Orange Brand Services, Ltd.v.Net.Orange, Inc.Download PDFTrademark Trial and Appeal BoardAug 28, 2013No. 91196931 (T.T.A.B. Aug. 28, 2013) Copy Citation Hearing: Mailed: 07/25/2013 8/28/2013 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board ______ Orange Brand Services, Ltd. v. Net.Orange, Inc. _____ Opposition No. 91196931 to application Serial No. 77872225 filed on 11/13/2009 _____ Dickerson M. Downing and Honor Costello of Crowell & Moring for Orange Brand Services, Ltd. Craig Tadlock of Tadlock Law Firm for Net.Orange, Inc. ______ Before Quinn, Wolfson and Adlin, Administrative Trademark Judges. Opinion by Quinn, Administrative Trademark Judge: Net.Orange, Inc. (“applicant”) filed, on November 13, 2009, an application to register the mark NET.ORANGE (in standard characters) for “providing on-line non-downloadable software for use in planning courses for treatments for patients, for use in medical billing, medical file and document management, medical office management, medical cost management, medical communication management, and medical supply chain management in THIS OPINION IS NOT A PRECEDENT OF THE TTAB Opp. No. 91196931 2 the field of healthcare only for use by pharmacies, hospitals, medical companies and medical clinics” in International Class 42. Applicant alleges first use of the mark anywhere and first use of the mark in commerce on October 31, 2006. Orange Brand Services, Ltd. (“opposer”) opposed registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that applicant’s mark, when used in connection with applicant’s services, so resembles opposer’s previously used and registered mark ORANGE (and variations thereof) for a broad range of telecommunication services and a variety of computer software services and computer programming services, including some focusing on healthcare, as to be likely to cause confusion.1 Applicant, in its answer, denied the salient allegations of likelihood of confusion. The record comprises the pleadings; the file of the opposed application; trial testimony, with related exhibits, taken by opposer; status and title copies of opposer’s pleaded registrations and copies of its applications, excerpts from applicant’s website, and applicant’s responses to certain of 1 Opposer is a subsidiary of France Telecom, a large telecommunications company, engaged in cellular communications and business-to-business services. France Telecom, in 2005, decided to make the mark ORANGE the flagship brand for virtually all of its services. (Marks dep., pp. 24-30). In addition, opposer uses slogans such as “Today Changes With Orange” and “Business Changes With Orange” in connection with some of its services. Particulars of the registrations are set forth, infra. Opp. No. 91196931 3 opposer’s discovery requests, all introduced by way of opposer’s notices of reliance. Applicant neither took testimony nor offered any other evidence into the record. The parties filed briefs and both were represented by counsel at an oral hearing held before the Board. STANDING Opposer established its standing to oppose registration of the involved application. In particular, opposer properly made of record its pleaded registrations of its ORANGE marks for a variety of telecommunication services and computer software- related services, as well as demonstrated use of its marks in connection with the same or similar services. Thus, opposer has shown that it is not a mere intermeddler. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999); and Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982). PRIORITY In view of opposer’s ownership of valid and subsisting registrations of its various ORANGE marks, opposer’s priority is not in issue with respect to its services identified in the Opp. No. 91196931 4 pleaded registrations. King Candy, Inc. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).2 Opposer’s registrations include, in relevant part, the following registrations, all for the mark ORANGE in standard characters:3 Reg. No. 2344619, issued April 25, 2000 (renewed), for “mobile telephone services, data services, namely sending and receiving facsimiles, electronic mail, voice mail, data collection and storage, namely, the collection and storage of data in electronic memory for subsequent viewing or transmission” (in Int. Cl. 38). Reg. No. 3204789, issued February 6, 2007 (Section 8 affidavit accepted), for “data processing; processing of business information” (in Int. Cl. 35); “electronic data interchange 2 Applicant’s arguments related to priority (Brief, pp. 2-8) raise a red herring. Moreover, as discussed more fully, infra, many of opposer’s identified services are broadly worded and encompass such services of all types; thus, although not specifically identified as such, the services are presumed to include ones rendered in the healthcare field for use by medical entities. 3 Opposer’s registrations are based on foreign registrations and include quite lengthy recitations of services. We have highlighted those portions of opposer’s recitations that set forth services closest to applicant’s services, thereby comprising opposer’s strongest case for its likelihood of confusion claim (as opposer has done in its Brief, pp. 22-26, and Reply Brief, pp. 5-6). Opposer reiterated these points at the oral hearing in response to the Board’s inquiry regarding which registrations and recited services comprised its strongest case. Opp. No. 91196931 5 services (in Int. Cl. 38); and “storage, namely the collection and storage of data in electronic memory for subsequent viewing or transmission; storage of data and of information” (in Int. Cl. 39); Reg. No. 3214415, issued March 6, 2007 (Section 8 affidavit accepted), for “electronic transmission and reception of data and of information; electronic data interchange services; video telephone services; providing user access to the Internet; computer aided transmission of messages and images; wireless exchange of computer data” (in Int. Cl. 38); and “database development services” (in Int. Cl. 42); Reg. No. 3474323, issued July 29, 2008, for “providing access to an electronic on-line network for information retrieval” (in Int. Cl. 38); “installation and maintenance of computer software; computer programming services for others pertaining to providing access time to a computer database; computer programming services for others; information services in the field of computers and computer network facilities; on-line computer programming for others; consultation services rendered on-line or otherwise in conjunction with all of the aforesaid services given on-line from a computer database” (in Int. Cl. 42); and Opp. No. 91196931 6 Reg. No. 3492630, issued August 26, 2008, for “computer services, namely, computer hardware development, customization of computer hardware and software and provision of information and advice thereon; maintenance, updating and design of computer firmware, computer software and computer programs; computer programming services; technical advice and consultation services in the field of information technology; computer management services, namely, computer project management, software application management, namely, hosting computer software applications for others, managing and maintaining applications, software, websites, and databases in the fields of wired and wireless communication; on-line computer services, namely, design and development of on-line computer software systems, hosting of digital content on the Internet, providing specific information as requested by customers via the Internet; computer programming services for others provided on-line; computer network services, namely, providing search engines for obtaining data on a global computer network and provision of information and advice thereon; creating, operating and maintaining databases, intranets and websites; installation and maintenance of computer software; providing an on-line computer database in the field of computer software development and programming; computer network services, namely, providing search engines for obtaining data on a global network, hosting the websites of Opp. No. 91196931 7 others on a computer server for a global computer network; creating, operating and maintaining websites, web pages and portals for others for logging text, images and music provided via computers and mobile telephones; information and advisory services, namely, providing information at the specific request of end users from a computer database or via the Internet by means of a global computer network” (in Int. Cl. 42). Opposer also owns other valid and subsisting registrations of ORANGE marks (properly made of record), including ORANGE with an orange colored background, ORANGE LABS (LABS disclaimed) and ORANGE BUSINESS SERVICES (BUSINESS SERVICES disclaimed), all for services identical or similar to the ones referenced above. LIKELIHOOD OF CONFUSION Our determination under Section 2(d) is based on an analysis of all of the 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). Opposer must establish that there is a likelihood of confusion by a preponderance of the evidence. In any likelihood of confusion analysis, however, two key considerations are the similarities between the marks and the similarities between the goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 Opp. No. 91196931 8 (CCPA 1976). These factors, and the other relevant du Pont factors in the proceeding now before us, are discussed below. THE MARKS We must compare opposer’s mark ORANGE in standard characters to applicant’s mark NET.ORANGE in standard characters.4 The marks are compared in their entireties as to appearance, sound, connotation and commercial impression to determine the similarity or dissimilarity between them. Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005). The test, under the first du Pont factor, 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 overall commercial impression that confusion as to the source of the goods and/or services offered under the respective marks is likely to result. It is not necessary for the marks to be identical in order for a likelihood of confusion to exist: “Exact identity is not necessary to generate confusion as to source of similarly- marketed products.” Bridgestone Americas Tire Operations, LLC 4 Applicant’s argument based on its actual use, that is, use of NET.ORANGE with an orange fruit design, is misplaced inasmuch as the design does not form part of the mark sought to be registered. See Chesebrough-Pond’s Inc. v. Soulful Days, Inc., 228 USPQ 954, 956 (TTAB 1985); and Ft. Howard Paper Co. v. Marcal Paper Mills, Inc., 189 USPQ 305, 307 (TTAB 1975). Thus, applicant’s actual use is essentially irrelevant to our comparison of the parties’ marks set forth in opposer’s pleaded registrations and applicant’s involved application. Opp. No. 91196931 9 v. Federal Corp., 673 F.3d 1330, 102 USPQ2d 1061, 1064 (Fed. Cir. 2012). In that opinion, the Court went on to observe that in the earlier case of Bose Corp. v. QSC Audio Prods., Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1311 (Fed Cir. 2002), in comparing the marks WAVE and ACOUSTIC WAVE to POWERWAVE, “this court found that the ‘presence of the root element WAVE....introduces a strong similarity in all three marks,’ although in that case the goods were not identical.” Id. It is well settled that one feature of a mark may be more significant than another, and it is not improper to give more weight to this dominant feature in determining the commercial impression created by the mark. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (“There is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties.”). Applicant’s mark is dominated by the word ORANGE. The NET. portion is subordinate; as pointed out by opposer, the term NET is a shortened form of “network.” The “dot” in applicant’s mark serves to isolate and further highlight the dominant portion ORANGE. The dominant portion, ORANGE, of applicant’s mark is identical to the entirety of opposer’s mark ORANGE in sound, appearance and meaning. In focusing on the dominant portion of applicant’s mark, we Opp. No. 91196931 10 recognize, of course, that the marks ultimately must be compared in their entireties, including the NET. portion of applicant’s mark. When this comparison is made, we find that the marks are similar in sound, appearance and meaning. Simply put, the addition of NET. in applicant’s mark is insufficient to distinguish applicant’s mark NET.ORANGE from opposer’s mark ORANGE, and may suggest to consumers that applicant’s services are in fact provided by opposer via a computer network. Because of the similarities between the marks in their entireties, the marks engender similar overall commercial impressions. See, e.g., In re Computer Sys. Ctr. Inc., 5 USPQ2d 1378, 1381 (TTAB 1987) (holding CSC ADVANCED BUSINESS SYSTEMS for retail computer store services and computer maintenance and repair services in connection therewith, and CSC for various computer-related services, likely to cause confusion, noting that “the inclusion of ‘ADVANCED BUSINESS SYSTEMS’ as a feature of applicant’s mark is not likely to help customers .... distinguish the source of each party’s service”); and In re Equitable Bancorporation, 229 USPQ 709, 711 (TTAB 1986) (holding RESPONSE and RESPONSE CARD (CARD disclaimed), both for banking services, likely to cause confusion, noting that “the addition of descriptive matter to one of two otherwise similar, nondescriptive marks will not serve to avoid a likelihood of confusion”). Opp. No. 91196931 11 Applicant’s argument that opposer has never adopted a mark containing any words or features in front of the word “ORANGE,” as applicant has done, is hardly persuasive. There is no evidence that consumers are aware of opposer’s alleged practice, and the commonality of the arbitrary and distinctive word ORANGE in the marks far outweighs the differences between them. The similarity between the marks ORANGE and NET.ORANGE weighs in favor of a finding of likelihood of confusion. FAME Opposer claims that its ORANGE mark “is famous worldwide and also has achieved a degree of fame in this country.” (Brief, p. 42). Fame of the prior mark plays a dominant role in likelihood of confusion cases featuring a famous mark. Bose Corp. v. QSC Audio Products Inc., 63 USPQ2d 1303; Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894 (Fed. Cir. 2000); and Kenner Parker Toys, Inc. v. Rose Art Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453 (Fed. Cir. 1992). Because of the extreme deference accorded to a famous mark in terms of the wide latitude of legal protection it receives, and the dominant role fame plays in the likelihood of confusion analysis, it is the duty of the party asserting fame to clearly prove it. Lacoste Alligator S.A. v. Maxoly Inc., 91 USPQ2d 1594, 1597 (TTAB 2009); and Leading Opp. No. 91196931 12 Jewelers Guild Inc. v. LJOW Holdings LLC, 82 USPQ2d 1901, 1904 (TTAB 2007). Opposer’s ORANGE mark has been ranked as the 36th most valuable brand in the world. The record is silent, however, regarding the level of revenues opposer enjoys in the United States. Further, although opposer disclosed its advertising expenditures in North America, the figures do not show the amount specifically spent in the United States. Based on the record, we find that the evidence falls well short of proving fame of the mark ORANGE in the United States as contemplated by caselaw. We can say, however, that opposer’s mark ORANGE is arbitrary, strong and distinctive. In this connection, we also note that the record is devoid of any evidence of third-party uses or registrations of the same or similar mark. THE SERVICES We next turn to consider the second du Pont factor regarding the similarity/dissimilarity between the goods and/or services. Contrary to the gist of some of applicant’s arguments, it is well settled that the services of the parties need not be identical or competitive, or even offered through the same channels of trade, to support a holding of likelihood of confusion. It is sufficient that the respective services of the parties are related in some manner, and/or that the Opp. No. 91196931 13 conditions and activities surrounding the marketing of the services are such that they would or could be encountered by the same persons under circumstances that could, because of the similarity of the marks, give rise to the mistaken belief that they originate from the same source. See Edwards Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399, 1410 (TTAB 2010); and Hilson Research, Inc. v. Society for Human Resource Management, 27 USPQ2d 1423 (TTAB 1993). The issue, of course, is not whether purchasers would confuse the services, but rather whether there is a likelihood of confusion as to the source of the services. In re Rexel Inc., 223 USPQ 830 (TTAB 1984). Importantly for this case, it is sufficient if likelihood of confusion is found with respect to use of the mark on any item that comes within the recitation of services in an application or registration. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); and Rocket Trademarks Pty Ltd. v. Phard S.p.A., 98 USPQ2d 1066, 1073 (TTAB 2011). We make our determination regarding the similarities between the parties’ services, channels of trade and classes of purchasers based on the services as they are identified in the application and registrations, respectively. Octocom Systems Inc. v. Houston Computers Services, Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); and Canadian Imperial Bank Opp. No. 91196931 14 v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1783 (Fed. Cir. 1992). Because there are no limitations as to channels of trade or classes of purchasers in the recitations of most of the services in the pleaded registrations, it is presumed that opposer’s services move in all channels of trade normal for those services, and that they are available to all classes of purchasers for those services. See Paula Payne Products Co. v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76 (CCPA 1973); Kalart Co. v. Camera-Mart, Inc., 258 F.2d 956, 119 USPQ 139 (CCPA 1958); and In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992). Applicant’s recitation of services reads as follows: “providing on-line non-downloadable software for use in planning courses for treatments for patients, for use in medical billing, medical file and document management, medical office management, medical cost management, medical communication management, and medical supply chain management in the field of healthcare only for use by pharmacies, hospitals, medical companies and medical clinics.” Opposer’s recitations of services include the following services: “providing access to an electronic on-line network for information retrieval; installation and maintenance of computer software; computer programming services for others; information services in the field of computers and computer Opp. No. 91196931 15 network facilities; on-line computer programming for others; customization of computer software; maintenance, updating and design of computer firmware, computer software and computer programs; on-line computer services, namely, design and development of on-line computer software systems, hosting of digital content on the Internet, providing specific information as requested by customers via the Internet; database development services; storage, namely the collection and storage of data in electronic memory for subsequent viewing or transmission; storage of data and of information; creating, operating and maintaining databases, intranets and websites; installation and maintenance of computer software; electronic transmission and reception of data and information; electronic data interexchange services; and database development services.” Opposer’s services referenced above are broadly worded and do not include any limitations as to the industry or types of customers being served. Thus, the services as identified in opposer’s registrations are presumed to encompass those types of services rendered in the healthcare field to medical entities; that is, as there are no limitations as to the industry being served or the application of the services to any particular customers, such services logically include the healthcare field. In any event, the record shows that opposer has rendered services to the healthcare industry, a recent example focusing Opp. No. 91196931 16 on remote patient monitoring. (Marks dep., pp. 120-121; Helkov dep., pp. 18-24). Applicant goes so far as to make the following statements: “At the very broadest level, it appears that [the parties] both offer products and services in the healthcare field. However, a closer examination of the evidence suggests that the products and services actually provided by [the parties] are actually different in a meaningful way, and that those products and services are actually complementary rather than competitive with one another.” (Brief, p. 17). Applicant goes on to reiterate that the services “would be far more complementary than competitive,” and further states that the services “are in related areas that could provide synergies to one another,” while also asserting that the services are “generally dissimilar.” (Brief, p. 19). At oral hearing applicant again conceded that the parties’ services are “complementary.” Applicant’s observations about “complementary” services are contemplated by caselaw when making likelihood of confusion determinations, inasmuch as complementary and/or conjoint use may weigh in favor of a finding of likelihood of confusion. See Octocom Systems Inc. v. Houston Computers Services, Inc., 16 USPQ2d at 1788 (modems and computer programs are commonly used together in networking). See also In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. Opp. No. 91196931 17 1984); and Sholl Dental Lab. Co. v. McKesson & Robbins, Inc., 150 F.2d 718, 66 USPQ 223, 226 (CCPA 1945). The point is that opposer’s services, namely software and information technology services, whether rendered in the healthcare field or not, are, at the very least, related to applicant’s services. The similarity between the services is a factor that weighs in favor of a finding of likelihood of confusion. TRADE CHANNELS and PURCHASERS We recognize that applicant’s recitation of services is limited to the “field of healthcare only for use by pharmacies, hospitals, medical companies and medical clinics.” Opposer’s recitations of services do not include any limitations and, as noted above, we presume that its services move in all trade channels normal for those services. When so considered, we find that the trade channels for the services, and the customers for those services, overlap in at least the healthcare field. See Tea Board of India v. Republic of Tea Inc., 80 USPQ2d 1881, 1897 (TTAB 2006). Further, opposer’s customers include some in the medical industry, including Merck (pharmaceuticals), Sorin Group (medical devices) and Gerber Scientific (devices for manufacturing lenses). (Marks dep., pp. 191-192; Helkov dep., pp. 84-85). These factors weigh in favor of a finding of likelihood of confusion. Opp. No. 91196931 18 SOPHISTICATION OF PURCHASERS Applicant contends that the services are bought by sophisticated purchasers, as evidenced by the nature and cost of its services, and expertise of its clientele. First, applicant did not introduce probative evidence to support its proposition. Second, even assuming arguendo that a careful selection is involved, it is settled that even sophisticated purchasers are not immune from source confusion, especially in cases such as the instant one involving similar marks and related services. See In re Research Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986), citing 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.”). See also In re Decombe, 9 USPQ2d 1812 (TTAB 1988). We find that the similarity between the marks and the close relationship between the services sold thereunder outweigh any presumed sophisticated purchasing decision. See HRL Associates, Inc. v. Weiss Associates, Inc., 12 USPQ2d 1819 (TTAB 1989), aff’d, Weiss Associates, Inc. v. HRL Associates, Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990) (similarities of goods and marks outweigh sophisticated purchasers, careful purchasing decision, and expensive goods). This factor is neutral. Opp. No. 91196931 19 ACTUAL CONFUSION Opposer offered no evidence of any actual confusion and, in fact, the parties are not aware of any actual confusion between the marks, despite approximately six years of contemporaneous use. Although we have carefully considered this factor in the context of the parties’ contemporaneous use of their respective marks, the absence of evidence of actual confusion is not dispositive in this case. The record is devoid of evidence to establish that the parties’ use of their respective marks has been at such a level that there have been meaningful opportunities for actual confusion to have occurred among purchasers. Nike Inc. v. WNBA Enters. LLC, 85 USPQ2d 1187, 1202 (TTAB 2007). Thus, we are unable to effectively gauge this factor. A showing of actual confusion would of course be highly probative, if not conclusive, of a likelihood of confusion. The opposite is not true, however. The lack of evidence of actual confusion carries little weight. J.C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960, 144 USPQ 435, 438 (CCPA 1965). In short, proof of actual confusion is not necessary to establish likelihood of confusion. Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 396 (Fed. Cir. 1983). Accordingly, the eighth du Pont factor of the length of time during and conditions under which there has been Opp. No. 91196931 20 contemporaneous use without evidence of actual confusion is considered neutral. CONCLUSION We find that the du Pont factors, on balance, weigh in favor of a finding of likelihood of confusion. The similarities between the marks and the services sold thereunder, and the presumed overlap in trade channels, purchasers and conditions of sale, cumulatively outweigh any differences between the marks and services. We conclude, based on the preponderance of the evidence, that purchasers familiar with opposer’s wide variety of computer software and telecommunications-related services rendered under the mark ORANGE would be likely to mistakenly believe, upon encountering applicant’s mark NET.ORANGE for “providing on-line non-downloadable software for use in planning courses for treatments for patients, for use in medical billing, medical file and document management, medical office management, medical cost management, medical communication management, and medical supply chain management in the field of healthcare only for use by pharmacies, hospitals, medical companies and medical clinics”, that the services originated with or are somehow associated with or sponsored by the same entity. Lastly, “there is a heavy burden on the newcomer to avoid consumer confusion as to products and their source.” Opp. No. 91196931 21 Bridgestone Americas Tire Operations, LLC v. Federal Corp., 102 USPQ2d at 1065.5 To the extent that any of the points argued by applicant raises a doubt about our finding of a likelihood of confusion, we resolve that doubt, as we must, in favor of opposer as the prior user and registrant. See Giant Food, Inc. v. Nation’s Foodservice, Inc., 218 USPQ at 395; and Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1707 (Fed. Cir. 1992). DECISION The opposition grounded on likelihood of confusion is sustained; and registration to applicant is refused. 5 So as to be clear, however, we do not find, contrary to opposer’s argument, any bad faith adoption by applicant. Copy with citationCopy as parenthetical citation