Phoenix Software Internationalv.Board of Regents of the University of Wisconsin System

Trademark Trial and Appeal Board

Sep 26, 2007

No. 92042881 (T.T.A.B. Sep. 26, 2007)

Mailed:
26 September 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Phoenix Software International
v.
Board of Regents of the University of Wisconsin System
_____

Cancellation No. 92042881

_____

Rachel Blue of Doerner, Saunders, Daniel & Anderson, L.L.P.
for Phoenix Software International.

Benjamin Griffiths, Esq. of the University of Wisconsin-
Madison for the Board of Regents of the University of
Wisconsin System.
______

Before Quinn, Walters, and Drost, Administrative Trademark
Judges.

Opinion by Drost, Administrative Trademark Judge:

On March 13, 2001, Registration No. 2,434,630 for the
mark CONDOR in typed or standard character form issued to
the Board of Regents of the University of Wisconsin System
(respondent) for goods identified as:
computer network operating system software,
downloadable from a global computer network, that
delivers large amounts of computational power by
utilizing idle computing resources in a network of
individual computer workstations in class 9.

THIS OPINION IS NOT
A PRECEDENT OF THE
TTAB
Cancellation No. 92042881
2
The underlying application was filed on March 29, 1999, and
it claims a date of first use anywhere of February 1, 1988,
and in commerce of June 1, 1988. The application was
published for opposition on December 19, 2000.
On January 6, 2004, Phoenix Software International
(petitioner) filed a petition to cancel respondent’s
registration on the ground that it had “adopted and
continually used the mark CONDOR since at least as early as
June of 1978 in connection with computer software for online
programming development, library management, systems
utilities functioning on mainframe systems in Class 9.”1
Petition to cancel at 1. Petitioner claimed ownership of
Registration No. 2,028,364, which issued January 7, 1997,
and it is based on an application filed on July 26, 1995,
alleging dates of use of June 1, 1978 (anywhere) and October
18, 1979 (in commerce). The mark in the drawing is
displayed in typed or standard character form. Petitioner
alleged that if “the Registrant is permitted to retain the
registration sought to cancelled… confusion in trade is
likely to result. Petition to cancel, ¶ 3.
Respondent denied the salient allegations of the
petition to cancel. In addition, respondent pled “in the

1 The goods in petitioner’s registration are identified as:
“computer software for on-line programming development, library
management and system utilities functioning on mainframe systems”
in class 9.
Cancellation No. 92042881
3
alternative the affirmative defenses of laches, estoppel,
and/or acquiescence. It is inequitable to grant
Petitioner’s petition considering the significant amount of
time that elapsed between the date on which Registrant’s
mark was published for opposition and the date on which
Petitioner notified Registrant that it believed Registrant’s
goods infringed upon Petitioner’s mark.” Answer at 3.2
The Record
The record consists of the following items: the file
of the involved registration; the trial testimony
depositions with exhibits of petitioner’s sole shareholder,
Fred Hoschett, and its controller, Nicholas Miller, and
respondent’s University of Wisconsin witnesses, Miron Livny,
Todd Tannenbaum, and Clark Jones, as well as respondent’s
notice of reliance on petitioner’s responses to respondent’s
request for admissions and interrogatories, and petitioner’s
notice of reliance on status and title copies of its
registration and respondent’s.
Evidentiary Objections
Respondent has objected “to Petitioner’s citation to
‘Petitioner’s Response to Registrant’s Request for
Admissions Nos. 18-24, attached as Exhibit E.’ Petitioner
did not properly introduce these admissions according to 37
C.F.R. § 2.120(j)(5). Since Petitioner did not file a

2 Petitioner has not filed a reply brief in this case.
Cancellation No. 92042881
4
notice of reliance for these admissions, these admissions
were not made part of the record.” Brief at 5 (citation to
record omitted). Petitioner has not responded to this
objection. However, we note that the pages attached to
petitioner’s brief appear to correspond to papers attached
to respondent’s notice of reliance dated July 20, 2006.
While respondent’s notice of reliance indicated that it was
submitting Petitioner’s Responses to Registrant’s First Set
of Request for Admissions Nos. 6, 7, 8, 9, 11, 17, 26, 27,
31 and 37, it actually attached responses to requests Nos.
1–44. Inasmuch as respondent has submitted these admissions
in its notice of reliance, they are of record and we will
not sustain respondent’s objection.
We will also not sustain respondent’s objection based
on lack of foundation to petitioner’s cross-examination of
respondent’s witness. Respondent introduced internet search
results during its direct examination of its witness
(Exhibit 16). Petitioner simply asked respondent’s witness
about the witness’s understanding regarding the Wikipedia
entry that was one of the entries in the exhibit that
respondent had introduced earlier.
Preliminary Matters
We begin by addressing whether petitioner has standing
and whether it has shown a valid ground for cancellation.
Young v. AGB Corp., 152 F.3d 1377, 47 USPQ2d 1752, 1754
Cancellation No. 92042881
5
(Fed. Cir. 1998) (“Section 14 has been interpreted
as requiring a cancellation petitioner to show (1) that it
possesses standing to challenge the continued presence on
the register of the subject registration and (2) that there
is a valid ground why the registrant is not entitled
under law to maintain the registration”) (internal quotation
marks omitted). In this case, petitioner has submitted
evidence of its ownership of a prior registration for the
identical term for computer software. It has also alleged a
likelihood of confusion between its mark and respondent’s
mark that is also registered for computer software.
Therefore, petitioner has standing and it has shown that it
has a valid ground for cancellation.
Priority
Next, we must determine whether petitioner or
respondent has priority. In a cancellation, petitioner does
not necessarily have priority simply because it owns a
registration. Brewski Beer Co. v. Brewski Brothers, Inc.,
47 USPQ2d 1281, 1284 (TTAB 1998) (The “Board has taken the
position, in essence, that the registrations of each party
offset each other; that petitioner as a plaintiff, must, in
the first instance, establish prior rights in the same
or similar mark … Of course, petitioner or respondent may
rely on its registration for the limited purpose of proving
that its mark was in use as of the application filing
Cancellation No. 92042881
6
date”). In this case, petitioner’s application for its
registration was filed on July 26, 1995. Respondent has
alleged that it has been distributing and licensing its mark
CONDOR for its software continuously since 1988. Livny dep.
at 25. However, petitioner has submitted evidence that it
has been using its CONDOR mark for its software in commerce
since at least 1979. See Hoschett dep. at 25. See also
Hoschett dep. at 14 (Condor dep. at 14 (“Condor is the
flagship or at least was the flagship of this company… I
have customers that have been using the product since 1979
and they are still using it today”); Miller dep. at 20 (“I
would say the CONDOR mark is probably at this state and
municipality level… [s]ince 1978 … I believe the City of
Glendale was one of our first customers”) and Miller Ex. 3,
letter without enclosures to Robert C. Garber dated July 15,
1981 (“Enclosed are copies of our first contract and
associated invoice for the sale of the CONDOR system”).
Even “oral testimony, if sufficiently probative, is normally
satisfactory to establish priority of use in a trademark
proceeding.” Powermatics, Inc. v. Globe Roofing Products
Co., 341 F.2d 127, 144 USPQ 430, 432 (CCPA 1965) (emphasis
added) However, such testimony should “not be
characterized by contradictions, inconsistencies and
indefiniteness but should carry with it conviction of its
accuracy and applicability.” B.R. Baker Co. v. Lebow Bros.,
Cancellation No. 92042881
7
150 F.2d 580, 66 USPQ 232, 236 (CCPA 1945). We find that
the evidence is sufficiently probative to establish
petitioner’s priority, which would date to at least 1979.
Background
Next, we look at petitioner’s attempt to cancel
respondent’s registration for the mark CONDOR. Both parties
use the same mark CONDOR on different types of software.
The key issues in this case are whether there is a
likelihood of confusion when the marks are used on these
goods and whether petitioner’s delay in bringing this
proceeding has resulted in laches that prevents it from
canceling respondent’s mark.
Likelihood of Confusion
We begin by addressing the issue of whether there is a
likelihood of confusion. The Federal Circuit precedent sets
out thirteen factors to consider in these types of cases.
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973); Recot, Inc. v. Becton, 214 F.3d
1322, 54 USPQ2d 1894, 1896 (Fed. Cir. 2000); and Cunningham
v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844
(Fed. Cir. 2000).
The first factor we normally consider is a comparison
of the marks. In this case, both marks are for the
identical term CONDOR. Both marks are registered as typed
or standard character marks. Therefore, there are no
Cancellation No. 92042881
8
differences between the marks. This factor would support
petitioner’s argument that there is a likelihood of
confusion.
The next factor is whether the goods of the parties are
related. It is important to remember that in this
proceeding we must consider the goods as they are described
in the identifications of goods in the registrations.
Octocom Systems, Inc. v. Houston Computers Services Inc.,
918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The
authority is legion that the question of registrability of
an applicant’s mark must be decided on the basis of the
identification of goods set forth in the application
regardless of what the record may reveal as to the
particular nature of an applicant’s goods, the particular
channels of trade or the class of purchasers to which the
sales of goods are directed”). See also Paula Payne
Products v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ
76, 77 (CCPA 1973) (“Trademark cases involving the issue of
likelihood of confusion must be decided on the basis of the
respective descriptions of goods”) and Cunningham, 55 USPQ2d
at 1846 (“Accordingly, the identification of goods/services
statement in the registration, not the goods/services
actually used by the registrant, frames the issue”).
In this case, the parties have spent considerable
efforts describing their goods and how the goods are
Cancellation No. 92042881
9
marketed. To the extent that these facts provide some
information about the market and purchasers of these goods,
we have considered this information. However, we have not
read limitations into the identified goods.
In addition, it “is not necessary that the goods and/or
services be similar or competitive, or even that they move
in the same channels of trade to support a holding of
likelihood of confusion.” Hilson Research Inc. v. Society
for Human Resource Management, 27 USPQ2d 1423, 1432 (TTAB
1993).
[It] has often been said that goods or services need
not be identical or even competitive in order to
support a finding of likelihood of confusion. Rather,
it is enough that goods or services are related in some
manner or that circumstances surrounding their
marketing are such that they would be likely to be seen
by the same persons under circumstances which could
give rise, because of the marks used thereon, to a
mistaken belief that they originate from or are in some
way associated with the same producer or that there is
an association between the producers of each parties'
goods or services.

In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991). See
also Time Warner Entertainment Co. v. Jones, 65 USPQ2d 1650,
1661 (TTAB 2002).
We start by noting that there is certainly no per se
rule that all computer products or even all computer
software are related. In re Quadram Corporation, 228 USPQ
863, 865 (TTAB 1985) (“[W]e think that a per se rule
relating to source confusion vis-a-vis computer hardware
and software is simply too rigid and restrictive an approach
Cancellation No. 92042881
10
and fails to consider the realities of the marketplace”).
See also Information Resources Inc. v. X*Press Information
Services, 6 USPQ2d 1034, 1038 (TTAB 1988).
Here, the goods are identified as different types of
computer software.
Respondent:
computer network operating system software,
downloadable from a global computer network, that
delivers large amounts of computational power by
utilizing idle computing resources in a network of
individual computer workstations

Petitioner:
computer software for on-line programming development,
library management and system utilities functioning on
mainframe systems

Respondent’s goods involve using individual
workstations in a network to better utilize idle computing
resources. Petitioner’s software functions on a mainframe
system and it provides online programming development,
library management, and systems development. While we do
not read limitations into the identification of goods, we
must consider those terms that do appear in the
identification of goods. One of the differences between the
software is the fact that petitioner’s software functions on
“mainframe systems” while respondent’s goods are used in
connection with a “network of individual computer
workstations.” Respondent’s witness (its mainframe
coordinator), when asked: “would an organization that did
not have a mainframe or is not involved in developing
Cancellation No. 92042881
11
software application[s] for mainframe computers have any use
for Phoenix’s Condor?”, responded “Not that I can tell.”
Jones dep. at 12. See also Livny dep. at 40 (Respondent’s
software creator stated that “none of the Condor users that
came back to us and asked us any question told us that it’s
installed on a mainframe”).
Petitioner, on the other hand, maintains that these
goods are very similar and used in the same environments.
Hoschett dep. at 52 (“So effectively we can run our
software, unchanged, unaltered on a workstation, on
someone’s desktop, as if it were on a mainframe”). The
witness further stated:
Q. Mr. Hoschett, platforms that PSI’s Condor software
can operate on, would that include a network of
workstations?

A. Yes, often happens.

Q. What is a network of workstations, as you understand
that term?

A. Loosely defined it would be a LAN, WAN or some other
network that allows the interconnection of these
workstations.

Q. PSI’s Condor software, again, does operate in that
environment?

A. Yes.

Hoschett dep. at 52-53. See also Hoschett dep. at 111 (“I
have many customers that use Condor that do not have
mainframes”).
Cancellation No. 92042881
12
Mr. Hoschett also read a description of respondent’s
software from respondent’s website:
A. “Condor is a specialized workload management system
for computer-intensive jobs. Like other full-featured
batch systems, Condor provides a job queuing mechanism,
scheduling policy, priority scheme, resource
monitoring, and resource management. Users submit
their serial and parallel jobs to Condor. Condor
places them into a queue, chooses when and where to run
the jobs based upon a policy, carefully monitors their
progress, and ultimately informs the user upon
completion.”

Q. Mr. Hoschett, does this language concern you?

A. Very much so.

Q. Would you explain why?

A. When I first read this document a year or two years
ago when it was presented to me, I remember it vividly,
it made an emotional impact on me. I was reading it in
my home. And I read the first paragraph, I saw the
logo up at the top, even the picture, and I thought
until I got about the second sentence of paragraph 2
that it was our product.

Hoschett dep. at 72-73.
Petitioner describes its goods as “a toolbox of
functionality to be used essentially by anyone who uses a
computer to assist them in doing their jobs, whether it be
programming software, submitted batch jobs and queueing
batch jobs, or managing the environment or managing the
resources.” Hoschett dep. at 19.
Despite this testimony, respondent (Brief at 21) argues
that:
Petitioner has not offered any evidence that these two
Condor programs bear any clear relationship based on
these common functions or that they could be
Cancellation No. 92042881
13
encountered by the same person in a manner or under
circumstances suggesting a common source. Accordingly,
Petitioner’s argument that the two programs are related
because they possess the same functions is conclusory
and merits no weight.

However, the question is not whether the products themselves
are different, as it is clear they are. The question is
whether they are sufficiently related that, if identified by
identical marks as is the case herein, confusion as to
source is likely. There is at least some evidence in the
record that the parties’ respective software performs the
same general functions and the evidence does not demonstrate
the goods are used in distinctly different fields. While,
as we discussed above, there is no rule that software is
necessarily related, if software is used in different
fields, it is less likely to be related because the same
customers are not likely to encounter both marks. See,
e.g., M2 Software Inc. v. M2 Communications Inc., 450 F.3d
1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (Federal Circuit
affirmed board’s determination that interactive multimedia
CD-ROMs in the fields of pharmacy and medicine was not
related to computer software featuring business management
applications for the film and music industries).
In this case, there is no clear division between the
parties’ software that would cause us to conclude that these
products are not related. Instead, the main difference
appears to be that petitioner’s goods are used in a
Cancellation No. 92042881
14
mainframe environment while respondent’s goods are used in a
network of individual computer workstations. The board has
held that the distinction between software used on large or
small computers is not necessarily significant. Personnel
Data Systems Inc. v. Parameter Driven Software Inc., 20
USPQ2d 1863, 1865 (TTAB 1991) (“We do not believe that the
likelihood of confusion would necessarily be precluded
simply because one party's programs may be intended for use
on one size computer and the other's programs may be used on
a different size computer”). See also Clark dep. at 66:
Q. Does it stand to reason then, sir, your experience
that software manufacturers, at least some software
manufacturers would have an incentive to get into this
area of operating in both environments?

A. There might be come incentive. It’s kind of costly
and it depends on the market size.

Respondent maintains (Brief at 26) that “whether
Petitioner’s software is running on a PC via a mainframe
emulator, or is running on a mainframe computer, is a
distinction without a difference. In either case, the
software is being used by mainframe programmers for
mainframe programming purposes.” However, to the extent
that petitioner’s and respondent’s software can both be used
on workstations (even if not the same workstations), it is
more likely that the same consumers would encounter these
products.
Cancellation No. 92042881
15
We add that while respondent’s goods are identified as
being “downloadable from a global computer network,” there
is nothing in petitioner’s identification of goods that
would distinguish the parties’ goods based on this fact.
Indeed, petitioner asserts that its software is actually
downloadable. Hoschett dep. at 23 (“Would that description
that we just read, ‘downloadable from a global computer
network,’ then apply just as well to PSI’s Condor software?
A. Yes”).
Other factors that we take into consideration are the
sophistication of the purchasers and the care with which
purchases are made. Purchasers of software for mainframe
systems and purchasers of software that delivers large
amounts of computational power by utilizing idle computing
resources in a network of individual computer workstations
would not be ordinary purchasers. These purchasers would
have some level of skill and sophistication to the extent
that they are programming mainframe computers or networking
computer workstations to increase computational resources.
It also is apparent that these purchases would be made with
some care. However, the fact that purchasers are careful
and sophisticated does not mean that confusion is not
likely. In re Total Quality Group Inc., 51 USPQ2d 1474,
1477 (TTAB 1999) (“[E]ven careful purchasers are not immune
from source confusion”). See also In re Hester Industries,
Cancellation No. 92042881
16
Inc., 231 USPQ 881, 883 (TTAB 1986) (“While we do not doubt
that these institutional purchasing agents are for the most
part sophisticated buyers, even sophisticated purchasers are
not immune from confusion as to source where, as here,
substantially identical marks are applied to related
products”). Here, even sophisticated purchasers who would
be exposed to advertising for applicant’s and registrant’s
software sold under the identical marks that could perform
similar functions are likely to believe that there is some
association or relationship between the sources of the
software.
We also add that there is no evidence of actual
confusion. Petitioner attempts to rebut respondent’s
contention that there is no actual confusion, but it merely
refers to (1) internet searches for “Condor Software” that
return hits for respondent’s software before petitioner’s
and (2) the online encyclopedia Wikipedia that has an entry
for respondent’s mark but not petitioner’s. This is hardly
evidence of actual confusion. The fact that the author of a
reference work chose to list only respondent’s software
under “Condor” does not establish that there is a likelihood
of confusion. Also, internet searches would be expected to
produce mixed results if the search consisted of a mark
common to both parties and the ubiquitous term “software.”
If this was evidence of confusion, it would establish that
Cancellation No. 92042881
17
there was a per se rule that all software was related. This
is a point, as we indicated earlier, the board has along ago
repudiated. See also M2 Software, 78 USPQ2d at 1948
(“Although both parties operate websites, that fact, without
more, is insufficient to overcome the vast weight of
evidence establishing that no overlap exists”).
Respondent, on the other hand, argues that “the absence
of evidence of actual confusion in this case weighs heavily
in the University of Wisconsin’s favor.” Brief at 40. We
disagree. The absence of actual confusion does not mean
there is no likelihood of confusion. Giant Food, Inc. v.
Nation's Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 396
(Fed. Cir. 1983). Even evidence of a long period of
simultaneous use without actual confusion is not necessarily
persuasive to conclude that there is no likelihood of
confusion. Tiffany and Co. v. National Gypsum Co., 459 F.2d
527, 173 USPQ 793, 794-95 (CCPA 1972) (The “board relied on
the lack of evidence of actual confusion during some
nineteen years of contemporaneous use. However, the record
shows that both appellant and appellee have been expanding
their operations under the mark over the years. Thus the
probability of confusion stemming from continued
simultaneous use is likely to increase, not decrease, in
years to come, and Tiffany & Co., as the prior user of the
mark, is entitled to continue using it as it expands and to
Cancellation No. 92042881
18
be protected from the ever-increasing probability that
actual confusion will arise”). Here, the parties current
marketing practices are relatively limited. Tannebaum dep.
at 10 (“We don’t do any advertising with Condor”) and Miller
dep. at 19 (Petitioner’s witness estimated it spent
approximately $65,000, which consisted of attending trade
shows, and printing brochures and marketing materials).
Particularly in a case like this, when neither party has
conducted a large scale, public marketing campaign where
potential purchasers are likely to have been exposed to both
marks, the lack of evidence of actual confusion is not as
significant. We cannot assume that both parties will
continue to operate in such a limited manner. Indeed,
respondent itself reports that it has been expanding its
operations and thus making the chances of confusion
occurring more likely. See Brief at 48-49 discussing
respondent’s expansion.
Finally, in a cancellation proceeding, we note that “a
presumption of validity attaches to a service mark
registration, and the party seeking cancellation must rebut
this presumption by a preponderance of the evidence.” West
Florida Seafood Inc. v. Jet Restaurants Inc., 31 F.3d 1122,
31 USPQ 1660, 1662 (Fed. Cir. 1994). See also Cerveceria
Centroamericana S.A. v. Cerveceria India Inc., 892 F.2d
1021, 13 USPQ2d 1307, 1309 (Fed. Cir. 1989) ("[I]n a
Cancellation No. 92042881
19
[trademark registration] cancellation for abandonment, as
for any other ground, the petitioner bears the burden of
proof. Moreover, the petitioner's burden is to establish
the case for cancellation by a preponderance of the
evidence"). We hold that petitioner has met its burden.
Here, the marks are identical in every aspect. In such
cases, “even when goods or services are not competitive or
intrinsically related, the use of identical marks can lead
to an assumption that there is a common source.” In re
Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1689 (Fed.
Cir. 1993). See also Amcor, Inc. v. Amcor Industries, Inc.,
210 USPQ 70, 78 (TTAB 1981) (When both parties are using
identical marks, “the relationship between the goods on
which the parties use their marks need not be as great or as
close as in the situation where the marks are not identical
or strikingly similar”). In addition, the parties’ software
performs similar functions and, therefore, we cannot find
that they are used in unrelated fields. Even sophisticated
purchasers would likely believe that there is some
relationship or association between the sources of the goods
under these circumstances. Based on the record, we conclude
that there is a likelihood of confusion in this case.
Laches
Lastly, respondent argues (Brief at 47) that:
Petitioner had constructive notice of the University of
Wisconsin’s registration as of the date of the
Cancellation No. 92042881
20
registration … However, Petitioner did not assert its
rights against the University of Wisconsin until filing
this cancellation proceeding in January 6, 2004. The
length of Petitioner’s delay was over 1000 days or 34
months. Petitioner’s unexplained inaction constitutes
undue delay.

“To prevail on its affirmative defense [laches],
Bridgestone was required to establish that there was undue
or unreasonable delay by the Automobile Club in asserting
its rights, and prejudice to Bridgestone resulting from the
delay.” Bridgestone/Firestone Research Inc. v. Automobile
Club de l’Ouest de la France, 245 F.3d 1359, 58 USPQ2d 1460,
1462 (Fed. Cir. 2001). Furthermore, a “petitioner must be
shown to have had actual knowledge or constructive notice of
a registrant's trademark use to establish a date of notice
from which a delay of laches can be measured.” Teledyne
Technologies Inc. v. Western Skyways Inc., 78 USPQ2d 1203,
1209 (TTAB 2006), aff’d, slip op., 2006 WL 3513774 (Fed.
Cir. Dec. 6, 2006)). In this case, there is no evidence
that petitioner had actual knowledge of respondent’s use of
its mark at the time the mark was published for opposition
so we measure the period of delay as of the issuance of the
registration, March 13, 2001, a period of almost 34 months.3
Id. at 1210.

3 It is unclear when petitioner had actual knowledge of
respondent’s use of the mark CONDOR. Mr. Hoschett testified (p.
31) on April 19, 2006, that he “personally became aware when one
of my staff advised me that there was a trademark issue. Q. When
was that” A. A year or two ago.” However, the petition to
cancel was filed on January 6, 2004. Petitioner’s other witness
Cancellation No. 92042881
21
On its face, the facts of this case are somewhat
similar to the facts of the Teledyne case in which the
petitioner delayed approximately 44 months and it failed to
address the laches with specificity in its brief.
Petitioner is conspicuously silent regarding its
reasons for the delay. See J.T. McCarthy, McCarthy on
Trademarks and Unfair Competition, supra at §31:14
[“The trademark owner is usually expected to give some
reason for delay which appears to cause prejudice. It
is dangerous to simply stand mute and take the position
that there is no obligation to explain apparent
lethargy.”]. Rather than squarely addressing the
laches defense in either its main brief or reply brief,
petitioner merely takes the tack that laches does not
apply due to the inevitability of confusion.
Petitioner's complete silence on the reason for its
delay in taking action is very problematic for its
position. See Procter & Gamble Co. v. J.L. Prescott
Co., 102 F.2d 773, 40 USPQ 434, 442 (3d Cir. 1939),
cert. denied, 308 U.S. 557 (1939) [that delay was
unexplained “must weigh heavily in the balance against
it”].

Teledyne, 78 USPQ2d at 1211.
Respondent has also offered the following argument and
evidence (Brief at 48-49, citations to record omitted) to
show that it has been prejudiced by this delay:
The growth in annual downloads of the University of
Wisconsin’s software has significantly increased. In
2000, the year before it obtained its federal
registration in Condor, the University of Wisconsin
provided 3,738 downloads of its software. The number
of downloads increased to 15,155 in 2004, an increase
if over 400 percent. The University of Wisconsin has
also experienced a continuation and expansion of grant
funding, and a corresponding investment in the Condor
project, during delay period. Similarly, the
University of Wisconsin’s Condor project has

testified that: “I believe that was October of 2003” when he
first became aware of respondent’s use of the CONDOR mark.
Miller dep. at 11.
Cancellation No. 92042881
22
experienced significant growth in attendance to its
user conferences during Petitioner’s delay period. For
example, the first Condor week offered by the
University of Wisconsin attracted about 20 participants
and lasted one day. Since then, the Condor week has
grown into a four day event attracting more than 150
participants.

More generally, respondent’s software has been
distributed without charge for many years and it has been
incorporated into the computer systems of many users.
Ultimately, we must conclude that there is no laches in
this case. First, we note that the period of delay is only
34 months. See, e.g., Plymouth Cordage Co. v. Solar
Nitrogen Chemicals, Inc., 152 USPQ 202, 204 (TTAB 1966)
(Delay of “slightly less than a three year delay” held not
to be laches). Furthermore, while respondent refers to
petitioner’s “unexplained inaction” (Brief at 47),
petitioner’s witnesses have testified that petitioner was
not aware of respondent’s registration until shortly before
it filed the petition to cancel. Therefore, “petitioner can
only be chargeable with constructive notice.” Id. Compare
Teledyne, 78 USPQ2d at 1211 (“We find that petitioner's
delay of over three and one-half years, and the complete
absence of any reasonable excuse for its inaction,
constitutes undue delay prior to filing the petition for
cancellation”). Here, while petitioner has not offered an
explanation by way of an argument in its reply brief, its
witnesses’ testimony about not discovering respondent’s mark
Cancellation No. 92042881
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until shortly before it filed its petition to cancel would
explain why it did not act earlier. Also, because of the
relatively limited use of respondent’s mark, this lack of
actual knowledge is not surprising. Compare
Bridgestone/Firestone Research, 58 USPQ2d at 1463:
All of these events, including constructive notice,
widespread commercial use (knowledge of which is not
denied by the Automobile Club), and the passing of
twenty-seven years after registration, accompanied by
the absence of a reasonable excuse by the Automobile
Club for its inaction, require that the Automobile Club
be charged with undue delay in seeking cancellation of
Bridgestone's trademark registration.

Under the facts of this case, we hold that, even if
respondent has been prejudiced by petitioner’s delay,
respondent has not shown that laches prevents petitioner
from bringing this petition to cancel.
Decision: The petition to cancel is granted.