re:Member Data Services, Inc.v.Blackbaud, Inc.

Trademark Trial and Appeal Board

Apr 5, 1999

No. 91102600 (T.T.A.B. Apr. 5, 1999)

Paper No. 19
BAC
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB APRIL 5, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
re:Member Data Services, Inc.
v.
Blackbaud, Inc.
_____
Opposition Nos. 102,500; 102,586; 102,587;
102,594; 102,600; and 103,161
_____
Clifford W. Browning of Woodard, Emhardt, Naughton, Moriarty
& McNett for re:Member Data Services, Inc.
W. Jamison Cox of Smith, Cox & Associates for Blackbaud,
Inc.
______
Before Hohein, Hairston and Chapman, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
re:Member Data Services, Inc. has opposed six
applications owned by Blackbaud, Inc. to register the
following marks: (1) RE:MEMBER for “add-on software modules
which allows (sic) an organization to handle all membership
needs: joining, renewing, upgrading, downgrading, lapsed and
dropped members and reporting and printing of membership
Opposition Nos. 102500, 102586, 102587, 102594, 102600 & 103161
2
cards”1; (2) RE:QUEUE for “add-on software modules which
allows (sic) an institution to set up a sequence of reports
or queries that can be run automatically and unattended”2;
(3) RE:VOLUNTEER for “add-on software modules which allows
(sic) an institution to organize and mange volunteer staff
for specific assignments, availability, scheduling and
contributed hours”3; (4) RE:ZIP for “add-on software modules
which allows (sic) the import and/or export of data to a
third party mail house for standardization of addresses as
well as the attachment of zip+4 information to the zip
codes”4; (5) RE:TRIBUTE for “add-on software modules which
tracks (sic) all gifts made in memory or honor of
individual(s), prints acknowledgments, and informs honorees
and or family members of each contribution”5; and (6)
RE:ALUM for “add-on software modules which allows (sic) a

1 Application Serial No. 74/683,696, filed May 31, 1995. The
claimed dates of first use and first use in commerce are 1994.
This application is the subject of Opposition No. 102,500.
2 Application Serial No. 74/683,691, filed May 31, 1995. The
claimed dates of first use and first use in commerce are 1990.
This application is the subject of Opposition No. 102,586.
3 Application Serial No. 74/683,692, filed May 31, 1995. The
claimed dates of first use and first use in commerce are 1994.
This application is the subject of Opposition No. 102,587.
4 Application Serial No. 74/683,690, filed May 31, 1995. The
claimed dates of first use and first use in commerce are 1990.
This application is the subject of Opposition No. 102,594.
5 Application Serial No. 74/683,695, filed May 31, 1995. The
claimed dates of first use and first use in commerce are 1994.
This application is the subject of Opposition No. 102,600.
Opposition Nos. 102500, 102586, 102587, 102594, 102600 & 103161
3
school/college to maintain and utilize biographical elements
used in the solicitation of alumni”6.
As grounds for opposition, opposer has made essentially
the same allegations in its six notices of opposition,
namely, that since long prior to applicant’s filing date,
opposer “has been engaged in the business of offering for
sale goods and services including providing credit unions
with use of a computer database to access account
information and transact banking business and credit card
services marketed through credit unions and computer
programs, all under the trade name RE:MEMBER DATA SERVICES,
INC.”; that opposer’s use of its trade name has been
continuous, and has become well known “to consumers and
others in the computer, credit union and financial
industries”; that because of the high quality of opposer’s
goods and services, and the extensive use of its trade name
in advertising, “the relevant public has come to associate
Opposer’s goods and services with its RE:MEMBER DATA
SERVICES, INC. trade name”; that applicant’s use of its
marks will lead the public to believe that applicant’s goods
originate from or are sponsored by opposer, or that opposer
is in some way associated with applicant; and that
applicant’s marks, when used on its goods, so resemble

6 Application Serial No. 74/683,697, filed May 31, 1995. The
claimed dates of first use and first use in commerce are 1994.
This application is the subject of Opposition No. 103,161.
Opposition Nos. 102500, 102586, 102587, 102594, 102600 & 103161
4
opposer’s previously used trade name, as to be likely to
cause confusion, mistake, or deception.
In its answers, applicant denied the salient
allegations of the notice of opposition, and raised the
affirmative defenses of laches and estoppel, as well as the
putative defenses of opposer’s failure to mitigate its
damages (if any) and that sustaining the oppositions would
grant opposer a de facto registration without observing the
statutory requirements therefor.7
Opposer’s motion to consolidate the six oppositions was
not contested, and because the cases involved common
questions of law and fact, the Board consolidated the
proceedings on January 3, 1997.
The record consists of the pleadings; the files of the
six opposed applications; the testimony, with exhibits, of
David Bruce Becker, opposer’s president and chief executive
officer; the testimony, with exhibits, of Nigel Cooper,
applicant’s vice president of technology services; and the
testimony, with exhibits, of Catherine Marshall, applicant’s
marketing manager.

7 Applicant submitted no evidence on its asserted defenses, and
did not argue any of the defenses in its brief. Thus,
applicant’s affirmative defenses will not be further considered.
(Moreover, as to applicant’s fourth “affirmative defense,” a
plaintiff may base a notice of opposition or a petition for
cancellation on alleged common law rights in a trademark, or a
trade name, or on use analogous to trademark use. If such a
plaintiff prevails on the record at trial, that does not grant a
de facto registration to that plaintiff, rather it is a
recognition of prior proprietary rights.)
Opposition Nos. 102500, 102586, 102587, 102594, 102600 & 103161
5
Both parties filed briefs on the case8. An oral
hearing was not requested.
David Bruce Becker, opposer’s president and CEO,
testified that when he worked for the Indiana Credit Union
League (hereinafter ICUL), a state trade association for
credit unions in Indiana, one bank supplied data processing
for credit unions throughout Indiana; that at ICUL he
researched an alternative data processing vendor, but
because the ICUL failed to review the business plan he wrote
to start an internal data processing service, in April 1981
he quit his job at ICUL; that also in April 1981 he founded
re:Member Data Processing Services, Inc.9; and that
“re:Member” was chosen as part of the trade name to
distinguish opposer from the existing data processing

8 In its reply brief, opposer requested that the Board strike
those portions of applicant’s brief wherein applicant argued with
reference to the specimens in its six involved applications. The
Board does not generally strike arguments in a brief, but we will
consider a party’s objections and any improper portion(s) of a
brief will be disregarded. See TBMP §540. Opposer’s request
that portions of applicant’s arguments in its brief be stricken
is denied. However, opposer is correct that the specimens from
an application are not automatically of record in an inter partes
case. See Trademark Rule 2.122(b)(2).
Opposer also argued in its reply brief that because applicant
did not brief the second of the factors listed in In re E. I. du
Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973),
namely, the similarity or dissimilarity of the goods or services,
applicant has conceded that its goods are similar, if not
identical, to opposer’s goods and services. Opposer is
incorrect. A defendant is not required to file a brief at all.
See TBMP §801.02(b). Moreover, we note, in particular, that
applicant denied the allegations of opposer’s notice of
opposition wherein opposer alleged that the goods and services
are similar, if not identical, leaving opposer to its proof.
9 In late 1983 or early 1984 the word “Processing” was dropped
from the corporate name.
Opposition Nos. 102500, 102586, 102587, 102594, 102600 & 103161
6
sources for Indiana’s credit unions and to provide an
advertising focus within the trade name on the relationship
of the opposer’s services to the members of credit unions
servicing their members. In 1981, opposer created a
newsletter published periodically under the mark “re:Memo,”
which is still used through distribution to opposer’s client
base and also as a direct mailing to credit unions across
the country.10
Mr. Becker testified about the nature of credit unions,
explaining that they are nonprofit corporations organized
and chartered by state or federal laws, focused around a
common bond, and owned by the depositors and/or the members
of the credit union. Deposits are considered shares within
the organization and the depositors have the right to vote
to elect governing bodies. The board of directors consists
of volunteers, usually members of the credit union or from
the sponsor organization. The key to forming a credit union
is a common bond, and there are numerous types of
organizations with credit unions, such as educational
institutions (Indiana University, Purdue University),
manufacturers (Allison’s, Dana Federal), trade associations
(National Geographic), state or federal employees

10 In addition, he testified that in 1986 opposer released a
product called “re:View” which was “a PC-based front end to the
data center product” (dep., p. 14) but opposer stopped using the
mark “re:View” in 1989.
Opposition Nos. 102500, 102586, 102587, 102594, 102600 & 103161
7
(Indianapolis Police), and hospitals and health care
providers (Methodist Hospital in Indianapolis).11
Mr. Becker further testified that initially opposer
offered online realtime service bureau services (i.e.,
opposer purchased time from a software house in Michigan on
a wholesale basis, and resold it at retail to credit unions
in Indiana); that within the year opposer’s services
expanded to include online realtime ATM (automated teller
machines) networks and EFT (electronic funds transfer)
services. In 1989 opposer acquired Custom Computer
Applications, which had a credit union software package
under the trademark “cuStar”, allowing opposer to offer
either a service bureau system, or alternatively to offer a
significant in-house software product to its credit union
customers. Mr. Becker explained the “cuStar” software is a
central information file under which the credit union can
identify each of its members by a single account number (one
could have up to 3000 different products such as savings
certificates and loans under one identification number); and
that the “cuStar” product has a core system for the basics
of credit union operations (e.g., general ledger, savings,
checking, loans, CDs, payroll); and that there are add-on
modules (e.g., ATMs, fixed assets audio response services

11 The Board takes judicial notice of The American Heritage
Dictionary definition of “credit union” as “A cooperative
Opposition Nos. 102500, 102586, 102587, 102594, 102600 & 103161
8
for telephone banking, loan origination, mortgage
origination and/or servicing, financial investment
tracking).
Mr. Becker continued with the facts regarding opposer’s
growth, stating that in August 1992 opposer incorporated
re:Member Data Services International, Inc. for the purpose
of marketing re:Member products outside the United States;
that in May 1993 opposer created re:Member Marketing
Services as a full service advertising agency focusing on
financial institutions; and that in 1996 opposer created
home pages on the world wide web for re:Member Data
Services, Inc., and re:Member Marketing Services.
None of opposer’s add-on modules are sold under any
trademark that begins with “re:”. (dep., p. 46). He stated
that opposer always uses “re:” in lower case lettering; and
the “re:Member” portion of opposer’s trade name is in a
predominate font and style over the “Data Services, Inc.”
portion of opposer’s trade name (as reproduced below).
Opposer’s current customers number about 107 credit
unions (of the 12,700 credit unions nationwide) in 32
states; that opposer has been spending approximately

organization that makes loans to its members at low interest
Opposition Nos. 102500, 102586, 102587, 102594, 102600 & 103161
9
$300,000 annually for advertising all of its goods and
services (approximately $10,000 of which is attributed to
the promotion of opposer’s international corporation and
$50,000 is attributed to promoting the marketing services
corporation) (dep., p. 62); and that opposer’s gross sales
for the last two fiscal years were $8.4 million and $9.2
million. Opposer’s “cuStar” products range in price from
$4,000 for the add-on modules for the base product to
$750,000 for the core “cuStar” product (with a price
variance depending on the assets and membership of the
organization).
Opposer sells its products and services through
regional sales staff, who conduct sales solicitations and/or
conclusions of sales through face-to-face meetings with
credit union personnel. Opposer does some telemarketing.
Opposer advertises in national credit union trade journals
(e.g., Credit Union Magazine, Credit Union Times, Credit
Union Executive, Indianapolis Business Journal, The Federal
Credit Union); and participates as an exhibitor at national
and regional credit union oriented trade shows. Opposer
does not advertise in generic nonprofit trade journals, or
exhibit at any nonprofit conference other than those
involving credit unions; and opposer’s sales staff does not
call on charitable organizations, nor any nonprofits other

rates.” See TBMP §712.01.
Opposition Nos. 102500, 102586, 102587, 102594, 102600 & 103161
10
than credit unions. Opposer has never sold its products to
any charity organization, nor to any nonprofit organization
other than credit unions.
Mr. Becker testified that about 99% of opposer’s goods
and services are within the credit union field and have been
since opposer’s founding in 1981. When asked regarding
plans to expand, Mr. Becker stated opposer is looking into
“possibly the savings and loan and banking marketplace”
(dep., p. 50).
Incorporated in 1981, applicant develops computer
software for nonprofit organizations to better develop,
administer and monitor their fund raising activities.
Applicant’s flagship product is sold under the mark THE
RAISER’S EDGE, and the add-on modules are sold under various
“RE” (Raiser’s Edge) marks, such as the six opposed marks
herein, as well as applicant’s registered mark RE:EVENT12.
Applicant’s add-on modules are products already embodied
within THE RAISER’S EDGE product, and each module is a key
to enable a particular feature to be used. These add-on
modules cannot be purchased as a stand-alone product, but

12 Reg. No. 1,976,529, issued May 28, 1996, for “add-on software
modules which enables an institution to organize and manage any
special event or fund-raising effort in the form of banquets,
class reunions, dances, auctions, sporting events, etc.”. When
opposer’s witness, Mr. Becker, was asked why his company did not
oppose this application owned by applicant he responded “I don’t
know” (dep., pp. 68-69).
Opposition Nos. 102500, 102586, 102587, 102594, 102600 & 103161
11
rather, they can only be purchased and used by someone who
purchases applicant’s flagship product THE RAISER’S EDGE to
help raise charitable donations. That is, applicant’s add-
on software modules can operate only in conjunction with
applicant’s THE RAISER’S EDGE program, each one performing a
task which is useful and supplemental to the fund raising
administration functions of the flagship product.13
Applicant always uses these marks with the “RE:” portion in
capital letters.
Applicant’s customers are nonprofit organizations such
as schools and universities chronicling information on
alumni, and hospitals chronicling information on ex-hospital
patients, or anyone who may donate money. Applicant’s
flagship program will track gifts, financial summaries of
donations and “allow a fundraising department and
development office within those institutions to mange their
fundraising portfolio.” (Cooper dep., p. 7).

13 RE:MEMBER is a module that allows any institution with
membership type programs (e.g., art galleries clubs) to
specifically track when the member joined, made gifts, upgraded,
downgraded, etc.; RE:ALUM is a module that allows the institution
to track specific alumni-type information on an individual;
RE:QUEUE is a module that allows organizations to batch various
processes to run in an unattended mode; RE:TRIBUTE is a module
that allows hospitals and health care organizations to track
gifts given in memory or in honor of someone; RE:VOLUNTEER is a
module that allows organizations to track hours, and various
capabilities of the individual volunteers; and RE:ZIP is a module
that provides address corrections, add nine digit zip codes, and
formats addresses to be compatible with the Post Office.
Opposition Nos. 102500, 102586, 102587, 102594, 102600 & 103161
12
Applicant’s vice president of technology services,
Nigel Cooper, testified that the marks RE:ZIP and RE:QUEUE
were first used in 1990. Mr. Cooper was not clear on the
specific introduction dates of applicant’s other involved
“RE:” marks, but generally referred to transitioning from a
DOS product line to a Windows product line at the end of
1993 and 1994 (Cooper dep., pp. 12-13), and coming up with a
group of the “RE:” prefix marks for the add-on modules at
that time.
Applicant’s involved goods are not advertised alone,
but are advertised only as part of the flagship product.
Applicant advertises in nonprofit magazines such as The
Chronicle of Philanthropy, Foundation News, Fundraising
Management and Nonprofit Times, but places no advertising in
credit union trade journals. Applicant also markets its
involved products through direct mailings, including three
significant mailings per year to around 45,000-60,000
organizations. These direct mail advertisements are sent to
schools, colleges, museums, hospitals, zoos, performing arts
organizations, environmental organizations, social service
organizations, youth organizations, and the like. In
addition, applicant conducts seminars with an account
executive from applicant doing a presentation in which
materials on THE RAISER’S EDGE products are available; and
applicant attends conferences of nonprofit organizations as
Opposition Nos. 102500, 102586, 102587, 102594, 102600 & 103161
13
a vendor, bringing individualized brochures or sheets on
applicant’s products. Applicant exhibits at the trade shows
of nonprofit organizations, but not those of credit unions.
In 1996 applicant spent over $100,000 on advertising, and
50-75% of that related to THE RAISER’S EDGE product.
Applicant basically sells its involved products through
a sales force of 15-20 people, who conduct on-site
presentations. There are also some in-house telephone
sales, following up on leads regarding the add-on products.
In 99% of applicant’s sales there is a face-to-face meeting
with applicant’s sales representative. Applicant’s THE
RAISER’S EDGE product sells for $6,000 and the various add-
on modules cost $1,000 or $2,000 each. Applicant’s total
sales in 1996 were $27 million, and are estimated at $30-$36
million dollars for 1997.14
Applicant has approximately 11,500 customers, all of
which are nonprofit organizations, and none are credit
unions or advertising agencies or savings and loans or
banks. The only exception to the banks as customers of
applicant is in a very few situations in which the trust
department of a bank may seek applicant’s Paragon stand-

14 Applicant sells outside the United States, but applicant did
not specify whether these sales figures are for the United States
only, nor did applicant specify whether these sales figures were
for the products involved herein sold under the “RE:” marks.
Opposition Nos. 102500, 102586, 102587, 102594, 102600 & 103161
14
alone software for tracking deferred giving (that is,
bequests).
We turn first to a consideration of opposer’s priority.
Opposer has presented testimony regarding use of its trade
name in the form “re:Member Data Services, Inc.” since late
1983 or early 1984, while the record shows applicant’s first
use of the marks RE:ZIP and RE:QUEUE was in 1990, and its
first use of RE:ALUM, RE:TRIBUTE, RE:VOLUNTEER and RE:MEMBER
began sometime thereafter, perhaps around late 1993 or 1994.
Opposer’s priority based on its use of its trade name is
clearly established, and applicant does not contend
otherwise. See Martahus v. Video Duplication Services Inc.,
3 F.3d 417, 27 USPQ2d 1846 (Fed. Cir. 1993).
We turn then to the issue of likelihood of confusion.
Our determination of this issue is based on an analysis of
all the probative facts in evidence that are relevant to the
factors bearing on likelihood of confusion. See In re E. I.
du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). As dictated by the evidence, different factors may
play more dominant roles in determining likelihood of
confusion.15 See Kenner Parker Toys Inc. v. Rose Art

15 Opposer strenuously asserts that under the case of Octocom
Systems Inc. v. Houston Computer Services Inc., 918 F.2d 937, 16
USPQ2d 1783 (Fed. Cir. 1990), it is inappropriate for applicant
to argue various du Pont factors without first explicitly showing
why each factor is relevant herein. Further, opposer interprets
the Octocom case to mean that factors such as (1) the similarity
or dissimilarity of established, likely to continue trade
channels; (2) the conditions under which and buyers to whom sales
Opposition Nos. 102500, 102586, 102587, 102594, 102600 & 103161
15
Industries Inc., 963 F.2d 350, 22 USPQ2d 1453 (Fed. Cir.
1992); and Nina Ricci, S.A.R.L. v. E.T.F. Enterprises, 889
F.2d 1070, 12 USPQ2d 1901 (Fed. Cir. 1989).
Turning to the similarity or dissimilarity of the
marks, we will first address this du Pont factor with
respect to applicant’s marks RE:ALUM, RE:TRIBUTE, RE:ZIP,
RE:QUEUE and RE:VOLUNTEER. We must compare each of
applicant’s involved marks and opposer’s trade name in their
entireties. See In re Hearst Corp., 982 F.2d 493, 25 USPQ2d
1238 (Fed. Cir. 1992); and Opryland USA Inc. v. The Great
American Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed.
Cir. 1992). That is, the marks must be considered in the
way they are used and perceived. Marks tend to be perceived
in their entireties, and all parts thereof must be given
appropriate weight. See Hearst, supra.
The fact that two marks, or in these cases applicant’s
marks and opposer’s trade name, share a common term (“re:”)

are made, i.e., “impulse” vs. careful, sophisticated purchasing;
(3) the variety of goods on which a mark is or is not used (house
mark, “family” mark, product mark); (4) the market interface
between applicant and the owner of a prior mark; and (5) the
extent of potential confusion, i.e., whether de minimis or
established, are all “irrelevant and immaterial” because
applicant’s identifications of goods are not limited. Of course,
in Board proceedings likelihood of confusion is determined on the
basis of the goods as identified in the application and/or
registration. But the Court in Octocom did not mean that several
of the du Pont factors are “immaterial and irrelevant” based
solely on the identification of goods in the application and/or
registration. Rather, the factors are relevant, but must be
determined in light of the identification of goods set forth in
the application and/or registration. Evidence showing the
Opposition Nos. 102500, 102586, 102587, 102594, 102600 & 103161
16
does not necessarily mean that the marks as a whole project
the same image or impression. See Olay Company, Inc. v.
Avon Products, Inc. 178 USPQ 502 (TTAB 1973). This is
especially true where opposer’s trade name is generally
presented in the special form previously reproduced in this
decision. Moreover, the word MEMBER is completely
dissimilar to the words ALUM, TRIBUTE, ZIP, QUEUE and/or
VOLUNTEER.
We find that applicant’s marks RE:ALUM, RE:TRIBUTE,
RE:ZIP, RE:QUEUE and RE:VOLUNTEER are dissimilar in sound,
appearance, meaning and commercial impression from opposer’s
trade name “re:Member Data Services, Inc.”.
Turning to a consideration of the similarity or
dissimilarity of applicant’s mark RE:MEMBER, and opposer’s
trade name, we utilize the same principles enumerated above.
Obviously, applicant’s mark is the same as part of opposer’s
trade name “re:Member Data Services, Inc.”. That is, not
only is the term “re:” the same, but the word MEMBER is a
shared element in both applicant’s mark and opposer’s trade
name. Further, the words “data services, inc.” are highly
descriptive if not generic of opposer’s services. When
considered in their entireties, we find that applicant’s
mark, RE:MEMBER, and opposer’s trade name are highly
similar.

conditions under which the goods, as broadly identified, are sold
Opposition Nos. 102500, 102586, 102587, 102594, 102600 & 103161
17
We turn to a consideration of the parties’ respective
goods and services. Opposer has established that it offers
online data processing services in the field of credit union
management, either as a service bureau or alternatively, by
selling the credit union customer an in-house data
processing system under the trademark “cuStar”. Opposer
clearly sells only to credit unions and not to other
nonprofit organizations. Opposer’s advertising is limited
to credit union trade journals and opposer’s attendance at
trade shows is limited to credit unions related ones only.
Opposer’s in-house core data processing system sells for
around $750,000, and the add-on modules are $4,000 each. In
these oppositions, opposer does not base its rights on a
registration, hence its claimed common law rights are
limited to those proven herein. That is, any limitations as
to opposer’s goods and services, channels of trade,
purchasers, and the like are properly considered herein.
Applicant’s goods must be considered as set forth in
the applications. See Canadian Imperial Bank of Commerce v.
Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir.
1987); and CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198
(Fed. Cir. 1983). The goods in applicant’s six involved
applications are each identified as “add-on software
modules...” followed by wording identifying a specific

may be considered, however.
Opposition Nos. 102500, 102586, 102587, 102594, 102600 & 103161
18
function, such as a module which allows an institution to
organize and manage volunteer staff, or one which allows the
institution to set up a sequence of reports that can be run
automatically. To assist in a proper understanding of
applicant’s goods as identified, we take judicial notice of
the dictionary definitions of the following terms: (1) The
Computer Glossary (1998) defines “module” as “A self-
contained hardware or software component that interacts with
a larger system. Hardware modules are often made to plug
into a main system. Program modules are designed to handle
a specific task within a larger program.”; and (2) the
Dictionary of Computer Words defines “add-in” as “An
accessory program designed to be used in conjunction with an
existing application program to extend its capabilities or
provide functions. For example, the spreadsheet application
Lotus 1-2-3 can be supplemented with add-ins to analyze the
logical structure of the spreadsheet, view spreadsheet files
before actually retrieving them, or change the values in a
spreadsheet formula to produce a desired outcome. Also
called add-on.”
Applicant’s goods are supplemental “add-ons” to
applicant’s core software system, sold under the mark THE
RAISER’S EDGE. While applicant’s goods are not limited as
to purchasers or trade channels, they are clearly limited by
Opposition Nos. 102500, 102586, 102587, 102594, 102600 & 103161
19
function;16 and given the dictionary definition of “add-ins”
as an accessory program, the identifications as written are
limited in the sense that applicant’s goods are clearly
software modules to be added-on to an existing program.
That is, purchasers and potential purchasers would
understand that each of applicant’s goods, as identified, is
a computer module to be added to an existing program.
Moreover, the record clearly shows that applicant’s “add-on
modules” are not sold separately from its flagship product
to assist nonprofit organizations’ fund raising
efforts. These add-on software modules are not stand alone
products and cannot be operated except in conjunction with
applicant’s fund raising software, THE RAISER’S EDGE.
Applicant has no credit unions as customers, and seeks none,
in that applicant does not advertise in credit union trade
journals, and its sales force does not seek out credit
unions.
Although applicant’s identification of goods are not
limited as to purchasers and trade channels (except to the
extent such is logically limited by the function set forth
in the identifications), and could therefore potentially
include a wide range of purchasers, if applicant's goods

16 Applicant’s original identifications of goods in all six
applications stated “add-on module to The Raiser’s EdgeTM
software application....”. However, by Examiner’s Amendment, the
Examining Attorney changed each of the identifications of goods,
including deleting applicant’s reference to The Raiser’s Edge.
Opposition Nos. 102500, 102586, 102587, 102594, 102600 & 103161
20
were simply inexpensive, off-the-shelf computer software
programs, then clearly they would not be marketed to the
same purchasers as those purchasers seeking opposer’s credit
union data processing services or its $750,000 core in-house
system. Conversely, if applicant’s goods were relatively
expensive (as the record shows they are), then the
purchasers for the parties’ respective goods and services
would be sophisticated and would make their purchasing
decisions only after careful consideration. Accordingly,
even assuming that opposer is correct that some of the same
persons may be on the governing board of a nonprofit
organization as well as on the governing board of a related
credit union, and even if these persons are involved in the
purchase of data processing and fund raising software, their
deliberations would entail careful consideration and involve
face-to-face sales presentations of expensive computer
systems and software.
The record before us shows that the established and
likely to continue trade channels are separate and distinct.
There is at most a de minimis chance that purchasers or
potential purchasers of opposer’s services and goods would
overlap with those seeking applicant’s goods.
As applicant points out, there must be shown more than
a mere possibility of confusion; instead, there must
demonstrated a probability or likelihood of confusion. See
Opposition Nos. 102500, 102586, 102587, 102594, 102600 & 103161
21
Electronic Design & Sales Inc. v. Electronic Data Systems
Corp., 954 F.2d 713, 21 USPQ2d 1388, 1391 (Fed. Cir. 1992),
quoting from Witco Chemical Company, Inc. v. Whitfield
Chemical Company, Inc., 418 F.2d 1403, 164 USPQ 43 (CCPA
1969) as follows: “We are not concerned with mere
theoretical possibilities of confusion, deception, or
mistake or with de minimis situations but with the
practicalities of the commercial world, with which the
trademark laws deal." See also, Triumph Machinery Company
v. Kentmaster Manufacturing Company Inc., 1 USPQ2d 1826
(TTAB 1987).
The Trademark Act does not speak in terms of remote
possibilities of confusion, but rather, the likelihood of
such confusion occurring in the marketplace. Given the
differences between opposer’s trade name and applicant’s six
marks (admittedly the mark RE:MEMBER is the closest to
opposer’s trade name), and looking at the evidence on the
relevant du Pont factors in this case, it is our belief that
the possibility of confusion in this case is a remote one.
Finally, the absence of any actual confusion, while
weighing in applicant’s favor, is not a crucial factor to
our decision herein. (The absence of actual confusion is
not surprising given the differences between applicant’s
marks and opposer’s trade name, the differences in the
customers and trade channels, the sophistication of
Opposition Nos. 102500, 102586, 102587, 102594, 102600 & 103161
22
purchasers being presented with in-person sales, and the
expensive nature of the involved goods and services.)
Opposition Nos. 102500, 102586, 102587, 102594, 102600 & 103161
23
Decision: The oppositions are dismissed.
G. D. Hohein
P. T. Hairston
B. A. Chapman
Administrative Trademark
Judges, Trademark Trial and
Appeal