PrimeSense Ltd.v.Primesensor Technology Inc.

Trademark Trial and Appeal Board

Dec 13, 2012

No. 91198297 (T.T.A.B. Dec. 13, 2012)

WINTER

Mailed: December 13, 2012

Opposition No. 91198297
PrimeSense Ltd.
v.
Primesensor Technology Inc.

Before Quinn, Bergsman, and Kuczma,
Administrative Trademark Judges.

By the Board:

Primesensor Technology Inc. (“applicant”) seeks
registration of the mark PRIMESENSOR (standard character
form) for use in connection with “circuit board, computer
chip, photo mask, semiconductor, interface card, micro
circuit, silicon wafers, integrated circuit, semiconductor
chip, semiconductor device, silicon chip, semiconductor
wafer, photoelectric sensor, infrared sensor, ultrasonic
sensor, microwave sensor.”1
PrimeSense Ltd. (“opposer”) opposes registration on the
grounds of priority and likelihood of confusion under

1 Application Serial No. 77951008, filed March 4, 2010, based on
applicant’s bona fide intent to use the mark in commerce.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91198297
2

Trademark Act Section 2(d), 15 U.S.C. § 1052(d). In support
of its claim, opposer alleges priority based on its common
law rights accruing from its promotional and advertising
activities and use in commerce in the United States of the
marks PRIMESENSE and PRIMESENSOR prior to the filing date of
the opposed application, and asserts ownership of a pending
application for the mark PRIMESENSE (standard character
form) for “integrated circuits; optical components, namely,
lenses for projecting light; electronic imaging devices,
namely, three-dimensional cameras; computer software for
visual data processing.”2 Opposer also alleges that the
involved application has been cited as a potential bar to
registration because of a likelihood of confusion between
the marks.
In its answer, applicant has denied most salient
allegations set forth in the notice of opposition, except
that applicant admitted, inter alia, that its PRIMESENSOR
mark was not used in U.S. commerce in connection with the
sale of any product or service, nor was it affixed to any
product or packaging for sale in the United States before
March 4, 2010, the filing date of its application (see ¶¶ 10
and 11).

2 Application Serial No. 77968290, filed March 25, 2010, based on
opposer’s bona fide intent to use the mark in commerce.

Opposition No. 91198297
3

Opposer’s Motion for Summary Judgment
This case now comes up for consideration of opposer’s
fully briefed motion (filed February 2, 2012) for summary
judgment on its claim of priority and likelihood of
confusion.
Summary judgment is an appropriate method of disposing
of cases in which there is no genuine dispute with respect
to any material fact, thus leaving the case to be resolved
as a matter of law. See Fed. R. Civ. P. 56(c)(1). A party
moving for summary judgment has the burden of demonstrating
the absence of any genuine dispute as to a material fact,
and that it is entitled to judgment as a matter of law. See
Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986); Sweats
Fashions, Inc. v. Pannill Knitting Co. Inc., 833 F.2d 1560,
4 USPQ2d 1793, 1796 (Fed. Cir. 1987). A factual dispute is
genuine if, on the evidence of record, a reasonable fact
finder could resolve the matter in favor of the non-moving
party. See Opryland USA Inc. v. Great American Music Show
Inc., 970 F.2d 847, 23 USPQ2d 1471, 1472 (Fed. Cir. 1992);
Olde Tyme Foods, Inc. v. Roundy’s, Inc., 961 F.2d 200, 22
USPQ2d 1542, 1544 (Fed. Cir. 1992).
Additionally, the evidence of record and all
justifiable inferences that may be drawn from the undisputed
facts must be viewed in the light most favorable to the
non-moving party. See Lloyd’s Food Products Inc. v. Eli’s
Opposition No. 91198297
4

Inc., 987 F.2d 766, 25 USPQ2d 2027 (Fed. Cir. 1993); and
Opryland USA, 23 USPQ2d at 1472. Further, in considering
whether summary judgment is appropriate, the Board may not
resolve genuine disputes as to material facts and, based
thereon, decide the merits of the opposition. Rather, the
Board may only ascertain whether any material fact cannot be
disputed or is genuinely disputed. See Lloyd’s Food
Products, 25 USPQ2d at 2029; and Olde Tyme Foods 22 USPQ2d
at 1542.
Further, when a moving party’s motion for summary
judgment is supported by evidence sufficient to indicate
that there can be no genuine dispute as to any material fact
and that the moving party is entitled to judgment, the
burden shifts to the nonmoving party to demonstrate the
existence of at least one genuine dispute as to a material
fact that requires resolution at trial. The nonmoving
party, however, may not rest on the mere allegations of its
pleadings and assertions, but must designate specific
portions of the record or produce additional evidence
showing the existence of a genuine dispute as to a material
fact for trial. Consequently, factual assertions, without
evidentiary support, are insufficient to defend against a
motion for summary judgment. See Hornblower & Weeks Inc. v.
Hornblower & Weeks Inc., 60 USPQ2d 1733, 1739 (TTAB 2001)
(“applicant has produced no evidence, or raised any
Opposition No. 91198297
5

expectation that at trial it could produce evidence”); and S
& L Acquisition Co. v. Helene Arpels Inc., 9 USPQ2d 1221,
1225 n.9 (TTAB 1987).
To prevail on summary judgment on its claim of
likelihood of confusion, opposer must establish that there
is no genuine dispute that it has standing to maintain this
proceeding; that it has priority of use; and that
contemporaneous use of the parties’ respective marks on
their respective goods would be likely to cause confusion,
mistake or to deceive consumers. See 15 U.S.C. § 1052(d);
and Hornblower & Weeks, Inc. v. Hornblower & Weeks, Inc., 60
USPQ2d 1733, 1735 (TTAB 2001).
• Standing
We turn first to the question of whether opposer has
standing to bring this opposition proceeding. Standing is a
threshold issue that must be proven by a plaintiff in every
inter partes case. See Ritchie v. Simpson, 170 F.3d 1092,
50 USPQ2d 1023 (Fed. Cir. 1999); Jewelers Vigilance
Committee, Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d
2021 (Fed. Cir. 1987); and Lipton Industries, Inc. v.
Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
The purpose of the standing requirement, which is directed
solely to the interest of the plaintiff, is to prevent
litigation when there is no real controversy between the
parties. Id. at 189.
Opposition No. 91198297
6

Opposer has pleaded that applicant’s application has
been cited as a potential bar to opposer’s application
(notice of opp., ¶6), and applicant has admitted that
allegation (answer, ¶6). In view thereof, there is no
genuine dispute as to the material fact that opposer has
standing to oppose registration of the involved application.
See Fiat Group Automobiles S.p.A. v. ISM, Inc., 94 USPQ2d
1111, 1112 (TTAB 2010) (standing found where Office made a
provisional refusal of opposer’s application based on prior
pending applications), citing, Life Zone Inc. v. Middleman
Group Inc., 87 USPQ2d 1953, 1959 (TTAB 2008) (standing found
where opposed application was cited as a potential bar to
opposer's registration).
• Priority
In the absence of testimony or other proof
demonstrating that the actual use of the mark an applicant
seeks to register commenced prior to the filing date of its
involved application, the earliest date upon which an
applicant may rely in an opposition proceeding is the filing
date of its involved application. See Syngenta Crop
Protection Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1119 (TTAB
2009); Zirco Corp. v. American Telephone and Telegraph Co.,
21 USPQ2d 1542, 1544 (TTAB 1991).
Applicant admitted in its answer that its PRIMESENSOR
mark was not used in commerce in connection with the sale of
Opposition No. 91198297
7

any product or service, nor was it affixed to any product or
packaging for sale in the United States before March 4,
2010, the filing date of its application (notice of opp. &
answer, ¶¶ 9-10). Therefore, the earliest date upon which
applicant may rely for priority purposes is March 4, 2010.
See Levi Strauss & Co. v. R. Josephs Sportswear Inc., 36
USPQ2d 1328, 1332 (TTAB 1998), quoting, The Alliance
Manufacturing Co., Inc. v. ABH Diversified Products, Inc.,
226 USPQ 348, 351 (TTAB 1985) (“an applicant is entitled to
rely upon the filing date of its application as a
presumption of use of the mark subject of the application as
of that date”).
Turning to opposer, inasmuch as the March 25, 2010,
filing date of opposer’s application is after the filing
date of the opposed application, in order to prevail on its
claim of likelihood of confusion, opposer must demonstrate
actual use or use analogous to trademark use of either its
applied-for PRIMESENSE mark for the goods identified in its
own application, or actual use or use analogous to trademark
use of its PRIMESENSE or PRIMESENSOR marks with the goods
described in the notice of opposition, before March 4, 2010.
See T.A.B. Systems v. Pactel Teletrac, 77 F.3d 1372, 1375,
37 USPQ2d 1879, 1881 (Fed. Cir. 1996); and Dyneer Corp. v.
Automotive Products plc, 37 USPQ2d 1251, 1254 (TTAB 1995).
In determining priority, we look at the total picture
Opposition No. 91198297
8

presented by the evidence. As our primary reviewing court
has noted:
[W]hether a particular piece of evidence by itself
establishes prior use is not necessarily dispositive as
to whether a party has established prior use by a
preponderance. Rather, one should look at the evidence
as a whole, as if each piece of evidence were part of a
puzzle which, when fitted together, establishes prior
use.

West Florida Seafood, Inc. v. Jet Restaurants, 31 F.3d
1122, 31 USPQ2d 1660, 1663 (Fed. Cir. 1994).

Additionally, use analogous to trademark use must be of
“such a nature and extent as to create an association of
said [term] with a single source … sufficient to create a
proprietary right in the user deserving of protection.” Era
Corp. v. Electronic Realty Associates, Inc., 211 USPQ 734,
745 (TTAB 1981). The manner of use must be “calculated to
attract the attention of potential customers or customers in
the applicable field of trade” so as to create an
association of the term with a single source, even if
anonymous. Liqwacon Corp. v. Browning-Ferris Industries,
Inc., 203 USPQ 305, 308 (TTAB 1979).
Here, opposer has attempted to establish both technical
trademark use of the marks PRIMESENSE and PRIMESENSOR prior
to applicant’s filing date and use analogous to trademark
use even earlier than its technical use of those marks. In
support of its claim of priority, opposer has submitted the
Opposition No. 91198297
9

declarations of the following persons: Adi Berenson,3
opposer’s employee and former Vice President of Business
Development and Marketing; Danny Awdeh, opposer’s counsel;
Susannah Kolstad, a legal assistant of opposer’s counsel;
Alex Shows, former Chief Technology Officer of Dell, Inc., a
customer of opposer; and Fred Swan, former Director of
Product Marketing and Director of Business Development of
Logitech, Inc., to which opposer made a product
presentation. Attached to the Berenson declaration are
printouts purporting to show trademark use and use analogous
to trademark use of the PRIMESENSE and PRIMESENSOR marks;
attached to the Awdeh declaration are printouts of
applicant’s responses to opposer’s discovery; and attached
to the Kolstad declaration are printouts from her internet
searches of materials on opposer’s technology.
In opposition, applicant has submitted only a printout
from Wikipedia regarding the “KINECT” product by which
applicant seeks to show that the KINECT device, which
includes opposer’s “three-dimensional sensing and processing
technology” (first Berenson dec., ¶5), “was not released to
the public until November 2010,” after the filing date of
the opposed application (response at 3, note 1).4

3 Hereafter referred to as the “first Berenson dec.”

4 Although applicant’s exhibit shows the URL or internet address
of the document and the date the document was accessed, the
probative value of the exhibit is limited. Internet evidence,
Opposition No. 91198297
10

In reply, opposer submitted a second declaration of
Adi Berenson5 and the declaration of Robert Walker, former
Principal Program Manager and Hardware Architect from
2000-2011 of Microsoft. With Mr. Berenson’s second
declaration, opposer submitted a chart showing customer
sales records from 2007 through 2010, and copies of actual
invoices for sales of opposer’s SoC chips, sensors, FGPA
boards, developer kits, and lenses dating from June 18,
2008.
In view of the amount of evidence submitted by opposer
and the highly technical nature of the goods involved, in
order to determine whether there is any genuine dispute with
respect to opposer’s asserted priority of use, we find it
appropriate to set forth the following undisputed findings
of fact, as established by opposer’s above-referenced

similar to a printed publication, is only admissible for what it
shows on its face. Because applicant’s submission does not fall
within an exception to the hearsay rule, it will not be
considered to prove the truth of any matter stated in therein.
See, e.g., 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1717 n.2
(TTAB 2007) (materials made of record by notice of reliance under
37 C.F.R. § 2.122(e) not admissible for the truth of the matters
contained therein, unless a competent witness has testified to
the truth of such matters); Midwest Plastic Fabricators Inc. v.
Underwriters Laboratories Inc., 12 USPQ2d 1267, 1270 n.5 (TTAB
1989) (annual report in evidence only for what it showed on its
face), aff’d, 906 F.2d 1568, 15 USPQ2d 1359 (Fed. Cir. 1990). In
any event, even if applicant’s submission were admissible, the
date on which a third party, such as Microsoft, launched its own
products that included opposer’s goods is not relevant to when
opposer commenced using its marks in a manner analogous to
trademark use or as trademarks in commerce.

5 Hereafter referred to as the “second Berenson dec.”

Opposition No. 91198297
11

submissions. In doing so, we note that all the exhibits
attached to the declarations of Adi Berenson are designated
“Filed under Seal” and/or “Trade Secret/Commercially
Sensitive.” Accordingly, the content of those exhibits is
discussed only in general terms.
(1) Opposer was founded in 2005 and developed a sensing and
processing technology for detecting gestures and body
movements (¶¶ 2-3, first Berenson dec.).
(2) Opposer’s technology enables users to interact with
digital devices, such as monitors, televisions and
computers, without the use of separate control devices,
such as remote controls or joysticks (first Berenson
dec. at ¶¶ 3-4).
(3) Opposer’s technology functions in part by means of “a
full range of three-dimensional sensing and processing”
devices, including a “fully assembled sensing system”
(Id. at ¶5).
(4) Opposer’s user-interface devices originally contained
an FPGA6 board (Id. at ¶8).

6 An “FPGA” or “field-programmable gate array” is a type of
programmable logic chip that can be configured for a wide range of
specialized applications after manufacture and delivery.
Microsoft Computer Dictionary, p. 223, 5th ed., copyright 2002 by
Microsoft Corporation. “Chip” is defined as “see integrated
circuit” (see infra note 11). Id.
We find it appropriate in this instance to take judicial notice
of the definitions of “field-programmable gate array,” “chip,”
and other terms (see notes 7, 8, 9 & 11, infra). See, e.g.,
Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581, 1590
n.8 (TTAB 2008) (judicial notice taken of definition from the
Merriam-Webster Online Dictionary); and In re Red Bull GmbH, 78
Opposition No. 91198297
12

(5) Opposer’s user-interface devices were later embedded
with a “system on a chip”7 (SoC), which was used with
the mark PRIME SENSE (first Berenson dec. at ¶7). For
instance, Microsoft’s KINECT XBOX device contains
opposer’s SoC (Id. at ¶6).
(6) Opposer’s SoC chip works in tandem with CMOS8 imaging
chips, which function as image sensors that convert
light into digital images and are the imaging component
of opposer’s imaging products (Id. at ¶7).
(7) At least as early as January 8, 2007, opposer sent an
invoice to an immediately recognizable major computer
hardware and software concern in the United States for
the development kit sensor and FPGA board (first
Berenson dec., Exh. 1); and on January 10, 2007,

USPQ2d 1375, 1378 (TTAB 2006) (Board determined that while the
on-line dictionary may not be available as a print publication,
it is a widely-known reference that is readily available in
specifically denoted editions via the Internet and CD-Rom, thus,
finding that the source was the electronic equivalent of a print
publication and that applicant may easily verify the excerpt).
See also Application of Hartop, 311 F.2d 249, 135 USPQ 419, 420
n.6 (CCPA 1952) (taking judicial notice of two standard reference
works); University of Notre Dame du Lac v. J. C. Gourmet Food
Imports Co., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372,
217 USPQ 505 (Fed. Cir. 1983).
We also note applicant’s statement that “both SoC and FPGA are
well known practice [sic] in the industry” (response at 3).

7 “SOC” is the acronym for “system on a chip,” which is a chip
integrating computer, microprocessors, and all necessary support
components on a single unit. Microsoft Computer Dictionary,
p. 488, 5th ed., copyright 2002 by Microsoft Corporation.

8 “CMOS” is the acronym for “Complementary Metal Oxide
Semiconductor.” Microsoft Computer Dictionary, p. 105, 5th ed.,
copyright 2002 by Microsoft Corporation.

Opposition No. 91198297
13

opposer sent an invoice to an immediately recognizable
major computer and A/V entertainment concern in the
United States for the same goods (Id.). These invoices
clearly showed opposer’s PRIMESENSE mark used to
identify the foregoing products.
(8) At least as early as March 2007, opposer used the
wording “PrimeSense” and “Prime Sensor™ Development
Kit9 1.0.1”10 on a user’s guide for opposer’s hardware
and software products to allow a potential customer to
learn about the products and develop applications on
its own (first Berenson dec., Exh. 3). The guide
states that, once commercially developed,
“Prime Sensor” will comprise various components
including the “Prime Sensor™ IC11, which is a

9 “SDK” or “software development kit” is a collection of software
tools, code libraries, documentation, etc., necessary to develop
a specific type of software, commonly provided as a single
installable package. A Dictionary of Computing, p. 450, 6th ed.,
copyright 2008 by Market House Books Ltd. (Oxford University
Press).

10 The user’s guide states that “[t]his guide describes how to set
up, evaluate and build applications using the Prime Sensor™
Development Kit (PSDK).” In addition, the glossary clarifies
that “PSDK” refers to “Prime Sensor™ Development Kit” and that
“PS-SDK” refers to “Prime Sensor™ Software Development Kit.” The
Prime Sensor™ SDK was described to include Prime Sensor™ device
drivers, host software run-time libraries, and sample
applications (first Berenson dec., Exh. 3).

11 “IC” refers to “integrated circuit.” Dictionary of Computer and
Internet Terms, p. 254, 10th ed., copyright 2009 by Barron’s
Educational Series, Inc. “Integrated circuit” is an electronic
device consisting of a many miniature transistors and other
circuit elements on a single silicon chip. An integrated circuit
is also called ‘chip’.” Microsoft Computer Dictionary, p. 277,
5th ed., copyright 2002 by Microsoft Corporation.
Opposition No. 91198297
14

System on a Chip (SoC) that efficiently performs Prime
Sense’s patent pending three-dimensional machine vision
algorithms.” The user’s guide also shows that the PSDK
(Prime Sensor™ Development Kit) includes, inter alia,
“the Prime Sensor™ Evaluation Board comprising an FPGA
implementation of Prime Sense’s patent pending … logic,
as well as peripheral devices” (Id.).
(9) At least as early as April 3, 2007, opposer provided
in-depth product and development/delivery information
and training materials on its sensing and processing
technology to U.S.-based companies, including Microsoft
(April 3, 2007), Apple (August, 2007), Dell (January,
2008) and Logitech (December 22, 2008), in connection
with the marks PRIMESENSE and PRIME SENSOR (first
Berenson dec., Exh. 3, 4 & 5).
(10) Opposer demonstrated its gesture detection technology
at the Game Developers Conference trade show from
January 7-10, 2008, in Las Vegas, Nevada, in connection
with its “PrimeSense” house mark and “Prime Sensor
Development Kit,” as shown on a compact disc and
signage at the conference (Id., Exh. 6). Opposer has
also exhibited its PRIMESENSE and PRIME SENSOR products
Opposition No. 91198297
15

at the Consumer Electronics Show (CES) tradeshow12
since 2009 (first Berenson dec., ¶17).
(11) At least as early as June 11, 2008, opposer submitted a
price quotation for the PRIME SENSE “PRIME SENSOR
DEVELOPMENT KIT (PSDK) (Version 1.4)” to an immediately
recognizable major computer hardware and software
concern in the United States (Id., Exh. 2).
(12) Opposer submitted over fifty price quotations to
interested purchasers, including Activion, Apple,
Bionic Games, Dell, Frog, GM, HP, Intel, Microsoft,
Motorola, Nike, SONY, VIZIO, and others, for its
PRIMESENSE and PRIMESENSOR products before March 4,
2010 (first Berenson dec., ¶11).
(13) On July 8, 2008, opposer invoiced a major U.S. computer
hardware and software company for parts of the Prime
Sensor Development Kit (PSDK), namely, the “PS Dev kit
sensor” and the “PS Dev kit FPGA board” (first Berenson
dec., Exh. 1). Opposer used the PRIMESENSE mark on the
FPGA board (first Berenson dec., ¶8) and the invoice
therefor also showed the mark PRIMESENSE.
(14) On May 24, 2009, opposer invoiced another major
computer hardware company for the “PSDK 2.5.” (first
Berenson dec., Exh. 1). The invoice referred to the

12 Mr. Berenson states in his first declaration (¶17) that the CES
is the world’s largest consumer electronics show.

Opposition No. 91198297
16

purchased item by the acronym for the “Prime Sensor
Development Kit,” i.e., PSDK, adjacent to the kit
version number, and also showed opposer’s PRIMESENSE
mark.
(15) On December 3, 2009, opposer invoiced a U.S. business
process outsourcing (BPO) company for several units of
the “PSDK5.0” (first Berenson dec., Exh. 1). This
invoice also showed opposer’s PRIMESENSE mark, along
with the acronym for the “Prime Sensor Development
Kit,” i.e., PSDK, adjacent to the version number.
(16) On December 14, 2009, opposer invoiced a major U.S.
computer hardware and software company for its purchase
of the “PS1080 (IC0119)”13 (second Berenson dec.,
Exh 1). The invoice also showed opposer’s PRIMESENSE
mark.
(17) On December 29, 2009, opposer invoiced a major U.S.
automobile manufacturer for the purchase of the “Prime
Sensor Dev. Kit 2.5.” (first Berenson dec., Exh. 1).
(18) Declarants Shows, Swan, and Walker attested that since
late 2006, they recalled seeing the PRIMESENSE and
PRIMESENSOR trademarks on presentations and on other
materials related to opposer’s gesture-based user-

13 Opposer’s materials state that the integrated circuit produced
by opposer for a major U.S. computer hardware and software
company would bear that purchaser’s part number (first Berenson
dec., Exh. 2).

Opposition No. 91198297
17

interface products and components, and that they
understood those marks to be opposer’s trademarks and
that such understanding continues today.
(19) While opposer has promoted its PRIME SENSE products on
its website, www.primesense.com since 2006 (¶20 and
Exh. 7 to first Berenson dec.), opposer has promoted
its PRIMESENSE and PRIMESENSOR marks for its “Natural
Interaction™ Products” since at least February 13, 2010
(first Berenson dec., Exh. 7).
(20) Opposer’s promotional efforts were recognized in an
article in Forbes.com on June 30, 2009, and in a
well-known U.S. newspaper on January 12, 2010. For
instance, opposer’s demonstration at the 2010 Consumer
Electronics Show in Las Vegas was noted, and in
particular, that “a camera using PrimeSense’s chip
could distinguish among multiple people” and their
clothing (The New York Times, January 12, 2010)
(Kolstad dec., Exh. 3, 5, 6, 8 and 10).
(21) Opposer’s sold a substantial number of its gesture-
based user-interface products commencing in 2007,
including to Microsoft, and its sales increased
annually,14 at least until the filing date of
applicant’s application (second Berenson dec., ¶2).

14 The particulars of opposer’s data are designated highly
confidential by opposer; thus, the specific sales figures are not
set forth in this order.
Opposition No. 91198297
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Based on the evidence adduced by opposer, and contrary
to the mere arguments offered by applicant, we find that
there is no dispute as to the material fact that opposer
commenced using its PRIMESENSE mark in a manner analogous to
trademark use in connection with its various gesture-based
technology prior to the filing date of applicant’s
application. Specifically, on dates certain in 2007 and in
2008, opposer promoted said goods, including opposer’s
system on a chip, in connection with the PRIMESENSE mark by
providing in-depth production information, training
materials and quotations to several U.S. companies, and by
conducting product demonstrations at tradeshows. The
evidence of record also shows that the relevant purchasers
connected opposer’s goods with the terms PRIMESENSE,
PRIME SENSOR and PRIMESENSOR.
Similarly, there is no dispute that opposer used the
terms PRIMESENSE and PRIME SENSOR as trademarks for
opposer’s goods prior to the filing date of applicant’s
application. In particular, both marks are clearly shown
and used as trademarks on and in the Prime Sensor
Development Kit User’s Guide dated “March 2007.” It has
long been held that an instruction manual may be “as much a
part of applicant’s goods” as the goods themselves, and
integral to their use, and therefore may be accepted as
evidence of “affixation to the goods.” In re Ultraflight
Opposition No. 91198297
19

Inc., 221 USPQ 903, 906 (TTAB 1984). Applicant’s single
exhibit, which is related to the development and release of
Microsoft’s KINECT device, is insufficient to rebut
opposer’s evidence establishing the material fact that
opposer used the marks PRIMESENSE, PRIME SENSOR, and
PRIMESENSOR in a manner analogous to trademark use and used
the marks PRIMESENSE and PRIME SENSOR as technical
trademarks prior to the filing date of the opposed
application.
Accordingly, we find as a matter of law that opposer
engaged in a sufficient effort to establish an
identification between its gesture-based user-interface
technology, including particular software, hardware, and
integrated circuit components, and the terms PRIMESENSE,
PRIME SENSOR, and PRIMESENSOR among a substantial group of
relevant purchasers. See Dyneer, 37 USPQ2d at 1255.
Additionally, we find as a matter of law that opposer used
the terms PRIMESENSE and PRIME SENSOR as trademarks prior to
the filing date of applicant’s application. In view
thereof, we find as a matter of law that opposer has
priority of use with respect to its pleaded PRIMESENSE and
PRIMESENSOR marks on integrated circuits, electronic three-
dimensional imaging, sensing, and optical processing
devices, and computer software for use in digital processing
of body movements and gestures.
Opposition No. 91198297
20

• Likelihood of confusion
Our determination under Section 2(d) is based on an
analysis of all of the probative 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, 567 (CCPA 1973). See also, In re
Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1203 (Fed. Cir. 2003). Our primary reviewing court
has held that only those du Pont factors shown to be
material or relevant in the particular case and which have
evidence submitted thereon are to be considered. Olde Tyme
Foods, Inc. v. Roundy's, Inc., 961 F.2d 200, 22 USPQ2d 1542,
1544 (Fed. Cir. 1992). Further, in any likelihood of
confusion analysis, 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, 29 (CCPA
1976) (“The fundamental inquiry mandated by §2(d) goes to
the cumulative effect of differences in the essential
characteristics of the goods and differences in the marks”).
In this case, applicant’s applied-for mark,
PRIMESENSOR, is identical to opposer’s PRIMESENSOR mark and
is very similar to opposer’s PRIME SENSOR and PRIMESENSE
marks. The PRIMESENSOR and PRIME SENSOR marks are
pronounced in the same manner, and the applied-for mark is
Opposition No. 91198297
21

pronounced in almost the same manner as PRIMESENSE. The
applied-for mark and opposer’s PRIMESENSE mark differ only
in the last syllable. Presto Products Inc. v. Nice-Pak
Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (the first
part of [applicant’s] mark is “most likely to be impressed
upon the mind of a purchaser and remembered”). See also
Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin, 396 F.3d
1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (“Veuve” is the
most prominent part of the mark VEUVE CLICQUOT because
“veuve” is the first word in the mark and the first word to
appear on the label); Wet Seal Inc. v. FD Mgmt. Inc., 82
USPQ2d 1629, 1639 (TTAB 2007). Further, PRIMESENSOR and
PRIMESENSE evoke virtually identical connotations and
commercial impressions. The identical appearance of the
applied-for mark and opposer’s PRIMESENSOR mark, as well as
the virtual identity of the PRIMESENSOR and PRIMESENSE
marks, favor opposer.
We turn next to a consideration of the goods, keeping
in mind that where identical marks are involved, the degree
of similarity between the parties’ goods that is required to
support a finding of likelihood of confusion declines.
Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d 1100 (TTAB
2007). Additionally, we may find that there is a likelihood
of confusion when only one item in a class of goods is
commercially similar to a party’s goods. See Tuxedo
Opposition No. 91198297
22

Monopoly, Inc. v. General Mills Fun Group, Inc., 648 F.2d
1335, 209 USPQ 986, 988 (CCPA 1981). See also Research in
Motion Limited v. Defining Presence Marketing Group, Inc. et
al, 102 USPQ2d 1187 (TTAB 2012) (“Likelihood of confusion
must be found if there is likely to be confusion with
respect to any item that comes within the identification of
goods in the application.”).
With respect to the relatedness of the goods, the only
evidence of record relates to the identity of the goods and
the related nature of the parties’ goods. Specifically, as
identified in opposer’s materials, opposer’s goods comprise
in part a system on a chip (SoC), which is a type of
integrated circuit; the goods identified in opposer’s
application include “integrated circuits;”15 and applicant’s
identified goods include “integrated circuit.”
Additionally, applicant’s goods include “semiconductor[s].”
As established by opposer’s materials, opposer’s SoC works
in tandem with CMOS chips, i.e., a type of semiconductor,
which function as image sensors. Thus, one of the parties’
goods is identical and at least one of applicant’s goods is
complementary to opposer’s goods. Further, applicant

15 In its answer (¶5), applicant admitted opposer’s allegation
regarding its pending application (¶5). Said allegation included
a list of the goods which are identified in opposer’s
application, i.e., Serial No. 77968290, namely, “integrated
circuits, optical components, electronic imaging devices,
computer software.”

Opposition No. 91198297
23

admitted in its answers to opposer’s requests for admission
that “some or all of the goods listed in [its] application
are closely related to opposer’s products” (no. 73) and that
“some of applicant’s products may be used in products with
gesture-based user interfaces” (no. 87) (Awdeh dec.,
Exh. 4).16
In view of the foregoing, there can be no dispute as to
the material facts that one of applicant’s goods is
identical to opposer’s goods and at least one of applicant’s
goods may be used with opposer’s goods. See Hewlett-Packard
Development Company, L.P. v. Vudu, Inc., 92 USPQ2d 1630,
1633 n.4 (TTAB 2009) (“it is sufficient if likelihood of
confusion is found with respect to use of the mark on any
item that comes within the description of goods in the
application or registration”) (internal citations omitted).
Because the goods are in part identical and otherwise
closely related, and because neither identifications of
goods contains a limitation of any kind with respect to
consumers or channels of trade, we presume that the goods
move in the same channels of trade and are sold to the same
classes of consumers. See American Lebanese Syrian
Associated Charities Inc. v. Child Health Research
Institute, 101 USPQ2d 1022, 1028 (TTAB 2011); In re Smith

16 Applicant also stated in its brief that “it is not in dispute
that the likely [sic] confusion does exist in view of the
production [sic] description on record” (response at 2).
Opposition No. 91198297
24

and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994) (“Because the
goods are legally identical, they must be presumed to travel
in the same channels of trade, and be sold to the same class
of purchasers.”). See also In re Viterra Inc., 671 F.3d
1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though
there was no evidence regarding channels of trade and
classes of consumers, the Board was entitled to rely on this
legal presumption in determining likelihood of confusion).
Accordingly, considering the evidentiary factors set
forth in du Pont for which there is evidence in the record,
we find that there can be no genuine dispute as to the
material facts relating to the issue of likelihood of
confusion. In view thereof, we find as a matter of law that
there is a likelihood of confusion with respect to opposer’s
pleaded PRIMESENSE and PRIMESENSOR marks and the applied-for
mark.
Order
Based on the record on summary judgment, after
consideration of the parties’ arguments and evidence, and
having drawn all justifiable inferences in a light most
favorable to applicant, we find that opposer has met its
burden of demonstrating that it has standing; that there is
no genuine dispute that it used its PRIMESENSE and
PRIMESENSOR marks in a manner analogous to trademark use and
used its PRIMESENSE trademark in commerce prior to the
Opposition No. 91198297
25

earliest date upon which applicant may rely; and that no
genuine dispute exists as to whether there is likelihood of
confusion. Thus, opposer has demonstrated that it is
entitled to judgment as a matter of law on its claim of
priority and likelihood of confusion.
Accordingly, opposer’s motion for summary judgment is
granted. The opposition is sustained on the ground of
priority and likelihood of confusion, and registration to
applicant is refused.
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