Lotus Development Corp.v.PenMetrics, Inc.

Trademark Trial and Appeal Board

Aug 25, 1999

No. 91090074 (T.T.A.B. Aug. 25, 1999)

Hearing: Paper No. 69
September 16, 1998 HRW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB AUG. 25, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Lotus Development Corporation
v.
PenMetrics, Inc.
_____
Opposition No. 90,074
to application Serial No. 74/252,175
filed on March 5, 1992
_____
Ethan Horowitz and Robert S. Weisbein of Darby & Darby
for Lotus Development Corporation.
Kathryn Jennison Schultz of Jennison & Shultz, P.C. and Paul
R. Gupta and Robert M. O’Connell, Jr. of Sullivan &
Worcester LLP for PenMetrics, Inc.
______
Before Cissel, Hanak and Wendel, Administrative Trademark
Judges.
Opinion by Wendel, Administrative Trademark Judge:
PenMetrics, Inc. has filed an application to register
the mark FIELDNOTES for “computer software in the field of
Opposition No. 90,074
2
geographic information systems and the instructional manuals
sold therewith.”1
Lotus Development Corporation has filed an opposition
to registration of the mark on the ground of likelihood of
confusion, under Section 2(d) of the Trademark Act. Opposer
alleges that at least as early as October 18, 1988, opposer
adopted the mark LOTUS NOTES for a computer software product
and has been using the mark in commerce continuously since
that date; that opposer owns a registration for the mark
LOTUS NOTES;2 that opposer has also developed rights in the
term NOTES alone and the public has come to refer to its
software product as NOTES; that opposer’s marks have become
widely known as identifying products emanating from opposer;
and that applicant’s mark FIELDNOTES so resembles opposer’s
marks as to be likely to cause confusion when used on
software that may be sold to the same customers to which
opposer’s software is sold.

1 Serial No. 74/252,175, filed March 5, 1992, based on the
assertion that applicant possessed a bona fide intention to use
the mark in commerce. The application was filed naming Notebook
Software, Inc. as the applicant, but by an amendment filed in
this proceeding, the name of applicant was corrected to
PenMetrics, Inc., to reflect a change of name which had been made
just prior to the filing of the application.
2 Registration No. 1,541,383, issued May 30, 1989 for the mark
LOTUS NOTES for “computer programs for use in information
management, data and text processing, networking and electronic
mail and instructional manuals sold as a unit.” Sections 8 & 15
filed and accepted.
Opposition No. 90,074
3
Applicant, in its answer, denied the salient
allegations of the notice of opposition and raised as an
affirmative defense that the term “notes” is commonly used
by third parties as part of marks for goods which use,
create, reference or are otherwise associated with notes,
and thus the term per se is incapable of identifying a
source of information-gathering or note-taking goods; that
“notes” is a highly descriptive, or generic, word for which
opposer cannot show secondary meaning; and that opposer has
abandoned any rights it might allege in the mark NOTES by
virtue of wide-spread third-party use of the word.
The record consists of the file of the involved
application; the trial testimony taken by opposer of Brenda
Kelly, director of marketing for LOTUS NOTES software and
the accompanying exhibits;3 certain of applicant’s responses
to opposer’s interrogatories, excerpts from the August 24,

3 During its rebuttal period, opposer took the testimony of David
Marshak, an independent consultant in the computer software area,
especially groupware, as an expert witness. Applicant objected to
the testimony as going beyond the scope of rebuttal testimony and
as being directed almost entirely to matters which should have
been raised in opposer’s case-in- chief. Applicant renewed this
objection in its brief and at oral hearing.
Upon a full reading of the testimony and review of the other
evidence in this case, we have come to the conclusion that the
Marshak testimony is almost exclusively directed to opposer’s
claim of recognition of NOTES as a mark for opposer’s product.
The testimony can only be viewed as material intended to buttress
opposer’s case-in-chief, and hence it was improper rebuttal. See
Rowell Laboratories, Inc. v. Canada Packer Inc., 215 USPQ 523
(TTAB 1982). Thus, the testimony has been given no consideration
in our determination of the case.
Opposition No. 90,074
4
1994 deposition taken of Samuel Lanahan and exhibits
thereto, a copy of the PenMetrics Web page and a page from
the August 1993 issue of BYTE Magazine, all made of record
by opposer’s notice of reliance; the trial testimony taken
by applicant of Samuel Lanahan, president of applicant, and
of Kathryn Howe Britton, appearing as a research consultant,
and the accompanying exhibits; and certified copies of
registrations owned by applicant, opposer’s responses to
certain of applicant’s interrogatories, soft copies of
third-party registrations, and excerpts from numerous other
publications being relied upon for use of the term “notes,”
all made of record by applicant’s notice of reliance. Both
parties filed briefs and participated in an oral hearing.
Opposer introduced its LOTUS NOTES software product in
1988, with its first commercial sale being to Price
Waterhouse in December 1989. Opposer’s software is
characterized as groupware, with its primary purpose being
to permit persons within a large organization to share
information and communicate with each other. There are
various elements of this groupware, including e-mail,
discussion databases, and means for managing work flow.
Many companies use LOTUS NOTES software for sales force
automation, because the program allows persons in the field
to share information with regional offices and headquarters.
LOTUS NOTES runs on an operating system such as WINDOWS,
Opposition No. 90,074
5
while LOTUS NOTES acts as a platform on which various
applications can be built, these applications being
customized to a particular field or industry.
Applicant filed its intent-to-use application on March
4, 1992 and testimony was introduced of actual use as early
as February 1992. Applicant’s FIELDNOTES product is data
acquisition software designed for use on an WINDOWS
operating system which permits mobile workers to go out into
the field with a portable computer, preferably a pen
computer, and update maps and data obtained from a host
geographic information system (GIS). Data so collected is
later electronically transferred back to the host system.
Typical users of this software are construction, utility,
telecommunication, oil and gas and transportation companies.
Insofar as priority is concerned, opposer’s proof of
ownership of its registration for the mark LOTUS NOTES is
sufficient to establish priority when opposer is relying
upon this mark. King Candy Co., Inc. v. Eunice King’s
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974). The
registration cannot be relied upon, however, with respect to
opposer’s alleged common law rights in the mark NOTES per
se. Instead, we have reviewed the evidence to determine both
if, and, if so, when, opposer is entitled to claim rights in
the term NOTES alone as a mark identifying its groupware
product.
Opposition No. 90,074
6
We find that, even at the time of the announcement of
the first commercial sale to Price Waterhouse in 1989 and in
opposer’s early advertisements in 1991 and 1992, opposer’s
product was often referred to in shorthand fashion as NOTES.
A voluminous collection of articles dating back to 1991 have
been made of record demonstrating the unsolicited references
made by others over the years to opposer’s software as
NOTES. While the articles also include either references to
opposer as the company from which the product originates or
to LOTUS NOTES in its entirety, the use of NOTES as a means
of referring to opposer’s product was prevalent as early as
1991. Furthermore, although opposer in its most current
packaging made of record has changed the graphics to place a
definite emphasis on NOTES per se (Exhibit 41), even in
earlier packaging, NOTES was sufficiently set off in larger
print or used by itself in text on the packaging to be
viewed as a product mark. (Exhibit 39). Whether or not the
term NOTES had the capacity to actually function as a mark
will be discussed infra.
On the other hand, we find no basis for opposer’s
reliance upon a family of NOTES marks in its opposition to
the registration of applicant’s mark.4 It is well settled

4 Although opposer did not plead a family of marks in its
original notice of opposition, opposer, in its reply brief,
argues that this issue has been tried by the parties and thus the
pleadings should be considered so amended under FRCP 15(b). Even
Opposition No. 90,074
7
that mere ownership of a number of marks sharing a common
feature is insufficient to establish ownership of a
“family,” in the absence of evidence showing that prior to
first use by the other party, the various marks, or a good
number of them, were used and promoted in such a manner as
to create among purchasers an association of common
ownership based on the “family” characteristic. See Hester
Industries Inc. v. Tyson Foods Inc., 2 USPQ2d 1646, 1647
(TTAB 1987) and the cases cited therein. Only if there is
evidence that such a family of marks already exists will the
family be protected to the extent that other marks are added
later on, despite an intervening use by another of the
“family” characteristic. See McDonald’s Corp. v. McKinley,
13 USPQ2d 1895 (TTAB 1989).
Here opposer has introduced no evidence that any of its
70 or more companion or “add-on” products which include the
formative NOTES- or –NOTES were made available to the
relevant public prior to February or March 1992. There is
no evidence of the promotion of a family of marks containing
the “NOTES” component prior to applicant’s use of its mark.
Accordingly, opposer’s arguments with respect to any family
of marks are to no avail.
Before we turn to the issue of likelihood of confusion,
however, we must determine whether opposer is entitled to

if the pleadings are deemed to be so amended, our holding on this
Opposition No. 90,074
8
rely upon its use of NOTES, as well as LOTUS NOTES, as a
mark for its software product. Applicant argues that
regardless of any acquired distinctiveness which opposer may
claim for NOTES, the word “notes” is so descriptive, or even
generic, as applied to opposer’s product, as to preclude
opposer from asserting any trademark rights therein.
Applicant has made of record numerous examples of third-
party software products which either contain the word NOTE
or NOTES as part of the product mark or use the word
“note(s)” in reference to a note-making function or capacity
of the software.5 Applicant has also introduced many third-
party registrations for marks registered in Classes 9 and 16
which contain NOTE or NOTES as a portion thereof. Applicant
contends that the word “notes” is so descriptive, or even
generic, when used with software products which have the
ability to record, send or receive notes, as to be incapable
of functioning as a trademark for these products. The fact
that opposer’s groupware has e-mail as one of its functions,
which applicant characterizes as “sending notes,” is argued

issue is the same.
5 While opposer has renewed in a footnote in its brief its
objections previously made to this evidence, as well as the
numerous other objections made during the taking of testimony, we
cannot entertain such a blanket renewal, without any specific
discussion of specific objections. We clearly find no basis for
holding the evidence to be irrelevant in general. We would also
note that the plethora of objections voiced by counsel for both
parties during the taking of testimony has unduly increased the
Board’s task in reviewing this evidence.
Opposition No. 90,074
9
to be sufficient to find that a primary feature of opposer’s
product is described by the term NOTES.
Although opposer has challenged this evidence on the
basis that applicant has failed to offer any testimony with
respect to the actual existence or extent of use of the
third-party software or any use of the registered marks, we
find applicant’s evidence sufficient to demonstrate the
common use of the word NOTE or NOTES as portions of marks
for software products having a note-making capacity or as a
designation within the software for this function. In
addition, the word “note” is often used in describing this
capacity of the software, whether it be in making “notes” on
an electronic calendar, or adding annotations to a document,
or the myriad of other uses for “notes.” The third-party
registrations, to the extent that they are directed to
software, and not printed publications, at the very least
show the highly suggestive nature of the term “note(s)” in
connection with software having a note-making feature.
Nonetheless, we agree with opposer that this evidence
is not adequate to establish that opposer’s sophisticated
groupware product is aptly described by the term NOTES, such
that the term cannot function as a mark for this software.
Although it is true that the groupware contains e-mail,
which may in simplistic terms be considered the sending of
“notes,” as one of its elements, applicant has failed to
Opposition No. 90,074
10
demonstrate that the vast sharing of information on a
company-wide basis which characterizes opposer’s groupware
may be reduced to a capacity to send or make notes. Even if
some lesser degree of descriptiveness may be inherent in
opposer’s mark, the term NOTES has not been shown to be
incapable of acquiring secondary meaning, when used with
opposer’s software product. On the record before us, NOTES
has gained this acquired distinctiveness, and thus NOTES
will be considered as a separate mark of opposer in the
determination of likelihood of confusion.
Thus, we turn to the issue of likelihood of confusion
and to those of the du Pont factors which are most relevant
to the circumstances at hand. See In re E.I. du Pont de
Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
Looking first to the respective software products of
the parties, we note, as pointed out by applicant, that
applicant’s software is restricted in the identification in
the application to use in the field of geographic
information systems. While the mapping update which is the
principle feature of applicant’s product might fall within
the scope of certain elements set forth in the
identification of opposer’s software, applicant’s product in
its totality is far less complicated than the groupware
software of opposer. The only true overlap that has been
pointed out by opposer is the fact that applicant’s software
Opposition No. 90,074
11
may be used as an application on a LOTUS NOTES platform, and
that at least one customer, namely, Duquesne Light Company,
is known to use opposer’s LOTUS NOTES as its main database
structure in connection with applicant’s FIELDNOTES “field
drawing tool.” (Opposer’s Exhibit 6). The area of use of
applicant’s program is limited to specific fields in which
geographic information is significant, such as the
construction or utility industries, whereas the potential
for use of opposer’s groupware is unlimited, so long as the
enterprise is large enough to have networking capacity.
Accordingly, in assessing the degree of similarity of
the goods, we find that, while the two software products are
vastly different in kind, there is a relationship between
the two, in that applicant’s specific GIS application may be
used in the field to capture information which is later
communicated to a host computer which may be running a LOTUS
NOTES groupware platform.
A similar relationship is seen in the channels of trade
through which the two products travel. Opposer distributes
its product through a network of over 16,000 Business
Partners, with those reselling the product to customers also
being known as value-added resellers (VARs). The Business
Partners or VARs often develop specific applications to
tailor the software to the particular industry. From the
testimony of Ms. Kelly we know that opposer’s Business
Opposition No. 90,074
12
Partners operate world-wide in a very broad scope of
industries, ranging from finance to publishing to
transportation. Applicant also sells its product through
VARs, but these number around 50, and only one has been
shown to also sell opposer’s products.(Lanahan testimony, p.
111). In like manner, while opposer argues that both
opposer and applicant target the same customers, the fact
remains that the potential customers of applicant’s software
would only be those involved with geographic information,
such as maps, which would be but a small subset of potential
customers for opposer’s groupware product. While opposer
points to evidence of three common customers, this clearly
is an insignificant number in the vast market for opposer’s
groupware.
In addition, the factor of the sophistication of the
buyers of the products of both parties must be considered.
Opposer argues that this sophistication would favor finding
confusion likely, in that most purchasers would already be
aware of LOTUS NOTES software, and perhaps of the later
introduced NOTES companion products or the applications
developed by Lotus’s VARs and Business Partners, and thus
would be apt to believe that applicant’s FIELDNOTES product
is also associated with opposer. We are more inclined to
agree with applicant, however, that the nature of the
products involved, and the type of persons who would be
Opposition No. 90,074
13
making these purchases, would lead to a more careful
scrutiny both of the marks and the products, resulting in a
lesser likelihood of confusion. See Electronic Data Systems
Corp. v. EDSA Micro Corp., 23 USPQ2d 1460 (TTAB 1992).
With this type of relationship between the respective
goods and the relevant markets therefore as background, we
turn to the similarity or dissimilarity of applicant’s mark
FIELDNOTES and opposer’s marks LOTUS NOTES and NOTES. At
the very outset, we would agree with applicant that opposer
has for the most part directed its arguments to the mark
NOTES, rather than LOTUS NOTES, pointing out the similarity
between this mark and the NOTES element in applicant’s mark.
Since applicant’s software may be used out in the field,
opposer takes the position that NOTES is the dominant
portion of applicant’s mark, with FIELD being merely
descriptive. Applicant, on the other hand, argues that the
only common element involved, the word NOTES, is the weaker
component of opposer’s marks and cannot be relied upon for a
finding of likelihood of confusion.
Applicant further argues that its mark FIELDNOTES
should not be dissected, but rather should be considered in
its entirety, as a suggestive term when used in connection
with software for persons collecting data in the field.6

6 We take judicial note of the dictionary definition of
“fieldnote” set forth by applicant in its brief as “an item in a
systematic record of the measurements made by a surveyor or the
Opposition No. 90,074
14
But even so, upon considering the function of applicant’s
software and its use in the field with pen computers so that
maps and other geographic information can be updated, we
find the connotation of the term “notes” as part of the word
“fieldnotes” to be one which would lie within the generally
recognized meaning of “notes”, i.e., brief records or
written communications.7 As such, applicant’s mark falls
within the same category as the marks which applicant has
made of record for third-party products in which the term
"notes” refers to the note-making function of the software
product with which it is being used.8
Opposer, on the other hand, has consistently argued
that NOTES, as used in its marks, is not descriptive of any
note-making function of its software. We have acknowledged
that not only LOTUS NOTES, but NOTES alone, functions as a
mark for this software. Opposer cannot “have its cake and
eat it too.” If applicant’s mark FIELDNOTES is at the very
least highly suggestive of the function of applicant’s
software, opposer cannot rely upon its use of the mark NOTES
in an allegedly arbitrary manner as the basis for a finding

observations of a researcher in the field.” Webster’s Third New
International Dictionary (1986).
7 Dictionary definitions of the word “note” have been made of
record in applicant’s notice of reliance.
8 We have given no weight to applicant’s argument that FIELD is a
surname in a family of marks owned by applicant, in that
ownership of a family of marks is not a defense available to
Opposition No. 90,074
15
of likelihood of confusion. The many third-party uses of
and registrations for marks including the term “NOTE” or
“NOTES” which have been made of record by applicant are
competent to show that the inclusion of this term in marks
used in connection with software having a note-making
function or capacity is not a sufficient basis upon which to
predicate a likelihood of confusion. See Fort Howard Paper
Company v. Marcal Paper Mills, Inc., 189 USPQ 305 (TTAB
1975) and the cases cited therein. Because we find
applicant’s mark to also fall within this category of marks,
we see no basis upon which opposer can claim any similarity
of connotation or overall commercial impression between
applicant’s mark FIELDNOTES and opposer’s NOTES mark, if
opposer is not using the word NOTES descriptively.
Insofar as LOTUS NOTES is concerned, the distinctions
are even greater. Not only is there is a difference in
connotation of the word NOTES but the house indicator LOTUS
is clearly the dominant element of the mark.
We are aware that the fame of the opposer’s marks is
also a factor which should be taken into consideration in
determining the likelihood of confusion. But while opposer
has introduced evidence of extensive sales and advertising
expenditures for its LOTUS NOTES software since 1988, we
have no way in which to determine how much of this fame

applicant. See Baroid Drilling Fluids Inc. v. SunDrilling
Opposition No. 90,074
16
comes from use of the mark NOTES, rather than LOTUS NOTES.
The fact that NOTES has come to be recognized as a product
mark in itself does not necessarily mean that it is the mark
responsible for the success of the software over the years
it has been on the market. In any event, we do not find
this evidence sufficient to extend the scope of protection
for opposer’s marks to all marks for software containing the
word NOTES.
Finally, we cannot ignore the fact that opposer has
failed to introduce any evidence of actual confusion,
despite testimony to the effect that applicant has actually
used its mark since February 1992. While opposer correctly
points out that actual confusion is not necessary for
establishing the likelihood of confusion, the fact that the
software products have been on the market for this period of
time with no known instances of confusion is clearly a
factor to be taken into consideration, particularly when
consideration is given to opposer’s arguments of the
potential use of the products by the same customers, with
LOTUS NOTES serving as a platform for FIELDNOTES. In view
of the fact that these are expensive software products being
marketed to sophisticated purchasers, we would expect that
such purchasers would be quick to report any actual

Products, 24 USPQ2d 1048 (TTAB 1992).
Opposition No. 90,074
17
confusion, making evidence of this nature readily available
to opposer.
Accordingly, upon weighing all the relevant factors, we
find the balance falls in applicant’s favor, particularly in
view of the dissimilarity in the commercial impressions of
the marks of the two parties, and the differences in the
types of software upon which they are used.
Decision: The opposition is dismissed.
R. F. Cissel
E. W. Hanak
H. R. Wendel
Trademark Administrative Judges,
Trademark Trial and Appeal Board