 (TTAB 2010), aff’d, 637 F.3d 1344, 98 USPQ2d
1253 (Fed. Cir. 2011).

17 In re E. I. duPont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973.
Opposition No. 91192293
13
marketing and accompanying exhibits, including sales
reports.
In its response and cross motion, applicant argues that
the marks, while somewhat alike in sound, are drastically
different is appearance, connotation and commercial
impression. Applicant contends that its mark, ELECOM, has
the connotation of being a word while opposer's mark, L-COM,
has the connotation of a top level domain name with the "L"
possibly indicating a model number or generation number.
Applicant argues that the electrical connectivity products
identified in opposer's Registration No. 2697029 (which
opposer largely relies upon for its motion) are distinctly
different from, and used for a different function than,
applicant's consumer-friendly, aesthetically pleasing
electronics, targeted predominantly to women and
adolescents. Applicant contends that opposer's goods are
"designed for sophisticated, networked electronics systems
targeted to engineers and IT and AV professionals" while
applicant's "goods are for individual consumers having no
special technical expertise." Applicant points out that a
specimen for one of opposer's products indicates it is
intended for "commercial, government and military
applications"; that magazines in which opposer advertises
are for sophisticated readers; and that opposer's goods

Opposition No. 91192293
14
"appeal to a discerning set, given the great expense and
technical nature of the products." Applicant argues that
opposer's mark is not famous because opposer's evidence of
purported fame is insufficient "to prove any evidence of
blurring or tarnishment or any sort of lessening of the
distinctiveness of L-com's mark." Applicant contends that
opposer has not shown that L-COM is widely recognized by the
general consuming public; and that there are other marks and
company names existing composed, in whole or in part, of the
term L-COM or a purportedly similar term such as ELECOM,
ELCOM, or L.COM.
Applicant's response and cross motion is supported by
the declarations of its attorney and accompanying exhibits.
In this case, genuine disputes of material fact exist,
at a minimum, as to the similarities and public perception
of the parties' respective mark, including appearance,
connotation, and commercial impression. Although the
probative value is limited, some of the third-party
registrations submitted by applicant (along with other
evidence) are sufficient to raise a genuine dispute of
material fact to the strength of opposer's mark.18 See

18 The Board notes in passing that opposer has pointed out that
some of the registrations referenced by applicant are for
services that, on the face of the registration, appear unrelated
(e.g., online dating services.) Opposer has also pointed out
that it entered into a settlement with the owners of some of the
registrations.

Opposition No. 91192293
15
Lloyd’s Foods Products, Inc. v. Eli’s, Inc., 25 USPQ2d 2027
(Fed. Cir. 1993); and Drive Trademark Holdings LP v. Inofin,
83 USPQ2d 1433, 1437 (TTAB 2007). Genuine disputes of
material fact also exist as to the relatedness of the
parties' goods and channels of trade in which such goods are
encountered, particularly with respect to opposer's asserted
common law rights.19
Accordingly, the parties’ cross motions for summary
judgment on the issue of likelihood of confusion are denied.
As determined earlier in this order, summary judgment has
been granted in applicant's favor on opposer's dilution
claim.20 This case goes to trial on the remaining claim of
priority of use and likelihood of confusion.
Proceedings are resumed and dates are reset as
follows:21

19 The parties should note that the evidence submitted in support
of and in opposition to the cross motions for summary judgment is
of record only for consideration in connection with such motions.
To be considered at final hearing, any such evidence must be
properly introduced into evidence during the assigned trial
period for the submitting party. See Levi Strauss & Co. v. R.
Josephs Sportswear, Inc., 28 USPQ2d 1464, 1465 fn.2 (TTAB 1993);
Pet, Inc. v. Bassetti, 219 USPQ 911 (TTAB 1983); and American
Meat Institute v. Horace W. Longacre, Inc., 211 USPQ 712 (TTAB
1981).

20 Our decision on summary judgment is interlocutory in nature.
Appeal may be taken within two months after the entry of final
decision in this case. See Copelands’ Enterprises Inc. v. CNV
Inc., 887F.2d 1065, 12 USPQ2d 1562 (Fed. Cir. 1989).

21 In the event opposer has not served its pretrial disclosures or
believes amendment to such disclosures is appropriate in view of
the determination herein on the cross motions for summary
judgment, opposer is allowed until TEN DAYS from the mailing date
of this order to so serve or amend its pretrial disclosures.
Opposition No. 91192293
16
Plaintiff's 30-day Trial Period
Ends 9/25/2011
Defendant's Pretrial
Disclosures 10/10/2011
Defendant's 30-day Trial Period
Ends 11/24/2011
Plaintiff's Rebuttal
Disclosures 12/9/2011
Plaintiff's 15-day Rebuttal
Period Ends 1/8/2012

In each instance, a copy of the transcript of
testimony, together with copies of documentary exhibits,
must be served on the adverse party within thirty days after
completion of the taking of testimony. Trademark Rule
2.l25.
Briefs shall be filed in accordance with Trademark
Rules 2.l28(a) and (b). An oral hearing will be set only
upon request filed as provided by Trademark Rule 2.l29.
***