Avenza Systems Inc.v.Avencia Incorporated

Trademark Trial and Appeal Board

Sep 29, 2009

No. 92046736 (T.T.A.B. Sep. 29, 2009)

Mailed: September 29, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Avenza Systems Inc.
v.
Avencia Incorporated
_____

Cancellation No. 92046736
_____

Roberta Jacobs-Meadway of Eckert Seamans Cherin & Mellott, LLC;
and Candace Lynn Bell of Kavinoky Cook LLP for Avenza Systems
Inc.

Nancy Rubner Frandsen of Woodcock Washburn, LLP for Avencia
Incorporated.
______

Before Holtzman, Rogers and Drost, Administrative Trademark
Judges.

Opinion by Holtzman, Administrative Trademark Judge:
Petitioner, Avenza Systems Inc., filed a petition to cancel
a registration on the Principal Register owned by Avencia
Incorporated (respondent) for the standard character mark AVENCIA
for the following goods and services:1
Software tools and data for geographic, spatial,
statistical and scientific analysis and modeling, in
Class 9;

1 Registration No. 3049401, issued January 24, 2006 from an application
filed on July 28, 2004 and asserting a date of first use on March 3,
2000 and first use in commerce on May 1, 2000.
THIS OPINION IS NOT
A PRECEDENT OF
THE TTAB
Cancellation No. 92046736
2
Advisory and consulting services relating to business
management and business operations in the use of
geographic, spatial, statistical and scientific
software and data, in Class 35; and

Consultation services to assist businesses and
individuals with the compilation, storage,
integration, design, development and use of
geographic, spatial, statistical and scientific
software, models and data, in Class 42.

The ground for cancellation as set forth in petitioner's
amended pleading is priority and likelihood of confusion under
Section 2(d) of the Trademark Act.2 Petitioner alleges that
through itself and its predecessors, petitioner has used in
commerce the trade name "Avenza" at least as early as October
1995 and the mark AVENZA since at least as early as December
1996, in connection with computer software used to design and
create maps and related services, "including but not limited to
technical support." Petitioner asserts that respondent claims no
use of its mark prior to March 3, 2000, the date of first use
alleged in the respondent's registration; that respondent has not
used the AVENCIA mark prior to petitioner's first use of
petitioner's "AVENZA" name and mark; and that respondent's mark
when applied to respondent's goods and services so resembles
petitioner's previously used name and mark AVENZA for its above
goods and services as to be likely to cause confusion.

2 Petitioner initially pleaded various additional grounds for
cancellation but limited the ground to Section 2(d) by its amended
pleading.
Cancellation No. 92046736
3
Respondent filed an answer to the amended pleading,
admitting that it claims no use of its mark prior to March 3,
2000, and denying the remaining allegations in the petition.
The Record
The record consists of the pleadings; the file for the
involved registration; and testimony and other evidence by both
parties.3 Petitioner submitted the testimony, with exhibits, of
Edward Florence, petitioner's president; and a third-party
witness Steve Spindler, owner of Steve Spindler Cartography; a
notice of reliance on various printed publications; and
stipulated exhibits A-EEE which include printouts from
petitioner's website and from third-party websites referencing
"Avenza" and its products.
Respondent submitted the testimony, with exhibits, of Robert
Cheetham, respondent's president and CEO; and notices of reliance
on materials including the discovery deposition, with exhibits,
of Edward Florence; petitioner's responses to certain of
respondent's interrogatories, document production requests and
admission requests; and copies of two registrations owned by
petitioner for AVENZA marks (Nos. 3153285 and 3409248) along with

3 To the extent that the parties' notices of reliance include materials
such as Internet evidence and documents produced in response to
document production requests which are not proper subject matter for a
notice of reliance, inasmuch as these materials have been treated as of
record by both parties, we deem all the materials to be stipulated into
the record and we have considered them for whatever probative value
they may have.
Cancellation No. 92046736
4
the files for those registrations, as well as the file for a
pending application owned by respondent.4
In rebuttal petitioner submitted a notice of reliance on
portions of the discovery deposition, with exhibits, of Robert
Cheetham.
Both parties have filed briefs.
Standing
Petitioner's standing to bring the petition to cancel is
established by respondent's introduction of petitioner's
registrations, one of which is for the standard character mark
AVENZA for "computer software used to design and create maps" in
Class 9.5 See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55
USPQ2d 1842, 1844 (Fed. Cir. 2000) ("These registrations and the
products sold under the mark they register suffice to establish
Laser Golf's direct commercial interest and its standing to
petition for cancellation of Cunningham's LASERSWING mark."). In
any event, petitioner's standing also is established as indicated
below by its common law rights in the mark and name AVENZA.

4 Respondent notes that its application for the mark A AVENCIA and
design (Serial No. 77098652) was published for opposition and opposed
by petitioner (Opposition No. 91184656). The opposition has been
suspended pending disposition of this cancellation proceeding.

5 Registration No. 3409248; issued April 8, 2008 from an application
filed on September 11, 2006. Petitioner relies only on its common law
rights in the mark and name and has not relied on any registrations in
support of its case. Nevertheless, inasmuch as respondent has made the
Cancellation No. 92046736
5
Priority
Petitioner, Avenza Systems, Inc., ("Avenza") is a
corporation of Canada that provides software products and
services for the mapping and GIS industries.6 Florence Test.,
pp. 3, 55. Petitioner's business focuses primarily on a packaged
software product called MAPublisher. Id., p. 25. The software,
which operates within the Adobe Illustrator program, uses and
analyzes GIS data and produces maps depicting the results of that
analysis. Id., pp. 25-26.
The record shows that petitioner, through itself and its
predecessors,7 first sold the MAPublisher software in the United
States at least as early as 1997, and versions of that product
have been continuously sold to customers in the United States
since that time. See, e.g., Florence Test., pp. 24-39, 46 and
58-63 (Confid.); Exhs. 14-17, 20-23, 29, 33-34 and 35-37
(Confid.).
Petitioner has submitted examples of containers and
packaging for the MAPublisher product, such as boxes and CD-ROMs,
as well as other materials associated with the product, including

registrations of record and specifically relies on them in its brief
they serve to demonstrate petitioner's standing.

6 GIS is a term in the mapping industry which stands for "geographic
information system." As described by Mr. Florence, it is a type of
technology that "relates information to geography." Test., pp. 3-4.
The technology and its function will be discussed in more detail later
in this opinion.

7 Florence Test., pp. 5-24, Exhs. 1-13.
Cancellation No. 92046736
6
user manuals, labels and registration cards which, with some
slight variations in form over the years, have all been used
since 1997. Petitioner has also submitted numerous invoices
covering the years 1997-2007 showing continuous sales of the
MAPublisher product to customers in the United States at least
since 1997. Id., p. 61 (Confid.); Exhs. 35-37 (Confid.). The
term AVENZA appears on all of these materials. In each instance,
the term is used as a mark and also as a significant part of
petitioner's various trade names. It is always displayed
prominently, in large, bold lettering, either by itself, or in a
manner that clearly creates an impression separate and apart from
any stylization, design, or other word elements.
Petitioner's testimony and supporting documentation clearly
demonstrates use of the mark and name AVENZA in connection with
the MAPublisher product prior to the March 3, 2000 date of
respondent's first use.8 This date is not only the earliest date
on which respondent is entitled to rely in view of respondent's
admission in its answer, but also is the earliest date shown by
respondent's evidence. Respondent first used its mark
commercially in connection with a proposal for the Philadelphia

8 Respondent "questions" whether petitioner's use "prior to 2000" rises
to the level of trademark use of AVENZA in the United States, arguing
that the articles on which petitioner relies to support use prior to
that date appear in foreign (Canadian) publications. Brief, p. 2.
This argument is of no consequence, for apart from the question of
whether petitioner is actually relying on those publications for
priority, the record is otherwise sufficient to prove petitioner’s
priority.
Cancellation No. 92046736
7
Police Department in March 2003 for a set of crime analysis and
mapping services. Cheetham Test., pp. 15-17; Exh. 4.
Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis
of all of the probative 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, however, two key
considerations are the similarities or dissimilarities between
the marks and the similarities or dissimilarities between the
goods and/or services. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). We discuss
the relevant du Pont factors below.
Goods and Services/Channels of Trade/Purchasers
In our evaluation of these du Pont factors, for respondent
we are required to focus on the goods and services as identified
in the involved registration. In the absence of any restrictions
or limitations in the registration, we must assume the goods and
services are sold through all the normal trade channels to all
the usual purchasers of such goods and services, regardless of
what any extrinsic evidence might show the actual nature of the
goods and services or their channels of trade or purchasers to
be. See Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d
1261, 62 USPQ2d 1001 (Fed. Cir. 2002); J & J Snack Foods Corp. v.
McDonald's Corp., 932 F.2d 1460, 18 USPQ2d 1889 (Fed. Cir. 1991);
Cancellation No. 92046736
8
Octocom Systems Inc. v. Houston Computers Services Inc., 918 F.2d
937, 16 USPQ2d 1783 (Fed. Cir. 1987); and CBS Inc. v. Morrow, 708
F.2d 1579, 218 USPQ 198 (Fed. Cir. 1983).
We find, as discussed below, that the parties' respective
goods are similar or at least overlapping in purpose and
function; that respondent's services are closely related to
petitioner's goods; and that respondent, in an effort to make
distinctions between them, is improperly reading limitations into
its registration which are not reflected therein.
Similarity or dissimilarity of the goods/services
We turn first to a comparison of the parties' respective
goods. Respondent's goods are identified as "software tools and
data for geographic, spatial, statistical and scientific analysis
and modeling." As the record shows, and respondent admits
(Brief, p. 10, n.6), petitioner's MAPublisher software is used to
design and create maps. The product is off-the-shelf, packaged
software that uses GIS technology to create maps and perform
geographic analysis. Florence Test., pp. 25, 124; Exh. 29 ("A
Suite of Cartographic and Geographic Information System [GIS]
Plug-ins for Adobe Illustrator").
As described in the glossary for petitioner's MAPublisher
user guide, a Geographic Information System (GIS) is "Any system
designed for the capturing, storing, checking, integrating,
analyzing and displaying of spatially referenced data about the
earth." Florence Test., Exh. 28, Bates ASI002697. GIS is
Cancellation No. 92046736
9
further explained in a document entitled "Technical Information,"
which consists of a proposal submitted by respondent to the
Department of Homeland Security for a software development
project (Cheetham Test., Exh. 19):
Geographic Information Systems (GIS) are often
defined as a computerized database management system
for capture, storage, retrieval, analysis, and
display of spatial data. Spatial data is any data
that includes information about location - a street
address, zip code, census tract, or longitude and
latitude coordinates. Many different types of data
can be integrated into a GIS and represented as a map
layer. When these layers are drawn on top of each
other, spatial patterns and relationships often
emerge. The most common GIS product is a map, but
GIS can be used to generate answers to queries or as
part of spatial statistical analysis.

As explained by Mr. Florence, the GIS maps produced by
petitioner's software would be used, for example, by government
agencies, including law enforcement agencies, academic
institutions, publishing companies, and businesses such as Home
Depot "who might use it to determine where they should build a
new store," or law firms to deal with issues relating to
geography vis-a-vis land-use rights, territorial water rights and
border disputes. Florence Test., pp. 113-115.
Respondent contends that the parties' products are non-
competitive, and differ in utility and essential characteristics.
Respondent seems to argue that its software is used for mapping
as it notes that the term "mapping software" does not appear
anywhere in respondent's identification of goods and services.
Brief, pp. 19-20.
Cancellation No. 92046736
10
Respondent's goods, as described, encompass a software tool
used to generate maps. The term "tool" as used in the context of
computer science has a broad meaning, defined as "An application
program, often one that creates, manipulates, modifies, or
analyzes other programs." The American Heritage Dictionary (4th
ed. 2001).9 For example, petitioner's MAPublisher product is
described as "A suite of GIS and cartographic tools for
Macromedia FreeHand and Adobe Illustrator." Florence Test. Exh.
15 (emphasis added). The Adobe products must be installed in
order to use the MAPublisher software.
A "map" is defined in The Columbia Electronic Encyclopedia
(Columbia University Press, 2007)10 as "conventionalized
representation of spatial phenomena on a plane surface" stating
that maps "may be prepared to show various quantitative and
qualitative facts, including boundaries, physical features,
patterns, and distribution" and that they "may also represent
such comparative data as industrial power, population density,
and birth and death rates." The entry further notes the advent
of "Computerized geographic information systems [GIS]" stating
that such systems "now are used to link information stored in

9 From the website bartleby.com. We take judicial notice of this
definition, and also of the definition of "map" (infra) as requested by
petitioner. The Board may take judicial notice of online reference
works which exist in printed form or have regular fixed editions. See
Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581, 1590 n.8
(TTAB 2008).

10 From the website encyclopedia2.thefreedictionary.com.
Cancellation No. 92046736
11
databases to maps, increasing and varying the amount of
information a map can display" and that they "are used to produce
maps for business use, law enforcement, natural-disaster
prediction, and many other purposes."
GIS is essentially computerized mapping, and respondent's
software, as described, falls squarely within that function. It
is a software tool using GIS data to display and analyze
"spatial" (geographic) information. "[I]t's implicit in
geospatial software in general that it creates maps." Florence
Disc. Dep., p. 231. Respondent's goods on their face are
similar, if not overlapping in purpose and function with
petitioner's software. Respondent admits that its software is
built on top of GIS technology (Cheetham Test., pp. 69, 224),
and as specifically stated in the identification, the software is
used for "geographic, spatial [and] statistical analysis."
It is clear from the record that respondent's software tool,
like petitioner's software, is in fact used to generate GIS maps.
There are many examples of this in respondent's promotional
materials, and we list just a few:
A flier with information about respondent's various products
and services describes its Kaleidocade product as follows
(Cheetham Test., p. 70, Exh. 14):
Kaleidocade brings the power of Geographic
Information Services and high-powered analysis to
everyone...
...
Why use Kaleidocade?
Cancellation No. 92046736
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Analyze large amounts of data, with particular
attention to geographic and spatial relationships;
produce detailed reports and maps in just a few
clicks without acquiring or learning any specialized
mapping, database, or statistical software.

Respondent's products are described as maps on its website
(Id., pp. 50-56, Exh. 11):
DecisionTree™ is a set of innovative web-based
geographic decision-making tools that enable business
owner, citizen or government agencies to weigh
multiple geographic factors and generate a map that
highlights optimal locations for their activities.

Sajara™ is web-based geographic digital asset
management software enabling organizations to provide
a geographically searchable index of collections of
historical assets including digitized...maps....

Under the "Our Clients" section of respondent's website,
respondent describes its various projects, all of which include
the production of maps:
For City of Philadelphia, Department of Records:
ParcelExplorer brings innovative functionality to the
exploration of parcel maps.

For City of Philadelphia - Mayor's Office of
Information Services, GIS Services Group: Avencia
developed CityMaps, the City of Philadelphia's first
public geographic data application, in 2002, enabling
anyone with web access to enter a city address to
view aerial photography and zoning maps....

For Avenue of the Arts, Inc.: Avenue North Mapping -
Detailed maps of recent, planned and proposed
development along North Broad Street (a.k.a. Avenue
North) help to illustrate the exciting changes taking
place and investments being made just north of Center
City.

For The Wilma Theater: Avencia used the Wilma's data
on existing subscribers, donors, and single ticket
buyers to map areas of high patronage for the
theater.

Cancellation No. 92046736
13
For Mural Arts Program; Cartographic Modeling Lab,
University of Pennsylvania: ... Users can use
MuralBase to create and print customized maps that
display murals in relation to Philadelphia parks,
schools and other local landmarks.

For Cartographic Modeling Lab, University of
Pennsylvania: The PhillySiteFinder website is an
online mapping system with an inventory of vacant and
under-utilized commercial, and industrial sites in
the Kensington, Richmond, Bridesburg, and Fishtown
neighborhoods in Philadelphia. ... The interactive
map shows sites in relation to each other and allows
users to search sites via the map.

Respondent's use of GIS applications is discussed in the
publication Federal GIS Connections ("GIS for Federal
Government") under the title "Tracking Guns and Analyzing
Patterns Using GIS" (Cheetham Test., p. 221, Exh. 36):
Recognizing that the geography of crime matters, ATF
and the Philadelphia Police Department worked with
Avencia Incorporated...to develop GIS applications
that convert the gun trace system to a fully digital
process. The system enables geography-based analysis
of gun crime.
...
Rifling through a stack of thousands of guns to
discern a geographic pattern is just not feasible in
Philadelphia. By locating each gun on the map, the
ATF and Philadelphia Police Department have immediate
access to the system's analysis tools.

The "mapping capabilities" of this system are described by
respondent on its website as including:
...interactive maps for guns seized in a particular
period of time; the pathway of a firearm across the
country from manufacture to use in a crime; link maps
of residence location to crime location; and thematic
maps by manufacturer, importer, caliber, type and
crime class.

Respondent claims that, unlike petitioner's product,
respondent's software "is not focused on the production of high
Cancellation No. 92046736
14
quality maps." Brief, p. 13. This claim is belied by Mr.
Cheetham's own assertion that "Our goal is to provide tools that
enable people to generate the dynamic maps that the people that
visit the web site want to generate" (Test., p. 73); and also by
representations made by respondent in its promotional materials.
For example, an April 19, 2005 press release appearing in the
trade publication Directions Magazine ("The Worldwide Source for
Geospatial Technology"), states that respondent's CityMaps
product offers the public an opportunity to "create and export
high quality customized maps of their area." Cheetham Exh. 38.
Respondent argues that the "vast majority" of its revenue is
derived from its professional service contracts for custom, web-
based software design and development, and that while "sometimes
there is a map that comes out of it, ... that map is always an
interactive map, it is viewed through a Web browser." Cheetham
Test., p. 150. Respondent contends that, unlike petitioner's
packaged, off-the-shelf software, its software is "complex,"
requiring highly trained and experienced staff to install,
upgrade or otherwise configure the software; and that none of the
products identified on its website can be downloaded, but rather
they are "solutions" with core components which are designed to
be adapted to every client's particular needs.
The main problem with respondent's argument is that it
ignores the fact that the mark is registered for goods, not just
services. The fact remains that based on the identification of
Cancellation No. 92046736
15
goods, respondent is providing a software tool used to generate
maps for GIS applications and for analyzing geographic data.
Thus respondent's software must be deemed to be used for the same
or similar purpose as petitioner's goods and to perform the same
or similar function. Ultimately, they both capture and analyze
data using GIS technology and display the results on a map. Nor
is there is anything inherent in the identification of goods
which would limit the goods to custom or interactive maps, or
"complex" software or at least anything more complex than
petitioner's mapping software.
We also note that respondent is not just providing web-
hosted services, but in fact also provides software products.
Respondent's website materials specifically state that it
develops geospatial software for desktop as well as Internet
deployment. Cheetham Disc. Dep., p. 155, Exh. 13; Cheetham
Test., Exh. 11. Respondent's flier for its Kaleidocade product
(Exh. 14) allows users to "visualize data via the Internet or as
an internal tool." On its website, respondent describes its
ModelTree product as "being developed as both a hosted product
available on the internet and as a packaged product for
installation at client facilities." Cheetham Test., Exh. 10.
In any event, petitioner's MAPublisher software also
supports computer-generated maps that can be and are web-based
and interactive. Florence Test., pp. 120 - 121. As an example,
Mr. Florence refers to the web-based interactive election maps
Cancellation No. 92046736
16
provided by The New York Times which are based in part on the
MAPublisher product. Id. Respondent's software is also
customizable, and can be modified to meet a particular client's
needs. Id., pp. 121, 178-179.
Respondent also argues that it uses different toolkits to
build its software, such as ArcIMS, ArcEngine, ArcWeb services
(all ESRI products and services)11 and does not use Adobe
Illustrator or other Adobe products, the platform for
petitioner's MAPublisher product. Again, however, the
identification of goods is not limited to use with any particular
toolkits, and respondent would be free to change the toolkits it
may use in the future to build the identified software. In any
event there is no evidence of record that the toolkits used to
build the parties’ respective products would affect a customer's
perception of the goods as related. Respondent's product may
simply be viewed by purchasers as a different, perhaps more
elaborate, version of petitioner's product.
We turn next to a consideration of respondent's services,
identified as follows:
Advisory and consulting services relating to business
management and business operations in the use of
geographic, spatial, statistical and scientific
software and data, in Class 35; and

Consultation services to assist businesses and
individuals with the compilation, storage,
integration, design, development and use of

11 ESRI (Environmental Systems Research Institute), is a GIS company
that provides technology for the production of maps. Florence Test.,
pp. 105, 108.
Cancellation No. 92046736
17
geographic, spatial, statistical and scientific
software, models and data, in Class 42.

Respondent's consulting services, which are rendered in
connection with the use of its software product, and petitioner's
software, are complementary and inherently related goods and
services. It is settled that likelihood of confusion may result
if the same or similar marks are used 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,
1026 (Fed. Cir. 1988) (involving general merchandise stores and
furniture; "applicant's 'general merchandise store services'
would include the sale of furniture. ... What else it sells is
irrelevant; there is overlap."); and Safety-Klean Corporation v.
Dresser Industries, Inc., 518 F.2d 1399, 186 USPQ 476 (CCPA
1975).
Further, the evidence shows that petitioner itself offers
similar services in connection with its MAPublisher product,
namely, support, training, consulting on workflow procedures,
maintenance and customization. Florence Test., pp. 48, 58-60,
103, 119-121, 125, 130, 135-138, 142, 184, 178-179; Exhs. 35-37,
39, 58. In addition, petitioner's software has an "Attributes
Manager" that allows for customization of the software and
management of data files. See, e.g., Florence Exh. 14; and
Test., p. 117.
Cancellation No. 92046736
18
It would be reasonable for a purchaser of software used to
produce maps to assume that consulting in the use of such
software would be offered by the same company.
Channels of Trade
Petitioner sells its software and associated services direct
to customers through e-mail, fax, or telephone; print and
electronic catalogs; through its website (avenza.com) where
customers can either order the software for delivery or purchase
and download the software online. Florence Test., pp. 99-103,
Exhs. 56-58. Petitioner also sells its products through a
network of resellers, through value-added resellers; and through
general technology and software distributors. Id.
In addition to promotion of the goods on its website,
respondent advertises in print publications such as GeoWorld,
Geospatial Solutions; and in online publications such as
Directions Magazine, GISuser and GISCafe. Id., pp. 69-70, 185-
186. and attends GIS industry trade shows such as WebGIS and ESRI
Petitioner's customers include government agencies,
academic institutions who use petitioner's products in their
teaching or research, and businesses including law firms, real
estate companies, publishers such as Newsweek, The New York Times
and National Geographic, retail chains, such as Home Depot,
companies in the map-production business such as Rand-McNally and
Harper Collins, and also individual designers. Florence Test.,
pp. 114-115; and, e.g., Exh. 29 (MAPublisher user's manual
Cancellation No. 92046736
19
indicating that the product is directed not only to "GIS Users"
and "Cartographers" but also to the "General Public").
As stated earlier, absent any restrictions in the
registration, we must presume that respondent's goods and
services are offered in all the normal channels of trade for
those goods and services and to all the usual purchasers. See
Canadian Imperial Bank v. Wells Fargo, 811 F.2d 1490, 1 USPQ2d
1813, 1814-15 (Fed. Cir. 1987). Because there are no
restrictions in the registration, and the parties' goods are
similar, and respondent's services are closely related to those
goods, we must presume the trade channels and purchasers would at
least overlap, and that the organizations and agencies and
individuals who would be the customers of petitioner's mapping
software would also be prospective purchasers of respondent's
software. Further, the trade channels and purchasers for the
respective goods and services actually do overlap. Respondent's
customers similarly include government agencies, academic
institutions, research labs and business clients. Cheetham
Test., p. 187. The City of Philadelphia, one of respondent's
clients, has also been a customer of petitioner for software
products. Florence Test., p. 84. Respondent states that it does
not have a dedicated sales team or any salespeople; and that it
promotes its goods and services primarily through "relationship-
based" marketing," and in the government sector by responding to
requests for proposals (RFPs) by government agencies. Cheetham
Cancellation No. 92046736
20
Test., pp. 66, 94, 225. However, the record shows that
respondent also promotes its products and services through press
releases related to GIS that are distributed to and carried by
print and/or online news sources such as GeoPlace, Directions
Magazine, GISuser, GeoWorld, and Geospatial Solutions, the same
sources used by petitioner. Cheetham Test., pp. 166, 281-282,
295-296; Exhs. 27, 38; and Florence Test., pp. 185-186.
Respondent also attends GIS trade shows such as the ESRI User
Conference. Cheetham Test., p. 68. The evidence shows that Mr.
Florence and Mr. Cheetham attended the same WebGIS trade show in
October 1999. Florence Exh. 48. Like petitioner, respondent has
also made presentations at those conferences. Florence Test., p.
107; Cheetham Test., p. 95.
In addition, both petitioner and respondent are members of
ESRI's business partner program.12 Florence Test., p. 105. ESRI
is the market leader in geospatial technology, and that
partnership allows the parties access to ESRI's website, permits
joint sales and marketing opportunities, and provides technology
for the production of maps. Florence Test., pp. 105-109; Exh.
59. Potentially, each party could present joint proposals with
ESRI to the same clients.

12 Contrary to respondent's apparent contention, petitioner is a member
of the ESRI California company and not just the Canadian company. See
Cheetham Cr. Ex. Test., p. 293; Exh. 2.
Cancellation No. 92046736
21
Conditions of Purchase
Respondent argues that while the parties may market to some
of the same agencies, respondent's sale process is "vastly
different" from that of packaged software products. Brief, p. 7.
Respondent contends that it markets its projects to sophisticated
customers and that each of its projects is customized,
sophisticated and complex, and may require months or even a year
to conclude. According to respondent, each project involves
intellectual property concerns, selection of software
architectures, legal review, software engineering review, and
written "scopes of services" that could be 10-50 pages in length.
Respondent also argues that its projects are expensive, ranging
from $20,000 - 250,000 depending on "the implementation of the
solutions" and the "needs of each client" See, e.g., Cheetham
Test., pp. 41-43, 109, 112, 131-132, 204, 208.
Once again, however, there is nothing in the registration to
limit the goods and services to this type of lengthy and
expensive process. We also note that while respondent's projects
can be expensive, respondent's evidence also shows that the
"typical budget" for its subscription services is $800 - 3,000 a
year. Cheetham Test., p. 208. This would be in the same price
range as petitioner's MAPublisher software which can cost from
$249 to $2,499, with the higher price getting a "floating network
license" that allows multiple users within a common network to
share the software. Florence Test., pp. 149, 151; and, e.g.,
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22
Exh. 100. We also note that petitioner's REX service, used for
real estate analysis, was originally a low-cost subscription
service, charging $20 per month for unlimited usage of it, and
that it is now offered for free. Cheetham Test., p. 46.
Further, while respondent's software and development process
might be sophisticated, and the data to be analyzed might be
complex, it is not so clear that the users, if not the
purchasers, are sophisticated about such products or services.
In fact, respondent promotes its products as easy to use. As Mr.
Cheetham states, "A lot of what we're doing is Web-based, it is
designed for ease of use. And while the software may be
sophisticated, the whole point is to not have the end user have
to think through a lot of things." Cheetham Test, p. 153. We
note, for example, that users of respondent's Kaleidocade product
can "produce detailed reports and maps...without acquiring or
learning any specialized mapping, database or statistical
software." Cheetham Test. Exh. 14. Respondent's CityMaps
product is described as "a set of simple GIS services designed
for use by the general public" which includes "one or more maps"
and the applications "can be quickly adapted by an administrator
to accommodate new data sources." Cheetham Disc. Dep. Exh. 13.
Respondent's Cicero service "is built and ready for an
organization to simply plug into their existing website or
database. Since the service is hosted at Avencia, there are no
data updates or other maintenance required. ... The Cicero API is
Cancellation No. 92046736
23
small, well documented and easy to use." Cheetham Exh. 23. The
likelihood of confusion is not limited to "purchasers" but also
extends to confusion among ultimate users of the goods or
services. In re Artic Electronics Co., Ltd., 220 USPQ 836 (TTAB
1983). See also In re Star Pharmaceuticals, Inc., 221 USPQ 84
(TTAB 1984) (in evaluating likelihood of confusion under Section
2(d), events that may happen subsequent to the sale of the
product are relevant).
Also, at least some of respondent's products and services
are purchased and/or used by the general public. In respondent's
April 19, 2005 press release appearing in the trade publication
Directions Magazine, referenced earlier, under the heading "New
Website Lets Philadelphians Map City Services," respondent
describes its CityMaps product as "the City of Philadelphia's
first public online mapping application." The website "has been
a success in providing Philadelphians with important geographic
information in a user-friendly way." Cheetham Exh. 10.
Respondent's REX product, which "searches for locations which
match the price range and preferences of the user," is a "web-
based real estate analysis tool targeted at homeowners" among
others. Id.
Nevertheless, even sophisticated purchasers would be
susceptible to source confusion if highly similar goods and
services closely related to those goods, as we have here, are
sold under similar marks. See In re Research Trading Corp., 793
Cancellation No. 92046736
24
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.").
Strength of petitioner's mark
The record shows that petitioner's "Avenza" mark and trade
name have been in use for over 10 years in connection with its
MAPublisher software and that the company name and product have
received significant attention and exposure in the GIS industry
during that time. Also, since 2001, petitioner has conducted
annual Avenza Map Awards to "recognize good-quality map work in a
variety of disciplines." Florence Test., p. 88, Exh. 51. The
disciplines include geologic maps, thematic maps, academic
submissions, atlases, and web maps; and one requirement for entry
into the competition is that one or more Avenza products must
have been used in the production of the submission. A permanent
collection of maps is housed at the Library of Congress under the
heading "Avenza Map Awards," and the collection was put together
at the institution's request. Id., p. 93. In addition,
petitioner, along with National Geographic, co-sponsored an award
presented at the ACSM Design Awards, an annual map competition
held by the American Congress on Surveying & Mapping, a trade
organization that helps educate and promote the interests of
surveying and mapping.
Cancellation No. 92046736
25
The evidence is sufficient to establish that the company
has achieved at least some degree of recognition and strength in
the market. In addition, the mark by its nature is strong and
distinctive. At least on this record, the term AVENZA appears to
be a unique and fanciful mark. There is no evidence that AVENZA
has any meaning, and there is no evidence of any third-party use
or registration of similar marks in the field. Accordingly, we
find that the mark AVENZA is entitled to broad protection. See
Kenner Parker Toys, supra at 1456 ("A strong mark...casts a long
shadow which competitors must avoid.").
Similarity or dissimilarity of the marks
We turn next to a comparison of petitioner's mark AVENZA
with respondent's mark AVENCIA and a consideration of the
similarity or dissimilarity of the marks in their entireties in
terms of sound, appearance, meaning and commercial impression.
See Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin, 396 F.3d
1369, 73 USPQ2d 1689 (Fed. Cir. 2005). In making this
determination, we keep in mind that because AVENZA is a strong
mark, it is "more likely than a weak mark to be remembered and
more likely to be associated by the purchasing public with a
greater breadth of goods or services." Tuxedo Monopoly, Inc. v.
General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986 (CCPA 1981).
A strong mark is also entitled to protection for greater
variations on the mark. See McCarthy on Trademarks and Unfair
Competition § 11:73 (4th ed.).
Cancellation No. 92046736
26
The terms AVENZA and AVENCIA are more similar than different
in sound and appearance. In fact they are in substantial part
the same. AVENCIA has one additional vowel which results in the
mark as pronounced as having one more syllable than AVENZA, but
the common first two syllables are particularly significant and
the respective marks’s closing syllables can easily be pronounced
in similar fashion. The letters "CI" which form the extra
syllable in AVENCIA are similar in sound to "Z" when the marks
are spoken, and if they are not clearly pronounced, the
difference between CIA and ZA may not even be noticed.
As to meaning, neither AVENZA nor AVENCIA is an ordinary or
familiar word. Mr. Cheetham explains that AVENCIA is a term that
he created, and inasmuch as there is no evidence in the record as
to any meaning of AVENZA, we presume that the term is coined as
well. Because the marks have no inherent meaning, there is no
difference in meaning to distinguish them. In view of the close
similarities between the marks in sound and appearance, the marks
as a whole convey substantially similar commercial impressions.
Furthermore, the fanciful nature of AVENZA not only entitles
petitioner's mark to a broad scope of protection, but
significantly increases the likelihood that the marks, when used
in connection with similar goods and closely related services,
would cause confusion. See Jockey International Inc. v. Butler,
3 USPQ2d 1607 (TTAB 1987). See also Lois Sportswear, U.S.A.,
Inc. v. Levi Strauss & Co., 799 F.2d 867, 230 USPQ 831, 834 (2d
Cancellation No. 92046736
27
Cir. 1986) (a fanciful mark "is entitled to the most protection
the Lanham Act can provide").
Actual Confusion
As respondent argues, there is no proof of any actual
confusion over the 9-year period of contemporaneous use of the
respective marks. However, we consider the absence of evidence
of actual confusion to be a neutral factor in this case, or at
best to only slightly favor respondent. We cannot determine with
any degree of certainty whether a meaningful opportunity for
actual confusion has existed. Although there has been some
overlap in customers and channels of trade for the respective
goods, the extent of such overlap is not entirely clear. In any
event, it is well settled that evidence of actual confusion is
not required in order to establish likelihood of confusion.13 See
Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768 (TTAB 1992).
See also Norris, Inc. v. Charms Co., 111 F.2d 479, 45 USPQ 442
(CCPA 1957). Under the circumstances we find that the lack of
evidence of actual confusion does not establish that confusion
would not be likely to occur from the contemporaneous use of
these marks.
Finally, we do not view the absence of actual confusion as
significant in view of all the factors strongly indicating that

13 Contrary to respondent's apparent contention, the fact that Mr.
Spindler may not think that the parties were associated in any way is
not particularly significant considering his personal relationship with
the Cheethams which dates back to 2000.
Cancellation No. 92046736
28
confusion is likely, and in particular the similarity between the
marks and the similarity and close relationship between the
respective goods and/or services. See, e.g., On-Line Careline,
Inc. v. America Online, Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed.
Cir. 2000).
Additional Matters
Several additional matters require comment. First, we will
not, as petitioner urges, infer bad faith merely on the basis of
respondent's asserted knowledge of petitioner's name and mark.
Mere knowledge of another's mark does not, in itself, establish
bad faith or wrongful intent. See Sweats Fashions Inc. v.
Pannill Knitting Co. Inc., 833 F.2d 1560, 4 USPQ2d 1793 (Fed.
Cir. 1987).
Second, contrary to respondent's apparent contention, it is
not relevant that respondent's AVENCIA mark was not cited as a
bar to petitioner's registration of its AVENZA mark or that
respondent's subsequent application was not refused registration
on the basis of the AVENZA mark. See Miss Universe L.P. v.
Community Marketing Inc., 82 USPQ2d 1562 (TTAB 2007). This would
defeat the purpose of the cancellation proceeding. We must base
our conclusions on the entire record and arguments presented in
this inter partes proceeding. Cf. In re Nett Designs, 236 F.3d
1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001). Furthermore, it can
be seen from the file for at least one of petitioner's
Cancellation No. 92046736
29
registrations that the examining attorney's search strategy would
not have retrieved the term AVENCIA.
Finally, to the extent that respondent is arguing that "due
caution" and "most careful study of all the facts" are required
in a cancellation proceeding as distinguished from an opposition,
respondent is mistaken. See Dan Robbins & Assocs., Inc. v.
Questor Corp., 599 F.2d 1009, 202 USPQ 100, 105, n.8 (CCPA 1979).
In either case, the burden of proof is a preponderance of the
evidence. Eastman Kodak Co. v. Bell & Howell Document Management
Products Co., 994 F.2d 1569, 26 USPQ2d 1912, 1918 (Fed. Cir.
1993); and Department of Justice, Federal Bureau of Investigation
v. Calspan Corp., 578 F.2d 295, 198 USPQ 147, 149 (CCPA 1978)
(rejecting the proposition that the petitioner in a cancellation
proceeding bears a heavier burden of proof than the opposer in an
opposition proceeding).
Conclusion
In view of the similarity of the marks, and because the
goods and services are similar and closely related and the trade
channels and purchasers for the goods overlap, we find that
confusion is likely.
Decision: The petition to cancel is granted, and
Registration No. 3049401 will be cancelled in due course.