Captaris, Inc.v.Captara CorporationDownload PDFTrademark Trial and Appeal BoardJul 19, 2007No. 91166054 (T.T.A.B. Jul. 19, 2007) Copy Citation 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. Copy with citationCopy as parenthetical citation