TeleOne, Inc.v.Teleone Corp.Download PDFTrademark Trial and Appeal BoardFeb 23, 2009No. 91176431 (T.T.A.B. Feb. 23, 2009) Copy Citation Date: February 23, 2009 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board ______ TeleOne, Inc. v. Teleone Corp. _____ Opposition No. 91176430 to application Serial No. 78931486 Opposition No. 91176431 to application Serial No. 78931491 _____ Douglas D. Churovich, J. Joseph Muller and Brian J. Gill of Polster, Lieder, Woodruff & Lucchesi, L.C. for TeleOne, Inc. Jeffrey M. Furr for Teleone, Corp. ______ Before Quinn, Grendel and Taylor, Administrative Trademark Judges. Opinion by Taylor, Administrative Trademark Judge: Teleone, Corp. (“applicant”) has filed applications to register on the Principal Register the following marks: TELEONE (in standard character format and the subject of Opposition No. 91176430)1; and (the subject of Opposition No. 91176431)2, 1 Serial No. 78931486, filed on July 18, 2006, with an allegation of a bona fide intention to use the mark in commerce. THIS OPINION IS NOT A PRECEDENT OF THE TTAB Opposition Nos. 91176430 and 91176431 2 both for “Voice over IP services; telecommunications services, namely, telecommunication access services” in International Class 38. TeleOne, Inc. (“opposer”) has filed notices of opposition to the registration of both marks. Opposer, in each notice, alleges that it now and, for many years prior to the July 18, 2006 filing date of applicant’s application, has been the owner of the trademark TELEONE “as applied to” voice over IP services and telecommunication access services; and that applicant’s marks and its mark are so similar that their contemporaneous use on the services set forth in the applications and the services of opposer is likely to cause confusion, or to cause mistake, or to deceive the purchasing public, to the damage of opposer. Applicant, in its answers, has denied the salient allegations of the notices of opposition. PRELIMINARY MATTERS During applicant’s testimony deposition of David Katimi, opposer objected to the questioning of Mr. Katimi as a Rule 30(b)(6) witness because the notice of deposition was only for Mr. Katimi in his “usual” capacity, and not as a corporate executive. Opposer also objected to the entry as exhibits of several documents on the ground that they had no 2 Serial No. 78931491, filed on July 18, 2006, with an allegation of a bona fide intention to use the mark in commerce. The application includes the following color statement: “The color(s) blue is/are claimed as a feature of the mark. The entire mark is BLUE against a transparent background.” Opposition Nos. 91176430 and 91176431 3 Bates stamp coordination and, accordingly, there was no way to verify that the documents had been produced in the case. First, with regard to the Katimi deposition, a Rule 30(b)(6) deposition is a deposition taken by a party of an adverse party’s witness during the discovery period. See Fed. R. Civ. P. 30(b)(6). Accordingly, the characterization of Mr. Katimi’s trial testimony as that of a Rule 30(b)(6) witness is in error. We have accorded Mr. Katimi’s testimony the appropriate probative weight. As regards the accompanying exhibits, inasmuch as opposer did not maintain the objection in its brief, it is considered waived and we have considered the exhibits, except as noted below. See Hard Rock Café International (USA) Inc. v. Elsea, 56 USPQ2d 1504, 1507 n. 5 (TTAB 2000); and Reflange Inc. v. R-Con International, 17 USPQ2d 1125, 1126 n. 4 (TTAB 1990). We also note with regard to applicant’s Katimi deposition that several of the accompanying exhibits appear to be in Spanish without an English translation. We have not considered these exhibits except to the extent that they are translated in the deposition. See Wright and Graham, Federal Practice and Procedure (1977), § 5075 (“If a party puts in evidence the whole of an encoded writing, he should only be held to have introduced the part of it that he has had translated for the jury.”). Opposition Nos. 91176430 and 91176431 4 Last, opposer extensively argued in its brief that it had made prior use of Teleone as a trade name; however prior use of Teleone as a trade name was not pleaded and the record does not support a finding that it was tried by implied or express consent of the parties pursuant to Fed. R. Civ. P. 15(b). We, therefore, have given these arguments no consideration, except to the extent that they serve as a point of reference for opposer’s arguments regarding its use of TELEONE as a trademark. THE RECORD The record of these consolidated proceedings consists of the pleadings and the files of application Serial Nos. 78931486 and 78931491. During its testimony period, opposer submitted the testimony depositions of Richard Weinstein, opposer’s president, with exhibits3; John Pasaka, opposer’s former vice-president4; applicant’s employees, David Katimi, Dolly Chacon and Raul Gomez, with exhibits5; Douglas Munar, an industrial designer with a working relationship with applicant; and Natalia Builes, an independent contractor of applicant. Applicant, during its testimony period, 3 Neither applicant nor its counsel attended the Weinstein deposition. 4 Neither applicant nor its counsel attended the Weinstein deposition. 5 We note that the some of the same exhibits that were introduced by Mr. Katimi were discussed in the Chacon and Gomes depositions. Opposition Nos. 91176430 and 91176431 5 submitted the testimony deposition, with exhibits, of David Katimi, applicant’s business developer. Only opposer filed a brief. FINDINGS OF FACT Opposer Opposer, incorporated as TeleOne, Inc., markets, manufactures, sells and services telecommunications platforms for different levels of business. (Weinstein test. p. 11). One such level involves providing telecommunication services for “end-user” customers, including both residential and business customers. (Weinstein test. p. 11-12). Opposer’s telecommunication services include, inter alia, voice data and video transmission and voice over internet protocol (“voice over IP”). (Weinstein test. pp. 13-14). Opposer further provides telecommunications access services, such as providing interconnectivity between its customers and others, including residential or very small business customers. (Weinstein test. pp. 14-15). Since 2001, opposer has used its TELEONE trademark in association with its telecommunication services, including voice over IP and telecommunication access services. 6 (Weinstein test. pp. 6 Mr. Weinstein particularly states: Q. And how long have you been employed by TeleOne, Inc.? A. Since it’s inception. Q. And when was TeleOne, Inc. incorporated? Opposition Nos. 91176430 and 91176431 6 17-18). In late 2001, opposer acquired the Internet domain names “teleone.com” and “teleone.net” and created a website associated with both of these domain names. Opposer has at all times since the creation of its website in 2001 displayed its TELEONE trademark as a service mark with the “TM” designation7 and, hence, opposer’s website has continuously been used to promote telecommunications services since 2001.8 (Weinstein test. pp. 47-48). Customers can order opposer’s telecommunication products and services sold under the mark TELEONE by viewing offerings A. In 2001. *** Q. When did TeleOne, Inc. begin to identify its telecommunication services using the mark TeleOne? A. Literally from inception. Q. And at any time since the company’s inception did TeleOne ever stop using the mark TeleOne to promote its telecommunications goods and services? A. No, sir, it did not. (Weinstein test. pp. 10, 18) Because opposer does not specify a date certain in 2001 as the date it began using the TELEONE mark to identify its services, we must presume that opposer commenced use of its trademark on December 31, 2001. See TMEP § 903.07. 7 Opposer particularly indicated that “[o]pposer’s website has, at all times since its creation in 2001, prominently displayed Opposer’s trademark and trade name TELEONE as both a corporate logo and as a service mark with the ‘TM’ designation.” (Weinstein test. p. 47 and exh. 6). The logo design consists of the word TeleOne in upper and lower case lettering with a graduated arch of descending-sized circles which extend from the left side of the wording over the wording and ending above the letter “e.” Inasmuch as opposer did not further discuss this logo in its brief, we will likewise limit our analysis to the word-only form of opposer’s trademark. 8 Opposer’s website has only been “down” (i.e., non-operational) for approximately six months in 2007 due to server damage caused by a massive power outage. (Weinstein test. p. 51). Opposition Nos. 91176430 and 91176431 7 shown and described on Opposer’s website and then placing an order using the telephone numbers provided on the website. (Pasaka test. p. 18). Opposer also promotes its TELEONE mark by identifying potential customers and making presentations to them. (Weinstein test. p. 16). Potential customers are further identified through “word of mouth” or other forms of introduction. (Id.). Opposer also consistently affixes the “TM” symbol whenever the mark is displayed, e.g., on opposer’s website, letterhead and materials used for customer presentation. In addition to its website, opposer advertises its voice over IP and telecommunication access services rendered under the TELEONE mark via the Yellow Pages®. (Weinstein test. p. 103). Applicant Applicant, Teleone Corp., was incorporated in November 2002. (Katimi [July] test. p. 9.) Applicant provides “[a]ll kinds of IP telephony products” which are sold to retail and wholesale customers that have the need to make international calls, including individuals, call centers and small and medium businesses. (Katimi [July] test. p. 11.) The services provided under the mark include voice over IP services aimed at both the corporate and individual markets. (Katimi test. [Feb], exh. 4), Applicant’s earliest use of the marks was on December 17, 2002. (Id). Applicant’s services are marketed through its website, at tradeshows, Opposition Nos. 91176430 and 91176431 8 and by sales representatives. (Katimi test. [Feb.], exh 4 and Katami test. [July] p. 22, 24, 25). Applicant advertises its mark in magazines and advertising brochures. (Katimi test. [July], pp. 25-26). DISCUSSION Standing An opposer must have “a ‘real interest’ in the outcome of a proceeding in order to have standing.” Richie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999). “To establish a reasonable basis for a belief that one is damaged by the registration sought to be cancelled, a petition may assert a likelihood of confusion which is not wholly without merit.” Lipton Industries v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982).9 Herein, the evidence of record shows that opposer is the source of, inter alia, voice over IP services and telecommunication access services with which it uses its TELEONE mark. We find this fact, together with the fact that opposer’s likelihood of confusion claim is not frivolous satisfies the requirements for standing in this case. See id. Opposer, as plaintiff in these opposition proceedings, has the burden of proving, by a preponderance of the 9 Because of the linguistic and functional similarities of the opposition and cancellation provisions of the Lanham Act, “we construe the requirements of those two sections of the Lanham Act consistently.” Ritchie, 50 USPQ2d at 1025 n.2. Opposition Nos. 91176430 and 91176431 9 evidence, its asserted grounds of priority and likelihood of confusion. See Cerveceria Centroamericana, S.A. v. Cerveceria India, Inc., 892 F.2d 1021, 13 USPQ2d 1307, 1309 (Fed. Cir. 1989). We first address the issue of likelihood of confusion. Likelihood of Confusion Our determination under Section 2(d) is based on an analysis of all the facts in evidence that are relevant to the factors bearing on the likelihood of confusion issue. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). Applicant seeks to register the marks TELEONE (in standard character form) and both for “voice over IP services; telecommunications services, namely, telecommunication access services.” Opposer’s evidence demonstrates that it provides, inter alia, voice over IP services and telecommunication access services under the mark TELEONE.10 There is no question with respect to the relatedness of the services; applicant’s services are identical to opposer’s voice over IP and telecommunication access services. 10 Opposer’s evidence demonstrates that opposer provides additional telecommunication services and related goods. In analyzing likelihood of confusion, we limit our discussion to opposer’s voice over IP and telecommunications access services as these services are identical to those services identified in applicant’s applications. Opposition Nos. 91176430 and 91176431 10 Further, because the parties’ services are identical, we must presume that they will be offered in the same channels of trade and purchased by the same classes of purchasers, including residential and small business customers seeking, e.g., voice over IP solutions. See Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987). Applicant nonetheless suggests that its services are targeted primarily to the Hispanic market.11 However, as there are no such restrictions in the applications, it must be presumed that applicant’s services will be offered to all usual purchasers, including non-Hispanics. See In re Elbaum, 211 USPQ 639 (TTAB 1981). We next consider the similarity or dissimilarity of the marks. In so doing, we must consider the appearance, sound, connotation and commercial impression of each mark. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1722, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). Although we must compare the marks in their entireties, one feature of a mark may be more significant than another, and it is not improper to give more weight to this dominant feature in determining the commercial impression created by the mark. See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, (Fed. Cir. 1985) (“There 11 Katimi test. [July] p. 13. Opposition Nos. 91176430 and 91176431 11 is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties.). Last, when marks would appear on identical services, as they do here, the degree of similarity necessary to support a conclusion of likely confusion declines. Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992). We find that the wording TELEONE is the dominant and distinguishing portion of applicant’s mark (the subject of Serial No. 78931491). While the swirling circle design is noticeable, it is not sufficient to distinguish the mark from opposer’s mark. It is settled that with a composite mark comprising a design and words, the word portion of the mark is usually the one most likely to indicate the origin of the services to which it is affixed. CBS, Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir. 1983); and In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593 (TTAB 2001) (“words are normally accorded greater weight because they would be used by purchasers to request the goods”). Further, neither the blue color nor the stylization of the lettering is so distinctive as to be source-indicating. While differences admittedly exist between applicant’s TELEONE and design mark and opposer’s Opposition Nos. 91176430 and 91176431 12 mark, they are substantially similar in appearance, sound, connotation and commercial impression due to the shared, dominant term “TELEONE.” Indeed, applicant admitted that its marks and opposer’s mark have the same overall commercial impression. (Katimi test. [Feb.] p. 57). Moreover, purchasers familiar with opposer’s mark and services are likely to believe that applicant’s mark is merely a variant design adopted by opposer to identify opposer’s voice over IP and telecommunication access services. We find also that applicant’s TELEONE mark (the subject of Serial No. 78931486) is identical to opposer’s TELEONE mark. Inasmuch as applicant’s marks are either identical or substantially similar to opposer’s mark, and the services of the parties are the same, there is a likelihood of confusion in this case. Priority Because there is a likelihood of confusion between the parties’ marks, the next critical question is which party has priority of use. Opposer is relying on its common law rights in the TELEONE mark. In order for a plaintiff to prevail on a claim of likelihood of confusion based on its ownership of common law rights in a mark, the mark must be distinctive, inherently or otherwise, and plaintiff must Opposition Nos. 91176430 and 91176431 13 show priority of use. See Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40 (CCPA 1981). Applicant has not questioned the distinctiveness of TELEONE and, in fact, seeks registration, in part, of an identical mark for identical services. Nor are there any other circumstances in the case which would have put opposer on notice of this defense, and we therefore find that the mark is distinctive. See The Chicago Corp. v. North American Chicago Corp., 20 USPQ2d 1715 (TTAB 1991). See also Wetseal Inc. v. FD Management Inc., 82 USPQ2d 1629 (TTAB 2007). As regards priority, the record is clear that opposer first used its TELEONE mark in 2001 (because no specific date was established, the date is construed as December 31, 2001) in connection with its voice over IP and telecommunication access services. Although applicant based both applications (filed July 18, 2006) on a bona fide intention to use the marks in commerce, applicant now claims first use of its marks on December 17, 2002. Applicant bases this earlier first date of use on invoices mailed with the company logo on them. (Katimi test. [Feb], p. 31 and exh. 4-7). Even accepting, arguendo, that applicant first used its TELEONE and TELEONE and design marks on December 17, 2002, and that applicant first used TELEONE as a trade Opposition Nos. 91176430 and 91176431 14 name in November 200212, those dates – although earlier than the July 18, 2006 filing dates of applicant’s intent to use applications – still are subsequent to opposer’s established first use date.13 Quite simply, on this record, priority rests with opposer. As previously indicated, confusion is likely between applicant’s marks and opposer’s mark. 12 We note that applicant did not assert an earlier use of TELEONE as a trade name. 13 In response to applicant’s assertion of an earlier first use date, opposer contends that such use by applicant in connection with international long distance telecommunication services prior to November 11, 2004 was unlawful because it was a per se violation of a Federal Communication Commission (“FCC”) regulation which requires an international carrier to obtain a license prior to operating. With respect to this allegation of unlawful use, as the Board stated in Satinine Societa in Nome Collettivo di S.A. e M. Usellini v. P.A.B Produits et Appareils de Beaute, 209 USPQ 958, 965 (TTAB 1981), “the proofs submitted by the party charging noncompliance [with a Federal statute] must leave no room for doubt, speculation, surmise, or interpretation. Additionally, said party should submit an up-to-date copy of the statute in question, together with any pertinent rules, regulations, and decisions issued thereunder.” Opposer, however, did not provide an up-to-date copy of the relevant statute or any other information pertinent to its assertion that applicant failed to comply with FCC regulations. Accordingly, this claim will not be further considered. In any event, and as noted above, applicant’s asserted earlier use date is subsequent to opposer’s established first use date and, accordingly, inconsequential to our decision. We add, also, that opposer is incorrect in its contention that applicant’s proof of a date of first use prior to the date asserted in its intent-to-use application must be “clear and convincing.” When an application is based on intent-to-use in commerce, that applicant is entitled to rely, for purposes of priority, on actual trademark use or use analogous to trademark use earlier than the filing date of its intent-to-use application. See Corporate Document Services Inc. v. I.C.E.D. Management Inc., 48 USPQ2d 1477 (TTAB 1998); and Dyneer Corp. v. Automotive Products plc, 37 USPQ 1251 (TTAB 1995). The clear and convincing standard is applicable to use-based applications where the applicant attempts to prove a date of first use earlier than that set forth in its application. Opposition Nos. 91176430 and 91176431 15 Last, opposer maintains that applicant was fully aware of opposer’s senior use of TELEONE when “applicant proceeded to use opposer’s TELEONE mark as its own.” (Br. pp. 43-44). Even if applicant knew of opposer’s mark prior to the adoption of its TELEONE and TELEONE and design marks, mere knowledge thereof does not establish that applicant adopted its marks in bad faith. Ava Enterprises, Inc. V. Audio Boss USA, Inc., 77 USPQ2d 1783 (TTAB 2006). Even so, it is settled that one who adopts a mark similar to the mark of another for the same or closely related goods or services does so at his own peril. W.R. Grace & Co. v. Herbert J. Meyer Industries, Inc. 190 USPQ 308 (TTAB 1976). Decision: The oppositions are sustained. Copy with citationCopy as parenthetical citation