Fram Trak Industries, Inc.v.WireTracks LLC

Trademark Trial and Appeal Board

Jan 23, 2006

No. 92043947 (T.T.A.B. Jan. 23, 2006)

Baxley Mailed: January 23, 2006

Cancellation No. 92043947

Fram Trak Industries, Inc.

v.

WireTracks LLC

Before Hohein, Rogers and Zervas,
Administrative Trademark Judges

By the Board:

WireTracks LLC ("respondent") registered the mark
WIRETRACKS in standard character form for "plastic conduit
for use in electrical installations and electrical use" in
International Class 9.1
Fram Trak Industries, Inc. ("petitioner") filed a
petition to cancel respondent's registration on the ground
of priority of use and likelihood of confusion with
petitioner's previously used marks WIRE TRAK and WIRE TRAK
and design, both for "conduits, covers and guides for
electrical, telephone, and signal wires and for coaxial and

1 Registration No. 2883311, issued September 7, 2004, based on
application Serial No. 78255230 (filed May 28, 2003), and
alleging March 3, 2003 as the date of first use and date of first
use in commerce.

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS DECISION HAS BEEN
DESIGNATED AS CITABLE
PRECEDENT OF THE
TRADEMARK TRIAL AND APPEAL
BOARD.
Cancellation No. 92043947
2
fiber optic cables."2 In its answer, respondent denied the
salient allegations of the petition to cancel and asserted
affirmative defenses.
This case now comes up for consideration of
petitioner's motion (filed August 22, 2005) for summary
judgment in its favor on the priority of use and likelihood
of confusion claim and respondent's cross-motion (filed
September 19, 2005) for summary judgment in its favor on
such claim. Each party has filed a brief in opposition to
its adversary's motion.3
In support of its motion, petitioner contends that
discovery has revealed that petitioner's use of its pleaded
marks predates respondent's use of its involved mark and
that therefore petitioner is entitled to entry of summary

2 Petitioner filed application Serial No. 78289780 to register
its pleaded WIRE TRAK and design mark in the following form:

for "conduits, covers and guides for electrical, telephone, and
signal wires and for coaxial and fiber optic cables" in
International Class 9 on August 20, 2003 under Trademark Act
Section 1(a), 15 U.S.C. Section 1051(a), alleging July 3, 2002 as
the date of first use and date of first use in commerce. On
September 8, 2004, the examining attorney refused registration of
that mark under Trademark Act Section 2(d), 15 U.S.C. Section
1052(d), based on likelihood of confusion with the mark in
registrant's involved registration.

3 Petitioner captioned its brief in response to respondent's
cross-motion for summary judgment as a "reply brief in support of
its motion for summary judgment." However, inasmuch as
petitioner's motion for summary judgment and respondent's cross-
motion for summary judgment involve the same issues of law and
fact, we will treat petitioner's reply brief as being both a
reply brief in support of petitioner's motion for summary
judgment and a brief in response to respondent's cross-motion for
summary judgment.
Cancellation No. 92043947
3
judgment in its favor. In particular, petitioner contends
that it has standing to maintain this proceeding by virtue
of its ownership and prior use of the pleaded marks and
because registration of its pleaded WIRE TRAK and design
mark was refused under Trademark Act Section 2(d), 15 U.S.C.
Section 1052(d), based on likelihood of confusion with
respondent's registered mark; that it first sold its pleaded
goods under the WIRE TRAK mark on July 3, 2002; that the
products sold under the WIRE TRAK mark on July 3, 2002 were
shipped in a box with a label that bore the WIRE TRAK mark;
that petitioner developed packaging for its pleaded goods
sold under the WIRE TRAK mark in late 2001 and early 2002
and first sold goods under the WIRE TRAK mark in that
packaging in 2002; that respondent did not sell its involved
goods under the WIRETRACKS mark until April 7, 2003; that,
in view of respondent's failure to respond to petitioner's
requests for admission, respondent has conceded the issue of
priority; that the parties admit that the marks at issue are
"confusingly similar"; that the goods at issue are
"virtually identical"; that petitioner registered the domain
name wiretrakusa.com on February 3, 2003; and that a catalog
of products that petitioner sells under the WIRE TRAK mark
was printed on March 5, 2003. Accordingly, petitioner
contends that there is no genuine issue of material fact
with regard to its priority of use and likelihood of
Cancellation No. 92043947
4
confusion claim and asks that the Board enter summary
judgment in its favor.
As evidentiary support for its motion, petitioner
submitted the declaration of its chief executive officer,
Albert Santelli, Sr., wherein Mr. Santelli avers to the
following: that petitioner is a plastic extrusion and
injection molding company that has designed and manufactured
custom plastic extrusions and other proprietary products
since 1978; that petitioner's goods include nonmetal wire
management systems sold under the WIRE TRAK mark; that
petitioner's Alpha plastics division sold wire enclosure
products under the ALPHA and ALPHA TRIM marks since 1949;
that, in 2001 and 2002, petitioner upgraded those wire
enclosure products and changed the mark under which they
were sold to WIRE TRAK; that petitioner received its first
order for its pleaded goods sold under the WIRE TRAK mark on
June 26, 2002 and shipped such goods in packaging bearing
the WIRE TRAK mark on July 3, 2002;4 that petitioner has

4 Mr. Santelli asserts in his declaration that petitioner has
used the WIRE TRAK mark on its pleaded goods "since at least as
early as July 2, 2002." Santelli declaration at paragraph 9.
Elsewhere in his declaration, however, Mr. Santelli states that
petitioner received the first order for sales of goods under the
WIRE TRAK mark on June 26, 2002 and shipped its pleaded goods in
that order on July 3, 2002. Santelli declaration at paragraphs
21-24. In addition, petitioner's pleaded application Serial No.
78289780 recites July 3, 2002 as the date of first use and date
of first use in commerce. Accordingly, the Board presumes that
the date set forth in paragraph 9 is a typographical error and
that Mr. Santelli meant to assert that petitioner has used the
WIRE TRAK mark on the pleaded goods since at least as early as
July 3, 2002.
Cancellation No. 92043947
5
continuously sold its pleaded goods under that mark since
that time; that petitioner had packaging in the form of
polyethylene bags bearing the WIRE TRAK and design mark
designed and manufactured in 2002; that petitioner first
used this packaging in 2002 and has used it since that time;
that petitioner registered the domain name wiretrakusa.com
on February 3, 2003; and that a catalog for petitioner's
pleaded goods under the WIRE TRAK mark was printed on March
5, 2003.
Evidence introduced by way of Mr. Santelli's
declaration includes the following: (i) invoices for
customized polyethylene bags used as packaging for goods
sold under the WIRE TRAK mark; (ii) samples of polyethylene
bags used as packaging for goods sold under the WIRE TRAK
mark; (iii) a copy of a July 3, 2002 invoice from a sale of
goods to Wallco, Inc.; (iv) a label dated April 24, 2003
which bears the WIRE TRAK mark, which Mr. Santelli contends
is an example of the label used in the July 3, 2002 sale;
(v) results of an online search of the "Whois" database
which indicates that the domain name wiretrakusa.com was
created by petitioner on February 3, 2003; (vi) invoices in
connection with preparation of catalogs for petitioner's
goods under the WIRE TRAK mark; (vii) a sample catalog of
petitioner's goods sold under the WIRE TRAK mark; (viii)
invoices in connection with preparation of t-shirts bearing
Cancellation No. 92043947
6
the WIRE TRAK mark; (ix) invoices in connection with the
preparation of petitioner's website located at
wiretrakusa.com; (x) a copy of the contents of petitioner's
website located at wiretrakusa.com which shows petitioner's
pleaded goods offered for sale under the WIRE TRAK mark; and
(xi) a summary of petitioner's individual sales under the
WIRE TRAK mark between July 2002 and August 2005 that lists
customers and items sold by product number.5
In addition, petitioner has submitted the declaration
of its attorney, Todd Denys, which introduces exhibits
including (i) a printout from the USPTO's Trademark
Electronic Search System (TESS) of petitioner's pleaded
application Serial No. 78289780 for the WIRE TRAK and design
mark; (ii) a copy of the notice of the discovery deposition
of respondent's president, Bruce Gutman, and excerpts from
that deposition wherein Mr. Gutman states that respondent's
first sale of the identified goods under the involved mark
was on April 7, 2003; (iii) a copy of petitioner's first set
of requests for admission; (iv) a copy of Mr. Denys's August
4, 2005 letter to respondent's attorney which states that,
inasmuch as respondent failed to serve responses to

5 The part numbers set forth in the July 3, 2002 sales invoice
and petitioner's sales summary are not exact matches to the part
numbers set forth in petitioner's catalog, but are similar
thereto. For example, petitioner's sales summary indicates that
it made a sale on August 19, 2002 to Interstate Electronics of
part numbers FEO201125SRWHT6, FE020500SRWHT6, and FE020375SRWHT6,
but the catalog identifies parts by the numbers FE0201125R-W,
FEO201125R-W, FE020500R-W, and FE020375R-W.
Cancellation No. 92043947
7
petitioner's first set of requests for admission, those
requests for admission are deemed admitted; (v) results of
an online search of the "Whois" database which indicates
that the domain name wiretracks.com is registered to The
Gutman Group and that Mr. Gutman is the administrative and
technical contact with regard thereto; (vi) an undated
cease-and-desist letter from Mr. Gutman, which Mr. Denys
received on November 18, 2004; (vii) printouts from the
cableorganizer.com website which show both petitioner's and
respondent's goods being offered for sale; and (viii) a copy
of the September 8, 2004 Office Action in connection with
application Serial No. 78289780 wherein the WIRE TRAK and
design mark was refused registration under Trademark Act
Section 2(d) based on likelihood of confusion with
respondent's registered WIRETRACKS mark.
In response and in support of its cross-motion for
summary judgment, respondent contends that it has priority
over petitioner because it "was the first to make an impact
in the public perception." Respondent's brief at 4. In
particular, respondent contends that there is no evidence
that petitioner advertised or marketed goods sold under the
WIRE TRAK mark prior to respondent's advertising and
marketing of goods under the WIRETRACKS mark; that
petitioner's "sales are based on its previous product line,
not advertising or marketing efforts" (respondent's brief at
Cancellation No. 92043947
8
11); that respondent has made significant marketing and
advertising efforts such that a significant portion of the
relevant purchasing public would associate respondent's mark
with its identified goods; that respondent's involved goods
differ from those of petitioner in that respondent's are
"high end, innovative products which have been the subject
of patent protection" (respondent's brief at 10); that
petitioner has provided no advertising and marketing
expenses in connection with goods sold under the WIRE TRAK
mark; that petitioner's WIRE TRAK mark has little or no
recognition in the relevant market; and that the WIRE TRAK
mark does not appear on the invoice for petitioner's first
sale of goods under that mark. Accordingly, respondent asks
that petitioner's motion for summary judgment be denied and
that summary judgment be entered in respondent's favor.
As evidentiary support for its motion, respondent
included the declaration of its president, Mr. Bruce Gutman,
wherein he alleges that respondent registered its
wiretracks.com domain name on December 23, 2002, whereas
petitioner did not register its wiretrakusa.com domain name
until February 3, 2003; that respondent began generating
significant press coverage in April 2003; that respondent
began advertising goods under its WIRETRACKS mark in April
2003; that respondent had substantial sales from 2003 to
2005; that respondent has exhibited goods under its
Cancellation No. 92043947
9
WIRETRACKS mark at six trade shows, in three show homes and
at other events; that respondent's goods have been the
subject of articles in more than fifty magazines and other
publications; that respondent's public relations e-mail
lists contain more than 5,000 contacts; and that
respondent's goods sold under the WIRETRACKS mark were
tested and recommended by Handy magazine, a magazine with
more than 1,000,000 readers.
Evidence introduced by way of Mr. Gutman's declaration
includes the following: (i) results of online searches of
the "Whois" database which indicate that respondent's domain
name wiretracks.com was created on December 23, 2002, while
petitioner's domain name wiretrakusa.com was not created
until February 3, 2003; (ii) magazine and other publication
articles concerning respondent's goods sold under the
WIRETRACKS mark; (iii) an invoice for respondent's first
sale of goods under the WIRETRACKS mark dated April 7, 2003;
(iv) lists of contacts made by respondent at trade shows;
(v) printouts from websites which support respondent's
appearances at trade shows; (vi) an excerpt from
respondent's customer telephone list; (vii) a summary of
respondent's advertising expenses from April 2003 to
February 2005; (viii) a copy of respondent's public
relations e-mail list; and (ix) a certificate indicating
Cancellation No. 92043947
10
that respondent's goods were named one of the top 100 "lead-
generating products of 2004" by Building Products magazine.
Summary judgment is an appropriate method of disposing
of cases in which there are no genuine issues of material
fact in dispute, thus leaving the case to be resolved as a
matter of law. See Fed. R. Civ. P. 56(c). The party moving
for summary judgment has the initial burden of demonstrating
that there is no genuine issue of material fact remaining
for trial and that it is entitled to judgment as a matter of
law. See Celotex Corp. v. Catrett, 477 U.S. 317 (1987);
Sweats Fashions Inc. v. Pannill Knitting Co. Inc., 833 F.2d
1560, 4 USPQ2d 1793 (Fed. Cir. 1987). The nonmoving party
must be given the benefit of all reasonable doubt as to
whether genuine issues of material fact exist, and the
evidentiary record on summary judgment, and all inferences
to be drawn from the undisputed facts, must be viewed in the
light most favorable to the nonmoving party. See Opryland
USA, Inc. v. Great American Music Show, Inc., 970 F. 2d 847,
23 USPQ2d 1471 (Fed. Cir. 1992).
When the moving party's motion is supported by evidence
sufficient to indicate that there is no genuine issue of
material fact, and that the moving party is entitled to
judgment, the burden shifts to the nonmoving party to
demonstrate the existence of specific genuinely-disputed
facts that must be resolved at trial. The nonmoving party
Cancellation No. 92043947
11
may not rest on the mere allegations of its pleadings and
assertions of counsel, but must designate specific portions
of the record or produce additional evidence showing the
existence of a genuine issue of material fact for trial. In
general, to establish the existence of disputed facts
requiring trial, the nonmoving party "must point to an
evidentiary conflict created on the record at least by a
counterstatement of facts set forth in detail in an
affidavit by a knowledgeable affiant." Octocom Systems Inc.
v. Houston Computer Services Inc., 918 F.2d 937, 941, 16
USPQ2d 1783, 1786 (Fed. Cir. 1990).
As a party moving for summary judgment in its favor on
its Section 2(d) claim, petitioner must establish that there
is no genuine dispute that (1) it has standing to maintain
this proceeding; (2) that it is the prior user of its
pleaded mark; and (3) that contemporaneous use of the
parties' respective marks on their respective goods would be
likely to cause confusion, mistake or to deceive consumers.
See Hornblower & Weeks, Inc. v. Hornblower & Weeks, Inc., 60
USPQ2d 1733, 1735 (TTAB 2001). If the nonmoving party fails
to make a sufficient showing on an essential element of its
case with respect to which it would have the burden of proof
at trial, judgment as a matter of law may be entered in
Cancellation No. 92043947
12
favor of the moving party.6 See Fed. R. Civ. P. 56(c);
Celotex Corp. v. Catrett, 477 U.S. at 322-23.
With regard to whether petitioner has standing to
maintain this proceeding, we note that respondent has not
challenged petitioner's standing to cancel the involved
registration. We find that the evidence of petitioner's use
of the WIRE TRAK mark and the fact that respondent's
involved mark was cited as a bar to registration of
petitioner's WIRE TRAK and design mark as set forth in
petitioner's pending application is sufficient to establish
petitioner's standing in this case. No genuine issue of
material fact exists on this issue.
We turn next to the issue of whether there is a genuine
issue of material fact regarding petitioner's asserted
priority of use. To establish priority on a likelihood of
confusion ground brought under Trademark Act Section 2(d), a
party must prove that, vis-a-vis the other party, it owns "a
mark or trade name previously used in the United States ...
and not abandoned...." Trademark Act Section 2, 15 U.S.C.
Section 1052. A plaintiff may establish its own prior
proprietary rights in a mark through actual use or through
use analogous to trademark use, such as use in advertising
brochures, trade publications, catalogues, newspaper

6 Respondent's cross-motion for summary judgment in its favor on
petitioner's claim under Section 2(d) is primarily based on
respondent's alleged priority of use.
Cancellation No. 92043947
13
advertisements and Internet websites which creates a public
awareness of the designation as a trademark identifying the
party as a source. See Trademark Act Sections 2(d) and 45,
15 U.S.C. Section 1052(d) and 1127; T.A.B. Systems v. PacTel
Teletrac, 77 F.3d 1372, 37 USPQ2d 1879 (Fed. Cir. 1996),
vacating PacTel Teletrac v. T.A.B. Systems, 32 USPQ2d 1668
(TTAB 1994).
Respondent failed to respond to petitioner's requests
for admission and failed to file a motion to amend or
withdraw those admissions. Accordingly, those requests for
admission are deemed admitted and conclusively established.
See Fed. R. Civ. P. 36(a); TBMP Section 525 (2d ed. rev.
2004). Through those admissions, respondent, by operation
of law, has admitted that its first sale under the
WIRETRACKS mark occurred on April 7, 2003 and that
respondent has no documents which establish use of the
involved mark prior to March 3, 2003. However, these
admissions do not by themselves establish that there is no
genuine issue of material fact that petitioner is the prior
user of the marks at issue in this proceeding, i.e., that
petitioner's use predates the dates referenced in the
requests for admission.
Notwithstanding the foregoing, petitioner has
established that there is no genuine issue of fact regarding
its priority of use and that it used its pleaded WIRE TRAK
Cancellation No. 92043947
14
mark prior to any date upon which respondent can rely for
use of the WIRETRACKS mark. With regard to the parties'
respective uses of their marks, petitioner has established,
through the declaration of Mr. Santelli, that it made its
first actual use of the WIRE TRAK mark on July 3, 2002 by
selling its pleaded goods under that mark and has
continuously used the mark since then. Although the WIRE
TRAK mark does not appear on petitioner's invoice for the
first sale of goods under that mark, Mr. Santelli stated
under oath that packaging in which those goods were shipped
included a label bearing that mark and that petitioner's
goods have been packaged in polyethylene bags bearing the
WIRE TRAK mark since 2002. Mr. Santelli's declaration is
internally consistent and not characterized by uncertainty.
See Hornblower & Weeks, Inc. v. Hornblower & Weeks, Inc.,
supra at 1736. In addition, respondent has not challenged
the veracity or the basis for the testimony of Mr. Santelli.
As such, we find his declaration credible and persuasive.
Further, the summary of sales under the WIRE TRAK mark that
petitioner submitted in support of its motion for summary
judgment indicates that petitioner made significant sales
under the WIRE TRAK mark between its first sale on July 3,
2002 and respondent's first sale on April 7, 2003.7

7 We note that the sales summary was prepared two days prior to
the filing of petitioner's motion for summary judgment and that
the header on each page of that summary spells petitioner's mark
Cancellation No. 92043947
15
On the other hand, respondent has admitted that it did
not sell its involved goods under its WIRETRACKS mark until
April 7, 2003. Even if respondent promoted and advertised
its WIRETRACKS mark extensively, such promotion and
advertisement does not overcome the fact that petitioner
used its WIRE TRAK mark first. Although respondent
registered the domain name wiretracks.com on December 23,
2002, we note that the domain name differs from the
registered mark, and that such registration occurred more
than five months after petitioner commenced using the WIRE
TRAK mark.8 As such, there is no genuine issue of material
fact that petitioner is the prior user of its pleaded WIRE
TRAK mark.
Turning to the likelihood of confusion issue, two key
factors are the degree of similarity of the parties' marks
and the degree of similarity of their respective goods. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976). As to the word marks at
issue, WIRE TRAK and WIRETRACKS, the marks differ in that
petitioner's mark is two words, whereas respondent's is one;
petitioner's mark is singular, whereas respondent's is

as "WIRETRAK." However, we view this misspelling as a compound
word rather than as two words to be merely a typographical error.

8 In any event, acquisition of a domain name cannot, by itself,
establish priority of use. See Brookfield Communications, Inc.
v. West Coast Entertainment Corp., 174 F.3d 1036, 50 USPQ2d 1545,
1556 (9th Cir. 1999).
Cancellation No. 92043947
16
plural; and respondent's mark includes the letter C, whereas
petitioner's does not.9 Nonetheless, the evidence
establishes that, when these marks are considered in their
entireties, there is no genuine issue of material fact that
they are substantially similar in sound, appearance, and
commercial impression. See In re Appetito Co. Inc., 3
USPQ2d 1553 (TTAB 1987). The design element in the mark
which is the subject of petitioner's pleaded application is
insufficient to create a genuine issue of material fact as
to the similarities of the marks. See Herbko International,
Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375
(Fed. Cir. 2002) (words are dominant portion of mark);
Ceccato v. Manifatura Lane Gaetano Marzetto & Figli S.p.A.,
32 USPQ2d 1192 (TTAB 1994) (literal portion of mark makes
greater and long lasting impression).
With regard to the similarity of the goods at issue,
it is well settled that the question of likelihood of
confusion must be determined based on an analysis of the
goods recited in respondent's registration vis-à-vis the
goods recited in petitioner's petition to cancel, rather

9 In its answer, respondent denied that the marks at issue are
confusingly similar. See answer at paragraph 7. Petitioner's
requests for admission which are deemed admitted do not include
an admission that the marks at issue are confusingly similar.
However, respondent, in its brief in response to petitioner's
motion for summary judgment and in support of its cross-motion
for summary judgment did not address the assertion in
petitioner's brief in support of its motion for summary judgment
that the marks are confusingly similar.
Cancellation No. 92043947
17
than what respondent's goods are asserted or shown to
actually be. See, e.g., Octocom Systems Inc. v. Houston
Computer Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990); Canadian Imperial Bank of Commerce, N.A.
v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir.
1987). As such, the goods identified in registrant's
involved registration, i.e., "plastic conduits for use in
electrical installations and electrical use," are presumed
to overlap with those which, as identified in petitioner's
pleaded application and as shown to be by the evidence, are
"conduits, covers and guides for electrical, telephone, and
signal wires and for coaxial and fiber optic cables." As
such, respondent's goods would travel in all the normal
channels of trade for goods of these types, such as through
electrical supply outlets and distributors, and that they
would be purchased by the same class of customers. See id.
Indeed, the record shows that both parties' goods are sold
through the website cableorganizer.com and that petitioner's
goods are sold through electrical supply outlets and
distributors.
Based on the foregoing, we find that petitioner has met
its burden by supporting its motion with declarations and
other evidence which establish its right to judgment.
Accordingly, the burden shifts to respondent to proffer

Cancellation No. 92043947
18
countering evidence which establishes that there is a
genuine factual dispute for trial. However, the evidence
that respondent submitted in support of its cross-motion and
in response to petitioner's motion is insufficient to show
that there is a genuine issue of material fact for trial.
In summary, considering the substantial similarity in sound,
appearance, and commercial impression of the marks and the
overlapping nature of the goods, trade channels and
purchasers, we find that there is no genuine issue of
material fact and that confusion is likely to result.
In view thereof, petitioner's motion for summary
judgment is granted, and respondent's cross-motion for
summary judgment is denied. Judgment is hereby entered
against respondent, the petition to cancel is granted, and
Registration No. 2883311 will be cancelled in due course.