Tomorrow’s Technologies, Inc.v.Nunzio Gambale

Trademark Trial and Appeal Board

Oct 8, 2013

No. 91203646 (T.T.A.B. Oct. 8, 2013)

Mailed: 10/8/2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Tomorrow’s Technologies, Inc.
v.
Nunzio Gambale
_____

Opposition No. 91203646
to application Serial No. 85321223
filed on 05/15/2011
_____

Dwayne K. Goetzel of Meyertons, Hood, Kivlin, Kowert & Goetzel
for Tomorrow’s Technologies, Inc.

Christopher Kelly and Jennifer L. Elgin of Wiley Rein for Nunzio
Gambale.
______

Before Quinn, Holtzman and Bergsman,
Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

Nunzio Gambale (“applicant”) filed, on May 15, 2011, an
intent-to-use application to register the mark OUTERNET (in
standard characters) for the following goods:
Terrestrially based navigation system
incorporating co-located pseudolite
transmitters, electronic position-signal
receivers and electronic position-signal
transmitters for broadcasting position-
fixing signals for location and navigation;
navigation and positioning equipment,
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opp. No. 91203646

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namely, pseudolite transmitters, electronic
position-signal receivers and electronic
position-signal transmitters; computer
hardware configured to control pseudolite
transmitters, electronic position-signal
receivers and electronic position-signal
transmitters; computer software which
determines precise positioning from
information contained in broadcast position-
fixing signals; computerized hardware and
software used to calculate the geographic
location of movable objects including
aircraft, marine vessels, land vehicles,
human beings, animals, robots, cargo and
packages; instruments comprising pseudolite
transmitters, electronic position-signal
receivers, electronic position-signal
transmitters, and computerized hardware and
software used to determine position in land
and marine surveying, mapping, tracking and
navigation, and tracking and navigation of
inanimate and animate objects (in
International Class 9).

Tomorrow’s Technologies, Inc. (“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 applied to
applicant’s goods, so resembles opposer’s previously used and
registered mark OUTERNET (in standard characters) for the
services set forth below1 as to be likely to cause confusion.
Computer network operations management and
administration services for others for use
with a global computer network; management
of computer networks for others for use with
a global computer network (in International
Class 35);

Computer workstation and server maintenance
services for computer systems with access to

1 Registration No. 2363470, issued July 4, 2000; renewed.
Opp. No. 91203646

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a global computer network (in International
Class 37);

creating, sending, receiving and storing
electronic mail on a global computer
network; computer telecommunications
connectivity services to a global computer
network; and services for providing multi-
user computer teleconferencing for the
transfer of audio and video on a global
computer network (in International Class
38); and

computer web site hosting services for
others on a global computer network;
computer security services for computers
with access to a global computer network;
providing access to audio and video on a
global computer network; storing audio and
video on a global computer network; design
and implementation of computer networks for
use with a global computer network; computer
workstation and server configuration
services for computer systems with access to
a global computer network; providing multi-
user access to a global computer network for
the transfer and dissemination of
information; creating audio and video for
others on a global computer network; and
services related to the registration and use
of domain names on a global computer network
(in International Class 42).

Applicant, in his answer, denied the salient allegations of
likelihood of confusion.
The record comprises the pleadings; the file of the
application; a status and title copy of the pleaded
registration, excerpts of printed publications and websites (of
the parties, and of third parties), and applicant’s responses to
opposer’s discovery requests, all introduced by opposer’s notice
Opp. No. 91203646

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of reliance. Applicant neither took testimony nor submitted any
other evidence. Only opposer filed a final brief on the case.2
Opposer established its standing to oppose registration of
the involved application. In particular, opposer properly
introduced its pleaded registration of its mark OUTERNET for the
recited 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).
In view of opposer’s ownership of a valid and subsisting
registration of its mark OUTERNET, opposer’s priority is not in
issue with respect to the recited services. King Candy, Inc. v.

2 Opposer’s brief is accompanied by Exhibits A-H. Exhibits A, C, D, E
and F are copies of documents already of record, either automatically
or by the prior action of opposer. For future reference, opposer
should refrain from such practice inasmuch as the submission of
duplicative papers is a waste of time and resources, and is a burden
on the Board. ITC Entertainment Group Ltd. v. Nintendo of America
Inc., 45 USPQ2d 2021, 2022-23 (TTAB 1998). See Life Zone Inc. v.
Middleman Group Inc., 87 USPQ2d 1953, 1955 (TTAB 2008) (“while
exhibits to briefs are not explicitly prohibited by the Trademark
Rules, the Board will usually ignore them, because they comprise
either untimely evidence or unnecessary copies of timely evidence”).
See also TBMP § 801.01 (2013) (“Exhibits to briefs are generally
unnecessary and are discouraged. The parties should....not attach
previously-filed evidence to their briefs.”). Exhibit B (an
application of which opposer claims ownership) was not properly made
of record during trial and, thus, has not been considered. Exhibit G
is dictionary evidence, of which we take judicial notice. Exhibit H
(an excerpt of a third-party website) was not introduced during trial,
and, thus, has not been considered.
Opp. No. 91203646

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Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA
1974).
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). In any likelihood of confusion analysis, 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
(CCPA 1976).
In comparing the marks, we must consider the marks 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 (Fed. Cir. 2005).
The marks are arbitrary, and are identical in every respect.
Thus, this first du Pont factor weighs heavily in favor of
opposer.
We next turn to consider the second du Pont factor
regarding the similarity/dissimilarity between the goods and/or
services. In considering this du Pont factor, we especially
note that where identical marks are involved, as is the case
here, the degree of similarity between the goods and services
Opp. No. 91203646

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that is required to support a finding of likelihood of confusion
declines. In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687,
1688-1689 (Fed. Cir. 1993) (“even when the goods or services are
not competitive or intrinsically related, the use of identical
marks can lead to the assumption that there is a common
source”); Time Warner Entertainment Co. v. Jones, 65 USPQ2d 1650
(TTAB 2002); and In re Opus One Inc., 60 USPQ2d 1812 (TTAB
2001). It is only necessary that there be a viable relationship
between the goods and services to support a finding of
likelihood of confusion. Edwards Lifesciences Corp. v. VigiLanz
Corp., 94 USPQ2d 1399, 1415 (TTAB 2010); and In re Concordia
International Forwarding Corp., 222 USPQ 355, 356 (TTAB 1983).
It is well recognized that confusion may be likely to occur from
the use of the same or similar marks for goods, on the one hand,
and for services involving those goods, on the other. See,
e.g., In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d
1025 (Fed. Cir. 1988); and Steelcase Inc. v. Steelcare Inc., 219
USPQ 433 (TTAB 1983).
The issue here, of course, is not whether purchasers would
confuse the goods and services, but rather whether there is a
likelihood of confusion as to the source of these goods and
services. L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1439 (TTAB
2012); and In re Rexel Inc., 223 USPQ 830 (TTAB 1984). Further,
it is sufficient if likelihood of confusion is found with
Opp. No. 91203646

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respect to use of the mark on any item that comes within the
recitation of goods and/or 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’ goods and services, channels of trade and
classes of purchasers based on the goods and services as they
are identified in the application and registration,
respectively. Octocom Systems Inc. v. Houston Computers
Services, Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir.
1990); and Canadian Imperial Bank 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 identifications of goods and services, it is presumed that
the parties’ respective goods and services move in all channels
of trade normal for those goods and services, and that they are
available to all classes of purchasers for those goods and
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).
Opp. No. 91203646

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Applicant’s goods include computer hardware and software
for use in connection with determining physical location or
positioning in various applications, including surveying,
mapping, navigation and tracking. Opposer’s services include
“computer network operations management and administration
services for others for use with a global computer network;
computer web site hosting services for others on a global
computer network; providing access to audio and video on a
global computer network; storing audio and video on a global
computer network; design and implementation of computer networks
for use with a global computer network; computer workstation and
server configuration services for computer systems with access
to a global computer network; and providing multi-user access to
a global computer network for the transfer and dissemination of
information.”
Opposer’s services are broadly worded, with no limitation
as to the specific application of the above-referenced services.
Thus, opposer’s services must be construed to encompass a wide
variety of applications similar to the applications of
applicant’s goods, namely navigation, positioning and tracking.
In view of the above, the similarity between the goods and
services, especially when viewed in the context of identical,
arbitrary marks, weighs in favor of a finding of likelihood of
confusion.
Opp. No. 91203646

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The record includes evidence to show that both opposer and
applicant serve educational clients. We find that the goods and
services may move in the same or similar trade channels, to the
same or similar classes of purchasers. This finding weighs in
favor of a likelihood of confusion.
We conclude that the goods and services are sufficiently
related that, when offered under identical, arbitrary marks,
purchasers are likely to be confused.
To the extent that the specific differences between the
goods and services raise 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 Century
21 Real Estate Corp. v. Century Life of America, 970 F.2d 874,
23 USPQ2d 1698, 1707 (Fed. Cir. 1992); and Giant Food, Inc. v.
Nation’s Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 395
(Fed. Cir. 1983).
Decision: The opposition is sustained, and registration to
applicant is refused.