NetIQ Corporationv.Egis Incorporated

Trademark Trial and Appeal Board

Aug 9, 2011

No. 91187844 (T.T.A.B. Aug. 9, 2011)

Mailed: August 9, 2011 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board ______ NetIQ Corporation v. Egis Incorporated _____ Opposition No. 91187844 to application Serial No. 77341864 filed on December 1, 2007 _____ Leslie C. Ruiter of Stokes Lawerence PS for NetIQ Corporation. Michael A. Shimokaji of Shimokaji & Associates PC for Egis Incorporated. ______ Before Quinn, Taylor and Bergsman, Administrative Trademark Judges. Opinion by Bergsman, Administrative Trademark Judge: Egis Incorporated (“applicant”) filed an intent-to-use application for the mark EGIS, in standard character form, for the following goods: Computer software and firmware for the encryption, decryption, compression, protection, retention and transmission of data, files and information; electronic publications, namely, manuals, handbooks, and guides featuring information relating to computer software and firmware for the encryption, decryption, compression, protection, retention and transmission THIS OPINION IS NOT A PRECEDENT OF THE TTAB Opposition Nos. 91187844 2 of data, files and information recorded on electronic media, in class 9. NetIQ Corporation (“opposer”) filed a notice of opposition against the registration of applicant’s mark on the ground of likelihood of confusion pursuant to Section 2(d) of the Trademark Act of 1946, 15 U.S.C. §1052(d). Specifically, opposer alleged that it is the owner of the federally-registered mark AEGIS for “computer software for coordinating and connecting information technology management products and modeling, measuring, managing and automating information technology processes; instruction manuals sold as a unit therewith,” in Class 91 and that applicant’s mark for its software so resembles opposer’s mark for its software as to be likely to cause confusion. Applicant, in its answer, denied the salient allegations in the notice of opposition. Preliminary Issues A. Exhibits to pleadings. Trademark Rule 2.122(c), 37 CFR § 2.122(c), provides that subject to specific exceptions “an exhibit attached to a pleading is not evidence on behalf of the party to whose pleading the exhibit is attached unless identified and introduced in evidence as an exhibit during the period of for the taking of testimony.” Accordingly, except for 1 Registration No. 3475845, issued July 29, 2008. Opposition Nos. 91187844 3 opposer’s copy of its pleaded registration, discussed below, none of the exhibits attached to either the notice of opposition or applicant’s answer are evidence in this proceeding. B. Exhibits to briefs. Exhibits and other evidentiary materials attached to a party’s brief on the case can be given no consideration unless they were properly made of record during the time for taking testimony. See, e.g., Syngenta Crop Protection, Inc. v. Bio-Chek, LLC, 90 USPQ2d 1112, 1116 (TTAB 2009); Bass Pro Trademarks LLC v. Sportsman Warehouse, Inc., 89 USPQ2d 1844, 1848(TTAB 2008); Life Zone Inc. v. Middleman Group Inc., 87 USPQ2d 1953, 1955 (TTAB 2008). See also Trademark Rule 2.123(l), 37 CFR §2.123(l) (“Evidence not obtained and filed in compliance with these sections will not be considered”). Accordingly, the evidence attached to the briefs of the parties has been given no consideration. C. Opposer’s motion to strike applicant’s brief. Pursuant to the Board’s August 23, 2010 order, applicant’s brief on the case was due September 22, 2010. Defendant filed its brief on September 23, 2010 and failed to serve opposer. Nevertheless, opposer timely filed its reply brief. In its reply brief, opposer moved to strike applicant’s main brief on the grounds that it was not timely filed and Opposition Nos. 91187844 4 that it was not served on opposer.2 In opposition to the motion to strike, applicant argues that counsel “incorrectly advised his staff of the due date by one day,” that opposer has not suffered any prejudice and that the proceedings will not be delayed.3 Where, as here, applicant’s time to file its brief had expired, applicant must show that its failure to act during the time set was the result of excusable neglect. Fed. R. Civ. P. 6(b). The analysis to be used in determining whether a party has shown excusable neglect was set forth by the Supreme Court in Pioneer Investment Services Company v. Brunswick Associates Ltd. Partnership, 507 U.S. 380 (1993), adopted by the Board in Pumpkin Ltd. v. The Seed Corps, 43 USPQ2d 1582 (TTAB 1997). These cases hold that the excusable neglect determination must take into account all relevant circumstances surrounding the party’s omission or delay, including (1) the danger of prejudice to the nonmovant, (2) the length of the delay and its potential impact on judicial proceedings, (3) the reason for the delay, including whether it was within the reasonable control of the movant, and (4) whether the movant acted in good faith. 2 Because opposer timely filed its reply brief, applicant’s failure to serve its brief on opposer was harmless error. 3 Applicant’s motion to reopen time to file a main brief. Opposition Nos. 91187844 5 We find that (1) there is no prejudice to opposer because of the late filing of applicant’s brief, (2) applicant’s one day delay created no impact on these proceedings, (3) the delay was totally within the control of applicant, and (4) applicant acted in good faith. Also, we consider the fact that a brief on the case is often helpful to the Board in understanding the facts and analyzing the likelihood of confusion. In view of the foregoing, we find that applicant has met the standard of excusable neglect and, therefore, opposer’s motion to strike applicant’s brief is denied. D. Applicant’s motion to dismiss the opposition based on opposer’s failure to take testimony or otherwise introduce any evidence. In its brief, applicant moved to dismiss the opposition on the ground that opposer failed to take testimony or otherwise introduce any evidence. Trademark Rule 2.132, 37 CFR § 2.132. Trademark Rule 2.132(a) is not applicable because, as indicated above, opposer has made its pleaded registration of record. Trademark Rule 2.132(b) provides that when the only evidence introduced by opposer is its pleaded registration, applicant may file a motion to dismiss the opposition on the ground that the opposer has shown no right to relief. A motion to dismiss under Trademark Rule 2.132(b) must be filed before the opening of applicant’s Opposition Nos. 91187844 6 testimony period. Trademark Rule 2.132(c) (“A motion filed under paragraph (a) or (b) of this section must be filed before the opening of the testimony period of the moving party”). Because applicant filed the motion to dismiss as part of its brief after the close of trial, it was not timely and, therefore, applicant’s motion to dismiss the opposition under Trademark Rule 2.312(b) is denied. The Record By rule, the record includes applicant’s application file and the pleadings. Trademark Rule 2.122(b), 37 CFR §2.122(b). Opposer made its pleaded registration of record by submitting a copy of it from the electronic database records of the U.S. Patent and Trademark Office showing the current status and title of the registration. Trademark Rule 2.122(d)(1), 37 CFR § 2.122(d)(1). Applicant did not introduce any testimony or evidence during its testimony period. Standing Because opposer has properly made its pleaded registration of record, opposer has established its standing. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982). Opposition Nos. 91187844 7 Priority Because opposer has properly made its pleaded registration of record, Section 2(d) priority is not an issue in this case as to the mark and the goods covered by the registration. King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974). 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 issue of likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also, In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by §2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks”). A. The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. We turn first to the du Pont likelihood of confusion factor focusing on the similarity or dissimilarity of the Opposition Nos. 91187844 8 marks in their entireties as to appearance, sound, connotation and commercial impression. In re E. I. du Pont De Nemours & Co., 177 USPQ at 567. In a particular case, any one of these means of comparison may be critical in finding the marks to be similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1042 (TTAB 1988). In comparing the marks, we are mindful that the test is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their commercial impression that confusion as to the source of the goods offered under the respective marks is likely to result. Opposer’s mark AEGIS is similar in appearance to applicant’s mark EGIS to the extent that opposer’s mark incorporates applicant’s entire mark. The word “aegis” (pronounced ē´jis) is defined as “the shield or breastplate of Zeus or Athena bearing at its center the head of the Gorgon” and “protection; support,” and “sponsorship; auspices.” The definition references “egis.”4 The word “egis” (pronounced ē´jis) is defined as 4 The Random House Dictionary Of The English Language (Unabridged) p. 30 (2nd ed. 1987). The Board may take judicial notice of dictionary evidence. University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983). Opposition Nos. 91187844 9 “aegis.”5 Accordingly, the marks are phonetically equivalent and have the same meaning. The marks AEGIS and EGIS are arbitrary, or suggestive, terms engendering the commercial impression that AEGIS or EGIS software offers protection and support for the users. In view of the foregoing, we find that the marks are similar in terms of appearance, sound, meaning and commercial impression. B. The similarity or dissimilarity and nature of the goods in the application and opposer’s registration, likely- to-continue channels of trade and classes of consumers. Opposer has registered AEGIS for “computer software for coordinating and connecting information technology management products and modeling, measuring, managing and automating information technology processes.” “Information technology” is a synonym for “information systems” meaning the “business application of the computer.”6 Thus, opposer’s AEGIS software is used for managing computer technology. Applicant is seeking to register EGIS for “computer software and firmware for the encryption, decryption, compression, protection, retention and transmission of data, files and information.” “Encryption” is the process of coding data for security purposes for transmission over a 5 Id. at 623. 6 The Computer Glossary, p. 196 (7th ed. 1995). Opposition Nos. 91187844 10 public network.7 The encrypted data is decrypted or deciphered and subsequently returned to its original form. “Compression” is “encoding data to take up less space.”8 Opposer’s software for managing computer technology is broad enough to encompass applicant’s software for processing data and, therefore, the goods are legally related.9 Because opposer’s software may encompass applicant’s software, we must presume that applicant’s software moves in the same channels of trade and are sold to the same classes of consumer as opposer’s software. See Jansen Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007); Kohler Co. Baldwin Hardware Corp., 82 USPQ2d 1100, 1110 (TTAB 2007). C. The conditions under which and buyers to whom sales are made (i.e., impulse vs. careful, sophisticated purchasing). Applicant contends that its clients exercise a high degree of care when purchasing its software. Computer software and hardware are generally directed to “expensive” goods. Even if such goods are not considered “expensive”, such are directed to “discriminating purchasers” having a degree of sophistication in their 7 Id. at 133. 8 Id. at 72 and 91. 9 The fact that the descriptions of goods specifically differ does not change our finding regarding the relatedness of the software. Similarity between any of opposer’s goods and any of the goods in applicant’s description of goods will suffice as a basis for purposes of determining whether the goods are related. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). Opposition Nos. 91187844 11 purchasing. A sophisticated consumer would be able to readily distinguish between the highly specialized computer programs of the Applicant and the highly specialized computer programs of the Opposer.10 One problem with applicant’s argument is that, as discussed above, it fails to take into account that based on the descriptions of goods, opposer’s software encompasses applicant’s software. Accordingly, there is no difference between the parties’ “highly specialized computer programs” for the “sophisticated consumer” to distinguish. Nevertheless, we acknowledge that the customers of both applicant and opposer exercise a high degree of care when selecting software. Even assuming that those customers exercise a high degree of care, that does not outweigh the similarity of the marks and the relatedness of the goods. Being expert or skilled in field of software does not mean that applicant’s and registrant’s personnel are equally skilled in analysis of trademarks under which these products are marketed. Medtronic, Inc. v. Medical Devices, Inc., 204 USPQ 317, 326 (TTAB 1979). See also Carlisle Chemical Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970) ("Human memories even of discriminating purchasers ... are not infallible."). 10 Applicant’s Brief, p. 10. Opposition Nos. 91187844 12 D. Balancing the factors. Because of the similarity of the marks, the similarity of the goods, and the presumption that the goods move in the same channels of trade and are sold to the same classes of consumers, we find that applicant’s mark EGIS, for the goods identified in the application, so resembles opposer’s mark AEGIS, for the goods identified in opposer’s registration, as to be likely to cause confusion. Decision: The opposition is sustained and registration to applicant is refused.