Software AGv.ABAS, Inc.

Trademark Trial and Appeal Board

Aug 12, 1997

OPP (T.T.A.B. Aug. 12, 1997)

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB 12 AUG 97
Paper No. 61
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Software AG
v.
A-BAS, Inc.
_____
Opposition No. 90,118
to application Serial No. 74/199,983
filed on September 3, 1991
_____
Nelson Blitz of Odin, Feldman & Pittleman for Software AG.
John Blanchard, President of A-BAS, Inc., for applicant.
______
Before Sams, Cissel and Seeherman, Administrative Trademark
Judges.
Opinion by Cissel, Administrative Trademark Judge:
Applicant, a corporation organized and existing under
the laws of Virginia, applied to register the mark "A-BAS"
on the Principal Register for "computer software for use by
accountants." The application was based on applicant's
claim that it possessed a bona fide intention to use the
mark in commerce.
Following publication of the mark in accordance with
Section 12(a) of the Lanham Act, on December 9, 1992, a
Opposition No. 90,118
2
timely notice of opposition was filed by Software AG, a
corporation of the Federal Republic of Germany, hereinafter
referred to as "SAG." As grounds for opposition, opposer
alleged prior use (through its related company, Software AG
of North America, hereinafter "SAGNA") and registration1 of
the mark "ADABAS" for computer programs; that opposer owns a
well known family of trademarks, including "ADABAS," "ADABAS
DL/I BRIDGE," "ADABAS FASTPATH," "ADABAS TEXT RETRIEVAL,"
"ADABAS TPF," "ADABAS HPE," "ADABAS TFP/GCS," and "ADABAS
HPE/GCS"; and that applicant's proposed mark, if used in
connection with the goods set forth in the application,
would so resemble opposer's marks that confusion would be
likely. Additionally, opposer pleaded that at the time the
application was filed, applicant lacked the bona fide
intention to use the mark in commerce in connection with the
specified goods.
In answer to the notice of opposition, applicant denied
that confusion would be likely and denied that it lacked the
bona fide intention to use the mark when the application to
register it was filed. Additionally, applicant charged that
opposer should not be allowed to prevail in this proceeding
because opposer has unclean hands.

1Reg. No. 1,523,251 issued to opposer on February 7, 1989, but
was cancelled under Section 8 of the Act on August 14, 1995,
well after the close of the testimony period for opposer.
Opposition No. 90,118
3
A trial was conducted in accordance with the Trademark
Rules of Practice. Both parties filed briefs,2 but no oral
hearing was requested.
The record in this proceeding includes the following:
the application file of the opposed application,
automatically of record pursuant to Trademark Rule
2.122(b)(1); the testimonial deposition, with exhibits, of
Michael Schiff, the director of the data management program
for SAGNA; the testimonial deposition, with exhibits, of
applicant's president, John Blanchard; opposer's pleaded
registration and a number of copies of published articles
about opposer's "ADABAS" product, all of record by means of
opposer's notices of reliance; and the affidavit of Nelson
Blitz, counsel for opposer, of record by stipulation of the
parties.
Although the testimony period for applicant, originally
set to close on November 11, 1993, was twice extended, first
to May 20, 1995 and then to September 10, 1996, applicant
never did properly make of record any evidence or testimony.
Applicant did submit with its brief two "exhibits" which it
argues should be included in the record, but opposer has
objected to the Board's consideration of these materials.

2Applicant filed an addendum to its brief on January 27, 1997,
to which opposer has objected. Trademark Rule 2.128 allows the
defendant thirty days from the date on which plaintiff's brief
is filed in which to file its own brief. Opposer's brief was
filed on December 24, 1996, but applicant's brief was not filed
within thirty days of that date, so it was not timely filed.
Opposer's objection to it is accordingly sustained. We have not
considered the addendum or the attachments to it.
Opposition No. 90,118
4
The brief, although filed ahead of the time scheduled for
its submission, was accepted by the Board, but ruling on
opposer's objections to the attached evidence was deferred
until now.
Opposer's objection is sustained. Part of applicant's
problems in this proceeding may stem from the fact that it
was not represented by an attorney. Instead, Mr. Blanchard,
who is the president and sole employee of applicant,
represented his corporation. Despite repeatedly being
advised of the need to comply with the Trademark Rules of
Practice throughout the pendency of this proceeding, he did
not follow any of the procedures established by the rules to
get these materials into the record in this case. Applicant
argues that Exhibit 1 was submitted into evidence with a
proper notice of reliance on April 24, 1995, and that
Exhibit 2 was "presented" to opposer during applicant's
testimony period without objection from opposer. The file
for this proceeding contains no record of an April 24, 1995
notice of reliance or its service on opposer, however, and
the mere presentation of applicant's materials to opposer,
even if done during applicant's testimony period, does not
make them of record. Additionally, submitting these
materials to the Board for the first time with applicant's
brief was manifestly untimely. The record was closed with
the conclusion of the testimony periods.
In summary on this point, we agree with opposer that
applicant failed to comply with the Trademark Rules of
Opposition No. 90,118
5
Practice in its attempts to introduce testimony or evidence
into the record in this proceeding. We therefore have not
considered applicant's submissions with its brief.
There is absolutely no evidence in support of the
equitable defense pleaded by applicant, so the charge that
opposer has unclean hands has not been established. As
opposer points out, even if applicant had shown by competent
evidence or testimony that opposer itself or its related
company seeks to use and register the mark "A-BAS" for
computer software, this would not establish that opposer is
barred in the instant proceeding by the equitable doctrine
of unclean hands, because opposer and its related company
have every right to adopt and try to register such a mark,
even though it is similar to the "ADABAS" mark opposer
already owns and uses. Applicant provides neither logical
nor evidentiary support for its claim.
The evidence and testimony presented by opposer, on the
other hand, shows that opposer is entitled to judgment in
its favor on at least the claim it pleaded under Section
2(d) of the Act. Accordingly, we need not reach a
conclusion as to whether applicant had a bona fide intention
to use the mark when the application was filed.
In considering the claim based on priority and
likelihood of confusion first, we find that even though
opposer's pleaded registration of "ADABAS" for "computer
programs" has been cancelled for failure to file the
required affidavit under Section 8 of the Act, opposer has
Opposition No. 90,118
6
proved its prior use of the mark on computer programs for
managing finances by means of the testimony and exhibits of
Mr. Schiff. Long before applicant filed its application
based on the assertion that it intended to use its mark,
opposer had used its mark on products which are essentially
the same as the goods set forth in the opposed application.
The testimony of Mr. Schiff and Exhibit 20 to it, for
example, establish that in July of 1973 opposer contracted
with Massachusetts Mutual Life Insurance Company for the
provision of the ADABAS financial management database
management system software.
Applicant's goods are the same as some of the products
on which opposer has used its mark. The record shows that
some of opposer's computer programs are in fact used for
accounting purposes, just like the goods specified in the
opposed application would be.
In view of opposer's prior use and the overlap of the
goods on which opposer has used its mark with the goods set
forth in the application, the only remaining question with
respect to the issue of the likelihood of confusion under
Section 2(d) of the Act is whether, as used on similar
computer software, applicant's mark, "A-BAS," so resembles
opposer's mark, "ADABAS," that confusion is likely. Based
on this record and the applicable legal precedents, we hold
that it does.
In comparing the marks, we have considered the
similarity of the marks in their entireties as to
Opposition No. 90,118
7
appearance, sound, and commercial impression, as well as the
fame of the prior mark.
Opposer pleaded ownership of a well known family of
marks based on its "ADABAS" mark, but this was not
established by evidence or testimony. Mr. Schiff mentioned
products sold under two other marks, "ADABAS STAR" and
"ADABAS FASTBACK," (p.38 of his testimony), and the price
list for opposer's products for 1993, (exhibit 16), shows a
number of products identified with marks combining "ADABAS"
with other words and/or numbers, but there is neither
evidence nor testimony that these marks are used and
promoted as a family, so opposer's claim of a family of
marks is not a basis for our decision. U.S. Plywood-
Champion Papers Inc. v. Novagard Corporation, 179 USPQ 561
(TTAB 1973).
There is testimony and evidence that applicant's
"ADABAS" mark has been in widespread use for a long time,
however, and that it is very well known in the computer
field. Even Mr. Blanchard acknowledged that he was aware of
opposer's mark. In fact, he testified that it is "a well
established and well respected name in the software
industry." (p. 8 of his testimony). Further, he claimed
that he added the hyphen to his mark in order to avoid any
confusion with opposer's mark.
In our opinion, he did not achieve his objective. When
we consider the marks in their entireties, especially in
light of the well known stature of opposer's mark, they are
Opposition No. 90,118
8
similar. They create similar commercial impressions because
of similarities in their appearances and their
pronunciations. Applicant's mark is essentially opposer's
mark with a hyphen in place of the two letters "D" and "A."
We do not necessarily adopt opposer's argument that the
hyphen in applicant's mark would be understood as a symbol
for the place where these two letters have been omitted.
While we acknowledge that these two marks are not identical,
we find nonetheless that their similarities in appearance
and pronunciation result in their creating similar
commercial impressions in connection with these software
products.
In view of this fact and the aforementioned identity of
the goods and opposer's priority, opposer is entitled to
judgment in its favor on the claim under Section 2(d) of the
Act. Any doubt on this issue would necessarily be resolved
in favor of opposer as the prior user. In re Hyper Shoppes
(Ohio), 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988). As
noted above, because opposer is entitled to judgment on this
basis, resolution of the pleaded issue that applicant did
not intend to use the mark at the time the application was
executed is not necessary.
Opposition No. 90,118
9
Accordingly, the opposition is sustained and
registration to applicant is refused.
J. D. Sams
R. F. Cissel
E. J. Seeherman
Administrative Trademark Judges,
Trademark Trial & Appeal Board