Chicago Mercantile Exchange, Inc.v.Globix Corp.

Trademark Trial and Appeal Board

Apr 8, 2004

No. 91122818 (T.T.A.B. Apr. 8, 2004)

Hearing: Mailed: April 8, 2004
October 9, 2003 Paper No. 29
BAC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
Chicago Mercantile Exchange, Inc.
v.
Globix Corporation
________
Opposition No. 91122818
to application Serial No. 75886868
filed on January 5, 2000
_______
John T. Gabrielides and Christopher N. Bolinger of Brinks
Hofer Gilson & Lione PC for Chicago Mercantile Exchange,
Inc.
Amy J. Benjamin of Darby & Darby PC for Globix Corporation.
_______
Before Simms, Chapman and Bottorff, Administrative Trademark
Judges.
Opinion by Chapman, Administrative Trademark Judge:
On January 5, 2000 Globix Corporation (a Delaware
corporation) (hereinafter applicant) filed an application to
register on the Principal Register the mark GLOBOX for the
following goods:
“computer stand and storage cabinet
specifically designed for holding
computers and accessories” in
International Class 9; and
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Opposition No. 91122818
2
“computer furniture and computer storage
systems comprising storage racks and
furniture partitions” in International
Class 20.
The application is based on applicant’s claimed dates of
first use and first use in commerce of December 29, 1999 for
both classes of goods.
Chicago Mercantile Exchange, Inc. (a Delaware
corporation) (hereinafter opposer or CME) has filed a notice
of opposition, alleging as grounds therefor that it owns
Registration Nos. 1,576,888 and 2,448,961, both for the mark
GLOBEX, for “conducting commodities, securities, monetary
and financial instruments futures and options exchange
services” in International Class 361, and “conducting
courses, seminars and computerized training in trading
contracts for securities, commodities, and monetary and
financial instruments on a futures exchange” in
International Class 412; that opposer and its predecessors
in interest have continuously used the GLOBEX mark for the
educational services since June 1988 and for the exchange
services since 1992; and that applicant’s mark, when used on
its goods, so resembles opposer’s previously used and
registered mark GLOBEX, as to be likely to cause confusion,
1 Registration No. 2,448,961, issued May 8, 2001. (Opposer pled
this as the application it was at the time opposer filed the
notice of opposition.)
2 Registration No. 1,576,888, issued January 9, 1990, Section 8
affidavit accepted, Section 15 affidavit acknowledged, renewed.
Opposition No. 91122818
3
mistake, or deception in contravention of Section 2(d) of
the Trademark Act.3
Opposer specifically describes its business in the
notice of opposition (paragraphs 7-8) as follows:
7. In 1988, [CME] began offering the
Educational Services in preparation for
the launch of the GLOBEX Exchange
Services. [CME] operates a futures and
options exchange offering inter alia
currency, interest rate and equity
index-based futures and options
contracts traded on the floor of the
[CME] by open outcry during defined
trading hours. The Opposer offers
GLOBEX Exchange Services for trading
futures and options electronically
through the use of a computer hardware
and software system during hours when
the [CME] trading floor is closed and
during other defined hours creating a
“virtual trading floor.”
8. GLOBEX Educational Services provide
training in the use of software and
hardware to trade electronically on the
GLOBEX exchange. GLOBEX Exchange
Services may be accessed by users
through a choice of software interfaces
provided by the [CME] which link
proprietary software of member firms or
the software of independent vendors to
an electronic trading system.
In its answer applicant denies the salient allegations
of the notice of opposition.4
3 Opposer also pled a claim of dilution under Section 43(c) of
the Trademark Act, 15 U.S.C. §1125(c). In its brief on the case,
opposer stated that it is “no longer relying on dilution as a
basis for opposing the application.” (Brief, footnote 1.)
Accordingly, the Board will not further consider opposer’s claim
of dilution under Section 43(c) of the Trademark Act.
4 Applicant pleaded certain “affirmative defenses.” However,
these “defenses” are generally more in the nature of further
Opposition No. 91122818
4
Both parties filed briefs on the case, and both parties
were represented at an oral hearing held before the Board on
October 9, 2003.5
The record consists of the pleadings; the file of the
opposed application; opposer’s notice of reliance under
Trademark Rule 2.122(e) on (i) status and title copies of
its pleaded registrations under Trademark Rule 2.122; and
(ii) photocopies of excerpted articles retrieved from the
Nexis database; and the testimonies, with exhibits, of the
following two witnesses:
(1) Ms. Arman Falsafi, opposer’s managing director of
global electronic trading and data (one taken by
explanation of applicant’s denials of opposer’s likelihood of
confusion and dilution claims.
However, the Board notes that applicant alleged mere
descriptiveness as an affirmative defense. Specifically, in
paragraph 13 of its answer applicant stated that “Opposer’s
GLOBEX mark is merely descriptive of Opposer’s services, has not
acquired secondary meaning and, therefore, is not entitled to
protection.” Inasmuch as such an allegation constitutes a
collateral attack on the validity of opposer’s pleaded
registrations, it is required to be raised by way of a
counterclaim petition to cancel, which applicant has not done.
See Trademark Rule 2.106(b)(2)(ii), and TBMP §313 (2d ed. June
2003). In the present case, we note that opposer’s Registration
No. 1,576,888 is over five years old and, thus, mere
descriptiveness is not available as a ground for cancellation.
See Section 14(1) of the Trademark Act, 15 U.S.C. §1064(1).
Applicant’s allegations, when viewed in the context of the other
“affirmative defenses” in the answer, are being construed as an
assertion that opposer’s registered mark, GLOBEX, is highly
suggestive and hence is a weak mark.
5 The oral hearing included not only this opposition, but also
three related consolidated oppositions between these parties
(Nos. 91117543, 91117620 and 91123117). The consolidated case
was separately briefed and a separate decision is being issued
therein.
Opposition No. 91122818
5
opposer on September 4, 2002 and one taken by applicant
on November 1, 2002); and
(2) Mr. Mitchell S. Moore, applicant’s director of
marketing (taken by applicant on December 11, 2002).6
Preliminary Matter
In the briefs on the case (and at the oral hearing) the
parties disagreed as to whether opposer pled and/or proved
common law rights in its mark GLOBEX for services in
addition to those recited in opposer’s two pleaded
registrations. This issue arose through opposer referring
in its brief to providing various means of access to the
GLOBEX electronic trading exchange system and providing
“additional support services to its GLOBEX customers”
(opposer’s brief, pp. 5 and 10-11), to which applicant
countered that the Board could consider only the
identifications of services set forth in opposer’s two
pleaded registrations, and that even if opposer does provide
various means of access to its electronic trading exchange
system as well as “additional support services,” they are
all merely incidental to opposer’s GLOBEX futures trading
service, and are not separate services subject to trademark
protection (applicant’s brief, pp. 4-5). Finally, in its
reply brief, opposer specifically asserted that it is
6 The testimony of Mr. Moore was submitted as “confidential.”
Opposition No. 91122818
6
entitled to rely on any unregistered usage of the mark
GLOBEX which it can prove (opposer’s reply brief, pp. 2-3).
In our review of the notice of opposition, it is clear
that opposer did not plead common law rights in the mark
GLOBEX for any additional services. However, it is also
clear that this issue was tried with the implied consent of
applicant, as applicant made no objection to Ms. Arman
Falsafi’s testimony or exhibits insofar as the testimony
addresses opposer’s additional services. See Fossil Inc. v.
Fossil Group, 49 USPQ2d 1451 (TTAB 1998). Accordingly, we
hold that the notice of opposition is considered amended
under Fed. R. Civ. P. 15(b) to conform to the evidence,
specifically, to include a claim of common law rights in the
mark GLOBEX for additional services.
Whether opposer proved any common law rights in the
mark GLOBEX for services other than those set forth in its
two pleaded registrations is fully discussed later herein.
Parties
The Chicago Mercantile Exchange was founded in 1898,
and is currently the largest futures exchange in the United
States. The products opposer trades are futures and options
on interest rates, equities, equity index products,
commodities, and foreign exchange.
Opposition No. 91122818
7
In 1987, CME announced plans to develop a worldwide
after-hours electronic trading system; and in 1992 that
system was launched as the GLOBEX system. In its first
year, trading volume averaged under 1000 contracts per day,
and by 2002 the average daily volume was over 500,000
contracts per day.
Opposer’s customers include institutional groups such
as banks, pension funds and hedge funds, as well as
individuals. An individual customer must have an account
with a futures brokerage firm in order to trade on opposer’s
GLOBEX system. The majority of opposer’s top customers are
institutional.
CME advertises its GLOBEX services on billboards, in
newspapers and magazines (e.g., The Wall Street Journal,
Financial Times, Investor’s Business Daily, Barron’s), and
through direct mailings as well as seminars and conferences.
Opposer also participates in commodities and financial
industry trade shows such as Futures and Options World (FOW)
and Futures Industry Association (FIA).
Opposer’s worldwide marketing and advertising expenses
have totaled about $15.6 million for the years 1995-2002,
about 90% of which was for the United States. The worldwide
electronic trading direct revenues for 1995 to 2001 totaled
Opposition No. 91122818
8
about $139 million, about 80-90% of which is for the United
States.7
Opposer has in the past provided space for computer
equipment for one customer as a special service. Opposer
does not provide computer furniture or storage racks to its
customers in the United States. (First Falsafi dep., pp.
43-45; Second Falsafi dep., p. 40.) Opposer does not
provide Internet services such as hosting services for
third-party web sites, or retail store services for the sale
or leasing of computers. (First Falsafi dep., pp. 43-45.)
The Chicago Mercantile Exchange provides “side-by-side
trading” by which opposer means that there are computer
terminals around the pit that enable customers to trade
products both electronically and in the traditional manner
in the pit. (First Falsafi dep., p. 48). Opposer owns all
of the computer terminals in the pit, but some are assigned
to members who can then trade on the floor by accessing
computer terminals around any given pit and they can trade
on that terminal using the GLOBEX system or they can execute
paper orders in the pit. Some of these computer terminals
are assigned to individuals who pay a monthly fee therefor
7 Opposer’s witness, Ms. Falsafi, did not define or explain
exactly what the term “revenue” means. (That is, are these
“revenue” figures opposer’s general profit, or trading fees paid
to opposer, or the total dollar value of the commodities and
securities traded?)
Opposition No. 91122818
9
and other computer terminals can be used by any members on
the floor on a first-come, first-serve basis.
Opposer is not aware of any instances of actual
confusion.
Opposer’s witness, Ms. Arman Falsafi, as Chicago
Mercantile Exchange, Inc.’s managing director of global
electronic trading and data, testified that she is
responsible for CME’s electronic trading business (that is,
GLOBEX), its information products business, and its
international offices. As she explained, GLOBEX from the
functional perspective is a fully electronic marketplace
where buyers and sellers interested in CME’s trading
products are able to execute orders and take positions in
those products through an all electronic processing
exchange; and from a practical perspective GLOBEX is a
“whole slew of software and hardware and networks and
servers and routers and all sorts of technology that has to
kind of come together to enable market participants to come
together and transact electronically.” (First Falsafi dep.,
pp. 8-9.)8
8 Opposer’s registrations for the mark GLOBEX for exchange
services and for conducting courses thereon are not limited to
electronic exchange services or training thereon. However, with
regard to opposer’s assertion of common law rights in the mark
GLOBEX for additional services, the record is clear that GLOBEX
refers only to an electronic trading exchange service (and the
training therefor).
Opposition No. 91122818
10
The GLOBEX electronic trading system consists of a host
computer (mainframe), a network (communication lines and a
series of “concentrator” computers linking the host to all
users, and terminals (workstations through which users
access the GLOBEX system to trade and perform related
functions). (See e.g., First Falsafi dep., Exhibit Nos. 4,
p. 3 and 6, p. 5) Opposer will directly provide software,
called GLOBEX Trader software or they will provide a tool
kit, called API (application programming interface) to
connect through one’s own system to the GLOBEX system. Some
customers use both. Most of opposer’s GLOBEX trading
business comes through the use of the API program which is
used to build front-ends that talk to GLOBEX. (First
Falsafi dep., p. 38-39, second Falsafi dep., p. 7 and 11.)
Opposer also provides a GLOBEX Control Center which is
“our customer support, help desk function that provides
market support for our customers” (e.g., status of an order,
status of the network, report systems issues). (First
Falsafi dep., p. 10.)
Opposer interacts with a customer’s IT staff in order
to have opposer’s contractors (e.g., AT&T) install the lines
and telecommunications equipment necessary for use of the
GLOBEX trading software. (First Falsafi dep., pp. 50-51.)
Customers can use the GLOBEX Trading software on a
workstation provided by opposer or on their own workstation.
Opposition No. 91122818
11
However, customers (i.e., Morgan Stanley) can also
access opposer’s GLOBEX system through their own software
that speaks to the GLOBEX system via opposer’s tool kit
(API--application programming interface).
During the second deposition of Ms. Falsafi (second
Falsafi dep., pp. 28-39) the witness was asked by
applicant’s attorney to look at seven of applicant’s
brochures each on a different service offered by applicant,
and the witness was asked if opposer provided such a
service. Her responses were as follows: (1) with regard to
applicant’s “complex hosting solutions” (providing a
facility for customers to run their Internet applications
and provide access to them from the Internet), she stated
“no”; (2) with regard to “dedicated connectivity” (managing
a company’s connection to the Internet), she stated “no”;
(3) with regard to “data centers” (physical facilities that
house, inter alia, technical, executive and administrative
staff), she stated that opposer does provide some of the
services such as call management, incident tracking,
electricity and air conditioning, storing third-party
equipment, secure facility9; (4) with regard to “streaming
media,” she stated that opposer does stream GLOBEX seminars
and GLOBEX data to customers; (5) with regard to “Earth
9 Ms. Falsafi testified that these services were provided to
European customers through opposer’s GLOBEX London hub (second
Opposition No. 91122818
12
Cache CDN service” (a content management service that
enhances delivery of web content to end users), she stated
that opposer offers web content to its customers, but not a
service that provides third-party delivery of web content;
(6) with regard to “hosted exchange” (hosting services for
things such as e-mail), she stated “no”; and (7) with regard
to “managed services” (monitoring, reporting and technical
care “to keep your hosting environment running at peak
performance”), she responded that she had difficulty
understanding what this one is, but she guesses it would be
hosting services on top of the hosting service already
discussed.
Applicant, Globix Corporation, is a provider of managed
Internet services (ISP), and thus, it offers services such
as complex Internet hosting, network services, advanced
Internet applications, web conferencing, e-mail and
messaging services, Internet security, computer facility
leasing to third parties. Applicant has offered its
services since July 1998. (Applicant’s Exhibit No. 46.)
Through its GLOBIX Internet Data Centers, applicant
also provides “co-location” services for customers who
choose to own and maintain their own servers, but require a
physically secure, climate-controlled environment.
Specifically, applicant leases floor space within its data
Falsafi dep., p. 32-33, and opposer’s Exhibit No. 19); and that
Opposition No. 91122818
13
centers to its customers who put their own servers inside a
specialized case located at the data center. This
specialized case is offered to the customers under the mark
GLOBOX. The GLOBOX enclosure provides customers with
additional security and privacy. The goods sold under the
mark GLOBOX are not sold separately from applicant’s
services, but these goods tend to be sold to applicant’s
high-end customers that purchase several of applicant’s
fundamental services. (Moore dep., pp. 63-65, Exhibit No.
87, p. 5.)
Applicant has offered “co-location” services under the
mark GLOBIX since 1999. (Moore dep., Exhibit Nos. 48, 49,
55, 57, 59, 60.) Applicant’s proven first use of the mark
GLOBOX on the involved goods is 2000. (Moore dep., pp. 48,
54 and 62; and Exhibit Nos. 63, 71, and 87 at p. 5.)
Generally applicant’s customers are entities of all
types and sizes who want to be present on the Internet, but
cannot or do not want to do it themselves. One of
applicant’s customers is an online brokerage firm. (First
Moore dep., p. 13, applicant’s Exhibit No. 2.) Applicant
has attended Internet industry trade shows such as ComNet
and Internet World. Applicant advertises in newspapers and
magazines (e.g., The Wall Street Journal, The New York
Times, Internet World, Information Week); and it sends
opposer is discussing plans to do so in Chicago in 2003.
Opposition No. 91122818
14
direct mailings focused on specific product campaigns.
Applicant has a web site advertising its services thereon,
but it does not otherwise place advertisements on the
Internet. However, if a customer wishes it be known that
they are on the GLOBIX network or they are hosted at a
GLOBIX facility, they are permitted to use a “Powered by
GLOBIX” identifier.
Applicant conducts case studies (descriptions of
customer successes) and applicant puts out a newsletter
approximately monthly.
Applicant’s recent monthly marketing expenses are
generally in the six figures and its recent monthly revenues
are in the seven figures. (These figures were not broken
down to identify the advertising expenses for and the sales
of applicant’s GLOBOX products.)
Standing
Opposer’s two pleaded registrations have been properly
made of record; and applicant did not contest opposer’s
standing. We find that opposer has established its
standing.
Priority
With regard to the issue of priority in relation to the
services set forth in opposer’s pleaded registrations, to
Opposition No. 91122818
15
the extent that opposer owns valid and subsisting
registrations of its pleaded mark, the issue of priority
does not arise. See King Candy Company v. Eunice King’s
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974); and
Carl Karcher Enterprises Inc. v. Stars Restaurants Corp., 35
USPQ2d 1125 (TTAB 1995).
In this opposition opposer also asserts common law
rights in the mark GLOBEX for “additional support services”
(brief, pp. 5 and 10-11). Opposer specified these services
as follows (reply brief, p. 3):
(1) providing GLOBEX Trading software to
access the GLOBEX electronic trading
system via the Internet or direct
access;
(2) providing access to the GLOBEX
system via direct connection to CME’s
trading floors;
(3) providing a computer network
connection and telecommunications
equipment, together with requisite
computer hardware and software,
including dedicated PC workstations, to
enable access to the GLOBEX system from
a customer’s site;
(4) providing access to the GLOBEX
system through leased computer terminals
on CME’s trading floors;
(5) storage of customers’
telecommunications hardware and network
equipment at opposer’s facilities (under
development in the United States);
(6) providing system support and
workstation assistance via CME’s GLOBEX
Control Center; and
Opposition No. 91122818
16
(7) computerized training in the use of
software and hardware to electronically
trade on the GLOBEX system.10
A party asserting a claim under Section 2(d) of the
Trademark Act must establish prior use of a trademark or
service mark, or trade name or other indication of origin.
As stated by the Court of Appeals for the Federal Circuit in
the case of Towers v. Advent Software Inc., 913 F.2d 942, 16
USPQ2d 1039, 1041 (Fed. Cir. 1990):
Under the rule of Otto Roth [Otto Roth & Co. v.
Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40 (CCPA
1981)], a party opposing registration of a trademark
due to a likelihood of confusion with his own
unregistered term cannot prevail unless he shows that
his term is distinctive of his goods, whether
inherently, or through the acquisition of secondary
meaning or through “whatever other type of use may have
developed a trade identity.” Otto Roth, 640 F.2d at
1320, 209 USPQ at 43.
That is, with regard to priority as to opposer’s common law
rights in the mark GLOBEX, opposer must show that its mark
is distinctive of its services, either inherently, or
through acquired distinctiveness, and opposer must then
prove prior use of the mark with regard to the additional
services.
10 Opposer’s claim of common law rights in the mark GLOBEX for
this particular “additional” service, is unnecessary because
opposer pled and proved ownership of a registration for the mark
GLOBEX for “conducting courses, seminars and computerized
training in trading contracts for securities, commodities, and
monetary and financial instruments on a futures exchange.” Thus,
opposer need not rely on common law rights therein, and the Board
will not further consider this particular “additional” service in
the context of common law rights.
Opposition No. 91122818
17
We find opposer’s mark GLOBEX to be inherently
distinctive, albeit suggestive of a trading exchange which
can be carried out worldwide. In the context of the
specific additional services for which opposer asserts
common law rights, we also find the mark GLOBEX to be
inherently distinctive.
However, the record is very ambiguous and vague about
opposer’s additional services relating to access of
opposer’s GLOBEX electronic trading exchange system (as set
forth above), both as to (i) whether these are actually
separate services or whether they are ancillary or
incidental to opposer’s electronic trading exchange
services, and (ii) the specific dates of first use of the
mark in connection with the access services. See Martahus
v. Video Duplication Services Inc., 3 F.3d 417, 27 USPQ2d
1846 (Fed. Cir. 1993). See also, 3 J. Thomas McCarthy,
McCarthy on Trademarks and Unfair Competition §§20:17 and
20:18 (4th ed. 2001).
Simply stated, the evidence does not establish common
law rights for opposer in its GLOBEX mark for these various
access methods. That is, opposer has failed to prove common
law rights in its mark for any of the different access
services. Opposer explains in its brief (p. 5) that
“customers have a number of different ways of accessing
CME’s GLOBEX electronic trading services, depending on the
Opposition No. 91122818
18
customers’ hardware and circuitry needs and capabilities.”
And opposer refers to these as “access options” or “access
alternatives.” Opposer then sets forth five different ways
of accessing its electronic trading services, specifically
(i) through the Internet or direct data connection, (ii)
through direct connection to opposer’s trading floor, (iii)
through opposer’s installing a computer network connection
and telecommunications equipment (with the required hardware
and software) enabling access from a customer’s site, (iv)
through leased computer terminals on opposer’s trading
floors, and (v) an access option available in Europe is
opposer’s storage of customers’ telecommunications hardware
and network equipment at opposer’s facilities, with direct
connections to opposer’s trading floors.
The record does not establish that these various ways
to access opposer’s GLOBEX trading system are separate
services offered by opposer under the mark GLOBEX, nor that
they would be recognized as such by purchasers. In fact, to
the contrary, opposer’s own marketing brochures (e.g.,
Exhibit Nos. 3 at page 3, 4 at page 3, and 6 at page 5 --
dated 1994, 1995 and 1992, respectively) refer to these
various features or methods of access as “the GLOBEX
system’s primary components.” Opposer uses a contractor
(AT&T) for its wide area network connection installations
(First Falsafi dep., p. 50; Second Falsafi dep., p. 21); and
Opposition No. 91122818
19
opposer is not responsible for the Internet connections of
its customers (First Falsafi dep., p. 38). The fifth listed
method of access (storage of the customers’
telecommunication hardware and network equipment at
opposer’s facilities) is not offered in the United States.
(Second Falsafi dep., pp. 32-33).
The record falls far short of establishing that the
various (5) methods of accessing opposer’s GLOBEX electronic
trading system are separate services offered to customers
and that customers understand that they could purchase not
only use of opposer’s trading exchange system, but, in
addition and separately, the method of access thereto as a
GLOBEX service.
In any event, all of the various methods of access are
not “related services” as argued by opposer, but rather are
incidental to opposer’s GLOBEX electronic trading exchange
system. Customers could not electronically trade in an
exchange environment without some type of access to the
electronic system. See In re Dr Pepper Co., 836 F.2d 508, 5
USPQ2d 1207 (Fed. Cir. 1987).
Even if these access methods were in fact separate
services and so perceived by consumers (which has not been
established herein), the record is vague as to specific
dates of first use for any of these asserted separate access
methods.
Opposition No. 91122818
20
Based on the foregoing, opposer has not established
common law rights in its mark for these five asserted access
services.
Turning to opposer’s claim of common law rights in the
mark GLOBEX for the service of providing system support and
workstation assistance through its GLOBEX Control Center, we
find that opposer has established common law rights in the
mark for this service. Ms. Falsafi testified that the
GLOBEX Control Center is “our customer support, help desk
function that provides market support for our customers”;
and that this is “a help desk facility that customers call
into for anything from wanting to know the status of an
order to the status of the system, if there are any systems
issues, to the status of the network, so anything and
everything to do with GLOBEX production support they would
call into the GLOBEX Control Center.” (First Falsafi dep.,
p. 10.)
Opposer’s first use of the mark GLOBEX in connection
with these services is 1992. Opposer’s marketing brochure,
published and distributed in 1992, refers to “GLOBEX CONTROL
CENTER/INFORMATION & ASSISTANCE … GCC staff also assists
users with technical difficulties and in the operation of
terminals and with trading inquiries.” (Exhibit No. 6, at
page 15.)
Opposition No. 91122818
21
In sum, we find that priority does not arise as an
issue with regard to the services identified in opposer’s
two registrations; that opposer has established common law
rights in its mark only in connection with its “help desk”
GLOBEX Control Center functions; and that opposer has proven
common law rights in its GLOBEX mark for this service prior
to the earliest date on which applicant can rely for its
mark GLOBOX, which is the filing date of its application
January 5, 2000. (Applicant’s earliest proven first use of
its mark GLOBOX on these goods is the year 2000.)
Likelihood of Confusion
Our determination of likelihood of confusion is based
on an analysis of all of the facts in evidence that are
relevant to the factors bearing on the issue of likelihood
of confusion. In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re
Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d
1201 (Fed. Cir. 2003). Based on the record before us, we
find that confusion is not likely.
Opposer argues the following du Pont factors:
the marks are similar in sound, appearance,
connotation and commercial impression;
opposer’s mark is a strong, well-known mark as
used in connection with opposer’s trading
Opposition No. 91122818
22
services, and is entitled to a broad scope of
protection;11
opposer’s “computer-based electronic trading
services” and applicant’s “computer-related
furniture and cabinets” are reasonably related
goods and services;
the parties’ respective goods and services are
offered through similar channels of trade;
applicant exaggerates the sophistication of the
relevant consumers; and
the absence of instances of actual confusion is
entitled to little, if any, weight as the test is
likelihood of confusion, not actual confusion.12
Applicant argues the following du Pont factors:
applicant’s goods and opposer’s services differ
significantly and are not related;
the parties’ respective goods and services are
marketed through different trade channels to
different purchasers;
the relevant consumers are highly sophisticated,
and the goods and services are not purchased on
impulse;
the marks are dissimilar;
there is no evidence of actual confusion despite
several years of co-existence; and
there is only a de minimis possibility of
confusion.
11 Opposer does not contend that its mark is famous under the du
Pont factors.
12 Opposer also argues the legal principles that (i) applicant did
not meet its duty to select a mark that avoids the likelihood of
confusion; and (ii) any doubt on the issue of likelihood of
confusion is resolved in favor of opposer, the senior user.
Opposition No. 91122818
23
The first du Pont factor we consider is the similarity
or dissimilarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression.
Opposer contends that its mark GLOBEX and applicant’s
mark GLOBOX are quite similar varying by only one letter;
and that the differing letters are both vowels.
Applicant contends that its mark suggests that its
product is a “box” while opposer’s mark suggests its
“exchange” services; and that the marks are different in
sound, appearance, connotation and commercial impression.
It is clear that these marks differ by only one
letter. However, in this case, opposer’s mark and
applicant’s mark do not sound alike when spoken, nor do the
marks look alike. While they share the first four letters
in common, the suffix or second syllable is not the same.
We find the marks are dissimilar in sound and appearance.
In terms of connotation, opposer’s mark GLOBEX ends in
“ex” and relates to the term “globe,” whereas applicant’s
mark GLOBOX could relate to the idea of “glo” in the sense
of “glow” with a second syllable consisting of the word
“box.” Even if one assumes that the public will perceive
applicant’s GLOBOX mark as consisting of the syllable “glob”
in the sense of “globe” and the second syllable as “box,”
purchasers would perceive applicant’s mark as relating to
the concept of a container or “box” in relation to
Opposition No. 91122818
24
applicant’s goods. We find it reasonable that the suffix
“ex” in opposer’s mark would be perceived by purchasers in
relation to opposer’s trading exchange services as exactly
that, a trading exchange, presumably either available from
or involving securities and commodities from around the
world.
We find that opposer’s mark GLOBEX and applicant’s mark
GLOBOX are not similar in sound, appearance, connotation or
overall commercial impression. See In re Hearst Corp., 982
F.2d 493, 25 USPQ2d 1238 (Fed. Cir. 1992); Swatch Watch,
S.A. v. Taxor Inc., 785 F.2d 956, 229 USPQ 391 (11th Cir.
1986); In re Digirad Corp., 45 USPQ2d 1841 (TTAB 1998); and
Burns Philip Food Inc. v. Modern Products Inc., 24 USPQ2d
1157 (TTAB 1992), aff’d unpub’d, but appearing at 1 F.3d
1252, 28 USPQ2d 1687 (Fed. Cir. 1993).
Opposer contends that its mark is “strong and entitled
to broad legal protection” (brief, p. 8), deriving its
strength from both its inherent distinctiveness and
opposer’s extensive use and promotion of its mark in the
marketplace.
Applicant contends that even if opposer has a strong
mark (which applicant does not concede has been proven by
opposer -- applicant’s brief, p. 13), the strength of
opposer’s mark in this opposition does not reach the same
level as the fame found for the mark PLAY-DOH in the case of
Opposition No. 91122818
25
Kenner Parker Toys, Inc. Rose Art Industries Inc., 963 F.2d
350, 22 USPQ2d 1453 (Fed. Cir. 1992); and that, in any
event, here the alleged strength of opposer’s mark should
not be a single dispositive factor.
While the Chicago Mercantile Exchange was founded over
100 years ago and opposer, CME, is currently the largest
futures exchange in the United States, that does not
establish that its mark for its electronic trading exchange
system, GLOBEX, is well-known to purchasers or potential
purchasers. Opposer has used its GLOBEX mark for its
trading exchange services since 1992, and has spent
approximately $1.8 million per year from January 1995 to
August 2002 on advertising and promotion in the United
States, receiving revenues of approximately $119,000,000
total from 1995-2001 in the United States. (As explained
previously, the term “revenue” is not defined or explained
by opposer, i.e., whether it refers to the total value of
the commodities, securities, options and the like which are
traded, or if it refers to fees paid to opposer, or if it
refers to opposer’s general profit.)
Opposer submitted a notice of reliance on the entire
set of excerpted stories retrieved from the Nexis database
from opposer’s search of “globex w/25 chicago mercantile
exchange or cme and date aft 1991,” resulting in 876
excerpted stories. A review of these stories shows that
Opposition No. 91122818
26
many are from foreign publications, many are repeats of the
same story, some are too cursory to understand the context,
and many are not particularly convincing uses of GLOBEX as
opposer’s service mark. While we acknowledge that there are
clearly many uses within these 876 excepted stories which
are in U.S. publications and which clearly refer to
opposer’s electronic trading exchange system, nonetheless,
we do not find that this type of evidence is particularly
convincing that there is widespread attention to and fame of
opposer’s GLOBEX mark for its services. As the Court of
Appeals for the Federal Circuit said in a slightly different
context, in In re Societe Generale des Eaux Minerales de
Vittel S.A., 824 F.2d 957, 3 USPQ2d 1450, 1451 (Fed. Cir.
1987), “It is indeed remarkable to see the thoroughness with
which NEXIS can regurgitate a placename casually mentioned
in the news.”
Based on the record before us, we find that opposer’s
mark has achieved at least some renown, but the renown of
marks is relative, not absolute, and opposer’s mark GLOBEX
is not on a par with marks such as PLAY-DOH. See Sports
Authority Michigan Inc. v. PC Authority Inc., 63 USPQ2d
1782, 1796 (TTAB 2002). Opposer has not established that
its mark is entitled to a broad scope of protection.
Turning to the du Pont factor of the similarity or
dissimilarity and nature of the goods and services, we first
Opposition No. 91122818
27
consider both of applicant’s goods (in International Classes
9 and 20) and opposer’s registered services (International
Classes 36 and 41). With regard to these goods and
services, in Board proceedings, the issue of likelihood of
confusion must be determined in light of the goods or
services as identified in the involved application(s) and
registration(s). See Octocom Systems Inc. v. Houston
Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed.
Cir. 1990); and Canadian Imperial Bank of Commerce, N. A. v.
Wells Fargo Bank, 811 F.2d 490, 1 USPQ2d 1813, 1815 (Fed.
Cir. 1987). It is not necessary that the goods or services
be identical or even competitive; rather, it is sufficient
that the goods or services are related in some manner and
that the circumstances surrounding their marketing are such
that they would likely be encountered by the same persons
under circumstances that could give rise to the mistaken
belief that the goods or services emanate from or are
associated with the same source. See In re Peebles Inc., 23
USPQ2d 1795, 1796 (TTAB 1992); and In re International
Telephone and Telegraph Corporation, 197 USPQ 910 (TTAB
1978).
As previously stated applicant’s goods are identified
as follows:
“computer stand and storage cabinet
specifically designed for holding
computers and accessories” in
International Class 9; and
Opposition No. 91122818
28
“computer furniture and computer storage
systems comprising storage racks and
furniture partitions” in International
Class 20.
Opposer’s services, as identified in its registrations,
are as follows:
“conducting commodities, securities,
monetary and financial instruments
futures and options exchange services”
in International Class 36; and
“conducting courses, seminars and
computerized training in trading
contracts for securities, commodities,
and monetary and financial instruments
on a futures exchange” in International
Class 41.
Here opposer has completely failed to establish that
these goods and services are related within the meaning of
the Trademark Act. Opposer’s very general assertion that
the goods and services are “computer-related” and “computer-
based,” respectively, is inadequate proof of the
relatedness. Opposer offers a trading exchange service
specifically involving trading of commodities, futures,
options, securities, and monetary and financial instruments;
and courses in conducting such trades. Applicant sells
computer stands and storage cabinets, computer furniture and
computer storage systems. (The record is clear that
applicant sells these goods in connection with its “co-
location” services, but we nonetheless consider applicant’s
goods only as identified.)
Opposition No. 91122818
29
Of course, opposer is correct that it is entitled to
rely on common law rights in its mark for additional
services in connection with which it has established
priority. As explained previously herein, the only
additional service in connection with which opposer has
established common law rights in its mark is its “help desk”
functions offered through its GLOBEX Control Center. Just
as with the identified registered services, opposer has
completely failed to establish that applicant’s goods and
opposer’s “help desk” services are related.
Inasmuch as computers are ubiquitous in virtually all
fields of commerce and business, the mere fact that the
parties’ respective services and goods may in some manner
involve or relate to computers, does not make them related
such that consumers would believe they emanate from the same
source. See Electronic Data Systems Corp. v. EDSA Micro
Corp., 23 USPQ2d 1460, 1463 (TTAB 1992); and Reynolds &
Reynolds Co. v. I.E. Systems Inc., 5 USPQ2d 1749, 1751 (TTAB
1985).
Opposer has not established that applicant’s goods and
opposer’s services (registered and common law) are related
within the meaning of the Trademark Act.
With regard to the channels of trade, applicant and
opposer generally advertise and market through different
trade shows, different printed publications and direct
Opposition No. 91122818
30
mailings to specific groups. However, opposer is correct
that there are no limitations in either applicant’s
identifications of goods or opposer’s identifications of
services as to trade channels and/or purchasers.
Applicant’s identifications of goods could include the
general public. Thus, we must assume that the parties’
respective goods and services could be offered through at
least overlapping channels of trade.
We turn then to the du Pont factors involving the
conditions of sale, the purchasers of the goods and
services, and their sophistication. Opposer contends that
applicant sells its goods to a broad range of consumers;
that consumers could encounter both opposer’s mark and
applicant’s mark “instantaneously while using a computer”
(brief, p. 11); and that “applicant improperly relies on
extrinsic evidence” (reply brief, p. 4) regarding the
“highly specialized enclosures” directed to “sophisticated
consumers” when the identifications of goods are not so
limited.
Applicant contends that the parties’ goods and services
are marketed in different ways to different consumers; that
the consumers of the parties’ respective goods and services
are sophisticated and knowledgeable regarding what they are
purchasing; and that opposer’s speculation that both
parties’ marks could be encountered “while using a computer”
Opposition No. 91122818
31
is absolutely unsupported by any evidence in the record, and
even if true, it would not make all goods and services
available through the Internet related.
We agree with opposer that even though the record shows
that applicant’s GLOBOX products are sold to its customers
who wish to lease space for their own computer equipment,
and that applicant provides the goods on its own premises,
there are no such restrictions in applicant’s
identifications of goods.13 Inasmuch as applicant’s goods
are not limited as to purchasers, we find that there are at
least overlapping classes of purchasers.
With regard to the sophistication of the purchasers and
the conditions of sale of the goods and services, opposer
must prove that there is a likelihood of confusion among the
purchasers for the parties’ respective goods and services.
See Electronic Design & Sales v. Electronic Data Systems,
954 F.2d 713, 21 USPQ2d 1388, 1391 (Fed. Cir. 1992). As the
Court stated in the Electronic Design & Sales case, 21
USPQ2d at 1392: “Where the purchasers are the same, their
sophistication is important and often dispositive because
‘[s]ophisticated consumers may be expected to exercise
greater care.’”
13 In its brief (footnote 5), applicant offered to amend its
identification of goods. In view of our decision herein, no
amendment to applicant’s identification of goods is needed.
Opposition No. 91122818
32
The purchasers here are sophisticated and
knowledgeable. Opposer’s purchasers are either the
personnel at institutions such as banks, hedge funds and
pension funds, or the individual customers (who are required
to have an account with a firm that provides futures
brokerage services in order to obtain opposer’s GLOBEX
trading exchange service), all of whom desire to engage in
the trading exchange at the CME on its GLOBEX system. Even
opposer’s witness Ms. Falsafi testified that it is in the
best interest of their customers to be educated if they want
to engage in such trading. (First Falsafi dep., p. 43.)
Applicant’s goods, albeit not limited as to purchasers, do
include in the identifications some indications that the
goods include more than home computer stands and furniture,
i.e., the computer stand includes “and storage cabinet
specifically designed…” and the computer furniture includes
“and computer storage systems….” Moreover, opposer’s
services are not purchased on impulse but only after careful
consideration about investing money and engaging in the
services of a trading exchange.
We find that the sophistication of at least purchasers
of opposer’s services and the conditions of sale factor
favors applicant.
With regard to the du Pont factor relating to actual
confusion, the parties have co-existed since 2000, with
Opposition No. 91122818
33
advertisements in media nationwide in scope (including in
The Wall Street Journal), and with significant respective
revenues indicating high sales volumes. Yet opposer is not
aware of any instances of actual confusion. (First Falsafi
dep., p. 43.) Considering there are a few years of
contemporaneous use and the relative success of opposer’s
nationwide advertising and sales of its services sold under
the GLOBEX mark, it is noteworthy that there have been no
reported instances of actual confusion involving potential
purchasers or purchasers of the involved goods and services.
See Sports Authority Michigan Inc. v. PC Authority Inc.,
supra.
Although proof of actual confusion is not required to
prove likelihood of confusion, in the circumstances of this
case, we find that the lack of any instances of actual
confusion favors applicant.
Finally, we consider the du Pont factor on the extent
of potential confusion, i.e., whether de minimis or
substantial. The record before us shows that there is at
most a de minimis chance that consumers would confuse the
source of opposer’s services and applicant’s goods.
There must be shown more than a mere possibility of
confusion; instead, there must be demonstrated a probability
or likelihood of confusion. See Electronic Design & Sales
v. Electronic Data Systems, supra, 21 USPQ2d at 1391,
Opposition No. 91122818
34
quoting from Witco Chemical Co. v. Whitfield Chemical Co.,
418 F.2d 1403, 164 USPQ 43, 44-45 (CCPA 1969) as follows:
“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." See also,
Triumph Machinery Company v. Kentmaster Manufacturing
Company Inc., 1 USPQ2d 1826 (TTAB 1987). The Trademark Act
does not speak in terms of remote possibilities of
confusion, but rather, the likelihood of such confusion
occurring in the marketplace. In this case, we find that
the likelihood (or even the possibility) of confusion is
remote.
Upon balancing all of the relevant du Pont factors in
this case, and giving each relevant factor the appropriate
weight, we hold that confusion is unlikely.
Decision: The opposition is dismissed.