Captaris, Inc.v.Captara Corporation

Trademark Trial and Appeal Board

Jul 19, 2007

No. 91166054 (T.T.A.B. Jul. 19, 2007)

Mailed:
July 19, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Captaris, Inc.
v.
Captara Corporation
_____

Opposition No. 91166054
to application Serial No. 78458452
filed on July 28, 2004
_____

Michael G. Atkins of Graham & Dunn PC for Captaris, Inc.

Franklin B. Goldberg of Cooley Godward LLP for Captara
Corporation.
______

Before Quinn, Bergsman, and Wellington, Administrative
Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Captara Corporation filed application Serial No.
78458452, on July 28, 2004, to register the mark CAPTARA, in
standard character format, for “computer software, namely
software that assists in the development of capital
expenditure finance processes in the field of fixed-asset
financing and portfolio management.”1 The application is
based on applicant’s bona fide intent to use the mark in

1 As discussed more fully below, applicant’s software is used for
managing and analyzing data in connection with leasing or
purchasing assets.
THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Opposition No. 91166054
2
commerce. The application includes the statement that
“[t]he foreign wording in the marks translates into ‘(that)
it catches.’”
Captaris, Inc. opposed registration under Section 2(d)
of the Trademark Act of 1946, 15 U.S.C. §1052(d). Opposer
asserted ownership of the mark CAPTARIS for “a suite of
enterprise fax and e-document delivery, business process
automation and workflow, content and application integration
and information delivery products and services.” Opposer
claimed ownership of Registration No. 2696689 for the mark
CAPTARIS for, inter alia, “computer hardware and computer
application software for, use in the field of
telecommunications, namely, used (sic) for providing
electronic transmission of documents, voice messaging, call
processing, interactive voice response, unified messaging,
facsimile transmission, and wireless mobile communications”2
and common law rights in CAPTARIS WORKFLOW for “a
customizable software product that automates business
processes, including approval and tracking systems.”3
Opposer alleged that applicant’s mark CAPTARA so resembles
opposer’s mark CAPTARIS as to be likely to cause confusion.

2 Registration No. 2696689, issued March 11, 2003, claiming April
1, 2001 as its date of first use in commerce. The registration
includes the statement that “[t]he English translation of the
Latin word ‘Captaris’ in the mark is ‘aim for, desire, or
entice.’”
3 Notice of Opposition ¶¶5-14.
Opposition No. 91166054
3
Applicant denied the salient allegations in the notice
of opposition. The case has been fully briefed.
The Record
The parties stipulated that they may introduce
testimony through affidavits or declarations in lieu of
testimony, and that the documents produced by each party
pursuant to Fed. R. Civ. P. 33 and 34 are authentic and may
be introduced into evidence through a notice of reliance.
By operation of the rules, the record includes the
pleadings and the application file for applicant’s mark.
The record also includes the following evidence:
A. Opposer’s evidence.
1. Notice of reliance on applicant’s documents
pertaining to the conditions under which and
buyers to whom sales are made;
2. Notice of reliance on documents pertaining to
applicant’s trademark search;
3. Notice of reliance on applicant’s responses to
opposer’s requests for admission;
4. Notice of reliance on applicant’s documents
pertaining to its established trade channels;
5. Notice of reliance on documents pertaining to
applicant’s goods;
6. Notice of reliance on applicant’s responses to
opposer’s interrogatories;
Opposition No. 91166054
4
7. Declaration of Carolyn Bersch, opposer’s Manager
of Legal Affairs;4
8. Declaration of Robert Mittenthal, Litigation
Support Manager for opposer’s legal counsel;
9. Declaration of Jürgen Stephan, opposer’s Vice
President of Global Marketing;
10. Rebuttal declaration of Jürgen Stephan; and,
11. Declaration of Michael Atkins, one of opposer’s
attorneys of record.
B. Applicant’s evidence.
1. Notice of reliance on the discovery deposition of
Jürgen Stephan;
2. Notice of reliance on opposer’s responses to
applicant’s interrogatories;
3. Notice of reliance on documents pertaining to the
dissimilarity of the goods and services offered
under the CAPTARIS and CAPTARA marks;
4. Notice of reliance on documents pertaining to the
selection of the CAPTARIS name and mark;
5. Notice of reliance on documents pertaining to
Opposer’s established and likely-to-continue trade
channels;

4 Ms. Bersch laid the foundation for the documents referenced in
the Robert Mittenthal declaration.
Opposition No. 91166054
5
6. Notice of reliance on documents pertaining to the
conditions under which and buyers to whom sales
are made;
7. Declaration of Angela Sabella, applicant’s Chief
Financial Officer and Secretary;
8. Declaration of Michael Caglarcan, applicant’s
Chief Executive Officer; and,
9. Declaration of Patrick Mebine, applicant’s Vice
President of Software Engineering and Product
Development.
A final note regarding the record is required. The
parties extensively and unnecessarily designated testimony
and evidence as confidential. For example, the entire
discovery deposition of Jürgen Stephan was designated as
confidential even though it included information that is
clearly not confidential such as personal background
information, corporate background information, descriptions
of the software applications, channels of trade, etc. As a
result, the reporting of the facts in this decision will be
less complete than had the parties judiciously designated as
confidential only information that was truly confidential.
In the event that either party or counsel appears before us
in another proceeding, we urge them to designate as
confidential only such information that is truly
confidential.
Opposition No. 91166054
6
The Parties
A. Opposer.
Opposer provides business information delivery
solutions that integrate, process and automate the flow of
messages, data and documents. It produces a suite of
business fax and e-document delivery, business process
automation and workflow, content and application integration
and information delivery products and services.5 Opposer’s
CAPTARIS software is a “toolkit for developers to define
routing approval rules for document-centric processes for
any business, a generic document storage and management
system, and a system that allows a company to deliver any
business information via fax, e-mail, print devices, or over
the Internet.”6 In other words, opposer’s software is used
to manage documents.
There are three CAPTARIS applications: RightFax,
Workflow, and Alchemy.7 “RightFax software allows end-users
to fax any document directly from applications running on
their desktops or workstations.” Incoming faxes can be

5 Opposer’s Response to Applicant’s Interrogatory No. 12.
6 Rebuttal Declaration of Jürgen Stephan ¶13, quoting the Mebine
Declaration ¶¶12(d), 13(d), and 14(d). A “toolkit” is “a set of
software routines that allow a program to be written for and work
in a particular environment. The routines are called by the
application program to perform various functions, for example, to
display a menu or draw a graphic element.” The Computer
Glossary, p. 403 (7th ed. 1995). See also, Webster’s New
Millennium Dictionary of English, Preview Edition (v 0.9.7)
(2007).
7 Stephan Declaration ¶12.
Opposition No. 91166054
7
directly routed to end-users and integrated into e-mail
inboxes and Web-enabled devices such as PDAs or mobile
telephones. “CAPTARIS RightFax products automate this
process [integrating documents with business applications]
by creating electronic images of the documents and
delivering them automatically and instantaneously via fax,
e-mail, or over the Internet.”8 Opposer began using the
CAPTARIS trademark in connection with RightFax software
application in April 2001.9
CAPTARIS Workflow software automates and manages
business processes.10 It is an automated workflow system
that allows the user to develop a workflow for repetitive
business processes including controlling access to documents
and information related to the process at issue. It allows
users to develop a step-by-step methodology to build and
deploy a procedure for completing tasks.11 Opposer began
using the CAPTARIS trademark in connection with its Workflow
software in November 2004.12
“CAPTARIS Alchemy software helps users store and access
content throughout the information lifecycle and support

8 Stephan Declaration ¶17.
9 Stephan Declaration ¶19. Stephan also testified that opposer
changed its name on March 30, 2001. (Stephan Declaration ¶9).
Whether we use March 30, 2001 or April 2001 as opposer’s date of
first use is not material to our decision.
10 Stephan Declaration ¶13.
11 Mebine Declaration, Exhibit A (excerpts from opposer’s website
dated July 24, 2006).
12 Stephan Declaration ¶14.
Opposition No. 91166054
8
compliance initiatives within organizations. It provides a
host of document functions, such as capture and indexing,
document management, archiving, records management, and
document reviewing and retrieval. CAPTARIS Alchemy software
specializes in the management of the ‘fixed’ content that
every organization must retain for business, compliance
and/or legal purposes, such as faxes, scanned documents,
emails, and portable document formats (“PDF”) files.”13
Opposer began using the CAPTARIS trademark in connection
with its Alchemy software application in November 2004.14
B. Applicant.
“Captara provides a comprehensive and automated web-
based solution entirely focused on and directed at
enterprise lease management. Specifically, the CAPTARA
solution allows its clients to manage all of their
enterprise leasing activities and to establish corporate-
wide leasing policies that allow for corporate visibility.
Thus, by implementing this solution, Captara’s clients have
complete control over the planning, execution,
documentation, management, and reporting of their enterprise
leasing activities.”15

13 Stephan Declaration ¶15.
14 Stephan Declaration ¶16.
15 Mebine Declaration ¶6; Sabella Declaration ¶5; Caglarcan
Declaration ¶5.
Opposition No. 91166054
9
The CAPTARA software provides four primary functions:16
1. “It allows companies to plan asset financing
decisions and to determine whether it would be
more economical to lease or buy capital assets.”17
2. “It allows companies to manage requests for
proposals (“RFPs”) in a standardized manner and
assess proposal responses from their financial
institutions” by maintaining and standardizing
financial information.18
3. It maintains a database and online interface of a
company’s capital asset financing and leasing
documentation for use in generating notifications
regarding contract deadlines, options, and
obligations, as well as generating contracts and
government compliance documents.19
4. “It assists a company in accurately classifying
and reporting its leases in accordance with the
four Financial Accounting Standards Board (“FASB”)
lease classification tests.”20

16 Patrick Mebine, Angela Sabella, and Michael Caglarcan testified
that the CAPTARA application has five primary functions, but we
could not distinguish between two of them. Therefore, we
combined two of the functions into No. 3 discussed below.
17 Mebine Declaration ¶8(a); Sabella Declaration ¶8(a); Caglarcan
Declaration ¶8(a).
18 Mebine Declaration ¶8(b); Sabella Declaration ¶8(b); Caglarcan
Declaration ¶8(b).
19 Mebine Declaration ¶¶8(c) and (d); Sabella Declaration ¶¶8(c)
and (d); Caglarcan Declaration ¶¶8(c) and (d).
20 Mebine Declaration ¶8(e); Sabella Declaration ¶8(e); Caglarcan
Declaration ¶8(e).
Opposition No. 91166054
10
Applicant began using the CAPTARA trademark for its
software application on August 9, 2004.21
Standing
Opposer, through its testimony and the other exhibits
made of record, has established that it uses the mark
CAPTARIS in connection with communications software,
workflow software, and database management software.
Inasmuch as opposer’s mark is at least arguably similar to
applicant’s mark, there is, thus, no issue with respect to
opposer having proven its standing to bring the opposition.
Priority
The first key issue in this case is the question of
priority of use.
Applicant’s application for CAPTARA was filed on July
28, 2004. Applicant first used its CAPTARA trademark on

21 Caglarcan Declaration ¶19; Sabella Declaration ¶19; Applicant’s
Response to Opposer’s Interrogatory Nos. 6 and 8. Opposer argues
that applicant has not made use of CAPTARA, relying on
applicant’s responses to Opposer’s Requests for Admission Nos. 3
and 7. In those responses, applicant admitted that as of April
26, 2006, it had not used the CAPTARA trademark. Nevertheless,
Robert Mittenthal, Litigation Support Manager for opposer’s
counsel, conducted an analysis comparing opposer’s customers with
applicant’s customers and prospective customers. (Mittenthal
Declaration). Applicant identified its customers during
discovery. (Applicant’s response to Interrogatory No. 23; DEF
0135). Under the circumstances of this case, including the fact
that opposer did not rely on applicant’s responses to Request
Nos. 3 and 7 as evidenced by Robert Mittenthal’s customer
analysis, we find that applicant has, in fact, made use of its
CAPTARA mark in connection with its fixed-asset financing
software application.
Opposition No. 91166054
11
August 9, 2004. Therefore, the earliest date upon which
applicant can rely for purposes of this opposition is July
28, 2004. Levi Strauss & Co. v. R. Josephs Sportswear Inc.,
36 USPQ2d 1328, 1332 (TTAB 1998), quoting Alliance
Manufacturing Co., Inc. v. ABH Diversified Products, Inc.,
226 USPQ 348, 351 n.15 (TTAB 1985)(“an applicant is entitled
to rely upon the filing date of its application as a
presumption of use of the mark subject of the application as
of that date”).
To prevail on its claim of likelihood of confusion,
opposer must also prove that it has a proprietary interest
in its CAPTARIS trademark prior to the filing date of
applicant’s intent-to-use application.22 Section 2(d) of
the Trademark Act of 1946, 15 U.S.C. §1052(d); Miller
Brewing Co. v. Anheuser-Busch Inc., 27 USPQ2d 1711, 1714
(TTAB 1993); Zirco Corp. v. American Telephone and Telegraph
Co., 21 USPQ2d 1542, 1544 (TTAB 1991).
With respect to the copy of opposer’s registration
introduced into evidence through the Stephan Declaration,
opposer did not submit a certified copy or any other copy
showing the status of and title to the registration. The
copy of the registration attached to the Stephan Declaration
is, instead, merely a soft copy of the registration. More

22 In the notice of opposition opposer did not include an
allegation that it made prior use of CAPTARIS.
Opposition No. 91166054
12
significantly, in neither his declaration, nor his discovery
deposition, did Mr. Stephan testify regarding the current
status of the registration. In order to properly introduce
its registration into evidence, opposer must establish that
the registration is still subsisting and that opposer owns
it. Alcan Aluminum Corp. v. Alcar Metals Inc., 200 USPQ
742, 744 n.5 (TTAB 1978)(plain copies of registrations
introduced through testimony which established ownership of
the registrations but failed to establish that they were
currently subsisting were not considered); Maybelline Co. v.
Matney, 194 USPQ 438, 440 (TTAB 1977)(pleaded registration
was not considered of record where testimony introduced
original certificate of registration into evidence but
failed to establish current status and title). See also
Trademark Rule 2.122(d)(2), 37 CFR §2.122(d)(2). Because
opposer failed to make its pleaded registration properly of
record, opposer must rely on its common law use of CAPTARIS
to prove its priority.
Mr. Stephan testified that opposer first used CAPTARIS
in connection with its communications software (i.e.,
RightFax) in April 2001. It first used CAPTARIS in
connection with its workflow (i.e., Workflow) and database
management (i.e., Alchemy) software applications in November
2004. Oral testimony, even of a single witness, if
“sufficiently probative,” may be sufficient to prove
Opposition No. 91166054
13
priority. Powermatics, Inc. v. Globe Roofing Products Co.,
341 F.2d 127, 144 USPQ 430, 432 (CCPA 1965); 4U Co. of
America, Inc. v. Naas Foods, Inc., 175 USPQ 251, 253 (TTAB
1972). We find that Mr. Stephan’s testimony is credible and
it has not been contradicted. Opposer has established its
prior use of CAPTARIS in connection only with its
communications software (April 2001), not with its workflow
or database management software (November 2004).23

23 In applicant’s June 25, 2004 comprehensive search report, there
is a photocopy of a partial page from opposer’s home page. The
webpage has the following reference:

Capataris Business Information Delivery
Software Products & Solutions

Enterprise Fax and e-Document Delivery –
Captaris RightFax . . .

Business Process Workflow – Captaris
Teamplate
A process automation solution that improves
the access and control of unique business
processes > More

(Notice of Reliance on Documents Pertaining to Captara’s
Trademark Search, p. 143 (DEF 0396)). That is the only evidence
suggesting that opposer provided workflow software prior to the
filing date of applicant’s application. However, opposer, as the
plaintiff, bears the burden of proving, by a preponderance of the
evidence, that it has priority of use. Genesco Inc. v. Martz, 66
USPQ2d 1260, 1267 (TTAB 2003). Opposer, therefore, must do more
than force us to search the evidence for facts sufficient to
prove an element of opposer’s case. There is very little
information in the webpage from which we can surmise that opposer
was using CAPTARIS in connection with workflow software. The
webpage reference could easily be interpreted to mean that the
fax software improves business processing. In light of Mr.
Stephan’s uncontradicted testimony regarding the first use of
CAPTARIS in connection with the Workflow software, which was
clear and convincing, definite and certain, the webpage reference
is not sufficient to prove that opposer used CAPTARIS in
connection with workflow software prior to the filing date of
applicant’s application.
Opposition No. 91166054
14
Accordingly, our likelihood of confusion analysis will be
limited to comparing CAPTARIS in connection with the
communications software (RightFax) with CAPTARA for
applicant’s fixed-asset financing software application.
Likelihood of Confusion
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, 567 (CCPA 1973). The relevant du Pont factors are
discussed below.
A. Fame
We turn first to the factor of fame, because this
factor plays a dominant role in cases featuring a famous or
strong mark. Kenner Parker Toys Inc. v. Rose Arts
Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed.
Cir. 1992). Fame arises as long as a significant portion of
the relevant consuming public, namely purchasers of
communications (or business software), recognize the mark as
a source indicator. Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1694 (Fed. Cir. 2005).
Opposition No. 91166054
15
In determining whether a mark is famous, we may
consider sales, advertising expenditures, and the length of
time the mark has been used. Bose Corp. v. QSC Audio
Products Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1309 (Fed.
Cir. 2002). This information, however, must be placed in
context (e.g., a comparison of advertising figures with
competitive products, market share, reputation of the
product, etc.). Id.
Because opposer designated as confidential its
testimony and evidence regarding sales and advertising, we
do not disclose the details of opposer’s activities and must
refer to the testimony and evidence only in general terms.
We have considered the following testimony and evidence in
determining whether opposer’s mark is famous:
1. Opposer’s advertising expenditures and sales
revenues have been substantial by any standard.24
However, those figures appear to be worldwide, and
not limited to the United States. 25
2. Opposer has advertised in many general interest
publications, including The Wall Street Journal,

24 Stephan Declaration ¶¶26 and 39.
25 Foreign use of a mark creates no rights in such mark in the
United States, and any information or evidence pertaining to
foreign use is not relevant to a party’s right to register the
mark in the United States. Double J of Broward Inc. v. Skalonly
Sportswear GmbH, 21 USPQ2d 1609, 1612 (TTAB 1992); Johnson &
Johnson v. Salve S.A., 183 USPQ 375, 376 (TTAB 1974).
Opposition No. 91166054
16
Seattle Post-Intelligencer, and The Seattle
Times.26
3. Opposer testified that the RightFax software holds
the leading market share worldwide and in North
America, and we presume that it is the leader in
the United States although opposer did not provide
its percentage of the U.S. market.27
4. Opposer testified that it has five million users
on 90,000 systems worldwide.28 However, we do not
have any information regarding the number of users
or systems in the United States.
5. Opposer has sold software to every one of the
Fortune 100 companies comprising many of the
largest companies in the United States.29
6. Opposer has been recognized as a “major
convergence vendor,” a “leading provider of
convergence products,” and a “large global
reseller network” by Communications Convergence
magazine.30
Based on our review of the evidence, we find that the
mark CAPTARIS has achieved a degree of recognition as a mark
for business software applications, such that the mark would

26 Stephan Declaration ¶27.
27 Stephan Declaration ¶37.
28 Stephan Declaration ¶¶34 and 35.
29 Stephan Declaration ¶34.
30 Stephan Declaration ¶¶40 and 41; Exhibits G and H.
Opposition No. 91166054
17
be viewed as a strong and distinctive mark. However, we
cannot find on this record that U.S. consumers have been so
exposed to the mark, or that they are so aware of it, that
it can be considered a famous mark as contemplated by the
case law.
In view of the extreme deference that a famous mark is
accorded, and the dominant role fame plays in the likelihood
of confusion analysis, a plaintiff asserting that its mark
is famous has a duty to clearly prove fame. Blue Man
Productions Inc. v. Tarmann, 75 USPQ2d 1811, 1819 (TTAB
2005). In the case sub judice, opposer’s evidence falls
short of proving that its mark is famous, in part, because
opposer provided information on a worldwide basis rather
than limiting the information to its activities in the
United States, and because we are not sure whether consumers
recognize RightFax, rather than CAPTARIS.
Accordingly, we find that the strength of opposer’s
mark is a factor that favors opposer, but not to the extent
that it would if the mark were truly famous.
B. The similarity or dissimilarity of the marks.
We now turn to the du Pont factor focusing on the
similarity or dissimilarity of the marks in their entireties
as to appearance, sound, connotation, and commercial
impression. In re E. I. du Pont De Nemours & Co., supra.
The marks look similar: CAPTARIS vs. CAPTARA. The
Opposition No. 91166054
18
first six letters of both marks are identical. Only the
last two letters of opposer’s mark (i.e., “is”) and the last
letter of applicant’s mark (i.e., “a”) are different.
The marks sound similar. The first and second syllable
of the marks are identical, while only the last syllable is
different. Applicant’s argument that the marks are
pronounced differently is not persuasive. There is no
"correct" pronunciation of a trademark because it is
impossible to predict how the public will pronounce a
particular mark. Therefore, "correct" pronunciation cannot
be relied on to avoid a likelihood of confusion. See, e.g.,
Kabushiki Kaisha Hattori Tokeiten v. Scuotto, 228 USPQ 461
(TTAB 1985) (SEYCOS and design for watches held likely to be
confused with SEIKO for watches and clocks); In re Great
Lakes Canning, Inc., 227 USPQ 483 (TTAB 1985) (CAYNA
(stylized) for soft drinks held likely to be confused with
CANA for, inter alia, canned and frozen fruit and vegetable
juices); In re Energy Telecommunications & Electrical
Association, 222 USPQ 350 (TTAB 1983) (ENTELEC and design
for association services in the telecommunication and energy
industries held likely to be confused with INTELECT for
conducting expositions for the electrical industry); In re
Cresco Mfg. Co., 138 USPQ 401 (TTAB 1963) (CRESCO and design
for leather jackets held likely to be confused with KRESSCO
for hosiery).
Opposition No. 91166054
19
Similarity in meaning or connotation is another factor
in determining whether the marks are similar or dissimilar.
CAPTARIS and CAPTARA are either coined or fanciful terms.
Opposer’s mark CAPTARIS is rooted in the Latin words
“capto,” meaning capture, and “aris,” meaning freedom and
openness. Opposer combined the Latin words to convey the
connotation and commercial impression of freedom and control
(i.e., freedom to work anywhere and control to properly
manage a business).31 When it filed its application for
registration, opposer translated the word “Captaris” to “aim
for, desire, or entice.”32
Applicant selected CAPTARA through a company-sponsored
contest. “Cap” was derived from “capital” and “tara” was
derived from the first name of the CEO’s wife, Tara.33 Even
though “Captara” was a coined term, applicant translated it
as “it catches.”34
Since both marks are coined terms without readily
understood meanings, the visual and auditory similarity of
the marks stimulate the same mental reaction, and therefore
engender a similar commercial impression.

31 Stephan Declaration ¶6; Exhibit B.
32 Stephan Declaration ¶7.
33 Caglarcan Declaration ¶12; Sabella Declaration ¶12; Applicant’s
response to Interrogatory No. 31.
34 There is also information in the record that “Captar” is a
Spanish word for capture or win, and that in some languages
“Captar” means “to get it.” Applicant’s response to
Interrogatory No. 32 (DEF 0006 and 0017).
Opposition No. 91166054
20
We find that the overall similarities of the marks
outweighs the de minimis differences. Therefore, the
similarity of the marks is a factor that favors opposer.
C. The similarity or dissimilarity and nature of the
goods.

In analyzing the similarity or dissimilarity of the
goods, we start with the well-settled proposition that it is
not necessary that the products of the parties be similar or
even competitive to support a finding of likelihood of
confusion. Likelihood of confusion may be found if the
respective products and services are related in some manner
and/or if the circumstances surrounding their marketing are
such that they would be likely to be encountered by the same
persons under conditions that could give rise to the
mistaken belief that they emanate from the same source. In
re Pollio Dairy Products Corp., 8 USPQ2d 2012, 2015 (TTAB
1988); Seaguard Corporation v. Seaward International, Inc.,
223 USPQ 48, 51 (TTAB 1984).
Opposer uses CAPTARIS to identify what is essentially
fax server and document delivery software.
17. CAPTARIS RightFax software
allows end-users to fax any document
directly from applications running on
their desktop or workstation. In
addition, incoming faxes can be directly
routed to end-user desktops and can be
integrated into their email inbox or
delivered in many formats, including
Webb-enabled devices such as personal
digital assistants (“PDAs”) or mobile
phones. CAPTARIS RightFax products are
Opposition No. 91166054
21
designed to ensure that faxes are
secure, kept confidential and to
eliminate the need for individuals to
walk to fax machines, wait in line, or
search for faxes. The products are
designed to integrate with other
critical business applications,
including operational and accounting
applications that generate documents
typically printed on forms that are then
mailed. CAPTARIS RightFax products
automate this process by creating
electronic images of the documents and
delivering them automatically and
instantaneously via fax, email, or over
the Internet.

18. For organizations that receive
substantial amounts of inbound faxes,
such as mortgage or insurance companies,
these documents are received
electronically and are automatically
routed to the intended recipient. The
automation of manual processes improves
accuracy and reliability and shortens
cycle times and costs. By reducing the
cycle time involved in exchanging
invoices, statements and other
electronic commerce documents with
customers, vendors, and partners,
deployment of CAPTARIS RightFax products
improves users’ cash flows.35

Applicant, on the other hand, has applied to register
CAPTARA for “computer software, namely software that assists
in the development of capital expenditure finance processes
in the field of fixed-asset financing and portfolio
management” (i.e., database management software in the field
of financing fixed-assets). According to applicant, the
CAPTARA software is “a comprehensive and automated web-based

35 Stephan Declaration ¶¶17 and 18.
Opposition No. 91166054
22
solution entirely focused on and directed at enterprise
lease management. Specifically, the CAPTARA solution allows
its clients to manage all of their enterprise leasing
activities and to establish corporate wide leasing policies
that allow for corporate visibility.”36
There is no “per se” rule requiring that likelihood of
confusion must be found where the goods in question involve
different types of software. Electronic Data Systems Corp.
v. EDSA Micro Corp., 23 USPQ2d 1460, 1463 (TTAB 1992) (“it
does not necessarily follow that all computer programs are
related”); Information Resources Inc. v. X*Press Information
Services, 6 USPQ2d 1034, 1038 (TTAB 1988); In re Quadram
Corp., 228 USPQ 863, 865 (TTAB 1985). Where, as here,
opposer’s software is distinctly different from applicant’s
software, it is the opposer’s burden to prove that its
software is related in some manner or that the conditions
surrounding the marketing thereof are such that they would
be likely to be encountered by the same persons under
circumstances that give rise to the mistaken belief that
they originate with the same source. Pasco, Inc. v. Diamond
Shamrock Corporation, 191 USPQ 59, 63 (TTAB 1976). Opposer
has failed to sustain its burden of proof on this factor.
We are not persuaded that simply because both parties

36 Mebine Declaration ¶6; Sabella Declaration ¶5; Caglarcan
Declaration ¶5.
Opposition No. 91166054
23
develop business application software, that fax server and
delivery software are related to database management
software in the field of fixed-asset financing. See
Electronic Data Systems Corp. v. EDSA Micro Corp., supra
(“the fact that both parties provide computer programs does
not establish a relationship between the goods or services,
such that consumers would believe that all computer software
programs emanate from the same source simply because they
are sold under similar marks”); Cooper Industries, Inc. v.
Repcoparts USA, Inc., 218 USPQ 81, 84 (TTAB 1983)(the mere
fact that products with significant differences in character
are sold in the same industries does not itself provide an
adequate basis to find that they are related).
Opposer argues that applicant’s “electronic finance
‘processes’” are related to its software that electronically
transmits and distributes documents because applicant’s
processes require the electronic distribution and storage of
documents. In other words, “Captara’s solution is automated
because it distributes and stores documents electronically –
two of the central functions described in Captaris’s
registrations.”37 However, there are marked differences
between opposer’s software and applicant’s software, and we
are not persuaded that because applicant’s software

37 Opposer’s Brief, pp. 19-20.
Opposition No. 91166054
24
distributes and stores documents that consumers will believe
that the products emanate from a single source.
Finally, opposer has not shown that its workflow
(Workflow) and database management (Alchemy) software are
within the natural scope of expansion of its fax server and
document delivery software (RightFax). There is no evidence
to indicate that workflow and database management software
are extensions of opposer’s fax server and document delivery
software rather than new and unrelated additions, that any
of opposer’s competitors sold both document delivery
software as well as workflow or database management
software, or that the relevant public was aware that a
single enterprise produced document deliver software and
workflow or database management software. See Sheller-Globe
Corp. v. Scott Paper Co., 204 USPQ 329, 333 9TTAB 1979).
We find that the similarity or dissimilarity and nature
of the goods favor applicant.
D. The similarity or dissimilarity of established, likely-
to-continue trade channels.

The channels of trade factor is primarily concerned
with whether the same consumers will be exposed to the marks
under circumstances likely to result in confusion. Jeanne-
Marc, Inc. v. Cluett, Peabody & Co., Inc., 221 USPQ 58, 61
(TTAB 1984). In the case sub judice the channels of trade
are similar because both parties target financial officers.
Opposition No. 91166054
25
Opposer sells its software through its direct sales
force, its website, distributors, and value-added
resellers.38 Opposer also attends trade shows, conducts
customer seminars, and uses direct mailings and email
broadcasts.39 Attendees at the trade shows include, inter
alia, IT executives, financial officers, senior management
officials, and department heads.40
Because opposer designated the Stephan Deposition as
confidential, we will not disclose the opposer’s description
of its customer contacts. However, we can say that
opposer’s initial contacts with potential customers are
through the IT department, after which other decision makers
are brought into the process.41
An article from Primedia Business Magazines & Media,
Inc. (2004) provides the following description of a priority
mail marketing effort by opposer:
Captaris Inc. dropped some 50,000
Priority Mail packages in January to
chief executives, chief financial
officers and other “C-level” execs at
manufacturing, healthcare, hospitality
and retail companies to promote the
latest version of RightFax, a system

38 Stephan Declaration ¶44; Opposer’s Response to Interrogatory
Nos. 6, 12, and 15; Applicant’s notice of reliance pertaining to
the dissimilarity of the goods and services offered under the
CAPTARIS and CAPTARA marks, Exhibit 15 (PLTF 1310).
39 Stephan Deposition, pp. 33 and 44; Opposer’s Response to
Interrogatory No. 6.
40 Applicant’s notice of reliance on documents pertaining to
Captaris’s established and likely-to-continue trade channels,
Exhibit 25 (PLTF 0705-0721).
41 Stephan Deposition, p. 27; Opposer’s Response to Interrogatory
No. 15.
Opposition No. 91166054
26
that enables faxes to be sent from
desktop computers.42

Applicant markets its software through its website,
direct sales staff, and a manufacturer’s representative
agreement with SunGuard Treasury Systems, e-mail
campaigns.43 In addition, applicant participates in
seminars and tradeshows attended by corporate treasurers and
other financial officers.44 Applicant specifically targets
financial officers for its marketing efforts45 because its
target customers are “any business or institution that
engages in leasing-and/or debt-related capital expenditure
financing transactions.”46
Finally, the actual clients and prospective clients
contacted by the parties overlap.47
In view of the foregoing, we find that the similarity
in the channels of trade is a factor that favors opposer.
E. The conditions under which and buyers to whom sales are
made (i.e., “impulse” vs. careful, sophisticated
purchasing).

“Where the purchasers are the same, their
sophistication is important and often dispositive because

42 Opposer’s notice of reliance on documents pertaining to
Captara’s trademark search (DEF 0375).
43 Applicant’s response to Interrogatory No. 20.
44 Opposer’s notice of reliance on Captara’s documents pertaining
to its established trade channels ((DEF 0134); Applicant’s
response to Interrogatory Nos. 15 and 20.
45 Applicant’s response to opposer’s interrogatories (DEF 0068-
0077); Caglarcan Declaration ¶22; Sabella Declaration ¶23.
46 Applicant’s response to Interrogatory No. 21; Caglarcan
Declaration ¶22; Sabella Declaration ¶23.
47 Declaration of Robert Mittenthal.
Opposition No. 91166054
27
‘[s]ophisticated consumers may be expected to exercise
greater care.’ [Internal citation omitted]. ‘[T]here is
always less likelihood of confusion where goods are
expensive and purchased after careful consideration.’
[Citation omitted]” Electronic Design & Sales v. Electronic
Data Systems, 954 F.2d 713, 21 USPQ2d 1388, 1392 (Fed. Cir.
1992).
The care expected of purchasers against
which the likelihood of confusion is
measured is determined by the marketing
environment in which the goods or
services are ordinarily bought or sold.
Some factors to be considered are the
manner in which the goods are purchased
. . . the manner in which the goods are
marketed . . . and the class of
prospective purchasers.

Restatement (Third) of Unfair Competition §20, comment h
(1995).
The products of the parties are expensive. Opposer’s
fee structure was designated as “highly confidential,” and
therefore we will not reveal the figures. However, in a
nonconfidential document produced by opposer, it was
revealed that the RightFax system costs $2,000 to $20,000
depending on how widely it is distributed throughout a
company.48 Jürgen Stephan testified that the cost for the

48 Opposer’s notice of reliance on documents pertaining to
Captara’s trademark search (DEF 0375).
Opposition No. 91166054
28
RightFax system could exceed those figures depending upon
the number of users.49
Applicant’s fee structure also was designated as
“highly confidential,” and therefore we will not reveal the
figures. However, applicant’s software is very expensive by
any standard.50
Opposer designated the testimony regarding its sales
process as “highly confidential,” and therefore we will not
reveal the specifics of that process. Suffice it say that
the sales process is a multistep endeavor involving multiple
tiers of review by potential customers including different
representatives throughout the customer’s organization and
it includes software demonstrations.51 Opposer’s product is
not an off-shelf program that may be acquired at a computer
store.52 The sales cycle takes many months and many
personal communications between opposer and the customer to
complete a contract.53
While applicant designated its sales process as both
“confidential” and “highly confidential,” it nevertheless
summarized it sales method in its brief as follows without
any designation of confidentiality:

49 Stephan Deposition, p. 108.
50 Applicant’s response to Interrogatory No. 22; Sabella
Declaration ¶¶28-29; Caglarcan Declaration ¶¶27-28.
51 Stephan Declaration ¶¶24 and 45; Stephan Deposition, pp. 27-32.
52 Stephan Declaration, pp. 40-41.
53 Stephan Deposition, pp. 35-36.
Opposition No. 91166054
29
Applicant directs its sales efforts at
financial executives (corporate
treasurers, controllers, and chief
financial officers), because these
executives would ultimately decide
whether to purchaser a comprehensive
financial solution such as the one
provided by Applicant. These decision
makers are high-level financial
executives who deal with sophisticated
financial issues, including treasury
management and receivables, tax
planning, working capital modeling,
expense planning, revenue planning, and
other financial concerns. The CAPTARA
solution is a means to aid in their
capital-expenditure and lease-management
processes, and also their cash
management and financings.

Sales of subscriptions for the CAPTARA
solution generally take between 6 and 12
months and generally involve 15 to 50
Applicant-customer communications,
including telephone calls and e-mails
from Applicant’s representatives,
customer participation in seminars, and
face-to-face meetings. During the face-
to-face meetings, Applicant’s
representatives demonstrate the
capabilities of the CAPTARA solution by
uploading actual corporate information
onto Applicant’s computer server to
simulate the solution’s functionality. 54

As demonstrated by the testimony and other evidence,
consumers will exercise a high degree of care in selecting
the parties’ products and in making the decision whether to
buy those products from the parties. Companies enter the
market in search of solutions for specific business problems
(e.g., document delivery issues and financial analysis and

54 Applicant’s Brief, p. 10 based on Caglarcan Declaration ¶¶22-25
and Sabella Declaration ¶¶23-26.
Opposition No. 91166054
30
management issues relating to fixed-assets). The
individuals in charge of acquiring the software solutions
are IT and financial professionals: highly specialized
professionals who would be expected to exercise great care
in their business decision-making. By the same token, the
persons selling the products on behalf of the parties are
professional salespersons knowledgeable about their
software, applications of the software, and how to apply the
software to the customer’s business applications.
Undoubtedly, these salespeople will clearly identify the
source of their products to distinguish them from competing
products. The participation in the sales process by IT and
financial professionals on behalf of consumers and by
knowledgeable sales persons on behalf of opposer and
applicant reduces the likelihood of confusion.
The purchasers are likely to devote a high degree of
care and attention to their software selection. They are
likely to pay particular attention to the source of the
software to make sure that the vendor has a good reputation,
that the vendor can customize the software for their
particular needs, and to ensure that the vendor will be
available for post-acquisition support. The detailed sales
process lasts months. Such attention to the sales process
and the source of the software reduces the risk of confusion
as to source or sponsorship.
Opposition No. 91166054
31
Finally, when, as here, the products are expensive,
purchasers are more likely to exercise a high degree of care
in their purchases. See Magnaflux Corp. v. Sonflux Corp.,
231 F.2d 699, 109 USPQ 313, 315 (CCPA 1956) (confusion is
less likely where goods are expensive and are purchased
after careful consideration than when they are purchased
casually).
We are convinced that considerable expense and planning
is involved in purchasing both opposer’s fax server and
document delivery software and applicant’s fixed-asset
financing and portfolio management software. This is
clearly a case where the products are marketed to a specific
and knowledgeable consuming public. We therefore find that
the degree of care likely to be exercised by business
purchasers of these products minimizes any likelihood of
confusion. Moreover, due to the degree of sophistication of
the purchasers and the resulting high degree of care
exercised in purchasing the parties’ software, we accord
great weight to this factor in our analysis.
F. The number and nature of similar marks in use on
similar goods.

One third-party mark was made of record: CAPTERRA
owned by Capterra, Inc. Registration No. 2742773 is for the
mark CAPTERRA for the following services:
“computer services, namely allowing computer software
vendors to market software to others via an on-line
marketplace and assisting companies to analyze and
Opposition No. 91166054
32
select appropriate computer software products,” in
Class 35; and,

“evaluation of computer software; computer software
consultation, namely, assisting others in selecting
appropriate software to meet their needs,” in Class
42.55

According to the Capterra website (www.capterra.com),
Capterra is an “enterprise software center” where buyers can
find the right software solution and vendors can obtain
leads for interested buyers.56
Capterra is the online marketplace
completely dedicated to connecting
buyers and sellers of enterprise
software Capterra proactively locates
every potential software solution on the
market and presents them to buyers in a
way that facilitates easy comparison in
a timely manner.57

The relevance of third-party use is the impact the
marks have on the relevant purchasing public. Where a mark
is commonly used on similar goods and services, it may be
reasonable to conclude that consumers have become
conditioned to expect those goods and services to emanate
from different sources. NCTA v. American Cinema Editors,
937 F.2d 1572, 19 USPQ2d 1424, 1430 (Fed. Cir. 1991). The
weight accorded third-party use depends upon the extent of

55 The application was filed on May 10, 2000, claiming October
1999 as the dates of use. Stephan Deposition, pp. 19-23; Exhibit
3; Applicant’s notice of reliance on documents pertaining to the
selection and use of the CAPTARIS name and mark, Exhibit 17;
Mebine Declaration ¶19 and Exhibit D.
56 Mebine Declaration Exhibit E.
57 Id.
Opposition No. 91166054
33
that use and promotion of the marks that would thereby show
the effect of third-party use on the public. Freedom
Federal S&L Association v. Heritage Federal S&L Association,
210 USPQ 227, 231 (TTAB 1981) (evidence of third-party use
must establish the climate surrounding the use of the mark
in appropriate market environments or consumer familiarity
with the marks). See also In re Clorox Co., 578 F.2d 305,
198 USPQ 337, 343 (CCPA 1978)(J. Markey concurring)(“Whether
the public has been so conditioned turns on whether it has
been actually exposed to the similar third party (sic) marks
in the marketplace, and on the extent and intensity of that
exposure”).
In the case sub judice, there is no evidence regarding
the extent of the third-party use. Applicant has shown only
that that the third-party user has a website. We have no
evidence demonstrating how widely used the mark is, how, or
if, the mark is promoted, and how well-known the mark is.
Under such circumstances, a single third-party mark used in
a disparate field (i.e., as a middle-man or broker in the
field of software) does not weaken the strength of opposer’s
mark.
G. The nature and extent of any actual confusion and the
length of time during and conditions under which there
has been concurrent use without evidence of actual
confusion.

The parties have been making simultaneous use of their
marks in the same channels of trade since August 9, 2004.
Opposition No. 91166054
34
During that time, there have been no reported instances of
actual confusion.58 The absence of reported instances of
actual confusion is relevant when the record indicates
appreciable and continuous use of applicant’s mark for a
significant period of time in the same markets as those
served by opposer. Gillette Canada Inc. v. Ranir Corp., 23
USPQ2d 1768, 1774 (TTAB 1992). See also Jockey
International Inc. v. Mallory & Church Corp., 25 USPQ2d
1233, 1237 (TTAB 1992). In other words, there must have
been an opportunity for confusion to have occurred.59 In
the case sub judice, there was two years of concurrent use
before opposer’s testimony period closed. Under these
circumstances, two years does not constitute such a
significant period of time as to allow us to draw any
inferences from the lack of any reported instances of actual
confusion. Accordingly, the lack of any reported instances
of actual confusion is a neutral factor.

58 Opposer’s responses to Interrogatory Nos. 17 and 18; Stephan
Deposition, pp. 74-78.
59 Opposer argued that confusion is virtually certain because the
parties’ software is similar and it is sold in the same markets,
to the same businesses, and to the same decision makers.
(Opposer’s Brief, p. 18). If confusion were certain, we would
have expected some reported instances of actual confusion in
light of the two years of contemporaneous use of the marks in the
same markets, to the same businesses, and to the same decision
markers. Opposer argues that there has been no confusion because
applicant has not used its mark. (Opposer’s Brief, p. 29). That
argument is disingenuous considering the customer analysis
conducted by Robert Mittenthal discussed supra at footnote 21.
Opposition No. 91166054
35
H. Applicant’s intent in adopting CAPTARA.
Opposer argues that applicant intended to trade on
opposer’s goodwill because it adopted CAPTARA with full
knowledge of opposer’s mark.60 Applicant derived its
knowledge of opposer’s mark from a CCH CORSEARCH
comprehensive search report it authorized in June, 2004.61
Applicant had no other knowledge of opposer’s goods or
services.62 In the “Federal Section,” the report listed
opposer’s Registration No. 2696689 for the mark CAPTARIS
for, inter alia, “computer hardware and computer application
software for use in the field of telecommunications, namely,
used for providing electronic transmission of documents,
voice messaging, call processing, interactive voice
response, unified messaging, facsimile transmission, and
wireless mobile communications.” There were a number of
CAPTARIS listings in the “Common Law Section” referencing
opposer as a “leader in enterprise fax server software,”63 a
“communications and mobile application technologies
provider,”64 and RightFax as “fax and electronic document
delivery system that integrates and automates the flow of

60 Opposer’s Brief, pp. 30-32.
61 Opposer’s notice of reliance on documents pertaining to
Captara’s trademark search; Sabella Declaration ¶14; Caglarcan
Declaration ¶14; applicant’s response to interrogatory No. 26.
62 Applicant’s response to interrogatory No. 26; applicant’s
response to opposer’s requests for admission No. 9.
63 Id at DEF 0372.
64 Id at DEF 0373.
Opposition No. 91166054
36
paper and electronic documents and data on computer
networks.”65 As discussed supra in footnote 23, we are not
persuaded that the excerpt of opposer’s website displayed on
DEF 0396 would allow applicant to draw the conclusion that
opposer was involved in workflow and database management
applications. Because the information regarding opposer was
related to the electronic transmission of documents,
applicant reasonably concluded that opposer was using its
mark in a dissimilar field.66 In view of the foregoing, we
do not find that applicant intended to trade on opposer’s
goodwill.
I. Balancing the factors.
In the case sub judice, the most critical factors in
our consideration of the likelihood of confusion issue are
the differences in the products and the degree of care
exercised by the consumers. Although the software products
are both for business applications, they are designed for
distinctly different purposes (electronic document delivery
vs. fixed-asset financing and portfolio management). Thus,
when potential customers approach the parties, they do so
with completely different mindsets: opposer’s customers
are seeking a solution for document delivery issues while

65 Id at 0375.
66 Sabella Declaration ¶15; Caglarcan Declaration ¶15.
Opposition No. 91166054
37
applicant’s customers are seeking a method of analyzing and
managing company-wide leasing information.
Since the software applications of both parties are
expensive, complex, and presumably crucial to the success of
their users. Therefore, potential customers are likely to
expend a great deal of time and effort reviewing and testing
the software to ensure that the software will perform as
expected and that it will create a return on their
investment. In addition, potential consumers can be
expected to check the experience and references of the
parties to ensure that the parties have the ability to
deliver the software being promoted and that the parties
will be available post-contract to provide continuing
support.
From our consideration of these factors, we can see no
realistic likelihood of confusion despite the similarity of
the marks and customers. In this regard, the Court of
Customs and Patent Appeal, the predecessor of our reviewing
court, stated in Witco Chem. Co. v. Whitfield Chem. Co., 418
F.2d 1403, 164 USPQ 43, 44-45 (CCPA 1969), aff’g, 153 USPQ
412 (TTAB 1967):
We are not concerned with mere
theoretical possibilities of confusion,
deception, or mistake or with de minimis
situations but with the practicalities
of the commercial world, with which the
trademark laws deal.

Opposition No. 91166054
38
In view thereof, we find that applicant’s mark CAPTARA
used in connection with “computer software, namely software
that assists in the development of capital expenditure
finance processes in the field of fixed-asset financing and
portfolio management” does not so resemble CAPTARIS used in
connection with “computer hardware and computer application
software for, use in the field of telecommunications,
namely, used for providing electronic transmission of
documents, voice messaging, call processing, interactive
voice response, unified messaging, facsimile transmission,
and wireless mobile communications” as to be likely to cause
confusion.
Decision: the opposition is dismissed with prejudice.