Decho Corporationv.Brigitte Mueller

Trademark Trial and Appeal Board

Aug 12, 2011

No. 91183001 (T.T.A.B. Aug. 12, 2011)

Mailed: 8/12/11

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Decho Corporation
v.
Brigitte Mueller
_____

Opposition No. 91183001
to application Serial No. 77110761
filed on February 19, 2007
_____

Brett A. August and Daniel I. Hwang of Pattishall,
McAuliffe, Newbury, Hilliard & Geraldson for Decho
Corporation.

Paul E. Thomas of Fredrikson & Byron for Brigitte Mueller.
______

Before Quinn, Ritchie and Lykos, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:
Brigitte Mueller filed an application to register the
mark shown below, in standard characters,

for “providing on-line, non-downloadable software for
digital photo management, online photo sharing, creating,
sending and tracking customized online invitations and
marketing campaigns, creating and hosting web pages,
THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Opposition No. 91183001
2
building and sharing online calendars, managing and sharing
online contact lists, posting interactive online
discussions, and online social networking” (in Class 42).1
Decho Corporation opposed registration under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground
that applicant’s mark, when used in connection with
applicant’s services, so resembles opposer’s previously used
and/or registered marks MOZY, MOZYPRO, MOZYHOME and
MOZYENTERPRISE for computer software for storing electronic
data, and for electronic data storage services, as to be
likely to cause confusion. Opposer also claims that
applicant committed fraud in connection with prosecuting her
application.
Applicant, in her answer, denied the salient
allegations in the notice of opposition.
The record consists of the pleadings; the file of the
involved application;2 trial testimony, with related
exhibits, taken by opposer; status and title copies of
opposer’s pleaded registrations, the file wrapper of its
pleaded application, official records, applicant’s responses
to opposer’s interrogatories, excerpts of applicant’s

1 Application Serial No. 77110761, filed February 19, 2007,
asserting first use anywhere on April 5, 2005, and first use in
commerce on February 19, 2007.
2 The involved application is automatically part of the
evidentiary record. Trademark Rule 2.122(b). See TBMP
§704.03(a) (3d ed. 2011). Thus, opposer’s submission of the file
wrapper of this application was unnecessary.
Opposition No. 91183001
3
website, and excerpts of printed publications, all
introduced by way of opposer’s notices of reliance;
opposer’s responses to applicant’s interrogatories, official
records, excerpts of opposer’s website, and excerpts of
printed publications, all made of record by way of
applicant’s notice of reliance. The parties also
stipulated, pursuant to Trademark Rule 2.120(j), to allow
the introduction of depositions and related exhibits of
nonparties, taken during the discovery period, to be used as
testimony. Both parties filed briefs.
The Board initially notes that the present opposition
previously was consolidated with Opposition No. 91185092,
captioned “Brigitte Mueller v. Decho Corporation”; as is
readily apparent, the current parties were in reverse
positions. In the other opposition, Ms. Mueller opposed
Decho Corporation’s application serial no. 77203187 to
register the mark MOZY on the ground of likelihood of
confusion with Ms. Mueller’s mark MOZIE, that is, the mark
being opposed herein. Ms. Mueller withdrew the opposition,
and inasmuch as an answer had been filed, the Board, on June
28, 2010, dismissed the opposition with prejudice.3

3 The prior proceeding has no preclusive effect on the current
proceeding. Under the doctrine of claim preclusion, a judgment
on the merits in a prior suit bars a second suit involving the
same parties or their privies based on the same cause of action.
Jet Inc. v. Sewage Aeration Systems, 223 F.3d 1360, 55 USPQ2d
1854 (Fed. Cir. 2000). Because the earlier proceeding involved
the cause of action brought by Ms. Mueller to oppose Decho
Opposition No. 91183001
4
Opposer owns the following three registrations, all of
which are valid and subsisting, and properly of record:

MOZYENTERPRISE (in standard characters) for “computer
software for storing electronic data, including backing up
and archiving electronic data” (in Class 9); and “electronic
storage of data, including remote online backup of
electronic data; storage services for archiving databases,
images and other electronic data” (in Class 39).4

MOZYPRO and MOZYHOME (in standard characters) for
“downloadable computer software for storing electronic data,
including backing up and archiving electronic data” (in
Class 9); and “electronic storage of data, including remote
online backup of electronic data; storage services for

Corp.’s mark, and the instant proceeding involves the cause of
action brought by Decho Corp. to oppose registration of Ms.
Mueller’s mark, the cause of action is not the same in the two
proceedings. Issue preclusion, as distinguished from claim
preclusion, does not include any requirement that the claim (or
cause of action) be the same: “[W]hen an issue of fact or law is
actually litigated and determined by a valid and final judgment,
and the determination is essential to the judgment, the
determination is conclusive in a subsequent action between the
parties, whether on the same claim or a different claim.
Mother’s Restaurant, Inc. v. Mama’s Pizza, Inc., 723 F.2w 1566,
221 USPQ 394 (Fed. Cir. 1983). Because the prior judgment was
entered without any issues being litigated and decided, issue
preclusion does not apply. Cf. Gemini Engine Co. v. Solar
Turbines Inc., 225 USPQ 620 (TTAB 1985).
4 Registration No. 3551508, issued December 23, 2008.
Opposition No. 91183001
5
archiving databases, images and other electronic data” (in
Class 39).5

In addition, opposer made of record the file wrapper
(retrieved from the Office’s electronic database) of its
pleaded application Serial No. 77203187 to register the mark
MOZY (in standard characters) for “computer software for
storing electronic data, including backing up and archiving
electronic data” (in Class 9); “electronic storage of data,
including remote online backup of electronic data; storage
services for archiving databases, images and other
electronic data” (in Class 39); and “on-line journals,
namely, blogs featuring general information on computer
related services, including electronic data storage” (in
Class 41). So as to be clear, the Board does not take
judicial notice of a party’s registration(s).6 A plaintiff

5 Registration Nos. 3427915 and 3427916, respectively, issued May
13, 2008.
6 Opposer, in its brief, also refers to its ownership of a
“family” of MOZY trademarks (see discussion, infra), including
the following registrations that were not made of record:
Registration Nos. 3887183 and 3887184, issued December 7, 2010,
of MOZY and design (one claiming color as a feature of the mark)
for “downloadable computer software for storing electronic data,
including backing up and archiving electronic data”; and
Registration Nos. 3823214 and 3823220, issued July 20, 2010, of
the mark MOZY and design (one claiming color as a feature of the
mark) for “electronic storage of data, including remote online
backup of electronic data.” Registration Nos. 3823214 and
3823220 issued as trial commenced, yet opposer did not seek to
introduce these registrations into the record during its case-in-
chief testimony period. The other two registrations did not
issue until after trial ended.
Opposition No. 91183001
6
who pleads ownership of an application in its complaint
must, in order to rely on the subsequently issued
registration, make the registration of record. However, the
plaintiff does not have to amend its pleading to assert the
registration. The pleading of the application is viewed as
providing sufficient notice to the defendant of the
plaintiff’s intention to rely on any registration that
issues from the pleaded application. However, if the
registration issues after the plaintiff’s testimony period
closes, even if the defendant has admitted that the
plaintiff is the owner of the application and the plaintiff
has introduced a copy of the application into evidence, the
Board will not consider the registration. See TBMP
§704.03(b)(1)(A) (3d ed. 2011). In the present case,
opposer’s Registration No. 3944539 issued on April 12, 2011,
that is, after the briefs were filed in this case. To state
the obvious, there was no way for opposer to timely
introduce its recently issued registration into the record.
Accordingly, although we have considered opposer’s
underlying application, the subsequently issued registration
does not form part of the evidentiary record. UMG
Recordings Inc. v. O’Rourke, 92 USPQ2d 1042, 1045-46 (TTAB
2009).
Opposer has established its standing to oppose
registration of the involved application. In particular,
Opposition No. 91183001
7
opposer has properly made its pleaded registrations of its
MOZYENTERPRISE, MOZYPRO and MOZYHOME marks of record, and
essentially has shown that it is not a mere intermeddler.
See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842 (Fed. Cir. 2000); Ritchie v. Simpson, 170 F.3d 1092, 50
USPQ2d 1023 (Fed. Cir. 1999); and Lipton Industries, Inc. v.
Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
Priority with respect to opposer’s marks
MOZYENTERPRISE, MOZYPRO and MOZYHOME is not in issue in view
of opposer’s ownership of valid and subsisting registrations
of these marks. King Candy, Inc. v. Eunice King’s Kitchen,
Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
As indicated above, however, opposer’s registration of
the mark MOZY is not of record so, to the extent that
opposer relies on its ownership of this mark, opposer is
left to its common law rights in order to establish priority
of use of the mark MOZY.
In this connection, we initially note that applicant
does not directly challenge opposer’s priority of use of the
mark MOZY for opposer’s goods and services. Rather, it
merely states that opposer’s “priority arguments lose their
significance” because there is no likelihood of confusion.
(Brief, p. 18). Be that as it may, we find that the record
establishes opposer’s prior common law rights in the mark
MOZY.
Opposition No. 91183001
8
Joshua Coates, opposer’s founder, testified that
opposer began development of opposer’s electronic data
storage services in 2004, and alpha testing (an initial
public release of the services to a limited user base) of
the services began in July, 2005. That same month Mr.
Coates referred to the mark in a presentation to a bank.
After the successful alpha testing, opposer conducted beta
testing of its services in September, 2005; the beta testing
utilized a more robust and mature version of the services,
and this testing involved greater public participation.
Opposer’s testing quickly garnered media attention, and the
technology press began to follow the development of
opposer’s MOZY services. The record includes numerous
examples of these articles.
By November 11, 2005, opposer’s MOZY website had
received about 8,000 visitors, and more than 1,400 of them
had signed up for opposer’s electronic storage services. By
December 16, 2006, opposer reached a milestone, with over
100,000 customers signed up for its services. Opposer
continued to expand and, as of December 10, 2009, opposer
was providing its storage services under the MOZY marks to
over one million customers, including over 40,000 business
customers. Recent expansion included a partnership launch
with Comcast of a service that allows customers to share
Opposition No. 91183001
9
their photos, videos, music and documents with family and
friends.
Applicant hired Carlos Lima, a website developer, in
April 2005 to begin creation of a site for applicant’s MOZIE
services. Mr. Lima, through his company Red Blizzard, LLC,
hosted a development site for applicant’s project until
June, 2007; a development site is essentially a website that
is under construction. Melissa Dennis was hired as the
“lead programmer” and Ms. Dennis confirmed that the site was
still under development in March, 2006. The MOZIE website
became directly available to the public on June 15, 2007,
but the evidence shows that applicant still had not
conducted any beta testing by mid-2008. Applicant indicates
that the website has generated less than $1,000 in revenue.
Based on the record before us, opposer has established
its common law rights in the mark MOZY for electronic
storage of data, including remote online backup of
electronic data, and storage services for archiving
databases, images and other electronic data, prior to any
date that applicant is entitled to claim.7 Accordingly,
opposer has priority of use of its mark MOZY.

7 As indicated earlier, applicant claimed in her application
first use anywhere on April 2005, and first use in commerce on
February 17, 2007. Suffice it to say, the current record does
not support these dates. First use dates set forth in an
application are mere allegations that must be proved at trial in
order for the applicant to rely on them for priority. We should
also add that opposer has not claimed that the application is
Opposition No. 91183001
10
We now turn to the issue of likelihood of confusion.
Our determination of likelihood of confusion is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors set forth in In re E. I. du Pont de
Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See
also In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65
USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of
confusion analysis, however, two key considerations are the
similarities between the marks and the similarities between
the goods and/or services. See Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA
1976). Opposer must establish that there is a likelihood of
confusion by a preponderance of the evidence. Yamaha Int’l
Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001,
1007-08 (Fed. Cir. 1988).
We first focus on opposer’s assertion that its MOZY
mark “has wide acclaim,” referencing the legal maxims that
famous marks are entitled to a wide scope of protection and
that fame plays a dominant role in the process of balancing
the likelihood of confusion factors.
To the extent that opposer’s contentions may be
construed as a claim of fame, we begin with this du Pont
factor. Fame of the prior mark plays a dominant role in

void ab initio for failure to use the mark prior to the filing
date of the application. This distinct and specific claim
Opposition No. 91183001
11
likelihood of confusion cases featuring a famous mark. Bose
Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63 USPQ2d
1303 (Fed. Cir. 2002); Recot Inc. v. M.C. Becton, 214 F.3d
1322, 54 USPQ2d 1894 (Fed. Cir. 2000); and Kenner Parker
Toys, Inc. v. Rose Art Industries, Inc., 963 F.2d 350, 22
USPQ2d 1453 (Fed. Cir. 1992). Because of the extreme
deference accorded to a famous mark in terms of the wide
latitude of legal protection it receives, and the dominant
role fame plays in the likelihood of confusion analysis, it
is the duty of the party asserting fame to clearly prove it.
Lacoste Alligator S.A. v. Maxoly Inc., 91 USPQ2d 1594, 1597
(TTAB 2009); and Leading Jewelers Guild Inc. v. LJOW
Holdings LLC, 82 USPQ2d 1901, 1904 (TTAB 2007).
The record includes evidence that opposer has garnered
several awards for its services, which also have been the
subject of unsolicited articles in the technology press.
Indeed, opposer’s customer base has quickly grown, and it
would appear that opposer has enjoyed an appreciable degree
of success with its goods and services sold under its MOZY
marks. Moreover, the record is devoid of evidence of any
third-party uses or registrations of marks similar to MOZY
in the electronic storage field. However, opposer has not
provided specific dollar figures for its sales or
advertising expenses, nor has opposer placed its degree of

neither was raised in the pleading nor tried by the parties,
Opposition No. 91183001
12
success in any context. See Bose Corp. v. QSC Audio
Products Inc., 63 USPQ2d at 1309. We find, therefore, that
the record falls short of clearly proving fame as
contemplated by case law. Thus, while we find that
opposer’s MOZY marks have some notoriety in the electronic
data storage field, we decline to confer on any of opposer’s
marks, based on the record before us, the exalted status of
“famous.”
We next direct our attention to the ninth du Pont
factor involving a “family” of marks. Opposer at various
points in its brief refers to its “family” of MOZY marks.
However, opposer did not plead in the notice of opposition
ownership of a family of marks, and opposer’s witnesses did
not specifically make such a claim or otherwise testify as
to any asserted family of marks. Accordingly, opposer’s
claim in its brief that it owns a family of MOZY marks has
not been considered in making our determination herein.
We hasten to add that, in any event, opposer has not
established a family of MOZY marks. In the past, the Board
has looked at whether the marks asserted to comprise a
“family” have been used and advertised in promotional
material or used in everyday sales activities in such a
manner as to create common exposure and, thereafter,
recognition of common ownership based upon a feature common

either explicitly or implicitly.
Opposition No. 91183001
13
to each mark. American Standard, Inc. v. Scott & Fetzer
Co., 200 USPQ 457, 461 (TTAB 1978).
We obviously recognize that opposer uses at least four
different MOZY marks in connection with its software and
related storage services. The use of four MOZY marks is, of
course, sufficient to comprise a family. This fact,
however, is not the end of the story. That is, the mere
fact of adoption, use and/or registration of four MOZY marks
does not in itself prove that a family of marks exists. J &
J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 18
USPQ2d 1889 (Fed. Cir. 1991); Polaroid Corp. v. Richard Mfg.
Co., 341 F.2d 150, 144 USPQ 419 (CCPA 1965); Trek Bicycle
Corp. v. Fier, 56 USPQ2d 1527, (TTAB 2000); and Consolidated
Foods Corp. v. Sherwood Medical Industries, Inc., 177 USPQ
279 (TTAB 1973). Although the record reveals some conjoint
use of various combinations of opposer’s marks, the evidence
falls short of showing that a family of marks has been
promoted together.
Accordingly, we find, based on the record before us,
that opposer has not established a family of MOZY marks.
Inasmuch as we are not considering opposer’s belated claim
of a family of marks, the likelihood of confusion
determination herein rests on a comparison between each of
opposer’s marks, and the goods and/or services offered
Opposition No. 91183001
14
thereunder, and applicant’s mark and the services set forth
in the application.
The first du Pont factor involves the
similarity/dissimilarity between opposer’s marks MOZY,
MOZYENTERPRISE, MOZYPRO and MOZYHOME, and applicant’s mark
MOZIE. We must compare the marks in their entireties as to
appearance, sound, connotation and commercial impression to
determine the similarity or dissimilarity between them.
Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir.
2005). The test, under the first du Pont factor, is not
whether the marks can be distinguished when subjected to a
side-by-side comparison, but rather whether the marks are
sufficiently similar in terms of their overall commercial
impression that confusion as to the source of the goods
and/or services offered under the respective marks is likely
to result. The focus is on the recollection of the average
purchaser, who normally retains a general rather than a
specific impression of trademarks. See Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106 (TTAB 1975).
Opposer’s mark MOZY obviously is the one that is
closest in similarity to applicant’s mark MOZIE. These
marks are identical in sound, and very similar in
appearance; the “-Y” and “-IE” endings are virtually
interchangeable. As to meaning, both marks appear to be
Opposition No. 91183001
15
arbitrary as used in connection with the parties’ services.
With coined words which are meaningless, slight variations
in spelling are often insignificant to direct a buyer’s
attention to the distinction between the marks. Given the
similarities between MOZIE and MOZY, the marks engender
substantially similar overall commercial impressions.
Likewise, we find applicant’s mark MOZIE to be similar
to each of opposer’s other marks, MOZYENTERPRISE, MOZYPRO
and MOZYHOME. Each of opposer’s marks begins with the
arbitrary portion, “MOZY,” followed by a term that is at
least suggestive of opposer’s various types of storage
services. Although we must compare the marks in their
entireties, it is well settled that one feature of a mark
may be more significant than another, and it is not improper
to give more weight to this dominant feature in determining
the commercial impression created by the mark. In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985) (“There is nothing improper in stating that, for
rational reasons, more or less weight has been given to a
particular feature of a mark, provided the ultimate
conclusion rests on consideration of the marks in their
entireties. Indeed, this type of analysis appears to be
unavoidable.”). See Hewlett-Packard Co. v. Packard Press,
Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002).
Opposition No. 91183001
16
Each of opposer’s marks is dominated by the first
portion, “MOZY”; in each case, the second portion of
opposer’s marks, being at least suggestive, plays a
subordinate role. The “MOZY” portion of opposer’s marks is
the portion that is most likely to be remembered and used by
consumers in calling for and referring to opposer’s goods
and/or services. Purchasers in general are inclined to
focus on the first word or portion in a trademark. Presto
Products, Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895,
1897 (TTAB 1988) (“it is often the first part of a mark
which is likely to be impressed upon the mind of a purchaser
and remembered”). See Palm Bay Imports, Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d at 1692.
The entirety of applicant’s mark MOZIE is identical in
sound and similar in appearance to the dominant portion of
opposer’s MOZY-formative marks. Any difference in meaning
engendered by the remaining suggestive portions of opposer’s
marks is outweighed by the similarity in sound and
appearance. Given the similarities, the marks have similar
overall commercial impressions.
The similarity between each of opposer’s marks and
applicant’s mark weighs in favor of a finding of a
likelihood of confusion.
We next turn to compare opposer’s goods and services
with applicant’s services, but we will focus on the
Opposition No. 91183001
17
services. It is well settled that the goods and/or services
of the parties need not be identical or competitive, or even
offered through the same channels of trade, to support a
holding of likelihood of confusion. It is sufficient that
the respective goods and/or services of the parties are
related in some manner, and/or that the conditions and
activities surrounding the marketing of the goods and/or
services are such that they would or could be encountered by
the same persons under circumstances that could, because of
the similarity of the marks, give rise to the mistaken
belief that they originate from the same source. See Hilson
Research, Inc. v. Society for Human Resource Management, 27
USPQ2d 1423 (TTAB 1993); and In re International Telephone &
Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978). The issue,
of course, is not whether purchasers would confuse the goods
and/or services, but rather whether there is a likelihood of
confusion as to the source of the goods and/or services. In
re Rexel Inc., 223 USPQ 830 (TTAB 1984).
Insofar as the goods and/or services in opposer’s
registrations are concerned, it is well established that the
issue of likelihood of confusion herein must be determined
based on an analysis of the services recited in applicant’s
application vis-à-vis the goods and/or services identified
in opposer’s pleaded registrations. Cunningham v. Laser
Golf Corp., 55 USPQ2d at 1846; and Canadian Imperial Bank v.
Opposition No. 91183001
18
Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1783 (Fed. Cir.
1992). Thus, where the goods and/or services in an involved
registration and/or application are broadly identified as to
their nature and type, such that there is an absence of any
restrictions as to the channels of trade and no limitation
as to the classes of purchasers, it is presumed that in
scope the identification of goods and/or services
encompasses all the goods and/or services of the nature and
type described therein, that the identified goods and/or
services are offered in all channels of trade which would be
normal therefor, and that they would be purchased by all
potential buyers thereof. Paula Payne Products Co. v.
Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76 (CCPA
1973); Kalart Co. v. Camera-Mart, Inc., 258 F.2d 956, 119
USPQ 139 (CCPA 1958); and In re Elbaum, 211 USPQ 639 (TTAB
1981).
Opposer’s goods are identified as “computer software
for storing electronic data, including backing up and
archiving electronic data.” Opposer’s services are recited
as “electronic storage of data, including remote online
backup of electronic data; storage services for archiving
databases, images and other electronic data.” We also find,
as indicated earlier, that the record establishes opposer’s
prior common law rights in these same services, namely
electronic storage of data, including remote online backup
Opposition No. 91183001
19
of electronic data; and storage services for archiving
databases, images and other electronic data. These services
must be compared to applicant’s services identified as
“providing on-line, non-downloadable software for digital
photo management, online photo sharing, creating, sending
and tracking customized online invitations and marketing
campaigns, creating and hosting web pages, building and
sharing online calendars, managing and sharing online
contact lists, posting interactive online discussions, and
online social networking.”
The record establishes that opposer’s electronic data
storage services feature photos and videos, and that these
services are closely related to a portion of applicant’s
services, namely “online digital photo management and online
photo sharing.” TIME Magazine, in naming opposer as an
award winner in the publication’s “50 Best Websites 2007,”
described opposer’s services as follows:
Backing up all your computer files is
like flossing: it’s a chore, but you
know you should do it, or you risk
losing something forever – not your
teeth, of course, but your digital
photos, music, financial records or that
rough draft of your first novel. Mozy
can keep all of that stuff safe and
encrypted on its own servers. It will
store 2 gigabytes worth of your files
for free (enough to cover, say, a couple
thousand pictures, depending on the
image resolution).

(Robinson dep., p. 11, ex. no. 86).
Opposition No. 91183001
20
Applicant’s services are offered through her website
that allows users to upload photos, and then share the
photos with other people through e-mails, e-cards, and slide
shows. Focusing on the portion of opposer’s services that
we find are most similar to this portion of applicant’s
services, opposer’s electronic data storage services allow a
user to remotely archive and create a safe storage site to
backup critical data and images. As explained by David
Robinson, opposer’s vice president for marketing, the data
and images stored by opposer may include electronic files
such as photos and videos, as well as music; in point of
fact, these are the most common type of files backed-up
through the use of opposer’s storage services. As explained
by Mr. Robinson:
A. [W]e have run reports that will give
us the breakdown of file types that are
being stored on our servers...We are
always interested in the types of files
being backed up and from time to time we
run queries against the database to see
what they are and music is typically one
of the top three or four types of files
being stored with our service.

*****

Q. Does the Mozy service also allow for
the storage of photos?

A. It does. Photos are, I believe, our
number one or number two most commonly-
stored type of file.

Q. And at the risk of being redundant,
could you tell us how you know that to
be true?
Opposition No. 91183001
21

A. Again, it’s based on file extension.
There – you know, there is a list of 20
or so file extensions that we know are
associated with photos, whether that be
JPEGs or GIFFs or TIFFs or, you know,
PNGs or – you know, name it. Again, we
run these queries to see what types of
files are being backed up with the
service.

Q. Are videos also being backed up by
Mozy?

A. That is correct. Videos and –
between videos and photos, those are
typically the number one and number two
most commonly-stored files.

(Robinson dep., pp. 22-24). Mr. Robinson went on to
describe the photo file-sharing aspect of its storage
services:
A. Sharing. Once the data is backed up,
users will be able to share photos,
documents, music and videos with family
and friends via an easy-to-use dashboard
that’s available across multiple
devices.

Q. Can you tell us in layman’s terms how
the sharing works, how it takes place?

A. Yes. The user creates a collection.
So let’s say, for example, that I wanted
to share vacation photos with you. I
would create a collection of photos
within my personalized website. I would
then click “share” to share them, you
know, with – with you. You would
receive an email that said, “Dave wants
to share these photos with you.” You
would then click that link within the
email and have access to the collection
which I have chosen to share with you.

Opposition No. 91183001
22
(Robinson dep., pp. 26-27). Opposer’s on-line sharing tools
permit multi-user access to photos, videos and music that
are stored remotely, not just on the user’s physical
computer.
In sum, opposer’s electronic data storage services for
photos and videos are very similar to applicant’s services
featuring online digital photo management and online photo
sharing. Likelihood of confusion may be found based on any
item that comes within the identification of goods and/or
services in the involved registrations and application (and,
as stated above, opposer’s common law rights are consistent
with the identification of services in opposer’s
registrations). Tuxedo Monopoly, Inc. v. General Mills Fun
Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981).
Given that the parties’ services are closely related,
we find that they travel in the same trade channels over the
Internet, and that the same classes of purchasers buy the
respective services. These purchasers would include
ordinary consumers looking to backup and/or share their
photos and videos, and these consumers would be expected to
exercise nothing more than ordinary care in making their
purchasing decision. In this connection, we note that
opposer’s unlimited plan costs $4.95 per month; applicant’s
projected cost is $29.95.
Opposition No. 91183001
23
The close relationship between the services, and the
identity in trade channels and purchasers, as well as the
conditions of sale, are du Pont factors that weigh in favor
of a finding of a likelihood of confusion.
Opposer points to instances of purported actual
confusion as a du Pont factor to consider in our analysis.
More specifically, opposer relies upon the fact that
prospective users of opposer’s MOZY branded services
mistakenly have typed “mozie” while searching for opposer’s
services on the Internet. Opposer, through its business
relationship with Google Analytics, obtains information
about users who ultimately find their way to opposer’s
website through various means. The result of this tracking
service shows that in the time period January 2010-August
2010, in over 1500 instances, prospective users typed in
“mozie” as a search term in their browsers and, when faced
with the search results, navigated to opposer’s website at
www.mozy.com. According to opposer, “MOZIE and MOZY are
aurally identical, and it is likely these users heard about
MOZY by word of mouth or from one of [opposer’s] television
advertisements and then typed in ‘mozie’ as their search
query.” (Brief, p. 18, citing Robinson dep., p. 20).
Applicant responds by contending that there is no way
of knowing the reason why these mistypings occurred.
Opposer’s explanation, applicant argues, is nothing more
Opposition No. 91183001
24
than guesswork, and mere speculation without any evidentiary
support in the record.
Contrary to opposer’s urgings, we agree with
applicant’s assessment on this du Pont factor. There simply
is no way of knowing the reasons why these mistypings
occurred, that is, whether by confusion, a distraction or
the user simply being a poor typist. Mr. Robinson’s
testimony does not support a finding that there has been
actual confusion. In this connection we also note opposer’s
response to applicant’s interrogatory no. 12 stating that it
“is not aware of any such actual confusion.” In sum, the
evidence falls short of demonstrating actual confusion.
On the flip side, applicant asks us to give probative
weight to the five years of contemporaneous use of the marks
without any reported actual confusion. The problem with
applicant’s argument is that the record is devoid of
probative evidence relating to the extent of either
opposer’s or applicant’s marks and, thus, whether there have
been meaningful opportunities for instances of actual
confusion to have occurred in the marketplace. See
Cunningham v. Laser Golf Corp., 55 USPQ2d at 1847; and
Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774
(TTAB 1992).
A showing of actual confusion would of course be highly
probative, if not conclusive, of a high likelihood of
Opposition No. 91183001
25
confusion. The opposite is not true, however. The lack of
evidence of actual confusion carries little weight. J.C.
Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960, 144 USPQ
435, 438 (CCPA 1965). In view of the above, the du Pont
factor of the length of time during and conditions under
which there has been contemporaneous use without evidence of
actual confusion is considered neutral.
In arguing that there is a likelihood of confusion,
opposer also points to applicant’s earlier notice of
opposition filed against opposer’s mark MOZY (see
discussion, supra). In the complaint, applicant (as
opposer) alleged that opposer’s mark was likely to cause
confusion with the mark she now seeks to register herein, a
contrary position to the one she currently takes in this
proceeding. What opposer conveniently overlooks, however,
is its own action in the prior proceeding. In its answer in
the prior proceeding, opposer (as applicant) denied the
claim of likelihood of confusion, a contrary position to the
one it currently takes herein. Although we have considered
the parties’ prior statements on likelihood of confusion,
each of which is contrary to the respective arguments
espoused herein, suffice it to say that we have based our
decision on the other evidence of record bearing on the du
Pont factors. See Interstate Brands Corp. v. Celestial
Seasonings, Inc., 576 F.2d 926, 198 USPQ 151, 153 (CCPA
Opposition No. 91183001
26
1978) (while the earlier statement respecting the issue of
likelihood of confusion is “illuminative of shade and tone
in the total picture confronting the decision maker,” it
does not “relieve the decision maker of the burden of
reaching his own ultimate conclusion on the entire
record.”). See also Maremont Corp. v. Air Lift Co., 463
F.2d 1114, 174 USPQ 395, 396 n.4 (CCPA 1972); and Bakers
Franchise Corp. v. Royal Crown Cola Co., 404 F.2d 985, 160
USPQ 192, 193 (CCPA 1969).
In view of the above, the du Pont factors, on balance,
weigh in favor of a finding of likelihood of confusion. We
conclude that purchasers familiar with opposer’s computer
software for storing electronic data, including backing up
and archiving electronic data, and electronic storage of
data, including remote online backup of electronic data, and
storage services for archiving databases, images and other
electronic data, sold under each of opposer’s MOZY,
MOZYENTERPRISE, MOZYPRO and MOZYHOME marks, would be likely
to believe, upon encountering applicant’s mark MOZIE for
“providing on-line, non-downloadable software for digital
photo management, online photo sharing, creating, sending
and tracking customized online invitations and marketing
campaigns, creating and hosting web pages, building and
sharing online calendars, managing and sharing online
contact lists, posting interactive online discussions, and
Opposition No. 91183001
27
online social networking,” that the services and/or related
goods originated from or are associated with or sponsored by
the same entity.
Lastly, to the extent that any of the points argued by
applicant raises a doubt about our finding of a likelihood
of confusion, we resolve that doubt, as we must, in favor of
opposer as the prior user and registrant. See Giant Food,
Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 218 USPQ
390, 395 (Fed. Cir. 1983).
Opposer also asserts that applicant is guilty of fraud.
Opposer points out that applicant filed the application by
herself without the assistance of an attorney, and that she
“repeatedly” has made false statements regarding her use of
the mark MOZIE for her services. Opposer essentially
contends that while applicant swore to the dates of first
use set forth in the involved application, the services were
still in development and not yet available. Thus, opposer
argues, the mark could not have been used in connection with
the recited services. Opposer also points to the specimen,
which purportedly is merely a mock-up of the homepage still
in development. Opposer further asserts that applicant has
never provided on-line social networking services, as
indicated in the recitation of services, and applicant has
made false statements in her responses to discovery
requests.
Opposition No. 91183001
28
Our primary reviewing court, the U.S. Court of Appeals
for the Federal Circuit, made it clear that for a fraud
claim to be successful, a plaintiff must prove by clear and
convincing evidence that a defendant knowingly made a false
statement with the intent to deceive the USPTO. In re Bose
Corp., 530 F.3d 1240, 91 USPQ2d 1938, 1939 (Fed. Cir. 2009).
The court set out the relevant standard for proving fraud:
“Fraud in procuring a trademark
registration or renewal occurs when an
applicant knowingly makes false,
material representations of fact in
connection with his application.”
Torres v. Cantine Torresella S.r.l., 808
F.2d 46, 48, [1 USPQ2d 1483] (Fed. Cir.
1986)...Indeed, “the very nature of the
charge of fraud requires that it be
proven ‘to the hilt’ with clear and
convincing evidence. There is no room
for speculation, inference or surmise
and, obviously, any doubt must be
resolved against the charging party.”
Smith Int’l, Inc. v. Olin Corp., 209
USPQ 1033, 1044 (TTAB 1981).

Id. at 1939.
Opposer has not proven fraud. The fact that a party
has set forth erroneous dates of first use, by itself, does
not necessarily constitute fraud. See, e.g., L. & J.G.
Stickley Inc. v. Cosser, 81 USPQ2d 1956, 1970 n.17 (TTAB
2007). Opposer has not introduced any evidence of
applicant’s “deceptive intent” to knowingly deceive the
Office. In re Bose Corp., 91 USPQ2d at 1942 (“Unless the
challenger can point to evidence to support an inference of
deceptive intent, it has failed to satisfy the clear and
Opposition No. 91183001
29
convincing evidence standard required to establish a fraud
claim.”). In sum, the proofs regarding the first use dates,
as well as with respect to the other instances relied upon
by opposer, fall short of proving “to the hilt” an intention
by applicant to deceive the USPTO. Accordingly, the fraud
claim is dismissed.
Decision: The opposition is sustained on the ground of
likelihood of confusion, and registration to applicant is
refused. The opposition is dismissed on the ground of
fraud.