Software Development Solutions, Inc.v.Aircast Mobile, Inc.Download PDFTrademark Trial and Appeal BoardOct 30, 2013No. 92055910 (T.T.A.B. Oct. 30, 2013) Copy Citation CME Mailed: October 30, 2013 Cancellation No. 92055910 Software Development Solutions, Inc. v. Aircast Mobile, Inc. Before Bucher, Ritchie and Adlin, Administrative Trademark Judges By the Board: This case now comes up on petitioner’s motion to strike respondent’s affirmative defenses and its motion for summary judgment, both filed on June 14, 2013. Respondent opposes the motions. Background Petitioner has filed a petition for cancellation of respondent’s Registration No. 4138501 for the mark JAMCAST, in standard characters, for “Computer application software for mobile phones, namely, software for recording, streaming, distributing, and listening to music and live concerts.”1 In its petition for cancellation, petitioner 1 Registration No. 4138501, issued on May 8, 2012, from an application filed on September 7, 2011 and claiming first use UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board P.O. Box 1451 Alexandria, VA 22313-1451 THIS OPINION IS NOT A PRECEDENT OF THE TTAB Cancellation No. 92055910 2 pleads prior common law use and a later-filed trademark application for the mark JAMCAST for “Computer application software for electronic devices, namely, software for sending and receiving music, pictures and video across a computer network.”2 As grounds for cancellation, petitioner alleges that respondent’s mark is likely to cause confusion with petitioner’s previously-used pleaded mark pursuant to Trademark Act Section 2(d), 15 U.S.C. Section 1052(d). In its answer, respondent denies the salient allegations in the petition for cancellation and asserts eight “affirmative defenses,” a number of which are merely amplifications of respondent’s denials, namely: (1) failure to state a claim upon which relief may be granted; (2) estoppel, waiver and acquiescence; (3) laches; (4) that respondent’s involved mark is inherently distinctive; (5) that petitioner’s mark is not famous; (6) that respondent adopted the involved mark in good faith; (7) that petitioner does not have priority in the mark JAMCAST; and (8) that respondent “reserves its right to add, amend or withdraw its affirmative defenses.” Answer, ¶¶ 7-14. anywhere on January 1, 2011 and first use in commerce on August 19, 2011. 2 Filed on July 17, 2012, based on a claim of first use anywhere on June 11, 2006 and first use in commerce on March 27, 2010. Cancellation No. 92055910 3 Motion to Strike A motion to strike should be filed within 21 days of service of an answer upon a party. See Fed. R. Civ. P. 12(f); See also TBMP § 506.02 (3d ed. rev.2 2013). As respondent argues, petitioner’s motion to strike is untimely because it was filed more than nine months after respondent filed its answer to the petition for cancellation. Accordingly, petitioner’s motion to strike will be given no consideration. Motion for Summary Judgment The Parties’ Arguments Petitioner argues that its “open and notorious use of the JAMCAST mark since 2006” constitutes “use analogous to trademark use” and that this analogous use predates both the filing date of respondent’s involved registration and respondent’s claimed first use date of January 1, 2011. Motion for Summary Judgment, p. 5-7. Petitioner further argues that consumer confusion is inevitable because the parties’ marks are identical, the parties’ goods are “highly-related, if not identical,” and the parties’ trade channels are the same. Motion for Summary Judgment, pp. 7- 11. In support of its motion, petitioner has submitted an affidavit from its Chief Executive Officer, Scott Streaker Cancellation No. 92055910 4 (the “Streaker Affidavit”), stating that (i) petitioner “first used the mark JAMCAST anywhere, at least as early as June 11, 2006 and first used the JAMCAST mark in commerce at least as early as March 27, 2010,” id. at ¶ 5; (ii) “[b]eginning in 2010, and continuously since then, the non- beta version of the JAMCAST media software solution that enables consumers to effortlessly send digital audio from a specific source to a specific device has been available for purchase and download to the public,” id. at ¶ 4; and (iii) “[b]y January 1, 2011, the JAMCAST product had been downloaded over 48,000 times by more than 23,000 users and the numbers ballooned to over 106,000 downloads by over 60,000 users by the end of 2012,” id. at ¶ 6. In addition, petitioner has submitted two press releases from third- party websites,3 dated June 29, 2010, showing full and partial screen shots of petitioner’s software product bearing the JAMCAST mark and a March 27, 2010 blog entry from getjamcast.com/Blog/post/Stream-Jamcast-To-Your- iPhone.aspx showing the JAMCAST mark displayed on two mobile phone devices. Petitioner has also submitted excerpts from the discovery deposition of respondent’s chief executive officer, Michael Linhardt (the “Linhardt 3 “eHomeUpgrade.com” and “WeGotServed.com.” Cancellation No. 92055910 5 Deposition”),4 testifying that (i) respondent first used the JAMCAST mark on January 1, 2011, Linhardt Deposition, p. 34; (ii) he believes there “could be” confusion between the parties’ marks, id. at p. 62; and (iii) he would change his response to petitioner’s Request for Admission No. 20 to admit that “[r]egistrant’s mark is confusingly similar to [p]etitioner’s mark.” Id. at pp. 66-67. In opposition to the motion, respondent argues that petitioner does not have standing to bring the petition for cancellation. Specifically, respondent contends that petitioner cannot claim “present or future damage” because its pleaded application has been abandoned5 and petitioner “asserts growth in users” of its product. Summary Judgment Response, pp. 7-8. Respondent further “disputes the priority of use claimed by [petitioner]” arguing that press releases “do not meet the criteria for evidence of prior use” because they are advertising “and not acceptable for specimens of use on goods in commerce” and they do not demonstrate use “analogous to trademark use.” Id. at p. 4. Respondent 4 Neither party submitted pages from the Linhardt Deposition that reflect Mr. Linhardt’s title, but he signed the underlying application, which is automatically of record in this case, as respondent’s chief executive officer. 5 Petitioner’s application is in fact suspended, not abandoned. Cancellation No. 92055910 6 also relies on purported discrepancies between petitioner’s summary judgment evidence and its discovery responses to argue that petitioner’s first use in commerce of the JAMCAST mark “has not been confirmed.” Id. at pp. 1-2. With respect to likelihood of confusion, respondent concedes that the parties’ marks have “the same spelling,” but argues that it conducted a “search of trademarks and did not find any alleged mark of [petitioner].” Id. at p. 6 and Linhardt Deposition, pp. 10-11. Respondent also argues that petitioner’s “announcement of its UPnP compliant network audio server for Windows code named ‘JAMCAST’” and its claims of “public exposure [of the JAMCAST product] on or after 2010 … appear contrary to Interrogatory No. 13, to which petitioner responded “that it used the JAMCAST mark on its Jamcast Server (Beta) at least as early as June 11, 2006 … .” Response to Summary Judgment, p. 6 and Exhibit 1, p. 10. Lastly, respondent argues that any doubt regarding a likelihood of confusion should be resolved in its favor as registrant. See id. at pp. 5 and 7. Summary Judgment Standard Summary judgment is only appropriate where there are no genuine disputes as to any material facts, thus allowing the case to be resolved as a matter of law. Fed. R. Civ. Cancellation No. 92055910 7 P. 56(a). The party seeking summary judgment bears the burden of demonstrating the absence of any genuine dispute of material fact, and that it is entitled to judgment under the applicable law. See Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986); Sweats Fashions, Inc. v. Pannill Knitting Co. Inc., 833 F.2d 1560, 4 USPQ2d 1793, 1796 (Fed. Cir. 1987). A factual dispute is genuine if, on the evidence of record, a reasonable fact finder could resolve the matter in favor of the non-moving party. See Opryland USA Inc. v. Great Am. Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471, 1472 (Fed. Cir. 1992); Olde Tyme Foods, Inc. v. Roundy’s, Inc., 961 F.2d 200, 22 USPQ2d 1542, 1544 (Fed. Cir. 1992). Evidence on summary judgment must be viewed in a light most favorable to the non-movant, and all justifiable inferences are to be drawn in the non-movant’s favor. Lloyd’s Food Prods., Inc. v. Eli’s, Inc., 987 F.2d 766, 25 USPQ2d 2027, 2029 (Fed. Cir. 1993); Opryland USA, 23 USPQ2d at 1472. The Board may not resolve genuine disputes as to material facts; it may only ascertain whether genuine disputes as to material facts exist. See Lloyd’s Food Prods., 25 USPQ2d at 2029; Olde Tyme Foods, 22 USPQ2d at 1544. Evidentiary Issue As an initial matter, both parties submitted documents that they purportedly produced to one another during Cancellation No. 92055910 8 discovery. However, neither party submitted the corresponding document requests as required by Trademark Rule 2.127(e)(2), and as such, we have considered these documents only to the extent that they have been authenticated or comply with Board rules. Many of the produced documents are website printouts, which we have considered to the extent that they identify either their dates of publication or the dates they were accessed and printed, and their URL address.6 See Safer, Inc. v. OMS Investments, Inc., 94 USPQ2d 1031, 1039 (TTAB 2010); TBMP § 528.05(e). We hasten to add, however, that even if we had considered unauthenticated documents or those not submitted in compliance with Board rules, it would not change our decision herein. Standing and Priority There are no genuine disputes as to any material fact regarding petitioner’s standing, which is established by its common law rights in the JAMCAST mark for software for sending digital audio content, as discussed more fully below.7 Respondent’s erroneous assertion that petitioner 6 However, we have not considered pages from foreign websites as use outside the United States is not relevant to this proceeding, which concerns only registration of the JAMCAST mark in the United States. 7 In its petition to cancel, petitioner expressly alleged damage based on “confusion in the marketplace” as well as Cancellation No. 92055910 9 has abandoned its pleaded application, even if true, would not change this conclusion, as standing may be established based solely on common law rights in a mark, as petitioner has established here. See Giersch v. Scripps Networks Inc., 90 USPQ2d 1020, 1022 (TTAB 2009) (standing established by a showing of common law rights); Green Spot (Thailand) Ltd. v. Vitasoy International Holdings Ltd., 86 USPQ2d 1283, 1285 (TTAB 2008) (prior use ...); Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d 1100, 1106 (TTAB 2007) (prior use ...). Respondent’s arguments notwithstanding, “there is no requirement that actual damage be pleaded and proved” to establish standing and prevail in a cancellation action. TBMP § 309.03(b) and cases cited in footnote 6 therein. For petitioner to prevail on its claim of likelihood of confusion based on common law rights in the JAMCAST mark, “the mark must be distinctive, inherently or otherwise, and [petitioner] must show priority of use.” Wet Seal Inc. v. FD Management Inc., 82 USPQ2d 1629, 1634 (TTAB 2007) (citing Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40 (CCPA 1981)). Respondent has not raised any issue regarding the distinctiveness of respondent’s registration “preventing [p]etitioner’s [m]ark from being registered.” Petition for Cancellation, ¶ 4. Cancellation No. 92055910 10 the mark JAMCAST in its response to petitioner’s motion for summary judgment or in its answer to the petition for cancellation. In fact, in its answer, respondent maintains that its identical mark JAMCAST “is inherently distinctive.” Answer, Fourth Affirmative Defense, ¶ 10. Accordingly, and because there is no evidence that JAMCAST is merely descriptive or generic, we find that there are no genuine disputes of material fact regarding the distinctiveness of the JAMCAST mark, which is inherently distinctive. Upon careful consideration of all of the admissible evidence, we also find that there are no genuine disputes of material fact regarding petitioner’s priority in the JAMCAST mark. We need not consider whether petitioner has established use of the JAMCAST mark analogous to trademark use8 because the evidence of record, consisting of the Streaker Affidavit and website printouts of March 27, 2010 and June 29, 2010, is sufficient to establish petitioner’s prior and continuous use in commerce of the mark JAMCAST 8 “[A] party may establish priority in a proceeding based on ‘analogous use,’ i.e., any non-technical use of a mark which is sufficient to create in the mind of the relevant public an association between the goods and their source. Thus, even before proper trademark use commences, advertising or similar pre-sale activities may establish priority if they create the necessary association in the mind of the consumer.” Central Garden & Pet Company v. Doskocil Manufacturing Company, Inc., 108 USPQ2d 1134, 1142 (TTAB 2013) (internal citation omitted). Cancellation No. 92055910 11 since 2010 for software for sending digital audio content.9 Respondent did not submit any evidence or even attempt to argue that it commenced use of the JAMCAST mark prior to this date, and its constructive first use date of September 7, 2011 is after petitioner commenced use of its JAMCAST mark in commerce.10 Moreover, we find that the alleged discrepancies between petitioner’s summary judgment evidence and discovery responses do not create any genuine disputes of material fact regarding petitioner’s prior use in commerce of the JAMCAST mark.11 In fact, the evidence is consistent that petitioner used the mark JAMCAST before 9 To be clear, we do not conclude that the press releases themselves demonstrate petitioner’s use of the JAMCAST mark. Instead, we have considered the press releases for what they show on their face, namely, recognition of petitioner’s actual use of the JAMCAST mark on computer software, including software for mobile phones. This evidence sufficiently corroborates the Streaker Affidavit. 10 Respondent submitted evidence that its Google and domain name searches for the mark JAMCAST in early 2011 did not yield any results. However, there is no requirement that a party’s mark be discoverable by particular search engines or similar to registered domain names. Accordingly, this evidence is not sufficient to rebut petitioner’s evidence establishing its use of the JAMCAST mark as early as 2010. 11 The fact that petitioner indicated that it had no documents responsive to respondent’s Document Request No. 8 does not disprove that petitioner commenced use of its mark before respondent’s filing date. Document Request No. 8 sought documents in a specific format, namely, documents referring or relating “to the amount of sales (actual and/or projected) by calendar quarter of goods and/or services sold by or for [petitioner] using JAMCAST from 2006 to the present.” It is conceivable that petitioner does not keep records of sales by calendar quarter. Moreover, sales are not necessarily required to establish use in commerce. See 15 U.S.C. § 1127. Cancellation No. 92055910 12 respondent’s filing date, which is the earliest date upon which respondent may rely. See 15 USC § 1057(c); see also Larami Corp. v. Talk to Me Programs, Inc., 36 USPQ2d 1840 (TTAB 1995). Likelihood of Confusion “We determine likelihood of confusion by focusing on … whether the purchasing public would mistakenly assume that the [respondent’s] goods originate from the same source as, or are associated with,” petitioner’s goods. In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In considering the question on a motion for summary judgment, we analyze all probative facts in evidence which are relevant to the thirteen likelihood of confusion factors set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973), as well as whether there are genuine disputes as to any of these factors which would be material to a decision on the merits. In this case, the parties have introduced evidence concerning the similarities of the marks, goods, and trade channels, and respondent’s intent in adopting the JAMCAST mark. We turn first to the similarity of the marks. The involved registration is for the mark JAMCAST in standard characters, meaning that the mark is not limited to any Cancellation No. 92055910 13 specific form of display. Accordingly, the Board must assume that respondent’s mark could be displayed in the same style as petitioner’s mark. See In re RSI Systems LLC, 88 USPQ2d 1445, 1448 (TTAB 2008). For this reason, there is no genuine dispute of material fact that the parties’ marks are essentially identical. This factor weighs heavily in favor of a finding of likelihood of confusion. See Kohler, 82 USPQ2d at 1106; Hornblower & Weeks Inc. v. Hornblower & Weeks Inc., 60 USPQ2d 1733, 1735 (TTAB 2001). With respect to the similarity of the parties’ goods, we must compare the goods identified in the involved registration to those petitioner offers under its mark. Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002). Here, respondent has registered the mark JAMCAST for “Computer application software for mobile phones, namely, software for recording, streaming, distributing, and listening to music and live concerts” and petitioner has proven use of its mark for software that enables users to send digital audio content from a specific source to a specific device, including mobile phones. Therefore, we find that there is no genuine dispute of material fact that the parties’ goods are highly Cancellation No. 92055910 14 similar, and as such, this fact also weighs heavily in favor of a finding of likelihood of confusion. There also is no genuine dispute of material fact regarding the channels of trade for the parties’ goods or the classes of consumers. Where, as here, “there is no limitation on the channels of trade” in the identification in the involved registration, it is presumed that respondent’s goods move in all normal channels of trade for the goods. Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003) (“Given the in-part identical and in-part related nature of the parties’ goods, and the lack of any restrictions in the identification[] of [the involved registration as] to trade channels and purchasers,” the parties’ goods “could be offered and sold to the same classes of purchasers through the same channels of trade”); See also, e.g., Octocom Systems, Inc. v. Houston Computers Services, Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); Venture Out Properties LLC v. Wynn Resorts Holdings, LLC, 81 USPQ2d 1887, 1893 (TTAB 2007). Furthermore, even if we construed the words “for mobile phones,” “recording,” “streaming,” “distributing,” and “listening” in the involved registration as limitations on respondent’s channels of trade, petitioner’s evidence Cancellation No. 92055910 15 establishes that petitioner’s channels of trade include mobile phones and the distribution of audio content. In addition, while there is no evidence that respondent adopted the JAMCAST mark in bad faith, respondent’s apparent good faith does not create a genuine dispute of material fact regarding a likelihood of confusion between the parties’ marks, because respondent’s apparent good faith is easily outweighed by the similarity of the marks, goods and channels of trade.12 See Lebanon Seaboard Corp. v. R&R Turf Supply, Inc., 101 USPQ2d 1826, 1834 (TTAB 2012) (“Good faith adoption of a mark will not prevent a finding of likelihood of confusion.”); see also Mag Instrument Inc. v. Brinkmann Corp., 96 USPQ2d 1701, 1713 (TTAB 2010) (that defendant adopted its mark in good faith “does very little to obviate a finding of a likelihood of confusion because it is expected that [defendant] is acting in good faith.”) aff’d mem., No. 2011-1052, 2011 WL 5400095 (Fed. Cir. 2011). 12 Respondent also argues that the trademark examining attorney did not uncover petitioner’s common law use of the JAMCAST mark when he/she examined respondent’s underlying application. However, “[r]efusal [of a trademark application] on the basis of an unregistered mark … is not applied in ex parte examination because of the practical difficulties with which an examining attorney is faced in locating ‘previously used’ marks, and determining whether anyone has rights in them and whether they are ‘not abandoned.’” TMEP § 1207.03 (April 2013). Cancellation No. 92055910 16 Lastly, in its response to petitioner’s motion, respondent has not asserted, much less established, any of the affirmative defenses raised in its answer to the petition for cancellation. Accordingly, such defenses, to the extent they are viable affirmative defenses, are deemed waived.13 See Miller v. Miller, 105 USPQ2d 1615, 1616 n.3 (TTAB 2013); Baroness Small Estates Inc. v. American Wine Trade Inc., 104 USPQ2d 1224, 1225 n.2 (TTAB 2012). Conclusion Based on the record herein and the applicable law, we find that there are no genuine disputes as to any material 13 “Affirmative defenses” 4-7 are not proper affirmative defenses, but mere amplifications of respondent’s denials. Similarly, “affirmative defense” 8 merely paraphrases Fed. R. Civ. P. 15, and does not include any affirmative defense. To the extent that respondent may have attempted to argue acquiescence by asserting that it “has expanded its presence with the public,” Response, p. 7, it has not argued or submitted any evidence that petitioner affirmatively acted in a way that led respondent to reasonably believe that petitioner would not assert its rights in the JAMCAST mark against respondent, which is required to prove the defense of acquiescence. See CBS, Inc. v. Man’s Day Publishing Company, Inc., 205 USPQ 470, 473-474 (TTAB 1980) (to establish the defense of acquiescence a defendant must prove that the plaintiff's conduct amounted to “an assurance by the plaintiff to the defendant, either express or implied that the plaintiff will not assert his trademark rights against the defendant.”). Moreover, respondent’s assertion that petitioner’s delay in seeking registration of its mark for four and one half years, see Response, p. 7, does not support a claim for laches because laches arises out of a plaintiff’s failure to challenge a defendant’s application or registration, not a plaintiff’s delay in seeking to register its own mark. See National Cable Television Association, Inc. v. American Cinema Editors, Inc., 937 F.2d 1572, 1581, 19 USPQ2d 1424, 1432 (Fed. Cir. 1991); see also Jansen Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1114 (TTAB 2007). Cancellation No. 92055910 17 facts and that petitioner has established its standing and priority and likelihood of confusion as a matter of law. Moreover, respondent has waived its affirmative defenses. Accordingly, petitioner’s motion for summary judgment is hereby GRANTED. Judgment is hereby entered against respondent, the petition to cancel is granted, and Registration No. 4138501 will be cancelled in due course. *** Copy with citationCopy as parenthetical citation